`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`
`GLOBAL TEL*LINK CORPORATION
`Petitioner
`
`v.
`
`SECURUS TECHNOLOGIES, INC.
`Patent Owner
`____________________
`
`Patent No. 9,083,850
`IPR2016-01362
`_____________________
`
`
`PETITIONER’S REPLY TO PATENT OWNER RESPONSE
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`

`

`IPR2016-01362
`U.S. Patent No. 9,083,850
`
`
`TABLE OF CONTENTS
`
`4.
`
`5.
`
`6.
`
`I.
`
`II.
`
`B.
`
`Claim construction. ..........................................................................................1
`A.
`“a depth of field parameter for the video” ............................................ 1
`1.
`PO’s construction is inconsistent with the claim language. .......2
`2.
`PO’s construction contradicts the ’850 patent specification. .....3
`3.
`PO’s construction would exclude embodiments plainly
`encompassed by the claims. ........................................................5
`The ’850 patent does not disavow the use of all object and
`facial-recognition techniques to “adjust a depth of field
`parameter for the video.” ............................................................8
`The prosecution history of the ’850 patent does not amount to a
`disclaimer of digital processing techniques. ............................ 10
`PO’s attempt to import the use of actual distances of objects
`from the camera to “adjust a depth of field parameter for the
`video” is unsupported. ............................................................. 11
`“depth of field” .................................................................................... 13
`B.
`PO’s proposed higher level of ordinary skill in the art is incorrect and self-
`defeating. ...................................................................................................... 14
`III. Ground 1: Claims 1, 5, 8, 9, and 14 are invalid over the combination of
`Shipman and Garrison. ................................................................................. 16
`A. Garrison teaches the “adjusting” limitation of the independent claims.
` ............................................................................................................. 16
`A POSITA would have been motivated to combine Shipman and
`Garrison. .............................................................................................. 18
`IV. Ground 2: Claims 2-4 and 15-18 are invalid over the combination of
`Shipman, Garrison, and Mayhew. ................................................................ 19
`A. A POSITA would have been motivated to combine Shipman and
`Garrison with Mayhew. ....................................................................... 19
`V. Ground 3: Claims 6-7, 10-11, and 19 are invalid over the combination of
`Shipman, Garrison, and Gotsopoulos. .......................................................... 21
`A. Gotsopoulos is a prior-art printed publication. ................................... 21
`B.
`Gotsopoulos teaches that “the depth of field parameter is remotely
`controllable by a third party.” ............................................................. 22
`VI. Grounds 4 and 5: Claims 12-13 and 20-21 are invalid over the combination
`of Shipman, Garrison, Johnson (claims 13 and 21), and Gotsopoulos (claims
`12 and 20). .................................................................................................... 23
`VII. Conclusion. ................................................................................................... 24
`
`ii
`
`

`

`IPR2016-01362
`U.S. Patent No. 9,083,850
`
`
`Table of Authorities
`
`Cases:
`
`Bicon, Inc. v. Straumann Co.,
`441 F.3d 945 (Fed. Cir. 2006).................................................................................... 3
`
`In re Ethicon, Inc.,
`844 F.3d 1344 (Fed. Cir. 2017) ............................................................................... 19
`
`In re Gurley,
`27 F.3d 551 (Fed. Cir. 1994).................................................................................... 20
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed.Cir.2012).................................................................................. 16
`
`Luminara Worldwide, LLC v. Liown Elecs. Co.,
`814 F.3d 1343 (Fed. Cir. 2016) ................................................................................. 9
`
`Para-Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc.,
`73 F.3d 1085 (Fed. Cir. 1995)............................................................................ 19-20
`
`Ruiz v. A.B. Chance Co.,
`357 F.3d 1270 (Fed. Cir. 2004) ............................................................................... 19
`
`Saffran v. Johnson & Johnson,
`712 F.3d 549 (Fed. Cir. 2013).................................................................................. 10
`
`SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc.,
`242 F.3d 1337 (Fed. Cir. 2001) ................................................................................. 9
`
`Thorner v. Sony Computer Entm’t Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) ............................................................................... 13
`
`
`
`iii
`
`

`

`IPR2016-01362
`U.S. Patent No. 9,083,850
`
`
`Exhibit List
`
`1005
`
`1006
`
`Exhibit No. Description
`1001
`U.S. Patent No. 9,083,850 B1 to Higgs
`1002
`Expert Declaration of Dr. Iain Richardson
`1003
`Expert CV of Dr. Iain Richardson
`1004
`U.S. Patent No. 9,106,789 to Shipman, Jr. et al. (“Shipman”), titled
`“Videoconference and Video Visitation Security”
`U.S. Patent No. 7,911,513 to Garrison et al. (“Garrison”), titled
`“Simulating Short Depth of Field to Maximize Privacy in
`Videotelophony”
`U.S. Patent No. 6,734,900 to Mayhew. (“Mayhew”), titled “Real
`Time Camera and Lens Control System for Image Depth of Field
`Manipulation”
`U.S. Patent Publication No. 2008/0201158 A1 to Johnson et al.
`(“Johnson”), titled “Real Time Camera and Lens Control System for
`Image Depth of Field Manipulation”
`“Remote Controlled DSP Based Image Capturing and Processing
`System Featuring Two-Axis Motion,” by Gotsopoulos et al.
`(“Gotsopoulos”)
`American Heritage Dictionary
`European DSP in Education and Research Conference (2010)
`(served May 1, 2017)
`Declaration of Gerard P. Grenier (served May 1, 2017)
`July 18, 2017 Deposition Transcript of Dr. Alan Bovik
`
`
`1007
`
`1008
`
`1009
`1010
`
`1011
`1012
`
`
`
`iv
`
`

`

`The Board should find that claims 1-21 of the ’850 patent are not patentable.
`
`
`
` IPR2016-01362
`U.S. Patent No. 9,083,850
`
`
`
`The ’850 patent broadly claims old, conventional techniques of adjusting the depth
`
`of field for video (using optical techniques or using digital processing techniques)
`
`and simply places them in the context of a controlled environment. The prior art in
`
`this IPR identified the same problem as the ’850 patent and provided the same
`
`solution of focusing some objects while blurring others, teaching all of the claim
`
`elements.
`
`To avoid the compelling evidence showing obviousness, Patent Owner
`
`(“PO”) mainly hangs its rebuttal on a proposed over-narrow interpretation of the
`
`claims that would limit them only to optical adjustments of the properties of a
`
`camera, even though the specification describes, and the claims recite, that
`
`“adjusting the depth of field parameter includes digitally processing the video
`
`received from the video visitation device.”
`
`I.
`
`Claim construction.
`
`In its Institution Decision, the Board determined that express constructions
`
`for the claim terms were not necessary. (Institution Decision, 5-6.) In response, PO
`
`attempts to improperly limit the claims.
`
`A.
`
`“a depth of field parameter for the video”
`
`PO argues that the BRI of “a depth of field parameter for the video” is “any
`
`set of properties of a camera system that determines a depth of field.” PO’s
`
`1
`
`

`

`
`arguments in its POR, as confirmed by Dr. Bovik on cross-examination, reveal that
`
`
`
` IPR2016-01362
`U.S. Patent No. 9,083,850
`
`this construction is intended to be limited to so-called “optical” adjustments of the
`
`depth of field, such as by changing the focal length of the camera lens, by adjusting
`
`the aperture, or modifying the f-stop. (POR, 18-24; Ex. 1012, Bovik Dep., 34:12-
`
`25.) Significantly, Dr. Bovik confirmed that this interpretation excludes what he
`
`terms “simulated” adjustments to the depth of field, that are accomplished using
`
`software (without optical adjustments) after a video is captured. (Bovik Dep., 35:1-
`
`4.) Patent Owner’s proposed claim construction does not comport with the claim
`
`language; it contradicts the specification; and it would unreasonably exclude
`
`embodiments plainly encompassed by the claims. The Board should reject it.
`
`1. PO’s construction is inconsistent with the claim language.
`
`PO contends that the claims require “all objects at a specified distance range
`
`from the camera” be kept in focus and “all objects at a second distance from the
`
`camera appear blurred.” (POR, 7, 9, 21.) These assertions are inconsistent with the
`
`claim language, rendering the claim language superfluous. Independent claims 1,
`
`8, and 14 specifically recite, “adjust[ing] 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.” Dependent claims 5 and 9 confirm that the
`
`claimed adjusting of depth of field parameter is not limited to so-called optical
`
`2
`
`

`

`
`adjustments by reciting that the adjusting step includes, “processing the video
`
`
`
` IPR2016-01362
`U.S. Patent No. 9,083,850
`
`received from the video visitation device in a video processing device to blur one
`
`or more objects at the second distance from the video visitation device.” That is,
`
`the claims encompass digital processing (not just optical adjustments) and
`
`encompass the instance where just one object is blurred.
`
` To limit the claims to require all objects at a first distance from the video
`
`visitation device be in focus and all objects at a second distance be blurred would
`
`render the singular language “an image of a first object” and “an image of a second
`
`object” superfluous. Similarly, the language “one or more objects” in dependent
`
`claims 5 and 9 would be rendered superfluous if the claims required blurring of all
`
`objects. The patentee thus contemplated, and indeed claimed, a scenario in which
`
`fewer than all objects at a particular distance would be blurred or in focus, for
`
`example through use of digital processing techniques. “[C]laims are interpreted
`
`with an eye toward giving effect to all terms in the claim.” Bicon, Inc. v.
`
`Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006).
`
`2. PO’s construction contradicts the ’850 patent specification.
`
`The ’850 patent description supports the notion that the claims are not
`
`limited to so-called optical adjustments of depth of field parameters. The patent
`
`states that “[t]he depth of field may be manipulated by adjustment of the f-stop of
`
`the camera system 205 or through digital processing techniques.” (Ex. 1001,
`
`3
`
`

`

`
`’850 patent, 7:44-46.) Importantly, the ’850 patent does not specify or limit in any
`
`
`
` IPR2016-01362
`U.S. Patent No. 9,083,850
`
`way the digital processing techniques used “to blur one or more objects at the
`
`second distance from the video visitation device.” (Petition, 6; Ex. 1002,
`
`Richardson Decl., ¶32.)
`
`PO’s interpretation is also inconsistent with embodiments described in the
`
`specification. In particular, Figure 9 illustrates a blurred video frame in which
`
`fewer than all objects at a particular distance from the camera are kept in focus.
`
`
`
`(’850 patent, Figure 9.)
`
`The ’850 patent describes, “[a]s illustrated, the first object 304 may be a face
`
`901. The second object 305 may be anything located at a predefined distance from
`
`the face 901, for example in the background 902 which is blurred.” (’850 patent,
`
`11:65-12:1.) The dashed lines in Figure 9, which include the man’s body around
`
`face 901, indicate blurred portions of the video frame, as confirmed by PO’s
`
`4
`
`

`

`
`expert. (Bovik Dep., 23:15-18.) PO further confirms that “[p]ersons of ordinary
`
`
`
` IPR2016-01362
`U.S. Patent No. 9,083,850
`
`skill in the art would have understood that in a standing position the body is in the
`
`same vertical plane as the face.” (POR, 43.) PO does not allege that face 901 of
`
`Figure 9 and the rest of the man’s body are in different vertical planes, and there is
`
`nothing in the ’850 patent to suggest that face 901 is somehow in a different
`
`vertical plane than the attached neck and shoulders.1
`
`3. PO’s construction would exclude embodiments plainly
`encompassed by the claims.
`
`The flawed natured of PO’s proposed construction is shown by its exclusion
`
`of exemplary embodiments disclosed in the ’850 patent specification, in particular
`
`the embodiment described in Figure 8. The steps of Figure 8 are described in near-
`
`verbatim language to that recited in independent claims 8 and 142.
`
`
`1 Figure 9 shows the same individual, in the same pose, in the background as
`
`in the foreground. The foreground version is simply larger than the one in the
`
`background and is truncated. So it stands to reason that the individual in the
`
`foreground is also standing.
`
`2 Despite that PO’s expert was not able to testify whether claim 8 covers the
`
`embodiment of Figure 8. (Bovik Dep., 62:20-63:17.)
`
`5
`
`

`

`
`
`
`
` IPR2016-01362
`U.S. Patent No. 9,083,850
`
`
`
`(’850 patent, Figure 8 and Claim 8 (annotated).)
`
`PO interprets the claim language “adjusting a depth of field parameter for
`
`the video” to only include adjustments to “properties of a camera system.” Dr.
`
`Bovik clarifies PO’s position that only optical adjustments to a camera are taught
`
`by the specification and covered by the claims: “But, at the time of the invention,
`
`not all imaging techniques necessarily utilized manipulation of a depth of field,
`
`which is an optical effect. Others relied on image processing, which do not
`
`manipulate a depth of field, and are done by software after an image is taken.” (Ex.
`
`2002, Bovik Decl., ¶60.) Dr. Bovik elaborated in deposition:
`
`Q. Okay. You see the term “blurred” in the adjusting step of Claim 1?
`
`A.
`
`I do.
`
`Q. Okay. The term “blurred” in that context, does it refer to optical
`
`blurring, simulated blurring, or both?
`
`6
`
`

`

`
`
`
`
` IPR2016-01362
`U.S. Patent No. 9,083,850
`
`A. Well, the context here makes it very clear. It's kind of--pretty much
`
`the point of this claim is that this is an optical blur, and the second
`
`object falls outside of the depth of field of the--you know, the
`
`camera and it’s an optical blur.
`
`(Bovik Dep., 34:12-25; see also 73:23-74:9.)
`
`But, as Dr. Bovik testified, once video is stored (such as in step 802 above),
`
`it is not possible to optically adjust the depth of field:
`
`Q. Okay. Once the video is recorded on some medium, is it possible to
`
`optically adjust the depth of field that’s stored on that medium of the
`
`video, that is?
`
`A. No.
`
`Q. Okay.
`
`A.
`
`It’s not. Not optically.
`
`(Id., 78:14-20.)
`
`But the embodiment of Figure 8 requires adjustment of a depth of field
`
`parameter for the video after storing the video:
`
`The visitation system 130 may then store 802 the video
`received 801 from the video visitation device 103 in a
`data storage device 403. Thereafter, the camera
`controller 404 may adjust 803 a depth of field
`parameter for the video such that the first object 304 at
`
`7
`
`

`

`
`
`
`
` IPR2016-01362
`U.S. Patent No. 9,083,850
`
`a first distance 306 is in focus and the second object 305
`at the second distance 307 is blurred. Alternatively, the
`image processor 402 may adjust 403 a depth of field
`parameter or otherwise blur or obscure a portion of the
`video.
`
`(’850 patent, 11:53-61 (emphasis added).) Because the depth of field parameter
`
`cannot be optically adjusted after the video is stored, PO’s proposed construction
`
`of “adjusting a depth of field parameter for the video” would exclude the
`
`embodiment of Figure 8 plainly intended to be covered by the claims. PO’s
`
`proposed construction is therefore not the BRI.
`
`4. The ’850 patent does not disavow the use of all object and
`facial-recognition techniques to “adjust a depth of field
`parameter for the video.”
`
`PO contends that “Patent Owner disavowed the use of such techniques,
`
`including object and facial recognition techniques, in the specification because
`
`they have a number of disadvantages.” (POR, 19.) PO again points to Figure 9 of
`
`the ’850 patent to support its assertion. But the ’850 patent merely discloses that
`
`“the face 901 may be able to move within the depth of field of the camera 205
`
`without artifacts associated with facial recognition….” (’850 patent, 12:2-6
`
`(emphasis added).) And as shown above in Section I.A.2, Figure 9 underscores that
`
`PO’s construction is wrong.
`
`8
`
`

`

`PO cites to SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc.,
`
`
`
` IPR2016-01362
`U.S. Patent No. 9,083,850
`
`
`
`which states, “[w]here the specification makes clear that the invention does not
`
`include a particular feature, that feature is deemed to be outside the reach of the
`
`claims of the patent, even though the language of the claims, read without
`
`reference to the specification, might be considered broad enough to encompass the
`
`feature in question.” SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc.,
`
`242 F.3d 1337, 1341 (Fed. Cir. 2001). PO, however, has obscured the details of
`
`this case and misapplied its principles. In particular, every example provided by
`
`the court limits the claims based on positive recitation or exclusive usage of a
`
`particular feature. No example supports limitation of the claims when the patent
`
`merely describes a potential issue associated with an embodiment or technique.
`
`Similarly, PO’s application of Luminara Worldwide, LLC v. Liown Elecs.
`
`Co. is unsupported by the ’850 patent specification. In Luminara, the court noted
`
`that “[w]e have found disavowal or disclaimer based on clear and unmistakable
`
`statements by the patentee that limit the claims, such as ‘the present invention
`
`includes ...’ or ‘the present invention is ...’ or ‘all embodiments of the present
`
`invention are....’” Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343,
`
`1353 (Fed. Cir. 2016). The ’850 patent does not use any language similar to these
`
`examples and merely provides an issue commonly associated with facial
`
`recognition.
`
`9
`
`

`

`
`
`
`
` IPR2016-01362
`U.S. Patent No. 9,083,850
`
`5. The prosecution history of the ’850 patent does not amount to
`a disclaimer of digital processing techniques.
`
`PO references the prosecution history of the patent in an attempt to disclaim
`
`use of digital signal processing techniques for “adjusting a depth of field
`
`parameter for the video.” (POR, 22-23.) But the patentee’s statements in the
`
`prosecution history do not amount to a “clear and unambiguous disavowal of claim
`
`scope,” as PO contends. Saffran v. Johnson & Johnson, 712 F.3d 549, 559 (Fed.
`
`Cir. 2013).
`
`The prosecution history addresses Thomas (Ex. 2005) in an attempt to
`
`distinguish the claims: “Images representing background objects, such as object
`
`2012, are sent separately to the receiving portion of the video conferencing system,
`
`as shown in FIG. 6b. Using digital signal processing techniques, background object
`
`2012 is defocused.” (Ex. 2001, 32 (emphasis in original) (citing Thomas, 12:29-
`
`33.).) The patentee then simply concludes that Thomas does not teach the
`
`“adjusting” limitation of the independent claims. (Id., 32.) The Examiner’s reasons
`
`for allowance do not provide further clarity, merely stating that “the prior art of
`
`record fails to disclose or specifically suggested [sic] adjusting a depth of field
`
`parameter for the video.…” (Id., 12.)
`
`Here, patentee’s statements do not clearly and unambiguously disclaim the
`
`use of all digital signal processing techniques to achieve the result recited in the
`
`10
`
`

`

`
`claims. For example, to distinguish from Thomas, the patentee specifically
`
`
`
` IPR2016-01362
`U.S. Patent No. 9,083,850
`
`emphasized that background objects in Thomas are sent separately to be
`
`defocused. (Ex. 2001, 32.) The defocused images are then composited along with a
`
`selected region kept in focus to produce an image for display. (Thomas, 12:41-47.)
`
`Thus, Thomas teaches that multiple regions to be defocused are processed as
`
`separate images, and as such the entire image is defocused before being
`
`composited with other images. Accordingly, the prosecution history at most
`
`disavows the use of Thomas as a whole, but does not broadly exclude the use of
`
`digital signal processing techniques to meet the claim language.
`
`6. PO’s attempt to import the use of actual distances of objects
`from the camera to “adjust a depth of field parameter for the
`video” is unsupported.
`
`PO provides examples of depth of field parameters that fall within the scope
`
`of the claim language, such as the “f-stop setting of a camera associated with the
`
`video visitation device,” “a focal length of a lens coupled to the video visitation
`
`device,” “an aperture setting of the camera associated with the video visitation
`
`device,” and “digitally processing the video received from the video visitation
`
`device in a video processing device to blur one or more objects at the second
`
`distance from the video visitation device.” (POR, 18-19.) PO then asserts that
`
`“none of these examples use parameters to adjust a depth of field without regard to
`
`11
`
`

`

`
`the distance of those objects from the camera. (POR, 19 (citing Bovik Decl., ¶81)
`
`
`
` IPR2016-01362
`U.S. Patent No. 9,083,850
`
`(emphasis in original).) PO’s conclusory statements are unsupported.
`
`First, the claims do not recite “adjusting a depth of field,” but rather
`
`“adjusting a depth of field parameter.” PO’s use of its proposed “depth of field”
`
`construction to import use of distances from the camera into the claims is
`
`improper, as these distances are at most a result of “adjusting a depth of field
`
`parameter.” PO stresses the difference between “adjusting a depth of field
`
`parameter” and its result. (POR, 24-25 (discussing that the use of “such that” in the
`
`claims “would have informed persons of ordinary skill that there is a claimed
`
`action that causes some result or consequence—based on that action”).)
`
`Second, PO does not explain how any of the provided examples use the
`
`distance of objects from the camera to “adjust a depth of field parameter,” and Dr.
`
`Bovik merely parrots the exact language found in PO’s Response. (Bovik Decl.,
`
`¶81.) Dr. Bovik additionally states that “[p]ersons of ordinary skill in the art would
`
`understand that each of these parameters define the extent of the depth of field in
`
`the image.” (Id., ¶81 (emphasis added).) This again does not explain how distances
`
`are used to adjust a depth of field parameter, but rather how an adjustment to a
`
`parameter may result in a different depth of field. Indeed, even an optical
`
`adjustment, such as a change to the focal length of a camera, can be made without
`
`12
`
`

`

`
`using actual distances of objects from the camera, even though this adjustment may
`
`
`
` IPR2016-01362
`U.S. Patent No. 9,083,850
`
`result in a change in the depth of field of an image.
`
`For the reasons provided above, PO’s proposed construction, and even
`
`narrower interpretation, of “adjusting a depth of field parameter for the video” is
`
`unsupported by the ’850 patent and intrinsic record. The ’850 patent specification
`
`makes clear that digital processing can be used to “adjust a depth of field
`
`parameter” as an alternative to traditional optical adjustments. Therefore, the
`
`Board should reject PO’s proposed construction and continue to apply the plain
`
`and ordinary meaning.
`
`B.
`
`“depth of field”
`
`PO proposes that “depth of field” be construed as “the distance between the
`
`nearest and farthest objects in a scene that appear acceptably sharp in an image.”
`
`(POR, 17 (citing ’850 patent, 7:41-43.)) But PO fails to show why this construction
`
`differs from the plain and ordinary meaning or is needed to decide a patentability
`
`issue.
`
`Moreover, PO and its expert do not consistently apply this term in the POR
`
`and supporting declaration. (See, e.g., Bovik Decl., ¶¶82, 84.) Dr. Bovik testified
`
`that the definition of “depth of field” provided in the ’850 patent is consistent with
`
`the other well-known definitions of the term. (Id., ¶83); see also Thorner v. Sony
`
`Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (explaining that
`
`13
`
`

`

`
`“[t]o act as its own lexicographer, a patentee must ‘clearly set forth a definition of
`
`
`
` IPR2016-01362
`U.S. Patent No. 9,083,850
`
`the disputed claim term’ other than its plain and ordinary meaning”).
`
`Because the term “depth of field” is not inconsistent with the plain and
`
`ordinary meaning of the term, no explicit construction is necessary.
`
`II.
`
`PO’s proposed higher level of ordinary skill in the art is incorrect and
`self-defeating.
`
`PO proposed that a person of ordinary skill in the art (POSITA) would have
`
`had, in addition to the requirements set forth by Petitioner and Dr. Richardson,
`
`“knowledge of the field of optics and camera design.” (POR, 11-12.) Dr. Bovik
`
`clarifies these requirements further, stating that persons of ordinary skill would
`
`have “at least one year of academic or industry experience in camera systems
`
`(including photography or videography)” and “a professional understanding of the
`
`optics involved with adjusting parameters of a depth of field.” (Bovik Decl., ¶¶52,
`
`57.)
`
`This level of skill in the art is higher than proposed by Petitioner and is
`
`incorrect. The ’850 patent requires only basic optical techniques for adjusting a
`
`depth of field, such as adjusting an f-stop setting of a camera. This basic
`
`knowledge of camera design at least overlaps with the fields of image or video
`
`processing or communication, as set forth by Petitioner’s proposed level of
`
`ordinary skill in the art. (Petition, 8-9; Ex. 2004, Richardson Dep., 45:25-46:3.)
`
`14
`
`

`

`
`Neither PO nor its expert explains why a professional understanding of the optics
`
`
`
` IPR2016-01362
`U.S. Patent No. 9,083,850
`
`involved is necessary to make these optical adjustments.
`
`PO further attempts to discredit Dr. Richardson’s expertise through snippets
`
`from his cross-examination provided without context. First, PO attacks Dr.
`
`Richardson for providing “evasive answers in response to the question if he was
`
`‘an expert in the field of the ’850 patent.’” (POR, 12.) But Dr. Richardson never
`
`claimed he was not an expert. Rather than answer a vague question, Dr.
`
`Richardson stated that “[t]he ’850 Patent, as I’ve just explained, as I understand it
`
`anyway, covers many technical areas. I would find it easier to answer that question
`
`for specific technical areas.” (Richardson Dep., 43:3-6.)
`
`PO also criticizes Dr. Richardson for lacking expertise in optics and “his
`
`inability to quantify depth of field in an equation.” (POR, 13-14.) As noted above,
`
`neither PO nor its expert show why a professional understanding of optics is
`
`necessary to “adjust a depth of field parameter,” or why knowledge or use of a
`
`precise equation is necessary to practice the inventions of the patent. Nevertheless,
`
`Dr. Richardson confirms that he has practical experience in optics through his
`
`work, as discussed throughout his declaration and deposition, and that there is
`
`significant overlap between video compression and image blurring. (Richardson
`
`Dep., 39:13-15; Richardson Decl., ¶11.)
`
`15
`
`

`

`
`In any event, PO’s proposed level of skill in the art is self-defeating. Even if the
`
`
`
` IPR2016-01362
`U.S. Patent No. 9,083,850
`
`level proposed by PO were correct, the higher the level of skill in the art, the more
`
`likely an invention is to be obvious. Kinetic Concepts, Inc. v. Smith & Nephew,
`
`Inc., 688 F.3d 1342, 1366 (Fed.Cir.2012) (“[I]t is generally easier to establish
`
`obviousness under a higher level of ordinary skill in the art.”).
`
`III. Ground 1: Claims 1, 5, 8, 9, and 14 are invalid over the combination of
`Shipman and Garrison.
`
`A. Garrison teaches the “adjusting” limitation of the independent
`claims.
`
`PO alleges that “Petitioner’s analysis reads out the term ‘depth of field’
`
`entirely from the claim.” (POR, 29.) As discussed above, the claims are not so
`
`limited as to exclude digital processing techniques to adjust a depth of field
`
`parameter. PO’s arguments improperly require that “adjusting a depth of field
`
`parameter” include an optical adjustment to a camera.
`
`Garrison adjusts “a depth of field parameter” by increasing the circle of
`
`confusion of pixels outside of a desired depth of field. (Petition, 31.) The Petition
`
`explains that “[a]ccording to the definition of ‘depth of field’ in the ’850 patent, by
`
`blurring pixels of the remaining portion to be perceived as being unsharp, Garrison
`
`changes ‘the distance between the nearest and farthest objects in a scene that
`
`appear acceptably sharp in an image.’” (Petition, 31-32; ’850 patent, 7:41-43.) The
`
`circle of confusion of pixels, as identified in the Petition, is a “depth of field
`
`16
`
`

`

`
`parameter” because it can be used to change or determine a “depth of field.”
`
`
`
` IPR2016-01362
`U.S. Patent No. 9,083,850
`
`(Petition, 31-32.) This technique can be used to achieve the exact same result as
`
`illustrated in exemplary embodiments of the ’850 patent. For example, Figure 9 of
`
`the ’850 patent illustrates a scenario in which “all objects located outside of the
`
`depth of field, for example in the background 902, will be blurred or obscured.”
`
`(’850 patent, 12:4-6.) Thus, even under PO’s explicit construction of “depth of
`
`field,” the combination of Shipman and Garrison renders the independent claims
`
`obvious.
`
`Additionally, as discussed above, PO’s attempt to require all objects at a
`
`first distance to be kept in focus is inconsistent with both the claim language and
`
`disclosed embodiments, such as the embodiment described in Figure 9. See
`
`Sections I.A.1, I.A.2. Nevertheless, Garrison’s object detection techniques are not
`
`limited to a single object and can be used to achieve a result in which all objects at
`
`a first distance are kept in focus. (See Ex. 1005, Garrison, 5:34-46.) Accordingly,
`
`even under PO’s narrow interpretation of the claims, Garrison teaches techniques
`
`for adjusting a depth of field parameter to achieve the same result as an optical
`
`adjustment to a camera, and the Board correctly determined that simulating an
`
`adjustment to a depth of field is encompassed by the claims. (Institution Decision,
`
`18.)
`
`17
`
`

`

`PO further alleges that the embodiments disclosed in Garrison “do not
`
`
`
` IPR2016-01362
`U.S. Patent No. 9,083,850
`
`
`
`depend on the distance between the camera and the object.” (POR, 35.) This is
`
`incorrect, as Garrison’s techniques are used to blur objects behind the target
`
`portion of a video, which is located at a different distance from the camera than the
`
`target portion. (See Garrison, Abstract, 4:3-6.) As discussed in Section I.A.6, there
`
`is no requirement that the claims make use of distances of objects from the camera
`
`to “adjust a depth of field parameter.” In fact, PO states that “distance is not a
`
`‘depth of field parameter.’” (POR, 32.)
`
`B. A POSITA would have been motivated to combine Shipman and
`Garrison.
`
`The Petition provides a number of reasons for combining Shipman with
`
`Garrison. (Petition, 17-18.) PO criticizes this combination, alleging: (1) “only in
`
`hindsight would a person of ordinary skill in the art looked to Garrison to even
`
`attempt to achieve the claimed invention,” and (2) neither Shipman nor Garrison
`
`“provide any teaching or motivation to modify Shipman to determine a depth of
`
`field, much less adjust a parameter of it,” (POR, 40.) Neither of these criticisms
`
`defeat the rationale provided by the Petition or Dr. Richardson.
`
`Both Shipman and Garrison solve the same problem of protecting privacy,
`
`applying similar solutions of blurring portions of a video. (Petition, 14-17.) The
`
`Federal Circuit has stated that “a court or examiner may find a motivation to
`
`18
`
`

`

`
`