Mobotix Corp.v.e-Watch Nevada, Inc.

Patent Trial and Appeal Board

Oct 10, 2014

11272647 (P.T.A.B. Oct. 10, 2014)

Trials@uspto.gov Paper No. 39
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 IPR2013-00334
Patent 7,733,371
____________

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 1–10 of U. S. Patent No. 7,733,371 (Ex. 1001, “the ’371 patent”)
pursuant to 35 U.S.C. §§ 311–319. Paper 5 (“Pet.”). e-Watch, Inc. (“Patent
Owner”) filed a Preliminary Response. Paper 13. On November 13, 2013, we
instituted an inter partes review of claims 1–10 on certain grounds of
unpatentability alleged in the Petition. Paper 14 (“Dec.”). After institution of trial,
Patent Owner filed a Patent Owner Response (Paper 31, “PO Resp.”), to which
Petitioner filed a Reply (Paper 34). 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 1–10, are unpatentable.
B. The ’371 Patent
The subject matter of the ’371 patent relates to multimedia sensors for use in
connection with a digital networked surveillance system. Ex. 1001, 1:13–16.
Public facilities, such as schools, banks, airports, arenas, and the like, frequently
employ monitoring and surveillance systems to enhance security. Ex. 1001, 1:19–
28. 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 delivers video that is
viewable only on the system’s control console. Ex. 1001, 1:44–51. More recently,
security cameras have employed video compression technology, enabling
individual cameras to be connected remotely to a centralized system via telephone
circuits. Ex. 1001, 2:5–7. However, due to bandwidth constraints imposed by
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public-switched telephone systems, such surveillance systems are typically limited
to low-resolution images, or low frame rates, or both. Ex. 1001, 2:8–10.
To solve these and other problems, methods and systems are disclosed in the
’371 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, 2:42–46. According
to the ’371 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, 2:50–54.
An internal data storage device, such as a small disk drive, may be
embedded into the camera. Ex. 1001, 5:8–9. Stored images or video and audio
may be retrieved later for analysis or archival, either by removal of the storage
device or by transfer of the stored data over the network. Ex. 1001, 5:12–15.
An additional camera feature may include additional sensors to detect
notable conditions, which sensors in turn may include a smoke or fire detector, an
alarm pull-handle, a glass breakage detector, a motion detector, and so on.
Ex. 1001, 5:16–20. An internal microphone and associated signal processing
system may be equipped with suitable signal processing algorithms for the purpose
of detecting suitable acoustic events. Ex. 1001, 5:20–23. The camera may be
equipped with a short-range receiver that may detect the activation of a wireless
“panic button” carried by facility personnel, where the “panic button” may employ
infrared, radio frequency (RF), ultrasonic, or other suitable methods to activate the
camera’s receiver. Ex. 1001, 5:25–30.
When the camera is powered-on, it may be triggered by various alarms to
initiate transmission, triggered by commands sent by the server, or pre-
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programmed to transmit at certain times or intervals. Ex. 1001, 5:35–39. An
onboard archival system may be included to permit temporary storage of data prior
to transmission, permitting transmission of pre-event data. Ex. 1001, 5:40–43.
The onboard archival system also may permit internal storage of images or video at
a different resolution than that of images or video transmitted over the network.
Ex. 1001, 5:43–45. This may allow pre- and post-event analysis of video at higher
resolutions than that used for transmission. Ex. 1001, 5:45–47. The on-board
storage also may allow the device to store data during times when a network
connection is absent or intermittent. Ex. 1001, 5:47–49.
C. Illustrative Claim
Of challenged claims 1–10, claims 1 and 6 are independent, and independent
claim 1 is reproduced below.
1. Apparatus for surveillance of an area, the area, including
at least one monitored zone, said apparatus being configured for
communication with an internet protocol network, the internet
protocol network being configured for communication with at least
one monitoring station configured for displaying compressed digital
image data transmitted from the apparatus over the internet protocol
network to the monitoring station, said apparatus comprising:
a video camera positioned to collect image data of a monitored
zone;
said video camera including an analog to digital converter
operable to provide digital image data, the digital image data
corresponding to collected image data;
said video camera including a compressor in communication
with the analog to digital converter to receive digital image data, said
compressor being operable to compress the digital image data to
provide compressed digital image data;
said video camera including digital storage in communication
with at least one of said analog to digital converter and said
compressor to receive the compressed digital image data, said digital
storage being configured for retrieval from said digital storage a
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retrieved selection of the compressed digital image data, the retrieved
selection of the compressed digital image data being retrieved upon
occurrence of a triggering event, the retrieved selection of the
compressed digital image data having a retrieved image resolution;
said video camera being configured for communication with the
internet protocol network, said video camera being configured to
transmit to the internet protocol network the retrieved selection of the
compressed digital image data, said video camera being configured to
transmit to the internet protocol network other of the compressed
digital image data, the other of the compressed digital image data
being transmitted to the internet protocol network without being
retrieved from said digital storage, the other of the compressed digital
image data being transmitted to the internet protocol network upon
occurrence of the triggering event, the other of the compressed digital
image data upon being transmitted to the internet protocol network on
a near real-time basis, the other of the compressed digital image data
having a respective other image resolution, the respective other image
resolution being less than the retrieved image resolution;
whereby transmission of both the retrieved selection of the
compressed digital image data and the other of the compressed digital
image data provides for display at the at least one monitoring station
both of the following:
for display on a near real-time basis the other of the compressed
digital image data, and
for display on a time-delayed basis the retrieved selection of the
compressed digital image data, the retrieved selection of the
compressed digital image data originating before termination of one
of the following:
transmission of the other of the compressed digital image data,
and
the triggering event.
D. Prior Art References Alleged to Support Unpatentability
The following prior art references were asserted in the instituted grounds:
Ely WO 97/40624 Oct. 30, 1997 Ex. 1005
Fernandez U.S. Patent 6,697,103 Feb. 24, 2004 Ex. 1006
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Bonshihara JP 11–284987 Oct. 15, 1999 Ex. 1007
1

Seeley U.S. Patent 6,069,655 May 30, 2000 Ex. 1009
E. Grounds of Unpatentability Instituted for Trial
The following table summarizes the challenges to patentability that were
instituted for inter partes review:
Claim Grounds Reference(s)
Claims 1–10 § 103 Bonshihara and Seeley
Claims 1–10 § 103 Ely, Seeley, and Fernandez
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
Ex. 1007 is a Japanese language document. Accordingly, all citations to
Bonshihara in this Decision will be to its English language translation, Ex. 1008,
unless otherwise indicated.
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1. Compressor
Independent claims 1 and 6 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 9–10. For support, Petitioner cites a definition of “compressor” from
Computer User’s Dictionary, as well as several portions of the ’371 patent. Pet. 4;
Reply 9–10 (citing Ex. 1001, 5:65–66, 10:16–18, 38–41). 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 ’371 patent is as follows: “the capability for placing multiple
sensors in a single enclosure or unit greatly 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, 5:61–66 (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. 8–9. 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 and the following
citation: Miyazaki, T.; Kuroda, I., “Real-time software video encoder on a
multimedia RISC processor,” Signal Processing Systems, 1998, SIPS 98, 1998
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IEEE Workshop, vol., no., pp. 33, 42, 8–10 Oct 1998. Ex. 2001
2
; (“Craner
Declaration”).
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 exclude software-based compressors, the fact
that the Specification does not expressly 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 software
implementations. To that inquiry, Patent Owner has not provided any analysis.
Concerning the Craner Declaration, it refers to two references, neither of
which is of record. Upon reviewing the cited webpage, attached hereto as Exhibit
3001, we are not persuaded that it supports Patent Owner’s position. Moreover,
the Craner Declaration recites the following:
a compressor 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

2
Per our Order of February 6, 2014, all references to Exhibit EWA1001 in the
Patent Owner Response will be assumed to refer to Ex. 2001. Paper 30.
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asserts that “compressor” is software implemented on a processor, rather than
disembodied software.
2. Digital Image Data
As will become evident in the analysis, Patent Owner seeks to limit the
construction of “digital image data” to video data. We are unpersuaded. The ’371
patent does not define explicitly any of “data,” “image data,” and “digital image
data.” The ’371 patent discloses the following concerning “digital image data”:
The subject invention is directed to a fully digital camera system
having the capability 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, 2:42–46 (emphasis added).
The described camera uses video compression techniques to reduce
the amount of image data that must be conveyed by the network.
Over recent years, a number of image and video compression
techniques have been perfected, which may be advantageously
employed to significantly reduce the amount of visual data, while
preserving the visual quality.
Ex. 1001, 3:16–21 (emphasis added). We determine that “digital image data” is
not limited to video, because it is broad enough to cover either still image or video
data.
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
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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.
B. Claims 1–10 — Alleged Obviousness over Bonshihara and Seeley
Petitioner asserts that claims 1–10 are unpatentable under 35 U.S.C. § 103(a)
as obvious over Bonshihara and Seeley. Pet. 46–60. Patent Owner disagrees with
Petitioner’s assertions. PO Resp. 9–16.
1. Bonshihara (Exhibit 1008)
Bonshihara discloses an image monitoring system that captures images for
crime prevention and security, simultaneously enabling real-time monitoring of the
images at a remotely located monitoring station. Ex. 1008 ¶ 1. Image capture and
recording device 100 is shown below in Figure 2 of Bonshihara.
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Figure 2 of Bonshihara illustrates the structure of
image capture and recording device 100.
Bonshihara discloses constantly capturing image data via optical lens 101
and CCD element 102. Ex. 1008 ¶ 21. The image data is compressed and encoded
by image signal processor 104, using a standardized procedure such as JPEG,
MPEG, or the like, and then sent to frame memory 105 of image capture and
recording device 100, with the captured image data being taken into memory 106a
at set intervals by controller 106. Ex. 1008 ¶¶ 23, 38, 39. The image data in
memory 106a then is supplied to hard disk drive 108. Ex. 1008 ¶ 40. Separate
from the capturing of the image data in memory 106a, the image data also is
transmitted to monitoring device 200. Ex. 1008 ¶ 41. Bonshihara discloses that
the rate of frame transmission to monitoring device 200 is 1/10 the rate of
capturing image data in memory 106a. Ex. 1008 ¶ 41. The transmission of the
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image data can be realized using a socket supplied by a communications protocol,
Transmission Control Protocol/Internet Protocol (“TCP/IP”), which is used widely
on the Internet, local area networks (“LANs”), and the like. Ex. 1008 ¶ 42.
Monitoring device 200 is shown below in Figure 3 of Bonshihara.

Figure 3 of Bonshihara illustrates the
structure of monitoring device 200.
3

If there is a need to view detailed images of an abnormal situation, a
supervisor can use command input 201 of monitoring device 200 to designate
image capture recording device 100 that is filming the detected abnormality.
Ex. 1008 ¶ 0051. Specifically, the supervisor can input a desired time frame
ranging from the present moment to twenty to thirty minutes ago, and issue a
captured image data download request. Ex. 1008 ¶ 0051. The desired image data
then is read out of hard drive 108 of image capture and recording device 100 via

3
Although almost all of the references to Bonshihara in this Decision are to the
submitted certified English language translation of Bonshihara (Ex. 1008), here,
Figure 3 of the Japanese language version of Bonshihara (Ex. 1007) is shown,
because the reference numbers shown in Figure 3 of the submitted certified
English language translation of Bonshihara (Ex. 1008) are illegible.
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computer network 1a, so as to be played back and displayed as a continuous
moving image on monitor 230. Ex. 1008 ¶ 0051.
2. Seeley (Exhibit 1009)
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. 1009,
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. 1009, 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. 1009, 9:24–27. SCU 12 includes image acquisition section 24
which receives video signals from each of cameras 22, these signals representing
images of scenes observed by respective cameras 22. Ex. 1009, 10:43–46.
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When motion is detected, cameras 22 take full frame images of the scene.
Ex. 1009, 12:66–67. Motion may be detected by sensors S1–S3 via alarm unit 16.
Ex. 1009, 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. 1009, 13:27–30. Video
images from cameras 22 also are supplied to video compression module 50.
Ex. 1009, 18:26–28. From compression module 50, compressed video images may
be sent directly (i.e., live) through video output 46 to central station CS via
terminal adaptor 20. Ex. 1009, 18:34–36; Fig. 7.
SCU 12 continuously compresses and stores both video images and full
frame images. Ex. 1009, 14:47–55. Once a communication path is established,
both compressed video images and compressed full frame images are continuously
relayed from SCU 12 to central station CS. Ex. 1009, 14:50–55. The relay is done
in a manner that preserves as good a quality that is permissible given a
communication channel bandwidth and requisite compression requirements.
Ex. 1009, 14:55–15:10. Seeley discloses that the video images may be relayed
after sending the snapshots. Ex. 1009, 6:13–15, 13:22–33.
3. Petitioner’s Position
Petitioner asserts that claims 1–10 are unpatentable under 35 U.S.C. § 103(a)
as obvious over Bonshihara and Seeley. Pet. 46–60. In support of this asserted
ground of unpatentability, Petitioner provides detailed explanations as to how the
subject matter of each claim is met by the combined teachings of Bonshihara and
Seeley, and relies on a Declaration of Dr. Stephen B. Wicker (“Dr. Wicker”). Pet.
46–60 (citing to Ex. 1003 ¶¶ 30–32, 53–54, 64–68). Specifically, Petitioner cites
portions of Bonshihara as disclosing every limitation of claims 1–10, except for
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certain features, and then proposes modifying Bonshihara in view of Seeley so as
to render obvious those features.
For example, each of independent claims 1 and 6 requires a video camera
positioned to collect digital image data of a monitored zone. Bonshihara discloses
constantly capturing image data via optical lens 101 and CCD element 102 of
image capture and recording device 100. Ex. 1008 ¶ 21. Independent claims 1 and
6 each require compressing and storing the image data. Bonshihara discloses that
the image data is compressed and encoded by image signal processor 104, using a
standardized procedure such as JPEG, MPEG, and the like, and then sent to frame
memory 105 of image capture and recording device 100, with the captured image
data being taken into memory 106a at set intervals by controller 106. Ex. 1008
¶¶ 23, 38, 39. Independent claims 1 and 6 each require additionally that the video
camera is configured for communication with an internet protocol network.
Bonshihara discloses that transmission of the image data to from image capture
and recording device 100 to monitoring device 200 can be realized using a socket
supplied by a communications protocol, TCP/IP, which is used widely on the
Internet, LANs, and the like. Ex. 1008 ¶ 42. Independent claims 1 and 6 each
require also the transmission of two sets of digital image data. Bonshihara
discloses that separate from the capturing of the image data in memory 106a, the
image data also is transmitted to monitoring device 200. Ex. 1008 ¶ 41.
Petitioner acknowledges that Bonshihara does not disclose expressly “the
respective other image resolution being less than the retrieved image resolution,”
as recited in independent claims 1 and 6. Petitioner then cites the Declaration of
Dr. Wicker for the following:
It would have been obvious to a POSITA at the time of the invention
to transmit both low resolution video and high resolution stored
images from the same input image data stream such that the video
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image data has a lower resolution than the stored image data. Wicker
Dec[l]., ¶¶ 30-32, 53-54. Moreover, a POSITA would understand that
resolution of “live” compressed image data as compared to resolution
of stored image data was a matter of design choice, and the resolution
of one can be either greater than, less than, or the same as the other
depending on what is desired for a particular application in view of
available system resources. In order to alleviate unwanted
transmission delay in view of bandwidth constraints, the resolution of
“live” video data transmitted over a network was commonly of lower
resolution than stored image data transmitted over a network. See
Wicker Decl., ¶¶ 30-32, 53-54.
Pet. 53. Additionally, Petitioner cites Seeley for disclosing the transmission of full
resolution snapshots and compressed video, to support further Dr. Wicker’s above
assertion, and Petitioner’s conclusion, that it was known to transmit both low
resolution video and high resolution stored images from the same input image data
stream such that the video image data has a lower resolution than the stored image
data. Pet. 53 (citing Ex. 1009, 14:55–15:10).
Petitioner sets forth similar analyses for dependent claims 2–5 and 7–10.
4. Patent Owner’s Response and Analysis
Patent Owner asserts that Seeley does not disclose “the transmission of full
resolution snapshots and compressed video,” because camera 22 of Seeley lacks
both compressors 44, 50 and processor 30, both of which reside in SCU 12.
Presumably, Patent Owner asserts that this is relevant because independent claims
1 and 6 each require that the transmission of full resolution snapshots and
compressed video be from a video camera. Patent Owner’s assertions are
misplaced for several reasons. First, independent claim 1 does not recite “full
resolution snapshots and compressed video.” Independent claim 1 only recites two
sets of “compressed digital image data.” Second, Patent Owner attacks Seeley
individually while the ground of unpatentability is based on a combination of
Bonshihara and Seeley. In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“one
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cannot show non-obviousness by attacking references individually where, as here,
the rejections are based on combinations of references.”). To that end, Bonshihara
discloses that image capturing and recording device 100 (i.e., camera) transmits
continuously image data to monitoring device 200. Ex. 1008 ¶ 41. Separately,
Bonshihara discloses transmitting, in an abnormal situation, image data from hard
drive 108 of image capturing and recording device 100 (i.e., camera). Ex. 1008
¶ 0051. Thus, Bonshihara discloses two sets of “compressed digital image data,”
as required by independent claim 1.
Insofar as Patent Owner may be addressing tangentially the limitation of
“the respective other image resolution being less than the retrieved image
resolution,” as recited in independent claims 1 and 6, Patent Owner’s assertions are
still misplaced, as the ground of unpatentability is based on a combination of
Bonshihara and Seeley. In re Keller, 642 F.2d at 426. Specifically, where Seeley
discloses it was known to transmit both low resolution video and high resolution
stored images from the same input image data stream such that one set of image
data has a lower resolution than another set of image data (Ex. 1009, 14:55–15:10),
we are persuaded by Petitioner’s assertions and evidence that one of ordinary skill
at the time of the invention would have known to modify the two transmissions
from image capturing and recording device 100 (i.e., camera) of Bonshihara in the
same way.
Patent Owner asserts also that Bonshihara does not disclose “. . . the
retrieved selection of the compressed digital image data having a retrieved image
resolution; . . . the other of the compressed digital image data having a respective
other image resolution, the respective other image resolution being less than the
retrieved image resolution,” as recited in independent claims 1 and 6. Specifically,
Patent Owner asserts that “Bonshihara lacks essential structure, understanding and
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motivation (i.e., the same goal) to produce in a camera” the two transmitted
compressed digital image data streams of the aforementioned claim limitations,
because of the following:
Dr. Wicker’s assertion to the contrary (Decision, Paper 14, 14:12-25)
finds motivation to “alleviate unwanted transmission delay” by setting
a goal of avoiding the bandwidth [constraints] that dominate
Bonshihara. Dr. Wicker also reasons that determining the resolution
of two transmitted compressed digital image data streams was a
matter of design choice. Dr. Wicker conspicuously fails to
acknowledge that a POSITA in possession of Bonshihara would
possess the teaching of using only one stream of digital image data
having a single resolution, and limiting transmission to 1/10th of
collection speed, in order to meet Bonshihara’s bandwidth limitations.
(Ex. 1007). This series of observations demonstrates that the
reasoning of Dr. Wicker is distorted by impermissible hindsight
reconstruction. On the contrary, a POSITA in possession of
Bonshihara would continue as taught by Bonshihara to cut
transmission to 1/10th or less of collected image data, and would
continue to avoid altogether transmitting more than one stream of
compressed digital image data.
PO Resp. 14–15. Essentially, Patent Owner asserts that one of ordinary skill
would not modify Bonshihara to include two transmitted compressed digital image
data streams because of bandwidth constraints. We are not persuaded by Patent
Owner’s assertions for several reasons. As an initial matter, Bonshihara discloses
two transmitted compressed digital image data streams. Ex. 1008 ¶¶ 41, 52.
Bonshihara cannot be said to teach away from that which it discloses expressly.
Moreover, Seeley discloses expressly that the relay of two compressed digital
image data streams would have been done in a manner that preserves as good a
quality as is permissible given a communication channel bandwidth and requisite
compression requirements. Ex. 1009, 14:55–15:10. Thus, we are persuaded one of
ordinary skill would have known how to implement the two compressed digital
image data streams of Seeley within the bandwidth constraints of Bonshihara.
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Patent Owner asserts that Seeley does not disclose “that video images may
be relayed after sending snapshots,” because camera 22 of Seeley lacks both
compressors 44, 50 and processor 30, both of which reside in SCU 12.
Presumably, Patent Owner asserts that this is relevant because dependent claims 3
and 8 each recite “the other of the compressed digital image data being transmitted
to the internet protocol network subsequent to transmission of the retrieved
selection of the compressed digital image data.” Patent Owner’s assertions are
misplaced, because Seeley discloses it was known to relay video images after
sending snapshots (Ex. 1009, 6:13–15, 13:22–33), and we are persuaded by
Petitioner’s assertions and evidence that one of ordinary skill at the time of the
invention would have known to modify the two transmissions from image
capturing and recording device 100 (i.e., camera) of Bonshihara in the same way.
Patent Owner asserts further that neither Seeley nor Bonshihara discloses a
camera configured for communication with an internet protocol network. Patent
Owner does not provide any further analysis, except to cite one paragraph of the
Craner Declaration. That cited portion asserts the following: “Meanwhile, as
noted previously, Seeley fails to even mention the words ‘network’ ‘Internet’ ‘IP,’
‘TCP’ or other terminology that would suggest the cameras of his invention were
‘configured for communication with the internet protocol network.’” Ex. 2001
¶ 41. Presumably, Patent Owner asserts that this is relevant because independent
claims 1 and 6 each recite “said video camera being configured for communication
with the internet protocol network.” We are not persuaded by Patent Owner’s
assertion, however, as Bonshihara discloses this claim limitation. Specifically,
Bonshihara recites the following:
[t]he communication message stored in the transmission buffer 109a
[of image capturing and recording device 100] is then transmitted via
computer network 1a to the transmission destination stored in this
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message under the control of communication controller 109. It should
be noted that in a working example the transmission and receipt of the
message on computer network 1a can be realized using a socket
supplied by a communication protocol TCP/IP which is widely used
on the Internet, LAN and the like.
Ex. 1008 ¶ 42. Patent Owner asserts additionally that Seeley does not disclose an
internet protocol network. Patent Owner’s assertion is misplaced, however, for as
set forth above, Bonshihara discloses this claim limitation.
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 1–10 of the ’371 patent are
unpatentable over Bonshihara and Seeley.
C. Claims 1–10 – Alleged Obviousness over Ely, Seeley, and Fernandez
Petitioner contends that claims 1–10 are unpatentable under 35 U.S.C.
§ 103(a) as obvious over Ely, Seeley, and Fernandez. Pet. 23–46. Patent Owner
disagrees with Petitioner’s assertions. PO Resp. 16–17.
1. Ely (Exhibit 1005)
Ely discloses surveillance systems including sensors for advising the
systems of alarm conditions. Ex. 1005, 1:6–9. One such system 100 is set forth
below in Figure 2 of Ely:
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Figure 2 illustrates a block diagram of a video
surveillance system.
System 100 includes central station 102 at which host computer 104 is
provided. Ex. 1005, 9:5–7. Host computer 104 includes user interface 108.
Ex. 1005, 9:7–10. Local area network (“LAN”) 112 is connected to host computer
104. Ex. 1005, 9:11–12. Data communicated between host computer 104 and
other components of system 100 are carried over LAN 112. Ex. 1005, 9:12–14.
Other system components connected to host computer 104 via LAN 112 include
camera units 114, monitors 116 (each connected to LAN 112 through a respective
video data decoding device 118), and sensor devices 120. Ex. 1005, 9:14–18.
User interface 108 includes one or more monitors, as well as other input/output
devices commonly provided as peripherals to personal computers. Ex. 1005, 9:28–
32. Components of camera unit 114 are shown below in Figure 3 of Ely:
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Figure 3 schematically illustrates camera unit 114 used in
the system of Figure 2.
Camera unit 114 includes memory board 136, which receives an analog
video signal output from camera 130, and then digitizes and compresses the video
signal before storing it in memory 150 as video data. Ex. 1005, 11:8–26. Memory
150 is one or more of RAM, EEPROM, and flash memory. Ex. 1005, 11:21–23.
Camera unit 114 also includes control circuit 134, which is conditioned to receive
commands calling for reading out and transmission to central station 102 of
previously stored compressed video data. Ex. 1005, 13:9–12. Transmission of the
compressed video data that was read out from memory 150 may be virtually
parallel with continued transmission of “live” compressed video data. Ex. 1005,
13:19–22.
Host computer 104 handles instructions for displaying “live” video signals
generated by camera units 114. Ex. 1005, 14:19–22. For example, host computer
104 specifies particular camera unit 114, and a particular monitor on which video
data from camera unit 114 is to be displayed. Ex. 1005, 14:22–26. If a user
indicates that a block of video data is to be displayed, host computer 104 sends a
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retrieve command (via LAN 112) to selected camera unit 114. Ex. 1005, 17:26–
29. The desired video data is then read out from memory 150 in designated
camera unit 114 and transmitted via LAN 112. Ex. 1005, 17:29–32. The
transmitted video data then is “virtually routed” to a designated monitor. Ex. 1005,
17:32–33.
2. Fernandez (Exhibit 1006)
Fernandez discloses an integrated fixed and/or wireless network and
associated database and software functionality for monitoring and processing
remote and/or local moveable objects. Ex. 1006, 1:33–36. According to
Fernandez, a preferred integrated network monitoring system includes network
communications infrastructure 8. Ex. 1006, 2:22–26. Network 8 may be a
functional aggregate of multiple sub-networks, including conventional or
proprietary networking equipment for enabling access to and/or through the World
Wide Web (WWW), or other functionally equivalent local and/or wide area
network (LAN/WAN) interconnectivity. Ex. 1006, 2:26–31. Network 8 provides
digital connection to or from any allocated web node address or equivalently
accessible network resource, such as Uniform Resource Locator (URL), associated
hypertext files, and other proper domain name and file location, according to a
TCP/IP addressing scheme. Ex. 1006, 2:32–37. Network 8 further couples to one
or more of the following: conventional Internet, intranet or other LAN/WAN
network connection or server, and sensor or detector. Ex. 1006, 3:17–22.
According to Fernandez, such arrangements preferably use a conventional TCP/IP
protocol Internet website addressing scheme. Ex. 1006, 3:48–50. Fernandez
discloses that an overall integrated system preferably includes a geographically or
relatively fixed network of multiple detectors uniquely accessible through an
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Internet browsing interface, overlaid with a mobile set of targets closely associated
or attached to certain objects for remote monitoring thereof. Ex. 1006, 5:46–52.
3. Petitioner’s Position
Petitioner contends that claims 1–10 are unpatentable under 35 U.S.C.
§ 103(a) as obvious over Ely, Seeley, and Fernandez. Pet. 23–46. In support of
this asserted ground of unpatentability, Petitioner provides detailed explanations as
to how the subject matter of each claim is met by the combined teachings of Ely,
Seeley, and Fernandez, and relies on the Declaration of Dr. Wicker. Pet. 23–46
(citing Ex. 1003 ¶¶ 20–26, 30–32, 35, 37–40, 42–47, 59–63). Specifically,
Petitioner cites portions of Ely as disclosing every limitation of claims 1–10,
except for certain features, and then proposes modifying Ely in view of a
combination of Seeley and Fernandez so as to render obvious those features.
For example, independent claims 1 and 6 each require a video camera
positioned to collect digital image data of a monitored zone. Ely discloses
surveillance systems including camera units 114 for advising the systems of alarm
conditions. Ex. 1005, 1:6–9, Figs. 2–3. Independent claims 1 and 6 each require
compressing and storing the image data. Camera unit 114 of Ely includes memory
board 136, which receives an analog video signal output from camera 130, and
then digitizes and compresses the video signal before storing it in memory 150 as
video data. Ex. 1005, 11:8–26. Independent claims 1 and 6 each require also the
transmission of two sets of digital image data. Ely discloses transmission of the
compressed video data that was read out from memory 150 may be virtually
parallel with continued transmission of “live” compressed video data. Ex. 1005,
13:19–22.
Petitioner acknowledges that Ely does not disclose expressly “said video
camera being configured to transmit to the internet protocol network the retrieved
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selection of the compressed digital image data,” as recited in independent claims 1
and 6. Petitioner then cites the Declaration of Dr. Wicker for the following:
At the time of invention of the ’371 patent, a person of ordinary skill
in the art (POSITA) would have understood that Ely’s teachings are
not limited to implementation on a LAN. For instance, a POSITA
would understand that Ely’s video surveillance system could be
implemented across a WAN in view of Ely’s teachings that a plurality
of video cameras and storage devices are located remotely from a
central server and connected with connection circuitry. Ely p. 4, ll. 9-
15. In addition, the invention claimed by Ely is not limited to
implementation across a LAN. [ ] Ely p.21 Claim 1, pg.24 claims 20
and 24. Because a POSITA at the time of invention of the ’371 patent
would have considered Ely’s disclosure in the context of
implementation on a WAN, the POSITA would consider it obvious
(from a technical perspective) to use internet protocol in connection
with implementing Ely with a WAN, to facilitate network
communication. In particular, by 1995 the Internet had become
commercial and IP was ubiquitous. It would have been a natural
choice for a networking protocol.
Ex. 1003 ¶ 37. Moreover, Petitioner cites Fernandez for disclosing a system
including multiple sensors connected via LANs that are accessible over the Internet
using a TCP/IP addressing scheme. Ex. 1006, 2:22–37, 5:46–52. Petitioner then
cites the Declaration of Dr. Wicker for the following:
Accordingly, it would have been apparent to a person of ordinary skill
in the art to substitute the network configuration disclosed by
Fernandez (equipment networked for transmitting data via the Internet
using TCP/IP) for the network disclosed by Ely (local area network)
because it was well known at the time of filing of the ’371 patent that
networks could be configured for both internal and/or external
communication capabilities. In addition, it was well known that
remote monitoring of security data by a central control station could
be accomplished via data transmission over the Internet using the
TCP/IP protocol.
Ex. 1003 ¶ 46.
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Petitioner also acknowledges that Ely does not disclose expressly “the
respective other image resolution being less than the retrieved image resolution,”
as recited in independent claims 1 and 6. For that limitation, Petitioner sets forth a
similar analysis as that referenced above in the context of the grounds of
unpatentability in view of Bonshihara, in particular, why such a modification
would have been known to one of ordinary skill, particularly in view of Seeley.
Petitioner sets forth similar analyses for dependent claims 2–5 and 7–10.
5. Patent Owner’s Response and Analysis
Patent Owner asserts that for the same reasons that Seeley cannot be
combined with Bonshihara, Seeley cannot also be combined with Ely. We are not
persuaded for same reasons set forth supra in our analysis of the ground of
unpatentability based on a combination of Bonshihara and Seeley.
Patent Owner asserts further that Ely does not disclose “the retrieved
selection of the compressed digital image data having a retrieved image
resolution; . . . the other of the compressed digital image data having a respective
other image resolution, the respective other image resolution being less than the
retrieved image resolution,” as recited in independent claims 1 and 6. We are not
persuaded because the ground of unpatentability is based on a combination of Ely
and Seeley, while Patent Owner’s assertions are directed to Ely alone. In re Keller,
642 F.2d at 426. With regards to the specific limitation set forth above, Ely
discloses that transmission of the compressed video data read out from memory
150 may be virtually parallel with continued transmission of “live” compressed
video data. Ex. 1005, 13:19–22. Where Seeley discloses it was known to transmit
both low resolution video and high resolution stored images from the same input
image data stream such that one set of image data has a lower resolution than
another set of image data (Ex. 1009, 14:55–15:10), we are persuaded by
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Petitioner’s assertions and evidence that one of ordinary skill at the time of the
invention would have known to modify the two transmissions from camera unit
114 of Ely in the same way.
6. 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 1–10 of the ’371 patent are
unpatentable over Ely, Seeley, and Fernandez.
D. Petitioner’s Motion to Exclude
Petitioner’s Motion to Exclude seeks to exclude Mr. Craner’s Declaration
(Ex. 2001). Paper 36. Patent Owner did not file an opposition.
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 1–10 of the ’371 patent are unpatentable under 35 U.S.C. § 103(a)
over Bonshihara and Seeley; and
(2) claims 1–10 of the ’371 patent are unpatentable under 35 U.S.C. § 103(a)
over Ely, Seeley, and Fernandez.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–10 of the ’371 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