Trials@uspto.gov
`571-272-7822
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`
`Paper 7
`Entered: March 21, 2018
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`
`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.
`
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`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,
`
`
`571-272-7822
`
`
`
`
`
`Paper 7
`Entered: March 21, 2018
`
`
`
`
`
`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.
`
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`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,
`
`
`
`IPR2017-02108
`Patent 8,508,751 B1
`
`and 20 of U.S. Patent No. 8,508,751 B1 (“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 institute an inter partes review of claims 1–5 and
`7, but not claims 8–10, 12–14, 16, 18, and 20. The Board has not made a
`final determination on the patentability of any claim.
`
`I. 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], [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
`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 via, 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 allow for the effect of
`zooming-in or zooming-out in real-time, digitally in 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.
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`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.
`Figure 5 of the ’751 patent, reproduced below, is a flow chart that
`illustrates the image processing and display steps of an exemplary
`embodiment.
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`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
`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.
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`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 Claim
`Challenged claim 1 is reproduced below.
`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, col. 8, ll. 46–65.
`
`5
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`US 7,239,338 B2
`
`US 7,148,911 B1
`
`Mitsui et
`al.
`Ishii
`
`(“Morichika”)
`
`(“Krisbergh”)
`
`(“Hara”)
`
`(“Mitsui”)
`
`(“Ishii”)
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`
`C. References
`Petitioner relies on the following references. Pet. 20.
`Morichika US 005/0078052 A1
`Pub. Apr. 14,
`Ex.
`2005
`1002
`Iss. July 3,
`Ex.
`Krisbergh
`2007
`et al.
`1003
`Hara et al. US 2001/0012051 A1 Pub. Aug. 9,
`Ex.
`2001
`1004
`Iss. Dec. 12,
`Ex.
`2006
`1005
`US 2004/0174444 Al Pub. Sep. 9,
`Ex.
`2004
`1006
`
`
`
`In addition, Petitioner provides an expert declaration of Dr. Vijay Madisetti,
`which we have also considered for purposes of this Decision. Ex. 1020.1
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserted the following grounds of unpatentability. Pet. 20.
`
`Reference(s)
`
`Claims
`Morichika
`1–5, 7, 18, and 20
`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)
`
`
`1 Patent Owner asserts “Dr. Madisetti’s testimony is conclusory, not
`credible, and should be excluded or given no weight,” because “Dr.
`Madisetti merely reiterates attorney arguments and fails to provide any
`articulated reasoning as to how his supposed opinions were reached.”
`Prelim. Resp. 17–18. We will not exclude Dr. Madisetti’s declaration at this
`juncture, and will consider his testimony to the extent it assists our review of
`the grounds of unpatentability propounded in the Petition.
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`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) (“the ’1045 ITC Investigation”); (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.); (4) Pathway Innovations and Technologies, Inc.
`v. IPEVO, Inc., Case No. 3:17-cv-00312-CAB-BLM (S.D. Ca.); (5) Pathway
`Innovations and Technologies, Inc. v. Aver Information Inc., Case No. 3:17-
`cv-00315-CAB-BLM (S.D. Ca.); (6) Pathway Innovations and
`Technologies, Inc. v. Lumens Integration, Inc., Case No. 3:17-cv-00316-
`CAB-BLM (S.D. Cal.); (7) Qomo Hite Vision, LLC v. Pathway Innovations
`and Technologies, Inc., IPR2016-00661 (PTAB) (“IPR661”).2 Pet. 1–2;
`Paper 5, 1–2.
`
`
`2 The IPR661 proceeding was terminated pursuant to settlement agreement
`on November 18, 2016. IPR661, Paper 12.
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`
`II. ANALYSIS
`A. 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); 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.)
`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 one claim term 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
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`resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`
`1. “a series of frame images”
`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).
`Petitioner asserts the broadest reasonable construction of “a series of
`frame images” is “a plurality of still images.” Pet. 8. Petitioner argues that
`its proposed construction is “consistent with the intrinsic record.” Pet. 9.
`According to Petitioner, “‘a plurality of still images’ is consistent with both
`non-video contexts . . . and video specific contexts.” Id. We are not
`persuaded this is sufficient reason to rewrite the claim language by to
`substituting the word “plurality” for “series,” nor the word “still” for
`“frame,” as Petitioner proposes.
`Patent Owner asserts the proper construction is “a plurality of video
`images.” Prelim. Resp. 10. This construction is inconsistent with the
`Specification of the ’751 patent, describing a “video image” as made up of
`“a plurality of frame images.” Ex. 1001, Abstract, col. 3, ll. 44–45, col. 4, ll.
`17–18. Thus, we are not persuaded to adopt Patent Owner’s proposed
`construction, “a plurality of video images,” inter alia, because a video image
`is itself a plurality of frame images.
`Although we decline to adopt either party’s construction for “a series
`of frame images,” for the purpose of this Decision, we agree with Petitioner
`that the phrase is not limited to video. We note that our determination is
`consistent with the construction of this term in the Decision To Institute in
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`the aforementioned ’661 PTAB Proceeding, also directed to the ’751 patent.
`Ex. 1013, 6–7. In the context of the Specification, the “slave digital image
`sensing unit” can be a still camera, a video camera, or a dual function
`still/video camera — the latter being described as the preferred embodiment
`in the Specification. Ex. 1001, col. 3, ll. 18–24 (“a document imaging
`system . . . being capable of producing real-time high resolution zoomable
`video and being capable of capturing high resolution still images of
`documents with one click ‘scan’ processing”). As Petitioner notes,
`“[a]pplicant does not, in any way, limit ‘a series of frame images’ to a video
`only construction.” Pet. 9.
`It is correct that, as described in the Specification, a video image is “a
`series of frame images.” See, e.g., id. at Abstract. For example, as the
`Specification indicates, one standard video image consists of 30 frames per
`second. Id. at col. 5, ll. 40–41. However, successive images captured by a
`still camera (for example, by repeating the aforementioned “one click ‘scan’
`processing”) are also a series of frame images under a broad but reasonable
`construction of that phrase. “Frame image” in this context is not necessarily
`limited to a video frame. An example of broader usage of the term “frame”
`appears in the record: “[i]t should be noted that the image captured or
`information stored may consist of a still image (e.g., a single frame of
`information) or a full sequence of images and audio . . . .” Ex. 1003, col. 12,
`ll. 33–35 (emphasis added).
`Patent Owner argues the preamble language, “[a] method of acquiring
`an image of a target to provide an output video image comprising a plurality
`of frame images,” requires limiting the “series of frame images,” received by
`the processor from the camera, to video frames. Prelim. Resp. 10 (emphasis
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`added). However, a person of ordinary skill in the art would have
`understood that a still image can be captured, and then converted to an
`output video image. See Ex. 1002, ¶¶ 32, 39, 45. Although claims 1 and 3
`limit the output to a “video image,” they do not so limit the input.
`Patent Owner also points out that the ’751 patent uses the word
`“frame” in the context of video, but in contrast does not refer to a single
`captured still image as a “frame.” Prelim. Resp. 10–11. However, this
`usage in describing an illustrative embodiment involving video input does
`not amount to the provision of a narrowing definition of “frame” in the
`Specification. Therefore, this argument is unpersuasive because it attempts
`to read limitations from the Specification into the claims. In re Van Geuns,
`988 F.2d 1181, 1184 (Fed. Cir. 1993).
`In addition, we note that claim 8 of the ’751 patent explicitly limits
`the “method of acquiring an image” to “capturing a video image comprising
`the series of frame images.” Ex. 1001, col. 9, ll. 48–54 (emphasis added).
`In contrast to claim 8, the absence of the word “video” linked to the “series
`of frame images” limitation at issue in claims 1 and 3 confirms our
`conclusion that those claims are not limited to acquiring video frames. See
`Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 699 (Fed. Cir. 1983).
`Patent Owner argues the intrinsic evidence requires limiting “a series
`of frame images” to video frames, because the illustrative embodiment only
`discusses zooming the video input of the disclosed dual-purpose camera,
`while the still image input is at most captured and stored at full resolution.
`Prelim. Resp. 11–12. However, claims 1 and 3 require the subject “series of
`frame images” to be “zoom[ed] in or out without changing resolution of the
`frame images.” E.g., Ex. 1001, col. 8, ll. 54–55 (emphasis added). This
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`limitation appeared in original claim 1 as filed, but is not referred to, let
`alone explained, anywhere else in the Specification. We are directed to
`nothing in the detailed description of the illustrative embodiment that
`explains how the video image input is zoomed in or out without changing
`the resolution of the acquired frame images. A real time video image
`consists of a rapid series of still images — for example, 30 frames per
`second. Id. at col. 5, ll. 40–41. As described in the ’751 patent, a “live
`video stream” is received by the computer from the camera via a USB
`connection, read into a bitmap, and continuously rendered on the display as
`it is being enlarged or reduced in accord with the desired zooming controls,
`or otherwise manipulated. Id. at Fig. 5, col. 7, ll. 6–33. The zooming or
`other manipulation is displayed in real time — i.e., “the manipulation would
`cause no more than a delay of twenty milliseconds between the time that the
`user enters a command and the command is executed.” Id. at col. 3, ll. 55–
`58. Thus, the resolution of each video frame in an incoming video stream
`undergoing a zooming manipulation must be changed in real time in accord
`with the desired amount of zoom.
`In contrast, as discussed in more detail infra in connection with the
`Morichika patent (Ex. 1002), an ordinarily skilled artisan would have
`understood that a captured still image can be stored in a frame buffer for the
`duration of any zooming or other image manipulation events — in contrast
`to the constantly changing video frames in the video stream. Translogic
`Tech., 504 F.3d at 1257. The stored still image may be continuously read
`out of memory, scaled, and converted to video without changing the
`resolution of the originally acquired, stored image, just as required in claims
`1 and 3. Thus, the claim requirement that the series of frame images must be
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`zoomed in or out “without changing resolution of the frame images”
`supports construing “a series of frame images” as including a series of still
`images.
`Therefore, we conclude that “a series of frame images” is not limited
`to video frames.
`
`2. “in the case of…”
`The phrase “in the case of” appears in claims 1, 3, and 8. 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). Thus, only the remaining limitations (i.e., the limitations not
`subject to the conditions precedent) need to be taught or suggested in the
`prior art for the claim to be obvious. At this juncture, Patent Owner does not
`dispute this interpretation. Prelim. Resp. 8.
`3. “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 proposes 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. Patent Owner proposes construing the
`phrase as “optics having a focal range ensuring objects appear focused even
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`when located one meter or more away from the digital image sensing unit.”
`Prelim. Resp. 15.
`We are not convinced that either 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, a flat
`piece of glass has an infinite focal length. Prelim. Resp. 15–16.
`Both parties rely 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.
`Ex. 1001, col. 5, ll. 45–48; see Pet. 12; Prelim. Resp. 15. However, this
`discussion of depth of field bears no relationship to the meaning of “infinite
`focal length.”
`Therefore, we determine that on the record presented, 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.
` 4. “in one instantaneous snapshot of”
`Claim 8 requires “capturing a video image comprising the series of
`frame images in one instantaneous snapshot of a subject’s entire surface area
`without line-by-line scanning. . . .” Ex. 1001, col. 9, ll. 53–55. In
`connection with this limitation, the Specification describes that “[e]ach
`2 mega-pixel or above frame of image is captured in one instantaneous snap
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`shot of the entire surface area, without the need of line by line
`scanning . . . .” Id. at col. 6, ll. 16–19. However, while the latter passage
`refers to an individual frame being captured simultaneously, the claim
`requires the entire series of frames of indeterminate number, occurring
`successively over a period of time, to be captured simultaneously. This is
`not possible. We note that the ’1045 ITC Investigation so held, and
`accordingly concluded this claim limitation is indefinite.3 Ex. 1014, 43; see
`also Trs. Of Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1366–67
`(Fed. Cir. 2016) (holding claims indefinite when they “describe the step of
`extracting machine code instructions from something that does not have
`machine code instructions”); Allen Eng’g Corp. v. Bartell Indus., Inc., 299
`F.3d 1336, 1349 (Fed. Cir. 2002) (refusing to rewrite “perpendicular” into
`“parallel” despite clear disavowal of perpendicular pivots in the
`specification).
`We similarly find that we are unable to determine the proper scope of
`claim 8 without speculation because of this phrase. Because we are unable
`to construe claim 8, we cannot conduct a necessary factual inquiry for
`determining obviousness—ascertaining differences between the claimed
`subject matter and the prior art.” See BlackBerry Corp. v. Mobile Media
`Ideas, LLC, Case IPR2013-00036, slip op. at 20 (PTAB Mar. 7, 2014)
`(Paper 65) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)).
`
`
`3 Patent Owner requests exclusion of any evidence regarding claim
`construction proceedings in the ’1045 ITC Investigation. Prelim. Resp. 9–
`10. Although not binding, for purposes of this Decision, we consider the
`ITC’s claim construction decision in that proceeding as instructive.
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`Thus, we determine that Petitioner has failed to demonstrate there is a
`reasonable likelihood that Petitioner would prevail in establishing the
`unpatentability of that claim based on the prior art grounds asserted by
`Petitioner in this proceeding. We deny institution with respect to claim 8, as
`well as claims 9, 10, 12–14, and 16, which depend from claim 8. Id. at 19–
`20 (citing In re Steele, 305 F.2d 859, 862–63 (CCPA 1962), for the
`proposition that “the prior art grounds of unpatentability must fall, pro
`forma, because they are based on speculative assumption[s] as to the
`meaning of the claims”).
`
`B. Obviousness over Morichika
`Petitioner challenges claims 1–5, 7, 18, and 20 as obvious over
`Morichika. Pet. 20–44. Morichika, titled “Display Image Generating
`Device Comprising Converting Function Of Resolution,” was filed October
`13, 2004, issued April 14, 2005. Ex. 1002. Morichika discloses a document
`camera system in which the camera captures a still 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.
`Figure 1 of Morichika, reproduced below, illustrates the components
`of the document camera system.
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`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 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. at ¶¶ 32, 38–39.
`In an illustrative embodiment, the camera captures the still 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. at ¶¶ 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, a 1,200 x 1,600 pixel portion in the case of 1.25 magnification.
`Id. at Figs. 10, 11A–11C, ¶¶ 58–62. This approach preserves image quality
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`during magnification, in contrast to approaches where the captured
`resolution is the same as or less than the projected resolution. Id. at ¶¶ 8, 64
`
`1. Claims 1, 2, and 3
`In challenging independent claims 1 and 3, and dependent claim 2,
`Petitioner relies, inter alia, on Morichika Figure 1 and the accompanying
`description as teaching or suggesting “acquiring an image of a target to
`provide an output video image comprising a plurality of frame images,” as
`recited in the preamble of claims 1 and 3. Pet. 21–22, 30. Likewise,
`Petitioner relies on the disclosure in Morichika of transferring still images
`from the camera to the personal computer as teaching or suggesting
`“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,” as required by claims 1 and 3.
`Pet. 23–24, 31–32. In particular, Morichika provides for processing of “to-
`be-projected images” — i.e., a series of images. Ex. 1002, ¶ 40. Upon
`review of Petitioner’s explanations and supporting evidence in the current
`record, we are persuaded that Petitioner has established sufficiently for
`purposes of this Decision that Morichika teaches or suggests this claim
`limitation of claims 1 and 3.
`For the claims 1 and 3 limitation, “using the master personal processor
`to manipulate the series of frame images, including zooming in or out
`without changing resolution of the frame images,” Petitioner relies on the
`above-described disclosure in Morichika of zooming capabilities. Pet. 24–
`26, 31; Ex. 1002, ¶¶ 58–62. In particular, Petitioner relies on Figures 11A–
`11C, reproduced below.
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`Figures 11A–11C illustrate the zooming operation of Morichika, in which an
`area (indicated as “Q”) of photographed image G2, which prior to
`magnification occupies area R on the display, is magnified by scaling the
`portion Q to fill the entire display area G4. Ex. 1002, ¶¶ 59–62.
`As Petitioner argues, this zooming operation satisfies the requirement
`that zooming does not change the resolution of the acquired frame images,
`because as indicated in Figures 11A–11B, the captured image G2 is retained
`in memory at its original resolution while zooming operations take place.
`Pet. 25–26; Ex. 1002, Fig. 2 (RAM 22), ¶ 32; see also Ex. 1013, 10–12. In
`particular, Morichika requires that the original captured image be stored with
`its original resolution so that it can be “re-obtain[ed]” in order to scroll the
`magnified image — i.e., to move the magnified view to different areas of the
`original image — or to reduce the magnified image back to its original size.
`Pet. 26; Ex. 1002, ¶ 63.
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`Claim 3 adds the limitation, “wherein the manipulation of the series of
`frame images is executed in response to a user request in real time,” and
`claim 2, which depends from claim 1, adds a commensurate limitation. Ex.
`1001, col. 8, ll. 66–67, col. 9, ll. 12–13. As Petitioner argues, Morichika
`teaches or suggests such real time operation in response to user requests.
`Pet. 29–31; Ex. 1002, ¶¶ 58, 65.
`Claim 1 further 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.” Ex. 1001, col. 8, ll. 56–59. Claim 3 has a
`commensurate requirement, expressed in terms of a “first resolution” and a
`“second resolution.” Id. at col. 9, ll. 14–21. The resolution of the
`“manipulated series of frame images” of claim 1 corresponds to the “first
`resolution” of claim 3, and both correspond to the resolution of the portion
`of the acquired image to be magnified in the example of zooming disclosed
`in Morichika. Ex. 1002, Fig. 11B (area “Q”). Likewise, the “reference”
`resolution of claim 1 corresponds to the “second resolution” of claim 3, and
`both correspond to the resolution of the Morichika display. Pet. 27, 32–33;
`Ex. 1002, Fig. 11C (“G4”). Given the evidence in the current record, we
`determine that Petitioner has established sufficiently for purposes of this
`Decision that these claim limitations are taught or suggested by the above
`described scaling operation of Morichika in which the zoomed images are
`scaled to fit the output display.
`Claim 3, but not claim 1, requires “in the case of the manipulated
`frame image having a lower resolution, as manipulated, than the second
`resolution, using the processor to further manipulate the frame image to
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`reduce pixilation.” Ex. 1001, col. 9, ll. 21–25. Petitioner admits that
`Morichika does not disclose this scenario. Pet. 34. However, as discussed
`above, because this limitation is conditional, this condition does not have to
`be met. See discussion of Ex Parte Schulhauser, supra. Thus, the lack of
`disclosure of this feature in Morichika does not persuade us that Petitioner
`has failed to demonstrate a reasonable likelihood of prevailing on its
`challenge to claim 3.
`Claims 1 and 3 additionally require, “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.” Ex. 1001,
`col. 8, ll. 60–62, col. 9, ll. 26–28. Petitioner argues Morichika teaches or
`suggests this limitation because, once the personal computer scales the
`image to the resolution of the output display, it is provided directly to the
`display without further changes to the resolution. Pet. 28, 35.
`Finally, claims 1 and 3 require, “wherein the slave digital image
`sensing unit is removably connected to the master personal processor via a
`master personal processor port.” Ex. 1001, col. 8, ll. 63–64, col. 9, ll. 29–31.
`Petitioner argues this limitation is taught or suggested by the above
`discussed use in Morichika of a USB cable to connect the camera to the
`projector. Pet. 29, 35. As support, Dr. Madisetti testifies that one of
`ordinary skill in the art would have understood that “a USB cable is
`removably connected to a USB port.” Ex. 1020 ¶ 73.
`In response to Petitioner’s arguments regarding claims 1, 2, and 3,
`Patent Owner argues that Morichika does not teach or suggest the claimed
`subject matter because Morichika manipulates still images rather than video
`images. Prelim. Resp. 3, 18–21. However, as discussed above in the claim
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`construction section, “frame image” is not limited to video image. In light
`of that construction, claims 1, 2, and 3 are not limited to acquiring video
`images, and thus, Patent Owner’s argument is unpersuasive.
`I
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