Canon Inc.v.Intellectual Ventures I LLC

Patent Trial and Appeal Board

Sep 23, 2015

10064265 (P.T.A.B. Sep. 23, 2015)

Trials@uspto.gov Paper 37
571-272-7822 Entered: September 23, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CANON INC.,
Petitioner,

v.

INTELLECTUAL VENTURES I LLC,
Patent Owner.
____________

Case IPR2014-00535
Patent 7,315,406 B2
____________

Before THOMAS L. GIANNETTI, JAMES A. TARTAL, and
PATRICK M. BOUCHER, Administrative Patent Judges.

BOUCHER, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
A. Background
Canon Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) pursuant to
35 U.S.C. §§ 311–319 to institute an inter partes review of claims 1–31 of
U.S. Patent No. 7,315,406 B2 (“the ’406 patent”). After consideration of a
Preliminary Response (Paper 7) filed by Intellectual Ventures I LLC
(“Patent Owner”), the Board instituted trial on September 24, 2014. Paper 9
(“Dec.”).
During the trial, Patent Owner timely filed a Patent Owner Response
(Paper 15, “PO Resp.”), and Petitioner timely filed a Reply to the Patent
Owner Response (Paper 22, “Reply”). An Oral Hearing was held on June
24, 2015 (Paper 36, “Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This is a Final Written
Decision under 35 U.S.C. § 318(a) as to the patentability of the claims on
which we instituted trial. Based on the record before us, Petitioner has
demonstrated by a preponderance of the evidence that claims 1–31 are
unpatentable.

B. Related Proceedings
The ’406 patent has been asserted against Petitioner in Intellectual
Ventures I LLC v. Canon Inc., 13-cv-473-SLR (D. Del.). Pet. 1.

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C. The ’406 Patent
The ’406 patent describes scanning circuit structures for scanners
capable of reducing distortion during high-speed image signal transmission.
Ex. 1001, col. 2, ll. 3–7. Figure 2 of the ’406 patent is reproduced below.

Figure 2 illustrates a circuit structure for a scanner, including main circuit
module 210 and optical sensor circuit module 220 linked together with flat
cable 230. Id. at col. 3, ll. 36–40. Communication interface 285 of the main
circuit module allows interfacing with a human being, such as over a
universal serial bus (“USB”) interface. Id. at col. 3, ll. 48–57. The
communication interface receives scanning instructions regarding image
resolution, brightness level, and scanning range, and converts such scanning
instructions into scanning control signals that are conveyed to the optical
sensor circuit module over the flat cable. Id. Timing generator 265
produces timing control signals for extracting an analog signal image from
optical sensor 240, which may be a charge-coupled device (“CCD”) or
complementary metal-oxide-semiconductor (“CMOS”) image sensor. Id. at
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col. 3, ll. 58–64. After preprocessing of a collected image by analog front-
end preprocessor 250, analog/digital converter 260 (“A/D converter”)
converts the preprocessed image to digital data, which are transmitted to the
main circuit module over the flat cable.
The ’406 patent identifies two specific advantages of this
arrangement. First, a clearer image can be obtained at higher scanning
speeds because the flat cable transmits digital data instead of easily distorted
analog image signals. Id. at col. 4, ll. 23–25. Second, electromagnetic-
interference effects are mitigated because the flat cable transmits scanning
control signals rather than timing control signals. Id. at col. 4, ll. 26–29.

D. Illustrative Claims
Claims 1 and 11 of the ’406 patent are illustrative of the claims at
issue:
1. A scanning circuit for a document scanner, comprising:
a main circuit module capable of receiving a scanning
instruction from a communication interface, converting the
scanning instruction into scan control signals, passing the scan
control signals to a connection cable as well as receiving a
digital image data captured in a document scanning operation
through the connection cable; and
an optical sensor circuit module connected to the main
circuit module through the connection cable capable of
receiving the scan control signals and converting the scan
control signals to timing control signals that control document
scanning, extraction of an analog image signal from the
document and conversion of the analog image signal into the
digital image data.

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11. A scanning method, comprising:
receiving scan control signals at an optical sensor circuit
module via a connection cable; and
converting the scan control signals to timing control
signals to control document scanning.

E. Grounds of Unpatentability
Petitioner relies on the following references.

Ochiai US 5,457,544 Oct. 10, 1995 Ex. 1009
Koshimizu US 2001/0030278 A1 Oct. 18, 2001 Ex. 1012
Kono US 6,958,830 B2 Oct. 25, 2005 Ex. 1006
Takagawa JP H10-215353 Aug 11, 1998 Ex. 1017
Tsuboi JP H11-046302 Feb. 16, 1999 Ex. 1015
Nakamura JP H11-353471 Dec. 24, 1999 Ex. 1018

We instituted this proceeding based on the following grounds.
Reference(s) Basis Claim(s) Challenged
Tsuboi § 102(b) 1–3, 5, 6, and 10–31
Tsuboi § 103(a) 1–3, 5, 6, and 10–31
Tsuboi and Takegawa § 103(a) 4
Tsuboi and Koshimizu § 103(a) 7
Tsuboi and Nakamura § 103(a) 9
Tsuboi and Kono § 103(a) 5, 6, 8, 16–25, 29, and 31
Tsuboi, Kono, and
Koshimizu
§ 103(a) 7
Tsuboi and Ochiai § 103(a) 2, 3, 14, 15, 18, 19, 23, 27, and 28
Tsuboi, Ochiai, and
Takegawa
§ 103(a) 4
Tsuboi, Ochiai, and Kono § 103(a) 18, 19, and 23

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II. ANALYSIS
A. Claim Construction
The Board interprets claims of an unexpired patent using the broadest
reasonable construction in light of the specification of the patent in which
they appear. See 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC,
793 F.3d 1268, at 1277–1279 (Fed. Cir. 2015); Office Patent Trial Practice
Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).

1. “converting”
In the Institution Decision, we construed phrases of the form
“converting [X] into [Y] signals,” which are recited in various claims, as
generating Y signals from X. Dec. 5–6. After considering the submissions
of the parties and their respective positions regarding the prior art, discussed
infra, we revisit our construction of this term.
Petitioner proposes that “converting” as used in the claims be
construed to mean “changing an instruction or signal from one form to
another.” Pet. 5–6. Patent Owner proposes specific constructions of phrases
that include the word “converting,” contending that the term should not be
construed as a standalone word. Prelim. Resp. 30–33. Patent Owner also
opposes Petitioner’s construction because “it attempts to introduce
extraneous words ‘instruction,’ ‘signal,’ and ‘form,’” and because
“[c]hanging is not the same as converting.” Id. at 30.
We partially agree with Patent Owner, in that Petitioner’s proposed
construction includes the words “instruction” and “signal,” which are
unnecessary for a construction of the word “converting” itself. But a
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dictionary definition of “convert” is “to change from one form or function to
another.” Ex. 3001. Patent Owner offers no explanation for its position that
“changing is not the same as converting,” and that position is inconsistent
with the dictionary definition. Accordingly, we refine our construction
herein to construe “converting [X] into [Y] signals” as changing the form of
X into Y signals.

2. “scan control signals” and “timing control signals”
Patent Owner proposes that the phrase “converting the scanning
instruction into scan control signals,” which is recited in claims 1, 2, 12, 14,
22, 26, and 27, be construed as converting the scanning instruction into scan
control signals that do not include timing control signals. PO Resp. 4–6.
Patent Owner takes a similar position in its proposed construction of other
phrases recited in the claims, including “converting the scan control signals
to timing control signals,” which appears in claims 1, 11, 22, 26, and 30 (id.
at 6–7), and “generating [the] timing control signals that control a generation
of the analog image signal and a conversion of the analog image signal into
the digital image data,” which appears in claims 5, 16, 17, 21, 29, and 31 (id.
at 8–10).
Patent Owner contends that, in the ’406 patent, timing control as
embodied in timing control signals is completely independent of the scan
control signals. Tr. 49:20–50:20. Patent Owner observes that the
Specification of the ’406 patent explains that the “flat cable transmits
scanning control signals . . . instead of timing control signals.” PO Resp. at
4 (citing Ex. 1001, col. 4, ll. 26–29) (emphasis added). Patent Owner
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reasons that such disclosure would be understood by one of ordinary skill in
the art as describing “transmission of scanning control signals, not timing
control signals, across the flat cable connecting the main circuit module and
the optical sensor module,” and supports its reasoning with testimony from
Richard G. Zech, Ph.D. Id. at 5 (citing Ex. 2004 ¶ 38).
We are not persuaded by Patent Owner’s reasoning. Although the
portion of the Specification cited by Patent Owner suggests a distinction
between scanning control signals and timing control signals, it does not
support unambiguously Patent Owner’s position of complete independence
between scan control signals and timing control signals. That is, it is not
apparent from the statement identified by Patent Owner that the scan control
signals transmitted over the flat cable lack any signal that affects timing
control. For example, Patent Owner acknowledged at the Oral Hearing that
the specific scanning control signals mentioned in the ’406 patent are the
image resolution, the brightness level, and the scanning range, and that these
scanning control signals are used “to create the timing [control] signal on the
optical unit 220.” Tr. 50:13–20. Moreover, the plain language of claims 1,
2, 12, 14, 22, 26, and 27, which recite “converting” scan control signals into
timing control signals, is inconsistent with Patent Owner’s position. Under
the construction we adopt, “converting” scan control signals into timing
control signals means changing the form of scan control signals into timing
control signals, which does not require their complete independence. The
negative limitation that Patent Owner proposes to read into the expression
appears nowhere in the text of the claim itself. “[A] claim construction
analysis must begin and remain centered on the claim language itself.”
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Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111,
1116 (Fed. Cir. 2004). Claims terms can be assigned a scope narrower than
their ordinary meaning only if there is some indication in the patent or the
prosecution history that a term was meant to have a more restrictive meaning
or a broader meaning was disclaimed during prosecution. Saunders Grp.,
Inc. v. Comfortrac, Inc. 492 F.3d 1329, 1331 (Fed. Cir. 2007). Neither the
portion of the Specification identified by Patent Owner nor the prosecution
history persuades us that the phrase was meant to have the more restrictive
meaning Patent Owner now advocates.
Furthermore, the language of the claims in the ’406 patent contrasts
with the claims of Application No. 11/694,472, a child of the ’406 patent.
The claims in the child explicitly were amended during prosecution to
include the negative limitation for the purpose of overcoming prior art. See
Ex. 1023, 2. We determine that this amendment is inconsistent with Patent
Owner’s claim construction argument in this proceeding. See Microsoft
Corp. v. Multi-Tech Systems Inc., 357 F.3d 1340, 1349–50 (Fed. Cir. 2004)
(prosecution history of related application is relevant to claim construction);
see Laitram Corp. v. Morehouse Indus., Inc., 143 F.3d 1456, 1460 n.2 (Fed.
Cir. 1998) (applying the prosecution histories of two sibling patents, which
shared a common written description, to one another). Patent Owner has not
identified a persuasive reason why, under the broadest-reasonable-
interpretation standard, the broader language of the parent ’406 patent claims
should not be given its full scope.
Accordingly, we construe “timing control signals” as signals that
affect timing control, and we construe “scan control signals” as signals that
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affect scan control. Our construction, moreover, does not preclude the
inclusion of a timing control signal as part of a scan control signal.

3. “optical sensor circuit module”
Independent claim 1 recites “an optical sensor circuit module . . .
capable of receiving the scan control signals and converting the scan control
signals to timing control signals that control document scanning, extraction
of an analog image signal . . . and conversion of the analog image signal into
the digital image data.” In the Institution Decision, we adopted a
construction in which the recited “receiving,” “converting,” “extraction,”
and “conversion” are all capabilities of the optical sensor circuit module,
without the further requirement that the extraction and conversion be
controlled by the timing control signals. Dec. 7. We see no reason to alter
that construction based on the positions of the parties as developed during
the trial, and accordingly adopt it herein.

4. Means-plus-function Limitations
Claims 21–25 include several terms recited as “means for” performing
identified functions. In the Institution Decision, we construed these
recitations under 35 U.S.C. § 112, ¶ 6, as follows. We see no reason to alter
those constructions based on the positions of the parties as developed during
the trial, and accordingly adopt them herein.

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“means for . . .” Corresponding structure
“. . . extracting an analog image
signal”
optical sensor circuit module 220 and
optical sensor 240
“. . . converting the analog image
signal into a digital image data”
analog/digital converter 260
“. . . receiving the digital image data” main circuit module 210 and main
control logic unit 270
“. . . generating timing control
signals”
timing signal generator 265
“. . . receiving a scanning
instruction”
main control logic unit 270
“. . . converting the scanning
instruction into scan control signals”
main control logic unit 270 and
communication interface 285
“. . . passing the scan control signals
to said connection cable”
main circuit module 210
“. . . receiving the scan control
signals”
optical sensor circuit module 220
“. . . converting the scan control
signals to timing control signals”
optical sensor module 220 and
timing signal generator 265
“. . . holding the digital image data” memory unit 280
“. . . controlling the access of the
digital image data”
memory controller 275
“. . . compensating and adjusting the
digital image data”
main control logic unit 270
“. . . preprocessing the analog image
signal”
analog front-end preprocessor 250
“. . . converting the pre-processed
analog image signal into the digital
image data”
analog/digital converter 260

B. Anticipation of Claims 1, 3, 5, 6, and 10–31 by Tsuboi
Tsuboi describes an image-reading device that uses a CCD to collect
image data. Ex. 1015 ¶ 1. Figure 4 of Tsuboi is reproduced below.
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Figure 4 provides a schematic illustration of the image-reading device
with components distributed between an image processing circuit board and
a CCD circuit board. Id. ¶ 36. Petitioner draws a correspondence between
(1) the image processing circuit board of Tsuboi and the optical sensor
circuit module recited in the claims of the ’406 patent, and (2) the CCD
circuit board of Tsuboi and the main circuit module recited in the claims.
Pet. 17. The image processing circuit board and the optical sensor circuit
module are connected by a flexible cable. Ex. 1015 ¶ 25. Similar to the
configuration shown in Figure 2 of the ’406 patent, Tsuboi discloses that the
CCD circuit board includes CCD image sensor 31, analog processing circuit
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30AN, analog-digital converter 35, and “signal processing circuit 37 for
controlling the timing with which the CCD 31 is driven and for generating a
clock.” Id. ¶ 36; see also id. ¶ 3. Signals processed to generate information
for controlling the timing are received from the image processing circuit
board. Id. ¶ 39. Petitioner reasons that “the timing control signals and
digital image data are generated on the optical sensor side, and the digital
image data is transmitted to the main module via a cable, as claimed in the
’406 [p]atent.” Pet. 18.
Petitioner provides charts at pages 18–30 of the Petition that set forth
its detailed positions that claims 1, 3, 5, 6, and 10–31 are anticipated by
Tsuboi in light of Tsuboi’s teaching of generating timing control signals and
digital image data on the optical sensor side, and transmitting digital image
data to the main module via a cable. We have reviewed the charts and
conclude that Petitioner has demonstrated, by a preponderance of the
evidence, that each of claims 1, 3, 5, 6, and 10–31 is anticipated by Tsuboi.
Patent Owner contends that Tsuboi neither explicitly nor inherently
discloses converting scanning instructions into scan control signals and
neither explicitly nor inherently discloses converting scan control signals to
timing control signals. PO Resp. 13–24. Although Patent Owner is correct
that “Petitioner acknowledges that the term ‘converting’ is not explicitly
present in Tsuboi” (id. at 14), anticipation “is not an ‘ipsissimis verbis’ test.”
In re Bond, 910 F.2d 831, 832–33 (Fed. Cir. 1990) (citing Akzo N.V. v.
United States Int’l Trade Comm’n, 808 F.2d 1471, 1479 & n.11 (Fed. Cir.
1986)). “An anticipatory reference . . . need not duplicate word for word
what is in the claims.” Standard Havens Prods., Inc., v. Gencor Indus., Inc.,
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953 F.2d 1360, 1369 (Fed. Cir. 1991). The proper test is what the reference
would have taught a person of ordinary skill in the art. See In re Preda, 401
F.2d 825, 826 (CCPA 1968) (“[I]n considering the disclosure of a reference,
it is proper to take into account not only specific teachings of the reference
but also the inferences which one skilled in the art would reasonably be
expected to draw therefrom.”). For example, Petitioner’s expert witness, L.
Richard Carley, Ph.D., identifies control signals and certain intermediate-
level clock signals in determining that main module 20 of Tsuboi converts
scanning instructions in the form of various inputs and a start instruction into
scan control signals. Ex. 1002 ¶ 65 (citing Ex. 1015 ¶¶ 20, 25, 27, 29, 39–
41). Dr. Carley further identifies generation of other control signals that
include primary scanning synchronization signals and primary scanning
effective interval signals by main module 20. Id. (citing Ex. 1015, ¶¶ 39,
40). Dr. Carley presents reasoning that one of ordinary skill in the art would
have understood that CPU 21 of Tsuboi generates these scan control signals
from the user-level scanning instructions because “CPUs ‘process’ signals
that they receive” and because “the control signals for scanning issued by
CPU 21 (e.g., primary scanning synchronization signal) provide the
operation controls for performing scanning in accordance with the user’s
instructions.” Id.
In addition, Patent Owner’s expert witness, Dr. Zech, acknowledged
that Tsuboi’s synchronization and interval signals are the result of
processing by CPU 21 of instructions that relate to such factors as document
size. Ex. 1028, 240:8–241:4, 284:1–285:10, 165:12–169:2, 170:22–173:16,
152:12–155:13, 157:5–9. A person of ordinary skill in the art would have
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understood that CPU 21 processes the instructions received from board 14 to
convert the input scanning instructions into the scanning synchronization
signal and the effective interval signals, which are transmitted to signal
processing circuit 37. See Reply 6 (citing Ex. 1031 ¶¶ 28, 32, 34–36, 40,
53).
We disagree with Patent Owner’s contention that “the Petition itself
concedes that Tsuboi does not explicitly disclose converting a scanning
instruction into [a] scan control signal” through its acknowledgment that the
term “converting” is not explicitly present in Tsuboi. PO Resp. 14.
Although Dr. Carley and Petitioner acknowledge that Tsuboi does not
explicitly refer to “converting,” Dr. Carley’s reasoning, which we credit, is
based directly on the explicit teachings of the reference and how they would
be understood by one of ordinary skill in the art. Therefore, we do not
understand Petitioner to be making an inherency argument, and we conclude
that Petitioner has shown, by a preponderance of the evidence, that the
recited “converting” is taught explicitly by the reference.
With respect to the conversion of scan control signals into timing
control signals, Dr. Carley identifies various timing control signals that are
generated from scan control signals received by signal processing circuit 37
of Tsuboi. Ex. 1002 ¶ 69. These include a clock signal generated by signal
processing circuit 37 that controls the timing of the sensor and a signal that
controls the timing of the A/D converter. Id. (citing Ex. 1005 ¶¶ 36–39).
Patent Owner responds that “signal processing circuit 37 merely provides
the clock received through the flexible cable to other synchronous circuit
components of the CCD circuit board.” PO Resp. 19 (citing Ex. 2004
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¶¶ 58–65). As we note above, however, our construction of “scan control
signals” does not preclude inclusion of a timing control signal as part of a
scan control signal. We are not persuaded, therefore, by Patent Owner’s
distinction that the signal processing circuit “merely provides” the clock
signal rather than operates on the scan control signals it receives to perform
a conversion.
We conclude that Petitioner has shown, by a preponderance of the
evidence, that Tsuboi anticipates claims 1, 3, 5, 6, and 10–31.

C. Obviousness of Claims 1, 3, 5, 6, and 10–31 Over Tsuboi
In addition to its challenge of claims 1, 3, 5, 6, and 10–31 as
anticipated by Tsuboi, Petitioner advances alternative grounds for
challenging those claims as obvious over Tsuboi: “to the extent that Tsuboi
does not explicitly describe ‘converting,’ such as converting a scanning
instruction into scan control signals, such a conversion would have been
obvious to one of ordinary skill.” Pet. 31. Dr. Carley testifies that, although
the term “converting” is not explicitly used in Tsuboi, one of ordinary skill
in the art would have recognized that by receiving and processing
instructions, the CPU in Tsuboi converts the user scanning instruction into a
different form, namely “control signals” or the “primary scanning
synchronization signal.” Ex. 1002 ¶ 65. We credit this testimony and
conclude that claims 1, 3, 5, 6, and 10–31 would have been obvious over
Tsuboi.

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D. Obviousness of Claims 5, 6, 8, 16–25, 29, and 31
Over Tsuboi and Kono

Kono discloses a scanner having a separate main board and carriage.
Ex. 1006, col. 3, ll. 37–41; col. 5, ll. 6–9. Figure 2 of Kono is reproduced
below.

Figure 2 depicts main board 41 connected to carriage 20 with flexible flat
cable 40. Id. at col. 4, ll. 56–57. Petitioner draws a correspondence between
(1) main board 41 and the “main circuit module” recited in the claims; and
(2) the circuitry on carriage 20 and the “optical sensor circuit module”
recited in the claims. Pet. 35; see also Ex. 1002 ¶ 71. Similar to Tsuboi, the
optical sensor side of the scanner includes CCD 22, analog-digital converter
25, and control unit 24. Ex. 1006, col. 3, l. 59–col. 4, l. 27.
Petitioner contends that it would have been obvious, in light of
Kono’s teachings, to use timing control signals to control both the image
sensor and A/D converter. Pet. 35. Claims 5, 6, 16–25, 29, and 31 include
limitations related to such timing coordination. As Petitioner observes,
Kono discloses that control unit 24 acts as a timing generator that generates
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timing control signals that provide a shift pulse and a sampling pulse. Id.
(citing Ex. 1006, col. 4, ll. 13–55; col. 5, l. 29–col. 6, l. 10; Fig. 1). The
control unit is coupled to both the CCD and A/D converter, with the shift
pulse transmitted to the CCD to control generation of the analog image
signal and the sampling pulse transmitted to the A/D converter to control
conversion to digital data. Ex. 1006, col. 4, ll. 13–55; col. 5, l. 29–col. 6, l.
10. Petitioner reasons that, because both Tsuboi and Kono disclose
generation of timing control signals on the optical sensor side of a scanning
circuit, one of ordinary skill in the art would have found it obvious to send
timing control signals both to the image sensor and to A/D converter in
Tsuboi according to the scheme described in Kono. Pet. 35–36. Petitioner
has articulated a sufficient rationale to make the asserted combination.
Patent Owner challenges this reasoning, based on its position that Tsuboi
does not disclose generation of timing control signals on the optical sensor
side of a scanning circuit. PO Resp. 47. As we explain above, we disagree
with Patent Owner’s position on this.
Patent Owner also responds that Kono fails to cure a further asserted
deficiency in Tsuboi, namely, that Kono fails to disclose conversion of
scanning instructions into scan control signals. PO Resp. 46. For the
reasons we express above, however, we find that Petitioner has established,
by a preponderance of the evidence, that Tsuboi discloses such conversion,
and therefore Petitioner’s argument that there is a deficiency fails.
We conclude that Petitioner has shown, by a preponderance of the
evidence, that claims 5, 6, 16–25, 29, and 31 would have been obvious over
Tsuboi and Kono.
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E. Obviousness of Claim 7 Over Tsuboi and Koshimizu or
Tsuboi, Kono, and Koshimizu

Petitioner challenges claim 7, which recites that “the optical sensor
includes a complementary metal-oxide-semiconductor (CMOS) image
sensor,” as unpatentable under 35 U.S.C. § 103(a) over Tsuboi and
Koshimizu, together, or in further combination with Kono. Pet. 32–33, 36–
37. Tsuboi’s scanner includes a CCD image sensor for reading a document.
Ex. 1015 ¶¶ 14, 23–24. Koshimizu “relates to an image reading apparatus”
and discloses a CMOS image sensor for use in a scanner. Ex. 1012 ¶¶ 1, 25.
Petitioner’s reasoning that one of skill in the art would have “provide[d]
Tsuboi’s scanner with a CMOS image sensor, as described in Koshimizu”
articulates sufficient rational underpinnings for making the combination.
Pet. 33.
Patent Owner responds that Koshimizu does not cure the deficiencies
with Tsuboi it identifies for claims 1 and 5, from which claim 7 depends,
either for the Tsuboi grounds or for the Tsuboi-Kono grounds. PO Resp. 44,
48–49. Because we disagree that Petitioner’s analysis is deficient for those
underlying base claims, we do not find this argument persuasive.
We conclude that Petitioner has shown, by a preponderance of the
evidence, that claim 7 would have been obvious over Tsuboi and Koshimizu,
together or in further combination with Kono.

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F. Obviousness of Claims 2, 3, 14, 15, 18, 19, 23, 27, and 28
Over Tsuboi and Ochiai and of
Claims 18, 19, and 23 Over Tsuboi, Ochiai, and Kono

Petitioner challenges claims 2, 3, 14, 15, 18, 19, 23, 27, and 28, which
relate to coupling of the main control logic unit with the memory control
logic unit, as unpatentable under 35 U.S.C. § 103(a) over Tsuboi and Ochiai.
Pet. 37–38. Petitioner also challenges claims 18, 19, and 23 as unpatentable
under 35 U.S.C. § 103(a) over Tsuboi, Ochiai, and Kono. Id. at 38–39.
Claims 2 and 3 depend from claim 1, claims 14 and 15 depend from claim
11, claims 18 and 19 depend from claim 17, claim 23 depends from claim
21, and claims 27 and 28 depend from claim 26.
Ochiai “relates to a facsimile device having an image memory.” Ex.
1009, col. 1, ll. 12–13. The facsimile device includes a scanner unit, as well
as a memory control unit coupled to a CPU and memory. Id., col. 2, ll. 32–
53. The memory control unit controls writing data to and reading data from
the memory. Id. at col. 5, ll. 49–53. Petitioner reasons that it
would have been obvious to one of ordinary skill that the
memory 23 and logic unit arrangement in Tsuboi would
preferably have been implemented as shown in Ochiai to
provide a separate memory logic unit coupled to the main
control logic unit because doing [so] would provide better
processing speeds for high volumes of image data.

Pet. 37–38. Petitioner supports its reasoning with testimony by Dr. Carley.
Id. (citing Ex. 1002 ¶ 109).
Patent Owner responds that Ochiai does not cure deficiencies with
Tsuboi it identifies for underlying base claims from which these claims
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depend. PO Resp. 49, 51. Because we disagree that Petitioner’s analysis is
deficient for those underlying base claims, we do not find this response
persuasive.
We conclude that Petitioner has shown, by a preponderance of the
evidence, that claims 2, 3, 14, 15, 18, 19, 23, 27, and 28 would have been
obvious over Tsuboi and Ochiai, and that claims 18, 19, and 23 would have
been obvious over Tsuboi, Ochiai, and Kono.

G. Obviousness of Claim 4 Over Tsuboi and Takegawa and
Over Tsuboi, Ochiai, and Takegawa

Petitioner challenges claim 4, which recites that “the memory
comprises a dynamic random access memory,” as unpatentable under
35 U.S.C. § 103(a) over Tsuboi and Takegawa, together, or in further
combination with Ochiai. Pet. 31–32, 38. Tsuboi’s scanner includes RAM
23, which stores digital image data from a scanning operation. Ex. 1015 ¶
27. Takegawa describes a book-reading device that may be used as an
image scanner. Ex. 1017 ¶ 1. A scanning unit includes an image processing
unit that has a DRAM module for storing image signals. Id. at ¶¶ 11–12.
Petitioner reasons that one of skill in the art would make a simple
substitution of Tsuboi’s RAM with Takegawa’s DRAM “because Takegawa
describes using such a memory to store the same type of image data from a
scanning operation.” Pet. 32 (citing Ex. 1002 ¶ 135). Petitioner articulates a
sufficient rationale to combine the teachings of Tsuboi and Takegawa in this
way.
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Patent 7,315,406 B2

22
Patent Owner responds that Takegawa does not cure deficiencies with
Tsuboi it identifies for claims 1 and 2, from which claim 4 depends. PO
Resp. 44, 50. Because we disagree that Petitioner’s analysis is deficient for
those underlying base claims, we do not find this response persuasive.
We conclude that Petitioner has shown, by a preponderance of the
evidence, that claim 4 would have been obvious over Tsuboi and Takegawa,
alone or in combination with Ochiai.

H. Obviousness of Claim 9 Over Tsuboi and Nakamura
Petitioner challenges claim 9, which recites that “the communication
interface includes a universal serial bus interface,” as unpatentable under
35 U.S.C. § 103(a) over Tsuboi and Nakamura. Pet. 33–34. Although
Tsuboi discloses that main circuit module 20 receives input from operating
board 14, it does not disclose the specific type of communication interface
used between those elements. Nakamura “relates to a printing system that
uses a USB (Universal Serial Bus), for printing scanner-read information
through a printer device.” Ex. 1018 ¶ 1. In particular, Nakamura discloses
that a scanner start instruction can be transmitted via a USB interface. Id. at
¶¶ 13, 14, 25, 32, 39. Petitioner reasons that “one of ordinary skill in the art
would have reason to use a USB interface between the scanner and computer
in Tsuboi at least because it was known to use such interfaces between those
elements in order to avoid restarting the computer after the connection.”
Pet. 34 (citing Ex. 1002 ¶ 193).
Patent Owner responds that Nakamura does not cure deficiencies with
Tsuboi it identifies for claim 1, from which claim 9 depends. PO Resp. 44–
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Patent 7,315,406 B2

23
45. Because we disagree that Petitioner’s analysis is deficient for those
underlying base claims, we do not find this response persuasive.
We conclude that Petitioner has shown, by a preponderance of the
evidence, that claim 9 would have been obvious over Tsuboi and Nakamura.

III. ORDER
For the reasons given above, it is
ORDERED that claims 1–31 of U.S. Patent No. 7,315,406 B2 are
unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to this proceeding seeking judicial review of our decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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Patent 7,315,406 B2

24
PETITIONER
Justin J. Oliver
Daniel S. Glueck
FITZPATRICK, CELLA, HARPER & SCINTO
975 F Street, NW Fourth Floor
Washington, DC 20004
Canon406IPR@fch.com
PATENT OWNER
JOHN R. King
Brenton R. Babcock
Ted M. Cannon
Curtis R. Huffmire
KNOBBE, MARTENS, OLSON & BEAR, LLP
2040 Main Street, Fourteenth Floor
Irvine, CA 92614
2jrk@knobbe.com
2brb@knobbe.com
2tmc@knobbe.com
2crh@knobbe.com

Tim R. Seeley
James R. Hietala
Intellectual Ventures
3150 139th Avenue SE
Bellevue, WA 98005
tim@intven.com
jhietala@intven.com