Trials@uspto.gov
`571-272-7822
`
` Paper 9
` Entered: June 1, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZTE CORPORATION and ZTE (USA), INC.,
`Petitioners,
`
`v.
`
`MAXELL, LTD.,
`Patent Owner.
`____________
`
`Case IPR2018-00236
`Patent 8,339,493 B2
`____________
`
`Before MINN CHUNG, TERRENCE W. McMILLIN, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`McMILLIN, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`

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`IPR2018-00236
`Patent 8,339,493 B2
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`
`I. INTRODUCTION
`ZTE Corporation and ZTE (USA), Inc. (“Petitioner”)1 filed a Petition
`(“Pet.”) (Paper 2) to institute an inter partes review of claims 5 and 6 of
`Patent 8,339,493 B2 (the “’493 patent”) (Ex. 1001) pursuant to 35 U.S.C.
`§ 311 et seq. Patent Owner Maxell, Ltd. (“Patent Owner”)2 filed a
`Preliminary Response (“Prelim. Resp.”) (Paper 6) to the Petition.
`This is a preliminary proceeding to decide whether inter partes review
`of the ’493 patent should be instituted under 35 U.S.C. § 314(a), which
`provides that inter partes review may not be instituted “unless . . . the
`information presented in the petition . . . and any response . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” See 35 U.S.C. § 314(a)
`(regarding institution of inter partes review); 37 C.F.R § 42.4(a) (delegating
`authority to institute trial to the Board).
`Upon consideration of the Petition, the Preliminary Response, and the
`evidence of record, we conclude that the information presented fails to show
`that there is a reasonable likelihood that Petitioner will prevail in
`establishing the unpatentability of at least one of the challenged claims of
`
`
`1 In the caption of the Petition, both ZTE Corporation and ZTE (USA), Inc.
`are identified as Petitioner. In the body of the Petition, ZTE (USA), Inc. is
`identified as the sole Petitioner and ZTE Corporation is identified as an
`additional real party in interest. Pet. 1.
`2 In the caption of the Petition, the Patent Owner is identified by the
`Petitioner as Hitachi Maxell, Ltd. In the caption of Patent Owner’s
`Mandatory Notices, the Patent Owner is identified as Hitachi Maxell, Ltd.
`but, in the body of this same document, the Patent Owner is identified as
`Maxell, Ltd. (Paper 5, 2). In the caption and body of the Preliminary
`Response (Paper 6, 1), Patent Owner identifies itself as Maxell, Ltd.
`
`
`
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`IPR2018-00236
`Patent 8,339,493 B2
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`the ’493 patent. For the reasons that follow, the Board has determined not to
`institute an inter partes review.
`
`A. Related Matters
`Both parties identify one related matter under 37 C.F.R. § 42.8(b)(2),
`Maxell, Ltd. v. ZTE Corporation and ZTE USA Inc., 5:16-cv-00179-RWS
`(E.D. Tex.),3 that would affect, or be affected by, a decision in this
`proceeding. Pet. 1; Paper 5, 2.
`
`B. The ’493 Patent (Ex. 1001)
`The ’493 patent, is titled “Electric Camera.” Ex. 1001, (54). It issued
`on December 25, 2012, based on an application filed July 28, 2010. Id. at
`(22), (45). It claims priority as a continuation of a U.S. application filed
`September 12, 2003, which in turn claims priority as a division of a U.S.
`application filed March 8, 2000. Id. at (60). Priority is also claimed to a
`Japanese patent application filed January 11, 2000. Id. at (30), 1:6–14.
`The ’493 patent relates to “video cameras, camcorders, digital still
`cameras and others using a solid-state image sensing device, and more
`particularly to an electric camera using a solid-state image sensing device
`with a large number of pixels.” Id. at 2:57–61. An object of the invention is
`to provide an electric camera “which uses an image sensing device with a
`sufficient number of pixels for still images and enables the taking of highly
`detailed still images and a moving video taking with reduced image quality
`degradation without increasing circuitry such as field memory.” Id. at 3:8–
`
`
`3 Petitioner identifies the plaintiff as Hitachi Maxell, Ltd. Pet. 1. Patent
`Owner identifies the plaintiff as Maxell, Ltd. Paper 5, 2.
`
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`13. “It is also an object of the present invention to provide an electric
`camera that can also realize the image stabilizing function.” Id. at 3:13–15.
`
`C. The Challenged Claims
`Of the challenged claims of the ’493 patent, claim 5 is independent,
`and claim 6 depends from claim 5. Claims 5 and 6 recite:
`5. An electric camera comprising:
`an image sensing device with a light receiving sensor having an
`array of pixels arranged vertically and horizontally in a grid
`pattern, in an N number of vertically arranged pixel lines;
`a signal processing unit that generates image signals by
`processing the output signals of the image sensing device; and
`a display unit with a display screen, that displays an image
`corresponding to the image signals;
`wherein when recording an image in a static image mode, the
`signal processing unit generates the image signals by using all
`signal charges accumulated in all N number of vertically
`arranged pixel lines of the image sensing device, to provide N
`pixel lines;
`wherein when monitoring the image in the static image mode,
`the signal processing unit generates the image signals by using
`pixel lines that have been mixed or culled from the N number
`of vertically arranged pixel lines to only include pixel lines
`separated from one another by intervals of a first distance; and
`wherein when recording the image in a moving video mode, the
`signal processing unit generates the image signals by using a
`portion of, or the entirely of, pixel lines which have been
`mixed or culled from the N number of vertically arranged
`pixel lines to only include pixel lines separated from one
`another by intervals of a second distance, where the second
`distance is different from the first distance.
`
`
`6. An electric camera according to the claim 5, further
`comprising:
`an image-instability detector which detects an image-instability
`of the electric camera; and
`
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`
`
`Ex. 1001, 16:32–17:3.
`
`wherein when recording in the moving video mode, in order to
`correct the image-instability, the signal processing unit
`generates the image signals by changing the pixel lines used,
`and the portion of the pixel lines used, according to an amount
`of image-instability detected by the instability detector.
`
`D. The Prior Art
`Petitioner relies on the following prior art:
`U.S. Patent 5,493,335, issued February 20, 1996 (“Parulski ’335”)
`(Ex. 1003);
`U.S. Patent 5,440,343, issued August 8, 1995 (“Parulski ’343”)
`(Ex. 1004);
`U.S. Patent 5,497,192, issued March 5, 1996 (“Ishizuka”) (Ex. 1005);
`U.S. Patent 5,828,406, issued October 27, 1998 (“Parulski ’406”)
`(Ex. 1006); and
`U.S. Patent 6,512,541 B2, filed December 8, 1997 (“Dunton”)
`(Ex. 1007). Pet. 3–4
`
`E. The Asserted Grounds
`Petitioner challenges claims 5 and 6 of the ’493 patent on the
`following grounds:
`Claim 5 as obvious under 35 U.S.C. § 103 in view of Parulski ’335
`and Parulski ’343;
`Claim 6 as obvious under 35 U.S.C. § 103 in view of Parulski ’335,
`Parulski ’343, and Ishizuka;
`Claim 5 as obvious under 35 U.S.C. § 103 in view of Parulski ’406
`and Dunton; and
`
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`Claim 6 as obvious under 35 U.S.C. § 103 in view of Parulski ’335,
`Dunton, and Ishizuka. Pet. 6.
`
`II. ANALYSIS
`A. Relevant Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103 if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which the subject matter
`pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The
`question of obviousness is resolved on the basis of underlying factual
`determinations, including: (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of skill in the art; and (4) where in evidence, so-called secondary
`considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We
`analyze the asserted grounds based on obviousness with the principles
`identified above in mind.
`B. Grounds Based on Parulski ’335
`Petitioner challenges independent claim 5 as obvious in view of
`Parulski ’335 and Parulski ’343; dependent claim 6 as obvious in view of
`Parulski ’335, Parulski ’343, and Ishizuka; and dependent claim 6 as obvious
`in view of Parulski ’335, Dunton, and Ishizuka. Pet. 6. As discussed below,
`Petitioner does not persuasively show that Parulski ’335 teaches certain
`limitations in claim 5.
`The “Display” Limitation
`Claim 5 recites, “a display unit with a display screen, that displays an
`image corresponding to the image signals.” Ex. 1001, 16:40–41 (the
`
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`“display” limitation). Petitioner relies on Parulski ’335 as teaching the
`“display” limitation. Pet. 23. The Petition states:
` Parulski [’]335 discloses “Referring initially to FIG. 1 …
`a control and display section 14 for user interface with the
`camera…).” Ex. 1003 at 3:25-39. Further in FIG 1. “The
`microprocessor controller 82 also controls a display element 50a
`in the viewfinder 50 (for indicating flash ready, under/over
`exposure, and the like), and receives exposure data from the
`photocell 54... While the processing and storage section 12
`automatically controls image exposure upon the CCD sensor 28
`by means of data input from the photocell 54, a plurality of
`switches are provided in the control and display section 14 for
`manually activating a variety of additional features. (Some
`switches directly activate the respective features, while other
`switches activate a menu of choices on a liquid crystal display
`(LCD) 90.)” Id. at 4:55-66 (emphasis added).
`
`Pet. 23. The passages Petitioner cites in Parulski ’335 (Ex. 1003, 3:25–39,
`4:55–66) refer to two displays: (1) display element 50a in the viewfinder 50
`and (2) LCD 90. See Ex. 1003, Fig. 1. Patent Owner argues,
`nowhere in the sections cited by Petitioner or in Parluski ’335 is
`there any discussion of display element 50a or LCD 90
`displaying an image corresponding to the image signals that,
`according to claim 5, are generated by a signal processing unit
`“by processing the output signals of the image sensing device.”
`
`
`Prelim. Resp. 15 (citing Ex. 1001, 16:37–39).
`We agree with Patent Owner that Parulski ’335 does not expressly
`disclose display element 50a or LCD 90 displaying an image corresponding
`to the image signals. Figure 1 of Parulski ’335 is reproduced below (red
`boxes around viewfinder 50 and LCD 90 added).
`
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`Figure 1 depicts the elements of an electric camera in block form. Ex. 1003,
`3:26–27. There is no indication in Figure 1 that display element 50a in
`viewfinder 50 or LCD 90 are connected in the depicted device in such a way
`as to receive any data allowing for display of an image corresponding to the
`image signals. To the contrary, neither display element 50a in viewfinder 50
`nor LCD 90 are shown to receive any output from the charge-coupled
`(CCD) image sensor 28 or from the image data processing and storage
`apparatus in the upper right corner of Figure 1. We agree with Patent Owner
`that “the still image data from A/D 58 through correction ROM 60 and
`through DSP 64 is routed to the computer without a path to the LCD [90] or
`the optical viewfinder 50.” Prelim. Resp. 18.
`Furthermore, Parulski ’335 teaches that its displays are used for other
`purposes. Parulski ’335 states that “display element 50a in the viewfinder
`50” is “for indicating flash ready, under/over exposure, and the like.”
`
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`Ex. 1003, 4:56–57. LCD 90 displays “a menu of choices.” Id. at 4:65–5:10.
`Parulski ’335 states:
`switches activate a menu of choices on a liquid crystal display
`(LCD) 90. For instance, a switch 88a moves the close-up lens 48
`into position, a switch 88b allows the user to select which of two
`(high or low) different resolution levels of sensor data are stored
`in the frame buffer memory 62, a switch 88c activates a low
`resolution “burst” mode in which several pictures are rapidly
`taken, as switch 88d activates the flash unit 52, and a switch 88e
`activates a self-timer delay mode. A capture switch 88f initiates
`each exposure. The liquid crystal display (LCD) 90 indicates the
`selected feature values.
`
`
`Id. (emphases added). Parulski ’335 provides no support for finding the
`display element 50a in viewfinder 50 or the LCD 90 display is an image
`corresponding to the image signals. Thus, Parulski ’335 does not expressly
`teach the “display” limitation.
`
`In the absence of any express teaching on the “display” limitation in
`Parulski ’335, Petitioner alludes to the knowledge of a person of ordinary
`skill in the art (“POSITA”) and relies on the Declaration of Dr. Barmak
`Mansoorian (“Mansoorian Declaration”) (Ex. 1002). The Petition states:
`
`
`it would have been obvious to a POSITA that an electric camera
`would include a display screen. Ex. 1002 at ¶38; 86. The display
`screen would present the captured object on a display so that the
`user to review image, activate additional features if needed, such
`as zoom in/out, and make decisions, such as delete, save or
`transfer the image. Id.
`
`Pet. 23. The only evidence cited in support of the conclusion that it would
`be obvious that an electric camera would include a display screen for
`
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`displaying images are paragraphs 38 and 86 of the Mansoorian Declaration.
`Paragraph 38 states:
`38. Almost all of the digital cameras include an image
`sensing device to capture light coming through the lens to form
`image signals, an image signal processing device to process the
`signal, and a display device to display captured images.
`Additionally, most cameras would have a mode selector that the
`user can select to record still images or videos.
`
`
`Ex. 1002 ¶ 38 (emphasis added). Paragraphs 85 and 86 of the Mansoorian
`Declaration relate specifically to the “display” limitation and state:
`
`
`85. Parulski [’]335 discloses an electrical camera having
`a display unit. As discussed earlier, a display unit is one of the
`conventional components to an electric camera. As shown in
`FIG. 1, section 14 represents the display section for user interface
`with the camera.
`86. Furthermore, it would have been obvious to a POSITA
`or even to a regular customer that a display unit is a basic part of
`an electric camera. Having a display unit is essential to the user
`to review captured images and make decision on whether to save,
`alter, or delete the image.
`
`
`Id. ¶¶ 85–86. However, we accord Dr. Mansoorian’s testimony as to what
`would have been obvious no weight because it relates to the wrong time
`period.
`
`Specifically, the Mansoorian Declaration states: “I also understand
`that the earliest possible priority date for the []’493 Patent is July 28, 2010.
`I have therefore analyzed obviousness as of that date or somewhat before
`that date.” Ex. 1002 ¶ 32 (emphases added). The Petition states: “[t]he
`earliest effective filing date of the claims of the [’]493 patent is July 28,
`
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`2010. (See Ex. 1001).” Pet. 3. Patent Owner asserts the priority date of the
`claims of the ’493 patent is January 11, 2000. Prelim. Resp. 3–4.
`The application for the ’493 patent was filed on July 28, 2010.
`Ex. 1001, (22). However, this application was a continuation of an
`application filed September 12, 2003 which was a division of an application
`filed March 8, 2000. Id. at (60), 1:6–14. And, priority is claimed to a
`Japanese application filed January 11, 2000. Id. at (30). Considering the
`continuity of applications as indicated on the front page of the ’493 patent,
`and absent any argument or evidence to the contrary, we accept the
`patentee’s priority claims to the Japanese application. For purposes of this
`Decision, we conclude that the priority date for the challenged claims of the
`’493 patent is January 11, 2000. Id. at (30). Thus, the “earliest possible
`priority date” used by Dr. Mansoorian to analyze obviousness was off by
`about 10 years (2000–2010). The parties seem to agree that the technology
`relating to electric cameras advanced a great deal in this time period. See
`Ex. 1002 ¶¶ 37–38; Prelim. Resp. 3–4. For these reasons, we accord
`Dr. Mansoorian’s testimony no weight because it is not tied to the time of
`the invention. As a result, we are not persuaded by Petitioner’s contentions
`about how an ordinarily skilled artisan would have found the “display”
`limitation obvious.
`Petitioner’s showing with regard to the “display” limitation is also
`inconsistent with Petitioner’s construction of this limitation. As part of its
`proposed construction for the “display” limitation, Petitioner contends “[t]he
`structure for the term should be ‘display screen of a television system’ . . .
`or other screen compatible with NTSC or PAL format.” Pet. 13 (citing
`Ex. 1001, 1:35–36, 3:22–23, 10:19–21). Patent Owner argues, “Grounds A-
`
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`D [all asserted grounds] should not be instituted at least due to Petitioner’s
`clear error of not applying its own proposed construction when setting forth
`its grounds of obviousness.” Prelim. Resp. 13.
`37 C.F.R. § 42.104(b)(3) and (4), which relate to the content of
`petitions, require statements of “[h]ow the challenged claim is to be
`construed” and “’[h]ow the construed claim is unpatentable.” Thus, this rule
`requires that the construction of a claim in a Petition be consistent with the
`unpatentability contentions in a petition. Regardless of whether or not
`Petitioner’s proposed construction is correct,4 Petitioner makes no showing
`that the art cited for the “display” limitation teaches a television screen or
`other screen compatible with either the NTSC or the PAL format.
`Therefore, Petitioner has violated Section 42.104(b)(3) and (4) by failing to
`show that the prior art teaches or suggests the “display” limitation under its
`own proposed construction.
`For these reasons, we determine that Petitioner has failed to establish
`a reasonable likelihood of showing the cited art teaches or suggests “a
`display unit with a display screen, that displays an image corresponding to
`the image signals.”
`The “Monitoring” Limitation
` Claim 5 recites:
`
`when monitoring the image in the static image mode, the signal
`processing unit generates the image signals by using pixel lines
`that have been mixed or culled from the N number of vertically
`
`
`4 In the litigation between the parties, the District Court adopted a “[p]lain
`and ordinary meaning” construction of the “display” limitation. Ex. 2001,
`12. We agree with the District Court for purposes of this Decision.
`
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`arranged pixel lines to only include pixel lines separated from
`one another by intervals of a first distance.
`
`
`Ex. 1001, 16:48–52 (the “monitoring” limitation) (emphasis added). Here
`again, Petitioner relies on Parulski ’335 for teaching this limitation. Pet. 25–
`27 (citing Ex. 1003, 2:32–38, 5:52–61). Patent Owner argues, “[t]he
`Petition just identifies two resolution modes in Parulski ’335 and provides
`discussion on using fewer pixel lines when generating low resolution images
`. . . . But there is no discussion in the Petition about how the low resolution
`images of Parulski ’335 are monitored.” Prelim Resp. 22 (citation omitted).
`We agree with Patent Owner. Petitioner never argues or presents any
`evidence that Parulski ’335 teaches or suggests “monitoring the image in the
`static image mode.” Id. Although neither party proposes that this
`“monitoring” phrase requires construction (see Pet. 11–13; Prelim. Resp. 7–
`10), we note that the Specification of the ’493 patent describes “monitoring
`the image in the static image mode” as the generation and output of
`television signals. See Ex. 1001, 7:31–39 (“In the static image mode, too,
`until the recording is requested by the record button 15, the camera outputs
`signals compatible with the television system to monitor the angle of
`view. . . . Hence, during the monitoring the television signals need to be
`generated from the signals coming from the entire pixel area.”), 14:47–50
`(“television signals can be generated by using the signals of all pixels of the
`image sensing device also during the monitoring in the static image mode.”)
`(emphases added). And, in the Specification and the claims, “monitoring” is
`used to describe a process which is distinct from recording or storing. For
`example, the Specification of the ’493 patent states:
`
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`During the monitoring in the static mode, the signals are mixed
`together inside the image sensing device to reduce the number of
`signals and thereby generate television signals.
` During
`recording, however, the mixing processing is not performed and
`all the pixel signals need to be read out independently of each
`other in order to produce high resolution signals.
`
`Id. at 8:52–58 (emphasis added).
`In contrast, all the passages Petitioner cites in the Petition as teaching
`the “monitoring” limitation relate to the recording or storage of images.5 Id.
`Specifically, Petitioner quotes the following passages from Parulski ’335
`(Pet. 26–27):
`A resolution mode switch selects the pixel resolution of the
`image by specifying the order in which the color image pixels
`are selected for storage in both vertical and horizontal directions,
`the order including . . . at least one reduced resolution mode in
`which a fewer number of color image pixels are selected.
`
`
`* * * *
`According to the invention, the camera includes the switch
`88b which allows the user to select the image record size, that is,
`which of two different resolution levels of sensor data are stored
`in the frame buffer memory 62. When the switch 88b activates
`the “low resolution” mode, the timing generator 80 changes the
`timing to the buffer memory 62 so that, in one embodiment, only
`a quarter of the pixels on the CCD sensor 28 are stored in the
`memory 62.
`
`
`5 The “monitoring” limitation is the second “wherein” limitation recited in
`claim 5. Ex. 1001, 16:47–52. The first and third “wherein” limitations in
`claim 5 recite, “wherein when recording an image in a static image mode”
`and “wherein when recording an image in a moving video mode,”
`respectively, and, thus, relate to storage of images. Id. at 16:43–46, 53–60.
`Petitioner cites the same passages of Parulski ’335 against the first and third
`“wherein” clauses that are cited against the second “wherein” clause. See
`Pet. 24, 27–28,
`
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`* * * *
`In order to form the low resolution images, a suitable
`“subsampling” pattern is required. For example, if only every
`second pixel of every second line was selected for storage in the
`buffer memory, the image would contain only values of one of
`the three colors.
`
`Ex. 1003, 2:32–38, 5:52–59, 6:4–8 (emphases added). We agree with Patent
`Owner that “there can be no monitoring of the image without any display”
`for displaying images in Parulski ’335. See Prelim. Resp. 22.
`
`Petitioner also cites to the Mansoorian Declaration in the presentation
`relating to the “monitoring” limitation. Pet. 26 (citing Ex. 1002 ¶¶ 92–93).
`Relying on the Mansoorian Declaration, the Petition states, “[a] POSITA
`would have been aware of the concept that fewer pixel lines would be
`selected for reduced resolution images than full/high resolution images.” Id.
`Assuming this statement is accurate, it does not clearly address or relate to
`“monitoring the image in the static image mode,” as recited in claim 5.
`Cited paragraphs 92 and 93 of the Mansoorian Declaration state:
`92. It would have been obvious to a POSITA that videos
`produce large amount[s] of data, even for just a one-second video
`clip. It is therefore ideal to reduce the resolution for video image.
`93. Reduced resolution image signals can be produced by
`using mixed or culled pixel lines to include only pixel lines
`separated from one another by first interval distance, for
`example, skipping lines or selecting only every second pixel of
`every second line was selected.
`
`Ex. 1002 ¶¶ 92–93. Again, these paragraphs do not address or relate to
`generation and output of television signals. Rather, Dr. Mansoorian relies
`on the same passages cited in the Petition which, as shown above, relate to
`storage of images. See Ex. 1002 ¶ 94 (quoting Ex. 1003, 5:52–59, 6:4–8).
`
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`And, for the reasons stated previously, we accord no weight to
`Dr. Mansoorian’s testimony relating to what would have been obvious
`because it relates to the wrong time period.
`Thus, Petitioner fails to show Parulski ’335 teaches or suggests the
`“monitoring” limitation.
`For at least these reasons, Petitioner has not shown that there is a
`reasonable likelihood that it would prevail with respect to its challenge to
`claim 5 in those grounds in which Petitioner relies on Parulski ’335 in the
`combination of cited references. For these grounds, Petitioner exclusively
`relies on Parulski ’335 as teaching the “display” limitation and the
`“monitoring” limitation. See Pet. 23, 25–27. Petitioner relies on the same
`deficient analysis in the grounds for dependent claim 6, so we also determine
`that Petitioner has not shown that there is a reasonable likelihood that it
`would prevail with respect to its challenge to claim 6. See Pet. 30–33, 45–
`48.
`
`C. Ground Based on Parulski ’406 and Dunton
`Petitioner challenges independent claim 5 as obvious in view of
`Parulski ’406 and Dunton. Pet. 6. As discussed below, Petitioner has not
`shown a reasonable likelihood that this combination of references teaches all
`the limitations of claim 5.
`The “Display” Limitation
`Petitioner relies on Parulski ’406 as teaching the “display” limitation
`of claim 5. Pet. 36–38. As noted above, Petitioner argues the “display”
`limitation should be construed as “[t]he structure of the term should be
`‘display screen of a television system’ . . . or other screen compatible with
`NTSC or PAL format.” Pet. 13 (citing Ex. 1001, 1:35–36, 3:22–23, 10:19–
`
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`Patent 8,339,493 B2
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`21). Petitioner fails to show Parulski ’406 teaches a display screen of a
`television system or other screen compatible with the NTSC or PAL format.
`See Pet. 36–38. For the same reasons discussed above, Petitioner’s showing
`with regard to the “display” limitation violates 37 C.F.R. § 42.104(b)(3) and
`(4), and Petitioner has failed to establish a reasonable likelihood of showing
`the cited art teaches or suggests “a display unit with a display screen, that
`displays an image corresponding to the image signals.”
`The “Monitoring” Limitation
`Petitioner cites Parulski ’406 as teaching the “monitoring” limitation.
`Pet. 39–40. Specifically, Petitioner quotes passages relating to the “second
`mode” in Parulski ’406 as teaching this limitation. Id. at 40 (citing
`Ex. 1006, 6:22–45). This mode in Parulski ’406 is a “second ‘motion’
`mode” or video mode as opposed to the “first ‘still’ mode.” Ex. 1006, 6:22–
`29. In the section relating to the “monitoring” limitation, the Mansoorian
`Declaration also cites to the “motion preview mode” or the “second mode”
`of Parulski ’406. Ex. 1002 ¶¶ 116–119. In contrast, the “monitoring”
`limitation recites “monitoring the image in the static image mode.” Because
`Petitioner’s obviousness analysis cites video modes rather than a “static
`image mode” as recited in claim 6, Petitioner fails to demonstrate that
`Parulski ’406 teaches or suggests the “monitoring” limitation.
`For at least these reasons, Petitioner has not shown that there is a
`reasonable likelihood that it would prevail with respect to its challenge to
`claim 5 in the ground in which Petitioner relies on Parulski ’406 in the
`combination of cited references. For this ground, Petitioner exclusively
`relies on Parulski ’406 as teaching the “display” limitation and the
`
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`IPR2018-00236
`Patent 8,339,493 B2
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`“monitoring” limitation. See Pet. 36–40. Parulski ’406 has not been shown
`to teach these limitations.
`
`D. Conclusion
`We conclude that Petitioner has not demonstrated a reasonable
`likelihood that at least one of the challenged claims is unpatentable based on
`the asserted grounds. We, therefore, do not institute an inter partes review
`on any of the asserted grounds as to any of the challenged claims of U.S.
`Patent No. 8,339,493 B2.
`
`
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied as to all challenged claims and
`all grounds and no trial is instituted.
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`IPR2018-00236
`Patent 8,339,493 B2
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`PETITIONER:
`
`Steven A. Moore
`Brian Nash
`Cheng (Jack) Ko
`Howard N. Wisnia
`PILLSBURY WINTHROP SHAW
`PITTMAN LLP
`steve.moore@pillsburylaw.com
`brian.nash@pillsburylaw.com
`jack.ko@pillsburylaw.com
`howard.wisnia@pillsburylaw.com
`
`PATENT OWNER:
`
`Robert G. Pluta
`Saqib J. Siddiqui
`Amanda S. Bonner
`Bryan C. Nese
`MAYER BROWN LLP
`rpluta@mayerbrown.com
`ssiddiqui@mayerbrown.com
`asbonner@mayerbrown.com
`bnese@mayerbrown.com
`
`
`
`
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