Provisur Technologies, Inc.

Patent Trials and Appeals Board

Mar 8, 2021

IPR2019-01466 (P.T.A.B. Mar. 8, 2021)

Trials@uspto.gov Paper 36
Tel: 571-272-7822 Date: March 8, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

WEBER, INC.,
Petitioner,
v.
PROVISUR TECHNOLOGIES, INC.,
Patent Owner.

IPR2019-01466
Patent 6,997,089 B2

Before MITCHELL G. WEATHERLY, TIMOTHY J. GOODSON, and
JON M. JURGOVAN, Administrative Patent Judges.
WEATHERLY, Administrative Patent Judge.
JUDGMENT
Final Written Decision
Determining Some Challenged Claims Unpatentable
35 U.S.C. § 318(a)
I. INTRODUCTION
A. BACKGROUND
Weber, Inc. (“Petitioner”) filed a petition (Paper 2, “Pet.”) to institute
an inter partes review of claims 1–14 (the “challenged claims”) of U.S.
Patent No. 6,997,089 B2 (Ex. 1001, “the ’089 patent”). 35 U.S.C. § 311.
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Provisur Technologies, Inc. (“Patent Owner”) timely filed a Preliminary
Response. Paper 6 (“Prelim. Resp.”). On March 10, 2020, based on the
record before us at the time, we instituted an inter partes review of all
challenged claims on all grounds alleged as indicated in the table below.
Paper 7 (“Institution Decision” or “Dec.”).
Claims challenged 35 U.S.C. § References
1, 3–5, 8–10, 13, 14 103 Whitehouse,1 Antonissen,2 Hardy3
2, 6, 7, 11, 12 103 Whitehouse, Antonissen, Hardy, Wyslotsky4
After we instituted this review, Patent Owner filed a Patent Owner
Response in opposition to the Petition (Paper 17, “PO Resp.”). Petitioner
filed a Reply in support of the Petition (Paper 21, “Reply”). Patent Owner
filed a Sur-reply responding to the Reply (Paper 24, “Sur-reply”). Patent
Owner did not move to amend any claim of the ’089 patent.
We heard oral argument on December 8, 2020. A transcript of the
argument has been entered in the record (Paper 35, “Tr.”).
Patent Owner filed a motion to exclude evidence (Paper 30, “Motion”
or “Mot.”). Petitioner opposed the Motion (Paper 31, “Opposition” or
“Opp.”). Patent Owner filed a reply in support of the Motion (Paper 33,
“Mot. Reply”).

1 British Patent No. GB 2,239,787 B (Ex. 1005, “Whitehouse”).
2 U.S. Patent No. 5,267,168 (Ex. 1006, “Antonissen”).
3 U.S. Patent No. 4,016,788 (Ex. 1007, “Hardy”).
4 U.S. Patent No. 4,136,504 (Ex. 1008, “Wyslotsky”).
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We have jurisdiction under 35 U.S.C. § 6. The evidentiary standard is
a preponderance of the evidence. See 35 U.S.C. § 316(e) (2018); 37 C.F.R.
§ 42.1(d) (2019). This Final Written Decision is issued pursuant to
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons expressed below, we conclude that Petitioner has
demonstrated by a preponderance of evidence that claims 1–10, 13, and 14
are unpatentable, but it has failed to do so for claims 11 and 12.
B. RELATED PROCEEDINGS
The parties identified as a related proceeding the co-pending district
court proceeding of Provisur Technologies, Inc. v. Weber, Inc. et al., Case
No. 5-19-cv-06021 (W.D. Mo. filed February 22, 2019), which involves the
’089 patent along with U.S. Patent Nos. 6,320,141; 6,669,005; 7,065,936;
7,533,513; 8,322,537; and 9,399,531. Pet. 75; Paper 3, 2.
C. THE ’089 PATENT
The ’089 patent “relates to slicing apparatus and associated conveyor
and classifier systems for slicing and grouping food products.” Ex. 1001,
1:6–8. The system is particularly well-suited for slicing and classifying
bacon, which often exhibits greatly varying distribution of fat and lean, to
maintain a consistent quality or weight from package to package. Id.
at 1:13–41. The system images the top slice of a stack of sliced food
product as “an accurate representation of the condition of all the slices in the
stack.” Id. at 2:53–54. The image, taken with a digital CCD type camera, is
analyzed on a pixel-by-pixel basis to determine a fat-to-lean ratio based on
the grayscale level of each pixel. Id. at 3:54–57, 4:37–44. Based on this
analysis, the system assigns a quality grade and routes particular stacks
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based on that grade to an appropriate conveyor to collect stacks of similar
grades into groups. Id. at 5:29–39.
Claims 1, 9, and 13 are the independent claims in the ’089 patent. Id.
at 5:48–8:12. Claim 1, which is illustrative, recites:
1. A method of classifying groups of slices collected in a stack
after being cut from a food product, comprising the steps of:
[1.1] removing a plurality of slices in succession from a food
product by cutting, using a high speed slicing apparatus;
[1.2] dropping said plurality of slices from said food product and
accumulating said plurality into a stack on a conveyor system
having at least one conveying surface;
[1.3] moving said stack on said conveying surface into an image
field of a digital image receiving device;
[1.4] generating pixel-by-pixel image data of a top slice of said
stack using the digital image receiving device;
[1.5] determining a surface area of the top slice from the data;
[1.6] determining a fat content of said top slice on a pixel-by-
pixel basis;
[1.7] comparing the fat content to at least one predetermined
limit; and
[1.8] classifying said stack according to said fat content and said
limit; and
[1.9] depending on how said stack is classified, conveying said
stack to a corresponding destination.
Id. at 5:48–6:2 (with bracketed labels added to ease discussion).
II. ANALYSIS
A. CLAIM INTERPRETATION
For petitions such as this one that are filed after November 13, 2018,
we interpret claims in the same manner used in a civil action under
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35 U.S.C. § 282(b) “including construing the claim in accordance with the
ordinary and customary meaning of such claim as understood by one of
ordinary skill in the art and the prosecution history pertaining to the patent.”
See Changes to the Claim Construction Standard for Interpreting Claims in
Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
51,340, 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b)
effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b)
(2019).5 When applying that standard, we interpret the claim language as it
would be understood by one of ordinary skill in the art in light of the
specification. Wasica Finance GmbH v. Continental Automotive Sys., Inc.,
853 F.3d 1272, 1279–80 (Fed. Cir. 2017). Thus, we give claim terms their
ordinary and customary meaning as understood by an ordinarily skilled
artisan. See Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir.
2005) (en banc). Only terms that are in controversy need to be construed,
and then only to the extent necessary to resolve the controversy. Nidec
Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
(Fed. Cir. 2017).
Neither party proposes any express interpretation of any claim terms.
Pet. 10; See generally PO Resp. We discern no terms in dispute or in need
of express interpretation. We merely apply the legal standards set forth
above when reading the claims.
B. THE PARTIES’ POST-INSTITUTION ARGUMENTS
In our Institution Decision, we concluded that the argument and
evidence adduced by Petitioner demonstrated a reasonable likelihood that

5 This rule change applies to petitions filed on or after November 13, 2018.
Id.
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claims 1–14 were unpatentable as obvious based on the challenges identified
in the table in Part I.A above. Dec. 17. We must now determine whether
Petitioner has established by a preponderance of the evidence that the
specified claims are unpatentable over the cited prior art. 35 U.S.C. § 316(e)
(2018). We previously instructed Patent Owner that “any arguments for
patentability not raised in the [Patent Owner Response] may be deemed
waived.” Paper 8, 8; see also In re NuVasive, Inc., 842 F.3d 1376, 1381
(Fed. Cir. 2016) (holding that patent owner’s failure to proffer argument at
trial as instructed in scheduling order constitutes waiver). Additionally, the
Board’s Trial Practice Guide states that the Patent Owner Response “should
identify all the involved claims that are believed to be patentable and state
the basis for that belief.” Office Patent Trial Practice Guide, 77 Fed. Reg.
48,756, 48,766 (Aug. 14, 2012).
C. LEGAL STANDARDS
Petitioner challenges the patentability of claims 1–14 on the grounds
that the claims are obvious. To prevail in its challenges to the patentability
of the claims, Petitioner must establish unpatentability by a preponderance
of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). “In an [inter
partes review], the petitioner has the burden from the onset to show with
particularity why the patent it challenges is unpatentable.” Harmonic Inc. v.
Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C.
§ 312(a)(3) (requiring inter partes review petitions to identify “with
particularity . . . the evidence that supports the grounds for the challenge to
each claim”)). This burden never shifts to Patent Owner. See Dynamic
Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
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2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–
27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review).
The Supreme Court in KSR International Co. v. Teleflex Inc., 550
U.S. 398 (2007), reaffirmed the framework for determining obviousness as
set forth in Graham v. John Deere Co., 383 U.S. 1 (1966). The KSR Court
summarized the four factual inquiries set forth in Graham that we apply in
determining whether a claim is unpatentable as obvious under 35 U.S.C.
§ 103(a) as follows: (1) determining the scope and content of the prior art,
(2) ascertaining the differences between the prior art and the claims at issue,
(3) resolving the level of ordinary skill in the pertinent art, and (4) when in
evidence, considering objective evidence indicating obviousness or
nonobviousness. KSR, 550 U.S. at 406 (citing Graham, 383 U.S. at 17–18).
Petitioner must explain how the proposed combinations of prior art
would have rendered the challenged claims unpatentable. An obviousness
analysis “need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR, 550 U.S. at 418; accord In re Translogic Tech., Inc., 504 F.3d 1249,
1259 (Fed. Cir. 2007). However, Petitioner cannot satisfy its burden of
proving obviousness by employing “mere conclusory statements,” but “must
instead articulate specific reasoning, based on evidence of record” to support
an obviousness determination. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
1364, 1380–81 (Fed. Cir. 2016). Petitioner also must articulate a reason
why a person of ordinary skill in the art would have combined the prior art
references. NuVasive, 842 F.3d at 1382.
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At this final stage, we determine whether a preponderance of the
evidence of record shows that the challenged claims would have been
rendered obvious in view of the asserted prior art. We analyze the asserted
grounds of unpatentability in accordance with these principles.
D. LEVEL OF ORDINARY SKILL
Based on testimony by Richard Hooper, Ph.D., Petitioner contends
that a person having an ordinary level of skill in the art would have had:
(1) a bachelor’s degree (or equivalent) in mechanical engineering
(or a similar field) and at least two years of experience working
on food processing and/or packaging systems (or in a similar
field); or (2) at least seven years of experience working on food
processing and/or packaging systems (or in a similar field).
Pet. 9–10 (citing Ex. 1003 ¶ 41). Patent Owner does not offer its own
definition of the level of ordinary skill. See generally PO Resp. We have
considered “the types of problems encountered in the art; prior art solutions
to those problems; rapidity with which innovations are made; sophistication
of the technology; and education level of active workers in the field.” In re
GPAC, 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc.
v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). We adopt
Petitioner’s proposal because Petitioner’s proposed definition is consistent
with the level of skill demonstrated in the cited prior art references. See
Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
E. CLAIMS 1, 3–5, 8–10, 13, AND 14: OBVIOUSNESS IN VIEW OF
WHITEHOUSE, ANTONISSEN, AND HARDY
Petitioner argues that the combined teachings of Whitehouse,
Antonissen, and Hardy render claims 1, 3–5, 8–10, 13, and 14 unpatentable
as obvious. Pet. 12–68. Patent Owner argues that Petitioner’s argument
fails for two reasons, neither of which is persuasive.
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1. Whitehouse
Whitehouse describes “a meat cutting apparatus, employing a knife
slicer, for removing slices from the face of a body of meat ready for
incorporation into sliced packs of predetermined weight, the apparatus
including scanning means for determining the surface area of the face of the
body of meat.” Ex. 1005, 2. Whitehouse’s system is illustrated in
Petitioner’s annotated version of Whitehouse’s Figure 1, reproduced below.

Petitioner’s annotated version of Whitehouse’s Figure 1 is a
partial sectioned schematic side view of Whitehouse’s apparatus.
Pet. 3, Ex. 1005, 7.
Body 2 of meat is moved incrementally to rotating cutter 3 and the cut
slices are scanned at 4 to determine the surface area. See Ex. 1005, 2,
Figs. 1, 2. “The slices produced by the blade 3 accumulate in a pile 22
which is then conveyed to the sensor 4 which scans the upper most surface
of the top slice to provide a measure of the area of the face of the meat 2.”
Id. at 10 (emphasis added).
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2. Antonissen
Antonissen relates to a “slicing
machine . . . for slicing food products,
particularly cheese, meat and pressed or
moulded meat products.” Ex. 1006,
1:6–10. Antonissen’s slicing machine is
illustrated in Petitioner’s annotated version
of Figure 1, reproduced at right. “[F]eed
mechanism 2 arranged to advance a
product 3 towards the blade 1.” Id. at 2:66–68. Camera 6 is positioned to
view end-face 5 (not labeled in Figure 1) of product 3 during slicing. Id.,
Abstract. Camera 6 captures an image of pixels and assigns a pixel value to
correspond to fat and a pixel value to correspond to lean. Id. at 3:54–57,
4:4–26. “The captured image is transferred to a frame store in computer
memory for analysis.” Id. at 4:30–31. “By the separate summation of all, or
an acceptable representative fraction of all, of the pixels whose grey level is
within the appropriate area threshold values, the areas of lean and fat may be
calculated.” Id. at 4:31–35. “Where the ratio of fat to lean of an individual
slice or the average ratio of a portion of slices exceeds some preset limit or
limits the slice or portion may be diverted to one or more separately
classified lines.” Id. at 4:39–42.
3. Hardy
Hardy discloses a slicer for slicing a block of material into slices and a
conveyor located below the slicer to collect the slices as they fall from the
slicer. Ex. 1007, 1:55–59. Petitioner’s annotated and colorized version of
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Hardy’s Figure 4,6 reproduced below, illustrates Hardy’s conveyor system
with a two-way diverter 32 (blue) and a three-way diverter 36 (green). Id.
at 5:52-6:6.

Petitioner’s annotated and colorized version of Hardy’s Figure 4
is a plan view of Hardy’s conveyor system with diverters. Pet. 5;
Ex. 1007, 2:20–21.
Hardy’s diverters enabled “articles flowing in a single stream to be
separated into three or more streams and vice versa.” Ex. 1007, 4:3–8. For
example, two-way diverter 32 (blue), located downstream of weigher 30,
diverts (1) batches having a weight within a predetermined range along one
path (e.g., path A to packing machine 42) and (2) batches having a weight
outside said predetermined range along another path (e.g., path B to
makeweight station 34). Id. at 1:65–2:3, 5:52–64, Fig. 4. Three-way
diverter 36 (green) divides the stream of products on path A into three
streams. Id. at 5:66–6:1.
4. Independent Claim 1
a. Petitioner’s Argument and Evidence
Petitioner argues that the combined teachings of Whitehouse,
Antonissen, and Hardy render claim 1 unpatentable as obvious. Pet. 13–37.

6 We have corrected an obvious typographical error in Petitioner’s version of
the figure in which the annotation mistakenly refers to “three-way diverter
32.”
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For most steps recited in the method of claim 1, Petitioner contends that
Whitehouse and Antonissen collectively suggest limitations 1.1–1.8
including slicing food into a stack of slices placed on a conveyor that passes
under an imaging device (1.1–1.3), imaging the top slice of the stack and
analyzing the fat content of that slice based on the image (1.4–1.6), and
classifying the stack based on that fat content when compared to a limit (1.7,
1.8). Id. at 13–26 (citing Ex. 1005, 2–10, claims 9, 10, Figs. 1, 2; Ex. 1006,
2:65–3:6, 3:17–25, 3:54–57, 3:62–4:26, 4:30–42, 6:44–52, 6:56–62,
7:14–24, 7:34–46, Figs. 1, 4A, 5, 6). Petitioner contends that Hardy
describes the last step (1.9) of conveying the stack to different destinations
depending upon how the stack is classified. Id. at 26–27 (citing Ex. 1007,
4:3–8, 5:52–59, Fig. 4). Petitioner relies upon testimony of Richard Hooper,
Ph.D., opining on how an ordinarily skilled artisan would understand the
teachings of Whitehouse, Antonissen, and Hardy. Id. at 13–28 (citing
Ex. 1003 ¶¶ 45–83).
Petitioner also argues that an ordinarily skilled artisan would have
been motivated to combine teachings of Whitehouse, Antonissen, and Hardy
in the manner claimed and would have expected to be successful in doing so.
Id. at 28–37. Petitioner relies upon Dr. Hooper’s testimony in which he cites
extensive objective evidence from the prior art as support for his opinions.
Id. (citing Ex. 1003 ¶¶ 84–98 (citing Ex. 1005, 1, 2, 4–11, Figs. 1, 2;
Ex. 1006, 2:65–3:6, 3:37–43, 3:54–4:26, 4:36–42, 6:63–68, 7:44–46, Figs. 1,
5; Ex. 1007, 1:55–2:8, 4:3–8, 5:52–6:14, Fig. 4; Ex. 1009, 69; Ex. 1010, 54,
57–60, 64, 65; Ex. 1011, 21, 32; Ex. 1012, 62, 64, 68; Ex. 1013, 1611, 1617;
Ex. 1014, 989, 993; Ex. 1015, 12; Ex. 1016, 55; Ex. 1017, 5:41–42, 6:19–21,
25:20–30)).
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Patent Owner does not dispute that Petitioner has demonstrated that
the combined teachings of Whitehouse, Antonissen, and Hardy describe or
suggest all limitations of claim 1 other than the “digital image receiving
device” of element 1.3. See PO Resp. 21–33 (only addressing prior art’s
alleged failure to disclose the “digital image receiving device”). Petitioner’s
argument and evidence summarized above, which we adopt as our own,
persuades us that the combination of Whitehouse, Antonissen, and Hardy
collectively disclose or suggest all elements of claim 1 other than the “digital
image receiving device.” We address Petitioner’s argument and evidence as
it relates to the “digital image receiving device” separately immediately
below.
b. Patent Owner’s Counterarguments
Patent Owner argues that Petitioner’s arguments that claim 1 is
obvious fail for two reasons. First, Patent Owner argues that Whitehouse
and Antonissen alone or in combination fail to disclose the “digital image
receiving device” recited in element 1.3. PO Resp. 21–32. Second, Patent
Owner argues that an ordinarily skilled artisan would not have had a
reasonable expectation of success in combining the teachings of Whitehouse
and Antonissen as Petitioner proposes. Id. at 35–41. Petitioner’s arguments
are persuasive on both issues.
i. Digital Image Receiving Device of Element 1.3
Patent Owner contends that Whitehouse’s sensor 4 is not a “digital
image receiving device” as implied by Petitioner (Pet. 19) because sensor 4
“is a length scanner” that does not generate an image. PO Resp. 22–24
(citing Ex. 2035 ¶¶ 70–74, 137–148). We need not resolve whether
Whitehouse’s sensor constitutes a “digital image receiving device” because
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Petitioner persuasively demonstrates that Antonissen’s camera, A/D
converter, and frame grabber collectively constitutes the claimed “digital
image receiving device.”
Patent Owner contends that Antonissen’s camera is not the “digital
image receiving device” because an ordinarily skilled artisan would view
Antonissen’s camera as producing images in analog form rather than digital
form. Id. at 24–28. Although we agree with Patent Owner that Antonissen’s
camera 6 produces an analog output and thus, alone, is not a “digital”
device, Petitioner consistently relies upon more than Antonissen’s camera as
constituting the claimed “digital image receiving device.” Pet. 20
(identifying Antonissen’s camera 6, A/D converter 13, and frame grabber).
In its Reply, Petitioner points out that Antonissen’s camera “performs
analog-to-digital conversion and image processing like the camera in the
’089 patent,” which also sends analog signals to an external A/D conversion
circuit to generate digital images. Reply 3–4. We agree with Petitioner that
Antonissen discloses the claimed “digital image receiving device.”
Antonissen’s camera 6 is “an asynchronous CCD” (i.e., a charge
coupled device). Ex. 1006, 3:17–20; Ex. 1003 ¶ 63; Ex. 2035 ¶ 79.
Antonissen explains that: “Using an A/D [analog-to-digital] converter 13
and conventional frame grabbing techniques the output from the camera 6 is
converted into an array of pixels for processing by the image processing
hardware 14.” Ex. 1006, 3:21–25. Both experts agree that Antonissen’s
conversion process generates an image in a digital format. Ex. 1003 ¶ 64;
Ex. 2035 ¶ 79. Antonissen’s digital images have a resolution of 500 by 500
pixels with the gray level of each pixel recorded within a range of 0–250.
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Ex. 1006, 3:54–57. Antonissen’s captured images are “transferred to a
frame store in computer memory for analysis.” Id. at 4:30–31.
Similarly, the ’089 patent indicates that its “digital image receiving
device” preferably includes a commercially available CCD type camera
called the Electrim EDC-1000N having a resolution of 640x480 pixels.
Ex. 1001, 3:62–63. The EDC-1000N camera head produces “analog output
signals” that are “digitized by an A/D converter on the interface card,”
which is “connected into the motherboard of the computer.” Ex. 1038, 2;
Ex. 1035 ¶ 10. The ’089 patent indicates that the EDC-1000N and “[d]igital
frame grabber PC-104 printed circuit board” are both part of its image
processing system 30. Ex. 1001, 3:63–65. However, the “frame grabber
PC-104 printed circuit board” may alternatively be located externally in
CPU 12. Id. at 4:6–7; see also Figs. 1, 2 (illustrating image processing
system 30 and CPU 12 in separate locations). After a digital image is
captured by the claimed digital image receiving device, software running “in
the system 30 or in the CPU 12 can then perform various analyses on the
digital image data.” Id. at 4:33–34. The software analyzes the gray level of
each pixel in the image, which is recorded on a scale of 0–255. Id.
at 4:37–39. The ’089 patent indicates that the “mathematical analysis of
pixel data can be as described in [Antonissen], herein incorporated by
reference.” Id. at 4:53–55.
Based on the record before us, we determine that the ’089 patent
describes the claimed “digital image receiving device” as encompassing the
CCD camera (EDC-1000N), A/D converter (on the “interface card” of the
EDC-1000N), and frame grabber (PC-104), which are materially the same as
Antonissen’s CCD camera 6, A/D converter 13, and frame grabber. The
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’089 patent’s reliance upon Antonissen’s methods of mathematically
analyzing the digital image data collected by its own hardware demonstrates
the material equivalence of the digital imaging hardware described in the
’089 patent and Antonissen. Accordingly, we determine that Petitioner has
proven by a preponderance of evidence that Antonissen describes the
claimed “digital image receiving device” recited in element 1.3.
ii. Reasonable Expectation of Success
Patent Owner argues that an ordinarily skilled artisan “would not have
had a reasonable expectation of success in combining Whitehouse and
Antonissen” for two reasons, neither of which is persuasive. PO
Resp. 36–41. First, Patent Owner contends that “Whitehouse’s one-
dimensional output of length data is incompatible with Antonissen’s analog
image data.” Id. at 36–38. Second, Patent Owner contends that an
ordinarily skilled artisan “would have appreciated that Antonissen’s camera
and image processing technique could not be reasonably used in
Whitehouse’s slicer.” Id. at 39–41. The preponderance of evidence
persuades us that an ordinarily skilled artisan would have had a reasonable
expectation of success in combining teachings of Whitehouse and
Antonissen to position a camera in a slicer system such as Whitehouse.
a) Allegedly “Incompatible” Data Formats of Whitehouse
and Antonissen
Patent Owner argues that an ordinarily skilled artisan would not have
combined Whitehouse’s “array of numbers” with the “analog image output
by Antonissen’s camera 6,” because the data output by Whitehouse’s
sensor 4 and Antonissen’s camera 6 are “incompatible.” Id. at 36–37.
Petitioner persuasively responds that it need not prove that an ordinarily
skilled artisan could or would swap Whitehouse’s sensor 4 with
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Antonissen’s camera 6. “[I]t is not necessary that the inventions of the
references be physically combinable to render obvious the invention under
review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). The relevant
inquiry is whether the claimed subject matter would have been obvious to
those of ordinary skill in the art in light of the combined teachings of those
references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). “Combining
the teachings of references does not involve an ability to combine their
specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973).
Petitioner has proposed only that an ordinarily skilled artisan would have
been motivated to use Antonissen’s higher fidelity imaging technique on the
meat after slicing, just as Whitehouse uses sensor 4. Pet. 15, 32–33;
Ex. 1035 ¶ 25. Petitioner persuades us that an ordinarily skilled artisan
would not have been hindered by the allegedly “incompatible” data output of
Whitehouse’s sensor 4 and Antonissen’s camera 6 when considering
whether to use Antonissen’s imaging techniques with Whitehouse’s meat
slicer.
b) Alleged Difficulty Substituting Antonissen’s Image
Processing Technique in Whitehouse’s Slicer
Patent Owner contends that an ordinarily skilled artisan would not
have reasonably expected to be able to use Antonissen’s imaging technique,
which requires illuminating the image target from below, with Whitehouse’s
slicer, which directs a sensor to the top slice of a stack. PO Resp. 39–40
(citing Ex. 1006, 4:56–60, Fig. 1; Ex. 2035 ¶¶ 203–214). The cited portion
of Antonissen states: “The face of the product is illuminated asymmetrically
from below, so that the area of the advancing product face is fully
illuminated and the area above the product boundary receives no direct
illumination and generally appears almost black, as viewed by the camera.”
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Ex. 1006, 4:56–60. Based upon this quoted statement, Dr. Howard
concludes that Antonissen suggests to an ordinarily skilled artisan that “a
camera cannot be mounted to a position directly above the conveyor, as the
conveyor surface would reflect light (and thus not appear black).” Ex. 2035
¶ 212 (quoting Ex. 1006, 4:56–60). Dr. Howard cites no other objective
evidence to support his conclusion. Id. Dr. Howard also opines that
Whitehouse and Antonissen fail to provide “any guidance” to an ordinarily
skilled artisan for how to reorient Antonissen’s light source in a slicer like
Whitehouse so that Antonissen’s imaging technique would remain effective.
Id. ¶¶ 212–214.
Relying upon testimony from Dr. Hooper, Petitioner counters that
machine vision systems were commonly used above products moving along
a conveyor to judge the quality of those products. Reply 19 (citing Ex. 1003
¶¶ 91–92). Dr. Hooper supports his testimony with objective evidence.
Ex. 1003 ¶¶ 91–92 (citing Ex. 1011, 32; Ex. 1009, 67; Ex. 1022, 137).
Petitioner also contends that Dr. Howard’s work demonstrates that
“reorienting Antonissen’s camera above a conveyor to classify food products
would have yielded predictable results.” Reply 19 (citing Ex. 2035 ¶ 132;
Ex. 1036, 45:3–46:2, 83:10–84:1, 86:24–87:8, 92:9–17). The cited
testimony relates to Dr. Howard’s experience using prior art downward
facing camera systems substantially the same as Antonissen’s to track robots
within the field of view so that the robots could be controlled to avoid
obstacles. Ex. 1036, 45:3–46:2, 83:10–84:1, 86:24–87:8, 92:9–17.
Petitioner also points out that Dr. Howard testified that he worked on prior
art systems in which the quality of food products on a conveyor were imaged
by downward-facing digital cameras and judged based on pixel-by-pixel
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analysis of the captured images. Reply 20 (citing Ex. 1036, 131:22–132:8,
133:6–18, 134:2–25, 138:25–139:10, 142:3–22). This cited testimony
persuades us that an ordinarily skilled artisan would have reasonably
expected to be able to place an imaging system such as Antonissen’s above a
food conveyor such as Whitehouse’s, capture digital images of those
products, analyze those images to evaluate the quality of the food product,
and divert the products based on their adjudged quality. Id. at 20.
c. Conclusion
For the reasons expressed above, we conclude that Petitioner has
proven by a preponderance of evidence that the combined teachings of
Whitehouse, Antonissen, and Hardy render claim 1 unpatentable as obvious.
5. Independent Claim 9
Claim 9 is directed a “system” rather than a method but recites
substantively similar limitations to those set forth in claim 1 and an
apparatus capable of performing the method of claim 1, as follows:
9. A system for classifying slices from a slicing machine based
on fat content, comprising:
[9.1] a high speed slicing apparatus arranged to cut off a series
of slices from a food loaf;
[9.2] a conveyor arranged to receive said slices from said slicing
apparatus in a stack of slices;
[9.3] a control having a memory section and a data processing
section;
[9.4] an image capturing device arranged above the conveyor,
said image capturing device signal-connected to said control
to input into said memory section a two-dimensional pixel
field corresponding to an image captured of a surface area of
a top slice of said stack of slices located on said conveyor,
each pixel classified by said control as either a fat or lean
portion of the surface area, depending on image, said control
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data processing section adapted to sum fat pixels and compare
said sum of fat pixels to a predetermined limit; and
[9.5] a classifying conveyor signal-connected to said control,
said classifying conveyor movable to direct the stack of slices
to a destination depending on the number of fat pixels.
Ex. 1001, 6:37–58 (with bracketed labels added to ease discussion).
Rather than reciting a “digital image receiving device” as in claim 1,
claim 9 recites an “image capturing device.” The dispute here focuses on
whether Whitehouse and Antonissen collectively describe or suggest the
“image capturing device.” PO Resp. 34–35; Sur-reply 10–11.
Patent Owner argues that Petitioner relies solely upon Whitehouse’s
sensor 4 as the “image capturing device.” PO Resp. 34–35. Petitioner
persuasively responds that it has always contended that Whitehouse in view
of Antonissen describes the “image capturing device.” Reply 14 (citing
Pet. 52, 59); see also Pet. 55 (contending that an ordinarily skilled artisan
“would have been motivated to use Antonissen’s camera and image
processing technique in Whitehouse’s slicer”).
We have concluded that Petitioner has persuasively proven that
Antonissen’s camera 6, A/D converter 13, and frame grabber collectively
constitute the “digital image receiving device” of claim 1. See Part II.E.4.b.i
above. We have also concluded that Petitioner has persuasively proven that
an ordinarily skilled artisan would have been motivated to modify
Whitehouse in view of Antonissen and would have had a reasonable
expectation of succeeding in doing so. See Part II.E.4.b.ii above. For the
same reasons, Petitioner persuades us that an ordinarily skilled artisan would
have been motivated to modify Whitehouse in view of Antonissen to meet
include an “image capturing device” recited in element 9.4.
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Patent Owner does not dispute that Petitioner has demonstrated that
the combined teachings of Whitehouse, Antonissen, and Hardy describe or
suggest all limitations of claim 9 other than the “image capturing device” of
element 9.4. See PO Resp. 34–35; Sur-reply 10–11. Petitioner’s argument
and evidence as set forth in the Petition (Pet. 46–58), which we adopt as our
own (see NuVasive, 841 F.3d at 974), persuades us that the combination of
Whitehouse, Antonissen, and Hardy collectively disclose or suggest all
elements of claim 9 other than the “image capturing device.”
For all these reasons, we conclude the Petitioner has proven by a
preponderance of evidence that the combined teachings of Whitehouse,
Antonissen, and Hardy render claim 9 unpatentable as obvious.
6. Dependent Claim 10
Claim 10 depends from claim 9, and further recites “said image
capturing device comprises a digital camera.” Ex. 1001, 6:59–60. Patent
Owner attacks Petitioner’s showing on claim 10 for the same reasons
advanced in connection with the alleged failure to show that Whitehouse and
Antonissen collectively describe or suggest a “digital image receiving
device.” See PO Resp. 21–33 (arguing against unpatentability of claims 1
and 10 together). We discern no material differences in Patent Owner’s
arguments in favor of claim 10 from those advanced in favor of claim 1.
Accordingly, for the reasons expressed in Parts II.E.4 and II.E.5 above and
based upon Petitioner’s argument and evidence directed to claim 10
(Pet. 58–59), which we adopt as our own (see NuVasive, 841 F.3d at 974),
we conclude that Petitioner has proven by a preponderance of evidence that
the combined teachings of Whitehouse, Antonissen, and Hardy render
claim 10 unpatentable as obvious.
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7. Independent Claim 13
Claim 13 is directed a “system” rather than a method but recites
virtually identical limitations to those set forth in claim 1 in the form of an
apparatus, as follows:
13. A method of classifying stacks of slices cut from a food
product, comprising the steps of:
removing a plurality of slices from a food product by cutting said
food product using a high speed slicing apparatus and
collecting said slices in a current stack;
passing a slice that represents a top slice of said current stack into
an image field of a digital image receiving device;
generating pixel-by-pixel image data of the top slice using the
digital image receiving device;
determining a surface area of the top slice from the data;
determining a fat content of said top slice on a pixel-by-pixel
basis;
comparing the fat content to at least two predetermined limits
that define pass, grade off and reject classifications; and
classifying the current stack according to said fat content and said
limits; and
conveying said pass, said grade off and said reject classified
stacks to corresponding destinations.
Compare Ex. 1001, 7:3–8:8 (claim 13), with id. 5:48–6:2 (claim 1).
Patent Owner attacks Petitioner’s showing on claim 13 for the same
reasons advanced in connection with claim 1. See PO Resp. 21–33 (arguing
against unpatentability of claims 1 and 13 together). We discern no material
differences in Patent Owner’s arguments in favor of claim 13 from those
advanced in favor of claim 1. Accordingly, for the reasons expressed in
Parts II.E.4 and II.E.5 above and based upon Petitioner’s argument and
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evidence directed to claim 13 (Pet. 60–67), which we adopt as our own (see
NuVasive, 841 F.3d at 974), we conclude that Petitioner has proven by a
preponderance of evidence that the combined teachings of Whitehouse,
Antonissen, and Hardy render claim 13 unpatentable as obvious.
8. Dependent Claims 3–5, 8, and 14
Claims 3–5 and 8 depend directly or indirectly from claim 1, and
claim 14 depends directly from claim 13. Ex. 1001, 6:6–20 (claims 3–5),
6:34–36 (claim 8), 8:9–12 (claim 14). Patent Owner does not argue
separately that the combined teachings of Whitehouse, Antonissen, and
Hardy fail to disclose or suggest all limitations of claims 3–5, 8, and 14. See
generally PO Resp. 21–33 (arguing against unpatentability of independent
claims 1 and 13). Rather, Patent Owner relies on its arguments relating to
claims 1 and 13, which we have already found unpersuasive. See Parts
II.E.4 and II.E.7 above. Based on our prior analysis of claims 1 and 13 and
our review of Petitioner’s argument and evidence of record for claims 3–5,
8, and 14 (Pet. 38–45, 67–68), which we adopt as our own (see NuVasive,
841 F.3d at 974), we determine that Petitioner has demonstrated by a
preponderance of evidence that the combined teachings of Whitehouse,
Antonissen, and Hardy render dependent claims 3–5, 8, and 14 unpatentable
as obvious.
9. Summary
For all the reasons expressed above, we conclude that Petitioner has
proven by a preponderance of evidence that the combined teachings of
Whitehouse, Antonissen, and Hardy renders claims 1, 3–5, 8–10, 13, and 14
unpatentable as obvious.
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F. DEPENDENT CLAIMS 2, 6, 7, 11, AND 12: OBVIOUSNESS IN VIEW OF
WHITEHOUSE, ANTONISSEN, HARDY, AND WYSLOTSKY
Petitioner argues that the combination of Whitehouse, Antonissen,
Hardy, and Wyslostsky renders claims 2, 6, 7, 11, and 12 unpatentable as
obvious. Pet. 68–75. Petitioner relies upon Wyslotsky as disclosing the
concept of weighing and imaging the stack of food products at the same
time. Id. For the reasons expressed below, we conclude that Petitioner has
demonstrated that claims 2, 6, and 7 are unpatentable, but has not done so
for claims 11 and 12.
Dependent claims 2, 6, 7, 11, and 12 require various ways of weighing
and imaging the stack of food products. For example, claims 2 and 6, each
of which depends directly from claim 1, recite “the further step of weighing
the stack at the same time as the step of generating pixel-by-pixel image
data.” Ex. 1001, 6:3–5 (claim 2), 6:21–23 (claim 6). Claim 6 recites
additional limitations, and claim 7, which depends from claim 6, adds
further limitations. Id. at 6:23–33. By contrast, claims 11 and 12 each
depend directly from claim 9 (directed to a “system for classifying slices”
and further recite “said camera is located above said weigh conveyor and is
directed downward on said stack located on said weigh conveyor.” Id.
at 6:61–64 (claim 11), 6:65–7:2 (claim 12). Thus, claims 2, 6, and 7 require
that the stack is imaged and weighed at the same time, while claims 11
and 12 require that a camera is located above and aimed at a scale used to
weigh the stack. Because of the differences between these two groups of
claims, we analyze the two groups separately below.
1. Wyslotsky
Wyslotsky discloses a meat slicer that “automatically produc[es] a
draft of slices, each having a substantially uniform weight, from a work
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piece of variable density, such as bacon, wherein such draft of slices is
composed of a selected integral number of slices per draft.” Ex. 1008,
3:51–56. “After such first slice has been cut, an indicium of its weight is
detected.” Id. at 3:60–61. “From that indicium of weight, the weight for a
second slice is determined so as to bring the average weight of the slices
substantially to the preferred slice weight.” Id. at 3:62–64. Wyslotsky’s
Figure 1 (reproduced below) illustrates the processing steps used by
Wyslotsky to generate drafts of substantially the same weight.

Wyslotsky’s Figure 1 “is a block diagram showing, inter alia, the
slicing and weight detecting steps connected by a feedback
control.” Id. at 3:36–38.
In Wyslotsky’s first embodiment, meat is sliced by incremental
slicer 12 at a preselected thickness chosen to approximate the correct weight
for each slice (e.g., one ounce) of a draft stack (e.g., of sixteen slices) so that
the stack will weigh a targeted value (e.g., one pound). Id. at 5:22–34. The
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first slice is weighed at mass detector 16 to and slicer control means 14
adjusts the thickness of subsequent slices so that the weight target of the
draft is met. Id. at 34–38. One form of Wyslotsky’s mass detector is
photoscanning camera 40, which can also detect excessive fat-to-lean ratio
or defects, such as voids. Id. at 2:38–45, 3:43–47, 4:40–48, 6:39–44.
Petitioner relies upon Wyslotsky’s photoscanning camera 40 as meeting the
limitations introduced in claims 2, 6, 7, 11, and 12. Pet. 68–75.
2. Claims 2, 6, and 7
Petitioner recognizes
that Whitehouse in view of
Antonissen does not disclose
weighing the stack “at the
same time” as the combined
system generates a digital
image of the stack, but relies
upon Wyslotsky as disclosing
this concept. Pet. 69.
Petitioner identifies
Wyslotsky’s photoscanning
device 40 illustrated in
Figure 3 (reproduced right) as
the device that weighs and
images slices at the same
time. Id. (citing Ex. 1008,
2:38–45, 3:43–47, 4:40–48, 6:39–44; Ex. 1003 ¶ 173).
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Patent Owner contends that Wyslotsky does not disclose the claimed
weighing and generating the image data at the same time as required in
claims 2, 6, and 7. PO Resp. 42. We disagree.
Wyslotsky expressly indicates the photoscanning device 40 is a “form
of such mass or weight detection means.” Ex. 1008, 6:39. Wyslotsky
further states:
Product slice 50 is supplied to belt conveyor 52 from the
incremental slicer 12 for detection of an indicia of mass, such as
for example its cross-sectional area. By programming the control
means 14 with data for an assumed average density of the
particular workpiece, and having stored and recalled the amount
of the incremental advance which produced the given slice, an
indicium of the weight of the slice may be computed for feedback
to control the thickness of the next successive slice.
Id. at 6:67–7:8. Thus, Wyslotsky expressly discloses that its photoscanning
device collects image data and control means 14 calculates the weight of
each slice based upon the image data and density parameters. Wyslotsky
adjusts the weight of each slice to ensure that the stack meets a weight
target. Id. at 5:22–54. Accordingly, we conclude that Petitioner has proven
by a preponderance of evidence that Wyslotsky discloses weighing and
imaging slices at the same time, and totaling the weight of the slices to
ensure that the weight of the stack is controlled.
Patent Owner also argues that “there was no motivation or reasonable
expectation of success to combine Wyslotsky with the other asserted
references.” PO Resp. 44 (citing Ex. 2035 ¶¶ 221–223). Patent Owner
reasons that an ordinarily skilled artisan would not combine the references
because they each disclose different imaging techniques. Id. at 45.
Dr. Howard cites no objective evidence to support the testimony upon which
Patent Owner relies. Ex. 2035 ¶¶ 221–223.
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Petitioner persuasively responds that it identified removing a
conveyor from the system as the reason motivating an ordinarily skilled
artisan to have incorporated teachings relating to Wyslotsky’s photoscanning
device. Reply 23–25 (citing Pet. 70–71; Ex. 1003 ¶ 174). Patent Owner’s
expert recognized that removing a conveyor would have been beneficial.
Reply 24 (citing Ex. 1036, 59:24–61:3, 62:7–16). Additionally, the
’089 patent itself suggests using Wyslotsky’s “calculations and routines
utilized to capture and evaluate slice image data” when it incorporates
Wyslotsky for that purpose. Ex. 1001, 4:50–52 (incorporating Wyslotsky).
For all the reasons expressed above, and the argument and evidence
stated in the Petition with respect to the other limitations of claims 2, 6, and
7, Pet. 68–73, which we adopt as our own, we conclude that Petitioner has
demonstrated by a preponderance of evidence that the combined teachings
of Whitehouse, Antonissen, Hardy, and Wyslotsky render claims 2, 6, and 7
unpatentable as obvious.
3. Claims 11 and 12
Unlike claims 2, 6, and 7, which focus on the timing of imaging and
weighing, claims 11 and 12 recite a specific physical arrangement of a
camera and a weighing conveyor. Namely, claims 11 and 12 recite: “said
camera is located above said weigh conveyor and is directed downward on
said stack located on said weigh conveyor.” Id. at 6:61–64 (claim 11),
6:65–7:2 (claim 12). Patent Owner argues that “Wyslotsky does not disclose
or render obvious . . . placing a camera above a ‘weigh conveyor.’”
Surreply 26. We agree.
Wyslotsky’s Figure 3 illustrates photoscanning device 40 that is an
alternative to a scale for weighing slices and indicates that the image data
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collected by device 40 is used by control means 14 along with density
parameters to calculate the weight of a slice. Ex. 1008, 6:67–7:8.
Petitioner’s reliance upon Wyslotsky’s statement that “[a]lso, the actual
weight of the slices may be detected by weighing on an automated scale”
(Pet. 69) is unavailing. This passage fails to mention or establish where the
“automated scale” is located and wholly fails to disclose such a scale being
located under photoscanning device 40. Moreover, Figure 3 illustrates a
“substantially transparent belt conveyor 52” under device 40, not a
“weighing conveyor” as required in claims 11 and 12. Ex. 1008, 6:60–61.
Because none of the prior art marshalled by Petitioner discloses the claimed
physical arrangement of the camera and weighing conveyor recited in
claims 11 and 12 and Petitioner offers no persuasive reason why an
ordinarily skilled artisan would have modified the references to achieve such
an arrangement, Petitioner’s challenge to these claims as being obvious in
view of Whitehouse, Antonissen, Hardy, and Wyslotsky fails.
III. PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
Patent Owner moves to exclude evidence contained within Exhibits
1037, 1038, 1039, paragraphs 9–16 of Exhibit 1035, and the redirect
testimony elicited from Dr. Hooper during his deposition of October 15,
2020 (Ex. 2037, 209:6–221:1). Mot. 2. All the evidence that Patent Owner
seeks to exclude relates to the characteristics of various cameras made by
Electrim, including the EDC-1000N mentioned in the Specification of the
’089 patent, Exs. 1037–1039, or testimony from Dr. Hooper regarding the
Electrim cameras, Ex. 1035 ¶¶ 9–16, Ex. 2037, 209:6–221:1.
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A. WHETHER EXHIBITS 1037–1039 AND ¶¶ 9–16 OF EXHIBIT 1035 ARE
RELEVANT UNDER FED. R. EVID. 401
Patent Owner argues that because Exhibits 1037–1039 and ¶¶ 9–16 of
Exhibit 1035 reflect information about the EDC-1000, not the EDC-1000N,
the evidence is irrelevant under Fed. R. Evid. 401. Mot. 3–4. Patent Owner
also contends that “Weber and Dr. Hooper have not explained the relevance
of Exhibits 1037 and 1039 to the EDC-1000N model disclosed in the patent,
when both clearly relate only to the EDC-1000 base model.” Id. at 4 (citing
Ex. 2037, 137:1–141:10, 148:19–150:13, 162:5–163:22, 147:16–149:6; Ex.
1035, ¶ 9).
Petitioner responds that the contested exhibits are relevant on their
face because they reflect details of the manner in which the base camera in
Electrim’s line of cameras, the EDC-1000 operates, which also reflects how
the EDC-1000N mentioned in the ’089 patent operates. Mot. Opp. 2–4.
Petitioner provides Exhibit 1061, first presented during Dr. Hooper’s
deposition to establish this relevance. Exhibit 1061 contains information
from Electrim’s website archived on May 25, 2000, that is styled as
information about the “EDC-1000 Series Cameras.” Ex. 1061, 1. The EDC-
1000 and EDC-1000N are both listed, among others, with the primary
difference between the two models being the resolution of the CCD image
sensor of the two cameras. Id. at 1–2.
Based upon our review of Exhibits 1037–1039, ¶¶ 9–16 of Exhibit
1035, and Exhibit 1061, we determine that the contested exhibits are not
only relevant, but highly probative of the manner in which the EDC-1000N
camera that is mentioned in the ’089 patent operates.
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For all these reasons, we overrule Patent Owner’s objections to
Exhibits 1037–1039 and ¶¶ 9–16 of Exhibit 1035 as being inadmissibly
irrelevant under Fed. R. Evid. 401.
B. WHETHER EXHIBITS 1037–1039 AND ¶¶ 9–16 OF EXHIBIT 1035 SHOULD BE
EXCLUDED UNDER FED. R. EVID. 403
Patent Owner argues that Exhibits 1037 and ¶¶ 9–16 of Exhibit 1035
should be excluded under Fed. R. Evid. 403 because the evidence is “likely
to confuse the issues and waste time.” Mot. 5. As we have already
discussed, based on our review of this evidence, we consider the evidence to
be highly probative of how the camera mentioned in the ’089 patent operates
and have not had any difficulty considering and applying the evidence to the
issues disputed in this proceeding.
For all these reasons, we overrule Patent Owner’s objections to
Exhibits 1037–1039, ¶¶ 9–16 of Exhibit 1035 as being inadmissible under
Fed. R. Evid. 403.
C. WHETHER PETITIONER HAS FAILED TO AUTHENTICATE
EXHIBITS 1037–1039 AS REQUIRED UNDER FED. R. EVID. 901
Patent Owner argues that Exhibits 1037–1039 should be excluded
because Petitioner has failed to authenticate the exhibits as required under
Fed. R. Evid. 901. Mot. 6–7. For example, Patent Owner argues that
printouts from websites, such as Exhibit 1038, are “generally not self-
authenticating.”
Petitioner responded to Patent Owner’s objections to
Exhibits 1037–1039 by timely serving supplemental evidence in the form of
Exhibits 1047–1060, 1061 on October 14, 2020. Ex. 1062; see also
37 C.F.R. § 42.64(b)(2) (permitting service of supplemental evidence in
response to evidentiary objections). Mot. Opp. 7–9. We note that a
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proponent’s “burden of proof for authentication is slight.” Lexington
Insurance Co. v. Western Pennsylvania Hospital, 423 F.3d 318, 328 (3rd
Cir. 2015). Under FRE 901, the proponent must make a showing “sufficient
to support a finding that the item is what the proponent claims it is.” Fed. R.
Evid. 901(a).
Based on our review of Exhibit 1049, we determine that Exhibit 1037
is self-authenticating as a periodical under Fed. R. Evid. 902(6). Based on
our review of Exhibit 1047, which is a declaration from a representative of
the Internet Archive, we determine that Exhibit 1038 is authenticated as a
printout of material that was captured from the internet on May 25, 2000.
Based on Dr. Hooper’s uncontested testimony, we determine that
Exhibit 1039 is what it purports to be on its title page, namely the “EDC-
1000 Computer Camera Technical Manual.” See Ex. 1060 ¶¶ 7–8; see also
Ex. 1039, 1.
For all these reasons, we overrule Patent Owner’s objections to
Exhibits 1037–1039 as being inadmissible unauthenticated evidence under
Fed. R. Evid. 901.
D. WHETHER EXHIBITS 1037–1039 CONSTITUTE INADMISSIBLE HEARSAY
UNDER FED. R. EVID. 802
Patent Owner argues that Exhibits 1037–1039 are out of court
statements relied upon for the truth of the matter asserted and thus are
inadmissible hearsay under Fed. R. Evid. 802 and should be excluded from
evidence. Mot. 7–8. Petitioner responds that all three Exhibits are
admissible under the “ancient documents” exception set forth in Fed. R.
Evid. 803(16). Mot. Opp. 9–10. This exception states: “(16) Statements in
Ancient Documents. A statement in a document that was prepared before
January 1, 1998, and whose authenticity is established.” Fed. R.
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Evid. 803(16). Petitioner persuasively contends that each of
Exhibits 1037–1039 was prepared before January 1, 1998. Mot. Opp. 9
(citing Ex. 1037, 1; Ex. 1049, 1–7; Ex. 1050, 1–3, 14; Ex. 1038, 1; Ex. 1039,
2). Petitioner also persuasively contends that all three documents have been
authenticated. Id.; see also Part III.C above.
For all these reasons, we overrule Patent Owner’s objection to
Exhibits 1037–1039 as being inadmissible hearsay.
E. WHETHER THE REDIRECT TESTIMONY BY DR. HOOPER WAS IMPROPER
Patent Owner argues that we should exclude Dr. Hooper’s redirect
testimony from the transcript of his deposition. Mot. 8–10. Patent Owner
contends that the testimony was untimely and beyond the scope of the
deposition. Id. Petitioner responds that the redirect testimony was within
the scope of proper testimony because Patent Owner’s cross-examination
focused heavily upon the evidence relating to the operation of the EDC-1000
camera. Mot. Opp. 11 (citing Ex. 2037, 123:21–163:22). We agree.
Dr. Hooper’s testimony provides highly probative evidence on the manner in
which Electrim cameras operate including the EDC-1000N that is
specifically identified in the ’089 patent.
We also consider the redirect testimony to have been timely enough.
Although Petitioner might have been able to supply such evidence with its
Reply, Patent Owner had a full and fair opportunity to respond to Dr.
Hooper’s redirect testimony and the newly presented Exhibit 1061 at his
deposition. We touched upon the propriety of the proponent of a witness
being able to elicit redirect testimony at the witness’s deposition in our
Order of October 21, 2020. Paper 26. In that Order, we noted that such
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redirect testimony and the use of new exhibits at depositions is proper under
our Rules. Id. at 4 (citing 37 C.F.R. § 42.53(c), (f)).
For all these reasons we overrule Patent Owner’s objection to
Dr. Hooper’s redirect testimony.
F. WHETHER PETITIONER’S USE OF EXHIBITS 1037–1039 AND ¶¶ 9–16 OF
EXHIBIT 1035 WAS “UNDULY PREJUDICIAL”
Patent Owner argues that we should exclude Exhibits 1037–1039 and
¶¶ 9–16 of Exhibit 1035 as being “unduly prejudicial” because the evidence
was untimely. Mot. 10–11. Patent Owner rests its argument upon 35 U.S.C.
§ 312(a)(3), which requires that a petition must identify evidence “with
particularity.” Id. at 10. We understand Patent Owner to be complaining
that Petitioner should have supplied and analyzed Exhibits 1037–1039 and
¶¶ 9–16 of Exhibit 1035 with the Petition rather than the Reply. Patent
Owner’s request amounts to a motion to strike evidence supplied with
Petitioner’s Reply on the grounds that the Reply is not responsive to its
Patent Owner Response as required under 37 C.F.R. § 42.23(b), which
states: “A reply may only respond to arguments raised in the corresponding
opposition, patent owner preliminary response, patent owner response, or
decision on institution.” 37 C.F.R. § 42.23(b).
Patent Owner’s argument is unpersuasive. We have already
determined that the disputed evidence responds to Patent Owner’s argument
that Antonissen’s imaging hardware is not akin to the imaging hardware that
is described in the Specification and recited in every claim in the
’089 patent. See, e.g., Part II.E.4.b.i above. We consider
Exhibits 1037–1039 and ¶¶ 9–16 of Exhibit 1039, not only to be responsive
to Patent Owner’s argument and thus proper, but also highly probative and
persuasive. Our view of this evidence should have been understood from
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our refusal to authorize Patent Owner to file a motion to strike related
evidence, Dr. Hooper’s redirect testimony and Exhibit 1061. Paper 26. As
already noted, Patent Owner had a full and fair opportunity at Dr. Hooper’s
deposition to meet the evidence as reflected in the extensive cross-
examination on this evidence. Patent Owner also had the opportunity to
submit argument responding to this evidence in its Sur-reply.
For all these reasons, we overrule Patent Owner’s objections to
Exhibits 1037–1039 and ¶¶ 9–16 of Exhibit 1035 as being untimely and
unduly prejudicial.
G. CONCLUSION
For all the reasons expressed above, Patent Owner’s Motion to
Exclude Evidence is denied in all respects.
IV. CONCLUSION7
In summary,
Claim(s)
35
U.S.C. § Reference(s)
Claim(s)
Shown
Unpatentable
Claim(s) Not
Shown
Unpatentable
1, 3–5, 8–10,
13, 14
103 Whitehouse,
Antonissen,
Hardy
1, 3–5, 8–10,
13, 14

7 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. §§ 42.8(a)(3), (b)(2).
IPR2019-01466
Patent 6,997,089 B2
36
Claim(s)
35
U.S.C. § Reference(s)
Claim(s)
Shown
Unpatentable
Claim(s) Not
Shown
Unpatentable
2, 6, 7, 11, 12 103 Whitehouse,
Antonissen,
Hardy,
Wyslotsky
2, 6, 7 11, 12
Overall Outcome 1–10, 13, 14 11, 12
V. ORDER
For the reasons given, it is:
ORDERED, based on a preponderance of evidence, that claims 1–10,
13, and 14 of U.S. Patent 6,997,089 B2 are unpatentable as obvious under
35 U.S.C. § 103;
FURTHER ORDERED that claims 11 and 12 of U.S. Patent
6,997,089 B2 have not been shown to be unpatentable;
FURTHER ORDERED because this is a final written decision, the
parties to this proceeding seeking judicial review of our Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2; and
FURTHER ORDERD that Patent Owner’s Motion to Exclude
Evidence (Paper 30) is denied.
IPR2019-01466
Patent 6,997,089 B2
37
For PETITIONER:
Ralph W. Powers III
Donald R. Banowit
Daniel E. Yonan
Daniel S. Block
Tyler J. Dutton
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
tpowers-PTAB@sternekessler.com
dbanowit-PTAB@sternekessler.com
dyonan-PTAB@sternekessler.com
dblock-PTAB@sternekessler.com
tdutton-PTAB@sternekessler.com
PTAB@sternekessler.com
For PATENT OWNER:
Michael G. Babbitt
Sara T. Horton
Ren-How H. Harn
WILLKIE FARR & GALLAGHER LLP
MBabbitt@willkie.com
SHorton@willkie.com
RHarn@willkie.com