UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD., AND
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`
`Petitioners,
`
`v.
`
`YU, ET AL.
`
`Patent Owner.
`
`Case No. IPR2020-00492
`
`U.S. Patent No. 6,611,289
`
`DECLARATION OF KENNETH A. PARULSKI
`UNDER 37 C.F.R. § 1.68 IN SUPPORT OF PETITION
`FOR INTER PARTES REVIEW
`
`SAMS-1099
`Samsung Electronics Co. v. Yu et al.
`IPR2020-00492
`Page 00001
`
`

`

`Declaration of Kenneth A. Parulski
`Inter Partes Review of U.S. Patent 6,611,289
`
`TABLE OF CONTENTS
`
`B.
`
`INTRODUCTION ........................................................................................ - 1 -
`I.
`II. QUALIFICATIONS ..................................................................................... - 3 -
`III.
`LEVEL OF ORDINARY SKILL IN THE ART ...................................... - 8 -
`IV.
`RELEVANT LEGAL STANDARDS ...................................................... - 9 -
`A. Anticipation ............................................................................................. - 10 -
`B. Obviousness ............................................................................................ - 10 -
`V. THE ’289 PATENT .................................................................................... - 12 -
`A. Summary of the ’289 Patent ................................................................... - 12 -
`B. Prosecution History of the ’289 Patent ................................................... - 15 -
`VI.
`CLAIM CONSTRUCTION .................................................................... - 18 -
`“image sensor sensitive to [a/said] full region of visible color spectrum”
`A.
`(claims 1, 2, and 3) ................................................................................. - 19 -
`“image sensor sensitive to a selected range of said full region of visible
`color spectrum” (claim 3) ...................................................................... - 25 -
`VII. GROUNDS ............................................................................................. - 28 -
`A. Ground 1: Claims 1-2 are Anticipated under 35 U.S.C. § 102(b) by
`Yamazaki; Ground 2: Claims 1-2 are Rendered Obvious under 35 U.S.C. §
`103(a) over Yamazaki ............................................................................ - 28 -
`B. Ground 3: Claim 4 is unpatentable under §103(a) over Yamazaki and
`Mansoorian ............................................................................................. - 64 -
`C. Ground 4: Claims 1 and 3 are unpatentable under 35 U.S.C. § 103(a) over
`Weldy, Denyer, and Nagumo ................................................................. - 74 -
`D. Ground 5: Claim 4 is unpatentable under §103(a) over Weldy, Denyer,
`Nagumo, and Mansoorian .................................................................... - 110 -
`E. Ground 6: Claim 5 is unpatentable under 35 U.S.C. § 103(a) over Weldy,
`Denyer, Nagumo, and Ikeda ................................................................ - 118 -
`VIII. DECLARATION .................................................................................. - 128 -
`
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`

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`Declaration of Kenneth A. Parulski
`Inter Partes Review of U.S. Patent 6,611,289
`
`I.
`
`INTRODUCTION
`1.
`I, Kenneth Parulski, have been retained by counsel for Samsung
`
`Electronics, Co., Ltd. and Samsung Electronics America, Inc. (collectively,
`
`“Samsung” or “Petitioner”) to provide assistance regarding U.S. Patent No.
`
`6,611,289 (“the ’289 patent”). Specifically, I have been asked to consider the
`
`validity of claims 1-5 of the ’289 patent (“the challenged claims”) in connection
`
`with Samsung’s petition for inter partes review and request for joinder with an
`
`instituted inter partes proceeding filed by Apple, Inc. (“Apple”), IPR2019-01258.
`
`I have reviewed the expert declaration of Dr. Alan C. Bovik, Ph.D., submitted in
`
`support of Apple’s IPR petition (see SAMS-1003) and agree with Dr. Bovik’s
`
`opinions and conclusions therein. This declaration, particularly in sections III –
`
`VIII, is substantively identical to Dr. Bovik’s declaration, and does not include any
`
`new or additional opinions. I have personal knowledge of the facts and opinions
`
`set forth in this declaration, and, if called upon to do so, I would testify
`
`competently thereto.
`
`2.
`
`I am being compensated for my time at my standard consulting rate of
`
`$525 per hour. I am also being reimbursed for expenses that I incur during the
`
`course of this work. My compensation is not contingent upon the results of my
`
`study, the substance of my opinions, or the outcome of any proceeding involving
`
`the challenged claims.
`
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`

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`Declaration of Kenneth A. Parulski
`Inter Partes Review of U.S. Patent 6,611,289
`
`3.
`
`In addition to Dr. Bovik’s declaration, in the preparation of this
`
`declaration I have studied:
`
`(1) The ’289 patent;
`
`(2) The prosecution file history of the ’289 Patent (’769 App.), SAMS-1002;
`
`(3) U.S. Patent No. 5,694,165 to Yamazaki et al. (“Yamazaki”), SAMS-
`
`1005;
`
`(4) U.S. Patent No. 6,400,824 to Mansoorian et al. (“Mansoorian”), SAMS-
`
`1006;
`
`(5) EP Patent Application Publication EP0858208A1 to Weldy et al.
`
`(“Weldy”), SAMS-1007;
`
`(6) PCT Patent Application Publication WO 93/11631 to Denyer
`
`(“Denyer”), SAMS-1008;
`
`(7) U.S. Patent No. 4,506,294 to Nagumo (“Nagumo”), SAMS-1009;
`
`(8) U.S. Patent No. 5,801,773 to Ikeda (“Ikeda”), SAMS-1010.
`
`4.
`
`In forming the opinions expressed below, I have considered:
`
`(1) The documents listed above;
`
`(2) Any additional documents discussed below; and
`
`(3) My own knowledge and experience based upon my work in the fields
`
`of imaging systems as described below.
`
`
`
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`

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`Declaration of Kenneth A. Parulski
`Inter Partes Review of U.S. Patent 6,611,289
`
`II. BACKGROUND AND QUALIFICATIONS
`5.
`A detailed description of my professional qualifications, including a
`
`list of publications, patents, awards, and professional activities, is contained in my
`
`curriculum vitae, a copy of which is attached as Appendix A.
`
`6.
`
`I received a Master of Science degree in Electrical Engineering and a
`
`Bachelor of Science degree in Electrical Engineering and Computer Science from
`
`the Massachusetts Institute of Technology in 1980. I completed my master’s thesis
`
`research while working at Motorola Corporate Research Labs from 1978 through
`
`1980, where I developed a system for transmitting a series of digital images from a
`
`moving vehicle over an FM radio communications link to a base station.
`
`7.
`
`I joined Kodak Research Labs in 1980, where I began developing and
`
`implementing image processing algorithms. Beginning in 1984, I led a project to
`
`develop the world’s first color megapixel digital camera system prototype. Prints
`
`made using this system were exhibited at the Photokina trade show in 1986, in
`
`Kodak’s first public demonstration of its digital photography technology.
`
`Photokina is the world’s largest trade show for the imaging industry. I also led
`
`teams which developed an image processing VLSI chipset for digital video
`
`cameras, and designed high performance video cameras for industrial and
`
`government applications.
`
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`Declaration of Kenneth A. Parulski
`Inter Partes Review of U.S. Patent 6,611,289
`
`8.
`
`From approximately 1986 through 1992, I served as Kodak’s
`
`technical representative to the Advanced Television Research Program at MIT,
`
`which developed “source adaptive” video compression technologies now used in
`
`most HDTV transmission systems. As part of this project, I became a named
`
`inventor on a television decoding patent which was licensed by MIT to many
`
`HDTV manufacturers.
`
`9.
`
`From approximately 1990 until my retirement from Kodak in 2012, I
`
`was involved in the research and development of Kodak’s consumer digital
`
`cameras. Beginning in 1992, I served as architect of Kodak’s first generation of
`
`consumer-oriented digital still cameras, which included the Kodak DC40 camera
`
`as well as the Apple QuickTake 100 camera, the first digital camera marketed by
`
`Apple. In my role as digital camera architect at Kodak and through my
`
`participation in various projects, I acquired experience in all aspects of digital
`
`camera design, including the selection of hardware and software components such
`
`as lenses, image sensors, digital image processors, and image processing
`
`algorithms.
`
`10. From 2001 to 2009, I served as Research Fellow and Director, IP &
`
`Standards in the Consumer Digital Group at Kodak. In that position, I was the
`
`technical leader of Kodak’s digital camera patent licensing program, where I
`
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`Declaration of Kenneth A. Parulski
`Inter Partes Review of U.S. Patent 6,611,289
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`analyzed and provided advice on a very large number of patents involving digital
`
`cameras and digital photography systems.
`
`11. From 2010 to 2012, I held the position of Research Fellow and Chief
`
`Scientist in the Digital Cameras and Devices Division. In that role, I invented and
`
`prototyped new digital photography systems, including imaging systems using
`
`cloud storage and processing technologies.
`
`12.
`
`I was employed by Kodak for a total of more than thirty years, during
`
`which time I followed the literature closely, attended numerous industry
`
`conferences where I discussed the state of the art with engineers working in the
`
`field, and supervised the work of numerous engineers performing research and
`
`development in the field of digital photography.
`
`13.
`
`In 2012, following my retirement from Kodak, I founded aKAP
`
`Innovation, LLC. As Chief Scientist and Managing Member, I provide innovation
`
`and digital photography related consulting services and participate in the
`
`development of ISO (“International Organization for Standardization”) standards
`
`for digital photography. I am also Co-founder of TourBlend Innovations, LLC,
`
`which has developed a mobile platform that uses location based content to provide
`
`guided tours of natural, cultural, and historic attractions.
`
`14.
`
`I am a named inventor on more than 225 issued United States patents.
`
`Most of these inventions relate to digital cameras and digital photography systems
`
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`Declaration of Kenneth A. Parulski
`Inter Partes Review of U.S. Patent 6,611,289
`
`and have been licensed by Kodak to more than 40 companies for use in digital
`
`cameras, smartphones, and photo sharing services. I am the author or co-author of
`
`numerous publications, including chapters in leading treatises in the field of digital
`
`imaging technology. Among these, I authored the “Digital Photography” chapter
`
`in the Digital Consumer Electronics Handbook published by MacGraw-Hill in
`
`1997; the “Color Image Processing for Digital Cameras” chapter in the Digital
`
`Color Imaging Handbook published by CRC Press in 2003; and the “Digital
`
`Camera Image Storage Formats”chapter in Single-Sensor Imaging: Methods and
`
`Applications for Digital Cameras, published by CRC Press in 2008. I have also
`
`presented at numerous industry conferences around the world on the subject of
`
`digital cameras and digital image processing.
`
`15.
`
`I have received a number of awards in recognition of my
`
`achievements in the field of digital imaging technology. For example, in 2001, I
`
`received the Eastman Award, Kodak’s top technical honor, for the development of
`
`digital cameras. In 2002, I received the Technical Achievement Award from the
`
`Photo-Imaging Manufacturing and Distributors Association for “pioneering work
`
`in the development of digital imaging technology.” I was the first person to be
`
`honored by this photographic association for contributions to digital photography.
`
`In 2008, I received the Achievement Award from the International Imaging
`
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`Declaration of Kenneth A. Parulski
`Inter Partes Review of U.S. Patent 6,611,289
`
`Industries Association (I3A) for “significant contributions to the advancement and
`
`growth of the imaging industry.”
`
`16.
`
`I have served as Chair of the IT10 standards committee for digital
`
`photography since 1994. This group provides the officially recognized United
`
`States input for many international standards used by digital cameras, including
`
`smart phone cameras. In addition, from March 2007 through February 2013, I was
`
`chair of ISO technical committee 42 (ISO/TC42), which is responsible for all
`
`international photography standards. In May 2013, I was elected chair of the US
`
`technical advisory group to ISO/TC42, and I was re-elected in May 2016 and May
`
`2019. From June 3-7, 2013, I served as head of the US delegation to the 23rd
`
`plenary meeting of ISO/TC42, held at the National Museum in Copenhagen,
`
`Denmark. From June 2-5, 2015, I served as head of the US delegation to the 24th
`
`plenary meeting of ISO/TC42, held in Sapporo, Japan. From June 5-9, 2017, I
`
`served as head of the US delegation to the 25th plenary meeting of ISO/TC42, held
`
`in Santa Clara, California. From May 13-16, 2019, I served as head of the US
`
`delegation to the 26th plenary meeting of ISO/TC42, held in Lisbon, Portugal.
`
`17.
`
`I currently serve as the project leader for ISO standards on digital
`
`camera resolution measurements (ISO 12233) and digital camera ISO speed
`
`measurements (ISO 12232), as well as the co-project leader for ISO standards on
`
`image formats for digital photography (ISO 12234 series). I am a Fellow of the
`
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`Declaration of Kenneth A. Parulski
`Inter Partes Review of U.S. Patent 6,611,289
`
`Society of Motion Picture and Television Engineers. In 2001, Kodak received a
`
`Technical Emmy Award for contributions I made to the development of the 24P
`
`HDTV production standard, which is used by Hollywood studios to produce
`
`movies and television programs.
`
`18. Please see my CV, attached hereto as Appendix A, for further
`
`information.
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`19.
`I understand that the level of ordinary skill may be reflected by the
`
`prior art of record, and that a Person of Ordinary Skill in The Art (“POSITA”) to
`
`which the claimed subject matter pertains would have the capability of
`
`understanding the scientific and engineering principles applicable to the pertinent
`
`art. I understand that a POSITA has ordinary creativity, and is not an automaton.
`
`20.
`
`I understand that there are multiple factors relevant to determining the
`
`level of ordinary skill in the pertinent art, including (1) the levels of education and
`
`experience of persons working in the field at the time of the invention; (2) the
`
`sophistication of the technology; (3) the types of problems encountered in the field;
`
`and (4) the prior art solutions to those problems.
`
`21.
`
`I am familiar with the imaging system art pertinent to the ’289 Patent.
`
`I am also aware of the state of the art at the time the application resulting in the
`
`’289 Patent was filed. I have been informed by counsel that the earliest claimed
`
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`

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`Declaration of Kenneth A. Parulski
`Inter Partes Review of U.S. Patent 6,611,289
`
`priority date for the ’289 Patent is January 15, 1999, although any given claim of
`
`the ’289 Patent may or may not be entitled to the earliest claimed date.
`
`22. Based on the technologies disclosed in the ’289 Patent, I believe that a
`
`POSITA would include someone who had, as of the claimed priority date of the
`
`’289 Patent, a bachelor’s or the equivalent degree in electrical and/or computer
`
`engineering or a related field and 2-3 years of experience in imaging systems
`
`including optics and image processing. In addition, I recognize that someone with
`
`less formal education but more experience, or more formal education but less
`
`experience could have also met the relevant standard for a POSITA. I believe that
`
`I am at least a POSITA and, furthermore, I have supervised engineers who were
`
`also POSITAs. Accordingly, I believe that I am qualified to opine from the
`
`perspective of a POSITA regarding the ’289 Patent.
`
`23. For purposes of this Declaration, unless otherwise noted, my opinions
`
`and statements, such as those regarding the understanding of a POSITA (and
`
`specifically related to the references I consulted herein), reflect the knowledge that
`
`existed in the art before the earliest claimed priority date of the ’289 Patent.
`
`IV. RELEVANT LEGAL STANDARDS
`24.
`I have been asked to provide my opinions regarding whether claims 1-
`
`5 (the “Challenged Claims”) of the ’289 Patent would have been obvious to a
`
`POSITA at the time of the alleged invention in light of the prior art.
`
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`

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`Declaration of Kenneth A. Parulski
`Inter Partes Review of U.S. Patent 6,611,289
`
`25.
`
`I am not an attorney. In preparing and expressing my opinions and
`
`considering the subject matter of the ’289 Patent, I am relying on certain legal
`
`principles explained to me by counsel.
`
`26.
`
`I understand that a claim is unpatentable if it is anticipated under 35
`
`U.S.C. § 102 or obvious under 35 U.S.C. § 103.
`
`A. Anticipation
`27.
`I have been informed by counsel that a patent claim is unpatentable as
`
`anticipated if each element of that claim is present either explicitly or inherently in
`
`a single prior art reference. I have also been informed that, to be an inherent
`
`disclosure, the prior art reference must necessarily disclose the limitation, and the
`
`fact that the reference might possibly practice or contain a claimed limitation is
`
`insufficient to establish that the reference inherently teaches the limitation.
`
`B. Obviousness
`28.
`I have been informed and I understand that a claimed invention is
`
`unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter
`
`sought to be patented and the prior art are such that the subject matter as a whole
`
`would have been obvious to a POSITA at the time the invention was made. I
`
`understand that the appropriate analysis for determining obviousness of a claimed
`
`invention takes into account factual inquiries, including the level of ordinary skill
`
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`Declaration of Kenneth A. Parulski
`Inter Partes Review of U.S. Patent 6,611,289
`
`in the art, the scope and content of the prior art, and the differences between the
`
`prior art and the claimed subject matter as a whole.
`
`29.
`
`I have been informed and I understand that the United States Supreme
`
`Court has recognized several rationales for combining references or modifying a
`
`reference to show obviousness of claimed subject matter. Some of these rationales
`
`include the following: (a) combining prior art elements according to known
`
`methods to yield predictable results; (b) simple substitution of one known element
`
`for another to obtain predictable results; (c) use of a known technique to improve a
`
`similar device (method, or product) in the same way; (d) applying a known
`
`technique to a known device (method, or product) ready for improvement to yield
`
`predictable results; (e) choosing from a finite number of identified, predictable
`
`solutions, with a reasonable expectation of success; and (f) some teaching,
`
`suggestion, or motivation in the prior art that would have led a POSITA to modify
`
`the prior art reference or to combine prior art reference teachings to arrive at the
`
`claimed invention. I have also been informed and I understand that a
`
`demonstration of obviousness does not require a physical combination or bodily
`
`incorporation, but rather may be found based on consideration of what the
`
`combined teachings would have suggested to a POSITA at the time of the alleged
`
`invention.
`
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`Declaration of Kenneth A. Parulski
`Inter Partes Review of U.S. Patent 6,611,289
`
`V. THE ’289 PATENT
`A.
`Summary of the ’289 Patent
`30. The ’289 Patent is directed to “an improved digital camera that
`
`produces digital images of high qualities without using expensive image sensors
`
`and optics…. The disclosed digital cameras use multiple image sensors with
`
`multiple lenses.” (SAMS-1001), ’289 Patent, Abstract. The ’289 Patent describes
`
`a “digital camera [that] uses four image sensors, each having its own lens, of which
`
`three image sensors are made responsive to the three primary colors and the fourth
`
`one [is] made responsive to all intensity information.” (SAMS-1001), ’289 Patent,
`
`2:40-44.
`
`31. The ’289 patent describes its configuration as unique, in that “each of
`
`the [three] image sensors is only responsible for one color,” while “the image from
`
`the [fourth] black-and-white image sensor captures all information including
`
`details that the three color image sensors may have missed.” (SAMS-1001), ’289
`
`Patent, Summary of the Invention, 2:50-59. For example, “[e]ach of the image
`
`sensors 302, 304, 306 and 308 is integrated respectively with a uniform
`
`transmissive filter.” (SAMS-1001), ’289 Patent, 5:14-15. For image sensor 302,
`
`“a red filter only transmitting red portion” of the target, and similarly “the color
`
`filters for image sensors 304 and 306 are a green filter and a blue filter,
`
`respectively.” (SAMS-1001), ’289 Patent, 5:17-21. The fourth image sensor 308
`
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`Declaration of Kenneth A. Parulski
`Inter Partes Review of U.S. Patent 6,611,289
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`“is not specifically coated with a color filter.” (SAMS-1001), ’289 Patent, 5:28-
`
`29. Rather, fourth image sensor 308 “is integrated with filter 316 that is full
`
`transparent, allowing all components of visible light to pass through,” does “not
`
`need any filter,” or has “a proper light (band) filter that obstructs anything beyond
`
`the visible light spectrum.” (SAMS-1001), ’289 Patent, 5:29-39.
`
`32. According to the ’289 Patent, one of the distinctions of its invention(s)
`
`over the prior art is that “none of the image sensors are coated with a mosaic of
`
`selectively transmissive filters in pixel-based registration.” (SAMS-1001), ’289
`
`Patent, 5:5-9. Figure 3 of the ’289 patent below, depicts the embodiment and is
`
`colorized to depict the three image sensors integrated with red, green, and blue
`
`color filters (302, 304, and 306, respectively), and the fourth image sensor (308)
`
`not integrated with a color filter.
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`Declaration of Kenneth A. Parulski
`Inter Partes Review of U.S. Patent 6,611,289
`
`(SAMS-1001), ’289 Patent, Fig. 3, annotated and colored
`“[I]mages from the three color image sensors are processed with
`
`33.
`
`reference to the image from the black-and-white image sensor and subsequently
`
`produce high quality and film-like true color digital images.” (SAMS-1001), ’289
`
`
`
`Patent, 2:45-49.
`
`34. Finally, the ’289 Patent also explains that its “unique configuration of
`
`multiple sensors and multi lenses … may be applied to black-and-white digital
`
`cameras in which there is only one monochromatic image sensor sensing only the
`
`intensity of an imaging target. Using an additional image sensor, such as image
`
`sensor 308 in Fig. 3, can help to modify image qualities of the original image from
`
`the monochromatic image sensor.” (SAMS-1001), ’289 Patent, 7:36-43.
`
`35. Representative independent claim 1 of the ’289 Patent is reproduced
`
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`Declaration of Kenneth A. Parulski
`Inter Partes Review of U.S. Patent 6,611,289
`
`below:
`
`An improved digital camera comprising:
`1.
`a first and a second image sensor closely positioned with respect to a
`common plane, said second image sensor sensitive to a full region of visible
`color spectrum;
`two lenses, each being mounted in front of one of said two image
`sensors;
`said first image sensor producing a first image and said second image
`sensor producing a second image;
`an analog-to-digital converting circuitry coupled to said first and said
`second image sensor and digitizing said first and said second intensity
`images to produce correspondingly a first digital image and a second digital
`image;
`an image memory, coupled to said analog-to-digital converting
`circuitry, for storing said first digital image and said second digital image;
`and
`
`a digital image processor, coupled to said image memory and
`receiving said first digital image and said second digital image, producing a
`resultant digital image from said first digital image enhanced with said
`second digital image.
`(SAMS-1001), ’289 Patent, 10:37-58.
`36. As I discuss below in more detail, the system and method presented in
`
`the ’289 Patent was well known to persons of ordinary skill in the art before the
`
`earliest priority date of the ’289 Patent.
`
`B.
`Prosecution History of the ’289 Patent
`37. On January 15, 1999, the Applicant filed U.S. Patent Application No.
`
`09/232,769 (“the ’769 App”), which ultimately issued as the ’289 Patent.
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`Declaration of Kenneth A. Parulski
`Inter Partes Review of U.S. Patent 6,611,289
`
`38. The prosecution history of the ’289 Patent includes a single Office
`
`Action mailed November 7, 2002. (SAMS-1002), ’769 App, 99-105. In the Office
`
`Action, the Examiner indicated that claims 1, 2, and 4-25 were allowed, and
`
`provided a statement of reasons for the indication of allowable subject matter
`
`stating that “[p]rior art discloses image pickup devices comprised of up to four
`
`image sensors, but is silent on the issue of one of said two or four image sensors
`
`being sensitive to a full visible color spectrum in combination with other
`
`limitations within claims 1 and 6.” (SAMS-1002), ’769 App, 103. Claims 30 and
`
`32 were objected to as being dependent upon a rejected base claim, but would be
`
`allowable if rewritten in independent form including all of the limitations of the
`
`base claim and any intervening claims. Claim 3 was rejected under 35 U.S.C. §
`
`112, second paragraph, as being indefinite because “[i]t is unclear what is meant by
`
`‘said lenses made to cause said first and second image sensors sensitive only to
`
`said full region of visible color spectrum.’” (SAMS-1002), ’769 App, 101.
`
`39.
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`In the Office Action, the Examiner rejected claims 26-29 under 35
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`U.S.C. § 103(a) over Nagumo (U.S. Patent No. 4,506,294) in view of Yamamoto
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`(U.S. Patent No. 5,436,661), rejected claim 31 under 35 U.S.C. § 103(a) over
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`Nagumo in view of Yamamoto in further view of Fossum (U.S. Patent No.
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`6,021,172), and rejected claims 33 and 34 over Kodama (U.S. Patent No.
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`5,414,465) in view of Yamamoto. In the rejections of claims 26-29, the Examiner
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`Declaration of Kenneth A. Parulski
`Inter Partes Review of U.S. Patent 6,611,289
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`indicated that “Nagumo discloses a digital camera (solid state camera) with three
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`image sensors (1, 2, and 3) closely positioned with respect to a common plane with
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`reference to an image target, with lenses mounted in front of all sensors…. The
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`sensors are respectively responsive to three primary colors and are thus coated with
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`the three respective primary color filters.” (SAMS-1002), ’769 App, 101-102.
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`The Examiner further indicated that Nagumo discloses “individual A/D conversion
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`circuitry (17, 18 and 19) such that the images are digitized in parallel and
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`simultaneously,” “a digital image processor (synthesizer) within the interpolation
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`circuits that synthesizes the two images and produces an enhanced digital image
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`from said first and second images,” “image memory [in the interpolation circuit
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`(20, 21, and 22) of Nagumo] since, the images must be stored in order to be
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`processed.” (SAMS-1002), ’769 App, 102. The Examiner “takes Official Notice
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`that it is well known in the art to substitute green color images for gray intensity
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`images with regards to obtaining luminance signals,” and indicated that “it would
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`have been obvious to incorporate the fourth image sensor of Yamamoto in the
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`apparatus of Nagumo in order to produce a gray (green) intensity image in order to
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`improve the resolution and dynamic range of a full color image signal.” (SAMS-
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`1002), ’769 App, 102.
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`40. On January 18, 2003, in response to the Office Action, the Applicant
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`amended claim 3 to overcome the rejection under U.S.C. § 112. (SAMS-1002), and
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`Declaration of Kenneth A. Parulski
`Inter Partes Review of U.S. Patent 6,611,289
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`canceled claims 33 and 34. ’769 App, 114, 122. Further, regarding the U.S.C. §
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`103 rejections of claims 26-29, and 31, the Applicant did not dispute any of the
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`applied teachings of cited prior art references and the Official Notice. (SAMS-
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`1002), ’769 App, 106-124. Instead, the Applicant simply “chose to add all recited
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`features of Claim 30 in its independent Claim 26” to overcome the rejections.
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`(SAMS-1002), ’769 App, 114.
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`41. On February 24, 2003, the Office mailed a Notice of Allowance
`
`stating that “[p]rior art discloses image pickup devices comprised of up to four
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`image sensors, but is silent on the issue of one of said two or four image sensors
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`being sensitive to a full visible color spectrum in combination with other
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`limitations within claims 1 and 6. Claim 3 has been rewritten to overcome the
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`rejection under 35 U.S.C. 112, and with respect to the amendment of claim 26,
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`claim 26 and all intervening claims are now in condition for allowance.” (SAMS-
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`1002), ’769 App, 126.
`
`42. The ’289 Patent issued on August 26, 2003. The allowed claims 1-29,
`
`and 31-32 were issued as claims 1-31 of the ’289 Patent, respectively.
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`VI. CLAIM CONSTRUCTION
`43.
`It is my understanding that in order to properly evaluate the ’289
`
`Patent, the terms of the claims must first be interpreted. It is my understanding that
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`for the purposes of this inter partes review, the claim terms are given their ordinary
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`Declaration of Kenneth A. Parulski
`Inter Partes Review of U.S. Patent 6,611,289
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`and accustomed meaning as would be understood by one of ordinary skill in the
`
`art, unless the inventor has set forth a special meaning for a term. In order to
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`construe the following claim terms, I have reviewed the entirety of the ’289 Patent,
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`as well as its prosecution history.
`
`A.
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`“image sensor sensitive to [a/said] full region of visible color
`spectrum” (claims 1, 2, and 3)
`
`44.
`
`It is my opinion that, in the context of the ’289 Patent, a POSITA
`
`would have understood “image sensor sensitive to [a/said] full region of visible
`
`color spectrum” to mean “image sensor that does not use any filter or uses a filter
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`that does not obstruct any portion of the visible color spectrum, such that the entire
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`image sensor is responsive to the full visible color spectrum.”
`
`45. The specification of the ’289 Patent supports the proposed
`
`construction. Referring to Fig. 3, the ’289 Patent describes a digital camera 300
`
`including three image sensors 302, 304, and 306 using red, green, and blue filters
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`respectively such that they are responsive to three primary colors respectively, and
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`the fourth image sensor 308 does not use a color filter such that it is responsive to a
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`full range of the visible spectrum. (SAMS-1001), ’289 Patent, 5:14-40; see also
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`(SAMS-1001), ’289 Patent, 2:40-44.
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`Declaration of Kenneth A. Parulski
`Inter Partes Review of U.S. Patent 6,611,289
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`
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`(SAMS-1001), ’289 Patent, Fig. 3, annotated and colored
`46. Specifically, the ’289 Patent provides the “fourth image sensor 308 is
`
`not specifically coated with a color filter.” (SAMS-1001), ’289 Patent, 5:29-40.
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`The ’289 Patent describes that such an image sensor 308 without using a color
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`filter may be implemented with (1) “a full transparent filter,” (2) “no filter at
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`all,” or (3) “a proper light (band) filter that obstructs anything beyond the visible
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`light spectrum (430 nm -680 nm).” (SAMS-1001), ’289 Patent, 5:29-40; (SAMS-
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`1001), 9:63-66 (“one of the image sensors can be made to be responsive to a full
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`range of the visible color spectrum, which may include the use of a full
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`transparent filter”); (SAMS-1001), ’289 Patent, 10:17-22 (“[w]hat sets the
`
`present invention fundamentally apart from existing technologies is the use of the
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`Declaration of Kenneth A. Parulski
`Inter Partes Review of U.S. Patent 6,611,289
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`black-and-white intensity image from the image sensor with a full transparent
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`filter or no filter at all.”).
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`47. A POSITA would have understood that the “proper light (band) f