UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`LG ELECTRONICS INC. AND LG ELECTRONICS USA, INC.,
`Petitioners,
`
`v.
`
`IMAGE PROCESSING TECHNOLOGIES, LLC
`Patent Owner.
`
`____________
`
`Case IPR2023-00104
`U.S. Patent No. 6,959,293
`
`____________
`
`PATENT OWNER IMAGE PROCESSING TECHNOLOGIES, LLC’S
`PRELIMINARY RESPONSE PURSUANT TO 37 C.F.R. § 42.107(a)
`
`
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`LG ELECTRONICS INC. AND LG ELECTRONICS USA, INC.,
`Petitioners,
`
`v.
`
`IMAGE PROCESSING TECHNOLOGIES, LLC
`Patent Owner.
`
`____________
`
`Case IPR2023-00104
`U.S. Patent No. 6,959,293
`
`____________
`
`PATENT OWNER IMAGE PROCESSING TECHNOLOGIES, LLC’S
`PRELIMINARY RESPONSE PURSUANT TO 37 C.F.R. § 42.107(a)
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`IPR2023-00104 (U.S. Patent No. 6,959,293)
`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 2
`
`Background ...................................................................................................... 7
`
`A. Overview of the ’293 Patent .................................................................. 7
`
`B.
`
`The Numerous Unsuccessful Validity Challenges to Claim 1 of
`the ’293 Patent ..................................................................................... 11
`
`1.
`
`1.
`
`2.
`
`Original prosecution of claim 1 of the ’293 Patent ................... 11
`
`Inter Partes Review of Claim 1 of the ’293 Patent .................. 13
`
`Ex Parte Reexamination of Claim 1 of the ’293 Patent ........... 14
`
`III. Legal Standards ............................................................................................. 17
`
`A.
`
`B.
`
`Standard For Granting An Inter Partes Review ................................. 17
`
`Standard to Deny Institution Under Section 325(d) ............................ 18
`
`IV. The Board Should Deny Institution, as it has Previously Considered
`the Art Presented and Confirmed the Patentability of Claim 1 ..................... 19
`
`A.
`
`B.
`
`The Same or Substantially the Same Art and Arguments Were
`Previously Presented to the Office ...................................................... 20
`
`Petitioners Failed to Demonstrated that the Office Erred in a
`Manner Material to the Patentability of Challenged Claims ............... 26
`
`V. General Plastic Does Not Favor Institution .................................................. 27
`
`VI. The Board Should Exercise its Discretion and Deny Institution of
`Inter Partes Review ....................................................................................... 31
`
`VII. Conclusion ..................................................................................................... 34
`
`
`
`
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`i
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`Patent Owner’s Preliminary Response
`IPR2023-00104 (U.S. Patent No. 6,959,293)
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`
`TABLE OF AUTHORITIES
`
`Cases
`
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH,
`Case No. IPR2019-01469, Paper No. 6,
`2020 WL 740292 (P.T.A.B. Feb. 13, 2020) ..................................... 17, 18, 19, 25
`
`Apple Inc. v. Fintiv, Inc.,
`No. IPR2020-00019, Paper 11,
`2020 WL 2126495 (P.T.A.B. Mar. 20, 2020) ............................................... 30, 31
`
`Becton, Dickinson & Co. v. B. Braun Melsungen AG,
`Case No. IPR2017-01586, Paper No. 8,
`2017 WL 6405100 (P.T.A.B. Dec. 15, 2017) ...................................................... 18
`
`Cultec, Inc. v. StormTech LLC,
`Case No. IPR2017-00777, Paper No. 7,
`2017 WL 3635100 (P.T.A.B. Aug. 22, 2017) ....................................................... 7
`
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) ......................................................................................... 30
`
`General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha,
`Case No. IPR2016-01357, Paper No. 19,
`2017 WL 3917706 (P.T.A.B. Sept. 6, 2017) ................................................ 26, 30
`
`Telemec Cellular Corp. v. Topp Telecom, Inc.,
`247 F.3d 1316 (Fed. Cir. 2001) .............................................................................. 5
`
`Valve Corp. v. Elec. Scripting Prods., Inc.,
`Case Nos. IPR2019-00062, IPR2019-00063, IPR2019-00084,
`Paper No. 11, 2019 WL 1490575 (P.T.A.B. Apr. 2, 2019) .......................... 28, 29
`
`Statutes
`
`35 U.S.C. § 314 ........................................................................................... 17, 29, 30
`
`35 U.S.C. § 316 ........................................................................................................ 31
`
`35 U.S.C. § 325 ................................................................................................... 7, 17
`
`ii
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`Patent Owner’s Preliminary Response
`IPR2023-00104 (U.S. Patent No. 6,959,293)
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`Other Authorities
`
`Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012) .................................... 17
`
`U.S. PATENT & TRADEMARK OFFICE, PATENT TRIAL AND APPEAL BOARD
`CONSOLIDATED TRIAL PRACTICE GUIDE (Nov. 2019), available
`at https://www.uspto.gov/TrialPracticeGuideConsolidated ................................ 30
`
`Regulations
`
`37 C.F.R. § 1.104 ................................................................................................ 5, 21
`
`37 C.F.R. § 42.108 ............................................................................................ 17, 29
`
`37 C.F.R. § 42.4 ....................................................................................................... 30
`
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`iii
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`Patent Owner’s Preliminary Response
`IPR2023-00104 (U.S. Patent No. 6,959,293)
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`
`TABLE OF EXHIBITS
`
`No.
`Ex-1001
`Ex-1004
`Ex-1005
`
`Ex-1007
`
`Ex-1018
`
`Ex-1019
`Ex-1021
`
`No.
`Ex-2001
`Ex-2002
`Ex-2003
`
`Ex-2004
`
`Ex-2005
`
`Ex-2006
`
`Ex-2007
`
`Ex-2008
`
`Ex-2009
`
`Ex-2010
`
`Ex-2011
`
`Petitioner’s Exhibits Cited in this Preliminary Response
`Exhibit
`U.S. Patent No. 6,959,293
`Prosecution History of U.S. Patent No. 6,959,293
`Samsung Elecs. Co., Ltd. v. Image Processing Technologies LLC,
`Case No. IPR2017-00336, Paper 38 (May 9, 2018)
`Ex parte Image Processing Techs, LLC, Reexamination Control
`No. 90/014,056 (P.T.A.B. Aug. 29, 2019) (Decision on Appeal)
`WIPO Patent Publication WO 99/36893 (“Pirim”) [cites to Ex-
`1018 refer to the original page number at the bottom center of the
`page]
`U.S. Patent No. 5,546,475 (“Bolle”)
`PCT/EP98/05383 (document incorporated by reference in Pirim)
`Patent Owner’s Exhibits
`
`Exhibit
`Ex Parte Reexamination Certificate for U.S. Patent No. 6,959,293
`International Publication No. WO 00/11610
`Request for Ex Parte Reexamination of U.S. Patent No. 6,959,293,
`Reexamination Control No. 90/014,056 (Dec. 15, 2017)
`Decision Granting Ex Parte Reexamination, Reexamination
`Control No. 90/014,056 (Jan. 26, 2018)
`Non-Final Office Action, Reexamination Control No. 90/014,056
`(Mar. 26, 2018)
`Reply to Non-Final Office Action, Reexamination Control
`No. 90/014,056 (June 26, 2018)
`Information Disclosure Statement Under 37 C.F.R. 1.555,
`Reexamination Control No. 90/014,056 (July 5, 2018)
`Final Office Action, Reexamination Control No. 90/014,056
`(Sept. 7, 2018)
`Notice of Appeal, Reexamination Control No. 90/014,056
`(Dec. 15, 2017)
`Patent Owner’s Appeal Brief, Reexamination Control
`No. 90/014,056 (Jan. 7, 2019)
`Examiner’s Answer to Patent Owner’s Appeal Brief,
`Reexamination Control No. 90/014,056 (Feb. 12, 2019)
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`
`Ex-2012
`
`Ex-2013
`
`Ex-2014
`
`Ex-2015
`
`Ex-2016
`
`Ex-2017
`
`
`
`
`
`Howard Jay Siegel et al., PACM: A Partitionable SIMD/MIMD
`System for Image Processing and Pattern Recognition, 30 IEEE
`TRANS. ON COMPUTERS 934–47 (1981)
`Email from Patrice Ponce, Project Assistant at O’Melveny &
`Myers, counsel for Petitioners, to Michael D. Karson, et al.,
`counsel for Patent Owner (Oct. 25, 2022)
`Letter from Kathlene Ingham, Director of Licensing for General
`Patent Corporation, the licensing agent for Image Processing
`Technologies LLC, to Bon-Joon Koo, Vice Chairman and CEO,
`LG Electronics (Mar. 25, 2015)
`Letter from Michael E. Shanahan, Vice President & General
`Counsel of General Patent Corporation, the licensing agent for
`Image Processing Technologies LLC, to Hanbitt (Sunny) Joo,
`Manager IP Litigation Team, LG Electronics (Mar. 29, 2018)
`Order, Image Processing Technologies, LLC v. LG Electronics,
`Inc., and LG Electronics USA, Inc., No. 2-22-cv-00077 (E.D. Tex.
`Dec. 15, 2022), ECF No. 41
`Docket Control Order, Image Processing Technologies, LLC v. LG
`Electronics, Inc., and LG Electronics USA, Inc.,
`No. 2-22-cv-00077 (E.D. Tex. Aug. 9, 2022), ECF No. 31
`
`v
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`STATEMENT OF MATERIAL FACTS IN DISPUTE
`
`Petitioners LG Electronics Inc. and LG Electronics USA, Inc. (collectively,
`
`“Petitioners” or “LGE”) did not submit a specific articulated statement of material
`
`facts in their Petition. Accordingly, no response is required under 37 C.F.R.
`
`§ 42.23(a), and no facts are admitted.
`
`
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`1
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`Patent Owner’s Preliminary Response
`IPR2023-00104 (U.S. Patent No. 6,959,293)
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`I.
`
`INTRODUCTION
`
`The Board should deny institution of Inter Partes Review (“IPR”) of claim 1
`
`of U.S. Patent No. 6,959,293 (“the ’293 Patent”). Petitioners’ challenge is
`
`duplicative of prior challenges to claim 1 of the ’293 Patent, repackaging and
`
`recycling art and arguments that the United States Patent & Trademark Office
`
`(“USPTO”) and this Board have repeatedly considered and rejected. As a result, and
`
`consistent with its prior decisions, the Board should deny the Petition.
`
`The USPTO has scrutinized claim 1 of the ’293 Patent three times, finding it
`
`patentable each and every time.:
`
`1. The USPTO issued the ’293 Patent following original examination.
`2. This Board confirmed the validity of claim 1 of the ’293 Patent in a
`Final Written Decision issued on May 9, 2018 in Samsung Elecs. Co. v.
`Image Processing Techs. LLC, IPR2017-00336 (“the ’336 IPR”).1
`(Ex-1005 at 75.)
`3. Most recently, this Board again confirmed the patentability of claim 1
`when it reversed an Examiner’s decision to reject claim 1 during Ex
`Parte Reexamination No. 90/014,056 (“the ’056 EPR”). (Ex-1007
`at 22.) The USPTO subsequently issued an Ex Parte Reexamination
`Certificate on January 27, 2020. (Ex-2001).
`
`
`1 The Board also denied institution of a second IPR regarding the ’293 Patent.
`
`Samsung Elecs. Co., et al. v.
`
`Image Processing Techs. LLC, Case
`
`No. IPR2017-01189, Paper 9 at 27 (P.T.A.B. Aug. 18, 2017) (“the ’1189 IPR”).
`
`Claim 2 (among others) was at issue in the ’1189 IPR & is dependent upon claim 1.
`
`2
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`Patent Owner’s Preliminary Response
`IPR2023-00104 (U.S. Patent No. 6,959,293)
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`Simply put, claim 1 of the ’293 Patent has been repeatedly examined and
`
`repeatedly confirmed as valid and patentable.
`
`Moreover, the Petition is duplicative of previous challenges to claim 1 of the
`
`’293 Patent. Petitioners rely on the same, or substantially the same, art and
`
`arguments that the USPTO and this Board have previously rejected numerous times.
`
`Petitioners premise Grounds 1 and 2 of their Petition on WIPO International
`
`Publication No. WO 99/36893 (“Pirim,” Ex-1018). (E.g., Paper No. 1 at 3.) But the
`
`Pirim reference has been considered by the USPTO and this Board each and every
`
`time the ’293 Patent has been scrutinized.
`
`
`
`
`
`
`
`Pirim appears on the face of the ’293 Patent as having been considered
`by the Examiner. (Ex-1001 at 1 (field [56]).)
`
`Pirim was central to the Samsung entities’ (“Samsung”) attack on the
`validity of claim 1 of the ’293 Patent that this Board considered and
`rejected in the ’336 IPR. (See, e.g., Ex-1005 at 48–50)
`
`Pirim was central to the Examiner’s rejection that this Board
`considered, rejected, and reversed in the ’056 EPR. (See, e.g., Ex-1007
`at 5, 7, 9–12, 17–18, 21–22.)
`
`Seemingly recognizing that presenting the same argument for a fourth time
`
`is unlikely to persuade this Board, Petitioners point to another reference, PCT
`
`Application Serial No. PCT/EP98/05383 (“Pirim 2”, Ex-1021). (E.g., Paper No. 1
`
`at 4.) But Pirim 2 was also considered by the USPTO during original prosecution
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`3
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`IPR2023-00104 (U.S. Patent No. 6,959,293)
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`of
`
`the
`
`’293 Patent
`
`through
`
`the
`
`associated
`
`International Publication
`
`No. WO 00/11610 (Ex-2002):
`
`
`
`(Ex-1001 at 1 (annotated); Ex-2002 at 1 (annotated).) Indeed, Petitioners recognize,
`
`as they must, that both Pirim and Pirim 2 were of record during original prosecution.
`
`(Paper No. 1 at 4.) So, Petitioners expend considerable effort arguing that Pirim 2
`
`is incorporated by reference in its entirety into Pirim such that all of the teachings of
`
`Pirim 2 can be considered with those of Pirim in support of Petitioners’ anticipation
`
`(Ground 1) or single-reference-obviousness (Ground 2) arguments. (E.g., Paper
`
`No. 1 at 12–17.) Setting aside the extent to which Pirim 2 is incorporated by
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`4
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`IPR2023-00104 (U.S. Patent No. 6,959,293)
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`reference into Pirim,2 the simple fact of the matter is that the USPTO has already
`
`considered the teachings of Pirim 2 and found it insufficient to render claim 1 of the
`
`’293 Patent invalid. Nor does the extent of any incorporation matter, based on the
`
`Grounds presented in the Petition. For example, if either (i) Pirim 2 is not
`
`incorporated into Pirim at all, or (ii) the portion of Pirim 2 upon which Petitioners
`
`rely is not incorporated into Pirim, then it is improper to consider Pirim 2 under an
`
`anticipation (Ground 1) or single-reference-obviousness (Ground 2) theory. If, on
`
`the other hand, Pirim 2 is incorporated into Pirim either (i) in its entirety, or (ii) with
`
`respect to the portion of Pirim 2 upon which Petitioners rely, then that portion of
`
`Pirim 2 is—and has always been—“effectively part of [Pirim] as if it were explicitly
`
`contained therein,” Telemec Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316,
`
`1329 (Fed. Cir. 2001), so both the USPTO and this Board have already considered
`
`Pirim 2, and concluded that claim 1 is patentable. See also 37 C.F.R. § 1.104(a)(1)
`
`(“On taking up an application for examination or a patent in a reexamination
`
`proceeding, the examiner shall make a thorough study thereof and shall make a
`
`thorough investigation of the available prior art relating to the subject matter of the
`
`
`2 A document incorporated by reference may be incorporated to a limited extent,
`
`e.g., Zenon Env’t, Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378 (Fed. Cir. 2007), or
`
`in its entirety, Paice LLC v. Ford Motor Co., 881 F.3d 894, 907 (Fed. Cir. 2018).
`
`5
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`claimed invention.” (emphasis added)). Either way, there is nothing new in
`
`Petitioners’ arguments that warrants institution of Inter Partes Review here.
`
`Finally, Petitioners point to the combination of Pirim (including the allegedly
`
`incorporated Pirim 2) and U.S. Patent No. 5,546,475 (“Bolle,” Ex-1019) in an effort
`
`to argue that Claim 1 of the ’293 Patent is obvious (Ground 3). (Paper No. 1 at 3, 8,
`
`56–75.) Bolle, however, simply represents the latest—but far from the greatest—art
`
`to allegedly disclose that which the USPTO and this Board have repeatedly
`
`determined Pirim lacks.
`
`In the ’336 IPR, Samsung asserted that the deficiencies in Pirim could be
`
`satisfied by the teachings of U.S. Patent No. 5,546,125 (“Tomitaka”). (Ex-1005
`
`at 9–10, 43–50.) This Board concluded that Samsung failed to demonstrate “that
`
`Pirim, in combination with Tomitaka, teaches or suggests at least two histogram
`
`calculation units being configured to form a histogram representative of at least one
`
`parameter, as required by claim 1.” (Ex-1005 at 50.) In the ’056 EPR, the Examiner
`
`asserted that the deficiencies in Pirim could be satisfied by the teachings of either
`
`(i) Howard Jay Siegel et al., PACM: A Partitionable SIMD/MIMD System for Image
`
`Processing and Pattern Recognition, 30 IEEE TRANS. ON COMPUTERS 934–45
`
`(1981) (“Siegel”) (Ex-2012), or (ii) U.S. Patent No. 6,118,895 (“Hirota”). (See, e.g.,
`
`Ex-1007 at 5.) This Board reversed the Examiner’s rejections and found claim 1 of
`
`the ’293 Patent not invalid as obvious over (i) Pirim and Siegel (id. at 17), or
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`Patent Owner’s Preliminary Response
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`(ii) Pirim and Hirota (id. at 21). And, on this score, it is important to note that
`
`Petitioners’ counsel in the present Petition is the same law firm that represented
`
`Samsung in its numerous unsuccessful attempts to invalidate claim 1 of the
`
`’293 Patent in the ’336 IPR and the ’056 EPR. Simply put, Bolle (Ex-1019) is
`
`cumulative (if not further afield) of the various other secondary references
`
`previously asserted against claim 1 of the ’293 Patent and found wanting.
`
`Petitioners’ present challenge is a mere rehash and recycling of art and arguments
`
`previously considered and rejected by the USPTO.
`
`Nothing in the Petition demonstrates any reasonable likelihood of a different
`
`outcome from the many other unsuccessful challenges to claim 1 of the ’293 Patent.
`
`Pursuant to 35 U.S.C. § 325(d), the Board should utilize its discretion to deny
`
`institution because “the same or substantially the same prior art or arguments were
`
`presented previously in another proceeding before the Office.” Cultec, Inc. v.
`
`StormTech LLC, Case No. IPR2017-00777, Paper No. 7, 2017 WL 3635100, at *1,
`
`3, 5 (P.T.A.B. Aug. 22, 2017).
`
`II. BACKGROUND
`A. Overview of the ’293 Patent
`
`The ’293 Patent is directed to a different invention than the Petition’s cited
`
`prior art references. The ’293 Patent discloses a visual perception processor
`
`comprised of histogram calculation units. (Ex-1001 at 1 (57), Abstract).) The
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`IPR2023-00104 (U.S. Patent No. 6,959,293)
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`baseline embodiment taught by the ’293 Patent is the “passive histogram calculation
`
`unit[s],” as shown in Figure 3 of the patent:
`
`
`
`(Id. at Fig. 3 (annotated).) The passive histogram calculation unit receives input
`
`signal DATA(A) (lower left hand side), with “A” representing a pixel parameter
`
`such as speed (V) or direction (DI). (Id. at 7:30–34, 7:48–51, 8:19–24.) Analysis
`
`memory 100 (red) contains a number (n) of addresses (d) equal to the number of
`
`possible levels of the parameter A that must be distinguished. (Id. at 8:45–50.) For
`
`each frame, each enabled pixel for which the value of parameter A has a value d will
`
`increment the address of row d of memory 100 by 1, representing the address in
`
`which the value of parameter A is stored. (Id. at 8:53–64.) Whether a pixel is
`
`enabled or not depends on classifier 101 and time coincidences unit 102, as described
`
`below.
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`8
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`The classifier 101 (blue) contains a register 101r capable of storing certain
`
`possible level values (d) for the levels of parameter A. For each pixel, the classifier
`
`provides a binary output “1” if the value of parameter A for the pixel has a level
`
`corresponding to the register 101r. (Id. at 9:28–34.) The output of classifier 101 is
`
`connected to bus 111. (Id.) Thus, “the classifier acts as a classification function fA
`
`which is the relationship that it establishes between the data DATA(A) that it
`
`receives and the output binary value (101s)A that it produced, via the memory of the
`
`classifier.” (Id. at 11:49–52.)
`
`Time coincidences unit 102 (purple) includes at least one register 102r. The
`
`unit receives for each pixel the output values of the classifiers 101 from the various
`
`histogram calculation units 1 connected to bus 111 (yellow). (Id. at 9:37–50.) The
`
`time coincidences unit, for each pixel, compares the output values received from bus
`
`111 to values stored in register 102r, and generates an enable signal 102s equal to 1
`
`when there is a coincidence between the register values and the data received from
`
`the bus. (Id. at 9:42–48.)
`
`If the pixel is enabled (e.g., 102s signal equal to 1), the histogram memory
`
`100 is incremented for value d of parameter A. (Id. at 9:7–13, 11:45) (“histogram
`
`memory 100”). Also, the test unit 103 typically receives the same signal and
`
`updates, in parallel with the formation of the histogram, and may calculate key
`
`features such as minimum (MIN), maximum (MAX), number of points (NBPTS),
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`position (POSRMAX) of the maximum of the histogram, and number of points
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`(RMAX) at the maximum of the histogram. (Id. at 10:7–13.)
`
`Although Petitioner points to disclosures of Pirim and/or Pirim 2 that are
`
`purportedly similar to the passive histogram calculation unit of Figure 3 of the
`
`’293 Patent, the ’293 Patent specifically points out that it is “desirable to provide an
`
`improved visual perception processor, and methods, as well as, in preferred
`
`embodiments, the auto-adapting, anticipation, and learning functions.” (Ex-1001
`
`at 1:49–53 (emphasis added).) For example, the ’293 Patent, unlike the prior Pirim
`
`references, teaches a “self-adapting histogram calculation unit[s] according to the
`
`invention.” (Id. at 4:45–49.) Figure 4, which is included on the face of the patent,
`
`shows an exemplary embodiment of a self-adapting histogram calculation unit:
`
`(Id. at Fig. 4 (annotated).) As taught by the ’293 Patent:
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`10
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`Patent Owner’s Preliminary Response
`IPR2023-00104 (U.S. Patent No. 6,959,293)
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`According to one embodiment of the present invention, a self-adapting
`histogram processing unit 1 is provided. In this embodiment, the
`content of the memory of the classifier 101 is automatically
`updated. . . . To fulfill the self-adapting function, i.e. real time updating
`of the classifier 101, the histogram calculation unit 1 of FIG. 3 is
`perfected in accordance with FIG. 4. Instead of having a simple
`register 101r written outside the system, the classifier 101 has an
`addressable memory . . . . The memory of the classifier 101 is
`controlled by the system, and its content is modifiable.
`
`(Id. at 11:14–31 (emphases added).)
`
`Another teaching of the ’293 Patent not disclosed in either Pirim or Pirim 2 is
`
`the polyvalent histogram unit. As explained further below, polyvalent histogram
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`units can be programmed to process more than one parameter, and may operate in a
`
`matrix whereby each polyvalent histogram unit has access to all parameter data for
`
`maximum flexibility of operation. (Id. at 21:18–36, 42–47, Fig. 32.)
`
`B.
`
`The Numerous Unsuccessful Validity Challenges to Claim 1 of the
`’293 Patent
`
`Claim 1 of the ’293 Patent has been subject to numerous attacks and
`
`scrutinized multiple times by the USPTO, including during original examination,
`
`Inter Partes Review, and Ex Parte Reexamination. Claim 1 has withstood scrutiny
`
`and the USPTO has confirmed its validity and patentability time and time again.
`
`1. Original prosecution of claim 1 of the ’293 Patent
`
`During prosecution of the application for the ’293 Patent, Applicant disclosed
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`Pirim and Pirim 2 (i.e. International Publication No. WO 00/11610), the two Pirim
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`11
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`Patent Owner’s Preliminary Response
`IPR2023-00104 (U.S. Patent No. 6,959,293)
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`references that Petitioners rely upon as prior art in their Petition, as well as numerous
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`other patents and publications. (Ex-1004 at 244–45.) Petitioners do not contest that
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`the Examiner considered both references (see Paper No. 1 at 4), as well as other
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`similar Pirim patents and publications, during the original prosecution of the
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`’293 Patent.
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`(Ex-1004 at 244 (annotated).)
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`
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`
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`(Id. at 245 (annotated).) Despite reviewing and considering these prior art
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`references, the Examiner allowed claim 1 of the ’293 Patent to issue. (See Ex-1001
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`at 1 [56] (references cited).)
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`Patent Owner’s Preliminary Response
`IPR2023-00104 (U.S. Patent No. 6,959,293)
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`1.
`Inter Partes Review of Claim 1 of the ’293 Patent
`In 2016, Samsung3 filed a petition for Inter Partes Review of claim 1 of the
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`’293 Patent. See Samsung Elecs. Co., et al. v. Image Processing Techs. LLC, Case
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`No. IPR2017-00336, Paper No. 2 (P.T.A.B. Nov. 29, 2016). In the ’336 IPR,
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`Samsung challenged the validity of claim 1 (among other claims) of the ’293 Patent
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`on multiple grounds, including that claim 1 was obvious under 35 U.S.C. § 103 over
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`Pirim—the same primary reference upon which Petitioners rely in the present
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`Petition—in combination with Tomitaka.
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`On May 9, 2018, the Board rejected all of Samsung’s challenges to claim 1 of
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`the ’293 Patent, concluding in its Final Written Decision, in part:
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`we determine that Petitioner has not demonstrated sufficiently that
`Pirim, in combination with Tomitaka, teaches or suggests at least two
`histogram calculation units being configured to form a histogram
`representative of at least one parameter, as required by claim 1. As
`such, Petitioner fails to meet its burden to demonstrate by a
`preponderance of the evidence that claim 1 is unpatentable under
`§ 103(a) as obvious over Pirim in combination with Tomitaka.
`
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`3 The law firm of O’Melveny & Myers LLP represented Samsung in both the
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`’336 IPR and the ’056 EPR, the same counsel that now represents Petitioners in yet
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`another proverbial “bite at the apple.”
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`Patent Owner’s Preliminary Response
`IPR2023-00104 (U.S. Patent No. 6,959,293)
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`(Ex-1005 at 50 (emphases added).) The Board also rejected Samsung’s other
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`challenges4 to claim 1 of the ’293 Patent. (Id. at 63–65, 68–72.) In doing so, the
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`Board confirmed the validity of claim 1 of the ’293 Patent, ordering “that claims 1,
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`18, 19, and 29 of the ’293 patent have not been shown to be unpatentable.” (Ex-1005
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`at 76 (emphasis in original).)
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`2.
`Ex Parte Reexamination of Claim 1 of the ’293 Patent
`Apparently unsatisfied with the Board’s decision in the ’336 IPR, Samsung
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`filed a Request for Ex Parte Reexamination of claim 1 of the ’293 Patent.
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`(Ex-2003). Undeterred by the Board’s decision in the ’336 IPR, Samsung continued
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`to assert Pirim as its primary reference, but this time, sought to combine Pirim with
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`(i) Siegel, or (ii) Hirota.
`
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`4 Samsung also challenged claim 1 of the ’293 Patent as obvious under § 103(a)
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`based on the combination of (i) Robert Barclay Rogers, Real-Time Video Filtering
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`with Bit-Slide Microprogrammable Processors, Ph.D. Dissertation, New Mexico
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`State University (Dec. 1978) (“Rogers”) with Alton L. Gilbert et al., A Real-Time
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`Video Tracking System, PAMI-w, No. 1 IEEE TRANSACTIONS ON PATTERN
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`ANALYSIS AND MACHINE INTELLIGENCE, 47–56 (1980) (“Gilbert”); and
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`(ii) Tomitaka and Rogers. The Board concluded that such combinations did not
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`invalidate claim 1 of the ’293 Patent.
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`14
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`Patent Owner’s Preliminary Response
`IPR2023-00104 (U.S. Patent No. 6,959,293)
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`The USPTO granted the Request for Ex Parte Reexamination and rejected
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`claim 1 of the ’293 Patent. (Ex-2004; Ex-2005.) Thereafter, Patent Owner disclosed
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`to the Examiner the prior art cited by Defendants in the then-co-pending litigation
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`involving claim 1 of the ’293 Patent (constituting scores of references and invalidity
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`claim charts), and also presented arguments in response to the Examiner’s rejections.
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`(Ex-2006; Ex-2007.) Eventually, on September 7, 2018, the Examiner issued a Final
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`Rejection as to claim 1 of the ’293 Patent, relying on Siegel and Hirota to address
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`the deficiencies of Pirim failing to disclose two histogram calculation units treating
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`the same parameter. (Ex-2008; see also Ex-1007 at 5).
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`Patent owner appealed the Final Rejection. (Ex-2009.) In its Appeal Brief,
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`Patent Owner explained the errors in the Examiner’s argument and logic for his Final
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`Rejection, and once again detailed the differences between claim 1 of the ’293 Patent
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`and Pirim. (Ex-2010.) For example, Patent Owner explained that Pirim (and
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`proposed combinations) lacked the required “at least two histograms calculating
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`units for the treatment of the at least one parameter” and lacked any logical
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`motivation to combine. (Id.) Moreover, notwithstanding Petitioner’s present
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`suggestions otherwise, both Patent Owner and Examiner expressly discussed the
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`disclosure of Pirim 2 (e.g., whether it disclosed a generic image processing system)
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`in their respective Appeal Briefs, and Patent Owner even quoted the very
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`Patent Owner’s Preliminary Response
`IPR2023-00104 (U.S. Patent No. 6,959,293)
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`“incorporated herein by reference language” Petitioner now claims the Board
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`previously overlooked and did not consider. (Ex-2010 at 25; Ex-2011 at 25.)
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`The Board agreed with Patent Owner, reversing the Examiner’s decision to
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`reject Claim 1 of the ’293 Patent.
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`
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`(Ex-1007 at 22.) The Board explained in detail that “although Pirim’s Figure 12
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`shows histogram calculation units 24 to 29 that each treat their respective
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`parameters, they are not configured to each form a histogram representative of at
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`least one common parameter consistent with the earlier panel’s construction noted
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`above.” (Id. at 9 (emphasis in original).) The Board rejected Examiner’s arguments
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`to combine Pirim with Siegel, stating “the proposed combination—not Pirim itself—
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`would use a classification signal from a different pixel to decide whether to include
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`a current pixel in a histogram, which is an anomalous result at best.” (Id. at 12
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`(emphases in original).) The Board also rejected Examiner’s argument to combine
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`16
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`Patent Owner’s Preliminary Response
`IPR2023-00104 (U.S. Patent No. 6,959,293)
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`Pirim with Hirota, and expressly rejected Examiner’s suggestion to configure two of
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`Pirim’s existing histogram calculation units to treat the same parameter:
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`Nor do we find availing the Examiner's conclusion that it would
`have been obvious to configure at least two of Pirim's histogram
`calculation units to treat one parameter as the Examiner proposes to
`increase “flexibility” even assuming, without deciding, that Hirota's
`memories 202 and 204 in Figures 4 and 13 are “histogram calculation
`units” consistent with the Examiner's mapping. . . .
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`. . . . But to say that it would have been obvious to somehow use two or
`more “copies” of Hirota’s system in Figure 13 to form two or more
`histograms of each parameter in Pirim’s system as the Examiner
`indicates (Final Act. 17) strains reasonable limits on this record. . . .
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`. . . . To the extent that the Examiner concludes that modifying one or
`more of Pirim' s histogram formation blocks 24 to 29 to somehow treat
`a color parameter that is not even contemplated by Pirim, either by
`(1) including a dual-memory arrangement such as that in Hirota in one
`or more of Pirim's histogram formation blocks; (2) somehow modifying
`two or more those blocks to treat the same parameter; or even
`(3) adding another such block to the existing six in Pirim (see Ans. 60–
`61), there is no persuasive evidence on this record to substantiate such
`a conclusion.
`(Id. at 18–20.)
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`III. LEGAL STANDARDS
`A.
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`Standard For Granting An Inter Partes Review
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`The Board may only grant a petition for Inter Partes Review where “the
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`information presented in the petition . . . shows that there is a reasonable likelihood
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`that the petitioner would prevail with respect to at least 1 of the claims challenged
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`in the petition.” 35 U.S.C. § 314(a); 37 C.F.R. § 42.108(c). The Petitioners bear the
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`Patent Owner’s Preliminary Response
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`burden of showing that this statutory threshold is met. See Trial Practice Guide,
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`77 Fed. Reg. 48,756 (Aug. 14, 2012).
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`B.
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`Standard to Deny Institution Under Section 325(d)
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`Pursuant to 35 U.S.C. § 325(d), “the Director may take into account whether,
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`and reject the petition or request because, the same or substantially the same prior
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`art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). In
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`evaluating section 325(d), the Board considers two factors: “(1) whether the same
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`or substantially the same art previously was presented to the Office or whether the
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`same or substantially the same arguments previously were presented to the Office;
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`and (2) if either condition of first part of the framework is satisfied, whether the
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`petitioner has demonstrated that the Office erred in a manner material to the
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`patentability of challenged claims.”
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` Advanced Bionics, LLC v. MED-EL
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`Elektromedizinische Geräte GmbH, Case No. IPR2019-01469, Paper No. 6,
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`2020 WL 740292, at *3 (P.T.A.B. Feb. 13, 2020). “If a conditio
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