Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 11
`Entered: February 2, 2023
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MOTOROLA MOBILITY LLC,
`Petitioner,
`v.
`MAXELL, LTD.,
`Patent Owner.
`
`IPR2022-01287
`Patent 8,059,177 B2
`
`
`
`
`
`
`
`
`
`
`
`Before LYNNE E. PETTIGREW, KEVIN C. TROCK, and
`KARA L. SZPONDOWSKI, Administrative Patent Judges.
`
`TROCK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 11
`Entered: February 2, 2023
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MOTOROLA MOBILITY LLC,
`Petitioner,
`v.
`MAXELL, LTD.,
`Patent Owner.
`
`IPR2022-01287
`Patent 8,059,177 B2
`
`
`
`
`
`
`
`
`
`
`
`Before LYNNE E. PETTIGREW, KEVIN C. TROCK, and
`KARA L. SZPONDOWSKI, Administrative Patent Judges.
`
`TROCK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`IPR2022-001287
`Patent 8,059,177 B2
`
`
`I. INTRODUCTION
`Motorola Mobility LLC (“Petitioner”) filed a Petition (Paper 1,
`“Pet.”) requesting inter partes review of claims 1–6 (the “challenged
`claims”) of U.S. Patent No. 8,059,177 B2 (Ex. 1001, “the ’177 patent”).
`Maxell, Ltd. (“Patent Owner”) filed a Preliminary Response (Paper 6,
`“Prelim. Resp.”). Petitioner requested and, with our authorization, filed a
`Preliminary Reply (Paper 9, “Pet. Prelim. Reply”), and Patent Owner filed a
`Preliminary Sur-reply (Paper 10, “PO Prelim. Sur-reply”). See Ex. 3001.
`The Board has authority to determine whether to institute an inter
`partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C.
`§ 314(a), we may not authorize an inter partes review unless the information
`in the petition and the preliminary response “shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.”
`The Petition challenges claims 1–6 as unpatentable under 35 U.S.C.
`§ 103. Generally, Patent Owner contends that the Petition should be denied
`as to all challenged claims (see Prelim. Resp.). We do not, however, reach
`whether the Petition has shown a reasonable likelihood of prevailing on at
`least one claim. For the reasons discussed below, we exercise our discretion
`to deny the Petition under 35 U.S.C. § 325(d).
`
`II. BACKGROUND
`
`A. Related Matters
`The parties identify the following district court proceeding involving
`the ’177 patent: Maxell, Ltd. v. Lenovo Group Ltd., No. 6:21-cv-01169
`(W.D. Tex.). Pet. vii; Paper 4, 1.
`
`2
`
`
`
`IPR2022-001287
`Patent 8,059,177 B2
`
`
`Petitioner identifies the following district court proceeding that “may
`affect, or be affected by, decisions in this proceeding”: Motorola Mobility
`LLC v. Maxell, Ltd., No. 1-22-cv-00256 (N.D. Ill.). Pet. vii.
`Patent Owner identifies the following Board and district court
`proceedings that have involved the ’177 patent: IPR2018-00910; Maxell,
`Ltd. v. Olympus Corp., No. 1:18-cv-00216 (D. Del.); and Maxell, Ltd. v.
`BLU Products, Inc., 1:18-cv-21231 (S.D. Fla.). Paper 4, 1.
`B. Real Parties-in-Interest
`Petitioner identifies itself as the real party-in-interest, but also
`indicates that it is “a direct, wholly-owned subsidiary of Motorola Mobility
`Holdings LLC, which is an indirect wholly-owned subsidiary of Lenovo
`Group Ltd.” Pet. vii. Petitioner “names Lenovo (United States) Inc. and
`Lenovo Group Ltd. as potential RPIs because they are named defendants in
`the co-pending litigation.” Id. (footnote omitted).
`Patent Owner identifies itself as the real party-in-interest. Paper 4, 1.
`C. The ’177 Patent
`The ’177 patent is titled “Electric Camera” and issued on November
`15, 2011 from an application filed on September 12, 2003. Ex. 1001,
`codes (22), (45), (54). The patent includes a Notice indicating the term of
`the patent is extended or adjusted and the patent is subject to a terminal
`disclaimer. Id. at code (*). The application for the ’177 patent is a
`divisional of an application filed on March 8, 2000, and also claims priority
`to a foreign application filed on January 11, 2000. Id. at codes (30), (62).
`The ’177 patent observes that “[t]aking both moving and static images
`of satisfactory quality with a single camera is difficult to achieve.” Id.
`at 2:62–64. In particular, “to photograph moving images, it is generally
`
`3
`
`
`
`IPR2022-001287
`Patent 8,059,177 B2
`
`assumed that the video is viewed on a display such as [a] television monitor
`and thus the camera is designed to produce output signals conforming to a
`television system such as NTSC [National Television Standards Committee]
`and PAL [Phase Alternate Line].” Id. at 1:24–28. Accordingly, “the
`effective number of vertically arranged pixels or picture elements on the
`image sensing device” must enable the generation of television signals for
`such systems. Id. at 1:28–21.
`The ’177 patent explains that the NTSC system
`performs interlaced scanning on two fields, each of which has an
`effective scanning line number of about 240 lines (the number of
`scanning lines actually displayed on the monitor which is equal
`to the number of scanning lines in the vertical blanking period
`subtracted from the total number of scanning lines in each field).
`To realize this, the image sensing device has about 480 pixel
`rows as the standard effective number of vertically arranged
`pixels. That is, the signals of two vertically adjoining pixels in
`each field are mixed together inside or outside the image sensing
`device
`to generate about 240 scanning
`lines, and
`the
`combinations of pixels to be cyclically mixed together are
`changed from one field to another to achieve the interlaced
`scanning.
`Id. at 1:31–44.
`The limited standard effective number of vertically arranged pixels for
`generating television signals, however, “mak[es] it impossible to produce
`more detailed static image signals.” Id. at 1:60–61. The ’177 patent
`addresses this problem by describing an electric camera that “enables taking
`of highly detailed still images and a satisfactory moving video taking by
`using an image sensing device with a large enough pixel number even for
`still images.” Id. at 3:30–33.
`
`4
`
`
`
`IPR2022-001287
`Patent 8,059,177 B2
`
`
`Figure 1, reproduced below, is a block diagram showing an
`embodiment of an electric camera. Id. at 3:38–39.
`
`
`
`In Figure 1, above, depicting an embodiment of an electric camera,
`“light coming from the lens 1 through the aperture 2 is focused on a light
`receiving surface of the image sensing device 3 where it is converted into an
`electric signal.” Id. at 4:31–34. Image sensing device 3 is of a CCD
`[charge-coupled device] type, with pixels formed from photodiodes and
`arranged in a grid pattern. Id. at 4:34–38, Fig. 2.
`The electric camera in Figure 1 includes mode selector switch 14 “to
`change over the operation mode between the moving video taking and the
`still image taking.” Id. at 4:24–26. In this embodiment, the number of
`vertically arranged pixels on image sensing device 3 is 1200. Id. at 4:63–65.
`So, in a moving video mode, “if the number of effective scanning lines in
`the field of the NTSC system is assumed to be 240 lines, then vertically
`mixing five pixels (=1200 pixel rows/240 scanning lines) can match the
`
`5
`
`
`
`IPR2022-001287
`Patent 8,059,177 B2
`
`number of lines of output signals from the image sensing device to the
`number of effective scanning lines.” Id. at 4:65–5:3. In the static image
`mode, “all of the effective pixels on the image sensing device are used . . . to
`produce signals with as high a resolution as possible.” Id. at 7:31–34.
`D. Illustrative Claim
`The ’177 patent has six claims. Claim 1, the only independent claim
`in the ’177 patent, is illustrative of the claimed subject matter and is
`reproduced below.1
`1. [1pre] An electric camera comprising:
`[1a] an image sensing device with a light receiving surface
`having N vertically arranged pixels and an arbitrary number of
`pixels arranged horizontally, N being equal to or more than
`three times the number of effective scanning lines M of a
`display screen of a television system;
`[1b] a driver including a first driver mode to drive the image
`sensing device to vertically mix or cull signal charges
`accumulated in individual pixels of every K pixels to produce a
`number of lines of output signals which corresponds to the
`number of effective scanning lines M, K being at least one of
`integers equal to or less than an integral part of a quotient of N
`divided by M;
`[1c] said driver also including a second driver mode to drive the
`image sensing device to vertically mix or cull signal charges
`accumulated in individual pixels of every K pixels to produce,
`during a vertical effective scanning period of the television
`system, a number of lines of output signals which corresponds
`to 1/K the number of vertically arranged pixels N of the image
`sensing device, K being an integer equal to or less than an
`integral part of a quotient of N divided by M; and
`
`
`1 Bracketed designations correspond to those used by Petitioner. See Pet.
`viii–ix.
`
`6
`
`
`
`IPR2022-001287
`Patent 8,059,177 B2
`
`
`[1d] a signal processing unit to generate image signals by using
`the output signals of the image sensing device;
`[1e] wherein the driving by the first driver mode and the driving
`by the second driver mode are selectively switched according to
`input information from a switch provided inside or outside the
`electric camera.
`Ex. 1001, 16:2–29.
`E. Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims of the ’177 patent on
`the following grounds:
`Claims Challenged
`1–4, 6
`
`35 U.S.C. §2
`103(a)
`
`5
`
`Pet. 1.
`
`103(a)
`
`Reference(s)
`Watanabe3, Sawanobori4,
`Silver5
`Watanabe, Sawanobori, Silver,
`Teranishi6
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, effective March 16,
`2013. Because the application that issued as the ’177 patent was filed before
`this date, the pre-AIA version of § 103 applies. See Ex. 1001, code (22);
`Pet. 17.
`3 Petitioner relies, collectively as “Watanabe,” upon U.S. Patent No.
`6,529,236 B1, issued March 4, 2003 (Ex. 1004, “Watanabe-1”) and a
`certified translation of Japanese Unexamined Patent Application Publication
`No. H10-98642, published April 14, 1998 (Ex. 1005, “Watanabe-2”). See
`Pet. 17.
`4 U.S. Patent No. 5,793,923, issued August 11, 1998 (Ex. 1006,
`“Sawanobori”).
`5 U.S. Patent No. 4,691,252, issued September 1, 1987 (Ex. 1007, “Silver”).
`6 U.S. Patent No.4,939,573, issued July 3, 1990 (Ex. 1008, “Teranishi”).
`
`7
`
`
`
`IPR2022-001287
`Patent 8,059,177 B2
`
`F. Prior Art References
`1. Watanabe (Exs. 1004, 1005)
`As noted above, Petitioner collectively refers to Exhibit 1004
`(“Watanabe-1”) and Exhibit 1005 (“Watanabe-2”) as “Watanabe,” and relies
`upon them as prior art references. Watanabe-1 is a patent titled “Digital
`Camera for Outputting Digital Image Signals and Image Reproducing
`Device Connectable Thereof.” Ex. 1004, code (54). Watanabe-1 claims
`priority to Japanese Patent Application H8-250187. Id. at code (30).
`Watanabe-2 is a certified translation of Japanese Unexamined Patent
`Application Publication No. H10-98642, which is the publication of
`Japanese Patent Application H8-250187. Ex. 1005, code (21). Petitioner
`generally cites to both Watanabe-1 and Watanabe-2 when discussing
`Watanabe. See Pet. 17–21 (citing Exs. 1004, 1005). For convenience, we
`cite to Watanabe-1 (Ex. 1004).
`Watanabe describes “an imaging device implemented as a CCD image
`sensor 22” that “receives a drive signal from a CCD drive control 24.”
`Ex. 1004, 4:4–14. The image sensor “transfers charges generated by a
`plurality of photodiodes or similar photoelectric transducers (PD) in
`accordance with the quantity of exposure to a vertical transfer path (VCCD)
`and a horizontal transfer path (HCCD).” Id. at 4:16–20. Further, the image
`sensor may be operated in a full pixel read mode or a partial pixel read mode
`for reducing the pixels by one-half or one-fourth. Id. at 4:25–31.
`Watanabe’s Figures 4 and 5, reproduced below, demonstrate partial pixel
`read modes. Id. at 3:8–10.
`
`8
`
`
`
`IPR2022-001287
`Patent 8,059,177 B2
`
`
`
`
`Watanabe’s Figure 4, above left, and Figure 5, above right, illustrate
`
`the ½ partial pixel read mode, and ¼ partial pixel read mode, available with
`an image sensor, respectively. Ex. 1004, 3:8–10. As shown in Figure 4,
`Watanabe’s image sensor responds to a drive signal by adding “each two
`nearby pixels in the vertical direction V on the path VCCD so as to form a
`single pixel.” Id. at 4:47–50. This results in halving the number of pixels in
`the vertical direction, and the image sensor “transfers the charges of the
`resulting composite pixels from the path VCCD to the path HCCD.” Id. at
`4:50–53. As shown in Figure 5, the image sensor responds to a different
`
`9
`
`
`
`IPR2022-001287
`Patent 8,059,177 B2
`
`drive signal by adding “two of each four pixels continuous in the vertical
`direction V on the path VCCD so as to constitute a single pixel.” Id. at
`4:57–60. This reduces the number of pixels by one-fourth in the vertical
`direction, and “[t]he resulting composite pixels are transferred from the path
`VCCD to the path HCCD.” Id. at 4:60–63.
`Sawanobori (Ex. 1006)
`2.
`Sawanobori is a patent titled “Device for Controlling Number of
`Pixels.” Ex. 1006, code (54). Sawanobori describes an electronic still
`camera in which an imaging device “outputs real-time pixel signals” and a
`control circuit controls the “number of pixels in one frame of each of the still
`image and the moving image” so that “the number of pixels of one frame of
`the moving image is less than that of the still image.” Id. at 1:38–48.
`More specifically, Sawanobori’s electronic still camera may be
`operated in either a monitor-through mode, in which “a moving image
`obtained through an imaging device or CCD (charge coupled device) 12 is
`indicated on an LCD (liquid crystal display) 36 in real-time,” or a record
`mode, in which “a still image included in the moving image is recorded in a
`recording medium.” Id. at 2:45–52. In record mode, “[a]ll of the pixel
`signals generated in the CCD 12 are read out therefrom,” while in monitor-
`through mode, “in which the LCD 36 is used as a viewfinder,”
`“approximately one half of the pixel signals outputted form the CCD 12 are
`subsampled.” Id. at 4:31–41.
`Silver (Ex. 1007)
`3.
`Silver is a patent titled “Electronic Imaging Camera for Recording
`Either Moving or Still Images.” Ex. 1007, code (54). Silver describes an
`electronic imaging camera “for recording either continuous moving video
`
`10
`
`
`
`IPR2022-001287
`Patent 8,059,177 B2
`
`images in analog format or high resolution still images in digital format.”
`Id. at code (57).
`In particular, Silver’s camera includes a CCD with “a plurality of
`image sensing elements or pixels arranged in a two-dimensional area array,”
`and the output from the CCD is transferred to a signal processing circuit
`where it is amplified and filtered before being directed to two-position mode
`select switch 22. Id. at 3:20–33. During a continuous video mode of
`operation, switch 22 directs the output of the signal processing circuit to
`video processing circuit 24. Id. at 5:51–59. The processed signal may be
`directed to a CRT viewfinder display, which “provides the user with a
`continuous electronic image of the scene being recorded.” Id. at 5:67–6:7.
`“In the event that the camera operator frames and composes a moving
`scene he would like to make a still image thereof, he may manually activate
`the camera . . . to change to its still recording mode of operation,” in which
`case switch 22 directs the output of the signal processing circuit to an
`analog-to-digital converter. Id. at 6:15–19, 6:36–41. A converted digital
`signal may then be recorded on a magnetic storage medium. Id. at 6:41–50.
`Teranishi (Ex. 1008)
`4.
`Teranishi is a patent titled “Color Filter Arrangement Comprising
`
`Transparent or White Filters for Solid State Color Imaging Apparatus.”
`Ex. 1008, code (54). Teranishi describes that “[w]hite, yellow, and cyan
`color filters are superimposed in rows and columns on picture elements of a
`solid-state color imaging apparatus.” Id. at code (57).
`
`II. ANALYSIS
`Patent Owner contends that “the Board should exercise its discretion
`pursuant to 35 U.S.C. § 314(a) or 35 U.S.C. §325(d) and deny this petition.”
`
`11
`
`
`
`IPR2022-001287
`Patent 8,059,177 B2
`
`Prelim. Resp. 1. For the reasons discussed below, we exercise our discretion
`to deny the Petition under § 325(d). We need not address Patent Owner’s
`arguments regarding § 314(a).
`A. 35 U.S.C. § 325(d)
`Patent Owner contends that “the Petition should be denied pursuant to
`35 U.S.C. § 325(d) because the petition argues the ‘same or substantially the
`same art previously [] presented to the Office’ and fails to demonstrate ‘that
`the Office erred in a manner material to the patentability of the challenged
`claims.’” Prelim. Resp. 3 (citing Advanced Bionics, LLC v. MED-EL
`Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB
`Feb. 3, 2020) (precedential) (“Advanced Bionics”); Becton, Dickinson & Co.
`v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec.
`15, 2017) (precedential as to § III.C.5, first paragraph) (“Becton,
`Dickinson”)).
`Petitioner requested authorization, which we granted, to file a
`preliminary reply in order to address “Patent Owner’s argument for
`discretionary denial based on the individual references being considered
`during prosecution of related patents that Petitioner contends was not
`foreseeable,” among other issues. See Ex. 3001.
`Pursuant to 35 U.S.C. § 325(d), in determining whether to institute an
`inter partes review, “the Director may take into account whether, and reject
`the petition or request because, the same or substantially the same prior art,
`or arguments previously were presented to the Office.” The Board evaluates
`two issues in addressing 35 U.S.C. § 325(d):
`(1) whether the same or substantially the same art previously was
`presented to the Office or whether the same or substantially the
`same arguments previously were presented to the Office; and
`
`12
`
`
`
`IPR2022-001287
`Patent 8,059,177 B2
`
`
`(2) if either condition of [the] first part of the framework is
`satisfied, whether the petitioner has demonstrated that the Office
`erred in a manner material to the patentability of challenged
`claims.
`
`
`Advanced Bionics, Paper 6 at 8. Within this two-part framework, the Board
`considers several nonexclusive actors as set forth in Becton, Dickinson,
`which “provide useful insight into how to apply the framework” under
`§ 325(d). Advanced Bionics, Paper 6 at 9. These non-exclusive factors
`include:
`
`
`(a) the similarities and material differences between the asserted
`art and the prior art involved during examination;
`
`(b) the cumulative nature of the asserted art and the prior art
`evaluated during examination;
`
`(c) the extent to which the asserted art was evaluated during
`examination, including whether the prior art was the basis for
`rejection; and
`
`(d) the extent of the overlap between the arguments made during
`examination and the manner in which Petitioner relies on the
`prior art or Patent Owner distinguishes the prior art;
`(e) whether Petitioner has pointed out sufficiently how the
`Examiner erred in its evaluation of the asserted prior art; and
`(f) the extent to which additional evidence and facts
`presented in the Petition warrant reconsideration of the prior art
`or arguments.
`Becton, Dickinson, Paper 8 at 17–18 (formatting added).
`Becton, Dickinson factors (a), (b), and (d) relate to whether the art or
`arguments presented in the Petition are the same or substantially the same as
`those previously presented to the Office. Advanced Bionics, Paper 6 at 10.
`
`13
`
`
`
`IPR2022-001287
`Patent 8,059,177 B2
`
`Factors (c), (e), and (f) “relate to whether the petitioner has demonstrated a
`material error by the Office” in its prior consideration of that art or
`arguments. Advanced Bionics, Paper 6 at 10.
`Only if the same or substantially the same art or arguments were
`previously presented to the Office do we then consider whether petitioner
`has demonstrated a material error by the Office. Id. “At bottom, this
`framework reflects a commitment to defer to previous Office evaluations of
`the evidence of record unless material error is shown.” Id. at 9.
`1. Whether the Same or Substantially the Same Prior Art
`Previously Was Presented to the Office
`Under the first part of the framework, we consider (i) the similarities
`and material differences between the asserted art and the prior art involved
`during examination; (ii) the cumulative nature of the asserted art and the
`prior art evaluated during examination; and (iii) the extent of the overlap
`between the arguments made during examination and the manner in which
`petitioner relies on the prior art or patent owner distinguishes the prior art.
`See Advanced Bionics, Paper 6 at 9 n.10, 10–11 (citing factors (a), (b), and
`(d) of Becton, Dickinson).
`Patent Owner argues that Watanabe was considered by the Examiner
`during prosecution of U.S. Patent No. 6,765,616 (“the ’616 patent”), which
`is the parent of the ’177 patent and has similar claim language. See Prelim.
`Resp. 10–13 (providing chart comparing claim 1 language). Patent Owner
`points out that “the Examiner did note that Watanabe is considered pertinent
`to the disclosure” in the parent application but did not form a ground of
`rejection based on Watanabe. Id. at 13; see also Ex. 2005, 143. Patent
`Owner asserts that “[g]iven the Office’s statement regarding the pertinence
`of Watanabe, and the similarity of claim elements between the ’616 and
`
`14
`
`
`
`IPR2022-001287
`Patent 8,059,177 B2
`
`’177 Patents, Petitioner’s grounds (all anchored by Watanabe) are
`duplicative of the art and arguments applied during the ’616 Patent’s
`prosecution.” Prelim. Resp. 13.
`Petitioner asserts that “[i]t is undisputed that the Office did not
`consider the exact combination [of prior art] proposed in the Petition. Pet.
`Prelim. Reply 1. Petitioner argues that although “Watanabe was considered
`during prosecution of the parent to the ’177 Patent . . . Sawanobori and
`Silver were brought to the Examiner’s attention and considered during the
`prosecution of children applications to the ’177 Patent.” Id. “Accordingly,”
`Petitioner argues, “the Examiner was not aware of either Sawanobori or
`Silver when allowing the ’177 Patent claims.” Id.
`Here, Patent Owner contends that Watanabe is the main reference for
`both grounds of the Petition. Prelim. Resp. 13. We agree. The Petition
`does not assert a challenge to any claim of the ’177 patent that does not rely
`on Watanabe. For Ground 1, the Petition asserts that Watanabe, by itself,
`teaches every limitation of independent claim 1, the only independent claim
`of the ’177 patent. See Pet. 36–57.7 The Petition also asserts that Watanabe,
`in combination with Sawanobori, teaches dependent claims 2–4, and 6. See
`id. at 57–66. For Ground 2, the Petition asserts that Watanabe, in
`combination with Sawanobori, Silver, and Teranishi, teaches dependent
`claim 5. See id. at 66–67.
`The parties do not dispute that Watanabe was considered during
`prosecution of the ’616 patent, which is the parent of the ’177 patent at issue
`
`
`7 The Petition also asserts that Watanabe, in combination with Sawanobori
`and Silver, teaches limitations [1a] –[1c], and [1e] of independent claim 1.
`See Pet. 37–57.
`
`15
`
`
`
`IPR2022-001287
`Patent 8,059,177 B2
`
`here.8 Prelim. Resp. 13; Pet. Prelim. Reply 1. Patent Owner points out that
`during prosecution of the ’616 patent, the Examiner noted that Watanabe
`was pertinent to the disclosure. Prelim. Resp. 13 (citing Ex. 2005, 143).
`There, the Examiner noted that Watanabe, among other references, “shows
`an imaging apparatus having CCD image sensor and selectively reading out
`the specific amount of pixel from the plurality of pixels from the CCD
`sensor.” Ex. 2005, 143. Petitioner concedes that “Watanabe was considered
`during prosecution of the parent to the ’177 Patent.” Pet. Prelim. Reply 1.
`Petitioner does not dispute Patent Owner’s assertion that the claims of
`the ’616 patent and the ’177 patent “are very similar” and that “each have an
`independent claim with similar limitations,” which Patent Owner highlights
`by a claim language comparison. See Prelim. Resp. 11–13; Pet. Prelim.
`Reply 1–2. Moreover, the Petition relies on Watanabe to teach a CCD
`image sensor, similar to what the Examiner noted during prosecution of the
`’616 patent. See Pet. 37 (“Watanabe discloses an image sensing device
`(CCD image sensor 22) with a light receiving surface having N vertically
`arranged pixels (1,024 pixels in the vertical direction (V)) and an arbitrary
`number of pixels arranged horizontally (1,280 pixels in the horizontal
`direction))”; Ex. 2005, 143 (Watanabe, among other references, “shows an
`imaging apparatus having CCD image sensor and selectively reading out the
`specific amount of pixel from the plurality of pixels from the CCD sensor.”).
`
`
`8 In determining whether the same or substantially the same prior art
`previously was presented to the Office, the Board considers applications
`directly related to the challenged patent, such as a parent application. See
`Becton, Dickinson, Paper 8 at 22–23 (considering prosecution history of
`parent application for purposes of § 325(d) analysis).
`
`16
`
`
`
`IPR2022-001287
`Patent 8,059,177 B2
`
`
`As set forth above, the Petition relies on Watanabe alone as sufficient
`to teach the limitations in claim 1, the only independent claim at issue, and
`cites Sawanobori and Silver in combination with Watanabe as an additional
`basis for challenging certain limitations in claim 1. See Pet. 36–57. As
`discussed above, there is no dispute that Watanabe was considered during
`prosecution. Moreover, Petitioner does not rebut Patent Owner’s arguments
`that Watanabe, Sawanobori, and Silver are cumulative to at least Kijima
`(U.S. Patent No. 6,661,451) and Tani (U.S. Patent No. 5,187,569), which
`were considered during prosecution. See Prelim. Resp. 15–16; see Pet.
`Prelim. Reply 1–2. Further, with respect to claim 1, we also find Petitioner’s
`reliance on Sawanobori and Silver to be cumulative of Watanabe.
`For example, with respect to “imaging sensing device” limitation [1a],
`Petitioner asserts that Watanabe’s CCD image sensor 22 “is an image
`sensing device with a light receiving surface” having an “arbitrary number”
`of “1,280 pixels in the horizontal direction.” Pet. 37–38 (citing Ex. 1003
`¶ 100; Ex. 1004, 4:4–5; Ex. 1005 ¶ 23. Petitioner also asserts that
`“Watanabe discloses the number of effective scanning lines of a display
`screen of a television system as 240,” because “Watanabe describes down-
`sampling the N vertically arranged pixels and performing further processing
`such that ‘320 (H) x 240 (V) pixels of image data are read out of the buffer
`memory 34 and delivered to the image processing 32.’” Id. at 38 (citing
`Ex. 1004, 14:52–54; Ex. 1005 ¶ 74). According to Petitioner, “[t]he 320 (H)
`x 240 (V) pixels of [Watanabe’s] image data are transformed to an ‘RGB
`signal format matching with the display 12,’ which then displays a frame
`representative of the image data.” Id. (citing Ex. 1004, 14:55–61; Ex. 1005
`¶ 74).
`
`17
`
`
`
`IPR2022-001287
`Patent 8,059,177 B2
`
`
`Petitioner asserts that Watanabe’s “display 12 is ‘a display screen of a
`television system,’ which Watanabe described as a known display to which
`real-time images can be sent.” Id. at 39. Petitioner argues that a person of
`ordinary skill in the art “would recognize the RGB signal format matching
`with the display 12 to indicate that 240 (V) pixels have been chosen to
`‘match’ the number of effective scanning lines of display 12, using an RGB
`signal format of a television system.” Id. (citing Ex. 1003 ¶ 1001). “Thus,”
`concludes Petitioner, “in Watanabe, the number of vertically arranged pixels
`(N=1,024) is more than three times the number of effective scanning lines of
`a display screen of a television system (M=240).” Id. at 39 (citing Ex. 1003
`¶ 102).
`Alternatively, Petitioner points to a combination of Watanabe and
`Sawanobori “[t]o the extent [Patent Owner] argues that Watanabe does not
`explicitly disclose a display screen of a television system, or disclose that a
`display screen of a television system has a number of effective scanning
`lines M.” Id. In this alternative, Petitioner relies on Sawanobori for
`teaching that “pixel signals are read from the CCD 12 in the NTSC
`system . . . and . . . the dot arrangement is a so-called delta arrangement of
`R, G and B,” arguing that a person of ordinary skill in the art “would have
`understood NTSC to be one of the standards for color television used in the
`United States, Canada, and Japan, among other countries.” Id. at 40 (citing
`Ex. 1006, 6:8–13).
`Here, however, Petitioner relies on Sawanobori’s signal “arrangement
`of R, G and B” to meet the “display screen of a television system” portion of
`claim limitation [1a], just as Petitioner relies on Watanabe’s “RGB signal
`format matching” to meet the same limitation. Petitioner is therefore relying
`
`18
`
`
`
`IPR2022-001287
`Patent 8,059,177 B2
`
`on Sawanobori’s RGB signal arrangement to teach the same thing as
`Watanabe’s RGB signal format matching, making Petitioner’s use of
`Sawanobori for this purpose cumulative to Watanabe.
`Petitioner relies on Silver in a similar manner. For example, with
`respect to the “selectively switched” portion of claim limitation [1e],
`Petitioner relies on either Watanabe alone, or Watanabe in combination with
`Silver, to teach selectively switching camera driver modes by a CPU
`(Watanabe) or a microprocessor (Silver) in response to operation or control
`information received via a cable (Watanabe) or an actuator (Silver). Pet.
`54–57.
`Here, Petitioner points to Watanabe’s description of a “selection
`between camera record mode and transfer mode on the basis of information
`received via a cable 16” and also “operation information received from the
`operation 56” to meet this limitation. Id. at 54 (citing Ex. 1004, 8:63–64;
`Ex. 1005 ¶ 45).
`In particular, Petitioner points out that Watanabe teaches
`[a]n operation 56 is connected to a command input 134 included
`in the CPU 26. The CPU 26 selects one of two different operation
`modes in response to operation information received from the
`operation 56 and the command information received via the
`cable 16. The two operation modes are a camera record mode for
`recording the image data representative of a shot in the camera
`10a, and a transfer mode for transmitting them to the device 10b.
`Id. at 54–55 (citing Ex. 1004, 8:60–9:1; Ex. 1005 ¶ 45). Petitioner asserts
`that “Watanabe is clear that the driving by the first driver mode and the
`driving by the second driver mode are selectively switched according to
`input information from operation 56.” Id. at 55 (citing Ex. 1003 ¶ 131).
`
`19
`
`
`
`IPR2022-001287
`Patent 8,059,177 B2
`
`
`Alternatively, Petitioner argues “[t]o the extent [Patent Owner] argues
`that Watanabe plus the knowledge of a [person of ordinary skill in the art]
`does not render this limitation obvious, a [person of ordinary skill in the art]
`would have been motivated to combine Watanabe with Sawanobori and
`Silver to figure out how to implement operation 56, leading the [person of
`ordinary skill in the art] to using a switch.” Id. at. 56. For example,
`Petitioner argues that “[i]n Sawanobori, the camera includes a set switch that
`selectively sets the record mode or monitor-through mode.” Id. at 56–57
`(citing Ex. 1006, 4:11–19). Petitioner further argues that “[i]n Silver, the
`camera 10 is controlled by a microprocessor 56 that can be externally
`controlled from a manual actuator 58 to operate in either a continuous video
`mode or a still mode.” Id. at. 57 (citing Ex. 1007, 5:28–36; Ex. 1003, ¶
`137).
`Here, Petitioner relies on Watanabe’s teaching of “CPU 26” selecting
`“one of two different operation modes” in response to receiving information
`from operation 56 and cable 16 to meet the “selectively switched” portion of
`claim limitation [1e], just as Petitioner relies on Silver’s teaching of
`“microprocessor 56” selecting “a continuous video mode or a still mode” in
`response to receiving input from “actuator 58,” and Sawanobori’s teaching
`of a switch to meet the same limitation. In this regard, we fi
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
