Yanbin Yu

Patent Trials and Appeals Board

Jan 5, 2021

IPR2019-01258 (P.T.A.B. Jan. 5, 2021)

Trials@uspto.gov Paper 29
571.272.7822 Date: January 5, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

APPLE INC., SAMSUNG ELECTRONICS CO., LTD., and
SAMSUNG ELECTRONICS AMERICA, INC.,
Petitioners,

v.

YU ET AL.,
Patent Owners.
____________

IPR2019-012581
Patent 6,611,289 B1
____________

Before WILLIAM V. SAINDON, MINN CHUNG, and
MATTHEW J. McNEILL, Administrative Patent Judges.

McNEILL, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining Some Challenged Claims Unpatentable
35 U.S.C. § 318(a)
Denying Motion to Exclude
37 C.F.R. § 42.64

1 Samsung Electronics Co. Ltd. and Samsung Electronics America, Inc., who
filed a petition in IPR2020-00492, have been joined as petitioners in this
proceeding.
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In this inter partes review, instituted pursuant to 35 U.S.C. § 314,
Apple Inc., Samsung Electronics Co., Ltd., and Samsung Electronics
America, Inc. (“Petitioners”) challenge the patentability of claims 1‒5 of
U.S. Patent No. 6,611,289 (“the ’289 patent”). This Final Written Decision
is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the
reasons discussed below, we determine Petitioners have shown by a
preponderance of the evidence that claims 1 and 3‒5 of the ’289 patent are
unpatentable, but have not proven by a preponderance of the evidence that
claim 2 is unpatentable.
I. BACKGROUND
A. Procedural History
On June 21, 2019, Apple Inc. filed a Petition (Paper 1, “Pet.”)
requesting an inter partes review of claims 1‒5 of the ’289 patent (Ex.
1001). Patent Owners did not file a Preliminary Response.
On January 8, 2020, applying the standard set forth in 35 U.S.C.
§ 314(a), which requires demonstration of a reasonable likelihood that
Petitioner would prevail with respect to at least one challenged claim, we
instituted an inter partes review of the challenged claims. Paper 6
(“Inst. Dec.”). In the Institution Decision, we determined Petitioner
demonstrated a reasonable likelihood of prevailing as to at least one
challenged claim, and we instituted trial on all claims and all grounds in the
Petition. Inst. Dec. 40‒41.
On February 4, 2020, Samsung Electronics Co. Ltd. and Samsung
Electronics America, Inc. filed a Petition requesting inter partes review of
claims 1‒5 of the ’289 patent and a motion for joinder to this proceeding in
IPR2020-00492. On August 12, 2020, we granted the motion for joinder and
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joined Samsung Electronics Co. Ltd. and Samsung Electronics America, Inc.
as petitioners in this proceeding. See IPR2020-00492, Paper 6.
Patent Owners filed a Patent Owners Response (Paper 9, “PO Resp.”),
Petitioners filed a Reply to Patent Owners Response (Paper 15, “Reply”),
and Patent Owners filed a Sur-reply (Paper 17, “Sur-reply”). In addition,
Petitioners moved to exclude (Paper 22) Exhibits 2005‒2010, as well as
related testimony relied on by Patent Owners (Exhibit 2002 ¶¶ 4‒8); Patent
Owners opposed (Paper 25).
An oral hearing was held on October 13, 2020, and a copy of the
hearing transcript has been entered into the record. Paper 28 (“Tr.”).
B. Related Matters
Petitioners indicate that Patent Owners asserted the ’289 patent
against Apple Inc. in Yu et al. v. Apple Inc., No. 3-18-cv-06181 (N.D. Cal.).
Pet. 1‒2.
Petitioners indicate that Patent Owners asserted the ’289 patent
against Samsung Electronics Co. Ltd. and Samsung Electronics America,
Inc. in Yu et al. v. Samsung Electronics Co., Ltd. et al., Case No. 3-18-cv-
06339 (N.D. Cal.). IPR2020-00492, Paper 3 at 1‒2.
C. The ’289 Patent
The ’289 patent relates to a digital camera that uses multiple image
sensors and multiple lenses. Ex. 1001, Abstract. The ’289 patent teaches that
at the time of the invention, digital cameras typically used photosensitive
chips that comprised a plurality of photocells arranged in an array. Id. at
1:50‒52. The photocells were covered with selectively transmissive filters
such that selected groups of photocells sense different ranges of the visible
light spectrum, such as one group sensing red, one group sensing blue, and
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one group sensing green. Id. at 1:52‒57. The number of photocells
determines the resolution of the resultant digital images. Id. at 1:57‒59. To
increase the resolution of the images, additional photocells were needed,
which significantly increased the cost of the chip. Id. at 1:66‒2:7.
The ’289 patent states that its digital camera takes higher resolution
images while minimizing the need for additional photocells. Id. at 2:25‒35.
Figure 3 of the ’289 patent, which is reproduced below, illustrates an
embodiment of the invention.

Figure 3 depicts digital camera 300. Id. at 4:62‒64. Digital camera 300
includes lenses 310, 312, 314, 316. Each lens has a corresponding imaging
sensor 302, 304, 306, 308. Id. at 4:64‒67. Each imaging sensor is integrated
with a transmissive filter. Id. at 5:14‒17. In the preferred embodiment,
imaging sensor 302 uses a red filter, imaging sensor 304 uses a green filter,
and imaging sensor 306 uses a blue filter. Id. at 5:17‒21. Imaging sensor 308
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is integrated with a fully transparent filter, allowing the full range of visible
light to pass through. Id. at 5:28‒32.
Digital camera 300 further includes A/D circuitry 328, which
comprises four individual A/D converters 330, 332, 334, 336. Id. at 5:40‒45.
The A/D converters output digital images to digital image processing
circuitry 338. Id. at 5:58‒61.
Petitioners note that the ’289 patent issued from U.S. Application
No. 09/232,769, filed January 15, 1999. Pet. 5. Of the challenged claims,
claim 1 is independent. Claims 2‒5 depend from claim 1. Claim 1 is
illustrative of the challenged claims and recites:
1. An improved digital camera comprising:
a first and a second image sensor closely positioned with respect
to a common plane, said second image sensor sensitive to a full
region of visible color spectrum;
two lenses, each being mounted in front of one of said two image
sensors;
said first image sensor producing a first image and said second
image sensor producing a second image;
an analog-to-digital converting circuitry coupled to said first and
said second image sensor and digitizing said first and said second
intensity images to produce correspondingly a first digital image
and a second digital image;
an image memory, coupled to said analog-to-digital converting
circuitry, for storing said first digital image and said second
digital image; and
a digital image processor, coupled to said image memory and
receiving said first digital image and said second digital image,
producing a resultant digital image from said first digital image
enhanced with said second digital image.
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Ex. 1001, 10:37‒58.
D. Applied References and Declarations
Petitioners rely on the following prior art:
United States Patent No. 5,694,165, issued December 2, 1997
(Ex. 1005, “Yamazaki”);
United States Patent No. 6,400,824 B1, issued June 4, 2002 (Ex.
1006, “Mansoorian”);
European Patent Application, EP 0 858 208 A1, published
August 12, 1998 (Ex. 1007, “Weldy”);
World Intellectual Property Organization International
Publication No. WO 93/11631, published June 10, 1993
(Ex. 1008, “Denyer”);
United States Patent No. 4,506,294, issued March 19, 1985 (Ex.
1009, “Nagumo”); and
United States Patent No. 5,801,773, issued September 1, 1998
(Ex. 1010, “Ikeda”).
Petitioners also cite the Declaration of Dr. Alan C. Bovik (Ex. 1003)
and the Supporting Declaration of Dr. Bovik (Ex. 1017). Patent Owners cite
the Declaration of Kenneth R. Castleman, Ph.D. (Ex. 2001) and the
Declarations of Yanbin Yu, Ph.D. (Ex. 2002) and Zhongxuan Zhang, Ph.D.
(Ex. 2003).
E. The Asserted Grounds
Petitioners assert the following grounds of unpatentability (Pet. 15–
16):
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Claim(s) Challenged 35 U.S.C. §2 Reference(s)/Basis
1, 2 102(b) Yamazaki
1, 2 103(a) Yamazaki
4 103(a) Yamazaki, Mansoorian
1, 3 103(a) Weldy, Denyer, Nagumo
4 103(a) Weldy, Denyer, Nagumo, Mansoorian
5 103(a) Weldy, Denyer, Nagumo, Ikeda

II. ANALYSIS
A. Level of Ordinary Skill in the Art
With regard to the level of ordinary skill in the art, Petitioners state a
person of ordinary skill in the art at the time of the alleged invention “would
have a bachelor’s or the equivalent degree in electrical and/or computer
engineering or a related field and 2-3 years of experience in imaging systems
including optics and image processing.” Pet. 6. Petitioners further state that
“a person with less formal education but more experience, or more formal
education but less experience, could have also met the relevant standard.” Id.
Dr. Bovik offers testimony in support of Petitioners’ position. Ex. 1003 ¶ 22.
Patent Owners state a person of ordinary skill in the art at the time of
the alleged invention “would have at least a master’s degree in electrical

2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the priority
date of the ’289 patent is before the effective date of the applicable AIA
amendments, the pre-AIA versions of 35 U.S.C. §§ 102 and 103 apply.
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engineering or applied physics and approximately three to five years of
experience in the fields of digital image processing and optics.” PO
Resp. 11. Patent Owners further state that a person of ordinary skill in the art
would specifically have experience in the design, arrangement,
function, and operation of optics and digital camera components
such as image sensors, lenses, analog-to-digital (“A/D”)
converting circuitry, systems-on-a-chip (“SOCs”) and the
components thereof, including central processing units
(“CPUs”), digital signal processors (“DSPs”), and image signal
processors (“ISPs”), as well as concepts relating to digital image
processing such as image enhancement, image fusion, digital
zoom, and depth mapping.
Id. at 11‒12. Dr. Castleman offers testimony in support of Patent Owners’
position. Ex. 2001 ¶¶ 8‒11.
In the Reply, Petitioners disagree with Patent Owners’ proposed level
of skill in the art, but state that Patent Owners have not shown that its
standard would make any difference in the substantive analysis of the
proposed grounds. Reply 2 n.1. Petitioners assert that the different proposed
levels of skill in the art do not materially change Petitioners’ analysis. Id.
Patent Owners did not dispute Petitioners’ assertions in the Sur-reply.
Despite the differences in wording between the parties’ proposals,
these proposals are not materially different. See Pet. 6; Reply 2; PO Resp.
11‒12. These proposals are similar for all purposes relevant to this Final
Written Decision, and both are consistent with the level of ordinary skill in
the art reflected in the disclosure of the ’289 patent and the prior art of
record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In
re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).
Nonetheless, for this Final Written Decision, we adopt Patent Owners’
definition of a person of ordinary skill in the art at the time of the claimed
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invention because Patent Owner’s definition includes, among other things, a
helpful, more detailed list of the types of things a person of ordinary skill
would know. See, e.g., PO Resp. 11–12. That is, a person of ordinary skill in
the art at the time of the claimed invention would have had “at least a
master’s degree in electrical engineering or applied physics and
approximately three to five years of experience in the fields of digital image
processing and optics.” A person of ordinary skill in the art would have had
“experience in the design, arrangement, function, and operation of optics and
digital camera components such as image sensors, lenses, analog-to-digital
(‘A/D’) converting circuitry, systems-on-a-chip (‘SOCs’) and the
components thereof, including central processing units (‘CPUs’), digital
signal processors (‘DSPs’), and image signal processors (‘ISPs’), as well as
concepts relating to digital image processing such as image enhancement,
image fusion, digital zoom, and depth mapping.”
B. Claim Construction
In an inter partes review, we apply the same claim construction
standard that would be used in a civil action under 35 U.S.C. § 282(b),
following the standard articulated in Phillips v. AWH Corp., 415 F.3d 1303
(Fed. Cir. 2005) (en banc). 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)). In particular, claim terms are
generally given their ordinary and customary meaning, as would be
understood by a person of ordinary skill in the art, at the time of the
invention and in the context of the entire patent disclosure. Phillips, 415
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F.3d at 1312–13. “In determining the meaning of the disputed claim
limitation, we look principally to the intrinsic evidence of record, examining
the claim language itself, the written description, and the prosecution
history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at
1312–17).
In the Petition, Petitioners proposed construing the term “image
sensor sensitive to [a/said] full region of visible color spectrum” to mean
“image sensor that does not use any filter or uses a filter that does not
obstruct any portion of the visible color spectrum, such that the entire image
sensor is responsive to the full visible color spectrum.” Pet. 7‒12. Petitioners
also proposed construing the term “image sensor sensitive to a selected
range of said full region of visible color spectrum” to mean “image sensor
with a single-color color filter, such that each pixel of the image sensor is
responsive to a same selected range of said full region of visible color
spectrum.” Id. at 12‒15.
In our Decision on Institution, we determined that neither of these
proposed phrases required construction. Inst. Dec. 6‒8. The parties do not
dispute the constructions of these terms in their Patent Owners’ Response or
Petitioners’ Reply. See PO Resp. 12; Reply 8. Upon considering the
complete record, we see no reason to deviate from our preliminary
determination and conclude that neither of these terms requires explicit
construction for this Final Written Decision. See, e.g., Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
(“[W]e need only construe terms ‘that are in controversy, and only to the
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extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v.
Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
In the Response, Patent Owners propose construing “closely
positioned with respect to a common plane” to mean
Projections [of the image sensors] from the same reference point
onto the same plane being positioned sufficiently close to one
another to enable registration of a first image produced by the
first image sensor with a second image produced by the second
image sensor, and to enable enhancement of a first image
produced by the first image sensor with a second image produced
by the second image sensor.
PO Resp. 13‒16 (alteration in original). Petitioners propose construing this
term according to its plain and ordinary meaning. Reply 1‒5. Both parties
discuss the meaning of this term in the context of Patent Owners’ arguments
that Yamazaki does not teach or suggest this limitation. See PO Resp. 22‒
24; Reply 15‒18; Sur-reply 10‒11. Although the parties’ arguments raise an
issue of claim construction, the arguments are closely related to and
interspersed with the arguments regarding Yamazaki’s teachings. Thus, for
efficiency and completeness, we address this issue in the context of the
patentability discussion below.
Patent Owners also propose construing “producing a resultant digital
image from said first digital image enhanced with said second digital image”
to mean “[d]eriving an enhanced digital image by modifying the qualities of
the first digital image using the second digital image, where the first and
second digital images represent the same scene.” PO Resp. 16. Petitioners
propose construing this term according to its plain and ordinary meaning.
Reply 5‒7. Both parties discuss the meaning of this term in the context of
Patent Owners’ arguments that Yamazaki does not teach or suggest this
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limitation. See PO Resp. 18‒22; Reply 8‒15, 18‒20; Sur-reply 8‒14.
Although the parties’ arguments raise an issue of claim construction, the
arguments are closely related to and interspersed with the arguments
regarding Yamazaki’s teachings. Thus, for efficiency and completeness, we
address this issue in the context of the patentability discussion below.
No other claim terms need to be construed expressly for purposes of
this Final Written Decision. See Nidec Motor Corp., 868 F.3d at 1017 (Fed.
Cir. 2017).
C. Ground 1: Alleged Anticipation of Claims 1 and 2 by Yamazaki
Petitioners contend that claims 1 and 2 are unpatentable under
35 U.S.C. § 102 as anticipated by Yamazaki.
1. Yamazaki
Yamazaki is a United States Patent directed to an image taking
apparatus that includes multiple lens units that produce images that are
combined into a single image. Ex. 1005, Abstract. Figure 1 of Yamazaki
illustrates an example of the image taking apparatus and is reproduced
below.
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Figure 1 depicts a cross-sectional view of an optical system of one
embodiment disclosed by Yamazaki. Id. at 3:37‒39. In this embodiment,
lenses 3A and 3B are positioned behind image sensor elements 31A and
31B. Id. at 3:54‒60.
On this record, we agree with Petitioners (Pet. 16) that Yamazaki
qualifies as prior art under 35 U.S.C. § 102(b) because Yamazaki’s issue
date of December 2, 1997, is more than one year before the filing date of the
’289 patent, which is January 15, 1999. See Ex. 1001, code (22); Ex. 1005,
code (45).
2. Independent Claim 1
A claim is anticipated only if each and every element as set forth in
the claims is found, either expressly or inherently, described in a single prior
art reference, and arranged as required by the claim. Verdegaal Bros., Inc. v.
Union Oil. Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). “The identical
invention must be shown in as complete detail as is contained in the . . .
claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir.
1989).
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Petitioners assert claim 1 is anticipated by Yamazaki. Pet. 22‒40. We
address each limitation in turn.
a) Preamble
The preamble of claim 1 recites: “[a]n improved digital camera.”
Ex. 1001, 10:37. Petitioners assert Yamazaki discloses this limitation.
Pet. 22‒23. In particular, Petitioners assert Yamazaki discloses an image
taking apparatus that includes image sensor elements 31A and 31B that
generate electrical signals that are converted into digital signals. Id. (citing
Ex. 1005, Abstract, 1:10‒61, 4:28‒37). Petitioners assert this information is
read from memory circuits and combined into a high resolution image. Id. at
23 (citing Ex. 1005, 4:37‒40; Ex. 1003 ¶¶ 74‒75). Dr. Bovik offers
testimony in support of Petitioners’ assertions with regard to the preamble.
Ex. 1003 ¶¶ 73‒76.
Patent Owners do not specifically dispute that Yamazaki discloses the
preamble of claim 1. See generally PO Resp. Based on the complete record
and for the reasons explained by Petitioners, we are persuaded that
Petitioners have demonstrated sufficiently that Yamazaki discloses the
preamble of claim 1.3
b) “a first and a second image sensor closely positioned with respect to
a common plane”
Claim 1 further recites “a first and a second image sensor closely
positioned with respect to a common plane.” Ex. 1001, 10:38–39. Petitioners
assert Yamazaki discloses this limitation. Pet. 24‒26. In particular,

3 Because Petitioners have shown sufficiently that the recitations in the
preamble are satisfied by Yamazaki, we need not determine whether the
preamble is limiting. See Vivid Techs., 200 F.3d at 803.
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Petitioners assert Yamazaki discloses image sensor elements 31A and 31B
are positioned behind lens units 3A and 3B. Id. at 24 (citing Ex. 1005, 3:54‒
56). Petitioners argue an ordinarily skilled artisan would have understood
from Figure 1 (shown above) and Figure 2 (shown below) that the imaging
planes of lens units 3A and 3B are on a common plane and that image
sensors 31A and 31B are closely positioned with respect to that common
plane. Id. (citing Ex. 1003 ¶ 78). Petitioners argue that the limitation
“closely positioned with respect to a common plane” requires that the image
sensors are positioned closely to the common plane, but does not require that
the image sensors are closely positioned to one another. Tr. 44:14‒45:11.
Petitioners argue Yamazaki discloses such positioning, and Petitioners
annotate Figure 2 as shown below to illustrate this contention. Pet. 25.

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Annotated Figure 2 depicts lenses 3A and 3B and image sensors 31A and
31B, with annotations identifying a common plane and the positions of
image sensors 31A and 31B relative to that plane. Id. Petitioners offer Dr.
Bovik’s testimony in support of their assertions with regard to this
limitation. Ex. 1003 ¶¶ 77‒81.
Patent Owners argue “a first and a second image sensor closely
positioned with respect to a common plane” should be construed to mean:
Projections [of the image sensors] from the same reference point
onto the same plane being positioned sufficiently close to one
another to enable registration of a first image produced by the
first image sensor with a second image produced by the second
image sensor, and to enable enhancement of a first image
produced by the first image sensor with a second image produced
by the second image sensor
PO Resp. 13‒16 (alteration in original); Sur-reply 2‒4. Patent Owners argue
Yamazaki does not disclose this limitation under its proposed construction.
See PO Resp. 22‒24; Sur-reply 10‒11. In particular, Patent Owners argue
this limitation requires that the first image sensor and second image sensor
be positioned closely to one another. See Sur-reply 10‒11. Patent Owners
argue this limitation does not restrict the positioning of the sensors relative
to the common plane. See id. Patent Owners argue the close positioning of
the image sensors relative to each other must enable image registration and
enable image enhancement. See id.
We first consider the claim construction of “a first and a second image
sensor closely positioned with respect to a common plane.” Patent Owners
propose a lengthy construction of “a first and a second image sensor closely
positioned with respect to a common plane,” arguing that this construction
reflects functional language that explains the teachings of the ’289 patent.
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See PO Resp. 15. Patent Owners argue this construction does not import
limitations from the Specification because the construction merely requires
close positioning to enable registration and to enable image enhancement
without requiring these to be performed. See Sur-reply 3‒4.
Petitioners argue this limitation should be given its plain and ordinary
meaning. See Reply 1‒5. Petitioners argue Patent Owners do not contend
that the patentee acts as his own lexicographer for this term, nor do Patent
Owners contend the patentee disavowed the full scope of the claim term
either in prosecution or in the specification. See id. at 3.
Claim terms are generally given their ordinary and customary
meaning, as would be understood by a person of ordinary skill in the art, at
the time of the invention and in the context of the entire patent disclosure.
Phillips, 415 F.3d at 1312–13. “There are only two exceptions to this general
rule: 1) when a patentee sets out a definition and acts as his own
lexicographer, or 2) when the patentee disavows the full scope of a claim
term either in the specification or during prosecution.” Thorner v. Sony
Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Thus, in
general, “a particular embodiment appearing in the written description may
not be read into a claim when the claim language is broader than the
embodiment.” SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870,
875 (Fed. Cir. 2004).
We agree with Petitioners that the plain and ordinary meaning of this
limitation applies. As argued by Petitioners, Patent Owners’ expert witness,
Dr. Castleman, admits that this limitation only addresses the image sensors
positioning without any requirements related to image registration. See
Reply 4‒5 (citing Ex. 1019, 106‒107 (Castleman deposition)). Patent
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Owners’ proposed construction imports limitations linking the positioning of
the image sensors with image registration and image enhancement that are
not present in the claims. The proposed construction does not clarify the
meaning of the disputed limitation, and instead imports limitations from the
specification into the claims without adequate justification. Accordingly, we
do not adopt Patent Owners’ proposed construction. Instead, we agree with
Petitioners that “a first and a second image sensor closely positioned with
respect to a common plane” should be construed according to its plain and
ordinary meaning.
However, adopting the plain and ordinary meaning of the limitation
does not settle the dispute over the meaning of this limitation. In particular,
the parties dispute whether “closely positioned with respect to a common
plane” refers to (1) the positioning of the image sensors relative to the
common plane, as argued by Petitioners, or (2) the positioning of the image
sensors relative to one another as viewed with respect to the common plane,
as argued by Patent Owners. See Tr. 44:14‒45:11; Sur-reply 10‒11.4
We agree with Patent Owners that “closely positioned with respect to
a common plane” refers to the positioning of the image sensors relative to
one another and that this positioning is assessed with respect to the common
plane. See Sur-reply 10‒11. The ’289 Patent discusses the relative
positioning of the image sensors to one another, not relative to the common
plane. In particular, the ’289 patent discloses image sensors 502, 504, 506,

4 By way of example, imagine a desk top as the plane and two coins as the
sensors. Petitioners’ construction assumes the coins are not necessarily on
the desk top, and seeks to measure how close the coins are to the desk top.
Patent Owner’s construction assumes the coins are on the desk top, and
seeks to measure how close they are to one another. See Tr. 44:14–45:11.
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and 508 are “very close[ly] positioned.” Ex. 1001, 7:66‒8:1. “As described
before, image sensors are closely positioned, the special position offset is
normally small.” Id. 8:30‒32.
To summarize, for this Final Written Decision, we construe “a first
and a second image sensor closely positioned with respect to a common
plane” according to its plain and ordinary meaning with the understanding
that “closely positioned with respect to a common plane” refers to the
positioning of the image sensors relative to one another and that this
positioning is assessed with respect to the common plane. For the reasons
explained below, Petitioners demonstrate sufficiently that Yamazaki
discloses “a first and a second image sensor closely positioned with respect
to a common plane” under this construction.
In arguing that Yamazaki discloses this limitation under the plain and
ordinary meaning of the term (see Pet. 24‒25; Reply 15‒18), Petitioners
assert Yamazaki discloses
image sensors 31A and 31B are closely positioned in the
common plane because in Yamazaki, “with respect to the
position of the image sensor element 31A, the image sensor
element 31B is positioned with a pixel displacement by a half of
the pixel width t in the horizontal (main scanning) direction, and
the images formed on said image sensor elements 31A, 31B are
combined by an image combination process circuit (not shown)
to double the resolving power in the horizontal direction.”
Reply 17 (quoting Ex. 1005, 4:13‒20). These disclosures relate to image
sensors that lie in a common plane and are closely positioned, relative to one
another, with respect to that common plane. See, e.g., Ex. 1005, Fig. 5.
Dr. Bovik offers testimony in support of Petitioners’ argument. See
Pet. 24‒26 (citing Ex. 1003 ¶¶ 79‒81); Reply 15‒18 (citing Ex. 1017 ¶¶ 20‒
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23). Dr. Bovik testifies that an ordinarily skilled artisan would have
understood that Yamazaki discloses image sensors “closely positioned with
respect to a common plane” because the image sensors “are both positioned
at that common plane.” Ex. 1003 ¶ 78.
Dr. Bovik testifies that an ordinarily skilled artisan would have
understood that image sensors 31A and 31B “are closely positioned in the
common plane” because the image sensors are positioned with a half-pixel
width displacement in the horizontal direction. Ex. 1017 ¶ 22 (citing
Ex. 1005, 4:13‒20). Dr. Bovik testifies that because the image sensors are
closely positioned in a common plane, the image sensors are closely
positioned with respect to a common plane. Id. That is, Dr. Bovik testifies
that Yamazaki discloses image sensors that are closely positioned relative to
one another as viewed with respect to a common plane, consistent with our
interpretation of the “closely positioned” limitation discussed above. In other
words, and using the analogy above in footnote 4 to illustrate, the sensors are
both on the desk (the common plane) and close to each other on the desk.5
Patent Owners argue Yamazaki does not disclose image sensors
closely positioned relative to one another as viewed with respect to a
common plane. In particular, Patent Owners argue Yamazaki’s figures are
merely schematics that are not drawn to scale, and, therefore, cannot be
relied upon as showing image sensors closely positioned relative to one

5 Dr. Bovik also testifies that Yamazaki’s image sensors are “closely
positioned” to the common plane, in support of Petitioners’ interpretation of
the term. For example, Dr. Bovik testifies that each image sensors’ spatial
position offset “with respect to the common plane is small (equal to or close
to zero), because each image sensor is positioned at the common plane.”
Ex. 1003 ¶ 79.
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another. See Sur-reply 10. Patent Owners also argue Yamazaki “does not
include any description whatsoever of how close or far apart the image
sensors . . . are positioned relative to one another.” Id. Patent Owners argue
Yamazaki’s optical unit 2 obviates the need to position the image sensors
close to one another, which undermines any contention this feature is present
without being explicitly described. Id. at 11 (citing Ex. 2001 ¶ 36).
Considering the evidence as a whole, we are persuaded that
Petitioners have demonstrated by a preponderance of the evidence that
Yamazaki discloses this limitation under our construction set forth above. Of
particular note, Petitioners identify teachings in Yamazaki that indicate that
image sensors 31A and 31B are “positioned with a pixel displacement by a
half a pixel width t in the horizontal (main scanning) direction.” Reply 17
(quoting Ex. 1005, 4:13‒20). Thus, Yamazaki addresses the position of
image sensors 31A and 31B relative to one another as viewed with respect to
a common plane.
Although neither party argues for particular metes and bounds of the
term “closely,” we are persuaded that a pixel displacement of half a pixel
falls within the bounds of this term of degree. Indeed, Patent Owners’
argument regarding whether Yamazaki provides an enabling disclosure of
the “producing” limitation (discussed below) highlights the extremely small
distance represented by a half pixel. See PO Resp. 20‒22; Sur-reply 18‒20.
Patent Owners’ arguments do not demonstrate that this disclosure fails to
show closely positioned image sensors. In particular, Patent Owners’
argument regarding Yamazaki’s figures not being drawn to scale (see Sur-
reply 10) is unpersuasive because Yamazaki’s textual disclosures also
indicate that the image sensors are closely positioned (see Ex. 1005, 4:13‒
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20). Yamazaki’s figures support this teaching regardless of whether the
figures are drawn to scale. Also, Patent Owners’ argument regarding
Yamazaki’s optical unit obviating the need for closely positioning the image
sensors (see Sur-reply 11) is not persuasive because the presence of the
optical unit does not indicate, one way or the other, whether the image
sensors are closely positioned. As discussed above, we do not adopt Patent
Owners’ proposed construction, which imports the requirement that the
image sensors’ close positioning enables image registration and image
enhancement. Thus, even if we agreed that Yamazaki’s optical unit obviates
the need for the image sensors to be closely positioned, the close positioning
of the image sensors need not be the only or primary factor that enables
image registration and image enhancement.
Thus, based on the complete record, we are persuaded that Petitioners
have demonstrated sufficiently that Yamazaki discloses this limitation.
c) “said second image sensor sensitive to a full region of visible color
spectrum”
Claim 1 further recites “said second image sensor sensitive to a full
region of visible color spectrum.” Ex. 1001, 10:39–40. Petitioners assert
Yamazaki discloses this limitation. Pet. 26‒27. In particular, Petitioners
assert that in Yamazaki’s first embodiment, image sensor elements 31A and
31B are provided without a color filter. Id. at 26 (citing Ex. 1005, 5:32‒39,
Ex. 1003 ¶¶ 83‒84). Petitioners assert that an image sensor without a color
filter is an image sensor sensitive to a full region of visible color spectrum.
Id. at 27 (citing Ex. 1003 ¶ 87). Dr. Bovik offers testimony in support of
Petitioners’ assertions with regard to this limitation. Ex. 1003 ¶¶ 82‒89.
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Patent Owners do not specifically dispute that Yamazaki discloses this
limitation. See generally PO Resp. Based on the complete record and for the
reasons explained by Petitioners, we are persuaded that Petitioners have
demonstrated sufficiently that Yamazaki discloses this limitation.
d) “two lenses, each being mounted in front of one of said two image
sensors”
Claim 1 further recites “two lenses, each being mounted in front of
one of said two image sensors.” Ex. 1001, 10:41–42. Petitioners assert
Yamazaki discloses this limitation. Pet. 28‒29. In particular, Petitioners
assert that lens units 3A and 3B are mounted in front of image sensors 31A
and 31B, respectively. Id. at 28 (citing Ex. 1005, 3:54‒56, 3:61‒64, 4:3‒9;
Ex. 1003 ¶ 91). To illustrate this contention, Petitioners annotate Figure 1 as
shown below. Id.

Annotated Figure 1 depicts lenses 3A and 3B positioned behind image
sensors 31A and 31B, with Petitioners’ annotations identifying the lenses
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and image sensors. Id. Dr. Bovik offers testimony in support of Petitioners’
assertions with regard to this limitation. Ex. 1003 ¶¶ 90‒93.
Patent Owners do not specifically dispute that Yamazaki discloses this
limitation. See generally PO Resp. Based on the complete record and for the
reasons explained by Petitioners, we are persuaded that Petitioners have
demonstrated sufficiently that Yamazaki discloses this limitation.
e) “said first image sensor producing a first image and said second
image sensor producing a second image”
Claim 1 further recites “said first image sensor producing a first image
and said second image sensor producing a second image.” Ex. 1001, 10:44–
45. Petitioners assert Yamazaki discloses this limitation. Pet. 29‒31. In
particular, Petitioners assert image sensors 31A and 31B each produce an
electrical signal (the claimed first and second “[intensity] image[s]”). Pet.
29‒30 (citing Ex. 1005, Fig. 4, 4:33‒37; Ex. 1003 ¶¶ 95‒96). To illustrate
this contention, Petitioners annotate Figure 4 as shown below. Id. at 30.

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Annotated Figure 4 depicts image sensors 31A and 31B, labeled in red as
second image sensor and first image sensor, respectively, providing output
signals, labeled in red as second [intensity] image and first [intensity] image,
to sample-hold (S/H) circuits 51A and 51B, which provide output signals to
analog-digital (A/D) conversion circuits 52A, 52B. Ex. 1005, 4:33‒37; Pet.
30. Dr. Bovik offers testimony in support of Petitioners’ assertions with
regard to this limitation. Ex. 1003 ¶¶ 94‒100.
Patent Owners do not specifically dispute that Yamazaki discloses this
limitation. See generally PO Resp. Based on the complete record and for the
reasons explained by Petitioners, we are persuaded that Petitioners have
demonstrated sufficiently that Yamazaki discloses this limitation.
f) “an analog-to-digital converting circuitry coupled to said first and
said second image sensor and digitizing said first and said second
intensity images to produce correspondingly a first digital image and a
second digital image”
Claim 1 further recites “an analog-to-digital converting circuitry
coupled to said first and said second image sensor and digitizing said first
and said second intensity images to produce correspondingly a first digital
image and a second digital image.” Ex. 1001, 10:46–50. Petitioners assert
Yamazaki discloses this limitation. Pet. 31‒32. In particular, Petitioners
assert first and second image sensors 31A, 31B are coupled to S/H circuits
51A, 51B and A/D conversion circuits 52A, 52B. Id. at 31. Petitioners assert
S/H circuits 51A, 51B and A/D conversion circuits 52A, 52B combine to
form analog-to-digital converting circuitry for each respective image sensor.
Id. Petitioners assert Yamazaki teaches A/D conversion circuits 52A, 52B
output first and second digital signals that correspond to digital images. Id.
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at 31‒32 (citing Ex. 1005, 4:33‒37; Ex. 1003 ¶¶ 103‒104). To illustrate this
contention, Petitioners annotate Figure 4 as shown below. Id. at 32.

Annotated Figure 4 depicts S/H circuits 51A, 51B and A/D conversion
circuits 52A, 52B, collectively labeled in red as “analog-to-digital
converting circuitry,” receiving input signals from image sensors 31A, 31B
and outputting signals labeled in red as first and second “digital image[s]” to
memory 53A and memory 53B. Id. Dr. Bovik offers testimony in support of
Petitioners’ assertions with regard to this limitation. Ex. 1003 ¶¶ 101‒105.
Patent Owners do not specifically dispute that Yamazaki discloses this
limitation. See generally PO Resp. Based on the complete record and for the
reasons explained by Petitioners, we are persuaded that Petitioners have
demonstrated sufficiently that Yamazaki discloses this limitation.
g) “an image memory, coupled to said analog-to-digital converting
circuitry, for storing said first digital image and said second digital
image”
Claim 1 further recites “an image memory, coupled to said analog-to-
digital converting circuitry, for storing said first digital image and said
second digital image.” Ex. 1001, 10:51–53. Petitioners assert Yamazaki
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discloses this limitation. Pet. 33‒34. In particular, Petitioners assert the first
and second digital images that are output from A/D circuits 52A, 52B are
stored in memory 53A, 53B, respectively. Id. at 33. To illustrate this
contention, Petitioners annotate Figure 4 as shown below. Id.

Annotated Figure 4 depicts analog-to-digital converting circuitry outputting
first and second digital images to memory 53A, 53B, which collectively
have been annotated as “image memory.” Id. Dr. Bovik offers testimony in
support of Petitioners’ assertions with regard to this limitation. Ex. 1003
¶¶ 106‒109.
Patent Owners do not specifically dispute that Yamazaki discloses this
limitation. See generally PO Resp. Based on the complete record and for the
reasons explained by Petitioners, we are persuaded that Petitioners have
demonstrated sufficiently that Yamazaki discloses this limitation.
h) “a digital image processor, coupled to said image memory and
receiving said first digital image and said second digital image,
producing a resultant digital image from said first digital image
enhanced with said second digital image”
Claim 1 further recites “a digital image processor, coupled to said
image memory and receiving said first digital image and said second digital
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image, producing a resultant digital image from said first digital image
enhanced with said second digital image.” Ex. 1001, 10:54–58. Petitioners
assert Yamazaki discloses this limitation. Pet. 34‒36. In particular,
Petitioners assert that the first and second digital images stored in memory
53A, 53B are combined by image combination processing circuit 54. Id. at
34 (citing Ex. 1005, 4:37‒40; Ex. 1003 ¶ 112). Petitioners assert that the
image combination processing circuit is a processor that obtains a high
definition image from the input. Id. at 34‒35 (citing Ex. 1005, Abstract;
Ex. 1003 ¶ 112). Dr. Bovik offers testimony in support of Petitioners’
assertions with regard to this limitation. Ex. 1003 ¶¶ 110‒117.
Patent Owners argue Yamazaki does not disclose “producing a
resultant digital image from said first image enhanced with said second
digital image” for two reasons. See PO Resp. 18‒22; Sur-reply 8‒14. First,
Patent Owners argue Yamazaki does not provide an operable and enabling
disclosure of combining images to double resolving power. See PO
Resp. 19‒22; Sur-reply 11‒14. Second, Patent Owners argue that even if
Yamazaki’s disclosure were enabling, Yamazaki does not disclose this
limitation under Patent Owners’ proposed construction. See PO Resp.
18‒19; Sur-reply 8‒10.
First, Patent Owners argue Petitioners rely on Yamazaki’s disclosure
of doubling the resolving power of images to satisfy the “producing”
limitation. See PO Resp. 18‒19. Patent Owners argue Yamazaki teaches
doubling the resolving power of images by producing images that are
precisely offset from one another by a distance of half a pixel, but Yamazaki
does not teach how to achieve this precise offset. Id. at 21 (citing Ex. 2001
¶ 35). Patent Owners argue producing images that are precisely offset in this
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manner would require aligning Yamazaki’s components within a small
fraction of a pixel both translationally and rotationally. Id. (citing Ex. 1005,
Fig. 2). Patent Owners argue Yamazaki does not teach how to achieve such
precise alignment, and an ordinarily skilled artisan would have understood
that such precise alignment could not be achieved during manufacturing or
maintained after manufacturing due to environmental factors such as thermal
expansion. Id. at 22.
Dr. Castleman offers testimony in support of Patent Owners’
assertions. See Ex. 2001 ¶ 35. Dr. Castleman testifies that the manufacturing
difficulties are exacerbated by the small size of individual pixels on the
image sensors. Id. Dr. Castleman testifies that Yamazaki discloses that
typical image sensors at the time of the invention included about 400,000
pixels, with pixel dimensions were in the range of 10‒20 microns. Id.
Dr. Castleman testifies that Yamazaki does not teach how to manufacture a
camera to achieve this resolution improvement. Id.
Petitioners respond that Patent Owners fail to prove that Yamazaki
does not provide an enabling disclosure. See Reply 18‒20. In particular,
Petitioners argue Yamazaki discloses how to achieve the disclosed pixel
displacement, including receiving light beams split by an optical element
with plural solid-state area sensors positioned with mutual displacement by a
half of the pitch of the pixels or less. Id. at 19 (citing Ex. 1005, 1:52‒65).
Petitioners argue relative position displacement, including half-pixel
displacement, was well known in the art. Id. at 19–20 (citing Ex. 1009,
Fig. 1, 2:54‒56, 1:28‒29; Ex. 1022, Fig. 9, 1:10‒44; Ex. 1017 ¶ 26).
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Dr. Bovik offers testimony in support of Petitioners’ arguments. See
Ex. 1017 ¶¶ 24‒26. Dr. Bovik testifies that it was well known in the art how
to achieve a half-pixel alignment between two image sensors. Id. ¶¶ 25‒26.
Yamazaki is a United States Patent, and as such its disclosures “are
presumptively enabling.” In re Antor Media Corp., 689 F.3d 1282, 1287–88
(Fed. Cir. 2012) (citing Amgen Inc. v. Hoechst Marion Roussel, Inc., 314
F.3d 1313, 1355 (Fed. Cir. 2003)). This presumption applies before this
Board, and places the burden on Patent Owners to show that Yamazaki’s
disclosures are not enabling. Id. at 1288; see also Tr. 26:1–7 (Patent
Owner’s counsel acknowledging it bears the burden of showing non-
enablement).
Dr. Bovik testifies that it was well known in the art how to achieve
half-pixel relative displacement. Ex. 1017 ¶¶ 24‒26. Dr. Bovik’s testimony
is supported by the disclosures of Nagumo and U.S. Patent No. 5,754,226 to
Yamada et al (Ex. 1022). Nagumo and Yamada are both United States
Patents and, therefore, are presumptively enabling for their disclosures.
Nagumo discloses, in its description of the related art, charge-coupled
devices that are displaced by one-half of the alignment pitch of the picture
sensing units. Ex. 1009, 1:13‒29. Yamada discloses, in its description of the
related art, images displaced by a half pixel on imaging plates 21 and 22.
Ex. 1022, 1:16‒27, Fig. 9. Yamada discloses that this half-pixel
displacement can be used as part of a process to double resolving power of
an image. Id. at 1:36‒44. Thus, both of these references disclose that it was
well known in the art how to achieve half-pixel displacement, and Yamada
specifically discloses using half-pixel displacement to double image
resolving power. We, therefore, credit Dr. Bovik’s testimony that it was well
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known in the art how to achieve half-pixel relative displacement.
Considering the foregoing and based on the complete record, Patent Owners
have not overcome the presumption that Yamazaki’s disclosure is enabling
for its teaching of doubling the resolving power of images.
Second, Patent Owners argue Yamazaki does not disclose this
limitation as the term is properly construed. In particular, Patent Owners
argue Yamazaki discloses combining a first unaltered image with a second
unaltered image to create an image with twice the resolution of the original
images. See PO Resp. 18‒19; Sur-reply 8‒10. Patent Owners argue this
combination of unaltered images does not disclose enhancing a first image
with a second image, as claimed. See PO Resp. 18‒19; Sur-reply 8‒10.
Patent Owners argue “producing a resultant digital image from said first
digital image enhanced with said second digital image” should be construed
to mean “[d]eriving an enhanced digital image by modifying the qualities of
the first digital image using the second digital image, where the first and
second digital images represent the same scene.” PO Resp. 16. Patent
Owners argue Yamazaki’s combination of unaltered images does not modify
the qualities of the first digital image using the second digital image, as
required by its construction. See PO Resp. 18‒19; Sur-reply 8‒10.
Petitioners argue that enhancing a first image with a second image
does not require modifying the qualities of an image, nor does it require
modifying pixel values of precisely aligned images. See Reply 8‒9.
Petitioners argue Yamazaki’s disclosure of combining a first image and
second image to create a resultant image with double the resolution
constitutes “image fusion,” which Petitioners allege is described as an
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example of image enhancement by Dr. Castleman. See id. at 9‒12 (citing
Ex. 1019, 36‒37).
Petitioners also argue that Yamazaki discloses this limitation even
under Patent Owners’ proposed construction because Yamazaki discloses
image combination processing circuit 54 “generates the resultant digital
image (enhanced image) by modifying the qualities of the first digital image
(e.g., by doubling the resolution and resolving power of the first digital
image in the horizontal direction) using the second digital image.” Reply 13.
According to Petitioners, resolution and resolving power are qualities of a
digital image and Yamazaki’s resultant image are enhanced from the first
digital image using the second digital image. Id. at 14.
As discussed above with respect to claim construction, the parties
propose different constructions for the limitation “producing a resultant
digital image from said first digital image enhanced with said second digital
image.” We do not find it necessary to explicitly construe the term to resolve
the parties’ dispute. However, we note that the crux of Patent Owners’
argument and proposed construction is that the “producing” limitation
requires that a resultant image is produced from a first image that is
modified using a second image, and that modification must constitute an
enhancement of the first image. We agree with Patent Owners on this point.
Claim 1 recites “digitizing said first and said second intensity images
to produce correspondingly a first digital image and a second digital image.”
Ex. 1001, 10:46‒50. These first and second digital images are then stored in
an image memory. Id. at 10:51‒53. Next, a “digital image processor”
receives these first and second digital images, “producing a resultant digital
image from said first digital image enhanced with said second digital
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image.” Id. at 10:54‒58. Thus, the plain language of the claim requires that
the first image is enhanced with the second image.
The Specification of the ’289 patent provides examples of enhancing a
first image with a second image. For example, the ’289 patent states an
image obtained from an additional image sensor “can help to modify image
qualities of the original image from the monochromatic image sensor.” Id. at
7:40‒43. The ’289 patent also states that “[o]ne of the key features of the
present multiple sensors is to use the intensity image from B/W sensor 308
to expand the dynamic ranges of images from sensors 302, 304 and 306 so
as to increase overall dynamic range of the resultant color images.” Id. at
9:23‒27. The ’289 patent also explicitly refers to an image with a larger
dynamic range as an image that has been “enhanced.” Id. at 9:46‒50.
The ’289 patent also states that “with images of the same imaging
target from the multiple sensors, it is possible to enhance images, such as
noise removal and color correction at 820.” Id. at 10:12‒15. The ’289 patent
explains further, stating:
What sets the present invention fundamentally apart from
existing technologies is the use of the black-and-white intensity
image from the image sensor with a full transparent 20 filter or
no filter at all. The B/W image sensor can capture full
information including details that may be missed by those color
image sensors. The intensity image from the B/W image sensor
is then repeatedly used in the image processing processes in the
DSP chip that subsequently 25 produces a high quality and film-
like digital image.
Id. at 10:17‒25.
In each of these disclosures, the ’289 patent describes using an image
captured from a “B/W” image sensor or a sensor that is responsive to a full
region of visible color spectrum (i.e., the claimed “second image” that is
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obtained from the “second image sensor sensitive to a full region of visible
color spectrum”) to enhance images obtained from other image sensors. The
examples of enhancement include enhancing the dynamic range, noise
removal, and color correction. See, e.g., Ex. 1001, 10:6‒16. These examples
are consistent with the plain language of the claim requiring that the first
image is enhanced with the second image in that the Specification’s
examples describe the resulting image being produced by starting with the
first image and enhancing it with the second in some manner.
Petitioners do not cite, nor do we discern, any disclosure in the
Specification that describes producing a resulting image by merely
combining a first image and a second image. Instead, consistent with the
plain language of the claim, the Specification describes only producing a
resulting image by starting with the first image and enhancing it with the
second image. Thus, although we do not consider it necessary to explicitly
construe the “producing” limitation, we determine that claim 1 requires that
the “first digital image” be “enhanced with the second digital image” in
some manner. See Route1 Inc. v. AirWatch LLC, 829 F. App’x 957, 961–62
(Fed. Cir. 2020) (finding that the district court’s construction of “sending an
instruction, from the controller to the selected host, to establish a connection
to the remote device” to add “for the host” to the phrase “to establish a
connection to the remote device” was proper when “the specification’s
disclosing only host-initiated connections . . . suggest[s] the patent’s claim
does not encompass an embodiment contrary to these descriptions” and “the
plain terms of the instruction limitation are entirely consistent with and even
support the specification’s exclusive depiction of host-initiated connections”
(alterations omitted) (internal quotation marks omitted) (citations omitted))
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(nonprecedential); cf. Apple Inc. v. Andrea Elecs. Corp., 949 F.3d 697, 707
(Fed. Cir. 2020) (“We recognize that preferred embodiments do not act as
claim limitations, but when the invention as claimed covers only the
preferred embodiment described in the written description, it is questionable
whether a [party] may assert a proposed construction that is broader than the
plain language of the claim.”).
Patent Owners argue that Yamazaki discloses combining a first image
and a second image to create a third image, but the first image is not
enhanced with the second image. See Sur-reply 8‒10. Yamazaki discloses
combining a digital image obtained from a first image sensor with a digital
image obtained from a second image sensor to create a digital image with
twice the resolution in the horizontal direction. Figure 3, as annotated by
Petitioners, illustrates this procedure:

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Annotated Figure 3 of Yamazaki discloses two digital images, colored
yellow (first digital image) and red (second digital image), and depicts these
digital images are interleaved to create the resultant digital image, which
includes alternating red- and yellow-colored stripes illustrating that
alternating columns of pixels were obtained from each of the original digital
images. Reply 12.
Petitioners argue that this example constitutes image enhancement
because the resultant image has double the resolution of the original (see
Reply 12‒13), but Petitioners have failed to adequately establish that the
first digital image is enhanced with the second digital image in the manner
required by the claim. Indeed, Petitioners have not identified any teaching in
Yamazaki that the first digital image is in any way modified in the creation
of the resultant image. See id. at 8‒15. Instead, the first digital image
remains intact; the resultant digital image differs from the first image
because the resultant digital image alternates between pixels from the first
digital image and pixels from the second digital image, resulting in twice the
resolution. In effect, Petitioner is arguing that the claim merely requires
taking two images and ending up with a resulting image, but, as discussed
above, the claim specifically requires that the resulting image is achieved by
starting with the first image and enhancing it with the second.
Petitioners’ argument that Dr. Castleman’s example of “image fusion”
confirms that Yamazaki’s image combination constitutes image
enhancement is unpersuasive. See id. at 8‒10. Petitioners’ annotated figure
from Dr. Castleman’s textbook illustrates this example and is shown below.
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This annotated figure illustrates two examples of image fusion in separate
rows; the top row depicts an example using images of clocks and the bottom
row depicts an example using MRI images. Reply 11 (citing Ex. 1018, 347).
In the top row of the annotated figure, two images of clocks are depicted in
the left and center panels and an enhanced image fusing the two images is
depicted in the right panel. Petitioners annotated the top row using yellow
and red highlighting to illustrate the example. In particular, in the left panel
the clock further from the camera is in sharper focus and is highlighted
yellow. In the center panel the clock that is closer to the camera is in sharper
focus and is highlighted red. The image in the right panel results from using
the yellow clock from the left panel and the red clock from the center panel.
This example is consistent with the disclosures of image enhancement in the
’289 patent. For example, the ’289 patent discloses an image from a B/W
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image sensor (a “second digital image”) “can capture full information
including details that may be missed by those color image sensors. The
intensity image from the B/W image sensor is then repeatedly used in the
image processing process in the DSP chip that subsequently produces a high
quality and film-like digital image.” Ex. 1001, 10:20‒25.
However, the example from Dr. Castleman’s textbook differs from
Yamazaki’s disclosure of interleaved images because each of the original
images in the textbook example is modified by replacing one of the clocks
with the clock from the other image, thereby enhancing that image. In
contrast, nothing in Yamazaki’s disclosure indicates that any portion of the
first digital image is replaced (or otherwise modified) in creating the
resultant digital image. Thus, contrary to Petitioners’ argument, Dr.
Castleman’s example reinforces our conclusion that enhancing an image
requires modifying that image.
In consideration of the foregoing and based on the complete record,
we find that Petitioners have not shown sufficiently how Yamazaki discloses
the “producing a resultant image” limitation addressed above. Accordingly,
we determine that Petitioners have not demonstrated by a preponderance of
the evidence that claim 1 is unpatentable under 35 U.S.C. § 102 as
anticipated by Yamazaki. We also determine that Petitioners have not
demonstrated by a preponderance of the evidence that dependent claim 2,
which depends from claim 1, is unpatentable under 35 U.S.C. § 102 as
anticipated by Yamazaki for the same reasons.
D. Ground 2: Alleged Obviousness of Claims 1 and 2 over Yamazaki
A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
between the claimed subject matter and the prior art are such that the subject
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matter, as a whole, “would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which said subject matter
pertains.” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
The question of obviousness is resolved on the basis of underlying factual
determinations, including (1) the scope and content of the prior art; (2) any
differences between the claimed subject matter and the prior art; (3) the level
of skill in the art; and (4) where in evidence, so-called secondary
considerations.6 See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
We analyze Petitioners’ obviousness grounds with the principles identified
above in mind.
Petitioners did not separately analyze claims 1 and 2 under the
anticipation and obviousness standards. See Pet. 18‒40. Instead, Petitioners
assert Yamazaki teaches each limitation of claims 1 and 2 in embodiment 1.
See id. Petitioners also assert Yamazaki teaches each limitation of claims 1
and 2 in embodiment 2. See id. at 39‒40. However, Petitioners do not
identify any differences between the claimed subject matter and the prior art
or address any of the other underlying factual determinations particular to an
obviousness analysis. See generally id. at 18‒40. That said, Petitioners do
make a few statements characterizing how a person of ordinary skill in the
art would have understood the disclosure of Yamazaki. See, e.g., Pet. 27
(asserting that a person of ordinary skill in the art would understand “that
each pixel of an image sensor corresponds to a pixel of the image captured
by that image sensor”); see also id. at 26, 30. We understand such statements
to indicate Petitioners’ alternative obviousness ground that, to the extent

6 The parties do not address secondary considerations, which therefore do
not constitute part of our analysis.
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such disclosure is not sufficient for anticipation, it is sufficient for
obviousness.
We have found already that Petitioners have not established by a
preponderance of the evidence that Yamazaki discloses the “producing a
resultant image” limitation as required by the claim and addressed above.
Reviewing this ground, we find no further discussion by Petitioner on the
limitation that would persuade us that the claim would have been obvious in
view of Yamazaki. Accordingly, we determine that Petitioners have not
demonstrated by a preponderance of the evidence that claim 1 is
unpatentable under 35 U.S.C. § 103(a) as obvious over Yamazaki. We also
determine that Petitioners have not demonstrated by a preponderance of the
evidence that dependent claim 2, which depends from claim 1, is
unpatentable under 35 U.S.C. § 103(a) as obvious over Yamazaki for the
same reasons.
E. Ground 3: Alleged Obviousness of Claim 4 over Yamazaki and
Mansoorian
1. Mansoorian
Mansoorian is a United States Patent directed to an imaging device
that integrates a photosensing array and analog-to-digital converter on a
single substrate. Ex. 1006, Abstract. Figure 1 of Mansoorian illustrates an
example of imaging device 100 and is reproduced below.
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Figure 1 depicts imaging device 100 comprising image sensing array 110,
which outputs analog image signal 112 and ADC block 120, which outputs
digital image signal 122. Id. at 3:24‒33.
On this record, we agree with Petitioners (Pet. 16) that Mansoorian
qualifies as prior art under 35 U.S.C. § 102(e) because Mansoorian issued on
June 4, 2002, from an application filed on November 12, 1997, which is
before the filing date of the ’289 patent, which is January 15, 1999. See
Ex. 1001, code (22); Ex. 1006, codes (22) and (45).
2. Claim 4
Claim 4 recites “[t]he improved digital camera as recited in claim 1,
wherein said analog-to-digital converting circuitry comprises two individual
analog-to-digital converters, each integrated with one of said first and
second image sensors so that said first and second digital images are
digitized independently and in parallel to increase signal throughput rate.”
Ex. 1001, 11:1–6. Petitioners assert the combination of Yamazaki and
Mansoorian teaches or suggests this limitation. Pet. 44‒49.
Petitioners do not assert that Mansoorian teaches or suggests the
limitation, “a digital image processor, coupled to said image memory and
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receiving said first digital image and said second digital image, producing a
resultant digital image from said first digital image enhanced with said
second digital image,” as recited in claim 1. See id. Accordingly, we
determine that Petitioners have not demonstrated by a preponderance of the
evidence that claim 4 is unpatentable under 35 U.S.C. § 103(a) as obvious
over Yamazaki and Mansoorian for the same reasons as discussed above
with respect to claim 1.
F. Ground 4: Alleged Obviousness of Claims 1 and 3 over Weldy,
Denyer, and Nagumo
Petitioners contend that claims 1 and 3 are unpatentable under
35 U.S.C. § 103(a) as obvious over Weldy, Denyer, and Nagumo.
1. Weldy
Weldy is a European Patent Application directed to a method of
producing a digital image that includes capturing two digital images of a
scene and combining them with improved performance characteristics.
Ex. 1007, Abstract. Figure 1b of Weldy illustrates an example digital camera
that performs the disclosed method and is reproduced below.

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Figure 1b depicts a multi-lens camera with main body 50 containing four
imaging lenses 51a, 51b, 51c, 51d. Id. at 5:16‒18.
As discussed below, we agree with Petitioners that Weldy qualifies as
prior art under 35 U.S.C. § 102(a).
2. Denyer
Denyer is a WIPO International Application directed to an image
capture system that comprises an integrated circuit having at least two sensor
arrays, where each sensor array has an image sensing surface and a
respective lens system. Ex. 1008, Abstract. Figure 1 of Denyer illustrates an
example of the image capture system and is reproduced below.

Figure 1 depicts a video camera system having three cameras 1, each
comprising lens system 2 mounted on image sensing surface 3 of image
array sensor 4. Id. at 9:20‒28.
On this record, we agree with Petitioners (Pet. 16) that Denyer
qualifies as prior art under 35 U.S.C. § 102(b) because Denyer’s publication
date of June 10, 1993, is more than one year before the filing date of the
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’289 patent, which is January 15, 1999. See Ex. 1001, code (22); Ex. 1008,
code (43).
3. Nagumo
Nagumo is a United States Patent directed to a solid state camera that
includes a plurality of image sensors. Ex. 1009, Abstract. Figure 7 of
Nagumo illustrates a block diagram showing an example of the solid state
camera and is reproduced below.

Figure 7 depicts a block diagram of the solid state camera comprising
cameras 1, 2, 3, each of which output an analog image to sample and holding
circuits 5, 6, 7, which in turn provide the analog image to A/D converters 17,
18, 19. Id. at 4:40‒50.
On this record, we agree with Petitioners (Pet. 16) that Nagumo
qualifies as prior art under 35 U.S.C. § 102(b) because Nagumo’s issue date
of March 19, 1985, is more than one year before the filing date of the ’289
patent, which is January 15, 1999. See Ex. 1001, code (22); Ex. 1009, code
(45).
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4. Prior Art Status of Weldy
Petitioners argue (Pet. 16) that Weldy qualifies as prior art under
35 U.S.C. § 102(a) because Weldy’s publication date of August 12, 1998, is
before the filing date of the ’289 patent, which is January 15, 1999. See
Ex. 1001, code (22); Ex. 1007, code (43).
Patent Owners argue that Weldy does not qualify as prior art. See PO
Resp. 26‒27; Sur-reply 14‒20. In particular, Patent Owners argue that prior
to Weldy’s publication on August 12, 1998, an essentially final draft (the
“August Draft”) of the application that ultimately issued as the ’289 patent
was faxed to one of the inventors, Yanbin Yu, from Patent Owners’ patent
agent. Sur-reply 14 (citing Ex. 2007; Ex. 2002 ¶ 6). Patent Owners argue the
August Draft establishes that Patent Owners conceived of the invention no
later than August 8, 1998. PO Resp. 27. Patent Owners further argue
inventors Yu and Zhang worked continuously and diligently on refining the
invention from August 8, 1998 until the application was filed on January 15,
1999. Id. (citing Ex. 2002 ¶ 9, Ex. 2003 ¶ 6). Patent Owners offer the
testimony of the inventors, Yu and Zhang, to support these assertions.
Ex. 2002 ¶ 9, Ex. 2003 ¶ 6.
Petitioners argue Patent Owners fail to meet the burden to establish an
earlier priority date for the ’289 patent. See Reply 20‒25. In particular,
Petitioners argue Patent Owners bear the burden of production to produce
evidence that Weldy is not prior art to the ’289 patent. Id. at 20‒21 (citing
Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378‒80
(Fed. Cir. 2015)). Petitioners argue Patent Owners’ sole basis for swearing
behind Weldy’s publication date is the testimony of inventors Yanbin Yu
and Zhongxuan Zhang and accompanying exhibits. Id. at 21. Petitioners
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argue the accompanying exhibits, including the August Draft, necessarily
rely on the uncorroborated testimony of the inventors. Id. Petitioners argue
Patent Owners have failed to corroborate any inventor testimony or
document and, therefore, cannot establish an earlier priority date for the ’289
patent. Id. at 21‒23.
Patent Owners argue that the August Draft establishes conception of
the invention prior to the publication date of Weldy. To support the
argument that the August Draft supports prior conception, Patent Owners
rely on the testimony of inventor Yanbin Yu (see PO Resp. 26 (citing
Ex. 2002 ¶ 6)) and the August Draft itself (see PO Resp. 26 (citing
Ex. 2007)). See PO Resp. 26 (citing Ex. 2002 ¶ 6, Ex. 2007)); Sur-reply 14
(citing Ex. 2007). Patent Owners argue the August Draft is a physical exhibit
and, therefore, does not require corroboration. Sur-reply 15 (citing
Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577‒78 (Fed. Cir. 1996)).
To support the argument that the inventors worked continuously and
diligently refining the invention from the time of conception to the time the
patent application was filed, Patent Owners rely on the testimony of
inventors Yanbin Yu (see PO Resp. 27 (citing Ex. 2002 ¶ 9)) and
Zhongxuan Zhang (see id. at 27 (citing Ex. 2003 ¶ 6)). Patent Owners have
not offered any evidence corroborating diligence between conception and
filing of the application that does not depend solely on the inventors
themselves.
“The person ‘who first conceives, and, in a mental sense, first invents
. . . may date his patentable invention back to the time of its conception, if he
connects the conception with its reduction to practice by reasonable
diligence on his part, so that they are substantially one continuous act.’”
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Mahurkar, 79 F.3d at 1577 (quoting Christie v. Seybold, 55 F. 69, 76 (6th
Cir. 1893)).
“It is well established, however, that when a party seeks to prove
conception through an inventor’s testimony the party must proffer evidence,
‘in addition to [the inventor’s] own statements and documents,’
corroborating the inventor’s testimony.” Apator Miitors ApS v. Kamstrup
A/S, 887 F.3d 1293, 1295 (Fed. Cir. 2018) (quoting Mahurkar, 79 F.3d at
1577). “The sufficiency of the proffered corroboration is determined by a
‘rule of reason’ analysis in which all pertinent evidence is examined.” Id.
(citing In re NTP, Inc., 654 F.3d 1279, 1291 (Fed. Cir. 2011)). “Even under
the ‘rule of reason’ analysis, however, the ‘evidence of corroboration must
not depend solely on the inventor himself.’” Id. (quoting Cooper v.
Goldfarb, 154 F.3d 1321, 1330 (Fed. Cir. 1998)).
As noted by our reviewing court, when a party seeks to prove
conception through an inventor’s testimony, the party must proffer
corroborating evidence “in addition to [the inventor’s] own statements and
documents.” Apator Miitors ApS, 887 F.3d 1293 (Fed. Cir. 2018).
Corroborating evidence “must not depend solely on the inventor himself.”
Cooper, 154 F.3d at 1330. Patent Owners have not offered any persuasive
evidence corroborating conception that does not depend solely on the
inventors themselves or their documents. We disagree with Patent Owners’
contention that the August Draft does not need corroboration because it is a
physical exhibit. See Sur-reply 15. The August Draft is a document that has
been authenticated only by the testimony of the inventors. Thus, this
document is one of the inventors’ “own statements and documents” that
depends “solely on the inventor himself” and, therefore, requires
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corroboration. Accordingly, Patent Owners have failed to sufficiently
corroborate an earlier conception date and, on this record, have not sworn
behind Weldy.
We also note that Patent Owners have failed to proffer sufficient
corroborating evidence to support the inventors’ testimony regarding
reasonable diligence in reducing the invention to practice between the
alleged date of conception (the date of the August Draft) and the filing of the
application that ultimately issued as the ’289 patent, which filing came over
five months after the alleged conception. See PO Resp. 26–27 (alleging the
“inventors . . . worked continuously and diligently on refining the invention
. . . until the time the patent application was filed”) (citing Ex. 2002 ¶ 9,
Ex. 2003 ¶ 6). Patent Owners’ evidence on this topic is limited to declaration
testimony of the inventors, who merely state that they were refining the
design through the filing of the application. See Ex. 2002 ¶ 9, Ex. 2003 ¶ 6.
Both of these declarations are uncorroborated and contain little more than a
cursory statement that the inventors were diligent. Medichem, S.A. v.
Rolabo, S.L., 437 F.3d 1157, 1170–71 (Fed. Cir. 2006) (“The requirement of
independent knowledge remains key to the corroboration inquiry.”).
Accordingly, Patent Owners have failed to sufficiently corroborate
reasonable diligence in reducing the invention to practice and, on this record,
have not sworn behind Weldy for this additional reason.
For these reasons and based on the complete record, we agree with
Petitioners (Pet. 16) that Weldy qualifies as prior art under 35 U.S.C.
§ 102(a) because Weldy’s publication date of August 12, 1998, is before the
filing date of the ’289 patent, which is January 15, 1999. See Ex. 1001,
code (22); Ex. 1007, code (43).
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5. Independent Claim 1
Petitioners assert claim 1 is rendered obvious by Weldy, Denyer, and
Nagumo. Pet. 49‒76. We address each limitation in turn.
a) Preamble
The preamble of claim 1 recites: “[a]n improved digital camera.”
Ex. 1001, 10:37. Petitioners assert Weldy teaches or suggests the preamble.
Pet. 58. In particular, Petitioners assert Weldy teaches producing digital
images from a multi-lens camera with four imaging lenses. Id. (citing
Ex. 1007, 2:3‒4, 5:16‒17; Ex. 1003 ¶ 174). Dr. Bovik offers testimony in
support of Petitioners’ assertions with regard to the preamble. Ex. 1003
¶¶ 173‒175.
Patent Owners do not specifically dispute that Weldy teaches or
suggests the preamble of claim 1. See generally PO Resp. Based on the
complete record and for the reasons explained by Petitioners, we are
persuaded that Petitioners have demonstrated sufficiently that Weldy teaches
or suggests the preamble of claim 1.7
b) “a first and a second image sensor closely positioned with respect to
a common plane”
Claim 1 further recites “a first and a second image sensor closely
positioned with respect to a common plane.” Ex. 1001, 10:38–39. Petitioners
assert Weldy in combination with Denyer renders obvious this limitation.
Pet. 59‒61. In particular, Petitioners assert Weldy teaches a four-lens digital
camera that includes three image sensors with corresponding single-color

7 Because Petitioners have shown sufficiently that the recitations in the
preamble are satisfied by Weldy, we need not determine whether the
preamble is limiting. See Vivid Techs., 200 F.3d at 803.
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color filters (the claimed “first image sensor”) and a second image sensor
without a color filter (the claimed “second image sensor”). Id. at 59.
Petitioners assert that lenses 51a and 51b are closely positioned with respect
to a plane, as illustrated in Figure 1b, which is shown below.

Figure 1b depicts a perspective view of a digital camera with four lenses
51a‒51d. Ex. 1007, 5:16‒18. Petitioners assert an ordinarily skilled artisan
would have understood from Figure 1b that the image sensors corresponding
to lenses 51a and 51b are closely positioned with respect to a common plane.
Pet. 59 (citing Ex. 1003 ¶ 178).
However, Petitioners acknowledges that Weldy does not explicitly
disclose first and second image sensors closely positioned with respect to a
common plane. Id. at 60. Petitioners assert Denyer discloses multiple image
sensors 4 that all lie in the same plane. Id. (citing Ex. 1008, Figs. 1, 5, 2:13‒
18, 9:24‒26, 16:19‒21). To illustrate this contention, Petitioners annotate
Denyer’s Figure 1 as shown below. Id.
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Annotated Figure 1 depicts a video camera system having three cameras 1,
each comprising lens system 2 mounted on image sensing surface 3 of image
array sensor 4 with annotations identifying the image sensors and their
relative positions with respect to a common plane. Ex. 1008, 9:20‒28;
Pet. 60. Dr. Bovik offers testimony in support of Petitioners’ assertions with
regard to this limitation. Ex. 1003 ¶¶ 176‒183.
Petitioners assert an ordinarily skilled artisan would have been
motivated to apply Denyer’s teachings of two image sensors closely
positioned with respect to a common plane” to Weldy’s digital camera “to
produce the obvious, beneficial, and predictable results of reduced alignment
errors, easier calibration and electronic correction, and a resulting picture of
very high quality.” Pet. 55 (citing Ex. 1003 ¶¶ 165‒168). Petitioners assert
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Weldy and Denyer are analogous art that both relate to digital cameras. Id.
Petitioners assert Denyer teaches that when combining images captured by
multiple sensors, aligning the sensors improves the quality of the combined
picture. Id. (citing Ex. 1008, 3:11‒14). Finally, Petitioners assert the
combination of Weldy and Denyer involves no more than the combination of
known elements according to known methods. Id. at 56.
Patent Owners do not specifically dispute that Denyer teaches or
suggests this limitation. See generally PO Resp. We agree with Petitioners
that Denyer teaches image sensors that are closely positioned with respect to
a common plane. In particular, Denyer’s image sensor array 4 contains
image sensors that lie in a common plane and are positioned closely to one
another with respect to that common plane. See Ex. 1008, Figs. 1, 5, 2:13‒
18, 9:24‒26, 16:19‒21.
However, Patent Owners argue Petitioners have not established that
an ordinarily skilled artisan would have been motivated to combine Weldy
with Denyer for two reasons. See PO Resp. 27‒28. First, Patent Owners
argue an ordinarily skilled artisan would understand that Weldy requires
different lens-to-sensor spacing for each sensor, but Denyer teaches the lens-
to-sensor spacing for each sensor is the same. Id. at 27 (citing Ex. 1008,
2:11‒18, Ex. 2001 ¶ 40). Second, Patent Owners argue Weldy includes a
focus mechanism that requires variable spacing between the lenses and
sensors, but Denyer discloses fixed spacing between the lens system and the
sensor array. Id. at 28 (citing Ex. 2001 ¶ 41). Dr. Castleman offers testimony
in support of both of these assertions. See Ex. 2001 ¶¶ 38‒41.
Petitioners dispute both of Patent Owners’ arguments regarding
combining Weldy and Denyer. First, Petitioners argue Weldy does not
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require different lens-to-sensor spacing for each sensor. Reply 27‒28.
Petitioners argue Patent Owners’ expert, Dr. Castleman, admitted as much
during his deposition. Id. at 28 (citing Ex. 1019, 129). Second, Petitioners
argue Weldy does not require adjustable focus systems. Id. at 28‒29 (citing
Ex. 1017 ¶ 30). Dr. Bovik offers testimony in support of both of these
assertions. See Ex. 1017 ¶¶ 29‒30.
Based on the complete record, Petitioners have demonstrated by a
preponderance of the evidence that an ordinarily skilled artisan would have
been motivated to combine Weldy and Denyer in the manner proposed.
Weldy teaches a digital camera with lenses that lie in a common plane,
where each lens has a corresponding image sensor within the camera.
Ex. 1007, Fig. 1b, 5:48‒57, 6:13‒16. Denyer teaches a digital camera with
an image sensor array that includes multiple image sensors 4 on a single chip
5. Ex. 1008, Figs. 1, 5, 2:13‒18, 9:24‒26, 16:19‒21. As explained in further
detail below, we agree with Petitioners that an ordinarily skilled artisan
would have applied Denyer’s teachings of image sensors closely positioned
with respect to a common plane on an image sensor array in Weldy’s digital
camera to reduce alignment errors, ease calibration and electronic correction,
and produce high quality pictures. See Pet. 55 (citing Ex. 1003 ¶¶ 165‒168).
Patent Owners argue an ordinarily skilled artisan would not have been
motivated to combine Weldy and Denyer based on Weldy’s lens-to-sensor
spacing and Weldy’s focus mechanism. See PO Resp. 27‒28. This argument
is unpersuasive for two reasons. First, Patent Owners’ argument focuses on
the ability to combine Denyer’s physical structure into the physical structure
of Weldy in light of these characteristics of Weldy. But, “[t]he test for
obviousness is not whether the features of a secondary reference may be
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bodily incorporated into the structure of the primary reference,[] but rather
whether a skilled artisan would have been motivated to combine the
teachings of the prior art references to achieve the claimed invention.” Allied
Erecting and Dismantling Co., Ind. v. Genesis Attachments, LLC, 825 F.3d
1373, 1381 (Fed. Cir. 2016) (citation and quotation marks omitted); see also
In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of
references does not involve an ability to combine their specific structures.”
(emphasis omitted)).
Second, we agree with Petitioners that Weldy does not describe either
the lens-to-sensor spacing or the focus mechanism as required. See Reply
27‒29. Dr. Castleman’s testimony regarding Weldy’s lens-to-sensor spacing
is based on assumptions regarding focal length, image sensor size, and
image sensor angle of view of the scene. Ex. 2001, 33. However, as
Dr. Bovik testifies, the characteristics assumed by Dr. Castleman are not
required by Weldy. See Ex. 1017 ¶ 29. Indeed, Dr. Castleman testifies that
Weldy does not require image sensors to be the same size, which undercuts
the testimony that Weldy requires different lens-to-sensor spacing. See
Ex. 1019, 129.
We also credit Dr. Bovik’s testimony that Weldy does not require
adjustable focus systems. See Ex. 1017 ¶ 30. Weldy describes embodiments
that include focus mechanisms (see, e.g., Ex. 1007, 3:6‒8, 5:16‒17), but
Weldy does not discuss the focus mechanism in its explanation of how its
invention overcomes the problems of the prior art (see id. at 2:39‒58).
Applying Denyer’s image sensor array may have necessitated
modifying Weldy’s lens-to-sensor spacing and focus mechanism, but an
ordinarily skilled artisan would have been able to assess the advantages and
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disadvantages of modifying Weldy’s lens-to-sensor spacing and focus
mechanism according to the teachings of Denyer. See Medichem, S.A. v.
Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“A given course of
action often has simultaneous advantages and disadvantages, and this does
not necessarily obviate motivation to combine.”). Petitioners have identified
sufficient rationale for such modifications, asserting that applying Denyer’s
image sensor array with closely positioned image sensors would reduce
Weldy’s alignment errors, ease calibration and electronic correction, and
produce high quality pictures. See Pet. 55 (citing Ex. 1003 ¶¶ 165‒168).
Petitioner’s assertions are supported by Denyer, which teaches that when
image sensors are positioned on an image sensor array “the problem of
alignment is greatly reduced by the fabrication of the various sensors
required on[] one chip. This ensures that the sensors all lie in the same plane
and have the same rotational orientation, and this is an important
advantage.” Ex. 1008, 2:13‒18. Denyer teaches that this positioning
“provides a composite image camera of particularly simple and economic
construction.” Id. at 3:4‒6. Denyer also teaches that “[i]t is relatively easy
though to calibrate these camera after assembly and electronically to correct
for [simple orthogonal] translations.” Id. at 2:22‒25.
Based on the complete record and for the reasons explained by
Petitioners, we are persuaded that Petitioners have demonstrated sufficiently
that (1) the combination of Weldy and Denyer teaches “a first and a second
image sensor closely positioned with respect to a common plane,” as recited
in claim 1 and (2) an ordinarily skilled artisan would have a reason to
combine the teachings of Weldy and Denyer as proposed by Petitioners.
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c) “said second image sensor sensitive to a full region of visible color
spectrum”
Claim 1 further recites “said second image sensor sensitive to a full
region of visible color spectrum.” Ex. 1001, 10:39–40. Petitioners assert
Weldy discloses this limitation. Pet. 62. In particular, Petitioners assert that
Weldy discloses a four-lens digital camera where each lens has a
corresponding image sensor. Id. (citing Ex. 1007, Fig. 1b, 5:48‒57, 6:13‒16;
Ex. 1003 ¶ 185). Petitioners assert one of these image sensors (the claimed
“second image sensor”) is provided without a color filter. Id. Petitioners
assert that an image sensor without a color filter is an image sensor sensitive
to a full region of visible color spectrum. Id. (citing Ex. 1003 ¶ 186).
Dr. Bovik offers testimony in support of Petitioners’ assertions with regard
to this limitation. Ex. 1003 ¶¶ 184‒187.
Patent Owners do not specifically dispute that Weldy teaches or
suggests this limitation. See generally PO Resp. Based on the complete
record and for the reasons explained by Petitioners, we are persuaded that
Petitioners have demonstrated sufficiently that Weldy teaches an image
sensor that does not have a color filter and is thus sensitive to a full region of
visible color spectrum.
d) “two lenses, each being mounted in front of one of said two image
sensors”
Claim 1 further recites “two lenses, each being mounted in front of
one of said two image sensors.” Ex. 1001, 10:41–42. Petitioners assert
Weldy in combination with Denyer renders obvious this limitation. Pet. 63‒
66. In particular, Petitioners assert Weldy teaches four imaging lenses, 51a,
51b, 51c, 51d, and an ordinarily skilled artisan would have understood that
each lens is mounted in front of one of the four image sensors for producing
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corresponding images. Id. at 63 (citing Ex. 1007, 2:49‒51, 3:1‒2, 5:16‒17,
6:13‒16; Ex. 1003 ¶ 190).
However, Petitioners acknowledge that Weldy does not explicitly
teach the spatial relation that each of the two lenses is mounted in front of
one of the image sensors. Id. at 64. Petitioners assert Denyer teaches this
arrangement. Id. at 64‒66. In particular, Petitioners assert Denyer teaches
two lenses 8, each being mounted in front of one of image sensors 4. Id. at
64 (citing Ex. 1008, 9:20‒24, 9:29‒30, 15:29‒30; Ex. 1003 ¶ 191). To
illustrate this contention, Petitioners annotate Figure 1 of Denyer as shown
below. Id. at 65.

Annotated Figure 1 depicts lenses 8 mounted in front of image sensors 4,
with Petitioners’ annotations identifying these respective elements. Id. Dr.
Bovik offers testimony in support of Petitioners’ assertions with regard to
this limitation. Ex. 1003 ¶¶ 188‒192.
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Patent Owners do not specifically dispute that the combination of
Weldy and Denyer teaches or suggests this limitation. See generally PO
Resp. Based on the complete record and for the reasons explained by
Petitioners, we are persuaded that Petitioners have demonstrated sufficiently
that the combination of Weldy’s disclosure of imaging lenses, 51a, 51b, 51c,
51d and Denyer’s disclosure of two lenses mounted in front of image
sensors satisfies this limitation.
e) “said first image sensor producing a first image and said second
image sensor producing a second image”
Claim 1 further recites “said first image sensor producing a first image
and said second image sensor producing a second image.” Ex. 1001, 10:44–
45. Petitioners assert Weldy discloses this limitation. Pet. 66‒68. In
particular, Petitioners assert Weldy teaches a first image sensor (one of the
three image sensors with a single-color color filter) that produces a first
“electronic image,” which is a first intensity image where each pixel has a
single value that represents the light intensity from the selected spectral
range. Id. at 66‒67 (citing Ex. 1007, Abstract, 2:39‒51, 7:5‒6; Ex. 1003
¶ 196). Petitioners assert Weldy teaches a second image sensor with no color
filter, where the second image sensor produces a second “electronic image,”
which is a second intensity image where each pixel has a single value that
represents the light intensity from the entire visible color spectrum. Id. at 67
(citing Ex. 1007, Abstract, 2:39‒51, 7:5‒6; Ex. 1003 ¶ 198). Dr. Bovik
offers testimony in support of Petitioners’ assertions with regard to this
limitation. Ex. 1003 ¶¶ 193‒199.
Patent Owners do not specifically dispute that Weldy teaches or
suggests this limitation. See generally PO Resp. Based on the complete
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record and for the reasons explained by Petitioners, we are persuaded that
Petitioners have demonstrated sufficiently that Weldy teaches this limitation.
f) “an analog-to-digital converting circuitry coupled to said first and
said second image sensor and digitizing said first and said second
intensity images to produce correspondingly a first digital image and a
second digital image”
Claim 1 further recites “an analog-to-digital converting circuitry
coupled to said first and said second image sensor and digitizing said first
and said second intensity images to produce correspondingly a first digital
image and a second digital image.” Ex. 1001, 10:46–50. Petitioners assert
Weldy in combination with Denyer and Nagumo renders obvious this
limitation. Pet. 68‒71. In particular, Petitioners assert Weldy teaches
digitizing the two electronic images (the claimed “first and second intensity
images”) to generate “at least two digitized digital images” (the claimed
“first” and “second digital image[s]”). Id. at 68 (citing Ex. 1007, Fig. 3,
2:39‒51, 7:5‒6; Ex. 1003 ¶¶ 202‒203). According to Petitioners, this
teaching at least suggests analog-to-digital conversion. Id. at 68 (citing
Ex. 1003 ¶ 203).
However, Petitioners assert that to the extent Weldy does not
explicitly teach circuitry for analog-to-digital conversion, Nagumo teaches
analog-to-digital converting circuitry coupled to image sensors 1, 2. Id. at
69‒70 (citing Ex. 1009, 1:18‒31, 4:34‒50; Ex. 1003 ¶¶ 204‒206). To
illustrate this contention, Petitioners annotate Figure 7 of Nagumo as shown
below. Pet. 70.
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Annotated Figure 7 depicts image sensors 1, 2 coupled to sample and
holding circuits 5, 6, which in turn are coupled to A/D converters 17, 18,
with annotations to identify the combination of S/H circuits 5, 6 and A/D
circuits 17, 18 as the claimed “analog-to-digital converting circuitry” that
produces first and second “digital image[s]” from first and second “intensity
image[s].” Ex. 1009, 4:63‒67; Pet. 70. Dr. Bovik offers testimony in support
of Petitioners’ assertions with regard to this limitation. Ex. 1003 ¶¶ 200‒207.
Petitioners assert an ordinarily skilled artisan would have been
motivated to combine Weldy, Denyer, and Nagumo to obtain the benefit of
parallel image digitization and increased signal throughput. Pet. 70 (citing
Ex. 1003 ¶ 206). Petitioners also assert Weldy teaches that it is more
efficient to perform two image processing steps simultaneously, which
would have led an ordinarily skilled artisan to be motivated to apply
Nagumo’s teachings of multiple image sensors with corresponding
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individual analog-to-digital converters to achieve these benefits. Id. at 57
(citing Ex. 1007, 4:57‒58; Ex. 1003 ¶ 171).
Patent Owners do not specifically dispute that the combination of
Weldy, Denyer, and Nagumo teaches or suggests this limitation. See
generally PO Resp. Patent Owners also do not specifically dispute that an
ordinarily skilled artisan would have been motivated to combine Nagumo’s
teachings with the teachings of Weldy and Denyer. See generally id.
Based on the complete record and for the reasons explained by
Petitioners, we are persuaded that Petitioners have demonstrated sufficiently
that Weldy’s teaching of digitizing electronic images into digital images
suggests this limitation. We are also persuaded that Petitioners have
demonstrated sufficiently that (1) the combination of Weldy’s teaching of
digitizing electronic images into digital images and Nagumo’s sample and
holding circuits and A/D converters that are connected to image sensors
teaches this limitation and (2) an ordinarily skilled artisan would have been
motivated to combine the teachings of Weldy, Denyer, and Nagumo as
proposed by Petitioners.
g) “an image memory, coupled to said analog-to-digital converting
circuitry, for storing said first digital image and said second digital
image”
Claim 1 further recites “an image memory, coupled to said analog-to-
digital converting circuitry, for storing said first digital image and said
second digital image.” Ex. 1001, 10:51–53. Petitioners assert Weldy in
combination with Nagumo renders obvious this limitation. Pet. 71‒72. In
particular, Petitioners assert Weldy teaches extracting digitized digital
images (the claimed “first” and “second digital image”) from digital storage
(the claimed “image memory”) and transferring these images to central
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processing unit 78. Pet. 71‒72 (citing Ex. 1007, 3:9‒10). Petitioners assert
an ordinarily skilled artisan would have understood that in the combined
Weldy and Nagumo system described above, digital storage is coupled to the
analog-to-digital converting circuitry. Id. at 72 (citing Ex. 1003 ¶ 211).
Dr. Bovik offers testimony in support of Petitioners’ assertions with regard
to this limitation. Ex. 1003 ¶¶ 208‒212.
Patent Owners do not specifically dispute that the combination of
Weldy and Nagumo teaches or suggests this limitation. See generally PO
Resp. Based on the complete record and for the reasons explained by
Petitioners, we are persuaded that Petitioners have demonstrated sufficiently
that the digital storage taught by the combined Weldy and Nagumo system
renders obvious this limitation.
h) “a digital image processor, coupled to said image memory and
receiving said first digital image and said second digital image,
producing a resultant digital image from said first digital image
enhanced with said second digital image”
Claim 1 further recites “a digital image processor, coupled to said
image memory and receiving said first digital image and said second digital
image, producing a resultant digital image from said first digital image
enhanced with said second digital image.” Ex. 1001, 10:54–58. Petitioners
assert Weldy discloses this limitation. Pet. 73‒76. In particular, Weldy
teaches central processing unit 78 (the claimed “digital image processor”) is
coupled to digital storage (the claimed “image memory”) within camera 76.
Id. at 73 (citing Ex. 1007, Fig. 2, 3:9‒16). Petitioners assert Weldy teaches
central processing unit 78 combines and processes at least two digitized
electronic images to produce a combined digital image with improved
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performance characteristics. Id. at 74 (citing Ex. 1007, Figs. 2, 3, 7:7‒8;
Ex. 1003 ¶ 216).
Petitioners assert Weldy teaches enhancing the monochrome digital
image produced by the first image sensor with a single-color color filter with
the second digital image produced by the second image sensor without a
color filter. Id. at 74 (citing Ex. 1007, Fig. 3, 3:18‒22, 3:26‒4:45, 6:8‒12;
Ex. 1003 ¶ 217). Dr. Bovik offers testimony in support of Petitioners’
assertions with regard to this limitation. Ex. 1003 ¶¶ 213‒219.
Patent Owners do not specifically dispute that the combination of
Weldy and Denyer teaches or suggests this limitation. See generally
PO Resp. Based on the complete record and for the reasons explained by
Petitioners, we are persuaded that Petitioners have demonstrated sufficiently
that Weldy’s enhancement of a first digital image produced by a first image
sensor with a second digital image produced by a second image sensor
discloses this limitation.
i) Conclusion
In consideration of the foregoing and based on the complete record,
we are persuaded by Petitioners’ arguments and evidence, notwithstanding
Patent Owners’ arguments, addressed above. Having weighed each of the
Graham factors, including the scope and content of the prior art, and the
differences between the prior art and the challenged claim, we determine
that Petitioners have demonstrated by a preponderance of the evidence that
claim 1 is unpatentable under 35 U.S.C. § 103(a) as obvious over the
combination of Weldy, Denyer, and Nagumo.
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6. Claim 3
Claim 3 recites “[t]he improved digital camera as recited in claim 1,
wherein one of said two lenses is configured to allow said first image sensor
sensitive to a selected range of said full region of visible color spectrum, and
the other one of said two lenses is configured to allow said second image
sensors sensitive to said full region of visible color spectrum.” Ex. 1001,
10:62–67. Petitioners assert the combination of Weldy, Denyer, and
Nagumo teaches or suggests claim 3. Pet. 76‒78.
In particular, Petitioners assert Weldy teaches a four-lens digital
camera including a first lens corresponding to a first image sensor with a
single-color color filter. Id. at 76 (citing Ex. 1007, Fig. 1b, 6:13‒16;
Ex. 1003 ¶ 221). Petitioners further assert Weldy teaches a second lens
corresponding to the second image sensor without a color filter. Id. at 78
(citing Ex. 1007, Fig. 1b, 6:13‒16; Ex. 1003 ¶ 225). Dr. Bovik offers
testimony in support of Petitioners’ assertions with regard to this limitation.
Ex. 1003 ¶¶ 220‒223.
Patent Owners do not specifically dispute that the combination of
Weldy, Denyer, and Nagumo teaches or suggests claim 3. See generally
PO Resp. Based on the complete record and for the reasons explained by
Petitioners, we are persuaded that the combination of Weldy, Denyer, and
Nagumo teaches a first image sensor with a single-color color filter that is
sensitive to a selected range of the visible color spectrum and a second
image sensor that is sensitive to the full visible color spectrum, which
renders obvious this limitation. We determine that Petitioners have
demonstrated by a preponderance of the evidence that claim 3 is
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unpatentable under 35 U.S.C. § 103(a) as obvious over Weldy, Denyer, and
Nagumo.
G. Ground 5: Alleged Obviousness of Claim 4 over Weldy, Denyer,
Nagumo, and Mansoorian
Claim 4 depends from claim 1. Petitioners assert the combination of
Weldy, Denyer, Nagumo, and Mansoorian teaches or suggests this
limitation. Pet. 79‒85.
1. Claim 4
Claim 4 recites “[t]he improved digital camera as recited in claim 1,
wherein said analog-to-digital converting circuitry comprises two individual
analog-to-digital converters, each integrated with one of said first and
second image sensors so that said first and second digital images are
digitized independently and in parallel to increase signal throughput rate.”
Ex. 1001, 11:1–6. Petitioners assert the combination of Weldy, Denyer,
Nagumo, and Mansoorian teaches or suggests this limitation. Pet. 79‒85.
In particular, Petitioners assert Weldy in combination with Denyer
and Nagumo renders obvious analog-to-digital converting circuitry coupled
to first and second image sensors and digitizing the first and second intensity
images to produce corresponding first and second digital images. Id. at
80‒81 (citing Ex. 1003 ¶ 236). Petitioners assert Nagumo teaches that
analog-to-digital converting circuitry comprises two individual analog-to-
digital converters coupled to image sensors 1 and 2, respectively. Id. at 81
(citing Ex. 1009, 4:40‒50). Petitioners identify sample and holding circuit 5
and A/D converter 17 as comprising one individual analog-to-digital
converter coupled to image sensor 1 and sample and holding circuit 6 and
A/D converter 18 as comprising a second individual analog-to-digital
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converter coupled to image sensor 2. Id. at 82 (citing Ex. 1009, 4:40‒50;
Ex. 1003 ¶ 240). Petitioners assert an ordinarily skilled artisan would have
understood that each individual analog-to-digital converter digitizes the
respective first and second digital images independently and in parallel in
two separate processing paths, thereby increasing the signal throughput rate.
Id.
Petitioners assert that to the extent that the limitation “integrated with
one of said first and second image sensors” requires that each individual
analog-to-digital converter and its corresponding image sensor are on the
same chip, Mansoorian teaches this limitation for the same reasons discussed
above with respect to Ground 3. Id. at 83‒84.
Petitioners also provide an explanation as to why an ordinarily skilled
artisan would have combined the teachings of Mansoorian with the Weldy,
Denyer, and Nagumo system relied upon with respect to claim 1. Id. at 79‒
80, 84‒85. In particular, Petitioners assert an ordinarily skilled artisan would
have been motivated to apply Mansoorian’s integrated chips to reduce chip
size, power consumption, and manufacturing and design cost and to improve
system reliability, noise resistance, and chip-to-chip interfacing. Id. at 84‒85
(citing Ex. 1006, 4:23‒28; Ex. 1003 ¶ 243). Dr. Bovik offers testimony in
support of Petitioners’ assertions with regard to claim 4. Ex. 1003 ¶¶ 235‒
238.
Petitioners identify a potential issue regarding the construction of the
term “integrated,” in particular whether it requires that the analog-to-digital
converters are integrated with their respective image sensors on the same
chip. Petitioners have not argued for a particular construction of this term,
but have adequately accounted for the “integrated” limitation under this
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alternative construction because Mansoorian’s individual analog-to-digital
converter 120 is integrated on the same chip with image sensing array 110.
Patent Owners do not specifically dispute that the combination of
Weldy, Denyer, Nagumo, and Mansoorian teaches or suggests claim 4. See
generally PO Resp. Based on the complete record and for the reasons
explained by Petitioners, we are persuaded that the combination of Weldy,
Denyer, Nagumo, and Mansoorian teaches or suggests claim 4. We are also
persuaded that an ordinarily skilled artisan would have combined Weldy,
Denyer, Nagumo, and Mansoorian for the reasons set forth by Petitioners.
Accordingly, we determine that Petitioners have demonstrated by a
preponderance of the evidence that claim 4 is unpatentable under 35 U.S.C.
§ 103(a) as obvious over Weldy, Denyer, Nagumo, and Mansoorian.
H. Ground 6: Alleged Obviousness of Claim 5 over Weldy, Denyer,
Nagumo, and Ikeda
Claim 5 depends from claim 1. Petitioners assert the combination of
Weldy, Denyer, Nagumo, and Ikeda renders obvious claim 5.
1. Ikeda
Ikeda is a United States Patent directed to an image data processing
apparatus that processes combined image signals to extend dynamic range.
Ex. 1010, Abstract. Ikeda discloses obtaining a plurality of image signals
using different image sensors with different color filters. Id. at 16:33‒45;
Ex. 1003 ¶¶ 247‒249. Ikeda discloses replacing a dark- or white-corrupted
portion of an image with a corresponding non-corrupted portion of a second
image to improve the dynamic range of an image. Ex. 1010,
13:63‒65, 15:5‒9, 16:40‒45, 17:67‒18:4; Ex. 1003 ¶¶ 257‒260.
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On this record, we agree with Petitioners (Pet. 16) that Ikeda qualifies
as prior art under 35 U.S.C. § 102(e) because Ikeda issued on September 1,
1998, from an application filed on November October 26, 1994, which is
before the filing date of the ’289 patent, which is January 15, 1999. See
Ex. 1001, code (22); Ex. 1010, code (45).
2. Claim 5
Claim 5 recites “[t]he improved digital camera as recited in claim 1,
wherein said digital image processor increases the dynamic range of said
first digital image by incorporating a portion of said second digital image
into said first digital image.” Ex. 1001, 11:7–10. Petitioners assert the
combination of Weldy, Denyer, Nagumo, and Ikeda teaches or suggests this
limitation. Pet. 85‒91.
In particular, Petitioners assert Weldy teaches a digital image
processor producing a resultant digital image from a first digital image
where the resultant digital image is enhanced with a second digital image.
Id. at 89 (citing Ex. 1007, 3:18‒19, 3:26‒4:45, 6:2‒12; Ex. 1003 ¶ 256).
Petitioners assert Ikeda teaches replacing a dark- or white-corrupted portion
of an image with a corresponding non-corrupted portion of a second image
to improve the dynamic range of an image. Id. at 89 (citing Ex. 1010,
13:63‒65, 15:5‒9, 16:40‒45, 17:67‒18:4; Ex. 1003 ¶¶ 257‒260).
Petitioners assert an ordinarily skilled artisan would have been
motivated to combine Ikeda’s teachings with the Weldy, Denyer, and
Nagumo system to achieve the benefit of improved performance
characteristics, specifically enlarged dynamic range. Id. at 90 (citing
Ex. 1003 ¶ 261). Petitioners assert the resulting combination renders obvious
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this limitation. Id. at 85‒91. Dr. Bovik offers testimony in support of
Petitioners’ assertions with regard to claim 5. Ex. 1003 ¶¶ 245‒262.
Patent Owners do not specifically dispute that the combination of
Weldy, Denyer, Nagumo, and Ikeda teaches or suggests claim 4. See
generally PO Resp. Based on the complete record and for the reasons
explained by Petitioners, we are persuaded that (1) Ikeda teaches replacing a
corrupted portion of a first image with a non-corrupted portion of a second
image to improve the dynamic range of the first image and (2) Petitioners
have provided persuasive reasoning, supported by rational underpinning,
regarding why a person of ordinary skill in the art would have combined
Weldy, Denyer, Nagumo, and Ikeda. Accordingly, we determine that
Petitioners have demonstrated by a preponderance of the evidence that claim
5 is unpatentable under 35 U.S.C. § 103(a) as obvious over Weldy, Denyer,
Nagumo, and Ikeda.
I. Petitioners’ Motion to Exclude
Petitioners filed a Motion to Exclude (Paper 22) Exhibits 2005‒2010
and testimony that relies on those exhibits, including portions of the
Declaration of Inventor Yanbin Yu (Ex. 2002 ¶¶ 4‒8). Patent Owners filed
an Opposition to Petitioners’ Motion to Exclude (Paper 25).
Petitioners argue (1) Patent Owners fail to sufficiently authenticate
Exhibits 2005‒2010 under FRE 901 and to establish that these exhibits are
reliable; (2) Exhibits 2005, 2006, and 2008‒2010 are irrelevant; and (3)
Exhibits 2005‒2010 violate the doctrine of completeness (FRE 106) and
“best evidence” rule (FRE 1001‒1003). Paper 22, 2.
First, Petitioners argue Patent Owners fail to sufficiently authenticate
Exhibits 2005‒2010 and to establish that these exhibits are reliable. In
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particular, Petitioners argue Exhibits 2005‒2010 have not been sufficiently
authenticated because Patent Owners rely on uncorroborated testimony of
inventor Yanbin Yu to authenticate these documents. See Paper 22, 3‒4
(Ex. 2005), 5‒7 (Ex. 2006), 9‒10 (Ex. 2007), 12‒13 (Exs. 2008‒2010).
Petitioners argue Mr. Yu’s testimony authenticating these documents is
unreliable, identifying purported inconsistencies in Mr. Yu’s testimony for
various exhibits. See id.
Second, Petitioners argue Exhibits 2005, 2006, and 2008‒2010 are
irrelevant because Patent Owners do not cite any of these exhibits in Patent
Owners’ Response or Sur-reply and these documents are only cited in Mr.
Yu’s Declaration. See Paper 22, 3 (Ex. 2005), 5 (Ex. 2006), 12 (Exs. 2008‒
2010).
Third, Petitioners argue Exhibits 2005‒2010 are incomplete and
violate the best evidence rule because Patent Owners fail to provide all
relevant evidence and context, including prior and successive pages and any
witnessing or indicia of dates. See Paper 22, 4‒5 (Ex. 2005), 7 (Ex. 2006),
11 (Ex. 2007), 13 (Exs. 2008‒2010).
Patent Owners oppose Petitioners’ Motion to Exclude, arguing,
among other things, that Petitioners’ arguments each go to the weight of the
evidence, not its admissibility. See, e.g., Paper 25, 3‒4. We agree with
Patent Owners. Petitioners argue Patent Owners have failed to sufficiently
authenticate Exhibits 2005‒2010, but courts “do not require conclusive
proof of authenticity before allowing the admission of disputed evidence.”
United States v. Isiwele, 635 F.3d 196, 200 (5th Cir. 2011) (quoting United
States v. Watkins, 591 F.3d 780, 787 (5th Cir. 2009)). The flaws identified
by Petitioners go to the weight of the exhibits, not their admissibility, and
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are considered in the context of Patent Owners’ reliance, if any, on these
exhibits. Accordingly, we deny Petitioner’s Motion to Exclude.
III. CONCLUSION
For the foregoing reasons, we conclude that Petitioners have
demonstrated, by a preponderance of the evidence, that claims 1 and 3‒5 of
the ’289 patent are unpatentable. For the reasons discussed above,
Petitioners have not demonstrated, by a preponderance of the evidence, that
claim 2 of the ’289 patent is unpatentable. The chart below summarizes our
conclusions.
Claims 35 U.S.C. §
References/
Basis
Claim(s)
Shown
Unpatentable
Claim(s) Not
Shown
Unpatentable
1, 2 102(b) Yamazaki 1, 2
1, 2 103(a) Yamazaki 1, 2
4 103(a) Yamazaki, Mansoorian 4
1, 3 103(a) Weldy, Denyer, Nagumo 1, 3
4 103(a)
Weldy, Denyer,
Nagumo,
Mansoorian
4
5 103(a) Weldy, Denyer, Nagumo, Ikeda 5
Overall
Outcome 1, 3‒5 2

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IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1 and 3‒5 of the ’289 patent are determined to
be unpatentable;
FURTHER ORDERED that claim 2 of the ’289 patent is not
determined to be unpatentable;
FURTHER ORDERED that Patent Owners’ Motion to Exclude is
denied; and
FURTHER ORDERED that, because this is a Final Written Decision,
a party to the proceeding seeking judicial review of the Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

For PETITIONER:

David W. O’Brien
Andrew S. Ehmke
Hong Shi
HAYNES AND BOONE, LLP
david.obrien.ipr@haynesboone.com
andy.ehmke.ipr@haynesboone.com
hong.shi.ipr@haynesboone.com

For PATENT OWNERS:

Robert G. Litts
DAN JOHNSON LAW GROUP LLP
robert@danjohnsonlawgroup.com