Paper No. 33
`
`Trials@uspto.gov
`571-272-7822 Entered: May 8, 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.
`
`
`
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: May 8, 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.
`
`
`
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`IPR2017-02108
`Patent 8,508,751 B1
`
`
`I. INTRODUCTION
`Pathway Innovations and Technologies, Inc. (“Patent Owner”) filed a
`Request for Rehearing (Paper 32, “Request”) of our Final Written Decision
`(Paper 31, “Final Decision”) in which, inter alia, we denied Patent Owner’s
`motion to amend U.S. Patent No. 8,508,751 B1 (Ex. 1001, “the ’751 patent”)
`as to proposed substitute claims 21–25 and 27. The Request seeks
`“reconsideration of the Board’s finding that proposed substitute claims
`21−27 are obvious. . . .” Request 1.1 For the reasons that follow, Patent
`Owner’s Request for Rehearing is denied.
`
`II. THE REQUEST FOR REHEARING
`In pertinent part, 37 C.F.R. § 42.71(d) states:
`The burden of showing a decision should be modified
`lies with the party challenging the decision. The request must
`specifically identify all matters the party believes the Board
`misapprehended or overlooked, and the place where each
`matter was previously addressed in a motion, an opposition, or
`a reply.
`Thus, a request for rehearing is not an opportunity merely to disagree
`with the Board’s assessment of the arguments or weighing of the evidence,
`or to present new arguments or evidence.
`Patent Owner first argues that reconsideration is appropriate because
`the parties have not had an opportunity to present arguments under the
`
`
`1 Although the Request is directed to claims 21−27, substitute claim 26 was
`proposed to replace issued claim 6. Paper 19, 21. Claim 6 is not subject to
`review because it was not challenged by Petitioner. Paper 3, 1. See 35
`U.S.C. § 316(d)(1)(B) (which only permits amendment to challenged
`claims). Therefore substitute claim 26 has not been considered and so cannot
`be reconsidered. Paper 27, 4.
`
`2
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`IPR2017-02108
`Patent 8,508,751 B1
`
`Board’s construction of the claim limitation “a video stream comprising a
`series of frame images,” which was added to proposed substitute
`independent claims 21 and 23, and, by dependency, to proposed substitute
`claims 22, 24, 25, and 27. Request 1, 4–6. Patent Owner does not request
`additional briefing on construction of this claim limitation, or attempt to
`explain why the Board’s claim construction was based on misapprehension
`or oversight.
`Patent Owner also argues the Board did not perform a proper inquiry
`in determining proposed substitute claims 21–25 and 27 would have been
`obvious, thereby denying the motion to amend. Id. at 1–2, 6–14.
`We have reviewed Patent Owner’s Request and carefully considered
`all of the arguments presented. For the following reasons, we are not
`persuaded that we misapprehended or overlooked any arguments or
`evidence. We, therefore, deny the Request.
`III. DISCUSSION
`A. Claim Construction
`In our Decision to Institute Inter Partes Review, we concluded the
`phrase, “a series of frame images,” in original independent claims 1 and 3
`encompassed both still and video frame images, and so the claims would not
`be limited to capturing video frame images. Institution Dec. 9–13.
`Applying this construction, we rejected Patent Owner’s argument that the
`claims distinguish from the Morichika reference on the ground that it
`received still frame images rather than video frame images was
`unsuccessful. Id. at 21–22.
`In response to our construction, Patent Owner, in its motion to amend,
`sought to substitute proposed claims 21 and 23 for claims 1 and 3, amending
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`3
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`IPR2017-02108
`Patent 8,508,751 B1
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`the phrase “a series of frame images” to read, “a video stream comprising a
`series of frame images.” Paper 19, 19. Thus, as a result of this amendment,
`the claims would no longer literally read on a series of frame images
`captured manually — e.g., by successively pressing a shutter button of a still
`camera — as is disclosed in Morichika. Cf., Institution Dec. 18, 21–22.
`In our Final Decision, we construed “a video stream comprising a
`series of frame images” as “a series of frame images captured automatically,
`but not necessarily continuously at a constant rate.” Decision 14. Because
`this exact language was added to the claim by the motion to amend, we
`could not have construed it earlier. We do not agree, however, that Patent
`Owner was denied “an opportunity to present argument under the Board’s
`new construction.” Request 1. Patent Owner has long been on notice that
`construction of the term “video,” and the distinction between still frame
`images and an image made up of a video stream, was central to the case. In
`particular, Petitioner, relying on its expert, argued that a video image is
`made up of a series of still images: “The plurality of still images, which are
`captured, constitute the video image.” Paper 3, 9; Ex. 1020 ¶ 24; see also
`Paper 16, 11 (“still images make up the video image”). During cross
`examination, Patent Owner’s testimony supported the view that a single
`frame image of a video stream is essentially the same as a still frame image.
`Rodriguez Dep. 13:14–19, 14:6–13, 15:12–16, 16:14−20. Petitioner
`emphasized that only “in some scenarios, a series of frame images can form
`a video image. . . .” Paper 16, 10. In arguing that it would have been
`obvious to modify the prior art Morichika reference to use a video camera in
`place of a still camera, Petitioner asserted that such substitution amounted to
`“continuously capturing images of a target area using a video camera [to]
`
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`IPR2017-02108
`Patent 8,508,751 B1
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`avoid having to manually cause a new image to be captured every time the
`object or document to be displayed was moved.” Paper 3, 21; Ex. 1020 ¶
`56.
`
`In response to these arguments by Petitioner, Patent Owner addressed
`this issue at length in its Preliminary Response (Paper 6, 10–14, 19), its
`Patent Owner Response 9 (Paper 11, 7–12, 21–22) as well as its Motion to
`Amend (Paper 12, 14–15). See infra. Patent Owner has had ample
`opportunity to present its views on the issue.
`Patent Owner asserts that its amendment “was offered to obviate the
`need for claim construction.” Patent Owner argues it was inappropriate for
`the Board to construe “video stream,” after that phrase was first introduced
`into the proceeding. Request 5. We disagree. The proposed amendment,
`which was offered non-contingently to replace the original claims, only
`made it unnecessary to decide whether “frame images” should be limited to
`“video frame images.” Paper 11, 6–11. It did not “obviate” the need for
`construction of entirely new claim language.
`Patent Owner further asserts that the Board’s construction of “a video
`stream comprising a series of frame images” is “different from Petitioner’s
`proposed construction, Patent Owner’s proposed construction, Patent
`Owner’s proposal for no construction, and the Board’s prior construction in
`the Decision to Institute Inter Partes Review.” Request 5. We find this
`argument to be unconvincing. As discussed supra, the issue is not whether
`the Board’s construction was “different.” The question is whether Patent
`Owner has had an adequate opportunity to address the issue of how this
`claim limitation should be construed. We determine that Patent Owner has
`
`5
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`IPR2017-02108
`Patent 8,508,751 B1
`
`had that opportunity, in its Preliminary Response, Patent Owner Response,
`Motion to Amend, and at the Oral Hearing. See infra.
`Patent Owner relies on SAS Inst., Inc. v. ComplementSoft, LLC, 825
`F.3d 1341, 1350-52 (Fed. Cir. 2016), rev’d on other grounds, 138 S. Ct.
`1348 (2018), for the proposition “[t]he Board cannot adopt a new claim
`construction in its Final Decision that is different from the one in the
`institution decision without providing the parties an opportunity to present
`argument under the new claim construction. . . .” Request 5. However, SAS
`is inapposite — there the Board interpreted a claim limitation one way in the
`Decision To Institute, the parties relied on that interpretation, and then the
`Board rendered a new and different interpretation of that same claim
`limitation in the Final Decision, which “varie[d] significantly from its initial
`interpretation of the term. . . .” 825 F.3d at 1351. Here, the Board did not
`“change theories in midstream. . . .” Id. Rather, when first presented with
`the opportunity to do so, it construed new claim language in the proposed
`amendments. As SAS itself confirms, “the Board adopted a construction in
`its final written decision [as] the Board is free to do. . . .” Id.
`More applicable is Intellectual Ventures II LLC v. Ericsson Inc., 686
`F. App’x 900, 905–06 (Fed. Cir. 2017)(non-precedential) (“Ericsson”).
`There, the parties were on notice that construction of the claim term was
`central to the case, and both sides extensively litigated the issue. At the oral
`argument, the Board questioned counsel for the parties about the
`construction of the term. In the Final Decision, the Board construed the term
`for the first time. Because the parties had notice and an opportunity to be
`heard, the Court held the Board’s claim construction did not violate the
`parties’ due process.
`
`6
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`IPR2017-02108
`Patent 8,508,751 B1
`
`
`Like in Ericsson, as discussed above, Patent Owner has long been on
`notice that construction of the construction of the term “video,” and the
`distinction between still frame images and an image made up of a video
`stream, was a crucial issue. Patent Owner had every motivation to urge a
`narrow construction of “a video stream comprising a series of frame
`images,” in support of the argument that it would not have been obvious to
`replace the still camera of Morichika with a video camera. Indeed, Patent
`Owner has already articulated the basis for such a narrow construction,
`which we have found unpersuasive. For example, in the previous inter
`partes review IPR2016-00661, in arguing that it would not be obvious to
`substitute a video camera for a still camera in Morichika, Patent Owner
`argued “various potential difficulties in processing ‘high definition and high
`speed video (such as Full HD video @ 30 frames per second)’ as well as
`‘technology inherent in video encoding/decoding [that] is far more
`sophisticated and mathematically complex’ than still-image processing.”
`Ex. 1013, 14. The Board rejected this argument: “[The claims, even if
`construed to be limited to video,] do not require a particular encoding
`scheme or high-definition frame rate.” Id.
`Also, in this proceeding, Patent Owner’s expert testified that video is
`made up of frame imagers and field images. Ex. 2002 ¶ 27. Patent Owner’s
`expert further differentiated still image frames from video image frames
`based on the different compression formats used in still versus video image
`frames. Id. at ¶ 35. And Patent Owner’s expert further testified:
`Morichika relates to capturing and displaying high-resolution
`still images. It is significantly more difficult to achieve real-
`time manipulation of high resolution video images as compared
`to still images. In video, the bandwidth and processing demands
`
`7
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`IPR2017-02108
`Patent 8,508,751 B1
`
`
`are much higher. Video frames in a compressed video stream
`are usually encoded based on the contents of other nearby
`frames, and careful time synchronization is required; these
`problems do not arise when processing still images.
`Id. at ¶ 37. However, the Board found this unpersuasive because a “video
`stream” does not necessarily entail compression encoding schemes or high
`frame rates. Final Decision 45.
`Finally, as in Ericsson, Patent Owner had the full and fair opportunity
`to address the claim construction issue at oral argument:
`[Counsel was asked:] [I]sn’t a video stream just a series of still
`images?
`[Counsel responded:] No. As our expert explained in his
`declaration, it takes much more. There's a lot of factors you
`have to address, much more processing.”
`. . . .
`[F]or example . . . you have this coming in at 30 frames per
`second.
`[The Board:] It might be 30 frames per second. It might be
`some lower frame rate. It doesn't have to be 30 frames per
`second, right? Video doesn’t by definition mean 30 frames per
`second, does it?
`[Counsel:] Well, all the examples we provide in the
`specification are all real-time examples and it's going to have to
`be around 30 frames per second or higher or at least high
`enough that the eye cannot tell that you are seeing gaps in
`between the frames.
`. . . .
`[T]here’s the relationship between the frames. There’s a lot
`more information in a video stream than just disparate still
`images.
`[The Board:] Some video standards I understand have like an
`MPEG, have relationships between frames, but that's not — I
`
`8
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`IPR2017-02108
`Patent 8,508,751 B1
`
`
`don’t see that as necessarily what comes out of just a plain old
`vanilla video camera.
`[Counsel:] [T]he key here is that that construction, if it’s just a
`series of still images, that is not based on this patent. Nowhere
`is it disclosed in the patent that video is just a stream of still
`images, and we have argued from the outset that . . . still image
`and video are mutually exclusive things. . . .
`A still image refers to a capture of an instant of time.
`Video are frames, real-time images. The two are different.
`And so when you go and say that a video could just be a still
`image, there's no basis for that in the patent itself and it’s not
`fair to read things outside the patent to come to an interpretation
`of what the patent says.
`[The Board:] Where in the patent does it talk about the nature of
`the video other than just that it’s video? I don't remember that.
`I mean, I see references to VGA resolution of the display. I see
`references to CCD and CMOS cameras that have high
`resolution, but I don't see anything about MPEG or the kind of
`things you're talking about.
`Paper 30, 34–40.
`Significantly, Patent Owner has not asked for additional briefing on
`the claim construction issue and does not state what Patent Owner would
`add to the record beyond what has already been argued or what could have
`been argued during the proceedings. In sum, a Rehearing Request is not an
`occasion to reargue points that have already been considered, or which could
`have been considered. The Board’s claim construction set forth in the Final
`Decision provides no ground for a rehearing.
`
`B. Obviousness Analysis
`Patent Owner’s argument on the Board’s obviousness determination
`amounts to a disagreement with the Board’s findings on the motivation to
`combine references. Patent Owner does not demonstrate that the Board
`
`9
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`IPR2017-02108
`Patent 8,508,751 B1
`
`misapprehended or overlooked the applicable law. Request 6–14. Patent
`Owner argues, “the Board provided vague, generalized combinations and did
`not mention its own claim construction in its obviousness analysis, leaving
`the specific basis for its legal conclusion unclear.” Request 8. Patent Owner
`further asserts that the Board applied “a double standard” because, “the
`Board’s construction of ‘video stream comprising a series of frame images’
`never appears in the obviousness analysis.” Request 10. We disagree with
`both arguments. To the contrary, the Board relied on its claim construction
`in its obviousness findings when it stated, “as discussed above . . . the
`distinction between capturing a series of still frame images and capturing a
`video stream of frame images, is that a video stream is made up of a series of
`frame images that are automatically captured.” Final Decision 44. Nothing
`was misapprehended or overlooked in making those determinations.
`Patent Owner further argues, “no motivation to entirely replace the
`still image camera with a video camera and separate video processor is
`specifically taught or suggested.” Request 9, see also Request 11.
`However, the Board relied on extensive teachings in the art that established
`such a motivation. Final Decision 35–43.
`Patent Owner characterizes the invention of the ’751 patent:
`In this case, the claimed invention as a whole is directed to
`capturing real-time video with zooming capability and scanning
`high-resolution still images of documents using the same
`apparatus by offloading the processing to a processor separate
`from the video camera, thereby simplifying, miniaturizing, and
`substantially lightening the camera stand without sacrificing
`resolution.
`Request 8. As set forth in the Final Decision, Morichika discloses capturing
`sill images rather than real-time video, but otherwise discloses all of the
`
`10
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`IPR2017-02108
`Patent 8,508,751 B1
`
`other above-quoted features. Final Decision 19–21, 46–50. And the record
`evidence establishes that it would have been obvious to one of ordinary skill
`in the art to adapt Morichika to capture real-time video with the same
`capabilities and features. Final Decision 35–46. Patent Owner argues that
`the various portions of the record on which the Board relies are
`“conclusory,” “irrelevant,” and does not support an obviousness conclusion.
`Request 12–14. This amounts merely to a disagreement with the Board’s
`conclusion, and is not a basis for rehearing.
`In sum, we are not persuaded that Patent Owner has not established
`that anything was misapprehended or overlooked in the Board’s obviousness
`analysis or that the Final Decision fails to set forth “articulated reasoning
`with some rational underpinning to support the legal conclusion of
`obviousness.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417−18 (2007).
`
`
`IV. CONCLUSION
`We have reviewed and considered the arguments in Patent Owner’s
`Rehearing Request and conclude that Patent Owner has not carried its
`burden of demonstrating that the Board misapprehended or overlooked any
`matters in rendering the Final Written Decision. 37 C.F.R. § 42.71(d).
`Thus, Patent Owner’s challenge does not meet the standard set forth
`for a request for rehearing.
`The Request for Rehearing is denied.
`
`
`
`
`11
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`IPR2017-02108
`Patent 8,508,751 B1
`
`
`
`
`
`For PETITIONER:
`Jackson Ho
`Benjamin Weed
`Kevin McCormick
`K&L GATES
`jackson.ho@klgates.com
`benjamin.weed@klgates.com
`kevin.mccormick@klgates.com
`
`For PATENT OWNER:
`
`Trevor Coddington
`Donny Samporna
`SAN DIEGO IP LAW GROUP LLP
`trevorcoddington@sandiegoiplaw.com
`donnysamporna@sandiegoiplaw.com
`
`
`
`12
`
`
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