Trials@uspto.gov
`571-272-7822
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` Paper 9
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` Entered: September 1, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`STRYKER CORPORATION,
`Petitioner,
`
`v.
`
`KARL STORZ ENDOSCOPY-AMERICA, INC.,
`Patent Owner.
`
`Case IPR2015-00672
`Patent 7,471,310 B2
`
`
`
`
`
`
`
`
`
`
`Before BRYAN F. MOORE, BARRY L. GROSSMAN, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`
`
`MOORE, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper 9
`
`
`
`
` Entered: September 1, 2015
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`STRYKER CORPORATION,
`Petitioner,
`
`v.
`
`KARL STORZ ENDOSCOPY-AMERICA, INC.,
`Patent Owner.
`
`Case IPR2015-00672
`Patent 7,471,310 B2
`
`
`
`
`
`
`
`
`
`
`Before BRYAN F. MOORE, BARRY L. GROSSMAN, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`
`
`MOORE, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`Case IPR2015-00672
`Patent 7,471,310 B2
`
`I.
`INTRODUCTION
`Petitioner, Stryker Corporation, filed a Petition requesting an inter partes
`review of claims 1–16, 19–22, 25, and 26 of U.S. Patent No. 7,471,310 (Ex. 1001,
`“the ’310 patent”). Paper 2 (“Pet.”). In response, Patent Owner, Karl Storz
`Endoscopy-America, Inc., filed a Preliminary Response. Paper 8 (“Prelim.
`Resp.”). We have jurisdiction under 35 U.S.C. § 314, which provides that an inter
`partes review may not be instituted “unless . . . the information presented in the
`petition . . . shows that there is a reasonable likelihood that the petitioner would
`prevail with respect to at least 1 of the claims challenged in the petition.”
`Upon consideration of the Petition, and for the reasons explained below, we
`determine that Petitioner has not established a reasonable likelihood that it would
`prevail with respect to any of the challenged claims.
`
`A. Related Matter
`The parties identify the following case involving the ’310 patent: Karl Storz
`Endoscopy-Am., Inc. v. Stryker Corp., Case No. 3:14-cv-00876-RS (N.D. Cal.,
`Feb. 26, 2014). Pet. 1. The parties also identify seven other pending requests for
`inter partes review involving the ’310 patent or a patent related to the ’310 patent.
`Pet. 1, 2.
`
`B. The ’310 Patent
`The ’310 patent is titled “Intelligent Camera Head.” The Abstract describes
`the subject matter as follows:
`A video imaging system that minimizes the effect of EMI on the
`image data, provides a small, lightweight easy to use camera head,
`permitting interchangeable use of a variety of intelligent camera heads
`with a single camera control unit, and allows the utilization of new
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`camera heads with new functions as they become available without
`having to replace the existing CCU.
`Ex. 1001, Abstract.
`
`C. Illustrative Claim
`Petitioner challenges claims 1–16, 19–22, 25, and 26 of the ’310 patent.
`Independent claim 1 is illustrative of the claimed subject matter and is reproduced
`below:
`1. A video imaging system comprising:
`a camera control unit processing a continuous stream of digital
`video data;
`a cable, connected to said camera control unit, for transmitting
`the stream of digital video data to said camera control unit;
`and
`a camera head, connected to said cable, for providing the stream
`of digital video data, said camera head including;
`an imager, for generating an analog stream of video data;
`a timing generator, generating a timing signal particular to
`said camera head, the timing signal actuating said imager
`and sent to said camera control unit;
`a converter, for converting the analog stream of video data
`into the stream of digital video data;
`a serializer, for serializing the stream of digital video data for
`transmission over said cable;
`at least one digital serial driver;
`a processor; and
`a memory device, accessible by said processor, containing
`camera head information;
`said camera control unit having at least one digital serial receiver
`and is controlled based at least in part upon said timing signal
`particular to said camera head.
`Ex. 1001, 9:17–39.
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`D. Prior Art Relied Upon
`Petitioner relies upon the following prior art references:
`
`Endsley
`US 6,005,613
`
`Dec. 21, 1999
`(Ex. 1003)
`Adler
`US 6,659,940 B2
`
`Dec. 9, 2003
`(Ex. 1004)
`Dowdy
`US 6,295,082 B1
`
`Sep. 25, 2001
`(Ex. 1005)
`King
`US 6,608,647 B1
`Aug. 19, 2003
`(Ex. 1007)
`
`Texas Instruments, Interface Circuits for TIA-EIA-644 (LVDS) Design Notes,
`Mixed Signal Products (Nov. 1998) [hereinafter “TI-LVDS”] (Ex. 1006)
`
`Universal Serial Bus Specification, Rev. 1.0 (Jan. 1996) [hereinafter “USB 1.0”]
`(Ex. 1008)
`
`E. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`
`Challenged Claims
`
`Basis
`
`References
`
`1–3, 6, 9–12, 15, and 16
`
`§ 102
`
`Endsley
`
`1–3, 6, 9–12, 15, and 16
`
`§ 103
`
`Endsley and USB 1.0
`
`1–3, 6, 9–12, 15, 16, 21,
`and 22
`4, 5, 7, 8, 13, 14, 19, 20,
`25, and 26
`
`§ 103
`
`Endsley and Dowdy
`
`§ 103
`
`Endsley, Dowdy, and TI-LVDS
`
`1–16, 19–22, 25, and 26
`
`§ 103
`
`Endsley and Adler
`
`1–16, 19–22, 25, and 26
`
`§ 103
`
`Endsley, Adler, and King
`
`1–3, 6, 9–12, 15, 16, 21,
`and 22
`
`§ 103
`
`Endsley, USB 1.0, Dowdy, and
`King
`
`4
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`II. ANALYSIS
`I. Claim Construction
`We construe claims in an unexpired patent by applying the broadest
`reasonable interpretation in light of the specification. See 37 C.F.R. § 42.100(b);
`In re Cuozzo Speed Techs., LLC, No. 2014-1301, 2015 WL 4097949, *7–8 (Fed.
`Cir. July 8, 2015). Under the broadest reasonable construction standard, claim
`terms are given their ordinary and customary meaning, as would be understood by
`one of ordinary skill in the art in the context of the entire disclosure. See In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). On the other hand, a
`“claim term will not receive its ordinary meaning if the patentee acted as his own
`lexicographer” and clearly set forth a definition of the claim term in the
`specification. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.
`Cir. 2002).
`In light of Petitioner’s challenges to the patentability of the claims, we
`address the following terms in the challenged claims: “video imaging system” and
`“camera head.” Other terms in the challenged claims need no express construction
`at this time.
`1. “video imaging system”
`The preambles of independent claims 1, 9, 15, and 21 recite “[a] video
`imaging system.” Ex. 1001, 9:17, 60, 10:32, 62. Asserting that “the patent claims
`do not have meaning removed from the context of the disclosure,” Patent Owner
`contends that the preambles are limiting. Prelim. Resp. 6. In particular, Patent
`Owner contends that the recited video imaging system means “endoscopic video
`imaging equipment for use in medical procedures.” Id. at 6. In support of its
`contention, Patent Owner explains:
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`The specification describes explicitly the context in which the
`inventive video imaging system arose: “video endoscopy,” “[which]
`includes medical diagnostic and therapeutic disciplines that utilize
`endoscopes to penetrate and view otherwise inaccessible body cavities
`utilizing minimally invasive surgical procedures.” The terms
`“endoscopic” or “endoscopy” automatically evokes [sic] medical
`imaging in the minds of those of skill in the art. The specification
`describes numerous issues and characteristics unique to the field of
`video endoscopy.
`Id. at 6 (internal citation omitted).
`Petitioner, on the other hand, contends that the preambles are not limiting
`because the recited video imaging system “describes only the intended use.” Pet.
`6. We are persuaded by Petitioner’s contention in this regard.
`In general, a preamble limits the invention if it recites essential structure or
`steps, or if it is “‘necessary to give life, meaning, and vitality’ to the claim.”
`Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir.
`2002) (citing Pitney Bowes Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305
`(Fed. Cir. 1999)). A preamble, however, is not limiting where the claim body
`defines a structurally complete invention and the preamble only states a purpose or
`intended use for the invention. Id.
`Each of the bodies of independent claims 1, 9, 15, and 21 recites a system
`that includes a camera control unit, a cable, and a camera head. Each recited
`camera head includes some combination of the following components: an imager,
`a timing generator, a converter, a serializer, a digital serial driver, a processor, and
`a memory device. The recited systems correspond at least to the embodiment
`shown in Figure 1 of the ’310 patent, which illustrates a “camera head, universal
`cable and camera control unit.” Ex. 1001, 4:45–47. Figure 1 shows that the
`camera head includes an imager, a converter, a timing generator, a multiplexer, a
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`processor, a memory, a serializer, and a driver. See id., Fig. 1. Thus, each of the
`bodies of claims 1, 9, 15, and 21 recites a structurally complete invention.
`Moreover, although the Specification may be “replete with . . . references to
`endoscopic/medical imaging,” as Patent Owner contends, (Prelim. Resp. 7), we
`note that Patent Owner does not direct our attention to any language in the
`Specification that defines a video imaging system as endoscopic video imaging
`equipment for use in medical procedures. Claim terms generally should be given
`their ordinary and customary meaning except “1) when a patentee sets out a
`definition and acts as his own lexicographer or 2) when the patentee disavows the
`full scope of a claim term either in the specification or during prosecution.”
`Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).
`“To act as its own lexicographer, a patentee must ‘clearly set forth a definition of
`the disputed claim term . . . . ’” Id. (quoting CCS Fitness, 288 F.3d 1359 at 1366).
`Accordingly, based on the record before us, we determine that the preambles of
`claims 1, 9, 15, and 21 do not recite any essential structure not already recited in
`the bodies of these claims.
`In view of the foregoing, we agree with Petitioner that the preambles of
`claims 1, 9, 15, and 21 are non-limiting.
`2. “camera head”
`Independent claims 1, 9, 15, and 21 recite “a camera head.” Ex. 1001, 9:23,
`66, 10:38, 11:1. Petitioner argues that this limitation means “a device that
`generates an uninterrupted sequence of data that represents moving visual images.”
`Pet. 6. We are unpersuaded by Petitioner’s argument.
`In support of its construction, Petitioner points out that claims 1, 9, 15, and
`21 further “recite[] that the camera head must provide a ‘stream of digital video
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`data’ and the camera control unit processes a ‘continuous stream of digital video
`data.’” Pet. 6. Given these further recitations, Petitioner contends that the recited
`camera head must therefore “be a device that generates an uninterrupted (i.e.,
`continuous) sequence of data (i.e., stream of data) representing moving visual
`images (i.e., video).” Id. In light of the issues before us at this stage of the
`proceeding, however, it is not necessary for us to decide whether the camera head
`generates an uninterrupted sequence of data. We therefore decline to limit our
`construction accordingly.
`Petitioner also contends that the recited camera head “is not limited to an
`endoscopic video camera . . . at least in part because dependent claim 21 is
`narrower in requiring an endoscope.” Id. at 6. According to Petitioner, “[i]f a
`‘camera head’ in claim 1 was limited to an endoscopic video camera, then the
`quoted language from claim 21 would be redundant.” Id. We are unpersuaded by
`Petitioner’s contention in this regard. Petitioner does not direct us to any evidence
`showing that an endoscopic video camera necessarily is or includes an endoscope.
`Petitioner further contends that, during prosecution, Patent Owner “never
`argued that [the Examiner’s] . . . rejections were improper because the [applied]
`references lacked disclosure of an endoscopic video camera.” Id at 7. We also are
`unpersuaded by Petitioner’s contention in this regard. As discussed above, we
`construe claims in light of the specification. See Cuozzo, 2015 WL 4097949, at
`*7–8. As Patent Owner points out, the Specification defines “camera head” as an
`endoscopic video camera. Prelim. Resp. 8 (citing Ex. 1001, 1:18, 19).
`We note Patent Owner’s contention that an endoscopic video camera is “a
`video camera that includes or is adapted to be connected to an endoscope.” Id.
`(emphasis omitted). On this record, we agree with Patent Owner. See Ex. 1001,
`
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`1:15–17 (“[c]oupling of video imaging cameras (incorporating solid-state imagers)
`to endoscopes”), 11:1 (“a camera head, connected to said cable and an
`endoscope”).
`Based on the record before us, we determine that, under a broadest
`reasonable construction in light of the Specification, the recited term “camera
`head” means an endoscopic video camera, which is a video camera that includes or
`is adapted to be connected to an endoscope.
`
`II. Anticipation by Endsley
`“A claim is anticipated only if each and every element as set forth in the
`claim is found, either expressly or inherently described, in a single prior art
`reference.” Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987).
`“The identical invention must be shown in as complete detail as is contained in
`the . . . claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir.
`1989). The elements must be arranged as required by the claim, but this is not an
`ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910
`F.2d 831, 832 (Fed. Cir. 1990).
`Petitioner asserts that claims 1–3, 6, 9–12, 15, and 16 are unpatentable under
`35 U.S.C. § 102 as anticipated by Endsley. Pet. 23. To support its contentions,
`Petitioner provides detailed explanations as to how the prior art meets each claim
`limitation. Id. at 8–25. Petitioner also relies upon a Declaration of John R.
`Grindon, who has been retained as an expert witness by Petitioner for the instant
`proceeding. Ex. 1009.
`Endsley describes a multi-mode digital camera capable of interfacing with a
`computer. Ex. 1003, Abstract, 3:7–9, Fig. 2. Independent claims 1, 9, 15, and 21
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`recite “a camera head.” Petitioner relies on Endsley’s camera. See Pet. 10; Ex.
`1009 ¶ 56. Based on the record before us, we are unpersuaded by Petitioner’s
`contention in this regard. As discussed above, we construe the recited camera head
`to mean an endoscopic video camera. Petitioner does not direct us to any
`disclosure in Endsley that describes the camera as an endoscopic video camera. In
`fact, Petitioner directs us to disclosure in Endsley in which the camera is depicted
`as a web camera. See Ex. 1009 ¶ 56 (citing Ex. 1003, Fig. 2).
`We have reviewed the proposed ground of anticipation by Endsley against
`claims 1–3, 6, 9–12, 15, and 16, and we are not persuaded that Petitioner has
`established a reasonable likelihood that Petitioner would prevail in its challenge to
`claims 1–3, 6, 9–12, 15, and 16 on this ground.
`
`III. Obviousness over Endsley and USB 1.0
`Petitioner asserts that claims 1–3, 6, 9–12, 15, and 16 are unpatentable under
`35 U.S.C. § 103(a) as obvious over the combination of Endsley and USB 1.0. Pet.
`25–28. As noted above, we find that Endsley does not disclose a camera head as
`required by claim 1. USB 1.0 does not make up for the deficiency of Endsley.
`Thus, upon review of the proposed ground of obviousness over Endsley and USB
`1.0 against claims 1–3, 6, 9–12, 15, and 16, we are not persuaded that Petitioner
`has established a reasonable likelihood that it would prevail in its challenge to
`claims 1–3, 6, 9–12, 15, and 16 on this ground.
`IV. Obviousness over Endsley and Dowdy
`Petitioner asserts that claims 1–3, 6, 9–12, 15, 16, 21, and 22 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of Endsley
`
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`and Dowdy. Pet. 28–40. As noted above, we find that Endsley does not disclose a
`camera head as required by claim 1.
`Petitioner also appears to contend that Dowdy alternatively teaches the
`recited camera head. See Pet. 37 (claim chart citing Ex. 1005, 6:48–58). Based on
`the cited portion of Dowdy, we are persuaded that Dowdy alternatively teaches the
`recited camera head. See id.; Ex. 1005, 6:48–58.
`It is not sufficient, however, for Petitioner to demonstrate that each of the
`components is known. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
`(2007). Petitioner must also provide “some articulated reasoning with some
`rational underpinning to support the legal conclusion of obviousness.” In re Kahn,
`441 F.3d 977, 988 (Fed. Cir. 2006). In that regard, Petitioner does not provide a
`persuasive rationale for combining Endsley and Dowdy to obtain the recited
`camera head (i.e., an endoscopic video camera). Petitioner relies on the following
`quotation from Dowdy as motivation to combine Endsley and Dowdy:
`[a] camera head and endoscope are typically detachable as a unit from
`the control unit so that a variety of camera heads can be used with a
`single control unit. This offers a number of advantages. For example,
`if a first camera head fails, the control unit can be operated with
`another camera head while the first camera head is being serviced.
`Also, different types of camera heads, each of which may be most
`useful for certain procedures, can be used with a single control unit so
`as to avoid the expense of purchasing and maintaining multiple
`control units.
`
`
`Pet. 36 (citing Ex. 1005, 1:25–34.) A fair reading of that quotation is that Dowdy
`suggests using other endoscopic camera heads (“useful for certain procedures”),
`not any general camera head, such as that taught by Endsley. Petitioner further
`states that “Dowdy also teaches the known technique of attaching an optical
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`endoscope to a camera head using a C-mount to adapt a video imaging system for
`use in video endoscopy.” Pet. 34 (citing Ex. 1009 ¶ 128 (Grindon Decl.)). To the
`contrary, Dowdy does not discuss adapting a general use camera for use in video
`endoscopy, nor does Petitioner or its declarant assert that a C-Mount is specifically
`designed for adapting general use cameras to video endoscopy. Petitioner has not
`explained why one of ordinary skill in the art relating to endoscopic cameras would
`look to a camera such as Endsley, which is suitable for videoconferencing. See Ex.
`1003, 3:17–21. Accordingly, we are not persuaded that Petitioner has provided
`adequately articulated reasoning with some rational underpinning to support the
`legal conclusion of obviousness. See Kahn, 441 F.3d at 988.
`In view of the foregoing, we determine that Petitioner has not established a
`reasonable likelihood of prevailing in showing that independent claims 1, 9, 15,
`and 21 would have been obvious over Endsley and Dowdy. Claims 2, 3, 6, 10–12,
`16, 21, and 22 depend from claims 1, 9, and 15. We therefore also determine that
`Petitioner has not established a reasonable likelihood of prevailing in showing that
`these dependent claims would have been obvious over Endsley and Dowdy.
`
`V. Obviousness over Endsley, Dowdy, and TI-LVDS
`Petitioner asserts that claims 4, 5, 7, 8, 13, 14, 19, 20, 25, and 26 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of
`Endsley, Dowdy, and TI-LVDS. Pet. 40–43. As noted above, we find that
`Endsley does not disclose a camera head as required by claim 1 and we find that
`Petitioner did not provide a sufficient rationale to combine Endsley and Dowdy.
`TI-LVDS does not make up for the deficiencies of Endsley and Dowdy. Thus,
`upon review of the proposed ground of obviousness over Endsley, Dowdy, and TI-
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`LVDS against claims 4, 5, 7, 8, 13, 14, 19, 20, 25, and 26, we are not persuaded
`that Petitioner has established a reasonable likelihood that Petitioner would prevail
`in its challenge to claims 4, 5, 7, 8, 13, 14, 19, 20, 25, and 26 on this ground.
`VI. Obviousness over Endsley and Adler
`Petitioner asserts that claims 1–16, 19–22, 25, and 26 are unpatentable under
`35 U.S.C. § 103(a) as obvious over the combination of Endsley and Adler. Pet.
`43–53. As noted above, we find that Endsley does not disclose a camera head as
`required by claim 1.
`Petitioner also appears to contend that Adler alternatively teaches the recited
`camera head. See Pet. 37 (claim chart citing Ex. 1004, 9:24–38). Based on the
`cited portion of Adler, we are persuaded that Adler alternatively teaches the recited
`camera head. See id.; Ex. 1004, 9:24–38.
`It is not sufficient, however, for Petitioner to demonstrate that each of the
`components is known. See KSR, 550 U.S. at 418. Petitioner must also provide
`“some articulated reasoning with some rational underpinning to support the legal
`conclusion of obviousness.” Kahn, 441 F.3d at 988. In that regard, Petitioner does
`not provide a persuasive rationale for combining Endsley and Adler to obtain the
`recited camera head (i.e., an endoscopic video camera). Petitioner asserts that “the
`combination of Endsley and Adler for use in an endoscope would have involved
`merely combining known elements according to known methods to yield
`predictable results or the simple substitution of one known element for another to
`obtain predictable results.” Pet. 46. Petitioner has not explained why one of
`ordinary skill in the art relating to endoscopic cameras would look to a camera
`such as Endsley, which is suitable for videoconferencing. See Ex. 1003, 3:17–21.
`As to whether the combination would be a “simple substitution,” the Federal
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`Circuit explains, “[a]lthough predictability is a touchstone of obviousness, the
`‘predictable result’ discussed in KSR refers not only to the expectation that prior art
`elements are capable of being physically combined, but also that the combination
`would have worked for its intended purpose.” DePuy Spine, Inc. v. Medtronic
`Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009) (citing KSR, 550 U.S.
`at 398). Petitioner has not explained sufficiently why, or identified evidence that
`shows, the invention described in the ’310 patent falls into a very predictable field,
`or that one of ordinary skill in the art would have possessed the requisite skills to
`make the proposed combination, or that one of ordinary skill in the art would have
`anticipated reasonably the combination to function in an ordinary and expected
`way. See Rothman v. Target Corp., 556 F.3d 1310, 1319–20 (Fed. Cir. 2009); see
`also Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011)
`(obviousness requires the additional showing that a person of ordinary skill at the
`time of the invention would have selected and combined those prior art elements in
`the normal course of research and development to yield the claimed invention).
`Accordingly, we are not persuaded that Petitioner has provided adequately
`articulated reasoning with some rational underpinning to support the legal
`conclusion of obviousness. See Kahn, 441 F.3d at 988.
`In view of the foregoing, we determine that Petitioner has not established a
`reasonable likelihood of prevailing in showing that independent claims 1, 9, 15,
`and 21 would have been obvious over Endsley and Adler. Claims 2–8, 10–14, 16,
`19, 20, 22, 25, and 26 depend from claims 1, 9, 15, and 21. We therefore also
`determine that Petitioner has not established a reasonable likelihood of prevailing
`in showing that these dependent claims would have been obvious over Endsley and
`Adler.
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`VII. Obviousness over Endsley, Adler, and King
`Petitioner asserts that claims 1–16, 19–22, 25, and 26 are unpatentable under
`35 U.S.C. § 103(a) as obvious over the combination of Endsley, Adler, and King.
`Pet. 53–57. As noted above, we find that Endsley does not disclose a camera head
`as required by claim 1, and we find that Petitioner did not provide a sufficient
`rationale to combine Endsley and Adler.
`Petitioner states that “it would have been obvious to one of ordinary skill in
`the art to combine Endsley, Adler, and King because the combination would
`involve applying a known technique to a known device ready for improvement to
`yield a predictable result.” Pet. 56, 57. Petitioner further states that “King
`discloses the use of multiple camera heads, which could be of different types
`because each is provided with its own set of timing and control signals.” Id. at 57
`(citing Ex. 1006, 6:47–55). However, Petitioner has not explained why one of
`ordinary skill in the art relating to endoscopic cameras would look to a camera
`such as Endsley, which is suitable for videoconferencing. See Ex. 1003, 3:17–21.
`As to whether the combination would be a “simple substitution,” Petitioner has not
`explained sufficiently why, or identified evidence that shows, the invention
`described in the ’310 patent falls into a very predictable field, or that one of
`ordinary skill in the art would have possessed the requisite skills to make the
`proposed combination, or that one of ordinary skill in the art would have
`anticipated reasonably the combination to function in an ordinary and expected
`way.
`
`Thus, King does not make up for the deficiencies of Endsley and Adler.
`Upon review of the proposed ground of obviousness over Endsley, Adler, and
`King against claims 1–16, 19–22, 25, and 26, we are not persuaded that Petitioner
`
`15
`
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`Case IPR2015-00672
`Patent 7,471,310 B2
`
`has established a reasonable likelihood that it would prevail in its challenge to
`claims 1–16, 19–22, 25, and 26 on this ground.
`
`VIII. Obviousness over Endsley, USB 1.0, Dowdy, and King
`Petitioner asserts that claims 1–3, 6, 9–12, 15, 16, 21, and 22 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of
`Endsley, USB 1.0, Dowdy, and King. Pet. 57, 58. As noted above, we find that
`Endsley does not disclose a camera head as required by claim 1; we also find that
`Petitioner did not provide a sufficient rationale to combine Endsley and Dowdy;
`and we find that King does not provide a motivation to combine Endsley with an
`endoscopic camera.
`King and USB 1.0 do not make up for the deficiencies of Endsley and
`Dowdy. Thus, upon review of the proposed ground of obviousness over Endsley,
`USB 1.0, Dowdy, and King against claims 1–3, 6, 9–12, 15, 16, 21, and 22, we are
`not persuaded that Petitioner has established a reasonable likelihood that it would
`prevail in its challenge to claims 1–3, 6, 9–12, 15, 16, 21, and 22 on this ground.
`III. CONCLUSION
`For the foregoing reasons, we are not persuaded that Petitioner has
`demonstrated a reasonable likelihood that it would prevail on any of the challenges
`to patentability of the ’310 patent set forth in the Petition.
`
`16
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`Case IPR2015-00672
`Patent 7,471,310 B2
`
`IV. ORDER
`
`For the reasons given, it is
`ORDERED that the Petition is denied as to all challenged claims, and no
`trial is instituted.
`
`17
`
`
`
`PETITIONER:
`Robert A. Surrette
`bsurrette@mcandrews-ip.com
`
`Merle S. Elliott
`melliott@mcandrews-ip.com
`
`Christopher M. Scharff
`cscharff@mcandrews-ip.com
`
`Michael J. Carrozza
`mcarrozza@mcandrews-ip.com
`
`PATENT OWNER:
`Wesley W. Whitmyer, Jr.
`litigation@whipgroup.com
`Michael J. Kosma
`mkosma@whipgroup.com
`Michael A. Lavine
`mlavine@whipgroup.com
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