Trials@uspto.gov
`571-272-7822
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`Paper 90
`Entered: July 31, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOPRO, INC.,
`Petitioner,
`
`v.
`
`CONTOUR IP HOLDING LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01080
`Patent 8,890,954 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, NEIL T. POWELL, and
`KIMBERLY McGRAW, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`DECISION ON REMAND
`35 U.S.C. § 318(a)
`
`
`571-272-7822
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`Paper 90
`Entered: July 31, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOPRO, INC.,
`Petitioner,
`
`v.
`
`CONTOUR IP HOLDING LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01080
`Patent 8,890,954 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, NEIL T. POWELL, and
`KIMBERLY McGRAW, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`DECISION ON REMAND
`35 U.S.C. § 318(a)
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`IPR2015-01080
`Patent 8,890,954 B2
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`I. BACKGROUND
`We address this case on remand after a decision by the United States
`Court of Appeals for the Federal Circuit in GoPro, Inc. v. Contour IP
`Holding LLC, 908 F.3d 690 (Fed. Cir. 2018).
`Petitioner, GoPro, Inc., filed a Petition (Paper 1, “Pet.”) seeking inter
`partes review of claims 1–30 of U.S. Patent No. 8,890,954 B2 (Ex. 1001,
`“the ’954 patent”) pursuant to 35 U.S.C. §§ 311–319. On October 28, 2015,
`we instituted an inter partes review of claims 1, 2, and 11–30 on two
`grounds of unpatentability (Paper 8, “Dec. on Inst.”). Patent Owner,
`Contour IP Holding LLC, filed a Patent Owner Response (Paper 30,
`“PO Resp.”), and Petitioner filed a Reply (Paper 39, “Reply”). Petitioner
`filed a Motion to Exclude (Paper 43, “Pet. Mot.”) certain evidence submitted
`by Patent Owner. Patent Owner filed an Opposition (Paper 48, “PO Mot.
`Opp.”) and Petitioner filed a Reply (Paper 51, “Pet. Mot. Reply”). Patent
`Owner filed a Motion to Exclude (Paper 45, “PO Mot.”) certain evidence
`submitted by Petitioner. Petitioner filed an Opposition (Paper 49) and Patent
`Owner filed a Reply (Paper 50). A combined oral hearing with Case
`IPR2015-010781 was held on June 22, 2016, and a transcript of the hearing
`is included in the record (Paper 54, “Tr.”).
`The panel issued a Final Written Decision on October 26, 2016,
`concluding that Petitioner had not established that a reference applied in
`each of the asserted grounds of unpatentability, the GoPro Catalog
`(Ex. 1011), is a prior art printed publication under 35 U.S.C. § 102(b), and
`thus had not shown by a preponderance of the evidence that any of the
`
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`1 U.S. Patent No. 8,896,694 B2 (Ex. 1002), which is being challenged in
`Case IPR2015-01078, is a continuation of the ’954 patent.
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`challenged claims are unpatentable. See Paper 55, 29–30 (“Final Dec.”).
`The Federal Circuit subsequently vacated the decision and remanded to the
`Board. GoPro, 908 F.3d at 696; see Paper 70 (mandate issued on January
`17, 2019). The Federal Circuit held that “[Petitioner] met its burden to show
`that its catalog is a printed publication under § 102(b),” and stated: “Because
`the Board refused to accept the GoPro Catalog as a printed publication, it did
`not consider the merits of [Petitioner’s] obviousness claims. On remand, the
`Board shall consider the GoPro Catalog as prior art and evaluate the merits
`of [Petitioner’s] unpatentability claims.” GoPro, 908 F.3d at 695–96
`(citations omitted).
`Subsequent to the Final Written Decision and while the instant
`proceeding was on appeal, the Supreme Court of the United States held that
`a decision to institute under 35 U.S.C. § 314 may not institute on fewer than
`all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct.
`1348, 1359–60 (2018). Accordingly, we modified the Decision on
`Institution to institute on all claims and all grounds asserted in the Petition
`(including the originally non-instituted challenges to claims 3–10).
`Paper 74, 3–4, 8. The parties subsequently filed a joint motion to limit the
`Petition to remove the newly instituted grounds from consideration, which
`we granted. See Paper 77. Thus, the grounds now at issue are the same as
`those in the original trial.
`Also, while the instant proceeding was on appeal, the district court in
`the related litigation between the parties, Contour IP Holding, LLC v.
`GoPro, Inc., Case No. 17-cv-04738-WHO (N.D. Cal.), rendered a decision
`on claim construction of the ’954 patent. Ex. 2016. Following the remand,
`Patent Owner requested authorization for the parties each to file a
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`supplemental paper of no more than 350 words directed to claim
`interpretation and the district court decision, which we granted. See
`Papers 74, 78 (“PO Supp. Br.”), 79 (“Pet. Supp. Br.”). Patent Owner also
`filed a motion for additional discovery, which we denied. See Papers 74, 88.
`We have reconsidered the record developed during trial anew, as well
`as the parties’ supplemental briefing on claim interpretation (Papers 78, 79)
`and the district court decision (Ex. 2016), and evaluated the merits of
`Petitioner’s asserted grounds of unpatentability, considering the GoPro
`Catalog to be prior art. For the reasons that follow, we determine that
`Petitioner has not demonstrated, by a preponderance of the evidence, that
`claims 1, 2, and 11–30 of the ’954 patent are unpatentable.
`
`
`A. The ’954 Patent
`The ’954 patent describes an “integrated hands-free, [point-of-view
`(POV)] action sports video camera or camcorder that is configured for
`remote image acquisition control and viewing.” Ex. 1001, col. 1, ll. 14–17.
`According to the ’954 patent, “integrated hands-free, POV action sports
`video cameras” available at the time of the invention were “still in their
`infancy and may be difficult to use.” Id. at col. 1, ll. 44–49, Figs. 2A, 2B.
`The disclosed device uses global positioning system (GPS) technology to
`track its location during recording and a wireless connection protocol, such
`as Bluetooth, to “provide control signals or stream data to [the] wearable
`video camera and to access image content stored on or streaming from [the]
`wearable video camera.” Id. at col. 1, ll. 53–62, col. 16, ll. 50–60.
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`Figure 3A of the ’954 patent is reproduced below.
`
`
`As shown in Figure 3A, digital video camera 10 comprises camera
`housing 22, rotatable lens 26, image sensor 18 (not shown), such as a
`complementary metal-oxide semiconductor (CMOS) image capture card,
`microphone 90, and slidable switch activator 80, which can be moved to on
`and off positions to control recording and the storage of video. Id. at col. 5,
`ll. 38–61, col. 8, l. 64–col. 9, l. 50. “When recording video or taking
`photographs in a sports application, digital video camera 10 is often
`mounted in a location that does not permit the user to easily see the camera.”
`Id. at col. 19, ll. 35–37. Digital video camera 10, therefore, includes
`wireless communication capability to allow another device, such as a
`smartphone or tablet computer executing application software, to control
`camera settings in real time, access video stored on the camera, and act as a
`“viewfinder” to “preview what digital video camera 10 sees” and allow the
`user to check alignment, light level, etc. Id. at col. 19, l. 38–col. 20, l. 47.
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`B. Illustrative Claim
`Claim 1 of the ’954 patent recites:
`1. An integrated, hands-free, portable, viewfinderless
`point of view digital video camera, comprising:
`a lens and an image sensor, the image sensor capturing
`light propagating through the lens and representing a scene to
`be recorded, and the image sensor producing real time video
`image data of the scene;
`a wireless connection protocol device configured to send
`real time image content by wireless transmission directly to and
`receive control signals or data signals by wireless transmission
`directly from a wireless connection-enabled controller; and
`a camera processor configured to:
`receive the video image data directly or indirectly
`from the image sensor,
`generate, from the video image data, first video
`image content at a first resolution and second video
`image content at a second resolution, wherein the first
`resolution is lower than the second resolution,
`communicate the first video image content using
`the wireless connection protocol device to the wireless
`connection-enabled controller without displaying the first
`video image content, the second video image content, or
`the video image data at the video camera,
`receive the control signals from the wireless
`connection-enabled controller,
`adjust image capture settings of the video camera
`prior to recording the scene based at least in part on at
`least a portion of the control signals, and
`in response to a record command, cause the second
`video image content to be stored at the video camera,
`wherein
`controller
`connection-enabled
`the wireless
`comprises executable instructions for execution on a
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`handheld personal portable computing device, wherein
`when executed, the executable instructions cause the
`handheld personal portable computing device to:
`receive the first video image content from
`the wireless connection protocol device,
`display the first video image content on a
`display of
`the handheld personal portable
`computing device, the first video image content
`comprising a preview image of the scene, the
`preview image allowing a user of the video camera
`to manually adjust a position or orientation of the
`video camera to record the scene,
`generate the control signals based at least on
`input received at the handheld personal portable
`computing device, wherein the control signals
`comprise at least one of a frame alignment, a
`multi-camera synchronization, remote file access,
`and a resolution setting and at least one of a
`lighting setting, an audio setting, and a color
`setting, and
`communicate the control signals to the
`wireless connection protocol device.
`
`C. Prior Art
`The pending grounds of unpatentability in the instant inter partes
`review are based on the following prior art:
`U.S. Patent No. 7,362,352 B2, issued Apr. 22, 2008
`(Ex. 1013, “Ueyama”);
`U.S. Patent Application Publication No. 2010/0118158
`A1, published May 13, 2010 (Ex. 1010, “Boland”); and
`GoPro Sales Catalog (Ex. 1011, “GoPro Catalog”).2
`
`2 When citing the GoPro Catalog, we refer to the page numbers at the
`bottom-right corner of each page. See 37 C.F.R. § 42.63(d)(2).
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`D. Pending Grounds of Unpatentability
`The instant inter partes review involves the following grounds of
`unpatentability:
`References
`Boland and GoPro
`Catalog
`Boland, GoPro Catalog,
`and Ueyama
`
`Claims
`Basis
`35 U.S.C. § 103(a)3 1, 2, 11–20, 22–25,
`and 27–30
`21 and 26
`
`35 U.S.C. § 103(a)
`
`
`II. ANALYSIS
`A. Motions to Exclude
`In the original Final Written Decision in this proceeding, the panel
`denied the parties’ motions to exclude as to certain exhibits and dismissed
`the motions as to other exhibits as moot because Petitioner had not shown
`the GoPro Catalog to be a prior art printed publication. Given the Federal
`Circuit’s reversal of that determination, we revisit certain aspects of the
`motions to exclude. The party moving to exclude evidence bears the burden
`of proof to establish that it is entitled to the relief requested—namely, that
`the material sought to be excluded is inadmissible under the Federal Rules of
`Evidence. See 37 C.F.R. §§ 42.20(c), 42.62(a).
`
`
`
`3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the
`challenged claims of the ’954 patent have an effective filing date before the
`effective date of the applicable AIA amendments, we refer to the pre-AIA
`versions of 35 U.S.C. §§ 102 and 103.
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`1. Petitioner’s Motion to Exclude
`a. Exhibits 2001, 2002, and 2005–2011
`Petitioner moves to exclude printouts of two web pages
`(Exhibits 2001 and 2002). Pet. Mot. 2–4. The exhibits pertain to whether
`the GoPro Catalog is a prior art printed publication. We consider the GoPro
`Catalog to be prior art, see GoPro, 908 F.3d at 695–96, and maintain the
`panel’s original determination denying Petitioner’s Motion to Exclude as to
`Exhibits 2001 and 2002, see Final Dec. 7–8.
`Petitioner also moves to exclude certain materials (Exhibits
`2005–2011) pertaining to Patent Owner’s arguments regarding secondary
`considerations of non-obviousness. Pet. Mot. 2–12. As explained below,
`we need not reach these arguments because Petitioner has not proven that
`the relied upon references teach all limitations of the challenged claims.
`See infra Sections II.E, II.F. Therefore, we maintain the panel’s original
`determination dismissing Petitioner’s Motion to Exclude as to
`Exhibits 2005–2011 as moot. See Final Dec. 9.
`
`
`b. Exhibits 1036 and 2004
`Petitioner also moves to exclude the testimony of Patent Owner’s
`declarant, Brent E. Nelson, Ph.D. (Exhibits 1036 and 2004), regarding
`whether the asserted references render obvious the challenged claims, under
`Federal Rule of Evidence 702. Pet. Mot. 12–15. Federal Rule of
`Evidence 702 provides:
`A witness who is qualified as an expert by knowledge,
`skill, experience, training, or education may testify in the form
`of an opinion or otherwise if:
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`(a) the expert’s scientific, technical, or other specialized
`knowledge will help the trier of fact to understand the evidence
`or to determine a fact in issue;
`(b) the testimony is based on sufficient facts or data;
`(c) the testimony is the product of reliable principles and
`methods; and
`(d) the expert has reliably applied the principles and
`methods to the facts of the case.
`Petitioner argues that Dr. Nelson is not qualified to offer expert testimony in
`this proceeding and is not a person of ordinary skill in the art because “he
`has no experience programming or writing code for video compression or
`decompression algorithms for digital cameras” and “has never built an
`image video communication system that communicates video content
`between a point-of-view camera and a handheld mobile device, which is the
`subject of the claimed invention in this case.” Pet. Mot. 13 (citing Ex. 1036,
`62:2–21); Pet. Mot. Reply 5. Rather, “the bulk of his experience is with
`[computer-aided design (CAD)] and other arts, not digital video cameras.”
`Pet. Mot. 14. Petitioner also points to various portions of Dr. Nelson’s
`cross-examination in which he allegedly read from his declaration, exhibited
`“discomfort with the subject matter of the claimed invention,” and “relied on
`apparent coaching from his counsel.” Id. at 14–15 (citing Ex. 1036,
`41:9–43:12, 73:2–80:6).
`Patent Owner argues that Petitioner waived its objection to
`Exhibits 1036 and 2004 by failing to object timely. PO Mot. Opp. 12–13.
`We agree with Patent Owner. A party challenging the admissibility of
`evidence “must object timely to the evidence.” Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012). “Once a trial has been
`instituted, any objection must be filed within five business days of service of
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`evidence to which the objection is directed. The objection must identify the
`grounds for the objection with sufficient particularity to allow correction in
`the form of supplemental evidence.” 37 C.F.R. § 42.64(b)(1). Doing so
`allows the party that originally submitted the evidence to attempt to cure the
`objection by serving supplemental evidence. 37 C.F.R. § 42.64(b)(2). If the
`submitting party does not serve supplemental evidence, or if the
`supplemental evidence does not cure the objection, “[a] motion to exclude
`evidence must be filed to preserve [the] objection. The motion must identify
`the objections in the record in order and must explain the objections.”
`37 C.F.R. § 42.64(c).
`Patent Owner filed Dr. Nelson’s declaration as Exhibit 2004 on
`January 19, 2016. Petitioner cross-examined Dr. Nelson on March 3, 2016,
`and filed a copy of the transcript as Exhibit 1036 on April 4, 2016.
`Petitioner does not identify anywhere in the record where it objected to
`either exhibit. Instead, Petitioner argues that “[b]ecause the grounds for
`Petitioner’s objections to Dr. Nelson’s testimony were not evident until his
`deposition, an earlier objection was not available prior to [Petitioner’s
`Motion to Exclude].” Pet. Mot. 1. Petitioner, however, had access to
`Dr. Nelson’s declaration, which included a summary of his technical
`background and curriculum vitae, well in advance of his deposition. See id.
`at 14 (arguing that none of Dr. Nelson’s listed publications “expressly
`concern digital video cameras”); Ex. 2004, 57–66, ¶¶ 3–8. Moreover, even
`if Petitioner were correct that Dr. Nelson’s background was not fully evident
`until his deposition, Petitioner does not contend that it objected to
`Dr. Nelson’s testimony at any point prior to filing its Motion to Exclude
`(thus depriving Patent Owner of its ability to cure an objection with
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`supplemental evidence). Petitioner waived any objection to Exhibits 1036
`and 2004 by failing to object timely to the evidence under the Board’s rules.
`Regardless, though, we have reviewed Dr. Nelson’s testimony,
`including the portions of his cross-examination identified by Petitioner, and
`are not persuaded that it would warrant the remedy of exclusion. We
`disagree with Petitioner’s contention that a declarant must actually be a
`person of ordinary skill in the art in order to present testimony as to what a
`person of ordinary skill in the art would have understood at the time of the
`invention. See Pet. Mot. 12–13; SEB S.A. v. Montgomery Ward & Co.,
`594 F.3d 1360, 1373 (Fed. Cir. 2010) (stating there is no requirement of a
`perfect match between an expert’s experience and the field of the art in
`question, provided the expert has “sufficient relevant technical expertise” to
`testify). The Federal Circuit has explained that a person of ordinary skill in
`the art is a “hypothetical person postulated by § 103” that is “presumed to
`have . . . knowledge of all material prior art.” Kimberly-Clark Corp. v.
`Johnson & Johnson, 745 F.2d 1437, 1452–53 (Fed. Cir. 1984) (emphasis
`omitted); see also id. at 1454 (“It should be clear that that hypothetical
`person [of ordinary skill in the art] is not the inventor, but an imaginary
`being possessing ‘ordinary skill in the art’ created by Congress to provide a
`standard of patentability . . . .” (emphasis omitted)). Thus, the proper
`question to ask is not whether the testifying witness is in fact such a
`“hypothetical person,” but rather whether the testifying witness possesses
`sufficient qualifications to be able to testify as to what the hypothetical
`person of ordinary skill in the art postulated by § 103 would have known and
`understood at the time of the invention.
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`We determine that Dr. Nelson possesses sufficient education, training,
`and experience to provide testimony as to what a person of ordinary skill in
`the art would have understood at the time of the invention. As explained
`below, a person of ordinary skill in the art at the time of the ’954 patent
`would have had at least a bachelor’s degree in computer science, electrical
`engineering, or a similar discipline, and some experience creating,
`programming, or working with digital video cameras, such as POV action
`sports video cameras. See infra Section II.D. Dr. Nelson has B.S., M.S.,
`and Ph.D. degrees in computer science, teaches courses at Brigham Young
`University “at both the undergraduate and graduate levels in the areas of
`circuit design, hardware/software systems, software development, and
`design verification,” including system design for image and video
`processing applications, has published numerous publications on such
`topics, and has supervised student research on interfaces to digital video
`cameras and processing the output of such cameras. See Ex. 2004, 57–66,
`¶¶ 5–6; Ex. 1036, 64:6–23, 113:17–115:20. We determine that Dr. Nelson
`has the requisite education and experience, including “some experience . . .
`programming . . . or working with digital video cameras,” to testify as to the
`understanding of a person of ordinary skill in the art during the relevant
`timeframe. See PO Mot. Opp. 14; Ex. 2004 ¶¶ 6 (“In my professional work
`and in my personal experiences, I have worked with digital video
`cameras.”), 11–12.
`Therefore, at minimum, there exists “an adequate relationship
`between [Dr. Nelson’s] experience and the claimed invention” of the
`’954 patent. See SEB S.A., 594 F.3d at 1372–73 (upholding admission of the
`testimony of an expert who had “sufficient relevant technical expertise,”
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`despite lacking expertise in the design of the patented invention); Mytee
`Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882, 886–87 (Fed. Cir.
`2011) (upholding admission of the testimony of an expert who “had
`experience relevant to the field of the invention,” despite concession that he
`was not a person of ordinary skill in the art). We are able to determine what
`weight to give Dr. Nelson’s testimony and see no basis for excluding it
`under Federal Rule of Evidence 702. Petitioner’s Motion to Exclude is
`denied as to Exhibits 1036 and 2004.
`
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`2. Patent Owner’s Motion to Exclude
`Patent Owner moves to exclude the GoPro Catalog (Exhibit 1011).
`PO Mot. 3–8. We maintain the panel’s original determination denying
`Patent Owner’s Motion to Exclude as to Exhibit 1011. See Final Dec. 9–13.
`Patent Owner also moves to exclude a declaration from Damon Jones,
`an employee of Petitioner (Exhibit 1022), and a 2009 email to Mr. Jones
`(Exhibit 1023). PO Mot. 8–11. The exhibits pertain to whether the GoPro
`Catalog is a prior art printed publication. We consider the GoPro Catalog to
`be prior art, see GoPro, 908 F.3d at 695–96, and maintain the panel’s
`original determination denying Petitioner’s Motion to Exclude as to Exhibits
`1022 and 1023, see Final Dec. 13–14.
`Patent Owner moves to exclude the cross-examination testimony
`(Exhibit 1037) of its declarant, Richard Mander, Ph.D., regarding secondary
`considerations of non-obviousness. PO Mot. 11–15. We need not reach the
`issue of secondary considerations of non-obviousness, see infra Sections
`II.E, II.F, and maintain the panel’s original determination dismissing Patent
`Owner’s Motion to Exclude as to Exhibit 1037 as moot, see Final Dec. 15.
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`B. Claim Interpretation
`According to the rules applicable to this proceeding, we interpret
`claims in an unexpired patent using the “broadest reasonable construction in
`light of the specification of the patent in which [they] appear[].” 37 C.F.R.
`§ 42.100(b) (2014).4 Under this standard, we interpret claim terms using
`“the broadest reasonable meaning of the words in their ordinary usage as
`they would be understood by one of ordinary skill in the art, taking into
`account whatever enlightenment by way of definitions or otherwise that may
`be afforded by the written description contained in the applicant’s
`specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). “Under
`a broadest reasonable interpretation, words of the claim must be given their
`plain meaning, unless such meaning is inconsistent with the specification
`and prosecution history.” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1062
`(Fed. Cir. 2016).
`In the Decision on Institution, based on the record at the time, the
`panel preliminarily interpreted “scene to be recorded” in claims 1 and 22 to
`mean “a scene viewed by the camera prior to recording” and “record” in
`claims 1, 13, 22, and 27 to mean “store.” Dec. on Inst. 6–9. Patent Owner
`agrees with these interpretations in its Response and argues that no other
`claim terms require interpretation. PO Resp. 17–19. Petitioner does not
`dispute the interpretations in its Reply. We do not perceive any reason or
`
`4 The Petition in this proceeding was filed on April 20, 2015, prior to the
`effective date of the rule change that replaces the broadest reasonable
`interpretation standard with the federal court claim interpretation standard.
`See Changes to the Claim Construction Standard for Interpreting Claims in
`Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
`51,340, 51,340 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective
`November 13, 2018).
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`evidence that compels any deviation from the preliminary interpretations of
`“scene to be recorded” and “record,” and adopt the previous analysis for
`purposes of this Decision.
`While the instant proceeding was on appeal, the district court
`construed a number of terms of the ’954 patent claims. Ex. 2016. The
`district court construed “scene to be recorded” as a “scene viewed by the
`camera prior to recording.” Id. at 14–16, 22. The district court also
`construed the following phrases:
`Phrase
`“generate from the video image
`data a first image data stream
`and a second image data stream,
`wherein the second image data
`stream is a higher quality than
`the first image data stream”
`(claim 11)
`
`Construction
`record in parallel from the video
`image data a first image data
`stream and a second image data
`stream, wherein the second
`image data stream is a higher
`quality than the first image data
`stream
`
`“generate from the video image
`data a first image data stream
`and a second image data stream,
`wherein the second image data
`stream comprises a higher
`resolution image than the first
`image data stream” (claim 27)
`
`record in parallel from the video
`image data a first image data
`stream and a second image data
`stream, wherein the second
`image data stream comprises a
`higher resolution image than the
`first image data stream
`
`Id. at 9–13, 21 (emphases added).5 Neither party proposed interpretations
`for these phrases in their papers filed prior to the appeal in this proceeding.
`Both parties, however, made arguments in their papers filed post-institution
`
`5 Although not construed by the district court, claim 1 of the ’954 patent also
`includes a similar limitation: “generate, from the video image data, first
`video image content at a first resolution and second video image content at a
`second resolution, wherein the first resolution is lower than the second
`resolution” (emphasis added).
`
`
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`16
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`Patent 8,890,954 B2
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`about whether the cited prior art (Boland) generates different video streams
`“in parallel,” and both parties made extensive arguments at the oral hearing
`regarding whether the claims require such generation “in parallel.” See, e.g.,
`PO Resp. 32–33; Reply 14; Tr. 15:4–10, 23:4–24:19, 26:23–28:2,
`77:1–81:17.
`Patent Owner, in its supplemental paper following the remand,
`contends that Petitioner was inconsistent in arguing during the oral hearing
`in this proceeding that generation “in parallel” is not required, then later
`advocating in favor of the “in parallel” language above to the district court.
`PO Supp. Br. 2–3; see Tr. 15:4–10 (Petitioner arguing that “[t]here is
`nothing [in the claims] that says it has to be . . . parallel”), 23:20–22,
`24:17–19, 27:24–28:2; Ex. 2016, 12 (district court decision noting that
`Petitioner proposed construing the claims to require generation “at the same
`time or in parallel” based in part on Patent Owner’s statements during the
`oral hearing in this proceeding). Patent Owner’s position on remand is that
`the phrase “from the video image data” in the limitations above means “in
`parallel from the same source,” i.e., “the video image data.” PO Supp. Br.
`2–3.
`
`Petitioner argues that there is no inconsistency because Petitioner
`argued in its Reply that the cited prior art (Boland) teaches generation
`“in parallel, not in serial.” Pet. Supp. Br. 1–2 (quoting Reply 14). Petitioner
`further argues that the district court’s constructions do not undermine
`Petitioner’s arguments in this proceeding because “[w]hile the district court
`construed the claims to require generation of two video streams in parallel,
`. . . no requirement for the high resolution and low resolution video streams
`
`
`
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`17
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`to be generated solely or directly from the image sensor using parallel
`processors was added.” Id. (citing Ex. 2016, 9–11).
`We have reviewed the district court decision and the parties’
`corresponding briefing. The parties appear to now agree that generation of
`the recited first and second image data streams must be “in parallel,” but
`disagree as to the scope of what that means. The plain language of the
`claims, however, is clear. The first and second image data streams must be
`generated “from” the same source, i.e., “the video image data.” Thus, if one
`stream is generated from one source and the other stream is generated from
`a different source, the claim language is not satisfied. For example, if the
`“second image data stream”/“second video image content” is generated from
`“the video image data,” but the “first image data stream”/“first video image
`content” is generated from the “second image data stream”/“second video
`image content” instead of from “the video image data,” the claim language is
`not satisfied.
`We interpret “from the video image data” recited in claims 1, 11, and
`27 to require generation in parallel from the same source, i.e., “the video
`image data.” We also conclude that no further interpretation of the
`surrounding language or any other term is necessary to determine whether
`Petitioner has met its burden to prove unpatentability of the challenged
`claims by a preponderance of the evidence, as explained further below.
`See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
`1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are
`in controversy, and only to the extent necessary to resolve the controversy,’
`we need not construe [a particular claim limitation] where the construction is
`not ‘material to the . . . dispute.’” (citations omitted)).
`
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`
`C. Principles of Law
`To prevail in challenging claims 1, 2, and 11–30 of the ’954 patent,
`Petitioner must demonstrate by a preponderance of the evidence that the
`claims are unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
`A claim is unpatentable for obviousness if, to one of ordinary skill in
`the pertinent art, “the differences between the subject matter sought to be
`patented and the prior art are such that the subject matter as a whole would
`have been obvious at the time the invention was made.” KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). The
`question of obviousness is resolved on the basis of underlying factual
`determinations, including “the scope and content of the prior art”;
`“differences between the prior art and the claims at issue”; and “the level of
`ordinary skill in the pertinent art.” Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966). Additionally, secondary considerations, such as “commercial
`success, long felt but unsolved needs, failure of others, etc., might be utilized
`to give light to the circumstances surrounding the origin of the subject
`matter sought to be patented. As indicia of obviousness or nonobviousness,
`these inquiries may have relevancy.” Id.
`A patent claim “is not proved obvious merely by demonstrating that
`each of its elements was, independently, known in the prior art.” KSR,
`550 U.S. at 418. An obviousness determination requires finding “both ‘that
`a skilled artisan would have been motivated to combine the teachings of the
`prior art references to achieve the claimed invention, and that the skilled
`artisan would have had a reasonable expectation of success in doing so.’”
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359,
`1367–68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418
`
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`(for an obviousness analysis, “it can be important to identify a reason that
`would have p
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