PROTECTIVE ORDER MATERIAL

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

ELECTRONIC ARTS INC. and EA DIGITAL ILLUSIONS CE AB, Petitioner

v.

TERMINAL REALITY, INC., Patent Owner

______

Case IPR2016-00929 Patent 7,061,488 ______

EXCLUSIVE LICENSEE INFERNAL TECHNOLOGY, LLC’S PATENT OWNER REPSONSE

Mail Stop “PATENT BOARD” Patent Trial and Appeal Board U.S. Patent & Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450

PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488

Table of Contents

I. Introduction ...... 1

II. Technical Background ...... 2

III. Claim Construction ...... 6 A. light accumulation buffer...... 6 B. precalculated matrix transformation look-up table...... 9

IV. The challenged claims are patentable because Petitioners failed to establish a prima facie case of obviousness for each instituted ground...... 11 A. A POSITA would not have identified or had the skills to correct the errors and omissions in Segal...... 13 1. The level of ordinary skill in the art for the ’488 patent...... 14 2. Segal requires a level of skill beyond that of a POSITA...... 16 3. Segal provides limited, incomplete details regarding its applications...... 17 a) Slide Projector ...... 17 b) Spotlight ...... 20 c) Shadow Determination ...... 21 B. A POSITA would not have combined the Segal’s applications as proposed by Petitioners...... 25 1. Petitioners’ knowledge of combination would have only been reached through an expert in the field...... 26 2. Petitioners’ proposed combination lacks the requisite rational underpinnings and goes beyond the level of skill in the art...... 28

V. Independent Claims 1, 11, and 39 are patentable...... 32 A. Petitioners do not establish that Segal alone or in combination with Foley and/or McReynolds teaches or suggests the “comparing” step...... 32 1. Petitioners’ reliance on Segal is misplaced because Segal does not compare “observer data” with “lighting data.” ...... 33

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2. Reliance on the transformation matrices, Mc and Ml, is misplaced...... 36 B. Petitioners failed to establish that Segal alone or in combination with Foley and/or McReynolds teaches or suggests a “light accumulation buffer.” ...... 40 1. Segal does not disclose a light accumulation buffer...... 40 2. Petitioners never show that a POSITA would have combined Segal and McReynolds to accumulate light in a separate buffer...... 41

VI. Dependent claims 7-9, 17-19, and 45-47 are patentable...... 45 A. Claims 7, 17, and 45...... 45 B. Claims 8, 18, and 46...... 47

VII. Petitioners failed to establish that Foley is a prior art publication therefore, Grounds 2 and 4 relying on Foley fail...... 49

VIII. Secondary Considerations of Non-Obviousness Confirm that the Claimed Invention is Not Obvious ...... 50 A. The Claimed Invention Satisfied a Long-Felt Need ...... 52 B. The Claimed Invention Received Industry Praise ...... 55 C. Video Games Practicing the Claimed Invention Enjoyed Substantial Commercial Success ...... 57 1. EA Incorporated the Claimed Invention of the Patents in its Frostbite 2 and Frostbite 3 Game Engines ...... 58 2. The EA Games Using the Claimed Invention Have Been Commercially Successful Due, in large Part to the Use of the Invention ...... 61

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PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488

TABLE OF AUTHORITIES

Cases

Al-Site Corp. v. VSI Int’l, Inc., 174 F.3d 1308 (Fed. Cir. 1999) ...... 15

Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281 (Fed. Cir. 1985)...... 51

Asyst Tech’n., Inc. v. Emtrak, Inc., 544 F.3d 1310 (Fed.Cir.2008)...... 54

Custom Accessories, Inc. v. Jeffrey-Allen Indus., Inc., 807 F.2d 955 (Fed. Cir. 1986)...... 11,12

Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387 (Fed. Cir. 1988) ...... 50-51

Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015) ...... 49

Ex Parte Kabra, 2011 WL 2491033, No. 2010-005035 (B.P.A.I. June 20, 2011) ...... 42

Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d 1573 (Fed. Cir. 1997) ...... 57

Geo. M. Martin Co. v. Alliance Mach. Sys. Intern. LLC, 618 F.3d 1294 (Fed.Cir.2010)...... 54

Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966) ...... 11, 15, 50

In re Cavanaugh, 436 F.2d 491 (CCPA 1971) ...... 51

In re Gershon, 372 F.2d 535 (CCPA 1967) ...... 51 - iii -

PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488

In re GPAC Inc., 57 F.3d 1573 (Fed. Cir. 1995)...... 14, 50

In re Hiniker Co., 150 F.3d 1362 (Fed. Cir. 1998) ...... 50

In re Huang, 100 F.3d 135 (Fed. Cir. 1996)...... 49-50

In re Kahn, 441 F.3d 977 (Fed. Cir. 2006)...... 41

In re Kao, 639 F.3d 1057 (Fed. Cir. 2011) ...... 50

In re Kotzab, 217 F.3d 1356 (Fed. Cir. 2000) ...... 42

In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364 (Fed. Cir. 2016) ...... 38, 49

In re Nuvasive, 842 F.3d 1376 (Fed. Cir. 2016) ...... 41

In re Tiffin, 448 F.2d 791 (CCPA 1971) ...... 50

Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359 (Fed. Cir. 2016) ...... 38

J.T. Eaton & Co. v. Atlantic Paste & Glue Co., 106 F.3d 1563 (Fed. Cir. 1997) ...... 56

KSR Int’l v. Teleflex Inc., 550 U.S. 398 (2007) ...... 12, 28

Leo Pharm. Products, Ltd. v. Rea, 726 F.3d 1346 (Fed. Cir. 2013) ...... 50

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PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488

Newell Cos., Inc. v. Kenney Mfg. Co., 864 F.2d 757 (Fed. Cir. 1988)...... 51

Okajima v. Bourdeau, 261 F.3d 1350 (Fed. Cir. 2001) ...... 15

Ormco Corp. v. Align Technology, Inc., 463 F.3d 1299 (Fed. Cir. 2006) ...... 57

Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309 (Fed. Cir. 1985)...... 50

Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 711 F.3d 1348 (Fed. Cir. 2013) ...... 57

Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714 (Fed. Cir. 1991)...... 11

Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448 (Fed. Cir. 1985)...... 13-14

Stryker Corp. v. Karl Storz Endoscopy-America, Inc., IPR2015-00677, Paper 15 (P.T.A.B. Sept. 2, 2015) ...... 28, 48

Stryker Corp. v. Karl Storz Endoscopy-America, Inc., IPR2015-00764, Paper 13 (P.T.A.B. Sept. 2, 2015) ...... 33

Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340 (Fed. Cir. 2012) ...... 50

Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356 (Fed. Cir. 2012) ...... 57

Statutes 35 U.S.C. § 103 ...... 11 35 U.S.C. § 316(e) ...... 41

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PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488

EXHIBIT LIST

Exhibit Description No.

2001 IGN – Reviewed on PC Nocturne, Nov. 22, 1999, http://www.ign.com/articles/1999/11/23/nocturne 2002 Foley, James D., et al., “Computer Graphics Principles and Practice,” Second Edition in C, July 1997 2003 GameSpot - Nocturne Review, Nov. 17, 1999, http://www.gamespot.com/reviews/nocturne-review/1900-2543943 2004 CNN – The games engines of the not-too-distant future, Aug. 21, 1998, http://www.edition.cnn.com/TECH/computing/9808/21/gameengines.idg 2005 Woo, Mason, et al., “OpenGL Programming Guide, Second Edition, the Official Guide to Learning OpenGL, Version 1.1,” 1997 2006 IGN – Blair Witch Volume 1: Rustin Parr, Oct. 17, 2000, http://www.ign.com/articles/2000/10/18/blair-witch-volume-1-rustin- parr 2007 GameSpot - Blair Witch Volume 1: Rustin Parr Review, Sept. 27, 2000, http://www.gamespot.com/reviews/blair-witch-volume-1-rustin- parr/1900-2634193 2008 Declaration of Leonard Laub 2009 Curriculum Vitae of Leonard Laub 2010 Transcript of January 25, 2017 Deposition of Mr. Goodin 2011 Infernal Technology, LLC et al. v. Electronic Arts, Inc., 2:15-cv-1523 (E.D. Texas) Memorandum Opinion and Order 2012 Order on Emergency Motion to Modify Protective Order, Infernal Technology, LLC et al. v. Electronic Arts, Inc., 2:15-cv-1523 2013 Intentionally Left Blank 2014 U.S. Patent No. 5,742,749 2015 U.S. Patent No. 6,016,150 2016 U.S. Patent No. 6,903,741 2017 U.S. Patent No. 6,664,962 2018 U.S. Patent No. 5,864,342 2019 U.S. Patent No. 6,437,782 2020 U.S. Patent No. 7,034,823 2021 U.S. Patent No. 6,876,362 2022 Serju-Harris, Tricia, “New breed of horror thrillers carving out better

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PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488

storylines and graphics to kill for,” Houston Chronicle, October 22, 1999 2023 Incite Golden Award 2024 Andersson, Johan, et al., “Frostbite Rendering Architecture and Real- time Procedural Shading & Texturing Techniques,” DICE 2025 Transcript of the Deposition of Johan Andersson, Infernal Technology, LLC et al. v. Electronic Arts, Inc., 2:15-cv-1523 (E.D. Texas), October 13, 2016 [CONFIDENTIAL – ATTORNEYS’ EYES ONLY] 2026 Ferrier, Alex, et al., “Deferred Shading Techniques using Frostbite in ‘Battlefield 3’ and ‘Need for Speed The Run’,” SIGGRAPH 2011, August 7-11, 2011 2027 Andersson, Johan, “DirectX 11 Rendering in Battlefield 3” 2028 Coffin, Christina, “SPU-based Deferred Shading for Battlefield 3 on Playstation 3,” March 8, 2011 2029 White, John, et al., “More Performance! Five Rendering Ideas from Battlefield 3 and Need For Speed: The Run,” SIGGRAPH 2011 2030 “The Main Event” Presentation Slides [CONFIDENTIAL – ATTORNEYS’ EYES ONLY] 2031 Expert Report of Richard F. Ferraro, Main Report, Infernal Technology LLC et al. v. Electronic Arts Inc., Case No. 2:15-cv-1523 (E.D. Texas), November 4, 2016. [CONFIDENTIAL – ATTORNEYS’ EYES ONLY] 2032 “Battlefield 3 Wages War With Groundbreaking Frostbite 2 Game Engine Technology,” EA Press Room, February 23, 2011 2033 “EA Claims the Battlefield on October 25 with the Launch of Highly- Anticipated Battlefield 3,” EA Press Room, June 6, 2011 2034 “EA and Virgin Gaming Announce Battlefield 3 Videogame Competition with $1.6 Million up for Grabs,” EA Press Room, September 27, 2011 2035 “EA’s Internationally Award-Winning Battlefield 3 Begins Its Assault on Retail Worldwide,” EA Press Room, October 25, 2011 2036 “Battlefield 3 Sells 5 Million Units in First Week,” EA Press Room, October 31, 2011 2037 “DICE Celebrates Ten Years on the Battlefield and Two Million Milestone for Battlefield 3 Premium with Free PC Download of Battlefield 1942,” EA Press Room, November 5, 2012 2038 July Publishing Meeting Presentation Slides, Americas Marketing, EAGL [CONFIDENTIAL – ATTORNEYS’ EYES ONLY] 2039 “FrostbiteTM 3 Next Generation of Battle,” http://www.battlefield.com/battlefield-4/features/frostbite-3 2040 “Plants vs. Zombies Garden Warfare Blasts Its Way Onto Xbox One and - vii -

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Xbox 360 on February 18,” EA Press Room, November 21, 2013 2041 “Star WarsTM BattlefrontTM Begins Shipping Across the Galaxy November 17, 2015,” EA Press Room, April 17, 2015 2042 “It’s Tee Time for EA SPORTS Rory McIlroy PGA TOUR,” EA Press Room, July 14, 2015 2043 Johansson, Daniel, et al., “Rendering the World of Mirror’s Edge” 2044 Battlefield 4 APMM Presentation Slides [CONFIDENTIAL – ATTORNEYS’ EYES ONLY] 2045 Medal of Honor Warfighter MAM Presentation Slides [CONFIDENTIAL – ATTORNEYS’ EYES ONLY] 2046 Battlefield 4 In-Depth Ad Test [CONFIDENTIAL – ATTORNEYS’ EYES ONLY] 2047 Battlefield 4 Post Launch Survey Results, May 5, 2014 [CONFIDENTIAL – ATTORNEYS’ EYES ONLY] 2048 Battlefield 3 Post-Launch Research, US Final Report, February 21, 2012 [CONFIDENTIAL – ATTORNEYS’ EYES ONLY] 2049 Battlefield 4 In-Depth Ad Test [CONFIDENTIAL – ATTORNEYS’ EYES ONLY] 2050 Sherer, Stew, “Crytek Boss Says Visuals Are ‘60% of the Game’,” The Escapist, April 13, 2013 2051 Declaration of Mark Randel 2052 Declaration of Richard Ferraro 2053 Declaration of Nina Nelson

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PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488

I. Introduction With the benefit of a fully developed record, the Board should find all challenged claims patentable. The ’488 patent addressed a serious problem that confronted graphic designers as customers demanded ever increasing processing capabilities on their personal computers. The ’488 patent solved the problem through an inventive approach that used improved shadow rendering methods and arrangements that allowed real-time interactive graphics on conventional PCs.

Exclusive Licensee, Infernal Technology LLC (“Infernal”) will show that

Petitioners’ challenge has no merit. First, Petitioners failed to establish a prima facie case that Segal alone or in combination with Foley and/or McReynolds, renders the challenged claims obvious. The Supreme Court set forth the test for determining obviousness, and that test requires the asserted art to be viewed through the lens of a person of ordinary skill in the art, (“POSITA.”) In this case,

Petitioners have relied on an expert’s analysis, not a POSITA’s. This approach is not proper. But this approach is necessary for Petitioners to make their case because the three-page Segal paper suffers two consequential defects. Because of its brevity, Segal’s descriptions are incomplete, requiring Petitioners to provide the missing disclosures. Infernal will show this exercise greatly exceeds the capabilities of the POSITA, but not beyond the abilities of an expert like

Petitioners’ expert who has 35 years of experience in this technology. More

- 1 - PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488 importantly, Segal contains errors, errors that taint any obviousness analysis unless corrected. Only an expert with the experience of Petitioners’ expert has the capability to address Segal’s errors, a POSITA does not. But Infernal will show that Petitioners, even with an experienced expert, still failed their heavy burden because Petitioners failed to provide the required rational underpinnings to combine the three applications of Segal.

Second, Petitioners have not shown that Segal alone or in combination with

McReynolds and/or Foley teaches or suggests each of the elements of the independent or dependent claims. Third, Petitioners failed to establish that Foley is a printed publication, and this error cannot be corrected. Finally, Infernal presents the important secondary considerations that support a finding of nonobviousness.

II. Technical Background At the time of the ’488 patent, the increased processing capabilities of personal computers led to wide-spread popularity of computer generated graphics.

(Ex. 1001, ’488 patent, 1:18–27.) In particular, computer games displayed virtual three-dimensional (3D) worlds that users could explore interactively. (Id.)

However, graphically rendering these virtual worlds required conducting millions of calculations between each frame to account for changes in viewpoint or movement of objects within the virtual world. (’488 patent, 1:49–51.)

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Due to this computational burden, “[o]ne of the unfortunate compromises made in the past, has been in the area of lighting and, more particularly, in the area of rendering shadows cast by lighted 3D objects.” (’488 patent, 1:53–54, 1:61–63.)

The ’488 patent addressed this recognized and unsolved need through improved shadow rendering techniques that “support real time interactive graphics on conventional PCs and the like and allow for multiple light sources to be modeled in a more efficient and realistic manner.” (’488 patent, 3:1–6.)

Scene 10 depicted in Figure 2 “includes at least one 3D object 12 that is arranged within a defined space (e.g., background or backdrop).” (’488 patent,

6:32-34.) A world space coordinate system 20 provides 3D coordinates for the scene, which can be converted to 2D coordinates that represent the scene as viewed from the perspectives of the camera and the light sources. (’488 patent, 6:51–59.)

This process produces both a 2D color image and a depth image that represents the

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¶¶35-40.)

An embodiment of the improved shadow rendering process of the ’488 patent is illustrated in Figure 4 (below). The process begins by rendering the camera’s view, “thereby producing camera image 51A and camera depth 51B.”

(’488 patent, 8:42-44; Laub, ¶¶51-55.) Next, the view from a light source is rendered, producing a light image and depth (e.g., 51C, 51D). (’488 patent, 8:43-

46; Laub, ¶¶56-57.) In step 106, “a pixel 60 in camera image 51A is transformed or

- 4 - PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488 is otherwise used to determine a corresponding pixel” in a light image (e.g., 51C).

(’488 patent, 8:47-49; Laub, ¶¶58-60.) If the transformed pixel is illuminated by the light source, “then the corresponding pixel data value in the light image is added to the light accumulation buffer 51G” (step 108). (’488 patent, 8:60-63;

Laub, ¶61.) Steps 106 and 108 “are repeated for each of the pixels in camera image

51A.” (’488 patent, 9:4-6.)

After all of the pixels in camera image 51A have been processed (steps 106-

110), “the process is repeated for each additional light source.” (’488 patent, 9:6-8;

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Laub, ¶62.) After each light source has been processed, “a pixel data value from camera image 51A is multiplied by a corresponding pixel data value from light accumulation buffer 51G and the results are stored in camera image 51A.” (Id.,

9:1-20; Laub, ¶¶63-64.) This step is repeated for each pixel in camera image 51A and the resulting camera image “is further rendered in accord with other processes, as needed, and eventually stored in frame buffer 50 and displayed as a frame of data.” (’488 patent, 9:22-25; Laub, ¶65.)

III. Claim Construction

A. light accumulation buffer. The term “light accumulation buffer” appears twice in the challenged independent claims: (1) “storing at least a portion of said light image data associated with said point and said light source in a light accumulation buffer,” and (2) “combining at least a portion of said light accumulation buffer with said observer data.” For the storing step, the light accumulation buffer refers to where something is stored (“in a light accumulation buffer”), while in the combining step, the phrase refers to what is stored (“at least a portion of said light accumulation buffer”). (See Laub, ¶¶94-97.) For the purposes of this IPR, Infernal addresses the construction in the “storing” step.

In the “storing” step, Infernal’s proposed construction of the term “light accumulation buffer” is “a region of memory separate and distinct from the frame

- 6 - PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488 buffer, where such data is stored.” (Laub, ¶95.) In this step, both parties’ proposed constructions recognize that the light accumulation buffer refers to memory, but the parties dispute whether the light accumulation buffer is separate and distinct from the frame buffer.

The ’488 patent describes that the light accumulation buffer accumulates light falling on a pixel, whereas the frame buffer stores the final pixel data to be displayed. (’488 patent, 7:45-61, 9:11-15, 9:22-25.) The light accumulation buffer and frame buffer consistently are described as separate and distinct portions of memory, as highlighted in annotated Figure 3. (See also, Id., 7:45-61, 9:11-15,

9:22-25; Laub, ¶¶66, 97-99.)

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Figure 1 also demonstrates that the light accumulation buffer portion 51 and the frame buffer portion 50 are different regions of primary memory 48. (’488 patent, 6:1-5.)

The Board points to a statement in the ’488 patent that “[t]he use of Z- buffers is well-known” to support its preliminary finding that the light accumulation buffer and frame buffer are not required to be separate and distinct.

(Inst. Dec., 13, citing ’488 patent, 7:15-16.) But, this passage supports Infernal.

(Laub, ¶100.) Unlike Z-buffers, which store depth values when a scene is rendered, a light accumulation buffer separately stores light image data. (See id., Abstract,

8:66-9:3, 9:16-20, 9:45, Figure 3.)

The claims also support Infernal’s position reciting a memory that

“includ[es] a light accumulation buffer portion and a frame buffer portion” (claim

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11). This explicit claim language is thus further evidence that the light accumulation buffer is separate and distinct from a frame buffer. (Laub, ¶101.)

B. precalculated matrix transformation look-up table. The broadest reasonable interpretation of “precalculated matrix transformation look-up table” recited in dependent claims 8, 18, and 46 is a “look- up table of lighting data coordinates that correspond to observer data coordinates where the lighting data coordinates are calculated at least a full frame in advance of the converting step.” (Laub, ¶102.)

Transformation tables are mathematical constructs used to transform one set of data into another. (Laub, ¶105.) Specifically, transformation tables in the ’488 patent provide rapid transformation from one coordinate system (e.g. from the camera perspective) to a second coordinate system (e.g. from the light-source perspective). (’488 patent, 7:64-8:1, 8:30-35; Laub, ¶105.)

A “precalculated matrix transformation look-up table” is not merely a matrix transformation calculation. (See Id., 8:48-54, 9:40-44, 9:49-56; Laub,

¶¶103-104.) Indeed, the pseudocode in the ’488 patent explicitly differentiates between a look-up table and a matrix transformation calculation:

USING EITHER: TRANSFORM LOOK-UP TABLE, OR MATRIX TRANSFORMATION CALCULATION

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(’488 patent, 9:42-44.)

At the time of the invention, a POSITA would understand that rendering occurs on a frame-by-frame basis. (Id., ¶107.) Thus, the unit of time relevant to distinguish between a transformation table being calculated before it is used or as it is used would be, at a minimum, a single frame. (Id.)

The ’488 patent uses the transformation table during the calculation of every output frame. (Laub, ¶106.) Thus, the transformation table must take into account the location and orientation of the camera and light for every output frame. (Id.)

However, the transformation table does not need to be recalculated when the camera and light are stationary from one frame to the next. (’488 patent, 8:5-29;

Laub, ¶106.) In that situation, the transformation table calculated for a previous frame (i.e. a “precalculated” transformation table) can be reused for subsequent frames as opposed to calculating the transformation table as used by each frame on the fly. (Laub, ¶106.)

Further, the “precalculated matrix transformation look-up table” includes lighting data coordinates: “in step 134, a transformation is made from camera coordinates to light source coordinates. … In step 136, the resulting transformation data (camera to light source) is provided in a translation table per step 138.” (’488 patent, 9:61-10:2.)

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IV. The challenged claims are patentable because Petitioners failed to establish a prima facie case of obviousness for each instituted ground. Each of the four instituted grounds relies on Segal alone or in combination with Foley and/or McReynolds. Petitioners’ reliance on Segal in all of the instituted grounds fails for two reasons. First, each of the four Segal-based grounds fails the test for establishing a prima facie case of obviousness:

Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined

Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966) (emphasis added). Graham’s obviousness framework explicitly establishes the centrality of the level of ordinary skill in the pertinent art and, as recognized by the Federal

Circuit, “the critical question is whether a claimed invention would have been obvious at the time it was made to one with ordinary skill in the art.” Custom

Accessories, Inc. v. Jeffrey-Allen Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)

(internal citation omitted) (emphasis added).The Federal Circuit subsequently explained that the “importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.” Ryko Mfg.

Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991).

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Petitioners’ obviousness challenges must fail because Petitioners do not rely on a POSITA as required by both the Supreme Court and the Federal Circuit.

Instead, Petitioners base their Segal argument on the understanding of an expert, but not on the understanding of a POSITA. Infernal will show that Segal, a three- page paper, leaves out critical information that a POSITA would need and, more importantly, contains errors that only a seasoned expert could correct. Petitioners’ reliance on an expert rather than on a POSITA to fill in these gaps and correct these errors is impermissible. See Custom Accessories, Inc. v. Jeffrey-Allen

Industries, Inc., 807 F.2d 955, 963 (Fed. Cir. 1986) (Obviousness is determined by reference to a POSITA—“not to the judge, or to a layman, or to those skilled in remote arts, or to geniuses in the art.”).

Second, Petitioners’ Segal-based arguments also fail because Petitioners never provide the requisite rational underpinnings to support their proposed modifications to Segal as required by KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418

(2007) (an obviousness challenge must also provide some “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”).

Instead, Petitioners and their expert, Mr. Goodin, merely provide unsupported, conclusory statements that do not establish how or why a POSITA would have combined the applications of Segal or made the modifications proposed by

Petitioners.

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A. A POSITA would not have identified or had the skills to correct the errors and omissions in Segal. Segal’s brevity exposes the inherent difficulties in relying on Segal. First, because Segal dedicates only one page to the three applications used by Petitioners, its discussion of these applications is necessarily incomplete. Segal misses key operational details that would not have been obvious to a POSITA. (See Laub,

¶¶69-84, 110-117.) Second, in addition to these omissions, Segal’s statements contain material errors. (See id.) Petitioners’ discussion of Segal’s applications proves that to understand Segal requires more than a POSITA. It requires an expert. And the explanation of an expert is just what Petitioners provide. Instead of describing the actual teachings of Segal, Petitioners modify the disclosures on the fly—correcting errors and filling in omissions based on their expert’s 35 years of graphics experience. Such an approach is impermissible hindsight. See In re Fine,

837 F.2d 1071, 1074 (Fed. Cir. 1988). “One cannot use hindsight reconstruction to pick and choose among isolated disclosures in the prior art to deprecate the claimed invention.” (Id.)

In this section, Infernal first explains the level of ordinary skill and then discusses Segal, showing that Segal could only be understood and corrected by an expert, not by a POSITA.

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1. The level of ordinary skill in the art for the ’488 patent. The POSITA is a hypothetical person “presumed to be one who thinks along the line of conventional wisdom in the art and is not one who undertakes to innovate, whether by patient, and often expensive, systematic research or by extraordinary insights, it makes no difference which.” Standard Oil Co. v.

American Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985). Factors to consider in determining the level of ordinary skill in the art may include the “type of problems encountered in the art,” “prior art solutions to those problems,” “rapidity with which innovations are made,” “sophistication of the technology” and

“education level of active workers in the field.” In re GPAC, 57 F.3d 1573, 1579

(Fed. Cir. 1995).

Section III explains that the ’488 patent presents techniques for lighting and shading on 2D data produced by a previously rendered 3D scene. The Background of the ’488 patent articulates the prior art solutions to the type of problems encountered in the computer graphics art prior to the ’488 patent invention. (Laub,

¶¶48-49.)

Applying these well-recognized factors, a POSITA is a person with a

Bachelor’s of Science degree in electrical engineering, computer science, software engineering, or equivalent, with at least two years of work experience in the field of three-dimensional computer graphics. (Laub, ¶¶24-25.) The District Court in the

- 14 - PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488 co-pending litigation adopted this definition of a POSITA, noting that the defendants (Petitioners) did not provide an alternative definition for a POSITA or object to Infernal’s definition. (Ex. 2011, 13.)

Neither Petitioners nor Mr. Goodin explicitly define a POSITA, contending that they are not required to provide a definition of a POSITA but can rely on the teachings of the prior art. For that reason, Petitioners merely list topics in the 3D computer graphics prior art that a POSITA might know. (Petition, 7-12.)

Petitioners’ reliance on the Okajima case is misplaced because in Okajima the

Federal Circuit found no harm in the Board’s failure to set forth express findings as to the level of skill “under the circumstances of this case” where the parties agreed the level of skill was high and the Board found the claims patentable. Okajima v.

Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Importantly, in Okajima, the

Federal Circuit reiterated the importance of defining the level of ordinary skill in the art: “the level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.” Id. “This reference point prevents these factfinders from using their own insight or, worse yet, hindsight, to gauge obviousness.” Id. (citing Al-Site Corp. v. VSI Int’l, Inc., 174

F.3d 1308, 1324 (Fed. Cir. 1999)).

Thus, to ensure the requisite objectivity for the obviousness analysis, and to ensure compliance with Graham’s requirement that obviousness be determined

- 15 - PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488 through the prism of a POSITA, not an expert, the Board should adopt Infernal’s and District Court’s definition of a POSITA as a person with a Bachelor’s of

Science degree in electrical engineering, computer science, software engineering, or equivalent, with at least two years of work experience in the field of three- dimensional computer graphics. (Laub, ¶¶24-25.)

2. Segal requires a level of skill beyond that of a POSITA. The intended audience for Segal far exceeded the level of skill of a POSITA.

Allegedly, Segal was distributed to SIGGRAPH members. (Ex. 1005, Goodin

Decl., ¶¶129-131.) Petitioners’ expert, Mr. Goodin, confirmed that members of

SIGGRAPH would have had at least five years of relevant work experience in the graphics field. (Ex. 2010, Goodin Dep., 97:2-6 (“Q. Are there any requirements for individuals to join SIGGRAPH? A. I believe you must be working in the graphics industry for, I believe, it’s five years to be a member.”). Thus, SIGGRAPH members have skills greater than those of a POSITA. Moreover, Segal was designed for a more advanced audience than simply the SIGGRAPH “beginner” members. Segal was included in course materials for an “intermediate” course at

SIGGRAPH 96. (Ex. 1013, 7.) SIGGRAPH divides its courses into three levels:

“beginning,” “intermediate,” and “advanced.” (Id.) Although beginning courses do not have prerequisites, nevertheless, prior experience with computing or graphics may be helpful for these courses. (Id.) But SIGGRAPH recommends attendees for

- 16 - PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488 intermediate courses have a working knowledge of the subject, based on introductory courses, reading, and practical experience. (Id.) These intermediate courses “supply substantial technical content in detail, such as algorithms, techniques, and architectures.” (Id.)

3. Segal provides limited, incomplete details regarding its applications. Segal describes multiple applications for projecting a texture (exemplified as a slide) onto an arbitrarily-oriented surface and observing the result from the viewpoint of an observer. (Laub, ¶67.) This projective texturing is shown in Figure

1.

a) Slide Projector The “slide projector” has three passes, “[e]ach pass entail[ing] scan- converting every polygon in the scene.” (Segal, 250.) Segal provides no detail on

- 17 - PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488 how to integrate scan-conversion into each pass, and Petitioners provide no explanation how scan-conversion is used in each pass. Segal merely identifies the result: the scan-conversion process performed at each pass “yields a series of screen points and corresponding texture points for each polygon.” (Id. (emphasis added).) Each screen point has an associated color and z-value, denoted c and z, respectively. (Id.) And, each texture point also has an associated color and z-value, denoted cτ and zτ. (Id.) Segal, although identifying the existence of these values, does not describe how the zτ value is generated or where it is stored. Petitioners provide no such details.

Initialization: Segal describes a “framebuffer of pixels” where each pixel, p, in the framebuffer has an associated color and z-value, denoted cp and zp. (Id.,

250.) Prior to performing the three passes, Segal initializes zp to some large value for all p and initializes cp to some fixed ambient scene color for all p. (Laub, ¶¶69-

72.)

PASS 1: For each scan-converted point in PASS 1, Segal performs the following actions:

If z < zp, then zp ← z

(Segal, 251.) That is, if the z-value determined from the scan-conversion process is less than the z-value currently stored for the corresponding pixel, the z-value of the pixel (zp) is replaced with the z-value from the scan-conversion process. Segal

- 18 - PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488 refers to this process as “hidden surface removal” because it effectively removes surfaces not visible from the observer’s perspective by setting z-values of a pixel

(zp) to the object visible to the observer. (Laub, ¶73.)

PASS 2: PASS 2 of Segal “increases the brightness of each pixel according to the projected spotlight shape” by performing the following actions:

If z = zp, then cp ← cp + cτ

(Segal, 251.) If the z-value determined from the scan-conversion process of this pass equals the z-value for the corresponding pixel (zp), a color value of a texture point (cτ) is added to cp which prior to this pass was the fixed ambient scene color.

According to Segal, the test of PASS 2 “ensures that portions of the scene visible from the eye point are brightened by the texture image only once.” (Id.)

Importantly, Segal stresses that “occlusions are not considered” in its slide projector application. (Id.) That is, illumination from the light source is applied to every point in the scene within the light source’s field of view, regardless of whether a point is blocked from the light source by another object and would therefore be in shadow. (Laub, ¶74.)

PASS 3: In PASS 3, for each scan-converted point, Segal performs the following actions:

cp = c · cp

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(Id.) Segal does not limit PASS 3 to only screen points visible to the observer.

(Laub, ¶75.) As a result, Segal, as written, incorrectly modulates the color value for each pixel (cp) including every object corresponding to that pixel, even objects hidden from the light source behind other objects. (Laub, ¶75.) Mr. Goodin did not recognize this material error and a POSITA with significantly less experience than

Mr. Goodin would not have recognized this error nor corrected it.

Although Segal’s PASSES 1-3 are designed for one projection, Segal provides a one sentence toss-in that the “effects of multiple film projections may be incorporated by repeating PASS 2 several times.” (Segal, 251.) Segal states that on each of these multiple passes Ml and the light coordinates should be modified appropriately. (Id.) Segal, however, never describes how Ml is used in its slide projector application. Segal’s only other reference to Ml is outside the slide projection discussion explaining that “Ml transforms world coordinates to light coordinates.” (Id., 250.) There is no evidence in the record that a POSITA would have had the requisite skill to modify Segal to incorporate the use of Ml in its multiple passes.

b) Spotlight For Segal’s “spotlight” technique, discussed in a mere 16 lines, “the texture represents an intensity map of a cross-section of the spotlight’s beam.” (Segal,

251.) Segal states that “it is as if an opaque screen were placed in front of a

- 20 - PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488 spotlight and the intensity at each point on the screen recorded.” (Id.) Neither Segal nor Petitioners explain how the slide projector application uses these intensity values. (Laub, ¶¶77, 117.)

c) Shadow Determination Segal’s final application, the three-pass shadow application, suffers from the same problems––an incomplete description and material errors. And, once again,

Petitioners fail to identify and address these problems.

As Infernal explains below, the three-pass shadow process is far beyond the technical abilities of a mere POSITA and contains errors which are far beyond the ability of the POSITA to recognize and correct. Critical to the shadow application is a pre-pass process that “obtain[s] depth values in light coordinates for the scene with hidden surfaces removed,” “render[ing] [an image of the scene] from the viewpoint of the light source.” (Segal, 251.) These depth values are “the values of zl/wl at each pixel in the image” which Segal defines as being zt. (Segal, 250-251.)

Thus, PASS 0 effectively performs hidden surface removal from the perspective of the light source. (Laub, ¶¶78-79.) But Segal never explains how zt or zl/wl are determined. And Petitioners do not provide these missing details. Segal only states that it stores the subset of zt values visible to the light source in a texture map

“which will be used as a shadow map,” referring to a value in this texture map as zτ. (Segal, 251.)

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Segal uses this texture map generated in PASS 0 in its three-pass process, setting the same initial conditions for values in the framebuffer as in the slide projector application.

PASS 1: Like PASS 1 in the slide projector application, Segal’s shadow application performs hidden surface removal from the observer’s perspective:

If z < zp, then zp ← z, cp ← c

(Id.) But, unlike the slide projector application, PASS 1 includes an additional operation to replace the c-value of the pixel (cp) with the inherent color of the object. (See Laub, ¶81.)

At deposition, Mr. Goodin identified this result as an error in Segal, an error that he, with 35 years’ experience, did not recognize until preparing for his deposition. (Goodin Dep., 84:1-86:1.) A POSITA with nowhere near the experience of Mr. Goodin and nowhere near the appreciation of this complicated technology would not have found this error. Mr. Goodin testified that PASS 1 of

Segal’s shadowing application involves “a very complicated lighting process called global illumination,” which Segal simply does not describe. (Id., 80:12-82:10.) Mr.

Goodin also testified that it was his expert background that allowed him to identify this error: “Q. Based on your expert background you determined this was an error?

A. Yes.” (Id., 86:2-4.) And, Mr. Goodin only discovered this error after spending

- 22 - PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488 approximately one hundred hours on the inter partes review matter and one hundred hours on the district court proceeding. (Id., 85:23-86:1, 106:2-11.)

Mr. Goodin then proceeded to correct Segal’s mistake, stating that c in

PASS 1 must incorporate the ambient scene color and the inherent color of the object. (Id., 82:1-85:4.) None of the Petition, Mr. Goodin’s expert declaration, or his deposition transcript establishes that this correction would have been within the skill of a POSITA.

PASS 2: Segal provides very limited discussion of the actions specified in its PASS 2, which it refers to as “shadow testing”:

t If zτ = z , then αp ← 1, else αp ← 0

Segal only states that “[i]f the two values in the comparison in PASS 2 are equal, then the point represented by p is visible from the light and so is not in shadow.”

(Segal, 251.) Although Segal describes that zτ is stored in the texture map, Segal does not disclose the meaning of zt in the shadow application or how to derive this value. (Laub, ¶82.) This omission creates considerable ambiguity regarding PASS

2.

Recognizing the absence of any explicit guidance and, thus, the resulting ambiguity, Petitioners modify Segal, stating that “[t]he shadow determination algorithm uses the shadow map to determine whether the point in the scene is illuminated by the light source by comparing the z-value of the transformed screen

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t point (z ) with the corresponding value in the shadow map (zτ).” (Petition, 26; citing Segal, 251.) Tellingly, Petitioners do not identify this as a proposed modification to the actual disclosure of Segal. More tellingly, Petitioners provide no support, no factual bases for their modification, and provide no explanation why this proposed modification would have been obvious to a POSITA. Contrary to

Petitioners’ unsupported proposed modifications, Segal does not teach or suggest that zt is a transformed screen point. And, Petitioners provide no explanation on how to obtain a value for zt. Segal’s only mention of zt in shadow applications is

PASS 0, which clearly states that zt is determined from the perspective of the light source when generating the texture map. (See Segal, 250-251; Laub, ¶¶78-79, 82.)

PASS 3: “PASS 3, drawn with full illumination, brightens portions of the scene that are not in shadow.” (Segal, 251.) In PASS 3, Segal performs the following action:

cp ← cp + (c modulated by αp)

(Id..) Like its slide projector application, Segal does not limit PASS 3 to only screen points visible to the observer. (Laub, ¶83.) As a result, Segal, as written, incorrectly incorporates the color value of objects hidden behind other objects from the observer’s perspective for each pixel (cp). (Id.) Petitioners again failed to recognize this error or account for it in their analysis of the Segal reference.

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Although PASSES 1-3 are designed for a single light source, Segal provides one sentence (13 words) briefly referencing the handling of multiple lights in the shadow application: “Correct illumination from multiple colored lights may be produced by performing multiple passes.” (Segal, 251.) Petitioners ignore this sentence in their analysis. As a consequence, we are left with Segal, and Segal provides no explanation of what passes are encompassed in the stated “multiple passes,” whether the PASS 0 is performed for subsequent light sources, or how framebuffer values are handled. (Id.)

As a result, there is no evidence in the record of how Segal can be modified by a POSITA to generate or use additional shadow maps to support multiple lights.

B. A POSITA would not have combined the Segal’s applications as proposed by Petitioners. In Section IV.A, Infernal identified problems that Segal poses for a

POSITA. A POSITA would not have the technical expertise to fill in the gaps in

Segal or to correct Segal’s errors because the technology of Segal’s spotlight

(using the techniques of the slide projector) and shadow application go far beyond the level of ordinary skill to combine. (See Laub, ¶¶25, 84, 113-117.) Mr. Goodin leveraged his 35 years of experience to correct the errors and omissions of Segal and to manufacture the proposed combination of Segal’s shadow and spotlight. No

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POSITA with only a Bachelor’s of Science degree in electrical engineering, computer science, software engineering, or equivalent, with two years of work experience in the field of three-dimensional computer graphics could come up with this combination.

1. Petitioners’ knowledge of combination would have only been reached through an expert in the field. Petitioners’ expert, at deposition, acknowledged that Segal does not disclose how to combine its shadow application with its slide projector/spotlight application. Petitioners, nevertheless, contend that despite this lack of explicit disclosure, their proposed combination would have been a design choice for a

POSITA. (Petition, 38-39.) However, Petitioners never explain how a POSITA would know to take the prior art techniques enumerated in Petitioners’ discussion of a POSITA, and make the combination and associated modifications to Segal.

Petitioners’ lack of support is not surprising because Mr. Goodin admits that he relied on, his 35 years of experience as an expert in the field of graphics to arrive at this combination of Segal’s applications. The following colloquy shows Mr.

Goodin’s recognition that this combination is only reached by an expert in the field:

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Q. I’m just asking what Segal actually discloses. Does Segal

describe anywhere how would you combine shadow effect with the

spotlight effect?

A. I don’t believe so.

. . .

Q. [Segal] shows a picture of the results, correct?

A. Yes.

Q. And based your expert experience you implied how Segal could

do it, correct?

A. Or did do it, yes.

(Goodin Dep., 91:24-92:22.)

Infernal has demonstrated that Petitioners’ combination and modifications of

Segal go far beyond what a POSITA would have been capable of doing, under the proper definition of a POSITA and based on the limited discussion of prior art known by a POSITA articulated by Petitioners. And Petitioners’ expert agrees.

Infernal further demonstrates below that Petitioners’ proposed combination also lacks the requisite rational underpinnings to justify a finding of obviousness.

A POSITA would not have made this combination of applications in Segal, which

Petitioners rely on for every instituted Ground.

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2. Petitioners’ proposed combination lacks the requisite rational underpinnings and goes beyond the level of skill in the art. Petitioners cite to a solitary sentence from Segal to support their argument:

“The shadow effect may [] be combined with the spotlight effect described above, as shown in Figure 4.” (Petition, 37-38; citing Segal, 251.) From this isolated sentence, Petitioners conclude that the combination would have been a design choice for a POSITA because “it merely combines two known techniques (shadow effect and spotlight effect) to accomplish the result described and depicted in

Segal.” (Petition, 38.) But, Petitioners’ unsupported statement that the combination would have been merely a design choice is insufficient to establish obviousness:

“[t]he mere recitation of the words ‘common sense’ or ‘design choice,’ however, without any evidentiary support, adds nothing to the obviousness equation.” See

Stryker Corp. v. Karl Storz Endoscopy-America, Inc., IPR2015-00677, Paper 15 at

37 (P.T.A.B. Sept. 2, 2015). Furthermore, Petitioners’ combination is not merely a matter of design choice. Unlike KSR, which held that it was an obvious design choice to place an electronic sensor on a fixed pivot point of a mechanical structure to avoid wire-chafing problems, Petitioners manufacture a three-pass process by modifying, deleting, and correcting components from each of Segal’s applications.

(Compare Petition, 27, with KSR Int’l Co., 550 U.S. 398, 424-25 (2007).) Thus,

Petitioners do not use the components described in Segal, but change these

- 28 - PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488 components to suit their purpose. The modifications are driven by their expert whose technical knowledge far exceeds the attributes of a POSITA.

Petitioners’ combination (below) includes three passes. Petitioners neither describe any initialization for their combination nor do they describe how, if, or when the texture maps of either slide projection application or shadow determination application are created or used in their three pass process.

Petitioners’ Proposed Combination

The Petition states that “in Pass 1 of the combined rendering process taught by Segal the scene is rendered from the observer’s perspective using conventional methods, without lighting.” (Petition, 28.) However, although both the Spotlight and Shadow applications have hidden surface removal as a first pass, Petitioners select PASS 1 of the slide projector/spotlight application, but ignore the operation in PASS 1 of the shadow application that accounts for color. Petitioners provide no explanation, much less any explanation why a POSITA would eliminate this aspect

- 29 - PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488 of PASS 1 of the shadow determination in a combined process that is intended to be a “shadow rendering” method. (See Petition, 27.)

Next, Petitioners combine PASS 2 of the slide projector application with a modified version of PASS 2 of the shadow determination application. But,

Petitioners’ combination omits important details. For example, Figure 4 of Segal, which Petitioners use as part of their motivation for the combined process, implies that both a shadow map and a slide projector texture map are used in a combined process. Yet, Petitioners do not explain how Segal’s slide projector texture map is used in the combination. Also, Petitioners state that in PASS 2, “each screen point

(pixel) is transformed into light space, first to test if that point is in shadow.”

(Petition, 28.) But, as Infernal detailed above, nowhere does Segal teach or suggest this transformation; nor do Petitioners explain why a POSITA would have thought to perform this transformation.

Petitioners next state that if the screen point is not in shadow, PASS 2

“accumulate[s] light from the corresponding point in a two-dimensional light source image.” (Id.) Finally, although Petitioners augment PASS 2 of the spotlight application by multiplying cτ by αp, Petitioners again provide no support for this approach. Segal never suggests that cτ and αp be multiplied in PASS 2. Instead

Segal stresses that this “brightening occurs in PASS 3.” (See Petition, 27; Segal,

249-51.) Petitioners merely assume a POSITA would have known to multiply the

- 30 - PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488 color of the texture (cτ) by αp in PASS 2. Mr. Goodin attempts to provide a rationale for this augmentation stating that “[b]ecause αp is stored in the framebuffer, it is readily available for use in conjunction with the ‘illumination’ step of the spotlight effect.” (Goodin Decl., ¶159.) However, he provides no support. He does not cite Segal, and Segal does not use αp in conjunction with

PASS 2 of the slide projector application. (Laub, ¶115.) Petitioners further do not articulate how or why a POSITA would have made this modification.

Petitioners then assume that the two PASS 2 steps in their combined process are “repeated for each light source.” (Petition, 28; 38.) However, Petitioners do not explain whether PASS 0 of the shadow application is repeated for each light source or whether a texture map (as described in the slide projector application) is generated for each light source as part of the repeated PASS 2. This omission has fatal consequences for Petitioners’ combination because without shadow maps generated during the combined PASS 2, Petitioners’ proposed combination cannot identify shadows and therefore cannot correctly accumulate light. (Laub, ¶115.)

The Petition and the supporting expert declaration do not advise that a POSITA would have identified this omission, let alone been able to modify the proposed combination to account for it. As Infernal has stated previously, if the expert with his 35 years of experience does not identify the problem, a POSITA would have even less chance.

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Finally, Petitioners incorporate PASS 3 of the slide projector/spotlight application without modification, again completely disregarding PASS 3 from the shadow application. Petitioners provide no explanation why a POSITA would use

PASS 3 of the slide projector application rather than PASS 3 of the shadow determination in a combined process that is intended to be a “shadow rendering” method. (See Petition, 27.) Further, Petitioners’ PASS 3 suffers from the same error as the slide projector PASS 3–incorrectly modulating the color value for each pixel (cp) including every object corresponding to that pixel, even objects hidden behind other objects. (See Laub, ¶¶75, 117.)

Petitioners have not met their evidentiary obligations. They did not provide the requisite rational underpinnings to support their proposed combinations, all of which require the skill of an experienced expert that far exceeds the skills of a

POSITA.

V. Independent Claims 1, 11, 27, 37, and 50 are patentable. A. Petitioners do not establish that Segal alone or in combination with Foley and/or McReynolds teaches or suggests the “comparing” step. Independent claims 1, 11, 27, 37, and 50 each recite “compar[e/ing] at least a portion of said observer data with at least a portion of said lighting data.” The

Board relied solely on Petitioners’ argument that Segal alone discloses this element of the independent claims. But, Segal in fact, does not teach that “observer data” is

- 32 - PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488 compared with at least a portion of “said lighting data,” as explicitly required by these independent claims.

1. Petitioners’ reliance on Segal is misplaced because Segal does not compare “observer data” with “lighting data.” Petitioners rely on a single, isolated sentence in Segal to argue that in PASS

2 of “Segal’s shadow determination process, the rendering process compares the z- value of the screen point transformed into light source space, zt, with the corresponding value in the shadow map, zτ.” (Petition, 35-36.) Petitioners mischaracterize that single sentence, which states: “If the two values in the comparison in Pass 2 are equal, then the point represented by p is visible from the light [source].” (Segal, 251; Petition, 36.) This sentence refers generally to “the two values in the comparison in Pass 2,” but, in contrast to Petitioners’ mischaracterization, neither teaches or suggests any details of the two values zt or

t zτ, nor describes that the value z is “transformed observer data.” Petitioners’ brief

13-line discussion of this claim element provides no explanation or rationale to support their speculation that zt is transformed observer data. And, Petitioners’ expert, Mr. Goodin, provides no illumination on this point as he merely repeats the discussion from the Petition verbatim. See Stryker Corp. v. Karl Storz Endoscopy-

America, Inc., IPR2015-00764, Paper 13 at 11 (P.T.A.B. Sept. 2, 2015)

(“Petitioners’ assertion (and the Expert’s parroting of the same) that [the reference

- 33 - PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488 teaches the claim element] is conclusory and lacks necessary elaboration and explanation. . . . We, therefore, are not persuaded that Petitioner has presented sufficient evidence that [the reference] discloses [the claim element].”).

Petitioners’ failure to cite to any actual support within Segal is not surprising because Segal does not teach or suggest that zt is transformed observer data. Segal refers to the zt value in only three places: the first paragraph of the mathematical preliminaries section, the pre-pass (PASS 0) process of the shadow determination application, and PASS 2 of the shadow determination application referenced by

Petitioners. In each passage, Segal consistently states that its zt values derive from the perspective of the light source. (See Laub, ¶¶120-127.)

The mathematical preliminaries section explains that Segal derives its zt values from the light coordinate system: “The light coordinate system is a second homogeneous coordinate system with coordinates xl, yl, zl, and wl; the origin of this system is at the light source. … Texture coordinates are given by xt = xl / wl and yt

= yl / wl (we shall also find a use for zt = zl / wl).” (Segal, 249-50 (emphasis in original).) Annotated Figure 2 of Segal (reproduced below) illustrates zt, and shows the zt value for the point Q emanates from the perspective of the light source.

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(Segal, 250, Figure 2 (annotated).)

Segal’s discussion of zt values in the pre-pass (PASS 0) of Segal’s shadow applications also stresses that zt stems from the perspective of the light source:

First, an image of the scene is rendered from the viewpoint of the light source. The purpose of this rendering is to obtain depth values in light coordinates for the scene with hidden surfaces removed. The depth values are the values of zl / wl at each pixel in the image. The array of zt values corresponding to the hidden surface-removed image are then placed into a texture map, which will be used as a shadow map[10][8]. We refer to a

value in this texture map as zτ. (Segal, 251 (emphasis added).) Thus, the shadow application shows that both zt and zτ values are derived from the light source perspective. (Laub, ¶¶120-127.)

Finally, Petitioners cite the following sentence from PASS 2: “[i]f the two values in the comparison in Pass 2 are equal, then the point represented by p is

- 35 - PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488 visible from the light source.” (Petition, 36.) This sentence does not support

Petitioners’ argument because it neither shows a transformation of a screen point to light source space, nor indicates how such a transformation would occur. (Laub,

¶125.) Furthermore, the variable p in Segal does not even refer to a screen point but rather a pixel (or a location in the framebuffer). (See Segal, 250-51; Laub,

¶125.) Petitioners’ expert, Mr. Goodin, acknowledged at deposition that Segal does not use the terms “pixel” and “screen point” in the same manner. (Goodin Dep.,

37:16-38:6 (“Q. But Segal uses both terms, right? A. Pixels and screen points? Q.

Yes. A. Yes, it does, I believe. Q. And does he use those interchangeably? A. No, I don't believe he does. I can give two examples. . . .”).) Finally, merely alluding to a general correspondence between zt and a point represented by p does not support

Petitioners’ allegation that zt is “the z-value of a screen point transformed into light source space.” (Laub, ¶125.)

2. Reliance on the transformation matrices, Mc and Ml, is misplaced. The Institution Decision states that “Segal teaches transforming data and, more specifically, teaches ‘two transformation matrices of interest’ as well as a series of equations for determining ‘corresponding texture coordinates’ of ‘a point on a scan-converted polygon.’” (Inst. Dec., 25.) To the extent the Board implies

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t that matrices Mc and Ml support Petitioners’ argument that z is the z-value of the screen point transformed into light source space, Infernal respectfully disagrees.

Neither Mc nor Ml transforms a screen coordinates to light coordinates.

Instead, Segal explains that “Mc transforms world coordinates to clip coordinates, and Ml transforms world coordinates to light coordinates.” (Segal, 250.) Segal uses its “matrices of interest” to translate from a point in the 3D scene outward to clip or light coordinates. (Laub, ¶¶68, 123.) This distinction is important as a transformation of world coordinates to either clip or light coordinates is not a transformation of “observer data” to light source space. (Id.) At most, Segal suggests translating coordinates in world space to find corresponding clip and light coordinates. (Id., ¶145.) Thus, although Segal briefly relates that “[t]his technique requires that the mechanism for setting αp be based on the result of a comparison between a value stored in the texture map and the iterated zt,” nevertheless, Segal does not show that the described iteration in any way refers to transforming observer data to light source space. (See Laub, ¶¶120-127; see also Inst. Dec., 25.)

The Board supports its conclusion by citing to the series of equations that appear in Segal’s Mathematical Preliminaries section in its discussion of the comparing claim element, referring specifically to Segal’s description of “[g]iven

(xs, ys), a point on a scan-converted polygon, our goal is to find its corresponding texture coordinates, (xt, yt),” and Equation 8 of Segal. (Inst. Dec., 25; Segal, 250.)

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But, neither these equations nor Figure 2 support the conclusion that zt is transformed observer data.

The equations in Segal’s mathematical preliminary section begin with endpoints of a line segment, Q1 and Q2, and a point Q along that line. (Laub, ¶126.)

Although Segal states that “there is a homogeneous matrix M that relates” light and clip coordinates, no coordinate transformation is shown or described. (Id.) The matrix M is not used in the remaining equations or in any of Segal’s applications.

(Id.) Segal further teaches against the need for a matrix transformation between clip and light coordinates, describing “two transformation matrices of interest” for its applications, which transform from world coordinates to light and clip coordinates. (Id.) This further supports that Segal does not teach a transformation of “observer data” to light source space in any of its applications. Likewise, the

“iteration of texture coordinates that have simply been assigned to polygon vertices” governed by Equation 8 of Segal is not concerned with any coordinate system other than the light coordinate system. (Segal, 250; Laub, ¶127.) Again, this supports that Segal does not teach a transformation of “observer data” to light source space.

Finally, Petitioners’ analysis of this claim limitation never cites to or references these matrices, the mathematical preliminaries of Segal, or any other disclosure in Segal. Petitioners cite only the single sentence already discussed at

- 38 - PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488 the beginning of this analysis. The Board is limited to the record before it, the argument made in the Petition. Any attempt at this late date to introduce new argument or evidence from Segal to support this argument, specifically Segal’s matrices (Mc, Ml) and the series of equations in Segal’s Mathematical Preliminaries section (e.g., Inst. Dec., 25), would be improper because an inter partes review is limited to the arguments made in the petition. See In re Magnum Oil Tools Int’l,

Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (finding “no support for the PTO’s position that the Board is free to adopt arguments on behalf of petitioners that could have been, but were not, raised by the petitioner during an IPR.”); Intelligent

Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir.

2016) (“Unlike district court litigation—where parties have greater freedom to revise and develop their arguments over time and in response to newly discovered material—the expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute.”)

Petitioners failed to establish that Segal alone or in combination with Foley and/or McReynolds teaches or suggests “comparing at least a portion of said observer data with at least a portion of said lighting data.” Accordingly, the challenged claims are patentable under each instituted ground.

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B. Petitioners failed to establish that Segal alone or in combination with Foley and/or McReynolds teaches or suggests a “light accumulation buffer.” Independent claims 1, 11, and 39 each recite “storing at least a portion of said light image data associated with said point and said light source in [a] light accumulation buffer.” The proper construction for the term “light accumulation buffer” in the storing step is a region of memory separate and distinct from the frame buffer, where such data is stored. See Section III.A. Under this construction,

Grounds 1 and 2 of the Petition fail because Segal does not disclose a separate and distinct “light accumulation buffer.” Furthermore, Petitioners have not made a prima facie case of obviousness under Grounds 3 and 4 because Petitioners did not show that a POSITA would have combined Segal and McReynolds to accumulate light image data in a separate and distinct light accumulation buffer.

1. Segal does not disclose a light accumulation buffer. Segal does not teach or suggest a light accumulation buffer separate and distinct from a frame buffer, as required by the claims. (Laub, ¶131.) Petitioners rely on the following teaching in Segal, arguing that Segal discloses the ‟storingˮ step because “[l]ight from each texture is accumulated in a memory—i.e., in the pixel color field, cp, of the framebuffer.” (Petition, 37 (emphasis added).)

However, Segal’s frame buffer cannot be the claimed light accumulation buffer because the claims differentiate between a frame buffer and a light accumulation

- 40 - PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488 buffer. (See e.g., Claim 11.) Because Petitioners never identify a light accumulation buffer separate from Segal’s frame buffer, Grounds 1 and 2 must fail.1

2. Petitioners never show that a POSITA would have combined Segal and McReynolds to accumulate light in a separate buffer. Petitioners do not articulate a reason why a POSITA would have combined

Segal and McReynolds. McReynolds states that an “accumulation buffer can also be used . . . to create soft shadows” but does not cure Segal’s deficiency under

Grounds 3 and 4. (McReynolds, 55.) McReynolds discloses an accumulation buffer that accumulates shadows, not light: “Shadows from multiple, separate light sources can also be accumulated.” (Compare McReynolds, 45, with ’488 patent,

2:39-60 (criticizing the accumulation of shadows). See also Laub, ¶¶133-136

(proving the OpenGL code “softshadow.c” accumulates shadows).) Using this teaching in McReynolds, Petitioners allege that a POSITA would have combined

Segal and McReynolds to store light image data in a light accumulation buffer.

(See Petition, 52-53.)

1 For Ground 2, Petitioners do not cite to Foley as allegedly having a separate and distinct light accumulation buffer.

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Petitioners, however, fail to make the requisite showing to establish a prima facie case of obviousness. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). To establish obviousness, “the PTAB [(and the petitioner)] must articulate a reason why a PHOSITA would combine the prior art references.” In re Nuvasive, 842

F.3d 1376, 1382 (Fed. Cir. 2016); see also 35 U.S.C. § 316(e) (emphasis added).

Petitioners provide three statements regarding the rationale for combining

Segal and McReynolds. Infernal addresses each of Petitioners’ statements below, highlighting that Petitioners fail to identify a single reason why a POSITA would have made the purported combination.

First, Petitioners contend that “McReynolds suggests the combination with

Segal, by describing the same ‘three-pass’ rendering process set forth in Segal” and because “McReynolds also explicitly refers to Segal.” (Petition, 52.) For context,

McReynolds is an aggregation of graphics-processing concepts intended to be included in a full-day course. (See McReynolds, 3-4 and 28; Ex. 1013, 10-11.) The mere fact that McReynolds includes Segal in its course materials does not provide a reason to combine Segal with everything else McReynolds teaches. Although

McReynolds covered Segal’s texture-projection applications in one course module and accumulation buffers in another, nowhere does McReynolds suggest using those accumulation buffers with Segal’s rendering processes to accumulate light.

And, Petitioners provide no such analysis, despite the law requiring a proper

- 42 - PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488 obviousness analysis even for separate disclosures in the same reference. See In re

Kotzab, 217 F.3d 1356, 1370 (Fed. Cir. 2000) (“Even when obviousness is based on a single prior art reference, there must be a showing of a suggestion or motivation to modify the teachings of that reference.”); see also Ex Parte Kabra,

2011 WL 2491033, No. 2010-005035, 5 (B.P.A.I. June 20, 2011) (citing In re

Kotzab).

Second, Petitioners state that “a POSA would also be motivated to use the accumulation buffer of McReynolds in conjunction with the techniques disclosed in Segal because the very same reason for using the accumulation buffer in

McReynolds (‘integrating multiple images’) is also found in and applicable to

Segal.” (Petition, 53.) But, Petitioners neither cite where such a motivation is

“found in” Segal nor show such motivation is “applicable to Segal.” Moreover,

Petitioners’ argument is self-contradictory. If Segal already integrates multiple images as Petitioners contend, the combination provides no advantage (and hence no reason) to incorporate a separate accumulation buffer to perform the function

Segal already performs with a frame buffer. (Laub, ¶139.) Indeed, the combination would not result in any processing savings in Segal. (Id., ¶140.) Petitioners acknowledge that the accumulation buffer in McReynolds would not obviate

Segal’s requirement of scan converting every polygon of a scene in each of the three passes, advising that: “‘[y]ou can’t render directly into the accumulation

- 43 - PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488 buffer. Instead you render into a selected buffer, then use glAccum() to accumulate the current image in that buffer into the accumulation buffer.’” (See Petition, 31

(quoting McReynolds, 43).) And, Petitioners further purport (incorrectly) that a

POSITA could eliminate the need to “loop over every polygon in the scene” in each pass of Segal without using the teachings of McReynolds. (See Petition, 57.)

Thus, Petitioners’ second rationale also fails because it does not establish that a

POSITA would have had a reason to use an accumulation buffer in Segal to accumulate light image data.

Third, Petitioners contend that a POSITA would have been motivated to combine Segal and McReynolds because “OpenGL is ‘procedural’” and OpenGL

“can be implemented ‘across a range of hardware platforms’ and ‘allows great flexibility in the process of generating the image.’” (Petition, 53.) This rationale has no bearing on whether a POSITA would have had a reason to combine Segal and McReynolds because Petitioners’ proposed combination is not directed to using OpenGL in Segal to achieve greater flexibility in processing an image. (See

Petition, 50-51.) Rather, this rationale is disassociated with the relevant inquiry of whether a POSITA would have had a reason to use “a light accumulation buffer” in Segal. And, with respect to Petitioners’ argument that “McReynolds readily facilitates the use of an accumulation buffer in a predictable manner that would not require undue experimentation,” again this rationale is disconnected from the use

- 44 - PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488 of a light accumulation buffer in Segal. Using an accumulation buffer in

McReynolds may have been predictable, but the predictability of an accumulation buffer in McReynolds does not necessarily translate to predictability of

McReynolds’ disclosed accumulation buffer in Segal. (Laub, ¶141.) Thus,

Petitioners’ third rationale, like the first two rationales, is insufficient to support a conclusion of obviousness.

Because Petitioners’ reasons to combine Segal and McReynolds are insufficient to conclude that a POSITA would have had a reason to combine the references, Petitioners fail to meet its burden of establishing a prima facie case of obviousness for Grounds 3 and 4.

VI. Dependent claims 7-8, 17-18, 33-34, 43-44, and 56-57 are patentable. A. Claims 7, 17, 33, 43, and 56. Claims 7, 17, 33, 43, and 56 recite “convert[ing] at least a portion of said observed depth data from said observer’s perspective to at least one of said plurality of different light source’s perspectives.” The Board should find these claims patentable because Petitioners failed to demonstrate that Segal teaches or suggests converting observer data. Petitioners argue that the value ‘z’––“which is the depth from the perspective of the observer, is converted to a value ‘zt,’ which is the depth of the same point in the scene, but in the coordinate system for the light source texture.” (Petition, 46.) Petitioners’ sole support is a bare, unexplained cite

- 45 - PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488 to Segal’s Figure 2. (Id.) Figure 2 does not support Petitioners’ argument because it merely shows object geometry in the light and clip coordinate systems. (Segal,

250.) Figure 2 does not show that Segal converts its z values to zt values. And

Petitioners’ expert cannot salvage Petitioners’ deficient argument because Mr.

Goodin parrots the petition verbatim. (Compare Goodin Decl., ¶¶212, 213, with

Petition, 46.)

To the extent that Petitioners imply Segal’s statement that “[s]can- conversion yields a series of screen points and corresponding texture points for each polygon,” teaches or suggests “converting” observed depth data to a light source’s perspective, Petitioners’ argument fails because it not only is unsupported, but it is incorrect. (See Laub, ¶¶120-127, 144-145.) Segal does not teach any conversion or transformation of observer depth data. (Id.) Rather, Segal describes matrices (Mc and Ml) that translate between world coordinates and each of clip coordinates and light coordinates. (Id.)

Thus, the translation referred in Segal does not operate to “convert[ing] at least a portion of said observed depth data from said observer’s perspective to at least one of said plurality of different light source’s perspectives,” as Petitioners imply. (Laub, ¶¶144-145.)

- 46 - PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488

B. Claims 8, 18, 34, 44, and 57. Petitioners fail to demonstrate that Segal alone or in combination with Foley and/or McReynolds teaches or suggests a “precalculated matrix transformation look-up table” when the proper construction is applied. (See Section III.B; Laub,

¶¶146-155.)

Petitioners point to the use of the word “matrix” in Segal and from that speculation: “Segal discloses using a precalculated matrix, Ml, to transform a point from world coordinates into light texture coordinates (xt, yt).” (Petition, 47-48.)

Petitioners’ argument finds no support in Segal, which does not teach or suggest that this matrix is a precalculated or a look-up table. (Laub, ¶¶149-155.) Indeed, the citation—“The effects of multiple film projections may be incorporated by repeating Pass 2 several times, modifying Ml and the light coordinates appropriately on each pass”—actually shows the opposite. Segal describes that the matrix Ml is modified on each pass, which takes place during the rendering process for a particular slide and not a full frame in advance of the converting step.

(Segal, 251; Laub, ¶149.) Thus, Segal’s matrix Ml is not pre-calculated.

Segal also does not teach that Ml is a look-up table that includes actual lighting data coordinates. (Laub, ¶151.) Segal describes Ml as a transformation matrix that “transforms world coordinates to light coordinates.” (Segal, 250.)

Recognizing these deficiencies of Segal, Petitioners invoke the knowledge of a

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POSITA, arguing that even if Ml were not a look-up table, “the use of a look up table [in Segal] would have been a well-known and widely-used design choice, and therefore obvious to a skilled artisan in view of Segal.” (Petition, 47-48.) As support, Petitioners cite to four paragraphs in their expert’s declaration. (See

Petition, 47, citing to Goodin Decl., ¶¶26-28, 216.) But, these paragraphs do not cure the deficiencies of Petitioners’ analysis. Paragraph 216 merely parrots the petition word-for-word, adding nothing of substance. (Compare Petition, 47, with

Goodin Decl., ¶216.) The other three paragraphs (26-28) generically discuss transformation matrices and transformation tables, but include only one citation to extrinsic evidence, Foley.

Foley also does not support Petitioners’ argument because Foley only describes matrix representations, not a precalculated look-up table. (See Foley,

213-26.) Even assuming, arguendo, that Foley taught a precalculated look-up table

(which it does not), Petitioners’ expert admits that “[t]he decision . . . whether to precalculate the transformation table, and provide a look up table corresponding to the matrix, will depend on the speed and memory usage constraints of a particular implementation.” (Goodin Decl., ¶28.) Despite Petitioners’ expert’s explicit caveat, the Petition is silent about whether Segal’s speed and memory usage constraints are compatible with a precalculated matrix transformation look-up table. (See

Petition, 47-48.) Indeed, Segal teaches against the use of pre-calculated look-up

- 48 - PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488 table requiring “scan-converting every polygon in the scene” in each pass, rather than storing the scan-converted data for use in future passes, underscoring the memory limitations implicit in Segal. (Segal, 250; Laub, ¶¶153-154.)

Ignoring Segal’s constraints, Petitioners generalize that the combination would have been a simple design choice. (See Petition, 47-48.) Petitioners’ unsupported conclusory statement does not meet its burden: “[t]he mere recitation of the words ‘common sense’ or ‘design choice,’ however, without any evidentiary support, adds nothing to the obviousness equation.” See Stryker Corp., Inc.,

IPR2015-00677, Paper 15 at 37 (Sept. 2, 2015).

VII. Petitioners failed to establish that Foley is a prior art publication therefore, Grounds 2 and 4 relying on Foley fail. Petitioners presented two grounds challenging the claims of the ’488 patent based on Segal alone or in combination with McReynolds. The Board expanded the grounds to include two more grounds relying on Segal in combination with

Foley. (Institution Decision, 3.) But, there is no supporting evidence in the record that Foley is a printed publication. And thus, Petitioners failed to meet their burden of establishing that a printed publication qualifies as prior art. See Dynamic

Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).

Exhibit 1007 highlights Petitioners’ failure because the version submitted by

Petitioners was printed in February 2011—over twelve years after the March 12,

- 49 - PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488

1999 priority date of the ’488 patent. (See Ex. 1007, CG Principles *10 (“26th

Printing February 2011”).) Petitioners provide no evidence that Exhibit 1007 was identical to a version available prior to the earliest possible priority date of the ’488 patent. Petitioners cannot cure their failure in their Reply because the introduction of such evidence would violate the notice provisions of the APA. See Magnum Oil

Tools, 829 F. 3d 1364, 1381 (Fed. Cir. 2016).

Because the Petitioners failed to establish Exhibit 1007 as a prior printed publication and because this failure cannot be cured, the Board should find the challenged claims patentable over the combination of Segal and Foley and Segal,

McReynolds, and Foley.

VIII. Secondary Considerations of Non-Obviousness Confirm that the Claimed Invention is Not Obvious

In determining obviousness of the claimed invention, objective evidence of secondary considerations pertaining to nonobviousness must be considered, including long-felt but unsolved needs, failure of others, commercial success, etc.

In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996) (citing Graham v. John Deere

Co., 383 U.S. 1, 17-18 (1966)). These indicia are not just a cumulative or confirmatory part of the obviousness analysis, but rather constitute independent evidence of nonobviousness that can be the most probative evidence in that regard

“in avoiding the trap of hindsight when reviewing, what otherwise seems like, a

- 50 - PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488 combination of known elements.” Leo Pharm. Products, Ltd. v. Rea, 726 F.3d

1346, 1358 (Fed. Cir. 2013). Evidence of secondary considerations “may often be the most probative and cogent evidence in the record.” Pentec, Inc. v. Graphic

Controls Corp., 776 F.2d 309, 315 (Fed. Cir. 1985). Such evidence can establish that “an invention appearing to have been obvious in light of the prior art was not.”

Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699

F.3d 1340, 1349 (Fed. Cir. 2012) (quoting Stratoflex, 1538).

To be relevant, evidence of non-obviousness must be commensurate in scope with the claimed invention. In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011)

(citing In re Tiffin, 58 C.C.P.A. 1420, 448 F.2d 791, 792 (CCPA 1971)); In re

Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998). In that regard, in order to be accorded substantial weight, there must be a nexus between the merits of the claimed invention and the evidence of secondary considerations. In re GPAC Inc.,

57 F.3d 1573, 1580 (Fed. Cir. 1995). “Nexus” is a legally and factually sufficient connection between the objective evidence and the claimed invention, such that the objective evidence should be considered in determining non-obviousness. Demaco

Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988).

The stronger the showing of nexus, the greater the weight accorded the objective evidence of non-obviousness. See Ashland Oil, Inc. v. Delta Resins & Refractories,

Inc., 776 F.2d 281, 306 (Fed. Cir. 1985).

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A. The Claimed Invention Satisfied a Long-Felt Need To establish a long-felt need, three elements must be proven. First, the need must have been a persistent one that was recognized by ordinarily skilled artisans.

In re Gershon, 372 F.2d 535, 538 (CCPA 1967). Second, the long-felt need must not have been satisfied by another before the claimed invention. See Newell Cos.,

Inc. v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988) (“[O]nce another supplied the key element, there was no long-felt need or, indeed, a problem to be solved . . . .”). Third, the invention must, in fact, satisfy the long-felt need. In re

Cavanaugh, 436 F.2d 491, 496 (CCPA 1971).

Terminal Reality, located in Texas, was founded in 1994 by Mark Randel.

(Ex. 2051, Declaration of Mark R. Randel (“Randel”), ¶7.) Since then, Terminal

Reality has been primarily a developer of video games and video game engines, focused on creating state-of-the-art, texture mapped 3D action games and ultra- realistic simulation titles. (Id., ¶6.)

At the time Randel began developing video games at Terminal Reality in the mid-1990s, it was understood in the video game industry that lighting and shading operations could be used in graphics rendering to enhance the visual realism and quality of computer-generated animation. (Id. ¶9.) A well-recognized problem, however, plagued the industry – rendering simulated, multi-dimensional virtual worlds required substantial processing, making real-time shadow rendering and

- 52 - PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488 lighting too computationally expensive, especially for scenes with multiple simulated light sources. (Id., ¶¶8, 18.) As Randel explained in the ’488 patent,

“[o]ne of the unfortunate compromises made in the past, has been in the area of lighting and, more particularly, in the area of rendering shadows cast by lighted 3D objects. Many shadow rendering processes have been considered to be too compute intensive for most lower-end computer applications, and as such shadow rendering is often ignored or otherwise greatly simplified.” (’488 Patent, 1:59-2:2.)

This was a persistent problem in the industry. As one inventor in the video game graphics field stated, “[l]ow cost, high-quality, real-time processing of 3-D graphics images without using a large expensive frame buffer, or parallel processing techniques has been an elusive quest for the last three decades.” (Ex.

2018, ’342 Patent, 5:48-54; See also Randel, ¶12.)

At the time of Randel’s invention, none of the techniques known to persons of skill in the art adequately solved this problem. (Randel, ¶13.) For example, in the ’488 Patent, Randel pointed out that “[s]everal advanced and simplified shadow rendering algorithms and other graphical algorithms and techniques are described by James D. Foley, et al. in Computer Graphics: Principles and

Practice, second edition, 1997,” including a “two-pass object precision shadow algorithm.” (’488 Patent, 1:63-2:6.) Randel explained that “[o]ne of the drawbacks to this type of shadow algorithm is that unrealistic shadowing can occur in scenes

- 53 - PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488 having multiple light sources,” and that, “when there are several light sources, the transformation process associated with converting between the camera, world and light viewpoints in support of this type of two pass algorithm can prove too burdensome. . . .” (Id., 2:36-61.) Others found similar drawbacks in these and other proposed solutions to this problem. (Randel, ¶¶14-17.) “Consequently,” Randel concluded, “there is need for improved shadow rendering methods and arrangements. Preferably, the improved shadow rendering methods and arrangements support real time interactive graphics on conventional PCs and the like, and allow for multiple light sources to be modeled in a more efficient and realistic manner.” (’488 Patent, 2:65-3:3.)

The claimed inventions in Randel’s patents solved the technical problems facing 3D video graphics companies at the time with respect to rendering lighting and shadows in real-time in an efficient and high quality manner. In January 1997,

Randel began working on a new video game called “Nocturne” that would implement improved shadow rendering methods and arrangements that would support real-time interactive graphics on conventional PCs and allow for multiple light sources to be modeled in a more efficient and realistic manner. (Randel, ¶22.)

After more than a year of experimentation, Randel seized upon the idea of using a separate light accumulation buffer to accumulate the light from multiple light sources falling on a pixel or group of pixels and visible from the observer’s

- 54 - PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488 point of view and to apply that accumulated light to a 2D representation of a scene in order to make the process of rendering light and shadows more efficient.

(Randel, ¶23.) Processing of lighting and shadows in two-dimensions using a separate light accumulation buffer requires significantly fewer calculations than processing in three-dimensions, thereby facilitating more efficient and realistic rendering of shadows from multiple light sources. (Id.) Randel’s invention was a major improvement over the prior art methods for rendering light and shadows in real-time 3D graphics. It provided realistic lighting and shadowing in a computationally efficient manner while avoiding frame-rate problems commonly associated with generating high-end video graphics at the time. (Id.)

B. The Claimed Invention Received Industry Praise Industry praise for an invention may provide evidence of nonobviousness where the industry praise is linked to the claimed invention. See Geo. M. Martin

Co. v. Alliance Mach. Sys. Intern. LLC, 618 F.3d 1294, 1305 (Fed.Cir.2010); Asyst

Tech’n., Inc. v. Emtrak, Inc., 544 F.3d 1310, 1316 (Fed.Cir.2008).

In October 1999, Terminal Reality released its Nocturne video game that included a game engine, initially called the “Demon” engine and later called the

“Nocturne” engine, which used the claimed invention. The rendering of light and shadows by the Nocturne engine received significant industry praise. In a 1999 review of Nocturne, the video game publication IGN stated “[a]ll the hype

- 55 - PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488 surrounding the lighting in the game was for a really good reason – Nocturne pushes videogame lighting to new heights, with shadows that are so inventive and interactive that you’ll swear you’re actually watching a film at times.” (Randel,

¶¶24-25; Ex. 2001.)

GameStop’s 1999 review of Nocturne observed that “Nocturne’s absolutely stunning special effects that are especially impressive. Instead of the usual variety of eye-popping colored lights and full-screen pyrotechnics, Nocturne's effects emphasize the game’s darkness. Each character casts a perfectly realistic shadow, which stretches and bends and divides depending on that character’s location relative to any nearby light sources. . . . You’ll catch yourself gawking at

Nocturne’s graphics all the time.” (Randel, ¶26; Ex. 2003.)

An August 1998 CNN article reported that the Nocturne game engine would

“bring a new level of realism to the genre,” and that “the demo we saw was impressive, especially since all the rendering was done in software.” The CNN article further states that Nocturne will be “the first game with volumetric lighting” which is “a fancy way of saying that rather than shadows being pre-rendered as in current games, Nocturne will be able to cast shadows in real time from multiple light-sources.” (Randel, ¶27; Ex. 2004.)

In October 1999, the Houston Chronicle reported that “the game that shows how far technology and visuals have come is Terminal Reality's Nocturne” and

- 56 - PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488 that “Nocturne's lights, shadows, and fog come close to mimicing [sic] real life.”

The article emphasized that “[a]ll those effects were possible because of the game engine, which took Terminal Reality President Mark Randel three years to develop.” (Randel, ¶28.)

In 2000, the video gaming magazine Incite awarded Nocturne a “Golden

Award” with a rating of five out of five stars. (Randel, ¶29; Ex. 2023.) Also in

2000, Terminal Reality launched another game using the Nocturne game engine called “Blair Witch Volume 1: Rustin Parr.” GameStop’s review of this game remarked that, “[b]ecause of its great lighting and shadow-rendering capabilities, the Nocturne engine is excellent for creating atmosphere.” (Randel, ¶30; Ex. 2007.)

C. Video Games Practicing the Claimed Invention Enjoyed Substantial Commercial Success A patentee demonstrates commercial success by showing significant sales of the patented product in a relevant market. J.T. Eaton & Co. v. Atlantic Paste &

Glue Co., 106 F.3d 1563 (Fed. Cir. 1997). Evidence of commercial success, however, is only significant if there is a nexus between the claimed invention and the commercial success. Ormco Corp. v. Align Technology, Inc., 463 F.3d 1299,

1311-12 (Fed. Cir. 2006). Advertising the benefits of the claimed invention links the invention to commercial success. Gambro Lundia AB v. Baxter Healthcare

Corp., 110 F.3d 1573, 1579 (Fed. Cir. 1997) (“The prominence of the patented

- 57 - PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488 technology in . . . advertising creates an inference that links the . . . invention to this success.”); see also Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683

F.3d 1356, 1369 (Fed. Cir. 2012). Also, statements that a product was successful due to the patented features support a finding of nexus. See Power Integrations,

Inc. v. Fairchild Semiconductor Int’l, Inc., 711 F.3d 1348, 1368 (Fed. Cir. 2013).

The evidence shows that EA implemented the claimed invention of the patents in many of the video games it has developed and published during the last six years and that those games enjoyed substantial commercial success in large part due to the use of the claimed invention.

1. EA Incorporated the Claimed Invention of the Patents in its Frostbite 2 and Frostbite 3 Game Engines

In 2007, EA recognized that it had to improve its rendering technology to meet growing consumer demand for complex video games with increasingly realistic graphics. Johan Andersson, the chief rendering architect at DICE, an EA subsidiary, made a presentation at the 2007 Game Developers Conference emphasizing this point. (Ex. 2024, 1191-1192; Ex. 2025, Andersson Dep.

(“Andersson”), 18-24.) As Andersson put it, “we saw a trajectory of games becoming more complex and that requires more effort and . . . requires more attention to detail in how we develop them.” (Andersson, 24.)

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At the time, EA/DICE was considering building a new version of its

Battlefield video game franchise called Battlefield 3 and recognized that the new game would have to provide a “more immersive game environment than our previous games.” (Id., 27-28.) This led EA/DICE to begin development of a new game engine called “Frostbite 2” which would incorporate an improved method for rendering lighting and shadows. As EA explained in a publication describing this improved rendering method:

For “Battlefield 3” and “Need for Speed The Run” we wanted to pursue a new art direction with a massive increase in the amount of dynamic lighting without compromising on frame-rate or scene complexity found in our previous games. To achieve this, we implemented a tile based lighting architecture that improves light culling, reduces bandwidth, and enables shading to execute in parallel with other GPU work.

* * *

By reconstructing our lighting algorithms, and maximizing the amount of work we can do on the GPU in parallel with CPU/SPU work, we are able to achieve an entirely new visual look for the franchise whilst preserving geometric complexity in our scenes.

(Ex. 2026.) Andersson, in another GDC presentation, emphasized that Frostbite 2 involved “major pushes in . . . rendering, [and] lighting.” (Ex. 2027, 5979.) This push involved a switch to “deferred shading” and, in particular, “tile-based

- 59 - PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488 deferred shading,” in order to accommodate “lots more light sources” and a “[r]ich mix of Outdoor + Indoor + Urban environments in BF3.” (Id., 5981-5984; Exhibit

2025, 53-60.) Andersson explained that the switch to “deferred shading” was motivated, in part, to avoid the more “computationally expensive” forward rendering method used in previous Battlefield games. (Andersson, 58.) Andersson also explained that, “with deferred shading, . . . there are mechanisms of handling light sources that can be more efficient than forward rendering....” (Id., 60.)

Andersson further explained this as follows:

One of the weaknesses of forward rendering is, if you have light sources of different types, you end up with a very expensive shader to run with them. With deferred shading you can process that in a different way, as some of the computations are deferred, that makes it more efficient. . . . With deferred shading you render a G-buffer first that represents the geometry for it, and then you handle lighting as a deferred process afterwards, and that makes it easier to have multiple types of light sources than forward rendering. It is more efficient to easily support more types of light sources.

(Id., 63-64; See also Ex. 2028, 6091; Andersson, 75, 81-84; Ex. 2029, 851 (“better usage of rendering resources”); Andersson, 102-104.) Anderson further commented that the tile based shading technology implemented by EA/DICE in the

Frostbite 2 engine was not a well-known prior art method but rather was “part of

- 60 - PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488 new rendering technology.” (Andersson, 127; See also Ex. 2030, 6385. (Frostbite 2 engine rendering and lighting technology introduces “new technologies”).)

The tile based deferred shading technology implemented by EA/DICE in the

Frostbite 2 engine is precisely the claimed invention of the patents. EA implemented the claimed invention to accomplish the very objectives of that invention – to enable the rendering of lighting and shadows for multiple light sources in an efficient and high quality manner. (See Ex. 2052 Declaration of

Richard F. Ferraro; Ex. 2031, Ferraro Expert Report detailing how the Frostbite 2 and Frostbite 3 game engines (and the EA games that employ them) embody the claimed invention of the Patents.)

2. The EA Games Using the Claimed Invention Have Been Commercially Successful Due, in large Part to the Use of the Invention

As mentioned above, EA developed the Frostbite 2 engine initially for use in the Battlefield 3 video game. The record demonstrates that EA specifically and repeatedly promoted the Frostbite 2 game engine and its deferred shading technology embodying the claimed invention as “revolutionary” and “state-of-the- art technology” producing “stunning visuals” and “enhanced visual quality” directly responsible for the unparalleled success of the Battlefield 3 video game.

In February 2011, for example, EA issued a press release announcing the upcoming release of the Battlefield 3 game “with groundbreaking Frostbite 2 game

- 61 - PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488 engine technology.” (Ex. 2032.) The press release stated that “Battlefield 3 leaps ahead of its time with the power of Frostbite™ 2, DICE’s new cutting-edge game engine. This state-of-the-art technology is the foundation on which Battlefield 3 is built, delivering enhanced visual quality . . . .” (Id.) In June 2011, EA issued another press release promoting the “revolutionary Frostbite 2 Engine” and the fact that it enabled the Battlefield 3 game “to deliver superior performance” in, among other things, “visual rendering.” (Ex. 2033.)

A September 2011 EA press release touted the awards Battlefield 3 received due, in part, to the superior graphics produced by the use of the claimed invention by the Frostbite 2 engine:

Battlefield 3 is one of the year’s most anticipated games, having won over 50 illustrious awards at all of the gaming industry’s major tradeshows. The game recently earned the coveted “Future Game Award” at the Tokyo Game Show, a prize that follows the honor of “Game of the Show” at GamesCom and “Action Game of the Show” at E3. Praised by critics for advancing the state of the art in gaming, Battlefield 3 is the only shooter that can deliver the physicality and emotion of being on the battlefield. It is thanks to the expertise of the development team at DICE and the power of the Frostbite 2 engine that Battlefield 3 delivers a massive sense of scale, best-in- class audio, completely destructible environments, hyper-real graphics and animation.

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(Ex. 2034 (emphasis added).) EA identified the rendering of “stunning visuals” and

“dynamic lighting/shading” as one of the five key features or “pillars of the

Frostbite 2 engine used in Battlefield 3. (See Ex. 2030, 6386; Ex. 2029, 790.)

After EA launched Battlefield 3, it bragged about its high ratings from industry publications and sales of the game that were the best in EA history. In

October 2011, an EA press release emphasized that “Battlefield 3 launches with a

93 on Metacritic and is being heralded as ʻunforgettable’ by IGN.com,

ʻmesmerizing’ by Joystiq and the ʻmust have first-person shooter of the year’ from

GameSpy, who awarded Battlefield 3 a perfect 5 out of 5.” (Ex. 2035.) EA also observed that, “[w]ith close to 3 million pre-sales, Battlefield 3 is the biggest first- person shooter launch in EA history.” (Id.) In another October 2011 press release,

EA stated that “[t]he outstanding retail performance is driven by critic’s reviews averaging above 85 on console and above 90 on PC.” (Ex. 2036.) A November

2011 press release emphasizing the immediate and substantial success of the

Battlefield 3 game, pointing out, among other things, that “Battlefield 3 has quickly become the fastest selling title in EA’s 20+ year history selling 17 million units since release and has been lauded by game critics worldwide for its compelling single player campaign, intense co-op missions and its world class multiplayer.”

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(Ex. 2037.)2

The evidence shows that the improved lighting and shadows produced by the

Frostbite 2 and Frostbite 3 engines was a substantial factor in the commercial success of Battlefield 3 and the other EA games using the claimed invention. As discussed above, it has been well-recognized in the industry for decades that the quality of graphics in general, and the display of lighting and shadows in graphics in particular, is critical to the marketing of video games.

Moreover, the extensive promotion by EA of the superlative lighting and shadows produced by the Frostbite 2 and Frostbite 3 engines underscores how such technology drives demand for its video games and accounts, in large part, for the commercial success of those games. EA has recognized this repeatedly. For example, EA, in an analysis of the improved rendering of lights in the Frostbite 3 engine used in its Mirror’s Edge game, emphasized that “[l]ighting is a major part in the art direction and style of the game.” (Ex. 2043.) EA regards the improved rendering of graphics delivered by the Frostbite 2 and Frostbite 3 engines as

“Unique Selling Points.” (Ex. 2044, 6490; Exhibit 2045, 6610.) EA technical

2 EA similarly promoted other EA games using the Frostbite 2 game engine and the claimed invention based upon the superior rendering of lights and shadows produced by the invention. (See Ex. 2038, 6559; Exs. 2039-2042.)

- 64 - PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488 presentations repeatedly identified lighting as one of the key features for a successful video game. (Ex. 2030, 6386; Ex. 2029, 790.) EA’s Andersson emphasized that the “most important thing with an effect is that it fits in with the environment, and a big portion of this is lighting,” and that “we found that adding proper lighting to our effects and our particles adds a lot, so it’s all about the lighting again.” (Ex. 2053, Declaration of Nina Nelson (“Nelson.”) EA also conducted surveys confirming that the rendering of quality graphics was the most significant driver of interest in a video game. (See Ex. 2046, 213, 217; Ex. 2047,

468; Ex. 2048, 685; Ex. 2049, 255.)

Other industry leaders also state that graphics is a key driver of market demand. In April 2013, Cevat Yerli, the CEO of Crytek, an EA business partner, was quoted in an industry article as stating:

People say that graphics don’t matter . . . But play Crysis and tell me they don’t matter. It’s always been about graphics driving gameplay. Graphics, whether it’s lighting or shadows, puts you in a different emotional context and drives the immersion. And immersion is effectively the number one thing we can use to help you buy into this world. The better the graphics, the better the physics, the better the sound design, the better the technical assets and production values are – paired with the art direction, making things look spectacular and stylistic is 60 percent of the game.

(Ex. 2050 (emphasis added).)

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Thus, the evidence shows that EA’s video games employing the Frostbite 2 and Frostbite 3 engines using the deferred shading technology were commercially successful and received widespread industry praise as a direct result of the use of the claimed invention. This, along with the evidence of long-felt need and industry praise of the claimed invention as implemented by the Patent Owner constitutes strong objective evidence of secondary conditions of nonobviousness.

Respectfully submitted,

STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.

/Lori A. Gordon/

Lori A. Gordon Registration No. 50,633 Attorney for Exclusive Licensee

Date: February 10, 2017 1100 New York Avenue, N.W. Washington, D.C. 20005 (202) 371-2600

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CERTIFICATION OF SERVICE The undersigned hereby certifies that the foregoing EXCLUSIVE

LICENSEE INFERNAL TECHNOLOGY, LLC’S PATENT OWNER

REPSONSE and associated exhibits were electronically served on February 10,

2017, in their entireties on the following:

Gregory S. Discher (Lead Counsel) Andrea G. Reister (Back-up Counsel) David A. Garr (Back-up Counsel) COVINGTON & BURLING LLP [email protected] [email protected] [email protected]

STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.

/Lori A. Gordon/

Lori A. Gordon Registration No. 50,633 Attorney for Exclusive Licensee

Date: February 10, 2017

1100 New York Avenue, N.W. Washington, D.C. 20005 (202) 371-2600

PROTECTIVE ORDER MATERIAL IPR2016-00929 U.S. Patent No. 7,061,488

CERTIFCATION OF WORD COUNT

The undersigned hereby certifies that the portions of the above-captioned

EXCLUSIVE LICENSEE INFERNAL TECHNOLOGY, LLC’S PATENT

OWNER REPSONSE has 13,965 words, in compliance with the 14,000 word limit set forth in 37 C.F.R. § 42.24. This word count was prepared using Microsoft

Word 2010.

STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.

/Lori A. Gordon/

Lori A. Gordon Registration No. 50,633 Attorney for Exclusive Licensee

Date: February 10, 2017

1100 New York Avenue, N.W. Washington, D.C. 20005 (202) 371-2600