Mobotix Corp.v.E-Watch Corporation

Patent Trial and Appeal Board

Oct 10, 2014

09593361 (P.T.A.B. Oct. 10, 2014)

Trials@uspto.gov Paper No. 35
571-272-7822 Entered: October 10, 2014
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MOBOTIX CORP.,
Petitioner,

v.

e-WATCH, INC.,
Patent Owner.
____________

Case IPR2013-00337
Patent 7,023,913
____________

Before JAMESON LEE, MICHAEL W. KIM, and MATTHEW R. CLEMENTS,
Administrative Patent Judges.

KIM, Administrative Patent Judge.

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

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I. INTRODUCTION
A. Background
Mobotix Corporation (“Petitioner”) filed a Petition requesting inter partes
review of claims 1–11, 13, 14, 17, 19, and 31–33 of U.S. Patent No. 7,023,913
(Ex. 1001, “the ’913 patent”) pursuant to 35 U.S.C. §§ 311–319. Paper 5 (“Pet.”).
e-Watch, Inc. (“Patent Owner”) waived the filing of a Preliminary Response.
Paper 11. On November 13, 2013, we instituted an inter partes review of claims
1–11, 13, 14, 17, 19, and 31–33 on certain grounds of unpatentability alleged in the
Petition. Paper 12 (“Dec.”). After institution of trial, Patent Owner filed a Patent
Owner Response (Paper 25, “PO Resp.”), to which Petitioner filed a Reply (Paper
31). Petitioner also filed a Motion to Exclude. Paper 32 (“Mot.”). An oral
argument was not held.
The Board has jurisdiction under 35 U.S.C. § 6(c). In this final written
decision, issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73, we
determine Petitioner has shown by a preponderance of the evidence that all
challenged claims, claims 1–11, 13, 14, 17, 19, and 31–33, are unpatentable.
B. The ’913 Patent
The subject matter of the ’913 patent relates to multimedia sensors for use in
connection with a digital networked surveillance system. Ex. 1001, 1:7–9. Public
facilities, such as schools, banks, airports, arenas, and the like, frequently employ
monitoring and surveillance systems to enhance security. Ex. 1001, 1:12–21. One
such system employs analog cameras that deliver video via coaxial cables to a
centralized monitoring facility, but this type of system is generally of low quality,
does not have the ability to “share” the video, and provides video that is viewable
only on the system’s control console. Ex. 1001, 1:37–43. More recently, security
cameras have employed video compression technology, enabling individual
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cameras to be connected remotely to a centralized system via telephone circuits.
Ex. 1001, 2:5–7. However, due to bandwidth constraints imposed by public-
switched telephone systems, such surveillance systems are typically limited to low-
resolution images, or low frame rates, or both. Ex. 1001, 2:1–4.
To solve these and other problems, methods and systems are disclosed,
according to the ’913 patent, for using a fully digital camera system capable of
providing high resolution still image and/or streaming video signals via a network
to a centralized, server-supported security and surveillance system. Ex. 1001,
2:36–40. According to the ’913 patent, the fully digital camera system is adapted
for collecting an image from one or more image transducers, compressing the
image, and sending the compressed digital image signal to one or more receiving
stations over a digital network. Ex. 1001, 2:45–49.
According to the ’913 patent, recent advances in the art have produced
commercially available area sensors, as applied to security cameras, with improved
resolution that provide significant improvement in the quality of captured images.
Ex. 1001, 2:50–56. Such improved quality allows greater accuracy in recognizing
persons or events. Ex. 1001, 2:56–57.
Visual information captured by these sensors commonly is converted to
digital form either on the sensor itself, or by an immediate, subsequent analog to
digital converter device. Ex. 1001, 2:58–61. In digital form, the captured visual
information is largely immune to the degradations that plague analog systems. Ex.
1001, 2:61–63.
The described camera uses video compression techniques to reduce the
amount of image data that must be conveyed by the network. Ex. 1001, 3:12–14.
According to the ’913 patent, a number of recently perfected image and video
compression techniques may be employed to reduce significantly the amount of
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visual data, while preserving the visual quality. Ex. 1001, 3:14–17. When used
with adequate transmission bandwidth, or given adequate compression time, these
compression techniques may produce low-loss results. Ex. 1001, 3:60–63.
According to the ’913 patent, a commonplace example is the DSS broadcast
system, which produces broadcast-quality video at bit rates of 1 to 4 Mbits/sec
using MPEG-2 compression. Ex. 1001, 3:60–65.
A variety of suitable audio compression methods also exist, when the
captured audio is of sufficient quality that an attached monitoring server, upon
analysis, may discern accurately sonic patterns indicative of various disturbances
such as glass breakage, gunshots, and the like. Ex. 1001, 4:14–18
C. Illustrative Claim
The ’913 patent includes 37 claims, of which claims 1–11, 13, 14, 17, 19,
and 31–33 are challenged. Of those, claims 1, 19, and 31 are independent claims.
Independent claim 1 is reproduced below.
1. A digital security camera capable of generating and
transmitting digital high resolution image signals in both a full motion
video format and a still image frame format, the camera comprising:
a. a plurality of image transducers each adapted for
collecting digital high resolution image signals;
b. a motion video compressor associated with the image
transducer for compressing full motion video images for generating a
compressed full motion video image data signal;
c. a still frame compressor associated with the image
transducer for compressing still frame images for generating a
compressed still frame image data signal;
d. a first multiplexer for merging the compressed full
motion video image data signal and the compressed still frame image
data signal into a single, combined image data signal;
e. a second multiplexer for merging all of said signals into a
combined data signal;
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f. a processor associated with the multiplexer for generating
a conditioned output image signal suitable for transmission over a
network;
g. a motion compressor and a still frame compressor
associated with each image transducer and positioned between the
image transducer and the second multiplexer; and
h. a network gateway,
wherein said camera may capture both full motion video
and still frame video, alternately or simultaneously, and
transmit both compressed full motion video and compressed
still frame video, alternately or simultaneously.
D. Prior Art References Alleged to Support Unpatentability
The following prior art references were asserted in the instituted grounds:
Seeley US 6,069,655 May 30, 2000 Ex. 1005
Ohki EP 0 920 211 June 2, 1999 Ex. 1006
Sorokin US 6,522,325 B1 Feb. 18, 2003 Ex. 1007
Brusewitz US 6,038,257 Mar. 14, 2000 Ex. 1008
Fernandez US 6,697,103 B1 Feb. 24, 2004 Ex. 1010
E. Grounds of Unpatentability Instituted for Trial
The following table summarizes the challenges to patentability that were
instituted for inter partes review:
Reference(s) Basis
Claims
Challenged
Seeley § 103(a) 1–4, 6, 8, 9, 17, and 19
Seeley and Ohki § 103(a) 13
Seeley, Ohki, and Fernandez § 103(a) 5, 7, 10, and 11
Seeley, Ohki, and Sorokin § 103(a) 14 and 31–33
Brusewitz and Ohki § 103(a) 1–6, 8–10, 13, 17, and 19
Brusewitz, Ohki, and
Fernandez
§ 103(a) 7 and 11
Brusewitz, Ohki, and
Sorokin
§ 103(a) 14 and 31–33
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II. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are given their
broadest reasonable construction in light of the specification of the patent in which
they appear. 37 C.F.R. § 42.100(b). Claim terms also are given their ordinary and
customary meaning, as would be understood by one of ordinary skill in the art in
the context of the entire disclosure. In re Translogic Tech, Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007).
If an inventor acts as his or her own lexicographer, the definition must be set
forth in the specification with reasonable clarity, deliberateness, and precision.
Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir.
1998).
1. Compressor
Independent claims 1, 19, and 31 each recite “compressor.” Petitioner
asserts that if an express construction is provided, “compressor” should be
construed as “a device for reducing the number of bits needed to represent an item
of digital data.” Pet. 4; Reply 13–14. For support, Petitioner cites a definition of
“compressor” from Computer User’s Dictionary, as well as several portions of the
’913 patent. Pet. 4; Reply 13–14 (citing Ex. 1001, 3:12–17, 5:64–66
1
, 8:7–12,
10:25–28, 10:48–51). In particular, Petitioner asserts that a proper construction
should be limited to hardware or a combination of hardware and software, because
the Specification does not refer to a disembodied software implementation of
“compressor.” An exemplary use of “compressor” in the ’913 patent is as follows:
“the capability for placing multiple sensors in a single enclosure or unit greatly

1
Petitioner cites “Ex. 1001, 8:64–66,” but the corresponding quotation listed at
page 13 of the Reply Brief is from column 5, lines 64–66 of the ’913 patent.
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increases the resolution and/or viewing range of the camera without duplicating the
per unit cost associated with prior art cameras by permitting all of the sensors to
communicate directly to a single processor, compressor, transmitter circuit.”
Ex. 1001, 5:60–66 (emphasis added).
Patent Owner asserts that “compressor” does not require construction, or in
the alternative that it should be construed as “hardware, software or a combination
for performing data compression.” Specifically, Patent Owner asserts that
“compressor” should not be limited to hardware because the Specification does not
exclude software-based compressors. PO Resp. 5–6. For support, Patent Owner
cites to a Declaration of Michael Craner, which in turn refers to a webpage
http://www.techterms.com/definition/media_compression (Ex. 2002, “Media
Compression”) and the following citations: Miyazaki, T.; Kuroda, I., “Real-time
software video encoder on a multimedia RISC processor,” Signal Processing
Systems, 1998. SIPS 98. 1998 IEEE Workshop on, vol., no., pp. 33, 42, 8–10 Oct.
1998. Ex. 2001 ¶ 21 (citing Ex. 2003, “Miyazaki”). .
We determine that Petitioner’s construction constitutes the broadest
reasonable interpretation in light of the Specification. Specifically, Petitioner
provides an extrinsic definition of “compressor” that is consistent with the
Specification, especially the portion cited above which treats “compressor” as an
equivalent of hardware, such as processors and circuits. Although Patent Owner
asserts that the Specification does not expressly exclude software-based
compressors, the fact that the Specification does not exclude a particular
implementation does not indicate that it includes it. Instead, the proper inquiry is
whether the Specification would lead one of ordinary skill to determine that a
broadest reasonable construction of “compressor” would include disembodied
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software implementations. To that inquiry, Patent Owner has not provided any
analysis.
Concerning the Craner Declaration, it refers to two references that allegedly
provide more pertinent definitions of “compressor.” After considering both
references, however, we are unpersuaded that they support Patent Owner’s
assertion that “compressor” should include disembodied software implementations.
Specifically, while Media Compression does discuss software, it does not define
“compressor” as excluding hardware. Moreover, Miyazaki appears to discuss
exclusively compression software implemented on processor hardware. Ex. 2003,
1 (“[a] real-time software MPEG1 video encoder on a multimedia RISC processor,
VS3OR/AV, is presented. The VS3OR/AV processor provides 64-bit SIMD media-
enhanced instructions”) (emphasis added).
Additionally, the Craner Declaration itself recites the following:
a compressor or multiplexor need not be limited to a specific circuit,
but would be understood to a POSITA at the time of the filing of the
Monroe patent to alternatively be a function that could be
implemented in firmware or software on a general purpose processor
or signal processor, such as a digital signal processor, graphics
processor, vector processor, or similar.
Ex. 2001 ¶ 21. This is consistent with Petitioner’s proposed construction, as even
when viewed in a light most favorable to Patent Owner, the Craner Declaration
asserts that “compressor” is software implemented on a processor, rather than
disembodied software.
2. Multiplexer
Independent claims 1, 19, and 31 each recite “multiplexer.” Petitioner
asserts that if an express construction is provided, that “multiplexer” should be
construed as “a device for combining two or more input signals into at least one
output signal.” Pet. 4; Reply 14. For support, Petitioner cites a definition of
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“multiplexer” from McGraw-Hill Dictionary of Scientific and Technical Terms,
several portions of the ’913 patent, and cites several cases that construed
“multiplexer.” Pet. 4; Reply 13–14 (citing Ex. 1001, Fig. 2, 9:19–24, 10:28–30,
16:12–18). In particular, Petitioner asserts that a proper construction should be
limited to hardware or a combination of hardware and software, because the
Specification does not refer to a disembodied software implementation of
“multiplexer.” An exemplary use of “multiplexer” in the ’913 patent is as follows:
“A binary signal DAY/-NIGHT 334 controls the state of a multiplexer consisting
of transmission gates 360 and 362, so as to select the output of either color imager
327a or monochrome imager 327b.” Ex. 1001, 16:13–16 (emphasis added).
Patent Owner asserts that “compressor” does not require construction, or in
the alternative that it should be construed as “hardware, software or a combination
for performing data compression.” Specifically, Patent Owner asserts that
“compressor” should not be limited to hardware because the Specification does not
exclude software-based compressors. PO Resp. 6–7. For support, Patent Owner
cites to the Craner Declaration, which in turn refers to the following citations:
Vyden, B., “A software-implemented baseband processor for digital
communications,” TENCON ’92. “Technology Enabling Tomorrow: Computers,
Communications and Automation towards the 21st Century,” 1992, IEEE Region
10 International Conference, vol., no., pp. 31, 35, vol. 1, 11–13, Nov. 1992
(Ex. 2004, “Vyden.”)
We determine that Petitioner’s construction constitutes the broadest
reasonable interpretation in light of the Specification. Specifically, Petitioner
provides an extrinsic definition of “multiplexer” that is consistent with the
Specification, especially by the portion cited above which treats “multiplexer” as
consisting of transmission gates 360, 362, which are hardware. Although Patent
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Owner asserts that the Specification does not exclude software-based multiplexers,
the fact that the Specification does not exclude a particular implementation does
not indicate that it includes it. Instead, the proper inquiry is whether the
Specification would lead one of ordinary skill to determine that a broadest
reasonable construction of “multiplexer” would include disembodied software
implementations. To that inquiry, Patent Owner has not provided any analysis.
Concerning the Craner Declaration, it refers to the Vyden reference that
allegedly provides a more pertinent definition of “multiplexer.” After considering
the Vyden reference, however, we are unpersuaded that it supports Patent Owner’s
assertion that “multiplexer” should include disembodied software implementations.
Specifically, while Vyden does discuss software, it appears to exclusively discuss
multiplexer software implemented on microprocessor hardware. Ex. 2004, 1
(“[f]or reasons of flexibility and versatility, a microprocessor was chosen as the
heart of the multiplexer, with all of the signal processing being done in software”)
(emphasis added).
Additionally, the Craner Declaration itself recites the following:
a compressor or multiplexor need not be limited to a specific circuit,
but would be understood to a POSITA at the time of the filing of the
Monroe patent to alternatively be a function that could be
implemented in firmware or software on a general purpose processor
or signal processor, such as a digital signal processor, graphics
processor, vector processor, or similar.
Ex. 2001 ¶ 21. This is consistent with Petitioner’s proposed construction, as even
when viewed in a light most favorable to Patent Owner, the Craner Declaration
asserts that “multiplexer” is software implemented on a processor.
3. Network
Independent claims 1, 19, and 31 each recite “network.” Through their
positions concerning the prior art, Patent Owner asserts that “network” should be
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construed as limited to those associated with Internet protocols, such as TCP/IP.
We are not persuaded by Patent Owner’s assertions.
The Specification does not set forth a definition of “network,” but does
provide the following guidance:
The camera described herein is designed to transport the captured and
compressed visual information over a modern digital network.
Modem data networks provide connected devices with high bit rates
and low error rates, suitable for the transport of compressed visual
data streams. Modern networks also employ protocols that render
such data streams suitable for addressing and routing over
interconnected networks. Modern protocols also allow connected
devices to send their data to more than one destination address. These
techniques, applied to security and monitoring cameras, overcome the
limitation of prior-art systems that supported only one monitoring
console.
Ex. 1001, 3:18–29.
In the invention, the digitized and compressed audiovisual signals are
fed into a digital network, capable of flexible routing and transport of
the signals. While the described invention uses Ethernet as a transport
medium for the audiovisual signals, any equivalent digital network
may be used.
In addition, the communication protocols used by the network and
attachments thereunto embed addressing and routing information into
the individual signals. This allows the digital information, produced
by the attached cameras, to be efficiently routed and disseminated. An
example of this protocol is TCP/IP, commonly used in the Internet.
Ex. 1001, 3:18–29 (emphasis added). Accordingly, we construe “network” as “a
series of interconnected devices that employ protocols for sending and receiving
digital data,” but decline to limit such “networks” to those associated with Internet
protocols, such as TCP/IP.
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B. Principles of Law
To prevail in its challenges to the patentability of the claims, Petitioner must
prove unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e); 37
C.F.R. § 42.1(d). A claim is unpatentable under 35 U.S.C. § 103(a) if the
differences between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
To establish obviousness of a claimed invention, all the claim limitations must be
taught or suggested by the prior art. See CFMT, Inc. v. Yieldup Int’l Corp., 349
F.3d 1333, 1342 (Fed. Cir. 2003); In re Royka, 490 F.2d 981, 985 (CCPA 1974).
A patent claim composed of several elements, however, is not proved obvious
merely by demonstrating that each of its elements was known, independently, in
the prior art. KSR Int’l Co., 550 U.S. at 419. In that regard, for an obviousness
analysis it can be important to identify a reason that would have prompted one of
skill in the art to combine prior art elements in the way the claimed invention does.
Id. However, a precise teaching directed to the specific subject matter of a
challenged claim is not necessary to establish obviousness. Id. Rather,
obviousness must be gauged in view of common sense and the creativity of an
ordinarily skilled artisan. Id. Moreover, obviousness can be established when the
prior art itself would have suggested the claimed subject matter to a person of
ordinary skill in the art. In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976).
We analyze the instituted grounds of unpatentability in accordance with the
above-stated principles.
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C. Claims 1–4, 6, 8, 9, 17, and 19 — Alleged Obviousness over Seeley
Petitioner asserts that claims 1–4, 6, 8, 9, 17, and 19 are unpatentable under
35 U.S.C. § 103(a) as obvious over Seeley. Pet. 7–15. Patent Owner disagrees
with Petitioner’s assertions. PO Resp. 7–14.
1. Seeley (Exhibit 1005)
Seeley discloses a video security system having components physically
located at a premises being protected, and components located at a central station
from which a number of premises can be monitored simultaneously. Ex. 1005,
1:25–28. Figure 7, shown below, illustrates one embodiment of such a system.

Fig. 7 is a block diagram of a site control
unit (“SCU”) installed on a premises.
Figure 7 shows SCU 12, including cameras 22. Ex. 1005, 10:43–46. A
function of SCU 12 is to look intelligently at video acquired from each of cameras
22 to determine if an intruder is present within any of the scenes viewed by
cameras 22. Ex. 1005, 9:24–27. SCU 12 includes image acquisition section 24
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which receives video signals from each of cameras 22, these signals representing
images of scenes observed by respective cameras 22. Ex. 1005, 10:43–46.
When motion is detected, cameras 22 take full frame images of the scene.
Ex. 1005, 12:66–67. Motion may be detected by sensors S1–S3 via alarm unit 16.
Ex. 1005, 12:23–24. The full frame images then are sent to and compressed at
frame compression module 44, before being supplied to central station CS via
video output 46 of SCU 12 and terminal adapter 20. Ex. 1005, 13:27–30. Images
from cameras 22 also are supplied to video compression module 50. Ex. 1005,
18:26–28. From compression module 50, compressed images may be sent directly
(i.e., live) through video output 46 to central station CS via terminal adaptor 20.
Ex. 1005, 18:34–36; Fig. 7. An example of terminal adaptor 20 is shown below in
Figure 12.

Fig. 12 is a block diagram of a terminal adaptor.
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Figure 12 shows that video signals transmitted from SCU 12 now flow through
data buffer 308 and switch 306 to communication lines C2, C3. Ex. 1005, 14:19–
22. Communication lines C2, C3 are combined with communication line C1 at
combiner module 316 to form an Integrated Services Digital Network (“ISDN”)
communication path. Ex. 1005, 14:31–33.
2. Petitioner’s Position
Petitioner asserts that claims 1–4, 6, 8, 9, 17, and 19 are unpatentable under
35 U.S.C. § 103(a) as obvious over Seeley. Pet. 7–15. In support of this asserted
ground of unpatentability, Petitioner provides detailed explanations as to how the
subject matter of each claim is at least suggested by Seeley, and relies on a
Declaration of Dr. Stephen B. Wicker. Pet. 7–15 (citing Ex. 1003 ¶¶ 37–39).
Specifically, Petitioner cites portions of Seeley as disclosing every limitation of
claims 1–4, 6, 8, 9, 17, and 19, except for certain features, and then proposes
modifying Seeley in view of Dr. Wicker’s Declaration with regard to the level of
ordinary skill in the art so as to render obvious the claimed invention as a whole.
Id.
For example, independent claim 1 requires a plurality of image transducers.
Seeley discloses cameras 22. Ex. 1005, 10:43–46. Independent claim 1 requires
further a motion video compressor and a still frame compressor. Seeley discloses
video compression module 50 and frame compression module 44. Ex. 1005,
13:27–30, 18:26–28. Independent claim 1 requires also a first multiplexer and a
second multiplexer. Seeley discloses video out 46 and combiner module 316.
Ex. 1005, 13:27–30; 14:31–33. Independent claim 1 requires additionally a
network gateway. Seeley discloses an ISDN communication path. Ex. 1005,
14:31–33. Independent claim 1 requires “wherein said camera may capture both
full motion video and still frame video, alternately or simultaneously, and transmit
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both compressed full motion video and compressed still frame video, alternately or
simultaneously.” Seeley discloses that during an alarm condition, snapshots,
compressed video, live video, and audio are sent back and forth over the ISDN
communication path. Ex. 1005, 14:35–37.
Petitioner sets forth similar analyses for claims 2–4, 6, 8, 9, 17, and 19.
3. Patent Owner’s Response and Analysis
Patent Owner asserts the following: “in Seeley the only compressors (50 &
44), multiplexor (46 and 316) and processor (30) reside in an SCU 12, which is
apart from camera 22.” Presumably Patent Owner asserts that this is relevant,
because independent claim 1 recites “a motion compressor and a still frame
compressor associated with each image transducer,” and independent claim 19
requires a motion video compressor, a still frame compressor, and a first
multiplexer “associated with each image transducer.” Patent Owner’s assertions
are misplaced, though, because neither independent claim 1 nor independent claim
19 requires that any compressor or multiplexer reside within an image transducer.
Independent claims 1 and 19 only require that the compressor or multiplexer be
“associated with each image transducer.” To that end, all of compressors 44, 50
and multiplexer 46, 316 of Seeley are associated with each of cameras 22, in that
transmissions from each of cameras 22 are processed by compressors 44, 50 and
multiplexer 46, 316.
Insofar as Patent Owner may be asserting that each image transducer must
have its own exclusive compressor or multiplexer, such a limitation is not set forth
in the claims, and appears to be an attempt by Patent Owner to improperly import a
limitation from the Specification. CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d
1225, 1231 (Fed. Cir. 2005) (while the specification can be examined for proper
context of a claim term, limitations from the specification will not be imported into
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the claims). Similarly, insofar as Patent Owner may be asserting that all recited
components must be enclosed in a single housing, such a limitation is also not set
forth in the claims.
Patent Owner asserts further that Seeley does not disclose a “second
multiplexer,” as recited in independent claims 1 and 19, because combiner 316 of
Seeley does not include an associated processor. PO Resp. 10–11 (citing Ex. 2001
¶ 26). Specifically, the Craner Declaration asserts that any processor associated
with combiner 316 is not configured “for generating a conditioned output image
signal suitable for transmission over a network,” as recited in independent claims 1
and 19, because Seeley only discloses circuitry for a point-to-point ISDN interface,
and not for an Internet protocol network. We are not persuaded by Patent Owner’s
assertions, because as set forth above, we construe “network” as “a series of
interconnected devices that employ protocols for sending and receiving digital
data,” and decline to limit such “networks” to only those associated with Internet
protocols, such as TCP/IP. Combiner 316 of Seeley processes digital signals for
transmission over an ISDN communication path (Ex. 1005, 14:19–33), and thus we
are persuaded that Seeley discloses a processor associated with a multiplexer “for
generating a conditioned output image signal suitable for transmission over a
network,” as recited by independent claims 1 and 19.
Patent Owner asserts also that Seeley does not disclose a “network,” as
recited in independent claims 1 and 19. Specifically, the Craner Declaration
asserts that Seeley does not disclose an Internet protocol network, such as TCP/IP.
Ex. 2001 ¶¶ 28–41. Patent Owner’s assertions are misplaced because, as set forth
above, we construe “network” as “a series of interconnected devices that employ
protocols for sending and receiving digital data,” and decline to limit such
“networks” to only those associated with Internet protocols, such as TCP/IP.
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Accordingly, we are persuaded that Seeley’s ISDN corresponds properly to the
“network” recited in independent claims 1 and 19.
Patent Owner asserts additionally that Petitioner does not provide any
reasoning or evidence as to how the prior art is modified or combined in the way
the claimed invention is arranged. As an initial mater, we note that Patent Owner
does not identify any specific modifications or combinations set forth by Petitioner
with which they disagree for lack of reasoning or evidence. Moreover, we are not
persuaded by Patent Owner’s assertions, because Petitioner has provided such
reasoning and evidence in the form of the Wicker Declaration and the prior art
references. For example, Petitioner asserts the following concerning claim 17:
Although Seeley does not explicitly reference an MPEG chip, as
noted in claim 17, MPEG was a well-known video compression
standard at the time of the invention. It would have been obvious to a
person having ordinary skill in the art at the time of the invention that
the video compression module 50 could use the MPEG compression
standard, as MPEG was one of a limited number of well known,
commonly used video compression standards at that time. Wicker
Decl., ¶ 37.
Pet. 13 (citing Ex. 1003 ¶ 37). In setting forth this position, Petitioner cites video
compression module 50 of Seeley, a fact from the prior art, and provides
articulated reasoning as to why one of ordinary skill would have known that video
compression module 50 could use the MPEG compression standard.
4. Conclusion
After considering Petitioner’s and Patent Owner’s positions, as well as their
supporting evidence, we determine that, by a preponderance of the evidence,
Petitioner has met its burden for showing that claims 1–4, 6, 8, 9, 17, and 19 of the
’913 patent are unpatentable over Seeley.
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D. Claims 1–6, 8–10, 13, 17, and 19 — Alleged Obviousness over
Brusewitz and Ohki
Petitioner asserts that claims 1–6, 8–10, 13, 17, and 19 are unpatentable
under 35 U.S.C. § 103(a) as obvious over Brusewitz and Ohki. Pet. 23–34. Patent
Owner disagrees with Petitioner’s assertions. PO Resp. 11–14.
1. Brusewitz (Exhibit 1008)
Brusewitz discloses systems and methods for improving display of high
resolution still images through integration with a corresponding lower resolution
video image. Ex. 1008, 1:11–14. An example of a system of Brusewitz is shown
below in Figure 1.

Figure 1 is a block diagram of an electronic imaging system.
Figure 1 shows camera 10 forwarding digital image data to subsampler device 14
of imaging system 6. Ex. 1008, 2:67–3:2. Encoder 16 then encodes and
compresses the digital image data into a video signal stream. Ex. 1008, 3:14–22.
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The video signal stream then may be transmitted wirelessly over GSM channels.
Ex. 1008, 7:66–8:8.
Brusewitz discloses that conventional video imaging capabilities may be
combined with still image management. Ex. 1008, 5:5–8. For example, imaging
system 6 may operate in normal video mode, displaying a conventional 30 frames
per second sequence of images at a conventional video resolution. Ex. 1008, 5:8–
11. However, when a user observes something of interest, the user may request a
higher resolution still image. Ex. 1008, 5:11–14. Since high resolution images
require a much greater number of bits than conventional video image frames,
transmission of such a high resolution image usually takes much longer than
transmission of video image frames. Ex. 1008, 5:26–32. While the high resolution
image is being processed, production of video image frames either is suspended or
continues at a lower bit rate, e.g., through interleaving with the high resolution
image. Ex. 1008, 5:32–35. Conventional video systems employing still picture
capabilities handle the two images differently and independently. Ex. 1008, 5:36–
38.
2. Ohki (Exhibit 1006)
Figure 12 of Ohki is shown below.

Figure 12 is a front view that shows a layout of cameras on an image
forming apparatus.
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Ohki discloses a plurality of cameras 1 placed on an upper side face of camera
mounting base 100 in a circumferential direction. Ex. 1006, col. 4, ¶ 15. Such a
configuration allows images to be collected simultaneously and joined or
synthesized to form an image stretching over at least a portion of a region in a
circumferential direction. Ex. 1006, col. 2, ¶ 8.
3. Petitioner’s Position
Petitioner asserts that claims 1–6, 8–10, 13, 17, and 19 are unpatentable
under 35 U.S.C. § 103(a) as obvious over Seeley. Pet. 23–34. In support of this
asserted ground of unpatentability, Petitioner provides detailed explanations as to
how the subject matter of each claim is at least suggested by Brusewitz and Ohki,
and relies on Dr. Wicker’s Declaration. Pet. 23–34 (citing Ex. 1003 ¶¶ 54–58).
Specifically, Petitioner cites portions of Seeley as disclosing every limitation of
claims 1–6, 8–10, 13, 17, and 19, except for certain features, and then proposes
modifying Brusewitz in view of Ohki so as to render obvious those features.
For example, independent claim 1 recites “a plurality of image transducers
each adapted for collecting digital high resolution image signals.” Brusewitz
discloses camera 10, which collects high resolution images. Ex. 1008, 5:26–32,
Fig. 1. Petitioner then cites Ohki for disclosing a plurality of image transducers,
and contends the following:
It would have been obvious to a person having ordinary skill in the art
at the time of the invention to mount multiple cameras of the type
taught by Brusewitz in an arrangement as taught by Ohki in order to
provide a larger viewing area such as a complete or panoramic view
of an area. This combination would be a simple well-known
substitution of multiple cameras for a single camera in order to obtain
predictable results. Wicker Decl., ¶¶ 56–57.
Pet. 25 (citing Ex. 1003 ¶¶ 56–57).
Independent claim 1 recites the following:
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b. a motion video compressor associated with the image
transducer for compressing full motion video images for generating a
compressed full motion video image data signal;
c. a still frame compressor associated with the image
transducer for compressing still frame images for generating a
compressed still frame image data signal.
Brusewitz discloses encoder 16, which handles video image capabilities and still
image capabilities differently and independently. Ex. 1008, 3:14–22, 5:36–38, Fig.
1. Concerning encoder 16, Petitioner cites Dr. Wicker’s Declaration for the
following:
Brusewitz further teaches a compressor that compresses both still
frame and video images. The compression, however, can occur
separately— such that still frame image compression and video image
compression occur as separate steps. Indeed, Brusewitz indicates that
“encoder 16 encodes the captured high resolution image.” See
Brusewitz, 6:7–9. Yet, Brusewitz also teaches in Figure 2 that
compression (or encoding) of the video images—step 58—is a
separate step from compression of the still images—step 62. Because
these encoding steps are disclosed by Brusewitz as occurring
separately, a POSITA at the time of invention of the ’913 patent
would understand that the encoder can use separate compression
algorithms for still image compression and motion video compression,
respectively. For instance, Brusewitz associates compression
algorithms such as MPEG with the video signal stream. Brusewitz,
3:14–43. And Brusewitz does not otherwise exclude separate
algorithms for still image compression, such as JPEG, which was a
well-known still image compression standard and one of a limited
number of options for still image compression.
Ex. 1003 ¶ 54.
Independent claim 1 further recites “a first multiplexer for merging the
compressed full motion video image data signal and the compressed still frame
image data signal into a single, combined image data signal.” Brusewitz discloses
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that production of video image frames may continue at a lower bit rate, e.g.,
through interleaving with the high resolution image. Ex. 1008, 5:32–35.
Independent claim 1 additionally recites “a second multiplexer for merging
all of said signals into a combined data signal.” Concerning this limitation,
Petitioner contends the following:
Brusewitz does not expressly disclose a second multiplexer.
However, Brusewitz discloses that the cameras may be networked
where beneficial, giving exemplary applications as videoconferencing
and surveillance systems. See e.g., Brusewitz, 7:65-8:11. It would
have been known to one of ordinary skill in the art at the time of the
invention of the ‘913 Patent that surveillance systems using multiple
cameras, such as the multiple cameras used with the housing of Ohki,
were commonly connected to a network. Wicker Decl., ¶ 58[.] Thus,
it would have been obvious to a person having ordinary skill in the art
at the time of the invention to include a second multiplexer to
combine data signals from the multiple cameras mounted in the Ohki
housing into a single signal for network transmission, as was well-
known in the art at the time of the invention of the ’913 Patent.
Wicker Decl., ¶ 58.
Pet. 26–27 (citing Ex. 1003 ¶ 58).
Independent claim 1 also recites “a processor associated with the multiplexer
for generating a conditioned output image signal suitable for transmission over a
network.” Brusewitz discloses that digital image data may be transmitted
wirelessly over GSM channels via the video signal stream. Ex. 1008, 7:66–8:8.
Independent claim 1 further recites “a motion compressor and a still frame
compressor associated with each image transducer and positioned between the
image transducer and the second multiplexer.” Brusewitz discloses encoder 26
associated with camera 10.
Independent claim 1 additionally recites “wherein said camera may capture
both full motion video and still frame video, alternately or simultaneously, and
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transmit both compressed full motion video and compressed still frame video,
alternately or simultaneously.” Brusewitz discloses that digital image data may be
transmitted wirelessly over GSM channels via the video signal stream. Ex. 1008,
7:66–8:8. Brusewitz also discloses that the video signal stream may include video
image frames interleaved with high resolution images. Ex. 1008, 5:32–35.
Petitioner sets forth similar analyses for claims 2–6, 8–10, 13, 17, and 19.
4. Patent Owner’s Response and Analysis
Patent Owner asserts the following:
Ohki does not disclose a camera that includes “an image transducer,”
“a motion video compressor,” “a still frame compressor,” “a first
multiplexor,” and “a second multiplexor” because Ohki paragraph 34
states that the compression (step s13) is performed by the
microcomputer 18 and then sent to personal computer 14 in FIG. 5,
but FIG. 5 shows that there is only 1 microcomputer for all 16
“cameras” (item 1 in FIG. 5), yet claims 1 and 19 have a
“compressor” for each camera.
PO Resp. 11 (citing Ex. 2001 ¶ 47). As an initial matter, we are not persuaded
because Patent Owner attacks Ohki individually while the ground of
unpatentability is based on a combination of Brusewitz and Ohki. In re Keller,
642 F.2d 413, 426 (CCPA 1981) (“one cannot show non-obviousness by attacking
references individually where, as here, the rejections are based on combinations of
references.”). To that end, Brusewitz, and not Ohki, is cited for disclosing each of
“an image transducer,” “a motion video compressor,” “a still frame compressor,”
“a first multiplexor,” and “a second multiplexor.”
Moreover, Patent Owner asserts that “there is only 1 microcomputer for all
16 ‘cameras’ (item 1 in FIG. 5 [of Ohki]), yet claims 1 and 19 have a ‘compressor’
for each camera.” PO Resp. 11. The cited portion of the Craner Declaration
asserts something similar as follows: “[t]he invention of Monroe, however, not
only requires a ‘compressor’ for each camera but that the compressor be part of the
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camera.” Ex. 2001 ¶ 47. As in our analysis set forth above with respect to
comparable arguments related to Seeley, we are not persuaded, because (1) none of
independent claims 1 and 19 requires that one compressor cannot be associated
with each of multiple image transducer, (2) none of independent claims 1 and 19
recites that compressors must be enclosed in the same housing as other camera
components, and (3) Petitioner’s proffered combination of Brusewitz and Ohki
does account for multiple cameras (Ohki), each with their own compressors
(Brusewitz).
Patent Owner asserts additionally that Petitioner does not provide any
reasoning or evidence as to how the prior art is modified or combined in the way
the claimed invention is arranged. As an initial mater, we note that Patent Owner
does not identify any specific modifications or combinations set forth by Petitioner
with which they disagree for lack of reasoning or evidence. Moreover, we are not
persuaded by Patent Owner’s assertions because Petitioner has provided such
reasoning and evidence in the form of the Wicker Declaration and the prior art
references, for example, as set forth above in its analysis as to how encoder 16 of
Brusewitz at least suggests both the “motion video compressor” and “still frame
compressor” recited in independent claim 1.
5. Conclusion
After considering Petitioner’s and Patent Owner’s positions, as well as their
supporting evidence, we determine that, by a preponderance of the evidence,
Petitioner has met its burden for showing that claims 1–6, 8–10, 13, 17, and 19 of
the ’913 patent are unpatentable over Brusewitz and Ohki.
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E. Claim 13 — Alleged Obviousness over Seeley and Ohki;
Claims 5, 7, 10, 11 — Alleged Obviousness over Seeley, Ohki, and Fernandez;
Claims 14 and 31–33 — Alleged Obviousness over Seeley, Ohki, and Sorokin
Petitioner asserts that claims 5, 7, 10, 11, 13, 14, and 31–33 are unpatentable
under 35 U.S.C. § 103(a) as obvious over various combinations of Seeley, Ohki,
Fernandez, and Sorokin. Pet. 15–23. In support of these asserted grounds of
unpatentability, Petitioner provides detailed explanations as to how the subject
matter of each claim is disclosed or suggested by various combinations of Seeley,
Ohki, Fernandez, and Sorokin, and relies on a Declaration of Dr. Stephen B.
Wicker. Pet. 15–23 (citing Ex. 1003 ¶¶ 42–52). Specifically, Petitioner cites
portions of Seeley as disclosing every limitation of claims 5, 7, 10, 11, 13, 14, and
31–33, except for certain features, and then proposes modifying Seeley in view of
one or more of Ohki, Fernandez, Sorokin, and Dr. Wicker’s Declaration so as to
render obvious those features.
Patent Owner disagrees with Petitioner’s assertions for the same reasons as
set forth above with respect to the ground of unpatentability based on Seeley alone.
PO Resp. 7–14. We are not persuaded for the same reasons as set forth above, and
thus our analysis need not be repeated here.
After considering Petitioner’s and Patent Owner’s positions, as well as their
supporting evidence, we determine that, by a preponderance of the evidence,
Petitioner has met its burden for showing that claim 13 of the ’913 patent is
unpatentable over Seeley and Ohki; claims 5, 7, 10, and 11 of the ’913 patent are
unpatentable over Seeley, Ohki, and Fernandez; and claims 14 and 31–33 of the
’913 patent are unpatentable over Seeley, Ohki, and Sorokin.
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F. Claims 7 and 11 — Alleged Obviousness over Brusewitz, Ohki, and
Fernandez;
Claims 14 and 31–33 — Alleged Obviousness over Brusewitz, Ohki, and Sorokin
Petitioner asserts that claims 7, 11, 14, and 31–33 are unpatentable under
35 U.S.C. § 103(a) as obvious over various combinations of Brusewitz, Ohki,
Fernandez, and Sorokin. Pet. 34–40. In support of these asserted grounds of
unpatentability, Petitioner provides detailed explanations as to how the subject
matter of each claim is at least suggested by various combinations of Brusewitz,
Ohki, Fernandez, and Sorokin, and relies on a Declaration of Dr. Stephen B.
Wicker. Pet. 34–40 (citing Ex. 1003 ¶¶ 59–62, 64–66). Specifically, Petitioner
cites portions of Brusewitz as disclosing every limitation of claims 7, 11, 14, and
31–33, except for certain features, and then proposes modifying Brusewitz in view
of one or more of Ohki, Fernandez, and Sorokin so as to render obvious those
features.
Patent Owner disagrees with Petitioner’s assertions for the same reasons as
set forth above with respect to the ground of unpatentability based on Brusewitz
and Ohki. PO Resp. 11–14. We are not persuaded for the same reasons as set
forth above, and thus our analysis need not be repeated here.
After considering Petitioner’s and Patent Owner’s positions, as well as their
supporting evidence, we determine that, by a preponderance of the evidence,
Petitioner has met its burden for showing that claims 7 and 11 of the ’913 patent
are unpatentable over Brusewitz, Ohki, and Fernandez; and claims 14 and 31–33 of
the ’913 patent are unpatentable over Brusewitz, Ohki, and Sorokin.
G. Petitioner’s Motion to Exclude
Petitioner’s Motion to Exclude seeks to exclude Mr. Craner’s Declaration
(Ex. 2001) and Exhibits 2002–2009. Paper 32. Patent Owner did not file an
opposition.
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The current situation does not require us to assess the merits of Petitioner’s
motion to exclude. As discussed above, even without excluding the identified
evidence, we have concluded that Petitioner has demonstrated by a preponderance
of the evidence that the challenged claims are unpatentable. Accordingly,
Petitioner’s motion to exclude is dismissed as moot.
III. CONCLUSION
We conclude Petitioner has shown by a preponderance of the evidence that:
(1) claims 1–4, 6, 8, 9, 17, and 19 are unpatentable under 35 U.S.C.
§ 103(a) as obvious over Seeley;
(2) claim 13 is unpatentable under 35 U.S.C. § 103(a) as obvious over
Seeley and Ohki;
(3) claims 5, 7, 10, and 11 are unpatentable under 35 U.S.C. § 103(a)
as obvious over Seeley, Ohki, and Fernandez;
(4) claims 14 and 31–33 are unpatentable under 35 U.S.C. § 103(a) as
obvious over Seeley, Ohki, and Sorokin;
(5) claims 1–6, 8–10, 13, 17, and 19 are unpatentable under
35 U.S.C. § 103(a) as obvious over Brusewitz and Ohki;
(6) claims 7 and 11 are unpatentable under 35 U.S.C. § 103(a) as
obvious over Brusewitz, Ohki, and Fernandez; and
(7) claims 14 and 31–33 are unpatentable under 35 U.S.C. § 103(a) as
obvious over Brusewitz, Ohki, and Sorokin.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–11, 13, 14, 17, 19, and 31–33 of the ’913 patent
are held unpatentable;
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FURTHER ORDERED that Petitioner’s Motion to Exclude is dismissed;
and
FURTHER ORDERED that because this is a final written decision, 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.

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For PETITIONER:

P. Weston Musselman, Jr.
musselman@fr.com

Adam Shartzer
Shartzer@fr.com

For PATENT OWNER:

Michael Smith
pto@patent-counselors.com