NAUGHTY DOG, INC.v.MCRO, INC.Download PDFPatent Trial and Appeal BoardMay 28, 201408942987 (P.T.A.B. May. 28, 2014) Copy Citation Trials@uspto.gov Paper 9 Tel: 571-272-7822 Entered: May 28, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ NAUGHTY DOG, INC. Petitioner v. MCRO, INC. Patent Owner _______________ Case IPR2014-00198 Patent 6,307,576 B1 _______________ Before BRIAN J. McNAMARA, RICHARD E. RICE, and JEREMY M. PLENZLER, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 37 C.F.R. § 42.108 IPR2014-00198 Patent 6,307,576 B1 2 I. INTRODUCTION A. Background Naughty Dog, Inc. (“Petitioner”) filed a petition to institute an inter partes review of claims 1-26 of U.S. Patent No. 6,307,576 B1 (“the ’576 patent”). Paper 4 (“Petition” or “Pet.”). McRO, Inc. (“Patent Owner”) filed a preliminary response. Paper 8 (“Prelim. Resp.”). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides as follows: THRESHOLD.—The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition. Petitioner contends that the challenged claims are unpatentable under 35 U.S.C. §§ 102 and 103 on the following specific grounds (Pet. 4-54): References Basis Claims challenged Peng 1 § 102 1-26 Waters 2 § 102 1-3, 7-16, 20-26 Kaneko 3 § 102 1-3, 5, 7, 8, 10, 13-16, 18, 20, 21, 23, 26 1 Antai Peng, Speech Expression Modeling and Synthesis (Ph.D. dissertation, Georgia Institute of Technology) (May 1996) (Ex. 1004) (“Peng”). 2 Keith Waters & Thomas M. Levergood, DECface: An Automatic Lip- Synchronization Algorithm for Synthetic, CAMBRIDGE RES. LAB. TECH REPORT SERIES (Sept. 23, 1993) (Ex. 1005) (“Waters”). 3 UK Patent Application No. GB 2231246 A, published Nov. 7, 1990 (Ex. 1006) (“Kaneko”). IPR2014-00198 Patent 6,307,576 B1 3 References Basis Claims challenged Parke 4 § 102 1-26 Peng and Waters § 103 1-26 Peng and Kaneko § 103 1-26 Peng and Parke § 103 1-26 Waters and Kaneko § 103 1-3, 5, 7-16, 18, 20-26 Waters and Parke § 103 1-26 Kaneko and Parke § 103 1-26 For the reasons given below, we deny institution on all grounds. B. Additional Proceedings Petitioner indicates that the ’576 patent is the subject of the following co- pending federal district court case filed December 4, 2012: McRO, Inc., d.b.a. Planet Blue v. Naughty Dog, Inc., Case No. 2:12-cv-10335-GW-FFM, pending in the United States District Court for the Central District of California. Pet. 1-2. Petitioner also indicates that the ’576 patent is asserted against Sony Computer Entertainment America, LLC (of which Naughty Dog is a wholly owned subsidiary) in a suit filed November 21, 2012, McRO, Inc., d.b.a. Planet Blue v. Sony Computer Entertainment America, LLC and SCE Santa Monica Studio, Inc., Case No. 1:12-cv-01514-LPS, pending in the United States District Court for the District of Delaware. Petitioner additionally indicates that the ’576 patent is asserted against Sucker Punch Productions, LLC (also a wholly owned subsidiary of Sony Computer Entertainment America, LLC) in a suit filed November 21, 4 Frederick I. Parke & Keith Waters, COMPUTER FACIAL ANIMATION (1996) (Ex. 1007) (“Parke”). IPR2014-00198 Patent 6,307,576 B1 4 2012, McRO, Inc., d.b.a. Planet Blue v. Sucker Punch Productions, LLC, Case No. 1:12-cv-01515-LPS, pending in the United States District Court for the District of Delaware. Id. at 2. In addition to this Petition, Petitioner has filed a petition (IPR2014-00197) challenging the patentability of Patent Owner’s U.S. Patent No. 6,611,278 B2 (“the ’278 patent”). Id. This decision will refer to the decision for IPR2014-00197 as “the ’197 Decision.” C. The Claimed Invention The technology of the ’576 patent is identical to that described for the related ’278 patent in the ’197 Decision. 5 The ’576 patent is titled “Method for Automatically Animating Lip Synchronization and Facial Expression of Animated Characters” and describes a set of rules that determine a stream of morph weight sets when a sequence of timed phonemes is encountered. Ex. 1002, 3:63-66. The ’576 patent explains that a “phoneme” is defined as “the smallest unit of speech, and corresponds to a single sound.” Id. at 1:34-36. A “morph weight set” is defined in the ’576 patent as “a set of values, one for each delta set, that, when applied as described, transform the neutral model to some desired state, such as speaking the ‘oo’ sound or the ‘th’ sound.” Id. at 4:38-41. The values (or morph weights) usually range from 0 to 1, and are assigned to a delta set to modify the geometry of the neutral model (i.e., a neutral mouth position). Id. at 1:63-66. Delta sets are described in the ’576 patent as the deltas of each vertex on each morph target relative to the neutral mouth position and are computed as a vector from each vertex (n) on the neutral mouth position reference to each vertex (n) on a morph target. Id. at 1:58-60. A morph target is described as a mouth 5 The ’278 patent is a continuation of the ’576 patent. IPR2014-00198 Patent 6,307,576 B1 5 position displaced relative to the neutral mouth position and corresponding to a phoneme or set of phonemes. Id. at 1:46-50. The ’576 patent explains that there is one delta set for each morph target. Id. at 1:60-61. An example sequence of timed phonemes (“the example phoneme sequence”) is illustrated in a table at column 8, lines 42-51 of the ’576 patent and a corresponding example morph weight set stream (“the example morph weight set stream”) is illustrated in a table at column 8, line 56 through column 9, line 9. The tables summarizing the example phoneme sequence and the example morph weight set stream are reproduced below. Example Phoneme Sequence Table The example phoneme sequence table includes two columns, one for time and the other for the phonemes corresponding to the times. The example phoneme sequence is a simplified example, including only the delta sets relevant to the word “hello.” IPR2014-00198 Patent 6,307,576 B1 6 Example Morph Weight Set Stream Table The example morph weight set stream table includes a column for time and a column for each delta set. A series of morph weight sets are included in the columns for the delta sets and form the morph weight set stream. The ’576 patent describes rules that determine morph weight sets based on encountered phonemes. Id. at 7:58-8:8. For example, if the phoneme “eh” is encountered, the morph weight set (0,1,0,0,0,0) is used. Id. at 7:64-66. The ’576 patent also provides examples of rules that determine the morph weight set stream as a function of phoneme sequence and times associated with the phoneme sequence. Id. at 8:9-31. For example, transition rules are applied to determine transition start and end times between phonemes as a function of the outgoing phoneme’s end time and duration and the incoming phoneme’s start time and duration. Id. at 8:9-14. IPR2014-00198 Patent 6,307,576 B1 7 The application of the rules to an incoming phoneme sequence, such as the example phoneme sequence, results in an output morph weight set stream, such as the example morph weight set stream, indicating morph targets at times corresponding to the phonemes of the incoming phoneme sequence. Id. at 7:59- 9:9. The ’576 patent explains that morph weight sets may be evaluated at times between the start and end times in the morph weight set stream by interpolation. Id. at 7:13-15. Claim 1 illustrates the claimed subject matter and is reproduced below: 1. A method for automatically animating lip synchronization and facial expression of three-dimensional characters comprising: obtaining a first set of rules that define output morph weight set stream as a function of phoneme sequence and time of said phoneme sequence; obtaining a timed data file of phonemes having a plurality of sub-sequences; generating an intermediate stream of output morph weight sets and a plurality of transition parameters between two adjacent morph weight sets by evaluating said plurality of sub-sequences against said first set of rules; generating a final stream of output morph weight sets at a desired frame rate from said intermediate stream of output morph weight sets and said plurality of transition parameters; and applying said final stream of output morph weight sets to a sequence of animated characters to produce lip syn- chronization and facial expression control of said animated characters. IPR2014-00198 Patent 6,307,576 B1 8 D. Claim Construction Consistent with the statute and the legislative history of the Leahy-Smith America Invents Act, 6 the Board will interpret claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); 37 C.F.R. § 42.100(b). Claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). An inventor may rebut that presumption by providing a definition of the term in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). 1. “phoneme sequence” The parties present the same opposing views on the construction of “phoneme sequence” as those discussed in the ’197 Decision. Petitioner and Patent Owner agree that a phoneme is the smallest unit of speech and corresponds to a single sound. Pet. 11 (quoting Ex. 1002, 1:34-36); Prelim. Resp. 9-10 (citing Ex. 1002, 1:35-37). Petitioner contends that a “phoneme sequence,” therefore, is a sequence of phonemes or units of speech. Pet. 11. Patent Owner argues that Petitioner’s proposed construction (a sequence of phonemes or units of speech) is overly broad because the use of “or” reads “phoneme” out of the phrase. Prelim. Resp. 9-10. Similar to the reasons discussed in the ’197 Decision, and for purposes of this decision, we determine that a “phoneme sequence” is a sequence of the smallest units of speech, i.e., a sequence of phonemes, which is consistent with the portions of the specification cited by Petitioner and Patent Owner. 6 Pub. L. No. 112-29, 125 Stat. 284 (2011). IPR2014-00198 Patent 6,307,576 B1 9 2. “morph weight set” The parties agree on the definition of “morph weight set” as set forth in the ’576 patent, which is the same as the definition provided in the ’278 patent and that discussed in the ’197 Decision. Pet. 11 (quoting Ex. 1002, 4:38-41); Prelim. Resp. 10 (quoting Ex. 1002, 4:38-42). Therefore, for purposes of this decision, we determine that a “morph weight set” is a set of values, one for each delta set, that, when applied as described, transform the neutral model to some desired state, as defined by the ’576 patent. See Ex. 1002, 4:38-40. 3. “first set of rules” Petitioner contends that the term “first set of rules” should be construed to mean a set of conditional statements or correspondence between an input and an output. Pet. 12. While not proposing a specific construction for this term, Patent Owner argues that the surrounding claim language expressly requires that the “first set of rules” “define output morph weight set stream as a function of a phoneme sequence and time of said phoneme sequence.” Prelim. Resp. 12. As we discuss further below, in view of the claim language, the specific definition of “first set of rules” is not material to our decision in this proceeding. Therefore, we do not construe this term separately. II. ANALYSIS A. Overview Petitioner contends that claims 1-26 of the ’576 patent are unpatentable over the prior art cited in the table above. Claims 1 and 14 are independent, with claims 2-13 depending from claim 1 and claims 15-26 depending from claim 14. In support of the proposed challenges to these claims, Petitioner provides testimony from Joseph Marks, Ph.D. (Ex. 1001; the “Marks Declaration”), which is similar to IPR2014-00198 Patent 6,307,576 B1 10 the testimony provided in IPR2014-00197. B. Proposed Ground of Anticipation over Peng (Ground 1) 1. Overview of Peng Peng is a Ph.D. dissertation that addresses mapping phonemes to synthetic facial images. Ex. 1004, x. The facial expression modeling in Peng is based on the Facial Action Coding System (FACS). Id. at 14. FACS was developed prior to Peng with the purpose of finding a mapping from speech phonemes to realistic facial expressions. Id. FACS defines 46 action units (AUs) that describe facial expressions. Id. at 15. Peng utilizes 11 AUs focusing on lower face actions for facial expression modeling, which are summarized in Table 3-1, reproduced below. Id. at 15-16. Table 3-1 from Peng summarizes the AUs associated with facial expression modeling, identifies the description of the action group (vertical, horizontal, oblique, orbital, misc.) of the AUs, and provides a description of the facial feature associated with each AU (e.g., raise upper lip). Peng discusses characterizing IPR2014-00198 Patent 6,307,576 B1 11 these AUs as vectors and applying expression weight vectors to the AU vectors to construct a desired facial expression. Id. at 16-18. Peng discusses a key-frame animation technique where a text string is converted to a stream of phonemes and their corresponding synthetic facial image frames (key-frames). Id. at 52. These key-frames are determined based on the AUs and weight vectors. Id. at 48. Peng explains that interpolation can be used to smooth the transition between key-frames. Id. at 52-54. Peng additionally discusses a phoneme parsing scheme to address differences in phoneme appearance based on where the phoneme appears in a word or sentence. Id. at 55- 56. 2. Analysis Petitioner contends that Peng discloses the limitations of claims 1-26. Pet. 14, 22-53. Similar to claim 1 of the ’278 patent, claim 1 of the ’576 patent recites “obtaining a first set of rules that define output morph weight set stream as a function of phoneme sequence and time of said phoneme sequence” (“limitation 1(a)”). Similar to claim 1, claim 14 of the ’576 patent recites “said first set of rules defining output morph weight set stream as a function of phoneme sequence and time of said phoneme sequence” and Petitioner’s contentions regarding this limitation in claim 14 are the same as those presented regarding claim 1. See Pet. 14, 22, 38; Ex. 1001, 14-17, 61-62. For simplicity, the challenge will be discussed with respect to claim 1. Petitioner presents the same contentions regarding limitation 1(a) as those discussed in the ’197 Decision. As noted above, Petitioner contends that the claimed first set of rules requires “a set of conditional statements or correspondence between an input and an output.” Pet. 12. Regardless of whether the first set of rules requires a set of conditional statements or correspondence IPR2014-00198 Patent 6,307,576 B1 12 between an input and an output, as Petitioner contends, the claim requires that the rules define a morph weight set stream as a function of phoneme sequence and times associated with said phoneme sequence. Patent Owner acknowledges that Peng describes a rule base, but argues that “there is no rule in Peng’s rule-base that defines a morph weight set stream as a function of time of the phoneme sequence” as required by the claims. Prelim. Resp. 18 (emphasis omitted). Petitioner contends that “in Peng, an output morph weight set stream is generated by evaluating a plurality of phoneme sequences against a set of rules,” and “[t]he rule base which is implemented in Peng’s finite state machine is a function which produces the corresponding weight vector set after evaluating the phonemic input against predetermined criteria.” Pet. 14. Petitioner’s discussion of Peng relative to the ’576 patent does not identify any disclosure in Peng that corresponds to a morph weight set stream being defined as a function of time of said phoneme sequence. Petitioner’s claim chart also fails to identify clearly what in Peng corresponds to the claimed “function of . . . time of said phoneme sequence” in limitation 1(a). From Petitioner’s claim chart, it appears that Petitioner may consider Peng’s weight vectors as corresponding to the claimed morph weight set stream. 7 See Pet. 24 (citing Ex. 1004, 48, 50-52, 56-58). However, as Patent Owner explains, Peng’s discussion of weight vectors on pages 48 and 50-51 does not indicate that the weight vectors are a function of phoneme times or that they contain any time values. See Prelim. Resp. 18; Ex. 1004, 48, 50- 51. 7 This is an assumption, as Petitioner does not address clearly what discloses the claimed morph weight set stream in Peng, and page 24 of the Petition is actually a portion of the claim chart for a further claim limitation (“generating an output morph weight set stream”). IPR2014-00198 Patent 6,307,576 B1 13 Petitioner’s claim chart also cites to pages 14-17 of the Marks Declaration for limitation 1(a). Pet. 22. However, after review of the cited portions of the Marks Declaration, we see no further discussion of what in Peng allegedly discloses the claimed “function of . . . time of said phoneme sequence” in limitation 1(a). Rather, the cited portions of the Marks Declaration simply reproduce the text from the portions of Peng cited in the Petition’s claim chart. See Ex. 1001, 14-17. In the challenge to claims 1 and 14, Petitioner has failed to specify what in Peng corresponds to the claimed “function of . . . time of said phoneme sequence.” Based on the Petition and evidence provided, we are not persuaded that Peng discloses a first set of rules that defines a morph weight set stream as a function of time of said phoneme sequence. For these reasons, Petitioner has failed to establish a reasonable likelihood of success on this challenge to claims 1-26. C. Proposed Ground of Anticipation over Waters (Ground 2) 1. Overview of Waters Waters is a report that addresses automatic synchronization of computer generated faces with synthetic speech. Ex. 1005, Abstract. Figure 1 of Waters illustrates a synchronization model, and is reproduced below. IPR2014-00198 Patent 6,307,576 B1 14 Figure 1 of Waters is a schematic illustration of a system for converting input text into synthesized audio and corresponding graphics of mouth deformations on a display. The schematic illustration in Figure 1 includes input text, a text to speech converter, a face generator, a mouth deformation calculator, and a viseme table. Waters explains that mouth deformations corresponding to audio are based on calculated displacement of mouth nodes at a series of times. Id. at 7. Intermediate nodes can be interpolated at times between the calculated node displacements. Id. Waters discusses determining node displacement based on Newtonian physics. Id. at 8. Waters explains that this system provides for creation of viseme tables that are based on the calculated mouth node displacements and correlated to specific speech synthesizers. Id. at 18. 2. Analysis Petitioner contends that Waters discloses the limitations of claims 1-3, 7-16, and 20-26. Pet. 16, 22-53. As noted above, and similar to claim 1 of the ’278 IPR2014-00198 Patent 6,307,576 B1 15 patent, limitation 1(a) of claim 1 of the ’576 patent includes rules defining an “output morph weight set stream” (i.e., a series of output morph weight sets). Claim 14 of the ’576 patent includes the same limitation and Petitioner’s contentions regarding this limitation in claim 14 are the same as those presented regarding claim 1. See Pet. 16, 22, 38 and Ex. 1001, 69-72, 97. For simplicity, the challenge will be discussed with respect to claim 1. Petitioner presents the same contentions regarding limitation 1(a) as those discussed in the ’197 Decision. Petitioner contends that “Waters relies on a rule base of physical characteristics of mouth shapes (‘visemes’) corresponding to a given phoneme input text” and that the “rules are implemented as an equation (function) which calculates displacement of nodes on a parameterized facial model.” Pet. 16. With respect to limitation 1(a), Petitioner’s claim chart cites to the discussion of mouth deformation calculation and interpolation in Waters. Id. at 22-23 (citing Ex. 1005, 7-8). Petitioner’s claim chart also cites to pages 3, 5, 6, and 11 of Waters and pages 69-72 of the Marks Declaration. See id. However, the cited portions of the Marks Declaration simply reproduce the text from Waters cited in the Petition’s claim chart. See Ex. 1001, 69-72. Patent Owner argues that Petitioner fails to identify what in Waters corresponds to the claimed output morph weight set streams. Prelim. Resp. 24. Patent Owner further argues that regardless of what Petitioner may consider as the claimed output morph weight set, nothing in Waters discloses this feature. Id. at 24, 27. It is unclear from the Petition whether Petitioner considers the calculated node displacement (xi(t)), the intermediate interpolation position (x(s)), or some other feature on pages 3, 5-8, and 11 of Waters to be an output morph weight set. It is not apparent why the cited portions of Waters disclose an output morph weight IPR2014-00198 Patent 6,307,576 B1 16 set. Based on the Petition and the evidence provided, we are not persuaded that Waters discloses an output morph weight set. For these reasons, Petitioner has failed to establish a reasonable likelihood of success on this challenge to claims 1-3, 7-16, and 20-26. D. Proposed Ground of Anticipation over Kaneko (Ground 3) 1. Overview of Kaneko Kaneko is a foreign Patent Application directed to synthesizing an image of a face to represent changes in mouth shape based on speech output. Ex. 1006, 1:2- 7. Figure 4 illustrates an embodiment of the image synthesis system of Kaneko and is reproduced below. Figure 4 of Kaneko is a block diagram illustrating a system for converting input text to an output picture corresponding to the input text. Figure 4 includes speech synthesizer 1 that receives input text. Time adjuster 2 controls an input to picture IPR2014-00198 Patent 6,307,576 B1 17 generator 6 based on the duration of the phoneme provided by speech synthesizer 1. Id. at 9:7-11. Converter 3 converts the phoneme from speech synthesizer 1 to a mouth- shape feature corresponding to the phoneme. Id. at 9:17-19. Examples of mouth- shape features include degree of mouth opening, degree of roundness of lips, height of lower jaw, and degree to which the tongue is seen. Id. at 9:19-24. Correspondence between the vocal sound feature and the mouth-shape feature is determined based on observations of how a person actually utters each phoneme. Id. at 9:24-26. Conversion table 4 converts the mouth-shape feature to a mouth- shape parameter value representing a concrete mouth shape (i.e., a specific displacement of points P1-P8 defining mouth position). Id. at 10:13-11:3. The mouth-shape parameter values are predetermined based on mouth-shape measurements of a person actually uttering each phoneme. Id. at 11:3-5. Transition detector 8 detects when a transition between phonemes occurs. Id. at 14:23-15:11. Mouth-shape parameter modifier 7 obtains intermediate parameter values between consecutive mouth shape parameters for intermediate frames. Id. at 15:14-20. 2. Analysis Petitioner contends that Kaneko discloses each of the limitations in claims 1- 3, 5, 7, 8, 10, 13-16, 18, 20, 21, 23, and 26. Pet. 18-19, 22-53. As previously indicated, and similar to the ’278 patent, limitation 1(a) from claim 1 of the ’576 patent includes rules defining an “output morph weight set stream.” Claim 14 of the ’576 patent includes the same limitation and Petitioner’s contentions regarding this limitation in claim 14 are the same as those presented regarding claim 1. See Pet. 18-19, 23, 38-39; Ex. 1001, 102-103, 118. For simplicity, the challenge will be discussed with respect to claim 1. IPR2014-00198 Patent 6,307,576 B1 18 Petitioner presents the same contentions regarding limitation 1(a) as those discussed in the ’197 Decision. Petitioner contends that “Kaneko uses a conversion table which represents a rule base specifying mouth shapes corresponding to phonemes.” Pet. 18. With respect to limitation 1(a), Petitioner’s claim chart cites to Kaneko’s discussion of the operation of speech synthesizer 1, which postulates the use of an existing speech rule synthesizing method that employs a Klatt type format speech synthesizer for matching mouth shape generation. Id. at 23 (citing Ex. 1006, 8:6-9:2). Kaneko provides no detailed description of the speech synthesizer. Petitioner’s claim chart also cites to pages 102-103 of the Marks Declaration. However, again, the cited portions of the Marks Declaration simply reproduce the text from Kaneko cited in the Petition’s claim chart. See Ex. 1001, 102-103. Patent Owner argues that “there is no set of rules in Kaneko’s synthesizer 1 that defines a morph weight set stream as required by claim 1.” Prelim. Resp. 33. Indeed, page 8, line 6 through page 9, line 2 of Kaneko generally explains that “speech synthesizer 1 synthesizes a speech output corresponding to an input sentence” and discusses various speech synthesizing methods. There is no discussion of rules or any disclosure that appears to correspond to an output morph weight set in this portion of Kaneko. The additional portions of the claim chart related to claim 1 also fail to identify what allegedly corresponds to rules defining an output morph weight set stream in Kaneko. See Pet. 22-26. To the extent Petitioner considers Kaneko’s conversion table 4 as corresponding to the claimed rules, Petitioner does not allege, and offers no explanation as to why, conversion table 4 defines a morph weight set stream. The only portion of the claim chart for claim 1 that references the conversion table, discussed earlier in the Petition (see Pet. 18) as corresponding to IPR2014-00198 Patent 6,307,576 B1 19 the claimed rules, is the portion directed to limitation (c) in claim 1: “generating an intermediate stream of output morph weight sets . . . by evaluating said plurality of sub-sequences against said first set of rules.” Pet. 24 (citing Ex. 1006, 11:6-10). However, the cited portion of Kaneko simply states that “[i]n response to the mouth-shape feature corresponding to the phoneme concerned, provided from the speech feature to mouth-shape feature converter 3, the unit 5 refers to the conversion table 4 to read out therefrom a set of values of mouth-shape parameters for the phoneme.” Ex. 1006, 11:6-10. We are not persuaded that this discloses rules defining an output morph weight set stream. For these reasons, Petitioner has failed to establish a reasonable likelihood of success on this challenge to claims 1-3, 5, 7, 8, 10, 13-16, 18, 20, 21, 23, and 26. E. Proposed Ground of Anticipation over Parke (Ground 4) 1. Overview of Parke Parke is a book about computer facial models, computer generated facial images, and facial animation, and is intended to summarize “the diverse developments in facial animation.” Ex. 1007, xiii. Parke discusses advertising, film, gaming, medicine, teleconferencing, and avatar applications. Id. at 5-7. Parke discusses a variety of facial animation techniques. Id. at 105-146. Parke also discusses a variety of methods for speech synchronized animation. Id. at 259- 284. 2. Analysis Petitioner contends that Parke discloses each of the limitations in claims 1- 26. Pet. 20-53. As noted above, and similar to claim 1 of the ’278 patent, limitation 1(a) from claim 1 of the ’576 patent includes rules defining an “output morph weight set stream.” Claim 14 of the ’576 patent includes the same limitation and Petitioner’s contentions regarding this limitation in claim 14 are the IPR2014-00198 Patent 6,307,576 B1 20 same as those presented regarding claim 1. See Pet. 20-21, 23, 39; Ex. 1001, 123- 124, 157. For simplicity, the challenge will be discussed with respect to claim 1. Petitioner presents the same contentions regarding limitation 1(a) as those discussed in the ’197 Decision. Petitioner contends that “[c]oncepts discussed [in Parke] include viseme table lookup, speech synthesizer output parameters, key framing, and interpolation. For example, key frames (mouth positions) corresponding to phoneme input may be obtained from a viseme table.” Pet. 20. With respect to limitation 1(a), Petitioner’s claim chart refers to pages 270 and 273 of Parke. Pet. 23. The cited portions of Parke generally discuss generation of a phoneme sequence from input text, determination of timing for facial animation based on input text and corresponding phonemes, and synthesis by rule algorithms. Ex. 1007, 270, 273. Patent Owner argues that “Petitioner never identifies what in Parke allegedly corresponds to the claimed output morph weight set stream, or what in Parke allegedly corresponds to the claimed first set of rules.” Prelim. Resp. 43. Patent Owner argues that although pages 270 and 273 of Parke discuss the use of phoneme sequences, synthesis by rule algorithms, and timing, Parke does not disclose the claimed output morph weight set stream. Id. Based on the Petition and evidence provided, we are unable to determine what in Parke Petitioner considers as corresponding to the claimed rules defining a morph weight set stream. For example, Petitioner does not offer any explanation as to why Parke’s discussion of phoneme sequences, synthesis by rule algorithms, and timing discloses rules defining an output morph weight set stream. The cited portions of the Marks Declaration simply reproduce the text from Parke cited in the Petition’s claim chart. See Ex. 1001, 143-144. We are not persuaded that the general discussion found on pages 270 and 273 of Parke discloses this limitation, IPR2014-00198 Patent 6,307,576 B1 21 nor are we persuaded that Parke discloses rules defining an output morph weight set stream based on Petitioner’s general summary of “concepts discussed” in Parke (see Pet. 20). For these reasons, Petitioner has failed to establish a reasonable likelihood of success on this challenge to claims 1-26. F. Proposed Obviousness Grounds 5-10 1. Overview Petitioner proposes a number of obviousness challenges based on various combinations of Peng, Waters, Kaneko, and Parke. Pet. 5, 21-58. 2. Analysis Petitioner presents similar contentions regarding these challenges, at least with respect to limitation 1(a) and the similar limitation in claim 14, to those discussed in the ’197 Decision. Similar to the contentions presented regarding the ’278 patent in IPR2014-00197, Petitioner contends that the ’576 patent claims “merely recite the combination of ‘prior art elements according to known methods to yield predictable results’ and/or the ‘[u]se of known technique[s] to improve similar devices (methods, or products) in the same way.’ MPEP § 2143 (A, C).” Id. at 21. Patent Owner argues that (1) Petitioner NEVER explains what is allegedly lacking in the base reference, (2) Petitioner NEVER points out the differences between the claimed invention and the base reference or cited art, (3) Petitioner NEVER explains how the base reference should be allegedly modified, (4) Petitioner NEVER explains what modification would have been obvious, and (5) Petitioner NEVER explains what modifications to each base reference would have allegedly been made. Prelim. Resp. 47-48. We agree. IPR2014-00198 Patent 6,307,576 B1 22 Petitioner does not identify any specific features of the cited references to be included in the proposed combinations and does not provide any further rationale for the combinations. See id. at 22-53; Ex. 1001, 163-543. The Petition’s claim chart simply includes citations to the claim chart in the Marks Declaration and to additional rationale for a general combination of the references in the Marks Declaration. Id. at 22-53. The claim charts in the Marks Declaration do not identify specifically which elements are to be substituted in the various proposed combinations or how the references are to be modified. See Ex. 1001, 164-543. The claim charts only cite to the references in the combination proposed in the challenge without specifying which reference is relied on to meet each limitation. For example, in proposed Ground 5 (challenge based on the combination of Peng and Waters), the Petition cites the same portions of Peng relied on in proposed Ground 1 (anticipation challenge based on Peng) and the same portions of Waters relied on in proposed Ground 2 (anticipation challenge based on Waters) for limitation 1(a). Pet. 22. The Petition additionally cites to pages 164-165 of the Marks Declaration. Id. However, the cited portion of the Marks Declaration simply includes the text from the portion of Peng cited in the Petition’s claim chart with the addition of “See also Waters at, e.g., pp. 3, 5, 6, 7, 11.” Ex. 1001, 165- 168. The rationale for the proposed combinations also fails to identify specifically any proposed modifications. Instead, for each obviousness challenge, the Marks Declaration summarizes the references relied on, and then concludes that To a skilled artisan, this combination would have yielded a predictable result—namely, a more desirable system for not only utilizing an input and other data to automatically into animate lip synchronization, but also to modify a facial expression of a character based on emotional data. The implementation of such a system would be more efficient, resulting in an implicit, common sense motivation IPR2014-00198 Patent 6,307,576 B1 23 to combine the references to create a computer animation system for automatically animating lip synchronization and facial expression of a character, such as a three-dimensional character. Id. at 237-238, 312, 386, 443, 501, 543-544. Petitioner has failed to resolve any differences between the claimed invention and the cited references, identify any specific proposed modifications to the references, or explain persuasively why one skilled in the art would have made any specific modifications to the references relied on in the challenges in Grounds 5-10. Based on the Petition and evidence provided, we are not persuaded that any of the obviousness challenges (Grounds 5-10) cures the deficiencies in the challenges based on Peng, Waters, Kaneko, and Parke (Grounds 1-4) discussed above. Thus, we are not persuaded that Petitioner has established a reasonable likelihood of succeeding on any of these challenges to claims 1-26. G. Petitioner’s Challenge to Dates of Peng and Waters In addition to the arguments discussed above, Patent Owner additionally argues that Petitioner has not established that Peng and Waters are prior art printed publications. Prelim. Resp. 3-9. For example, Patent Owner argues that although “Peng is an alleged ‘thesis’ . . . petitioner has submitted no evidence establishing that Peng was sufficiently publicly accessible prior to the critical date (October 2, 1997) to qualify as a printed publication.” Id. at 4. Patent Owner provides similar arguments regarding Waters, asserting that “there is no evidence that Waters was ever disseminated outside of Digital Equipment Corporation (DEC), and there is no evidence that anyone outside of DEC exercising reasonable diligence would have located Waters prior to the critical date.” Id. at 8. Patent Owner argues that neither Peng nor Waters should be considered as prior art printed publications for these reasons. Id. at 9. Because we have determined that Petitioner fails to meet its burden IPR2014-00198 Patent 6,307,576 B1 24 regarding Peng and Waters meeting the limitations of the challenged claims, we need not address whether Peng or Waters is a prior art printed publication. Therefore, the issues raised in Patent Owner’s Preliminary Response regarding whether Peng and Waters are prior art printed publications are moot. III. SUMMARY Petitioner has failed to demonstrate that there is a reasonable likelihood of prevailing on any of the challenges to the patentability of claims 1-26 of the ʼ576 patent. The Petition is denied as to all grounds proposed. IV. ORDER For the reasons given, it is ORDERED that the Petition is denied. IPR2014-00198 Patent 6,307,576 B1 25 For PETITIONER: Tawni Wilhelm twilhelm@shb.com Jonathan Zerger jzerger@shb.com For PATENT OWNER: Joseph Rhoa jar@nixonvan.com Updeep Gill usg@nixonvan.com Copy with citationCopy as parenthetical citation