Trials@uspto.gov
`571.272.7822
`
`Paper No. 11
`Filed: January 9, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GLOBAL TEL*LINK CORPORATION,
`Petitioner,
`
`V.
`
`SECURUS TECHNOLOGIES,INC.,
`Patent Owner.
`
`Case IPR2016-01362
`Patent 9,083,850 Bl
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT,and
`GEORGIANNA W. BRADEN,Administrative Patent Judges.
`
`TURNER,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 CFR. § 42.108
`
`
`571.272.7822
`
`Paper No. 11
`Filed: January 9, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GLOBAL TEL*LINK CORPORATION,
`Petitioner,
`
`V.
`
`SECURUS TECHNOLOGIES,INC.,
`Patent Owner.
`
`Case IPR2016-01362
`Patent 9,083,850 Bl
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT,and
`GEORGIANNA W. BRADEN,Administrative Patent Judges.
`
`TURNER,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 CFR. § 42.108
`
`
`
`IPR2016-01362
`Patent 9,083,850 Bl
`
`A. Background
`
`I.
`
`INTRODUCTION
`
`Global Tel*Link Corporation (“Petitioner”) filed a Petition (Paper 1,
`
`“Pet.””) to institute an inter partes review of claims 1—21 of U.S. Patent No.
`
`9,083,850 Bl (Ex. 1001, “the ’850 Patent”). Securus Technologies,Inc.
`
`(“Patent Owner”) filed a Preliminary Response (Paper9, “Prelim. Resp.”)
`
`thereto. We havejurisdiction under 35 U.S.C. § 314, which providesthat an
`interpartes review maynot beinstituted “unless .. . there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`
`claims challenged in the petition.” See also 37 C.F.R § 42.4(a) (delegating
`
`authority to the Board).
`
`Upon consideration of the Petition, the Preliminary Response and both
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`parties’ evidence, we conclude Petitioner has established a reasonable
`
`likelihood it would prevail with respect to at least one of the challenged
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`claims. Accordingly, for the reasons that follow, we institute an inter partes
`
`review.
`
`B. Related Proceedings
`
`Petitioner informsusthat it is not aware of any related matters that
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`would affect or be affected by this proceeding. Pet. 2.
`
`C. The ’850 Patent
`
`The ’850 Patent is directed to an apparatus and methodsfor
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`manipulating video received from a video visitation device in a secure
`
`environmentthat vary a depth of field parameter of the video. Ex. 1001,
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`Abstract, 1:52-60. The ’850 Patent seeks to safe guard the privacy and
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`promotethe safe use of video services provided within inmate housing areas
`by preventing viewers of the video services from plainly seeing unintended
`2
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`IPR2016-01362
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`people and/or details such as showers, bathrooms,interiors ofcells, or just
`other inmates. Id. at 1:6-25. The ’850 patent details that the prior art
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`solutions had significant problems, in that placing video terminals outside of
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`the general inmate population raised “security and administrative issues
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`associated with moving inmates from housinglocations tovisitation
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`locations,” and re-designing housing units was “impractical since most
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`correctionalinstitutions were constructed decades before and reconstruction
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`would betoo costly,” and the “nooks” designed for video services were
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`difficult to monitor. Jd. at 1: 26-42. With respectto facial recognition
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`technology, the ’850 patent indicates that such technology “suffers as the
`inmate movesaround and has the disadvantage of blurring much ofthe face
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`and or torso of the inmate thus leading to an unsatisfactory visitation
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`experience.” Id. at 1:43-48.
`
`The ’850 Patent seeks to ameliorate such problems by “adjusting a
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`depth offield parameter for the video, such that an imageofa first object at
`a first distance from the videovisitation deviceis in focus and an imageof a
`
`second object at a second distance from the video visitation device is
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`blurred,” as recited in independentclaims 1, 8, and 14. The °850 Patent
`alleges that by adjusting the depth offield of the camera, the video keepsin
`focus all objects at a specified distance from the camera, thereby eliminating
`the problemswith prior art recognition technology, whichtargets a particular
`object (such as the face) or area in the frame and requires adjustment
`whenever that object moves in the scene. See, e.g. , id. at 1:26-48, 12:1-6.
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`D.Illustrative Claim
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`Asnoted above,Petitioner challenges claims 1-21, with claims1, 8,
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`and 14 being independent claims. Claims 1 isillustrative of the challenged
`
`claims andis reproduced below:
`
`1. A method, comprising:
`receiving video at a video visitation device in a secure
`environment;
`
`adjusting a depth of field parameter for the video, such that an
`imageofa first object at a first distance from the video visitation
`device is in focus and an image of a second object at a second
`distance from the videovisitation device is blurred; and
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`providing the video to a viewing device located outside ofthe
`secure environment.
`
`Ex. 1001, 12:42—-51.
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`E. The Asserted Grounds of Unpatentability
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`Petitioner challenges the patentability of claims of the ’850 Patent
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`based on the following grounds under 35 U.S.C. § 103 (Pet. 4-5):
`
`
`
`
`[References——s|_-Basis’|Claims Challenged
`Shipman! and Garrison? § 103|1,5, 8,9, and 14
`
`
`
`
`Shipman, Garrison, and Mayhew? § 103|2-4 and 15-18
`
`
`
`'U.S. Patent No. 9,106,789 B1 (filed Jan. 20, 2012) (issued Aug. 11, 2015)
`(Ex. 1004, “Shipman”).
`2 U.S. Patent No. 7,911,513 B2 (filed Apr. 20, 2007) (issued Mar. 22, 2011)
`(Ex. 1005, “Garrison”).
`3U.S. Patent No. 9,106,789 B1 (filed Nov. 12, 1998) (issued May 11, 2004)
`(Ex. 1006, “Mayhew’”).
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`
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`IPR2016-01362
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`§103
`
`Shipman, Garrison, Gotsopoulos, and
`Johnson?
`
`Shipman, Garrison, and Johnson § 103|13 and 21
`
`
`
`References|Basis|Claims Challenged
`Shipman, Garrison, and Gotsopoulos* § 103|6, 7,10, 11, and 19
`
`
`
`
`
`|12and20
`
`°
`
`Il.
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`DISCUSSION
`
`A. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are
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`interpreted according to their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
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`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144-46 (2016) (“We
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`conclude that the regulation represents a reasonable exercise of the
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`rulemaking authority that Congress delegated to the Patent Office.”). Under
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`that standard, and absent any special definitions, we give claim termstheir
`
`ordinary and customary meaning, as would be understood by one ofordinary
`skill in the art at the time ofthe invention. In re Tiranslogic Tech., Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007). An inventor, however, may provide a
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`meaningfor a term thatis different from its ordinary meaning by defining
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`the term in the specification with “reasonable clarity, deliberateness, and
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`precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
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`Limitations, however, are not to be read from the specification into the
`
`4M. Gotsopouloset al., Remote Controlled DSP Based Image Capturing
`and Processing System Featuring Two-Axis Motion, Proceedingsofthe 4"
`European DSPin Education and Research Conference, 32-36 (2010)
`(Ex. 1008, “Gotsopoulos”).
`> U.S. Patent Publication No. 2008/0201158 A1 (filed Jun. 29, 2007)
`(published Aug. 21, 2008) (Ex. 1007, “Johnson”).
`5
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`claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). In addition,
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`the Board may not “construe claims during [an inter partes review] so
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`broadly that its constructions are unreasonable under general claim
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`construction principles.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d
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`1292, 1298 (Fed. Cir. 2015). We construe the challenged claims according
`
`to these principles.
`
`Petitioner proposes no explicit constructions for the claim terms,
`
`arguingthat all claim terms should be given their broadest reasonable
`
`interpretation as understood by a person of ordinary skill in the art. Pet. 8.
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`Patent Owner generally agrees, but points out that Petitioner concedesthat
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`the Specification of the ’850 Patent provides a particular definition of “depth
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`of field.” Prelim. Resp. 5—6 (citing Pet. 31-32, Ex. 1001, 7:41-43). We
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`generally agree with both parties.
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`For purposesof this Decision and based on the record before us, we
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`determine that express constructions for the claim terms are not necessary at
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`this stage of the proceeding. We note, however, that the independent claims
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`1, 8, and 14 all recite “a depth offield parameter for the video,” which we
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`determine to be distinct from a mererecitation of “a depth of field,” as
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`discussed in more depth below.
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`B. Principles ofLaw
`
`A claim is unpatentable under 35 U.S.C. § 103 if “the differences
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`between the subject matter sought to be patented andthe priorart are such
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`that the subjcct matter as a whole would have been obviousat the time the
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`invention was madeto a person havingordinary skill in the art to which said
`
`subject matter pertains.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
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`6
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`(2007). The question of obviousnessis resolved on the basis of underlying
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`factual determinations, including: (1) the scope and contentofthe priorart;
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`(2) any differences between the claimed subject matter andthe priorart;
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`(3) the level of skill in the art; and (4) objective evidence of nonobviousness,
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`i.e., secondary considerations. See Graham v. John Deere Co. ofKansas
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`City, 383 U.S. 1, 17-18 (1966).
`
`“A determination of whether a patent claim is invalid as obvious
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`under § 103 requires consideration ofall four Graham factors, and it is error
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`to reach a conclusion of obviousness until all those factors are considered.”
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`Apple v. Samsung Elecs. Co., Ltd., 839 F.3d 1034, 1048 (Fed. Cir. 2016) (en
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`banc) (citations omitted). “This requirementis in recognition ofthe fact that
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`each of the Graham factors helps inform the ultimate obviousness
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`determination.” Jd.
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`“In an [inter partes review], the petitioner has the burden from the
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`onset to show with particularity why the patentit challengesis
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`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`
`petitions to identify “with particularity .
`
`.
`
`. the evidence that supports the
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`groundsfor the challenge to each claim’”)). This burden nevershifts to
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`Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800
`
`F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek,
`
`Inc., 545 F.3d 1316, 1326-27 (Fed. Cir. 2008)) (discussing the burden of
`
`proof in inter partes review). Furthermore, Petitioner cannotsatisfy its
`
`burden of proving obviousness by employing “mere conclusory statements.”-
`
`In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
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`IPR2016-01362
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`Thus, to prevail in an inter partes review,Petitioner must explain how
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`the proposed combinations of prior art would have rendered the challenged
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`claims unpatentable. At this preliminary stage, we determine whether the
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`information presented in the Petition showsthere is a reasonable likelihood
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`that Petitioner would prevail in establishing that one of the challenged
`claims would have been obvious over the proposed combinationsofprior
`
`art.
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`Weanalyze the challenges presented in the Petition in accordance
`
`with the above-stated principles.
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`C. Level of Ordinary Skill in the Art
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`In determining whether an invention would have been obviousat the
`
`time it was made, we considerthe level of ordinary skill in the pertinentart
`
`at the time of the invention. Graham, 383 U.S. at 17. “The importance of
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`resolving the level of ordinary skill in the art lies in the necessity of
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`maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v.
`
`Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991).
`
`Petitioner’s Declarant, Dr. Iain Richardson, opines that a person of
`
`ordinary skill in the art relevant to the °850 Patent would have had “a
`
`Bachelor’s (B.S.) degree in Computer Science, Electronic Engineering or an
`
`equivalentfield, together with at least two years of academicor industry
`
`experience in a relevantfield, or a Master’s (M.S.) degree in Computer
`
`Science, Electronic Engineering or an equivalent field, together with at least
`
`one year of academicorindustry experience in a relevant field.” Ex. 1002
`
`q 24. He also testifies that “[a] relevant field could include data
`
`communications, image or video processing or communications,
`
`8
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`surveillance system design or similar.” Jd. Patent Owner does not appearto
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`take a position on what the level of ordinary skill in the pertinentart at the
`
`time of the invention. See Prelim. Resp.
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`Based on our review of the ’850 Patent, the types of problems and
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`solutions described in the ’850 Patent andcited prior art, and the testimony
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`of Dr. Richardson, we adopt and apply Dr. Richardson’s definition of a
`
`person of ordinary skill in the art at the time of the claimed invention for
`purposes of this Decision. Wealso note that the applied priorart reflects the
`appropriate level of skill at the time of the claimed invention. See Okajima
`v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`
`D.
`
`Alleged Obviousness over Shipman and Garrison
`Claims 1, 5, 8, 9, and 14
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`Petitioner contends claims 1, 5, 8, 9, and 14 of the ’850 Patent are
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`unpatentable under 35 U.S.C. § 103 in view of Shipman and Garrison.
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`Pet. 9-38. For reasons that follow, we determine Petitioner has
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`demonstrated a reasonablelikelihood of prevailing as to the challenged
`
`claims.
`
`1. Overview ofShipman
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`Shipmanis directed to “providing video visitation security to a
`
`controlled-environmentfacility.” Ex. 1004, Abstract. Shipman discloses
`
`techniques for detecting an imageofa face in a video transmitted between
`
`an inmate in a secure environment and a non-resident of the secure
`environment, whereby otherareas ofthe video outside ofthe detected face |
`maythen be obscured using techniques such asblurring, clouding,
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`darkening, distorting, masking, or shading. Jd. at 1:43—57.
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`Petitioner provides an annotated version of Figure 1 of Shipman,via
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`Dr. Richardson’s declaration, which is reproduced below:
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`Includes video
`
`Prison 10G
`
`visitation devices o” Viewing devices
`
`FAG. 1
`
`(oulside of secure
`135N @tvironment)
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`Ex. 1002, J 35 (citing Ex. 1004, Fig. 1). Shipman details that an inmate may
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`use a videovisitation station to communicate with non-residents operating a
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`device having video capabilities, such as communication devices 135A-N,
`the session occurring via communication system 110 over packet-switched
`
`network 140. Ex. 1004, 5:32-40, 63-67; Ex. 1002 4 35.
`The visitation area 130 is disclosed to provide one or more video
`visitation stations, with each station including a display, a camera and/or
`
`microphone, and an audio output. Ex. 1004, 5:32—40, Fig. 2, elements
`
`200A-N,210, 215, 220. Non-secure “inmate video”is processed by a
`
`security engine to detect facial features and blur areas of the video feed
`
`outside of the detected face, to create “secure video”that is transmitted to a
`
`family client. Id. at 6:48—50, 8:35-40, 11:9-20, Fig. 3. Shipman provides
`
`such video because it was recognized that inappropriate activities or private
`
`areas may be captured during a video session. Jd. at 11:18—20.
`
`10
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`Examples of such secure videoareillustrated in Figures 5A and 6A of
`
`Shipman,which are reproduced below:
`
`gage:MAAGEE os
`
`The Figures aboveillustrate facial detection, with the detected faces
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`505A, 605A having areas 515A, 610A around those faces, with other areas
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`520A, 620A being blurred. Jd. at 11:1-16, 54-62. Recognizing that
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`individuals may try to convey information via handsignals or the
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`introduction of objects, Shipman also discloses the ability to block other
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`selection regions 615A in the video. Jd. at 11:62—-67.
`
`2. Overview of Garrison
`
`Garrison provides an arrangement for simulating a short depth offield
`
`in a captured video phone imagein which the backgroundportion of the
`
`imageis digitally segregated and blurred to renderit indistinct. Ex. 1005,
`
`Abstract. The videophone of Garrison includes a camera 514 having a lens
`
`oriented towards the videophone user, where the camerafirst captures a
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`video image “having a long or substantially infinite depth offield,” and the
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`captured video imageis then “spatially segregated into a target portion for
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`which focus is maintained and a remaining portion for which blurring is
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`applied” using image processing techniques. Id. at 4:26—28, 5:34-48,
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`1]
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`IPR2016-01362
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`10:23-30, Fig. 5. The blurred remaining portion is combined with the
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`unblurred target portion to produce a composite image in which only the
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`target portion of the image appears in focus. /d. at 10:34-41. Theeffectis
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`illustrated in Figures 6 and 7, reproduced below:
`
`FIG. 6
`
`FIG. 7
`
`3. Analysis of Cited Art as Applied to Independent Claims 1, 8, and 14
`Petitioner contends independent claims 1, 8, and 14 of the 850 Patent
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`are unpatentable under 35 U.S.C. § 103 in view of Shipman and Garrison.
`
`Pet. 20-36. Weaddress those independentclaims below.
`
`a. The preambles ofclaims 1, 8, and 14
`
`Claims 1 and 14 recite a method and a system,respectively.
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`Petitioner contends that both Shipman and Garrison disclose systems and
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`methodsfor providing videovisitation with the enhancementsto the security
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`and privacy of the video. Pet. 20-21 (citing Ex. 1004, 4:14-16, 13:66—
`
`14:40; Ex. 1005 4:7-11, 10:20-23). Claim 8 is directed to a “tangible
`
`computer readable medium comprising computer executable code that, when
`
`executed by a processing device, causes the processing device to perform
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`12
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`operations”recited in that claim. Petitioner contends that Shipmandetails
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`that the video visitation security system “may be implemented or executed
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`on one or more computer systems,” and “a tangible computer-readable
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`storage medium may have program instructions stored thereon that, upon
`execution by one or more computer systems, cause the one or more
`computer systems to execute one or more operations disclosed.” Pet. 21
`
`(citing Ex. 1004, 9:2—15, 3:27-31).
`
`Atthis stage of the proceeding, we are persuaded byPetitioner’s
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`contentions, as supported by Dr. Richardson’s testimony, that Shipman and
`
`Garrison disclose the preambles of the independentclaims.
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`b. “receiving video at a video visitation device in a secure
`environment,” and “providing the video to a viewing device
`located outside ofthe secure environment”
`Claim 1 recites the steps of “receiving video at a video visitation
`
`device in a secure environment” and “providing the video to a viewing
`
`device located outside of the secure environment.” Claim 8 provides similar
`
`recitations, with steps of “receiving video from a videovisitation device in a
`
`secure environment” and “providing the adjusted video to-a viewing device
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`located outside of the secure environment.” Claim 14 provides that a data
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`communication device is configured “to receive video from a video
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`visitation device in a secure environment”and “‘to provide the video to a
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`viewing device located outside of the secure environment.”
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`Petitioner contendsthese limitations are taught by Shipman and
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`Garrison. Pet. 23-27, 35-36. According to Petitioner, Shipman describes
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`that its video visitation stations 200A-Nare located and used within secure
`
`environment.
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`/d.at 23 (citing Ex. 1004, 5:58-67). Petitioner also contends
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`13
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`that a video visitation station in Shipman includes a camera coupledto or
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`integrated with the videovisitation station, and records resident audio and
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`video, which is subsequently provided to a media server. Jd. at 24—26
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`(citing Ex. 1004, 6:4-8, 7:64-66, 8:27—29). Petitioner also contends that
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`Shipman describesthat “resident client 325 may provide non-secure ‘inmate
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`video’ to media server 315 which in turn forwardsthat feed to the security
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`engine 320,” and after processing, the security engine returns a processed
`secure video to media server 315 which then “transmits the secure video as
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`‘secure inmate video’ to non-residentclient 330.” Jd. at 26 (citing Ex. 1004,
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`8:27-34).
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`Aswell, Petitioner contends that in Shipman, an inmate at a
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`controlled-environmentfacility may communicate with “a remotely located
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`non-resident via a video visitation station,” such that the “non-resident may
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`use computer or communication devices 135A—N to communicate or
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`otherwise interact with a resident operating one of stations 200A—N over
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`network 140.” Jd. at 35 (citing Ex. 1004, 5:32-38).
`
`At this stage of the proceeding, we are persuaded by Petitioner’s
`
`contentions, as supported by Dr. Richardson’s testimony, that Shipman and
`
`Garrison teachthe receipt of video by and from a videovisitation device, as
`well as the provision of video to a viewing device located outside of the
`
`secure environment, as required by the independentclaims.
`
`“storing the video receivedfrom a video visitation device in a
`storage device”’
`Independentclaim8recites the step of “storing the video received
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`c.
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`from a videovisitation device in a storage device.” Independent claim 14
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`14
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`recites “data storage device” coupled to the data communication device and
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`configuredto “store the video received from a video visitation device.”
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`Petitioner contends these limitations are taught or suggested by
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`Shipman and Garrison. Pet. 27-28. Petitioner contends that Shipman
`discloses that “the video stream may bea live, a prerecorded, or a delayed
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`transmission video message,” and that “the video visitation may be recorded
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`and/or monitored by prisonstaff.” Jd. at 27 (Ex. 1004, 1:57-59, 13:53-54).
`
`Petitioner acknowledges that Shipman doesnot explicitly disclose where
`security engine 320 stores the video streams, but that one ofordinary skill in
`the art would have recognized that to process, manipulate or provide delayed
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`transmission of the video stream, a data storage device such as a buffer
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`memory would needto be utilized. /d. (citing Ex. 1002 { 108). Petitioner
`
`also points to Shipman’s data storage 435 and Garrison’s frame buffer 1504
`as potentially providing for such temporary storage of video images. Id.
`
`(citing Ex. 1004, 9:56-60; Ex. 1005, 10:13-—15).
`Atthis stage of the proceeding, we are persuadedbyPetitioner’s
`
`contentions, as supported by Dr. Richardson’s testimony, that Shipman and
`
`Garrison teach or suggest the storage of video in a storage device, as
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`required by the independent claims8 and 14.
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`d.
`
`“adjusting a depth offieldparameterfor the video, such that an
`image ofafirst objectat afirst distancefrom the video visitation
`device is in focus and an image ofa second object at a second
`distance from the video visitation device is blurred”
`Independent claims 1 and8 each recite “adjusting a depth offield
`parameter for the video, such that an imageofa first object at a first distance
`from the video visitation device is in focus and an image of a second object
`
`15
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`at a second distance from the video visitation device is blurred.”
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`Independentclaim 14 provides a similar recitation, reciting “a data processor
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`configured to adjust a depth of field parameter,” with the remainderofthe
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`limitation being the same.
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`Petitioner contendsthese limitations are taught by Shipman and
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`Garrison. Pet. 28-35. Petitioner contends that Shipmanreceives the
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`incoming video stream from the videovisitation station, may execute user
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`authentication, facial detection, object detection, etc., and can blank out non-
`facial areas in the full image. Jd. at 29-30 (citing Ex. 1004, 1:52-57, 7:29-
`32, 7:51-61, 11:8-12). Petitioner argues that the facial portion in Shipman
`
`represents the claimed “first object at a first distance from videovisitation
`
`device,” and the non-facial areas represent the claimed “second object at a
`seconddistance from the videovisitation device.” Jd. Petitioner
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`acknowledgesthat although Shipman discloses blurring portions of a video
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`feed, Shipman doesnot disclose how the blurring is achieved. Pet. 16, 30.
`
`Petitioner contends that Garrison makesclear how the blurring in
`
`Shipman may be achieved, where Garrison describes an arrangementfor
`
`simulating a short depth offield in a captured videophone,so that the
`
`backgroundportion of the imageis blurred to renderit indistinct, and the
`
`foregroundis kept in focus. Jd. at 30-31 (citing Ex. 1005, 1:56-61; Ex.
`
`1002 § 87).
`
`Patent Ownerdisputes Petitioner’s contentions, arguing that Shipman
`
`and Garrison “are no different than the prior art that the Patent Owner
`
`specifically distinguished in the specification and during prosecution with
`
`respectto these limitations.” Prelim. Resp. 7. Patent Ownercontinuesthat
`
`it distinguished in the Specification of the °850 Patent previous technology
`16
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`IPR2016-01362
`Patent 9,083,850 Bl
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`that used facial recognition to lock in on facial features of the inmate and
`
`blur everything else, pointing out the deficiencies of such prior art processes.
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`Id. at 7-9. We do notagree.
`
`In determining obviousness, neither the particular motivation to make
`
`the claimed invention nor the problem the inventoris solving controls. The
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`properanalysis is whether the claimed invention would have been obviousto
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`one ofordinary skill in the art after consideration ofall the facts. See KSR,
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`550 USS. at 421-422. In the instant case, we look to the claims of the
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`present invention, and determine if the proffered art would have taughtor
`
`suggested those claims, and not to whetherthe instant art is similar to art
`
`previously considered. Thefact that the proffered art utilizes facial
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`recognition is not dispositive because the instant claims do not preclude the
`
`use offacial recognition. In other words, a prior art reference might perform
`
`facial recognition and adjust the depth of field parameter to reach the subject
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`matter of the claims.
`
`In addition, Patent Owner argues that although Garrison mentionsthe
`
`“depth of field,” Garrison does not teach adjusting the depth offield because
`
`Garrison is directed to simulating a short depth of field. Prelim. Resp. 11.
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`Patent Ownercontinuesthat “simulating a short depth offield is, by
`
`definition, not the sameas ‘adjusting’ the depth offield.” Jd. Patent Owner
`
`also argues that Garrison’s simulation technique is not the same as adjusting
`the depth offield because it does not depend on the distance of objects from
`the camera, as recited in the instant claims. Jd. at 11-12. We do not agree.
`
`The Specification of the ’850 Patent makesclear that the
`
`contemplated changein the depth offield can occurin different ways: “[t]he
`
`depth of field may be manipulated by adjustmentof the f-stop of the camera
`17
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`Patent 9,083,850 Bl
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`system 205 or through digital processing techniques.” Ex. 1001, 7:44-46
`
`(emphasis added). As such, Patent Owner’s distinction between simulating
`
`adjustment and actual adjustment of a depth offield appears to be
`
`inapposite. As well, the independent claims do not merely recite “adjusting
`
`a depth of field,” or equivalent, but rather recite “adjusting a depth offield
`parameter.” The parameter can be adjusted through a camera control 505,at
`the time the video is captured, or may be adjusted by camera controller 404
`
`after the video is stored. See id. at 11:37-63. Additionally, the processes
`
`illustrated in Garrison do provide blurring for objects at different distances
`
`from the camera, although the distance need not be the controlling
`
`parameter. Asillustrated above in Section II-D.2, Figures 6 and 7 of
`Garrison show objects further away being blurred by that system, although
`
`objects equidistant as the unblurred target portion from the camera may also
`
`be blurred. As such, we determinethat this meets the claim language,
`
`requiring an imageofa first object at a first distance from the video
`
`visitation device to be in focus and an image of a second object at a second
`
`distance from the video visitation device to be blurred.
`
`Patent Owneralso argues that Garrison “teaches away from actually
`
`adjusting the ‘depth of field’ because ‘most videophonestargeted at the
`consumer market use a very small digital image sensor along with an optics
`packagethat includesa fixed focal length and shutter speed.’” Prelim. Resp.
`
`15 (citing Ex. 1005, 3:22-30). Because of this, Patent Owner arguesthat
`
`Garrison discloses an alternative method for simulating a short depth of
`
`field, and not adjusting the depth offield, as recited in the claims. Jd. We
`
`do not agree. As discussed above,the instant invention also envisions the
`
`18
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`use of “an alternative method”for simulating a depth of field, such we are
`
`not persuaded that Garrison teaches away.
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`Atthis stage of the proceeding, we are persuaded by Petitioner’s
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`contentions, as supported by Dr. Richardson’s testimony, that Shipman and
`
`Garrison teach or suggest the adjustment of a depth of field parameter for the
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`video, as required by the independentclaims1, 8, and 14.
`
`e. Rationale to Combine Shipman and Garrison
`
`Petitioner contends a person of ordinary skill in the art would have
`
`had reasons to combine the teachings of Shipman and Garrison. Pet. 17-18.
`
`Petitioner specifically contends that a person of ordinary skill in the art
`
`would have been motivated to look to Garrison’s blurring technique that
`
`simulates short depth offield for the blurring function of Shipman. Jd. at 17
`
`(citing Ex. 1002 75). Petitioner also alleges that Garrison would have
`improvedthe facial recognition processes of Shipman,allowing for any
`object in an imageto be thetarget portion,i.e., not just faces, as another
`
`rationale to combine. Jd. Petitioner also argues that both Shipman and
`
`Garrison are in the samefield, namely video processing to enhancesecurity
`
`and privacy. Petitioner also relies on the testimony of Dr. Richardson,
`explaining that a core benefit of using Garrison’s techniqueis that the
`
`componentarchitecture described in Shipman need not be modified to
`incorporate the image processing techniques of Garrison. Jd. at 18 (citing
`Ex. 1002 7 77). Lastly, Petitioner contends that the combination of Shipman
`
`and Garrison would have been nothing more than the combination ofprior
`
`art methods according to known methodsto yield a predictable and desirable
`
`result. Jd.
`
`19
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`IPR2016-01362
`Patent 9,083,850 B1
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`Patent Ownerarguesthat Petitioner has failed to demonstrate a proper
`
`motivation to combine Shipman and Garrison. Prelim. Resp. 16-20. Patent
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`Ownerargues that the combination of Shipman and Garrison would not
`
`solve the problemsstated in the ’850 Patent (id. at 17), but, as discussed
`
`above, the combination neednotsolveall of the problems elucidated in a
`
`specification if the references can be combined and meetthe limitations of
`
`the claims. Patent Owneralso argues that the combination of Shipman and
`
`Garrison “would likely cause more problems than the combination would
`
`solve,” which Petitioner has not addressed. Jd. We do notagree.
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`Patent Ownerargues that Garrison’s system would notlimit focus of
`
`the inmate to the depth of field as claimed, but allow the inmate to be
`
`located anywhere within the depth of field of its camera, thus defeating the
`
`purpose of preventing certain objects to be visible to the observer. Id. at 17—
`
`18. We do not agree, however, as the independent claims do not require the
`
`inmate to be focusedat a particular depth offield, but rather recite the
`
`adjustment of a depth of field parameter, with objects being in focus or
`
`blurred. We do not agree that the processes in Garrison would defeat the
`
`purpose of obscuring certain objects.
`
`Patent Owneralso argues that Petitioner’s suggestion that Garrison’s
`
`object detection techniques would improve Shipman’s facial recognition
`
`techniques runs counterto the solution provided by the ’850 Patentthat
`
`would eliminate the need for detection of a target portion, and which were
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`specifically distinguished during prosecution. Jd. at 18. As discussed above,
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`we do not agree because the combination neednotsolveall of the problems
`
`identified by the inventor if the combination meets the claims.
`
`20
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`IPR2016-01362
`Patent 9,083,850 B1
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`Patent Owneralso argues Petitioner’s arguments about Shipman and
`
`Garrison being in the samefield ignores the fact that Garrison “eschews
`
`‘traditional’ techniques such as adjusting f-stop parameters to adjust the
`
`depth offield as is disclosed in the ’850 Patent.” Prelim. Resp. 18. As
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`discussed above, we are unpersuaded because the ’850 Patent espouses the
`
`same techniquesas partsof its solution. As such, we do not agree with
`
`Patent Ownerthat Petitioner has failed to address the problems with the
`
`proposed combination in the context of the instant claims and Specification.
`
`Wehaveconsidered all of Petitioner’s rationale regarding why a
`person of ordinary skill in the art would have been motivated to combinethe
`teachings of Shipman and Garrison for claims 1, 8, and 14, as well as Patent
`
`Owner’s c
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