Filed on behalf of Securus Technologies, Inc.
`By:
`Justin B. Kimble (JKimble-IPR@bcpc-law.com)
`
`Jeffrey R. Bragalone (jbragalone@bcpc-law.com)
`
`Daniel F. Olejko (dolejko@bcpc-law.com)
`
`Bragalone Conroy PC
`
`2200 Ross Ave.
`
`Suite 4500 – West
`
`Dallas, TX 75201
`
`Tel: 214.785.6670
`
`Fax: 214.786.6680
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GLOBAL TEL*LINK CORPORATION,
`Petitioner,
`
`v.
`
`SECURUS TECHNOLOGIES, INC.,
`Patent Owner.
`
`
`
`Case IPR2016-01362
`U.S. Patent No. 9,083,850
`
`
`
`PATENT OWNER’S RESPONSE
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`

`

`Case IPR2016-01362
`Patent 9,083,850
`
`
`
`
`Exhibit List ............................................................................................................... iii
`
`Table of Contents
`
`I.
`
`INTRODUCTION .............................................................................................. 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`Grounds in the Petition ........................................................................... 4
`
`The Claims of the ’850 Patent Manipulate a Depth of Field by
`Adjusting Depth of Field Parameters. .................................................... 5
`
`The Level of Ordinary Skill in the Art Should Include Education and
`Experience in Optics and Camera System Design. ................................ 9
`
`Dr. Richardson Lacks Experience in the Field of the Invention and
`Fails to Qualify as a Person of Ordinary Skill, Much Less an Expert. 12
`
`II. CLAIM CONSTRUCTION .............................................................................14
`
`A.
`
`B.
`
`C.
`
`D.
`
`The Claim Term “depth of field” Means “the distance between the
`nearest and farthest objects in a scene that appear acceptably sharp in
`an image.” .............................................................................................16
`
`The Claim Phrase “a depth of field parameter for the video” means
`“any of a set of properties of a camera system that determines a depth
`of field.” ................................................................................................17
`
`The Board’s Interpretation of “adjusting a depth of field parameter”
`Renders the Claim Language Superfluous. ..........................................24
`
`Dr. Richardson’s Testimony Regarding the Claim Term “depth of
`field” or “depth of field parameter” Should Be Given Little or No
`Weight. ..................................................................................................26
`
`III. ARGUMENT ...................................................................................................26
`
`A.
`
`Ground 1: Petitioner Fails to Prove Unpatentability of Claims 1, 5, 8,
`9, and 14 ................................................................................................26
`
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`Case IPR2016-01362
`Patent 9,083,850
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`
`1. The Combination of Shipman and Garrison Fails to Disclose
`“adjusting a depth of field parameter for the video” in the
`Independent Claims. ........................................................................28
`
`2. There Is No Motivation to Combine Shipman and Garrison. .........39
`
`B.
`
`C.
`
`Ground 2: Petitioner Fails to Prove Its Proposition of Unpatentability
`Regarding Claims 2-4, 15-18. ..............................................................46
`
`Ground 3: Petitioner Fails to Prove that Claims 6, 7, 10, 11, and 19 Are
`Unpatentable. ........................................................................................48
`
`1. Petitioner Has Not Established that Gotsopoulos Is a Prior Art
`Publication. ......................................................................................48
`
`2. The Combination of Shipman, Garrison, and Gotsopoulos Fails to
`Disclose a Depth of Field Parameter that is Remotely Controllable
`by a Third Party. ..............................................................................49
`
`D.
`
`Grounds 4 and 5: Petitioner Fails to Prove that Claims 12, 13, 20, and
`21 Are Unpatentable. ............................................................................53
`
`IV. CONCLUSION ................................................................................................57
`
`
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`Case IPR2016-01362
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`
`Exhibit List
`
`Exhibit
`Number
`
`Description
`
`2001
`
`US9083850 File History
`
`2002
`
`Declaration of Dr. Alan C. Bovik
`
`2003
`
`Definition of “parameter” Merriam-Webster’s dictionary
`
`2004
`
`Deposition Transcript of Dr. Iain Richardson
`
`2005
`
`US 7,027,659 (Thomas)
`
`2006
`
`DSKeye Gigabit Product Brief
`
`
`
`
`
`iii
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`Case IPR2016-01362
`Patent 9,083,850
`
`
`I.
`
`INTRODUCTION
`
`Pursuant to 35 U.S.C. § 316(a)(8) and 37 C.F.R. § 42.120, Patent Owner Se-
`
`curus Technologies, Inc. (“Securus” or “Patent Owner”) responds to the Petition
`
`(Paper 2) (the “Petition”) for inter partes review in IPR2016-01362 filed by Global
`
`Tel*Link Corporation (“GTL” or “Petitioner”) challenging claims 1-21 of U.S. Pa-
`
`tent No. 9,083,850 (Ex. 1001, hereinafter the “’850 patent”). The Board instituted
`
`inter partes review (Paper 11) of the ’850 patent based on Grounds 1-5, each of
`
`which depend on the combination of Garrison and Shipman.
`
`The ’850 patent claims methods and systems for focusing a video camera in a
`
`controlled environment visitation system on the authorized user(s) and blurring other
`
`users and objects by adjusting a depth of field parameter, without the use of prior art
`
`facial and object recognition techniques. Both of Petitioner’s primary references,
`
`Shipman and Garrison, disclose techniques that do not adjust a depth of field param-
`
`eter like the claims of the ’850 patent, but instead implement prior art facial and
`
`object recognition techniques that were disclaimed by the Patent Owner during pros-
`
`ecution and suffer from the very problems solved by the ’850 patent.
`
`Neither Shipman nor Garrison, alone or in combination, disclose “adjusting a
`
`depth of field parameter for the video” that focuses “an image of a first object at a
`
`first distance from the video visitation device” and blurs “an image of a second ob-
`
`1
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`Patent 9,083,850
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`ject at a second distance from the video visitation device.” ’850 patent, claim 1 (em-
`
`phasis added). Indeed, unlike the claims of the ’850 patent, both references imple-
`
`ment blurring techniques that do not depend at all on the distance of the objects from
`
`the camera, and, as a consequence, cannot and do not adjust a depth of field param-
`
`eter, which the patent defines as a variable that controls “the distance between the
`
`nearest and farthest objects in a scene that appear acceptably sharp in an image.”
`
`Thus, the Petition for this reason and others discussed below fails to demonstrate
`
`that the claimed inventions are obvious.
`
`In addition, Petitioner fails in its assessment of the level of ordinary skill in
`
`the art by excluding any education or experience in camera systems, even though the
`
`claims implement optical concepts for capturing an image, like “depth of field.” This
`
`blatant exclusion exposes the lack of qualification by Dr. Iain Richardson, Peti-
`
`tioner’s purported expert, to testify in this proceeding. For example, Dr. Richardson
`
`could not formulate any definition of the critical term “depth of field,” either in his
`
`declaration or while being asked if he could do so during his deposition.
`
`Failings in Petitioner’s obviousness analysis result in Petitioner conflating the
`
`prior art “blurring” techniques taught in Shipman and Garrison, which are reliant on
`
`facial and object recognition, with the claimed method of “adjusting a depth of field
`
`parameter.” Contrary to Petitioner’s reading, Shipman and Garrison purposefully
`
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`disregard the depth of field (and its parameters). For example, Garrison uses an in-
`
`finite depth of field to capture all objects in an image in focus. Then, instead of ad-
`
`justing a depth of field parameter, Garrison targets one portion of the image using
`
`facial and object recognition techniques, segregates that portion, and blurs the re-
`
`mainder of the image, without regard to the depth of any object in the image. The
`
`blurring of objects in Garrison is not the result of an adjustment of a depth of field
`
`parameter, as the claims require, but is merely the result of the selection of one por-
`
`tion (e.g., a face) of an image. Petitioner, thus, fails to prove that persons of ordinary
`
`skill in the art would have looked to either Shipman or Garrison for the claimed
`
`improvement.
`
`Furthermore, the remaining prior art cited in Grounds 2-5 does nothing to re-
`
`solve the failings of Petitioner’s obviousness analysis. Under Ground 2, Petitioner
`
`fails to explain why a person of ordinary skill in the art would increase the complex-
`
`ity of Garrison or Shipman by adding the ability to adjust depth of field parameters,
`
`such as the f-stop, focal length, or aperture, as taught by Mayhew, when Shipman
`
`and Garrison accomplish blurring using alternative techniques that disregard the
`
`depth of field. Petitioner’s analysis is utter hindsight, as no person of ordinary skill
`
`would have been motivated to additionally adjust these parameters after implement-
`
`ing the teachings of Shipman and Garrison.
`
`Under Ground 3, Petitioner asserts that Gotsopoulos discloses the ability to
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`remotely control an adjustment of a depth of field parameter, but it fails to show that
`
`Gotsopoulos was publicly accessible before the priority date of the ’850 patent.
`
`Moreover, Gotsopoulos does not involve the remote adjustment of a depth of field
`
`parameter. Instead, it relies on a preset aperture and focal length, which provides a
`
`fixed, non-adjustable depth of field. There would have been no reason to modify the
`
`references to incorporate the remote control techniques of Gotsopoulos when none
`
`of the cited references adjusts a depth of field parameter.
`
`Under Grounds 4 and 5, Petitioner ignores that in the challenged claims an
`
`“indicia” or “request” from a third party or an investigator must cause stored video
`
`to be provided as a response or a necessary result of that indicia or request. In con-
`
`trast, Johnson teaches a visitation system that allows corrections officers to share
`
`only a live feed with third parties, and Petitioner does not demonstrate that the live
`
`feed is the claimed “stored video.” Indeed, prisons would have had security and pri-
`
`vacy reasons for preventing distribution of stored video of visitations to third parties.
`
`For these reasons and those further detailed in this Response, each of Peti-
`
`tioner’s Grounds 1-5 is insufficient to prove the unpatentability by a preponderance
`
`of the evidence.
`
`A. Grounds in the Petition
`
`All of the Grounds 1-5 rely on the combination of Shipman (U.S. Patent
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`No. 9,106,789, Exhibit 1004) and Garrison (U.S. Patent No. 7,911,513, Ex-
`
`hibit 1005) for allegedly rendering obvious all independent claims (claims 1, 8,
`
`and 14) of the ’850 patent under 35 U.S.C. § 103. Grounds 2-5 address only depend-
`
`ent claims and rely upon additional references Mayhew, Gotsopoulos, and Johnson.
`
`The following chart summarizes Petitioner’s Grounds 1-5 for unpatentability.
`
`Ground References Combined
`
`Independent
`Claims
`
`Dependent
`Claims
`
`1
`
`2
`
`3
`
`4
`
`5
`
`Shipman and Garrison
`
`1, 8, and 14
`
`5, 9
`
`Shipman, Garrison, and Mayhew
`
`Shipman, Garrison, and Gotsopoulos
`
`Shipman, Garrison, Gotsopoulos,
`and Johnson
`
`Shipman, Garrison, and Johnson
`
`
`
`
`
`
`
`
`
`2-4, 15-18
`
`6, 7, 10, 11, and
`19
`
`12 and 20
`
`13 and 21
`
`
`As discussed in detail below, the Petition does not prove that any claim of the
`
`’850 patent is unpatentable based on these grounds.
`
`B. The Claims of the ’850 Patent Manipulate a Depth of Field by Ad-
`justing Depth of Field Parameters.
`
`The ’850 patent describes a secure environment communication system such
`
`as a camera and phone system used in a prison as shown in Figure 2. ’850 patent,
`
`Abstract, 1:52-60, claim 1.
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`
`’850 patent, Fig. 4.
`
`
`
`The ’850 patent “safe guard[s] the privacy and promote[s] the safe use of
`
`video services provided within inmate housing areas” by preventing viewers of the
`
`video services from plainly seeing unintended people and/or details such as showers,
`
`bathrooms, interiors of cells, or just other inmates. Id., 1:6-25. The ’850 patent also
`
`provides a solution to the problem of “inmates who know they are on camera” and
`
`may “cause disruptions which can escalate and become safety issues.” Id., 1:6-18.
`
`The ’850 patent explains that prior art systems sought to solve these problems in a
`
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`number of different ways: by (1) placing video terminals outside of the general in-
`
`mate population; (2) designing housing units in such a way that the video terminals
`
`face an innocent area; and (3) using facial recognition technology “to ‘lock in’ on
`
`the facial features of the inmate and blur everything but those features.” Id., 1:26-48.
`
`But all of these prior art solutions have significant problems. Placing video
`
`terminals outside of the general inmate population raised “security and administra-
`
`tive issues associated with moving inmates from housing locations to visitation lo-
`
`cations.” Id., 1:26-33. Re-designing housing units was “impractical since most cor-
`
`rectional institutions were constructed decades before and reconstruction would be
`
`too costly,” and the “nooks” designed for video services were difficult to monitor.
`
`Id., 1:34-42. The facial recognition technology “suffers as the inmate moves around
`
`and has the disadvantage of blurring much of the face and or torso of the inmate thus
`
`leading to an unsatisfactory visitation experience.” Id., 1:43-48.
`
`The ’850 patent’s inventor solved these problems by “adjusting a depth of
`
`field parameter for the video, such that an image of a first object at a first distance
`
`from the video visitation device is in focus and an image of a second object at a
`
`second distance from the video visitation device is blurred.” ’850 patent, claims 1,
`
`8, 14 (emphasis added). By adjusting depth of field parameters, thus adjusting the
`
`depth of field, the claimed invention keeps in focus all objects at a specified distance
`
`range from the camera, thereby eliminating the problems with prior art recognition
`
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`technology, which targets a particular object (such as the face) or area in the frame
`
`and requires adjustment whenever that object moves in the scene. See, e.g., ’850
`
`patent, 1:43-48, 12:1-6.
`
`The following photo illustrates how a depth of field can be adjusted to cause
`
`only objects at a certain distance range from the camera to be in focus.
`
`
`
`See Exhibit 2002, Declaration of Dr. Alan Bovik (“Bovik Decl.”) ¶ 41 (citing
`
`http://jonteaches.com/assets/images/101/emphasis-and-focal-point/depth.jpg). This
`
`photo illustrates a short depth of field. Six toy storm troopers are lined up diagonally
`
`in the frame, but the depth of field has been adjusted such that only one is in focus.
`
`The storm troopers that are outside of the depth of field (either farther away or closer
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`to the lens) are out of focus.
`
`In a mistaken attempt to analogize the teachings of the ’850 patent to the prior
`
`art, Petitioner describes the claims as merely applying “blurring techniques to the
`
`specific scenario of a video call involving a resident of a secure environment.” Peti-
`
`tion at 1. But this mischaracterizes the claimed inventions of the ’850 patent. The
`
`claims do not cover mere blurring techniques—they cover methods and systems that
`
`must adjust a depth of field parameter to focus the camera on objects at a first dis-
`
`tance from the camera and blur objects at a second distance from the camera.
`
`As detailed below, Shipman and Garrison, the only references asserted by Pe-
`
`titioner against independent claims 1, 8, and 14 do not disclose, either separately or
`
`in combination, adjusting a depth of field parameter to focus the image. Instead,
`
`these references merely apply prior art recognition techniques to segregate an object
`
`of interest (such as a face) and blur the remainder of the image. They do not actually
`
`adjust the depth of field to focus the camera on all objects at a particular distance
`
`like the asserted claims. Such prior art was specifically distinguished by the patentee
`
`during prosecution and, as discussed, disparaged by the patentee in the specification.
`
`C. The Level of Ordinary Skill in the Art Should Include Education and
`Experience in Optics and Camera System Design.
`
`Petitioner’s faulty obviousness analysis is driven by its purported expert’s
`
`flawed assessment of the level of ordinary skill in the art. Dr. Richardson limits his
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`Case IPR2016-01362
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`definition of one of ordinary skill to a person having a computer science or electrical
`
`engineering background, but disregards the field of optics – which underlies the es-
`
`sence of the inventions claimed in the ’850 patent:
`
`Based on the technologies disclosed in the ‘850 patent, one of ordinary
`
`skill in the art would have a Bachelor’s (B.S.) degree in Computer Sci-
`
`ence, Electronic Engineering or an equivalent field, together with at
`
`least two years of academic or industry experience in a relevant field,
`
`or a Master’s (M.S.) degree in Computer Science, Electronic Engineer-
`
`ing or an equivalent field, together with at least one year of academic
`
`or industry experience in a relevant field. A relevant field could include
`
`data communications, image or video processing or communications,
`
`surveillance system design or similar. This description is approximate,
`
`and a higher level of education or skill might make up for less experi-
`
`ence, and vice versa.
`
`Exhibit 1002, Declaration of Iain Richardson (“Richardson Decl.”) ¶ 24. This is the
`
`complete extent of Dr. Richardson’s analysis. See Bovik Decl., ¶¶ 62-63. It excludes
`
`consideration of camera systems and photographic techniques that, even Petitioner
`
`acknowledges, is vital to the level of ordinary skill, and, thus, vital to assessing
`
`whether persons of ordinary skill would have combined prior art to achieve the
`
`claimed invention.
`
`For example, Petitioner acknowledges that the ’850 patent discloses “various
`
`embodiments [for] adjusting the depth of field parameter [that] involve adjusting the
`
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`f-stop setting of [the] camera associated with [a] video visitation device.” Petition
`
`at 5 (quoting ’850 patent, 1:61-63). And Petitioner admits that the ’850 patent dis-
`
`closes “adjusting the f-stop settings may further include adjusting a focal length of
`
`a lens coupled to the video visitation device or adjusting an aperture setting of the
`
`camera associated with the video visitation device.” Id. at 6 (quoting ’850 patent,
`
`1:61-67). Thus, the claimed invention relates, at least, to camera systems. Persons of
`
`ordinary skill in the art would necessarily need to know how to use and manipulate
`
`a depth of field by adjusting its parameters. Bovik Decl. ¶¶ 57-61, 64.
`
`Indeed, even Dr. Richardson admits that the field of camera design is relevant
`
`to the field of invention. Exhibit 2004, Deposition of Dr. Iain Richardson (“Richard-
`
`son Dep.”), 45:17-25 (discussing how “computer networking” and “camera design”
`
`were technical fields relevant to the field of the invention); see also Bovik Decl., ¶¶
`
`65-72. Discussing the field of “camera design” in the context of the ’850 patent,
`
`Dr. Richardson indicated the following characteristics: “I mentioned camera design
`
`and I think in my mind I was including things like the relationship between F-stop
`
`setting, focal length, depth of field, et cetera, and perhaps the control of settings or
`
`parameters relating to -- to these.” Richardson Dep., 46:22-47:3. Yet none of these
`
`camera-system-related skills are listed or explained (even in relation to other fields)
`
`by Dr. Richardson.
`
`A person of ordinary skill in the art for the ’850 patent would thus have more
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`Case IPR2016-01362
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`specific experience than what Petitioner has attributed—i.e., degrees in Computer
`
`Science or Electrical Engineering and experience in image and video processing.
`
`Bovik Decl. ¶ 73. As Patent Owner’s expert, Dr. Bovik, explains, a person of ordi-
`
`nary skill would also have knowledge of the field of optics and camera design and
`
`understand concepts such as depth of field. See id., ¶¶ 57, 68.
`
`D. Dr. Richardson Lacks Experience in the Field of the Invention and
`Fails to Qualify as a Person of Ordinary Skill, Much Less an Expert.
`
`One explanation for Petitioner’s failing to include education in the field of
`
`optics and experience with camera systems as part of the level of ordinary skill must
`
`be that Dr. Richardson does not himself have this type of education or experience.
`
`See Richardson Decl. ¶ 24; see also Richardson Dep., 42:25-43:6 (providing evasive
`
`answers in response to the question if he was “an expert in the field of the ’850
`
`patent”); see also Bovik Decl. ¶¶ 66-73 (discussing Dr. Richardson’s lack of expe-
`
`rience with depth of field manipulation).
`
`Dr. Richardson took an exhaustive tour of his alleged qualifications during his
`
`deposition. See Bovik Decl. ¶ 67 (citing Richardson Dep., 12:4-40:5, where Dr.
`
`Richardson asserts expertise in various field none of which cover optical or camera
`
`systems). But none of his testimony, save some childhood experiences (e.g., Rich-
`
`ardson Dep., 96:9-10), provides any support for his opinions regarding whether per-
`
`sons of ordinary skill in the art would have utilized Shipman and Garrison to focus
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`a camera lens on objects at a first distance and blur objects at a second distance by
`
`adjusting a depth of field parameter. See id.
`
`For example, Dr. Richardson appears to only have a rudimentary level of ex-
`
`perience and understanding of optics and camera systems, and in particular, his un-
`
`derstanding of depth of field which mostly, if not entirely, consists of vague recol-
`
`lections from childhood. Richardson Dep., 96:9-98:4. But despite his vague recol-
`
`lections, Dr. Richardson could not even articulate a definition of “depth of field”:
`
`Q. What is your understanding of the plain and ordinary meaning of the
`
`term “depth of field”?
`
`A. As I mentioned, my understanding starts -- I remember learning
`
`about depth of field first when I was age 12 or 13 in a photography
`
`course, and I don’t remember exactly how it was described to me. I’ve
`
`used it myself in photographing things. I’ve come across it in many
`
`different context. It would be hard for me to come up with a definition
`
`-- you know, short definition or a definition just as I sit here of such a
`
`widely known and used concept.
`
`Richardson Dep., 79:23-80:9 (emphasis added).
`
`Indeed, from the deposition excerpts above (and others discussed below) and
`
`the lack of analysis in his declaration, it is apparent that Dr. Richardson lacks any
`
`expertise in the field of optics and, in particular, the concept of a depth of field.
`
`Bovik Decl. ¶ 88-89 (discussing the extensive dialogue at Richardson Dep., 78:6-
`
`85:18, where Dr. Richardson demonstrates his lack of expertise concerning “a depth
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`Case IPR2016-01362
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`of field,” including his inability to quantify depth of field in an equation, see Rich-
`
`ardson Dep., 84:2-9).
`
`Furthermore, although Dr. Richardson claims to have experience in blurring
`
`images, that experience is limited to video compression techniques – there is no
`
`indication that he ever used optical concepts, such as a depth of field, to focus an
`
`image on objects at certain distances and blur objects at other distances from a cam-
`
`era lens:
`
`My research team and I investigated visual communications for deaf
`
`people and developed videoconferencing technology that improved
`
`sign language communication by selectively blurring the background
`
`in a video scene and providing the video to a remotely located viewer
`
`(Muir and Richardson, “Perception of Sign Language and its Applica-
`
`tion to Visual Communications for Deaf People”, Journal of Deaf Stud-
`
`ies and Deaf Education, September 2005). With my colleague Ying
`
`Zhong, I investigated the effect of blurring or increasing the compres-
`
`sion of background and foreground regions in video images and the
`
`effect on compressed video transmission.
`
`Richardson Decl. ¶ 71 (emphasis added). Because Dr. Richardson lacks any educa-
`
`tion or experience in the field of optics and camera systems, he fails to qualify as a
`
`person of ordinary skill in the art. He is certainly not qualified to be an expert.
`
`II. CLAIM CONSTRUCTION
`
`Petitioner does not propose the construction of any claim terms, contending
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`that “[n]o explicit construction is necessary” and that all claim terms may be given
`
`their “plain and ordinary meaning as understood by a person of ordinary skill in the
`
`art and consistent with the disclosure.” Petition at 8. In its Preliminary response,
`
`Patent Owner proposed that the term “depth of field” should be construed as “the
`
`distance between the nearest and farthest objects in a scene that appear acceptably
`
`sharp in an image” in light of the clear definition present in the specification. Pre-
`
`liminary Response at 5-6 (citing SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d
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`1341, 1348 (Fed. Cir. 2016)).
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`In its Institution Decision, the Board agreed with Patent Owner “that the Spec-
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`ification of the ’850 Patent provides a particular definition of ‘depth of field,’” but
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`nevertheless “determine[d] that express constructions for the claim terms are not
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`necessary at this stage of the proceeding.” Institution Decision at 6. Further, the
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`Board indicated that the claim language “a depth of field parameter” is “distinct
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`from a mere recitation of “a depth of field.” Id. (emphasis in original). While it did
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`not expressly construe the claim, the Board found that “requiring an image of a first
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`object at a first distance from the video visitation device to be in focus and an image
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`of a second object at a second distance from the video visitation device to be blurred”
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`meets the “adjusting a depth of field parameter” limitation of the claims. Id. at 18
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`(emphasis in original). But the Board’s interpretation of the claims is incorrect as it
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`ignores the intrinsic and extrinsic evidence and effectively reads out the “adjusting
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`a depth of field parameter” limitation by focusing only on the resulting image.
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`A. The Claim Term “depth of field” Means “the distance between the
`nearest and farthest objects in a scene that appear acceptably sharp
`in an image.”
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`Under the broadest reasonable interpretation standard, “claims should always
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`be read in light of the specification and teachings in the underlying patent.” In re
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`Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010) (emphasis added).
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`“[E]ven under the broadest reasonable interpretation, the Board’s construction can-
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`not be divorced from the specification and the record evidence, and must be con-
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`sistent with the one that those skilled in the art would reach.” SAS, 825 F.3d at 1348.
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`Furthermore, the Board “should also consult the patent’s prosecution history in pro-
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`ceedings in which the patent has been brought back to the agency for a second re-
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`view.” D’Agostino v. MasterCard Int’l Inc., 844 F.3d 945, 948 (Fed. Cir. 2016) (em-
`
`phasis added).
`
`With respect to claim interpretation, “[u]sually [the specification] is disposi-
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`tive; it is the single best guide to the meaning of a disputed term.” In re Abbott Dia-
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`betes Care Inc., 696 F.3d 1142, 1149 (Fed. Cir. 2012). Claim terms should be given
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`their ordinary and customary meaning except “1) when a patentee sets out a defini-
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`tion and acts as his own lexicographer, or 2) when the patentee disavows the full
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`scope of a claim term either in the specification or during prosecution.” Thorner v.
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`Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). “To act as
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`its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed
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`claim term’ other than its plain and ordinary meaning.” Id.
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`Turning to the specification of the ’850 patent, as Petitioner concedes and the
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`Board agreed, the specification provides a special definition of “depth of field.” Pe-
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`tition at 31-32 (citing ’850 Patent, 7:41-43). Because the Patent Owner acted as his
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`own lexicographer in defining the term “depth of field,” it should be construed ac-
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`cording to this definition as “the distance between the nearest and farthest objects in
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`a scene that appear acceptably sharp in an image.” See, e.g., ServiceNow, Inc. v.
`
`Hewlett-Packard Co., IPR2015-00702, 2015 WL 5016497, at *5 (P.T.A.B. Aug. 21,
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`2015) (construing the term “operation” according to its definition in the specifica-
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`tion). Indeed, one of ordinary skill in the art would have applied this definition when
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`considering the meaning of the claims. Bovik Decl. ¶ 82; see also SAS Inst., 825
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`F.3d at 1348 (“Because the specification explicitly defines data flow diagram, one
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`of skill in the art having read the specification would apply this definition to graph-
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`ical representations of data flows as well.”).
`
`B. The Claim Phrase “a depth of field parameter for the video” means
`“any of a set of properties of a camera system that determines a
`depth of field.”
`
`With respect to the distinct claim phrase, “a depth of field parameter for the
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`video,” the specification is also instructive. “Where the specification makes clear
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`that the invention does not include a particular feature, that feature is deemed to be
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`outside the reach of the claims of the patent, even though the language of the claims,
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`read without reference to the specification, might be considered broad enough to
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`encompass the feature in question.” SciMed Life Sys., Inc. v. Advanced Cardiovas-
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`cular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001).
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`In the specification, the Patent Owner repeatedly characterized the invention
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`as “adjusting a depth of field parameter of the video” in the abstract, the summary of
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`invention, and in the claims. See, e.g., ’850 patent, Abstract, 1:53-56, claim 1 (em-
`
`phasis added). As discussed above, the patentee expressly defined “depth of field”
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`as dependent upon the distance between the nearest and farthest objects in a scene—
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`not upon the type of particular objects in the scene, or even the placement of partic-
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`ular objects in the scene without regard to the distance of those objects from the
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`camera. Id., 7:41-44. Not a single embodiment or disclosure mentions the use of
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`object or facial recognition techniques in connection with the claimed inventions of
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`the ’850 patent.
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`The specification describes in the summary of invention a number of example
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`depth of field parameters, such as the “f-stop setting of a camera associated with the
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`video visitation device,” “a focal length of a lens coupled to the video visitation
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`device,” “an aperture setting of the camera associated with the video visitation de-
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`vice,” or “digitally processing the video received from the video visitation device in
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`a video processing device to blur one or more objects at the second distance from
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`the video visitation device.” See, e.g., id., 1:61-2:5. But all of these parameters are
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`properties of a camera system that can adjust a depth of field using the distance
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`between objects and the video visitation device. See Bovik Decl. ¶ 81.
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`As Dr. Bovik explains, none of these examples use parameters to adjust a
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`depth of field without regard to the distance of those objects from the camera. See
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`Bovik Decl. ¶ 81. Indeed, the Patent Owner disavowed the use of such techniques,
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`including object and facial recognition techniques, in the specification because they
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`have a number of disa