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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`IN THE UNITED STATES PATENT TRIAL AND APPEAL BOARD
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
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`IN THE UNITED STATES PATENT TRIAL AND APPEAL BOARD
`______________________
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`AVER INFORMATION INC., AND IPEVO, INC.
`AVER INFORMATION INC., AND IPEVO, INC.
`PETITIONER
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`V.
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`PATHWAY INNOVATIONS AND TECHNOLOGIES, INC.
`PATHWAY INNOVATIONS AND TECHNOLOGIES, INC.
`PATENT OWNER
`_______________________________
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`CASE: IPR2017-02108
`U.S. PATENT NO. 8,508,751
`U.S. PATENT NO. 8,508,751
`__________________________
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO AMEND
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`PETITIONER
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`V.
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`PATENT OWNER
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`CASE: IPR2017-02108
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S
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`MOTION TO AMEND
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`MAIL STOP PATENT BOARD
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`PATENT TRIAL AND APPEAL BOARD
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`U.S. PATENT AND TRADEMARK OFFICE
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`PO. BOX. 1450
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`MAIL STOP PATENT BOARD
`PATENT TRIAL AND APPEAL BOARD
`U.S. PATENT AND TRADEMARK OFFICE
`P.O. BOX. 1450
`ALEXANDRIA, VA 22313-1450
`ALEXANDRIA, VA 22313-1450
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`CONTENTS
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`IPR2017-02108
`U.S. Patent No. 8,508,751
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`I.
`II.
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`V.
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`Introduction ................................................................................................ 1
`State of the Art ........................................................................................... 2
`A. Using Video Cameras as Document Cameras Was Known ........... 3
`B.
`Using a Mouse Scroll for Zooming Was Known ............................ 9
`III. The MTA Does Not Comply With 37 C.F.R. §42.6 and 37 C.F.R.
`§42.24 ...................................................................................................... 11
`IV. The MTA Does Not Comply With 37 C.F.R. §42.121 ........................... 12
`A.
`PO Has Not Proposed Substitute Claims ...................................... 12
`B.
`The Purported Substitute Claims Impermissibly Broaden the
`‘751 Patent Claims ........................................................................ 14
`The Proposed Substitute Claims Are Obvious ........................................ 16
`Combining Morichika and Liang .................................................. 17
`A.
`B.
`Each Proposed Substitute Claim is Obvious ................................. 19
`C.
`PO’s Arguments About Morichika ............................................... 25
`VI. Conclusion ............................................................................................... 25
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`IPR2017-02108
`U.S. Patent No. 8,508,751
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`List of Exhibits1
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`Ex. 1001 U.S. Patent No. 8,508,751
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`Ex. 1002 U.S. Patent Application Publication No. 2005/0078052 (“Morichika”)
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`Ex. 1003 U.S. Patent No. 7,239,338 (“Krisbergh”)
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`Ex. 1004 U.S. Patent Application Publication No. 2001/0012051 (“Hara”)
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`Ex. 1005 U.S. Patent No. 7,148,911 (“Mitsui”)
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`Ex. 1006 U.S. Patent Application Publication No. 2004/0174444 (“Ishii”)
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`Ex. 1007 U.S. Patent No. 6,965,460 (“Gann”)
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`Ex. 1008 RESERVED
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`Ex. 1009 RESERVED
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`Ex. 1010
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`ITC 337-TA-1045, PO’s Initial Claim Construction Brief
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`Ex. 1011
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`ITC 337-TA-1045, PO’s Reply Claim Construction Brief
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`Ex. 1012 RESERVED
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`Ex. 1013
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`IPR2016-00661, PTAB Decision
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`Ex. 1014
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`ITC 337-TA-1045, ITC Claim Construction Order
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` 1
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` Citations to non-patent publications are to the original page number of the
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`publication, and citations to U.S. patents are to column:line number of the patents,
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`unless paragraph numbers are provided.
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`Ex. 1015 U.S. Patent No. 6,744,109
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`Ex. 1016 Correspondence with Patent Owner regarding claim 18
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`Ex. 1017 Non-final Rejection for U.S. Patent No. 8,508,751, dated 11/6/2012
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`Ex. 1018 Response to Non-final Rejection for U.S. Patent No. 8,508,751, dated
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`2/5/2013
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`Ex. 1019 Notice of Allowance for U.S. Patent No. 8,508,751, dated 4/18/2013
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`Ex. 1020 Declaration of Dr. Vijay Madisetti
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`Ex. 1021 U.S. Patent No. 6,540,415 (“Slatter”)
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`Ex. 1022
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`Transcript of September 20, 2018 Deposition of Dr. Jeffrey Rodriguez
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`Ex. 1023 U.S. Patent Application Publication No. 2009/0002548 (“Liang”)
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`Ex. 1024 U.S. Patent No. 6,128,006 (“Rosenberg”)
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`Ex. 1025
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`Second Declaration of Dr. Vijay Madisetti
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`IPR2017-02108
`U.S. Patent No. 8,508,751
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`I.
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`INTRODUCTION
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`AVer Information Inc. and IPEVO, Inc. (collectively, “Petitioner”)
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`requested inter partes review (“IPR”) of claims 1-5, 7-10, 12-14, 16, 18, and 20
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`(“Challenged Claims”) of U.S. Patent No. 8,508,751 (“‘751 Patent”) (Ex. 1001)
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`under 35 U.S.C. §§311–319 and 37 C.F.R. §42 on September 15, 2017.
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`The Institution Decision (“Decision,” Paper 9) instituted review of claims 1-
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`5 and 7 as obvious over Morichika (Ex. 1002), but declined to institute review on
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`any other Ground. (Paper 9, 26). Of particular relevance, the Board found that
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`claims 8-10, 12-14, and 16 are indefinite. (Id., 14-16). The Board later modified
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`the Decision to include all grounds/all claims in the Petition. (Paper 10, 2-3 (citing
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`SAS Inst., Inc. v. Iancu, 2018 WL 1914661, at *10 (U.S., Apr. 24, 2018))).
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`Patent Owner (“PO”) filed its Patent Owner Response (“Response,” Paper
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`11) on July 23, 2017, along with a Motion to Amend (“MTA”, Paper 12). The
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`MTA states that “PO seeks to substitute claims 1-3, 5, 8, 10, 12-14, and 16 with
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`substitute claims 21-30, respectively. PO’s MTA is not contingent upon the
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`originally issued claims being found unpatentable.” (Paper 12, 1). 2
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`PO’s MTA exceeds the page limit requirements and thus fails to comply
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`with 37 C.F.R. §42.6 and 37 C.F.R. §42.24(a)(1)(vi). PO’s MTA also seeks to
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` All emphasis added unless otherwise indicated.
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`improperly enlarge the scope of the claims of the patent and thus fails to comply
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`with 37 C.F.R. §42.121(a)(2)(ii). Certain of PO’s proposed substitute claims are
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`unpatentable under 35 U.S.C. §103 based on Morichika in view of U.S. Patent
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`Publication No. 2009/0002548 to Liang et al. (“Liang”), which describes the use of
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`a video camera for use as the imaging device of a downward facing document
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`scanner. Other of PO’s proposed substitute claims are unpatentable under 35
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`U.S.C. §103 based on Morichika in view of Liang and U.S. Patent No. 6,128,006
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`to Rosenberg et al. (“Rosenberg”), which discloses the well-known idea of using a
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`mouse wheel to zoom. PO’s statement regarding its compliance with its “Duty of
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`Candor” (Paper 12, 22) is also suspect, as the two prior art references discussed in
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`the background of the ‘751 Patent describe the known usage of video cameras in
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`connection with downward-facing document cameras.
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`II.
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`STATE OF THE ART
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`The ‘751 Patent “generally relates to document cameras…for both capturing
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`real-time video with zooming capability and scanning high resolution still images.”
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`(Ex. 1001, 1:15-18). It alleges a “desire exist[ed] for a document imaging system
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`that is cost efficient, highly compact or space efficient, [and] highly portable.”
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`(Id., 3:18-20). This desire was satisfied by eliminating the need for an optical
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`zoom lens assembly, by providing digital zoom technology. (See id., 7:56-8:12).
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`But the ‘751 Patent is entirely silent on any technological innovation with
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`regard to either the hardware or the image processing techniques it relies on. (Ex.
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`1025, ¶26). The ‘751 Patent describes a digital imaging sensing unit 302 that
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`communicates with a PC via a high speed data connection, such as USB or
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`FireWire. (Id., 4:66-25; Fig. 3). The imaging sensing unit comprises a camera
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`with a digital image sensor capable of capturing “real-time video” and still pictures
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`of objects within the camera’s field of view. (Id., 5:35-48). The ‘751 Patent,
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`however, gives no examples of the kinds of imaging sensing unit 302 that can (or
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`cannot) be used with its techniques; it instead relies on the knowledge of a person
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`of skill in the art (POSA) to understand the metes and bounds of its disclosure in
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`this regard. (See Ex. 1025, ¶15).
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`A. Using Video Cameras as Document Cameras Was Known
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`Given the lack of purported technological innovation in the ‘751 Patent, it is
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`unsurprising that the Background is fatal to PO’s litigation-driven positions here.
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`In particular, two prior art references the ‘751 Patent itself concedes are within the
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`pertinent knowledge of a POSA (U.S. Patent No. 6,965,460 to Gann et al.
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`(“Gann,” Ex. 1007) and U.S. Patent No. 6,540,415 to Slatter et al. (“Slatter,” Ex.
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`1021)) confirm that the Proposed Substitute Claims are unpatentable.3
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` Dr. Rodriguez did not rely on either Gann or Slatter in forming his opinions.
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`(See Ex. 1022, 30:14-16, 30:25-31:10). Moreover, PO’s representation regarding
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`The ‘751 Patent admits that Gann “describes a look-down digital imaging
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`device having a linear sensor for imaging a raster line of an original
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`image…achieving the capture of a relatively high resolution image…also with the
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`aid of a video camera device housed in the same housing unit.” (Ex. 1001, 2:14-
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`20). That is, by the ‘751 Patent’s own admission, Gann describes the use of a
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`video camera for exactly the purpose Dr. Madisetti previously testified: to
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`eliminate the need to engage in cumbersome, repeated capturing of images as the
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`user moves or aligns the to-be-imaged document. (Ex. 1002, ¶56; Ex. 1025, ¶¶16-
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`17). Gann also confirms the Petition’s position that it would have been obvious to
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`have used a video image capture device as the camera 4c of Morichika (Paper 3,
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`20-21), as it admits that traditional document cameras used relied on digital camera
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`206, which “may be a digital camera for capturing still images or it may be a video
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`camera for performing video recording.” (Ex. 1007, 3:6-8; Ex. 1025, ¶18). Gann
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`discloses that a video camera may be implemented with the look-down imaging
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`device, for example, “to properly align the original page 316 within the target area”
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`or to “preview the video feedback of original 316 to ensure that a high quality
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`“Duty of Candor and Other Prior Art Known to Patent Owner” apparently ignores
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`the relevance of the disclosure, in of-record prior art, of the video feature PO
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`proposes to add with all of the Proposed Substitute Claims. (Paper 12, 22).
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`digital image of original 316 is captured.” (Ex. 1007, 8:22-23, 58-60; Ex. 1025,
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`¶19). Gann describes that the driver in selecting a particular camera technology
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`(e.g., video versus still) was largely due to higher-resolution, but existing,
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`technology being “relatively expensive.” (Ex. 1007., 3:53-57). It discloses the
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`known viability and applicability of digital video cameras in document cameras,
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`and the interchangeability of digital cameras capturing still images and digital
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`cameras capturing video with document cameras. (Ex. 1025, ¶¶16-21).
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`The ‘751 Patent’s discussion of Slatter also constitutes an admission that it
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`was well known to interchange video cameras for still cameras in document
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`scanners. (Ex. 1001, 2:40-49; Ex. 1025, ¶22-25). The ‘751 Patent states that
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`Slatter “describes a stand…which can hold in place a fully self-contained, ready-
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`made, commercially available digital camera, which closely resembles a point-and-
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`shoot camera.” (Id., 2:40-43). Slatter, in its own Background section, states that
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`“many digital video cameras can be used as a still frame camera as well as for
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`recording moving images.” (Ex. 1021, 1:61-63). The camera stand that is the
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`focus of Slatter may “support a digital camera or a digital video camera to operate
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`in a document capture mode in obtaining digital images of an object in view of the
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`cameras optic, and thus perform an equivalent function to that of a conventional
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`scanning device.” (Id., 2:40-45). And Figure 7 of Slatter explicitly illustrates an
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`embodiment where the document capture stand is “for retaining a digital video
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`camera for use in imaging an object.” (Id., 5:27-30, Figure 7). The fact that
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`Slatter, filed more than 10 years before the earliest possible priority date of the
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`‘751 Patent, recognized the applicability of “digital video camera[s] for use in
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`operating as a document capture device” confirms the Petition’s argument that the
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`use of video cameras in document scanner systems would have been obvious in
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`view of Morichika. (Id., 11:36-37; Ex. 1025, ¶22).
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`Additional prior art, not cited on or in the ‘751 Patent, confirm that by the
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`2010 earliest possible filing date, it was well known to use digital video cameras as
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`downward facing document cameras. For example, Liang (Ex. 1023), assigned on
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`its face to Epson America, Inc., is an example of a video camera used as a
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`“Document Camera.” (Ex. 1023, Title, Abstract; Ex. 1025, ¶¶27-28).
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`Liang’s “Field of the Invention” describes “a document camera which takes
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`a visual image of a material (object or document) placed on a surface where the
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`visual image is taken with a video camera, electrically converted to a digital image,
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`and transmitted to an external display device.” (Ex. 1023, ¶2). It then describes
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`several embodiments of document camera devices that use such a video camera.
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`For example, Figure 19 is a block diagram of an embodiment where the camera is
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`connected to an external computer that handles the required image processing:
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`(Id., Fig. 19, ¶101 (“wireless accessory 1920 may be utilized to select menu
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`items…”); see Ex. 1025, ¶¶29-31).
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`In connection with its discussion of video cameras as document cameras,
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`Liang describes several of the user manipulation functions that can be achieved.
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`(Ex. 1025, ¶¶29-32). For example, Liang discusses a five-way switch that includes
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`a “focus button 282, a zoom button 483…a brightness button 485, [and] a
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`freeze/capture button 486” among others. (Ex. 1023, ¶65). In the Figure 19
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`embodiment, these functions are achieved with a wireless accessory (such as a
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`mouse or keyboard) connected to the computer 1910. (Id., ¶101).
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`Regarding the proposed amendments in the MTA, Liang describes that the
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`freeze-capture button 486 permits the user to capture (or store) an image to an
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`appropriate memory. (Id., ¶¶71-72). Liang teaches that following such capture,
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`“the live display of the image resumes.” (Id.). That is, Liang discloses that a “live
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`display” of video is the default in Liang, meaning that the camera of Liang
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`captures a stream of images and displays them unless the user takes some other
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`action (such as by pushing the freeze-capture button 468).
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`Liang also describes certain image processing that can be done to the images
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`captured by the camera. For example, it discloses a brightness function achieved
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`by pressing the brightness button 485 (Id., ¶70), the ability to change from color to
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`black-and-white and vice versa (Id., ¶75), and various white balance operations
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`(Id., ¶77). As Dr. Madisetti explains, a POSA would understand these disclosures
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`as constituting image processing applied to each image that makes up the “live
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`display” video - were that not the case, the user would see a small subset of images
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`processed as expected (e.g., converted to black-and-white or white balanced) and
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`the remainder of the video would be the raw image stream. (Ex. 1025, ¶53).
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`Given that this is unacceptable from a user experience perspective, this is the most
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`natural reading of Liang. (Id., ¶¶53-54).
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`Finally, while Morichika does not specifically say its camera 4c is a “video”
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`camera, Morichika does identify the majority of its disclosure as relating to “real-
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`time.” (Ex. 1002, ¶65). This indicates that the processing of Morichika can be
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`done quickly enough that a user sees the processing occur in real-time, meaning
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`that Morichika contemplated its system could be used in a video context. (Ex.
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`1025, ¶¶52, 54). Dr. Rodriguez echoed this sentiment, testifying in his deposition
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`that hardware that existed before 2010 was capable of handling real-time video
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`processing. (Ex. 1022, 36:14-37:18). He confirmed that in his opinion, a POSA
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`would have been familiar with this type of equipment. (Id., 34:16-21, 36:13-17).
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`As described in more detail below, PO’s attempt to add language to the
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`claims of the ‘751 Patent that requires the image sensor to capture video data does
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`not patentably distinguish the claims over Morichika in view of Liang.
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`B. Using a Mouse Scroll for Zooming Was Known
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`Even by 1998 it was well recognized that the use of a mouse wheel to
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`control a scrolling or zooming function (as variously added in the Proposed
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`Substitute Claims) was already ubiquitous. Liang discusses various mechanisms
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`for users to input desired control information into its system, including a control
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`panel 480 includes several buttons to adjust what is displayed, including a “zoom
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`button 483,” a brightness button 485,” and a “freeze/capture button 486.” (Ex.
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`1023, ¶65). With regard to the zoom button, Liang explains:
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`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…. 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.
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`(Id., ¶68). Thus, Liang suggests that zoom of varying kinds can be achieved; Dr.
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`Rodriguez confirmed that a POSA prior to the ‘751 Patent would understand
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`various kinds of zoom technology, including optical and digital zoom. (Ex. 1022,
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`34:16-21, 36:1-12, 46:16-21, 67:24-68:6, 70:19-71:4).
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` Accordingly, Dr.
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`Rodriguez’s POSA would have understood from reading Liang that various input
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`mechanisms would be provided to permit the user to control zooming. In
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`connection with Figure 19, Liang’s disclosure conveys that one way to do this
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`would be using mice or keyboards connected to computers that are themselves
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`connected to the document camera. (Ex. 1023, ¶101, Fig. 19).
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`Long before the ‘751 Patent, mice (and in particular, mice with scroll
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`wheels) were well-known devices appropriate for controlling zoom operations of
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`computer devices. For example, U.S. Patent No. 6,128,006 to Rosenberg et al.
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`(“Rosenberg,” Ex. 1024) acknowledges that even prior to Rosenberg it was “quite
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`common” to use mouse scroll wheels for “easier control of…zooming”:
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` 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….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.
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`(Ex. 1024, 1:65-2:16). Indeed, this passage of Rosenberg indicates that such usage
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`was the way the “wheel is most commonly used.” (Id.).
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`While Rosenberg is not specifically directed to document camera user
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`interface devices, it begins its discussion by stating that its “invention relates
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`generally to interface devices for allowing humans to interface with computer
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`systems,” and generally spends the Background explaining the ubiquity of
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`computer mice as interface devices. (Id., 1:5-2:32). And the remainder of
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`Rosenberg’s disclosure is generally directed to application agnostic user interface
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`techniques, meaning that its teachings regarding common usage of a scroll wheel
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`to zoom apply to any computer environment where a user may wish to zoom in on
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`a portion of an image. Particularly, because Liang describes using a mouse to
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`interface with a computer controlling a document camera (Ex. 1023, ¶101), a
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`POSA would understand that Rosenberg’s teachings apply to Liang.
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`III. THE MTA DOES NOT COMPLY WITH 37 C.F.R. §42.6 AND 37
`C.F.R. §42.24
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`37 C.F.R. §42.6(a)(2)(iii) requires that “[d]ouble spacing must be used
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`except in claim charts, headings, tables of contents, tables of authorities, indices,
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`signature blocks, and certificates of service.” 37 C.F.R. §42.24(a)(1)(vi) requires
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`that motions to amend are limited to “25 pages.”
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`The MTA appears not to have used double spacing, but rather appears to
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`have used one-and-a-half spacing. For example, the MTA includes twenty seven
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`lines of text on each full page. (See, e.g., Paper 12, 2). By comparison, a properly
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`double spaced document, such as the Petition in this matter, can fit approximately
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`twenty lines of text on each full page. (See, e.g., Paper 3, 4). Thus each full page
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`of text in PO’s MTA includes approximately eight extra lines.
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`Excluding the claim charts, which are not required to be double spaced (see
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`37 C.F.R. §42.6(a)(2)(iii)), the MTA includes approximately fourteen and one-
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`third full pages of text. Assuming there are seven additional lines per page with
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`the spacing PO chose to use in the MTA, the MTA contains approximately 100
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`additional lines than an equivalent length document with proper spacing. This 100
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`additional lines, properly double-spaced, would amount to five additional pages of
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`full text. Adding these five additional pages of full text to PO’s MTA (which ends
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`at the bottom of page 22) results in a motion that is 27 pages long, and therefore in
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`excess of the length permitted by 37 C.F.R. §42.24(a)(1)(v). For at least this
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`reason, PO’s MTA should be denied.
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`IV. THE MTA DOES NOT COMPLY WITH 37 C.F.R. §42.121
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`The MTA should also be denied because it fails to comply with the
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`requirements for a motion to amend set forth in 37 C.F.R. §42.121. Namely, PO’s
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`amendments (a) do not actually constitute “substitute claims” due to a failure to
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`properly amend the dependency of the Proposed Substitute Claims and (b)
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`impermissibly seek to enlarge the scope of the claims of the patent.
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`A.
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`PO Has Not Proposed Substitute Claims
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`37 C.F.R. §42.121 permits patent owners to propose a reasonable number of
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`12
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`IPR2017-02108
`U.S. Patent No. 8,508,751
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`substitute claims. Here, the purported substitute claims are not actually substitute
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`claims. For example, PO has not proposed a substitute claim for challenged claim
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`4. Claim 4 depends from claim 3 and ultimately from claim 1, for which PO has
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`proposed substitute claims. Thus, were PO’s MTA granted, claim 4 would depend
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`from two no-longer-existing claims: claim 3 and claim 1. This problem permeates
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`each of the non-independent claims in the MTA, as PO did not propose to alter the
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`dependency of any dependent claim, despite amending several of the intervening
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`claims. 4 For this reason, the MTA should be denied at least as to Proposed
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`Substitute Claims 22, 24, 26, 27, 28, 29, and 30.
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`PO may argue that this choice not to amend dependencies does not matter;
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`PO could not be more wrong. In particular, the dependent claims rely for
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`antecedent basis purposes on the proposed amendments to independent claims
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`from which they do not depend. As just one example, Proposed Substitute Claim
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` 4
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` Most baffling is PO’s decision not to amend original claim 4, despite proposing
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`Substitute Claim 24 as a substitute for claim 5 (which depends from claim 4).
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`Proposed Substitute Claim 24 relies for antecedent basis on language added to
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`claim 3 in Proposed Substitute Claim 23 (i.e., “the manipulated series of frame
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`images.”). It is unclear what PO intended with this strategy, but in any event this
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`illustrates PO’s failure to present actual substitute claims.
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`13
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`24 relies on antecedent basis for “the manipulated series of frame images” from an
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`amendment made in Proposed Substitute Claim 3.
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`Finally, PO’s failure to propose actual substitute claims means that none of
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`its arguments for patentability that rely on newly-added language in the
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`independent claims carries through to the dependent claims. For example, PO
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`argues the added requirement for “at the same time as receiving the video
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`stream…capturing a still image,” which was added for example in Proposed
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`Substitute Claim 21. This language does not persist in Proposed Substitute Claim
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`22, which still depends from original claim 1. (Paper 12, 13). PO thus cannot
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`show that the distinctions it argues apply to all of the Proposed Substitute Claims.
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`B.
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`The Purported Substitute Claims Impermissibly Broaden the ‘751
`Patent Claims
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`Another fundamental problem with the MTA is that the purported substitute
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`claims each impermissibly broadens the claim it purports to substitute. (Ex. 1025,
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`¶¶36-46). PO’s MTA should be denied under 37 C.F.R. §42.121(a)(2)(ii).
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`PO’s proposed substitute claims would replace the claimed “reference
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`resolution” with “display resolution.” (Id., ¶38). Proposed Substitute Claim 25
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`further explains that while previously a “reference resolution” was a resolution at
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`which each frame was to be maintained, the substitute claim changes the concept
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`such that now a “display resolution” is the resolution at which each frame is to be
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`14
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`displayed. (Id., ¶¶38-39). A “display resolution” could be an example of a
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`“reference resolution,” but there are certainly scenarios where “display resolution”
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`captures scope not previously within “reference resolution.” (Id., ¶¶40-43). For
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`example, if a first system only uses only reference resolution based on something
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`independent of its display (e.g., a maximum storage resolution) to make decisions,
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`that system could not meet a claim limitation (such as is now present in the
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`Proposed Substitute Claims) requiring a decision to be made based on a display
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`resolution. (Id.). This scenario demonstrates why the amendment from
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`“reference” to “display” broadens the claims in at least one respect, meaning they
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`are impermissible under 37 C.F.R. 42.121(a)(2)(ii). Idle Free Systems, Inc. v.
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`Bergstrom, Inc., IPR2012-00027, Paper 26, 5 (PTAB June 11, 2013).
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`PO also proposes to broaden Proposed Substitute Claim 25 (and any claims
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`that depend from it) by replacing “capturing a video image comprising the series of
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`frame images in one instantaneous snapshot…” with “capturing a video image
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`comprising the continuous stream of video frames, wherein each video frame is
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`captured in one instantaneous snapshot….” (Ex. 1025, ¶44). 5 The Board found
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` Proposed Substitute Claim 25 seeks, in part, to fix an indefiniteness problem.
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` 5
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`(Paper 12, 2-3). Petitioner submits that the proposed amendment to correct the
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`indefiniteness problem does not “respond to a ground of unpatentability involved
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`15
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`that the original limitation is indefinite because it is “not possible.” (Paper 9, 15-
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`16; Ex. 1025, ¶45). That is, in the Board’s view, the prior claim scope was
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`extremely narrow (if not nonexistent). As Dr. Madisetti explained, the new
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`proposed scope would cover a scenario where a plurality of images is captured
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`over a non-instantaneous period of time. (Ex. 1025, ¶¶45-46). Proposed Substitute
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`Claim 25 broadens the original claims in this additional respect, so the MTA
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`should be denied as to Proposed Substitute Claims 25-30.
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` 37 C.F.R.
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`§42.121(a)(2)(ii). Idle Free Systems, Inc., IPR2012-00027, Paper 26, 5.
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`V. THE PROPOSED SUBSTITUTE CLAIMS ARE OBVIOUS
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`Dr. Madisetti explained that a POSA would have viewed Morichika as a
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`teaching or suggestion to use a video camera in connection with its image
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`processing techniques. (Ex. 1020, ¶56; Ex. 1025, ¶¶1-14, 47-49). Petitioner offers
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`herewith a Second Declaration of Dr. Madisetti (Ex. 1025, 49) containing further
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`in the trial, as the Board does not have authority to invalidate the ‘751 Patent
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`claims here under 35 U.S.C. §112. 37 C.F.R. §42.121(a)(2)(i). This is another
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`reason the MTA should be denied as to Proposed Substitute Claims 25-30. This
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`also highlights yet another problem with PO’s MTA, since as written Proposed
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`Substitute Claims 26-30 depend from unamended claim 8, which still has the
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`indefiniteness problem identified in the Decision. (Paper 9, 15-16).
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`16
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`detail now that the Proposed Substitute Claims actually require this feature.
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`In addition to the reasons previously provided with respect to unamended
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`claim limitations (see, e.g., Paper 3; Ex. 1020; Paper 16; Ex. 1025, ¶¶47-48), the
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`prior art of record renders each additional limitation added by PO’s Proposed
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`Substitute Claims obvious. (Ex. 1025, ¶¶49-109). Morichika combined with
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`Liang (and, if needed, Rosenberg for the explicit recitation of the well-known idea
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`of using a scroll wheel to zoom) renders each of the Proposed Substitute Claims
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`obvious. (Id.). For brevity, only analysis not previously provided in the Petition or
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`Dr. Madisetti’s First Declaration (Ex. 1002) is provided below.
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`A. Combining Morichika and Liang
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`Morichika generally discloses a system that includes a digital camera 4c
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`connected to a PC 2 via a USB interface. (Ex. 1002, ¶¶42-46, Fig. 4). Morichika
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`discloses the type of image sensor (a CCD and a signal processing unit, id., ¶55),
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`but does not state whether the camera is a digital video camera or a digital still
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`camera. However, Morichika does describe its applicability in a “real time”
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`environment. (Id., ¶65; Ex. 1025, ¶52). As Dr. Madisetti testified in his First
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`Declaration, and explained in further detail in his Second Declaration, a POSA
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`would understand that Morichika does not exclude video cameras, and inclusion of
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`video cameras would have been obvious given the ‘751 Patent’s background
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`section and the patents cited therein. (Ex. 1025 ¶¶49-52).
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`Liang discloses “a document camera which takes a visual image of a
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`material (object or document) placed on a surface where the visual image is taken
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`with a video camera, electrically converted to a digital image, and transmitted to an
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`external display device.” (Ex. 1023, ¶2). Liang thus confirms that, as early as
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`2007, it was well known that digital video cameras could be used in a look down
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`document camera to provide a “live display” of what the video camera sees. (Id.,
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`¶¶65-78; Ex. 1025, ¶¶53-56). Dr. Rodriguez’s testimony about the knowledge of a
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`POSA confirms that those of skill understood the utility and operation of video
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`cameras in downward facing document cameras. (Ex. 2002, ¶23; Ex. 1022, 34:11-
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`15, 36:13-17, 36:22-37:18). That the ‘751 Patent does not purport to have invented
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`this, instead focusing on offloading processing to a computer (as in, for example,
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`Morichika (Ex. 1002, ¶¶42-46) or Liang’s Figure 19 embodiment (Ex. 1023, ¶101,
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`Fig. 19) further confirms this point. (Ex. 1001, 7:56-58; Ex. 1025, ¶¶55-56).
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`A POSA would have understood that the camera 4c in Morichika would
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`have been modified or augmented to include the camera and related capabilities
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`from Liang, and that image processing described in
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