Trials@uspto.gov
`571-272-7822
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`Paper 46
`Entered: January 17, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
` APPLE INC.,
`Petitioner
`
`v.
`
`QUALCOMM INC.,
`Patent Owner.
`____________
`
`IPR2018-01277
`Patent 8,497,928 B2
`____________
`
`
`
`
`Before DANIEL N. FISHMAN, MICHELLE N. WORMMEESTER,
`and AARON W. MOORE, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`JUDGMENT
`FINAL WRITTEN DECISION
`Determining All Challenged Claims Unpatentable
`Denying Patent Owner’s Motion to Amend
`35 U.S.C. § 318(a)
`
`

`

`Case IPR2018-01277
`Patent 8,497,928 B2
`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION...................................................................... 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Background ...................................................................... 1
`
`Related Matters ................................................................. 2
`
`The ’928 Patent................................................................. 2
`
`The Claimed Subject Matter ............................................... 5
`
`Evidence Relied Upon ....................................................... 6
`
`1.
`
`2.
`
`3.
`
`4.
`
`Hyodo .................................................................... 6
`
`Okawa .................................................................... 7
`
`Steinberg................................................................. 8
`
`Abe ........................................................................ 8
`
`F.
`
`Grounds of Unpatentability................................................. 8
`
`II. ANALYSIS............................................................................... 9
`
`A.
`
`B.
`
`Level of Ordinary Skill in the Art ........................................ 9
`
`Claim Construction ........................................................... 9
`
`1.
`
`“focal point” .......................................................... 11
`
`a.
`
`b.
`
`c.
`
`Patent Owner’s Position ................................. 11
`
`Petitioner’s Reply.......................................... 13
`
`Patent Owner’s Sur-Reply .............................. 13
`
`d. Our Analysis ................................................ 14
`
`2.
`
`“focusing the lens component . . . while
`the image is being displayed”................................... 25
`
`a.
`
`b.
`
`c.
`
`Patent Owner’s Position ................................. 25
`
`Petitioner’s Reply.......................................... 25
`
`Patent Owner’s Sur-Reply .............................. 26
`
`d. Our Analysis ................................................ 26
`
`C. Obviousness of Claims 7, 8, 10, 11, and 13 ......................... 28
`
`1.
`
`Claims 7 and 10 ..................................................... 28
`
`i
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`Case IPR2018-01277
`Patent 8,497,928 B2
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`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`f.
`
`[a] method for operating a mobile
`device, the method being performed by
`one or more processors .................................. 29
`
`displaying, on a touchscreen display, an
`image having a first focal point, the image
`being provided by a lens component ................ 29
`
`selecting a second focal point for the
`image in response to receiving a first type
`of user input on the touchscreen display,
`the second focal point corresponding to a
`location on the image displayed on the
`touchscreen display ....................................... 30
`
`focusing the lens component from the
`first focal point to the second focal point
`while the image is being displayed .................. 31
`
`selecting a flash level value representing
`a flash intensity for a flash component
`based on the second focal point ....................... 33
`
`capturing the image, based on the flash
`level value, in response to a second type
`of user input on the touchscreen display,
`the second type of user input being
`different than the first type of user input ........... 35
`
`2.
`
`3.
`
`4.
`
`Claims 8 and 11 ..................................................... 35
`
`Claim 13 ............................................................... 36
`
`Conclusion on the Obviousness of
`Claims 7, 8, 10, 11, and 13 ...................................... 37
`
`D. Motion to Amend ............................................................ 37
`
`1.
`
`Procedural Issues ................................................... 39
`
`a. New Matter: “automatically focusing
`the lens component . . . while the image
`is being displayed as a substantially
`real-time preview”......................................... 39
`
`b. New Matter: “centered at a set of
`coordinates of the first type of user input” ........ 41
`
`ii
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`Patent 8,497,928 B2
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`
`c. Responsiveness ............................................. 44
`
`2.
`
`Indefiniteness ........................................................ 45
`
`a.
`
`“Substantially Real-Time Preview
`of the View Through the Lens Component” ...... 45
`
`b.
`
`Image Cropping ............................................ 47
`
`3.
`
`Obviousness of the Substitute Claims ....................... 48
`
`a. Claims 17 and 19: “Substantially
`Real-Time Preview” ...................................... 49
`
`b. Claims 17 and 19: “Centered at a Set of
`Coordinates of The First User Input” ............... 51
`
`c. Claims 18 and 20: Image Cropping .................. 54
`
`4.
`
`Conclusion Regarding the Proposed
`Substitute Claims ................................................... 56
`
`E. Motion to Submit Supplemental Information ...................... 57
`
`III. CONCLUSION ....................................................................... 58
`
`IV. ORDER .................................................................................. 59
`
`
`
`
`iii
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`Case IPR2018-01277
`Patent 8,497,928 B2
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`
`A.
`
`Background
`
`I.
`
`INTRODUCTION
`
`Apple Inc. (“Petitioner”) filed a Petition for inter partes review of
`
`claims 7, 8, 10, 11, and 13 of U.S. Patent No. 8,497,928 (Ex. 1001, “the
`
`’928 patent”). Paper 2 (“Pet.”). Qualcomm Inc. (“Patent Owner”) filed a
`
`Preliminary Response. Paper 10 (“Prelim. Resp.”).
`
`
`
`On January 22, 2019, we instituted an inter partes review of claims 7,
`
`8, 10, 11, and 13. Paper 11 (“Inst. Dec.”), 22. Patent Owner then filed a
`
`Patent Owner Response (Paper 23, “PO Resp.”), Petitioner filed a Reply
`
`(Paper 31, “Pet. Reply”), and Patent Owner filed a Sur-Reply (Paper 33,
`
`“PO Sur-Reply”).
`
`Patent Owner has also filed a Contingent Motion to Amend (Paper 24,
`
`“Mot. to Amend”), Petitioner filed an Opposition (Paper 32, “Mot. to
`
`Amend Opp.”), Patent Owner filed a Reply (Paper 34, “Mot. to Amend
`
`Reply”), and Petitioner filed a Sur-Reply (Paper 38, “Mot. to Amend Sur-
`
`Reply”).
`
`An oral hearing was held on October 9, 2019, and a transcript of the
`
`hearing is included in the record. Paper 42 (“Tr.”).
`
`
`
`The Board has jurisdiction under 35 U.S.C. § 6. This Final Written
`
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`
`For the reasons that follow, we determine that Petitioner has shown by a
`
`preponderance of the evidence that claims 7, 8, 10, 11, and 13 of the
`
`’928 patent are unpatentable, and we deny Patent Owner’s Motion to
`
`Amend.
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`1
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`Case IPR2018-01277
`Patent 8,497,928 B2
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`B.
`
`Related Matters
`
`The ’928 patent was at issue in Qualcomm Incorporated v. Apple
`
`Incorporated, Civil Action No. 3:17-CV-02403 (S.D. Cal.). See Pet. 51.
`
`According to PACER, the litigation was terminated in April of 2019, when a
`
`joint motion to dismiss was granted.
`
`Petitioner concurrently filed another petition, IPR2018-01278, seeking
`
`inter partes review of the same challenged claims (i.e., claims 7, 8, 10, 11,
`
`and 13) of the ’928 patent based on prior art different than that presented in
`
`this Petition. See Pet. 5–6, 51. The final written decision in that case also
`
`issues today.
`
`C.
`
`The ’928 Patent
`
`The ’928 patent is “directed to techniques to automatically focus a
`
`digital camera.” Ex. 1001, code (57). According to the patent’s Background
`
`section, “[m]any digital cameras provide an autofocus feature,” which
`
`“allows a user of a digital camera to obtain the correct focus on a subject
`
`rather than requiring the operator to adjust focus manually.” Id. at 1:13–16.
`
`The patent explains that “[t]ypically a user may assist the camera by
`
`determining which area of the photograph to focus on by performing a
`
`button half press or other convoluted user interaction to achieve the desired
`
`focus” and that “[p]roviding a technique to allow users to more easily
`
`determine the area of the photograph they wish to focus on may be
`
`desirable.” Id. at 1:16–21.
`
`The Detailed Description explains that one embodiment may comprise
`
`“a digital camera having a lens component and lens position component,”
`
`where “[a] display may be coupled to the digital camera to reproduce an
`
`image with a first focal point.” Ex. 1001, 1:40–44. Such an embodiment
`
`2
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`“may also include a focal point selection module coupled to the display to
`
`select a second focal point for the image,” and “a focus control module
`
`coupled to the focal point selection module and the lens position component
`
`to provide focus control signals to the lens position component to focus the
`
`lens component on the second focal point. Id. at 1:45–51.
`
`Figure 2, reproduced below, illustrates the functional components of a
`
`system for carrying out the invention:
`
`Figure 2 “illustrates one embodiment of
`a first digital camera.” Ex. 1001, 1:29.
`
`
`
`The system shown above includes “focus management module 130,
`
`pointing component 214, display 114, digital camera 202 and bus 240.”
`
`Ex. 1001, 7:20–21. The focus management module 130 “may comprise or
`
`implement focal point selection module 232, focus control module 234 and
`
`white balance control module 236,” and the digital camera 202 “may
`
`comprise or implement controller 220, lens component 204, lens position
`
`3
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`component 206, microphone position component 208, directional
`
`microphone 210, memory 212, flash control module 216 and flash
`
`component 218.” Id. at 7:34–40. The display 114 “may comprise any
`
`suitable visual interface for displaying content to a user of digital camera
`
`system 200,” and “[i]n some embodiments, the touch-sensitive LCD may be
`
`used with a stylus or other pointing device.” Id. at 7:45–51.
`
`“In one embodiment, display 114 of digital camera system 200 may
`
`be coupled to digital camera 202 and may be arranged to capture and
`
`reproduce an image with a first focal point.” Id. at 8:64–67. “The image on
`
`display 114 may comprise a substantially real-time preview of the image to
`
`allow for framing and previewing before capturing a photograph.” Id. at
`
`9:1–4. The patent explains that “[i]n some embodiments, the focal point
`
`refers to the intended center of interest of a photograph and is typically the
`
`point where the image will be in the clearest focus.” Id. at 9:4–6.
`
`A “[f]ocal point selection module 232 may be coupled to the display
`
`114 and may allow for the selection of a second focal point for the image,”
`
`where “[t]he second focal point may be selected, for example, by an operator
`
`using the display 114 to indicate that a second focal point is desired.” Id. at
`
`9:7–11. The patent explains that “[i]n some embodiments . . . display 114
`
`may comprise a touchscreen display and may be configured to send
`
`coordinates for the second focal point to the focal point selection module
`
`232.” Id. at 9:11–14.
`
`A “[f]ocus control module 234 may be coupled to the focal point
`
`selection module 232 and the lens position component 206 to provide focus
`
`control signals to the lens position component 206 to focus the lens
`
`component 204 on the second focal point.” Id. at 9:22–26. “Lens position
`
`4
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`component 206 may use the control signals from focus control module 234
`
`to adjust the lens elements of lens component 204 to achieve the desired
`
`focus on the second focal point.” Id. at 9:31–34.
`
`The system may also include a “[f]lash component 218 and flash
`
`control module 216,” where “[t]he flash control module 216 may be
`
`configured to select a flash level value representing flash intensity for the
`
`flash component 218 based on the second focal point.” Id. at 10:16–21.
`
`D.
`
`The Claimed Subject Matter
`
`Of the challenged claims, claims 7 and 10 are independent. Claim 7 is
`
`directed to a method for operating a mobile device, and claim 10 is directed
`
`to computer readable media with instructions to perform a method
`
`comprising the steps recited in claim 7. Claim 7, reproduced below, is thus
`
`illustrative of the subject matter of the challenged independent claims:
`
`7. A method for operating a mobile device, the method being
`performed by one or more processors and comprising:
`
`displaying, on a touchscreen display, an image having a first
`focal point, the image being provided by a lens component;
`
`selecting a second focal point for the image in response to
`receiving a first type of user input on the touchscreen
`display, the second focal point corresponding to a location
`on the image displayed on the touchscreen display;
`
`focusing the lens component from the first focal point to the
`second focal point while the image is being displayed;
`selecting a flash level value representing a flash intensity for
`a flash component based on the second focal point; and
`
`capturing the image, based on the flash level value, in response
`to a second type of user input on the touchscreen display, the
`second type of user input being different than the first type
`of user input.
`
`Ex. 1001, 14:50–67.
`
`5
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`Case IPR2018-01277
`Patent 8,497,928 B2
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`Dependent claims 8 and 11 add to claims 7 and 10 that “focusing the
`
`lens component on the second focal point includes generating a set of
`
`coordinates for the second focal point.” Dependent claim 13 recites that the
`
`method of claim 10 further comprises “modifying a white balance setting
`
`value for the image based on the second focal point.”
`
`E.
`
`Evidence Relied Upon
`
`Petitioner relies on the following references:
`
`
`
`Reference
`
`Hyodo
`
`Okawa
`
`US Patent No. 6,919,927 B1
`
`US App. Pub. 2006/0055814 A1
`
`Steinberg
`
`US Patent No. 6,151,073
`
`Abe
`
`US Patent No. 7,852,381 B2
`
`Exhibit
`
`1005
`
`1006
`
`1007
`
`1009
`
`Petitioner also relies on a Declaration of Phillip D. Wright, filed as
`
`Exhibit 1003 (“Wright Decl.”). Patent Owner relies on a Declaration of
`
`Dr. Daniel Aliaga, filed as Exhibit 2001 (“Aliaga Decl.”).
`
`1.
`
`Hyodo
`
`Hyodo is directed to a camera that is “capable of being operated by
`
`touching a screen of [the] image display.” Ex. 1005, 1:60–65. Hyodo’s
`
`camera is depicted in Figures 1 and 2, which are reproduced below.
`
`6
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`Patent 8,497,928 B2
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`
`
`
`
`
`Figures 1 (left) and 2 (right) are front
`and rear views of Hyodo’s camera.
`
`The digital camera 1 includes, among other components, an imaging
`
`part 2, a flash 6, a liquid crystal display (LCD) 10, and a light-permeable
`
`touch panel 12 arranged over LCD 10. See Ex. 1005, 3:10–41. “When the
`
`user touches the touch panel 12 on the LCD 10, the position of the touched
`
`portion on the touch panel 12 is determined, and one of predetermined focal
`
`areas, to which the touched portion belongs, is designated. Then, a focus
`
`evaluation value is calculated from the image signal of the designated focal
`
`area in order to control the focus system of the taking lens 40 based on the
`
`focus evaluation value.” Id. 5:26–33.
`
`2.
`
`Okawa
`
`Okawa concerns a technique “[t]o inform the users of the time
`
`necessary for focus to be achieved by changing the focal mark shown on the
`
`display monitor, second by second, corresponding to the elapsed time from
`
`the start of the auto focus operation until focus is achieved.” Ex. 1006, code
`
`(57). For example, in the embodiment shown in Figures 5A–F, a rectangle
`
`7
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`Case IPR2018-01277
`Patent 8,497,928 B2
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`is progressively reduced in size during auto-focus until changing to a cross
`
`when the focusing is completed. See id. ¶ 32.
`
`3.
`
`Steinberg
`
`Steinberg is directed to an “intelligent camera flash system for a
`
`digital camera.” Ex. 1007, code (57). “[A] processor samples the image
`
`intensity data, weighing the center image area more heavily, and creates a
`
`histogram plot of quantity of pixels v.s. intensity, and separates the plot into
`
`a bar graph from which a determination of exposure is obtained.” Id. at 3:2–
`
`6. The histogram is “used to calculate a multiplicative scaling factor used to
`
`multiply the first flash energy as an estimate of a final flash energy for
`
`correct exposure.” Id. at 3:6–8.
`
`4.
`
`Abe
`
`Abe concerns a digital camera that includes “an image signal
`
`processor that carries out a white balance process on image signals generated
`
`by an imaging device.” Ex. 1009, 1:8-10. The camera includes a “white
`
`balance processing block” that performs a white balance process based on,
`
`among other factors, the distance between the device and the object focal
`
`point. See id. at 1:38-47.
`
`F. Grounds of Unpatentability
`
`This trial was instituted on the following grounds:
`
`References
`
`Basis
`
`Claim(s)
`
`Hyodo, Okawa, and Steinberg
`
`§ 103
`
`7, 8, 10, 11
`
`Hyodo, Okawa, Steinberg, and Abe
`
`§ 103
`
`13
`
`8
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`Case IPR2018-01277
`Patent 8,497,928 B2
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`
`II. ANALYSIS
`
`We discuss below the level of skill in the art, claim construction, the
`
`patentability of the present claims, the motion to amend, and Petitioner’s
`
`motion to submit supplemental information.
`
`A.
`
`Level of Ordinary Skill in the Art
`
`Petitioner asserts that “a POSITA would have had a Master of Science
`
`Degree in an academic area emphasizing electrical engineering, computer
`
`engineering, optics design or an equivalent field (or a similar technical
`
`Master’s Degree, or higher degree)” or “a Bachelor’s Degree (or higher
`
`degree) in an academic area emphasizing one or more of these technical
`
`disciplines and three or more years of corresponding industry work
`
`experience.” Pet. 8 (citing Ex. 1003 ¶¶ 25–26). Petitioner further asserts
`
`that “[s]uch an individual would also have education or industry experience
`
`in the area of user-interface design” and “[a]dditional education or industry
`
`experience may compensate for a deficit in one of the other aspects.” Id.
`
`Patent Owner does not offer a different formulation, and states that
`
`“[e]ven under Petitioner’s definition, Petitioner has failed to show that the
`
`Challenged Claims are invalid.” PO Resp. 15.
`
`Because Patent Owner does not dispute Petitioner’s characterization
`
`of the level of skill in the art, and because we find it consistent with the
`
`disclosures of the patent and the cited prior art, we adopt it for purposes of
`
`this analysis.
`
`B.
`
`Claim Construction
`
`In inter partes reviews filed before November 13, 2018, claims of an
`
`unexpired patent are interpreted according to their broadest reasonable
`
`9
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`Patent 8,497,928 B2
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`construction in light of the specification of the patent in which they appear.
`
`37 C.F.R. § 42.100(b) (2017); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
`
`2131, 2142–46 (2016); 83 Fed. Reg. 51,340. Under that standard, claim
`
`terms are generally given their ordinary and customary meaning, as would
`
`have been understood by one of ordinary skill in the art in the context of the
`
`entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`
`(Fed. Cir. 2007). There are, however, two exceptions to that rule: “1) when
`
`a patentee sets out a definition and acts as his own lexicographer,” and “2)
`
`when the patentee disavows the full scope of a claim term either in the
`
`specification or during prosecution.” Thorner v. Sony Comp. Entm’t Am.
`
`LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).
`
`
`
`For an inventor to have acted as his or her own lexicographer, a
`
`definition must be set forth in the specification with reasonable clarity,
`
`deliberateness, and precision. Renishaw PLC v. Marposs Societa’ per
`
`Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998). It is improper to add into a
`
`claim an extraneous limitation, i.e., one that is added wholly apart from any
`
`need for the addition. See, e.g., Hoganas AB v. Dresser Indus., Inc., 9 F.3d
`
`948, 950 (Fed. Cir. 1993); E.I. du Pont de Nemours & Co. v. Phillips
`
`Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988).
`
`The Petition asserted that “all terms should be given their plain
`
`meaning as understood by a person of ordinary skill in the art at the time of
`
`the alleged invention (‘POSITA’) in view of the ’928 Patent’s specification.”
`
`Pet. 8. In the Preliminary Response, Patent Owner “interpret[ed] the claims
`
`. . . in accordance with their plain and ordinary meaning under the required
`
`broadest reasonable interpretation standard.” Prelim. Resp. 13. We
`
`accordingly did not formally construe any terms in the Institution Decision.
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`10
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`See Inst. Dec. 7. We did, however, address Patent Owner’s argument that
`
`the plain and ordinary meaning of “focal point” refers to “the intended
`
`center of interest of a photograph,” finding it “based on a claim construction
`
`Patent Owner [did] not adequately support” and that was unclear in any
`
`event. See Inst. Dec. 17–18.
`
`In its full response, Patent Owner formally seeks construction of
`
`“focal point” and also seeks construction of the phrase “focusing the lens
`
`component . . . while the image is being displayed.” We address these in
`
`turn.
`
`1.
`
`“focal point”
`
`a.
`
`Patent Owner’s Position
`
`Patent Owner argues that “focal point” should be construed to mean
`
`an “intended center of interest in a photograph.” PO Resp. 18.1
`
`According to Patent Owner, the specification “explains that a focal
`
`point ‘refers to the intended center of interest of a photograph and is
`
`typically the point where the image will be in the clearest focus’” and “in the
`
`file history, the Applicant noted this explicit description of focal point in the
`
`specification and limited the meaning of ‘focal point’ in order to overcome
`
`the prior art reference Boies.” PO Resp. at 17.
`
`Patent Owner additionally describes the patent’s “use case of selecting
`
`a friend as a center of interest in an image and setting the focal point to the
`
`
`1 The Patent Owner Response also asserted that “focal point should be
`construed to mean an intended center of interest of a photograph that is not a
`predetermined area, as disclosed in Hyodo,” but Patent Owner has since
`clarified that the shorter formulation is its proposed construction. See PO
`Resp. 22; PO Sur-Reply 8.
`
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`Patent 8,497,928 B2
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`intended selection,” where “the user need only tap the portion of the
`
`touchscreen display of the mobile electronic device to set the focal point on
`
`a different, desired location.” PO Resp. at 18 (quoting Ex. 1001, 12:35–38).
`
`Patent Owner further asserts that “[t]he user intent that is required in
`
`the meaning of focal point is further bolstered by the Examiner’s treatment
`
`of Hyodo in the prosecution history.” PO Resp. 19. This is because,
`
`according to Patent Owner, “the Examiner allege[d] that Hyodo discloses
`
`‘focus[ing] the lens component on the second focal point while maintaining
`
`the image directly’ by citing to Hyodo’s description of predetermined focal
`
`areas,” and the applicant argued that Hyodo did “not disclose the aspect of
`
`the claim in which the one or more focus control signals ‘cause the lens
`
`position component to focus the lens component from the first focal point to
`
`the second focal point.’” PO Resp. 19–20.
`
`Patent Owner also points to the Reasons for Allowance, in which the
`
`Examiner states that “[t]he prior art of record alone or in combination does
`
`not disclose: A method for operating a mobile device, the method being
`
`performed by one or more processor and comprising: Focusing the lens
`
`component from the first focal point to the second focal point while the
`
`image is being displayed . . . .” PO Resp. 20 (citing Ex. 1002, 21).
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`Patent Owner concludes that “[b]ecause the Applicant distinguished
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`the claims from Hyodo’s disclosure of a predetermined focal area in order to
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`gain allowance for the ’928 Patent, the Applicant clearly disavowed
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`predetermined focal areas from the meaning of focal point, or an intended
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`center of interest of a photograph.” Id. at 20.
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`Patent Owner also argues that Petitioner’s expert, Dr. Wright,
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`“admitted that intended center of interest refers to the intent of the user.” PO
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`Resp. 21 (citing Ex. 2003 (Wright Tr.), 103:7–14).
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`b.
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`Petitioner’s Reply
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`Petitioner disputes Patent Owner’s reliance on the patent’s
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`explanation that “[i]n some embodiments, the focal point refers to the
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`intended center of interest of a photograph and is typically the point where
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`the image will be in the clearest focus.” Ex. 1001, 9:4–6. Specifically,
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`Petitioner argues that Patent Owner (1) “ignores the opening prepositional
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`phrase ‘[i]n some embodiments’” (Pet. Reply 2); (2) “errs by converting the
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`recitation of ‘refers to the intended center of interest’ into ‘is an intended
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`center of interest’” (id. at 4); and (3) “summarily discards . . . ‘typically the
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`point where the image will be in clearest focus’” (id. at 5).
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`Petitioner further argues that Patent Owner mischaracterizes the
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`prosecution history concerning Hyodo and Boies and that Petitioner has not,
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`in any event, shown the required “clear and unmistakable” disavowal. See
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`Pet. Reply 5–9.
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`Petitioner adds that “if a construction is required, a more general
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`interpretation is necessary to fully comport with the ’928 Patent’s
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`specification” and offers, as its alternative, that “a ‘focal point’ is simply ‘a
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`portion of the image that relates to the process of focusing.’” Pet. Reply 11.
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`c.
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`Patent Owner’s Sur-Reply
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`Patent Owner responds by (1) reiterating that its “construction of
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`‘focal point’ is consistent with both the clear statements in the file history
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`and the embodiments disclosed in the specification” (PO Sur-Reply 2, see id.
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`5–8), (2) reiterating that Dr. Wright “admitted that the intended center of
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`interest refers to the intent of the user” (id. at 3), (3) arguing that it is
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`appropriate to change “refers to” to “is” because “the Federal Circuit has
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`found that the specification language ‘refers to’ is definitional” (id. at 4); and
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`(4) arguing that “typically the point where the image will be in clearest
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`focus” need not be accounted for in the construction because “[t]here is no
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`language in the file history that requires this second half of the specification
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`to be included in the explicit construction” (id. at 4–5).
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`Patent Owner further argues that Petitioner “ignores that it relied on
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`the same part of the file history regarding the Boies reference in the co-
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`pending district court case” and that “Petitioner cannot credibly advocate for
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`a position in the district court, alleging the file history limits the ‘focal point’
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`claim term, and then vehemently argue against that same position here.” PO
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`Sur-Reply 9.
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`Finally, Patent Owner asserts that Petitioner provides “no
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`explanation” for the language of its alternative construction and “points to
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`no support in the specification or the file history.” PO Sur-Reply 9.
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`d.
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`Our Analysis
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`As explained above, the ’928 patent describes a system in which a
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`user can touch an image displayed on a screen to refocus the image. The
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`user has in mind a particular subject or area that should be in focus, and
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`expresses that intent with the touch. The camera senses the touch and
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`refocuses the lens component to that point, but, importantly, the camera only
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`“knows” where the user touched the screen, not what the user subjectively
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`intended. For example, if the user intended to focus on the face of their dog
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`in the image, but inadvertently touched the face of their cat, the camera
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`would focus on the cat. This suggests that the user’s subjective intent is not
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`necessarily carried through to the “second focal point” of the claims, which
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`is selected, by the processor, only “in response to receiving a first type of
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`user input on the touchscreen display” as recited in claim 7.
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`With that as background, we consider construction of “focal point” in
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`light of the claims (using representative claim 7), the specification, and the
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`prosecution history.
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`The claims themselves are, of course, our starting point. See, e.g.,
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`Allergan Sales, LLC v. Sandoz, Inc., 935 F.3d 1370, 1373 (Fed. Cir. 2019)
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`(“[C]laim construction must begin with the words of the claims
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`themselves.”) (quoting Amgen Inc. v. Hoechst Marion Roussel, Inc., 457
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`F.3d 1293, 1301 (Fed. Cir. 2006)).
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`Claim 7 recites a method “performed by one or more processors” in
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`which the first step is “displaying . . . an image having a first focal point,”
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`the second step is “selecting a second focal point for the image in response
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`to receiving a first type of user input,” and the third step is “focusing the lens
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`component from the first focal point to the second focal point.” The term at
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`issue, “focal point,” appears in both the first and third steps, and the first
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`step, displaying an image with a first focal point, may occur prior to any user
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`involvement. See Ex. 1001, 12:25–34 (“The intended focal point of the
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`image is the face of the friend. However, the digital camera may originally
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`set the default focal point as the waterfall, for example.”). It thus seems
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`unlikely that “focal point” in the first step must be a user’s “intended center
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`of interest”; instead, that first focal point may simply be the portion of the
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`image on which the camera happens to focus first, such as the center of the
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`image. At the hearing, Patent Owner argued “the default focal point still
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`meets our claim construction because the user points the camera.” Tr. 42:4–
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`5. This presumes, however, that the user is pointing that camera such that
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`the “default focal point” is on the user’s desired subject, which does not
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`seem necessarily to be the case. In fact, it is not the case in the “waterfall”
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`example, because that user wanted the picture to be focused on the friend,
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`not the waterfall. The fact that Patent Owner’s construction of “focal point”
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`does not appear to be applicable to all uses of that term in the claim2 weighs
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`against the construction.
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`Claim 7 also states that the processor “select[s] a second focal point
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`for the image in response to receiving a first type of user input on the
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`touchscreen display, the second focal point corresponding to a location on
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`the image displayed on the touchscreen display.” The focal point thus is
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`selected by the processor, not the user, and the processor selects the focal
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`point based on the touch, which may or may not correspond to the user’s
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`subjective intent. Moreover, the focal point selected by the processor need
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`only correspond to, not necessarily match, the location of the touch, so even
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`if the user did touch their intended subject the claim allows for the camera to
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`select a focal point that is different than the touch point. These aspects of
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`the claim also weigh against Patent Owner’s construction requiring that the
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`focal point exactly match the user’s intent.
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`Having concluded that the other language of the claims does not favor
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`Patent Owner’s construction, we turn to the specification. Patent Owner
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`argues “[t]he ’928 Patent specification explains that a focal point ‘refers to
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`2 See Tr. 41:24–42:1 (“[Q:] So what does ‘focal point’ mean in the first
`limitation of the body of the claim where you’re displaying an image having
`a focal point? [PO Counsel]: Our contention is it means the same thing.”).
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`the intended center of interest of a photograph and is typically the point
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`where the