MasterImage 3D, Inc.v.RealD Inc.

Patent Trial and Appeal Board

Apr 20, 2016

11583243 (P.T.A.B. Apr. 20, 2016)

Trials@uspto.gov Paper No.79
571.272.7822 Entered: April 20, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________
MASTERIMAGE 3D, INC. and
MASTERIMAGE 3D ASIA, LLC,
Petitioner,
v.
REALD INC.,
Patent Owner.
_____________

Case IPR2015-00035
Patent 7,857,455 B2
_____________

Before JAMESON LEE, JAMES B. ARPIN, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a); 37 C.F.R. § 42.73

I. INTRODUCTION
A. Background
MasterImage 3D, Inc. and MasterImage 3d Asia, LLC (collectively,
“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting institution of inter
partes review of claims 1–23 of U.S. Patent No. 7,857,455 B2 (Ex. 1001,
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“the ’455 patent”). RealD Inc. (“Patent Owner”) timely filed a Preliminary
Response (Paper 8, “Prelim. Resp.”). Pursuant to 35 U.S.C. § 314, in our
Decision to Institute, we instituted this trial as to each of the challenged
claims of the ’455 patent. Paper 12 (“Dec.”).
After the Decision to Institute, Patent Owner filed a Patent Owner
Response (Paper 34, “Resp.”), Petitioner filed a Reply to the Patent Owner
Response (Paper 49, “Reply”), and Patent Owner filed a limited Sur-Reply
(Paper 64, “Sur-Reply”). In light of the United States Court of Appeals for
the Federal Circuit’s decision in Dynamic Drinkware LLC v. Nat’l Graphics,
Inc., 800 F.3d 1375 (Fed. Cir. 2015), we authorized the parties to file
additional briefing. Paper 56. Petitioner filed a Supplemental Reply,
including argument and three claim charts. Paper 60 (“Supp. Reply”).
Patent Owner responded with a Supplemental Sur-Reply. Paper 67 (“Supp.
Sur-Reply”). A consolidated oral hearing was held on December 10, 2015,
in this matter and MasterImage 3D, Inc. v. RealD Inc., IPR2015-00040.
Paper 76 (“Tr.”).
Petitioner relies on the testimony of Mr. Matthew S. Brennesholtz
(Exs. 1003, 1019) in support of its contentions. Patent Owner relies on the
testimony of Dr. Ying-Moh Liu (Ex. 2005), Mr. Matthew D. Cowan
(Ex. 2006), Mr. Brian C. McCormack (Ex. 2007), Dr. Robert R. McLeod
(Ex. 2008), and Mr. David J. Feskos (Ex. 2089) in support of its contentions.
We have jurisdiction under 35 U.S.C. § 6(c). This Decision is a Final
Written Decision under 35 U.S.C. § 318(a) as to the patentability of the
challenged claims. Based on the record before us, Petitioner has not
demonstrated, by a preponderance of the evidence, that claims 1–23 of the
’455 patent are unpatentable.
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B. Related Proceedings
The parties represent that the ’455 patent is asserted in RealD Inc. v.
MasterImage 3D, Inc. and MasterImage 3D Asia, LLC, No. 2:14-CV-02304
(C.D. Cal.). Pet. 1; Paper 5, 1. Further, Patent Owner identifies a
proceeding before the International Trade Commission (“ITC”): In the
matter of Certain Three-Dimensional Cinema Systems and Components
Thereof, Inv. No. 337-TA-939 (USITC) (“the ’939 Investigation”). Paper 7,
1. Administrative Law Judge Essex issued an Initial Determination in the
’939 Investigation, finding a violation of Section 337 by reason of, inter
alia, infringement of claims 1–3, 9–11, 13, 15, 17–19, and 21 of the
’455 patent. Ex. 2197, 45–69.
C. Real Parties-in-Interest
The Petition identifies MasterImage 3D, Inc. and MasterImage 3D
Asia, LLC as the real parties-in-interest. Pet. 1. Patent Owner identifies
RealD Inc. as the real party-in-interest. Paper 5, 1.
D. The References
The references upon which we instituted review consist of the
following:
U.S. Patent No. 7,905,602 B2, issued March 15, 2011 (Ex. 1004,
“Schuck”); and
Alleged Admitted Prior Art (“APA”).
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E. The Asserted Grounds of Unpatentability
We instituted this proceeding based on the following grounds of
unpatentability:
Reference(s) Basis Claims challenged
Schuck1 § 102(e) 1–8, 10–14, and 16–22
Schuck and APA § 103(a) 9, 15, and 23
F. The ’455 Patent
The ’455 patent is directed to apparatus and methods for increasing
“overall brightness in a projected stereoscopic image using polarization for
image selection,” by creating “a dual path arrangement that can greatly
increase the brightness of the image perceived by the viewer—in essence
almost doubling the amount of light energy projected on the screen.”
Ex. 1001, 3:19–24. Figure 3 of the ’455 patent is reproduced below:

1 As discussed in more detail infra, Petitioner relies upon the filing date of
Provisional Application No. 60/872,657 (Ex. 1005, “the ’657 provisional”),
to which Schuck claims priority. Pet. 17–18. Petitioner explains that, “[t]o
the extent that the Schuck patent carries forward the disclosure of the
’657 Provisional Application, the Schuck patent is prima facie prior art to
the ’455 patent under 35 U.S.C. § 102(e).” Id. at 18. In light of Petitioner’s
position, Petitioner provides citations to both Schuck and the
’657 provisional in addressing Petitioner’s challenges based on Schuck. See,
e.g., id. at 18–19 (citing Schuck and the ’657 provisional).
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Figure 3 “illustrates the . . . dual path projection system of the present
design[.]” Id. at 2:51–52. The left side of Figure 3 depicts imaging
surface 301, inside a projector, and projection lens 302. Id. at 5:6–8. Light
from a source within the projector (not shown) is modulated by the imaging
surface and sent to the projection lens. Id. at 5:8–10. Polarization beam
splitter 303 “separates the light beam or light energy into two paths, a
primary path P and a secondary path S, or more specifically into orthogonal
polarization states[.]” Id. at 5:16–19. Light of P polarization passes to
polarization modulator 304 (e.g., a ZScreen) and then to projection
screen 309. Id. at 5:12–16. Light of S polarization is directed to half wave
retarder 306 where the polarization is rotated 90 degrees. Id. at 5:27–28.
The rotated S polarization light then passes to polarization modulator 307
and to mirror 308, where the rotated S polarization light 311 is reflected to
projection surface 309. Id. at 6:8–11, 14–45.
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Figure 6A of the ’455 patent is shown below:

Figure 6A of the ’455 patent shows “an alternative embodiment including
elements to equalize the primary and secondary path lengths of light energy
in an embodiment designed to achieve the same ends as those delineated in
[Figure] 3[.]” Id. at 3:4–7. In particular, Figure 6A includes pair of
prisms 605 and 620 (or front surface mirrors), which are “used to increase
the path length of the transmitted beam [(i.e., the P beam)] in order to match
the path length of the reflected beam” (i.e., the S beam). Id. at 9:65–67. The
beams are modulated using polarization modulators 606 and 607, and the
light is projected to projection screen 608. Id. at 10:5–8.
A. Illustrative Claims
Claims 1, 16, 17, and 22 are the independent claims challenged in this
proceeding. Claims 2–15 depend directly or indirectly from claim 1;
claims 18–21 depend from claim 17; and claim 23 depends from claim 22.
Independent claims 1 and 16 are illustrative of the claimed subject matter
and are reproduced below:
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1. An apparatus for projecting stereoscopic images,
comprising:
a polarizing splitting element configured to receive image
light energy and split the image light energy received into a
primary path of light energy transmitted along a primary path and
a secondary path of light energy transmitted along a secondary
path;
a reflector configured to receive path light energy from
one of primary path energy and secondary path light energy and
to direct said path light energy toward a surface; and
a first polarization modulator positioned in the primary
path and configured to receive the primary path of light energy,
uniformly modulate the primary path of light energy into primary
path modulated light energy, and transmit primary path
modulated light energy toward the surface.
Ex. 1001, 12:20–35.
16. A method of projecting stereoscopic images, comprising:
receiving image light energy;
splitting the image light energy received into a primary
path of light energy transmitted along a primary path and a
secondary path of light energy transmitted along a secondary
path;
receiving secondary path light energy and directing
reflected secondary path light energy toward a surface; and
uniformly modulating the polarization of the primary path
of light energy into primary path modulated light energy, and
transmitting primary path modulated light energy toward the
surface.
Id. at 13:15–29.
II. CLAIM CONSTRUCTION
We interpret claims of an unexpired patent using the “broadest
reasonable construction in light of the specification of the patent in which
[they] appear[].” 37 C.F.R. § 42.100(b); accord In re Cuozzo Speed Techs.
LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015) (“Congress implicitly
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approved the broadest reasonable interpretation standard in enacting the
AIA,” and “the standard was properly adopted by PTO regulation”);
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,764, 48,766
(Aug. 14, 2012) (Claim Construction). Claim terms are given their ordinary
and customary meaning as would be understood by a person of ordinary skill
in the art at the time of the invention and in the context of the entire patent
disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257
(Fed. Cir. 2007).
In the Decision to Institute, we preliminarily construed the claim
terms reproduced in the table below:
Claim Term Claim Construction in the Decision to Institute
“modulate” (claims 1–15 and 17–23) transform (Dec. 9)
“modulating” (claim 16) transforming (Dec. 9)
Neither party disputes our preliminary construction. Accordingly, we
adopt our preliminary constructions of “modulate” and “modulating” based
on the full record for the reasons stated in our Decision to Institute.
III. ANALYSIS
A. Schuck’s Priority Date
The application that issued as the ’455 patent was filed on October 18,
2006. Ex. 1001 [22]. As reflected above, each of the grounds upon which
we instituted is based on Schuck. Schuck was filed September 28, 2007, and
claims priority to three U.S. provisional patent applications. Ex. 1004 [22],
[60]. Of the three, only U.S. Provisional Application No. 60/827,657 (“the
’657 provisional”) was filed before the ’455 patent. Specifically, the
’657 provisional was filed on September 29, 2006. Id. at [22].
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Petitioner argued “[t]o the extent that the Schuck patent carries
forward the disclosure of the ’657 Provisional Application, the Shuck patent
is prima facie prior art to the ’455 patent under 35 U.S.C. § 102(e).” Pet. 18
(citing In re Giocomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010)). Further,
Petitioner cites to Schuck and the ’657 provisional throughout the Petition.
See id. at 18–19 (“To establish that portions of Shuck relevant to the
’455 patent . . . appear in both the Schuck patent and the ’657 Provisional
Application, citations to both are provided.”).
In September 2015, the Federal Circuit issued its decision in Dynamic
Drinkware. The Federal Circuit explained that “[f]or a patent to claim
priority from the filing date of its provisional application, it must satisfy
35 U.S.C. § 119(e)(1).” 800 F.3d at 1378. “In other words, the specification
of the provisional must ‘contain a written description of the invention and
the manner and process of making and using it, in such full, clear, concise,
and exact terms,’ 35 U.S.C. § 112 ¶ 1, to enable an ordinarily skilled artisan
to practice the invention claimed in the non-provisional application.” Id.
(quoting New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290,
1294 (Fed. Cir. 2002)). Of particular note, the Federal Circuit explained that
the burden of persuasion is always on Petitioner to prove unpatentability by
a preponderance of the evidence, but the burden of production, which
initially falls on Petitioner, may shift to Patent Owner under certain
circumstances. Id. at 1379; see Apple, Inc. v. OpenTV, Inc.,
Case IPR2015-00969, slip op. at 12–14 (PTAB Sept. 23, 2015) (Paper 8)
(discussing the shift of the burden of production described in Dynamic
Drinkware). Additionally, the Federal Circuit required the petitioner in
Dynamic Drinkware to “compare the claims of the Raymond patent to the
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disclosure in the Raymond provisional application” before finding that the
Raymond patent (which the petitioner relied upon for its unpatentability
challenge) was “entitled to claim the benefit of the filing date of its
provisional application.” Dynamic Drinkware, 800 F.3d at 1381.
As applied to the facts presented here, the burden of production is
initially on Petitioner to show that Schuck is entitled to claim priority to the
filing date of the ’657 provisional—September 29, 2006. If Schuck is not
entitled to claim priority to September 29, 2006, then Schuck is not prior art
under § 102(e) because it was filed after the application issuing as the
’455 patent. For reasons discussed below, Petitioner has not satisfied its
burden of production and, hence, the burden of production does not shift to
Patent Owner. And, similarly, Petitioner fails on the ultimate burden of
persuasion.
Petitioner first asserts that Patent Owner cannot challenge whether
Schuck is entitled to the filing date of the ’657 provisional because
(1) Patent Owner waived the argument by not raising it in the Patent Owner
Response and (2) Patent Owner made the same priority assertion before the
International Trade Commission. Supp. Reply 2–4. With respect to its first
argument, Petitioner contends that Patent Owner waived any challenge to
Schuck’s priority date because Patent Owner did not raise the argument in
its Response. Id. at 2–3. Petitioner relies upon the Federal Circuit’s
decision in In re Giacomini, 612 F.3d 1380, 1382–83 (Fed. Cir. 2010),
asserting that the Federal Circuit addressed waiver and found that the
appellant waived any challenge to priority because he did not raise the
argument at the Board prior to appeal. Id. at 2. With respect to its second
argument, Petitioner asserts that Patent Owner should be estopped from
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arguing that Schuck is not entitled to rely upon the filing date of the
’657 provisional because Patent Owner took an inconsistent prior position
before the United States International Trade Commission and “reversing
course now unfairly prejudices Petitioner.” Id. at 3.
Patent Owner first responds by asserting that it did not waive its
ability to challenge the Petition based on Dynamic Drinkware because the
Federal Circuit issued its decision after the Patent Owner Response was filed
and because we authorized additional briefing on this specific topic. Supp.
Sur-Reply 1. Additionally, Patent Owner distinguishes Giacomini because
the Federal Circuit based its waiver finding on the fact that Giacomini did
not raise the argument to the Board, whereas Patent Owner is raising the
argument, at the Board level, in the present case. Id. at 3.
Second, Patent Owner contends that it is not estopped from
challenging whether Schuck can claim priority to the ’657 provisional
because Patent Owner did not make an argument resulting in success in a
prior proceeding based on a statement related to priority. Id. at 5. Also,
Patent Owner indicates that its representation of priority dates before the
ITC “was not an assertion of a definitive priority date but rather a disclosure
of the earliest application filing priority date of” Schuck. Id. (citing
Ex. 1015, 1). Patent Owner explains that the ITC required Patent Owner to
disclose “the earliest dates to which the asserted patent can claim priority”
and only prevented Patent Owner “from asserting an earlier priority date”; it
did not lock Patent Owner into a “date certain for priority.” Id. at 5–6
(citation omitted).
We find that Patent Owner did not waive its challenge to Schuck’s
priority date, and Patent Owner is not estopped from challenging the priority
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date before us. First, we agree with Patent Owner that Giacomini does not
require us to find that Patent Owner waived an argument directed to
Schuck’s priority date because the timing of the appellant’s argument in
Giacomini is distinguishable from the facts presented here. Most notably,
the parties are still before us, not on appeal, and the record is still open, and
was open when we permitted additional briefing on in the impact of
Dynamic Drinkware. Our authorization for additional briefing on Dynamic
Drinkware’s impact specifically sought to address the important issue of
whether Schuck is entitled to claim priority to the ’657 provisional. Second,
we disagree that Patent Owner is estopped from challenging Schuck’s
priority date. Petitioner relies upon the United States Supreme Court’s
decision in New Hampshire v. Maine, 532 U.S. 742, 750–51 (2001), but
includes the following parenthetical: “holding that a party who successfully
argues one position is estopped from later adopting a contrary position.”
Supp. Reply 4. Even Petitioner’s parenthetical reflects that the Supreme
Court’s decision was based on a successful argument. Petitioner has not
shown that Patent Owner had any specific success in identifying the
’657 provisional’s filing date as Schuck’s earliest possible priority date
before the ITC. Further, we find Patent Owner’s understanding of its filing,
to preclude arguments of earlier priority, not to preclude arguments
regarding later priority, to be the more reasonable. Accordingly, Patent
Owner is not precluded from challenging whether Schuck is entitled to claim
priority to the ’657 provisional.
As noted above, Dynamic Drinkware places the burden on Petitioner
to show that Schuck is entitled to claim priority to the ’657 provisional.
Petitioner contends that the ’657 provisional “provides written description
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support for every limitation of . . . [Schuck’s] claim 1 except the limitation
requiring a ‘telephoto lens pair.’” Supp. Reply 4 (citing App. 1). Petitioner
asserts, however, that the lack of support “is not fatal to the priority claim
here” because
the [’657] provisional application’s disclosures also carried over
into “an application for patent for an invention” claimed in
. . . [U.S. Patent No. 8,220,934 B2 (“the ’934 patent,”
Ex. 1010)2] and . . . [U.S. Publication No. 2008/0225236 A1
(“the ’602 published application,” Ex. 1020)3], making the
provisional’s disclosures effective on its filing date pursuant to
§ 119(e).
Id. at 4 (citing Supp. Reply, Apps. 2–3). Petitioner contends that there was
no other way for the provisional application’s disclosures to become prior art
under §§ 102(e) and 119(e) in Dynamic Drinkware, thus distinguishing the
facts of that case from those presented here. Id. at 5. In other words,
Petitioner argues that the continuation application, which issued as the
’934 patent, is a game-changing distinction. For the same reasons, Petitioner
asserts that In re Wertheim, 646 F.2d 527 (CCPA 1981), also is
distinguishable. Id.
Petitioner raises an additional argument based on the Supreme Court’s
decision in Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390
(1926). Id. at 6. Petitioner contends that “awarding benefit to the
provisional’s filing date based on the ’934 patent and the ’602 published
application is consistent with ‘the Milburn rationale,’ which was codified in
§ 102(e) and underpins its analysis.” Id. Petitioner explains that the Court

2 The ’934 patent issued from an application that was a continuation from
the application that issued as Schuck. Ex. 1010 [63].
3 Petitioner refers to Schuck’s published patent application—
US 2008/0225236 A1—as “the ’602 published application.” Supp. Reply 4.
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held that an earlier-filed, but later-issued, patent was available as a reference
to invalidate a patent that was filed and issued while the reference patent
application was pending before the Patent and Trademark Office. Id.
Patent Owner argues that “Petitioner[] concede[s] that every element
of the claims of . . . [Schuck] is not supported in the [’657] provisional.”
Supp. Sur-Reply 6. Patent Owner contends that Petitioner’s reliance on the
’934 patent and ’602 published application is an improper attempt to
introduce those references as new grounds. Id. Patent Owner asserts that
nothing in Dynamic Drinkware or Wertheim indicate that a Petitioner is
entitled to rely upon a reference that was not the focus of the instituted trial.
Id. Additionally, Patent Owner argues that Dynamic Drinkware states that
“a patent is only entitled to the benefit of its provisional if the provisional
application provides support for the claims in the reference patent,” but
Petitioner’s claim charts only include claim 1. Id. at 7 (citing Dynamic
Drinkware, 800 F.3d at 1382) (emphasis added by Patent Owner).
The fact pattern and issues presented here are substantially the same
as those presented in Dynamic Drinkware, with a few exceptions. The main
difference is that here, Patent Owner did not have the burden to antedate
Schuck because the ’455 patent was filed before the actual filing date of
Schuck. The result of that difference is that the burden of production started
with Petitioner and remains with Petitioner to establish that Schuck is
entitled to claim priority to the ’657 provisional. Dynamic Drinkware is
clear in that Petitioner is required to “compare the claims of . . . [Schuck] to
the disclosure in the . . . [’657] provisional application.” Dynamic
Drinkware, 800 F.3d at 1381. The Federal Circuit explained: “A reference
patent is only entitled to claim the benefit of the filing date of its provisional
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application if the disclosure of the provisional application provides support
for the claims in the reference patent in compliance with § 112, ¶ 1.” Id.
(citing In re Wertheim, 646 F.2d 527, 537 (CCPA 1981)).
Petitioner acknowledges that the ’657 provisional fails to provide
support under § 112, first paragraph, for Schuck’s claim 1. Supp. Reply 4.
Petitioner’s claim chart, submitted as “Appendix 1” to its Supplemental
Reply, indicates that the ’657 provisional refers to a “doublet lens” rather
than a “telephoto lens pair.” Id. at App. 1, A-5. And Petitioner does not
argue that the “doublet lens” provides support for the recited “telephoto lens
pair.” See generally id.
Additionally, Petitioner’s argument that the intervening ’934 patent or
the publication of Schuck’s patent application (the ’602 published
application) distinguish the facts before us from those in Dynamic
Drinkware and In re Wertheim is unpersuasive. Whether either of those
references is entitled to claim priority to the ’657 provisional is irrelevant
when the issue before us is whether Schuck is entitled to do so. Specifically,
Petitioner did not rely on either the ’934 patent or the ’602 published
application in its challenge to the ’455 patent, as set forth in the Petition.
And we did not institute review of claims 1–23 of the ’455 patent based on
either the ’934 patent or the ’602 published application. Any attempt by
Petitioner implicitly to modify its Petition to rely on either the ’934 patent or
the ’602 published application instead of Schuck is rejected. Petitioner did
not file a parallel petition, seeking joinder, or timely inquire concerning any
possibility of amending its Petition to base its challenge on either the
’934 patent or the ’602 published application, and the briefing related to this
issue has concluded, and an oral hearing has been conducted. Accordingly,
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we disagree that the intervening ’934 patent and ’602 published application
distinguish either Dynamic Drinkware or In re Wertheim.
Similarly, we are not persuaded by Petitioner’s reliance on Milburn
for multiple reasons. First, Petitioner acknowledges that what it refers to as
“the Milburn doctrine” was codified in 35 U.S.C. § 102(e), and Petitioner
does not show persuasively that we should read Milburn as requiring
anything beyond application of that statutory section in light of the facts
presented here. Supp. Reply 6. Second, Milburn did not address directly the
question of whether an issued patent is entitled to claim priority to a
provisional patent application, and, specifically, what must be shown in
order to do so. Third, Schuck claims priority to not one, but three
provisional applications, which was not the case in Milburn. Fourth, in
Giacomini, the Federal Circuit expressly considered Milburn and stated: “An
important limitation [on 35 U.S.C. § 119(e)(1)] is that the provisional
application must provide written description support for the claimed
invention.” Giacomini, 612 F.2d at 1383 (emphasis added). Although the
Federal Circuit did not address the application of the argument—that the
reference patent’s provisional application fails to provide written description
support for the claimed subject matter—in Giacomini, because the appellant
had waived it, the Federal Circuit’s decision acknowledges that there was an
argument that could have been raised. Id. Finally, Dynamic Drinkware is
directly on point and clearly establishes that Petitioner is required to show
that the claimed invention of Schuck finds written description support in the
’657 provisional in order to rely on the ’657 provisional’s filing date.
Dynamic Drinkware, 800 F.3d at 1381. It is undisputed that Petitioner has
not done so.
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We find that Petitioner has not shown that claim 1 or any other claim
of Schuck is supported by the ’657 provisional, and, thus, Petitioner has not
shown that Schuck is entitled to claim priority to the ’657 provisional’s
filing date. See Apple, Case IPR2015-00969, slip op. at 12–13. The result
of our finding is that Schuck does not qualify as prior art, under § 102(e), to
the ’455 patent, and, therefore, is not a reference which may be relied upon
to establish the unpatentability of claims in an inter partes review.
See 35 U.S.C. § 311(b) (“A petitioner in an inter partes review may request
to cancel as unpatentable 1 or more claims of a patent only on a ground that
could be raised under section 102 or 103 and only on the basis of prior art
consisting of patents or printed publications.” (emphasis added)).
Accordingly, Petitioner has not demonstrated, by a preponderance of
the evidence, that: (1) claims 1–8, 10–14, and 16–22 are unpatentable as
anticipated by Schuck and (2) claims 9, 15, and 23 are unpatentable as
obvious over Schuck and APA.
B. Appropriate Outcome
Petitioner’s Supplemental Reply states that, if we conclude that
Schuck is not entitled under § 102(e) to claim priority to the
’657 provisional’s filing date, we should terminate the trial without a final
written decision. Supp. Reply 7. Patent Owner disagrees, contending that
Dynamic Drinkware supports the view that we should issue a final written
decision under the circumstances presented here, where a petitioner has not
established priority based on a provisional patent application, because the
Board did so in the proceeding before appeal to the Federal Circuit.
Supp. Sur-Reply 7.
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This is not the first time Petitioner requested that we terminate this
proceeding. In June 2015, Petitioner requested authorization to file a motion
to terminate without a final written decision. Paper 30, 1. Patent Owner
opposed Petitioner’s request. Id. at 4. We issued an Order, Paper 30,
denying Petitioner’s request because, under the circumstances presented at
that time, we determined that Petitioner’s request was not appropriate under
37 C.F.R. § 42.72. Id.; see 37 C.F.R. § 42.72 (“The Board may terminate a
trial without rendering a final written decision where appropriate . . . .”
(emphasis added)). In June 2015, Patent Owner had not filed its Response,
Petitioner had not filed its Reply, oral argument had not occurred, and the
parties had not spent nearly as much time and resources addressing the
issues raised by Petitioner in the Petition and our subsequent Decision to
Institute, as they now have. At this late stage, in light of the above
circumstances, we find that it is not appropriate to terminate this trial.
Rather, as shown above, this Decision is designated as a Final Written
Decision.
C. Patent Owner’s Amended Motion to Seal
Patent Owner filed an Amended Motion to Seal. Paper 65. Petitioner
filed an Opposition. Paper 69. Patent Owner did not file a reply.
There is a strong public policy in favor of making information filed in
an inter partes review open to the public, especially because the proceeding
determines the patentability of claims in an issued patent and, therefore,
affects the rights of the public. See Garmin Int’l v. Cuozzo Speed Techs.,
LLC, Case IPR2012-00001, slip op. at 1–2 (PTAB Mar. 14, 2013)
(Paper 34). Under 35 U.S.C. § 316(a)(1) and 37 C.F.R. § 42.14, all papers
filed in an inter partes review generally are open and available for access by
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the public. A party, however, may file a concurrent motion to seal, and the
information at issue is sealed pending the outcome of the motion.
It is only “confidential information” that may be protected from
disclosure, 35 U.S.C. § 316(a)(7), and, even then, there is a public interest in
“maintaining a complete and understandable file history” of the proceeding.
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760
(Aug. 14, 2012). The standard for granting a motion to seal is “for good
cause.” 37 C.F.R. § 42.54(a). The party moving to seal bears the burden of
proof in showing entitlement to the requested relief. 37 C.F.R. § 42.20(c).
Patent Owner seeks to place under seal the following information:
1. The following portions of the deposition transcript of
Matt Cowan (Ex. 2192): 65:25–66:13; 66:21–25; 67:19–68:11;
68:25–69:3; 69:13–18; 71:25–74:17; 89:6–90:25; 104:18–
105:20; and 208:15–209:14.
2. The following portions of the deposition transcript of
Matthew S. Brennesholtz (Ex. 2193): 86:21–87:13; 88:15–89:7;
90:20–91:16; 92:6–13; 93:10–23; 94:7–14; 95:9–25; and
97:16–98:9.
3. The following portion of the transcript of the conference
call with the Board, held on October 2, 2015 (Ex. 2191): 30:13–
17.
Paper 65, 2–3. Patent Owner notes that it only seeks to seal “14 pages from
the 216 page Cowan transcript . . . 5 lines of the . . . [October 2 conference
call] transcript . . . and . . . 7 pages of the 185 page Brennesholtz transcript.”
Id. at 5. However, we note simply that the sealing of even just one page that
should not be sealed is one page too many.
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According to Patent Owner, the material sought to be sealed contains
confidential information that “relate[s] to designs and concepts that were
considered by Patent Owner, but were ultimately not commercially pursued
for various technical and business reasons.” Id. at 3. With regard to
potential harm due to disclosure, Patent Owner states:
Such disclosure would publicly describe the embodiments and
designs that were not commercially pursued by Patent Owner
and would provide a road-map to a competitor on which
designs not to pursue for a competitive product. This would
provide a significant short-cut to a competitor seeking to enter a
highly-competitive market for stereoscopic imagers. This
competitive harm cannot be cured by any means other than
maintaining the confidentiality of these alternative designs under
seal.
Id. at 3–4.
According to Petitioner, “[t]he purported confidential portions of
Mr. Cowan’s testimony all relate to the Figure 6(a) embodiment [of the
’455 patent].” Paper 69, 2. The contention is that if the Figure 6(a)
embodiment of the ’455 patent is not confidential, then neither should this
other information. Petitioner also argues that because these alleged
pre-existing designs are nearly a decade old, that Patent Owner did not
commercially pursue them is readily apparent from the fact that they are not
within Patent Owner’s commercial products. Id. at 5. Petitioner states:
“Given the passage of time and that RealD[’s] products are publically
available, there is nothing confidential about what designs RealD chose not
to pursue commercially.” Id.
Patent Owner has taken the necessary steps under our Rules and
provides the necessary evidence, including a certification that the
information sought to be sealed has not been published or otherwise made
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Patent 7,857,455 B2

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public. Paper 65, 5. Although we appreciate the similarities between
Mr. Cowan’s testimony and the Figure 6(a) embodiment, as identified by
Petitioner, we are not persuaded sufficiently that his testimony was directed
to the Figure 6(a) embodiment. Additionally, the burden to the public from
sealing the limited material identified in Patent Owner’s Amended Motion is
minimal, particularly because we need not identify those portions of
Mr. Cowan’s testimony to address the issues in this case.
We have balanced Patent Owner’s assertion of confidentiality with the
public’s interest in having a sufficiently understandable record with respect
to the substantive decisions made with regard to patentability. We find that
the potential harm to Patent Owner outweighs the minimal public interest for
access to the information at issue. Accordingly, Patent Owner’s Amended
Motion to Seal (Paper 65) is granted.
IV. CONCLUSION
Petitioner has not demonstrated, by a preponderance of the evidence,
that (1) claims 1–8, 10–14, and 16–22 are unpatentable as anticipated by
Schuck, or (2) claims 9, 15, and 23 are unpatentable as obvious over Schuck
and APA.
V. ORDER
For the reasons given, it is:
ORDERED that Petitioner’s request for cancellation of claims 1–23 of
U.S. Patent No. 7,857,455 B2 is denied;
FURTHER ORDERED that Patent Owner’s Amended Motion to Seal
(Paper 65) is granted; and
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FURTHER ORDERED that, because this is a Final Written Decision,
parties to this proceeding seeking judicial review of it must comply with the
notice and service requirements of 37 C.F.R. § 90.2.

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For PETITIONER:

Evan Finkel
Roger Wise
Brian Nash
Michael Chibib
Josh Tucker
PILLSBURY WINTHROP SHAW PITTMAN LLP
evan.finkel@pillsburylaw.com
roger.wise@pillsburylaw.com
brian.nash@pillsburylaw.com
michael.chibib@pillsburylaw.com
josh.tucker@pillsburylaw.com

For PATENT OWNER:

Brian McCormack
William D. McSpadden
BAKER & McKENZIE LLP
brian.mccormack@bakermckenzie.com
william.mcspadden@bakermckenzie.com