Takeaway: In applying the prior art to the challenged claims, the parties should take into account the knowledge of one of ordinary skill in the art, even when the instituted ground is one of anticipation.

In its Final Written Decision, the Board found that Petitioner had proven by a preponderance of the evidence that claims 1-5, 22, and 34 of the ’003 patent are unpatentable. The ’003 patent generally “describes generating and displaying stereoscopic panoramic images by using a rotating camera.”

Turning to claim construction, the Board noted that a claim term “in an unexpired patent shall be given its broadest reasonable construction in light of the specification of the patent in which it appears.” Terms are given “their ordinary and customary meaning as would be understood by one of ordinary skill in the art.”

The Board construed one limitation, “stereoscopic panoramic mosaic image pair providing a stereoscopic image of the scene as recorded over the path,” recited in both of the challenged independent claims. Focusing on “stereoscopic image” and “image pair,” the Board had accepted Petitioner’s definition in the Decision on Institution, defining the terms as meaning “two images of a scene recorded from slightly displaced positions, which, when viewed simultaneously by the respective eyes, provides a perception of depth.”  Patent Owner argued for a broader construction, specifically that the term “is not by itself limited to an image that provides a perception of depth to a person.”  Petitioner’s expert did not disagree, and the Board accordingly revised its construction of “stereoscopic image” to not require viewing the image or human depth perception.

The Board also discussed at length the distinction between generating stereoscopic panoramic images and displaying those images to an observer so that they could be viewed stereoscopically. After reviewing the ’003 patent specification and a related patent, the Board found that the challenged claims in the instant proceeding were drawn to the generation of the stereoscopic images rather than the display of those images.  Thus, the Board held that the term “providing a stereoscopic image” means “providing an image pair with certain properties, so that the pair provides depth information.”

Next, the Board considered Patent owner’s argument that “stereoscopic image” requires that the images be displaced by approximately the distance between human eyes to provide a perception of depth. The Board, however, agreed with Petitioner that the recited “selected displacement” may not correspond to the distance between human eyes.  Thus, the Board concluded that the above limitation requires “at least a pair of mosaic image strips to be recorded from different recording perspectives of a scene, with multiple pairs forming a panoramic mosaic. The pair of image strips must have the physical structure to provide depth information, either as a perception of depth if aligned or similarly processed and viewed with an appropriate display mechanism, or as distance or height information after possible processing in a computer or robot.”

Turning to the patentability of the challenged claims, trial was instituted based on anticipation of claims 1, 2, 4, 5, and 34 by Kawakita or Ishiguro, anticipation of claims 1–5, 22, and 34 by Asahi, and obviousness of claim 22 based on Kawakita or Ishiguro. Patent Owner argued in its Response that Kawakita, Ishiguro, and Asahi does not disclose all the limitations of claim 1, and that claim 1 was representative of all the challenged claims.

With respect to Kawakita, Patent Owner argued that the reference does not disclose “a stereoscopic panoramic mosaic image pair that provides a perception of depth.” The Board was not persuaded, however, and found that Patent Owner’s arguments were inconsistent with the disclosure of Kawakita and that Patent Owner’s declarant’s opinion was based on an incorrect premise relating to Kawakita.

Thus, the Board found claim 1 unpatentable as anticipated by Kawakita. Because claim 1 was representative of all the challenged claims and only claim 1 was argued by Patent Owner, the Board found the remaining challenged claims (2, 4, 5, 22, or 34) unpatentable as anticipated by Kawakita.

With respect to Asahi, Patent Owner similarly confined its arguments to only challenged claim 1, which it argued was representative. In particular, Patent Owner argued that Asahi does not disclose images recorded from a “slightly displaced” position and could not provide any perception of depth.  The Board noted that according to its claim construction, the claims do not quantify “slightly displaced” and require only “a selected displacement.”  The Board also noted that the ’003 patent discloses different applications that imply the distance need not be a human inter-ocular baseline distance.  After further discussing the parties’ competing expert declarations, the Board concluded that under either the broad construction or the narrow construction argued by Patent Owner, Asahi discloses every limitation recited in claim 1.  Thus, as with Kawakita, the Board found claims 1–5, 22, and 34 anticipated by Asahi.

Regarding Ishiguro, Patent Owner argued that the reference does not disclose the stereoscopic image pair that provides a perception of depth, but instead discloses a robot that calculates depth or range. However, the Board found Patent Owner’s arguments to be inconsistent with the construction of the claim terms as adopted by the Board and that the arguments failed to take into account the knowledge of one of ordinary skill in the art.  Thus, the Board agreed with Petitioner and found claim 1 unpatentable as anticipated by Ishiguro.  Once again, claims 2, 4, 5, 22, and 34 fell together with claim 1.

Patent Owner also argued that the English translations of Kawakita and Asahi relied upon by Petitioner were contradicted by translations that Patent Owner provided. The Board did not find this argument persuasive, but rather found that the alleged differences in the translations were not material and that Patent Owner’s translations do not “contradict the thrust” of Petitioner’s translations.  In addition, the Board noted that Patent Owner did not move to exclude the translations as unreliable, the translations were certified under penalty of perjury, and the Patent Owner did not seek to cross-examine the person who signed the cover pages of the translations.

Finally, the Board addressed the Motions to Exclude Evidence. Petitioner moved to exclude the competing English translations filed by Patent Owner based on relevancy and as beyond the scope of Petitioner’s expert testimony.  Patent Owner argued the translations were relevant to point out inconsistencies in Petitioner’s translations and were within the scope of testimony because Petitioner’s expert relied upon the allegedly inconsistent translations.  The Board found the inconsistencies immaterial but that they did respond to Petitioner’s expert testimony.  Thus, the Motion was denied.

Patent Owner moved to exclude a Wikipedia article and certain paragraphs of Petitioner’s expert’s second declaration and portions of the Petitioner’s Reply for relying upon the Wikipedia evidence. Patent Owner also moved to exclude other portions of Petitioner’s expert’s second declaration as not being responsive to issues raised for the first time by Patent Owner.

With respect to the Wikipedia article, the Board indicated that it relied upon, to a minor extent, only one portion of the article. Thus, it dismissed as moot Patent Owner’s Motion as it pertained to the portions of the article not relied upon by the Board.  With respect to the portion of the article relied upon, the Board found that Petitioner provided sufficient evidence and made both declarants of the alleged hearsay available for cross-examination, thereby addressing some of the authenticity and hearsay concerns.  However, the Board excluded some passages in Petitioner’s second declaration that cited to the Wikipedia article on hearsay grounds.  Finally, with respect to Patent Owner’s arguments regarding the scope of Petitioner’s evidence in its Reply, the Board held such arguments – albeit unpersuasive – to be improper in a motion to exclude, which should address admissibility of evidence.

Sony Corporation v. Yissum Research Development Company of the Hebrew University of Jerusalem, IPR2013-00218
Paper 53: Final Written Decision
Dated: September 22, 2014
Patent: 6,665,003 B1
Before: Sally C. Medley, Karl D. Easthom, and James B. Arpin
Written by: Easthom
Related Proceeding: IPR2013-00326