Trials@uspto.gov
`571-272-7822
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` Paper No. 8
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` Entered: September 6, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`QOMO HITEVISION, LLC,
`Petitioner,
`
`v.
`
`PATHWAY INNOVATIONS AND TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00661
`Patent 8,508,751 B1
`____________
`
`Before THOMAS L. GIANNETTI, PETER P. CHEN, and
`GARTH D. BAER, Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`571-272-7822
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` Paper No. 8
`
` Entered: September 6, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`QOMO HITEVISION, LLC,
`Petitioner,
`
`v.
`
`PATHWAY INNOVATIONS AND TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00661
`Patent 8,508,751 B1
`____________
`
`Before THOMAS L. GIANNETTI, PETER P. CHEN, and
`GARTH D. BAER, Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`Qomo Hitevision, LLC (“Petitioner”) filed a Corrected Petition (Paper
`4, “Pet.”) requesting inter partes review of claims 1–10, 12–18, and 20 of
`U.S. Patent No. 8,508,751 (Ex. 1001, “the ’751 patent”). Patent Owner,
`Pathway Innovations and Technologies, Inc. (“Patent Owner”), filed a
`Preliminary Response. Paper 7 (“Prelim. Resp.”).
`Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be
`
`instituted unless “the information presented in the petition . . . and any
`response . . . shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” For the reasons set forth below, we conclude that there is a
`reasonable likelihood that Petitioner would prevail in establishing the
`unpatentability of claims 1, 2, 18, and 20. Therefore, we institute inter
`partes review of claims 1, 2, 18, and 20. We conclude that the information
`presented in the Petition does not establish a reasonable likelihood that
`Petitioner would prevail in showing challenged claims 3–10 and 12–17
`unpatentable.
`
`I. BACKGROUND
`A. RELATED PROCEEDINGS
`The parties assert the ’751 patent is involved in pending International
`Trade Commission Investigation No. 337-TA-967. Pet. 2; Prelim. Resp. 2.
`Petitioner asserts district court cases Pathway Innovations & Technologies,
`Inc. v. Qomo Hitevision, LLC. & Recordex USA, Inc., Nos. 3:15-cv-01536,
`3:15-cv-01540 (S.D. Cal., filed July 13, 2015) (stayed pending resolution of
`the ITC investigation) are also related to this matter. Pet. 2.
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`B. THE ’751 PATENT
`The ’751 patent is titled “Capturing Real-Time Video with Zooming
`Capability and Scanning High Resolution Still Images of Documents Using
`the Same Apparatus.” The ’751 patent describes capturing, manipulating,
`and outputting digital images to storage or a display. Ex. 1001, Abstract,
`Figure 3a of the ’751 patent is reproduced below:
`
`
`Figure 3a depicts a “Document Imaging System 300 [that] is fully integrated
`with a Personal Computing Device.” Id. at 4:66–67. The ’751 patent
`describes the process as “receiving a series of frame images from a video
`camera, using a processor to manipulate the series of frame images, which
`includes determining a reference resolution for providing output frame
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`images, and displaying and/or storing the manipulated series of frame
`images as the output video image without ever changing a resolution of the
`output frame images.” Id. at 3:43–51.
`C. CHALLENGED CLAIMS
`Claim 1 of the ’751 patent (reproduced below) is illustrative of the
`
`claimed subject matter.
`1. A method of acquiring an image of a target to provide an
`output video image comprising a plurality of frame images, the
`method comprising:
`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;
`using the master personal processor to manipulate the series of
`frame images, including zooming in or out without changing
`resolution of the frame images;
`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;
`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,
`wherein the slave digital image sensing unit is removably
`connected to the master personal processor via a master
`personal processor port.
`Ex. 1001, 8:46–65.
`
`D. ASSERTED PRIOR ART
`The Petition relies on the following prior art references, as well as a
`supporting Declaration from Eli S. Saber, Ph.D. (Ex. 1003): U.S. Patent No.
`8,243,171 B2 (issued Aug. 14, 2012) (Ex. 1004, “LeGall”); Manual for
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`Philips USB PC Camera PCVC 750K (2001) (Ex. 1005, “Philips”); U.S.
`Patent No. 7,071,968 B2 (issued July 4, 2006) (Ex. 1006, “Novak”); U.S.
`Patent Pub. No. 2001/0012051 A1 (published Aug. 9, 2001) (Ex. 1007,
`“Hara”); U.S. Patent Pub. No. 2005/0078052 A1 (published Apr. 14, 2005)
`(Ex. 1008, “Morichika”); and U.S. Patent No. 5,767,897 (issued June 16,
`1998) (Ex. 1009, “Howell”).
`
`
`E. ASSERTED GROUNDS OF UNPATENTABILITY
`Petitioner asserts the following grounds of unpatentability. Pet. 3–4.
`Reference(s)
`Basis
`Challenged Claims
`Morichika
`§ 102(b)
`1, 2, 18, and 20
`Morichika
`§ 103(a)
`1, 2, 8, 9, 12, 13, 16, 18, and 20
`Morichika and Hara
`§ 103(a)
`1–5, 7–9, 12, 13, and 16
`LeGall and Philips
`§ 103(a)
`1–5, 8, 9, 16, 18, and 20
`Novak and Hara
`§ 103(a)
`1–5 and 7
`Novak and Philips
`§ 103(a)
`18 and 20
`Morichika and Howell
`§ 103(a)
`10, 14, 15, and 17
`Morichika, Hara, and Howell § 103(a)
`6, 7, 10, 14, 15, and 17
`LeGall, Philips, and Howell
`§ 103(a)
`6, 7, 10, 14, 15, and 17
`Novak, Hara, and Howell
`§ 103(a)
`6 and 7
`
`II. ANALYSIS
`A. PATENT OWNER’S CHALLENGE TO PETITIONER’S EXPERT
`Patent Owner argues that Dr. Saber’s declaration should not be given
`any weight because Petitioner failed to establish that Dr. Saber is a person of
`ordinary skill in the relevant art. PO Resp. 8–9. Although Patent Owner
`recognizes Dr. Saber’s “practical experience . . . in document scanners and
`printers during his time at Xerox,” Patent Owner challenges Dr. Saber’s
`alleged lack of specific experience with “capturing real-time, high-resolution
`zoomable, video in portable document cameras.” PO Resp. 9. Patent
`Owner’s argument is unpersuasive. Given Dr. Saber’s education and
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`qualifications, see Ex. 1002, ¶¶ 3–9, we disagree that Dr. Saber’s scientific,
`technical, and other specialized knowledge will be unhelpful in
`understanding the evidence. See Fed. R. Ev. 702(a). There is no
`requirement of a perfect match between the expert’s experience and the
`relevant field. See SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360,
`1373 (Fed. Cir. 2010). On this record, we decline to disregard Dr. Saber’s
`Declaration.
`
`B. CLAIM CONSTRUCTION
`The Board interprets claims using the “broadest reasonable
`construction in light of the specification of the patent in which [they]
`appear[].” 37 C.F.R. § 42.100(b). We presume a claim term carries its
`“ordinary and customary meaning,” which is “the meaning that the term
`would have to a person of ordinary skill in the art in question” at the time of
`the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007).
`Patent Owner asserts we should construe the “series of frame images”
`recited in claim 1 and the “series of real-time images” recited in claim 18 as
`“video images.” PO Resp. 6–7. Petitioner does not address claim
`construction directly, but impliedly asserts a broader construction for the
`claimed series to include successive still images. See Pet. 19 (asserting that
`claimed series includes “multiple” and “a plurality of” frame images”).
`Based on the present record, Patent Owner has not adequately explained
`why the claimed “series of frame images” must be limited to video, and why
`it would exclude a series of successive still photographs, even though the
`plain meaning of “series” imposes no such restriction. Based on the current
`record and for purposes of this Decision, we do not agree with Patent Owner
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`that the broadest reasonable construction of “series of frame images” recited
`in claim 1 and “series of real-time images” in claim 18 excludes still images,
`as Patent Owner’s proffered construction implies. Our claim construction is
`not a final determination and Patent Owner is free to submit further
`argument and evidence on this issue with its Patent Owner Response.
`We conclude that no additional explicit claim construction is
`necessary for our determination of whether to institute inter partes review of
`the challenged claims. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that
`are in controversy, and only to the extent necessary to resolve the
`controversy.”).
`
`C. ASSERTED PRIOR ART
`
`1. Morichika (Ex. 1008)
`Morichika discloses a display image generating device. Ex. 1008 ¶ 9.
`Morichika’s Figure 1 is reproduced below:
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`Figure 1 “is a system structure diagram showing a photographed image
`projection system according to the present invention,” including “a projector
`1, a laptop personal computer (hereinafter referred to as PC) 2, and a camera
`device 4.” Id. at ¶¶ 17, 28. According to Morichika, the camera
`photographs a document, and “outputs the image data of the imaged
`document to the PC,” which then “amends or modifies the photographed
`image by performing various image processing.” Id. at ¶ 49. Last, “[t]he
`image data . . . is output to the projector 1, by a display program,” after
`which “the projector 1 projects an image based on the image data input from
`the PC 2, to the screen S.” Id.
`2. Hara (Ex. 1007)
`Hara teaches a method in which an “image taken by a video
`camera . . . is incorporated into [a] computer as image data.” Ex. 1007 ¶ 45.
`As part of the process for storing image data, Hara teaches “convert[ing] the
`resolution of the received image data,” and explains that “the resolution may
`be decreased by thinning out the image data or the resolution may be
`increased by interpolating the image data.” Id. at ¶ 62; see id. at ¶ 52. Hara
`also teaches zooming. Id. at ¶ 75.
`3. LeGall (Ex. 1004)
`LeGall “concerns a camera system and a method for zooming the
`camera.” Ex. 1004, 1:44–45. In particular, LeGall teaches a method for
`“digital zoom for [a] digital video camera,” which “may be implemented
`using a conventional general purpose digital computer.” Id. at Title,
`Abstract, 13:6–8.
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`4. Philips (Ex. 1005)
`Philips discloses a digital camera for “recording high quality movies
`or still pictures quickly and easily on [a] PC or laptop computer.” Ex. 1005,
`2. The digital video camera is connected to the PC through a USB port and
`may be controlled by the PC. Id. at 2, 5. The camera is also supported by a
`suspension arm. Id. at 1.
`5. Novak (Ex. 1006)
`Novak discloses “[a]n apparatus for controlling the capture of an
`image of an object.” Ex. 1006, Abstract. In particular, Novak teaches a
`software-controllable webcam connected to an interface via a USB port,
`such that a user can control the webcam (i.e., pan, tilt, or zoom) via an input
`device like a keyboard, mouse, or joystick. Id. at 5:36–45.
`6. Howell (Ex. 1009)
`Howell teaches “a video conferencing system” including “a video
`display section for controlling the distribution of generated audio and video
`information signals . . . in accordance with command signals fed to the
`controller by a podium speaker.” Ex. 1009, Abstract. Relevant to this case,
`Howell teaches a mark-up mode in which the user may annotate on a video
`image in the presentations display area. Id. at 5:51–59, Fig. 4.
`
`D. ASSERTED GROUNDS
`1. Ground 1: Anticipation Based on Morichika
`Petitioner contends that Morichika anticipates claims 1, 2, 18, and 20.
`Pet. 15–19. On the record before us, we determine that Petitioner has
`demonstrated a reasonable likelihood of succeeding on this challenge, as
`outlined below.
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`a. “a series of frame images” and “a series of real-time images”
`Claims 1 and 2 require a “receiving a series of frame images.” Claims
`18 and 20 have a similar limitation—a computer “configured to . . .
`maintain[e] a resolution of a series of real-time images.” Although
`Morichika teaches only capturing still images, Petitioner asserts that
`Morichika’s discussion of VRAM that “continually stores the image data for
`display” and image processing for “to-be-projected images,” teaches the
`claimed “series” of frame images. Ex. 1003 ¶ 47 (quoting Ex. 1008 ¶ 40);
`see Pet. 19.
`Patent Owner asserts that Morichika does not teach the claimed series
`of images because “[t]here is no indication that Morichika’s camera device .
`. . . is anything more than a still image camera” and “Morichika makes no
`mention of a video stream or a series of frame or real-time images that one
`would find in video.” PO Resp. 12, 13.
`As explained above, on this record and for purposes of this Decision,
`we do not construe the claimed “series of frame images” (claims 1 and 2)
`and “series of real-time images” (claims 18 and 20) to require video.
`Because Morichika teaches image processing for multiple images (i.e., for
`“to-be-projected images,” Ex. 1008 ¶ 40 (emphasis added)), we find
`Petitioner has made an adequate showing that Morichika discloses the
`disputed series of images.
`b. “without changing resolution of the frame images” and “while
`maintaining a resolution of a series of real-time images”
`Claims 1 and 2 require a “zooming in or out without changing
`resolution of the frame images.” Claims 18 and 20 require “zoom[ing] in or
`zoom[ing] out in real-time while maintaining a resolution of a series of real-
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`time images.” Petitioner asserts that Morichika teaches those limitations
`because Morichika’s Figs. 11A–C (reproduced below) depict “the resolution
`(size) of original image G2 is not altered even as the zoomed-in image G4 is
`displayed.” Pet. 16 (citing Ex. 1008 ¶¶ 58–64, Figs. 11A–11C).
`
`
`Patent Owner asserts that Morichika does not teach zooming out
`without changing the frame images’ resolution because Morichika notes
`explicitly that “the resolution of the photographed image G2 is reduced.”
`PO Resp. 14 (quoting Ex. 1008 ¶ 57).
`Based on the current record and for purposes of this Decision, we find
`Petitioner has made an adequate showing that Morichika discloses the
`disputed maintaining resolution limitation. Although, as Patent Owner
`notes, Morichika discusses reducing the photographed image’s resolution to
`obtain the display image (G3), Morichika also depicts, in Figs. 11A–C,
`maintaining the original photographed image (G2) while generating the
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`reduced-resolution display images. See Ex. 1008 ¶ 63, Figs. 11A–C. In its
`Preliminary Response, Patent Owner does not address those passages or
`otherwise undermine Petitioner’s reading of them. See PO Resp. 14–15.
`Thus, based on the current record and for purposes of this Decision, we
`determine that Petitioner has made an adequate showing that Morichika
`discloses the limitation requiring zooming while maintaining resolution
`limitation.
`c. Unchallenged Limitations
`On this record and for purposes of this Decision, Petitioner has made
`an adequate showing that Morichika discloses the remaining, unchallenged
`limitations of claims 1, 2, 18, and 20, including claim 1’s removable-
`connection, image-acquisition, image-manipulation, conditional resolution-
`reduction, and image displaying/storing (see Pet. 15–20; Ex. 1003 ¶¶ 45–
`53), claim 2’s manipulation in response to a real-time user request (see Pet.
`18; Ex. 1003 ¶ 54), claim 18’s suspension arm and document imaging (see
`Pet. 18–19; Ex. 1003 ¶¶ 55–61), and claim 20’s personal computer (see Pet.
`19; Ex. 1003 ¶ 62). Thus, on this record, and for purposes of this Decision,
`Petitioner has shown a reasonable likelihood that it would prevail in
`establishing that Morichika anticipates claims 1, 2, 18, and 20.
`
`2. Ground 2: Obviousness Based on Morichika
`Petitioner contends that claims 1, 2, 8, 9, 12, 13, 16, 18, and 20 would
`have been obvious under 35 U.S.C. § 103(a) in view of Morichika alone.
`Pet. 20–24. On the current record, we determine that Petitioner has
`demonstrated a reasonable likelihood of succeeding on this ground for
`claims 1, 2, 18, and 20. However, as outlined below, we determine that
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`Petitioner has not shown a reasonable likelihood of succeeding on its
`challenge to claims 8, 9, 12, 13, and 16 as obvious over Morichika.
`a. Claims 1, 2, 18, and 20
`Petitioner contends that “to the extent that Morichika does not
`explicitly or inherently teach ‘receiving a series of frame images’ or video
`output, PHOSITA would have found it obvious to modify Morichika’s
`device such that it would both receive video input and display video output.”
`Pet. 22. Petitioner explains, with relevant support from its Declarant and
`from the asserted prior art, that “using a video camera with a PC for image
`capture, manipulation, and display was well known in the art years before
`the ’751 patent.” Pet. 22–23 (citing Ex. 1003 ¶ 65; Philips; Hara; Novak;
`Howell). Petitioner explains also that at the time of the invention, one
`skilled in the art would have been motivated to substitute a video camera in
`place of Morichika’s still image camera to “avoid having to manually (e.g.,
`as a result of user input to the PC) cause a new image to be captured every
`time that the target image (e.g., document or object to be displayed) was
`replaced, moved, or marked upon.” Pet. 22.
`To rebut the obviousness argument, Patent Owner responds that
`skilled artisans would have no reasonable expectation of success in making
`Petitioner’s proposed substitution of video in Morichika. PO Resp. 18–21.
`According to Patent Owner, Petitioner “offers no explanation as to how
`Morichika’s computer program would be updated to account for a video
`camera, which Pathway submits is a non-trivial task.” PO Resp. 19. Patent
`Owner asserts that “the real time nature of video display and capturing is
`highly demanding on a PC’s processor and the operating system” and asserts
`that while processing still images “can be accomplished with a simple tool
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`without any elaborate design,” processing video in real-time “is more
`complex and requires advanced design and skills.” PO Resp. 20, 21.
`Based on the current record, Patent Owner’s assertion that that one
`skilled in the art would have no reasonable expectation of success in
`substituting a video camera for Morichika’s still camera does not undermine
`Petitioner’s obviousness showing. Patent Owner posits the existence of
`various potential difficulties in processing “high definition and high speed
`video (such as Full HD video @ 30 frames per second)” as well as
`“technology inherent in video encoding/decoding [that] is far more
`sophisticated and mathematically complex” than still-image processing. PO
`Resp. 19, 20–21.
`Yet, claims 1, 2, 18, and 20 do not require a particular encoding
`scheme or high-definition frame rate. They recite only processing a “series”
`of real-time frames/images. In addition, although we recognize processing
`real-time video would generate increased processing demand over still
`images, “we do not ignore the modifications that one skilled in the art would
`make to a device borrowed from the prior art.” In re ICON Health &
`Fitness, Inc., 496 F.3d 1374, 1382 (Fed. Cir. 2007). Based on the record
`before us and absent compelling evidence to the contrary, we are persuaded
`that the providing additional processing to account for a higher frame rate
`would be a modification within reach for those skilled in the art. Thus,
`based on Petitioner’s arguments, and in light of our determination above that
`Petitioner has made an adequate showing that Morichika’s meets the
`remaining claim limitations, Petitioner has shown a reasonable likelihood
`that it would prevail in establishing claims 1, 2, 18, and 20 would have been
`obvious over Morichika.
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`b. Claims 8, 9, 12, 13, and 16
`On the record before us, we determine that Petitioner has not
`demonstrated a reasonable likelihood of succeeding on its challenge to
`claims 8, 9, 12, 13, and 16 as obvious over Morichika. Independent claim 8,
`(and by dependency claims 9, 12, 13, and 16) requires “storing the reference
`resolution in a non-transitory medium.” To meet the reference-resolution
`storing step, Petitioner asserts that “PHOSITA would have found it obvious
`to store such resolution in non-transitory memory, particularly in view of
`Morichika’s disclosure of using a PC to determine the reference resolution.”
`Pet. 23.
`We do not find Petitioner’s explanation persuasive. Merely pointing
`out that Morichika teaches using a PC does not explain why storing a
`reference resolution would have been obvious. Petitioner has not, therefore
`offered an adequate “articulated reasoning with some rational underpinning
`to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex,
`Inc., 550 U.S. 398, 418 (2006) (quoting In re Kahn, 441 F.3d 977, 988 (Fed.
`Cir. 2006)). We determine, therefore, Petitioner has not demonstrated a
`reasonable likelihood of succeeding on its obviousness challenge to claims
`8, 9, 12, 13, and 16 based on Morichika.
`
`3. Ground 3: Obviousness Based on Morichika and Hara
`Petitioner contends that claims 1–5, 7–9, 12, 13, and 16 would have
`been obvious under 35 U.S.C. § 103(a) in view of Morichika and Hara. Pet.
`24–30. On the current record, we determine that Petitioner has not
`demonstrated a reasonable likelihood of succeeding on this challenge, as
`outlined below.
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`a. Claims 1 and 2
`For claims 1 and 2, Petitioner asserts that “to the extent that
`Morichika does not teach or render obvious capturing a video image,
`receiving a series of frame images, or video output, these elements are
`taught by Hara and the claims are alternatively rendered obvious under §103
`in view of Morichika and Hara.” Pet. 30. Petitioner does not, however,
`provide any rationale for combining Morichika’s still-image processing with
`Hara’s video input. Petitioner merely cites to its claim chart, where it asserts
`that Hara teaches video, without further explanation. Pet. 30; see id. at 24–
`26. Accordingly, for Ground 3, we are not persuaded that Petitioner has
`provided an articulated reasoning with rational underpinning to support its
`obviousness challenge for claims 1 and 2 based on Morichika and Hara. See
`In re Kahn, 441 F.3d at 988.
`b. Claims 3–5 and 7
`Claims 3–5 and 7 require manipulating a series of frame images “in
`response to a user request in real time.” Addressing this limitation,
`Petitioner asserts that “PHOSITA would have found it obvious to
`manipulate images in response to a user request in real time, as real time
`manipulation would be expected to enhance the functionality of Hara’s live
`video-based communication system.” Pet. 29. However, as noted above,
`Petitioner fails to explain why it would have been obvious to combine
`Hara’s live video with Morichika’s still-image processing in the first place.
`Accordingly, we are not persuaded that Petitioner has provided adequate
`reasoning with rational underpinning to support its obviousness challenge
`for claims 3–5 or 7 based on Morichika and Hara. See In re Kahn, 441 F.3d
`at 988.
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`c. Claims 8, 9, 12, 13, and 16
`For claims 8, 9, 12, 13, and 16, Petitioner relies on the same
`obviousness analysis that it offers for claim 8 in Ground 2. See Pet. 29–30.
`For the same reasons outlined above in our analysis of Ground 2, we
`determine that Petitioner has not demonstrated a reasonable likelihood of
`succeeding on its obviousness challenge to claims 8, 9, 12, 13, and 16 based
`on Morichika and Hara.
`4. Ground 4: Obviousness Based on LeGall and Philips
`Petitioner contends that claims 1–5, 8, 9, 16, 18, and 20 would have
`been obvious under 35 U.S.C. § 103(a) in view of LeGall and Philips. Pet.
`30–40. On the current record, we determine that Petitioner has not
`demonstrated a reasonable likelihood of succeeding on this challenge, as
`outlined below.
`a. Claims 1–5, 18, and 20
`Claims 1–5, 18, and 20 all involve a “reference resolution.” Claim 1
`(and by dependency claim 2) requires “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.” Claim 3 (and by dependency claims 4 and
`5) requires “identifying a second resolution for the reference resolution.”
`Claim 18 (and by dependency claim 20) requires “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.”
`Petitioner asserts that Philips meets the reference resolution limitation
`in the claims. Pet. 31, 33, and 37. As for a motivation to combine Philips
`
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`and LeGall, Petitioner asserts that “the main circuit of LeGall could be
`beneficially replaced by a PC connected to a webcam, such as that disclosed
`in Philips, with no reduction in functionality.” Pet. 39 (internal quotation
`marks omitted). Petitioner does not, however, provide a rationale for
`combining Philip’s reference-resolution teaching with LeGall’s disclosed
`method. See Pet. 38–39. Having reviewed Petitioner’s arguments and
`analysis for claims 1–5, 18, and 20, we agree with Patent Owner that
`“[Petitioner] has not provided a meaningful analysis of obviousness,” but
`instead “has provided, via various quotes and citations to LeGall and Philips
`[only] an argument that various claim limitations are independently present
`in the prior art, which is insufficient.” PO Resp. 24 (citing Volkswagen Grp.
`of Am., Inc. v. Velocity Patent LLC, Case IPR2015-00276, slip. op. at 10
`(PTAB June 1, 2015) (Paper 8)). Accordingly, we are not persuaded that
`Petitioner has shown a reasonable likelihood of succeeding for its
`obviousness challenge to claims 1–5, 18, and 20 based on LeGall and
`Philips.
`b. Claims 8, 9, and 16
`Independent claim 8 (and by dependency claims 9 and 16) requires
`“storing the reference resolution in a non-transitory medium.” Petitioner’s
`analysis for the storing step in Ground 4 parallels its analysis for claim 8 in
`Ground 2. That is, Petitioner asserts only that “PHOSITA would have found
`it obvious to store such resolution in non-transitory memory, particularly in
`view of Philips’ disclosure of using a PC to determine the reference
`resolution.” Pet. 40. As outlined above, merely pointing out that a reference
`teaches using a PC does not explain why storing a reference resolution
`would have been obvious. Thus, Petitioner has not provided a sufficient
`
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`“articulated reasoning with some rational underpinning to support the legal
`conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441
`F.3d 977, 988). We determine that Petitioner has not demonstrated a
`reasonable likelihood of succeeding on its obviousness challenge to claims
`8, 9, and 16 based on Philips and LaGall.
`
`5. Ground 5: Obviousness Based on Novak and Hara
`Petitioner contends that claims 1–5 and 7 would have been obvious
`under 35 U.S.C. § 103(a) in view of Novak and Hara. Pet. 40–47. On the
`current record, we determine that Petitioner has not demonstrated a
`reasonable likelihood of succeeding on this challenge, as outlined below.
`a. Claims 1–5 and 7
`Claim 1 (and by dependency claim 2) requires “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.” Claim 3 (and by
`dependency claims 4, 5, and 7) recites a similar comparison step:
`“identifying a second resolution for the reference resolution” and “in the
`case of a manipulated frame image having a higher resolution, as
`manipulated, than the second resolution, reducing the resolution of the frame
`image to that of the second resolution.”
`Petitioner relies on Hara for meeting the claimed reference
`comparison and resolution reduction limitations. Petitioner asserts that
`because “Novak suggests converting acquired video images to a format
`usable by [the] display,” it follows that “PHOSITA would have been
`motivated to combine the references because, inter alia, providing for
`resolution adjustment to a reference resolution, as taught by Hara, would
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`improve display of Novak’s acquired and manipulated images without
`undermining other functionality.” Pet. 46.
`We are not persuaded by Petitioner’s rationale. Although comparison
`to a reference resolution (i.e., that of a display) may be one way of
`converting acquired video images to a usable format for the display,
`Petitioner has not explained why doing so would improve Novak’s system
`without undermining other functionality. In particular, because Novak
`already describes converting video images to a format usable by the display,
`it is unclear why using Hara’s method of decreasing the frames’ resolution
`to a reference resolution (that of a display) would improve Novak, much less
`why it would do so without undermining other functionality. Because
`Petitioner has not adequately explained its rationale for its proffered
`combination, we determine Petitioner has not demonstrated a reasonable
`likelihood of succeeding on its obviousness challenge to claims 1–5 and 7
`based on Novak and Hara.
`
`6. Ground 6: Obviousness Based on Novak and Philips
`Petitioner contends that claims 18 and 20 would have been obvious
`under 35 U.S.C. § 103(a) in view of Novak and Philips. Pet. 47–50. We
`have discretion to institute inter partes review as to some asserted grounds
`and not others. 37 C.F.R. § 42.108(a); see Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356, 1367 (Fed. Cir. 2016) (explaining that “the PTO is
`permitted, but never compelled, to institute an IPR proceeding”). This
`discretion is consistent with the requirement that the regulations for inter
`partes review take into account “the efficient administration of the Office”
`and “the ability of the Office to timely complete [instituted] proceedings,”
`35 U.S.C. § 316(b), and are “construed to secure the just, speedy, and
`
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`inexpensive resolution of every proceeding,” 37 C.F.R. § 42.1(b). In light of
`the other grounds on which we have instituted review of claims 18 and 20
`based on obviousness, we exercise our discretion and do not institute review
`based on the asserted ground that claims 18 and 20 unpatentable under 35
`U.S.C. § 103 over Novak and Philips.
`
`7. Obviousness Grounds 7–10
`In Ground 7, Petitioner contends that claims 10, 14, 15, and 17 would
`have been obvious under 35 U.S.C. § 103(a) in view of Morichika and
`Howell. Pet. 50–54. In Ground 8, Petition
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