UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`QOMO HITEVISION, LLC,
`Petitioner,
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`v.
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`PATHWAY INNOVATIONS AND TECHNOLOGIES, INC.,
`Patent Owner
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`Case IPR2016-00661
`United States Patent No. 8,508,751
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`Original Petition filed on February 26, 2016
`Corrected Petition filed on March 9, 2016
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`PATHWAY INNOVATIONS AND TECHNOLOGIES, INC.’S
`PRELIMINARY RESPONSE TO PETITION FOR INTER PARTES REVIEW OF
`UNITED STATES PATENT NO. 8,508,751
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100, ET SEQ.
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`TABLE OF CONTENTS
`
`Introduction ......................................................................................................................... 1 
`Status of Co-Pending Litigation .......................................................................................... 2 
`The Petition Should Be Rejected in Its Entirety Because Qomo Failed to Establish a
`Reasonable Likelihood That at Least One of the Challenged Claims Is Unpatentable ...... 2 
`A. 
`Overview of United States Patent No. 8,508,751 ....................................................3 
`B. 
`Claim Terms Requiring Construction ......................................................................4 
`1. 
`Level of Ordinary Skill in the Art ............................................................... 4 
`2. 
`Disputed Terms ........................................................................................... 5 
`a. 
`“Infinite Focal Length” ................................................................... 7 
`b. 
`“Series of Frame Images” or “Series of Real-time Images” ........... 7 
`The Petition Fails to Establish That Dr. Saber is One of Ordinary Skill in the Art –
`Dr. Saber’s Declaration is Entitled to Zero Weight .................................................8 
`Claims 1, 2, 18, and 20 Are Not Anticipated by Morichika ..................................12 
`Morichika Does Not Disclose “Receiving a Series of Frame Images From
`1. 
`the Slave Digital Image Sensing Unit” as Recited in Independent Claim 1
`and a “Series of Real-time Images” as Recited in Independent Claim 18 12 
`Morichika Does Not Disclose “Using the Master Personal Processor to
`Manipulate the Series of Frame Images, Including Zooming In or Out
`Wthout Changing Resolution of the Frame Images” as Recited in
`Independent Claim 1 or “Cause the Digital Imaging Unit to Zoom In or
`Zoom Out in Real-time While Maintaining a Resolution of a Series of
`Real-time Images” as Recited in Independent Caim 18 ........................... 14 
`The Board Should Not Institute an Inter Partes Review of Any Obviousness
`Ground (i.e., Grounds 1-9) Because Petitioner Has Not Provided a Meaningful
`Analysis..................................................................................................................15 
`The Petition Fails to Specify Sufficient Where Each Element of the
`1. 
`Claims is Found and Explain the Significance of the Quotations and
`Citations, and the Differences Between the Claimed Invention and Prior
`Art ............................................................................................................. 16 
`In Every Instance, Qomo’s Reasoning to Combine Various References is
`Improper .................................................................................................... 17 
`Claims 1-10, 12-18, and 20 Are Patentable Over Morichika, Even When
`Considered in Combination with Hara and/or Howell ..........................................18 
`Qomo Has Failed to Establish That It Would Have Been Obvious to
`1. 
`Modify Morichika to Reach the Claimed Invention ................................. 18 
`The Introduction of Hara Does Not Raise a Reasonable Likelihood of
`Obviousness Over Morichika ................................................................... 22 
`i
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`2. 
`
`2. 
`
`2. 
`
`C. 
`
`D. 
`
`E. 
`
`F. 
`
`I. 
`Ii. 
`Iii. 
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`
`
`

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`3. 
`
`4. 
`
`2. 
`
`3. 
`
`2. 
`
`3. 
`
`4. 
`
`5. 
`
`6. 
`
`7. 
`
`The Introduction of Howell Does Not Raise a Reasonable Likelihood of
`Obviousness Over Morichika ................................................................... 23 
`Morichika, Either Taken Alone or in Combination with Hara and/or
`Howell, Fails to Teach or Suggest Zoom “without changing resolution of
`the frame images” as recited in independent claim 1 or “while maintaining
`a resolution of a series of real-time images” as recited in independent
`claim 18 ..................................................................................................... 24 
`Claims 1-10, 14-18, and 20 Are Patentable Over LeGall, Even When Considered
`in Combination with Philips and/or Howell ..........................................................24 
`Qomo Has Failed to Establish that The Combination of LeGall and Philips
`1. 
`Reaches the Invention Claimed in Claims 1-5, 8, 9, 16, 18, and 20 ......... 24 
`LeGall Fails to Teach or Suggest Zoom “without changing resolution of
`the frame images” as recited in independent claims 1 and 3, or “while
`maintaining a resolution of a series of real-time images” as recited in
`independent claim 18 ................................................................................ 25 
`The Introduction of Howell Does Not Raise a Reasonable Likelihood of
`Obviousness Over LeGall and Philips ...................................................... 26 
`Claims 1-7, 18, and 20 Are Patentable Over Novak, Even When Considered in
`Combination with Hara, Philips and/or Howell .....................................................27 
`Qomo Has Failed to Establish that The Combination of Novak and Hara
`1. 
`Reaches the Invention Recited in Claims 1-5 and 7 ................................. 27 
`Novak Fails to Teach or Suggest “connecting a slave digital image sensing
`unit to a master personal processor” as recited in independent claims 1 .. 27 
`Novak Fails to Teach or Suggest Zoom “without changing resolution of
`the frame images” as recited in independent claims 1 and 3 .................... 28 
`Novak Fails to Teach or Suggest “displaying and/or storing the
`manipulated frame images as an output video image without changing
`resolution of the manipulated series of frame images” as recited in
`independent claims 1 and 3 ....................................................................... 28 
`The Introduction of Howell Does Not Raise a Reasonable Likelihood of
`Obviousness Over Novak and Hara .......................................................... 28 
`Qomo Has Failed to Establish that The Combination of Novak and Philips
`Reaches the Invention Recited in Claims 18 and 20................................. 29 
`Novak Fails to Teach or Suggest Zoom “while maintaining a resolution of
`a series of real-time images” as recited in independent claim 18 ............. 29 
`The Petition Fails to Identify Any Compelling Rationale for Adopting Multiple Grounds
`of Rejection Under Morichika, LeGall, and Novak .......................................................... 30 
`Conclusion ........................................................................................................................ 31 
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`G. 
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`H. 
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`ii
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`IV. 
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`V. 
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`TABLE OF AUTHORITIES
`
`CASES
`Apotex Inc. v. Wyeth LLC, IPR2014-0015, Paper 94 (PTAB Apr. 20, 2015) ............................... 17
`Callcopy, Inc. v. Verint Americas, Inc., IPR2013-00492, Paper 14 (PTAB Feb. 5, 2014) .......... 14
`Digital Ally, Inc. v. Utility Assocs., Inc., IPR2014-00725, Paper 29 (PTAB Nov. 16, 2015) ........ 8
`Environmental Designs, Ltd v Union Oil Co., 713 F.2d 693 (Fed. Cir. 1983) ............................... 5
`Google Inc. v. EveryMD.com LLC, IPR2014-00347, Paper 9 (PTAB May 22, 2014) .......... passim
`GraceNote, Inc. v. Iceberg Indus. LLC, IPR2013-00552, Paper 6 (PTAB Mar. 7, 2004) ............ 14
`Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966) .................................. 15, 16, 17, 25
`Heart Failure Techs., LLC v. CardioKinetix, Inc., IPR2013-00183, Paper 12 (PTAB July 31,
`2013) ......................................................................................................................................... 12
`Illumina, Inc. v. Trustees of Columbia Univ., IPR2012-00006, Paper 43 (PTAB May 10, 2013) 30
`In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) ..................................... 4
`In re Bigio, 381 F.3d 1320, 1325, 72 USPQ2d 1209, 1212 (Fed. Cir. 2004) ............................... 22
`In re Cuozzo Speed Techs., LLC, 793 F.3d 1268 (Fed. Cir. 2015), cert. granted, 84 U.S.L.W.
`3218 (U.S. Jan. 15, 2016) (No. 15-446)...................................................................................... 4
`In re Kahn, 441 F.3d 977 (Fed. Cir. 2006) ................................................................................... 21
`In re Paulsen, 30 F.3d 1475 (Fed. Cir. 1994) ................................................................................. 4
`In re Ratti, 270 F.2d 810, 123 USPQ 349 (CCPA 1959).............................................................. 19
`In re Translogic Tech. Inc., 504 F.3d 1249 (Fed. Cir. 2007) .......................................................... 4
`In re Turlay, 304 F.2d 893 (CCPA 1962) ..................................................................................... 13
`In re Van Geuns, 944 F.2d 1181 (Fed. Cir. 1993) .......................................................................... 4
`KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ................................................................ 12, 17
`Mitsubishi Chemical Corp. v. Barr Laboratories, Inc., 435 Fed. Appx. 927 (Fed. Cir. 2011) .... 13
`Procter & Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989 (Fed. Cir. 2009) .................... 17
`Samsung Electronics Co. Ltd. v. Rembrandt Wireless Techs., LP, IPR2014-00518, Paper 47
`(PTAB Sep. 17, 2015) ............................................................................................................. 5, 8
`Shopkick, Inc. v. Novitaz, Inc., IPR2015-00279, Paper 7 (PTAB May 29, 2015) ........................ 17
`Verdegaal Bros. v. Union Oil Co. of California, 2 USPQ2d 1051 (Fed. Cir. 1987) .................... 12
`Volkswagen Grp. of Am., Inc. v. Velocity Patent LLC, IPR2015-00276, Paper 8 (PTAB Jun. 1,
`2015) ....................................................................................................................... 17, 24, 27, 29
`
`STATUTES
`35 U.S.C. § 102(b) .......................................................................................................................... 1
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`iii
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`

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`35 U.S.C. § 103(a) .................................................................................................................... 1, 22
`35 U.S.C.§103(a) .................................................................................................................. .. 1, 22
`35 U.S.C. § 314(a) .......................................................................................................................... 2
`35 U.S.C. §314(a) ........................................................................................................................ .. 2
`
`OTHER AUTHORITIES
`OTHER AUTHORITIES
`MPEP § 2111 .................................................................................................................................. 6
`MPEP § 2111 ................................................................................................................................ .. 6
`MPEP § 2131 ................................................................................................................................ 12
`MPEP § 2131 .............................................................................................................................. .. 12
`MPEP § 2141.01(a) ....................................................................................................................... 22
`MPEP § 2141.01(a) ..................................................................................................................... .. 22
`MPEP § 2143 ................................................................................................................................ 21
`MPEP § 2143 .............................................................................................................................. .. 21
`
`RULES
`RULES
`37 C.F.R. § 42.1(b) ....................................................................................................................... 30
`37 C.F.R. §42.1(b) ..................................................................................................................... .. 30
`37 C.F.R. § 42.107 ........................................................................................................................ 19
`37 C.F.R. §42.1o7 ...................................................................................................................... .. 19
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`iv
`iv
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`

`
`INTRODUCTION
`The Board should deny the present petition for inter partes review (IPR) of United States
`Patent No. 8,508,751 (“the ‘751 Patent”). Qomo Hitevision, LLC (“Petitioner” or “Qomo”) has
`failed to demonstrate a reasonable likelihood that any challenged claim of the ‘751 Patent is not
`patentable. Qomo requests IPR review of claims 1-10, 12-18, and 20 on a mix-and-match of
`multiple reference, brewed into no less than ten (10) grounds of purported invalidity as follows:
`Ground
`Claims
`Alleged Invalidity Basis
`1
`1, 2, 18, 20
`Anticipated under 35 U.S.C. § 102(b) by United States Patent Application
`Publication No. 2005/0078052 to Morichika (“Morichika”)
`Obvious under 35 U.S.C. § 103(a) by Morichika
`
`1, 2, 8, 9, 12,
`13, 16, 18, 20
`1-5, 7-9, 12,
`13, 16
`1-5, 8, 9, 16,
`18, 20
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`1-5, 7
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`Obvious under 35 U.S.C. § 103(a) by Morichika in view of United States
`Patent Application Publication No. 2001/0012051 to Hara et al. (“Hara”)
`Obvious under 35 U.S.C. § 103(a) by United States Patent No. 8,243,171 to
`LeGall et al. (“LeGall”) in view of Manual for Philips USB PC Camera
`PCVK750 (“Philips”)
`Obvious under 35 U.S.C. § 103(a) by United States Patent No. 7,071,968 to
`Novak (“Novak”) in view of Hara
`Obvious under 35 U.S.C. § 103(a) by Novak in view of Philips
`18, 20
`10, 14, 15, 17 Obvious under 35 U.S.C. § 103(a) by Morichika in view of United States
`Patent No. 5,767,897 to Howell (“Howell”)
`Obvious under 35 U.S.C. § 103(a) by Morichika in view of Hara and Howell
`
`I.
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`2
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`3
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`4
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`5
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`6
`7
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`8
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`9
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`10
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`The linchpin of Qomo’s anticipation and obviousness arguments, Morichika, fails because
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`the Morichika document camera fails to disclose video capability, required for all patented claims.
`Moreover, Morichika changes the resolution during zoom.
`
`In every ground of purported obviousness, Qomo provides only a cursory “obvious to try”
`argument—the requisite meaningful analysis is not provided. Qomo fails to articulate with
`specificity where each element of the claim is found, fails to explain the significance of the
`quotations and citations it relies upon, and fails to explain why, based on the difference between
`the prior art and the claimed invention, it would have been obvious to a person of ordinary skill to
`make the modification. The Board is improperly burdened with the task of sifting through repeated
`quotations from the prior art to generate the patchwork quilt of obviousness combinations that
`Qomo fails to demonstrate in the petition.
`
`6, 7, 10, 14,
`15, 17
`6, 7, 10, 14,
`15, 17
`6,7
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`Obvious under 35 U.S.C. § 103(a) by LeGall in view of Philips and Howell
`
`Obvious under 35 U.S.C. § 103(a) by Novak in view Hara and Howell
`
`1
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`

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`Moreover, Dr. Saber’s declaration should be given zero weight. Mere education and
`
`general experience is insufficient to assess the level of ordinary skill in the ‘751 patent and
`obviousness. Dr. Saber’s opinions are all conclusory and fail to provide any articulated reasoning
`as to how his opinions were reached.
`
`Furthermore, there is no compelling rationale for adopting Qomo’s scatter-gun approach
`to the prior art. Qomo does not articulate any meaningful distinctions between its nine sets of
`obviousness arguments. No rationale is provided as to why Morichika, LeGall, and Novak must
`all be considered as part of this IPR, should a trial be instituted. Indeed, nowhere does Qomo
`address the redundant and overlapping teachings of these references. Considering all nine grounds
`of obviousness would unnecessarily waste the time and resources of all the parties involved. The
`petition is an example of scatter-shot argumentation.
`
`In sum, none of Qomo’s purported grounds of invalidity justify institution of an IPR.
`II.
`STATUS OF CO-PENDING LITIGATION
`Petitioner was found to be in default in the Section 337 investigation instituted by the U.S.
`International Trade Commission (ITC) based on a complaint filed by Patent Owner, Pathway
`Innovations and Technologies, Inc. (“Patent Owner” or “Pathway”). See Order No. 10 (Dec. 7,
`2015), In the Matter of Certain Document Cameras and Software for Use Therewith, Investigation
`No. 337-TA-967, United States International Trade Commission. On December 17, 2015, Pathway
`filed a request for entry of a limited exclusion order and/or cease and desist order. On May 13,
`2016, the ITC issued a request for written submissions on remedy, the public interest and bonding,
`which were initially due on May 23, 2016, but then extended to May 31, 2016. On May 31, 2016,
`Pathway filed its submission on remedy, the public interest and bonding. The ITC has not yet
`acted upon Pathway’s submission.
`III. THE PETITION SHOULD BE REJECTED IN ITS ENTIRETY BECAUSE
`QOMO FAILED TO ESTABLISH A REASONABLE LIKELIHOOD THAT AT
`LEAST ONE OF THE CHALLENGED CLAIMS IS UNPATENTABLE
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless … there is
`a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” As discussed below, Qomo is not likely to prevail on any ground raised
`in the petition.
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`2
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`

`
`A.
`Overview of United States Patent No. 8,508,751
`The ‘751 patent is titled “Capturing Real-Time Video with Zooming Capability and
`Scanning High Resolution Still Images of Documents Using the Same Apparatus,” and discloses
`a “compact document imaging system that is cost efficient, highly compact or space efficient,
`highly portable, and virtually instantaneous in terms of time efficiency, while at the same time,
`also being capable of producing real-time high resolution zoomable video.” Ex. 1001, Title, 3:18-
`24.
`
`In the field of document cameras, it is desirable for an apparatus to capture real-time video
`streams with the highest clarity possible with zooming-in and zooming-out capability. Id., 1:23-
`25. Some prior art systems achieved zoomable video through implementation of a separate video
`display projector connected to an analog video output of the document camera. See id., 1:26-36.
`However, these systems had limited output resolution and processing capacities. See id. Other prior
`art document camera systems utilized optical lens assemblies to compensate for limitations in
`electronic circuitry responsible for sensing, generating, and outputting frames of images in a video
`stream. See id., 1:36-41. However, the employment of an optical lens assembly required these
`document cameras to have elaborate motorized housing for the lenses, which invariably resulted
`in heavy structural configurations requiring large bottom panels to serve as both a stabilizing plate
`and a housing for the electronics. See id., 1:45-50. Accordingly, these document cameras
`consumed significant desktop space and had less than desirable portability. See id., 1:51-53. Prior
`document scanning systems such as flatbed scanners were capable of capturing high resolution
`images, but were unable to capture real-time video of any objects in addition to having other
`drawbacks. See id., 1:56-2:10.
`The ’751 patent’s solution to the above problems is a document imaging system comprising
`a personal computer (PC) and a miniaturized, high-resolution digital image sensing unit. See id.,
`4:66 to 5:13. The miniaturized digital image sensing unit (DISU) captures and transmits a
`continuous high resolution video stream to the PC. See id., 5:5-6 and 6:11-16. The PC controls and
`implements the primary functions of the document imaging system in software. See id., 5:3-7. The
`PC displays the captured video frames at enlarged or reduced sizes at the user’s control through a
`pointer device or keyboard; for example, using the mouse wheel to enlarge or shrink image sizes.
`See id., 6:26-30. Since the captured video frames are of higher resolution than the PC monitor, the
`changes in image display sizes achieve the effect of zooming-in or zooming-out in real time,
`
`3
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`

`
`digitally in software. See id., 6;34-38. The innovation of the ‘751 patent, among others, was that
`Pathway innovated the ability of capturing and delivering the full range of the document camera’s
`resolution in real time—not just images at the resolution that a user’s computer could display—
`via USB to a user’s PC and allowing the user to manipulate; e.g., zoom in or out without changing
`resolution, the captured video via the PC.
`B.
`Claim Terms Requiring Construction
`In IPR proceedings, the Board gives claims their broadest reasonable interpretation
`consistent with the specification. In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1279 (Fed. Cir.
`2015), cert. granted, 84 U.S.L.W. 3218 (U.S. Jan. 15, 2016) (No. 15-446). In applying such a
`standard, it is important to recognize that the broadest reasonable construction of claim language
`is not one that permits any reading thereof. Instead, it is one that must be made “in light of the
`specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci.
`Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). There is a presumption that claim terms are given
`their ordinary and customary meaning, as would be understood by a person of ordinary skill in the
`art in the context of the specification. See In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed.
`Cir. 2007). An applicant may rebut that presumption by providing a definition of the term in the
`specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475,
`1480 (Fed. Cir. 1994). In the absence of such a definition, limitations are not to be read from the
`specification in the claims. In re Van Geuns, 944 F.2d 1181, 1184 (Fed. Cir. 1993).
`1.
`Level of Ordinary Skill in the Art
`Here, the claims should be construed from the perspective of a person having at least a
`bachelor of science degree in electrical engineering, mathematics, or physics with computer
`science coursework, or equivalent experience, and at least one year of direct technical experience
`in capturing real-time video with zooming capability via a portable document camera.
`As testified by Pathway’s CEO (and the first named inventor of the ‘751 patent) in
`deposition, it took Pathway enormous time, expense and effort to implement digital zoom in video
`in real time. Moreover, since its formation in 2009, Pathway has expended millions of dollars and
`tens of thousands of hours designing, researching, developing, engineering and manufacturing its
`document camera products and software, which Pathway continues to refine to this day. ITC
`Complaint, ¶12; Ex. 23 (Confidential Ji Shen Declaration filed under seal).
`
`4
`
`

`
`Mere education and general experience as Petitioner has specified, in a conclusory manner
`no less, is insufficient to assess the level of ordinary skill. See, e.g., Paper 4 (Corrected Petition)
`at 19, fn. 3 (“A PHOSITA at the time the invention of the ’751 patent would have a bachelor of
`science degree in electrical engineering, electrical and computer engineering, and/or imaging
`science, or equivalent combined with five years of related experience, or a graduate degree in such
`fields. Ex. 1003 at ¶27.”) (emphasis added). This proposed measure of skill in the art trivializes
`the difficulty in solving the problems presented by real-time video zooming. The Board has
`observed that “specifying the level of ordinary skill in terms of an academic degree in a field of
`study and the number of years of practical working experience is generally unhelpful, as a
`practical matter, because it does not convey whether one with ordinary skill in the art would
`have been aware of anything specific or particular.” Samsung Electronics Co. Ltd. v. Rembrandt
`Wireless Techs., LP, IPR2014-00518, Paper 47 at 17 (PTAB Sep. 17, 2015) (emphasis added).
`It is critical, if not required, that the level of ordinary skill in the art account for the type of
`problem faced by the inventor. See, e.g., Environmental Designs, Ltd v Union Oil Co., 713 F.2d
`693, 696-697 (Fed. Cir. 1983) (“types of problems encountered in the art” may be predominate in
`a particular case.”). Here, the invention of the ‘751 patent encountered the problem of capturing
`real-time, high-resolution zoomable video in portable document cameras without the use of an
`optical lens assembly. See, e.g., Ex. 1001, 3:18-24 (“In view of the aforementioned, a desire exists
`for a document imaging system that is cost efficient, highly compact or space efficient, highly
`portable, and virtually instantaneous in terms of time efficiency, while at the same time, also being
`capable of producing real-time high resolution zoomable video and being capable of capturing
`high resolution still images of documents with on click “scan” processing.”) (emphasis added);
`1:45 (“The necessary employment of an optical lens assembly makes it mandatory for these
`document cameras to often have elaborate motorized housing for the lenses, which results
`inevitably in relatively heavy structural configurations requiring considerably sized bottom panels
`serving as both a stabilizing plate and a housing for the electronics.”).
`2.
`Disputed Terms
`For the most part, and solely for the purposes of this proceeding, Pathway does not dispute
`using the plain and ordinary meaning of many claim terms nor using Qomo’s proposed broadest
`reasonable interpretation of certain terms. However, there are five (5) notable exceptions:
`
`5
`
`

`
`Qomo’s
`Clarification/Construction
`Clarification: “manipulate
`the series of frame images
`into a manipulated series of
`frame images, including
`zooming in or out without
`changing resolution of the
`series of frame images.”
`Clarification: capturing a
`video image comprising the
`series of frame images
`wherein each frame image
`is captured in one
`instantaneous snapshot (for
`example by using a non-
`linear CCD or CMOS
`sensors) without a
`mechanical raster line
`scanning process.
`A processor running
`software that manipulates
`images from a connected
`camera and communicates
`with the camera.
`a small camera
`
`Term
`“manipulate the
`series of frame
`images, including
`zooming in or out
`without changing
`resolution of the
`frame images”
`“capturing a video
`image comprising
`the series of frame
`images in one
`instantaneous
`snapshot of a
`subject’s entire
`surface area
`without line-by-
`line scanning”
`
`“software
`programming
`unit”
`
`“miniaturized
`digital image
`sensing unit …
`comprising optics
`having an infinite
`focal length”
`
`No construction provided
`
`“series of frame
`images” or “series
`of real-time
`images”
`
`Pathway’s Response
`improperly
`Needs no clarification. Qomo
`is
`importing limitations into the claims. See MPEP §
`2111.
`
`improperly
`is
`Needs no clarification. Qomo
`importing limitations into the claims. See MPEP §
`2111.
`
`Needs no construction. Use plain and ordinary
`meaning.
`
`Qomo is improperly importing limitations into the
`claims. See MPEP § 2111.
`As to “miniaturized digital image sensing unit,” use
`plain and ordinary meaning – needs no construction.
`Applicant did not acquiesce
`to an
`implicit
`construction by not addressing prior art during
`prosecution. Qomo
`is
`improperly
`importing
`limitations into the claims. See MPEP § 2111.
`
`As to “optics having an infinite focal length,” this
`limitation means “optics having a focal length
`ensuring objects appear focused even when located
`one meter or more away from the digital image
`sensing unit.” This is supported by and consistent
`with the specification, which states that “[t]he depth
`of field of the DISU lens however has a wide range
`of above 100 cm, ensuring objects appearing under
`the facing-down DISU appear focused and sharp
`even when the DISU is substantially far away.” Ex.
`1001, 5:45-48.
`“video images”
`
`“Displaying real-time video preview with
`zooming-in and zooming-out is achieved by the
`SPU 303’s instruction to the DISU 302 to capture
`and transmit a continuous stream of frames of
`images of a minimum of 2 mega-pixel resolution,
`
`6
`
`

`
`Term
`
`Qomo’s
`Clarification/Construction
`
`Pathway’s Response
`via a high speed data connection such as USB 2.0,
`which for example, has raw data speed of 480
`MB/s. Each 2 mega-pixel or above frame of image
`is captured in one instantaneous snapshot of the
`entire surface area, without the need of line by line
`scanning, and has a resolution of at least 6x the
`resolution of a VGA display often found in
`projectors.” Ex. 1001, 6:11-19.
`“After the system is booted, an output resolution of
`the sensor is selected at step 408. At steps 410 and
`412, the system acquires a video stream that
`contains a plurality of video frame images and
`opens a data output port.” Id., 6:62-65.
`
`
`Qomo is attempting to import limitations through its purported clarifications/constructions.
`“Infinite Focal Length”
`The language used in the ‘751 patent departs from the customary meaning of “infinite focal
`
`length.” The ‘751 patent is not describing a focal length equal to infinity, i.e., the point of focus of
`parallel rays through, say, a flat piece of glass. Rather, “infinite focal length” refers to the ability
`of a camera to capture, in focus, images of objects relatively far away from the camera. See Ex.
`1001, 5:45-48 (“The depth of field of the DISU lens however has a wide range of above 100 cm,
`ensuring objects appearing under the facing-down DISU appear focused and sharp even when the
`DISU is substantially far away.”) (emphasis added). For example, if the document camera of the
`present invention was placed on top of a table (with the DISU looking down from a height above),
`objects on the table would appear focused. However, if the document camera was moved to the
`edge of the table (but still on top of the table) and aimed at the floor, objects on the floor (about
`100 cm or more away) would also appear focused. In other words, the DISU lens has a relatively
`large focal range.
`
`“Series of Frame Images” or “Series of Real-time Images”
`Moreover, Qomo has not offered any construction whatever for the phrases “series of frame
`
`images” or “series of real-time images” as found in claim 1 or 12. Pathway’s purported
`construction of these phrases as “video images” is fully consistent with the specification and claims
`of the ‘751 patent. In the ‘751 patent, a “series” of “frame images” or “real-time images” refers to
`video images captured from the DISU. See, e.g., Ex. 1001, 6: 11-16 (“Displaying real-time video
`
`7
`
`

`
`preview with zooming-in and zooming-out is achieved by the SPU 303’s instruction to the DISU
`302 to capture and transmit a continuous stream of frames of images of a minimum of 2 mega-
`pixel resolution, via a high speed data connection such as USB 2.0, which for example, has raw
`data speed of 480 MB/s.”) (emphasis added); see also claim 8 (“capturing a video image
`comprising the series of frame images”). The ‘751 patent is implementing a live video feed, not
`the digital still camera as taught by Morichika.
`C.
`The Petition Fails to Establish That Dr. Saber is One of Ordinary Skill in the
`Art—Dr. Saber’s Declaration is Entitled to Zero Weight
`As noted above, the Board has found that mere education and general experience is
`insufficient in assessing the level of ordinary skill. Samsung Electronics Co. Ltd. v. Rembrandt
`Wireless Techs., LP, IPR2014-00518, Paper 47 at 17 (PTAB Sep. 17, 2015) (“specifying the level
`of ordinary skill in terms of an academic degree in a field of study and the number of years of
`practical working experience is generally unhelpful, as a practical matter, because it does not
`convey whether one with ordinary skill in th