`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`IN THE UNITED STATES PATENT TRIAL AND APPEAL BOARD
`______________________
`
`AVER INFORMATION INC. AND IPEVO, INC.
`PETITIONER
`
`V.
`
`PATHWAY INNOVATIONS AND TECHNOLOGIES, INC.
`PATENT OWNER
`
`_______________________________
`
`CASE: IPR2017-02108
`U.S. PATENT NO. 8,508,751
`_______________________________
`
`
`
`DECLARATION OF DR. VIJAY MADISETTI
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF CLAIMS 1-5, 7-10, 12-14, 16, 18, AND 20
`OF U.S. PATENT NO. 8,508,751
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`I.
`
`II.
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`III.
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`IV.
`
`V.
`
`VI.
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` Declaration of Dr. Vijay Madisetti
`Inter Partes Review of U.S. Patent No. 8,508,751
`TABLE OF CONTENTS
`
`INTRODUCTION .............................................................................................................. 1
`
`QUALIFICATIONS ........................................................................................................... 1
`
`SUMMARY OF OPINIONS .............................................................................................. 2
`
`TECHNOLOGICAL BACKGROUND .............................................................................. 3
`
`LEVEL OF ORDINARY SKILL IN THE ART ................................................................ 5
`
`THE ’751 PATENT ............................................................................................................ 5
`
`A.
`
`B.
`
`Summary of the ’751 Patent ................................................................................... 5
`
`Claim Construction ................................................................................................. 7
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`“a series of frame images” (claims 1, 3, and 8) .......................................... 7
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`“a series of real-time images” (claim 18) ................................................... 8
`
`“in the case of …” (claims 1, 3, and 18) ..................................................... 8
`
`“annotating” (claims 5, 14, and 16) ............................................................ 9
`
`“a miniaturized digital image sensing unit … comprising optics
`having an infinite focal length” (claim 18) ................................................. 9
`
`“the output frame images” (claims 13 and 14) ......................................... 10
`
`VII. THE PRIOR ART TEACHES OR SUGGESTS EVERY FEATURE OF THE
`CHALLENGED CLAIMS OF THE ’751 PATENT ........................................................ 10
`
`A.
`
`Overview of the Prior Art References .................................................................. 11
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`U.S. Patent Publication No. 2005/0078052 (“Morichika”) (Ex.
`1002) ......................................................................................................... 11
`
`U.S. Patent No. 7,239,338 (“Krisbergh”) (Ex. 1003) ............................... 12
`
`U.S. Patent Publication No. 2001/0012051 (“Hara”) (Ex. 1004) ............ 14
`
`U.S. Patent No. 7,148,911 (“Mitsui”) (Ex. 1005) ..................................... 14
`
`U.S. Patent Publication No. 2004/0174444 (“Ishii”) (Ex. 1006) .............. 16
`
`B.
`
`Morichika Renders Claims 1-5, 7, 18, and 20 Obvious ........................................ 17
`
`i
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` Declaration of Dr. Vijay Madisetti
`Inter Partes Review of U.S. Patent No. 8,508,751
`Claim 1 ...................................................................................................... 17
`
`Claim 2 ...................................................................................................... 25
`
`Claim 3 ...................................................................................................... 25
`
`Claim 4 ...................................................................................................... 30
`
`Claim 5 ...................................................................................................... 30
`
`Claim 7 ...................................................................................................... 31
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`Claim 18 .................................................................................................... 32
`
`Claim 20 .................................................................................................... 37
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`C.
`
`Krisbergh in View of Hara Renders Claims 8-10, 12, 14, and 16 Obvious .......... 38
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`Claim 8 ...................................................................................................... 40
`
`Claim 9 ...................................................................................................... 47
`
`Claim 10 .................................................................................................... 47
`
`Claim 12 .................................................................................................... 48
`
`Claim 14 .................................................................................................... 49
`
`Claim 16 .................................................................................................... 49
`
`D.
`
`Krisbergh in View of Hara and Mitsui Renders Claims 13 and 16 Obvious ........ 50
`
`1.
`
`2.
`
`Claim 13 .................................................................................................... 52
`
`Claim 16 .................................................................................................... 52
`
`E.
`
`Ishii Renders Claims 1-5, 8, and 16 Obvious ....................................................... 53
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`Claim 1 ...................................................................................................... 54
`
`Claim 2 ...................................................................................................... 60
`
`Claim 3 ...................................................................................................... 60
`
`Claim 4 ...................................................................................................... 62
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`Claim 5 ...................................................................................................... 63
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`Claim 8 ...................................................................................................... 64
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`
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`-ii-
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` Declaration of Dr. Vijay Madisetti
`Inter Partes Review of U.S. Patent No. 8,508,751
`Claim 16 .................................................................................................... 66
`
`7.
`
`VIII. CONCLUSION ................................................................................................................. 66
`
`
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`-iii-
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` Declaration of Dr. Vijay Madisetti
`Inter Partes Review of U.S. Patent No. 8,508,751
`I, Vijay Madisetti, declare as follows:
`
`I.
`
`INTRODUCTION
`1.
`
`I have been retained by AVer Information Inc. and IPEVO, Inc.
`
`(collectively, “Petitioner”) as an independent expert consultant in this proceeding
`
`before the United States Patent and Trademark Office (“PTO”).
`
`2.
`
`I have been asked to consider whether certain references teach or
`
`suggest the features recited in claims 1-5, 7-10, 12-14, 16, 18, and 20 of U.S.
`
`Patent No. 8,508,751 (“the ’751 patent”) (Ex. 1001), which I understand is
`
`allegedly owned by Pathway Innovations and Technologies, Inc. (“Patent Owner”).
`
`My opinions and the bases for my opinions are set forth below.
`
`3.
`
`I am being compensated at my ordinary and customary consulting rate
`
`for my work.
`
`4. My compensation is in no way contingent on the nature of my
`
`findings, the presentation of my findings in testimony, or the outcome of this or
`
`any other proceeding. I have no other interest in this proceeding.
`
`II. QUALIFICATIONS
`5.
`I am a currently a Professor in the School of Electrical, and Computer
`
`Engineering at Georgia Tech, in Atlanta, Georgia. I have been affiliated with
`
`Georgia Tech in various roles since 1989.
`
`6.
`
`I obtained my Ph.D in Electrical Engineering and Computer Sciences
`
`1
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` Declaration of Dr. Vijay Madisetti
`Inter Partes Review of U.S. Patent No. 8,508,751
`from the University of California at Berkeley in 1989. I obtained my Bachelors
`
`degree in Electronics and Electrical Communications Engineering from the Indian
`
`Institute of Technology (IIT), Kharagpur, India, in 1984.
`
`7.
`
`I have extensive experience in the areas of real-time video and image
`
`processing since the 1990s, including developing software and associated code
`
`generation tools for a leading chip vendor for document and scanner cameras.
`
`Additional qualifications are detailed in my curriculum vitae, which I have
`
`attached hereto.
`
`III. SUMMARY OF OPINIONS
`8.
`In preparing this declaration, I have reviewed the documents
`
`identified in Appendix A and other materials referred to herein. In addition to these
`
`materials, I have relied on my education, experience, and my knowledge of
`
`practices and principles in the relevant field, e.g., digital camera technology. My
`
`opinions have also been guided by my appreciation of how one of ordinary skill in
`
`the art would have understood the claims and specification of the ’751 patent
`
`around the time of the alleged invention, which I have been asked to assume is the
`
`earliest claimed priority date of January 28, 2010.
`
`9.
`
`Based on my experience and expertise, it is my opinion that certain
`
`references teach or suggest all the features recited in claims 1-5, 7-10, 12-14, 16,
`
`18, and 20 of the ’751 patent, as explained in detail below.
`
`2
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` Declaration of Dr. Vijay Madisetti
`Inter Partes Review of U.S. Patent No. 8,508,751
`IV. TECHNOLOGICAL BACKGROUND
`10.
`In the ’751 patent specification, Applicant states that “[t]he disclosure
`
`generally relates to document cameras … for both capturing real-time video with
`
`zooming capability and scanning high resolution still images.” Ex. 1001, 1:15-18.
`
`The specification goes on to identify two approaches to achieving zooming
`
`capability: optical zoom technology and digital zoom technology.
`
`11. The first approach mentioned by the specification is optical zoom. For
`
`example, a “high quality tele-focal lens assembly must be employed to zoom in
`
`and/or out on the object of interest.” Id., 1:37-39. Unfortunately, “[t]he necessary
`
`employment of an optical lens assembly makes it mandatory for these document
`
`cameras to often have elaborate motorized housing for the lenses, which results
`
`inevitably in relatively heavy structural configurations.” Id., 1:45-49.
`
`12. The second approach mentioned by the specification is digital zoom.
`
`For example, “[t]he present system offloads zooming and other optical functions
`
`from the lens assembly to the integrated computer software processing unit using
`
`digital zooming and other image processing techniques.” Id., 8:13-16. In this way,
`
`the claimed methods and apparatus provide for “zoom in or zoom out in real-time
`
`while maintaining a resolution value of stored images constant.” Id., Abstract.
`
`13. Digital zoom technology is readily apparent in the prior art. The
`
`background section of the ’751 patent identifies prior art implementing “a digital
`
`3
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`Inter Partes Review of U.S. Patent No. 8,508,751
`imaging device.” Id., 2:14-15 citing U.S. Patent No. 6,965,460 (Ex. 1007). This
`
`cited patent itself describes digital zoom and distinguishes digital zoom from
`
`optical zoom. Ex. 1007, 10:61-11:9. The Morichika reference (discussed herein
`
`and attached as Ex. 1002) teaches digital zoom: “the image data of a display region
`
`corresponding to the size of a requested magnification ratio in the original
`
`photographed image, is reduced.” Ex. 1002, Abstract; Fig. 10. Moreover, the
`
`background section of the Morichika reference identifies digital zoom as prior art:
`
`“projectors that comprise magnification display functions (hereinafter referred to
`
`as digital zoom function).” Id., ¶0004. Likewise, the Krisbergh reference
`
`(discussed herein and attached as Ex. 1003) teaches digital zoom: “a zoomed-in
`
`image is provided by taking a portion of the high-resolution image.” Ex. 1003,
`
`9:55-56. Additionally, the Ishii reference (discussed herein and attached as Ex.
`
`1006) teaches digital zoom and identifies digital zoom as prior art: “digital video
`
`cameras and digital (still) cameras are widely used in the ordinary household. …
`
`Many image recording apparatus have even an electrical zoom function of
`
`electronically variably magnifying photographing image data in addition to a
`
`conventional optical zoom function.” Ex. 1006, ¶0002.
`
`14. The sole feature that the ’751 patent purports to add to the prior art--
`
`digital zoom in a document camera system--was well known long before the filing
`
`of the ’751 patent.
`
`4
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` Declaration of Dr. Vijay Madisetti
`Inter Partes Review of U.S. Patent No. 8,508,751
`V. LEVEL OF ORDINARY SKILL IN THE ART
`15. Based on my review of the ’751 patent specification, claims, and file
`
`history, I believe one of ordinary skill in the art around the time of the alleged
`
`invention of the ’751 patent would have had a bachelor’s degree in electrical
`
`engineering, mathematics, or physics with computer science coursework, or
`
`equivalent experience, and at least one year of direct technical experience in
`
`capturing real-time video with zooming capability via a portable document camera.
`
`16.
`
`In determining the level of ordinary skill in the art, I was asked to
`
`consider, for example, the type of problems encountered in the art, prior art
`
`solutions to those problems, the rapidity with which innovations are made, the
`
`sophistication of the technology, and the educational level of active workers in the
`
`field.
`
`VI. THE ’751 PATENT
`A.
`Summary of the ’751 Patent
`17. The ’751 patent was filed on April 4, 2012, and issued on August 13,
`
`2013. I understand that the ’751 patent claims a priority date no earlier than
`
`January 28, 2010.
`
`18. The ’751 patent is titled “Capturing real-time video with zooming
`
`capability and scanning high resolution still images of documents using the same
`
`apparatus” and its specification and figures are generally directed to digital camera
`
`5
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`Inter Partes Review of U.S. Patent No. 8,508,751
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`technology.
`
`19. For example, digital zoom technology is a primary focus of the ’751
`
`patent. More specifically, the ’751 patent describes a digital imaging sensing unit
`
`302 that communicates with a PC via a high speed data connection, such as USB
`
`or FireWire. Ex. 1001, 4:66-25; Fig. 3. The imaging sensing unit comprises a
`
`camera with a digital image sensor capable of capturing “real-time video” and still
`
`pictures of objects within the camera’s field of view. Id., 5:35-48. Upon
`
`previewing the captured images, the system allows the user to achieve the effect of
`
`zoom by digitally manipulating the resolution of the captured images. Id., 6:11-38.
`
`This type of digital manipulation is often called “digital zoom” or “electronic
`
`zoom” by those skilled in the art. The ’751 patent also discloses allowing the user
`
`to pan, rotate, crop, or annotate the image. Id., 7:15-55.
`
`20. The ’751 patent alleges that a “desire exist[ed] for a document
`
`imaging system that is cost efficient, highly compact or space efficient, [and]
`
`highly portable.” Id., 3:18-20. The ’751 patent states this desire was satisfied by
`
`eliminating the need for an optical zoom lens assembly, by providing digital zoom
`
`technology. See id., 7:56-8:12.
`
`21. However, the technique of scaling an image, whether still images or
`
`video images, to fit a display screen was well known in the prior art.
`
`6
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` Declaration of Dr. Vijay Madisetti
`Inter Partes Review of U.S. Patent No. 8,508,751
`B. Claim Construction
`22.
`
`I understand that a claim subject to IPR receives the broadest
`
`reasonable construction in light of the specification of the patent in which it
`
`appears. I also understand that any term that is not construed should be given its
`
`plain and ordinary meaning under the broadest reasonable construction. I have
`
`followed these principles in my analysis.
`
`1.
`“a series of frame images” (claims 1, 3, and 8)
`23. The term “a series of frame images” appears in each of claims 1, 3,
`
`and 8.
`
`24. Applicant has identified that “a desire exists for a document imaging
`
`system … being capable of producing real-time high resolution zoomable video
`
`and being capable of capturing high resolution still images.” Id., 3:18-24. The
`
`disclosed method includes “acquiring an image of a target to provide an output
`
`video image that has a plurality of frame images.” Id., 3:43-45. The plurality of
`
`still images, which are captured, constitute the video image. For example, “[t]he
`
`optical lens 316 and the accompanying electronic components are capable of
`
`capturing real-time video at approximately 30 frames per second.” Id., 5:39-41. In
`
`this example, video is comprised of individual frames (e.g., 30 frames per second).
`
`25. Applicant does not, in any way, limit “a series of frame images” to a
`
`video-only construction. In describing the process of “[d]isplaying real-time
`
`7
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`Inter Partes Review of U.S. Patent No. 8,508,751
`video,” Applicant uses several terms interchangeably, including “continuous
`
`stream of frame images,” “instantaneous snapshot,” “captured images,” “captured
`
`video frames,” etc. Id., 6:11-38. While some of these terms (e.g., “captured video
`
`frames”) may suggest video-specific context, many others (e.g., “instantaneous
`
`snapshot” and “captured images”) suggest non-video context. For this reason, a
`
`video-only construction of the term “a series of frame images” is inappropriate.
`
`26. One of ordinary skill in the art would understand “a series of frame
`
`images” to be “a plurality of still images.” This understanding is consistent with
`
`both non-video contexts (e.g. “high resolution still images”) and video-specific
`
`contexts (e.g., “real-time video at approximately 30 frames per second”). See id.,
`
`3:18-24, 5:39-41.
`
`2.
`“a series of real-time images” (claim 18)
`27. Similarly, one of ordinary skill in the art would understand “a series
`
`of real-time images” to be “a plurality of real-time still images.”
`
`3.
`“in the case of …” (claims 1, 3, and 18)
`28. The term “in the case of …” appears in each of claims 1, 3, and 8. As
`
`I understand, this claim term should be construed as a condition precedent.
`
`29. Because the term is a condition precedent, for the purposes of
`
`satisfying obviousness, each of claims 1, 3, and 18 are disclosed in the prior art if
`
`all remaining claim limitations, besides the “in the case of …” limitations, are
`
`8
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` Declaration of Dr. Vijay Madisetti
`Inter Partes Review of U.S. Patent No. 8,508,751
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`disclosed in the prior art.
`
`4.
`“annotating” (claims 5, 14, and 16)
`30. One of ordinary skill in the art would understand “annotating” to be
`
`“to add a note.” See https://en.oxforddictionaries.com/definition/annotate (defining
`
`“annotate” as “add notes to (a text or diagram) giving explanation or comment”).
`
`5.
`
`“a miniaturized digital image sensing unit … comprising
`optics having an infinite focal length” (claim 18)
`31. The term “miniaturized” is ambiguous as it does not provide a point of
`
`reference and one of ordinary skill in the art would not know the boundaries of
`
`what constitutes “miniaturized.” Nevertheless, one of ordinary skill in the art
`
`would understand the term “miniaturized” to include at least CMOS and CCD
`
`sensors, since those types of image sensors are praised in the ’751 Patent
`
`specification as being “highly compact.” Ex. 1001, 2:53-65.
`
`32.
`
`I understand that Pathway, in a companion ITC case, has taken the
`
`position that the limitation “optics having an infinite focal length” can be satisfied
`
`if the document camera has a flat glass protective cover, over an optical lens. For
`
`the purposes of this IPR petition only, under the broadest reasonable interpretation
`
`claim construction standard, I adopt Pathway’s interpretation of this claim
`
`limitation. Including a flat glass protective cover with an optical lens is a readily
`
`apparent design choice to avoid damage to the optical lens. For example, United
`
`States Patent No. 6,744,109 discloses the benefits of using a glass cover to protect
`
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` Declaration of Dr. Vijay Madisetti
`Inter Partes Review of U.S. Patent No. 8,508,751
`a lens assembly. One of ordinary skill in the art would understand that a
`
`commercially viable product with an optical lens would typically include a flat
`
`piece of glass, such as a glass protective cover.
`
`33. Alternatively, Pathway has also proposed that “optics having an
`
`infinite focal length” be construed to mean a “focal length 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.” Again,
`
`for the purposes of this IPR petition only, under the broadest reasonable
`
`interpretation claim construction standard, I adopt this interpretation as an alternate
`
`meaning of this claim limitation.
`
`6.
`“the output frame images” (claims 13 and 14)
`34. The phrase “the output frame images” appears in multiple dependent
`
`claims, but the phrase lacks an antecedent basis in any of the independent claims.
`
`Nevertheless, for the purposes of this IPR petition, I will adopt the ITC’s
`
`construction of this phrase is to be “the frame images whose resolution was
`
`adjusted to correspond to the reference resolution.”
`
`35. As discussed further below, certain references teach or suggest every
`
`feature recited in claims 1-5, 7-10, 12-14, 16, 18, and 20 of the ’751 patent.
`
`VII. THE PRIOR ART TEACHES OR SUGGESTS EVERY FEATURE OF
`THE CHALLENGED CLAIMS OF THE ’751 PATENT
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` Declaration of Dr. Vijay Madisetti
`Inter Partes Review of U.S. Patent No. 8,508,751
`A. Overview of the Prior Art References
`1.
`U.S. Patent Publication No. 2005/0078052 (“Morichika”)
`(Ex. 1002)
`36. United States Patent Publication No. 2005/0078052 to Kazumasa
`
`Morichika (“Morichika,” Ex. 1002) was published on April 14, 2005 and is
`
`therefore prior art to the ’751 patent under 35 U.S.C. § 102(b).
`
`37. Morichika discloses an image projection system comprising a laptop
`
`personal computer and a camera device. Ex. 1002, ¶0028. The camera device
`
`consists of a base, a strut, and a digital camera as illustrated below. Id., ¶0030; Fig.
`
`1.
`
`
`
`The camera device and the PC laptop computer are connected by USB cable 201.
`
`Id., ¶0028. The digital camera in the camera device contains a high resolution CCD
`
`sensor with four million pixels. Id., ¶0044. The image produced by the CCD sensor
`
`is sent to the laptop computer via the USB cable. Id., ¶0045.
`
`38. After receiving the image data from the camera device, the laptop PC
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`Inter Partes Review of U.S. Patent No. 8,508,751
`can perform various imaging processing steps and then outputs a video signal to be
`
`displayed by a projector. Id., ¶¶0049, 0039.
`
`39. Before display, the PC scales the image data to fit the display
`
`resolution. See id., Fig. 7. The PC determines the resolution of the image and the
`
`resolution of the PC monitor. Id., Fig. 7 at SB1 and SB4. The PC then scales the
`
`image data to match the resolution of the PC monitor. Id., Fig. 7 at SB6-8, ¶¶0051-
`
`0057.
`
`40. Morichika also discloses the ability of the system to magnify, i.e.,
`
`zoom, the video signal that is displayed. Id., ¶¶0058-0062. A user first indicates a
`
`to-be-magnified area by selecting a point on the displayed image. Id., ¶0059. The
`
`PC then determines the corresponding point in the image data. Id., ¶¶0059-0060.
`
`Based on the selected magnification rate and selected point, the PC determines a
`
`region of the image data to be displayed. Id., ¶0060. The PC then scales that region
`
`to match the resolution of the PC monitor and displays the magnified image. Id.,
`
`¶0062.
`
`2.
`
`U.S. Patent No. 7,239,338 (“Krisbergh”) (Ex. 1003)
`
`41.
`
` United States Patent No. 7,239,338 to Hal M. Krisbergh, et al.
`
`(“Krisbergh,” Ex. 1003) was granted on July 3, 2007 and is therefore prior art to
`
`the ’751 patent under 35 U.S.C. § 102(b).
`
`42. Krisbergh discloses a video telephone system comprising a plurality
`
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`Inter Partes Review of U.S. Patent No. 8,508,751
`of subscribers with videophones which are configured to communicate via a
`
`communications network. Ex. 1003, 3:3-6. The communications network may
`
`communicate with at least one headend facility which may communicate with at
`
`least one network operations center as illustrated below. Id., 3:15-17, 5:10-12;
`
`Figure 1.
`
`
`
`43. Krisbergh also discloses a videophone comprising a fixed camera
`
`having a wide-angle lens. Id., 9:47. The videophone provides digital zoom
`
`capability that allows each person on a video call to zoom, pan, and tilt the camera
`
`of the party they are calling. Id., 9:15-17.
`
`44. The camera is capable of providing a zoomed out image by taking the
`
`entire high-resolution image and converting it to the desired lower target
`
`resolution. Id., 9:51-53. A zoomed-in image can be provided by taking a portion of
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`Inter Partes Review of U.S. Patent No. 8,508,751
`the high-resolution image. Id., 9:54-55.
`
`3.
`
`U.S. Patent Publication No. 2001/0012051 (“Hara”) (Ex.
`1004)
`45. United States Patent Publication No. 2001/0012051 to Yoshihiro Hara
`
`and Yukio Maekawa (“Hara,” Ex. 1004) was published on August 9, 2001 and is
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`therefore prior art to the ’751 Patent under 35 U.S.C. § 102(b).
`
`46. The Hara reference relates to a visual telephone system. Ex. 1004,
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`¶0003. Hara discloses that conventional or prior art visual telephone systems were
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`capable of transmitting highly compressed still or motion pictures. Id., ¶0006. The
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`object of the invention disclosed by Hara was to further reduce the data transmitted
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`by matching the resolution of the transmitted image with the resolution of the
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`display device of the destination terminal. Id., ¶0012. Hara achieved this by using a
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`“display resolution table” to lookup the resolution of the destination terminal
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`display and then matching the transmitted image resolution with that of the
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`destination terminal display resolution. Id., ¶¶0062-0067.
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`4.
`U.S. Patent No. 7,148,911 (“Mitsui”) (Ex. 1005)
`47. United States Patent No. 7,148,911 to Kenichi Mitsui, et al. (“Mitsui,”
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`Ex. 1005) was granted on December 12, 2006 and is therefore prior art to the ’751
`
`Patent under 35 U.S.C. § 102(b).
`
`48. The Mitsui reference relates to a video telephone device that
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`transmits/receives image and audio information. Ex. 1005, 1:5-7. Mitsui discloses
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`Inter Partes Review of U.S. Patent No. 8,508,751
`that in prior art video telephone devices it was impossible to change the orientation
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`of an image picked up by image pick-up means, or of an image received from a
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`distant party. Id., 2:23-29. Thus, transmitted images were displayed in unnatural
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`orientations. Id., 2:29-32.
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`49. The object of the invention disclosed by Mitsui was a video telephone
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`device which always transmits or displays an image in the proper orientation, as
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`displayed below, regardless of which way the video telephone’s display is held.
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`Id., 2:34-37; Figures 3A-3B.
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`50. This object was achieved by including a rotating means for rotating
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`the orientation of a picture signal based on a reference vertical direction. Id., 6:49-
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`
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`58.
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`Inter Partes Review of U.S. Patent No. 8,508,751
`U.S. Patent Publication No. 2004/0174444 (“Ishii”) (Ex.
`1006)
`51. United States Patent Publication No. 2004/0174444 to Yoshiki Ishii
`
`5.
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`(“Ishii,” Ex. 1006) was published on September 9, 2004 and is therefore prior art to
`
`the ’751 Patent under 35 U.S.C. § 102(b).
`
`52. The Ishii reference relates to acquiring image data, which may be
`
`either still image data or moving image data, and executing zoom processing on
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`the acquired image data. Ex. 1006, Abstract; Fig. 27.
`
`
`
`53. The Ishii reference discloses two modes of capturing image data: “a
`
`still image mode in which a still image is photographed and a moving image mode
`
`in which a moving image is photographed.” Id., ¶0062.
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`54. The Ishii reference discloses two modes of zoom processing: optical
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`zoom and digital zoom (referred to as “electrical zoom”). Id., ¶0001. For example,
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`Inter Partes Review of U.S. Patent No. 8,508,751
`“Fig. 27 is a view showing the optical zoom and electrical zoom operations in the
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`image recording apparatus.” Id., ¶0009. Describing optical zoom processing, Ishii
`
`explains that “the lens optical system 2301 is controlled to the maximum wide-
`
`angle state, the frame 2401 becomes large.” Id., ¶0009. Describing digital zoom
`
`processing, Ishii explains that “a partial area indicated by a frame 2402 is extracted
`
`and enlarged from the image data of the object within the frame 2401 in the
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`maximum telephoto state, thereby obtaining an electrical zoom image 2405.” Id.,
`
`¶0010. Furthermore, “when the magnification ratio of electrical zoom is high, the
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`image quality largely degrades. To prevent this, the magnification ratio of
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`electrical zoom is generally limited by defining an upper limit value.” Id., ¶0011.
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`B. Morichika Renders Claims 1-5, 7, 18, and 20 Obvious
`1.
`
`Claim 1
`
`55.
`
`In a previous IPR2016-00661 institution decision, the Board found a
`
`reasonable likelihood had been shown that Morichika renders claim 1 of the ’751
`
`Patent obvious. Ex. 1013, 14.
`
`56. To the extent that the Board decides, in contrast to the decision in
`
`IPR2016-00661, that the claim phrase “a series of frame images” in claim 1
`
`requires video images, a person of ordinary skill would have found it obvious to
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`modify the Morichika device to use a video camera. The simple substitution of a
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`still digital camera with a video camera yields a predictable result. By continuously
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`Inter Partes Review of U.S. Patent No. 8,508,751
`capturing images of a target area using a video camera, a user can avoid having to
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`manually cause a new image to be captured every time the object or document to
`
`be displayed was moved. Therefore, one of ordinary skill would have been
`
`motivated to use a video camera in the Morichika device and modify the PC’s
`
`software accordingly. Using a video camera with a PC for image capture,
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`manipulation, and display was well known in the art before the filing date of the
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`’751 patent. Further, one of ordinary skill in the art would have had an expectation
`
`of success in modifying the PC’s software to allow video image capture by the PC.
`
`a)
`
`A method of acquiring an image of a target to provide
`an output video image comprising a plurality of frame
`images, the method comprising:
`57. The excerpt of Fig. 1 of Morichika shown below shows the system
`
`and method of Morichika acquiring an image of a target.
`
`target
`
`
`
`
`
`58. The image of the target, “document A,” acquired by digital camera 4c
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`is sent to a laptop personal computer and eventually displayed by a projector. Ex.
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`1002, ¶0032, Fig. 1. The signal sent by the laptop PC to the projector is an output
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`Inter Partes Review of U.S. Patent No. 8,508,751
`video image. Id., ¶0039 (“The video adapter 25 generates a video signal (RGB
`
`signals) for display, and outputs the video signal to the display device 27 that
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`comprises an LCD … the VRAM 26 continually stores the image data for display,
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`that the