UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`Before the Honorable Thomas B. Pender
`Administrative Law Judge
`
`
`
`
`
`Investigation No. 337-TA-1045
`
`In the Matter of
`
`CERTAIN DOCUMENT CAMERAS AND
`SOFTWARE FOR USE THEREWITH
`
`
`
`
`
`COMPLAINANT PATHWAY INNOVATIONS & TECHNOLOGIES, INC.’S
`REPLY CLAIM CONSTRUCTION BRIEF
`
`
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`I.
`II.
`
`TABLE OF CONTENTS
`INTRODUCTION ............................................................................................................... 1
`DISPUTED TERMS OF THE ‘751 PATENT .................................................................... 1
`1.
`“reference resolution” (Claims 1, 3, 8, and 18) .......................................... 1
`2.
`“slave digital image sensing unit” (Claims 1 and 3) .................................. 3
`3.
`“master personal processor” (Claims 1 and 3) ........................................... 4
`4.
`“(displaying and/or storing …) without changing resolution of the
`manipulated series of frame images (Claims 1 and 3) ............................... 5
`“zooming in or out without changing resolution of the frame images”
`(Claim 1); “zooming in or out (in real time) while maintaining a
`resolution of a series of (real time) images” (Claim 18) ............................ 6
`“optics having an infinite focal length” (Claim 18) ................................... 7
`“in one instantaneous snapshot of” (Claims 8-17) ..................................... 9
`miniaturized” (Claim 18) ......................................................................... 10
`“external” (Claim 8) ................................................................................. 12
`“the output frame images” (Claims 10,12,13 and 14) .............................. 13
`
`6.
`7.
`8.
`9.
`10.
`
`5.
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`
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`
`
`
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`TABLE OF AUTHORITIES
`
`CASES
`Bose Corp. v. JBL, Inc.,
`274 F.3d 1354, 1359 (Fed. Cir. 2001) ....................................................................... 13
`Certain Opaque Polymers, USITC Inv. No. 337-TA-883,
`Order No. 13 (Jan. 13, 2014), 2014 WL 31478 at *10 ................................................... 10, 11
`Depuy Orthopaedics, Inc. v. Orthopaedic Hosp.,
`2016 WL 96164, at *5 (N.D. Ind. Jan. 8, 2016) ..................................................................... 2
`Energizer Holdings, Inc. v. International Trade Commission,
`No. 435 F.3d 1366 (Fed. Cir. 2006) ................................................................................ 13, 14
`Exxon Research & Eng’g Co. v. United States,
`265 F.3d 1371, 1375 (Fed. Cir. 2001)................................................................................... 11
`Halliburton Energy Services, Inc. v. M-I LLC,
`514 F.3d 1244, 1249-59 (Fed. Cir. 2008) ....................................................................... 10, 11
`Howmedica Osteonics Corp. v. Tranquil Prospects, Ltd.,
`401 F.3d 1367, 1371 (Fed. Cir.2005).................................................................................... 13
`Nautilus, Inc. v. Biosig Instruments, Inc.,
`134 S.Ct. 2120 (2014) ........................................................................................................... 10
`Phillips v. AWH Corp.,
`415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) ................................................................ 2, 7
`
`ii
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`I.
`
`INTRODUCTION
`Pathway Innovations & Technologies, Inc. (“Pathway”) submits the following reply in
`support of its proposed claim constructions. The Respondents’ constructions suffer from common
`flaws: (i) improperly limiting claims to only certain disclosed embodiments; (ii) ignoring
`surrounding claim language; (iii) reliance on extrinsic witness testimony that conflicts with the
`intrinsic record; and (iv) ignoring the plain meaning of non-technical terms in an effort to sow
`ambiguity where none exists. Claims are presumed valid and indefiniteness must be proven by
`clear and convincing evidence. Respondents fail to satisfy the demanding legal requirements to
`establish that the four claim elements they contend are indefinite are indiscernible. Pathway thus
`respectfully requests that the Commission adopt its proposed claim constructions.
`DISPUTED TERMS OF THE ‘751 PATENT
`II.
`“reference resolution” (Claims 1, 3, 8, and 18)
`1.
`Pathway’s Proposed Construction
`Respondents’ Proposed Construction
`Resolution at which a frame image will be
`Resolution of the display
`maintained or output
`Respondents’ proposed construction is wrong, because it is only a subset of the proper
`
`construction offered by Pathway. Pathway’s proposed construction of “reference resolution”
`includes within its scope Respondents’ construction (and thus is not inconsistent with
`Respondents’ proposed construction), however the claim language itself does not limit “reference
`resolution” to only the resolution of a display. As noted in its moving brief, Pathway’s proposed
`construction is expressly supported by the ‘751 patent in two separate locations. First, it is
`described as “receiving a series of frame images from the video camera, using a processor to
`manipulate the series of frame images, which includes determining a reference resolution for
`providing output frame images, and displaying and/or storing the manipulated series of frame
`images ….” ‘751 patent at col. 3:45-50 (emphasis added).
`
`Second, it is described as “determining a reference resolution at which each frame image
`of the series of frame images will be maintained and storing the reference resolution in a non-
`transitory medium. A video image comprising a series of frame images is captured and an external
`
`1
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`processor is used to compare a resolution of each frame image of the video image with the
`reference resolution and the resolution of each frame image is adjusted to correspond to the
`reference resolution.” Id. at col. 4:14-22 (emphasis added). In short, the specification explains the
`“reference resolution” can be a resolution for maintaining (i.e. storing), or for displaying. It need
`not be limited to displaying.
`
`Respondents’ citation to the ‘751 patent at col. 6:16-20 and Figure 5 of the ‘751 patent
`actually supports Pathway’s construction. This portion of the specification and Figure 5 explicitly
`refer to “resolution of a display screen” and “detect screen resolution.” The specification does not
`use the language “reference resolution” there, indicating that the two types of resolution (display
`resolution and reference resolution) are not the same. Clearly, the Applicant knew how to use the
`language “display resolution” and instead chose to use the broader claim language “reference
`resolution” in the claims, instead of “display resolution.” Respondents’ proposed construction is
`incorrect because it unnecessarily limits construction to only one of the described embodiments
`of the reference resolution. Examples or embodiments discussed in the specification are not to be
`read into the claims as limitations. Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005)
`(en banc). Pathway’s proposed construction does not exclude the examples that Respondents cite
`in their brief, while the Respondents’ construction is narrower than the explicit claim language of
`the claims and excludes the embodiments that use “reference resolution” in the context of storing
`and not to displaying.
`
`Respondents’ reliance on a failed inter partes review is misplaced. First, the Patent Trial
`and Appeals Board (PTAB) at the United States Patent & Trademark Office did not perform any
`claim construction for the ‘751 patent. Second, statements made by the PTAB in an inter partes
`review are often considered as extrinsic evidence that cannot be used to contradict the intrinsic
`record. See, e.g., Depuy Orthopaedics, Inc. v. Orthopaedic Hosp., 2016 WL 96164, at *5 (N.D.
`Ind. Jan. 8, 2016) (treated the PTAB’s claim construction decision as extrinsic evidence, to which
`the court “owes no deference.”). Moreover, the PTAB statements regarding “reference
`resolution,” which were merely made in the context of “id est,” are not inconsistent with
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`Pathway’s construction. As explained above, the display resolution is one example of the broader
`term “reference resolution.” Nothing in the inter partes review contradicts this conclusion. It
`simply provides display resolution as a non-exhaustive example of the scope of reference
`resolution. That is, reference resolution could also refer to storing.
`
`For at least these reasons, Pathway’s proposed construction is correct and should be
`adopted.
`
` “slave digital image sensing unit” (Claims 1 and 3)
`2.
`Pathway’s Proposed Construction
`Respondents’ Proposed Construction
`digital
`image sensing unit capable of
`A digital image sensing unit whose image
`implementing primary functions through the
`sensing
`functionality
`is controlled and
`commands of the master personal processor
`implemented by a separate master device
`Respondents’ brief confuses Pathway’s position. Pathway is not arguing that the digital
`
`image sensing unit (DISU) controls the processor. Rather, Pathway explains, and the ‘751 patent
`specification describes, that the DISU is capable of having its primary functions controlled by
`commands from the master personal processor. Pathway’s proposed construction—“digital image
`sensing unit capable of implementing primary functions through the commands of the master
`personal processor”—tracks the language of the ‘751 patent. Referring to col. 4:66 to col. 5:13,
`as well as Fig. 3a of the ‘751 patent, the DISU 302 and the Software Programming Unit (SPU)
`303, executing on a processor (not shown) of the Personal Computer (PC) 301, have a slave/master
`relationship. As the master, the SPU 303 executed within the PC “controls and implements the
`primary functions of the [system] in software instruction code, while communicating with [the
`DISU].” Id. That is, the master personal processor of the PC “commands” the slave digital image
`sensing unit. This is consistent with the ‘751 patent’s statement that the “present invention
`offloads zooming and other optical functions from the lens assembly to the integrated computer
`software processing unit ….” Id. at col. 8: 12-15 (emphasis added). Because Pathway’s
`construction is supported by the intrinsic evidence, there is no need to look at extrinsic evidence.
`
`Respondents’ efforts to impose an added limitation that the DISU and the master processor
`be “separate devices” is clearly an effort to create a non-infringement position by
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`adding/importing limitations to the claim language. The ‘751 patent indicates in multiple locations
`that the DISU and the processor can be in the same housing—and thus need not be “separate
`devices” as argued by Respondents. See id. at col 4:1-4 (“The disclosed method will work whether
`the processor is housed in an external personal computer or if it is housed in an apparatus that
`contains all of the disclosed components.”); col. 4: 38-40 (“The processor of the apparatus can be
`housed in the folding suspension arm or in an external personal computer.” Adding additional
`limitations to the claim is improper in the first instance, and in particular where it excludes
`embodiments described in the specification.
`
`No extrinsic evidence is necessary, and the intrinsic record adequately explains the
`meaning of the master/slave relationship. It does not require separate components, only the
`capability of the processor to execute software to control the primary functions of the DISU.
`
`For at least these reasons, Pathway’s proposed construction is correct and should be
`adopted.
`
`“master personal processor” (Claims 1 and 3)
`3.
`Pathway’s Proposed Construction
`Respondents’ Proposed Construction
`personal processor capable of executing
`No construction necessary
`software instruction code to control and
`implement
`primary
`functions while
`communicating with a digital image sensing
`unit
`
`Consistent with the definition of the slave digital image sensing unit, the term “master
`
`personal processor” is a “personal processor capable of executing software instruction code to
`control and implement primary functions while communicating with a digital image sensing unit.”
`As noted above, this language tracks that of the ‘751 patent. Again, referring to col. 4:66 to col.
`5:13, as well as Fig. 3a of the ‘751 patent, the DISU 302 and the SPU 303, executing on a
`processor (not shown) of the PC 301, have a slave/master relationship. As the master, the SPU
`303 executed within the PC “controls and implements the primary functions of the [system] in
`software instruction code, while communicating with [the DISU].” Id. Accordingly, Pathway’s
`construction is fully supported by the intrinsic evidence. The Respondents’ arguments to the
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`contrary are simply a misunderstanding of Pathway’s construction, and the plain language of the
`specification. Respondents do not offer a construction for this term.
`
`For at least these reasons, Pathway’s proposed construction is correct and should be
`adopted.
`
`4.
`
`“(displaying and/or storing …) without changing resolution of the
`manipulated series of frame images (Claims 1 and 3)
`Pathway’s Proposed Construction
`Respondents’ Proposed Construction
`without changing the resolution of series of
`The number of pixels in the displayed and/or
`frame images resulting from the manipulation
`stored frame images is the same as the number
`by the master personal processor1
`of pixels in the manipulated series of frame
`images
`Respondents’ arguments ignore the surrounding claim language, and fail to distinguish
`
`between frame images (frame images obtained from the DISU) and manipulated frame images
`(the results of a manipulation process). The surrounding claim language “the manipulated series
`of frame images as an output video image” makes clear that the step of displaying or storing is
`only referring to manipulated series of frame images, and not to frame images, generally. See,
`e.g., claim 1 (“displaying and/or storing the manipulated series of frame images as an output
`video image without changing resolution of the manipulated series of frame images,”)
`(emphasis added), Claim 3 (“displaying and/or storing the manipulated series of frame images as
`an output video image without changing the resolution of the manipulated series of frame
`images”). The syntax here indicates that “the manipulated series of frame images” refers to the
`manipulated series of frame images previously set forth in the claim. Respondents proposed
`construction instead offers a construction that includes just “frame images,” which is rewriting
`the claim. “Frame images” are the input received from the DISU. See, e.g., claim 1 (“receiving a
`series of frame images from the slave digital image sensing unit.”). This is different from
`manipulated frame images, which are the only type of frame images that this claim step is
`describing. Respondents’ argument fails to recognize that the number of pixels displayed or stored
`
`
`1 Note, Respondents’ identification of claim terms to construe did not include (displaying and/or
`storing) and was only a parenthetical, and not a term to be construed.
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`from a frame image can differ from the number of pixels in the manipulated series of frame
`images, without changing the number of pixels in the manipulated series of frame images.
`
`For at least these reasons, Pathway’s proposed construction is correct and should be
`adopted.
`
`5.
`
`“zooming in or out without changing resolution of the frame images”
`(Claim 1); “zooming in or out (in real time) while maintaining a
`resolution of a series of (real time) images” (Claim 18)
`Pathway’s Proposed Construction
`Respondents’ Proposed Construction
`Computing a manipulated series of frame
`The number of pixels in the frame image
`images such that each said manipulated frame
`before the zooming manipulation is the same
`image has higher or lower resolution than that
`as the number of pixels in the frame image
`of
`the corresponding portion of
`the
`after the zooming manipulation
`corresponding acquired frame image, without
`changing resolution of the acquired frame
`images
`Respondents’ argument at p. 18 of their opening brief, “the resolution of the image before
`
`zooming manipulation is the same at the resolution of the image after the zooming manipulation”
`demonstrates the fallacy of their proposed construction. The express claim language recognizes
`that zooming may result in reduction of resolution if the real-time images have a higher resolution
`than the reference resolution “in the case of the resolution of the series of real-time images having
`a higher resolution than a reference resolution, reducing the resolution of each of the series of
`real-time images to that of the reference resolution.” Adopting Respondents’ construction would
`rewrite the claim and create an internal inconsistency where the resolution adjustment to the
`reference resolution would be impossible.
`
`Respondents’ proposed construction creates this internal inconsistency because it
`improperly confuses frame images with manipulated frame images. The claim language, as well
`as the flow chart at Fig. 5 and the ‘751 patent at col. 7:7-19 all describe zooming through
`computation of a manipulated series of frame images, while the resolution of the acquired frame
`images from the digital image sensor remain unchanged, and are instead streamed live to the
`display. See id. at col. 4:29-33 (“The document imaging apparatus also includes a processor that
`is coupled to the digital imaging unit and that is configured to cause the digital imaging unit to
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`zoom in or zoom out in real time while maintaining a resolution value of stored images constant.”)
`
`As noted in Pathway’s opening brief, the distinction between the acquired real-time frame
`images and the manipulated frame images is spelled out in the specification and the Figures. As
`described in the ‘751 patent at col. 7:6-19, and in the flow chart at Fig. 5, a live video bitmap
`stream is rendered on screen at step 512. This video bitmap reflects the resolution of the acquired
`frame images from the slave digital image sensing unit. The next described in the system flow is
`the zooming in or out, referred to as a user interface scaling event, 514a. As the specification
`provides, “at decision step 514a the system determines whether the user has selected a scaling
`(resizing) event. If the user has selected a scaling event, each video frame is enlarged or reduced
`at operation step 516a by the requested amount.” ‘751 patent at col. 7:15-19. This scaling event
`occurs after the acquired frame images (from the digital image sensing unit) forming the live
`bitmap stream is rendered on screen. Thus, the acquired frame images resolution is not changed,
`since the acquired frame images are displayed live.
`
`For at least these reasons, Pathway’s proposed construction is correct and should be
`adopted.
`
`“optics having an infinite focal length” (Claim 18)
`6.
`Pathway’s Proposed Construction
`Respondents’ Proposed Construction
`Focal length ensuring objects appearing under
`Lens with zero curvature
`the facing-down digital image sensing unit
`appear focused and sharp even when the
`digital image sensing unit is substantially far
`away
`
`Respondents’ entire argument for the term “optics having an infinite focal length” relies
`
`on extrinsic evidence that conflicts with the intrinsic record. This flies squarely in the face of
`hierarchy for claim construction established by the Federal Circuit in Phillips, 415 F3d at 1315—
`the intrinsic record trumps extrinsic evidence.
`
`Pathway’s proposed construction is supported by the ‘751 patent. In describing the optical
`lens the ‘751 patent states: “The depth of field of the DISU 302 lens however has a wide range of
`above 100 cm, ensuring objects appearing under the facing-down DISU 302 appear focused and
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`sharp even when the DISU is substantially far away.” ‘751 patent at col. 5:45-48. At col. 7:62, the
`‘751 patent refers to an “infinite focal length digital camera.” In other words, the ‘751 patent is
`describing infinity focus as understood in the context of photography. Infinity focus refers to the
`ability to form a focused and sharp image even when the object is substantially, i.e., infinitely, far
`away from the DISU. See Rodriguez Decl. at ¶ 6, et seq.
`
`Respondents’ offered construction –“lens with zero curvature” not only lacks support in
`the ‘751 patent, it is in conflict with the very examples provided in its specification. For example,
`the specification cites to optical components such as one might find in a camera equipped mobile
`telephone or an infinite focal length digital camera. See ‘751 patent at col. 7: 58-62. Each of these
`devices is capable of focusing on an image at “infinity” as well as images much closer than
`infinity. A lens with zero curvature, while having the ability to focus “at infinity” lacks the ability
`for close-up focus. The ‘751 patent describes the object of the invention as the ability to use the
`claimed apparatus as a document camera to image documents and things placed below the camera
`stand. A lens with zero curvature precludes such close-up focus as is necessary for the intended
`use of the invention. See Rodriguez Decl. at ¶ 7.
`
`In addition to the intrinsic support for Pathway’s construction, the extrinsic evidence relied
`upon by Respondents’ expert, Dr. Madisetti, supports Pathway’s construction. As noted above,
`the specification identifies standard digital cameras and camera phones as examples of optics
`having an infinite focal length. Dr. Madisetti agrees that such examples of optics satisfy the
`specification description of “ensuring objects appearing under the facing-down digital image
`sensing unit appear focused and sharp even when the digital image sensing unit is substantially
`far away.” Neither of these exemplary optics have lenses with zero curvature. It is worth noting
`that Dr. Madisetti is clearly confused in his positions concerning this topic. He claims that a 35mm
`camera refers to the focal length of the camera. This is an obvious error, as “35 mm” refers to the
`135 film format typically used in such cameras, and not to their focal length. See, e.g.,
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`https://en.wikipedia.org/wiki/35mm_format.
`See Rodriguez Decl. at ¶ 8. 35 mm refers to the
`width of the film (shown right) not a focal
`length. Respondents are improperly relying on
`extrinsic evidence (outside the intrinsic record)
`to supplant the meaning supplied by the
`intrinsic record.
`
`For at least these reasons, Pathway’s proposed construction is correct and should be
`adopted.
`
`“in one instantaneous snapshot of” (Claims 8-17)
`7.
`Pathway’s Proposed Construction
`Respondents’ Proposed Construction
`Such that each frame image captures
`Indefinite
`Pathway’s proposed construction—“such that each frame image captures”—is supported
`
`in the ‘751 patent at col. 6:16-20: “Each 2 mega-pixel or above frame [] image is captured in
`one instantaneous snapshot of the entire surface area, without the need of line by line scanning,
`and has a resolution of at least 6x the resolution of a VGA display often found in projectors.”
`Emphasis added. There, the ‘751 patent is explaining that “each frame image” is captured in one
`instantaneous snapshot (via a camera) and not by line by line scanning (via a scanner). In other
`words, each frame image (within a video, which is a series of frame images) is a snapshot at an
`instance in time. A video comprises a series of frame images (see, e.g., id. at col. 3:45-46; col.
`4:17-18) taken at continuous and successive instances of time (see id. at col. 5:40-41). For
`example, a video captured at thirty (30) frames per second means that each frame image within
`the video is a snapshot captured at every 1/30th of a second interval. The ‘751 patent explains this
`in contrast to line-by-line scanning. This is the common sense reading of the claim language in
`light of the specification. Respondents’ arguments demand suspension of common sense.
`
`“In one instantaneous snapshot of” is not indefinite. “To overcome the presumption of
`patent validity, a challenger must show by clear and convincing evidence that ‘a skilled artisan
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`could not discern the boundaries of the claim based on the claim language, the specification, and
`the prosecution history, as well as her knowledge of the relevant art area.” Certain Opaque
`Polymers, USITC Inv. No. 337-TA-883, Order No. 13 (Jan. 13, 2014), 2014 WL 31478 at *10
`(quoting Halliburton Energy Services, Inc. v. M-I LLC, 514 F.3d 1244, 1249-59 (Fed. Cir. 2008);
`see also Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014) (“… we hold that a patent
`is invalid for indefiniteness if its claims, read in light of the specification delineating the patent,
`and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about
`the scope of the invention.”). When viewed in light of the ‘751 patent’s specification, the phrase
`can be easily construed to inform those skilled in the art about the scope of the invention with
`reasonable certainty. As noted above, one instantaneous snapshot refers to a particular frame
`image, i.e., each frame image of the series of images making up the video is an instantaneous
`snapshot. ‘751 patent at col. 6:16-20. Thus, in light of the intrinsic evidence, “capturing … in one
`instantaneous snapshot” refers to “such that each frame image captures” “a subject’s entire surface
`area.” The claim scope is readily ascertainable when Pathway’s construction is applied—a
`snapshot of each frame image of the series of frame images in a video. See Rodriguez Decl. at ¶
`10. This construction is common sense, is supported by the specification and surrounding claim
`language, and does not rewrite the claims.
`
`For at least these reasons, Pathway’s proposed construction is correct and should be
`adopted.
`
`miniaturized” (Claim 18)
`8.
`Respondents’ Proposed Construction
`Pathway’s Proposed Construction
`Indefinite
`Plain and ordinary meaning
`As included in claim 18, “miniaturized” should be given its plain and ordinary meaning.
`
`Miniaturized is a common word in the English language and requires no special construction for
`one of ordinary skill in the art to understand the metes and bounds of the claim. Because the plain
`and ordinary meaning of this phrase is clear when viewed in light of the specification and claims,
`the Commission need not provide a construction.
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`Under 35 U.S.C. § 112(b), “miniaturized” is not indefinite. Again, “[t]o overcome the
`
`presumption of patent validity, a challenger must show by clear and convincing evidence that ‘a
`skilled artisan could not discern the boundaries of the claim based on the claim language, the
`specification, and the prosecution history, as well as her knowledge of the relevant art area.”
`Certain Opaque Polymers, USITC Inv. No. 337-TA-883, Order No. 13, 2014 WL 31478, at *10
`(quoting Halliburton Energy Services, Inc. v. M-I LLC, 514 F.3d 1244, 1249-59 (Fed. Cir. 2008).
`Furthermore, a “claim is not indefinite merely because it poses a difficult issue of claim
`construction.” Id. (quoting Exxon Research & Eng’g Co. v. United States, 265 F.3d 1371, 1375
`(Fed. Cir. 2001).
`Here, claim 18 of the ‘751 patent refers to a “miniaturized digital imaging sensing unit,”
`and, importantly, the specification of the ‘751 patent expressly discloses a “miniaturized Digital
`Imaging Sensing Unit (DISU) as comprising a miniaturized optical lens and digital image sensor
`– even going as far to describe an embodiment of said “miniaturized” DISU in terms of size. ‘751
`patent at col. 5:5-6; 5:48-54. Particularly, the ‘751 patent refers to DISU by size in that it can fit
`into a DISU housing as shown in FIGS. 3a-3c as small as only 2.5 cm x 5 cm x 20 cm and in some
`embodiments even smaller.” Id. at col. 5:51-54. In other words, the miniaturized DISU 302 can
`fit within the suspension arm 306 of the document camera, thereby making it “highly portable.”
`See id. at col. 6: 3-10. The ‘751 patent clearly sets an objective standard by which to define the
`outer bounds of a miniaturized digital image sensing unit.
`In light of the specification, the term “miniaturized” in the context of surrounding claim
`language is discernible and provides a standard for measuring that term of degree. See Rodriguez
`Decl. at ¶ 9, et seq. Even Respondents’ brief admits that when an example is provided to illustrate
`a term of degree, the term is not indefinite. See Respondents’ opening brief at 24. See Certain
`Opaque Polymers, USITC Inv. No. 337-TA-883, Order No. 13, 2014 WL 31478, at *10 (quoting
`Exxon Research & Eng’g Co. v. United States, 265 F.3d 1371, 1373 (Fed. Cir. 2001) (“[A] claim
`is definite ‘if the meaning of the claim is discernible, even though…the conclusions maybe be one
`over which reasonable persons will disagree.’”).
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`Respondents’ Proposed Construction
`Indefinite
`
`For at least these reasons, “miniaturized” should be construed to have its plain and ordinary
`
`meaning and should be found to be definite.
`“external” (Claim 8)
`9.
`Pathway’s Proposed Construction
`Plain and ordinary meaning
`
`Alternatively, “external processor” of claim 8
`can be construed as “personal computer
`processor”
`Under 35 U.S.C. § 112, “external” is not indefinite. Respondents argue that one of ordinary
`
`skill in the art cannot determine with reasonable certainty what the reference point of “external”
`is. Respondents’ Brief at 28. In arguing this point, Respondents have overlooked the clear
`guidance set forth in the ‘751 patent. At col. 4: 1-4, the ‘751 patent explicitly states: “[t]he
`disclosed method will work whether the processor is housed in an external personal computer
`or if it is housed in an apparatus that contains all of the disclosed components.” Emphasis added.
`There, the ‘751 patent is clearly referring to using an “external processor” as recited in claim 8.
`Moreover, that external processor is described as performing a method, which is again the subject
`matter of claim 8. There, the reference point is clearly the “apparatus,” e.g., the document camera
`that is capturing the video image. Thus, the processor of claim 8 is external to the device or
`component capturing the video image. This is particularly evident in claim 9, which states that the
`“external processor is housed in a personal computer.”
`
`The ‘751 patent also explains that the “processor of the apparatus can be housed in the
`folding suspension arm or in an external personal computer.” ‘751 patent at col. 4:1-4; 38-39. As
`it relates to a processor, the specification also discloses that a “…an external processor is used to
`compare a resolution of each frame image of the video image with the reference resolution…”
`‘751 patent, at 4:18-21. Accordingly, one of ordinary skill in the art would find the meaning of
`“external” to be discernible, based on the disclosures in the specification.
`
`Thus, “external” should be given its plain and ordinary meaning and is not indefinite under
`35 U.S.C. § 112(b).
`
`12
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`AVER EXHIBIT 1011
`Page 15 of 23
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`Alternatively, if a construction is deemed necessary by the Commission, the term “external
`
`processor” can be construed as a “processor external to a digital image sensing unit,” which is
`amply supported by the above-noted intrinsic evidence.
`“the output frame images” (Claims 10,12,13 and 14)
`10.
`Pathway’s Proposed Construction
`Respondents’ Proposed Construction
`Plain and ordinary meaning
`Indefinite
`Respondents’ argument that the lack of an express recitation of “the output frame images”
`
`in claim 8 renders all dependent claims (10, 12, 13, and 14) indefinite. The Federal Circuit has
`ruled otherwise in Energizer Holdings, Inc. v. International Trade Commission, No. 435 F.3d
`1366 (Fed. Cir. 2006). In Energizer Holdings the Federal Circuit reversed the ITC’s holding of