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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE POLAROID CORPORATION Plaintiff, v. HEWLETT-PACKARD COMPANY, Defendant. ) ) ) ) ) ) ) ) )

C.A. No. 06-738 (SLR)

POLAROID'S REPLY BRIEF IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT THAT CLAIMS 1­3 OF U.S. PATENT NO. 4,829,381 ARE NOT OBVIOUS MORRIS, NICHOLS, ARSHT & TUNNELL LLP Jack B. Blumenfeld (#1014) Julia Heaney (#3052) 1201 N. Market Street Wilmington, Delaware 19801 (302) 658-9200 [email protected] Attorneys for Plaintiff, Polaroid Corporation

OF COUNSEL: Russell E. Levine, P.C. G. Courtney Holohan Michelle W. Skinner David W. Higer Maria A. Meginnes KIRKLAND & ELLIS LLP 200 East Randolph Drive Chicago, IL 60601 (312) 861-2000 June 18, 2008

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TABLE OF CONTENTS Page TABLE OF AUTHORITIES ...................................................................................................... ii SUMMARY OF THE ARGUMENT .......................................................................................... 1 ARGUMENT ............................................................................................................................. 4 A. B. C. HP Failed To Timely Disclose The Contentions On Which It Now Relies To Dispute Summary Judgment........................................................................... 5 Even Assuming That HP Had Timely Disclosed Its Contentions, Polaroid Addressed Each Allegation, And None Have Merit. .............................. 6 HP's Unsupported, Conclusory Contentions are Insufficient To Rebut Polaroid's Motion For Summary Judgment........................................................ 11 1. HP has not established -- and cannot demonstrate -- its burden of establishing a reason to combine, and summary judgment of nonobviousness is appropriate for this reason alone. .................................... 12 HP failed to rebut Polaroid's secondary indicia of nonobviousness. .......................................................................................... 19

2.

CONCLUSION ........................................................................................................................ 20

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TABLE OF AUTHORITIES Page(s) Cases Amesbury Group, Inc. v. Caldwell Mfg. Co., Civ. A. No. 05-10020-DPW, 2006 WL 3196747 (D. Mass. Nov. 2, 2006)..................... 19 Anchor Wall Sys., Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298 (Fed. Cir. 2003) ............................................................................... 1, 5, 6 Celeritas Techs. Ltd. v. Rockwell Intl'l Corp., 150 F.3d 1354 (Fed. Cir. 1998) ..................................................................................... 18 Chimie v. PPG Indus., Inc., 402 F.3d 1371 (Fed. Cir. 2005) ............................................................................... 1, 5, 6 DyStar Textilfarben GmbH & Co. Deutscheland KG v. C.H. Patrick Co., 464 F.3d 1356 (Fed. Cir. 2006) ..................................................................................... 19 Eaton Corp. v. ZF Meritor LLC, 504 F. Supp. 2d 217 (E.D. Mich. 2007)......................................................................... 11 Eli Lilly and Co. v. Zenith Goldline Pharms., Inc., 471 F.3d 1369 (Fed. Cir. 2006) ..................................................................................... 11 Glaverbel Societe Anonyme v. Northlake Mktg. & Supply, Inc., 45 F.3d 1550 (Fed. Cir. 1995) ................................................................................... 4, 19 Goss Int'l Americas, Inc. v. MAN Roland, Inc., Civ. No. 03-cv-513-SM, 2008 WL 879762 (March 28, 2008)........................................ 18 Graham v. John Deere Co., 383 U.S. 1 (1966)..................................................................................... 7, 11, 13, 18, 19 In re Fulton, 391 F.3d 1195 (Fed. Cir. 2004) ..................................................................................... 19 In re Heck, 699 F.2d 1331 (Fed. Cir. 1983) ..................................................................................... 18 In re Kahn, 441 F.3d 977 (Fed. Cir. 2006) ..............................................................................3, 12, 17 In re Rouffet, 149 F.3d 1350 (Fed. Cir. 1998) ..................................................................................... 20 Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363 (Fed. Cir. 2008) .................................................................. 3, 7, 12, 13, 14

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IXYS Corp. v. Advanced Power Tech., Inc., 321 F. Supp. 2d 1133 (N. Cal. 2004) ............................................................................. 19 KSR Int'l Co. v. Teleflex Inc., --- U.S. --, 127 S. Ct. 1727 (2007) ................................................ 3, 11, 12, 13, 17, 18, 19 Laymon v. Lobby House, Inc., C.A. No. 07-129-MPT, 2008 WL 1733354 (D. Del. April 14, 2008) ............................... 5 Med. Instrum. and Diagnostics Corp. v. Elekta AB, 344 F.3d 1205 (Fed. Cir. 2003) ..................................................................................... 10 Merck & Co. v. Biocraft Labs., 874 F.2d 804 (Fed. Cir. 1983) ....................................................................................... 18 Miller Prod. Co. v. Veltek Assoc., Civ. A. 01-35-KAJ, 2004 WL 253473 (D. Del. Feb. 10, 2004)...................................... 11 Omegaflex, Inc. v. Parker-Hannifin Corp., 243 Fed. Appx. 592 (Fed. Cir. 2007)............................................................................. 10 SRI Intern., Inc. v. Advanced Tech. Labs., Inc., 45 F.3d 443, WL 712487 (Fed. Cir. 1994).................................................. 3, 8, 11, 12, 20 Tec Air, Inc. v. Denso Mfg. Michigan, Inc., 192 F.3d 1353 (Fed. Cir. 1999) ..................................................................................... 20 Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319 (Fed. Cir. 2005) ..................................................................................... 18

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In opposition to Polaroid's motion for summary judgment of no obviousness, HP made three arguments: (1) Polaroid did not address all of HP's obviousness contentions; (2) Polaroid's evidence of no obviousness raises genuine issues of material facts; and (3) Polaroid's evidence of secondary considerations raises genuine issues of material facts. For the reasons stated below, each of these arguments fail. Therefore, summary judgment that Claims 1­3 are not obvious should be granted. SUMMARY OF THE ARGUMENT 1. HP seeks to rely on contentions it did not disclose on the schedule set in the

Amended Scheduling Order. Specifically, HP relies on opinions it first disclosed in an untimely supplemental expert report. Polaroid has moved to strike that report (D.I. 171). In addition, HP submitted another declaration that includes additional expert opinions never before disclosed to support its opposition to Polaroid's opening brief. See D.I. 190, at ¶¶ 6­21. Because these opinions are untimely, HP should not be able to rely on them to rebut summary judgment. See Chimie v. PPG Industries, Inc., 402 F.3d 1371, 1374­75 (Fed. Cir. 2005) (excluding untimely evidence proffered to rebut summary judgment); Anchor Wall Sys., Inc. v.

Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1313­14 (Fed. Cir. 2003) (finding no genuine issue of material fact for trial after striking expert declaration as untimely). 2. In any event, Polaroid rebutted all of the opinions HP belatedly produced to

support its obviousness contentions. The Okada and Wang references are not invalidating. The Okada reference, alone or in combination with the other references HP identified, does not render Claims 1­3 obvious for at least the following reasons: The examiner allowed the '381 patent to issue over the Okada reference; Okada discloses a global correction system that transforms a video image by operating on the entire scene rather than on a pixel-by-pixel basis as in the '381 patent;

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Okada calculates a global average for the entire scene whereas the system claimed in the '381 patent only calculates a local average of a group of pixels near the pixel being transformed; Okada calculates one gamma value for the entire image whereas the '381 patent calculates a different gamma for each pixel in an image; and The gamma disclosed in Okada will be constant for certain ranges of the calculated global average for the scene and the system claimed in the '381 patent calculates a unique gamma for each calculated average value.



See D.I. 193, Polaroid's Answering Brief to HP's Motion for Summary Judgment, Or in the Alternative, Patent Invalidity at 31­36. HP relies upon the Wang reference for its recitation of the technique disclosed in the Lee reference. The Wang reference, alone or in combination with other references does not

invalidate Claims 1­3 for the same reasons that the Lee reference does not: Wang teaches a gain-based approach to image enhancement and not a power-law transformation claimed in the '381 patent; The function that transforms an input signal taught in Wang does not utilize the local average to select a unique gamma curve for each pixel like the function claimed in the '381 patent; and Wang teaches linear gray level stretching to enhance the pixels in an image whereas the '381 patent relies on a non-linear transformation that is able to increase the stretch in areas of very low light or very high light.



See D.I. 149, at 10­11, 37­38. 3. Notwithstanding the argument in its opposition brief, HP did not contend that the

Iida reference, either alone or in combination with any other references, rendered Claims 1­3 obvious under Polaroid's construction. Therefore, Polaroid was not required to address any arguments with respect to that reference in its opening brief. Moreover, HP did not disclose the Iida reference until after the deadline for opening expert reports. But even if HP had timely

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disclosed Iida in accordance with the Amended Scheduling Order, the Iida reference does not invalidate Claims 1­3 for at least the following reasons: Iida discloses that its system relies on preset values of gammas stored in memory, which the user can select via a joystick or by depressing different keys or combination of keys on a keyboard. The '381 patent calculates a gamma without the use of joysticks or keyboards; Iida does not teach a specific function for determining gamma whereas the '381 patent claims a specific function that makes use of the local average to determine gamma; Iida determines one gamma for an entire image and the '381 patent calculates a gamma for each pixel in an image, with the maximum number of gammas being 256 for an 8-bit image; and Iida will either improve contrast in low intensity areas or high intensity areas but not both. The '381 patent claims a system that is designed to improve contrast in both high and low intensity areas within the same image. HP did not raise any issues of material fact with respect to whether Claims 1­3







4.

are rendered obvious by the combinations of prior art it timely disclosed. HP's sole contention in response to Polaroid's motion is the unsupported (and unsupportable) legal conclusion of its expert, Dr. Rangayyan. See Innogenetics, N.V. v. Abbott Labs, 512 F.3d 1363, 1373 (Fed. Cir. 2008) (holding that "there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness".); see also KSR Int'l Co. v. Teleflex Inc., --- U.S. --, 127 S. Ct. 1727, 1741 (2007) ("To facilitate review, this analysis should be made explicit.") (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Because an expert's opinion on the ultimate legal conclusion of obviousness is not "factual" evidence, HP fails to raise a genuine issue of material fact that requires trial. SRI Intern., Inc. v. Advanced Tech. Labs., Inc., 45 F.3d 443, WL 712487, at *4 (Fed. Cir. 1994).

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5.

HP did not address Polaroid's evidence that the Sabri reference alone or in

combination with the Gonzalez algorithm did not render Claims 1­3 obvious. Thus, Polaroid's motion on that point is uncontested and should be granted. 6. HP's attempt to rebut Polaroid's evidence of secondary considerations is nothing

more than unsubstantiated attorney argument. A party cannot avoid summary judgment with attorney argument alone. See Glaverbel Societe Anonyme v. Northlake Mktg. & Supply, Inc., 45 F.3d 1550, 1562 (Fed. Cir. 1995) (holding that attorney argument was insufficient to show that issues require trial). ARGUMENT HP does not raise any genuine issue of material fact that would preclude summary judgment that Claims 1­3 of the '381 patent are not obvious. 1 None of the three contentions HP makes to avoid summary judgment have merit. First, Polaroid refuted all of the arguments that HP attempts to use in support of its obviousness argument. Second, HP's contention that the record contains evidence that the combination of prior art that it has identified renders Claims 1­ 3 obvious is only supported by the conclusory statements of its expert and does not raise any genuine issues for trial. Third, HP's contention that there are genuine issues of fact regarding Polaroid's evidence of secondary considerations of non-obviousness is unsupported, attorney argument that is insufficient to rebut summary judgment. HP does not offer any evidence to rebut Polaroid's argument that summary judgment of nonobviousness of Claims 1­3 is appropriate in view of the Sabri reference alone or in combination with the Gonzalez algorithm. Compare D.I. 149 at 8, 13, 25­26, 36­37 with D.I. 188. Therefore, summary judgment that the Sabri reference, either alone or in combination with the Gonzalez algorithm, does not render Claims 1­3 obvious is appropriate.
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A.

HP Failed To Timely Disclose The Contentions On Which It Now Relies To Dispute Summary Judgment.

Courts have refused to consider information that a party produced after the court-ordered deadline to defeat summary judgment. See, e.g., Chimie, 402 F.3d at 1374­75 (excluding

untimely evidence proffered to rebut summary judgment); Anchor Wall Sys., 340 F.3d at 1313­ 14 (finding no genuine issue of material fact for trial after striking expert declarations as untimely); see also Laymon v. Lobby House, Inc., C.A. No. 07-129-MPT, 2008 WL 1733354, *5 (D. Del. April 14, 2008) (holding that "[s]ummary judgment . . . looks only to admissible evidence."). HP attempts to rely on two types of opinions it did not disclose until after the deadline in the Amended Scheduling Order for such opinions: (1) the opinions first disclosed in Dr. Rangayyan's late Supplemental Expert Report; and (2) Dr. Rangayyan's new opinions about prior art that are contained in his declaration in support of HP's opposition brief. Polaroid has moved to preclude HP from relying on opinions in Dr. Rangayyan's supplemental expert report. See D.I. 171. HP should be precluded from relying on Dr. Rangayyan's declaration in support of HP's opposition brief for the same reasons. As with the Okada reference, Dr. Rangayyan did not opine in his opening expert report that the Wang reference in combination with the identified references rendered Claims 1­3 obvious. Moreover, any opinions concerning the Wang reference in Dr. Rangayyan's

supplemental expert report are subject to Polaroid's motion to preclude HP from relying on untimely discovery. See D.I. 171. Those untimely opinions with respect to the Wang reference are also subject to Polaroid's motion to exclude Dr. Rangayyan's opinions on obviousness because they are unreliable. See D.I. 170, Polaroid's Daubert Motion to Exclude Dr. Rangaraj Rangayyan's Opinions Concerning Obviousness at 2 n.1. Thus, Polaroid was not required to

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address those opinions. See Chimie, 402 F.3d at 1374­75; Anchor Wall Sys., 340 F.3d at 1313­ 14. Similarly, Dr. Rangayyan did not identify the Iida reference in his opening expert report. And, in his untimely supplemental report, he only opines that Iida anticipates Claims 1­3. See D.I. 190, Ex. C, ¶¶ 150­55. Because HP disclosed its contentions with regard to each of these references after the court-ordered deadline, it cannot rely upon them to create a genuine issue of fact. B. Even Assuming That HP Had Timely Disclosed Its Contentions, Polaroid Addressed Each Allegation, And None Have Merit.

The contentions that HP properly disclosed in Dr. Rangayyan's opening expert report do not raise any triable issues with respect to the Okada and Wang references that HP claim were omitted from Polaroid's opening brief. In his opening expert report, Dr. Rangayyan

acknowledges that the '381 patent was allowed over Okada because it did not disclose the ratio requirement of the asserted claims: [T]he `381 patent appears to have been allowed by the patent examiner because Okada does not explicitly disclose . . . a ratio of the value of an average signal to a value proportionate of the dynamic range of the signals to generate the nonlinear transformation illustrated in Fig. 2 of the Okada patent and Fig. 2 of the `381 patent. D.I. 190, Ex. A, ¶ 131. Nowhere in that report did Dr. Rangayyan opine that Okada alone or in combination with any of the identified references render the asserted claims obvious. HP argues that it does not need Dr. Rangayyan's supplemental expert report to support its motion for summary judgment. See D.I. 188, HP's Opposition to Polaroid's Motion For

Summary Judgment That Claims 1­3 of U.S. Patent No. 4,829,381 Are Not Obvious at 13 n.3. It contends that it can prove that the Okada reference renders the claims obvious by relying on the

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prosecution history of the '381 patent, Polaroid's expert's statements about the disclosure in Okada, and Polaroid's claim construction. Id. HP is not permitted, however, to rely solely on the Okada reference and the prosecution history of the '381 patent to argue that Okada renders the claims obvious. See Innogenetics, 512 F.3d at 1373 (declining to find a genuine issue of material fact without credible expert testimony). That is because evidence about the patent-insuit and the prior art reference is vague without expert testimony and is not helpful in avoiding the pitfalls of hindsight that belie a determination of obviousness. See id. (citing Graham v. John Deere Co., 383 U.S. 1, 86 (1966)). In addition, HP cannot rely on statements made by Polaroid's expert because she made those statements in opposition to HP's motion and therefore, HP cannot rely on them to meet its burden on summary judgment. Moreover, as Polaroid explained in its opposition to HP's motion for summary judgment of non-infringement, or in the alternative, patent invalidity, the Okada reference does not invalidate the asserted claims. See D.I. 193, at 31­36. The examiner allowed the '381 patent after analyzing the Okada reference. See id. at 34. Okada's system differs from the system claimed in the '381 patent in at least three ways. First, Okada teaches that the transformation of the video image must occur by analyzing the entire image and not each pixel of an image. See id. at 32. The '381 patent, on the other hand, transform images on a pixel-by-pixel basis. Id. Second, Okada only calculates a global average for the entire scene. See id. In contrast, the system claimed in the '381 patent only calculates a local average of a group of pixels near the pixel being transformed. Id. Third, Okada calculates one gamma value for the entire image. See id. In contrast, the '381 patent calculates a different gamma for each pixel in an image.

Importantly, Okada does not teach a specific algorithm for calculating gamma. Id. at 33. And,

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the algorithm it does teach for transforming a video scene differs fundamentally from that taught in the '381 patent to transform individual pixels in a scene. See id. at 36. Even if Dr. Rangayyan were permitted to give opinions in his supplemental expert report, he did not conduct a proper obviousness analysis and his opinion that the Okada reference invalidates the asserted claims is conclusory.2 An expert's opinion on the ultimate legal

conclusion of obviousness is not "factual" evidence. SRI Intern., 45 F.3d 443, WL 712487, at *4. Therefore, Dr. Rangayyan's ultimate conclusion that the Okada reference invalidates the '381 patent cannot raise a genuine issue of material fact. In his opening expert report, Dr. Rangayyan did not contend that the Wang reference invalidated Claims 1­3. See D.I. 190, Ex. A, at ¶¶ 208, 222, 237, 237­243, 245­251, 253­258. And, his untimely supplemental expert report attempts to rely on opinions regarding how the Wang reference teaches the preamble and the first claim element of Claim 1 that do not exist. See D.I. 190, Ex. C, at ¶¶ 111, 115. Specifically, HP contends that Wang teaches the preamble of Claim 1 under Polaroid's claim construction and cites to paragraphs 205­216 in Dr. Rangayyan's opening report. See D.I. 190, Ex. C, at ¶ 111. Those paragraphs do not contain any opinions regarding the Wang reference. See D.I. 190, Ex. A, at ¶¶ 205­216. Similarly, HP contends that Wang teaches the first element of Claim 1 (means for averaging) under Polaroid's claim construction and cites to paragraphs 219­230 of Dr. Rangayyan's opening report. See D.I. 190, Ex. C, at ¶ 115. Those paragraphs do not contain any opinions regarding the Wang

Polaroid has also moved to exclude obviousness. See D.I. 170.
2

Dr. Rangaraj Rangayyan's opinions concerning

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reference either. See D.I. 190, Ex. A, at ¶¶ 219­230. Thus, Dr. Rangayyan's supplemental expert report is insufficient to create a triable issue with respect to the Wang reference. In any event, the Wang reference is a survey article. HP relies on it for its recitation of the teachings found in the Lee reference. Compare D.I. 190, Ex. A, at ¶¶ 172, 185, 195, 203 (Wang) with D.I. 190, Ex. A, at ¶¶ 212, 225, 249, 256 (Lee). Polaroid addressed the teachings of Lee in it's opening brief (D.I. 149). The Wang reference, alone or in combination with other references does not invalidate Claims 1­3 for the same reasons that the Lee reference does not: Wang teaches a gain-based approach to image enhancement and not a power-law transformation claimed in the '381 patent; The function that transforms an input signal taught in Wang does not utilize the local average to select a unique gamma curve for each pixel like the function claimed in the '381 patent; and Wang teaches linear gray level stretching to enhance the pixels in an image whereas the '381 patent relies on a non-linear transformation that is able to increase the stretch in areas of very low light or very high light.



See D.I. 149, at 10­11, 37­38. HP disclosed its contentions regarding the Iida reference for the first time in Dr. Rangayyan's supplemental expert report. But even if HP's arguments regarding Iida had been timely, they would not be able to raise a genuine issue of material fact regarding whether Iida invalidates the claims. following reasons: Iida discloses that its system relies on preset values of gammas stored in memory, which the user can select via a joystick or by depressing different keys or combination of keys on a keyboard. The '381 patent does not utilize joysticks or keyboards to select gamma (see Ex. 1, Iida at col. 4, lines 62­66); The Iida reference does not invalidate Claims 1­3 for at least the

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Iida does not teach a specific function for determining gamma whereas the '381 patent claims a specific function that makes use of the local average to determine gamma (see id. at col. 4, lines 25­39); Iida determines one gamma for an entire image and the '381 patent calculates a gamma for each pixel in an image, with the maximum number of gammas being 256 for an 8-bit image (see id. at col. 4, lines 62­66); and Iida will either improve contrast in low intensity areas or high intensity areas but not both and the '381 patent claims a system that is designed to improve contrast in both high and low intensity areas within the same image (see id. at col. 5, lines 12­18).





HP's reliance on Omegaflex, Inc. v. Parker-Hannifin Corp., 243 Fed. Appx. 592 (Fed. Cir. 2007) is misplaced. See D.I 188 at 13­14. In Omegaflex, the Federal Circuit reversed summary judgment because the trial court disregarded the non-movant's expert's testimony of why one of skill in the art would have been motivated to combine prior art references. Omegaflex, 243 Fed. Appx. at 596. In this case -- unlike in Omegaflex -- Dr. Rangayyan did not provide any reason for why one of skill in the art would combine any of the prior art references he identified. See D.I. 170 at 4­7. The other cases on which HP relies are equally inapposite. For example, the court in Medical Instrumentation. and Diagnostics Corporation v. Elekta AB, 344 F.3d 1205 (Fed. Cir. 2003), reversed a grant of summary judgment because the non-movant's expert identified quotes from several prior art references that expressly discussed a motivation to combine references. Id. at 1222. In contrast, Dr. Rangayyan did not point to any evidence that one of skill in the art would be motivated to combine the references he identified. Rather, he provided the same conclusory statement without evidentiary support: "It is my opinion that combining the `means for selecting and transforming' of the Gonzalez algorithm with the image processing systems and

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methods described by [the prior art] is no more than arranging elements already well-known in the image processing field." See, e.g., D.I. 190, Ex. A, ¶ 238; see also D.I. 170 at 4­5. The court in Miller Products Co. v. Veltek Associates, Civ. A. 01-35-KAJ,

2004 WL 253473 (D. Del. Feb. 10, 2004) held that there were genuine issues of material fact that precluded summary judgment of validity on all grounds because the movant only addressed evidence of obviousness and did not address the non-movant's evidence of on-sale bar and anticipation. Id. at *5. Here, Polaroid is only moving for summary judgment of non-

obviousness and properly addressed each obviousness contention. Eaton Corporation v. ZF Meritor LLC, 504 F. Supp. 2d 217 (E.D. Mich. 2007), cited by HP supports Polaroid. In Eaton Corp., the court granted summary judgment in favor of the party with the expert opinion that comported with the well-established principles of obviousness law under § 103, including Graham, 383 U.S. at 86, and KSR International, 127 S. Ct. at 1727. See Eaton Corp., 504 F. Supp. 2d at 224. In this case, Dr. Agouris, Polaroid's expert, provided evidence of each Graham factor. HP's expert witness did not. C. HP's Unsupported, Conclusory Contentions are Insufficient To Rebut Polaroid's Motion For Summary Judgment.

HP cannot properly rely on its expert's vague and conclusory statements -- unsupported by any analysis -- to raise genuine issues of material fact on obviousness. The ultimate

conclusion of obviousness is a question of law. Eli Lilly and Co. v. Zenith Goldline Pharms., Inc., 471 F.3d 1369, 1377 (Fed. Cir. 2006). An expert's opinion on the ultimate legal conclusion of obviousness is not "factual" evidence. SRI Intern., Inc., 45 F.3d 443, WL 712487, at *4. Although the parties' experts disagree on the conclusion of obviousness, "conflicting opinions on a legal issue vel non raise no issue of fact." Id.

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Polaroid's expert, Dr. Agouris, explained why the disclosure of each reference combined with the knowledge of one skilled in the art would not render the claims obvious. For example, Dr. Agouris explained in detail why there is no apparent reason to combine the teachings of the Gonzalez text with the Gonzalez algorithm if the desired outcome was the invention claimed in the '381 patent. See D.I. 151, Ex. C, at 36­37. Dr. Agouris also described the results of

combining the Gonzalez text with the Gonzalez algorithm and explained how the results are far different than the '381 patent's invention. See id. at 37. In contrast, HP's expert, Dr. Rangayyan, merely stated that the prior art references taught each claim element and concluded that this renders the claims obvious. See D.I. 190, Ex. A, at ¶¶ 204­243. He did not address why one of skill in the art would make the proposed

combinations. He also did not address how one of skill in the art would combine the teachings of the references, which are each trying to solve different problems from each other and from the '381 patent. See D.I. 170. Consequently, his opinion on the legal conclusion of obvious is the kind of opinion that is not "factual" evidence under SRI International. 1. HP has not established -- and cannot demonstrate -- its burden of establishing a reason to combine, and summary judgment of nonobviousness is appropriate for this reason alone.

The sole evidence on which HP relies to raise a genuine issue of material fact -- Dr. Rangayyan's opinions -- is deficient because he fails to articulate any reason or conduct any analysis to support his legal conclusion of obviousness. See Innogenetics, N.V., 512 F.3d at 1373 (holding that "there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness".); see also KSR Int'l, 127 S. Ct. at 1741 ("To facilitate review, this analysis should be made explicit.") (citing In re Kahn, 441 F.3d at 988).

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For Claims 1­3, Dr. Rangayyan merely recites that the prior art he identified teaches each element of the claims. He then repeatedly concludes "[the combination of references] is no more than arranging elements already well-known in the image processing field." See, e.g., D.I. 190, Ex. A, ¶¶ 238­43. The law requires more. Even assuming that each element of Claims 1­3 were found in multiple prior art references -- which they are not, as Dr. Agouris explains -- the Supreme Court recently confirmed that "a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was independently known in the prior art." KSR, 127 S. Ct. at 1741. "[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does." Id. Nevertheless, Dr. Rangayyan fails to articulate any reason why a person of ordinary skill in the art would combine any particular references. At his deposition, Dr. Rangayyan testified that he did not render an opinion on the motivation to combine references: "[my analysis as to a motivation to combine] could be left open." See D.I. 170 at 6. Because HP has not

established -- and cannot demonstrate -- any reason to combine, for this reason alone, summary judgment of non-obviousness is appropriate. In addition, HP's contentions are the kind of litigation-inspired hindsight "analysis" the Supreme Court has found to be unpersuasive. For example, in Graham, the Supreme Court emphasized the "importance of guarding against hindsight . . . and resist[ing] the temptation to read into the prior art the teachings of the invention in issue" when considering the obviousness of a patent. Graham v. John Deere Co., 383 U.S. at 86. Other courts have likewise warned against the use of hindsight. See, e.g., Innogenetics, N.V., 512 F.3d at 1374 n.3. The court in

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Innogenetics warned that "[w]e must still be careful not to allow hindsight reconstruction of references to reach the claimed invention without any explanation as to how or why the references would be combined to produce the claimed invention." Id. For each combination of references, Dr. Rangayyan uses hindsight to conclude that the proposed combination of references teach the following algorithm claimed in the '381 patent:
Yin (1C ) YOUT = 255*( ) 255
( Av / M 1)

,

where YOUT is the new pixel value, YIN is the original pixel value, C and M are constants, and Av is the local mean. Below are the algorithms disclosed in each reference that HP identified: Prior Art Reference
Gonzalez:

Gonzalez Algorithm
FLEV = FH * EXP(-ALOG((FH/T)/32)*(32-I)) + 0.5 FLEV = new pixel value, FH is the maximum gray value in image, T is either the minimum gray value in image or 1, depending on which is greater. I is the original pixel value. ALOG means take the antilogarithm of the entity in parentheses.

M g =A*(f - m) + m, where A = k* .
g is the new pixel value, f is the original pixel value, m is the gray-level mean, k is a constant between 0 and 1, M is the global mean, and is the gray-level standard deviation. Richard: Y = Y * (Mv/Mg) * k Y is the new pixel value, Y is the original pixel value, Mv is the local mean, Mg is the global mean, and k is a constant. Lee: x = m + k * (x - m) x is the new pixel value, m is the local mean, k is a constant, and x is the original pixel value.

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Prior Art Reference
Rangayyan: p= a * (1+ (| p - a | /(p a)) ) / (1- (| p - a | /(p a)) , if p a
and

Gonzalez Algorithm

p = Av * (1- (| p - a | /(p a)) ) /

(1+ (| p - a | /(p a)) , if p < Av
p is the new pixel value, a is the average value of pixels surround p, and p is the original pixel value. Chen: I = G(x) * (I - ) + I is the new pixel value, G(x) is a transfer function, I is the new pixel value and is the mean value of pixels. Narendra: Î = (

M ) * (I - Mij) + Mij

Î is the new pixel value, is a gain factor, M is the global mean, I is the original pixel value, and Mij is the local mean.

As shown, none even remotely resembles the algorithm claimed in the '381 patent. Nevertheless, not only does HP fail to put forth a shred of evidence of how one of skill in the art would combine these algorithms with the Gonzalez algorithm (which are directed to different problems), HP also fails to offer evidence of how one of skill in the art would reach the algorithm in the '381 patent after the combination.3
3

Even if it had been timely produced,

HP attempts to correct the deficiency in Dr. Rangayyan's expert reports by submitting an affidavit to explain the motivation to combine the references he identified. See D.I. 190 at ¶¶ 6-21. Just as with the opinions contained in Dr. Rangayyan's Supplemental Expert Report, these opinions are untimely and should be excluded. See D.I. 171.

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Dr. Rangayyan's affidavit --submitted with HP's opposition brief -- that a person of ordinary skill in the art would be able to modify any algorithm or combine it with a different algorithm to come up with a third algorithm is unsupported. See D.I 190, ¶¶ 9­12. Dr. Rangayyan does not provide any evidence for such a conclusory statement and does not explain how one of skill in the art in 1988 could do so. In contrast, Polaroid explains why a person would not look to the Gonzalez algorithm to create an adaptive contrast enhancement scheme like that taught in the '381 patent. See D.I. 149 at 9, 16, 33­39. Polaroid also explained in detail why the combination of references would not result in the invention claimed in the '381 patent. See id. In addition to failing to follow the legal standards for obviousness, HP mischaracterizes the disclosures contained in several references. For example, HP's argument that the Gonzalez algorithm "disclose[s] a contrast enhancement scheme" is in direct contradiction to the teachings of the Gonzalez algorithm and the Gonzalez text. See D.I. 188,at 16; see also D.I. 149 at 9, 16. In addition, HP cannot dispute that the Gonzalez text does not teach the use of power law functions (which later editions of the same text do). See D.I. 188,at 17; see also D.I. 149 at 33. HP's belated argument that a skilled artisan would look to Richard to achieve the invention of the '381 patent because the primary purpose of the Richard reference is to enhance contrast in an image ignores the language of that reference. Id.; D.I. 190, at ¶ 6. Richard expressly teaches that its invention is "particularly advantageous for processing images which are highly affected by noise." See D.I. 189, Ex. D, col. 1, lines 35­39; D.I. 149, at 22, 34. The invention of the '381 patent is not directed to improving images "highly affected by noise" and there is no evidence that one of skill in the art would combine Richard with a subroutine for printing images on a line printer to reach the invention claimed in the '381 patent. See id.

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HP mischaracterizes Polaroid's argument regarding Narendra as being based solely on the disclosure of a recursive filter. See D.I. 188, at 27, 28. Polaroid's evidence that Narendra combined with the Gonzalez algorithm does not invalidate the claims, however, focuses on the non-recursive algorithm taught in Narendra. See D.I. 149 at 13­14. HP's attempt to rebut Polaroid's evidence that one would not look to the Rangayyan reference when trying to achieve the invention claimed in the '381 patent (because the purpose and result of the technique disclosed in the Rangayyan reference is the exact opposite as to what is achieved with the invention of the '381 patent) is not persuasive. See D.I. 188, at 24. First, HP's contention that the goal of the Rangayyan reference should not be considered is legally unsupportable. See id., n.7. The first step of the obviousness analysis is to determine the scope and content of the prior art. See KSR, 127 S. t. at 1734. A necessary component of this analysis is whether the prior art reference is within the field of the endeavor of the patent at issue. In re Kahn, 441 F.3d at 986­87. To determine whether the Rangayyan reference is within the field of endeavor of the '381 patent, the goal of the reference must be considered. Id. Second, HP cannot rebut Polaroid's evidence with Dr. Rangayyan's untimely opinion that one would be motivated to combine the Rangayyan reference because it teaches "adaptive contrast enhancement generally." The Rangayyan reference only discloses a "simple

enhancement function" and not the complex power-law function claimed in the patent. See D.I. 189, Ex. J, at 561. In addition, the Rangayyan reference concentrates on how to implement adaptive neighborhoods so that dark images in x-rays will appear darker and light images in xrays will appear lighter. See id. This is in direct contrast to the teachings of the '381 patent.

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None of the cases cited by HP in footnote 7 of its brief concern the scope and content of the prior art or a motivation to combine references. See Merck & Co. v. Biocraft Labs.,

874 F.2d 804, 807­809 (Fed. Cir. 1989) (analyzing whether claim element was found in prior art); In re Heck, 699 F.2d 1331, 1332­33 (Fed. Cir. 1983) (analyzing whether claim element was found in prior art); Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323 (Fed. Cir. 2005) (analyzing issues of anticipation); Celeritas Techs. Ltd. v. Rockwell Intl'l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998) (analyzing issues of anticipation). Moreover, the case law that HP cites to support its argument that issues where the experts disagree should go to the jury are also distinguishable. Goss International Americas, Inc. v. MAN Roland, Inc., Civ. No. 03-CV-513-SM, 2008 WL 879762 (March 28, 2008) supports Polaroid. The court in Goss held that summary judgment of non-obviousness is only available if there are no genuine issues as to any material fact relating to the Graham inquiry. Goss, 2008 WL 879672, at *1. In this case, Polaroid put forth evidence with respect to each Graham factor: 1) the scope and content of the prior art; 2) the differences between the art and the claims at issue; 3) the level of ordinary skill in the art; and 4) objective evidence of non-obviousness. See KSR, 127 S. Ct. at 1734; see also D.I. 149 at 16­39. HP did not conduct a Graham analysis.4 Instead, HP began its analysis of each reference with a statement that the combination of prior art

As with its lack of evidence on a motivation to combine references, HP attempts to correct its deficiency with respect to the scope and content of the prior art in Dr. Rangayyan's expert reports by submitting an affidavit to explain why one of skill in the art would look to the references it identified. See D.I. 190 at ¶¶ 6, 14­21. Just as with the opinions contained in Dr. Rangayyan's Supplemental Expert Report, these opinions are untimely and should be excluded. See D.I. 171.
4

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references teach each element of the claims. See D.I. 180 at 15, 18, 21, 23, 25, 26. Thus, there is no genuine issue as to any material fact relating to the Graham inquiry and for this reason alone, summary judgment should be granted. Amesbury Group , which was decided before KSR did not analyze the issue of whether an expert conducted the proper analysis and provided sufficient evidence to rebut summary judgment. See Amesbury Group, 2006 WL 3196747, at *6. Similarly, IXYS Corporation is pre-KSR. IXYS Corp., 321 F. Supp. 2d at 1133. It did not address the sufficiency of the expert's analysis. Id. at 1147­48. Similarly, In re Fulton, 391 F.3d 1195 (Fed. Cir. 2004), did not

concern competing expert testimony at all. Rather, the court analyzed whether the Board of Patent Appeals and Interferences properly held that a patent was obvious. Fulton, 391 F.3d at 1196. HP's reliance on DyStar Textilfarben GmbH & Co. Deutscheland KG v. C.H. Patrick Co., 464 F.3d 1356 (Fed. Cir. 2006) is also misplaced. See D.I. 188, at 20­21. The court in DyStar was not evaluating summary judgment motions and did not hold that conflicting expert opinions require that summary judgment should be denied. DyStar, 464 F.3d at 1360­61. 2. HP failed to rebut Polaroid's secondary indicia of non-obviousness.

HP's only contention in response to Polaroid's evidence of secondary considerations of non-obviousness is unsubstantiated attorney argument. A movant cannot meet its burden that a trial is appropriate based solely on attorney argument. See Glaverbel, 45 F.3d at 1562 (holding that attorney argument was insufficient to show that issues require trial). HP relies on disclosures in the prior art references it identified as invalidating to rebut Polaroid's evidence of long-felt demand and a failure to solve by others. See D.I. 188 at 29.

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Yet, HP has not identified a single reference that was directed to the problem that the inventors of the '381 patent were trying to solve. "Whether the evidence presented suffices to rebut the prima facie case is part of the ultimate conclusion of obviousness and is therefore a question of law." Tec Air, Inc. v. Denso Mfg. Michigan, Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999) (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). And as explained earlier, an expert's opinion on an ultimate legal conclusion is not "factual" evidence and cannot rebut summary judgment. See SRI Intern., Inc., 45 F.3d 443, WL 712487, at *4. CONCLUSION For the reasons stated herein, and in Polaroid's opening brief, summary judgment that Claims 1­3 are not invalid for obviousness should be granted. * * * MORRIS, NICHOLS, ARSHT & TUNNELL LLP

/s/ Julia Heaney (#3052)
OF COUNSEL: Russell E. Levine, P.C. G. Courtney Holohan Michelle W. Skinner David W. Higer Maria A. Meginnes KIRKLAND & ELLIS LLP 200 East Randolph Drive Chicago, IL 60601 (312) 861-2000 June 18, 2008
2370310

_____________________________________ Jack B. Blumenfeld (#1014) Julia Heaney (#3052) 1201 N. Market Street Wilmington, Delaware 19801 (302) 658-9200 [email protected] Attorneys for Plaintiff, Polaroid Corporation

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CERTIFICATE OF SERVICE I, the undersigned, hereby certify that on June 18, 2008, I electronically filed the foregoing with the Clerk of the Court using CM/ECF, which will send notification of such filing(s) to the following: William J. Marsden, Jr. FISH & RICHARDSON P.C. I also certify that copies were caused to be served on June 18, 2008 upon the following in the manner indicated: BY E-MAIL William J. Marsden, Jr. FISH & RICHARDSON P.C. 919 N. Market Street, Suite 1100 Wilmington, DE 19801 Matthew Bernstein John E. Giust MINTZ LEVIN COHN FERRIS GLOVSKY POPEO PC 3580 Carmel Mountain Road, Suite 300 San Diego, CA 92130 Bradley Coburn FISH & RICHARDSON P.C. One Congress Plaza, Suite 810 111 Congress Avenue Austin, TX 78701 Daniel Winston CHOATE HALL & STEWART, LLP Two International Place Boston, MA 02110

AND

/s/ Julia Heaney (#3052)
Julia Heaney (#3052)

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