Sony Corporationv.Yissum Research Development Company of the Hebrew University of Jerusalem

Patent Trial and Appeal Board

Nov 6, 2014

09396248 (P.T.A.B. Nov. 6, 2014)

Trials@uspto.gov Paper No 19 Paper XX
Tel: 571-272-7822 Entered: November 6, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
SONY CORPORATION,
Petitioner,

v.
YISSUM RESEARCH DEVELOPMENT CO. OF THE HEBREW
UNIVERSITY OF JERUSALEM,
Patent Owner.
_______________

Case IPR2013-00218
Patent 6,665,003 B1
1

_______________

Before SALLY C. MEDLEY, KARL D. EASTHOM, and
JAMES B. ARPIN, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION
Request for Rehearing
37 C.F.R. § 42.71(d)

1
Sony Corp. v. Yissum Research Co., Case IPR2013-00326 (“IPR2013-
00326”) has been joined with instant Case IPR2013-00218. IPR2013-
00326, Paper 15 (PTAB Sept. 24, 2013). This Rehearing Decision is entered
in both cases.
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I. BACKGROUND
Patent Owner, Yissum Research Development Co. of the Hebrew
University of Jerusalem, in its Rehearing Request, seeks withdrawal of the
“Board’s conclusion that Asahi anticipates claims 1, 3–5, 22, and 34
[because] it was . . . 1) based on an improper claim construction and 2)
based on a misapprehension or overlooking of the evidence presented.” See
Paper 22, 1–2 (“Req. Reh’g.”). For the reasons that follow, we deny the
requested relief.
The applicable standard for a request for rehearing is set forth in 37
C.F.R. § 42.71(d), which provides, in relevant part, the following:
A party dissatisfied with a decision may file a request for
rehearing, without prior authorization from the Board. The
burden of showing a decision should be modified lies with the
party challenging the decision. The request must specifically
identify all matters the party believes the Board
misapprehended or overlooked, and the place where each
matter was previously addressed in a motion, opposition, or a
reply.

II. DISCUSSION
Patent Owner has not shown that we overlooked or misapprehended
any matter previously addressed.
1. Claim Construction
Patent Owner contends that our construction of “stereoscopic image
pair” is too broad, and that we misapprehended that Patent Owner acted as
its “own lexicographer by providing a special definition” of the term
“stereoscopic image pair.” Req. Reh’g 3. Although Patent Owner contends
that the record supports a lexicographic definition, Patent Owner did not
characterize the proposed definition as lexicographic in its Preliminary
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Response or Patent Owner Response. See Req. Reh’g 6. In the Institution
Decision, we construed this term according to an ordinary and customary
meaning of the term, consistent with the ’003 Patent Specification. See
Paper 16, 78 (“Inst. Dec.”). In the Final Decision, based on an alternative
ordinary and customary meaning that Patent Owner set forth in its Patent
Owner Response, we adopted a slightly broader interpretation than the one
initially set forth in the Institution Decision, consistent with the ’003 Patent
Specification. See Paper 53, 7–18 (“Fin. Dec.”); Paper 29, 4 (“PO Resp.”).
Patent Owner’s and Petitioner’s declarants, respectively Dr. Irfan Essa and
Dr. Trevor Darrell, support the interpretation. See Fin. Dec. 7–18; PO Resp.
4.
Specifically, as the Final Decision explains, Patent Owner argued that
the customary and ordinary meaning of “stereographic image” includes an
image that does not provide human depth perception. Quoting Patent
Owner, we reasoned as follows:
Patent Owner attempts to broaden the term “stereoscopic
image,” as interpreted in the prior art:
To a person of ordinary skill in the art, the
term “stereoscopic image” [in the prior art] is not
by itself limited to an image that provides a
perception of depth to a person. Instead, the term
“stereoscopic image” is a broad term that
includes images that are used by computers or
machines to measure distance to an object.

Fin. Dec. 8–9 (quoting PO Resp. 4 (second emphasis added in Final
Decision)).
Patent Owner maintains that the following sentence in the ’003 Patent
Specification limits the ordinary and customary meaning of the term in its
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claims: “Stereoscopic images comprise two images recorded of a scene from
slightly displaced positions, which, when viewed simultaneously by the
respective eyes, provides a perception of depth.” See Req. Reh’g 6 (quoting
Ex. 1001, col. 1, ll. 36–38). In other words, Patent Owner contends that this
sentence narrows the ordinary meaning to images that provide human depth
perception. Req. Reh’g 6. Given the broad ordinary meaning, which
includes other forms of stereoscopic images according to Patent Owner’s
argument as quoted above, the ’003 Patent Specification merely describes a
feature of a well-known type of stereoscopic image––the feature of
providing human depth perception. This sentence in the Specification, at
most, points to a preferred embodiment, and fails to limit the class of
“stereographic images” to that preferred embodiment. See Phillips v. AWH
Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (“[W]e have
expressly rejected the contention that if a patent describes only a single
embodiment, the claims of the patent must be construed as being limited to
that embodiment.”).
The Specification does not express a clear intent to deviate from the
term’s ordinary and customary meaning. See Thorner v. Sony Computer
Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (“It is not enough for
a patentee to simply disclose a single embodiment or use a word in the same
manner in all embodiments, the patentee must clearly express an intent to
redefine the term.” (citations omitted) (internal quotation marks omitted));
Helmsderfer v. Brobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed.
Cir. 2008) (“A patentee may act as its own lexicographer and assign to a
term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
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description.”).
Patent Owner’s arguments reduce to the assertion that describing, in
the ’003 Patent Specification, what amounts to a species (images that
provide human depth perception) of a well-known genus (images that
provide depth perception to humans, computers, or robots), creates a clear
disavowal from the ordinary and customary meaning. See Req. Reh’g 4–8.
As the Final Decision reasons, a patentee may act as a lexicographer by
providing a special definition for a claim term in the specification with
“reasonable clarity, deliberateness, and precision.” Fin. Dec. 7, 9 (quoting
In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (Applicant did not
clearly limit a “computer” to one of its “numerous definitions” to distinguish
it over a prior art calculator, noting that “[t]he specification merely describes
in a general fashion certain features and capabilities desirable in a portable
computer.”)).
Patent Owner’s declarant, Dr. Essa, agrees that “the term
‘stereoscopic image’ is a broad term, which generally refers to a pair of
images that view a scene from two different viewpoints.” Ex. 2010 ¶ 55.
The Final Decision relies on broad teachings in the ’003 Patent Specification
that support the customary and ordinary meaning upon which we relied:
“‘[T]he invention may provide utility in connection with robotics and
computer video games.’” Fin. Dec. 9 (quoting Ex. 1001, col. 14, ll. 20–21);
see also id. at 10–12 (reasoning that an unclaimed, but disclosed, “display”
provides human depth perception). If a person of ordinary skill in the art
would have recognized that a “stereoscopic image . . . is a broad term that
includes images that are used by computers or machines to measure
distances,” and “is not by itself limited to an image that provides a
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perception of depth to a person,” as Patent Owner argued (see PO Resp. 4,
37, Fin. Dec. 8–9), then merely pointing out in the ’003 Patent Specification
what was well-known––that stereoscopic images provide human depth
perception and implying that stereoscopic images may be used in computers
or robots––embraces, instead of narrows, the ordinary and customary
meaning. Such descriptions fail to “clearly express” the requisite intent “to
assign to a term a unique definition that is different from its ordinary and
customary meaning.” See Helmsderfer, 527 F.3d at 1381.
The disclosed robotic utility reasonably embraces generic stereoscopic
images using images recorded using techniques described in the ’003 Patent
Specification.
2
Because ordinarily skilled artisans would have known that
stereoscopic images that do not provide human depth perception could be
used in robots, computers, or other machines, contrary to Patent Owner’s
arguments, such artisans would have understood that the ’003 Patent
Specification does not limit the use of “stereographic images” in computers
or robots to only those images that provide human depth perception. See
Req. Reh’g 6–8.

2
The ’003 Patent generally embraces recording stereographic images from
two or more recording points. The record shows that adjusting the distance
between two recording points of a scene and accounting for the scene object
to camera distance, produces stereoscopic images that provide human depth
perception (if the images thereafter are aligned and displayed properly). See
Fin. Dec. 10–18, 30–31, 38–41. Not accounting for object to camera
distance or not providing proper alignment may create stereographic images
that do not provide human depth perception, but may provide depth
information to a computer or machine. See id.; PO Resp. 43–44 (arguing
that Asahi’s stereoscopic image producing method only provides height
information). The claims do not require adjusting for object distance,
aligning recorded images, or displaying images.
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2. Deposition Testimony
Focusing on its narrower construction, Patent Owner also asserts that
we improperly interpreted the evidence supporting our determination that
Asahi’s method creates stereoscopic images that provide human depth
perception. According to Patent Owner,
the Board . . . misapprehended or overlooked Dr. Darrell’s
[deposition] testimony that to generate images that provide a
perception of depth there needs to be 99 percent overlap
between the images from which the lines are taken and
misapprehended or overlooked Asahi’s express teaching that it
only utilizes 60 percent overlap in creating its images.
Req. Reh’g 3.
The Final Decision addresses this overlap issue arising from Dr.
Darrell’s deposition testimony. Fin. Dec. 35–36. Patent Owner first raised
it in a Motion for Observation (Paper 37 ¶ 8); however, the issue is not
developed sufficiently to undermine other findings of record. For example,
Patent Owner relies on Asahi’s discussion of a 60 % “scene overlap,” in a
working example, whereas Patent Owner cross-examined Dr. Darrell
concerning overlap of “99 percent overlap from frame to frame where a
single line is being taken.” Compare Ex. 1006 ¶ 30, with Paper 37, 6 and
Ex. 2014, 31:10–16. Patent Owner does not provide sufficient evidence or
explanation connecting the concept of frame overlap where a single line is
being taken to the concept of scene overlap in Asahi’s working example.

Similarly, Patent Owner does not point us to testimony in which Patent
Owner cross-examined Dr. Darrell explicitly about the 60 % scene overlap
that Asahi discloses in its working example. See Ex. 1006 ¶ 30, Fig. 5.

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Asahi states that a frame includes two fields, and each field includes a
scene. See Ex. 1010 ¶¶ 34–35. Patent Owner appears to equate frame
overlap, scene overlap, and image overlap. See Req. Reh’g 9–14. On this
record, Patent Owner does not show how the different types of overlap are
comparable directly. Therefore, Dr. Darrell’s testimony that 99% frame
overlap is required in some context does not mean that Asahi’s disclosure of
60% scene overlap precludes anticipation by Asahi. Moreover, on what
appears to be a significant point related to overlap, Dr. Darrell and Patent
Owner’s counsel disagree about whether a line used to create images in
Asahi is limited to using “a single vertical line of an image frame.” See Ex.
2014, 107:7–25. It is significant in context to Dr. Darrell’s answer of
“[y]es” after being asked if “‘there needs to be at least 99 percent overlap
from frame to frame where a single line is being taken.’” See Paper 37 ¶ 8
(quoting Ex. 2014, 31:10–16, emphasis added). Patent Owner does not
explain clearly how this frame overlap “where a single line is being taken”
relates to Asahi’s working example of 60 % scene overlap, at least because
Patent Owner and Dr. Darrell disagree about how or which lines of a frame
that Asahi’s method uses to create images.
Further, as the Final Decision notes, Dr. Darrell responds “I think so”
to a question about “substantial overlap,” which in the context of another
question (see colloquy below), implies “almost 99 percent overlap” in Asahi.
See Ex. 2014, 108:20–23; Fin. Dec. 36. Patent Owner responds in its
Rehearing Request that Dr. Darrell referred merely to “frame rate,” instead
of a substantial frame “overlap” in Asahi. See Req. Reh’g 12. Patent
Owner’s cited pages of Dr. Darrell’s deposition testimony do not support
Patent Owner’s characterization of the testimony. See Req. Reh’g 10–11
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(citing Ex. 2014, 31, 108–109).
On a relevant point, we made the following findings:
Petitioner points out that Dr. Darrell testified that the “frame
rate would be high enough so that you didn’t miss parts of the
scene.” Id. at 8 (citing Ex. 2014, 108:9–16). Lending context,
on the cited deposition page, Dr. Darrell responded “I think so”
to a question about whether the frame overlap would be
“substantial.”

Id. at 36 (emphasis added).
More specifically, after being questioned generally about Asahi’s
disclosure and the need for overlap for “a complete depiction of that scene,”
Dr. Darrell testified that “the frame rate would be high enough,” (see Ex.
2014, 108:1–14), and the specific colloquy (as summarized above and in the
Final Decision) ensued:
Q. And the result of that [frame rate] would be that the
overlap between one frame and the next would be substantial?
A. I think so.
Q. Similar to what we described earlier in the Kawakita
discussion about needing almost 99 percent overlap; correct?
A. Correct. If I understand the scenario, that would be
true for any scenario that was extracting a line from a two-
dimensional camera.

Ex. 2014, 108:17–109:1.
Therefore, if anything, Dr. Darrell indicates that Asahi does disclose a
substantial, 99 percent, overlap where a line is extracted, as a result of the
frame rate, or otherwise. Even if he does not, however, Patent Owner does
not show how the cross-examination of Dr. Darrell, which does not involve
Asahi’s specific working example, undermines Dr. Darrell’s testimony that
Asahi discloses human depth perception. See Paper 37 ¶ 8; Ex. 2014,
31:10–16, 107:18–109:1; Fin. Dec. 29–36 (finding anticipation by Asahi).
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Further, even in the scene portions depicted in Asahi’s working
example as overlapping by 60 %, two scene portions overlap totally (i.e.,
100%) within the intersecting portion. See Ex. 1006, Fig. 5, ¶ 30.
Generally, even if two scenes in Asahi do not wholly overlap throughout
each scene, the record implies that at least the part of a scene that does
overlap with another scene would provide a measure of human depth
perception as a stereoscopic image pair (after correct alignment or other
processing). See Ex. 1006, Fig. 5; Fin. Dec. 29–36 (finding that Asahi
discloses stereoscopic images that produce human depth perception). For
example, Asahi explicitly describes “[a] pair consisting of two images that
make up a stereoscopic image.” Ex. 1006 ¶ 32.
As other examples, the Final Decision summarizes findings about
Asahi and the testimony that supports anticipation by Asahi:
Dr. Darrell concludes that “Asahi’s [images] . . . could be
viewed using an appropriate display and provide a perception of
depth.” Ex. 1044 ¶ 27. During cross-examination, Dr. Darrell
re-iterated this position, and testified that, in Asahi’s system,
“stereoscopic images that can be viewed are created” (Ex. 2014,
87:17–18), and responded “yes” to the following question: “Is it
your opinion . . . that the stereo images . . . in Asahi are capable
of being viewed so as to produce a depth - - or perception of
depth in a human” (id. at 100:5–9).
Fin. Dec. 33.
In addition, we found that “Dr. Essa does not rebut Dr. Darrell’s
testimony that Asahi’s system would provide human depth perception after a
horizontal alignment or adjustment process.” Id. at 34. Considering the
record evidence and arguments, as the Final Decision ultimately reasons,
“Patent Owner’s observations do not undermine the findings discussed
above, including that Dr. Darrell testified that Asahi’s system is capable of
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producing stereographic images.” Id. at 36.
III. CONCLUSION
Based on the foregoing discussion, we deny Patent Owner’s request to
modify our claim construction and withdraw our finding of anticipation by
Asahi in the Final Written Decision. Patent Owner has not shown that we
overlooked or misapprehended a matter previously addressed.
IV. ORDER
For the reasons given, it is ORDERED that the Patent Owner’s
Rehearing Request is denied.

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FOR PETITIONER:

Walter Hanley
Michelle Carniaux
Michael E. Sander
Kenyon & Kenyon, LLP
Sony-HumanEyes@kenyon.com
whanley@kenyon.com
mccarniaux@kenyon.com
msander@kenyon.com

FOR PATENT OWNER:

David L. McCombs
David O’Dell
Gregory Huh
Haynes and Boone, LLP
david.mccombs.ipr@haynesboone.com
david.odell.ipr@haynesboone.com
gregory.huh.ipr@haynesboone.com

Robert Gerrity
William Nelson
Tensegrity Law Group, LLP
robert.gerrity@tensegritylawgroup.com
william.nelson@tensegritylawgroup.com