Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 11
`Filed: January 9, 2017
`
`
`
`
`
`
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GLOBAL TEL*LINK CORPORATION,
`Petitioner,
`
`v.
`
`SECURUS TECHNOLOGIES, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-01362
`Patent 9,083,850 B1
`_______________
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`571.272.7822
`
`
`Paper No. 11
`Filed: January 9, 2017
`
`
`
`
`
`
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GLOBAL TEL*LINK CORPORATION,
`Petitioner,
`
`v.
`
`SECURUS TECHNOLOGIES, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-01362
`Patent 9,083,850 B1
`_______________
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`IPR2016-01362
`Patent 9,083,850 B1
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`
`I.
`
`INTRODUCTION
`
`A. Background
`Global Tel*Link Corporation (“Petitioner”) filed a Petition (Paper 1,
`“Pet.”) to institute an inter partes review of claims 1–21 of U.S. Patent No.
`9,083,850 B1 (Ex. 1001, “the ’850 Patent”). Securus Technologies, Inc.
`(“Patent Owner”) filed a Preliminary Response (Paper 9, “Prelim. Resp.”)
`thereto. We have jurisdiction under 35 U.S.C. § 314, which provides that 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.” See also 37 C.F.R § 42.4(a) (delegating
`authority to the Board).
`Upon consideration of the Petition, the Preliminary Response and both
`parties’ evidence, we conclude Petitioner has established a reasonable
`likelihood it would prevail with respect to at least one of the challenged
`claims. Accordingly, for the reasons that follow, we institute an inter partes
`review.
`B. Related Proceedings
`Petitioner informs us that it is not aware of any related matters that
`would affect or be affected by this proceeding. Pet. 2.
`C. The ’850 Patent
`The ’850 Patent is directed to an apparatus and methods for
`manipulating video received from a video visitation device in a secure
`environment that vary a depth of field parameter of the video. Ex. 1001,
`Abstract, 1:52–60. The ’850 Patent seeks to safe guard the privacy and
`promote the safe use of video services provided within inmate housing areas
`by preventing viewers of the video services from plainly seeing unintended
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`people and/or details such as showers, bathrooms, interiors of cells, or just
`other inmates. Id. at 1:6–25. The ’850 patent details that the prior art
`solutions had significant problems, in that placing video terminals outside of
`the general inmate population raised “security and administrative issues
`associated with moving inmates from housing locations to visitation
`locations,” and re-designing housing units was “impractical since most
`correctional institutions were constructed decades before and reconstruction
`would be too costly,” and the “nooks” designed for video services were
`difficult to monitor. Id. at 1: 26–42. With respect to facial recognition
`technology, the ’850 patent indicates that such technology “suffers as the
`inmate moves around and has the disadvantage of blurring much of the face
`and or torso of the inmate thus leading to an unsatisfactory visitation
`experience.” Id. at 1:43–48.
`The ’850 Patent seeks to ameliorate such problems by “adjusting a
`depth of field parameter for the video, such that an image of a first object at
`a first distance from the video visitation device is in focus and an image of a
`second object at a second distance from the video visitation device is
`blurred,” as recited in independent claims 1, 8, and 14. The ’850 Patent
`alleges that by adjusting the depth of field of the camera, the video keeps in
`focus all objects at a specified distance from the camera, thereby eliminating
`the problems with prior art recognition technology, which targets a particular
`object (such as the face) or area in the frame and requires adjustment
`whenever that object moves in the scene. See, e.g., id. at 1:26–48, 12:1–6.
`
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`D. Illustrative Claim
`As noted above, Petitioner challenges claims 1–21, with claims 1, 8,
`and 14 being independent claims. Claims 1 is illustrative of the challenged
`claims and is reproduced below:
`
`1. A method, comprising:
`receiving video at a video visitation device in a secure
`environment;
`adjusting a depth of field parameter for the video, such that an
`image of a first object at a first distance from the video visitation
`device is in focus and an image of a second object at a second
`distance from the video visitation device is blurred; and
`providing the video to a viewing device located outside of the
`secure environment.
`Ex. 1001, 12:42–51.
`
`E. The Asserted Grounds of Unpatentability
`
`Petitioner challenges the patentability of claims of the ’850 Patent
`based on the following grounds under 35 U.S.C. § 103 (Pet. 4–5):
`References
`Basis
`Claims Challenged
`Shipman1 and Garrison2
`§ 103
`1, 5, 8, 9, and 14
`Shipman, Garrison, and Mayhew3
`§ 103
`2–4 and 15–18
`
`
`1 U.S. Patent No. 9,106,789 B1 (filed Jan. 20, 2012) (issued Aug. 11, 2015)
`(Ex. 1004, “Shipman”).
`2 U.S. Patent No. 7,911,513 B2 (filed Apr. 20, 2007) (issued Mar. 22, 2011)
`(Ex. 1005, “Garrison”).
`3 U.S. Patent No. 9,106,789 B1 (filed Nov. 12, 1998) (issued May 11, 2004)
`(Ex. 1006, “Mayhew”).
`
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`References
`Shipman, Garrison, and Gotsopoulos4
`Shipman, Garrison, Gotsopoulos, and
`Johnson5
`Shipman, Garrison, and Johnson
`
`Basis
`§ 103
`§ 103
`
`Claims Challenged
`6, 7, 10, 11, and 19
`12 and 20
`
`§ 103
`
`13 and 21
`
`II. DISCUSSION
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (“We
`conclude that the regulation represents a reasonable exercise of the
`rulemaking authority that Congress delegated to the Patent Office.”). Under
`that standard, and absent any special definitions, we give claim terms their
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art at the time of the invention. In re Translogic Tech., Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007). An inventor, however, may provide a
`meaning for a term that is different from its ordinary meaning by defining
`the term in the specification with “reasonable clarity, deliberateness, and
`precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Limitations, however, are not to be read from the specification into the
`
`4 M. Gotsopoulos et al., Remote Controlled DSP Based Image Capturing
`and Processing System Featuring Two-Axis Motion, Proceedings of the 4th
`European DSP in Education and Research Conference, 32–36 (2010)
`(Ex. 1008, “Gotsopoulos”).
`5 U.S. Patent Publication No. 2008/0201158 A1 (filed Jun. 29, 2007)
`(published Aug. 21, 2008) (Ex. 1007, “Johnson”).
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`claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). In addition,
`the Board may not “construe claims during [an inter partes review] so
`broadly that its constructions are unreasonable under general claim
`construction principles.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d
`1292, 1298 (Fed. Cir. 2015). We construe the challenged claims according
`to these principles.
`Petitioner proposes no explicit constructions for the claim terms,
`arguing that all claim terms should be given their broadest reasonable
`interpretation as understood by a person of ordinary skill in the art. Pet. 8.
`Patent Owner generally agrees, but points out that Petitioner concedes that
`the Specification of the ’850 Patent provides a particular definition of “depth
`of field.” Prelim. Resp. 5–6 (citing Pet. 31–32, Ex. 1001, 7:41–43). We
`generally agree with both parties.
`For purposes of this Decision and based on the record before us, we
`determine that express constructions for the claim terms are not necessary at
`this stage of the proceeding. We note, however, that the independent claims
`1, 8, and 14 all recite “a depth of field parameter for the video,” which we
`determine to be distinct from a mere recitation of “a depth of field,” as
`discussed in more depth below.
`
`B. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103 if “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
`
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`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) objective evidence of nonobviousness,
`i.e., secondary considerations. See Graham v. John Deere Co. of Kansas
`City, 383 U.S. 1, 17–18 (1966).
`“A determination of whether a patent claim is invalid as obvious
`under § 103 requires consideration of all four Graham factors, and it is error
`to reach a conclusion of obviousness until all those factors are considered.”
`Apple v. Samsung Elecs. Co., Ltd., 839 F.3d 1034, 1048 (Fed. Cir. 2016) (en
`banc) (citations omitted). “This requirement is in recognition of the fact that
`each of the Graham factors helps inform the ultimate obviousness
`determination.” Id.
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)). This burden never shifts to
`Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800
`F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek,
`Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of
`proof in inter partes review). Furthermore, Petitioner cannot satisfy its
`burden of proving obviousness by employing “mere conclusory statements.”
`In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
`
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`Thus, to prevail in an inter partes review, Petitioner must explain how
`the proposed combinations of prior art would have rendered the challenged
`claims unpatentable. At this preliminary stage, we determine whether the
`information presented in the Petition shows there is a reasonable likelihood
`that Petitioner would prevail in establishing that one of the challenged
`claims would have been obvious over the proposed combinations of prior
`art.
`
`We analyze the challenges presented in the Petition in accordance
`with the above-stated principles.
`
`C. Level of Ordinary Skill in the Art
`In determining whether an invention would have been obvious at the
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham, 383 U.S. at 17. “The importance of
`resolving the level of ordinary skill in the art lies in the necessity of
`maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v.
`Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991).
`Petitioner’s Declarant, Dr. Iain Richardson, opines that a person of
`ordinary skill in the art relevant to the ’850 Patent would have had “a
`Bachelor’s (B.S.) degree in Computer Science, Electronic Engineering or an
`equivalent field, together with at least two years of academic or industry
`experience in a relevant field, or a Master’s (M.S.) degree in Computer
`Science, Electronic Engineering or an equivalent field, together with at least
`one year of academic or industry experience in a relevant field.” Ex. 1002
`¶ 24. He also testifies that “[a] relevant field could include data
`communications, image or video processing or communications,
`
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`surveillance system design or similar.” Id. Patent Owner does not appear to
`take a position on what the level of ordinary skill in the pertinent art at the
`time of the invention. See Prelim. Resp.
`Based on our review of the ’850 Patent, the types of problems and
`solutions described in the ’850 Patent and cited prior art, and the testimony
`of Dr. Richardson, we adopt and apply Dr. Richardson’s definition of a
`person of ordinary skill in the art at the time of the claimed invention for
`purposes of this Decision. We also note that the applied prior art reflects the
`appropriate level of skill at the time of the claimed invention. See Okajima
`v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`
`D.
`
`Alleged Obviousness over Shipman and Garrison
`Claims 1, 5, 8, 9, and 14
`Petitioner contends claims 1, 5, 8, 9, and 14 of the ’850 Patent are
`unpatentable under 35 U.S.C. § 103 in view of Shipman and Garrison.
`Pet. 9–38. For reasons that follow, we determine Petitioner has
`demonstrated a reasonable likelihood of prevailing as to the challenged
`claims.
`1. Overview of Shipman
`Shipman is directed to “providing video visitation security to a
`controlled-environment facility.” Ex. 1004, Abstract. Shipman discloses
`techniques for detecting an image of a face in a video transmitted between
`an inmate in a secure environment and a non-resident of the secure
`environment, whereby other areas of the video outside of the detected face
`may then be obscured using techniques such as blurring, clouding,
`darkening, distorting, masking, or shading. Id. at 1:43–57.
`
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`Petitioner provides an annotated version of Figure 1 of Shipman, via
`Dr. Richardson’s declaration, which is reproduced below:
`
`
`Ex. 1002, ¶ 35 (citing Ex. 1004, Fig. 1). Shipman details that an inmate may
`use a video visitation station to communicate with non-residents operating a
`device having video capabilities, such as communication devices 135A–N,
`the session occurring via communication system 110 over packet-switched
`network 140. Ex. 1004, 5:32–40, 63–67; Ex. 1002 ¶ 35.
`
`The visitation area 130 is disclosed to provide one or more video
`visitation stations, with each station including a display, a camera and/or
`microphone, and an audio output. Ex. 1004, 5:32–40, Fig. 2, elements
`200A–N, 210, 215, 220. Non-secure “inmate video” is processed by a
`security engine to detect facial features and blur areas of the video feed
`outside of the detected face, to create “secure video” that is transmitted to a
`family client. Id. at 6:48–50, 8:35–40, 11:9–20, Fig. 3. Shipman provides
`such video because it was recognized that inappropriate activities or private
`areas may be captured during a video session. Id. at 11:18–20.
`
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`Examples of such secure video are illustrated in Figures 5A and 6A of
`Shipman, which are reproduced below:
`
`
`The Figures above illustrate facial detection, with the detected faces
`505A, 605A having areas 515A, 610A around those faces, with other areas
`520A, 620A being blurred. Id. at 11:1–16, 54–62. Recognizing that
`individuals may try to convey information via hand signals or the
`introduction of objects, Shipman also discloses the ability to block other
`selection regions 615A in the video. Id. at 11:62–67.
`2. Overview of Garrison
`Garrison provides an arrangement for simulating a short depth of field
`in a captured video phone image in which the background portion of the
`image is digitally segregated and blurred to render it indistinct. Ex. 1005,
`Abstract. The videophone of Garrison includes a camera 514 having a lens
`oriented towards the videophone user, where the camera first captures a
`video image “having a long or substantially infinite depth of field,” and the
`captured video image is then “spatially segregated into a target portion for
`which focus is maintained and a remaining portion for which blurring is
`applied” using image processing techniques. Id. at 4:26–28, 5:34–48,
`
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`10:23–30, Fig. 5. The blurred remaining portion is combined with the
`unblurred target portion to produce a composite image in which only the
`target portion of the image appears in focus. Id. at 10:34–41. The effect is
`illustrated in Figures 6 and 7, reproduced below:
`
`
`3. Analysis of Cited Art as Applied to Independent Claims 1, 8, and 14
`Petitioner contends independent claims 1, 8, and 14 of the ’850 Patent
`are unpatentable under 35 U.S.C. § 103 in view of Shipman and Garrison.
`Pet. 20–36. We address those independent claims below.
`
`a. The preambles of claims 1, 8, and 14
`
`Claims 1 and 14 recite a method and a system, respectively.
`Petitioner contends that both Shipman and Garrison disclose systems and
`methods for providing video visitation with the enhancements to the security
`and privacy of the video. Pet. 20–21 (citing Ex. 1004, 4:14–16, 13:66–
`14:40; Ex. 1005 4:7–11, 10:20–23). Claim 8 is directed to a “tangible
`computer readable medium comprising computer executable code that, when
`executed by a processing device, causes the processing device to perform
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`operations” recited in that claim. Petitioner contends that Shipman details
`that the video visitation security system “may be implemented or executed
`on one or more computer systems,” and “a tangible computer-readable
`storage medium may have program instructions stored thereon that, upon
`execution by one or more computer systems, cause the one or more
`computer systems to execute one or more operations disclosed.” Pet. 21
`(citing Ex. 1004, 9:2–15, 3:27–31).
`At this stage of the proceeding, we are persuaded by Petitioner’s
`contentions, as supported by Dr. Richardson’s testimony, that Shipman and
`Garrison disclose the preambles of the independent claims.
`
`b. “receiving video at a video visitation device in a secure
`environment,” and “providing the video to a viewing device
`located outside of the secure environment”
`Claim 1 recites the steps of “receiving video at a video visitation
`device in a secure environment” and “providing the video to a viewing
`device located outside of the secure environment.” Claim 8 provides similar
`recitations, with steps of “receiving video from a video visitation device in a
`secure environment” and “providing the adjusted video to a viewing device
`located outside of the secure environment.” Claim 14 provides that a data
`communication device is configured “to receive video from a video
`visitation device in a secure environment” and “to provide the video to a
`viewing device located outside of the secure environment.”
`Petitioner contends these limitations are taught by Shipman and
`Garrison. Pet. 23–27, 35–36. According to Petitioner, Shipman describes
`that its video visitation stations 200A–N are located and used within secure
`environment. Id. at 23 (citing Ex. 1004, 5:58–67). Petitioner also contends
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`that a video visitation station in Shipman includes a camera coupled to or
`integrated with the video visitation station, and records resident audio and
`video, which is subsequently provided to a media server. Id. at 24–26
`(citing Ex. 1004, 6:4–8, 7:64–66, 8:27–29). Petitioner also contends that
`Shipman describes that “resident client 325 may provide non-secure ‘inmate
`video’ to media server 315 which in turn forwards that feed to the security
`engine 320,” and after processing, the security engine returns a processed
`secure video to media server 315 which then “transmits the secure video as
`‘secure inmate video’ to non-resident client 330.” Id. at 26 (citing Ex. 1004,
`8:27–34).
`As well, Petitioner contends that in Shipman, an inmate at a
`controlled-environment facility may communicate with “a remotely located
`non-resident via a video visitation station,” such that the “non-resident may
`use computer or communication devices 135A–N to communicate or
`otherwise interact with a resident operating one of stations 200A–N over
`network 140.” Id. at 35 (citing Ex. 1004, 5:32–38).
`At this stage of the proceeding, we are persuaded by Petitioner’s
`contentions, as supported by Dr. Richardson’s testimony, that Shipman and
`Garrison teach the receipt of video by and from a video visitation device, as
`well as the provision of video to a viewing device located outside of the
`secure environment, as required by the independent claims.
`
`c. “storing the video received from a video visitation device in a
`storage device”
`Independent claim 8 recites the step of “storing the video received
`from a video visitation device in a storage device.” Independent claim 14
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`recites “data storage device” coupled to the data communication device and
`configured to “store the video received from a video visitation device.”
`Petitioner contends these limitations are taught or suggested by
`Shipman and Garrison. Pet. 27–28. Petitioner contends that Shipman
`discloses that “the video stream may be a live, a prerecorded, or a delayed
`transmission video message,” and that “the video visitation may be recorded
`and/or monitored by prison staff.” Id. at 27 (Ex. 1004, 1:57–59, 13:53–54).
`Petitioner acknowledges that Shipman does not explicitly disclose where
`security engine 320 stores the video streams, but that one of ordinary skill in
`the art would have recognized that to process, manipulate or provide delayed
`transmission of the video stream, a data storage device such as a buffer
`memory would need to be utilized. Id. (citing Ex. 1002 ¶ 108). Petitioner
`also points to Shipman’s data storage 435 and Garrison’s frame buffer 1504
`as potentially providing for such temporary storage of video images. Id.
`(citing Ex. 1004, 9:56–60; Ex. 1005, 10:13–15).
`At this stage of the proceeding, we are persuaded by Petitioner’s
`contentions, as supported by Dr. Richardson’s testimony, that Shipman and
`Garrison teach or suggest the storage of video in a storage device, as
`required by the independent claims 8 and 14.
`
`d. “adjusting a depth of field parameter for the video, such that an
`image of a first object at a first distance from the video visitation
`device is in focus and an image of a second object at a second
`distance from the video visitation device is blurred”
`Independent claims 1 and 8 each recite “adjusting a depth of field
`parameter for the video, such that an image of a first object at a first distance
`from the video visitation device is in focus and an image of a second object
`
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`at a second distance from the video visitation device is blurred.”
`Independent claim 14 provides a similar recitation, reciting “a data processor
`configured to adjust a depth of field parameter,” with the remainder of the
`limitation being the same.
`Petitioner contends these limitations are taught by Shipman and
`Garrison. Pet. 28–35. Petitioner contends that Shipman receives the
`incoming video stream from the video visitation station, may execute user
`authentication, facial detection, object detection, etc., and can blank out non-
`facial areas in the full image. Id. at 29–30 (citing Ex. 1004, 1:52–57, 7:29–
`32, 7:51–61, 11:8–12). Petitioner argues that the facial portion in Shipman
`represents the claimed “first object at a first distance from video visitation
`device,” and the non-facial areas represent the claimed “second object at a
`second distance from the video visitation device.” Id. Petitioner
`acknowledges that although Shipman discloses blurring portions of a video
`feed, Shipman does not disclose how the blurring is achieved. Pet. 16, 30.
`Petitioner contends that Garrison makes clear how the blurring in
`Shipman may be achieved, where Garrison describes an arrangement for
`simulating a short depth of field in a captured videophone, so that the
`background portion of the image is blurred to render it indistinct, and the
`foreground is kept in focus. Id. at 30–31 (citing Ex. 1005, 1:56–61; Ex.
`1002 ¶ 87).
`Patent Owner disputes Petitioner’s contentions, arguing that Shipman
`and Garrison “are no different than the prior art that the Patent Owner
`specifically distinguished in the specification and during prosecution with
`respect to these limitations.” Prelim. Resp. 7. Patent Owner continues that
`it distinguished in the Specification of the ’850 Patent previous technology
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`that used facial recognition to lock in on facial features of the inmate and
`blur everything else, pointing out the deficiencies of such prior art processes.
`Id. at 7–9. We do not agree.
`In determining obviousness, neither the particular motivation to make
`the claimed invention nor the problem the inventor is solving controls. The
`proper analysis is whether the claimed invention would have been obvious to
`one of ordinary skill in the art after consideration of all the facts. See KSR,
`550 U.S. at 421–422. In the instant case, we look to the claims of the
`present invention, and determine if the proffered art would have taught or
`suggested those claims, and not to whether the instant art is similar to art
`previously considered. The fact that the proffered art utilizes facial
`recognition is not dispositive because the instant claims do not preclude the
`use of facial recognition. In other words, a prior art reference might perform
`facial recognition and adjust the depth of field parameter to reach the subject
`matter of the claims.
`In addition, Patent Owner argues that although Garrison mentions the
`“depth of field,” Garrison does not teach adjusting the depth of field because
`Garrison is directed to simulating a short depth of field. Prelim. Resp. 11.
`Patent Owner continues that “simulating a short depth of field is, by
`definition, not the same as ‘adjusting’ the depth of field.” Id. Patent Owner
`also argues that Garrison’s simulation technique is not the same as adjusting
`the depth of field because it does not depend on the distance of objects from
`the camera, as recited in the instant claims. Id. at 11–12. We do not agree.
`The Specification of the ’850 Patent makes clear that the
`contemplated change in the depth of field can occur in different ways: “[t]he
`depth of field may be manipulated by adjustment of the f-stop of the camera
`17
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`system 205 or through digital processing techniques.” Ex. 1001, 7:44–46
`(emphasis added). As such, Patent Owner’s distinction between simulating
`adjustment and actual adjustment of a depth of field appears to be
`inapposite. As well, the independent claims do not merely recite “adjusting
`a depth of field,” or equivalent, but rather recite “adjusting a depth of field
`parameter.” The parameter can be adjusted through a camera control 505, at
`the time the video is captured, or may be adjusted by camera controller 404
`after the video is stored. See id. at 11:37–63. Additionally, the processes
`illustrated in Garrison do provide blurring for objects at different distances
`from the camera, although the distance need not be the controlling
`parameter. As illustrated above in Section II.D.2, Figures 6 and 7 of
`Garrison show objects further away being blurred by that system, although
`objects equidistant as the unblurred target portion from the camera may also
`be blurred. As such, we determine that this meets the claim language,
`requiring an image of a first object at a first distance from the video
`visitation device to be in focus and an image of a second object at a second
`distance from the video visitation device to be blurred.
`Patent Owner also argues that Garrison “teaches away from actually
`adjusting the ‘depth of field’ because ‘most videophones targeted at the
`consumer market use a very small digital image sensor along with an optics
`package that includes a fixed focal length and shutter speed.’” Prelim. Resp.
`15 (citing Ex. 1005, 3:22–30). Because of this, Patent Owner argues that
`Garrison discloses an alternative method for simulating a short depth of
`field, and not adjusting the depth of field, as recited in the claims. Id. We
`do not agree. As discussed above, the instant invention also envisions the
`
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`use of “an alternative method” for simulating a depth of field, such we are
`not persuaded that Garrison teaches away.
`At this stage of the proceeding, we are persuaded by Petitioner’s
`contentions, as supported by Dr. Richardson’s testimony, that Shipman and
`Garrison teach or suggest the adjustment of a depth of field parameter for the
`video, as required by the independent claims 1, 8, and 14.
`e. Rationale to Combine Shipman and Garrison
`Petitioner contends a person of ordinary skill in the art would have
`had reasons to combine the teachings of Shipman and Garrison. Pet. 17–18.
`Petitioner specifically contends that a person of ordinary skill in the art
`would have been motivated to look to Garrison’s blurring technique that
`simulates short depth of field for the blurring function of Shipman. Id. at 17
`(citing Ex. 1002 ¶ 75). Petitioner also alleges that Garrison would have
`improved the facial recognition processes of Shipman, allowing for any
`object in an image to be the target portion, i.e., not just faces, as another
`rationale to combine. Id. Petitioner also argues that both Shipman and
`Garrison are in the same field, namely video processing to enhance security
`and privacy. Petitioner also relies on the testimony of Dr. Richardson,
`explaining that a core benefit of using Garrison’s technique is that the
`component architecture described in Shipman need not be modified to
`incorporate the image processing techniques of Garrison. Id. at 18 (citing
`Ex. 1002 ¶ 77). Lastly, Petitioner contends that the combination of Shipman
`and Garrison would have been nothing more than the combination of prior
`art methods according to known methods to yield a predictable and desirable
`result. Id.
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`Patent Owner argues that Petitioner has failed to demonstrate a proper
`motivation to combine Shipman and Garrison. Prelim. Resp. 16–20. Patent
`Owner argues that the combination of Shipman and Garrison would not
`solve the problems stated in the ’850 Patent (id. at 17), but, as discussed
`above, the combination need not solve all of the problems elucidated in a
`specification if the references can be combined and meet the limitations of
`the claims. Patent Owner also argues that the combination of Shipman and
`Garrison “would likely cause more problems than the combination would
`solve,” which Petitioner has not addressed. Id. We do not agree.
`Patent Owner argues that Garrison’s system would not limit focus of
`the inmate to the depth of field as claimed, but allow the inmate to be
`located anywhere within the depth of field of its camera, thus defeating the
`purpose of preventing certain objects to be visible to the observer. Id. at 17–
`18. We do not agree, however, as the independent claims do not require the
`inmate to be focused at a particular depth of field, but rather recite the
`adjustment of a depth of field parameter, with objects being in focus or
`blurred. We do not agree that the processes in Garrison would defeat the
`purpose of obscuring certain objects.
`Patent Owner also argues that Petitioner’s suggestion that Garrison’s
`object detection techniques would improve Shipman’s facial recognition
`techniques runs counter to the solution provided by the ’850 Patent that
`would eliminate the need for detection of a target portion, and which were
`specifically distinguished during prosecution. Id. at 18. As discussed above,
`we do not agree because the combination need not solve all of the problems
`identified by the inventor if the combination meets the claims.
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`Patent Owner also argues Petitioner’s arguments about Shipman and
`Garrison being in the same field ignores t
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