UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`QOMO HITEVISION, LLC,
`Petitioner,
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`v.
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`PATHWAY INNOVATIONS AND TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`IPR2016-________
`Patent 8,508,751
`____________
`
`On behalf of Petitioner Qomo Hitevision, LLC.
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`EXPERT DECLARATION OF ELI S. SABER, PH.D.
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`
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`Exhibit 1003
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`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`QOMO HITEVISION, LLC,
`Petitioner,
`
`v.
`
`PATHWAY INNOVATIONS AND TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`IPR2016-________
`Patent 8,508,751
`____________
`
`On behalf of Petitioner Qomo Hitevision, LLC.
`
`EXPERT DECLARATION OF ELI S. SABER, PH.D.
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`Exhibit 1003
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`I, Eli S. Saber, declare and state that:
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`1.
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`I have been retained by Petitioner Qomo Hitevision, LLC to give my expert
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`opinion regarding the applicability of prior art references to claims 1-10, 12-18,
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`and 20 of 8,508,751 (“the ’751 patent”). This report briefly sets forth my
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`background and qualifications to provide my declaration, the technology at
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`issue, the materials that I reviewed to prepare this declaration, and then sets
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`forth my understanding of the patent claims at issue and my anticipation and
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`obviousness analyses regarding the application of the prior art provided to me.
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`I am a citizen of the United States, and reside at 600 Hosta Circle, Webster, NY
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`14580.
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`I have a bachelor’s degree in Electrical and Computer Engineering, which I
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`received from the State University of New York at Buffalo in 1988; a master’s
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`degree in Electrical Engineering which I received from University of Rochester
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`in 1992; and a Ph.D. in Electrical Engineering, which I received from
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`University of Rochester in 1996.
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`2.
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`3.
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`4.
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`From 1988 until 2004, I worked for Xerox Corporation in a variety of
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`positions, culminating in Product Development Scientist and Manager in the
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`Business Group Operations Platform Unit. During my 16 years at Xerox, I was
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`responsible
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`for
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`delivering
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`color management,
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`image
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`processing
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`innovation/architecture/algorithms, and xerographic subsystems for a variety
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`of color products including Xerox's iGen 3.
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`1
`DECLARATION OF ELI S. SABER, PH.D. (EX. 1003)
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`5.
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`From 1998 to 2004, I was an adjunct faculty member at the Electrical
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`Engineering Department of the Rochester Institute of Technology ("RIT") and
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`at the Electrical & Computer Engineering Department of the University of
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`Rochester. As an adjunct faculty, I was responsible for teaching undergraduate
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`and graduate course work
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`in signal,
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`image, video processing, pattern
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`recognition and communications. In addition to the above, I also performed
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`research
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`in Multimedia Applications, Pattern Recognition,
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`Image
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`Understanding and Color Engineering in partnership with faculty and PhD
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`students at the University of Rochester.
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`6.
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`I am a Professor of Electrical and Microelectronic Engineering ("EME") in the
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`Kate Gleason College of Engineering (“KGCOE”) at RIT. I am also a
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`Professor of Imaging Science at the Chester F. Carlson Center for Imaging
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`Science (CIS) at RIT. I have been elected as the EME Gleason Professor for a
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`three-year period (2011-2013). I have also served as the Graduate Program
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`Director for the EME Department from 2010 to 2014. I am currently the
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`Director of the Image, Video, and Computer Vision Laboratory (IVCVL) - a
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`laboratory that I established in 2005 after joining RIT as a full time faculty
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`member.
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`I have extensive experience in the fields of image/video processing and
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`computer vision. The IVCVL conducts research in the areas of image/video
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`segmentation, video motion estimation, remote sensing and surveillance
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`DECLARATION OF ELI S. SABER, PH.D. (EX. 1003)
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`7.
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`applications, biomedical
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`image processing and grayscale/color printing
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`applications. Among other things, our research includes segmenting, identifying
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`and analyzing motion, objects, and features in image and/or video data.
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`Accordingly, I have extensive knowledge of the science and technology
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`underlying the patent at issue in this petition and any resulting proceedings.
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`8.
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`I am a member of a number of professional organizations related to image and
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`video processing and serve or have served on various professional publications,
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`such as the Journal of Electronic Imaging. I am the author or co-author of more
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`than 100 scientific papers in the fields of image/video processing and computer
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`vision. I have also given many presentations at various conferences and
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`workshops involving image and/or video processing innovations. A copy of
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`my current Curriculum Vitae listing my professional and academic activities as
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`well as my publications is attached hereto.
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`9.
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`I am also the co-inventor of several U.S. patents, including U.S. Patent
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`Nos. 6,173,128; 7,873,214; and 8,515,171. I am also a named inventor on a
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`number of other pending U.S. patent applications. I have been involved in the
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`patent application drafting process and have been consulted during patent
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`prosecution. Accordingly, I have some understanding of the process by which
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`U.S. patents are obtained.
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`10. Despite my familiarity with patents, I do not profess to understand the
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`intricacies of U.S. Patent Law.
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`DECLARATION OF ELI S. SABER, PH.D. (EX. 1003)
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`11.
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`I have been retained by Petitioner as a technical expert for this inter partes
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`review petition. I am being compensated at the rate of $200 per hour, and my
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`compensation does not depend upon the outcome of this IPR petition or any
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`resulting proceedings.
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`II. TECHNOLOGY AT ISSUE
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`12.
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`I understand that the technology at issue involves image capture, processing,
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`and display methods and devices, including those directed towards document
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`projectors.
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`III. MATERIALS REVIEWED
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`13.
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`I have reviewed each of the following patents in making my declaration:
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`a. The ’751 patent (Ex. 1001 to the IPR Petition);
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`b. The file history of the ’751 patent (excerpts of which are included in Ex.
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`1002);
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`c. U.S. Patent No. 8,243,171 to LeGall et al. (“LeGall”) (Ex. 1004);
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`d. Manual for Philips USB PC Camera PCVK750 (“Philips”) (Ex. 1005);
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`e. U.S. Patent No. 7,071,968 to Novak (“Novak”) (Ex. 1006);
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`f. U.S. Patent App. Pub. No. US 2001/0012051 to Hara et al. (“Hara”) (Ex.
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`1007);
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`g. U.S. Patent App. Pub. No. US 2005/0078052 to Morichika (“Morichika”)
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`(Ex. 1008);
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`h. U.S. Patent No. 5,767,897 to Howell (“Howell”) (Ex. 1009);
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`DECLARATION OF ELI S. SABER, PH.D. (EX. 1003)
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`i. The Prosecution history of corresponding European Patent Application No.
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`11737562.6 (excerpts of which are included in Ex. 1010); and
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`j. U.S. Patent No. 5,894,529 to Ting (“Ting”) (Ex. 1011).
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`14.
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`I have also considered my own knowledge of, and experience with, image
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`capture, processing, and display technologies.
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`IV. THE ’751 PATENT
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`A. Overview
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`15. One of the objectives of the ’751 patent is to provide a document imaging
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`system that is cost efficient, compact, portable, and capable of producing real
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`time, high resolution still and video images. Ex. 1001 at 3:18-42. The patent
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`teaches using a high-definition CMOS or CCD camera to acquire an image
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`suitable for digital zooming without mechanical line-by-line scanning, thereby
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`avoiding the need for optical zoom lens assembly or mechanical components.
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`Id. at 2:21-30, 5:35-43, 6:11-20, 6:34-38, 7:56:59. It also teaches using a personal
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`computer with a processor running imaging software to process and display the
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`images, thereby removing cost and size from the camera. Id. at 4:66-5:21, 7:56-
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`8:1, 8:12-31; Fig. 1. Additionally, the patent discloses reducing the resolution of
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`an image such that it can fit on a display, which may be of lower resolution
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`than the captured and/or manipulated images. Id. at 6:20-26; 7:6-15; Fig. 5.
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`Further, where higher magnification zooming is desired, the patent suggests
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`using known interpolation methods to increase resolution while reducing
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`DECLARATION OF ELI S. SABER, PH.D. (EX. 1003)
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`pixelation effects. Id. at 6:30-41.
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`16. The ’751 patent primarily focuses on capturing, manipulating, changing the
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`resolution of, and providing an output of digital images. Ex. 1001 at Abstract;
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`Figs. 4, 5; 6:55-7:15. It discloses a document imaging apparatus with a camera
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`that connects to a personal computer with a processor that controls the camera
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`and processes the received frame images. Id. at Fig. 3a; 4:66-5:9. The
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`specification provides no substantive technical disclosure of any new technique
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`for image capture, manipulation, or display; rather, it merely applied well know
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`imaging technology in purportedly new combinations.
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`17. At the time of filing the ’751 patent, these imaging methods and apparatuses
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`were generally well known. For example, the imaging technique relied upon to
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`secure patent allowance—reducing the resolution of a video image to a
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`reference resolution—was taught in both Hara and Philips nearly a decade
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`before the ’751 Patent’s earliest priority date.
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`B. The Challenged Claims
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`18. The asserted claims of the ’751 patent are recited below. Individual claim
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`elements may be referred to as identified below in bold, which I understand is
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`consistent with the naming convention used in the corresponding IPR Petition.
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`1. [Preamble] A method of acquiring an image of a target to provide an output
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`video image comprising a plurality of frame images, the method comprising:
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`DECLARATION OF ELI S. SABER, PH.D. (EX. 1003)
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`[A] connecting a slave digital image sensing unit to a master personal processor, the
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`master personal processor receiving a series of frame images from the slave digital
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`image sensing unit;
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`[B] using the master personal processor to manipulate the series of frame images,
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`including zooming in or out without changing resolution of the frame images;
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`[C] in the case of the manipulated series of frame images having a higher resolution
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`than a reference resolution, reducing the resolution of each of the manipulated series
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`of frame images to that of the reference resolution;
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`[D] displaying and/or storing the manipulated series of frame images as an output
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`video image without changing resolution of the manipulated series of frame images,
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`[E] wherein the slave digital image sensing unit is removably connected to the
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`master personal processor via a master personal processor port.
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`2. The method of claim 1, further comprising executing the manipulation in response
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`to a user request in real time.
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`3. [Preamble] A method of acquiring an image of a target to provide an output
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`video image comprising a plurality of frame images, the method comprising:
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`[A] connecting a slave digital image sensing unit to a master personal processor, the
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`master personal processor receiving a series of frame images from the slave digital
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`image sensing unit;
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`DECLARATION OF ELI S. SABER, PH.D. (EX. 1003)
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`[B] using the master personal processor to manipulate the series of frame images,
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`including zooming in or out without changing resolution of the frame images,
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`[C] wherein the manipulation of the series of frame images is executed in response
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`to a user request in real time;
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`[D] identifying a first resolution for the received plurality of frame images;
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`identifying a second resolution for the reference resolution;
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`[E] in the case of a manipulated frame image having a higher resolution, as
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`manipulated, than the second resolution, reducing the resolution of the frame image
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`to that of the second resolution;
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`[F] in the case of the manipulated frame image having a lower resolution, as
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`manipulated, than the second resolution, using the processor to further manipulate
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`the frame image to reduce pixilation;
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`[G] displaying and/or storing the manipulated series of frame images as an output
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`video image without changing the resolution of the manipulated series of frame
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`images,
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`[H] wherein the slave digital image sensing unit is removably connected to the
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`master personal processor via a master personal processor port.
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`4. The method of claim 3, wherein the personal processor is housed in an external
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`personal computer, further comprising using an external personal computer to
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`DECLARATION OF ELI S. SABER, PH.D. (EX. 1003)
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`provide the processor used to manipulate the series of frame images.
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`5. The method of claim 4 wherein the manipulation further comprises at least one of
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`the operations selected from the group consisting of: re-sizing the image; panning
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`the image in a selected direction; rotating the image in a selected direction; and
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`annotating the image.
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`6. The method of claim 5 wherein annotating an image is conducted during re-sizing
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`the image.
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`7. The method of claim 5 wherein the at least one operation is conducted without
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`changing a resolution of the output frame images.
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`8. [Preamble] A method of acquiring an image of a target comprising:
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`[A] determining a reference resolution at which each frame image of a series of
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`frame images will be maintained and storing the reference resolution in a non-
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`transitory medium;
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`[B] capturing a video image comprising the series of frame images in one
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`instantaneous snapshot of a subject's entire surface area without line-by-line scanning
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`and
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`[C] using an external processor to compare a resolution of each frame image of the
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`video image with the reference resolution and adjusting the resolution of each frame
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`image to correspond to the reference resolution; and
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`DECLARATION OF ELI S. SABER, PH.D. (EX. 1003)
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`[D] after comparing the resolution of each frame image, storing and/or displaying in
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`real-time each frame image on a display.
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`9. The method of claim 8 wherein the external processor is housed in a personal
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`computer.
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`10. The method of claim 8 further comprising when displaying each frame image on
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`a display re-sizing the image without changing a resolution of the output frame
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`images.
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`12. The method of claim 8 further comprising when displaying each frame image on
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`a display panning the image in a selected direction without changing a resolution of
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`the output frame images.
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`13. The method of claim 8 further comprising when displaying each frame image on
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`a display rotating the image in a selected direction without changing a resolution of
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`the output frame images.
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`14. The method of claim 8 further comprising when displaying each frame image on
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`a display annotating the image without changing a resolution of the output frame
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`images.
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`15. The method of claim 14 wherein annotating an image is conducted during a step
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`of re-sizing the image
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`16. The method of claim 8 further comprising when displaying each frame image on
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`a display, performing an image manipulation selected from the group consisting of:
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`DECLARATION OF ELI S. SABER, PH.D. (EX. 1003)
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`re-sizing the image, re-sizing a selected portion of the frame to provide a visual effect
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`of rotating the image in three dimensions, panning the image in a selected direction,
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`rotating the image in a selected direction, and annotating the image.
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`17. The method of claim 16 wherein annotating an image is conducted during a step
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`of re-sizing the image.
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`18. A document imaging apparatus comprising
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`[A] a personal computer containing a software programming unit;
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`[B] a miniaturized digital image sensing unit externally coupled to the personal
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`computer comprising optics having an infinite focal length;
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`[C] wherein the personal computer is configured to control all actions of the
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`miniaturized digital image sensing unit and cause the digital imaging unit to zoom in
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`or zoom out in real-time while maintaining a resolution of a series of real-time
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`images;
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`[D] in the case of the resolution of the series of real-time images having a higher
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`resolution than a reference resolution, reducing the resolution of each of the series of
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`real-time images to that of the reference resolution;
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`[E] a display for displaying the images; and
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`[F] a suspension arm for supporting the digital imaging unit at a distance from a
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`target to be imaged.
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`20. The document imaging apparatus as recited in claim 18 wherein the processor is
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`DECLARATION OF ELI S. SABER, PH.D. (EX. 1003)
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`housed in an external personal computing system.
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`V. Legal Standards
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`19.
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`I understand that the claims of a patent set forth the metes and bounds of the
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`invention that is protected. I further understand that the words of those claims
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`are presumed to carry their common and ordinary meanings to a person of
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`ordinary skill in the relevant art. I also understand that the meaning of a word is
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`derived from looking at the claims themselves, the patent specification and if
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`necessary, the prosecution history.
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`I understand that a claim is anticipated if a single prior art reference discloses
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`each and every limitation of the claimed invention.
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`I understand that a patent claim may be unpatentable for obviousness if the
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`difference between the claimed subject matter and the prior art is such that the
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`subject matter as a whole would have been obvious at the time the invention
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`was made to a person having ordinary skill in the art (“PHOSITA”). I
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`understand that a finding of obviousness requires a determination of: (1) the
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`scope and content of the prior art; (2) the difference(s) between the claimed
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`invention and the prior art; (3) the level of ordinary skill in the art; and (4)
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`whether the differences are such that the claimed invention as a whole would
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`have been obvious to one of ordinary skill in the art at the time the invention
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`was made.
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`DECLARATION OF ELI S. SABER, PH.D. (EX. 1003)
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`20.
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`21.
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`22. A combination of old familiar elements according to known methods is likely
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`to be obvious when it does no more than yield predictable results. Predictable
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`variations of a work from one field are likely to be obvious, even if the
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`variation is in another field. Similarly, where a technique has been used to
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`improve a device, use of the same technique to improve similar devices is likely
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`obvious. If there existed at the time of invention a known problem for which
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`there was an obvious solution, a patent claim encompassing that solution is not
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`patentable.
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`23.
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`It is my understanding that the obviousness inquiry is not limited to just the
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`prior art references being applied, but includes the knowledge and
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`understanding of one of ordinary skill in the art.
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`24.
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`I also understand that the Federal Circuit previously required challengers to a
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`patent claim due to obviousness establish a prima facie case of obviousness by
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`showing a teaching, suggestion, or motivation, either in the prior-art references
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`themselves or in the knowledge generally available to one of ordinary skill in
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`the art, to modify or combine the reference teachings. This is the so-called
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`“TSM test” (teaching-suggestion-motivation test). Since the U.S. Supreme
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`Court decision in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), this
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`test is no longer the controlling factor, although it remains a helpful insight.
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`25.
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`It is my understanding that the U.S. Supreme Court, in one of its opinions, has
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`provided guidance on how to analyze whether claims in a patent are obvious. I
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`understand that the Supreme Court noted that when a work is available in one
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`field of endeavor, design incentives and other market forces can prompt
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`variations of it, either in the same field or a different one. I understand that the
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`Supreme Court additionally explained that it often will be necessary to look to
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`interrelated teachings of multiple patents; the effects of demands known to the
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`design community or those present in the marketplace; and the background
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`knowledge possessed by a person having ordinary skill in the art, all in order to
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`determine whether there was an apparent reason to combine the known
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`elements in the fashion claimed by the patent at issue.
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`26.
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`I understand that the obviousness analysis also includes contextual
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`considerations, factors usually referred to as “secondary considerations” or
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`“secondary indicia of nonobviousness.” Objective evidence of nonobviousness
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`includes copying, long felt but unsolved need, failure of others, commercial
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`success, unexpected results created by the claimed invention, unexpected
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`properties of the claimed invention, licenses showing industry respect for the
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`invention, and skepticism of skilled artisans before the invention. It is my
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`understanding that the “commercial success” of a product practicing the
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`claimed invention is relevant to the obviousness analysis only if it is attributable
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`to advantages from its use that were not available to the purchasing public
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`before the invention was made. Since I do not know the patent owner’s
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`arguments, if any, regarding the secondary considerations at this stage, I plan to
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`address them, if any, after the institution of the IPR proceeding.
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`27. From my experience in industry and academia working in the fields of image
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`and video processing, I believe a PHOSITA would have a bachelor of science
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`degree in electrical engineering, electrical and computer engineering, and/or
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`imaging science, or equivalent combined with five years of related experience,
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`or a graduate degree in such fields.
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`28. Although the following analysis cites to particular pages, lines, or paragraphs of
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`many of the references discussed, these citations are merely intended to assist
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`in understanding the various bases of, and prior art teachings used in, my
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`conclusions. They are not intended to be an exhaustive recitation of every page,
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`line number, or paragraph in which these teachings may be found. Similar
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`teachings or disclosures may be found at other pages, lines, or paragraphs, as
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`well as in other references, and it is to be understood that my opinions and
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`statements are made in view of all of the references and teachings I have
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`reviewed.
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`VI. CLAIM CONSTRUCTION
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`29.
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`I understand that claims are to be given their “broadest reasonable construction
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`in light of the specification.” I also understand that the constructions provided
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`to me by counsel for Petitioner are intended to aid this proceeding and shall
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`not be understood as waivers or admissions of any issues that may be raised in
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`any litigation, which requires different construction standards.
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`DECLARATION OF ELI S. SABER, PH.D. (EX. 1003)
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`30.
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`I reviewed the following claim constructions provided to me by my counsel
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`and supporting materials and agreed with these claim constructions. I also
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`interpret the other claim terms based on their plain and ordinary meanings.
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`31.
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`“manipulate the series of frame images, including zooming in or out
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`without changing resolution of the frame images” (Claims 1, 3):
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`Clarification: “manipulate the series of frame images into a manipulated series
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`of frame images, including zooming in or out without changing resolution of
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`the series of frame images.”
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`32.
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`“displaying and/or storing the manipulated series of frame images as an
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`output video image without changing resolution of the manipulated series of
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`frame images” (Claim 1, 3): “displaying and/or storing the manipulated
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`series of frame images as an output video image without further changing
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`resolution of the manipulated series of frame images.” If this claim element is
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`read to prohibit any resolution change of the manipulated series of frame
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`images (or in a manner substantially different than the proposed construction),
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`it would be impossible to “reduc[e] the resolution” as recited in Claims 1 and 3
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`or “manipulate the frame image to reduce pixilation” as recited in Claim 3.
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`“reduce pixilation” (Claim 3) Typographical error: should read “reduce
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`pixelation.”
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`“panning the image” (Claims 5, 12, 16): Plain and ordinary meaning:
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`scrolling the image. Ex. 1001 at 7:21.
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`
`33.
`
`34.
`
`
`
`
`
`
`
`
`
`35.
`
`36.
`
`37.
`
`“re-sizing the image” (Claims 5, 6, 10, 15, 16, 17): Plain and ordinary
`
`meaning: scaling the image. Ex. 1001 at 7:17, 6:26-30.
`
`“without changing a resolution of the output frame images” (Claim 7):
`
`Typo/Clarification: “without changing a resolution of the output video image.”
`
`“capturing a video image comprising the series of frame images in one
`
`instantaneous snapshot of a subject’s entire surface area without line-by-
`
`line scanning” (Claim 8): Clarification: capturing a video image comprising
`
`the series of frame images wherein each frame image is captured in one
`
`instantaneous snapshot (for example by using non-linear CCD or CMOS
`
`sensors ) without a mechanical raster line scanning process,. Ex. 1001 at Fig. 2;
`
`1:56-61, 2:14-30, 2:23-55, 6:16-20.
`
`38.
`
`“software programming unit” (claim 18). A processor running software that
`
`manipulates images from a connected camera and communicates with the
`
`camera. Ex. 1001 at 5:2-7.
`
`39.
`
`“miniaturized digital image sensing unit … comprising optics having an
`
`infinite focal length” (claim 18): As implicitly construed by the PTO: “a
`
`small camera.” During prosecution, the PTO Examiner exclusively cited to a
`
`picture of a document/object scanner in Ting as meeting this limitation. Ex.
`
`1002 at 19; Ex. 1011 at Fig. 3. The Applicant declined to contest the
`
`Examiner’s assessment of this claim element, apparently acquiescing to this
`
`implicit construction. Ex. 1002 at 30-40. For the purposes of this petition,
`
`
`17
`DECLARATION OF ELI S. SABER, PH.D. (EX. 1003)
`
`
`
`
`
`
`
`
`
`
`
`Petitioner adopts the PTO Examiner’s approach, treating any small camera as
`
`meeting this limitation.
`
`40.
`
`“digital imaging unit” (Claim 18): Lacks antecedent basis, but for the
`
`purposes of this petition, Petitioner interprets this term to mean “digital image
`
`sensing unit,” which has antecedent basis within the claim.
`
`41.
`
`“the processor” (as used in Claim 20): Lacks antecedent basis, but for the
`
`purposes of this petition, Petitioner interprets this term “processor” according
`
`to its plain and ordinary meaning.
`
`VII. INVALIDITY
`
`42.
`
`I have concluded that claims 1-10, 12-18, and 20 of the ’751 patent are invalid
`
`in view of prior art on the grounds listed in the table below:
`
`Ground Claims
`1
`1, 2, 18, 20
`
`
`Basis
`Anticipated by Morichika under § 102(b)
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`
`
`
`
`
`
`1, 2, 8, 9, 12, 13,
`
`Obvious under § 103(a) by Morichika alone
`
`16, 18, 20
`
`1- 5, 7-9, 12, 13, 16 Obvious under § 103(a) by Morichika in view of Hara
`
`1-5, 8, 9, 16, 18, 20 Obvious under § 103(a) by LeGall in view of Philips
`
`1-5, 7
`
`18, 20
`
`Obvious under § 103(a) by Novak in view of Hara
`
`Obvious under § 103(a) by Novak in view of Philips
`
`10, 14, 15, 17
`
`Obvious under § 103(a) by Morichika in view of
`
`Howell
`
`
`18
`DECLARATION OF ELI S. SABER, PH.D. (EX. 1003)
`
`
`
`
`
`8
`
`9
`
`6, 7, 10, 14, 15, 17 Obvious under § 103(a) by Morichika in view of Hara
`
`and further in view of Howell.
`
`6, 7, 10, 14, 15, 17 Obvious under § 103(a) by LeGall in view of Philips
`
`and further in view of Howell.
`
`10
`
`6, 7
`
`Obvious under § 103(a) by Novak in view of Hara
`
`and further in view of Howell.
`
`
`43. Counsel has informed me that because the ’751 patent has an effective filing
`
`date before March 16, 2013, pre-AIA §§ 102 and 103 apply to this petition and
`
`any resulting proceeding.
`
`44. Howell was issued on June 16, 1998; Hara was published on August 9, 2001;
`
`Philips was published in 2001; Novak was issued on July 4, 2006; and Morichika
`
`was published on April 14, 2005. Therefore, they constitute prior art to the ’751
`
`patent under pre-AIA 35 U.S.C. § 102(b). LeGall is prior art to the ’751 patent
`
`under pre-AIA 35 U.S.C. § 102(e) because it was filed on November 30, 2010
`
`and has an effective filing date of Dec. 10, 2004.
`
`A. Ground 1: Anticipated by Morichika under § 102(b)
`
`45. Claims 1, 2, 18, and 20 are anticipated by Morichika under pre-AIA 35 U.S.C. §
`
`102(b) as illustrated in the analyses and tables below. In the tables below (for this
`
`Ground and others), the claim language is copied on the left side; exemplary prior
`
`art disclosures and internal cross references are identified on the right side.
`
`
`
`
`
`
`
`
`19
`DECLARATION OF ELI S. SABER, PH.D. (EX. 1003)
`
`
`
`
`
`46. Claim 1 – [Preamble]
`
`1. [Preamble] A method of
`acquiring an image of a target
`to provide an output video
`image comprising a plurality of
`frame images, the method
`comprising:
`
`The preamble is not limiting. Even if the preamble
`were treated as limiting, however, Morichika discloses
`acquiring an image of a target. Ex. 1008 at Abstract.
`Morichika teaches displaying output on a “display
`device” such as a “PC monitor” via a “video signal.”
`Id. at [0038], [0039], [0057]; Figs. 1, 2. Further,
`Morichika discloses that “VRAM [Video RAM] 26
`continually stores the image data for display” and
`expressly contemplates a plurality of “to-be-
`projected images.” Id. at [0039], [0040].
`
`
`
`47. A PHOSITA would have understood the combination of Morichika’s disclosures
`
`of a “video signal,” “to-be-projected images,” and continual storage of image data
`
`in VRAM “for display” to necessarily disclose the display of a sequence of frame
`
`images on a computer monitor and/or a projector. Ex. 1008 at [0040] (emphasis
`
`added), Fig. 1; see also [0045] (“predetermined photographing mode”). Although
`
`Morichika does not expressly disclose the frame rate of the displayed sequence of
`
`frame images, PHOSITA would have considered the sequence of images
`
`transmitted as a “video signal” to be an output video image.
`
`48. Claim 1 – Element 1[A]
`
`[A] connecting a slave digital
`image sensing unit to a master
`personal processor, the master
`personal processor receiving a
`series of frame images from
`the slave digital image sensing
`unit;
`
`Morichika discloses a personal computer connected
`to a camera device with a USB cable, wherein a CPU
`of the PC “functions as image input means … and
`control means.” Ex. 1008 at [0028], [0038] [0041],
`[0045]; Figs. 1 (below), 2.
`
`
`
`
`
`
`
`
`
`20
`DECLARATION OF ELI S. SABER, PH.D. (EX. 1003)
`
`
`
`
`
`
`The PC is disclosed to process a plurality of “to-be-
`projected images” acquired from the camera device.
`Id. at [0040] (emphasis added); see also [0045]
`(“predetermined photographing mode”).
`
`
`
`49. Morichika inherently discloses “receiving a series of frame images video” because a
`
`PHOSITA would have necessarily found the “to-be-projected images” to be
`
`received from the camera device, as the camera device is the only source of “real
`
`time” image input disclosed in the reference. Ex. 1008 at [0040], [0065]. See also
`
`discussion of Claim 1 [Preamble], above.
`
`50. Claim 1 – Element 1[B]
`
`[B] using the master personal
`processor to manipulate the
`series of frame images,
`including zooming in or out
`without changing resolution of
`the frame images;
`
`Morichika teaches using the PC to zoom in on a
`region Q of an original image G2 and displaying the
`zoomed-in region as image G4 on a display. Ex.
`1008 at [0058]-[0064]; Figs. 10, 11A-11C.
`
`
`
`
`
`
`
`
`21
`DECLARATION OF ELI S. SABER, PH.D. (EX. 1003)
`
`
`
`
`
`
`As shown above, the resolution (size) of original
`image G2 is not altered even as the zoomed-in
`image G4 is displayed. Id.
`
`Morichika teaches that “in a case where the
`resolution … of the camera device … exceeds the
`resolution of the projector,” the resolution of the
`captured image is reduced. Ex. 1008 at [0064],
`[0062]; Figs. 11A-11C.
`
`
`
`51. Claim 1 – Element 1[C]
`
`[C] in the case of the
`manipulated series of frame
`images having a higher
`resolution than a reference
`resolution, reducing the
`resolution of each of the
`manipulated series of frame
`images to that of the reference
`resolution;
`
`
`
`
`
`
`
`
`22
`DECLARATION OF ELI S. SABER, PH.D. (EX. 1003)
`
`
`
`
`
`
`As shown above, even where zooming does not
`occur, Morichika teaches reducing the resolution of
`image data to fit on a display. Id. at Figs. 9A-9C, 7;
`[0051]–[0057].
`
`Morichika further teaches that the resolution reduced
`images G3 (and G4) are displayed without further
`resolution changes: “With the calculated
`magnification … the data of the photographed
`image G2 is reduced (step SB7). Namely, the
`resolution of the photographed image G2 is
`reduced. The reduced image (display image)
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