Paper No. 1
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`ZTE CORPORATION, and ZTE (USA), Inc.,
`
`Petitioners
`
`v.
`
`HITACHI MAXELL, LTD.,
`
`Patent Owner
`
`
`
`U.S. Patent No. 8,339,493
`Issued: December 25, 2012
`Inventor(s): Takahiro Nakano; Ryuji Nishimura; Toshiro Kinugasa
`
`Title: ELECTRIC CAMERA
`
`Inter Partes Review No. _____
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,339,493 PURSUANT TO 35 U.S.C. §§ 311-319 AND 37
`C.F.R. § 42
`
`
`
`
`
`
`
`Mail Stop “Patent Board”
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`

`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION ........................................................................................... 1
`I.
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1) .......................... 1
`A.
`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ............................ 1
`B.
`Related Matters Under 37 C.F.R. § 42.8(b)(2) ..................................... 1
`C.
`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) .................. 1
`D.
`Service Information Under 37 C.F.R. § 42.8(b)(4) ............................... 2
`PAYMENT OF FEES UNDER 37 C.F.R. § 42.103 ....................................... 2
`III.
`IV. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§§ 42.104 ......................................................................................................... 2
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a) ............................. 3
`B.
`Identification of Challenge Under 37 C.F.R. § 42.104(b) .................... 3
`C.
`How the Challenged Claim(s) Are to Be Construed (37 C.F.R.
`§42.104(b)(3)) ....................................................................................... 4
`D. How the Construed Claim(s) Are Unpatentable (37 C.F.R. §
`42.104(b)(4)) ......................................................................................... 5
`STATEMENT OF PRECISE RELIEF REQUESTED ................................... 5
`V.
`VI. THRESHOLD REQUIREMENT FOR INTER PARTES REVIEW ............. 7
`VII. OVERVIEW OF THE ‘493 PATENT ............................................................ 7
`VIII. LEVEL OF ORDINARY SKILL IN THE ART ........................................... 10
`IX. CLAIM CONSTRUCTION (37 C.F.R. § 42.104(b)(3)) ............................... 11
`A.
`“an image sensing device with a light receiving sensor having an
`array of pixels arranged vertically and horizontally in a grid
`pattern” ................................................................................................ 11
`“an image instability detector” ............................................................ 12
`“an image-instability of the electric camera” ...................................... 12
`“changing the pixel lines used, and a portion of the pixel lines used
`according to an amount of image-instability” ..................................... 12
`
`B.
`C.
`D.
`
`
`
`i
`
`

`

`E.
`
`X.
`
`“a display unit with a display screen, that displays an image
`corresponding to the image signals” ................................................... 13
`BRIEF DESCRIPTION OF PRIOR ART RELIED UPON .......................... 14
`A. U.S. Patent No. 5,493,335 (“Parulski ‘335”) (EX. 1003) ................... 14
`B.
`U.S. Patent No. 5,440,343 (“Parulski ‘343”) (EX. 1004) ................... 15
`C.
`U.S. Patent No. 5,497,192 (“Ishizuka ‘192”) (EX. 1005) ................... 16
`D. U.S. Patent No. 5,828,406 (“Parulski ‘406”) (EX. 1006) ................... 16
`E.
`U.S. Patent No. 6,512,541 (“Dunton ‘541”) (EX. 1007) .................... 17
`XI. CLAIM-BY-CLAIM EXPLANATION OF GROUNDS OF
`UNPATENTABILITY .................................................................................. 18
`A. Ground A: Under 35 U.S.C. § 103, Parulski ‘335 (Ex. 1003) in
`view of Parulski ‘343 (Ex. 1004), renders independent claim 5. ........ 18
`Ground B: Under 35 U.S.C. § 103, Parulski ‘335 (Ex. 1003) in
`view of Parulski ‘343 (Ex. 1004) and Ishizuka ‘192 (Ex. 1005),
`renders dependent claim 6 obvious. .................................................... 30
`Ground C: Under 35 U.S.C. § 103, Parulski ‘406 (Ex. 1006) in
`view of Dunton ‘541 (Ex. 1007), renders independent claim 5
`obvious. ............................................................................................... 33
`D. Ground D: Under 35 U.S.C. § 103, Parulski ‘335 (Ex. 1003) in
`view of Parulski ‘343 (Ex. 1004) and Ishizuka ‘192 (Ex. 1005),
`renders dependent claim 6 obvious. .................................................... 45
`XII. CONCLUSION .............................................................................................. 48
`
`
`
`B.
`
`C.
`
`
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`
`ii
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`TABLE OF AUTHORITIES
`
`Page
`
`Cases
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ................................................................................................... 6
`In re ICON Health and Fitness, Inc.,
`496 F.3d 1374 (Fed. Cir. 2007) .............................................................................. 5
`KSR Int’l C. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ............................................................................................... 6
`
`Statutes and Codes
`
`United States Code,
`Title 35, Section 101 ............................................................................................. 13
`Title 35, Section 102(b) ......................................................................................3, 4
`Title 35, Section 102(e) .......................................................................................... 4
`Title 35, Section 103 ..................................................................................... passim
`Title 35, Section 103(a) .......................................................................................... 7
`Title 35, Section 112 ............................................................................................. 13
`Title 35, Section 311(b) .......................................................................................... 5
`Title 35, Section 314(a) .......................................................................................... 7
`
`Rules and Regulations
`
`Code of Federal Regulations,
`Title 37, Section 42.8(a) ......................................................................................... 1
`Title 37, Section 42.8(b) .....................................................................................1, 2
`Title 37, Section 42.15(a) ....................................................................................... 2
`Title 37, Section 42.100(b) .............................................................................. 4, 11
`Title 37, Section 42.103 .......................................................................................... 2
`Title 37, Section 42.104 .......................................................................................... 2
`Title 37, Section 42.104(a) ..................................................................................... 3
`Title 37, Section 42.104(b) ............................................................................ 3, 4, 5
`
`
`
`
`
`
`iii
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`

`

`LIST OF EXHIBITS
`
`Exhibit No. Exhibit
`Ex.1001
`U.S. Patent No. 8,339,493 (“the ‘493 Patent”)
`Ex.1002
`Declaration of Dr. Barmak Mansoorian
`Ex.1003
`U.S. Patent No. 5,493,335 (“Parulski ‘335”)
`Ex.1004
`U.S. Patent No. 5,440,343 (“Parulski ‘343”)
`Ex.1005
`U.S. Patent No. 5,497,192 (“Ishizuka‘192”)
`Ex.1006
`U.S. Patent No. 5,828,406 (“Parulski ‘406”)
`Ex.1007
`U.S. Patent No. 6,512,541 (“Dunton‘541”)
`Prosecution History of U.S. Patent No. 8,339,493 (“the ‘493 file
`Ex.1008
`history”)
`
`
`
`
`iv
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`

`

`I.
`
`INTRODUCTION
`
`Petitioner ZTE (USA), Inc. requests institution of Inter Partes Review, and
`
`cancellation of Claims 5 and 6 (the “Challenged Claims”), of U.S. Patent No.
`
`8,339,493 (“the ’493 Patent”) (Ex. 1001).
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1)
`
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`
`The real-parties-in-interest for this Petition are ZTE Corporation and ZTE
`
`(USA), Inc.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`The following would affect, or be affected by, a decision in this proceeding:
`
`HITACHI MAXELL, LTD., v. ZTE CORPORATION and ZTE USA INC. et al, 5:16-
`
`cv-00179-RWS (E.D. Tex.).
`
`C. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`
`Petitioner provides the following designation of counsel.
`
`Lead Counsel:
`Steven A. Moore (Reg. No. 55,462)
`PILLSBURY WINTHROP SHAW
`PITTMAN LLP
`Postal and Hand Delivery Address
`501 West Broadway, Suite 1100
`San Diego, CA 92101
`Telephone: 619-544-3112
`Facsimile: 619-236-1995
`Email: steve.moore@pillsburylaw.com
`
`Back-Up Counsel
`Brian Nash (Reg. No. 58,105)
`PILLSBURY WINTHROP SHAW
`PITTMAN LLP
`Post and Hand Delivery Address
`401 Congress Avenue, Suite 1700
`Austin, TX 78701
`Telephone: 512.580.9626
`Facsimile: 512.580.9601
`Email: brian.nash@pillsburylaw.com
`
`1
`
`

`

`Back-Up Counsel
`Cheng (Jack) Ko (Reg. No. 54,227)
`PILLSBURY WINTHROP SHAW
`PITTMAN LLP
`Postal and Hand Delivery Address
`501 West Broadway, Suite 1100
`San Diego, CA 92101
`Telephone: 619-544-5000
`Facsimile: 619-236-1995
`Email: jack.ko@pillsburylaw.com
`D.
`
`Back-Up Counsel
`Howard N. Wisnia (Reg. No. 37,502)
`PILLSBURY WINTHROP SHAW
`PITTMAN LLP
`Postal and Hand Delivery Address
`501 West Broadway, Suite 1100
`San Diego, CA 92101
`Telephone: 619-544-3120
`Facsimile: 619-236-1995
`Email: howard.wisnia@pillsburylaw.com
`
`Service Information Under 37 C.F.R. § 42.8(b)(4)
`
`Service of any documents via hand-delivery may be made at the postal
`
`mailing address of the respective lead or back-up counsel designated above with
`
`courtesy email copies to the email addresses and docket_ip@pillsburylaw.com.
`
`III. PAYMENT OF FEES UNDER 37 C.F.R. § 42.103
`
`The undersigned authorizes the Office to charge Deposit Account No.
`
`033975 for the fee set forth in 37 C.F.R. § 42.15(a) for this Petition for Inter Partes
`
`Review and any additional fees in connection with this Petition.
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`
`§§ 42.104
`
`As set forth below and pursuant to 37 C.F.R. § 42.104, each requirement for
`
`Inter Partes review of the ‘493 Patent is satisfied.
`
`2
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`

`

`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`
`Petitioner certifies that the ’493 patent is available for Inter Partes Review,
`
`and that Petitioner is not barred or estopped from requesting Inter Partes Review
`
`challenging the claims of the ’493 patent on the grounds identified herein.
`
`B.
`
`1.
`
`Identification of Challenge Under 37 C.F.R. § 42.104(b)
`
`Claims for Which Inter Partes Review Is Requested (37 C.F.R. §
`
`42.104(b)(1))
`
`Inter Partes Review of claims 5 and 6 of the ‘493 Patent is requested.
`
`2.
`
`The Specific Statutory Ground on Which the Challenge is Based
`
`Under 37 C.F.R. § 42.104(b)(2)
`
`Inter Partes Review is requested in view of the following references:
`
`Exhibit
`Patent Number
`No.
`Ex.1003 U.S. Patent No. 5,493,335 (“Parulski ‘335”)
`Ex.1004 U.S. Patent No. 5,440,343 (“Parulski ‘343”)
`Ex.1005 U.S. Patent No. 5,497,192 (“Ishizuka ‘192”)
`Ex.1006 U.S. Patent No. 5,828,406 (“Parulski ‘406”)
`Ex.1007 U.S. Patent No. 6,512,541 (“Dunton ‘541”)
`
`The earliest effective filing date of the claims of the ‘493 patent is July 28,
`
`
`
`2010. (See Ex. 1001).
`
`U.S. Patent No. 5,493,335 (“Parulski ‘335,” Ex. 1003) qualifies as prior art
`
`to the ’493 Patent under at least 35 U.S.C. § 102(b) because it was issued on
`
`3
`
`

`

`February 20, 1996 to Kenneth A. Parulski et al. from an application filed on June
`
`30, 1993.
`
`U.S. Patent No. 5,440,343 (“Parulski ‘343,” Ex. 1004) qualifies as prior art
`
`to the ’493 Patent under at least 35 U.S.C. § 102(b) because it was issued on
`
`August 8, 1995 to Kenneth A. Parulski et al. from an application filed on February
`
`28, 1994.
`
`U.S. Patent No. 5,497,192 (“Ishizuka ‘192,” Ex. 1005) qualifies as prior art
`
`to the ’493 Patent under at least 35 U.S.C. § 102(b) because it was issued on March
`
`5, 1996 to Shigeki Ishizuka from an application filed on February 28, 1995.
`
`U.S. Patent No. 5,828,406 (“Parulski ‘406,” Ex. 1006) qualifies as prior art
`
`to the ’493 Patent under at least 35 U.S.C. § 102(b) because it was issued on
`
`October 27, 1998 to Kenneth A. Parulski et al. from an application filed on
`
`December 30, 1994.
`
`U.S. Patent No. 6,512,541 (“Dunton ‘541,” Ex. 1007) qualifies as prior art to
`
`the ’493 Patent under at least 35 U.S.C. § 102(e) because it was issued on January
`
`28, 2003 to Randy R. Dunton et al. from an application filed on December 8, 1997.
`
`C. How the Challenged Claim(s) Are to Be Construed (37 C.F.R.
`
`§42.104(b)(3))
`
`A claim in inter partes review is given the “broadest reasonable construction
`
`in light of the specification.” See 37 C.F.R. § 42.100(b), In re ICON Health and
`
`4
`
`

`

`Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (“[T]he PTO must give claims
`
`their broadest reasonable construction consistent with the specification. Therefore,
`
`we look to the specification to see if it provides a definition for claim terms, but
`
`otherwise apply a broad interpretation.”). For the purpose of this proceeding,
`
`claim terms are presumed to take on their broadest reasonable interpretation.
`
`Based on the Expert Declaration of Dr. Mansoorian (Ex. 1002), Petitioners submit
`
`that all terms in the challenged claims should be given the constructions discussed
`
`below. While this is position is different than positions taken in the concurrent
`
`district court action, where the petitioner has asserted other constructions, the
`
`standard for claim construction in District Court is different.
`
`D. How the Construed Claim(s) Are Unpatentable (37 C.F.R. §
`
`42.104(b)(4))
`
`A detailed explanation of why the Challenged Claims are invalid is provided
`
`below, including grounds stated in the supporting declaration by Dr. Mansoorian
`
`(Ex. 1002).
`
`V.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`The Petitioner respectfully requests the Board initiate an Inter Partes
`
`Review and cancel Claims 5 and 6 of the ’493 patent as unpatentable pursuant to
`
`35 U.S.C.§ 311(b) based on the following four grounds of unpatentability that are
`
`discussed in detail herein. These grounds are:
`
`5
`
`

`

`Ground A: Under 35 U.S.C. § 103, Parulski ‘335 (Ex. 1003) in view of
`
`Parulski ‘343 (Ex. 1004) renders independent claim 5 obvious.
`
`See infra Section XI.A.
`
`Ground B: Under 35 U.S.C. § 103, Parulski ‘335 (Ex. 1003) in view of
`
`Parulski ‘343 (Ex. 1004) and Ishizuka ‘192 (Ex. 1005), renders
`
`dependent claim 6 obvious. See infra Section XI. B
`
`Ground C: Under 35 U.S.C. § 103, Parulski ‘406 (Ex. 1006) in view of
`
`Dunton ‘541 (Ex. 1007) renders independent claim 5 obvious.
`
`See infra Section XI.C.
`
`Ground D: Under 35 U.S.C. § 103, Parulski ‘335 (Ex. 1003) in view of
`
`Dunton ‘541 (Ex. 1007) and Ishizuka ‘192 (Ex. 1005), renders
`
`dependent claim 6 obvious. See infra Section XI.D.
`
`Parulski ‘406 was cited by the applicant, considered by the examiner, but
`
`was not applied by the examiner during the prosecution of the ‘493 patent. Ex.
`
`1008 at 30; 138. Parulski ‘335, Parulski ‘343, Ishizuka ‘192 and Dunton ‘541 were
`
`not cited during the prosecution of the ‘493 Patent.
`
`Petitioner evaluates the scope and content of the prior art and, any
`
`differences between the prior art and the claims, and the level of skill of a person
`
`of ordinary skill in the art in accordance with Graham v. John Deere Co., 383 U.S.
`
`1 (1966) and KSR Int’l C. v. Teleflex, Inc., 550 U.S. 398, 417 (2007) (“a court must
`
`6
`
`

`

`ask whether the improvement is more than the predictable use of prior art elements
`
`according to their established functions”).
`
`A detailed explanation of why the Challenged Claims are invalid is provided
`
`below, including grounds stated in the supporting declaration by Dr. Mansoorian
`
`(Ex. 1002).
`
`VI. THRESHOLD REQUIREMENT FOR INTER PARTES REVIEW
`
`A petition for Inter Partes Review must demonstrate “a reasonable
`
`likelihood that the petitioner would prevail with respect to at least one of the
`
`claims challenged in the petition.” (35 U.S.C. § 314(a)). The Petition meets this
`
`threshold. The prior art teaches each of the elements of Claims 5 and 6 of the ’493
`
`patent as explained below in the proposed grounds of unpatentability. Also, the
`
`Petition establishes reasons and motivations to combine prior art for each ground
`
`under 35 U.S.C. § 103(a).
`
`VII. OVERVIEW OF THE ‘493 PATENT
`
`The ‘493 patent is directed to the use of camera elements and algorithms in
`
`the generation of images and videos. The ‘493 patent relates to an imaging device
`
`having a sufficient number of pixels to capture highly detailed still images and
`
`reduced image quality to capture moving videos. Ex. 1001 at 3:9-13. The ‘493
`
`patent further relates to use an image-instability detector to correct image
`
`7
`
`

`

`instability. Id. at 6:61-7:3. A brief overview of the digital camera technology is
`
`provided by Dr. Mansoorian. Ex. 1002 at ¶¶ 33-37.
`
`
`
`The block diagram in Figure 1 shows the configuration of an electric camera
`
`according to the invention.
`
`The camera invention includes an image sensing device 3 which the pixels
`
`are arranged horizontally and vertically in a grid format. Id. at 4:37-41; Ex. 1002
`
`at ¶50. The grid-arranged pixels include color filters that are capable of passing
`
`yellow (Ye), green (G) and cyan (Cy), respectively, and the process is repeated
`
`horizontally every three pixels Id. at 4:42-46; Ex. 1002 ¶50.
`
`The camera invention also includes a signal processing circuit 7 that has a
`
`function of using output signals from the image sensing device 3 to generate image
`
`8
`
`

`

`signals. Id.at 3:30-31; Ex. 1002 at ¶52. The signal processing circuit performs
`
`color signal processing and luminance signal processing, such as process of “color
`
`signals, gamma correction, white balance processing and outline enhancement.”
`
`Id. at 6:11-15; Ex. 1002 at ¶ 52.
`
`Additionally, the camera invention is designed to produce output signals
`
`conforming to a television system. It requires a display unit that is capable of
`
`displaying industry standard television signals such as NTSC or PAL. Ex. 1002 at
`
`¶ 53.
`
`Furthermore, the camera invention realizes the image stabilizing function.
`
`The gyro sensors 16a, 16b detect vertical and horizontal image instabilities and the
`
`image instability decision circuit 17 checks and convert the instability information
`
`into the number of pixels in vertical and horizontal directions. Id.at 7:10-16; Ex.
`
`1002 at ¶54. Based on the converted pixel numbers, the position of the effective
`
`pixel area is shifted in a direction that cancels the image instability. Id.at 7:16-21;
`
`Ex. 1002 at ¶ 54.
`
`The ‘493 patent proposes static image mode and video mode. When the
`
`camera is in static image mode, all signal charges in the pixel sensor element are
`
`used to produce high resolution images. Id. at 6:42-46; Ex. 1002 at ¶55.When
`
`monitoring and not recording, the image is formed using pixel lines that have been
`
`formed as a mixture of other pixel lines. Id. at 16:47-53; Ex. 1002 at ¶55.The
`
`9
`
`

`

`image only includes pixel lines that are separated from each other by a certain
`
`distance, the rest are not used. Id. When the camera is in video mode, the images
`
`are also formed by mixing or culling pixels lines from other lines and that the
`
`video image only contains pixel lines separated by a different distance. Id. at
`
`16:54-60; Ex. 1002 at ¶55.
`
`The electric camera disclosed in the ‘493 patent was well know prior to the
`
`invention of the ‘493 patent. As discussed below, the cited references teach all of
`
`the claimed features.
`
`VIII. LEVEL OF ORDINARY SKILL IN THE ART
`
`Petitioner asserts a POSITA, at the time of the ’493 patent, would have been
`
`aware of electric camera generating still and moving images using different
`
`operating modes. Ex. 1002 at ¶¶25-26. Such POSITA would have a bachelor’s
`
`degree in computer science, computer engineering, electrical engineering, or a
`
`related field, with two years of experience in the digital image device design or
`
`image sensor design. Ex. 1002 at ¶¶25-26. Extensive experience and technical
`
`training may substitute for educational requirements, while advanced education
`
`such as a relevant MS or PhD might substitute for experience. Ex. 1002 at ¶¶25-
`
`26.
`
`10
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`

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`IX. CLAIM CONSTRUCTION (37 C.F.R. § 42.104(b)(3))
`
`A claim in inter partes review is given the “broadest reasonable construction
`
`in light of the specification.” See 37 C.F.R. § 42.100(b). For the purpose of this
`
`proceeding, claim terms are presumed to take on their broadest reasonable
`
`interpretation.
`
`A.
`
` “an image sensing device with a light receiving sensor having an
`
`array of pixels arranged vertically and horizontally in a grid
`
`pattern”
`
`Claim 5 contains “an image sensing device with a light receiving sensor,
`
`having an array of pixels arranged vertically and horizontally in a grid pattern.” In
`
`the context of ‘493 patent, the appropriate structure to perform the function of
`
`image sensing should include color filters arranged in vertical lines. Ex. 1002 ¶74.
`
`The ‘493 patent specification states, “On these grid-arrayed pixels three types of
`
`color filters that pass yellow (Ye), green (G) and cyan (Cy), respectively, are
`
`arranged in such a way that the combination of these three colors is repeated
`
`horizontally every three pixels and that the filters of the same colors are lined
`
`vertically in so-called vertical stripes.” Ex. 1001 at 4:41 – 4:46. The specification
`
`further states that the color filters are “are arranged in vertical stripes and,
`
`regardless of the number of pixels to be vertically mixed or culled, the R, G, B
`
`11
`
`

`

`primary color signals can be generated from one line of output signals.” Id. at
`
`15:25 – 15:30; Ex. 1002 at ¶74.
`
`B.
`
`“an image instability detector”
`
`Claim 6 contains the term “an image instability detector.” In the context of
`
`the ‘493 patent, the term “an image instability detector” has the function of
`
`“detecting an image-instability of the electric camera.”
`
`C.
`
`“an image-instability of the electric camera”
`
`Claim 6 contains the term “an image-instability of the electric camera.”
`
`While construction of this term is extremely difficult because it could have
`
`multiple meanings such as, the amount of affected pixel areas, the quality of the
`
`image in part or in whole, or the overall look and feel of the image as a whole. Ex.
`
`1002 at ¶76. The specification states that gyro sensors could detect vertical image-
`
`unstability and lateral image-unstability, however, the specification did not point to
`
`any specific relationship between vertical and lateral movement and the claimed
`
`images instability. Id.
`
`D.
`
`“changing the pixel lines used, and a portion of the pixel lines
`
`used according to an amount of image-instability”
`
`Claim 6 contains “changing the pixel lines used, and the portion of the pixel
`
`lines used, according to an amount of image-instability …” In the context of the
`
`‘493 patent, the term should be construed as “Based on the converted pixel
`
`12
`
`

`

`numbers, the position of an extracted area (effective pixel area) on the light
`
`receiving surface is shifted in a direction that cancels the image-instability.” Ex.
`
`1001 at 7:18–21. Such construction is consistent with the claims themselves.
`
`E.
`
` “a display unit with a display screen, that displays an image
`
`corresponding to the image signals”
`
`Claim 5 contains “a display unit with a display screen, that displays an
`
`image corresponding to the image signals.” In the context of the ‘493 patent, the
`
`term has the function for displaying an image corresponding to the image signals
`
`formed by the signal processing unit. Ex. 1002 at ¶78. The structure for the term
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`should be “display screen of a television system” Ex. 1001 at 3:22-23 or other
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`screen compatible with NTSC or PAL format. Id at 1:35–36; 10:19–21.
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`The specification almost exclusively uses television display systems, such as
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`NTSC and PAL, to display images and also discloses embodiment using television
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`standard, such as PAL standard. Ex. 1002 at ¶78.
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`Petitioner notes that claim construction in Inter Partes Review is broader
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`than in litigation. Nothing in this Petition should be taken as an assertion regarding
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`how the claims should be construed in litigation, whether the claims constitute
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`patentable subject matter under 35 U.S.C. § 101, or whether the claims satisfy the
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`definiteness, enablement, or written description requirements of 35 U.S.C. § 112.
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`X. BRIEF DESCRIPTION OF PRIOR ART RELIED UPON
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`A. U.S. Patent No. 5,493,335 (“Parulski ‘335”) (EX. 1003)
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`Parulski ‘335 is directed to an electronic camera for processing images of
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`different resolution to provide a user selectable image record size. The resolution
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`options include a full resolution mode, and at least one reduced resolution mode.
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`Ex. 1003 at Abstract.
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`The electronic camera includes an image senor for generating a baseband
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`image signal. Id. at 2:22-27. The color image pixels of the image signal are
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`arranged in vertical and horizontal direction covered by a pattern of luminance and
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`chrominance color filter. Id. The electronic camera also includes a resolution
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`mode switch that allows the user to select the image record size. Id. at 2:32-38.
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`When the full resolution mode is activated, all color image pixels are selected and
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`when the reduced resolution mode is activated, a fewer number of color image
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`pixels are selected. Id.
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`Additionally, in order to form the low resolution images, a suitable
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`“subsampling” pattern is required. Id.at 6:4-22. Subsampling rate can be, for
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`example, at every second pixel of every second line. Id. Subsampling is done to
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`reduce the amount of data that needs to be transmitted or stored. Id.
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`Furthermore, the electronic camera includes a display unit capable of
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`displaying image and video. The diagram of Figure 1 shows a display section for
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`user interface with the camera. Id. at 3:25-39.
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`B. U.S. Patent No. 5,440,343 (“Parulski ‘343”) (EX. 1004)
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`Parulski ‘343 is directed to an electronic imaging system that records both
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`motion and still video images. The imaging system records NTSC resolution
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`images in a motion mode operation and records high resolution images in a still
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`mode operation. Ex. 1004 at Abstract.
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`The electronic imaging system utilizes an image sensor that includes an
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`array of pixel image signal. Id. at 2:10-15. In order to generate high resolution
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`image signals, the electronic imaging system is placed in the still mode of
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`operation and all of the pixels are selected. Id. at 2:14-15. However, in the motion
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`mode of operation, in order to generate images in accordance with NTSC standard,
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`which is at standard video rate of thirty frames per second, image signals generated
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`from certain selected pixels are discarded or combined with nearby signals. Id. at
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`2:15-22.
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`Additionally, the electronic image senor incorporates ‘charge clearing’
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`structures and ‘charge parking’ structures. Id. at 3:44-51. “The charge clearing
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`structures are used to selectively discard [i.e., cull] the signal charge from certain
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`pixels, while the charge parking structures are used to add the charge from non-
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`adjacent vertical pixels [i.e., mix].” Id. “An NTSC resolution image is obtained in
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`a motion mode of operation by selectively activating the charge clearing
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`structures.” Id. at 5:32-59.
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`C. U.S. Patent No. 5,497,192 (“Ishizuka ‘192”) (EX. 1005)
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`Ishizuka ‘192 is directed to a video signal process apparatus for correcting
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`vibration effects in a video camera. Defective pixels in the image are compensated
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`by storing the address of the defective pixels and interpolating at those positions.
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`During vibration correction, the defective pixels are shifted to correspond to the
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`amount of corrections. Ex. 1005 at Abstract.
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`Ishizuka ‘192 teaches that shaking in the vertical direction can be detected
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`by the pitch angular velocity speed sensor and the output of the pitch angular
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`velocity speed sensor is supplied to a converter through an amplifier, then to the
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`vibration correcting controller. Id. at 7:12-24.
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`Ishizuka ‘192 further teaches that shaking in the horizontal direction can be
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`detected by the yaw angular velocity sensor and an output of the yaw angular
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`velocity sensor is supplied to a converter through an amplifier, then to the vibration
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`correcting controller. Id.
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`D. U.S. Patent No. 5,828,406 (“Parulski ‘406”) (EX. 1006)
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`Parulski ‘406 is directed to an electronic camera that produces high quality
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`still images using complex digital image processing technique and acceptable
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`quality of preview images using simple image processing technique. Ex. 1006 at
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`Abstract.
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`The electronic camera includes two modes that can be tailored for a low
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`quality motion mode and a high quality still mode. Id. at 6:22-45. The motion
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`mode corresponds to a “line skipping” mode which the timing and control section
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`of the device controls the fast dump structure to eliminate two or more consecutive
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`lines of the image charge from the image senor. Id. The still mode corresponds to
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`a high quality still image mode wherein all rows of image pixel charge are readout
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`during a single scan. Id.
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`Additionally, the electronic camera includes an electronic color display
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`wherein a number of user control buttons, such as zoom buttons, preview button
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`and a capture button, are available. Id. at 3:20-24.
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`E. U.S. Patent No. 6,512,541 (“Dunton ‘541”) (EX. 1007)
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`Dunton ‘541 is directed to an imaging apparatus that is configured to operate
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`in at least still image capture mode and video image capture mode. The imaging
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`data in the video image mode is smaller and with lower resolution than the still
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`image mode. The reduction is accomplished by ways of digital scaling, cropping,
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`or combination of digital scaling and cropping. Ex. 1007 at Abstract.
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`Dunton ‘541 teaches that the signal processing unit can include scaling and
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`compression logic to perform image scaling and compression prior to transmission
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`and storage. Id. at 6:33-36. The scaling and compression logic can be used for
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`both still and video images by selecting the appropriate scaling ratio. Id. at 6:66-
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`7:16. Scaling ratio can be a 4:1 sub-sampling of the corrected image that 16 pixels
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`from the corrected image data are averaged together to produce 1 pixel in the
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`scaled image data. Id. Lower scaling ratios such as 2:1 may also be used, where 4
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`pixels are averaged to generate a single pixel in the scaled image data. Id.
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`XI. CLAIM-BY-CLAIM EXPLANATION OF GROUNDS OF
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`UNPATENTABILITY
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`A. Ground A: Under 35 U.S.C. § 103, Parulski ‘335 (Ex. 1003) in
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`view of Parulski ‘343 (Ex. 1004), renders independent claim 5.
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`Claim 5 and 6 are obvious over Parulski ‘335 in view of Parulski ‘343 and
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`Ishizuka ‘192. A claim is not patentable “if the differences between the subject
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`matter sought to be patented and the prior art are such that the subject matter as a
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`whole would have been obvious at the time the invention was made to a person
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`having ordinary skill in the art.” 35 U.S.C. §103.
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`Claims 5 and 6 cannot be considered novel at the time of the effective filing
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`date of the ‘493 patent. Combining conventional components having predictable
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`features, such as an image sensing device, a signal processing unit, a display unit,
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`and a mode selector was known in the art. Ex. 1002 at ¶¶33-38. The combination
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`of known electric camera elements would have been obvious to a person of
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`ordinary still in the art (“POSITA”). Id. There are routine, known problems that a
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`POSITA would have been familiar and it would have been obvious for a POSITA
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`to look at and combine these references, such Parulski ‘335, Parulski ‘343, and
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`Ishizuka ‘192 to overcome the issues because they relate to similar technical issues
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`and address the same or similar problems.
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`a.
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`5(pre). “An electric camera comprising”
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`Parulski ‘335 discloses “An electronic camera … for processing images of
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`different resolution to provide a user selectable image record size.” Ex.1003 at
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`Abstract. “Referring initially to FIG. 1, the elements of a single sensor electronic
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`camera are shown