UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`AVER INFORMATION INC. AND IPEVO, INC.,
`Petitioners,
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`PATHWAY INNOVATIONS AND TECHNOLOGIES, INC.,
`Patent Owner
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`Case IPR 2017-02108
`United States Patent No. 8,508,751 B1
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`PATENT OWNER’S MOTION TO AMEND UNDER 37 C.F.R. § 42.121
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`TABLE OF CONTENTS
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`I.
`INTRODUCTION ........................................................................................... 1
`SUBSTITUTE CLAIMS IN THIS MTA COMPLY WITH § 42.121 ............ 1
`II.
`III. CLAIM LISTING ............................................................................................ 3
`IV. THE PERSON OF ORDINARY SKILL IN THE ART ................................. 3
`V.
`CLAIM CONSTRUCTION ............................................................................ 3
`VI. SCOPE OF THE SUBSTITUTE CLAIMS ..................................................... 3
`VII. SUPPORT FOR THE SUBSTITUTE CLAIMS ............................................. 4
`VIII. PATENTABILITY OF SUBSTITUTE CLAIMS OVER THE PRIOR ART
`IN GENERAL ...............................................................................................12
`1.
`Distinctions over Morichika (Ex. 1002) ..............................................14
`2.
`Distinctions over Krisbergh (Ex. 1003) ..............................................17
`3.
`Distinctions over Hara (Ex. 1004) ......................................................18
`4.
`Distinctions over Mitsui (Ex. 1005) ....................................................19
`5.
`Distinctions over Ishii (Ex. 1006) .......................................................19
`6.
`Hypothetical Combination of Krisbergh and Hara .............................21
`7.
`Hypothetical Combination of Krisbergh, Hara, and Mitsui ................22
`8.
`Duty of Candor and Other Prior Art Known to Patent Owner ...........22
`IX. CONCLUSION AND RELIEF REQUESTED .............................................22
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`i
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`

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`TABLE OF AUTHORITIES
`
`CASES
`Graham v. John Deere Co. of Kansas City,
`383 U.S. 1 (1966) .................................................................................................21
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) ............................................................................18
`KSR Int’l, Inc. v. Teleflex, Inc.,
`550 U.S. 398, 406–07 (2007) ...............................................................................21
`MasterImage 3D,
`IPR 2015-00040 (PTAB 2016) .............................................................................13
`Nike, Inc. v. Adidas AG,
`812 F.3d 1326, 1351 (Fed. Cir. 2016) ..................................................................22
`SAS Inst., Inc. v. Iancu,
`2018 WL 1914661 (U.S. Apr. 24, 2018) ................................................................ 1
`Toyota Motor Corp. v. American Vehicular Sciences LLC,
`IPR2013-00422 (PTAB March 7, 2015) ................................................................ 3
`Western Digital Corporation v. Spex Technologies, Inc.,
`IPR2018-00082, IPR2018-00084 (PTAB April 25, 2018). ................................... 2
`W.L. Gore & Associates, Inc. v. Garlock, Inc.,
`721 F.2d 1540 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984). .......................
`RULES
`37 C.F.R. § 42.121 ...................................................................................... 1, 3, 4, 12
`REGULATIONS
`MPEP § § 2141.01 ...................................................................................................18
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`ii
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`

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`Pursuant to 37 C.F.R. § 42.121, (35 U.S.C. § 316(a)(9)), Patent Owner
`Pathway Innovations and Technologies, Inc. (“Patent Owner”) hereby files this
`Motion to amend (“MTA”) with supporting declaration by Dr. Jeffrey J. Rodriguez
`(Ex. 2002; CV as Ex. 2003) for the above-captioned inter partes Review (“IPR”) of
`United States Patent No. 8,508,751 (“the ‘751 patent”). Exhibits are being separately
`filed concurrently herewith.
`INTRODUCTION
`I.
`The Board initially instituted IPR for claims 1-5 and 7, but not for claims 19
`or 20 of the ‘751 patent. See Decision (Paper 8). Claims 8-10 and 12-14, and 16 were
`deemed indefinite. See id. In light of SAS Inst., Inc. v. Iancu, 2018 WL 1914661, at
`*10 (U.S. Apr. 24, 2018), the Board modified the Institution Decision to include
`review of all challenged claims on all grounds, see Order (Paper 10), as follows:
`Ground 1: claims 1-5, 7, 18, and 20 as obvious under pre-AIA § 103(a) over
`Morichika (Ex. 1002) alone;
`Ground 2: claims 8-10, 12, 14, and 16 as obvious under pre-AIA § 103(a) over
`Krisbergh (Ex. 1003) in view of Hara (Ex. 1004);
`Ground 3: claims 13 and 16 as obvious under pre-AIA § 103(a) over
`Krisbergh in view of Hara and Mitsui (Ex. 1005); and
`Ground 4: claims 1-5, 8, and 16 as obvious under pre-AIA § 103(a) over Ishii
`(Ex. 1006) alone.
`As set forth in the concurrently filed Patent Owner Response (“POR”),
`Grounds 1-4 are improper. With this MTA, PO seeks to substitute claims 1-3, 5, 8,
`10, 12-14, and 16 with substitute claims 21-30, respectively. PO’s MTA is not
`contingent upon the originally issued claims being found unpatentable.
`SUBSTITUTE CLAIMS IN THIS MTA COMPLY WITH § 42.121
`II.
`Consistent with the requirements of 37 C.F.R. § 42.121, Patent Owner
`conferred with the Board on July 13, 2018. See 37 C.F.R. § 42.121(a). This MTA is
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`1
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`timely filed. See 37 C.F.R. § 42.121(a)(1). In addition, Patent Owner has adhered to
`the requirements set forth in Western Digital Corporation v. Spex Technologies, Inc.,
`IPR2018-00082, IPR2018-00084, Paper 13 (PTAB April 25, 2018) as the Board
`advised. Patent Owner’s proposed amendments (substitute claims) are responsive to
`all four grounds as set forth in the Petition.
`The Board has construed that the “series of frame images” recited in claims 1
`and 3 is not limited to video. Decision at 9. Although Patent Owner respectfully
`disagrees as set forth in its POR, the respective substitute claims further specify that
`the series of frame images are a video stream, i.e., “a video stream comprising a
`series of frame images.” Hence, the claims are limited to video. These respective
`substitute claims also add the additional features (with respect to the original claims
`being cancelled) of “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”
`and controlling zooming manipulation “through a mouse wheel.” The prior art of
`record (whether individually or in combination) and as known to Patent Owner fails
`to disclose the claimed invention.
` The Board concluded that “in one instantaneous snapshot” was indefinite as
`this phrase appears in original claim 8. Although Patent Owner respectfully
`disagrees, the respective substitute claim clarifies that “each video frame is captured
`in one instantaneous snapshot,” which is supported by the specification of the ‘751
`patent, to help ensure patentability. Further the respective substitute claim is limited
`to the processing of video and adds the additional features (with respect to the
`original claims being cancelled) of “instructing a digital image sensing unit to
`transmit a continuous stream of video frames at a maximum resolution of the digital
`image sensing unit,” “display resolution,” and “wherein the digital image sensing
`unit is removably connected to the external processor via a processor port and USB
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`2
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`cable.” The prior art of record (whether individually or in combination) and as
`known to Patent Owner fails to disclose the claimed invention.
`Further substitute claims are provided for the remaining challenged,
`dependent claims in order to provide consistent terminology throughout all claims.
`III. CLAIM LISTING
`The ‘751 patent currently contains claims 1-20, where claims 6, 11, 15, 17,
`and 19 are not challenged. Patent Owner’s claim listing is attached as Appendix A.
`Patent Owner proposes to substitute claims 1-3, 5, 8, 10, 12-14, and 16 with
`substitute claims 21-30, respectively. Thus, this claim listing includes proposed
`substitute claims 21-30. The substitute claims have: (1) underlining indicating
`inserted text, and (2) brackets or strikethrough indicating deleted text. Toyota Motor
`Corp. v. American Vehicular Sciences LLC, IPR2013-00422, Paper No. 25 at pp. 2-
`3 (PTAB March 7, 2015).
`IV. THE PERSON OF ORDINARY SKILL IN THE ART
`The person of ordinary skill in the art (“POSITA”) is explained in the POR, §
`IV.A, and is the same with respect to substitute claims 21-30.
`V. CLAIM CONSTRUCTION
`No additional claim constructions are proposed in addition to the claim terms
`being construed in connection with the POR. The proposed amendments attempt to
`obviate the need for claim construction. Terms in the amendments should be given
`their plain and ordinary meaning.
`VI. SCOPE OF THE SUBSTITUTE CLAIMS
`The proposed substitute claims retain all of the features of the corresponding
`original claims, only add various additional features, and further do not enlarge the
`scope of a patent claim, therefore complying with 37 C.F.R. § 42.121(a)(2)(ii).
`Furthermore, Patent Owner explains herein how the substitute claims are novel and
`non-obvious over the references cited against the challenged claims. Therefore, the
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`amendments comply with 37 C.F.R. § 42.121(a)(2)(i) because they respond to all of
`the grounds of unpatentability involved in the trial.
`VII. SUPPORT FOR THE SUBSTITUTE CLAIMS
`Pursuant to 37 C.F.R. § 42.121(b)(1), support for the language of claim of
`original claims 1-20 can be found in the originally filed specification of Application
`No. 13/506,208 (Ex. 2004, now the ‘751 Patent) (“the ‘208 Appl’n.”). Claims Chart
`#1 below maps the specific disclosure from the ‘208 Appl’n to claim elements of
`original patent claims 1-20 (references to Figures include the accompanying
`description):
`
`CLAIMS CHART #1
`Claim Element
`
`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:
`1[a] 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;
`1[b] using the master personal processor to manipulate
`the series of frame images, including zooming in or out
`without changing resolution of the frame images;
`1[c] 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;
`1[d] 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,
`1[e] wherein the slave digital image sensing unit is
`removably connected to the master personal processor
`
`4
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`Exemplary
`Disclosure from
`‘208 Appl’n (Ex.
`2004)
`p. 4, ln. 27-28
`p. 8, ln. 12-19
`Figs. 3a, 4-6
`p. 6, 23-25
`p. 6, ln. 28-29, 30,
`34-35
`Fig. 3a
`p. 4, ln. 29-30
`p. 7, ln. 15-21; Figs.
`4-6
`Abstract
`p. 4, ln. 30
`p. 8, ln. 19-23
`p. 9, ln. 14-17, 23-29
`Fig. 5
`Abstract
`p. 4, ln. 31-33
`Figs. 4-5
`p. 4, ln. 9, 11; p. 6, ln.
`34-35; p. 8, ln. 9-11
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`

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`Claim Element
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`via a master personal processor port.
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`2. The method of claim 1, further comprising executing
`the manipulation in response to a user request in real
`time.
`3. A method of acquiring an image of a target to provide
`an output video image comprising a plurality of frame
`images, the method comprising:
`3[a] 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;
`3[b] using the master personal processor to manipulate
`the series of frame images, including zooming in or out
`without changing resolution of the frame images,
`wherein the manipulation of the series of frame images is
`executed in response to a user request in real time;
`3[c] identifying a first resolution for the received
`plurality of frame images;
`3[d] identifying a second resolution for the reference
`resolution;
`3[e] in the case of a manipulated frame image having a
`higher resolution, as manipulated, than the second
`resolution, reducing the resolution of the frame image to
`that of the second resolution;
`3[f] n 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 reduce pixilation;
`3[g] displaying and/or storing the manipulated series of
`frame images as an output video image without changing
`the resolution of the manipulated series of frame images,
`3[h] wherein the slave digital image sensing unit is
`removably connected to the master personal processor
`via a master personal processor port.
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`5
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`Exemplary
`Disclosure from
`‘208 Appl’n (Ex.
`2004)
`original claims; Fig.
`3a
`pg. 4, ln. 34-35, pg. 5,
`ln. 1; Fig. 4
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`p. 8, ln. 12-19; Figs.
`3a, 4-6
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`p. 6, 23-25
`p.11, ln. 9-13
`p. 8, ln. 12-19
`Fig. 3a
`p. 8, ln. 19-23, 34- p.
`9, ln. 5; Figs. 4-5
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`p. 5, ln. 4; Figs 4-5
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`p. 5, ln. 5
`Fig. 5
`p. 5, ln. 6-10
`Fig. 5
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`p. 5, ln. 10
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`p. 4, ln. 32
`Figs. 4-5
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`p. 4, ln. 9, 11; p. 6, ln.
`34-35; p. 8, ln. 9-11
`original claims; Fig.
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`

`

`Claim Element
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`4. The method of claim 3, wherein the personal
`processor is housed in an external personal computer,
`further comprising using an external personal computer
`to provide the processor used to manipulate the series of
`frame images.
`5. The method of claim 4 wherein the manipulation
`further comprises at least one of the operations selected
`from the group consisting of:
`5[a] re-sizing the image;
`5[b] panning the image in a selected direction;
`5[c] rotating the image in a selected direction; and
`5[d] annotating the image.
`6. The method of claim 5 wherein annotating an image
`is conducted during re-sizing the image.
`7. The method of claim 5 wherein the at least one
`operation is conducted without changing a resolution of
`the output frame images.
`8. A method of acquiring an image of a target
`comprising:
`8[a] determining a reference resolution at which each
`frame image of a series of frame images will be
`maintained and storing the reference resolution in a non-
`transitory medium;
`8[b] 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 and using an external processor to compare a
`resolution of each frame image of the video image with
`the reference resolution and adjusting the resolution of
`each frame image to correspond to the reference
`resolution; and
`8[c] after comparing the resolution of each frame image,
`storing and/or displaying in real-time each frame image
`on a display.
`
`6
`
`Exemplary
`Disclosure from
`‘208 Appl’n (Ex.
`2004)
`
`3a
`p. 5, ln. 11-12
`p. 4, ln. 29-30; Fig.
`3a
`
`
`operations
`p. 9, ln. 9-10; Fig. 5
`
`p. 5, ln. 14-19; Fig. 5
`p. 5, ln. 15; Fig. 5
`p. 5, ln. 16; Fig. 5
`p. 5, ln. 16; Fig. 5
`p. 5, ln. 16-17
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`p. 5, ln. 18-19
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`p. 5, ln. 19
`
`p. 5, ln. 20-23; Figs.
`5-6
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`p. 5, ln. 23-26
`p. 8, ln. 12-19; p. 10,
`ln. 27-32; Figs. 5-6
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`p. 5, ln. 26-28; p.8,
`ln. 12-19; Figs. 5-6
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`

`

`Claim Element
`
`9. The method of claim 8 wherein the external processor
`is housed in a personal computer.
`10. The method of claim 8 further comprising when
`displaying each frame image on a display re-sizing the
`image without changing a resolution of the output frame
`images.
`11. The method of claim 10 further comprising re-sizing
`a selected portion of the frame to provide a visual effect
`of rotating the image in three dimensions.
`12. The method of claim 8 further comprising when
`displaying each frame image on a display panning the
`image in a selected direction without changing a
`resolution of the output frame images.
`13. The method of claim 8 further comprising when
`displaying each frame image on a display rotating the
`image in a selected direction without changing a
`resolution of the output frame images.
`14. The method of claim 8 further comprising when
`displaying each frame image on a display annotating the
`image without changing a resolution of the output frame
`images.
`15. The method of claim 14 wherein annotating an image
`is conducted during a step of re-sizing the image.
`16. The method of claim 8 further comprising when
`displaying each frame image on a display, performing an
`image manipulation selected from the group consisting
`of:
`16[a] re-sizing the image,
`16[b] re-sizing a selected portion of the frame to provide
`a visual effect of rotating the image in three dimensions,
`16[c] panning the image in a selected direction,
`16[d] rotating the image in a selected direction, and
`16[e] annotating the image.
`17. The method of claim 16 wherein annotating an image
`is conducted during a step of re-sizing the image.
`
`7
`
`Exemplary
`Disclosure from
`‘208 Appl’n (Ex.
`2004)
`p. 6, ln. 3-4; Fig. 3a
`
`p. 5, ln. 18-19; Figs.
`5-6
`
`p. 5, 28-29
`
`p. 5, ln. 15; Figs. 5-6
`
`p. 5, ln. 16; Figs. 5-6
`
`p. 5, ln. 16; Figs. 5-6
`
`p. 5, ln. 16-18; Figs.
`5-6
`p. 5, ln. 14-19; Figs.
`5-6
`
`p. 5, ln. 15; Figs. 5-6
`p. 5, ln. 28-29; Figs.
`5-6
`p. 5 ln. 15; Figs. 5-6
`p. 5, ln. 16; Figs. 5-6
`p. 5, ln. 16; Figs. 5-6
`p. 5, ln. 16-18; Figs.
`5-6
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`

`

`Claim Element
`
`18. A document imaging apparatus comprising
`18[a] a personal computer containing a software
`programming unit;
`18[b] a miniaturized digital image sensing unit externally
`coupled to the personal computer comprising optics
`having an infinite focal length;
`18[c] 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;
`18[d] 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;
`18[e] a display for displaying the images; and
`18[f] a suspension arm for supporting the digital imaging
`unit at a distance from a target to be imaged.
`19. The document imaging apparatus as recited in claim
`18 wherein the processor is housed in a folding
`suspension arm.
`20. The document imaging apparatus as recited in claim
`18 wherein the processor is housed in an external
`personal computing system.
`
`
`
`Exemplary
`Disclosure from
`‘208 Appl’n (Ex.
`2004)
`p. 5, ln. 30; Fig. 3a
`p. 6, ln. 23-27; Fig.
`3a
`p. 5, ln. 30-31
`p. 6, ln. 23-28, 34
`p. 10, ln. 27-31
`p. 5, ln. 32-35
`
`p. 5, ln. 6-10; Figs. 5-
`6
`
`p. 6, ln. 1; Fig. 3a
`p. 6, ln. 1-3; p. 7, ln.
`8-11; Figs. 3a-c
`p. 6, ln. 3-4
`
`p. 6, ln. 4
`
`Substitute claims 21-30 are substitutes for original claims 1-3, 5, 8, 10, 12-14,
`and 16 respectively, but with additional features. For substitute claims 21-30,
`Claims Chart #2 below maps the disclosure from the ‘208 Appl’n (with some
`reference to Claims Chart #1 above), where additions are underlined, and brackets
`or strikethrough denote deletions. Only the amended limitations are included to
`conserve space. Support for the non-amended limitations can be found in Claims
`
`8
`
`

`

`Chart #1.
`
`CLAIMS CHART #2
`Claim Element
`
`1[a] 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
`1[b] 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;
`1[c] 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;
`1[f] 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.
`2. The method of claim 1, further comprising executing
`the manipulation in response to a user request in real time,
`wherein the manipulation is controlled by the user through
`a mouse wheel.
`3[a] 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;
`3[b] 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, wherein the
`manipulation of the series of frame images is executed in
`
`9
`
`Additional
`Exemplary
`Disclosure from
`‘208 Appl’n (Ex.
`2004)
`p. 8, ln. 12-39; p. 9,
`ln. 15-23
`
`p. 8, ln. 12-39; p. 9,
`ln. 15-23
`
`p. 8, ln. 12-39; p. 9,
`ln. 15-23
`
`p. 4, ln. 8-20; p. 8,
`ln. 34-p.9, ln. 3; p.
`10, ln. 9-13
`
`p. 8, ln. 23-26.
`
`p. 8, ln. 12-39; p. 9,
`ln. 15-23
`
`p. 8, ln. 12-39; p. 9,
`ln. 15-23; p. 8, ln.
`23-26.
`
`

`

`Claim Element
`
`response to a user request in real time, and the
`manipulation is controlled by the user through a mouse
`wheel;
`3[c] identifying a first resolution for the received video
`stream comprising a series plurality of frame images;
`3[d] identifying a second resolution for [[the]] a display
`reference resolution;
`3[e] in the case of [[a]] the manipulated series of frame
`images having a higher resolution, as manipulated, than
`the second resolution, reducing the resolution of the
`manipulated series of frame images to that of the second
`resolution;
`3[f] in the case of the manipulated series of frame images
`having a lower resolution, as manipulated, than the second
`resolution, using the processor to further manipulate the
`series of frame image to reduce pixilation;
`3[i] 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.
`5[a] re-sizing the manipulated series of frame images;
`
`5[b] panning the manipulated series of frame images in a
`selected direction;
`5[c] rotating the manipulated series of frame images in a
`selected direction; and
`5[d] annotating the manipulated series of frame images.
`
`8[0] instructing a digital image sensing unit to transmit a
`continuous stream of video frames at a constant rate and at
`a maximum resolution of the digital image sensing unit;
`8[a] determining a display reference resolution at which
`each video frame image of a series of frame images will be
`
`10
`
`Additional
`Exemplary
`Disclosure from
`‘208 Appl’n (Ex.
`2004)
`
`p. 8, ln. 12-39; p. 9,
`ln. 15-23
`p. 8, ln. 12-39; p. 9,
`ln. 15-23
`p. 8, ln. 12-39; p. 9,
`ln. 15-23
`
`p. 8, ln. 12-39; p. 9,
`ln. 15-23
`
`p. 4, ln. 8-20; p. 8,
`ln. 34-p.9, ln. 3; p.
`10, ln. 9-13
`
`p. 8, ln. 12-39; p. 9,
`ln. 15-23
`p. 8, ln. 12-39; p. 9,
`ln. 15-23
`p. 8, ln. 12-39; p. 9,
`ln. 15-23
`p. 8, ln. 12-39; p. 9,
`ln. 15-23
`p. 8, ln. 12-39; p. 9,
`ln. 15-23; p. 9, ln.
`24-26.
`p. 8, ln. 12-39; p. 9,
`ln. 15-23
`
`

`

`Claim Element
`
`displayed maintained and storing the reference display
`resolution in a non-transitory medium;
`8[b] capturing a video image comprising the continuous
`stream of video frames series of frame images, wherein
`each video frame is captured in one instantaneous
`snapshot of a subject’s entire surface area without line-by-
`line scanning and using an external processor to compare a
`resolution of each video frame image of the video image
`with the reference display resolution and adjusting the
`resolution of each video frame image to correspond to the
`reference display resolution; and
`8[c] after comparing the resolution of each video frame to
`the display resolution image, storing and/or displaying in
`real-time each video frame image on a display, wherein
`the digital image sensing unit is removably connected to
`the external processor via a processor port and USB cable.
`10. The method of claim 8 further comprising when
`displaying each video frame image on a display re-sizing
`the video image without changing a resolution of the
`output video frames images.
`12. The method of claim 8 further comprising when
`displaying each video frame image on a display panning
`the video image in a selected direction without changing a
`resolution of the output video frames images.
`13. The method of claim 8 further comprising when
`displaying each video frame image on a display rotating
`the video image in a selected direction without changing a
`resolution of the output video frames images.
`14. The method of claim 8 further comprising when
`displaying each video frame image on a display annotating
`the image without changing a resolution of the output
`video frames images.
`16. The method of claim 8 further comprising when
`displaying each video frame image on a display,
`
`11
`
`Additional
`Exemplary
`Disclosure from
`‘208 Appl’n (Ex.
`2004)
`
`p. 8, ln. 12-39; p. 9,
`ln. 15-23
`
`p. 8, ln. 12-39; p. 9,
`ln. 15-23; Fig. 3a.
`
`p. 8, ln. 12-39; p. 9,
`ln. 15-23
`
`p. 8, ln. 12-39; p. 9,
`ln. 15-23
`
`p. 8, ln. 12-39; p. 9,
`ln. 15-23
`
`p. 8, ln. 12-39; p. 9,
`ln. 15-23
`
`p. 8, ln. 12-39; p. 9,
`ln. 15-23
`
`

`

`16[b] re-sizing a selected portion of [[the]] each video
`frame to provide a visual effect of rotating the video image
`in three dimensions,
`16[c] panning the video image in a selected direction,
`
`16[d] rotating the video image in a selected direction, and
`
`16[e] annotating the video image.
`
`Claim Element
`
`performing an image manipulation selected from the group
`consisting of:
`16[a] re-sizing the video image,
`
`Additional
`Exemplary
`Disclosure from
`‘208 Appl’n (Ex.
`2004)
`
`p. 8, ln. 12-39; p. 9,
`ln. 15-23
`p. 8, ln. 12-39; p. 9,
`ln. 15-23
`
`p. 8, ln. 12-39; p. 9,
`ln. 15-23
`p. 8, ln. 12-39; p. 9,
`ln. 15-23
`p. 8, ln. 12-39; p. 9,
`ln. 15-23
`The foregoing chart(s) demonstrate that the original patent claims and the
`proposed substitute claims have explicit support in the original disclosure of the ‘751
`patent as required under 37 C.F.R. § 42.121(b)(1).
`VIII. PATENTABILITY OF SUBSTITUTE CLAIMS OVER THE PRIOR
`ART IN GENERAL
`The substitute claims further limit claims 1 and 3 by reciting the steps of
`“receiving a video stream comprising a series of frame images from the slave digital
`image sensing unit” 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.”
`The substitute claims further limit claims 2 and 3 by reciting “wherein the
`manipulation is controlled by the user through a mouse wheel.” These specific
`combinations of features are not described or rendered obvious by the prior art and
`results in an improved process with significant advantages including producing
`
`12
`
`

`

`zoomable video and high resolution still images of documents with one click
`processing. See, e.g., Ex. 1001 at col. 3:18-24.
`The substitute claims further limits claim 8 by reciting the step of “instructing
`a digital image sensing unit to transmit a continuous stream of video frames at a
`constant rate and at a maximum resolution of the digital image sensing unit” and
`limitation “wherein the digital image sensing unit is removably connected to the
`external processor via a processor port and USB cable.” This specific combination
`of features is not described or rendered obvious by the prior art and results in an
`improved process with significant advantages including producing high resolution
`video in a highly portable system. See, e.g., id.
`As explained in detail below, none of the prior art of record or otherwise
`known to Patent Owner teach or suggest digital video zoom while capturing high
`resolution still images at the same time, in a removably connected sensor and
`processor implementation as claimed
`Morichika does not capture video from its camera sensor and it would not
`have been obvious to replace Morichika’s still camera with a video camera.
`Moreover, Morichika does not teach or suggest capturing a still image with one click
`at the same time as capturing video, nor using a mouse wheel to control video zoom.
`Krisbergh, Hara, and Mitsui are remote video conferencing or video telephony
`systems and do not teach or suggest simultaneous capturing of video and a still image
`as claimed, nor a sensing unit removably connected to the external processor via a
`USB cable.
`The Board has explained that the “prior art of record” refers to “any material
`art in the prosecution history of the patent... in the current proceeding... and in any
`other proceeding before the Office involving the patent.” MasterImage 3D, IPR
`2015-00040, Paper 42 at pp. 2-3. Without conceding that any prior art anticipates or
`renders obvious any proposed substitute claim of the ‘751 Patent, the material art of
`
`13
`
`

`

`record includes: (1) Morichika (Ex. 1002) (Ground 1); (2) Krisbergh (Ex. 1003)
`(Grounds 2-3); (3) Hara (Ex. 1004) (Grounds 2-3); (4) Mitsui (Ex. 1005) (Ground
`3); and (5) Ishii (Ex. 1006) (Ground 4). However, it is Petitioners’ burden to establish
`that the substitute claims are unpatentable – it is not the Patent Owner’s burden to
`establish that the substitute claims are patentable. Accordingly, Patent Owner
`reserves the right to submit remarks and expert testimony in response to new
`arguments raised in any opposition to this motion.
`1.
`Distinctions over Morichika (Ex. 1002)
`Morichika does not teach or suggest “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” as recited in substitute claims 21 and 23. Morichika discloses a “camera device
`4” coupled to a “PC 2” via a USB cable 201. See Morichika at ¶ 28 and Fig. 2.
`Morichika uses the term “photograph” throughout its description. See, e.g., id. at ¶
`44 (“The digital camera 4c comprises a CCD 41 and a signal processing unit 42. The
`CCD 41 serves as the imaging means of the present invention and photographs
`(images) the document reference A….”); ¶ 45 (“photographing operation” and
`“photographing mode”); and ¶ 52 (“photographed image”). Morichika’s camera
`device 4 is not capable of generating video or a video stream. Rodriguez Decl. at ¶
`34.
`
`The only video stream in Morichika refers to RGB signals generated by the
`PC 2 – not the digital camera 4. Morichika at ¶ 39 (“The video adapter 25 generates
`a video signal (RGB signals) for display, and outputs the video signal to the display
`device 27 ….”). Morichika notes the use of JPEG compression format in the digital
`camera, which is an image compression format, not a video compression format. See
`id. at ¶ 45. Morichika would have noted the use of a video compression format such
`
`14
`
`

`

`as M-JPEG or MJPEG if the camera was outputting video signals or a series of frame
`images. Rodriguez Decl. at ¶ 35.
`The explicit teachings of Morichika identify that its camera device is simply
`generating a still image, which is displayed on a display device via a video adapter.
`See id. at ¶ 39 (“The video adapter 25 generates a video signal (RGB signals) for
`display, and outputs the video signal to the display device 27 that comprises an LCD
`panel and a drive circuit, etc., thereof.”); see also id. at ¶ 44 (“The digital camera ...
`photographs (images) the document ...”); see also id. at ¶ 45 (“The image signal ...
`is sent to an LCD ... to be displayed as the photographed ... subject image.”); see
`also id. at ¶ 46 (“The compressed image data ... is re-displayed as a still image in the
`LCD ...”).
`Petitioners’ obviousness argument with respect to Morichika is unsupported.
`Petitioners merely argue, in a conclusory manner, that “a