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`Paper No.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________
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`APPLE INC.,
`Petitioner,
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`v.
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`RED.COM, LLC,
`Patent Owner
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`_____________________
`
`IPR2019-01065
`Patent No. 9,245,314
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`_____________________
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`PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
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`IPR2019-01065 (U.S. Patent No. 9,245,314)
`PETITIONER’S EXHIBIT LIST
`Updated: October 4, 2019
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`
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`Ex. 1007
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`Ex. 1001 U.S. Patent No. 9,245,314
`Ex. 1002
`Prosecution History of U.S. Patent No. 9,245,314
`Ex. 1003 Declaration of Cliff Reader, Ph.D. under 37 C.F.R. § 1.68
`Ex. 1004 Curriculum Vitae of Cliff Reader, Ph.D.
`Ex. 1005 U.S. Patent No. 9,565,419 to Presler (“Presler”)
`Ex. 1006 U.S. Patent No. 7,656,561 to Molgaard et al. (“Molgaard”)
`Ning Zhang et al., “Lossless Compression of Color Mosaic
`Images,” IEEE Transactions on Image Processing Vol. 15, No. 6
`(June 2006) (“Zhang”)
`Ex. 1008 Ben Long, REAL WORLD APERTURE, 1st Ed., ISBN: 0-321-44193-1
`(July 11, 2006) (“Long”)
`Serial ATA International Organization: Serial ATA Revision 2.6
`Ex. 1009
`(Feb. 15, 2007)
`Ex. 1010 U.S. Provisional Application No. 60/911,196 (“The ’196
`Application”)
`Ex. 1011 U.S. Provisional Application No. 61/017,406 (“The ’406
`Application”)
`Ex. 1012 U.S. Provisional Application No. 60/923,339 (“the ’339
`Application”)
`Ex. 1013 U.S. Patent No. 7,349,574 to Sodini et al. (“Sodini”)
`Ex. 1014 U.S. Patent No. 8,170,402 to Frost-Ruebling et al. (“Frost”)
`Ex. 1015 Reserved
`Ex. 1016 U.S. Patent No. 3,971,065 to Bayer (“Bayer”)
`Ex. 1017
`Excerpts from comment board
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`ii
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
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`IPR2019-01065 (U.S. Patent No. 9,245,314)
`RELIEF REQUESTED
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`I.
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`Petitioner Apple Inc. (“Apple”) presented evidence that claims 1-30 of the
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`’314 are obvious in view of prior art including U.S. Patent No. 9,565,419 to Presler
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`(“Presler,” Ex. 1005), which has a priority date of April 13, 2007. Petition, p.10. In
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`Patent Owner’s Preliminary Response (“POPR”), Patent Owner RED.COM, LLC
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`(“RED”) seeks to avoid the teachings of Presler by claiming actual reduction to
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`practice by its “Boris” and “Natasha” cameras before the April 13, 2007 priority
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`date to “disqualif[y] Presler as prior art.” POPR, p.32. RED’s claim of actual
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`reduction to practice relies on testimonial evidence that, at best, creates a “genuine
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`issue of material fact” with regard to the ’314 patent’s priority date. 37 C.F.R. §
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`42.108(c). This issue should be “viewed in the light most favorable to the
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`petitioner solely for purposes of deciding whether to institute an inter partes
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`review.” Id. Further, as shown below, the evidence presented by RED is
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`insufficient to establish an actual reduction to practice, and therefore fails to
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`antedate Presler. 37 C.F.R. § 42.108(c). Petitioner, as authorized by Paper 13,
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`submits this reply to the POPR and requests institution of an inter partes review
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`and cancellation of claims 1-30 of the ’314 patent.
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`II. RED’S CLAIM OF ACTUAL REDUCTION TO PRACTICE
`CREATES A “GENUINE ISSUE OF MATERIAL FACT”
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`RED relies on declarations from five individuals in its claim that the “Boris”
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`and “Natasha” cameras were actually reduced to practice before Presler’s priority
`1
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
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`IPR2019-01065 (U.S. Patent No. 9,245,314)
`date. POPR, pp.33-63. RED has not made these individuals available for
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`depositions to assess the truth of these declaratory statements, and as discussed
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`below, has not provided any physical data from the cameras, such as footage,
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`output data, or even basic specifications of components. See e.g., POPR, pp.35-37.
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`Without cross-examination testimony or access to technical data, the Board cannot
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`assess if these declaratory statements—that recall 12-year-old events—technically,
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`truthfully, and accurately establish that the Boris and Natasha cameras are an
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`actual reduction to practice of the recited claims. The inability to assess the truth of
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`these statements relied on by RED to antedate Apple’s primary reference creates a
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`“genuine issue of material fact” that should be “viewed in the light most favorable
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`to the petitioner solely for purposes of deciding whether to institute an inter partes
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`review.” 37 C.F.R. § 42.108(c).
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`III. RED’S EVIDENCE DOES NOT ESTABLISH ACTUAL
`REDUCTION TO PRACTICE
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`The burden of showing actual reduction to practice is on the party seeking its
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`benefit. In re NTP, Inc., 654 F.3d 1279, 1291 (Fed. Cir. 2011). To demonstrate
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`actual reduction to practice, RED must have: (1) constructed an embodiment or
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`performed a process that met all the limitations of the claim and (2) determined
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`that the invention would work for its intended purpose. In re Omeprazole Patent
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`Litig., 536 F.3d 1361, 1373 (Fed. Cir. 2008). RED fails both requirements.
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`2
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
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`IPR2019-01065 (U.S. Patent No. 9,245,314)
`A. RED Fails to Show an Embodiment That Met All
`Limitations of the Claims
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`
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`RED fails to provide evidence of actual reduction to practice for key
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`limitations of the claims. For example, RED relies entirely on declaratory evidence
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`in its assertion that the Boris and Natasha cameras met claim limitations related to
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`the “image sensor” [1.3.0]-[1.3.4]. POPR, pp.35-36. Rather than address the
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`specific claim limitations, RED states that the limitations “generally describe a
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`Bayer-pattern image sensor” and that cameras “employed a Mysterium CMOS
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`image sensor, which implemented a Bayer pixel pattern.” Id. RED offers nothing
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`else—no output data, component specifications, or even a manufacturer name—
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`showing an image sensor as claimed (i.e., “comprising first, second and third
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`pluralities of light sensitive devices arranged with respect to one another in a plane
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`... being configured to convert light ... into raw mosaiced image data comprising
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`one data value for each of the light sensitive devices ... configured to output the
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`raw mosaiced image data at a resolution of at least 2k and at a frame rate of at least
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`about 23 frames per second”). Ex.1001, 15:47-63. RED’s failure to show how the
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`purported “Mysterium CMOS image sensor” meets the detailed requirements
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`recited in the claims dooms its alleged actual reduction to practice.
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`Similarly, RED does not give any details regarding the “memory device” of
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`claim limitations [1.2] and [1.7] besides “Boris and Natasha utilized a memory
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`3
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
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`IPR2019-01065 (U.S. Patent No. 9,245,314)
`device connected via a SATA cable that could be mounted to the top of the camera
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`housing.” POPR, pp.34-35. RED does not give even basic specifications of this
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`memory device (such as storage size) and gives no explanation of how the memory
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`device of the Boris and Natasha cameras “receives the compressed processed
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`image data at a rate of at least about 23 frames per second” as recited. Ex.1001,
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`16:16-18.
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`Furthermore, RED does not give details about processing and compression
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`modules (claim limitations [1.4]-[1.5.2]) which are allegedly part of the RED
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`cameras, besides stating “the processing module was manufactured by Xilinx, and
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`the compression chips were manufactured by Analog Device.” POPR, p.37.
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`Without any specifications of these basic components used in the Boris and
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`Natasha cameras, RED has not established that it “constructed an embodiment or
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`performed a process that met all the limitations of the claim.” In re Omeprazole
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`Patent Litig. at 1373.
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`B. RED Fails to Show the Cameras Worked for Their
`Intended Purpose
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`Under the second prong of the actual reduction to practice test, RED is
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`required to establish that the cameras “would work for [their] intended purpose.” In
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`re Omeprazole Patent Litig. at 1373. Here, RED provides no evidence that the
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`Boris and Natasha cameras would work for their intended purposes. As discussed
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`4
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
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`IPR2019-01065 (U.S. Patent No. 9,245,314)
`above, RED has failed to provide any physical data related to key aspects of the
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`cameras, such as the image sensor, processing module, compression module, and
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`memory device. See POPR, pp.35-57. By failing to provide any specifications or
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`structural data on these components, RED also fails to show that they worked for
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`their intended purpose.
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`Also, RED has provided no results from testing any of these components.
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`See Slip Track Systems, Inc. v. Metal Lite, Inc., Case No. 01-1187 (Fed. Cir. Sept.
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`11, 2002) (finding “insufficient evidence in the record that the invention would
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`work for its intended purpose because the First Prototype ... was never tested to
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`see if it would work,” emphasis added). RED provides no specifications or
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`structural information to establish that components of the cameras “would work for
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`[their] intended purpose,” much less that they met the claim limitations during
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`testing. See id. RED’s evidence of actual reduction to practice therefore fails.
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`Apple requests that this issue of “genuine issue of material fact” be “viewed
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`in the light most favorable to the petitioner” for institution of an inter partes review
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`of claims 1-30 of the ’314 patent.
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`IV. CONCLUSION
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`For at least the foregoing reasons, the Board should institute an inter partes
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`review and cancel claims 1-30 of the ’314 patent.
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`5
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`Dated: October 4, 2019
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`
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
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`IPR2019-01065 (U.S. Patent No. 9,245,314)
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`Respectfully submitted,
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`
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`/Michael S. Parsons/
`Michael S. Parsons
`Lead Counsel for Petitioner
`Registration No. 58,767
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`HAYNES AND BOONE, LLP
`2323 Victory Avenue, Suite 700
`Dallas, Texas 75219
`Telephone: 972-739-8611
`Facsimile: 214-200-0853
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`6
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
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`IPR2019-01065 (U.S. Patent No. 9,245,314)
`CERTIFICATE OF SERVICE
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`
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), this is to certify that service
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`was made on Patent Owner as detailed below:
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`Date of service October 4, 2019
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`Manner of service Electronic Mail to:
`2jrr@knobbe.com
`2dgm@knobbe.com
`BoxRedcom7C4LP@knobbe.com
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`Documents served Petitioner’s Reply to Patent Owner’s Preliminary Response
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`Knobbe Martens Olson & Bear LLP
`2040 Main Street
`Fourteenth Floor
`Irvine, CA 92614
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`Persons served
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`/Michael S. Parsons/
`Michael S. Parsons
`Lead Counsel for Petitioner
`Registration No. 58,767
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`7
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