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 PRELIMINARY RESPONSE
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`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 PRELIMINARY 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
`
`
`
`Table of Contents
`
`
`I.
`
`INTRODUCTION .............................................................................................. 1
`
`A.
`
`B.
`
`Grounds in the Petition ....................................................................................... 2
`
`The ’850 Patent – The Challenged Patent ..................................................... 3
`
`
`II. CLAIM CONSTRUCTION ............................................................................... 5
`
`III. ARGUMENT ..................................................................................................... 7
`
`A.
`
`The Combination of Shipman and Garrison Fails to Disclose
`“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” in the Independent Claims. ............... 7
`
`
`B.
`
`Petitioner Fails to Show a Motivation to Combine Shipman and
`Garrison................................................................................................................ 16
`
`
`IV. CONCLUSION ................................................................................................20
`
`
`I
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`
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`Case IPR2016-01362
`Patent 9,083,850
`
`
`I.
`
`INTRODUCTION
`
`Patent Owner Securus Technologies, Inc. (“Securus” or “Patent Owner”)
`
`hereby files this preliminary response (“Preliminary Response”) to the Petition
`
`(Paper 2) (the “Petition”) for Inter Partes Review of U.S. Patent No. 9,083,850
`
`(Ex. 1001) (the “’850 Patent”) in IPR2016-01362 filed by Global Tel*Link
`
`Corporation (“GTL” or “Petitioner”).
`
`The Petitioner’s challenge to the ’850 Patent claims should be rejected
`
`because (1) U.S. Patent No. 9,106,789 (Ex. 1004) (“Shipman”) and U.S. Patent
`
`No. 7,911,513 (Ex. 1005) (“Garrison”), the sole basis of Petitioner’s obviousness
`
`ground against independent claims 1, 8, and 14 of the ’850 Patent, fail to disclose,
`
`both separately and in combination, at least one material limitation of each claim;
`
`and (2) Petitioner has failed to show a motivation to combine Shipman and Garrison,
`
`the combination of art that forms the basis of Petitioner’s obviousness claim for all
`
`of the independent claims of the ’850 Patent.
`
`This Response is timely under 35 U.S.C. § 313 and 37 C.F.R. § 42.107(b), as
`
`it is filed within three months of the July 13, 2016 mailing date of the Notice of
`
`Filing Date Accorded to Petition and Time for Filing Patent Owner Preliminary
`
`Response. Paper 4. For purposes of this Preliminary Response, Patent Owner has
`
`limited its identification of deficiencies in the Petition and does not intend to waive
`
`any arguments not addressed in this Preliminary Response.
`
`1
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`Case IPR2016-01362
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`Patent 9,083,850
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`A. Grounds in the Petition
`
`The Petition includes five grounds of alleged invalidity; all ofthe grounds rely
`
`on the combination of Shipman (U.S. Patent No. 9,106,789) and Garrison (U-S.
`
`Patent No. 7,911,513) 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 dependent claims and rely upon additional references as shown below.
`
`Ground References Combined
`
`Independent Dependent
`Claims
`Claims
`
`1
`
`2
`
`3
`
`4
`
`Shi man and Garrison
`
`1, 8, and 14
`
`5, 9
`
`Shzman, Garrison and Ma hew
`
`Shipman Garrison, and Gotsopoulos
`Shipman, Garrison Gotsopoulos
`and Johnson
`
`2-4, 15-18
`
`10’ 11’ and
`12 and 20
`
`5
`
`Shi : man, Garrison, and Johnson
`
`13 and 21
`
`Pet. at 3-5-
`
`As discussed in detail below, Petitioner fails to show that Shipman and
`
`Garrison disclose, either separately or in combination, discloses all limitations in
`
`the independent claims, including, for example, “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.” Further, Petitioner fails to demonstrate
`
`a motivation to combine these references. Thus, the Petition does not demonstrate a
`
`reasonable likelihood that any of the proposed grounds of unpatentability will
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`Case IPR2016-01362
`Patent 9,083,850
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`succeed for any claim of the ’850 patent.
`
`B. The ’850 Patent – The Challenged Patent
`
`The ’850 Patent was filed on June 29, 2013 and is directed to an apparatus and
`
`methods for manipulating video received from a video visitation device in a secure
`
`environment that vary the depth of field of the video. ’850 Patent, Abstract, 1:52-60,
`
`claim 1. One important goal of the ’850 Patent is to “safe guard the privacy and
`
`promote 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 inventor also noticed that “inmates who know they are on camera”
`
`may “cause disruptions which can escalate and become safety issues.” Id., 1:6-18.
`
`The prior art sought to solve these problems in a number of different ways: by
`
`(1) placing video terminals outside of the general inmate 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 the prior art
`
`solutions had significant problems. Placing video terminals outside of the general
`
`inmate population raised “security and administrative issues associated with moving
`
`inmates from housing locations to visitation locations.” Id., 1:26-33. Re-designing
`
`housing units was “impractical since most correctional institutions were constructed
`
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`Patent 9,083,850
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`decades before and reconstruction would be too costly,” and the “nooks” designed
`
`for video services were difficult to monitor. Id., 1:34-42. And 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, among other things,
`
`“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 the depth of field of the
`
`camera, the claimed invention keeps in focus all objects at a specified distance from
`
`the camera, thereby eliminating the problems with prior art recognition 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.
`
`In a misguided attempt to analogize the novel teachings of the ’850 Patent to
`
`the prior art, Petitioner characterizes the claims as merely applying “blurring
`
`techniques to the specific scenario of a video call involving a resident of a secure
`
`environment.” Pet. at 1. But this oversimplifies the claims and teachings of the
`
`’850 Patent. The claims do not cover mere blurring techniques—they cover methods
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`4
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`and systems that adjust a depth of field parameter to focus the camera on objects at
`
`a first distance from the camera and blur objects at a second distance from the
`
`camera.
`
`As detailed below, Shipman and Garrison, the only references asserted by
`
`Petitioner against independent claims 1, 8, and 14, do not disclose, either separately
`
`or in combination, “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.” 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.
`
`II. CLAIM CONSTRUCTION
`
`Petitioner does not propose the construction of any claim terms, contending
`
`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.” Pet. at 8.
`
`But the broadest reasonable interpretation standard requires construing claim
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`5
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`terms using “the broadest reasonable meaning of the words in their ordinary usage
`
`as they would be understood by one of ordinary skill in the art, taking into account
`
`whatever enlightenment by way of definitions or otherwise that may be afforded by
`
`the written description continued in the applicant’s specification.” In re Morris, 127
`
`F.3d 1048, 1054 (Fed. Cir. 1997).
`
`And, as Petitioner concedes, the specification provides a particular definition
`
`of “depth of field.” Pet. at 31-32 (citing ’850 Patent, 7:41-43). Thus, the term “depth
`
`of field” should be construed according to this definition as “the distance between
`
`the nearest and farthest objects in a scene that appear acceptably sharp in an image.”
`
`See, e.g., SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d 1341, 1348 (Fed. Cir.
`
`2016) (“Because the specification explicitly defines data flow diagram, one of skill
`
`in the art having read the specification would apply this definition to graphical
`
`representations of data flows as well.”).
`
`With respect to the remaining claim terms, Patent Owner does not take a
`
`position as to claim construction in this Preliminary Response, but nonetheless
`
`reserves the right to do so in the event trial is instituted in this case.
`
`6
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`Case IPR2016-01362
`Patent 9,083,850
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`III. ARGUMENT
`
`A. The Combination of Shipman and Garrison Fails to Disclose
`“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” in the Independent
`Claims.
`
`Independent claims 1 and 8 of the ’850 Patent require, among other things:
`
`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 at 12:45-49, 13:13-17 (claims 1, 8) (emphasis added). Similarly,
`
`independent claim 14 recites:
`
`a data processor configured to adjust 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.
`
`Id., 14:7-11 (claim 14) (emphasis added).
`
`Petitioner cites the combination of Shipman and Garrison as disclosing these
`
`limitations. See Pet at 28. But Shipman and Garrison are no different than the prior
`
`art that the Patent Owner specifically distinguished in the specification and during
`
`prosecution with respect to these limitations. Notably, the Patent Owner explicitly
`
`distinguished in the specification “previous technology [that] uses facial recognition
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`7
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`Patent 9,083,850
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`to ‘lock in’ on the facial features of the inmate and blur everything but those
`
`features” because the “approach 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.” ’850 Patent, 1:43-48; see also id., 12:1-6
`
`(“[T]he face 901 may be able to move within the depth of field of the camera 205
`
`without artifacts associated with facial recognition, but all objects located outside
`
`of the depth of field, for example in the background 902, will be blurred or
`
`obscured.”) (emphasis added).
`
`Further, during prosecution of the ’850 Patent, the Patent Owner specifically
`
`distinguished U.S. Patent No. 7,027,659 (“Thomas”) because, inter alia, it did not
`
`teach or suggest these claim limitations. File History (Ex. 2001) at 32. In particular,
`
`the Patent Owner stated:
`
`The Office Action cites column 12, lines 23 through 40 of Thomas as
`
`teaching these elements. However, Thomas does not teach “adjusting
`
`the depth of field” of its video to achieve the “defocus” discussed in
`
`this passage. Rather, after touching on the concepts that objects
`
`“beyond the plane of focus” of the camera appear “defocused,” the cited
`
`paragraph of Thomas teaches (at column 12, lines 29 through 33),
`
`“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.” (Emphasis added). Hence,
`
`8
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`Patent 9,083,850
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`
`Thomas does not teach (or suggest) “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, as claimed.”
`
`Id. (emphasis in original). Thus, the Patent Owner distinguished Thomas because it
`
`did not disclose adjusting the depth of field (i.e., “the distance between the nearest
`
`and farthest objects in a scene that appear acceptably sharp in an image”). Rather,
`
`like the other disfavored prior art distinguished in the specification, Thomas merely
`
`separated particularly identified “background objects” from the scene and defocused
`
`those background objects using digital signal processing techniques.
`
`Both Shipman and Garrison disclose similar prior art techniques that do not
`
`teach or disclose “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.”
`
`Shipman discloses a method that uses facial recognition to identify an area of
`
`the screen where the face is rendered. Shipman, 11:8-12. It then uses a module to
`
`“blur, cloud, darken, distort, mask, shade or otherwise deface other areas 520A in
`
`the video feed, including, for example, the non-resident’s body 510A.” Id. at 11:12-
`
`16. As a result, “security module 320 may operate to limit a non-resident’s ability to
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`show anything other than his or face to an inmate during a video visitation.” Id.,
`
`11:16-18. But nowhere does Shipman teach adjusting the depth of field (i.e., “the
`
`distance between the nearest and farthest objects in a scene that appear acceptably
`
`sharp in an image”). This fact is conceded by Petitioner. Pet. at 30 (“Shipman does
`
`not explicitly disclose that its blurring is achieved by manipulating the depth of
`
`field.”).
`
`To the contrary, Shipman teaches using the same known facial recognition
`
`and blurring techniques distinguished by the Patent Owner. See ’850 Patent, 1:42-
`
`48, 12:1-6. In fact, Shipman’s method disregards the depth of field, since it blurs
`
`other objects in the same depth of field as the person’s face (e.g., the “body”).
`
`Shipman, 11:12-16. Shipman does not even discuss the distance between the face
`
`and the camera, or the distance between other objects and the camera, much less the
`
`“the distance between the nearest and farthest objects in a scene that appear
`
`acceptably sharp in an image.” Accordingly, Shipman does not disclose these
`
`limitations that are included in independent claims 1, 8, and 14.
`
`Garrison does not disclose these limitations either. Garrison, like Shipman
`
`and other prior art techniques distinguished by the Patent Owner, employs
`
`recognition techniques to identify and segregate particular objects (such as a user’s
`
`face) and image processing to blur the remaining portion of the image. Garrison,
`
`Abstract (“[T]he background portion of the image is digitally segregated and blurred
`
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`to render it indistinct. Thus, the displayed video of a user in a foreground is kept in
`
`focus while the background appears to be out of focus. Image tracking or fixed
`
`templates are used to segregate an area of interest that is kept in focus from the
`
`remaining captured video image.”). As described by Garrison in the summary of
`
`invention:
`
`In various illustrative examples, image detection and tracking
`
`techniques are used to dynamically segregate a portion of interest—
`
`such as a person’s face, or face and shoulder area that is kept in
`
`focus—from the remaining video image. Image processing techniques
`
`are applied to groups of pixels in the remaining portion to blur that
`
`portion and render it indistinct.
`
`Id., 1:62-67 (emphasis added).
`
`While Garrison mentions the “depth of field,” Garrison does not teach
`
`adjusting the depth of field as claimed in the ’850 Patent. Instead, Garrison is
`
`directed to simulating a short depth of field. See id., Title (“Simulating Short Depth
`
`of Field To Maximize Privacy In Videotelephony”), Abstract (“An arrangement for
`
`simulating a short depth of field in a captured videophone image . . . .”), 1:56-56
`
`(same) (emphasis added). But simulating a short depth of field is, by definition, not
`
`the same as “adjusting” the depth of field. In fact, Garrison’s disclosures make clear
`
`that its technique for “simulating a short depth of field” is no different from the prior
`
`art distinguished by the Patent Owner in the specification and the prosecution
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`11
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`history. See ’850 Patent, 1:42-48, 12:1-6; see also File History at 32.
`
`For example, with reference to Figure 8, the specification states that “object
`
`detection techniques are utilized in which a specific feature, in this case the user’s
`
`face, head, and shoulders are dynamically detected in the captured video image and
`
`tracked as the user moves and/or changes position during the course of the
`
`videophone call.” Id., 5:39-43. While the example in Figure 8 detects the user’s face,
`
`head, and shoulders, the “dynamic detection and tracking technique may be limited
`
`to just the user’s face area.” Id., 5:46-47. Thus, like other prior art techniques
`
`distinguished by the Patent Owner, the area of focus in Garrison is dependent on the
`
`detection of specific objects, such as a user’s face, head, or shoulders, as they move
`
`around the image.
`
`Importantly, Garrison’s simulation technique is not the same as adjusting the
`
`depth of field because it does not depend on the distance of objects from the camera
`
`like the claimed inventions of the ’850 Patent.1 Garrison is no different than
`
`
`1 Garrison also discloses that “fixed templates” can be used “to segregate the portion
`
`of interest from the remaining portion.” Id., 6:29-31. But, like the recognition
`
`embodiment, this embodiment does not depend on the distance between the camera
`
`and the object. Instead, it indiscriminately segregates all objects in the template from
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`Shipman in that regard because Garrison’s technique will detect and track certain
`
`objects, such as the user’s face, head, and shoulders, but blur out other objects that
`
`are the same distance from the camera and in the same depth of field (i.e., “the
`
`distance between the nearest and farthest objects in a scene that appear acceptably
`
`sharp in an image”), such as the user’s hands, torso, or legs.
`
`This is distinct from the claimed inventions of the ’850 Patent, which actually
`
`adjust the depth of field to focus on objects at particular distances from the camera.
`
`For example, the specification states:
`
`[T]he depth of field of the camera system 205 may be adjusted such
`
`that a first object 304 positioned at a first distance 306 from the image
`
`sensor 301 may be in focus, while a second image 305 positioned at a
`
`second distance 307 or greater may be blurred. The lenses 303a-b
`
`and/or the aperture mechanism 302 may be adjusted to increase or
`
`decrease the depth of field of the camera system such that both the first
`
`object 304 and the second object 305 are in focus at a first setting, or
`
`such that only the first object 304 is in focus at a second setting, or such
`
`that only the second object is in focus in a third setting.
`
`’850 Patent, 7:47-51. In contrast, Garrison’s technique does not rely on any
`
`distances whatsoever, let alone make an actual adjustment to the depth of field like
`
`
`the remaining portion of the image regardless of distance of the objects from the
`
`camera and the depth of field. Id., 6:31-7:20.
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`the claimed inventions of the ’850 Patent.
`
`Petitioner ignores these critical distinctions between the claimed inventions
`
`and Garrison, focusing on its disclosure that “Garrison blurs the remaining portion
`
`by increasing the circle of confusion of pixels, rendering the subject matter indistinct
`
`using one or more digital filtering techniques.” Pet. at 31. And Petitioner fails to
`
`explain how this blurring process is any different from the blurring techniques
`
`distinguished by the Patent Owner in the specification and the prosecution history.
`
`Nor can it. Mere blurring of the remaining (i.e., non-detected) portion of the image
`
`using digital processing techniques is exactly what was disclosed by the prior art and
`
`distinguished by the Patent Owner. See ’850 Patent, 1:42-48, 12:1-6; see also File
`
`History at 32.
`
`Contrary to Petitioner’s argument, Garrison discloses that the “circle of
`
`confusion” is not the same as the “depth of field.” Pet. at 31-32. The “circle of
`
`confusion” defines “how much a particular point needs to be blurred in order to be
`
`perceived as being unsharp.” Garrison, 3:45-48. “The circle of confusion is an
`
`optical spot caused by a cone of light from the lens not coming to a perfect focus
`
`when imaging a point source.” Id., 3:48-50. “Objects with a small ‘circle of
`
`confusion’ show a clear and clean dot and are in focus. Objects with a large ‘circle
`
`of confusion’ show a dot with blurry edges and are out of focus.” Id., 3:50-53.
`
`Garrison uses the circle of confusion to simulate a change in the depth of field by
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`rendering “a person’s face or other area of interest . . . with a small circle of
`
`confusion” and “the remaining portion of the image . . . with a large circle of
`
`confusion.” Id., 3:54-58. Garrison does not render objects with a particular “circle
`
`of confusion” based on their distance from the camera and the depth of field (i.e.,
`
`“the distance between the nearest and farthest objects in a scene that appear
`
`acceptably sharp in an image”).
`
`Further, while Garrison generally discusses “Bokeh,” a Japanese term that
`
`“refers to the use of out-of-focus highlights or areas in rendering an image” created
`
`by manipulating the depth of field, id., 3:11-21, Garrison teaches away from actually
`
`adjusting the “depth of field” because “most videophones targeted at the consumer
`
`market use a very small digital image sensor along with an optics package that
`
`includes a fixed focal length and shutter speed.” Id., 3:22-30. “Thus, traditional
`
`techniques used to shorten depth of field by adjusting the aperture number (i.e.,
`
`f/stop) down below the lens’s maximum aperture and reducing shutter speed to
`
`compensate for exposure are not generally applicable to videophone cameras.” Id.,
`
`3:30-34 (emphasis added). As a result, Garrison discloses an alternative method for
`
`simulating a short depth of field—not adjusting the depth of field like the claimed
`
`inventions of the ’850 Patent.
`
`Based on the foregoing, Petitioner has failed to establish a prima facie case of
`
`obviousness because neither Shipman nor Garrison disclose “adjusting a depth of
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`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” in independent claims 1
`
`and 8, or the similar limitation in independent claim 14. Because Petitioner has failed
`
`to show that the independent claims of the ’850 Patent are obvious, Petitioner’s
`
`arguments regarding the obviousness of the dependent claims necessarily fail. See
`
`In re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988) (holding that if an independent
`
`claim is nonobvious under 35 U.S.C. § 103, then any claim depending therefrom is
`
`nonobvious). Accordingly, the Board should deny institution on all grounds of the
`
`Petition.
`
`B. Petitioner Fails to Show a Motivation to Combine Shipman and
`Garrison.
`
`Petitioner ostensibly provides several rationales to combine Shipman with
`
`Garrison, but none of the rationales are valid in light of the teachings of Garrison.
`
`Pet. at 17-18. The ’850 Patent is drawn to solving the problems associated with prior
`
`art solutions, for example, showing an inmate during a video visitation, but
`
`obfuscating other unwanted details. Prior art solutions included those that would
`
`select an object like an inmate’s face (e.g., by facial recognition) and blur everything
`
`else in image. ’850 Patent, 1:43-48. But these prior art systems would encounter
`
`difficulties “as the inmate moves around” and had “the disadvantage of blurring
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`much of the face and or torso of the inmate thus leading to an unsatisfactory
`
`visitation experience.” Id. The ’850 Patent solved these problems, in part, by
`
`providing a system which could vary the depth of field, thus allowing the video
`
`subject the ability to move around within the prescribed field depth without the need
`
`to detect the inmate in the image. Id., 11:64-12:19.
`
`One of ordinary skill in the art, however, would not combine Garrison with
`
`Shipman because the combination would not solve the problems stated in the
`
`’850 Patent (e.g., that facial recognition techniques suffer 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), and would likely
`
`cause more problems than the combination would solve. Petitioner fails to address
`
`any of the negative effects that the combination would provide and has thus failed
`
`to meet its burden to showing sufficient reason to combine the references.
`
`First, Petitioner suggests that “a person or ordinary skill would have looked
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`to Garrison’s blurring technique that simulates short depth of field blurring function
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`of Shipman.” Pet. at 17. But, as discussed, Garrison’s blurring technique presents
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`the same problems that the ’850 Patent claims seek to avoid (e.g., the need to detect
`
`and select the object face in the camera’s image). Additionally, Garrison’s system
`
`would not limit focus of the inmate to the depth of field as claimed, but allow the
`
`inmate to be located anywhere within the depth of field of its camera, thus defeating
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`the purpose of preventing certain objects to be visible to the observer.
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`Next, Petitioner suggests “object detection” would improve Shipman’s facial
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`recognition techniques:
`
`A person of ordinary skill would have looked to Garrison to improve
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`the facial recognition image processing techniques used in Shipman.
`
`For example, the object detection techniques disclosed in Garrison
`
`enable any object detected in an image to act as a “target portion” of
`
`the image, rather than limiting the target portion to a detected face as in
`
`Shipman.
`
`Pet. at 17 (citations omitted). But again, the ’850 Patent seeks to provide a solution
`
`that prevents the need for detection of a “target portion” and specifically
`
`distinguished techniques using object detection in the specification and during
`
`prosecution.
`
`Finally, Petitioner suggests that “both Shipman and Garrison are in the same
`
`field––video processing to enhance security and privacy” and would be easily
`
`combined. Pet. at 17-18. But this ignores the teachings of Garrison. Garrison is
`
`drawn to a videophone that has a large depth of field, a fixed focal length, and
`
`eschews “traditional” techniques such as adjusting f-stop parameters to adjust the
`
`depth of field as is disclosed in the ’850 Patent.
`
`Depth of field in both still and video photography is determined by lens
`
`aperture, film negative/image sensor size (in traditional/digital
`
`imaging, respectively), and focal length. Traditional 35 mm film has a
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`short depth of field because the negative size is large compared with
`
`the lens aperture. By comparison, to minimize costs, most videophones
`
`targeted at the consumer market use a very small digital image sensor
`
`along with an optics package that includes a fixed focal length and
`
`shutter speed. Thus, traditional techniques used to shorten depth of
`
`field by adjusting the aperture number (i.e., f/stop) down below the
`
`lens’s maximum aperture and reducing shutter speed to compensate
`
`for exposure are not generally applicable to videophone cameras.
`
`Garrison, 3:22-34 (emphasis added).
`
`Further, one of ordinary skill in the art would not have been motivated to
`
`combine Shipman and Garrison because doing so would not have yielded an
`
`invention that actually adjusts the depth of field as required by claims of the
`
`’850 Patent. Instead, the combination would have resulted in a system that, like other
`
`distinguishable prior art, employs recognition techniques to detect an object, such as
`
`a face, and digital image processing to blur the remaining portion of the image.
`
`Given that both Shipman and Garrison propose this distinct alternative to the
`
`claimed inventions, and do not provide any reason to implement a different process
`
`(much less the process of the claimed inventions), there would have been no
`
`motivation to combine these references in a way that actually adjusts the depth of
`
`field, as required by the claimed inventions.
`
`Petitioner undoubtedly must demonstrate why a person of ordinary skill in the
`
`art would have combined the elements of the Shipman and Garrison references in
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`the asserted manner despite the manifestly undesirable consequences resulting from
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`such a combination. See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349
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`(Fed. Cir. 2000) (“Trade-offs often concern what is feasible, not what is, on balance,
`
`desirable. Motivation to combine requires the latter.”); see also Zodiac Pool Sys.,
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`Inc. v. Aqua Prods., Inc., IPR2013- 00159, Paper No. 18 at 32-33 (Aug. 23, 2013)
`
`(Petitioner must show “why, on balance, the benef
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