`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`IN THE UNITED STATES PATENT TRIAL AND APPEAL BOARD
`______________________
`
`AVER INFORMATION INC. AND IPEVO, INC.
`PETITIONER
`
`V.
`
`PATHWAY INNOVATIONS AND TECHNOLOGIES, INC.
`PATENT OWNER
`
`_______________________________
`
`CASE: IPR2017-02108
`U.S. PATENT NO. 8,508,751
`_______________________________
`
`
`
`SECOND DECLARATION OF DR. VIJAY MADISETTI
`REGARDING U.S. PATENT NO. 8,508,751
`
`AVER EXHIBIT 1025
`Aver v. Pathway
`IPR2017-02108
`
`Page 1 of 52
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` Second Declaration of Dr. Vijay Madisetti
`Inter Partes Review of U.S. Patent No. 8,508,751
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`
`QUALIFICATIONS ........................................................................................ 2
`
`SUMMARY OF OPINIONS ........................................................................... 2
`
`
`I.
`
`II.
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`III.
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`IV. TECHNOLOGICAL BACKGROUND .......................................................... 4
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`V.
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`THE PROPOSED SUBSTITUTE CLAIMS ARE BROADER IN AT
`LEAST SOME RESPECTS THAN THE CLAIMS THEY REPLACE.......15
`
`VI. THE PRIOR ART TEACHES OR SUGGESTS EVERY FEATURE
`OF THE PROPOSED SUBSTITUTE CLAIMS OF THE ‘751
`PATENT ........................................................................................................19
`
`A.
`
`Combining Morichika and Liang ........................................................19
`
`B. Morichika’s Teachings in Liang’s Live Display Video
`Embodiment Teach Or Suggest Each Proposed Substitute
`Claim ...................................................................................................24
`
`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`7.
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`8.
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`9.
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`10.
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`11.
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`Proposed Substitute Claim 21 (Substitute For Claim 1) ...........24
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`Proposed Substitute Claim 22 (Substitute For Claim 2) ...........31
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`Proposed Substitute Claim 23 (Substitute For Claim 3) ...........32
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`Claim 4 (No Proposed Substitute Claim) .................................34
`
`Proposed Substitute Claim 24 (Substitute for Claim 5)............34
`
`Proposed Substitute Claim 25 (Substitute for Claim 8)............36
`
`Proposed Substitute Claim 26 (Substitute For Claim 10) .........41
`
`Proposed Substitute Claim 27 (Substitute for Claim 12)..........43
`
`Proposed Substitute Claim 28 (Substitute for Claim 13)..........44
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`Proposed Substitute Claim 29 (Substitute for Claim 14)..........45
`
`Proposed Substitute Claim 30 (Substitute for Claim 16)..........45
`
`i
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`Inter Partes Review of U.S. Patent No. 8,508,751
`12. Responses to PO’s Arguments About Morichika .....................46
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`VII. CONCLUSION ..............................................................................................49
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`-ii-
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` Second Declaration of Dr. Vijay Madisetti
`Inter Partes Review of U.S. Patent No. 8,508,751
`I, Vijay Madisetti, declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`I have been retained by AVer Information Inc. and IPEVO, Inc.
`
`(collectively, “Petitioner”) as an independent expert consultant in this proceeding
`
`before the United States Patent and Trademark Office (“PTO”).
`
`2.
`
`I previously submitted a declaration (“First Declaration”) in
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`connection with the Petition in this proceeding; that declaration was marked as
`
`Exhibit 1020.
`
`3.
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`In the instant declaration, I have been asked to consider a set of
`
`proposed substitute claims for U.S. Patent No. 8,508,751 (“the ‘751 patent”) (Ex.
`
`1001) contained in Patent Owner Pathway Innovations and Technologies, Inc.’s
`
`(“PO”) Motion to Amend. In particular, pages 28 to 32 of PO’s Motion to Amend
`
`contain the proposed substitute claims, with additional limitations underlined and
`
`removed subject matter enclosed in square brackets or struck-through. I have
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`been asked to consider whether the proposed substitute claims (and in particular
`
`the limitations added by amendment in the proposed substitute claims) are taught
`
`or suggested by the prior art of record.
`
`4.
`
`As part of my work in arriving at the answer to this question, I
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`understood that it was permissible to find and rely on new art not addressed in my
`
`First Declaration. I have searched for and found some of the prior art relied on
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`1
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`Inter Partes Review of U.S. Patent No. 8,508,751
`herein. In particular, I located U.S. Patent Publication No. 2009/0002548 to Liang
`
`et al. (“Liang”, Ex. 1023) and U.S. Patent No. 6,128,006 to Rosenberg et al.
`
`(“Rosenberg”, Ex. 1024).
`
`5.
`
`I am being compensated at my ordinary and customary consulting rate
`
`for my work.
`
`6. My compensation is in no way contingent on the nature of my
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`findings, the presentation of my findings in testimony, or the outcome of this or
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`any other proceeding. I have no other interest in this proceeding.
`
`II. QUALIFICATIONS
`I have previously stated my qualifications in paragraphs 5 through 7
`7.
`
`of my First Declaration, as well as in my previously-submitted CV, which was
`
`attached at pages 71 to 98 of my First Declaration. For brevity, I will not restate
`
`my qualifications here.
`
`III. SUMMARY OF OPINIONS
`In preparing this declaration, I have searched for and located certain
`8.
`
`documents, and have reviewed both the documents I located and any other
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`materials provided to me by counsel and referred to herein.
`
`9.
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`In addition to these materials, I have relied on my education,
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`experience, and my knowledge of practices and principles in the relevant field,
`
`e.g., digital camera technology. My opinions have also been guided by my
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`2
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`Inter Partes Review of U.S. Patent No. 8,508,751
`understanding and appreciation of how one of ordinary skill in the art would have
`
`understood the claims and specification of the ‘751 patent around the time of the
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`alleged invention, which I have been asked to assume is the earliest claimed
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`priority date of January 28, 2010.
`
`10. Since I prepared my First Declaration, I understand that Dr. Jeffrey
`
`Rodriguez has submitted a declaration in support of PO’s positions in this case. I
`
`understand that document was submitted as Exhibit 2002. I have reviewed Dr.
`
`Rodriguez’s declaration, and where appropriate respond to it here. I have also
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`reviewed a deposition Dr. Rodriguez gave regarding his declaration. Notably, in
`
`that deposition transcript, Dr. Rodriguez appears to have agreed with me regarding
`
`the ubiquity of digital cameras and various image processing techniques in 2010,
`
`as well as the fact that digital zoom can be done without disposing of the original-
`
`resolution image. See, e.g., Ex. 1022, 37:4-38:4, 74:14-75:19.
`
`11. Also of note here, Dr. Rodriguez has opined that a person of skill in
`
`the art (POSA) in his opinion would have been “someone with a bachelor’s degree
`
`in electrical engineering, mathematics, or physics with computer science
`
`coursework, or equivalent experience, and at least one year of direct technical
`
`experience in capturing real-time video with zooming capability via a portable
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`document camera.” Ex. 2002, ¶23. This opinion matches the opinion I offered at
`
`paragraph 15 of my First Declaration, and is the definition of a POSA I have
`
`3
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`Inter Partes Review of U.S. Patent No. 8,508,751
`applied in this declaration. Ex. 1020, ¶¶15-16.
`
`12. As described in detail below, based on my experience and expertise
`
`(as well as my review of the prior art documents cited herein), it is my opinion that
`
`each the limitations added in the proposed substitute claims was known to a POSA.
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`I have cited additional prior art herein that supports my conclusion that the new
`
`limitations added to the proposed amended claims (and indeed the proposed
`
`amended claims as a whole) are taught and suggested by the pertinent prior art. I
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`also incorporate my First Declaration by reference in its entirety.
`
`IV. TECHNOLOGICAL BACKGROUND
`I have already laid out a technological background of the ‘751 Patent
`13.
`
`at paragraphs 10 to 14 of my First Declaration. I will not repeat that technology
`
`background herein.
`
`14. As I previously opined at paragraphs 24 to 26 (and, as I understand,
`
`the Board has agreed), the as-issued claims of the ‘751 Patent did not require the
`
`series of frame images to be part of a video stream. The Proposed Substitute
`
`Claims, however, explicitly add the requirement that the claimed series of frame
`
`images must be part of “a video stream.” Accordingly, a brief additional
`
`discussion about the state of the art is warranted to address the concept of the use
`
`of video in downward-facing document cameras.
`
`15.
`
`In 2010, commercially available digital cameras could capture video
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`4
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`Inter Partes Review of U.S. Patent No. 8,508,751
`data. Indeed, Dr. Rodriguez testified in his deposition that he had at least a year of
`
`experience with portable document cameras that could capture realtime video with
`
`zooming capabilities. Ex. 1022, 37:4-38:4. Dr. Rodriguez therefore seems to
`
`agree with me that digital video cameras that were used in portable document
`
`cameras could capture realtime video, and provided zooming capabilities for that
`
`realtime video. See Ex. 1022, 74:14-75:19.
`
`16. The ‘751 Patent also confirms this is true, based on its Background
`
`section. I touched briefly on Exhibit 1007 (U.S. Patent No. 6,965,460 (“‘460
`
`Patent”) in my First Declaration, but given the proposed substitute claims, it is
`
`worth spending a bit more time on that reference here.
`
`17. Exhibit 1007 describes a look-down digital imaging device that
`
`includes a digital video camera for capturing video data of a target scan area. Ex.
`
`1007, Abstract. It confirms that this video camera “may aid a user in properly
`
`aligning an original within the target scan area.” Ex. 1007, Abstract.
`
`18. Regarding the state of the digital camera art, the ‘460 Patent states
`
`that “[d]igital camera 206 may be a digital camera for capturing still images or it
`
`may be a video camera for performing video recording.” Ex. 1007, 3:6-8; Fig. 2.
`
`While Exhibit 1007 discusses a prior art Canon device that provides “a relatively
`
`low-resolution digital image of the original,” it states that the resolution is
`
`nonetheless sufficient to read text at 8 point font (about half the size of the text
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`5
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`Inter Partes Review of U.S. Patent No. 8,508,751
`used in this declaration). Ex. 1007, 2:62-3:24. Those of skill in the art would thus
`
`understand that while certain lower cost video cameras per Exhibit 1007 may have
`
`had some limitations as to the resolution, video cameras were more than adequate
`
`for use as presentation devices and certainly had commercial viability. This is
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`further confirmed by Exhibit 1007. It also indicates that price, not technical
`
`feasibility, could be a design choice to be considered using higher resolution
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`cameras with existing document scanners. Ex. 1007, 3:27-37.
`
`19. The ‘460 Patent purports to improve on the prior art it describes by
`
`adding a “digital video camera for capturing video data of a target scan area. Such
`
`video data may be fed in substantially real-time to a display...” Ex. 1007, 4:67-5:2.
`
`The ‘460 Patent explains the benefits of the video camera within the document
`
`camera device (Ex. 1007, 8:32-65) and also suggests other uses for the video
`
`camera, stating that “when not being utilized for aligning an original for scanning,
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`video camera 312 may also be utilized in any other suitable manner, such as for
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`video conferencing, for example.” Ex. 1007, 8:28-31.
`
`20. The ‘460 Patent also discusses that the look-down digital imaging
`
`device “may be coupled to another device, such as a computer (e.g., PC, laptop,
`
`personal data assistant) or an ‘appliance’ device (e.g., WebTV or game console).”
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`Ex. 1007, 5:6-11. In this vein, the ‘460 Patent explains:
`
`Once the original page 316 is properly positioned for scanning by
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`Inter Partes Review of U.S. Patent No. 8,508,751
`LLAS 300, the user may request a scan of such original page 316.
`LLAS 300 may be implemented to enable a user to request a scan
`through any one or more of various methods. For example, a button
`may be included on LLAS 300 for activating LLAS 300 to scan
`original 316. As another example, LLAS 300 may include voice
`recognition technology to recognize a verbal command from a user to
`activate LLAS 300 to scan original 316. As a further example, LLAS
`300 may be coupled to a computer (e.g., a PC, laptop, or personal data
`assistant), as discussed in greater detail below, and a user may input a
`command to such computer using any input method for such a
`computer that is now known or later developed, including without
`limitation a keyboard, a mouse, and a verbal command, to activate
`LLAS 300 to scan original 316.
`
`Ex. 1007, 8:65-9:14. It confirms that “linear sensor 306 and video camera 312
`
`may both be coupled to a separate computer device.” Ex. 1007, 11:46-47.
`
`21.
`
`In a scenario where the system of the ‘460 Patent permits the user to
`
`select a portion of a document to scan, the ‘460 Patent also contemplates using
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`these kinds of input devices to permit the user to select the area of the document to
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`scan. Ex. 1007, 11:13-25. This discloses, to a POSA, that the connected computer
`
`is the device with which the user interacts to scan the to-be-scanned item. It also
`
`suggests that known user interface techniques and devices, such as keyboards,
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`mice, and the like, were known ways the user could provide such input.
`
`22. The other prior art patent discussed in the Background of the ‘751
`
`7
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`Inter Partes Review of U.S. Patent No. 8,508,751
`Patent is U.S. Patent No. 6,540,415 (Ex. 1021, “‘415 Patent”). The ‘415 Patent is
`
`primarily focused on a “stand” apparatus, but explicitly states that the disclosed
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`stand “supports the use of digital cameras including digital video cameras in
`
`performing an equivalent function to a scanner in recording digital images which
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`may be downloaded to a computer.” Ex. 1021, Abstract. The ‘415 Patent was
`
`filed on August 31, 2000, and claims priority to a British application dated
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`September 2, 1999, and confirms that at least ten years before the filing of the ‘751
`
`Patent, inventors at HP contemplated the use of digital video cameras in look-down
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`document scanners. The ‘415 Patent goes so far as to state that “[r]ecently, there
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`have appeared digital cameras which have enabled an individual user to take high
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`quality pictures, stored as digital images which can be downloaded to the users
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`personal computer. This is also the case with digital video cameras. In fact many
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`digital video cameras can be used as a still frame camera as well as for recording
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`moving images.” Ex. 1021, 1:57-63. It further states that “[a]lthough still
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`developing, the quality and resolution provided by digital cameras is
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`considerable.” Ex. 1021, 5:65-67.
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`23. Figure 7 of the ‘415 Patent shows a configuration of a stand that could
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`accommodate a conventional digital video camera:
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`Inter Partes Review of U.S. Patent No. 8,508,751
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`
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`Ex. 1021, Fig. 7, 5:27-30. The ‘415 Patent states that “[e]lectrical connection 701
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`may provide for connection of the digital video camera and stand to a computer by
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`appropriate wires etc. (not shown), in a similar manner to that described for FIG.
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`3.” Ex. 1021, 11:59-62.
`
`24. Regarding Fig. 3, the ‘415 Patent confirms that the computer may be
`
`used to control the digital camera. Ex. 1021, 10:31-11:4. For example, the ‘415
`
`Patent describes that certain features may be controlled by the computer to
`
`optimize the camera for document scanning, meaning that a user provides inputs to
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`the camera through the computer to perform the scanning function. Ex. 1021,
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`10:56-11:4. The personal computer, in other embodiments, can “adjust,
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`manipulate, etc. the obtained image.” Ex. 1021, 12:60-62. Finally, the ‘415 Patent
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`Inter Partes Review of U.S. Patent No. 8,508,751
`describes that the “personal computer provides the processing power and
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`algorithms” for handling images captured by the camera, and “does not rely on the
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`digital camera processing the image.” Ex. 1021, 13:63-14:11.
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`25. Accordingly, the ‘415 Patent reflects the well-known idea that a
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`digital video camera, under the control of a connected computer, was perfectly
`
`suitable for use as a downward facing document scanner.
`
`26. The state of the art ten years before the ‘751 Patent is confirmed by
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`the fact that the ‘751 Patent does not discuss any technological impediments or
`
`image processing impediments in describing its purported invention; in my
`
`opinion, all of the image processing techniques (including digital zoom techniques)
`
`requiring a video camera as a document camera were well within the capabilities of
`
`a person of skill in the art by the time of the filing of the ‘751 Patent.
`
`27.
`
`I have also reviewed U.S. Patent Publication No. 2009/0002548 to
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`Liang et al. (“Liang”), which I located as part of my work in this case and which
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`has been marked as Exhibit 1023 in this proceeding.
`
`28. Liang, filed by Epson America, Inc. in June of 2007, even further
`
`confirms that the use of digital video cameras as the primary camera in a
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`downward facing document camera was well known to those of skill in the art. In
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`particular, Liang’s “Field of the Invention” is “a document camera which takes a
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`visual image of a material (object or document) placed on a surface where the
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`10
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`Inter Partes Review of U.S. Patent No. 8,508,751
`visual image is taken with a video camera, electrically converted to a digital
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`image, and transmitted to an external display device.” Ex. 1023, ¶2 (emphasis
`
`added). Liang thus confirms that by the time it was filed in 2007 (and several
`
`years after both the ‘460 Patent and the ‘415 Patent) the use of digital video
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`cameras was well known and well understood as being suitable in an overhead
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`document imaging system such as that described and claimed in the ‘751 Patent,
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`and in the Proposed Substitute Claims.
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`29. Liang explains the user-interface features that I believe a person of
`
`skill in the art would have understood would have been present given the use of
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`then-conventional digital video cameras. For example, Liang discusses that a
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`control panel 480 includes several buttons to adjust what is displayed, including a
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`“zoom button 483,” a brightness button 485,” and a “freeze/capture button 486.”
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`Ex. 1023, ¶65. With regard to the zoom button, Liang explains:
`
`A zoom button 483 may enlarge a displayed image to a number of
`pre-set settings depending on a number of times the zoom button is
`depressed. Under certain operating conditions, there may be four pre-
`set settings, and if the zoom button is pressed four times, the fourth
`pre-set setting of the zoom is selected. The displayed image is then
`displayed at the fourth pre-set zoom setting. Under certain operating
`conditions, the on-screen menu or display may indicate potential
`zoom settings. The arrows on the five-way switch 481 may be utilized
`to navigate through the potential zoom settings and the selection key
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`Inter Partes Review of U.S. Patent No. 8,508,751
`is utilized to select the desired zoom setting. After the desired zoom
`setting is selected, a live display of the object (with the selected zoom
`setting) resumes on the monitor or projection screen.
`
`Ex. 1023, ¶68.
`
`30. Liang continues, with regard to Figure 19, by explaining that in some
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`embodiments the user input devices (including mice, keyboards, etc.) can be
`
`connected to a computer 1910 which is in turn connected to the document camera
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`1900. It explains that “the wireless accessory 1920 may be utilized to input
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`commands to the document camera 1900 in place of the five-way switch 481.” Ex.
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`1023, ¶101. Liang states: “The wireless accessory 1920 may be utilized to select
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`menu items and commands are transmitted to a receiver in the computer 1910.”
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`Ex. 1023, ¶101.
`
`31.
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`In other words, Liang describes an embodiment where the controls
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`(including, in my opinion, the controls provided on the control panel 480) are
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`accessible to a user via a keyboard, mouse, or the like connected to a computer that
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`is itself connected to the document camera.
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`32. With regard to “freeze-capture button 486,” Liang discloses:
`
`The freeze-capture button 486 causes a displayed image to freeze. If
`the freeze/capture button is pressed once (and then not pressed for at
`least a predetermined time), the image freezes on the screen. After the
`predetermined time has elapsed and the freeze/capture button 486 is
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`Inter Partes Review of U.S. Patent No. 8,508,751
`pressed again, the image unfreezes. The live display of the image
`resumes.
`
`If the freeze-capture button 486 is pressed once and held down for a
`set period of time (e.g., two seconds), the image is captured. As the
`image is being captured, the display of the image is frozen on the
`screen. The image is captured to a memory in the portable document
`imager. Under certain operating conditions, the image may be
`captured to an inserted USB drive or, alternatively, a memory card.
`The image may also be captured on a on-screen memory. After the
`image is captured, the live display of the image resumes.
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`Ex. 1023, ¶¶71-72. Liang therefore describes that an image captured by its video
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`camera is displayed on the screen until the freeze/capture button is pressed (Liang
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`refers to this as “live display”). When the button is held down, the image is
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`captured (i.e., stored) in memory, and the system thereafter returns to “live
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`display” of the video.
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`33. Finally, some of the amendments made in the Motion to Amend relate
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`to using a mouse scroll wheel (a then-conventional input device) to control the
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`zooming in or out recited in the independent claims. See, e.g., Proposed Substitute
`
`Claim 22. However, the use of a mouse wheel as a zooming mechanism a well-
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`known input technique when dealing with images and other visual materials before
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`the filing of the ‘751 Patent, and a person of skill in the art would have understood
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`that where zooming operations are already being performed according to inputs
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`Inter Partes Review of U.S. Patent No. 8,508,751
`provided by mice (such as in Liang), the use of a mouse wheel to provide an input
`
`indicative of a desire to zoom would have been nothing more than a design choice.
`
`34. The design-choice nature of this feature can be seen, for example, in
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`U.S. Patent No. 6,128,006 to Rosenberg et al. (“Rosenberg”), which was filed
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`about 12 years before the earliest possible filing date of the ‘751 Patent. Ex. 1024,
`
`Cover. Indeed, Rosenberg, in its background , acknowledges that prior art to
`
`Rosenberg readily disclosed the idea that mouse wheels were well known to
`
`perform zooming operations:
`
` To allow the user easier control of scrolling, zooming, and other
`like functions when using a mouse, a "scroll wheel" or "mouse
`wheel" has been developed and has become quite common on
`computer mice. A mouse wheel is a small finger wheel provided on a
`convenient place on the mouse, such as between two mouse buttons,
`which the user may rotate to control a scrolling or zooming function.
`Most commonly, a portion of the wheel protrudes out of the top
`surface of the mouse which the user can move his or her finger over.
`The wheel typically includes a rubber or other frictional surface to
`allow a user's finger to easily rotate the wheel. In addition, some mice
`provide a "clicking" wheel that moves between evenly-spaced
`physical detent positions and provides discrete positions to which the
`wheel can be moved as well as providing the user with some physical
`feedback as to how far the wheel has rotated. The wheel is most
`commonly used to scroll a document in a text window without
`having to use a scroll bar, or to zoom a window's display in or out
`without selecting a separate zoom control. The wheel may also be
`used in other applications, such as a game, drawing program, or
`simulation.
`Ex. 1024, 1:65-2:18 (emphasis added). Therefore, even by 1998 it was well
`
`recognized that the use of a mouse wheel to control a scrolling or zooming
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`Inter Partes Review of U.S. Patent No. 8,508,751
`function was already ubiquitous. Indeed, the benefits of using the scroll wheel to
`
`perform such zooming as claimed in the substitute claims were already well
`
`understood and used before 1998.
`
`35.
`
`In my opinion, a POSA reading Liang’s disclosure of using mice to
`
`control the operations (including zoom) permitted by its document camera would
`
`have understood that such zooming could and likely would have been performed
`
`by turning a mouse wheel. While I believe this functionality would have been
`
`inherent in Liang, Rosenberg at least confirms that it is one of several known
`
`design techniques that a POSA would have considered in designing a system, such
`
`as Morichika or Liang, where zooming in on an image was a standard usage of the
`
`system.
`
`V. THE PROPOSED SUBSTITUTE CLAIMS ARE BROADER IN AT
`LEAST SOME RESPECTS THAN THE CLAIMS THEY REPLACE
`
`36.
`
`I have been asked to offer an opinion as to whether the proposed
`
`substitute claims are broader in any respects than the claims they replace.
`
`37.
`
`In my opinion, each of the proposed substitute claims include
`
`amendments (either directly or by way of dependence on amended claims) that
`
`would encompass subject matter that would not have been encompassed by the
`
`original claims. Thus, each of the proposed substitute claims is broader than the
`
`claim it replaces.
`
`38.
`
`In particular, each of the proposed substitute claims replaces the
`
`15
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` Second Declaration of Dr. Vijay Madisetti
`Inter Partes Review of U.S. Patent No. 8,508,751
`phrase “reference resolution” with the phrase “display resolution.” See Proposed
`
`Substitute Claims 21, 23, and 25. In addition, Proposed Substitute Claim 25
`
`changes how “reference resolution” (now “display resolution”) is determined;
`
`reference resolution was (under claim 8) a resolution “at which each frame…will
`
`be maintained,” and “display resolution” is (under Proposed Substitute Claim 25) a
`
`resolution “at which each video frame…will be displayed.”
`
`39.
`
`In my opinion, this change to the concept of “display resolution”
`
`captures subject matter that would not have been captured by the concept of
`
`“reference resolution.” An example will help illustrate this point.
`
`40. Let us assume that a “reference resolution” for a particular system is
`
`determined to be a largest size appropriate for storage of images on disk (a
`
`decision often made based on the difference between storage capacity and tolerable
`
`resolution for the particular usage of an image). Such reference resolution may be
`
`chosen to be, for example, 10 megapixels (a common image sensor size available
`
`on the market today). The as-issued claims of the ‘751 Patent require various
`
`decisions to be made based on that reference resolution indicative of a desired
`
`storage size.
`
`41. On the other hand, a typical HDTV display (such as might be used as
`
`a boardroom or conference room display) might display at 1080p, which is about
`
`2.1 megapixels. Thus, in the proposed substitute claims, comparisons previously
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`16
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`Inter Partes Review of U.S. Patent No. 8,508,751
`made to a “reference resolution” (which might be 10 megapixels in a common
`
`scenario) are now being made to a “display resolution” which might be much
`
`smaller, such as 2.1 megapixels in a common scenario). Importantly, in the
`
`proposed substitute claims, PO has not added limitations that provide for a second,
`
`additional comparison, but has removed the comparison to reference resolution
`
`and replaced it with a comparison to display resolution.
`
`42. What this means is that certain logic (comparison to display
`
`resolutions that are not the same as “reference resolutions”) that would not have
`
`fallen within the scope of the originally issued claims could now fall within the
`
`scope of the proposed substitute claims. The claims have therefore been enlarged
`
`in at least this respect.
`
`43. Of course, some systems may use “display resolution” as a “reference
`
`resolution,” but some may not. Those systems that do not use “display resolution”
`
`as a “reference resolution” would potentially fall within the scope of the proposed
`
`substitute claims. In particular, regarding Proposed Substitute Claim 21, a system
`
`that determined to reduce resolution based on a display resolution of 2.1
`
`megapixels (1080p) but would not have reduced resolution if the image had a
`
`resolution of less than a 10 megapixel reference resolution for storage would
`
`potentially be within the scope of Proposed Substitute Claim 21, but not original
`
`claim 1. The same is true for Proposed Substitute Claim 23, which determines a
`
`17
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`Inter Partes Review of U.S. Patent No. 8,508,751
`second resolution (as a threshold for reducing resolution) based on display
`
`resolution (and not reference resolution). As I noted above, Proposed Substitute
`
`Claim 25 is perhaps the most glaring example, as it confirms that the “display
`
`resolution” is a threshold based on an intended display, where “reference
`
`resolution” was a threshold based on an intended maintenance of the image in
`
`storage.
`
`44. Original claim 8 also previously recited “capturing a video image
`
`comprising the series of frame images in one instantaneous snapshot…” Proposed
`
`Substitute Claim 25, however, recites “capturing a video image comprising the
`
`continuous stream of video frames, wherein each video frame is captured in one
`
`instantaneous snapshot…”
`
`45.
`
`I understand that the Board found the original claim language to be
`
`indefinite, reasoning that “[t]his is not possible.” Paper 9, 15. However, looking at
`
`the plain language of the original claims, the “video image” needed to be captured
`
`in “one instantaneous snapshot.” Now, in Proposed Substitute Claim 25, the video
`
`can be captured over a non-instantaneous period of time, and the only requirement
`
`is that each video frame be captured instantaneously. It is my opinion that by
`
`removing the requirement that a “video image comprising the series of frame
`
`images” must be captured in one instantaneous snapshot, Proposed Substitute
`
`Claim 25 is facially broader than the plain language of claim 8.
`
`18
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`Inter Partes Review of U.S. Patent No. 8,508,751
`46. The other proposed substitute claims depend, directly or indirectly,
`
`from Proposed Substitute Claims 21, 23, or 25. Thus, at least for the reasons
`
`discussed, each of the proposed substitute claims captures subject matter that
`
`would not have been captured by the original (un-amended) claims.
`
`VI. THE PRIOR ART TEACHES OR SUGGESTS EVERY FEATURE OF
`THE PROPOSED SUBSTITUTE CLAIMS OF THE ‘751 PATENT
`
`47.
`
`I previously set forth an overview of the prior art references that, in
`
`my opinion, teach or suggest each limitation of each claim for which a proposed
`
`substitute claim has been proposed. For brevity, I will not reproduce that summary
`
`here.
`
`48.
`
`In addition, I have described above the pertinent disclosures of Liang
`
`(Ex. 1023) and Rosenberg (Ex. 1024) which respectively expressly disclose the use
`
`of a video camera on a downward-facing document camera and a scroll wheel to
`
`
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