Trials@uspto.gov
`571-272-7822
`
`Paper 55
`Entered: October 26, 2016
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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, MICHAEL J. FITZPATRICK, and
`NEIL T. POWELL, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`571-272-7822
`
`Paper 55
`Entered: October 26, 2016
`
`
`
`
`
`
`
`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, MICHAEL J. FITZPATRICK, and
`NEIL T. POWELL, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`
`IPR2015-01080
`Patent 8,890,954 B2
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`
`I. BACKGROUND
`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 LLC1 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, “Pet. Mot. Opp.”) and
`Patent Owner filed a Reply (Paper 50, “PO Mot. Reply”). A combined oral
`hearing with Case IPR2015-010782 was held on June 22, 2016, and a
`transcript of the hearing is included in the record (Paper 54, “Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This final written decision
`is issued pursuant to 35 U.S.C. § 318(a). For the reasons that follow, we
`determine that Petitioner has not shown by a preponderance of the evidence
`that claims 1, 2, and 11–30 are unpatentable.
`
`
`1 The original Patent Owner was Contour, LLC. Paper 5. During trial,
`Patent Owner filed a notice indicating that ownership of the challenged
`patent was transferred from Contour, LLC to Contour IP Holding LLC.
`See Papers 19, 28.
`2 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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`2
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`IPR2015-01080
`Patent 8,890,954 B2
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`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.
`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,
`
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`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.
`
`
`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
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`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
`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.
`
`5
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`IPR2015-01080
`Patent 8,890,954 B2
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`
`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”).3
`
`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)4 1, 2, 11–20, 22–25,
`and 27–30
`21 and 26
`
`35 U.S.C. § 103(a)
`
`
`II. ANALYSIS
`A. Motions to Exclude
`Before turning to the merits of Petitioner’s asserted grounds of
`unpatentability, we resolve certain aspects of the parties’ motions to exclude.
`
`
`3 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).
`4 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
`’954 patent has 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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`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).
`
`
`1. Petitioner’s Motion to Exclude
`a. Exhibits 2001 and 2002
`Petitioner moves to exclude printouts of two web pages: a March 3,
`2009 archived copy of the Tucker Rocky Distributing (“Tucker Rocky”)
`website from the Internet Archive Wayback Machine (Exhibit 2001) and a
`Facebook web page for the 2013 Tucker Rocky Dealer Show (Exhibit 2002).
`Pet. Mot. 2–4. Petitioner argues that the printouts are inadmissible as
`unauthenticated under Federal Rule of Evidence 901 and as hearsay under
`Federal Rule of Evidence 802. Id. Patent Owner argues that Petitioner
`waived its objection to these exhibits by failing to object timely. PO Mot.
`Opp. 1–2. 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). A preliminary proceeding “begins with the filing of
`a petition for instituting a trial and ends with a written decision as to whether
`a trial will be instituted.” 37 C.F.R. § 42.2. “Any objection to evidence
`submitted during a preliminary proceeding must be filed within ten business
`days of the institution of the trial.” 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
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`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 submitted Exhibits 2001 and 2002 with its Preliminary
`Response on July 30, 2015, prior to our Decision on Institution on October
`28, 2015. Therefore, Petitioner was required to object to the evidence within
`ten business days of institution. Petitioner, however, did not object until
`January 26, 2016, and thus waived any objection to Exhibits 2001 and 2002.
`See Pet. Mot. 1; Paper 31 (“Petitioner GoPro Inc.’s First Set of Objections to
`Patent Owner’s Exhibits” (emphasis added)). Petitioner argues that its
`objections were timely because Petitioner filed them within five business
`days of Patent Owner filing its Response and a declaration from Michael P.
`Duffey (Exhibit 2012) purportedly authenticating the two web page
`printouts. Pet. Mot. Reply 2. Petitioner, however, is not moving to exclude
`Exhibit 2012, in which case an objection to the exhibit filed within five
`business days of its service would have been timely.5 Rather, Petitioner is
`moving to exclude Exhibits 2001 and 2002, which were submitted during
`the “preliminary proceeding.” Pursuant to 37 C.F.R. § 42.64(b)(1), any
`objection was due within ten business days of institution, and Petitioner
`failed to meet that requirement. Petitioner’s Motion to Exclude is denied as
`to Exhibits 2001 and 2002.
`
`
`
`5 For evidence served after institution, “any objection must be filed within
`five business days of service of [the] evidence.” 37 C.F.R. § 42.64(b)(1).
`
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`b. Exhibits 1036 and 2004–2011
`Petitioner also moves to exclude certain materials (Exhibits
`2005–2011) pertaining to Patent Owner’s arguments regarding secondary
`considerations of non-obviousness, as well as the testimony (Exhibits 1036
`and 2004) of Patent Owner’s declarant, Brent E. Nelson, Ph.D., regarding
`whether the asserted references render obvious the challenged claims.
`Pet. Mot. 2–15. As explained below, we need not reach these issues because
`Petitioner has not proven that the GoPro Catalog is a prior art printed
`publication. See infra Section II.B. Therefore, Petitioner’s Motion to
`Exclude is dismissed as moot as to Exhibits 1036 and 2004–2011.
`
`
`2. Patent Owner’s Motion to Exclude
`a. Exhibit 1011
`Patent Owner moves to exclude the GoPro Catalog (Exhibit 1011) as
`unauthenticated under Federal Rule of Evidence 901. PO Mot. 3–8. The
`GoPro Catalog is a product catalog for Petitioner’s HD Motorsports HERO
`camera. Ex. 1011, 2. As we discuss in greater detail below, Petitioner
`provides testimony from Damon Jones, a Senior Product Manager employed
`by Petitioner, to support its arguments regarding the GoPro Catalog. See
`infra Section II.B; Ex. 1012 ¶ 1. Mr. Jones states, among other things, that
`he attended and distributed copies of the GoPro Catalog at the Tucker Rocky
`Dealer Show on July 23–27, 2009 in Fort Worth, Texas. Ex. 1012 ¶¶ 5, 8.
`Patent Owner argues that Petitioner has not proven that the version of
`the GoPro Catalog provided as Exhibit 1011 is “the same catalog that was
`purportedly distributed at the Dealer Show in July 2009, or even that the
`GoPro Catalog had been printed at that time.” PO Mot. 4. According to
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`Patent Owner, Mr. Jones’s testimony is conclusory and does not explain how
`or why Mr. Jones knows the GoPro Catalog is what he claims it to be, i.e., a
`copy of the catalog that he distributed at the Tucker Rocky Dealer Show. Id.
`at 4–7. Patent Owner contends that “Mr. Jones does not identify any
`markings or indicators on the GoPro Catalog that inform him that it is the
`same catalog he claims to have distributed,” and “does not say how he is
`capable of determining with any certainty that the GoPro Catalog is the same
`version, printing, or content as the catalog he claims to have distributed.” Id.
`at 5–6.
`We are not persuaded that Exhibit 1011 should be excluded for two
`reasons. First, Patent Owner withdrew its objection, as Petitioner argues.
`See Pet. Mot. Opp. 4–5. Patent Owner timely objected to Exhibit 1011
`within ten business days of institution. See Paper 14, 2–3. Petitioner later
`filed, pursuant to our authorization, a motion to submit a supplemental
`declaration from Mr. Jones as supplemental information under 37 C.F.R.
`§ 42.123(a). Paper 20. Patent Owner then filed objections to the
`supplemental declaration, stating that
`the Jones Supplemental Declaration cannot resolve Patent
`Owner’s objections stated in Patent Owner Contour LLC’s First
`Set of Objections to Petitioner’s Exhibits. However, to the
`extent the Board overlooks the untimeliness of Petitioner’s
`evidence and allows Petitioner’s evidence to be part of the
`record, the Jones Supplemental Declaration resolves the
`objections presented in Patent Owner Contour LLC’s First Set
`of Objections to Petitioner’s Exhibits.
`Paper 22, 3 (emphasis added). We allowed Mr. Jones’s supplemental
`declaration “to be part of the record” when we granted Petitioner’s motion to
`submit it as supplemental information. See Paper 28. We also now deny
`Patent Owner’s Motion to Exclude the supplemental declaration, for the
`
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`reasons explained below. See infra Section II.A.2.b. Thus, by Patent
`Owner’s own statement (reproduced above), Mr. Jones’s supplemental
`declaration “resolves” Patent Owner’s objection to the admissibility of
`Exhibit 1011.
`Second, even if Patent Owner had not withdrawn its objection, Patent
`Owner’s arguments regarding admissibility still would not be persuasive.
`“To satisfy the requirement of authenticating or identifying an item of
`evidence, the proponent must produce evidence sufficient to support a
`finding that the item is what the proponent claims it is.” Fed. R. Evid.
`901(a). “Testimony that an item is what it is claimed to be” may be used to
`satisfy the authentication requirement. Fed. R. Evid. 901(b)(1).
`Mr. Jones’s testimony is sufficient to establish that Exhibit 1011 is
`what he claims it to be, i.e., a copy of the catalog that he distributed at the
`Tucker Rocky Dealer Show. Mr. Jones testifies in his original declaration
`that Petitioner “distributed hundreds of copies” of the GoPro Catalog at the
`Tucker Rocky Dealer Show, and that Exhibit 1011 “is a true and correct
`copy of the GoPro Catalog that was distributed” there. Ex. 1012 ¶¶ 8, 10. In
`his supplemental declaration, Mr. Jones testifies that Nicholas Woodman,
`Petitioner’s founder and Chief Executive Officer, sent him an email
`(Exhibit 1023) on July 20, 2009, with the subject “Shipping for DAMON”
`and stating that “KINKOS is FEDEXING your HD Moto HERO Catalogs to
`you on TUES for arrival on WED.” Ex. 1022 ¶ 5. Mr. Jones states that he
`received catalogs at his hotel in Fort Worth, Texas and brought them to the
`Tucker Rocky Dealer Show. Id. ¶ 6. Importantly, Mr. Jones also testifies
`that (1) he is familiar with Petitioner’s marketing materials as a result of his
`employment with Petitioner since 2008; (2) he recognizes the catalog, which
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`states that “[t]the HD Motorsports HERO is available Fall ’09,” as
`pertaining to Petitioner’s HD Motorsports HERO camera launched in the fall
`of 2009; (3) he “recognize[s]” Exhibit 1011 as a copy of the catalog that he
`brought to the Tucker Rocky Dealer Show; and (4) the copy of the catalog
`provided as Exhibit 1011 “was taken from the inventory of these catalogs
`that [Petitioner] maintained and distributed in the ordinary course of
`business.” See id. ¶¶ 7–10; Ex. 1012 ¶¶ 1–2 (listing Mr. Jones’s
`employment positions with Petitioner); Ex. 1011, 7.
`Thus, Mr. Jones has personal knowledge of what catalog he brought
`to the Tucker Rocky Dealer Show, and a basis on which to recognize Exhibit
`1011 as that catalog due to his employment with Petitioner and familiarity
`with Petitioner’s products and marketing practices. His testimony also is
`consistent with the content of Exhibit 1011 itself, which describes the “HD
`Motorsports HERO” product. Given Mr. Jones’s personal involvement in
`receiving and using the GoPro Catalog, we are not persuaded that he was
`required to provide additional detail as to precisely how he recognizes
`Exhibit 1011 as the particular catalog from the Tucker Rocky Dealer Show,
`as Patent Owner contends. See PO Mot. 4–7. Nor are we persuaded that he
`needed to identify particular “markings or indicators” on the document as
`the basis for that recognition. See id. at 6. “[D]istinctive characteristics” of
`an item may provide a basis for admissibility under Rule 901(b)(4), but we
`are persuaded that Exhibit 1011 is admissible under at least Rule 901(b)(1)
`based on Mr. Jones’s testimony that Exhibit 1011 is what he claims it to be.
`Finally, the cases relied on by Patent Owner are distinguishable from the
`present facts, for all of the reasons stated by Petitioner. See id. at 3–4, 7;
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`Pet. Mot. Opp. 8–9. Patent Owner’s Motion to Exclude is denied as to
`Exhibit 1011.6
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`
`b. Exhibits 1022 and 1023
`Patent Owner moves to exclude Mr. Jones’s supplemental declaration
`(Exhibit 1022) and the email from Mr. Woodman (Exhibit 1023) as
`containing inadmissible hearsay under Federal Rule of Evidence 802 and as
`untimely. PO Mot. 8–11. First, Patent Owner argues that Mr. Woodman’s
`email and paragraph 5 of the supplemental declaration quoting it contain
`out-of-court statements offered for the truth of the matter asserted—namely,
`“that, on or around July 20, 2009, Mr. Woodman intended to and, in fact,
`sent Mr. Jones copies of the GoPro Catalog for distribution at the Dealer
`Show.” Id. at 8–10. We are not persuaded. As Petitioner points out, the
`disputed statements are not offered to prove the truth of whether
`Mr. Woodman in fact sent catalogs by FedEx to Mr. Jones, but rather that
`“Mr. Jones was informed that catalogs were being sent to him,” which
`supports Mr. Jones’s testimony authenticating Exhibit 1011. Pet. Mot. Opp.
`10–11; see Fed. R. Evid. 801 Advisory Comm. Notes (“If the significance of
`an offered statement lies solely in the fact that it was made, no issue is raised
`as to the truth of anything asserted, and the statement is not hearsay.”).
`
`
`6 Although we deem the GoPro Catalog admissible based on Mr. Jones’s
`testimony, the question of whether his testimony is sufficient to prove that
`the GoPro Catalog is a prior art printed publication is a separate issue, which
`we address below. See infra Section II.B.5.
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`Thus, we are not persuaded that the statements constitute inadmissible
`hearsay under Rule 802.7
`Second, Patent Owner argues that the supplemental declaration and
`email are untimely under 37 C.F.R. § 42.23(b), which provides that “[a]
`reply may only respond to arguments raised in the corresponding opposition,
`patent owner preliminary response, or patent owner response.” PO Mot.
`10–11. Patent Owner contends that Petitioner should have submitted the
`testimony in the supplemental declaration with its Petition. Id. We are not
`persuaded. A motion to exclude ordinarily is not the proper mechanism for
`raising the issue of whether a reply or reply evidence is beyond the proper
`scope permitted under the rules, as a motion to exclude is for challenging the
`“admissibility of evidence” under the Federal Rules of Evidence. See
`37 C.F.R. §§ 42.62, 42.64; Office Patent Trial Practice Guide, 77 Fed. Reg.
`at 48,758, 48,767. Regardless, though, the supplemental declaration and
`email were filed timely. Petitioner submitted the supplemental declaration
`and email as supplemental information pursuant to our Decision granting
`Petitioner’s corresponding motion, which was prior to Patent Owner filing
`its Response. See Paper 28. They were not submitted with Petitioner’s
`Reply. Patent Owner had the opportunity to cross-examine Mr. Jones
`regarding his declarations and the email and respond substantively in its
`Response, and Petitioner had the opportunity to respond to Patent Owner’s
`arguments in its Reply. Patent Owner’s Motion to Exclude is denied as to
`Exhibits 1022 and 1023.
`
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`7 Even if the disputed statements were inadmissible, our conclusions herein,
`including the determination that Exhibit 1011 is authentic, would be the
`same. See supra Section II.A.2.a.
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`c. Exhibit 1037
`Patent Owner also 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 Section II.B,
`and dismiss Patent Owner’s Motion to Exclude as moot as to Exhibit 1037.
`
`
`B. Petitioner’s Asserted Grounds of Unpatentability
`Petitioner argues that claims 1, 2, 11–20, 22–25, and 27–30 are
`unpatentable over Boland and the GoPro Catalog under 35 U.S.C. § 103(a),
`and that claims 21 and 26 are unpatentable over Boland, the GoPro Catalog,
`and Ueyama under 35 U.S.C. § 103(a), relying on the supporting testimony
`of Kendyl A. Román. Pet. 27–59 (citing Ex. 1007). We have reviewed the
`Petition, Patent Owner Response, and Reply, as well as the evidence
`discussed in each of those papers, and are not persuaded, by a preponderance
`of the evidence, that the challenged claims are unpatentable based on the
`asserted grounds.
`
`
`1. Boland
`Boland describes a “video recording camera system configured to
`record video from a user’s perspective,” comprising a headset positioned on
`the wearer’s ear and a wireless handset. Ex. 1010 ¶¶ 6, 30, Fig. 1.
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`Figure 2A of Boland is reproduced below.
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`Figure 2A depicts headset 100 comprising lens 105, image sensor(s) 205,
`multimedia processor 210, storage medium 228, and radio 240, which
`communicates with wireless communication handset 201 over
`communication channel 202 (e.g., Bluetooth). Id. ¶¶ 32–35. Handset 201
`includes “view screen 303 . . . to serve as a viewfinder for the headset 100
`and . . . further provide for previewing of video recorded by the
`headset 100,” and video control soft keys 307 to allow the user to control the
`operation of headset 100. Id. ¶¶ 46, 58, 61, 63, Fig. 3A. Video data is
`stored and overwritten, in a first in-first out manner, in non-volatile recorded
`video data buffer 229 of storage medium 228 for “continuous video
`recording,” and the user may save particular video portions as clip files 231.
`Id. ¶¶ 35, 40–42, 48.
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`2. GoPro Catalog
`The GoPro Catalog is a product catalog for Petitioner’s
`“HD Motorsports HERO” product. Ex. 1011, 2–3. It describes a “1080p
`[high-definition (HD)] wearable camera” and “optional wireless remote with
`an omni-directional range of 30 feet.” Id. at 3, 6. The images shown on
`pages 2 and 15 of the catalog are reproduced below.
`
`
`
`The images above depict the camera attached to a user’s helmet, and the
`wireless remote control, which the GoPro Catalog describes as follows:
`“With a 30’ / 10m range and the ability to wirelessly transmit a preview
`image of your photo or video before you start recording, the wireless remote
`opens up a world of filming opportunities and convenience.” Id. at 15.
`
`
`3. Ueyama
`Ueyama describes an “image capturing apparatus which can be
`remotely operated and is able to transmit captured image data to [an]
`operation terminal.” Ex. 1013, col. 3, l. 67–col. 4, l. 4. The operation
`terminal receives streamed image data over a wireless connection, such as
`Bluetooth, at a particular frame rate and can act as a “view finder” by
`displaying the images on a monitor. Id. at col. 4, ll. 13–18, 24–30. The
`
`
`
`
`17
`
`
`
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`IPR2015-01080
`Patent 8,890,954 B2
`
`image capturing apparatus “judges” the speed of the connection and
`“decreas[es] the resolution” of images when the speed is low. Id. at
`Abstract, col. 10, ll. 4–14.
`
`
`4. Level of Ordinary Skill in the Art
`Section 103(a) forbids issuance of a patent when “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 to
`a person having ordinary skill in the art to which said subject
`matter pertains.”
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C.
`§ 103(a)). In the Decision on Institution, we preliminarily determined that a
`person of ordinary skill in the art 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. Dec. on Inst. 11–12. The parties
`agree with this assessment. See PO Resp. 11; Tr. 30:8–11. Based on our
`review of the ’954 patent, the types of problems and solutions described in
`the ’954 patent and cited prior art, and the testimony of the parties’
`declarants, we maintain our preliminary determination and apply that level
`of ordinary skill in the art for purposes of this Decision.
`
`5. Whether Petitioner Has Proven That The GoPro Catalog Is Prior Art
`Before reaching the merits of Petitioner’s obviousness grounds, both
`of which are based on combinations of the GoPro Catalog with other
`asserted prior art, we must determine whether the GoPro Catalog is a prior
`art printed publication under 35 U.S.C. § 102(b). See Pet. 26. It is
`
`
`
`
`18
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`IPR2015-01080
`Patent 8,890,954 B2
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`Petitioner’s burden to prove that it is, as Petitioner bears the burden of
`proving unpatentability by a preponderance of the evidence. See 35 U.S.C.
`§ 316(e); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir.
`2016) (“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.”); In re Wyer, 655 F.2d 221, 227 (CCPA 1981) (a party
`asserting a reference as a prior art printed publication “should produce
`sufficient proof of its dissemination or that it has otherwise been available
`and accessible to persons concerned with the art to which the document
`relates”).
`We first resolve the legal standard to be applied, which the parties
`dispute. The determination of whether a document is a “printed publication”
`under 35 U.S.C. § 102 “involves a case-by-case inquiry into the facts and
`circumstances surrounding the reference’s disclosure to members of the
`public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004).
`“Because there are many ways in which a reference may be disseminated to
`the interested public, ‘public accessibility’ has been called the touchstone in
`determining whether a reference constitutes a ‘printed publication’ bar under
`35 U.S.C. § 102(b).” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331,
`1348 (Fed. Cir. 2016) (citing In re Hall, 781 F.2d 897, 898–99 (Fed. Cir.
`1986)). Petitioner argues that the standard to be applied to the GoPro
`Catalog is whether it was “sufficiently accessible to the public interested in
`the art.” Reply 2 (citing In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir.
`1989)). According to Petitioner, there are two different standards depending
`on the factual circumstances of the case: for “catalog” cases, like a thesis
`stored at a university, the standard is accessibility to persons interested and
`
`
`
`
`19
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`ordinarily skilled in the art, but for “dissemination [cases], like at a trade
`show,” the standard is only accessibility to the interested public. Tr. 28:13–
`29:17, 31:16–33:11. Patent Owner disagrees, arguing that a “reference is
`‘publicly accessible’ upon a satisfactory showing that such document has
`been disseminated or otherwise made available to the extent that persons
`interested and ordinarily skilled in the subject matter or art exercising
`reasonable diligence, can locate it.” PO Resp. 6 (citing Suffolk Techs., LLC
`v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014)). Patent Owner asserts
`that the standard is the same regardless of whether accessibility is being
`shown via cataloguing or dissemination. Tr. 40:14–42:13.
`We agree with Patent Owner. Although some cases, such as Cronyn,
`refer simply to “the public interested in the art,” the majority of cases define
`the standard as accessibility to persons interested and ordinarily skilled in
`the art. Numerous cases pertaining to dissemination of a reference have
`applied that standard. For example, in Massachusetts Inst. of Tech. v. AB
`Fortia, 774 F.2d 1104, 1108–1109 (Fed. Cir. 1985), the Court found that a
`paper delivered orally at a cell culture conference was a prior art printed
`publication because “between 50 and 500 persons interested and of ordinary
`skill in the subject matter were actually told of the existence of the paper and
`informed of its contents by the oral presentation, and the document itself was
`actually disseminated without restriction to at least six persons.” Likewise,
`in Klopfenstein, 380 F.3d at 1350–52, the Court found that a reference
`displayed at two industry association meetings was a prior art printed
`publication because it “was shown to a wide variety of viewers, a large
`subsection of whom possessed ordinary skill in the art of cereal chemistry
`and agriculture,” specifically noting that “the intended target audience at the
`
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`20
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`[first] meeting was comprised of cereal chemists and others having ordinary
`skill in the art,” and “[t]he intended viewers at the [second meeting] most
`likely also possessed ordinary skill in the art.” I
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