Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper No. 31
`Entered: March 6, 2019
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`AVER INFORMATION INC. AND IPEVO, INC.,
`Petitioner,
`
`v.
`
`PATHWAY INNOVATIONS AND TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-02108
`Patent 8,508,751 B1
`____________
`
`
`
`Before JONI Y. CHANG, THOMAS L. GIANNETTI, and
`NORMAN H. BEAMER, Administrative Patent Judges.
`
`BEAMER, Administrative Patent Judge.
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`DECISION ON MOTION TO AMEND
`35 U.S.C. § 316(d) and 37 C.F.R. § 42.121
`
`
`

`

`IPR2017-02108
`Patent 8,508,751 B1
`
`
`I. INTRODUCTION
`On September 15, 2017, Aver Information Inc. and IPEVO, Inc.
`(“Petitioner”) filed a Petition (Paper 3, “Pet.”) pursuant to 35 U.S.C. §§ 311–
`319 to institute an inter partes review of claims 1–5, 7–10, 12–14, 16, 18,
`and 20 of U.S. Patent No. 8,508,751 B1 (Ex. 1001, “the ’751 patent”). On
`December 27, 2017, Pathway Innovations and Technologies, Inc. (“Patent
`Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”). Applying
`the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of
`a reasonable likelihood that Petitioner would prevail with respect to at least
`one challenged claim, we granted Petitioner’s request and instituted an inter
`partes review on claims 1–5 and 7, but not claims 8–10, 12–14, 16, 18, and
`20. Paper 9 (“Institution Dec.”). Following the Supreme Court’s decision in
`SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018), we modified our Institution
`Decision to institute trial on all of the claims challenged and all of the
`grounds presented in the Petition. Paper 10.
`Following institution, Patent Owner filed a Response to the Petition
`(Paper 11, “PO Resp.”) and Petitioner filed a Reply (Paper 16, “Pet. Reply”).
`Also, Patent Owner filed a Motion to Amend (Paper 12, “Mot. to Amend”).
`Petitioner filed an Opposition to the Motion (Paper 17, “Mot. Amend
`Opp.”), Patent Owner filed a Reply (Paper 19, “Mot. Amend Reply”), and
`Petitioner filed a Sur-Reply (Paper 29, “Mot. Amend Sur-Reply”).
`In addition, Patent Owner filed a Motion for Observations on Cross
`Examination of Vijay Madisetti (Paper 20) and Petitioner filed a Response
`(Paper 25.) Finally, Patent Owner filed a Motion to Exclude Madisetti
`Declarations (Paper 23), Petitioner filed an Opposition to the Motion (Paper
`26), and Patent Owner filed a Reply (Paper 28.)
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`2
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`IPR2017-02108
`Patent 8,508,751 B1
`
`
`During a November 27, 2018 conference held between the panel and
`counsel for the parties, counsel for Patent Owner confirmed that the Motion
`to Amend is non-contingent. Paper 27. In addition, on November 30, 2018,
`we ordered that the Motion to Amend is directed to “proposed substitute
`claims 21–25, 27–30, 32–34, and 36 set forth in [the Reply to the Motion to
`Amend], Appendices A and B.” Paper 27, 5. These proposed claims are
`intended to substitute for challenged claims 1–5, 7–10, 12–14, and 16. Mot.
`Amend Reply Appendix A.
`An Oral Hearing was held on December 13, 2018. The Hearing
`Transcript (“Tr.”) is included in the record as Paper 30. Having considered
`the evidence of record, and for the reasons set forth below, we determine
`that Petitioner has failed to demonstrate by a preponderance of the evidence
`that claims 18 and 20 of the ’751 patent are unpatentable. In addition, for
`the reasons that follow, we deny the Motion to Amend as to proposed
`substitute claims 21–25, 27–30, 32–34, and 36. In addition, we grant the
`Motion to Amend to order cancellation of claims 1–5, 7–10, 12–14, and 16.
`We also deny the Motion to Exclude.
`
`II. BACKGROUND
`A. The ’751 Patent
`The ’751 patent, titled “Capturing Real-Time Video With Zooming
`Capability And Scanning High Resolution Still Images Of Documents Using
`The Same Apparatus,” was issued on August 13, 2013, from an application
`that was filed on April 4, 2012. Ex. 1001 at [10], [22], [45], [54]. The ’751
`patent “generally relates to document cameras . . . for both capturing real-
`time video with zooming capability and scanning high resolution still
`images.” Id. at col. 1, ll. 15–18. The ’751 patent describes a video camera
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`IPR2017-02108
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`that acquires both real-time video and still images of, for example, a
`document, and provides an output video image for display of either the video
`image or the still image by, for example, a projector. Id. at Title, Abstract,
`col. 3, ll. 18–34. The images are captured at resolutions multiple times
`larger than the resolution of the output display, to preserve the quality of the
`image while zooming-in or zooming-out digitally in real-time using
`computer software. Id. at Abstract, col. 6, ll. 34–38.
`An embodiment of the document imaging system described in the
`’751 patent is illustrated in Figure 3a of the patent, reproduced below.
`
`
`Figure 3a illustrates a document imaging system including personal
`computer 301 programmed with software 303, and miniaturized video
`camera 302 mounted so that it can capture images documents placed on
`surface 307. Id. at col. 4, l. 66–col. 5, l. 34. Not shown, but referred to as
`exemplary output displays, are projector and monitor displays. See id. at
`col. 3, ll. 30–34.
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`IPR2017-02108
`Patent 8,508,751 B1
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`
`Figure 5 of the ’751 patent, reproduced below, is a flow chart that
`illustrates the image processing and display steps of an exemplary
`embodiment.
`
`
`Figure 5 illustrates the acquisition at the computer of a live video stream
`from the camera via a USB connection, the acquisition of the video stream
`as a bitmap image, the scaling of the bitmap image to fit the output screen
`resolution, the rendering of the scaled image on the display, the various
`image manipulation events performed on the image in real time, including
`
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`IPR2017-02108
`Patent 8,508,751 B1
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`re-sizing (i.e., zooming in or out), and storage of either the real-time video
`image or a captured still image. Id. at col. 7, ll. 6–47.
`The ’751 patent provides an example of how an embodiment of the
`invention can be used:
`[A] user can keep the system on a commonly used desk surface,
`without consuming more than approximately 10 square inches
`of surface area, and can put a document or a 3D object under
`the facing-down image sensing unit of virtually any size or
`shape, and be able to click one button to snap a high resolution
`image of the object. At the same time, the user can transport
`the apparatus to a classroom setting to visually present[]
`instructional materials through a connected projector on a large
`screen, with real-time video, while maintaining the ability to
`zoom in and out on the object.
`Id. at col. 3, ll. 25–34.
`The ’751 patent asserts that offloading the processing of zooming
`functions to digital zooming software on a personal computer eliminates the
`need for a costly and bulky optical zoom lens assembly in the document
`camera, and the ability to capture both video and still images fulfills
`functions of both document camera systems and document scanner devices
`and presentation and video display devices. Id. at col. 7, ll. 56–59, col. 8, ll.
`21–24.
`
`B. Illustrative Claims
`Challenged claim 18 is reproduced below.
`18. A document imaging apparatus comprising:
`a personal computer containing a software programming
`
`unit;
`
`a miniaturized digital image sensing unit externally
`coupled to the personal computer comprising optics having an
`infinite focal length;
`
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`IPR2017-02108
`Patent 8,508,751 B1
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`
`wherein the personal computer is configured to control
`all actions of the miniaturized digital image sensing unit and
`cause the digital imaging unit to zoom in or zoom out in real-
`time while maintaining a resolution of a series of real-time
`images;
`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;
`a display for displaying the images; and
`a suspension arm for supporting the digital imaging unit
`at a distance from a target to be imaged.
`Ex. 1001, col. 10, ll. 35–52.
`Proposed substitute claim 21 is reproduced below, with the proposed
`amendments to issued claim 1 indicated by underlining and strikethroughs.
`21. 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
`video stream comprising a series of frame images from the slave
`digital image sensing unit;
`using the master personal processor to manipulate the
`video stream comprising a series of frame images, including
`zooming in or out without changing resolution of the video
`stream comprising a series of frame images;
`in the case of the manipulated series of frame images
`having a higher resolution than a display reference resolution,
`reducing the resolution of each of the manipulated series of frame
`images to that of the display 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,
`
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`IPR2017-02108
`Patent 8,508,751 B1
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`
`wherein the slave digital image sensing unit is removably
`connected to the master personal processor via a master personal
`processor port; and
`at the same time as receiving the video stream comprising
`a series of frame images, capturing a still image from the
`manipulated series of frame images in response to a user click of
`a button displayed in user interface software.
`Paper 19, 18–19
`
`C. References
`In the Petition, Petitioner relies on the following references. Pet. 20.
`
`US 7,239,338 B2
`
`Morichika US 2005/0078052 A1 Pub. Apr. 14,
`2005
`Iss. July 3,
`Krisbergh
`2007
`et al.
`Hara et al. US 2001/0012051 A1 Pub. Aug. 9,
`2001
`Iss. Dec. 12,
`2006
`US 2004/0174444 Al Pub. Sept. 9,
`2004
`
`US 7,148,911 B1
`
`Mitsui et
`al.
`Ishii
`
`(“Morichika”)
`
`(“Krisbergh”)
`
`(“Hara”)
`
`(“Mitsui”)
`
`(“Ishii”)
`
`Ex.
`1002
`Ex.
`1003
`Ex.
`1004
`Ex.
`1005
`Ex.
`1006
`
`In opposing to the Motion to Amend, Petitioner additionally relies on
`the following references.1 Mot. Amend Opp. 3–11, 16–25
`
`Gann et
`al.
`
`US 6,965,460 B1
`
`Iss. Nov. 15,
`2005
`
`Ex.
`1007
`
`(“Gann”)
`
`
`1 Patent Owner argues Petitioner introduces new arguments in opposition to
`its Motion to Amend that should have been raised in the original Petition.
`Mot. Amend Rep. 7–8. However, we determine that the addition of the
`explicit requirements regarding the input of a video stream in the proposed
`substitute claims, as well as other additional claim limitations discussed
`below, justifies Petitioner’s reliance on new references and obviousness
`arguments.
`
`8
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`IPR2017-02108
`Patent 8,508,751 B1
`
`
`US 6,540,415 B1
`
`Iss. April 1,
`2003
`US 2009/0002548 A1 Pub. Jan. 1,
`2009
`Iss. Oct. 3,
`2000
`
`US 6,128,006
`
`(“Slatter”)
`
`(“Liang”)
`
`(“Rosenberg”)
`
`Ex.
`1021
`Ex.
`1023
`Ex.
`1024
`
`Slatter et
`al.
`Liang et
`al.
`Rosenberg
`et al.
`
`In addition, both parties also rely on declaration testimony. Petitioner
`provides expert declarations of Dr. Vijay Madisetti. Exs. 1020, 1025
`(hereafter “Madisetti Decl.” and “Madisetti 2nd Decl.,” respectively). Patent
`Owner relies on the expert declaration of Dr. Jeffrey J. Rodriguez. Ex. 2002
`(hereafter “Rodriguez Decl.”). The record also includes deposition
`transcripts for these witnesses.2
`D. Asserted Grounds of Unpatentability
`Petitioner asserted the following grounds of unpatentability in the
`Petition. Pet. 20.
`
`Reference(s)
`
`Claims
`1–5, 7, 18, and 20 Morichika
`8–10, 12, 14, and 16 Krisbergh and Hara
`13 and 16 Krisbergh, Hara, and Mitsui
`1–5, 8, and 16 Ishii
`
`Basis
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`
`Because claims 1–5, 7–10, 12–14, and 16 are cancelled, the only remaining
`original ground to be considered is obviousness of claims 18 and 20 over
`Morichika.
`In opposition to the Motion to Amend, Petitioner asserted the
`following grounds of unpatentability. Mot. Amend Opp. 3–11, 16–25; Mot.
`Amend Sur-Reply 3–5.
`
`
`2 Ex. 1022 (“Rodriguez Dep.”); Ex. 2006 (“Madisetti Dep.”).
`
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`IPR2017-02108
`Patent 8,508,751 B1
`
`
`Claims
`21–25, 27–30, 32–34,
`and 36
`22–25 and 27 Morichika, Liang, and Rosenberg
`
`Reference(s)
`Morichika and Liang
`
`Basis
`§ 103(a)
`
`§ 103(a)
`
`Petitioner also relies on Gann and Slatter as prior art background. Mot.
`Amend Opp. 3–6.
`
`E. Real Parties in Interest
`Petitioner identifies AVer Information Inc., Aver Information Inc.,
`AVer Media Technologies, Inc., IPEVO, Inc., and IPEVO, Corp. as real
`parties in interest in this proceeding. Pet. 1.
`Patent Owner identifies only itself as a real party in interest.
`Paper 5, 1.
`
`F. Related Proceedings
`The parties identify the following proceedings as involving the ’751
`patent: (1) In the Matter of Certain Document Cameras and Software for
`Use Therewith, 337-TA-967 (USITC); (2) In the Matter of Certain
`Document Cameras and Software for Use Therewith, 337-TA-1045
`(USITC); (3) Pathway Innovations and Technologies, Inc. v. Recordex USA,
`Inc. et al., 3:15-cv-01536 (S.D. Cal.); (4) Pathway Innovations and
`Technologies, Inc. v. QOMO Hite Vision, LLC, 3:15-cv-01540 (S.D.
`Cal.); (5) Pathway Innovations and Technologies, Inc. v. IPEVO, Inc., 3:17-
`cv-00312-CAB-BLM (S.D. Cal.); (6) Pathway Innovations and
`Technologies, Inc. v. Aver Information Inc., 3:17-cv-00315-CAB-BLM
`(S.D. Cal.); (7) Pathway Innovations and Technologies, Inc. v. Lumens
`Integration, Inc., 3:17-cv-00316-CAB-BLM (S.D. Cal.); (8) Qomo Hite
`
`10
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`

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`Vision, LLC v. Pathway Innovations and Technologies, Inc., IPR2016-00661
`(PTAB).3 Pet. 1–2; Paper 5, 1–2.
`
`III. CLAIM CONSTRUCTION
`The Board interprets claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b) (2017)4; Cuozzo Speed Techs., LLC
`v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`reasonable interpretation standard). The broadest reasonable construction is
`an interpretation that corresponds with how the inventor describes his
`invention in the specification, i.e., an interpretation that is “consistent with
`the specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)
`(citation and internal quotation marks omitted); see also In re Suitco Surface
`Inc., 603 F.3d 1255, 1259–60 (Fed. Cir. 2010). An inventor may provide a
`meaning for a term that is different from its ordinary meaning by defining
`the term in the specification with reasonable clarity, deliberateness, and
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Otherwise,
`terms are given their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art at the time of the invention. In
`re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007.)
`
`
`3 The IPR2016-00661 proceeding was terminated pursuant to a settlement
`agreement on November 18, 2016. IPR661, Paper 12.
`4 A recent amendment to this rule does not apply here because the Petition
`was filed before November 13, 2018. See Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018)
`(amending 37 C.F.R. § 42.100(b) effective November 13, 2018).
`
`
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`IPR2017-02108
`Patent 8,508,751 B1
`
`
`The parties identify a number of claim terms for construction. Pet. 8–
`13; Prelim. Resp. 8–17. For purposes of this Decision, it is not necessary to
`resolve all of the parties’ claim construction issues — we consider certain of
`the parties’ issues below, as well as certain claim terms that the parties do
`not consider. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.
`Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only
`construe terms ‘that are in controversy, and only to the extent necessary to
`resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`A. “a video stream comprising a series of frame images”
`Issued claims 1 and 3 require “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.” Ex. 1001, col. 8, ll. 49–52, col. 9, ll. 4–7 (emphasis added). In the
`Decision to Institute Inter Partes Review, we concluded this claim language
`encompassed capturing a series of still frame images and is not limited to
`capturing video frame images. Institution Dec. 9–13.
`Patent Owner seeks to amend the pertinent language of substitute
`claims 21 and 23 to “connecting a slave digital image sensing unit to a
`master personal processor, the master personal processor receiving a video
`stream comprising a series of frame images from the slave digital image
`sensing unit.” Mot. Amend Reply 19. Therefore, these claims would be
`limited to capturing video frame images.
`However, this raises the issue of the meaning of “frame images,”
`including the distinction to be made between “a series of frame images” in
`issued claims 1 and 3, and “a video stream comprising a series of frame
`
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`IPR2017-02108
`Patent 8,508,751 B1
`
`images” in substitute claims 21 and 23. Neither party provides any explicit
`guidance on this issue. Nevertheless, as confirmed by Patent Owner’s
`expert, there is no dispute that, broadly but reasonably construed, a single
`frame image of a video stream is essentially the same as a still frame image
`for all purposes pertinent here.5 Rodriguez Dep. 13:14–19, 14:6–13, 15:12–
`16, 16:14−20. On the other hand, taking a series of still frame images by
`capturing them one at a time with a still camera does not necessarily
`generate a video stream — at least nothing in the record suggests otherwise.6
`At minimum, in this context, a video stream consists of a series of frame
`images captured automatically, whereas each still frame image is captured
`by a user manually clicking on a shutter button or the like. For example, the
`’751 patent describes using a camera “capable of capturing real-time video
`at approximately 30 frames per second . . . .” Ex. 1001, col. 5, ll. 40–42.
`However, the ’751 patent does not limit “video” to any particular frame rate.
`The ’751 patent also describes capturing a “continuous stream of
`frames of images.” Id. at col. 6, ll. 13–14. Indeed, substitute claim 28
`includes the limitation, “instructing a digital image sensing unit to transmit a
`
`
`5 As discussed further below, some compressed video formats have video
`frame images that refer to adjacent frame images or are otherwise
`distinguishable from a standard still frame image. However, nothing in the
`’751 patent would limit “frame images” to such formats; instead, at least the
`disclosed embodiments capture “raw data” in the form of image bits directly
`from “electronic image sensing technologies, such as CMOS or CCD
`sensors,” where “[e]ach 2 mega-pixel or above frame of image is captured in
`one instantaneous snap shot of the entire surface area” — essentially an
`ordinary still frame image. Ex. 1001, col. 2, ll. 53–54, col. 6, ll. 16–18.
`6 For example, Petitioner argues it would have been obvious to substitute the
`still camera of Morichika with a video camera, and does not assert such a
`still camera itself necessarily generates video. Pet. 20–21.
`
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`continuous stream of video frames at a constant rate . . . .” Mot. Amend
`Reply 21. On the other hand, neither of substitute claims 21 or 23 includes
`the requirement that the video be captured continuously at a constant rate.
`Therefore, we conclude that the broadest reasonable construction of a “video
`stream comprising a series of frame images” is a series of frame images
`captured automatically, but not necessarily continuously at a constant rate.
`See Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 699 (Fed. Cir.
`1983) (“It is improper . . . to read into an independent claim a limitation
`explicitly set forth in another claim.”).
`B. “in the case of…”
`The phrase “in the case of” appears in issued independent method
`claims 1 and 3, and corresponding substitute method claims 21 and 23. As
`Petitioner points out, the Board has issued a precedential opinion holding
`that the broadest reasonable interpretation of a method claim that has claim
`limitations including conditions precedent encompasses those instances
`where the condition is not met. Pet. 10; Ex parte Schulhauser, Appeal No.
`2013-007847, 2016 WL 6277792, at *3–5 (PTAB Apr. 28, 2016)
`(precedential); see also Teradata Operations, Inc. v. Realtime Data LLC,
`IPR2017-00557, 2018 WL 3155819, at *8 (PTAB June 25, 2018) (holding
`Schulhauser applies to an inter partes review). Thus, prior art that teaches
`or suggests a process in which the condition precedent is not triggered, but
`includes the remaining limitations (i.e., the limitations not subject to the
`conditions precedent), may render the claim obvious. Patent Owner does not
`dispute this interpretation. PO Resp. 6.
`
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`
`C. “optics having an infinite focal length”
`Claim 18 requires “a miniaturized digital image sensing unit
`externally coupled to the personal computer comprising optics having an
`infinite focal length.” Ex. 1001, col. 10, ll. 38–40 (emphasis added).
`Petitioner originally proposed construing “infinite focal length” as “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.” Pet. 11. However, Petitioner no longer
`supports this construction, but rather, concedes that “[t]he Board correctly
`decided that the appropriate construction of this term [is] based on its plain
`meaning.” Pet. Reply 12 (referring to Institution Dec. 14). Patent Owner
`proposes construing the phrase as “optics having a focal range ensuring
`objects appear focused even when located one meter or more away from the
`digital image sensing unit.” PO Resp. 6.
`We remain unconvinced that Patent Owner’s proposed construction is
`consistent with the plain and ordinary meaning. See Translogic Tech., 504
`F.3d at 1257 (noting that claim terms are generally given their ordinary and
`customary meaning). As Patent Owner admits, the ordinary meaning of
`“optics having an infinite focal length” is optics where the focus of parallel
`incoming rays is an infinite distance from the optics — for example, in
`theory a perfectly flat piece of glass has an infinite focal length. Prelim.
`Resp. 15–16.
`Patent Owner relies on the statement in the ’751 patent:
`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 sharp even when
`the DISU is substantially far away.
`
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`Ex. 1001, col. 5, ll. 45–48; see PO Resp. 14. However, this discussion of
`depth of field bears no relationship to the meaning of “infinite focal length.”
`Moreover, the ’751 patent specifically refers to an embodiment with “an
`infinite focal length digital camera,” and “optics having an infinite focal
`length.”7 Id. at col. 7, l. 62, col. 4, l. 29.
`Therefore, we conclude that the construction of “optics having an
`infinite focal length” is “optics where the focus of parallel incoming rays is
`at an infinite distance from the optics,” consistent with the plain and
`ordinary meaning of the term. See also Ex. 1014, 38.
`D. “a non-transitory medium”
`Substitute claim 28 includes the requirement “storing the display
`resolution in a non-transitory medium.” Mot. Amend Reply 21. The ’751
`patent at one point describes digital information being stored in “a
`non-transitory storage medium,” and at another point in “a file or memory.”
`Ex. 1001, Fig. 5, col. 4, ll. 33–36, col. 7, ll. 35–38. Therefore, we conclude
`that the construction of “storing the display resolution in a non-transitory
`medium” encompasses storing the display resolution in a file, such as a file
`on a disk drive, or a memory, including a random access memory (RAM).
`E. “zooming in or out without changing resolution of the video stream
`comprising a series of frame images”
`
`
`7 Patent Owner asserts, “this refers to the ability to focus at infinity, as is
`understood in the context of photography, especially given the use of the
`claim term ‘camera.’” PO Resp. 14. There is no support for this in the
`record, and the fact that a camera can focus at infinity, or at some other
`distance, is not the same optical property as either depth of field or focal
`length.
`
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`
`
`Substitute claims 21 and 23 require “using the master personal
`processor to manipulate the series of frame images, including zooming in or
`out without changing resolution of the video stream comprising a series of
`frame images.” Mot. Amend Reply 19, 20. The antecedent to the “video
`stream comprising a series of frame images” is the video stream received by
`the processor from the image sensing unit. Id. at 19. This requirement
`relates to the purported advance of the ’751 patent — offloading the
`processing of zooming functions to digital zooming software on a personal
`computer rather than performing zooming functions in the digital camera.
`Ex. 1001, col. 7, ll. 56–59. Thus, the “image sensing unit” (i.e., the camera)
`provides a video stream of a given resolution (preferably a higher resolution
`than that of the display screen), with the magnification and scaling functions
`confined to the separate processor. Id. at col. 6, ll. 20–26.
`Thus, we conclude “zooming in or out without changing resolution of
`the video stream comprising a series of frame images” means zooming in or
`out without changing resolution of the video stream received from the slave
`digital image sensing unit. See Ex. 1014, 25.
`
`IV. OBVIOUSNESS OF CLAIMS 18 AND 20 OVER MORICHIKA
`Petitioner’s sole remaining original ground challenges issued claims
`18 and 20 as obvious over Morichika. Pet. 20–44.
`A. Obviousness – In General
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which said subject matter
`pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
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`The question of obviousness is resolved on the basis of underlying
`factual determinations, including (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) where in evidence, so-called
`secondary considerations, including commercial success, long-felt but
`unsolved needs, failure of others, and unexpected results (“the Graham
`factors”).8 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)
`If the claimed subject matter cannot be fairly characterized as
`involving the simple substitution of one known element for another or the
`mere application of a known technique to a piece of prior art ready for the
`improvement, a holding of obviousness can be based on a showing that
`“there was an apparent reason to combine the known elements in the fashion
`claimed.” KSR, 550 U.S. at 418. Such a showing requires “some articulated
`reasoning with some rational underpinning to support the legal conclusion of
`obviousness.” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
`“[A] combination of familiar elements according to known methods is
`likely to be obvious when it does no more than yield predictable results.”
`KSR, 550 U.S. at 416. “[I]n many cases a person of ordinary skill will be
`able to fit the teachings of multiple patents together like pieces of a
`puzzle. . . . A person of ordinary skill is also a person of ordinary creativity,
`not an automaton.” Id. at 420–421.
`“The test for obviousness is not whether the features of a secondary
`reference may be bodily incorporated into the structure of the primary
`reference. . . . Rather, the test is what the combined teachings of those
`
`
`8 Patent Owner did not present evidence on the fourth Graham factor. We
`therefore do not consider that factor in this decision.
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`references would have suggested to those of ordinary skill in the art.” In re
`Keller, 642 F.2d 413, 425 (CCPA 1981). “Combining the teachings of
`references does not involve an ability to combine their specific structures.”
`In re Nievelt, 482 F.2d 965, 968 (CCPA 1973).
`B. Level of Skill
`Petitioner submits that a person of ordinary skill in the art of the ’751
`Patent as of January 28, 2010 (the earliest possible priority date of the ’751
`Patent) would have had a bachelor of science 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. Pet. 7 (citing Madisetti Decl. ¶¶ 15–16). Patent Owner agrees with
`this formulation. PO Resp. 5–6 (citing Rodriguez Decl. ¶ 23). Patent
`Owner’s expert elaborated on this formulation, testifying that “capturing
`real-time video” means “capturing video with sufficient processing
`capability that the capturing could keep up with the incoming frame rate.”
`Rodriguez Dep. 36:13–17. We find this formulation, including the expert’s
`elaboration, supported by the record and adopt it.
`C. The Morichika Reference
`Morichika, titled “Display Image Generating Device Comprising
`Converting Function Of Resolution,” was filed October 13, 2004, issued
`April 14, 2005. Ex. 1002 at [22], [43], [54]. Morichika discloses a
`document camera system in which the camera captures a still frame image at
`a high resolution and projects the image at a lower resolution, such that the
`projected image quality is maintained when a portion of the document is
`projected as a magnified image. Id. at Abstract, ¶ 64.
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`Figure 1 of Morichika, reproduced below, illustrates the components
`of the document camera system.
`
`
`Figure 1 illustrates a “photographed image projection system” including a
`projector 1, and a personal computer 2 connected to a still camera 4 via a
`USB cable. Ex. 1002 ¶¶ 17, 28–32. The captured still frame image is sent
`to the computer via the USB cable, converted to a standard video signal, and
`sent to the projector via an RGB cable. Id. ¶¶ 32, 38–39.
`In an illustrative embodiment, the camera captures the still frame
`image at a resolution of 1,500 x 2,000 pixels (i.e., for a total of 3
`megapixels), and the video image is projected at “XGA” resolution, which is
`768 x 1,024 pixels (i.e., 786,482 pixels). Id. ¶¶ 52, 58, 61–62. When a full
`size image is projected, the resolution of the captured image is scaled down
`to the projector resolution. Id. at Figs. 7, 8, 9A–9C, ¶¶ 51–57. When an
`image is magnified — for example, by a factor of 1.25 — only the
`appropriate portion of the captured image is scaled down to the projector
`resolution — for example, in the case of 1.25 magnification, a 1,200 x 1,600
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`pixel portion of the original is scaled down to the display resolution. Id. at
`Figs. 10, 11A–11C, ¶¶ 58–62. This approach preserves image quality during
`magnification, in contrast to approaches where the captured resolution is the
`same as or less than the projected resolution. Id. ¶¶ 8, 64
`D. Claims 18 an