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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.
`PETITIONER
`
`V.
`
`PATHWAY INNOVATIONS AND TECHNOLOGIES, INC.
`PATENT OWNER
`_______________________________
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`CASE: IPR2017-02108
`U.S. PATENT NO. 8,508,751
`__________________________
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`
`
`REPLY TO PATENT OWNER’S RESPONSE TO
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,508,751
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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
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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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`d.
`
`Introduction ................................................................................................ 1
`State of the Art ........................................................................................... 3
`a.
`The ‘751 Patent ............................................................................... 3
`b.
`Using Video Cameras as Document Cameras Was Known ........... 4
`c.
`Electronic Zoom Can be Performed Without Changing the
`Resolution of the Captured Images ................................................. 7
`Linear Scanning And Scanning With A 2D Sensor Were Known
`Alternatives ..................................................................................... 8
`III. Claim Construction .................................................................................... 9
`a.
`“Series of Frame Images” ............................................................... 9
`b.
`“Series of Real-Time Images” ....................................................... 12
`c.
`“Optics Having an Infinite Focal Length” .................................... 12
`d.
`“Capturing a Video Image Comprising the Series of Frame
`Images in One Instantaneous Snapshot” ....................................... 13
`IV. Dr. Madisetti’s Opinions are Entitled to Full Weight ............................. 14
`Claims 1-5, 7, 18, and 20 are Obvious Over Morichika ......................... 15
`V.
`VI. Claims 8-10, 12, 14, and 16 are Obvious Over Krisbergh in View of
`Hara ......................................................................................................... 21
`VII. Claims 13 and 16 Are Obvious Over Krisbergh in View of Hara and
`Mitsui ....................................................................................................... 23
`VIII. Claims 1-5, 8, and 16 Are Obvious Over Ishii ........................................ 23
`IX. 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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`IPR2017-02108
`U.S. Patent No. 8,508,751
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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 Publication No. 2009/0002548 to Liang et al. (“Liang”)
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`Ex. 1024 U.S. Patent No. 6,128,006 to Rosenberg et al. (“Rosenberg”)
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`Ex. 1025
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`Second Declaration of Dr. Vijay Madisetti
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`I.
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`INTRODUCTION
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`IPR2017-02108
`U.S. Patent No. 8,508,751
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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 Board, in its original Institution Decision (“Decision,” Paper 9),
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`instituted review of claims 1-5 and 7 as obvious over Morichika (Ex. 1002), but
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`declined to institute review with regard to any other proposed ground of
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`unpatentability. (Paper 9, 26). In particular, with regard to claims 8-10, 12-14,
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`and 16 the Board found that the claims are indefinite and thus declined to institute
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`review. (Id., 14-16). The Board has since modified its Decision to include all
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`challenged claims and all grounds presented 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). Notably,
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`the 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 Thus, while
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`IPR2017-02108
`U.S. Patent No. 8,508,751
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`the Reply is in response to the Response, Petitioner asserts that the Response
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`arguments should not even be reached (particularly as to the claims for which
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`substitute claims have been proposed), as PO has already stated that it MTA is not
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`contingent on a finding of unpatentability.3
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` 2
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` All emphasis herein added unless otherwise indicated.
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`3 The only instituted claims that PO has not proposed for amendment are claims 4,
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`7, 9, 18, and 20. Claims 4 and 7 are unpatentable over Morichika for the reasons
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`described herein and as recognized by the Board in the Decision, particularly
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`because they depend from original claim 1 rather than Proposed Substitute Claim
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`21. Un-amended claim 9 still depends from original claim 8, which PO apparently
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`concedes is indefinite (consistent with the Decision (Paper 9) at page 15-16) by
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`virtue of its non-contingent motion to amend to remove the indefinite language
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`from claim 8. Original claims 18 and 20 are invalid as obvious over Ishii; PO’s
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`expert confirmed that the distinction PO draws is incorrect from a technical
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`perspective. (Ex. 1022, 74:14-75:19; Section VIII).
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`II.
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`STATE OF THE ART
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`a.
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`The ‘751 Patent
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`IPR2017-02108
`U.S. Patent No. 8,508,751
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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 that a “desire exist[ed] for a document imaging
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`system that is cost efficient, highly compact or space efficient, [and] highly
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`portable.” (Id., 3:18-20). The ‘751 Patent states this desire was satisfied by
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`eliminating the need for an optical zoom lens assembly, by providing digital zoom
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`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, 59). It describes a digital imaging sensing unit 302 that communicates
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`with a PC via a high speed data connection, such as USB or FireWire. (Id., 4:66-
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`25; Fig. 3). The imaging sensing unit comprises a camera with a digital image
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`sensor capable of capturing “real-time video” and still pictures of objects within
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`the camera’s field of view. (Id., 5:35-48). The ‘751 Patent, however, gives no
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`examples of the kinds of hardware that can be used; it instead relies on the
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`knowledge of a person of skill in the art (POSA) to understand the metes and
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`bounds of its disclosure in this regard. (Ex. 1025, ¶54; Ex. 1022, 43:23-44:7).
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`This silence underscores a fundamental problem with PO’s position: the law does
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`not permit the prior art to be held to a higher standard for obviousness purposes
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`IPR2017-02108
`U.S. Patent No. 8,508,751
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`than the specification is for enablement purposes. Lockwood v. American Airlines,
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`Inc., 107 F.3d 1565, 1570 (Fed. Cir. 1997).
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`Upon previewing the captured images, the ‘751 Patent continues by stating
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`that its system allows the user to achieve the effect of zoom by digitally
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`manipulating the resolution of the captured images. (Ex. 1001, 6:11-38). This
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`type of digital manipulation is the “digital zoom” or “electronic zoom” described
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`above as being known by those skilled in the art. (Ex. 1020, ¶¶10-12, 17-21).
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`PO’s expert, Dr. Jeffrey Rodriguez, concedes that digital zoom is well-known.
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`(Ex. 2002, ¶26; Ex. 1022, 70:19-71:4). And while his declaration equivocates by
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`stating that “one of ordinary skill in the art would have understood that the
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`electrical zoom processing can be performed with changing the resolution of frame
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`images,” (Ex. 2002, ¶48; Ex. 1022, 54:15-55:6), Dr. Rodriguez confirmed in his
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`deposition that digital zoom can also be performed without changing the resolution
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`of frame image. (Ex. 1022, 74:14-75:19; see also 66:14-67:1).
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`b.
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`Using Video Cameras as Document Cameras Was Known
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`Given the lack of any purported technological innovation in the ‘751 Patent,
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`it is unsurprising that the Background section is fatal to PO’s litigation-driven
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`positions. PO largely pivots from the ‘751 Patent’s statement that its innovative
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`features are to offload processing from a camera to a connected PC (Ex. 1001,
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`7:56-831) due to the fact that at least Morichika plainly disclose this concept. (Ex.
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`IPR2017-02108
`U.S. Patent No. 8,508,751
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`1002, ¶¶42-46).4 But PO’s pivot is unavailing, as two prior art references the ‘751
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`Patent itself concedes are within the pertinent knowledge of a POSA (U.S. Patent
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`No. 6,965,460 to Gann et al. (“Gann,” Ex. 1007) and U.S. Patent No. 6,540,415 to
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`Slatter et al. (“Slatter,” Ex. 1021)) confirm that features PO relies on are also
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`known in the prior art.5
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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). By the ‘751 Patent’s own admission, Gann describes the use of a video
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`camera for exactly the purpose Dr. Madisetti previously testified was known: to
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`eliminate the need to engage in cumbersome, repeated capturing of images as the
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` 4
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` As described in Opposition to the MTA, filed concurrently herewith as Paper 17,
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`U.S. Patent Publication No. 2009/0002548 to Liang et al. (“Liang”) likewise
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`describes this feature. (Ex. 1023, ¶101, Fig. 19).
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`5 Dr. Rodriguez did not rely on either Gann or Slatter in forming his opinions. (See
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`Ex. 1022, 29:14-20, 30:14-16, 30:25-31:10).
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`user moves or aligns the to-be-imaged document. (Ex. 1002, ¶56). Gann also
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`IPR2017-02108
`U.S. Patent No. 8,508,751
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`confirms the Petition’s position that it would have been obvious to have used a
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`video image capture device as the camera 4c of Morichika (Paper 3, 20-21), as it
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`admits that traditional document cameras used relied on digital camera 206, which
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`“may be a digital camera for capturing still images or it may be a video camera for
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`performing video recording.” (Ex. 1007, 3:6-8). Gann discloses that a video
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`camera may be implemented with the look-down imaging device, for example, “to
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`properly align the original page 316 within the target area” or to “preview the
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`video feedback of original 316 to ensure that a high quality digital image of
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`original 316 is captured.” (Id., 8:22-23, 58-60). Last, Gann describes that the
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`driver in selecting a particular camera technology (e.g., video versus still) was
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`largely due to the incorporation of higher-resolution, but existing, technology was
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`“relatively expensive.” (Id., 3:53-57). Gann discloses the known viability and
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`applicability of digital video cameras to document cameras.
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`The ‘751 Patent’s discussion of Slatter also constitutes an admission that it
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`was known to interchange video cameras for still cameras. (Ex. 1001, 2:40-49).
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`The ‘751 Patent states that Slatter “describes a stand…which can hold in place a
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`fully self-contained, ready-made, commercially available digital camera, which
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`closely resembles a point-and-shoot camera.” (Id., 2:40-43). Slatter, in its
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`Background section, states that “many digital video cameras can be used as a still
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`frame camera as well as for recording moving images.” (Ex. 1021, 1:61-63). The
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`IPR2017-02108
`U.S. Patent No. 8,508,751
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`camera stand may “support a digital camera or a digital video camera to operate in
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`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 explicitly illustrates an
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`embodiment where the stand is “for retaining a digital video camera for use in
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`imaging an object.” (Id., 5:27-30; Figure 7). The fact that Slatter, filed more than
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`10 years before the earliest possible priority date of the ‘751 Patent, recognized the
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`applicability of “digital video camera[s] for use in operating as a document capture
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`device” confirms the Petition’s argument that the use of video cameras in
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`document scanner systems is obvious in view of Morichika. (Id., 11:36-37).
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`c.
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`Electronic Zoom Can be Performed Without Changing the
`Resolution of the Captured Images
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`The Challenged Claims relate in part to digital zoom where the original
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`captured image’s resolution is maintained. (See, e.g., Ex. 1001, 9:26-28). Dr.
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`Rodriguez, apparently in support of the idea that this concept was not obvious,
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`equivocated: “one of ordinary skill in the art would have understood that the
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`electrical zoom processing can be performed with changing the resolution of frame
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`images.” (Ex. 2002, ¶48). He confirmed in his deposition that a POSA would
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`have known that electronic zoom can be performed without changing resolution.
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`(Ex. 1022, 74:19-75:19). Dr. Rodriguez in fact confirmed that throwing away the
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`IPR2017-02108
`U.S. Patent No. 8,508,751
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`original image on zooming in would prohibit viewing the original image upon
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`zooming out. (Id., 66:14-67:1). This is unsurprising, as neither Dr. Rodriguez nor
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`PO dispute that Morichika discloses this functionality. (See generally Ex. 2002,
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`¶¶34-39; Paper 11, 21-24).
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`d.
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`Linear Scanning And Scanning With A 2D Sensor Were Known
`Alternatives
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`The ‘751 Patent admits in the Background section that “[i]n the field of
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`document cameras,” prior efforts were able to achieve video resolution of
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`1920x1280 “without drastically increasing the cost needed to build such a device.”
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`(Ex. 1001, 1:23-31). It also describes that linear sensors were known. (Id., 2:14-
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`20). PO’s expert, Dr. Rodriguez, admits that as of the 2010 earliest possible filing
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`date of the ‘751 Patent, linear scanners, on the one hand, and two-dimensional
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`image sensors, on the other hand, were known alternatives. (Ex. 1022, 20:6-9).
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`Dr. Madisetti agrees. (Ex. 1020, ¶128). While additional mechanisms may have
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`been required to scan with a linear scanner (Id., 18:20-22), the two devices were
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`known alternatives to one another by the time of the filing of the ‘751 Patent.
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`III. CLAIM CONSTRUCTION6
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`a.
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`“Series of Frame Images”
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`IPR2017-02108
`U.S. Patent No. 8,508,751
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`PO alleges that the Board has erred in its conclusion that “a series of frame
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`images” is not limited to video. (Paper 11, 7-11). Apparently recognizing that it
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`asks the Board to read a limitation into the claims that is not required, PO has
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`proposed substitute claims in a Motion to Amend, thus acquiescing that the
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`original claim term is deficient. (See Paper 12, 2, 9-12).
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`The Board correctly determined that “a series of frame images” should not
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`be limited to video-only contexts. (Paper 9, 9-10). The Response does not point to
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`any portion of the intrinsic record that requires that a series of frame images be a
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`part of a video. While the ‘751 Patent does indeed discuss frame images in the
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`context of video, as Dr. Madisetti explained (and the Board agreed), there is
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`nothing in the patent or the claims that requires that the series of frame images be a
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`part of a video “under a broad but reasonable construction of that phrase.” (Ex.
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`1020, ¶25; Paper 9, 9-13).
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` Petitioner addresses the only claim construction disputes that affect the disputes
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`that exist between the parties as to application of prior art to claim language.
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`IPR2017-02108
`U.S. Patent No. 8,508,751
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`The claims of the ‘751 Patent are the beginning and the end of this issue. In
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`particular, claim 1 uses the phrase “video” only in discussing the output image (Ex.
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`1001, Claim 1; Paper 9, 10). Claim 8, which recites “capturing a video image
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`comprising the series of frame images,” confirms that in some scenarios, a series of
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`frame images can form a video image; claim differentiation shows that claim 1’s
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`recitation of “a series of frame images” without reciting that they are part of a
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`video image confirms that the claim 1 “frame images” need not be part of a video.
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`See SRI Intern. v. Matsushita Elec. Corp. of America, 775 F.2d 1107, 1122 (Fed.
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`Cir. 1985).
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`Dr. Rodriguez explained the non-controversial concept that video is a series
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`of
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`individual
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`images, and
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`that extracting frames from video
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`is “very
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`straightforward and doesn’t really depend upon the sensor type.” (Ex. 1022,
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`16:17-20). He explained that extracting frames from video was a well-known
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`technique. (Ex. 1022, 14:6-13, 15:12-16). He also explained that if a user is
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`looking at an image on a computer screen, he or she can only “[s]ometimes” “tell
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`from looking at an image on a screen that’s not moving whether that’s a still image
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`or a video image.” (Id., 72:19-22).
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`In connection with the discussion of video in the ‘751 Patent, PO stated that
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`“a desire exists for a document imaging system…being capable of producing real-
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`time high resolution zoomable video and being capable of capturing high
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`resolution still images.” (Ex. 1001, 3:18-24). The disclosed method includes
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`IPR2017-02108
`U.S. Patent No. 8,508,751
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`“acquiring an image of a target to provide an output video image that has a
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`plurality of frame images.” (Id., 3:43-45). The still images make up the video
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`image: “[t]he optical lens 316 and the accompanying electronic components are
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`capable of capturing real-time video at approximately 30 frames per second.” (Id.,
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`5:39-41). While video is comprised of a series of frame images, but that a series of
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`frame images need not necessarily be a video.
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`PO did not limit “a series of frame images” to a video-only construction in
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`the ‘751 Patent. In describing “[d]isplaying real-time video,” PO used several
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`terms
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`interchangeably,
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`including “continuous stream of
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`frame
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`images,”
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`“instantaneous snapshot,” “captured images,” “captured video frames,” etc. (Id.,
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`6:11-38). While some of these terms (e.g., “captured video frames”) may suggest
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`video-specific context, many others (e.g., “instantaneous snapshot” and “captured
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`images”) suggest non-video context. For this reason, a video-only construction of
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`the term “a series of frame images” is inappropriate. (Ex. 1020, ¶¶23-26).
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`PO argues that the ‘751 Patent “clearly teaches” that “video” and “still
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`images” are mutually exclusive and incompatible terms. (Paper 11, 9). It then
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`argues that “[p]rior art systems could not adequately capture both video and still
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`images.” (Id., 9-10). But the difference between claims 1 and 8 confirms that in
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`the context of claim 1, “a series of frame images” is not mutually exclusive from
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`11
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`claim 1. (See generally Ex. 1007, Ex. 1021, Ex. 1001, 2:14-49; see also Ex. 1023).
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`IPR2017-02108
`U.S. Patent No. 8,508,751
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`From a technical perspective, this argument is premised on a misleading
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`representation of even the very prior art PO cited in the Background of the ‘751
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`Patent. (See Section II).
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`Accordingly, the Board’s construction of this term was correct. Resolution
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`of this issue in Petitioner’s favor renders most of PO’s disputes about the
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`Morichika-based challenge moot. (See Section V).
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`b.
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`“Series of Real-Time Images”
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`PO makes similar allegations with respect to “a series of real-time images”
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`as it does for “series of frame images.” (Paper 11, 11). As noted above, nothing in
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`the ‘751 Patent requires that the claimed “series” be a part of captured video. (See
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`Section III.a; Ex. 1020, ¶¶23-27).
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`c.
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`“Optics Having an Infinite Focal Length”
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`PO alleges that the Board erred in construing “optics having an infinite focal
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`length” as “optics where the focus of parallel incoming rays is at an infinite
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`distance from the optics”. (Paper 11, 13).
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`The Board correctly decided that the appropriate construction of this term
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`based on its plain meaning. (Paper 9, 14). The Response does refute the “ordinary
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`and customary meaning.” (Paper 11, 14). Instead, PO argues that it has acted as
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`its own lexicographer. (Id.). Yet PO points to no statement that indicates this
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`lexicography; it instead cites to discussions of the optics and concludes in attorney
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`IPR2017-02108
`U.S. Patent No. 8,508,751
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`argument that “[i]n other words,” the ‘751 Patent is discussing “effectively infinite
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`range of focus.” (Id., 14) (emphasis in original). These equivocations, coupled
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`with a lack of evidence of a “clear intention to limit the claim scope,” confirms that
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`the Board’s construction is appropriate.
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`PO does not dispute that Morichika meets the requirement in Claims 18 and
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`20 for “optics having an infinite focal length” under its proposed rewrite of the
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`Board’s construction (Id., 24).
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`d.
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`“Capturing a Video Image Comprising the Series of Frame
`Images in One Instantaneous Snapshot”
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`PO alleges the Board incorrectly concluded that “in one instantaneous
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`snapshot” is indefinite. (Id., 16). Despite PO’s allegation, PO has again proposed
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`substitute claims in the MTA that correct the indefiniteness of these claims, thus
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`acquiescing that the original claim term indefinite. (See Paper 12, 2-3, 9-12).
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`PO has not shown why the claim language, as written, is definite. That is, it
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`has not explained how video can be captured in one instantaneous snapshot. While
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`the proposed amendment may eliminate this problem, there can be no question that
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`the Board was correct (as was the International Trade Commission (“ITC”)) in
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`finding that the BRI of this term is indefinite. (Paper 9, 15).
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`IV. DR. MADISETTI’S OPINIONS ARE ENTITLED TO FULL WEIGHT
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`In its Response, PO improperly alleges that “Dr. Madisetti merely restates
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`the conclusory arguments provided in the Petition.” (Paper 11, 18-19).
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`Contrary to PO’s allegations, Dr. Madisetti does not restate attorney
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`argument. Rather, the positions articulated in the Petition track the opinions
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`offered by Dr. Madisetti, which is unsurprising as Dr. Madisetti’s opinions form
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`the basis for the instituted Grounds of review. (See Ex. 1020). PO’s argument can
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`be almost entirely disregarded as it did not even bother to depose Dr. Madisetti on
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`his declaration in this matter. PO cites questions and answers from a different
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`deposition of Dr. Madisetti in connection with an ITC investigation, apparently
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`about an expert report not of record here, under a different claim construction
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`standard. (See Ex. 2005, 74:18-21). But PO itself provided a section in the
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`Response called “ITC Proceedings Are Not Relevant to IPR Claim Construction,”
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`(Paper 11, 17-18), where PO argues “[i]mportantly, in contrast to the BRI standard
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`applied by the Board, the ALJ construed the terms according to the Phillips
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`standard used by courts…[t]he Board does not interpret claims in the same manner
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`as the courts.” (Id., 18). PO’s complaints about the ITC deposition transcript (Ex.
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`2005) appear to stem from its counsel asking questions that used misleading terms
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`not grounded in the ‘751 Patent; Dr. Madisetti answering fair questions and asking
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`for clarifications about unfair questions is quite within his right. (Id., 20).
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`Particularly in view of the fact that admitted prior art cited by PO in the
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`Background of the ‘751 Patent confirms Dr. Madisetti’s opinions, PO’s complaints
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`about Dr. Madisetti should fall on deaf ears.
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`V. CLAIMS 1-5, 7, 18, AND 20 ARE OBVIOUS OVER MORICHIKA
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`PO’s only argument for patentability of claims 1-5, 7, 18, and 20 over
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`Morichika is based on the contention that Morichika’s disclosure is limited to a
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`still camera. (Id., 22-24). As the Board has already found, the claims do not
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`require the camera to be a video camera, so if the Board confirms its prior (correct)
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`construction of “series of frame images,” PO is left without an argument about
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`Morichika. Morichika describes precisely the limitations of claim 1, albeit without
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`an explicit disclosure that its camera 4c could be a video camera (Paper 3, 20-29;
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`Ex. 1020, ¶¶55-72); that theory remains unchecked by the Response.
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`Even if Morichika does not explicitly disclose that the camera 4c is a “video
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`camera,” the evidence of record plainly establishes that the application of
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`Morichika’s techniques in connection with a camera capable of capturing video
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`was obvious to those of skill in the art.
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`First, Dr. Rodriguez himself opined that a POSA would have had “at least
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`one year of direct technical experience in capturing real-time video with zooming
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`capability via a portable document camera.” (Ex. 2002, ¶23; Ex. 1022, 34:11-
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`38:4). Dr. Rodriguez confirmed that such a POSA “would be knowledgeable
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`enough to understand and differentiate ways of implementing zooming capability,”
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`(Ex. 1022, 36:8-12), and would understand how to capture “video with sufficient
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`processing capability that the capturing could keep up with the incoming frame
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`rate” (Id., 36:13-25). Dr. Rodriguez’ testimony itself confirms that the proposed
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`modification of Morichika discussed in Dr. Madisetti’s report (Ex. 1020, ¶56) is
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`not unduly conclusory; Dr. Madisetti articulated the same understanding of a
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`POSA as did Dr. Rodriguez.
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`The ‘751 Patent confirms what the experts have testified. In particular, the
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`‘751 Patent does not discuss any technical solution to any technical problem in
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`incorporating video cameras into document scanners. Instead, the ‘751 Patent
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`relies on cursory identification of known image processing algorithms to achieve
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`its zooming. (See, e.g., Ex. 1001, 6:34-54; Ex. 1022, 67:24-68:6). It also describes
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`that “[t]he present system offloads zooming and other optical functions from the
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`lens assembly to the integrated computer software processing unit using digital
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`zooming and other image processing techniques…” (Id., 8:13-16).
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`Finally, as discussed above, the admitted prior art confirms that PO itself did
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`not believe it was inventing the idea of using video where still image processing
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`had previously been used. Both Gann and Slatter contemplated the use of video
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`cameras in document camera systems. (See Section II). Specifically, Gann admits
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`that traditional document cameras, implementing digital cameras, such as digital
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`camera 206, “may be a digital camera for capturing still images or it may be a
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`video camera for performing video recording.” (Ex. 1007, 3:6-8). Slatter likewise
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`admits that “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). And as discussed in more detail
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`in the contemporaneously filed opposition to the MTA, the Liang reference
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`confirms what Dr. Madisetti testified in his declaration regarding a POSA
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`modifying Morichika. (Ex. 1020, ¶56; Ex. 1025, ¶¶49-56). Indeed, the
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`contemporaneously filed opposition addresses the explicit amendment PO feels is
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`necessary for the claims to actually cover video embodiments; Petitioner
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`incorporates those arguments by reference herein to the extent PO’s claim
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`construction positions are adopted, resulting in scope for the unamended claims
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`that mirrors the scope of the proposed substitute claims in the MTA. (Paper 17,
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`Section V; Ex. 1025, ¶¶57-109).
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`Given the ‘751 Patent itself provides minimal disclosure as it relates to
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`incorporating a digital imaging sensing unit 302 in the form of a video camera, the
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`prior art cannot be held to a higher standard. Lockwood, 107 F.3d at 1570.
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`PO alleges that Petitioner’s motivation to rely on video (“avoid[ing] having
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`to manually cause a new image to be captured every time the object or document to
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`be displayed is moved”) is “conclusory and unsupported.” (Paper 11, 21). But to
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`the contrary, the Gann reference PO itself admits forms part of the prior art
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`knowledge of a POSA says exactly what Dr. Madisetti testified. (Ex. 1007,
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`Abstract).
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`PO also improperly alleges that Petitioner’s motivation to combine is
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`discouraged by the ‘751 Patent, because the ‘751 Patent discloses manual clicking
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`as an advantage of its purported invention. (Paper 11, 21-22). Manual clicking is
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`not required by the claims of the ‘751 Patent. Further, the background references
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`discussed above disclose manual clicking, and indeed identify the precise issue that
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`Dr. Madisetti testified was a reason to consider using video as the camera 4c of
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`Morichika. For example, in Gann (which as described above provides video to aid
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`in alignment), “the user may request a scan of the original by LLAS 300, which
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`activates LLAS 300 to capture a digital image of such original.” (Ex. 1007, 12:24-
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`26). Likewise, in Slatter, where a video camera can be used as the document
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`camera, “[b]utton 104 is provided to activate operation of the digital video camera
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`in still frame mode [] to take a picture.” (Ex. 1021, 11:57-58). And Morichika
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`describes that the camera must actuate (“photographs (picks-up image, images)”).
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`(Ex. 1002, ¶49). The requirement for the user to actuate the camera is neither a
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`new feature, nor is it a benefit of the system described in the ‘751 Patent.
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`PO, chiding Dr. Madisetti’s testimony about Morichika’s camera 4c, ignores
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`the fact that (a) the claims as properly construed do not require a camera to be able
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`to capture video and (b) the challenge is an obviousness challenge. (Paper 11, 22).
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`Last, PO argues that “[n]ot once do the Petitioners actually provide an
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`analysis of how the modification reads on the claims.” (Id., 22). Lost in PO’s
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`argument is the fact that the claims, as properly construed, do not require video.
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`That is, the claims as properly construed are rendered obvious by straightforward
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`(and undisputed) application of Morichika