Cellect, LLC

Patent Trials and Appeals Board

Aug 17, 2021

IPR2020-00512 (P.T.A.B. Aug. 17, 2021)

Trials@uspto.gov Paper 32
571-272-7822 Date: August 17, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SAMSUNG ELECTRONICS CO., LTD. and
SAMSUNG ELECTRONICS AMERICA, INC.,
Petitioner,
v.
CELLECT, LLC,
Patent Owner.

IPR2020-00512
Patent 9,186,052 B1

Before JAMESON LEE, PATRICK M. BOUCHER, and
JOHN R. KENNY, Administrative Patent Judges.

KENNY, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining Challenged Claim Unpatentable
35 U.S.C. § 318(a)

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Patent 9,186,052 B1
2
I. INTRODUCTION
Samsung Electronics Co., Ltd. and Samsung Electronics America,
Inc. (“Petitioner”) filed a Petition to institute an inter partes review of claim
2 (“challenged claim”) of U.S. Patent No. 9,186,052 B1 (Ex. 1001, the “’052
patent”) pursuant to 35 U.S.C. § 311 et seq. Paper 2 (“Petition” or “Pet.”).
Cellect, LLC (“Patent Owner”) filed a Preliminary Response. Paper 6. With
our authorization, Petitioner filed a Preliminary Reply (Paper 9) and Patent
Owner filed a Preliminary Sur-reply (Paper 12). On August 18, 2020, we
instituted inter partes review of the challenged claim. Paper 15.
Patent Owner filed a Patent Owner’s Response (Paper 18, “PO
Resp.”). Petitioner filed a Reply to Patent Owner’s Response (Paper 21,
“Pet. Reply.”), and Patent Owner filed a Sur-reply (Paper 24, “Sur-reply”).
At the parties’ request (Papers 26, 27), an Oral Hearing was held on May 26,
2021, a transcript of which is included in the record. Paper 31 (“Tr.”).
We have jurisdiction to conduct this inter partes review under
35 U.S.C. § 6. For the reasons discussed herein, we determine that
Petitioner has shown, by a preponderance of the evidence, that claim 2 of the
’052 patent is unpatentable.
A. Related Matters
The parties identify the following related district court litigation:
Cellect, LLC v. Samsung Electronics Co., Ltd. et al., 1-19-cv-00438 (D.
Colo.). Pet. 5; Paper 5, 1.1

1 That action has been stayed by order of the district court. Paper 11 (Appx.
A).
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Patent 9,186,052 B1
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The parties note that the challenged patent is also the subject of
IPR2020-00475. Pet. 6; Paper 5, 1. Petitioner further identifies the
following related patents and respective proceedings:
Patent Proceeding(s)
6,043,839 IPR2020-00472
6,275,255 B1 IPR2020-00473
6,982,740 B2 IPR2020-00474
ex parte reexamination
9,198,565 B2 IPR2020-00476
9,667,896 B2 IPR2020-00477
6,982,742 B2 IPR2020-00559
IPR2020-00560
IPR2020-00561
ex parte reexamination
6,424,369 B1 IPR2020-00562
IPR2020-00563
IPR2020-00564
ex parte reexamination
6,452,626 B1 IPR2020-00565
IPR2020-0566
IPR2020-00567
ex parte reexamination
6,862,036 B2 IPR2020-00568
IPR2020-00569
7,002,621 B2 IPR2020-00571
IPR2020-00572
ex parte reexamination
Pet. 6–7.
B. The ’052 Patent
The ’052 patent is titled “Reduced Area Imaging Device Incorporated
Within Endoscopic Devices.” Ex. 1001, code (54). By way of background,
the ’052 patent explains that “endoscopic surgery has become the accepted
standard for conducting many types of surgical procedures.” Id. at 1:40–42.
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Patent 9,186,052 B1
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Solid state imaging technology is increasingly replacing the rod lens
endoscope, due to “its cost of manufacture, failure rate, and requirement to
be housed within a rigid and straight housing.” Id. at 1:52–57. Solid state
imaging technology “enables the image sensor to be placed at the distal tip
of the investigating device.” Id.
Complementary metal oxide semiconductor (CMOS) imaging devices
are solid state imaging devices that “offer improved functionality and
simplified system interfacing” and “can be manufactured at a fraction of the
cost of other solid state imaging technologies.” Ex. 1001, 1:61–65.
However, despite improved CMOS imaging devices that permit a “camera
on a chip” concept (see id. at 3:1–:21), the ’052 patent reports that “a need
still exists for a reduced area imaging device which can be used in even the
smallest type of endoscopic instruments.” Id. at 3:29–31.
The ’052 patent purports to improve “camera on a chip” technology
by “rearrang[ing] the circuitry in a stacked relationship so that there is a
minimum profile presented when used within a surgical instrument or other
investigative device.” Ex. 1001, 3:31–36. In an embodiment, an imaging
device may be entirely self-contained in the distal end of an endoscope. Id.
at 9:53–57. Figure 2a shows a cross-sectional view of an endoscope with an
imaging device incorporated into the distal tip of the endoscope, and Figure
2b shows a partially exploded perspective view of the distal end of the
endoscope shown in Figure 2a, both of which are reproduced below (id. at
6:55–61):
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Patent 9,186,052 B1
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As shown in Figure 2b, an imaging device in the distal end 16 of endoscope
10 may include image sensor 40 electrically coupled, via pin connectors 62,
to video processing board 50 and optional supplementary board 60. Id. at
9:58–10:8. Image sensor 40 may be bonded to lens system 42. Id. at 10:16–
19.
Figure 4a, reproduced below, shows a detailed schematic diagram of
image sensor 40 (Ex. 1001, 12:26–28):
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As shown in Figure 4a above, image sensor 40 contains array of pixels 90
and timing and control circuits 92. Id. at 12:26–28. Array of pixels 90 is an
active pixel group and “[e]ach pixel circuit has its own amplifier which is
controlled by the timing and control circuitry.” Id. at 12:45–64.
C. Challenged Claim
Petitioner challenges independent claim 2 (Pet. 1), which reads:
2. An imaging device comprising:
a housing;
an image sensor mounted in said housing, said image sensor
including a first circuit board having a length and a width thereto,
wherein said length and width of said first circuit board define a
first plane, said first circuit board including an array of CMOS
pixels thereon, wherein a plurality of CMOS pixels within said
array of CMOS pixels each include an amplifier, said first circuit
board further including timing and control circuitry thereon, said
timing and control circuitry being coupled to said array of CMOS
pixels, said image sensor producing a pre-video signal;
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Patent 9,186,052 B1
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a second circuit board mounted in said housing, said second
circuit board being electrically coupled to said first circuit board,
said second circuit board having a length and a width thereto,
wherein said length and width of said second circuit board define
a second plane, said second circuit board including circuitry
thereon to convert said pre-video signal to a post-video signal,
said second circuit board being positioned in a stacked
arrangement with respect to said first circuit board, said second
plane of said second circuit board being substantially parallel to
said first plane of said first circuit board;
a lens mounted in said housing, said lens being integral with said
imaging device, said lens focusing images on said array of
CMOS pixels of said image sensor;
a video screen, said video screen being electrically coupled to
said second circuit board, said video screen receiving said post-
video signal and displaying images from said post-video signal;
and
a power supply mounted in said housing, said power supply
being electrically coupled to said first circuit board to provide
power to said array of CMOS pixels and said timing and control
circuitry, said power supply also being electrically coupled to
said second circuit board to provide power thereto;
wherein a largest dimension of said image sensor along said first
plane is between 2 and 12 millimeters.
Ex. 1001, 21:64–22:37.
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D. Asserted Grounds
Petitioner challenges claim 2 based on the following grounds:
Claim Challenged 35 U.S.C. § References
2 103 Swift,2 Ricquier,3 Suzuki4
2 103 Larson,5 Swift, Ricquier, Suzuki
Pet. 9. Petitioner relies on the Declaration of Dr. Dean P. Neikirk in Support
of Petition for Inter Partes Review of U.S. Patent No. 9,186,052 (Ex. 1004)
and the Declaration of Dr. Dean P. Neikirk, Ph.D. in Support of Petitioner’s
Reply to Patent Owner’s Response (Ex. 1086). Patent Owner relies on the
Declaration of Dr. Michael Lebby in Support of Patent Owner’s Response
(Ex. 2088).

2 WO Application Publication No. 95/34988, published December 21, 1995
(Ex. 1005).
3 Ricquier, N., et al. “CIVIS Sensor: A Flexible Smart Imager with
Programmable Resolution,” Charge-Coupled Devices and Solid State
Optical Sensors IV. Vol. 2172, International Society for Optics and
Photonics, 1994. Petitioner submitted two copies of this article, each with
an accompanying declaration, as Exhibits 1033 and 1038. According to the
accompanying declarations, Exhibits 1033 and 1038 are copies of the article
obtained from SPIE and from the University of Wisconsin, respectively. Ex.
1033, 1; Ex. 1038, 1–2 (these cites refer to the page numbers added by
Petitioner to these exhibits). In this decision, we cite to Exhibit 1038, which
Petitioner identifies as “Ricquier,” using the article’s original page numbers
unless noted otherwise. Pet. iv.
4 US Patent 5,233,426, filed December 12, 1991, issued August 3, 1993
(Ex. 1015).
5 US Patent 5,541,640, issued July 30, 1996 (Ex. 1029).
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II. LEVEL OF SKILL IN THE ART AND CLAIM CONSTRUCTION
A. Level of Ordinary Skill in the Art
Petitioner asserts that on or before October 6, 1997, a person of
ordinary skill in the art (“POSITA”) would have had “a minimum of a
Bachelor’s degree in Electrical Engineering, Physics, or a related field” and
“approximately two years of professional experience in the field of imaging
devices.” Pet. 13 (citing Ex. 1004 ¶¶ 34–37).
Patent Owner asserts: “a person of ordinary skill in the art in October
6, 1997 (the earliest effective date of the ’052 patent) would have had a
Bachelor’s degree in Electrical Engineering, Physics, or a related field, and
approximately three years of professional experience in the field of visible
optical imaging devices.” PO Resp. 12–13 (citing Ex. 2088 ¶ 40).
Neither party identifies any material differences between a skill level
corresponding to approximately two years of professional experience in the
field of imaging devices and approximately three years of professional
experience in the field of visible optical imaging devices, or any difference
in the field of imaging devices and the field of visible optical imaging
devices. On this record, there is none.
We determine that the level of ordinary skill in the art is at the level of
one who would have had a Bachelor’s degree in Electrical Engineering,
Physics, or a related field, and approximately two to three years of
professional experience in the field of visible optical imaging devices.6 This
definition is consistent with the prior art of record. Okajima v. Bourdeau,
261 F.3d 1350, 1355 (Fed. Cir. 2001).

6 We do not adopt Petitioner’s inclusion of the qualifier “minimum,” to keep
the specified level of skill more definite.
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B. Claim Construction
“[I]n an inter partes review proceeding, a claim of a patent . . . shall
be construed using the same claim construction standard that would be used
to construe the claim in a civil action under 35 U.S.C. [§] 282(b), including
construing the claim in accordance with the ordinary and customary
meaning of such claim as understood by one of ordinary skill in the art and
the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b)
(2019). In applying a district court-type claim construction, we are guided
by the principle that the words of a claim “are generally given their ordinary
and customary meaning,” as would have been understood by a person of
ordinary skill in the art at the time of the invention. Phillips v. AWH Corp.,
415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc) (citation omitted). “In
determining the meaning of the disputed claim limitation, we look
principally to the intrinsic evidence of record, examining the claim language
itself, the written description, and the prosecution history, if in evidence.”
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014
(Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). There is a “heavy
presumption,” however, that a claim term carries its ordinary and customary
meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.
Cir. 2002).
We also are guided by the principle that we only construe claim terms
if, and to the extent that, it is necessary for this proceeding. See, e.g., Nidec
Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
(Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy,
and only to the extent necessary to resolve the controversy.’” (quoting Vivid
Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
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Neither party requests the construction of any claim term. Pet. 13; PO
Resp. 12. Further, we do not find that any claim term requires express
construction.
III. ANALYSIS OF ASSERTED GROUNDS OF UNPATENTABILITY
A. Principles of Law
To prevail in its challenge to Patent Owner’s claims, Petitioner must
demonstrate by a preponderance of the evidence that the claims are
unpatentable.7 35 U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d). That burden
never shifts to the patentee. Dynamic Drinkware, LLC v. Nat’l Graphics,
Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
A patent claim is unpatentable under 35 U.S.C. § 103 if the
differences between the claimed subject matter and the prior art are such that
the subject matter, as a whole, would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art; (3)
the level of ordinary skill in the art; and (4) when in evidence, objective
evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
(1966).

7 The burden of showing something by a preponderance of the evidence
requires the trier of fact to believe that the existence of a fact is more
probable than its nonexistence before the trier of fact may find in favor of
the party who carries the burden. Concrete Pipe & Prods. of Cal., Inc. v.
Constr. Laborers Pension Tr. for S. Cal., 508 U.S. 602, 622 (1993).
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Patent 9,186,052 B1
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With these principles in mind, we make our determination of
patentability based on the entirety of the evidence before us, both for and
against obviousness. Below, we first address the evidence of
nonobviousness submitted by Patent Owner. With that evidence in mind, we
then address the parties’ contentions and evidence regarding the prior art
references.
B. Patent Owner’s Evidence of Nonobviousness
Patent Owner asserts that the following secondary considerations
support nonobviousness in this case: (1) commercial success, (2) satisfaction
of a long-felt but unresolved need, (3) industry skepticism, (4) unexpected
results, (5) industry praise, and (6) proceeding contrary to accepted wisdom.
PO Resp. 39–47.
It is well established that to accord substantial weight to secondary
considerations in an obviousness analysis, the evidence of secondary
considerations must have a nexus to the challenged claim, i.e., there must be
a legally and factually sufficient connection between the evidence and the
patented invention. Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373
(Fed. Cir. 2019). A patentee is entitled to a presumption of nexus when the
patentee shows that the asserted objective evidence is tied to a specific
product and that product embodies the claimed features and is coextensive
with them. Id. Even where nexus cannot be presumed, “the patent owner is
still afforded an opportunity to prove nexus by showing that the evidence of
secondary considerations is the ‘direct result of the unique characteristics of
the claimed invention.’” Id. (quoting In re Huang, 100 F.3d 135, 140 (Fed.
1996)).
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1. Alleged Commercial Success
As evidence of commercial success, Patent Owner asserts that
“companies have taken a license to the ’052 Patent.” PO Resp. 41. Patent
Owner asserts:
Patent Owner and its parent, Micro-Imaging Solutions has
licensed its patented reduced [area] imaging device to several
companies including: Gyrus Group PLC, Cook Inc., Cook
Medical Technologies LLC, Coopersurgical, Inc., Ethicon Endo-
Surgery, Inc., Fujikura Ltd., Microtek Medical, Inc., Endosee
Corp., Karl Storz Imaging, Inc., and Voyage Medical Inc. See
Ex. 2074.
Id. at 41. Patent Owner does not indicate which of the above-identified
entities, or how many, have taken a license to the ’052 patent, nor has Patent
Owner identified what, if any, other patents were subject to the licenses
involving these companies. Exhibit 2074, cited by Patent Owner, is
unexplained by Patent Owner with regard to its nature, source, origin, and
authorship, and does not identify or refer to any specific licensed patent or
licensee (except Fujikura Ltd.). Exhibit 2074 does not demonstrate that any
entity has taken a license to any claim of the ’052 patent, much less for what
specific reason. There is only Patent Owner’s bare assertion that companies
have taken a license to the ’052 patent. This is not sufficient to create a
presumption of nexus between any license and the merits of the ’052 patent,
and Patent Owner has not separately proved a nexus between any license
and the ’052 patent.
In that regard, the Court of Appeals for the Federal Circuit has stated:
Antor, beyond alleging the existence of a number of licenses, has
not asserted any nexus between the merits of the invention and
the licenses themselves. See In re GPAC Inc., 57 F.3d 1573,
1580 (Fed. Cir. 1995). Antor merely lists the licensees and their
respective sales revenue. The licenses themselves are not even
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part of the record. Antor provides no evidence showing that the
licensing program was successful either because of the merits of
the claimed invention or because they were entered into as
business decisions to avoid litigation, because of prior business
relationships, or for other economic reasons.
In re Antor Media Corp., 689 F.3d 1282, 1293–94 (Fed. Cir. 2012). Here,
Patent Owner’s assertions are even less than that of the patentee in Antor, in
that Patent Owner has not identified any specific licensee of the ’052 patent.
Also, as in Antor, Patent Owner has not submitted any actual license,
redacted or non-redacted, for any patent, into the record.
Accordingly, there is no presumption of nexus, and Patent Owner has
not separately proved the required nexus for the alleged licensing and
commercial success. Thus, there is not a legally and factually sufficient
connection between the evidence of licensing and the patented invention.
2. Alleged Satisfaction of Long-Felt but Unresolved Need
Patent Owner also asserts that the ’052 patent satisfied a long-felt but
unresolved “pressing need for [a] smaller, more cost effective and reliable
endoscope.” PO Resp. 41. Patent Owner cites an article by Orthopaedic
Product News as recognizing Patent Owner’s incorporation of a reduced-
area CMOS imaging device. Id. at 42–43. The article states:
A Denver-based company has developed and patented high
resolution, sturdy and inexpensive CMOS sensors
(Complimentary Metal Oxide Semiconductors) that are actually
built into the distal tip of arthroscopes, as well as other
commonly used endoscopes.
It is evident that we have needed an appropriate and thoughtful
improvement to the scope and video system as we currently
know it. The development of the CMOS sensor has addressed
the needs of the surgeon, surgical facility and the patient while
addressing the important issues of video image, thoughtful
design and cost-effectiveness. This disposable scope system
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represents a significant advancement for arthroscopists, cost-
conscious hospitals and surgeon centers and I believe it will be
embraced by the endoscopy companies. The justification that
my peers and I always recall is that if we can’t see . . . we can’t
do the procedure.
Ex. 2089, 2–3 (cited at PO Resp. 42–43). For numerous reasons, Patent
Owner’s assertion that the claimed invention of the ’052 patent satisfied a
long-felt but unresolved need is not supported by the evidence of record.
A long-felt need can be established by objective evidence that the
invention has provided a long-awaited, widely accepted, and promptly
adopted solution to a problem extant in the art, or that others had tried but
failed to solve that problem. In re Mixon, 470 F.2d 1374, 1377
(CCPA 1973); In re Allen, 324 F.2d 993, 997 (CCPA 1963). Patent Owner
has not provided such evidence.
First, Patent Owner does not explain why we should find that the
referenced Denver-based company in the news article is the Patent Owner.
PO Resp. 42–43. Second, Patent Owner does not explain whether the
referenced tips of arthroscopes and endoscopes with a built-in CMOS sensor
make use of the claimed invention of the ’052 patent, and if so, which
claims. Id. Third, Patent Owner does not indicate whether any significant
features are included in the referenced tips of arthroscopes and endoscopes,
which are not recited in any claim of the ’052 patent. Id. Fourth, Patent
Owner does not explain how long a pressing need purportedly existed for a
smaller, more cost effective and reliable endoscope. Id. Fifth, Patent Owner
has not identified any prompt adoption of the claimed invention by anyone
nor has Patent Owner identified any specific prior failed attempts to resolve
the alleged need. Id. Sixth, this single article does not sufficiently
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demonstrate widespread recognition by those with ordinary skill in the art
that there was a problem without a solution in the industry. Id.
Finally, even assuming that there was a long-felt but unresolved need
for a smaller and more cost-effective arthroscope or endoscope, Patent
Owner has not shown a nexus to the claimed invention, and none can be
presumed. The challenged claim does not require either an arthroscope or
endoscope. Assuming that the article is referring to a product of Patent
Owner, Patent Owner has not shown that the product is “coextensive” with
any challenged claim from the perspective of satisfaction of a long-felt but
unresolved need. See Fox Factory, 944 F.3d at 1373.
For the foregoing reasons, there is not a legally and factually
sufficient connection between the alleged long-felt but unresolved need and
the claimed invention.
3. Alleged Industry Skepticism
Patent Owner further asserts that, at the time of the invention of the
’052 patent, the industry was skeptical regarding the use of CMOS imagers
for medical imaging because CMOS imager quality was “meaningfully
lower than [the image quality] available with CCD [charged coupled device]
imager devices.” PO Resp. 43–44. Patent Owner cites a declaration of a
named inventor of the ’052 patent that was submitted in a related patent
application. Id. In that declaration, the inventor states:
There has been great skepticism in the industry as to the
capability to use CMOS technology in medical imaging
applications. CMOS imagers have been characterized as not
being capable of producing high quality images. Despite this
skepticism, we were able to locate companies developing CMOS
technology that might be useable within an imaging device . . .
[that] utilized a CMOS pixel array with timing and control placed
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together on one plane or circuit board, and remaining processing
circuitry either placed in a remote control box, or on other circuit
boards placed closely adjacent the CMOS pixel array.
Ex. 1003, 84–85 (¶¶ 7–8).
Patent Owner has not shown sufficient nexus between the alleged
industry skepticism and the claimed invention. As Petitioner correctly
observes (Reply 26), the alleged industry skepticism pertains to the image
quality of CMOS image sensors incorporated in medical devices. Yet, the
challenged claim does not require incorporation of the CMOS image sensor
in a medical device, such as an endoscope, and the challenged claim does
not require a minimum or threshold level of image quality. The claimed
features are not coextensive or commensurate in scope with the purported
industry skepticism. See Fox Factory, 944 F.3d at 1373. Further, the
testimony by the inventor that the claimed invention overcame the alleged
skepticism is conclusory. Ex. 1003, 84–85. The inventor states that the
industry was skeptical that CMOS imagers could produce high quality
images and that he and his co-inventors produced an imaging device that
produced an extremely high quality image, but he cites no evidence to
support this testimony. Id. Further, he does not provide any indication of
what he means by an extremely high quality image or what improvement
with respect to imaging quality the claimed invention allegedly obtained. Id.
Thus, for these reasons, the proffered alleged industry skepticism provides
little objective evidence of non-obviousness.
4. Alleged Unexpected Results
According to Patent Owner, its named inventors discovered an
unknown but very important advantage that the claimed invention has over
CCD type imagers, i.e., the capability to reject radio frequency interference
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(RFI) emitted by electrosurgical generators used during surgery. PO Resp.
44–45. Patent Owner notes that an inventor’s declaration was submitted
during prosecution of a related application, wherein it was stated that CCD
devices cannot be used near an electrical surgical generator without
requiring significant shielding, and that even with shielding, RFI levels are
only brought to a reasonable level, which may still result in an obstructed
view of the surgical area. Id. (citing Ex. 1003, 85 (¶ 11)). Patent Owner
further notes that in that declaration, the inventor further states that “[a]fter
testing several types of CMOS configurations, we concluded that remoting
processing circuitry from the CMOS imager and timing and control circuits
eliminated the need for shielding.” Id. (citing Ex. 1003, 85 (¶ 12)).
We first find that Patent Owner has not shown sufficient nexus
between the alleged unexpected result and the challenged claim. The
alleged unexpected result is based on RFI caused by electrosurgical
generators used during surgery. However, the challenged claim does not
require that its device is incorporated in a medical surgical device, such as
an endoscope. Thus, the unexpected result, even if true, is not
commensurate in scope with what has been claimed. “In order to establish
unexpected results for a claimed invention, objective evidence of non-
obviousness must be commensurate in scope with the claims which the
evidence is offered to support.” In re Clemens, 622 F.2d 1029, 1035 (CCPA
1980) (citations omitted).
Further, to establish a showing of unexpected results, Patent Owner
has to compare the claimed invention with the closest prior art. In re
Fracalossi, 681 F.2d 792, 794 (CCPA 1982); In re Fenn, 639 F.2d 762, 765
(CCPA 1981). Patent Owner has not shown that the closest prior art is a
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CCD imager. According to Patent Owner, CMOS technology and CCD
technology are very different from each other. PO Resp. 4–12. On that
basis, it would appear that closer prior art than a CCD device would be a
CMOS imager, such as that disclosed in Swift.
Additionally, Dr. Neikirk testifies that the alleged discovery was not
unexpected but, rather, predictable. Ex. 1004 ¶ 299. Dr. Neikirk explains as
follows:
[A]s the declaration notes, they were using endoscopic cameras
around an “electrosurgical generator” that was used to “cut or
cauterize” tissue. ’839 File History, 85. It would have been
understood by a person of ordinary skill in the art that such an
electrosurgical generator would create a large amount of
electromagnetic (“EM”) radiation. Moreover, while the
declaration does not clearly state how many wires were in the
CCD system at issue, a person of ordinary skill in the art would
have understood that such EM radiation would cause radio
frequency interference (“RFI”) in a system, and would have a
more significant adverse effect on a system with more wires than
a system with fewer wires. It was also known that a CCD sensor
could have many more wires than a CMOS sensor. For example,
according to the declaration, the prior art CCD sensor identified
in the declaration (“Pelchy”) includes “a large number of
transmission wires 33 which interconnect the circuit boards
placed perpendicular to the pixel array with an external processor
13.” ’839 File History, 92. Thus, in a CCD sensor with many
wires, the radio frequency interference would have a relatively
large effect on the quality of images produced by the image
sensor. On the other hand, CMOS sensors require only a few
wires to connect to the pixel array, and thus interference created
in a CMOS image sensor would be much smaller than in such a
CCD arrangement.
Ex. 1004 ¶ 299. This testimony is not rebutted by Patent Owner’s expert,
Dr. Lebby. Patent Owner does not identify any testimony of Dr. Lebby
conveying that it would have been unexpected to one of ordinary skill in the
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art that a CMOS sensor with remotely located processing circuitry would
have no need for RFI shielding.
Dr. Neikirk’s testimony is rational, and we credit his testimony over
the testimony of Patent Owner’s inventor, who provides no explanation as to
why it was purportedly unexpected that, as compared to CCD devices, a
CMOS imager with remotely located processing circuitry requires no RFI
shielding.
For the foregoing reasons, Patent Owner has not established that the
alleged unexpected result would have been unexpected to an ordinarily
skilled artisan. Further, even assuming the alleged unexpected result truly
would have been unexpected to an ordinarily skilled artisan, Patent Owner
has not shown sufficient nexus between the unexpected result and the
claimed invention.
5. Alleged Industry Praise
Patent Owner asserts that it has received industry praise. PO
Resp. 45–46. Specifically, Patent Owner states:
Micro-Imaging Systems won the Orthopedics This Week’s 2016
Sports Medicine Technology Award for its “Distally mounted
CMOS Sensor for disposable/reusable and rigid/flexible scopes”
which features the claimed reduced–area imaging device,
Orthopedics This Week noted the benefits of Patent Owner’s
CMOS sensors that could be placed in the tip of an endoscope.
Id. (citing Ex. 2090, 14–15). The cited portion of Exhibit 2090 reads as
follows:
Current cameras and endoscopes (all types) have remained
unchanged for decades and degrade from “Day 1” of utilization
thus causing undesirably compromise of visual clarity at an
extremely inconvenient time! This technology allows for
flexible or rigid applications as a reusable or a disposable with
significant value. Utilization of this technology can eliminate the
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five things that degrade current and problematic technology. It
has the real benefit of reducing repair costs as well as OR “down
time” and the need to acquire costly surplus inventory to avoid
catastrophes.
Ex. 2090, 14–15.
Patent Owner has not identified a sufficient nexus between the above-
quoted text in Exhibit 2090 and the features of the invention claimed in the
’052 patent, and between the “award” and the features of the invention
claimed in the ’052 patent. There is insufficient detail in the above-quoted
text to associate that which is praised with the features claimed in the ’052
patent. The references to “this technology” do not reveal specific features of
what is being praised. Even assuming that “this technology” includes the
features of the claimed invention, the praise also is directed to additional
features not recited in the challenged claim, i.e., an imaging device mounted
on an endoscope. The challenged claim does not require the image sensor to
be mounted on or affixed to an endoscope. Thus, Patent Owner has not
shown that the alleged industry praise is “coextensive” with the challenged
claim. See Fox Factory, 944 F.3d at 1373. There is not a legally and
factually sufficient connection between the alleged industry praise and the
claimed invention.
6. Allegedly Proceeding Contrary to Accepted Wisdom
Patent Owner argues:
Prior to the ’052 Patent, the accepted wisdom in the art
was that CMOS imagers should be implemented in an on-chip
integration manner. Dr. Eric Fossum8 spearheaded the

8 Dr. Fossum is the author of the article titled “Active-pixel sensors
challenge CCDs,” published in Laser Focus World. Ex. 1048. Another
exhibit (Ex. 1060), a Business Week article, discusses a design for a
“camera-on-a-chip” by Dr. Fossum. Ex. 1060, 1.
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development of the CMOS camera on a chip design efforts.
Fossum’s design would enable full realization of the benefits of
a CMOS imager boasting numerous benefits over the dominant
CCD image sensor. For example, the CMOS camera on a chip
would enable designers to “make a camera small and cheap
enough to open vast new markets for everything from dolls that
[‘]see[’] to rear-bumpers cameras that would help drivers back
up.” Ex. 1060. However, Patent Owner recognized that a need
still existed for a reduced area imaging device which could be
used in even smaller devices, such as endoscopic instruments, in
order to view areas that are particularly difficult to access, and to
further minimize patient trauma by an even smaller diameter
invasive instrument. As a result, the ’052 Patent describes and
claims a reduced area imaging device which took advantage of
Fossum’s revolutionary “camera on a chip” technology, but
rearranged the circuitry to separate out circuitry so that a further
minimum profile could be achieved.
PO Resp. 46–47.
Patent Owner does not cite to any expert testimony that supports the
position that a CMOS imager with off-chip circuitry was inoperative,
unworkable, or undesirable. In fact, the record evidence is to the contrary.
Dr. Neikirk specifically identifies examples of prior-art disclosures of
CMOS imagers with off-chip configurations. Ex. 1004 ¶¶ 40 (identifying
Swift and Monroe), 77 (“Monroe teaches a CMOS imager”), 229.
Further, the record evidence does not support Patent Owner’s
assertion that the accepted wisdom in the art was that CMOS imagers should
be implemented only in an on-chip integration manner, and we do not find
that to be so. Also, Patent Owner appears to have not accounted for the
basic skills or fundamental engineering principles that would have been
possessed by one with ordinary skill in the art, e.g., offloading some
components to another chip or another circuit board would decrease the
required size for the containing chip or circuit board. For example,
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Dr. Neikirk testifies that “a person of ordinary skill would have known that
components could be placed on a number of circuit boards and arranged in
any number of different ‘planes’ based on the design needs and intended
applications of a given device.” Ex. 1004 ¶ 40. Patent Owner does not
identify any contrary testimony from its expert, Dr. Lebby, and we credit
this testimony from Dr. Neikirk.
For the foregoing reasons, Patent Owner’s argument that it proceeded
against accepted wisdom adds very little to the strength of its evidence on
objective indicia of nonobviousness.
7. Summary of Objective Evidence of Nonobviousness
For the foregoing reasons, the objective evidence of nonobviousness
relied on by Patent Owner is weak. As set forth below, we have considered
this evidence together with the evidence discussed below, to arrive at a
conclusion of whether Petitioner has proven that the challenged claim would
have been obvious.
C. Asserted Obviousness of Claim 2 over Swift, Ricquier, and Suzuki
Petitioner asserts that claim 2 would have been obvious over Swift,
Ricquier, and Suzuki. Pet. 15–50.
1. Swift
Swift published on December 21, 1995. Ex. 1005, code (43). The
earliest priority date claimed for the ’052 patent is based on the priority
filing date of U.S. Patent Application No. 08/944,322, which is October 6,
1997. Ex. 1001, code (63). Thus, Swift is prior art to the ’052 patent under
35 U.S.C. § 102(b). Patent Owner does not contest the prior art status of
Swift. See generally PO Resp.
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Swift is titled “Miniature Cameras.” Ex. 1005, code (54). Swift
teaches a miniature video camera that includes a housing and an image
sensor mounted in the housing. Id. at code (57), 4:11–15, 8:31-9:5, Fig. 2.
Figure 2 of Swift, reproduced below, illustrates miniature camera 50 (id. at
7:10–13):

As shown in Figure 2 above, miniature camera 50 has a housing with front
portion 10, center portion 20, and rear portion 30, and all of these portions
have a substantially circular cross-section. Id. at 7:10–15. Miniature camera
50 also includes imager sensor 51 mounted on circular circuit board 52;
circuit board 53; miniature microphone 54; cable 55; and wide angle lens 57.
Id. at 8:31–9:25. Circuit board 53 is mounted on circuit board 52
substantially at a right angle. Id. at 9:5–7. Circuit components mounted on
circuit board 53 power image sensor 52, process image signals received
from image sensor 52, and process audio signals from miniature microphone
54. Id. at 9:8–13. Cable 55 provides a connection between miniature video
camera 50 and external circuitry. Id. at 9:13–17.
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Image sensor 51 is preferably of a CMOS/APS (Active Pixel Sensor)
type. Ex. 1005, 10:1–2.
2. Suzuki
Suzuki issued on August 3, 1993. Ex. 1015, code (45). Thus, Suzuki
is prior art to the ’052 patent under 35 U.S.C. § 102(b). Ex. 1001, code (63).
Patent Owner does not contest the prior art status of Suzuki. See generally
PO Resp.
Suzuki is titled “Reduced Diameter Camera Head for [a] Solid-State
Image Pickup Device And Method of Producing Same.” Ex. 1015, code
(54). Figure 2, reproduced below, is a cross-sectional view of camera head
2:

Figure 2 above shows camera head 2 with image pickup unit 22, the latter of
which comprises solid-state image pickup chip 221 and circuit module 222.
Ex. 1015, 2:38–41. Suzuki discloses the use of an 8.5 mm solid-state image
pickup chip with an outer camera head diameter of about 10 mm. Id. at 4:6–
11.
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3. Ricquier
Ricquier is a conference paper. Exs. 1033, 1038. According to
declarations submitted by Petitioner, Ricquier was disseminated and
available in a library by May 1994. Ex. 1004 ¶¶ 302–308; Ex. 1033, 1; Ex.
1038, 1.9 Ricquier, thus, is prior art to the ’052 patent under 35 U.S.C.
§ 102(b). Ex. 1001, code (63). Patent Owner does not contest the prior art
status of Ricquier. See generally PO Resp.
Ricquier describes a dedicated imager for a camera operating in
several resolutions. Ex. 1038, 2. The imager includes a CMOS array of 256
x 256 pixels addressable by column and row using a timing controller on an
off-chip driving unit. Id. at 2–4. Petitioner submitted an annotated copy of
Figure 1 of Ricquier, reproduced below:

9 These cites refer to the page numbers added by Petitioner to Exhibits 1033
and 1038.
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Pet. 36. The unannotated version of Figure 1 above is a schematic
representation of Ricquier’s sensor architecture. Ex. 1038, 3. As illustrated
above, Petitioner maps the recited pre-video signal of claim 2 to the output
of this sensor architecture. Pet. 34–37. Petitioner argues that readout in this
sensor architecture is done by controlling the clock scheme using a timing
controller on an off-chip driving unit for driving the row selection, column
selection, and reset signal inputs. Id. at 37. Those inputs are identified via
annotations in the figure above. Id. at 36. Ricquier does not state whether
its off-chip driving unit is on the same circuit board with its CMOS pixels.
4. Combination of Swift and Ricquier
Petitioner argues that an ordinarily skilled artisan would have
combined Swift’s and Ricquier’s teachings. Pet. 20–24. In particular,
Petitioner asserts that an ordinarily skilled artisan would have combined (i)
Swift’s teachings of a miniature camera with a CMOS image sensor with (ii)
Ricquier’s teachings of a CMOS pixel array and an off-chip timing
controller to yield a miniature camera with an image sensor, comprising a
CMOS pixel array, and a timing controller. Id. at 22–23. Petitioner further
argues that an ordinarily skilled artisan would have placed the timing
controller in this combination on the same circuit board as the image sensor.
Id. at 23. Patent Owner disputes that an ordinarily skilled artisan would
have made this combination. PO Resp. 25–35.
In this section, we first address the parties’ arguments regarding
whether an ordinarily skilled artisan would have combined Swift’s and
Ricquier’s teachings in the manner proposed by Petitioner. Then, we
provide our analysis.
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a. Parties’ Arguments
As mentioned, Petitioner argues that an ordinarily skilled artisan
would have been motivated to combine Swift’s and Ricquier’s teachings.
Pet. 20–24. Petitioner asserts that Ricquier teaches using a CMOS array for
a CMOS sensor. Id. at 22. Petitioner further asserts that Ricquier teaches
the advantages of its imager’s selective addressability, multiple resolutions,
and data rates. Id. at 24 (citing Ex. 1038). Petitioner further argues that
Ricquier teaches the advantages of using an off-chip timing controller,
which adds flexibility in making design choices to fill components into
available space and stack those components for a more compact camera
head. Id. at 22–23. Further, Petitioner asserts that an ordinarily skilled
artisan would have been motivated to locate Ricquier’s off-chip timing and
control circuitry in Swift’s miniature camera on the opposite side of circuit
board 52 to image sensor 51 to minimize the camera’s overall size. Id. at 23
(citing Ex. 1016, 4–5; Ex. 1015, Fig. 2). Petitioner further argues that
placing components in this stackwise arrangement is a common design
consideration for portable devices. Id. at 23–24 (citing Ex. 1045, 15, 20;
Ex. 1016, 3–4). Further, Petitioner argues that an ordinarily skilled artisan
would have had a reasonable expectation of success in combining Swift and
Ricquier in this manner. Id.
Patent Owner argues that an ordinarily skilled artisan would not have
been motivated to combine Swift’s and Ricquier’s teachings. PO Resp. 25–
35. Patent Owner argues that Swift “is a reference fundamentally at odds
with itself.” PO Resp. 14. Patent Owner continues: “[a]lthough Swift states
that its image sensor ‘is preferably of a CMOS/Aps (Active Pixel Sensor)
type,’ Swift’s description of its system architecture betrays the reality that
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the author merely contemplated placing a CMOS imager within the
incompatible CCD system architecture.” Id. (citing Ex. 1005, 10) (emphasis
omitted). Patent Owner further argues that “the author presumably gave no
thought to the fact that the two systems are incompatible.” Id. Patent
Owner asserts, however, that: “[n]evertheless, Swift discloses an
embodiment in which the camera uses Dr. Fossum’s CMOS sensor,
disclosed in Ex. 1048.” Id. at 16.
Patent Owner asserts that an ordinarily skilled artisan would not have
combined Swift’s embodiment with Ricquier’s off-chip timing and control
circuit because Swift’s embodiment includes Dr. Fossum’s sensor, which
includes timing and control circuitry on the same chip as the imager. PO
Resp. 25–27. Patent Owner argues that Figure 7 of Swift shows that Swift’s
sensor is a camera on a chip embodiment because it has a portion for circuit
components. Id. at 26. Patent Owner further argues that Figure 7 of Swift
shows a similar sensor structure to that shown in the Laser World article
illustrating Dr. Fossum’s sensor. Id. at 27 (citing Ex. 1060, 2). Patent
Owner argues that no evidence in the record shows that an ordinarily skilled
artisan would have been motivated to de-integrate these features of the
Swift/Fossum camera on a chip. Id. at 27–28.
Patent Owner further argues that Ricquier is silent with respect to
minimizing a device’s size or profile area. PO Resp. 28. Further, Patent
Owner asserts that an ordinarily skilled artisan would have kept the camera-
on-the-chip design to minimize camera size. Id.
Patent Owner further argues that Petitioner has not shown that there
were known advantages of using an off-chip timing controller. PO Resp. 29.
Patent Owner contends that Ricquier discloses no such advantages. Id.
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Further, Patent Owner asserts that a reason Ricquier chose CMOS was that
its processing electronics could be integrated into the same chip as the pixel
array. Id.
Patent Owner additionally argues that flexibility for fitting
components into available space would not have motivated Petitioner’s
combination because an ordinarily skilled artisan would not have moved
Swift’s timing and control circuitry off chip. PO Resp. 30. Patent Owner
also argues that Petitioner relies on the design choice doctrine to place the
timing and control circuitry in its proposed combination, but the choice of
where to locate the timing and control circuitry is not a design choice,
because the recited placement solved a stated problem and gave rise to
unexpected results. Id. at 30–31. Patent Owner asserts that Ricquier is
silent with respect to noise reduction. Id. Further, Patent Owner argues that
the timing and control circuits should be placed on the same planar structure
with the pixel array to reduce noise. Id. at 32.
Patent Owner further argues that Swift’s camera-on-a-chip
embodiment already has the advantages of selective addressability and
multiple resolution, so selective addressability and multiple resolutions
would not have motivated an ordinarily skilled artisan to combine Swift’s
and Ricquier’s teachings. PO Resp. 33.
Patent Owner also argues that Ricquier teaches away from using the
off-chip driver that it used in its tests. Pet. 34. Patent Owner notes that
Ricquier describes cointegration of processing electronics as a goal. Id.
In its Reply, Petitioner argues that Patent Owner’s arguments are
based on an inaccurate premise that Swift only teaches a camera-on-a-chip.
Pet. Reply 2–3. Petitioner argues that Swift expressly teaches that
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processing circuitry resides off-chip on circuit board 53. Id. at 4. Petitioner
further argues that Swift’s disclosure of a CMOS/APS (Active Pixel Sensor)
type does not reference any specific sensor or product. Id. Further,
Petitioner argues that the prior art confirms that CMOS sensors were not all
camera-on-a-chip. Id. at 5. Petitioner also argues that there is too little
similarity between Swift’s Figure 7 and Fossum’s camera on a chip to limit
Swift to Fossum’s disclosures. Id. Further, Petitioner asserts that Ricquier
teaches using off-chip timing and control circuitry. Id. at 6.
In its Sur-reply, Patent Owner argues that Swift discloses a CMOS
APS camera-on-a-chip image sensor. Sur-reply 3. Patent Owner further
argues that the design uses Fossum’s camera-on-a-chip sensor. Id. at 3–4.
Patent Owner argues that the industry equated APS CMOS imagers with
camera-on-a-chip design. Id. at 4. Patent Owner further argues that benefits
for the camera-on-a-chip design were known. Id. at 5. Patent Owner also
argues that the space shown in Figure 7 of Swift that does not include the
pixels is for processing because CMOS sensors would not be fabricated with
empty space. Id. Patent Owner further argues that Swift discloses using
either a camera-on-the-chip design or a CCD design. Id. at 9. Patent Owner
also argues that Swift’s voltage is consistent with a CCD design. Id. at 10–
11.
b. Analysis
We find that an ordinarily skilled artisan would have been motivated
to combine Swift’s and Ricquier’s teachings in the manner proposed by
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Petitioner.10 Ex. 1004 ¶¶ 237–240; Ex. 1086 ¶ 15. We further find that an
ordinarily skilled artisan would have had a reasonable expectation of success
in so doing. Ex. 1004 ¶ 240
First, many of the disputes between the parties regarding the
motivation to combine these teachings concern whether Swift teaches or
suggests the use of a CMOS sensor with off-chip circuitry. Petitioner argues
that Swift teaches such an embodiment, whereas Patent Owner argues that
Swift only teaches CMOS camera-on-chip embodiments, where all of the
circuitry is on-chip. We find that Swift teaches a CMOS sensor with off-
chip circuitry. In particular, Swift discloses that the “image sensor 51 is
preferably of a CMOS/APS (Active Pixel Sensor) type.” Ex. 1005, 10:1–2.
Swift further discloses that “image sensor 51 is mounted on circular printed
board 52.” Id. at 8:34–35. Further, Swift discloses that another printed
circuit board, “printed circuit board 53,” has “[v]arious circuitry components
. . . mounted . . . to . . . process image signals.” Id. at 9:8–10. Thus, Swift
discloses a CMOS sensor on circuit board 52 with off-chip processing
circuitry (i.e., circuitry that is not on the sensor chip and, in fact, is not on
the same circuit board as the sensor). 1004 ¶¶ 229–230.
Dr. Neikirk testifies that locating Ricquier’s timing controller to the
opposite side of circuit board 52 from image sensor 51 permits flexibility for
fitting components into available space to allow for a more compact camera
head. Ex. 1004 ¶ 239; Ex. 1038, 3. The evidence of record supports this

10 We make our findings and determinations, and perform our analysis
regarding the asserted obviousness of the challenged claims, with full
consideration of the objective evidence of nonobviousness discussed in
Section III.B, above.
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testimony, and we credit this testimony. Ex. 1016, 4. Dr. Lebby testifies
that an ordinarily skilled artisan would put the timing and control circuitry
on the same planar structure with the image sensor. Ex. 2088 ¶ 19. With
this placement, the timing and control circuitry would be on the same side of
circuit board 52 as image sensor 51. Id. (testifying that an ordinarily skilled
artisan would not want to place the timing and control circuitry on the
opposite side of that circuit board). Either placement of the timing and
control circuitry, however, would satisfy claim 2, because claim 2 merely
requires that the timing and control circuitry be on the recited first circuit
board (circuit board 52). Ex. 1001, 21:64–22:38.
Further, as mentioned, we do not agree with Patent Owner that Swift’s
CMOS disclosures are limited to camera-on-a-chip embodiments. Although
Swift discloses an alternative embodiment where “[a] single circuit board
(e.g., circular) may be provided instead of the two circuit boards 52 and 53”
and the use of a single circuit board in this alternative embodiment is
consistent with a CMOS camera-on-a-chip design, Swift merely presents
this as an alternative embodiment. Ex. 1005, 9:20–21. Swift’s disclosure of
this alternative embodiment does not negate its teaching of a CMOS
embodiment with two circuit boards (an embodiment with off-chip
circuitry).
We also do not agree with Patent Owner that Swift’s reference to the
Laser World Article (Ex. 1060) means that only the CMOS chip that could
be used with Swift is the one shown in the article. PO Resp. 25–27. Swift
merely informs an ordinarily skilled artisan that “[f]urther information on
APS-type sensors may be found in the publication ‘Laser Focus World,’
June 1993, Page 83.” Ex. 1005, 10:4–6. Swift does not state that the
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particular CMOS/APS sensor shown in that article is the only CMOS/APS
sensor that could be used as its imager. Id. To the contrary, Swift discloses
an embodiment with a CMOS sensor with off-chip circuitry. Id. at 8:31–
10:6.
We also do not agree with Patent Owner that Swift “is a reference
fundamentally at odds with itself.” PO Resp. 14. Patent Owner argues that
“Swift’s description of its system architecture betrays the reality that the
author merely contemplated placing a CMOS imager within the
incompatible CCD system architecture.” Id. We do not find that Swift
teaches only CCD architectures. Swift never mentions the use of a CCD in
its system. See generally Ex. 1005; Ex. 1086 ¶ 16. And we credit Dr.
Neikirk’s testimony that CMOS sensors with off-chip circuitry were known.
Ex. 1004 ¶¶ 77, 161–165, 238, 259–263; Ex. 1086 ¶ 19; see also Ex. 1007,
3:36–62, 8:8–11, Fig. 3; Ex. 1038, 2–4. Further, we do not agree with
Patent Owner’s argument that the fact that Swift’s camera may have a
maximum dimension that is larger than the camera disclosed in the ’052
patent or can operate at a higher voltage means it uses a CCD imager. PO
Resp. 14–16; Ex. 2088 ¶¶ 97–98. Swift discloses a 12 volt operating voltage
for the camera. Ex. 1005, 15:28–31. The ’052 patent indicates the power
for its preferred imaging device “can be a 1.5 to a 12 volt source.” Ex. 1001,
9:44–47. Further, the voltage for the camera power can be higher than the
voltage provided to the imager. Ex. 1086 ¶ 18.
We also do not agree with Patent Owner that Figure 7 of Swift shows
that Swift only uses a CMOS camera-on-a-chip embodiment. PO Resp. 25–
27. Even if we were to accept Patent Owner’s argument that Figure 7 shows
space where circuitry could be placed on image sensor 201, Swift still
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discloses that its image sensor is placed on board 52 and circuitry to process
image signals are mounted on circuit board 53. Ex. 1005, 9:7–13; Ex. 1086
¶ 14. Thus, even if some circuitry were placed on imager 201, Swift still
teaches placing circuitry for processing images off-chip. Ex. 1086 ¶ 14.
Second, we find that an ordinarily skilled artisan would have been
motivated to combine Swift’s CMOS embodiment with off-chip circuitry
with Ricquier’s teachings of a CMOS pixel array to obtain the advantages of
selective addressability and multiple resolutions. Ex. 1038, 2; Ex. 1004
¶ 239. Patent Owner does not dispute that Ricquier’s CMOS array has those
advantages. PO Resp. 33. Patent Owner argues, however, that Swift only
discloses using Fossum’s camera-on-a-chip, which has the same advantages,
so the advantages of selective addressability and multiple resolutions would
not have motivated an ordinarily skilled artisan to use Ricquier’s CMOS
array with Swift. Id. As discussed above, we disagree with Patent Owner’s
argument that Swift only discloses a CMOS camera-on-a-chip embodiment.
Petitioner’s proposed combination involves Swift’s CMOS embodiment
with off-chip circuitry, so, for that combination, Petitioner does not need to
provide a motivation to alter Fossum’s camera-on-a-chip by demonstrating
advantages that Fossum’s imager lacks.
Patent Owner’s expert, Dr. Lebby, testifies that all CMOS sensors
have the advantages of selective addressability and multiple resolutions.
Ex. 2088 ¶ 120. We do not credit that testimony, however, because it is
inadequately supported. Dr. Lebby cites only one article to support that
testimony and that article itself does not disclose that all CMOS sensors
have such advantages. Id. (citing Ex. 1060, 2).
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Third, an ordinarily skilled artisan would have been motivated to
place timing and control circuitry on circuit board 52. Ex. 1004 ¶ 239.
Dr. Neikirk testifies that an ordinarily skilled artisan would have been
motivated to place Ricquier’s timing and control circuitry on the opposite
side of Swift’s circuit board 52 to image sensor 51 to permit flexibility for
fitting components into available space to allow for a more compact camera
head. Ex. 1038, 3, 4; Ex. 1004 ¶ 239. The evidence of record supports this
testimony. Ex. 1016, 4–5 (benefits of mounting image sensor chip on one
side of a circuit board and other circuit components on the circuit board’s
underside include that it “does not require many lead wires, so there is a high
degree of reliability, and excellent matching characteristics . . . [and]
allow[s] for a more compact camera head”); Ex. 1015, Fig. 2 (mounting
circuitry on the opposite side of chip-connecting board 226 from image
pickup chip 221).
Patent Owner does not dispute that an ordinarily skilled artisan would
have included timing and control circuitry on Swift’s circuit board 52. PO
Resp. 30–32. Patent Owner, however, disputes that the timing and control
circuitry would be placed on the opposite side of circuit board 52 from
image sensor 51. Id. Dr. Lebby indicates that timing and control circuitry
would be on the same side of circuit board 52 as image sensor 51 because
timing and control circuitry is part of Fossum’s camera-on-a-chip, which
Swift’s imager uses. Ex. 2088 ¶ 117. Dr. Lebby further testifies that an
ordinarily skilled artisan would have wanted the timing and control circuitry
on the same planar structure with the image sensor (id. ¶ 119), which again
would mean the timing and control circuitry would be on same side of
circuit board 52 as image sensor 52. Id. (testifying that an ordinarily skilled
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artisan would not want to place the timing and control circuitry on the
opposite side of the circuit board). Thus, based on Dr. Lebby’s testimony
the timing and control circuitry would be on the same side of circuit board
52 as image sensor 51.
As discussed above, we do not agree with Patent Owner’s argument
that Swift only discloses camera-on-a-chip CMOS embodiments.
Nevertheless, the disagreement between Dr. Neikirk and Dr. Lebby
regarding where a timing and control circuit would be placed on circuit
board 52 is of no consequence for our analysis of the patentability of claim
2. Claim 2 requires that the recited image sensor includes a first circuit
board with CMOS pixels and timing and control circuitry. Claim 2 does not
specify that CMOS pixels and the timing and control circuitry need to be on
opposite sides of that first circuit board. With either expert’s placement (i.e.,
on the same side or the opposite side of circuit board 52 from image sensor
51), the timing and control circuitry and the CMOS pixels are on the same
circuit board (circuit board 52), thus satisfying the placement requirement of
claim 2.
Fourth, we do not agree with Patent Owner’s argument that Ricquier
teaches that its off-chip driving unit must be placed on the same circuit
board (and chip) as the imager in any actual product. PO Resp. 34–35.
Ricquier merely states: “A CMOS technology was chosen because it offers
the selective addressability together with the possibility of further
cointegration of processing electronics on the same chip.” Ex. 1038, 2. This
statement does not indicate that further cointegration in Ricquier is
mandatory or that such cointegration would necessarily include Ricquier’s
off-circuit driving unit. Ex. 1086 ¶ 30. But even if an ordinarily skilled
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artisan allegedly were to integrate the timing and control circuit from
Ricquier onto the same chip as Swift’s imager, that would not undermine
Petitioner’s showing because claim 2 does not require the timing and control
circuitry to be on a different printed circuit board than the sensor. Ex. 1001,
21:64–22:38.
Fifth, we disagree with Patent Owner’s argument that (i) Petitioner
merely relies on the design choice doctrine to justify its proposed placement
of timing and control circuitry but (ii) the design choice doctrine is
inapplicable because the recited placement of that circuitry solved a stated
problem and produced unexpected results. PO Resp. 30–31. For one,
Petitioner does not rely merely on the design choice doctrine to justify its
proposed placement of timing and control circuitry. Pet. 23–24 (citing Ex.
1016; Ex. 1006; Ex. 1045). Further, we do not agree the recited placement
of the timing and control circuitry solved a stated problem or produced
unexpected results. Patent Owner argues that the recited placement of the
timing and control circuitry solved the problem of further miniaturizing the
camera on the chip. PO Resp. 31. Patent Owner, however, also argues that
the camera on the chip inherently contains timing and control circuitry. Id.
at 25–26. Accepting the latter argument, that means that the camera on a
chip has the recited placement (i.e., the timing and control circuitry is on the
same circuit board as the camera on the chip because it is in the camera on
the chip). Thus, the recited placement did not solve any stated problem for a
camera on a chip—with respect to the recited circuit boards, the recited
timing and control circuitry has the same placement as the prior art camera
on a chip. We also do not find that the recited placement of the timing and
control circuitry yielded unexpected results. See Section III.B.4, above.
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Sixth, we do not agree with Patent Owner’s argument that an
ordinarily skilled artisan would not have made the proposed combination
because Ricquier’s off-chip driver would limit the rate at which the on-chip
amplifier can handle charge packets. PO Resp. 33–34. Patent Owner relies
on a reference (Ex. 2034) regarding serial outputs of CCD sensors to support
this argument, but Ricquier and Swift disclose the use of a CMOS sensor.
Id. (citing Ex. 2034, 1:45–52); Ex. 1086 ¶ 29; Ex. 1038, 1, 2, 5, 8; Ex. 1005,
10. We credit Dr. Neikirk’s testimony that the issue addressed in Exhibit
2034 concerning CCD imagers is not applicable to Ricquier’s and Swift’s
CMOS sensors. Ex. 1086 ¶ 29.
In sum, we find that an ordinarily skilled artisan would have been
motivated to combine Swift’s and Ricquier’s teachings in the manner
proposed by Petitioner. Ex. 1004 ¶¶ 237–240; Ex. 1086 ¶ 15. We further
find that an ordinarily skilled artisan would have had a reasonable
expectation of success in making that combination. Ex. 1004 ¶ 240.
5. Combination of Suzuki with Swift and Ricquier
Petitioner argues that an ordinarily skilled artisan would have
combined Suzuki’s teachings with those of Swift and Ricquier. Pet 24–27.
In particular, Petitioner argues that an ordinarily skilled artisan would have
combined Swift’s imager apparatus (as modified by Ricquier) with Suzuki’s
teachings of (i) a stacked arrangement of parallel circuit boards and (ii) a
solid-state image pickup chip of 8.5 mm with a 10 mm chassis. Id. Patent
Owner disputes that an ordinarily skilled artisan would have made this
combination. PO Resp. 21–35.
In this section, we first address the parties’ arguments regarding
whether an ordinarily skilled artisan would have combined Suzuki’s
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teachings with Swift’s and Ricquier’s teachings. Then, we provide our
analysis.
a. Parties’ Arguments
Petitioner argues that an ordinarily skilled artisan would have been
motivated to apply Suzuki’s teachings of a stacked arrangement with a small
image pickup chip to Swift’s miniature camera (as modified by Ricquier) to
reduce the camera’s overall size and improve the camera’s stability and
reliability. Pet. 24–25. Petitioner further argues that Swift acknowledges
that its circuit boards can be disposed in directions other than that shown in
its figures. Id. at 25. Further, Petitioner asserts that Suzuki explains that, by
arranging the image sensor and circuit boards so that they are aligned with
each other as illustrated in Fig. 2 of Suzuki, the camera can have an outer
diameter closer to a diagonal length of a solid-state image pickup chip. Id.
Petitioner also asserts that an ordinarily skilled artisan would have had a
reasonable expectation of success in combining Suzuki’s teachings with the
teachings of Swift and Ricquier. Id. at 27.
Patent Owner disputes this purported motivation, arguing that Suzuki
teaches a CCD camera, so an ordinarily skilled artisan would not have
looked to Suzuki for ideas of how to implement a system architecture for a
CMOS camera. PO Resp. 35. Patent Owner further asserts that Swift’s
CMOS sensor is a camera-on-a-chip sensor so it includes circuitry to convert
a pre-video signal to a post-video signal. Id. at 36. Further, Patent Owner
argues that Swift never states that circuit board 53 converts a pre-video
signal to a post-video signal. Id. at 37. In addition, Patent Owner argues
that an ordinarily skilled artisan would not have made Swift’s CMOS sensor
the same size as Suzuki’s sensor because Swift’s camera has far larger
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dimensions than Suzuki’s. Id. at 21. Patent Owner asserts that circuit board
52 in Swift is far larger than 12 mm. Id. at 22.
In its Reply, Petitioner argues that Suzuki’s teachings are not limited
to CCD technology. Pet. Reply 16. Petitioner asserts that Suzuki teaches
the use of a solid state imaging pickup chip, and the term solid-state imaging
encompasses CMOS sensors. Id. at 16–17. Petitioner further argues that
Swift’s disclosure of a maximum dimension of 38 mm for its housing does
not preclude smaller dimensions. Id. at 19.
In its Sur-reply, Patent Owner argues that Suzuki describes a CCD
architecture. Sur-reply 14.
b. Analysis
We find that an ordinarily skilled artisan would have been motivated
to combine the teachings of Suzuki with the teachings of Swift and Ricquier.
First, we find that Suzuki’s teachings regarding image sensor size apply to
CMOS sensors, as well as CCD sensors. Suzuki describes its sensor as a
solid state image pickup chip, rather than referring to it as CCD. Ex. 1015,
4:6–11; Ex. 1086 ¶ 33. In fact, Suzuki does not mention CCDs. See
generally Ex. 1015; Ex. 1086 ¶ 43. Further, the term solid state image
sensor encompasses both CMOS and CCD sensors. Ex. 1004 ¶¶ 42, 48.
We also credit Dr. Neikirk’s testimony that CMOS sensors were
known before the filing of Suzuki. Ex. 1086 ¶ 35. Renshaw (Ex. 1090),
which was publicly available in May 1990, and Shizukuishi (Ex. 1089),
which issued in 1989, both disclose CMOS image sensors. Id.; Ex. 1090, 2,
4 (“Two image array sensors designed and fabricated using a standard two
level metal ASIC CMOS process.”); Ex. 1089, code (45), 2:46–50 (“the
present invention uses a CMOS IC manufacturing process to provide a solid
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state pickup device.”). We further credit Dr. Neikirk’s testimony that
Suzuki’s off-chip driving and amplifications do not limit Suzuki to a CCD,
because driving circuitry can refer to a driving circuit for power. Ex. 1086
¶ 34.
We also credit Dr. Neikirk’s testimony that Suzuki’s design reduces a
camera’s overall size and improves the camera device’s stability and
reliability. Ex. 1004 ¶ 273. Consistent with this testimony, Suzuki discloses
that: “[i]t is an object of this invention to provide a camera head for a solid-
state image pickup device which camera head has an outer diameter closer to
a diagonal length of a solid-state image pickup chip.” Ex. 1015, 1:53–56;
see also id. at 3:61–4:12, 4:30–65. These disclosures support Dr. Neikirk’s
opinion that an ordinarily skilled artisan would apply Suzuki’s teachings to
Swift’s teachings to decrease the size and increase stability and reliability of
Swift’s camera. Ex. 1004 ¶ 242. We further credit Dr. Neikirk’s testimony
that the size of circuit board 52 would not preclude an ordinarily skilled
artisan from reducing the size of camera based on a smaller imager. Ex.
1086 ¶ 40. With a smaller imager, an ordinarily skilled artisan can use a
smaller board (52) on which to mount the imager. Id.
As discussed above, we do not agree with Patent Owner that Suzuki
discloses only CCD sensors. Ex. 1015, 4:6–11; Ex. 1086 ¶ 43. As discussed
in Section III.C.4.b above, we do not agree with Patent Owner that Swift
only discloses a CMOS embodiment with a camera-on-a-chip design.
Further, we do not agree with Patent Owner that the maximum dimensions
disclosed in Swift for its camera would discourage an ordinarily skilled
artisan from using an imager with Suzuki’s disclosed size. PO Resp. 21.
Maximums are not minimums, and we credit Dr. Neikirk’s testimony that an
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ordinarily skilled artisan would use Suzuki’s teachings of imager size to
make Swift’s camera smaller. Ex. 1086 ¶ 40.
In sum, we find that an ordinarily skilled artisan would have
combined the teachings of Swift, Suzuki, and Ricquier (Ex. 1004 ¶¶ 241–
245) and would have had a reasonable expectation of success in so doing (id.
¶ 246).
6. Element-by-Element Analysis of Claim 2
The parties dispute whether Swift, Ricquier, and Suzuki teach the
following limitations in claim 2: (i) “said second circuit board including
circuitry thereon to convert said pre-video signal to a post-video signal,” and
(ii) “wherein a largest dimension of said image sensor along said first plane
is between 2 and 12 millimeters.” Pet. 38–44, 48–50; PO Resp. 21–25, 35–
38. We address both the disputed and undisputed limitations of claim 2
below. The disputed limitations are limitations 2.f and 2.j,11 which are
addressed in sections III.C.6.g and III.C.6.k below.
a. [2.pre] an imaging device
For the preamble of claim 2, Petitioner argues Swift’s miniature
camera is an imaging device.12 Pet. 27. Patent Owner does not dispute that
Swift teaches an imaging device. PO Resp. 19–38.

11 For ease of reference, we use the labels provided in the Petition for the
preamble and limitations of claim 2. Pet. 27–50.
12 Petitioner argues that to the extent the preamble requires that the recited
video monitor be in the same physical housing as the “camera,” that
arrangement would have been an obvious implementation choice. Pet. 28.
No party, however, has argued that this preamble requires that the recited
video monitor be in the recited housing of claim 2, and we do not
independently reach such a conclusion.
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We find that Swift teaches a camera, which is an imaging device.
Swift describes: “[t]his invention relates to cameras and is concerned
particularly, although not exclusively, with miniature cameras.” Ex. 1005,
1:2–5. Swift also describes: “[a] video monitor or TV 154 is provided, to
display a signal received from the camera 152.” Id. at 15:7–9. Thus, Swift
teaches a camera, which is an imaging device. Ex. 1004 ¶¶ 247–249.13
b. [2.a] a housing;
Petitioner argues that Swift teaches limitation 2.a. Pet. 28. In
particular, Petitioner argues that Swift’s camera has a housing comprised of
three housing portions engaged with one another. Id. Petitioner provides
the following annotated version of Figure 2 of Swift:

Pet. 29. In this annotated figure, Petitioner shades housing portions 10, 20,
and 30 yellow to indicate that they constitute the recited housing. Id.

13 For this reason, we do not need to determine whether the preamble of
claim 2 is a claim limitation.
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Patent Owner does not dispute that Swift teaches or suggests limitation 2.a.
PO Resp. 19–38.
We find that Swift teaches this limitation. Swift discloses that “Figure
2 shows the three housing portions 10, 20 and 30 engaged with one another,
to make up the housing, which is generally ovoid, or egg-shaped.”
Ex. 1005, 8:31–33. Swift also describes that “camera 60 comprises a
housing 61.” Id. at 10:26–29. Further when describing housing portions 10,
20, and 30, Swift discloses: “[i]n use, the front and rear housing portions 10
and 30 screw-threadedly engage the central housing portion 20.” Id. at
8:15–16. Thus, Swift teaches limitation 2.a. Ex. 1004 ¶¶ 250–251.
c. [2.b] an image sensor mounted in said housing, said
image sensor including a first circuit board having a
length and a width thereto, wherein said length and
width of said first circuit board define a first plane, said
first circuit board including an array of CMOS pixels
thereon
Petitioner argues that Swift and Ricquier combined teach limitation
2.b. Pet. 29–33. Petitioner asserts that Swift teaches an image sensor
mounted in Swift’s housing where the image sensor (51 and 52) includes a
first circuit board (circular printed circuit board 52) that has a length and
width that define a first plane with the image sensor mounted thereon.
Petitioner provides the following annotated version of Figure 2 of Swift:
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Pet. 31. In the above annotated figure, Petitioner identifies circular printed
circuit board 52 as the recited first circuit board. Petitioner further argues
that Swift’s image sensor is a CMOS active pixel sensor type chip. Id. at 30.
Petitioner argues that Ricquier teaches an array of CMOS pixels for
receiving images. Pet. 31. Petitioner provides the following annotated
version of Figure 1 of Ricquier:
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Pet. 33. In the above annotated figure, Petitioner identifies the array of
pixels for receiving images in Ricquier’s schematic representation of sensor
architecture. Id.
Patent Owner does not dispute that Swift and Ricquier combined
teach limitation 2.b. PO Resp. 19–38.
We find that Swift and Ricquier combined teach this limitation. Swift
discloses that “image sensor 51 is mounted on a circular printed circuit
board 52, which engages within the intermediate bore 23 in the central
housing portion 20, and is clamped in position there by the rear housing
portion 30.” Ex. 1005, 8:31–9:18. Swift further discloses that its “image
sensor is preferably a CMOS sensor.” Id. at 4:11–13. Swift also discloses
that “image sensor 51 is preferably of a CMOS/APS (Active Pixel Sensor)
type. An APS acts similarly to a random access memory (RAM) device,
wherein each pixel contains its own selection and readout transistors.” Id. at
10:1–6. Ricquier discloses: “a dedicated imager has been developed. The
camera can be programmed to operate in several resolutions. This is done
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by binning the signal charges of neighbouring pixels on the sensor plane
itself . . . . This square 256*256 imager was fabricated in a standard 1.5 µm
CMOS technology.” Ex. 1038, Abstract; see also id. at 3. Ricquier further
describes: “[t]he pixel array consists of 256 by 256 square pixels arranged
on a pixel pitch of 19 µm and realised in a 1.5 µm n-well CMOS
technology.” Id. at 5. Ricquier also describes that “images are formed on
the sensor plane.” Id. at 6. Thus, Swift and Ricquier combined teach
limitation 2.b. Ex. 1004 ¶¶ 255–256.
d. [2.c] wherein a plurality of CMOS pixels within said
array of CMOS pixels each include an amplifier
Petitioner argues that Swift and Ricquier combined teach limitation
2.c. Pet. 33–34. Petitioner argues that Swift discloses a CMOS active pixel
sensor and that each active pixel in a CMOS active pixel sensor includes an
amplifier. Id. at 33. Petitioner further argues that Ricquier teaches an array
of CMOS pixels. Id. at 34.
Patent Owner does not dispute that Swift and Ricquier combined
teach limitation 2.c. PO Resp. 19–38.
We find that Swift and Ricquier combined teach this limitation. Swift
discloses that “image sensor 51 is preferably of a CMOS/APS (Active Pixel
Sensor) type.” Ex. 1005, 10:1–6. Each active pixel in a CMOS active pixel
sensor includes an amplifier. Ex. 1004 ¶ 258; see also Ex. 1001, 2:23–25;
Ex. 1041 ¶ 6. Further, as discussed in Section III.C.6.c above, Ricquier
discloses placing CMOS pixels in an array. Ex. 1038, Abstract, 3, 5, 9.
Thus, Swift and Ricquier combined teach limitation 2.c. Ex. 1004 ¶¶ 257–
258.
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e. [2.d] said first circuit board further including timing
and control circuitry thereon, said timing and control
circuitry being coupled to said array of CMOS pixels
Petitioner argues that Swift and Ricquier combined suggest limitation
2.d. Pet. 34–36. Petitioner asserts that Swift’s circuit board 52 is the recited
first circuit board. Pet. 34. Petitioner further argues that Ricquier discloses
circuitry with timing and control circuitry that are coupled to an array of
CMOS pixels. Id. Petitioner provides the following annotated version of
Figure 1 of Ricquier:

Pet. 36. In the above annotated figure, Petitioner identifies timing and
control circuitry in Ricquier’s schematic representation of the sensor
architecture. Id.
Patent Owner does not dispute that Swift and Ricquier combined
suggest limitation 2.d. PO Resp. 19–38.
We find that Swift and Ricquier combined suggest this limitation for
the reasons discussed above. Swift and Ricquier teach “said first circuit
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board.” See Section III.C.6.c, above. Further, Ricquier teaches timing and
control circuitry being coupled to said array of CMOS pixels. In particular,
Ricquier’s “off-chip driving unit” (Ex. 1038, 4) is circuitry that includes a
“timing controller” (id.) to “drive . . . . row selection[s]” (id. at 3) of “X-Y
addressable photodiode array” (id. at 9). Thus, Ricquier’s timing controller
has timing and control circuitry. Ex. 1004 ¶¶ 259–262. Ricquier’s timing
controller is also coupled to Ricquier’s CMOS pixel array. Ex. 1038, Fig. 1;
Ex. 1004 ¶¶ 259, 262. For reasons discussed in Section III.C.4 above, an
ordinarily skilled artisan would have placed the off-chip timing controller on
the same circuit board that includes Swift’s image sensor. Thus, Swift and
Ricquier combined suggest limitation 2.d. Ex. 1004 ¶¶ 259–263.
f. [2.e] said image sensor producing a pre-video signal
Petitioner argues that Ricquier teaches limitation 2.e. Pet. 36–37.
Petitioner asserts that Ricquier discloses producing a pre-video signal from
the image sensor. Id. at 36. Petitioner provides the following annotated
version of Figure 1 of Ricquier:

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Pet. 37. In this annotated figure, Petitioner identifies the arrow in the figure
above the words “to output” as carrying the pre-video signal from Ricquier’s
image sensor. Id.
Patent Owner does not dispute that Ricquier teaches limitation 2.e.
PO Resp. 19–38.
We find that Ricquier teaches that its image sensor produces a pre-
video signal. Ex. 1004 ¶¶ 264–267; see also Ex. 1038, Abstract, 3, 4, Fig. 1.
Thus, Ricquier teaches limitation 2.e. Ex. 1004 ¶¶ 264–267.
g. [2.f] a second circuit board mounted in said housing,
said second circuit board being electrically coupled to
said first circuit board, said second circuit board having
a length and a width thereto, wherein said length and
width of said second circuit board define a second plane,
said second circuit board including circuitry thereon to
convert said pre-video signal to a post-video signal, said
second circuit board being positioned in a stacked
arrangement with respect to said first circuit board, said
second plane of said second circuit board being
substantially parallel to said first plane of said first
circuit board
Petitioner argues that Swift and Suzuki combined teach limitation 2.f.
Pet. 38–44. Patent Owner disputes that Swift and Suzuki teach the
following recitation in limitation 2.f: “said second circuit including circuitry
thereon to convert said pre-video signal to a post-video signal.” PO Resp.
35–38. First, we address the undisputed recitations in limitation 2.f., which
we collectively designate as limitation 2.f.i. Then we address the disputed
recitation, which we designate as limitation 2.f.ii.
i. [2.f.i] a second circuit board mounted in said housing,
said second circuit board being electrically coupled to
said first circuit board, said second circuit board
having a length and a width thereto, wherein said
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length and width of said second circuit board define a
second plane, said second circuit board being
positioned in a stacked arrangement with respect to
said first circuit board, said second plane of said
second circuit board being substantially parallel to
said first plane of said first circuit board
Petitioner argues that Swift and Suzuki combined teach limitation
2.f.i. Pet. 38–44. Petitioner asserts that:
Swift discloses a second circuit board (e.g., “printed circuit board
53”) mounted in said housing (e.g., “printed circuit board 53”
mounted in “rear housing portion 30” as shown in Fig. 2), said
second circuit board being electrically coupled to said first circuit
board (e.g., “circuit board 53” connected to “circuit board 52”
“to … process image signals received” from “image sensor
51…mounted on…circuit board 52”), said second circuit board
having a length and a width thereto, wherein said length and
width of said second circuit board define a second plane (e.g.,
length and width of “circuit board 53” define a second plane), . . .
said second circuit board being positioned in a stacked
arrangement with respect to said first circuit board (e.g., “board
53” rotated parallel to and in a stacked arrangement with respect
to “board 52”), said second plane of said second circuit board
being substantially parallel to said first plane of said first circuit
board (e.g., plane of “board 53” being substantially parallel to
plane of “board 52”).
Pet. 38 (emphasis omitted).
Petitioner further argues that: “Swift discloses the ‘circuit board 53’ is
electrically connected to and receives the ‘image signals’ (pre-video signal)
from ‘image sensor 51’ and includes a ‘video processor’ and ‘circuitry
components’ that convert the received signal into a signal that may be
received by a monitor or television.” Id. at 39. Petitioner further asserts that
“Suzuki discloses a circuit board positioned in a stacked arrangement with
respect to another circuit board attached to an image sensor chip, where the
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planes defined by the lengths and widths of the circuit boards are
substantially parallel to one another (e.g., ‘circuit board 227’ and ‘chip
connecting board 226’ ‘bonded’ to ‘solid state image pickup chip’ ‘are
aligned with each other’ as shown in Figs. 2, 3C), wherein the planes
defined by the lengths and widths of the circuits boards are substantially
parallel (e.g., as shown in Figs. 2, 3C).” Id. at 41 (emphasis omitted).
Patent Owner does not dispute that Swift and Suzuki combined teach
limitation 2.f.i. PO Resp. 19–38.
We find that Swift and Suzuki combined teach this limitation. We
have reviewed the citations provided by pages 38–44 of the Petition for this
limitation and find that those citations and the record as a whole support
Petitioner’s arguments. Thus, we find that Swift and Suzuki combined teach
limitation 2.f.i. Ex. 1004 ¶¶ 270–273.
ii. [2.f.ii] said second circuit board including circuitry
thereon to convert said pre-video signal to a post-
video signal
First we address the parties’ arguments regarding limitation 2.f.ii.
Then we provide our analysis.
(a) Parties’ Arguments
Petitioner argues that Swift teaches limitation 2.f.ii. Pet. 38.
Petitioner maps the recited second circuit board to Swift’s printed circuit
board 53. Id. Petitioner asserts that “Swift discloses the ‘circuit board 53’ is
electrically connected to and receives the ‘image signals’ (pre-video signal)
from ‘image sensor 51’ and includes a ‘video processor’ and ‘circuitry
components’ that convert the received signal into a signal that may be
received by a monitor or television.” Id. at 39.
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Patent Owner disagrees. PO Resp. 35–38. Patent Owner argues that
Swift discloses using CMOS APS sensors disclosed in an article by
Dr. Fossum in Laser World (Ex. 2004) and that these sensors are cameras on
a chip. Id. at 35–36. Further, Patent Owner argues that because Swift’s
CMOS sensor is a camera on a chip, its circuitry for converting a pre-video
signal to a post-video signal would not be on a second circuit board, like
circuit board 53. Id. at 36. Patent Owner further argues that Swift never
states that circuit board 53 has circuitry for converting a pre-video signal to a
post-video signal. Id. at 37. Patent Owner further asserts that Figure 7 of
Swift shows that Swift’s image sensor includes space for processing
circuitry, consistent with a camera-on-a-chip design. Id. at 26. Patent
Owner argues that thus Swift does not teach limitation 2.f.ii. Id. at 38–44.
In its Reply, Petitioner asserts that Swift never limits its sensor to a
camera-on-a-chip. Reply Br. 4. Petitioner further asserts that Swift teaches
that processing circuitry resides off-chip on circuit board 53. Id. at 21.
Petitioner also argues that Swift’s disclosure of a CMOS/APS type does not
reference any specific sensor. Id. at 4–5. Petitioner asserts that Swift
merely states that further information on APS-type sensors may be found in
the Laser World article, Swift does not limit its APS sensors to only those
described in that article. Id. Petitioner also argues that Swift has no
description of the regions of Figure 7 of Suzuki where Patent Owner asserts
processing would be placed. Id. at 5. Further, Petitioner argues that Swift’s
Figure 7 does not show the same layout as the Laser World article. Id. at 5–
6.
In its Sur-reply, Patent Owner argues that Swift expressly references
the design in the Laser World article and thus an ordinarily skilled artisan
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would understand that Swift’s CMOS sensor is a camera-on-a-chip design.
Sur-reply 3–4. Patent Owner further argues that the standard APS CMOS
sensor of the time was a camera-on-the chip. Id. at 4–6. Patent Owner also
argues that Swift describes CCD embodiments because Swift describes the
use of 12 volts to power its camera module and describes 12 volts as a low
voltage. Id. at 8–11. Further, Patent Owner also argues that Figure 7 of
Swift shows regions of the imaging chip where additional circuitry could be
placed, consistent with a camera on the chip design. Id. at 5–6.
(b) Analysis
We find that Swift teaches limitation 2.f.ii.
In Section III.C.4 above, we address the parties’ dispute as to whether
Swift’s CMOS disclosures are limited to camera-on-a-chip embodiments.
For the reasons set forth in that section, we find that Swift’s CMOS
disclosures are not so limited, and that Swift discloses an embodiment with a
CMOS sensor on a circuit board 52 and off-chip circuitry on circuit board
53.
Swift further teaches that “[v]arious circuitry components are
mounted on the circuit board 53, to provide power to the image sensor,
process image signals received therefrom . . . .” Ex. 1005, 9:7–13. We
credit Dr. Neikirk’s testimony that the term “image signals” in this context
refers to pre-video signals. Ex. 1004 ¶ 236. Swift also teaches the use of a
video monitor with “a camera 152, which may . . . be similar to the camera
50 shown in Figures 1 and 2.” Ex. 1005, 15:4–11. (Camera 50 includes
image sensor 51 and circuit boards 52 and 53. Id. at Fig. 2.) Swift further
teaches that camera 152 provides video signals: “[w]ith the video signals
provided from the camera 152 as either video or UHF signals . . . .”
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Ex. 1005, 17:35–18:3. Further, Swift describes that its disclosed cameras
produce video signals: “[a]ny of the cameras mentioned above may be
connected to such a terminal box in order to distribute video signals from the
camera(s) to the or each TV in the dwelling.” Id. at 18:8–11. Swift further
describes that a converter can be added to housing 50 to convert a video
signal into a UHF signal, which also teaches that its camera produces video
signals. Id. at 10:17–20. Swift discloses that printed circuit board 53 is
connected to external processing circuitry via cable 55 (e.g., processing
circuitry that could convert a pre-video signal to a UHF signal). Id. at 9:13–
17. We find that these disclosures teach that the processing performed on
circuit board 53 (the recited second circuit board) includes video processing
(i.e., converting a pre-video signal to a video signal). In particular, in light
of the fact that printed circuit board 53 is receiving a pre-video signal and it
is providing the camera’s output, which is a video signal, Swift teaches that
circuit board 53 is converting a pre-video signal to a video signal.
We find that Swift teaches limitation 2.f.ii. Ex. 1004 ¶¶ 268–273;
Ex. 1086 ¶¶ 41–44.
h. [2.g] a lens mounted in said housing, said lens being
integral with said imaging device, said lens focusing
images on said array of CMOS pixels of said image
sensor
Petitioner asserts that Swift and Ricquier combined teach limitation
2.g. Pet. 44–45. Petitioner argues:
Swift discloses a lens mounted in said housing (e.g., “wide angle
lens 57 . . . mounted in the . . . front housing portion 10”), said
lens being integral with said imaging device (e.g., as shown in
Fig. 2; “image sensor 201 engaged with a lens holder 202 . . . to
hold the lens 204 at a fixed . . . distance from the sensor”), said
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lens focusing images on . . . said image sensor (e.g., “positioned
as to focus an image onto the image sensor 51”).
Id. at 44 (emphasis omitted). Petitioner provides the following annotated
version of Figure 2 of Swift:

Id. at 45. The annotated figure above identifies wide-angle lens 57 as the
recited lens. Id. Petitioner further argues that Ricquier teaches the use of an
array of CMOS pixels. Id. at 45.
Patent Owner does not dispute that Swift and Ricquier combined
teach limitation 2.g. PO Resp. 19–38.
We find that Swift and Ricquier combined teach this limitation. Swift
discloses: “A wide-angle lens 57 is mounted in the front bore 12 of the front
housing portion 10, and bears against the annular abutment shoulder 13.
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The lens 57 is so positioned as to focus an image onto the image sensor 51.”
Ex. 1005, 9:23–28; see also id. at Fig 2. Swift further discloses:
Figure 7 shows an image sensor 201 (e.g. of APS type), engaged
with a lens holder 202 of plastics material, with an aperture 203
to receive a lens 204. With the holder 202 and lens 204 mounted
together, the holder 202 serves to hold the lens 204 at a fixed,
predetermined distance from the sensor 201, in order properly to
focus an image onto the sensor 201. The light-sensitive area on
the sensor 201 is located asymmetrically on the sensor, and the
aperture 203 is positioned asymmetrically on the lens holder 202,
in order to match the asymmetry of the sensor 201.
Ex. 1005, 18:13–23. As discussed in Section III.C.6.c above, Ricquier
discloses the use of an array of CMOS sensors. Thus, Suzuki and Ricquier
combined teach limitation 2.g. Ex. 1004 ¶¶ 274–277.
i. [2.h] a video screen, said video screen being electrically
coupled to said second circuit board, said video screen
receiving said post-video signal and displaying images
from said post-video signal
Petitioner argues that Swift discloses limitation 2.h. Pet. 45. In
particular, Petitioner argues that:
Swift discloses a video screen (e.g., “video monitor”), said video
screen being electrically coupled to said second circuit board
(e.g., “cable 55 is connected to the printed circuit board 53,”
“[t]he camera 152 and monitor 154 are connected by . . . a
cabling system 160”), said video screen receiving said post video
signal and displaying images from said post-video signal (e.g.,
“video monitor . . . to display a signal received from the
camera”).
Id. Patent Owner does not dispute that Swift teaches limitation 2.h. PO
Resp. 19–38.
We find that Swift teaches this limitation. Swift discloses a video
monitor connected by a cabling system to the camera to display a signal
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received from the camera. Ex. 1005, 15:7–14. Swift further discloses that
the cable is connected to the printed circuit board 53. Id. at 9:5–18; see also
id. at 17:34–18:2, 18:8–11. These disclosures teach limitation 2.h. Ex. 1004
¶¶ 278–279.
j. [2.i] a power supply mounted in said housing, said
power supply being electrically coupled to said first
circuit board to provide power to said array of CMOS
pixels and said timing and control circuitry, said power
supply also being electrically coupled to said second
circuit board to provide power thereto
Petitioner argues that Suzuki and Ricquier combined teach limitation
2.i. Pet. 47–48. Petitioner argues that:
Swift discloses a power supply (e.g., “battery,” “voltage
regulator”) mounted in said housing (e.g., “provided within the
housing”), said power supply being electrically coupled to said
first circuit board to provide power to said array of CMOS pixels
and said timing and control circuitry, said power supply also
being electrically coupled to said second circuit board to provide
power thereto (e.g., “a voltage regulator to . . . provide a
substantially constant supply voltage to components” including
“an image sensor assembly” and “a video processor” on the
“circuit board”).
Id. at 47 (emphasis omitted). Petitioner further asserts that Ricquier
discloses the use of an array of CMOS pixels. Id. at 48.
Patent Owner does not dispute that Swift and Ricquier combined
teach limitation 2.i. PO Resp. 19–38.
We find that Swift and Ricquier combined teach this limitation. Swift
discloses:
there is provided an image sensor assembly for a miniature
camera, the assembly comprising a printed circuit board and,
mounted thereon, the image sensor, a video processor, an audio
processor, and a voltage regulator to accept a plurality of
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different input voltages and provide a substantially constant
supply voltage to components on the printed circuit board.
Ex. 1005, 3:31–4:4. Swift further discloses: “A camera as above may
incorporate a battery or voltage transformer means.” Id. at 4:21–22. In
addition, Swift describes: “[i]f desired, the rear housing portion 30 may be
replaced by another portion of different configuration, designed to
accommodate additional components or different components of different
configurations. For example, there may be provided within the housing 50
sufficient room to house a battery.” Id. at 10:12–20. Swift further discloses:
“[v]arious circuitry components are mounted on the circuit board 53, to
provide power to the image sensor 51, process image signals 10 received
therefrom.” Id. at 9:7–13. Further, as discussed in Section III.C.6.c above,
Ricquier discloses the use of an array of CMOS sensors. These disclosures
teach limitation 2.i. Ex. 1004 ¶¶ 280–284.
k. [2.j] wherein a largest dimension of said image sensor
along said first plane is between 2 and 12 millimeters.
The parties dispute whether Swift and Suzuki combined teach
limitation 2.j. Pet 48–50; PO Resp. 21–38.
Petitioner argues that Swift discloses an image sensor along a first
plane. Pet. 48. Petitioner further argues that Suzuki discloses an image
sensor whose largest dimension along a plane is between 2 and 12 mm. Id.
Petitioner argues that, combined, these disclosures teach limitation 2.j. Id. at
48–50.
Patent Owner does not dispute that Suzuki discloses an image sensor
whose largest dimension along a plane is between 2 and 12 mm. PO Resp.
21–38. Patent Owner concedes Suzuki contains that disclosure. Id. at 21
(“Suzuki discloses an imaging device having a diameter in that range.”).
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Patent Owner, however, disputes that an ordinarily skilled artisan would
have combined Suzuki’s teaching of an imager that is between 2 and 12 mm
with the teachings of Swift (and Ricquier). PO Resp. 21–25. In addition,
Patent Owner argues that if an ordinarily skilled artisan’s motivation for
combining Suzuki with Swift (and Ricquier) is to minimize camera size as
Petitioner contends, then an ordinarily skilled artisan might have used an
imager with a maximum dimension below 2 mm. Sur-reply 19.
We find that Swift and Suzuki combined teach limitation 2.j. As
discussed in Section III.C.5 above, we find that an ordinarily skilled artisan
would have combined Swift’s and Suzuki’s teachings in the manner
proposed by Petitioner. Further, we find that Swift discloses an image
sensor along a first plane. Ex. 1005, 8:31–9:18 (“image sensor 51 is
mounted on a circular printed circuit board 52”), Figs. 2, 7; see also Section
III.C.6.c, above. We further find that Suzuki discloses an image sensor
whose largest dimension along a plane is between 2 and 12 mm. Ex. 1015,
4:6–11 (“in the case where the solid-state image pickup chip of 1/3 inch (8.5
mm) is used, the outer diameter of the camera head is about 10 mm….”); see
also Ex. 1004 ¶¶ 285–289.
We are not persuaded by Patent Owner’s argument that if an
ordinarily skilled artisan’s motivation for combining Suzuki with Swift and
Ricquier is to minimize camera size as Petitioner proposes, then an
ordinarily skilled artisan would have or may have used an imager with a
maximum dimension below 2 mm. Sur-reply 19. First, Patent Owner cites
no expert testimony to support this argument. Id. Second, the argument is
misplaced because Suzuki has an objective of reducing the size of the
camera head so that it comes closer to the size of the image sensor chip, not
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an objective of making the smallest image sensor chip. Ex. 1015, 1:53–56.
Suzuki teaches using an image sensor with a largest dimension between 8.5
and about 10 mm, which is larger than 2 mm. Ex. 1015, 4:6–11. That
dimension already can reduce the size of a camera based on Suzuki. Patent
Owner cites no suggestion in Suzuki or in Swift or Ricquier of using any
smaller sensor, and Patent Owner provides no evidence that an ordinarily
skilled artisan would have had an expectation of success in using a sensor
with a maximum dimension of less than 2 mm with a combination of these
references. Sur-reply 19. Thus, on this record, we do not find that Suzuki
would have suggested to an ordinarily skilled artisan using a sensor with
maximum dimension of less than 2 mm, even if an ordinarily skilled artisan
were motivated to minimize sensor size.
We find that Swift and Suzuki combined teach limitation 2.j.
Ex. 1004 ¶¶ 285–289; Ex. 1086 ¶¶ 36–40.
l. Summary
For the foregoing reasons, after considering and balancing the
evidence presented by the parties, both for and against obviousness, we
determine that Petitioner has proved, by a preponderance of the evidence,
that claim 2 would have been obvious over Swift, Ricquier, and Suzuki.
D. Asserted Obviousness of Claim 2 over Larson, Swift, Ricquier, and
Suzuki
Petitioner argues that if its first ground (asserted obviousness over
Swift, Ricquier, and Suzuki) is insufficient because the references fail to
disclose a physical camera with the same physical housing as the video
monitor formed for the claimed imaging device, its second ground (asserted
obviousness over Larson, Swift, Ricquier, and Suzuki) provides that missing
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teaching. Pet. 50. No party has argued, and we do not find, that Petitioner’s
first ground was insufficient because the references in that ground fail to
disclose a physical camera with the same physical housing as the video
monitor formed for the claimed imaging device. See Section III.C, above.
For that reason, we do not need to address Ground 2. Further, we do not
need to address Ground 2 in light of our determination that Ground 1 renders
claim 2 unpatentable.
IV. CONCLUSION
Petitioner has proven by a preponderance of the evidence that claim 2
of the ’052 patent is unpatentable based on the first ground of
unpatentability identified in the following table:
Claims 35 U.S.C. § Reference(s)/ Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
2 103
Swift, Suzuki,
Ricquier 2
2 103
Larson, Swift,
Ricquier,
Suzuki14

Overall
Outcome
2

14 As indicated, in light of our determination regarding Ground 1, we did not
need to determine whether Petitioner has proven that claim 2 would have
been obvious over Larson, Swift, Ricquier, and Suzuki. Pet. 9.
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V. ORDER
It is:
ORDERED that claim 2 has been shown, by a preponderance of the
evidence, to be unpatentable;15
FURTHER ORDERED that because this is a Final Written Decision,
the parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

15 Should Patent Owner wish to pursue amendment of the challenged
claims in a reissue or reexamination proceeding subsequent to the
issuance of this decision, we draw Patent Owner’s attention to the April
2019 Notice Regarding Options for Amendments by Patent Owner
Through Reissue or Reexamination During a Pending AIA Trial
Proceeding. See 84 Fed. Reg. 16,654 (Apr. 22, 2019). If Patent Owner
chooses to file a reissue application or a request for reexamination of the
challenged patent, we remind Patent Owner of its continuing obligation
to notify the Board of any such related matters in updated mandatory
notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).

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FOR PETITIONER:
Scott A. McKeown
James L. Davis, Jr.
Carolyn Redding
ROPES & GRAY LLP
scott.mckeown@ropesgray.com
james.l.davis@ropesgray.com
carolyn.redding@ropesgray.com

FOR PATENT OWNER:
Jonathan S. Caplan
James Hannah
Jeffrey H. Price
KRAMER LEVIN NAFTALIS & FRANKEL LLP
jcaplan@kramerlevin.com
jhannah@kramerlevin.com
jprice@kramerlevin.com