Trials@uspto.gov
`571-272-7822
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`Paper 50
`Entered: August 19, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`
`CANON INC.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`Case IPR2014-006311
`Patent 7,817,914 B2
`____________
`
`
`Before RICHARD E. RICE, JAMES B. ARPIN, and PETER P. CHEN,
`Administrative Patent Judges.
`
`RICE, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73(b)
`
`
`
`
`
`
`
`1 Case IPR2014-00632 has been consolidated with the instant proceeding.
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`Paper 50
`Entered: August 19, 2015
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`
`CANON INC.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`Case IPR2014-006311
`Patent 7,817,914 B2
`____________
`
`
`Before RICHARD E. RICE, JAMES B. ARPIN, and PETER P. CHEN,
`Administrative Patent Judges.
`
`RICE, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73(b)
`
`
`
`
`
`
`
`1 Case IPR2014-00632 has been consolidated with the instant proceeding.
`
`
`
`IPR2014-00631
`Patent 7,817,914 B2
`
`
`I. INTRODUCTION
`
`A. Background
`Canon Inc. (“Petitioner”) filed separate petitions for inter partes
`review of claims 1–24 (the “challenged claims”) of U.S. Patent No.
`7,817,914 B2 (Ex. 1001, “the ’914 Patent”) in Case IPR2014-00631 (“IPR
`’631”) and Case IPR2014-00632 (“IPR ’632”). IPR ’631, Paper 1 (“Pet.”);
`IPR ’632, Paper 9. We instituted inter partes reviews in both IPR ’631 and
`IPR ’632. IPR ’631, Paper 9 (“Inst. Dec.”); IPR ’632, Paper 11 (“IPR ’632,
`Inst. Dec.”). We then consolidated the trial in IPR ʼ632 with the trial in IPR
`ʼ631. IPR ’631, Paper 11; IPR ’632, Paper 13. After institution and
`consolidation of the trials in IPR ʼ631 and IPR ʼ632, Intellectual Ventures II
`LLC (“Patent Owner”) filed a Patent Owner Response (Paper 28 (“PO
`Resp.”)), and Petitioner filed a Reply to Patent Owner’s Response (Paper 33
`(“Pet. Reply”)).2
`The parties rely on the following references, declarations, and
`deposition testimony:
`
`
`Ono
`Kaneda
`Mishima
`Misawa
`Yamaoka
`
`US 2004/0170397 A1 Sept. 2, 2004
`US 2006/0222214 A1 Oct. 5, 2006
`JP 2000-196934 A1
`July 14, 2000
`JP H11-146317 A1
`May 28, 1999
`JP 2004-56330
`Feb. 19, 2004
`
`Ex. 1003
`Ex. 1004
`Ex. 1005
`Ex. 1007
`Ex. 1008
`
`
`2 Unless otherwise noted, citations herein will be to IPR2014-00631.
`
` 2
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`IPR2014-00631
`Patent 7,817,914 B2
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`JP 2005-129994 A1 May 19, 2005
`Ueda
`JP 2001-78137 A1
`Mar. 23, 2001
`Tokiwa
`WO 2005/065283 A2
`July 21, 2005
`Walker
`WO 2006/040761 A2 Apr. 20, 2006
`Halpern
`Declaration of Robert L. Stevenson, Ph.D.
`Rebuttal Declaration of Robert L. Stevenson, Ph.D.
`Transcript of deposition of Alan C. Bovik, Ph.D.
`Declaration of Alan C. Bovik, Ph.D.
`Transcript of deposition of Robert L. Stevenson, Ph.D.
`
`The consolidated grounds for trial are as follows:
`
` Reference(s)
`
` Basis
`
`§ 102(b)
`
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`§ 102(b)
`
` 3
`
`
`
`Mishima
`
`Mishima and Misawa
`Mishima, Misawa, and Walker
`Mishima and Yamaoka
`Mishima and Walker
`Mishima and Ueda
`Mishima and Tokiwa
`Mishima and Ono
`Mishima and Kaneda
`Mishima and Halpern
`
`Ono
`
`Ex. 1009
`Ex. 1010
`Ex. 1012
`Ex. 1013
`Ex. 1002
`Ex. 1016
`Ex. 1018
`Ex. 2006
`Ex. 2007
`
`Claims Challenged
`1, 2, 8, 11, 13–16,
`19–21, and 24
`3–6
`7
`9
`10
`12
`15 and 16
`17 and 18
`22
`23
`1, 2, 12–15, 17–20,
`and 24
`
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`IPR2014-00631
`Patent 7,817,914 B2
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` Reference(s)
`
`Ono and Yamaoka
`Ono, Yamaoka, Walker
`Ono and Mishima
`Ono and Kaneda
`Ono and Halpern
`
`Halpern
`
`Halpern
`Halpern, Mishima, and Misawa
`Halpern, Mishima, Misawa, and
`Walker
`Halpern and Mishima
`Halpern, Mishima, and Yamaoka
`Halpern, Mishima, and Walker
`Halpern and Ono
`Halpern, Mishima, and Ono
`Halpern and Kaneda
`
` Basis
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`§ 102(b)
`
`§ 103(a)
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`Claims Challenged
`
`3–6, 8, 9, and 11
`7, 10, and 11
`16 and 21
`22
`23
`1, 2, 13, 14, 19, 20,
`23, and 24
`14
`3–6
`
`7
`
`8, 11, 15, 16, and 21
`9
`10
`12
`17 and 18
`22
`
` A
`
` consolidated oral hearing was held on May 14, 2015. The transcript
`of the oral hearing has been entered into the record. Paper 49 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
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`For the reasons explained below, we determine that Petitioner has
`shown, by a preponderance of the evidence, that the challenged claims are
`unpatentable.
`
`
`B. Related Lawsuit
`The parties represent that Intellectual Ventures I LLC v. Canon Inc.,
`
`No. 1:13-cv-00473-SLR (D. Del.), involves the ’914 Patent. Pet. 1; see also
`Paper 5, 2.
`
`
`C. The ’914 Patent
`The ’914 Patent, titled “Camera Configurable for Autonomous
`
`Operation,” generally relates to image capture and, more particularly, to
`methods of operating a camera apparatus that responds to sensed conditions,
`without direct operator intervention. Ex. 1001, 1:15–18. The Specification
`describes an autonomous image capture device that “captures digital images
`automatically, in response to prompts sensed by the device, [and] according
`to instructions entered by a user, training provided by the user, or
`environmental events detected as suitable image trigger conditions by the
`device.” Id. at 4:28–33.
`Figure 1 of the ’914 Patent is reproduced below.
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`Figure 1 is a schematic block diagram of digital image capture device
`10. In the embodiment depicted in Figure 1, central processing unit 14
`activates image capture module 12 to capture an image in response to a
`condition sensed by sensor 18. Id. at 4:60–63. In other embodiments, image
`processing software is used to perform the role of sensor 18 (id. at 6:10–13),
`i.e., to detect events that can serve as “image trigger conditions”:
`
`By continually monitoring the video signal that is obtained by
`image capture module 12, this software can detect events such
`as sudden motion, motion starting or motion stopping, change
`in brightness, and other conditions that can serve as image
`trigger conditions to initiate image capture.
`
`Id. at 6:13–18.
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`The Specification describes several embodiments. In one
`
`embodiment, interface screen 30 on the camera display enables selection of
`cues or prompts for autonomous image capture. Ex. 1001, 7:27–30, Figs. 4,
`5. Figure 5 of the ’914 Patent is reproduced below.
`
`
`In the embodiment depicted in Figure 5, “a volume change condition
`is selected as a prompt to initiate image capture.” Ex. 1001, 7:31–32. In
`addition to selecting the volume change condition, “[t]he camera operator
`makes a setting 36 for a volume change threshold that will cause an image
`or an image capture set3 to be obtained.” Id. at 7:32–34 (emphasis added).
`
`3 An image capture set:
`is composed of the combination of a still image and a
`predetermined number of seconds of video prior to the
`detection of the image trigger condition, the combination of the
`still image and a predetermined number of seconds of video
`following the detection of the image trigger condition, or
`combinations thereof.
`Ex. 1001, 6:22–28.
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`As further described, “[a] control knob on the camera can be re-mapped in
`order to set the setting level.” Id. at 7:34–36. “Optionally, a touchscreen or
`other type of operator input mechanism can be used to obtain a preferred
`setting level.” Id. at 7:36–38.
`In another embodiment, digital image capture device 10 can be placed
`in an automatic response mode, in which it responds to changes in its
`environment. Id. at 8:65–9:13, Fig. 7. Figure 7 of the ’914 Patent is
`reproduced below.
`
`In “mode initialization step 200,” the digital capture device first is
`placed in a mode for adapting to its particular field of view. “[P]reset
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`threshold settings 202 can be provided to help set sensitivity thresholds for
`‘energy levels’ at which digital image capture device 10 performs image
`capture.” Id. at 9:13–16, Fig. 7. In self-learning step 210, digital image
`capture device 10 “learn[s] about the scene in order to develop image trigger
`condition thresholds.” Id. at 9:16–19, Fig. 7. In this step, the image capture
`device “senses one or more variables from its environment” and “integrates
`th[e] sensed activity over time.” Id. at 9:19–25. “Digital image capture
`device 10 will then be able to respond to transitions in the scene once it has
`sensed the relative activity or energy level in the scene over time.” Id. at
`9:26–28.
`In step 220, the image capture device is shifted to the automatic
`response mode. Id. at Fig. 7. “During monitoring step 230, digital image
`capture device 10 monitors its field of view and its selected set of
`environmental variables.” Id. at 9:36–38. An image is captured if some
`measured variable exceeds the “learned” threshold value for that variable.
`For example,
`An event detection step 240 occurs when some measured
`variable exceeds a given threshold value. For example, noise of
`a passing car outside can be detectable, but below the threshold
`value that has been “learned” by digital image capture device
`10. This can occur where digital image capture device 10 has
`been placed in a relatively noisy environment, so that false
`triggering from expected environment noise is not used to
`trigger image capture. . . . If the sensed signal exceeds a given
`threshold value or meets other necessary conditions that can be
`influenced both by preset settings 202 and by learned
`characteristics obtained in self-learning step 210, an image
`capture step 260 can be initiated.
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`Id. at 9:38–51, Fig. 7.
`The Specification teaches that various configurations are available to
`the operator in an automatic response mode. Id. at 10:25–27.
`“[C]onfiguration tools can be provided to select from various sensed
`conditions or to provide initialization thresholds.” Id. at 10:30–32. In one
`embodiment, “no configuration of the camera is needed,” because the
`camera “automatically enters the automatic response mode as soon as power
`is applied unless otherwise instructed by the operator.” Id. at 10:27–30.
`The Specification also teaches that “[c]ontent can also be used as an
`image capture trigger, so that various image subjects can be detected and act
`as image capture triggers.” Id. at 7:63–65. “[V]aribles such as a number of
`faces in the image field could serve as image capture triggers.” Id. at 7:65–
`67. “Still other defined content conditions can include detection of a person,
`animal, face, or other distinguishable subject or object.” Id. at 8:4–6.
`In another embodiment, the image capture device continuously
`analyzes a field of view, and, when a subject of interest is detected, image
`capture is initiated. Id. at 10:44–46, Fig. 8. “As such, the subject of interest
`represents the variable to be detected and the presence of the subject of
`interest within the field of view indicates that the image trigger condition
`threshold level has been exceeded.” Id. at 10:46–50.
`The image capture device can be configured to use a library of stored
`images to determine preferred subjects of interest and to employ those
`subjects as image capture triggers in automatic response mode. Id. at 11:61–
`
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`12:26. According to the Specification, “[t]hese image capture triggers
`can . . . be sensed as ‘instructions’ to digital image capture device 10 to
`capture an image (or capture an image capture set) when the subject or
`subjects of interest are present in the field of view and a corresponding
`threshold has been satisfied.” Id. at 12:26–30.
`
`
`image
`
`trigger
`
`D. Illustrative Claim
`Claim 1, which is the sole independent claim, is illustrative and is
`reproduced below:
`A method of automatically capturing
`
`1.
`an
`image with an
`image capture device
`comprising:
`
`selecting an automatic
`condition;
`
`entering a threshold level corresponding to
`the automatic image trigger condition, wherein
`reaching the threshold level of the automatic
`trigger condition indicates that a suitable image
`can be captured;
`
`monitoring of a signal for detecting the
`automatic image trigger condition; and
`
`automatically operating the image capture
`device to capture at least one digital image upon
`the automatic detection of the automatic image
`trigger condition meeting the threshold level.
`
`
`
`II. ANALYSIS
`
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
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`Patent 7,817,914 B2
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`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
`also In re Cuozzo Speed Technologies, LLC, No. 2014-1301, 2015 WL
`4097949, at *7–*8 (Fed. Cir. July 8, 2015) (“We conclude that Congress
`implicitly approved the broadest reasonable interpretation standard in
`enacting the AIA” and “the standard was properly adopted by PTO
`regulation.”). Under the broadest reasonable construction standard, and
`absent any special definition, claim terms are given their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art in the context of the entire disclosure. In re Translogic Tech., Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim
`term must be set forth with reasonable clarity, deliberateness, and precision.
`In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We interpret certain
`claim limitations as follows:
`1. “Automatic trigger condition”
`In the Decision to Institute, we determined that the broadest
`reasonable interpretation consistent with the Specification of “automatic
`trigger condition” is a condition that automatically activates an operation of
`a device. Inst. Dec. 7–8. Neither party proposes any change to that
`interpretation, and our review of the evidence does not indicate that any
`change is necessary. Consequently, we maintain our interpretation.
`2. “Selecting”
`Claim 1 recites “selecting an automatic image trigger condition”
`(emphasis added). In the Decision to Institute, we determined that the term
`
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`Patent 7,817,914 B2
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`“selecting” carries its ordinary and customary meaning, and is not limited to
`acts performed by a user of the image capture device. Inst. Dec. 9.
`In our Decision, we referred to dependent claims 2 and 8.4 We noted
`“that dependent claim 8 contemplates that the image capture device itself
`selects an automatic trigger condition, by ‘analyzing an image collection to
`select the predetermined image content’ (emphasis added).” Inst. Dec. 9;
`see Ex. 1001, 11:61–12:22.
`We also noted that, “as used in the Specification, ‘selecting’ need not
`be performed by a user, but can be performed by the image capture device
`itself.” Inst. Dec. 9. As an example, we cited the description that digital
`image capture device 10 “‘learns’ variable scene trigger content” (Ex. 1001,
`Fig. 7) and, subsequently, “monitors its field of view and its selected set of
`environmental variables” (id. at 9:36–38 (emphasis added)). Inst. Dec. 9.
`Patent Owner argues that the ’914 Patent provides a method that
`“includes two sets of steps: one for the user to put the camera in condition to
`operate autonomously, and another for the camera itself to automatically
`take a picture.” PO Resp. 3. Patent Owner further argues that “[t]he first set
`of steps includes the user (1) selecting an automatic trigger condition and
`(2) entering into the camera a threshold level that corresponds to the
`
`
`4 Claim 2 recites that “selecting the automatic image trigger condition
`further comprises selecting the presence of predetermined image content in
`the field of view of the image capture device,” and claim 8 recites “[t]he
`method of claim 2 further comprising analyzing an image collection to select
`the predetermined image content.”
`
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`previously-selected automatic image trigger condition.” Id. (citing Ex. 1001,
`4:66–5:2, 7:27–38, 14:11–15, Figs. 4, 5; Ex. 2006 ¶ 17).
`Patent Owner’s argument that we should limit “selecting” in claim 1
`to “user . . . selecting” (PO Resp. 3) is not persuasive for the reasons that we
`provided in the Decision to Institute. Inst. Dec. 8–9. In addition, Patent
`Owner’s proposed claim construction would exclude embodiments in which
`the image capture device, itself, selects an automatic trigger condition. E.g.,
`Ex. 1001, 10:28–32 (“The camera automatically enters the automatic
`response mode as soon as power is applied unless otherwise instructed by
`the operator. Alternately, configuration tools can be provided to select from
`various sensed conditions.”), 12:23–26 (“Once one or more subjects of
`interest have been stored, digital image capture device 10 can employ these
`subjects of interest as image capture triggers whenever it is placed in
`automatic response mode.”). Patent Owner has not explained sufficiently
`why “selecting” should be interpreted to exclude such embodiments. See,
`e.g., Oatey Co. v. IPS Corp., 514 F.3d 1271, 1277 (Fed. Cir. 2008) (holding
`that, at least where claims can be interpreted reasonably to include a specific
`embodiment, it is incorrect to construe the claims to exclude that
`embodiment, absent probative evidence to the contrary).
`For the above reasons, we determine that the term “selecting” carries
`its ordinary and customary meanings, and is not limited to acts performed by
`a user of the image capture device; and we maintain our interpretation.
`
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`3. “Threshold level”
`In the Decision to Institute, we determined that the broadest
`reasonable interpretation consistent with the Specification of the term
`“threshold level” is a level or value above which something will take place,
`and below which it will not. Inst. Dec. 10–11. In reaching that
`determination, we noted that the Specification uses the terms “threshold
`level” and “threshold value,” synonymously, in accordance with their
`ordinary and customary meaning as a level or value above which something
`will take place, and below which it will not. Id. at 10 (citing Ex. 1001, 3:19–
`21, 9:38–40).
`Patent Owner contends that the broadest reasonable interpretation of
`“threshold level” is “a condition, point, variable, or level at which something
`begins, changes, or takes place.” PO Resp. 18 (citing Ex. 2006 ¶ 52). Patent
`Owner argues: “Such a construction covers threshold levels defined by
`‘values’ and also covers threshold levels defined by the presence of specific
`subjects or variables in the field of view of the camera.” Id. (citing Ex. 2006
`¶ 52). Patent Owner argues that our interpretation of “threshold level” in the
`Decision to Institute is “too narrow because it does not encompass
`exemplary threshold levels disclosed in the specification.” Id. at 17. Patent
`Owner relies specifically on an example described in the Specification, in
`which, Patent Owner argues, “the simultaneous presence of a jersey, a
`soccer ball, and a soccer goal in the field of view of the camera is a
`threshold.” Id. (citing Ex. 1001, 11:56–60). In the example on which
`Petitioner relies, however, the simultaneous presence of the three subjects of
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`interest is not referred to as a “threshold level” (emphasis added), but rather
`as an “image trigger condition threshold.” Ex. 1001, 11:58–60; see Pet.
`Reply 5.
`The Specification elsewhere refers to subjects of interest as “image
`capture triggers.” Ex. 1001, 11:61–12:26. As discussed above in Section
`I.C, these “image capture triggers” can be sensed as “instructions” to capture
`an image “when the subject or subjects of interest are present in the field of
`view and a corresponding threshold has been satisfied.” Id. at 12:26–30
`(emphasis added). This disclosure clarifies that the presence of a subject of
`interest in the field of view is identified with a “corresponding threshold,”
`and manifestly is not, itself, a “threshold level” as used in the Specification
`and claims.
`For the above reasons, we are not persuaded that the Specification
`refers to the simultaneous presence of a jersey, a soccer ball, and a soccer
`goal in the field of view of the camera as a threshold level. See PO Resp. 17.
`Accordingly, we maintain our determination in the Decision to Institute that
`the broadest reasonable interpretation consistent with the Specification of
`“threshold level” is a level or value above which something will take place,
`and below which it will not.
`
`4. “Entering”
`Claim 1 recites “entering a threshold level” (emphasis added). In the
`Decision to Institute, we determined that the term “entering” carries its
`ordinary and customary meaning, and is not limited to acts of entering
`performed by a user of the image capture device. Inst. Dec. 12. We
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`reasoned that, as used in the Specification, the act of “entering” need not be
`performed by a user, but can be performed by the image capture device
`itself. Id.
`In the Decision to Institute, we also determined that the broadest
`reasonable interpretation consistent with the Specification of “entering a
`threshold level” does not encompass setting a threshold level during
`manufacturing of an image capture device. Inst. Dec. 11. Based on the
`record, we maintain our interpretation of “entering.”
`Patent Owner argues that the phrase “‘entering a threshold level’ . . .
`should be construed to mean that the user of the image capture device — not
`the device manufacturer or the device itself — enters the threshold level.”
`PO Resp. 4. Patent Owner further argues that “[t]he word ‘entering,’ when
`used in the context of entering a threshold level in order to operate a
`computerized device such as a digital image capture device, has a specific
`meaning that connotes that a person does the ‘entering.’” PO Resp. 4.
`Patent Owner asserts that “[t]he definition of ‘enter’ in such a context is ‘to
`put into: insert’ and ‘to input (data, a password, etc.) into a computer or
`other electronic device.’” Id. (citing Ex. 2008). Patent Owner’s cited
`dictionary definitions, however, do not specify that the act of entering is
`necessarily limited to inserting or inputting by a user. See Ex. 2008, 474.
`Relying on testimony of its declarant, Dr. Alan C. Bovik, Patent
`Owner asserts that “a person of skill in the art would have understood that
`‘inputting’ or ‘inserting’ data such as a password or threshold level into an
`electronic imaging device is done by the user of the device through a user
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`interface —not by the device itself.” PO Resp. 5 (emphasis added) (citing
`Ex. 2006 ¶ 30). Patent Owner further asserts: “No other understanding of
`the word ‘entering’ would make sense in the context of the claims.” Id.
`Patent Owner also argues:
`Indeed, as Dr. Bovik notes, the term “enter” in the context of
`data entry into a computer has a long history of the user
`performing the step of “entering.” For example, such “entering”
`of data is done via the “enter” key on a keyboard.
`
`Id. (emphasis added) (citing Ex. 2006 ¶ 31).
`As an initial matter, we are not persuaded that the meaning of
`“entering,” in claim 1, is limited to entry of data “into an electronic imaging
`device.” See PO Resp. 5 (emphasis added); Ex. 1018, 60:12–61:6. The
`Specification discloses other examples of entering. For example, as
`described in the Specification, interface screen 30 provides pre-programmed
`setup options in the form of a “touchscreen” and “expandable menu
`selections.” Ex. 1001, 7:16–18, 7:28 (“touchscreen menu selections”), 7:28–
`29 (“[e]xpandable menu selections 34”), Fig. 4. In an example, “a volume
`change condition is selected,” and “[t]he camera operator makes a setting 36
`for a volume change threshold.” Id. at 7:31–33, Fig. 5. “Optionally, a
`touchscreen . . . can be used to obtain a preferred setting level.” Id. at 7:36–
`38. As such, “entering a threshold level,” even in the user interface
`example, includes “setting” or “selecting” a previously-stored or pre-
`programmed threshold level.
`Consistent with the Specification, Petitioner persuasively argues that
`“the meaning of ‘entering’ includes entry of information internally by an
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`electronic device.” See Pet. Reply 2 (citing Ex. 1016 ¶¶ 9–16). We credit
`Dr. Stevenson’s testimony on this point:
`Data entry in electronic devices occurs through a variety
`of different mechanisms. For instance, in the context of
`electronic devices, including digital cameras, “entering” of data
`encompasses the electronic input of data into a component of
`the electronic device, such as a processor or memory. An
`electronic device’s operating instructions may cause the device
`to input data into a processor or memory. The entered data may
`be data from another memory (e.g., read-only memory
`(“ROM”)), a removable memory card, or a network.
`
`Ex. 1016 ¶ 13 (citing Ex. 1003).
`Patent Owner further argues that “the specification makes clear that
`the user ‘enter[s] a threshold level.’” PO Resp. 5 (citing Ex. 2006 ¶ 32).
`Patent Owner relies on the use of “enter” in certain passages of the
`Specification, such as “instructions entered by a user” and “user interface 20
`enables operator instructions to be entered.” Id. at 5–6 (citing Ex. 1001,
`4:29:32, 4:66–5:2; Ex. 2006 ¶ 32). Patent Owner also relies on the user
`interface embodiment depicted in Figures 4 and 5 of the ’914 Patent. Id. at
`6; see supra Section I.C.
`We are not persuaded, however, that use of the word “enter” in the
`Specification is limited to acts of entering performed by a user. In
`particular, the Specification uses the word “enter” to describe acts of
`entering performed automatically by the image capture device itself. Ex.
`1001, 10:12–15, Fig. 7 (“digital image capture device 10 can automatically
`enter automatic response mode, carrying out mode initialization step 200
`immediately upon power-up or according to a timer” (emphasis added));
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`10:28–30 (“[t]he camera automatically enters the automatic response mode
`as soon as power is applied unless otherwise instructed by the operator”
`(emphasis added)). As Patent Owner’s counsel admitted at oral hearing,
`neither the word “user” nor the phrase “by a user” appears anywhere in
`claim 1. Tr. 58:5–9.
`Patent Owner argues that these “descriptions of the device ‘entering’
`an automatic response mode in the specification are unrelated to the claimed
`step of ‘entering a threshold level.’” PO Resp. 14 (citing Ex. 2006 ¶¶ 43–
`44). In support of that argument, Dr. Bovik testifies:
`The step of a computerized device automatically going
`into an operation mode by itself is different than the step of a
`user “entering” a threshold level. Therefore, the specification
`descriptions of
`the
`image capture device “entering” an
`automatic response mode are completely unrelated to the step
`of “entering a threshold level” and do not support the Board’s
`construction of “entering” as used in the term “entering a
`threshold level.”
`
`Ex. 2006 ¶ 44.
`We are not persuaded, however, that a person of ordinary skill in the
`art would have understood the term “entering” to have a different meaning
`in the context of entering an automatic response mode than in the context of
`entering a threshold level. Dr. Bovik does not provide sufficient technical
`facts and reasoning to explain why “entering” would have been understood
`to encompass acts performed by the device itself in one operation, but only
`acts performed by a user in the other operation.
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`Further, we credit the testimony of Dr. Robert L. Stevenson,
`Petitioner’s declarant that the Specification “describes a self-learning mode
`in which a threshold level is entered by the camera (rather than the user)
`after the camera learns the characteristics of the scene.” Ex. 1016 ¶ 14
`(citing Ex. 1001, 9:16–34). Dr. Stevenson’s testimony is consistent with the
`description in the Specification of mode initialization step 200 and self-
`learning step 210, discussed above. See supra Section I.C. In step 200,
`“preset threshold settings 202 can be provided to help set sensitivity
`thresholds” (emphasis added); and in step 210, the image capture device
`“learn[s] about the scene in order to develop image trigger condition
`thresholds” (emphasis added). Ex. 1001, 9:11–19, Fig. 7. In an example,
`the Specification refers to “the threshold value that has been ‘learned’ by
`digital image capture device 10.” Id. at 9:41–42 (emphasis added).
`The testimony of Dr. Bovik on this point is not persuasive. See Ex.
`2006 ¶¶ 39–40, 45–47. Dr. Bovik testifies, for example, that “the user
`[rather than the camera] enters the threshold level by placing the camera in
`the self-learning mode and providing training to the camera so that the
`camera can ‘develop,’ ‘learn,’ or ‘adjust’ thresholds during the self-learning
`mode.” Ex. 2006 ¶ 39 (citing Ex. 1001, 9:11–19, 40–42, 10:5–7). Dr. Bovik
`also testifies, unpersuasively, that the user is involved in developing the
`thresholds even when the camera goes into automatic response mode on
`power-up:
`[The Specification, at column 10, lines 12–15,] states that the
`“automatic response mode” includes the “mode initialization
`step 200.” As discussed above, the “mode initialization step
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`200” is the step where the user places the camera in the self-
`learning mode and provides training to the camera. See Ex.
`1001 at 8:66-9:16, Fig. 7. As such, the user is involved in
`developing the thresholds even if the camera automatically goes
`into the automatic response mode at power up.
`
`Id. ¶ 45. Dr. Bovik’s conclusion that the user is involved, even when the
`camera goes into automatic response mode on power-up, is unsupported, and
`fails to explain the facially inconsistent disclosure that the camera carries
`out mode initialization step 200 immediately upon power-up or according to
`a timer. Ex. 1001, 10:14–15.
`Dr. Bovik further testifies that “a person of skill in the art would
`understand that the mode initialization step where the user provides training
`for the device must be done at least the first time the camera is put in the
`‘automatic response mode.’” Ex. 2006 ¶ 46. This testimony is conclusory,
`and does not explain why, or what, training by the user would be necessary.
`Dr. Bovik’s testimony also does not explain the facially inconsistent
`disclosure that the image capture device can adapt to its environment in the
`self-learning mode. See, e.g., Ex. 1001, 9:54–57 (“digital image capture
`device 10 can also continually ‘relearn’ its environment based on what is
`sensed while in operation”); id. at 9:64–67) (“by continuing to integrate
`sensed data, digital image capture device 10 can thus obtain a history that is
`updated, so that its sensitivity threshold changes”). Thus, as disclosed in the
`Specification, self-learning step 210 can be invoked periodically, such that
`the device can adapt automatically to its environment. See, e.g., Ex. 1001,
`
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`10:5–7 (“self-learning step 210 can thus be invoked periodically in order to
`adjust the threshold setting”).
`Alternatively, Dr. Bovik testifies that, if the device disclosed in the
`Specification can function in automatic response mode without any training
`or input by the user, “the threshold levels necessarily must be based on
`information provided at the manufacturing level.” Ex. 2006 ¶ 47. This
`testimony is unpersuasive because it does not explain why the image capture
`device cannot “learn” or “relearn” threshold levels without user training and
`input. It is also facially inconsistent with the Specification, as discussed
`above. See, e.g., Ex. 1001, 9:11–19, 41–42, 54–57; 10: 5–7, 12–15.
`Further, as discussed above, the Specification contemplates entering a
`previously-stored or pre-programmed threshold level, which may have been
`provided at the manufacturing level.
`Patent Owner additionally argues
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