Cellect, LLC

Patent Trials and Appeals Board

Jul 15, 2021

IPR2020-00477 (P.T.A.B. Jul. 15, 2021)

Trials@uspto.gov Paper 33
571-272-7822 Date: July 15, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

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

IPR2020-00477
Patent 9,667,896 B2

Before JAMESON LEE, TERRENCE W. MCMILLIN, and GARTH D.
BAER, Administrative Patent Judges.

McMILLIN, Administrative Patent Judge.

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

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I. INTRODUCTION
A. Background and Summary
Samsung Electronics Co., Ltd. and Samsung Electronics America,
Inc. (“Petitioner”) filed a Petition to institute an inter partes review of claims
1, 5, and 21 (the “challenged claims”) of U.S. Patent No. 9,667,896 B2
(Ex. 1001, the “’896 patent”) pursuant to 35 U.S.C. § 311 et seq. Paper 2
(“Petition” or “Pet.”). Cellect, LLC (“Patent Owner”) filed a Response.
Paper 17 (“Response” or “Resp.”). Petitioner thereafter filed a Reply (Paper
20 (“Reply”)) and Patent Owner filed a Sur-reply (Paper 24 (“Sur-reply”)).
Oral argument was heard on April 30, 2021, and a transcript was entered
into the record (Paper 32 (“Tr.”).
We have jurisdiction to conduct this inter partes review under
35 U.S.C. § 6. This Final Written Decision is issued pursuant to 35 U.S.C.
§ 318(a) and 37 C.F.R. § 42.73. For the reasons discussed herein, we
determine that Petitioner has shown, by a preponderance of the evidence,
that claims 1, 5, and 21 of the ’896 patent are unpatentable.
B. Related Matters
The parties indicate that the ’896 patent has been asserted in the
following district court litigation: Cellect, LLC v. Samsung Electronics Co.,
Ltd. et al., 1-19-cv-00438 (D. Colo.). Pet. 7; Paper 4, 1.
Petitioner further identifies the following related patents and
respective proceedings:1

1 Institution of inter partes review was denied in IPR2020-00472, IPR2020-
00473, IPR2020-00474, IPR2020-00559, IPR2020-00560, IPR2020-00561,
IPR2020-00562, IPR2020-00563, and IPR2020-00564. Inter partes review
was instituted in IPR2020-00476 and a final written decision has been
entered.
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Patent 6,043,839; IPR2020-00472;
Patent 6,275,255 B1; IPR2020-00473;
Patent 6,982,740 B2; IPR2020-00474, ex parte reexamination;
Patent 9,186,052 B1; IPR2020-00475, IPR2020-00512;
Patent 9,198,565 B2; IPR2020-00476;
Patent 6,982,742 B2; IPR2020-00559, IPR2020-00560, IPR2020-
00561, ex parte reexamination;
Patent 6,424,369; IPR2020-00562, IPR2020-00563, IPR2020-00564,
ex parte reexamination;
Patent 6,452,626; IPR2020-00565, IPR2020-0566, IPR2020-00567,
ex parte reexamination;
Patent 6,862,036 B2; IPR2020-00568, IPR2020-00569; and
Patent 7,002,621 B2; IPR2020-00571, IPR2020-00572, ex parte
reexamination. Pet. 7–8.
C. The ’896 Patent
The ’896 patent is titled, “Reduced Area Imaging Device Incorporated
Within Endoscopic Devices.” Ex. 1001, code (54). By way of background,
the ’896 patent explains that “endoscopic surgery has become the accepted
standard for conducting many types of surgical procedures.” Id. at 1:42–44.
Solid state imaging technology is increasingly replacing the rod lens
endoscope, due to “its cost of manufacture, failure rate, and requirement to
be housed within a rigid and straight housing.” Id. at 1:54–57. Solid state
imaging technology “enables the image sensor to be placed at the distal tip
of the investigating device.” Id. at 1:57–59. Complementary metal oxide
semiconductor (CMOS) imaging devices are solid state imaging devices that
“offer improved functionality and simplified system interfacing” and “can be
manufactured at a fraction of the cost of other solid state imaging
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technologies.” Id. at 1:64–67. However, despite improved CMOS imaging
devices that enable a “camera on a chip” concept (see id. at 2:1–3:21), “a
need still exists for a reduced area imaging device which can be used in even
the smallest type of endoscopic instruments.” Id. 3:29–31.
The ’896 patent provides a wireless endoscope that “rearrange[s] the
circuitry in a stacked relationship so that there is a minimum profile
presented when used within a surgical instrument or other investigative
device.” Id. at 3:35–40. In an embodiment, an imaging device may be
entirely self-contained in the distal end of an endoscope. Id. at 9:62–64.
Figure 2a, showing a cross-sectional view of an endoscope with an imaging
device incorporated into the distal tip of the endoscope, and Figure 2b,
showing a partially exploded perspective view of the distal end of the
endoscope shown in Figure 2a, are reproduced below.

Figure 2a is a cross-sectional view of an endoscope; Figure 2b
is a partially exploded perspective view of the distal end of the
endoscope of Figure 2a. Id. at 6:61–67.
As shown in Figure 2b, an imaging device in the distal end 16 of an
endoscope may include image sensor 40 electrically coupled, via pin
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connectors 62, to video processing board 50 and optional supplementary
board 60. See id. at 9:62–10:12. Image sensor 40 may be bonded to lens
system 42. Id. at 10:26–27.
Figure 4a, reproduced below, shows a detailed schematic diagram of
image sensor 40.

Figure 4a shows a detailed schematic diagram of image sensor 40. Id. at
12:40–41.

As shown in Figure 4a, image sensor 40 contains array of pixels 90 and
timing and control circuits 92. Id. at 12:40–42. Array of pixels 90 is an
active pixel group and “[e]ach pixel circuit has its own amplifier which is
controlled by the timing and control circuitry.” Id. 12:45–64.
D. Challenged Claims
Petitioner challenges claims 1, 5, and 21 of the ’896 patent. Pet. 1.
Of the challenged claims, claims 1 and 21 are independent. Ex. 1001,
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21:51–22:26, 25:18–26:28. Claim 5 depends from claim 1. Id. at 22:36–37.
Claim 1 is illustrative of the challenged claims, and recites:
1. An imaging device comprising:

a housing;

an image sensor mounted in said housing, said image
sensor including a first circuit board having a length and a
width thereto, wherein said length and width of said first circuit
board define a first plane, said first circuit board including an
array of CMOS pixels thereon, wherein a plurality of CMOS
pixels within said array of CMOS pixels each include an
amplifier, said first circuit board further including timing and
control circuitry thereon, said timing and control circuitry being
coupled to said array of CMOS pixels, said image sensor
producing a pre-video signal, wherein the image sensor is
generally square shape along the first plane;

a second circuit board mounted in said housing, said
second circuit board being electrically coupled to said first
circuit board, said second circuit board having a length and a
width thereto, wherein said length and width of said second
circuit board define a second plane, said second circuit board
including circuitry thereon to convert said pre-video signal to a
post-video signal, said second circuit board being offset from
said first circuit board, said second plane of said second circuit
board being substantially parallel to said first plane of said first
circuit board;

a lens mounted in said housing, said lens being integral
with said imaging device, said lens focusing images on said
array of CMOS pixels of said image sensor;

a video screen, said video screen being electrically
coupled to said second circuit board, said video screen
receiving said post-video signal and displaying images from
said post-video signal; and

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a power supply mounted in said housing, said power
supply being electrically coupled to said first circuit board to
provide power to said array of CMOS pixels and said timing
and control circuitry, said power supply also being electrically
coupled to said second circuit board to provide power thereto;

wherein, a largest dimension of said second circuit board
along said second plane is greater than a largest dimension of
said image sensor along said first plane.

Id. at 21:51–22:26.
E. Prior Art and Asserted Ground
Petitioner challenges claims 1, 5, and 21 of the ‘896 patent based on
the following ground:
Claims Challenged 35 U.S.C. § References
1, 5, 21 103 Wakabayashi,2 Ackland3
Pet. 11. Petitioner relies on the Declarations of Dr. Dean P. Neikirk
(Ex. 1004 (“Neikirk Decl.”); Ex. 1086 (“Neikirk Reply Decl.”)), in support
of the contentions in the Petition. Patent Owner relies on the Declaration of
Michael Lebby, Ph.D. (Ex. 2088 (“Lebby Decl.”) in support of its
contentions.
II. ANALYSIS
A. Legal Standards
A patent claim is unpatentable if the differences between the claimed
subject matter and the prior art are such that the subject matter, as a whole,
would have been obvious at the time the invention was made to a person

2 U.S. Patent 5,903,706, filed Aug. 22, 1995, issued May 11, 1999 (Ex.
1027).
3 U.S. Patent 5,835,141, filed July 3, 1996, issued Nov. 10, 1998 (Ex. 1006).
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having ordinary skill in the art to which said subject matter pertains. KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including: (1) the scope and content of the prior art; (2) any differences
between the claimed subject matter and the prior art; (3) the level of ordinary
skill in the art; and (4) where in evidence, objective evidence of
nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
Consideration of the Graham factors “helps inform the ultimate obviousness
determination.” Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1048
(Fed. Cir. 2016) (en banc).
“In an [inter partes review], the petitioner has the burden from the
onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
petitions to identify “with particularity . . . the evidence that supports the
grounds for the challenge to each claim”)). This burden of persuasion never
shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in
inter partes review).
B. Level of Ordinary Skill in the Art
Petitioner contends that a person of ordinary skill would have
possessed the following:
a minimum of a Bachelor’s degree in Electrical Engineering,
Physics, or a related field, and approximately two years of
professional experience in the field of imaging devices.
Additional graduate education could substitute for
professional experience, or significant experience in the field
could substitute for formal education.
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Pet. 16 (citing Ex. 1004 (Neikirk Decl.), ¶¶ 34–37) (emphasis added).
Patent Owner contends that a person of ordinary skill would have possessed
the following:
Bachelor’s degree in Electrical Engineering, Physics, or a
related field, and approximately three years of professional
experience in the field of visible optical imaging devices.

Resp. 18–19 (citing Ex. 2088 (Lebby Decl.), ¶ 40) (emphasis added). The
contentions of the parties are similar. Petitioner argues, “[a]ny differences
between the experts’ definitions of a POSITA [person of skill in the art] do
not impact the obviousness of the Challenged Claims.” Reply 1 n.1. Patent
Owner does not argue to the contrary.
We adopt Petitioner’s articulation of the level of ordinary skill in the
art because it is consistent with the disclosure of the ’896 patent, but delete
the qualifier “a minimum of” for the level of education, to keep that level
from being vague and extending to a range that includes the skill level of an
expert. Thus, we regard the level of ordinary skill as being at the level of a
person with “a Bachelor’s degree in Electrical Engineering, Physics, or a
related field, and approximately two years of professional experience in the
field of imaging devices.” Further, we find that the prior art of record
reflects the level of skill in the art at the time of the invention. See Okajima
v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). However, the findings
in this decision would not be different under the Patent Owner’s articulation
of the level of ordinary skill in the art.
C. Claim Construction
Claim construction in this proceeding is governed by 37 C.F.R.
§ 42.100 (b), which provides:
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In an inter partes review proceeding, a claim of a patent,
or a claim proposed in a motion to amend under §42.121, shall
be construed using the same claim construction standard that
would be used to construe the claim in a civil action under
35 U.S.C. 282(b), including construing the claim in accordance
with the ordinary and customary meaning of such claim as
understood by one of ordinary skill in the art and the prosecution
history pertaining to the patent.

Under the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–
19 (Fed. Cir. 2005) (en banc), claim terms are given their ordinary and
customary meaning, as would have been understood by a person of ordinary
skill in the art at the time of the invention, in light of the language of the
claims, the specification, and the prosecution history of record. See Thorner
v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012).
There is a “heavy presumption,” however, that a claim term carries its
ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp.,
288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted).
We are also guided by the principle that we only construe claim terms
if, and to the extent that, it is necessary for the purpose of the proceeding.
See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed.
Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary
to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. &
Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
Neither party has proposed an express construction for any claim term
and both parties interpret the claim terms according to their plain and
ordinary meaning consistent with the specification. Pet. 17; Resp. 18. We
determine we need not construe any claims terms and apply the plain and
ordinary meaning consistent with the specification to the claim terms.
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D. Asserted Obviousness of Claims 1, 5, and 21
Petitioner challenges claims 1, 5, and 21 as obvious over
Wakabayashi and Ackland. Pet. 19–73. Wakabayashi and Ackland are
summarized below.
1. Wakabayashi (Ex. 1027)
Wakabayashi was filed on August 22, 1995, and issued on May 11,
1999. Ex. 1027, codes (22), (45). The earliest priority date claimed for the
’896 patent is based on the filing date of parent U.S. Patent Application No.
08/944,322, which is October 6, 1997. Ex. 1001, code (63). Therefore,
Wakabayashi is prior art to the ’896 patent under at least 35 U.S.C. § 102(e).
Patent Owner does not contest the prior art status of Wakabayashi. See
generally Resp.
Wakabayashi is titled, “Imager Apparatus with Rotatable Camera
Head.” Ex. 1027, code (54). Wakabayashi is directed to “a portable imager
apparatus which includes a video camera as an imager unit, a direct-view
type flat display as an electronic view finder or display, and a semiconductor
memory or video tape recorder (VTR) as a storage or recording unit.” Id. at
1:5–9.
Figure 3, showing a cross-sectional view of an imager apparatus, is
reproduced below.
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Figure 3 is a cross-sectional view of an imager apparatus. Id. at 5:48–49.

As shown in Figure 3, camera case 16, formed with imaging hole 18,
contains video camera 22, which includes shutter 23, lens case 24, lens 25,
quartz filter 26, imager device 27, mounting plate 28, and camera circuit
board 29. Id. at 5:49–58.
2. Ackland (Ex. 1006)
Ackland was filed on July 3, 1996, and issued on November 10, 1998.
Ex. 1006, codes (22), (45). The earliest priority date claimed for the ’896
patent is based on the filing date of parent U.S. Patent Application No.
08/944,322, which is October 6, 1997. Ex. 1001, code (63). Therefore,
Ackland is prior art to the ’896 patent under at least 35 U.S.C. § 102(e).
Patent Owner does not contest the prior art status of Ackland. See generally
Resp.
Ackland is titled “Single-Polysilicon CMOS Active Pixel Image
Sensor.” Ex. 1006, code (54). Ackland is directed to a “[a] CMOS active
pixel characterized by a single layer of polysilicon for forming the photo
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gate and the transfer gate . . . , a method for operating the pixel, and pixel
arrays based on such a pixel.” Id. at 2:19–22. Ackland describes an array of
pixels arranged in first and second groups representing a row and column,
respectively. Id. at 2:46–50. A first common conductor conducts control
signals for the first group, while a second common conductor selectively
transmits, to output nodes, electronic data signals that correspond to portions
of an image to be converted. Id. at 2:50–55.
Figure 6, showing an active pixel image sensor, is reproduced below.

Figure 6 shows an active pixel image sensor. Id. at 3:6–7.

The Figure 6 embodiment, which may be used as a solid-state camera,
includes “array 5 of active pixels, a row decoder 10 and a plurality of output
amplifiers 18.” Id. at 7:62–65. A common conductor 55 serves as a control
line for each row 25 of pixels. Id. at 8:10–11. A common conductor 65
serves as an output line to a particular amplifier 18 for each column 30 of
pixels. Id. at 8:18–20. “A timing controller 20 provides timing signals to
the row decoder 10.” Id. at 8:24–25. In response to the timing signals, “the
decoder 10 sequentially activates each row 25 of active pixels 35 via the
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control lines 55 to detect light intensity and to generate corresponding output
voltage signals during each frame interval.” Id. at 8:25–29. “The voltage
signals generated by the activated row 35 are simultaneously provided to the
corresponding amplifiers 18 via the column output line 65.” Id. at 8:45–48.
3. Objective Evidence of Nonobviousness
Patent Owner argues that there is strong objective evidence that the
challenged claims are non-obvious. Resp. 52–60. Petitioner argues that
Patent Owner’s “arguments fail to provide the necessary nexus between the
Challenged Claims and [Patent Owner]’s secondary considerations
arguments, let alone evidence of the secondary indicia themselves.”
Reply 24. As explained below, Patent Owner has not identified any
commercial product that is within the scope of the challenged claims. See
Tr. 64–67. Patent Owner also has not established that the evidence it
submits relates to the inventions claimed in the ’896 patent. See id. at 64–
78. Without such proof, we consider this evidence, but adjudge it is entitled
to little or no weight in determining whether the challenged claims are non-
obvious.
For objective indicia of nonobviousness to be accorded substantial
weight, its proponent must establish a nexus between the evidence and the
merits of the claimed invention. ClassCo, Inc., v. Apple, Inc., 838 F.3d
1214, 1220 (Fed. Cir. 2016). “[T]here is no nexus unless the evidence
presented is ‘reasonably commensurate with the scope of the claims.’” Id.
(quoting Rambus Inc. v. Rea, 731 F.3d 1248, 1257 (Fed. Cir. 2013)). A
patentee is entitled to a presumption of nexus “when the patentee shows that
the asserted objective evidence is tied to a specific product and that product
‘embodies the claimed features, and is coextensive with them.’” Fox
Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting
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Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)
(quoting Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229
F.3d 1120, 1130 (Fed. Cir. 2000))). “[T]he purpose of the coextensiveness
requirement is to ensure that nexus is only presumed when the product tied
to the evidence of secondary considerations ‘is the invention disclosed and
claimed.’” Id. at 1374 (quoting Demaco Corp. v. F. Von Langsdorff
Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988)). “[T]he degree of
correspondence between a product and the patent claim falls along a
spectrum. At one end of the spectrum lies perfect or near perfect
correspondence. At the other end lies no or very little correspondence.” Id.
“A patent claim is not coextensive with a product that includes a ‘critical’
unclaimed feature that is claimed by a different patent and that materially
impacts the product’s functionality.” Id. at 1375.
Patent Owner does not provide an analysis demonstrating that its
evidence or products are coextensive (or nearly coextensive) with the
challenged claims. See Resp. 52–60; Sur-reply 23–25; see also Tr. 64–67.
We, therefore, find that a presumption of nexus is inappropriate.
However, “[a] finding that a presumption of nexus is inappropriate
does not end the inquiry into secondary considerations.” Fox Factory,
944 F.3d at 1375. “To the contrary, the patent owner is still afforded an
opportunity to prove nexus by showing that the evidence of secondary
considerations is the ‘direct result of the unique characteristics of the
claimed invention.’” Id. at 1373–74 (quoting In re Huang, 100 F.3d 135,
140 (Fed. Cir. 1996)). “Where the offered secondary consideration actually
results from something other than what is both claimed and novel in the
claim, there is no nexus to the merits of the claimed invention,” meaning that
“there must be a nexus to some aspect of the claim not already in the prior
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art.” In re Kao, 639 F.3d 1057, 1068–69 (Fed. Cir. 2011) (emphasis in
original). On the other hand, there is no requirement that “objective
evidence must be tied exclusively to claim elements that are not disclosed in
a particular prior art reference in order for that evidence to carry substantial
weight.” WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1331 (Fed. Cir. 2016).
A patent owner may show, for example, “that it is the claimed combination
as a whole that serves as a nexus for the objective evidence; proof of nexus
is not limited to only when objective evidence is tied to the supposedly
‘new’ feature(s).” Id. Ultimately, the fact finder must weigh the secondary-
considerations evidence presented in the context of whether the claimed
invention as a whole would have been obvious to a skilled artisan. Id.
at 1331–32.
Under the heading “Commercial Success and Licensing,” Patent
Owner argues, “the fact that companies have taken a license to the ’896
Patent is powerful evidence of non-obviousness” and “Patent Owner and its
parent, Micro-Imaging Solutions has licensed its patented reduced are [sic]
imaging device to several companies including: Gyrus Group PLC, Cook
Inc., Cook Medical Technologies LLC, Coopersurgical, Inc., Ethicon Endo-
Surgery, Inc., Fujikura Ltd., Microtek Medical, Inc., Endosee Corp., Karl
Storz Imaging, Inc., and Voyage Medical Inc.” Resp. 54. Petitioner argues
that Patent Owner “fails to show that the ’896 patent is licensed or
practiced.” Reply 25. Patent Owner does not indicate which of the above-
identified entities, or how many, have taken a license to the ’896 patent. See
Resp. 54. The only support that Patent Owner cites for this argument of
“Commercial Success and Licensing” or that the listed companies have
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licensed the ’896 patent is Exhibit 2074.4 Id. Exhibit 2074 is unexplained
by Patent Owner with regard to its nature, source, origin, and authorship,
and does not identify or refer to any specific licensed patent.5 Exhibit 2074
does not refer to the ’896 patent and provides no proof that the ’896 patent
has been licensed to any of the listed companies.6 Ex. 2074, 1. The only
listed company mentioned in Exhibit 2074 is Fukijara Ltd. and the only
reference to it states, “2013: Exclusive license with Fukijara Ltd. (Japan) for
re-usable and disposable medical fields.” Id. Patent Owner provides no
argument or evidence that would show that this license, which occurred in
2013 before the application for the ’896 patent was filed in 2015 or issued in

4 It is unclear what Exhibit 2074 is or what basis exists to rely upon it or
admit it into evidence. The Federal Rules of Evidence apply to this
proceeding. 37 C.F.R. § 42.62 (a). Patent Owner provides no explanation of
Exhibit 2074 or support for relying upon it or admitting it into the record.
See Resp. 54; see also Tr. 67–69. At oral argument, Patent Owner’s counsel
provided his “understanding” that Exhibit 2074 is a printout from the Patent
Owner’s website. Tr. 67:6–13. Patent Owner has not established any basis
for allowing Exhibit 2074 into the record or provided any explanation as to
why we should rely on it. Nonetheless, we consider Exhibit 2074, but
accord it little or no evidentiary value.
5 Patent Owner has not provided any specific evidence of any license to the
’896 patent. No license agreement has been entered into evidence, nor is
there any evidence of the terms of any license to the ’896 patent. For
example, there is no evidence as to the amount of royalties, if any. If the
licenses were royalty free or the royalty was quite low, the license may not
indicate that the subject matter of the license was significant (and could
indicate the opposite). In addition, the geographic or temporal scope of the
licenses are not in evidence. Without any information of, at least, the key
terms of the licenses, we find that Exhibit 2074 is entitled to little or no
weight.
6 Patent Owner argues ten companies are licensed. Pet. 54. Exhibit 2074
refers to nine licenses but describes the licensees in such general and vague
terms that no specific companies can be identified (except for Fukijara Ltd.).
Patent Owner provides no explanation. See Pet. 54.
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2017 (Ex. 1001, codes (22), (45)), relates to the ’896 patent or the invention
claimed or described in the ’896 patent. See Pet. 54. And, if the license
under the ’896 patent to Fukijara Ltd. was exclusive, this would contradict
Patent Owner’s statement that the other listed companies are also licensed to
the ’896 patent.7 Further, there is no evidence that Patent Owner, a licensee,
or anyone else made a product that was within the scope of the claims of the
’896 patent and was a commercial success. Based on this record, we find
there is insufficient evidence to show that the invention of the challenged
claims of the ’896 patent has been a commercial success or is licensed.
Under the heading “Recognition of a Problem and Long Felt but
Unresolved Need,” Patent Owner argues that “[a]lthough there existed
endoscopic devices, there was a pressing need for smaller, more cost
effective endoscope [sic]” and
Industry publications such as Orthopaedic Product News
in July 2007 recognized the contribution to the art by Patent
Owner’s reduced area imaging device as incorporated in an
endoscope that addressed a long felt need for a smaller imaging
device in endoscopes. In particular, Orthopaedic Product News
recognized Patent Owner’s incorporating a reduced area CMOS
imaging device, as recited in the Challenged Claims.

Resp. 54. Patent Owner bases this argument on the need for a “smaller,
more cost effective and reliable endoscope,” a “reduced area imaging device
as incorporated in an endoscope,” and “a long felt need for a smaller
imaging device in endoscopes.” However, the challenged claims are
directed broadly to “imaging device[s]” and are not directed to endoscopes

7 Exhibit 2074 describes seven licenses as exclusive or co-exclusive without
any explanation as to how multiple licenses can be properly described in this
way. Patent Owner provides no explanation. See Resp. 54.
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and there are no claim limitations directly relating to size or cost of the
claimed devices. Even assuming that there was a long felt but unresolved
need for a smaller and more cost-effective endoscope, Patent Owner has not
shown a nexus to the claimed invention and none can be presumed.
Assuming that the article is referring to a product of Patent Owner, Patent
Owner has not shown that the product is “coextensive” with any challenged
claim from the perspective of satisfaction of a long felt but unresolved need.
See Fox Factory, 944 F.3d at 1373.
The only evidence submitted in support of this argument is Exhibit
2089. Exhibit 2089 is an article from an industry publication that refers to
CMOS sensors built into endoscopes. See Ex. 2089, 2 (“A Denver-based
company has developed and patented high resolution, sturdy and
inexpensive CMOS sensors (Complimentary Metal Oxide Semiconductors)
that are actually built into the distal tip of arthroscopes, as well as other
commonly used endoscopes.”). There is no argument or evidence
establishing that these CMOS sensors are within the scope of the challenged
claims or relate to the invention of the ’896 patent. Petitioner argues that
Patent Owner’s “allegations of long-felt need ([Resp.] 54-55) are not tied to
the Challenged Claims as [Patent Owner] fails to demonstrate the alleged
need was solved by any novel, claimed aspect of the alleged invention.”
Reply 25–26.
For numerous reasons, Patent Owner’s assertion that the claimed
invention of the ’869 patent satisfied a long felt but unresolved need is not
supported by the evidence of record. Establishing a long felt need requires
objective evidence that the invention has provided a long awaited, widely
accepted, and promptly adopted solution to a problem extant in the art, or
that others had tried but failed to solve that problem. In re Mixon, 470 F.2d
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1374, 1377 (CCPA 1973); In re Allen, 324 F.2d 993, 997 (CCPA 1963).
First, Patent Owner does not explain why the referenced Denver-based
company in the news article is the Patent Owner. Second, Patent Owner
does not explain whether the referenced tips of arthroscopes and endoscopes
with a built-in CMOS sensor make use of the claimed invention of the ’869
patent, and if so, which claims. Third, Patent Owner does not indicate
whether any significant features are included in the referenced tips of
arthroscopes and endoscopes, which are not recited in any claim of the ’869
patent. Fourth, Patent Owner does not explain how long a pressing need
existed for a smaller, more cost effective and reliable endoscope. Fifth,
Patent Owner has not identified any prompt adoption of the claimed
invention by anyone. Sixth, Patent Owner has not identified any specific
prior failed attempts to resolve the alleged need. Seventh, a single article is
not demonstration of widespread recognition by those with ordinary skill in
the art that there was a problem without a solution in the industry.
Based on this record, we find no evidence that the invention of the
challenged claims of the ’896 patent was made in response to a recognized
problem or solved a long felt but unresolved need.
Under the heading “Industry Skepticism,” Patent Owner argues that,
“[a]s noted in the prosecution history, at the time of the invention the
industry was skeptical regarding the use of CMOS imagers in the medical
imaging application on it [sic] was recognized at the time that CMOS imager
quality, was compared to CCD imagers that were widely used in devices at
the time, was meaningfully lower that available with CCD imager devices.”
Resp. 56. The only evidence cited in support of this argument is a
declaration from one of the listed inventors of the ’896 patent, Jeffrey L.
Adair (see Ex. 1001, code (72)), from March, 1999. See Ex. 1003, 83–89.
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This declaration was not filed during prosecution of the application for the
’896 patent (US Patent Appl. No. 14/941,040, filed on Nov. 13, 2015 (see
Ex. 1001, codes (21) (22)), but in support of a distantly related application
(US Patent Appl. No. 09/175,685, filed on Oct. 20, 1998 (see id. at code
(63); Ex. 1003, 1). This declaration was filed in support of claims that were
much different in scope than the claims of the ’896 patent. See Ex. 1003, 84
(“I have also read and am familiar with the new claims appearing in the
Preliminary Amendment date March 8, 1999) [Ex. 1003, 72–78] and the
Supplemental Preliminary Amendment dated March 24, 1999 [id. at 79–
81].” Petitioner argues that Patent Owner’s “allegations of industry
skepticism lack any nexus to the Challenged Claims as the industry
skepticism [Patent Owner] cites has to do with ‘CMOS in medical
applications’—an unclaimed application—and image quality of CMOS
sensors, which again are not novel.” Reply 26. Patent Owner provides no
evidence of industry skepticism regarding the invention claimed in the ’896
patent. See Resp. 56–57; see also Tr. 96:6–17 (Patent Owner’s counsel
acknowledging the challenged claims are not limited to medical imaging
applications and “that’s not what the claims say in this proceeding”). Based
on this record, we find no evidence that there was industry skepticism
related to the invention of the challenged claims of the ’896 patent.
Under the heading, “Unexpected Results,” Patent Owner argues,
“[d]uring prosecution of a related reduced area imaging device application,
the inventor Jeffrey Adair submitted a declaration noting the unexpected
results achieved by this claimed reduced area imaging device.” Resp. 57.
The Adair declaration referred to is the same declaration discussed in the
preceding paragraph, Exhibit 1003, 83–89. See Resp. 58. Again, this
declaration was filed in support of claims that were much different in scope
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than the claims of the ’896 patent. In the Response, Patent Owner quotes
this paragraph from the declaration:
During our testing of the devices claimed in this invention,
we discovered an unknown, but very important advantage that
our device has over CCD imagers. This advantage is the
capability of our device to reject radio frequency interference
(RFI) which is emitted by electrosurgical generators used during
surgery. . . . CCD devices cannot be used near an electrical
surgical generator without requiring significant shielding for the
CCD device. . . . Even when such shielding is incorporated, RFI
levels are only brought to a reasonable level which may still
result in an obstructed view of the surgical area. After testing
several types of CMOS configurations, we concluded that
remoting processing circuitry from the CMOS imager and
timing and control circuits eliminated the need for shielding.
In other words, we found that this configuration was not
susceptible to RFI.

Resp. 57–58 (quoting Ex. 1003, 85–86). This passage makes clear that the
unexpected result (“the capability of our device to reject radio frequency
interference (RFI)”) was attributed by the inventor to “remoting processing
circuitry from the CMOS imager and timing and control circuits.” This
“remoting” feature was explicitly recited in all the claims that were pending
in that application. See Ex. 1003, 86 (“This feature of remoting the
processing circuitry is recited in all of the independent claims” and
“Independent claims 1, 6, and 24 claim this particular feature of the
invention wherein the processing circuitry is remoted from a co-planar pixel
array and timing and control circuitry.”).8

8 For example, pending claim 24 recited, “An endoscope comprising: a
tubular portion . . . a CMOS image sensor positioned at said distal end of
said tubular portion . . . a control box remote from said tubular portion and
coupled to said CMOS image sensor, said control box including circuitry
means for receiving a pre-video signal form said CMOS image sensor, and
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There are numerous reasons to question Patent Owner’s argument
relating to alleged unexpected results. The asserted unexpected result is “the
capability of our device to reject radio frequency interference (RFI) which is
emitted by electrosurgical generators used during surgery.” Resp. 57 (citing
Ex. 1003 (Adair Declaration), 85–86). However, none of the imaging
devices claimed is incorporated in a medical surgical device such as an
endoscope. Thus, the unexpected result, even if true, is not commensurate in
scope with what has been claimed. “In order to establish unexpected results
for a claimed invention, objective evidence of non-obviousness must be
commensurate in scope with the claims which the evidence is offered to
support.” In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980) (citations
omitted).
Further, to establish a showing of unexpected results, Patent Owner
has to compare the claimed invention with the closest prior art. In re
Fracalossi, 681 F.2d 792, 794 (CCPA 1982); In re Fenn, 639 F.2d 762, 763
(CCPA 1981). Patent Owner has not shown that the closest prior art is a
CCD imager. According to Patent Owner, CMOS technology and CCD
technology are very different from each other. Resp. 10–18. On that basis,

for converting said pre-video signal to a post-video signal which may be
received by a standard video device . . . .” Ex. 1003, 76–78 (emphasis
added). None of the challenged claims of the ’896 patent are directed to an
endoscope with a remote control box feature or a device with any similar
feature. See Ex. 1001, 21:51–22:26 (claim 1), 22:36–37 (claim 5), 25:18–
26:28 (claim 21). Accordingly, the challenged claims cover devices in
which the processing circuitry (the circuitry for converting the pre-video
signal to a post-video signal) is near (rather than remote from) the image
sensor. See, e.g., Ex. 1001, 6:61–67, 8:62–10:46, Figs. 2a, 2b (disclosing an
embodiment in which all the imaging circuitry is placed in distal end 16 of
the endoscope and video processing board 50 is placed near and directly
behind image sensor 40).
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it would appear that a closer prior art than a CCD device would be a CMOS
imager such as that disclosed in Ackland, or WO 95/34988, Published
December 21, 1995 (“Swift” (Ex. 1005)), or US. Pat. 5,919,130, filed March
17, 1997 (“Monroe” (Ex. 1007)).9
Additionally, Dr. Neikirk provides contrary testimony. Dr. Neikirk
states that the alleged discovery is not unexpected but, rather, predictable.
Ex. 1004 ¶ 189. Dr. Neikirk explains as follows:
[A]s the declaration notes, they were using endoscopic cameras
around an “electrosurgical generator” that was used to “cut or
cauterize” tissue. ’839 File History, 85. It would have been
understood by a person of ordinary skill in the art that such an
electrosurgical generator would create a large amount of
electromagnetic (“EM”) radiation. Moreover, while the
declaration does not clearly state how many wires were in the
CCD system at issue, a person of ordinary skill in the art would
have understood that such EM radiation would cause radio
frequency interference (“RFI”) in a system, and would have a
more significant adverse effect on a system with more wires than
a system with fewer wires. It was also known that a CCD sensor
could have many more wires than a CMOS sensor. For example,
according to the declaration, the prior art CCD sensor identified
in the declaration (“Pelchy”) includes “a large number of
transmission wires 33 which interconnect the circuit boards
placed perpendicular to the pixel array with an external processor
13.” ’839 File History, 92. Thus, in a CCD sensor with many
wires, the radio frequency interference would have a relatively
large effect on the quality of images produced by the image
sensor. On the other hand, CMOS sensors require only a few
wires to connect to the pixel array, and thus interference created
in a CMOS image sensor would be much smaller than in such
CCD arrangement.

9 Swift and Monroe are cited in the Petition to show CMOS sensor
configurations already known in the art. Pet. 26.
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Ex. 1004 ¶ 189. This testimony is not rebutted by Patent Owner’s expert,
Dr. Lebby, or any other evidence. Patent Owner does not identify any
testimony of Dr. Lebby conveying that it would have been unexpected to
one of ordinary skill in the art that a CMOS sensor with remotely located
processing circuitry would have no need for RFI shielding.
Dr. Neikirk’s testimony is rational and we credit his testimony over
the testimony of Patent Owner’s inventor who provides no explanation as to
why it was unexpected that, as compared to CCD devices, a CMOS imager
with remotely located processing circuitry requires no RFI shielding.
For the foregoing reasons, Patent Owner has not established that the
alleged unexpected result truly would have been unexpected to one with
ordinary skill in the art. Even assuming the alleged unexpected result truly
would have been unexpected to one of ordinary skill in the art, Patent Owner
has not shown sufficient nexus between the unexpected result and the
claimed invention. Based on this record, we are not persuaded of any
unexpected results related to the invention of the challenged claims of the
’896 patent.
Under the heading “Industry Praise,” Patent Owner argues that
“[p]roducts embodying the invention claimed reduced area imaging device
have received industry praise” and “Patent Owner’s endoscopes, which
embodied the claimed features of the reduced area imaging device, including
a CMOS pixel array and separated image processing circuitry, was thus
praised by other[s] for the innovative and non-obvious features claimed in
the Challenged Claims.” Resp. 58–59. As noted above, the record in this
proceeding contains no evidence that establishes that any product
embodying the invention claimed in the ’896 patent was ever made (or
praised.) The only evidence Patent Owner offers in support of its “Industry
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Praise” argument is Exhibit 2090, that Patent Owner contends shows it,
“won the Orthopedics This Week’s 2016 Sports Medicine Technology for its
‘Distally mounted CMOS Sensor for disposable/reusable and rigid/flexible
scopes’ which features the claimed reduced area imaging device.” Resp. 58.
Clearly, this award constitutes praise of Patent Owner’s products, but that
does not translate into praise of the invention of the ’896 patent without
some showing that the praised products are within the scope of the claims of
the ’896 patent. Patent Owner makes no argument and submits no evidence
to show that the products that won the award were within the scope of any
invention claimed in the ’896 patent. Id. at 58–59. And, we can discern no
basis for concluding from Exhibit 2090 that the products that won the award
embody the invention of the challenged claims. Petitioner argues that Patent
Owner’s “alleged industry praise ([Resp.] 58-59) also lacks the requisite
nexus as it too is directed to the unclaimed feature of disposability of
endoscope tips.” Reply 26. We agree that the alleged praise is directed to
features not recited in the challenged claims (“Distally mounted CMOS
Sensor for disposable/reusable and rigid/flexible scopes”) and there is no
nexus established between the industry praise and the invention of the
challenged claims. Ex. 2090. Based on this record, we find no evidence
establishing that the invention claimed in the ’896 patent received any
industry praise.
Under the heading, “Proceeding Contrary To Accepted Wisdom,”
Patent Owner argues:
Prior to the ’896 Patent, the accepted wisdom in the art
was that CMOS imagers should be implemented in an on-chip
integration manner. Dr. Eric Fossum spearheaded the
development of the CMOS camera on a chip design efforts.
Fossum’s design would enable full realization of the benefits of
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a CMOS imager boasting numerous benefits over the dominant
CCD image sensor. For example, the CMOS camera on a chip
would enable designers to “make a camera small and cheap
enough to open vast new markets for everything from dolls that
“see” to rear-bumper cameras that would help drivers back up.”
Ex. 1060. However, Patent Owner recognized that a need still
existed for a reduced area imaging device which could be used
in even smaller devices, such as endoscopic instruments, in order
to view areas that are particularly difficult to access, and to
further minimize patient trauma by an even smaller diameter
invasive instrument. As a result, the ’896 Patent describes and
claims a reduced area imaging device which took advantage of
Fossum’s revolutionary “camera on a chip” technology, but
rearranged the circuitry to separate out circuitry so that a further
minimum profile could be achieved.

Resp. 59–60.
Patent Owner’s argument is excessively vague. The meaning of
“accepted wisdom in the art” is unclear and not sufficiently defined. We do
not know whether Patent Owner means that (1) one with ordinary skill in the
art would have recognized a CMOS imager in a multi-chip implementation
to be inoperative or unworkable and thus would not have considered it, or
(2) substantial focus and effort existed at the time to develop a “camera-on-
a-chip” design for CMOS imagers which was perceived to be better than a
multi-chip configuration for CMOS imagers.
Between the two, only the first possibly can serve as an objective
indicia of nonobviousness, and only if the “accepted wisdom in the art” turns
out to be incorrect. The second simply is not an objective indicia of
nonobviousness. Because the argument appears in Patent Owner’s
discussion of objective indicia of nonobviousness, we discuss Patent
Owner’s argument from the perspective of the first noted meaning.
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Patent Owner does not cite to any expert testimony that supports the
position that a CMOS imager in a multi-chip configuration was inoperative
or unworkable. In fact, the record evidence is to the contrary. WO
95/34988, published December 21, 1995 (“Swift” (Ex. 1005)) and US. Pat.
5,919,130, filed March 17, 1997 (“Monroe” (Ex. 1007))10 are examples of
prior-art disclosures of CMOS imagers with multi-chip configuration.
Petitioner’s expert, Dr. Niekirk, specifically identifies such examples.
Ex. 1004 ¶ 40. The record evidence does not support Patent Owner’s
assertion that the accepted wisdom in the art was that CMOS imagers should
be implemented in an on-chip integration manner. We do not find that to be
so.
Also, Patent Owner appears to have ignored basic skills or
fundamental engineering principles that would have been known to one with
ordinary skill in the art, e.g., off-loading some components to another chip
or another circuit board would decrease the required size for the containing
chip or circuit board. Dr. Niekirk testifies that “a person of ordinary skill
would have known that components could be placed on a number of circuit
boards and arranged in any number of different “planes” based on the design
needs and intended applications of a given device.” Ex. 1004 ¶ 40. Patent
Owner does not identify any contrary testimony from its expert, Dr. Lebby.
We credit this testimony from Dr. Niekirk.
Based on this record, we find Patent Owner’s argument that the
challenged claims relate to an invention that was contrary to accepted
wisdom in the art is weak and entitled to little weight.

10 Swift and Monroe are cited in the Petition to show CMOS sensor
configurations already known in the art. Pet. 27–29.
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In summary, we find that the evidence proffered by Patent Owner in
an effort to establish that there is objective evidence of the non-obviousness
of the invention claimed in the ’896 patent is weak and has not been shown
to relate to the specific inventions recited in the challenged claims.
However, we have considered all the proffered evidence of objective indicia
of nonobviousness relied upon by Patent Owner in our determination as to
obviousness.
4. Motivation to Combine the Relevant Teachings of
Wakabayashi and Ackland
We find the Petition provides articulated reasoning with rational
underpinning that a skilled artisan would have had a motivation to combine
the relevant teachings of the Wakabayashi and Ackland. See Pet. 33–36.
As shown in the Petition, Petitioner’s combination of the relevant teachings
of Wakabayashi and Ackland is supported by Wakabayashi’s disclosure of
the use of “solid-state imager devices” (see Ex. 1027, 9:11–12, 12:48–49)
and Ackland’s teaching that CMOS pixel arrays are solid state image sensors
(see Ex. 1006, 1:34–35) and “may be used as a solid state camera” (see id. at
7:64). And, Petitioner’s expert, Dr. Neikirk, testifies that a CMOS based
imager is a solid state imager. Ex. 1004, ¶ 43. Patent Owner does not
present any contrary evidence or argument. Thus, there exists non-
contradicted evidence that the disclosure of a “solid state imager device” in
Wakabayashi would teach or suggest to an ordinarily skilled artisan CMOS
imagers such as are disclosed in Ackland.
Petitioner contends that, in the “Background of the Invention” section
of the ’896 patent, it is acknowledged that “CMOS image sensors and
readout circuitry for operating such sensors, as disclosed in Ackland, were
well known in the art.” Id. at 33 (citing Ex. 1001, 2:11–18, 2:27–36).
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Petitioner also argues that, in the ’896 patent, several important advantages
to CMOS sensor imagers were identified and that these advantages would
have motivated a skilled artisan to implement CMOS image sensors as
disclosed in Ackland into the imager apparatus of Wakabayashi.
Petitioner contends that Wakabayashi and Ackland are in the same art
(“solid state image sensors for use in cameras”) and are analogous art to the
’869 patent. Id. at 33–34. And, Petitioner argues that Wakabayashi and
Ackland are both reasonably pertinent to problems identified in the ’896
patent. Id. at 34. The Petition states:
In addition, Wakabayashi and Ackland are also reasonably
pertinent to the alleged problem(s) identified in the ’896 of
arranging the circuitry of image sensor, including to minimize
the size of the device and to be “low cost.” E.g., ’896, 3:35- 43;
Wakabayashi, Abstract, 2:37-39, 3:40-44, 14:6-10; Ackland,
2:10-15; Neikirk, ¶93. Moreover, the ’896’s stated goals of
producing a “very small” or “low cost” imaging device were well
known objectives that a POSITA designing imaging devices
would have been aware of. E.g., ’896, 3:40-58; Wakabayashi,
Abstract; Ackland, 2:10-15; Neikirk, ¶94. For example,
Wakabayashi is explicitly directed to a device where the video
camera unit is “reduced in size and weight.” Wakabayashi,
Abstract. It was also well-known that “[f]itting of the
components into the available space” while maintaining
“orientation of the components relative to one another,”
including “placement” of circuitry on “various layers” arranged
“stackwise,” is a common design consideration for portable
devices, and a POSITA would have found it routine,
straightforward and advantageous to rearrange the components
as needed to create a smaller overall device. PCB Design, 1984,
15, 20; KSR, 127 S.Ct. at 1731; Neikirk, ¶94.

Id. And, Petitioner argues that it would have been “routine,
straightforward, and advantageous” to apply Ackland’s teachings to
Wakabayashi’s imager apparatus. The Petition states:
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In light of the above, a POSITA would have found it
routine, straightforward and advantageous to apply Ackland’s
known teachings of an array of CMOS active pixels in an image
sensor outputting a pre-video signal in implementing
Wakabayashi’s imager apparatus, and would have known that
such a combination (yielding the claimed limitations) would
predictably work and provide the expected functionality.
Neikirk, ¶¶84-97. In addition, [. . .] a POSITA would have found
it routine, straightforward and advantageous to locate the
circuitry to convert the pre-video signal, as taught by Ackland,
to a post-video signal on Wakabayashi’s circuit board 39, and
would have known that such a design choice (yielding the
claimed limitations) would predictably work and provide the
expected functionality. Neikirk, ¶¶74-77, 97.

Id. at 35–36.
We determine that Petitioner’s showing as to motivation to combine
the relevant teachings of Wakabayashi and Ackland is well-supported
including by specific language found in these two cited references. We have
considered Patent Owner’s arguments relating to the motivation to combine
the relevant teachings of Wakabayashi and Ackland and discuss them in our
detailed element-by-element analysis of the challenged claims that follows.
On balance, we find Petitioner’s arguments and evidence on motivation to
combine to be much better supported and more persuasive than Patent
Owner’s contrary arguments.
5. Element-by-Element Analysis of Claims 1, 5, and 21
Petitioner contends that claims 1, 5, and 21 of the ’896 patent would
have been obvious in view of a combination of the teachings of
Wakabayashi and Ackland. Pet. 17–71. Patent Owner argues that Petitioner
has not shown that the cited art teaches or suggests limitations of
independent claims 1 and 21 and that Petitioner has failed to show that a
skilled artisan would have been motivated to combine Wakabayashi and
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Ackland. Resp. 23–52. Our analysis of the arguments of the parties and the
evidence follows.
Claim 1
1[pre] An imaging device comprising:
Petitioner does not take a position as to whether the preamble of claim
1 of the ’896 patent is limiting but contends that Wakabayashi teaches an
imaging device. Pet. 36 (“To the extent the preamble is limiting,
Wakabayashi discloses an imaging device (e.g., ‘a portable imager
apparatus’).”) (citing Ex. 1004 (Neikirk Decl.) ¶¶ 98–99). Patent Owner
does not discuss the preamble of claim 1 in its Response. See generally
Resp.
We determine that the preamble of claim 1 is not limiting because a
structurally complete invention is recited in the body of claim 1 and the
preamble only states the purpose or intended use of the invention. Rowe v.
Dror, 112 F.3d 473, 478 (Fed. Cir. 1997) (“where a patentee defines a
structurally complete invention in the claim body and uses the preamble only
to state a purpose or intended use for the invention, the preamble is not a
claim limitation”). However, we also agree with Petitioner that
Wakabayashi discloses an imaging device. Wakabayashi states: “[t]he
present invention relates to a portable imager apparatus which includes a
video camera as an imager unit . . . .” Ex. 1027, 1:6–7.
1[a] a housing
Petitioner relies on Wakabayashi for teaching a housing. Pet. 37–39
(citing Ex. 1004 (Neikirk Decl.) ¶¶ 100–102). The Petition states:
“Wakabayashi discloses a housing of the imager apparatus formed by the
‘housing 3’ (including the ‘front panel 2a’ and ‘rear panel 2b’), ‘camera case
16,’ and ‘battery-cover 11.’ These components collectively form the
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housing, as depicted in Figs. 1, 2 and 5.” Pet. 37. In its Response, Patent
Owner refers to the “housing of the apparatus” in discussing the teachings of
Wakabayashi. Resp. 19. In its Preliminary Response, Patent Owner
acknowledges, “Wakabayashi plainly describes a ‘housing’ element of an
imager apparatus 1, and labels the ‘housing’ element as element ‘3’ in its
Figures.” Prelim. Resp. 49 (citing Ex. 1027, 4:44–51, Fig. 1). We find
Wakabayashi teaches this limitation.
1[b] an image sensor mounted in said housing,
said image sensor including a first circuit board
having a length and a width thereto, wherein said
length and width of said first circuit board define a
first plane, said first circuit board including an
array of CMOS pixels thereon

Petitioner relies on a combination of Wakabayashi and Ackland as
teaching this limitation. Pet. 39–44 (citing Ex. 1004 (Neikirk Decl.) ¶¶ 107–
110). Wakabayashi is relied upon for teaching “an image sensor mounted in
said housing, said image sensor including a first circuit board having a
length and a width thereto, wherein said length and width of said circuit
board define a first plane.” Id. at 39–42. Petitioner asserts:
Wakabayashi discloses an image sensor including a
“solid-state” “imager device 27” (an image sensor chip) mounted
on a “circuit board 29” (a first circuit board having a length and
width that define a first plane) as depicted in Fig. 7. E.g.,
Wakabayashi, 5:56-59, 6:46-48, 9:10-14, Fig. 7. “Imager device
27” and “circuit board 29” are soldered onto “mounting plate
28,” which is “fixed” “to the camera case 16”—thus, the image
sensor is mounted in the housing as depicted in Figs. 3 and 7.
Wakabayashi, 5:62-65, 6:46- 48, Fig. 3, Fig. 7.

Id. at 40. Petitioner also provides annotated versions of Figures 3 and 7 of
Wakabayashi (reproduced below).
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Id. at 41–42. These figures depict image sensor 27 and circuit board 29
(shown in red in the annotated figures) in camera case 16. The cited
passages and figures of Wakabayashi support these assertions.
Petitioner relies on Ackland for teaching an image sensor including an
array of CMOS pixels. Id. at 42–44. Petitioner asserts that “Ackland
teaches that the ‘imaging system’ includes a ‘CMOS…pixel array’ for
receiving images thereon. Ackland, 1:35-38.” Id. at 43. Petitioner also
provides an annotated version of Figure 6 of Ackland (reproduced below).

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Id. at 44. Annotated Figure 6 depicts an array of CMOS pixels (shown in
green in the annotated figure). Ex. 1006, 7:59–8:8.
With regard to combining the relevant teachings of Wakabayashi and
Ackland, the Petition states:
While Wakabayashi discloses that the image sensor uses a
“solid-state imager device” and a “circuit for driving the solid-
state imager device” to “generate[] an opto-electrically converted
signal” (Wakabayashi, 9:11-15), Wakabayashi does not
expressly state that its “imager device 27 [] electrically
connected to the camera circuit board 29” includes an array of
CMOS pixels. Ackland expressly provides this additional
implementation detail for “an imaging system…used as a solid-
state camera.” E.g., Ackland, 7:62-63. Specifically, Ackland
teaches that the “imaging system” includes a “CMOS…pixel
array” for receiving images thereon. Ackland, 1:35-38. . . . a
POSITA would have been motivated to apply Ackland’s known
teachings of an array of CMOS active pixels in an image sensor
in implementing Wakabayashi’s “imager device 27 [] electrically
connected to the camera circuit board 29.”

Pet. 42–43 (alterations in original). We find Petitioner’s reasons for
combining these teachings from the cited art to be well-supported and
reasonable.
Patent Owner argues that “[i]t is undisputed that Wakabayashi does
not disclose a CMOS image sensor” and that a skilled artisan would interpret
Wakabayashi as disclosing a circuit board including an array of CCD pixels.
Resp. 21. The Response states:
As explained in the accompanying declaration of Dr.
Michael Lebby, a POSITA would understand Wakabayashi to
be a CCD device, as Wakabayashi refers to a solid-state imager
and describes a conventional CCD device design used in 1995
(when Wakabayashi was filed), for several reasons. Lebby
Decl., ¶¶ 100- 103, 107, 108, 119. Therefore, Wakabayashi
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refers to a solid-state imager and describes a conventional CCD
device design used in 1995 (when Wakabayashi was filed).

Id. As can be seen, this passage refers to “several reasons” why “a POSITA
would understand Wakabayashi to be a CCD device” and cites the Lebby
Declaration (Exhibit 2088) but does not state any such reason. This is an
improper incorporation by reference. See 37 C.F.R. § 42.6(a)(3)
(“Arguments must not be incorporated by reference from one document into
another.”). And, this passage is a mischaracterization of the cited Lebby
Declaration. The Lebby Declaration states, “Wakabayashi merely discloses
the use of a solid-state imager and shows an architecture that would have
been understood to use CCD, MOS, or CID image sensors” and:
Additionally, a POSITA would understand the design
architecture in Wakabayashi, including imager device 27,
mounting plate 28, camera circuit board 29, off-chip driving
circuitry and synchronization signals, was intended to use a
CCD, MOS, or CID imaging device. These off-chip design
features were hallmarks of a CCD, MOS and CID devices.

Ex. 2088, ¶¶ 100, 102. Contrary to what is stated in the Response,
Dr. Lebby’s Declaration does not state that “a POSITA would understand
Wakabayashi to be a CCD device” but instead states Wakabayashi discloses
the use of CCD, MOS, and CID image sensors.11

11 Patent Owner relies on this argument (“a POSITA would understand that
the portable digital camera disclosed in Wakabayashi to be a CCD sensor
device”) later in its Response and cites the same paragraphs of the Lebby
Declaration in support. See Resp. 26 (cited in support of an argument that
“to incorporate Ackland’s CMOS camera-on-a-chip sensor would
fundamentally change Wakabayashi’s principle of operation as a CCD
imaging device”). We reject all of Patent Owner’s arguments that rely on
Patent Owner establishing that Wakabayashi is limited to disclosing CCD
sensors.
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Even if Wakabayashi is construed to suggest the use of a circuit board
including an array of CCD pixels as Patent Owner asserts, by using broader
language (“solid-state imager device” (see Ex. 1027, 9:11–12, 12:48–49)),
Wakabayashi explicitly teaches something broader that reasonably includes
a circuit board including an array of CMOS pixels. We determine that
Patent Owner fails in its attempt to establish that this broader explicit
description of the imager in Wakabayashi should be limited to CCD sensors.
Petitioner’s argument in support of reading this term to include CMOS
sensors is more than reasonable and we find it is clearly supported by the
literal and plain meaning of Wakabayashi.
And, Ackland explicitly states a “class of solid state image sensors is
a CMOS active pixel array.” Ex. 1006, 1:34–35. Petitioner’s combination
of the relevant teachings of Wakabayashi and Ackland is supported by
Wakabayashi’s disclosure of the use of “solid-state imager devices” (see
Ex. 1027, 9:11–12, 12:48–49) and Ackland’s teaching that CMOS pixel
arrays are solid state image sensors (see Ex. 1006, 1:34–35) and “may be
used as a solid state camera” (see id. at 7:64). Patent Owner acknowledges
that, “Ackland describes the physical and chemical structure of a CMOS
active pixel, particularly a single-polysilicon CMOS active pixel, and a
method of operating such a CMOS active pixel.” Resp. 22. These clear and
related teachings of the cited art support Petitioner’s contentions regarding
this limitation. We find the combination of the CMOS sensors of Ackland
with the imaging apparatus of Wakabayashi to be the combination of
familiar elements according to known methods that yields predictable
results. See KSR, 550 U.S. at 416 (“The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.”).
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Patent Owner argues that “Petitioner’s proposed modification to
incorporate Ackland’s CMOS sensor would nevertheless make
Wakabayashi’s imaging apparatus unsuitable for its intended purpose as a
portable digital camera for taking videos and photographs.” Resp. 29.
Patent Owner argues that a skilled artisan would understand that CMOS
image sensors would not be suitable for the type of compact digital camera
disclosed in Wakabayashi because “CMOS image sensors, at [the time the
invention of the ’896 patent was made], produced images having high noise
levels corresponding to poor image quality.” Id. at 30. Specifically,
according to Patent Owner, CMOS image sensors at the time of the
invention “produced images having high noise levels corresponding to poor
image quality.” Id. (citing Exhibits 1060, 2060, 2063). But relatively poorer
quality as compared to other technologies at the time does not mean or
equate to inability to produce an image. Patent Owner does not assert that
CMOS image sensors are incapable of producing an image, i.e., a picture or
photograph. Exhibits 1060 and 2063 indicate that CMOS image sensors do
produce images, just not as good, at the time, as CCD devices. Ex. 1060, 55;
Ex. 2063, 1–2. Exhibit 2060 indicates that CMOS image sensors do produce
images but include “annoying little dots or scratches on photos.” Ex. 2060,
3–4. Even the testimony of Patent Owner’s expert, Dr. Lebby, confirms that
CMOS image sensors at the time of the invention were used for taking
pictures. Ex. 2088 ¶ 106 (“[A]doption of CMOS sensors in 1997 were
limited to applications where the quality of the image was less important
. . . .”).
Patent Owner further asserts:
The unsuitability of CMOS image sensors for digital
cameras is confirmed by a review of all major digital cameras
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released in 1997, which showed all digital cameras having CCD
sensors and not CMOS sensors. See Ex. 2052 (showing a
timeline of digital cameras released in 1997). This review even
identified a digital camera, Casio QV-700, which has a swiveling
lens similar to that of Wakabayashi, that has a CCD sensor.
Resp. 31. However, that argument is weak and unpersuasive. That all major
digital cameras released in 1997 used CCD sensors and not CMOS sensors,
even if true, does not mean CMOS sensors are incapable of being used for
taking a picture or photograph. As noted above, Exhibits 1060, 2060, and
2063, as well as the testimony of Patent Owner’s expert Dr. Lebby, all
indicate that CMOS sensors were capable of producing an image, i.e., a
picture or photograph. For commercial products, it is understandable that
sensors producing higher quality image would be preferred. But that does
not mean sensors outputting a lower quality image are incapable of
producing a picture or photograph.
In any event, Patent Owner does not point to any description in
Wakabayashi that specifies a minimum level of image quality that must be
obtained by Wakabayashi’s imaging apparatus. Even if it did, a prior art
reference must be considered for everything it teaches by way of technology
and is not limited to the particular invention it is describing and attempting
to protect. EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed.
Cir. 1985); In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983). Thus,
suitability for the intended purpose of taking a picture or photograph does
not require producing an image of very high quality. The claims of the ’896
patent also do not require any particular level of image quality.
For the foregoing reasons, Petitioner’s stated rationale for using
Ackland’s CMOS imager as Wakabayashi’s solid-state imager is not
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undermined by Patent Owner’s argument that a CMOS imager is unsuitable
for the intended purpose of Wakabayashi’s imaging device.
Patent Owner argues that, “because modifying the CMOS sensor of
Ackland to accommodate the off-chip design of Wakabayashi would render
Ackland inoperable for its intended purpose of producing an image sensor
with an ‘on-chip’ design, a person of ordinary skill in the art would not have
been motivated to pursue the combination.” Resp. 34. Patent Owner’s
argument is misplaced and unpersuasive. First, in Petitioner’s proposed
combination as discussed above, the entirety of what are shown in Ackland’s
Figure 6, labeled as “ACTIVE PIXEL IMAGING SYSTEM” and enclosed
in dashed lines, is adopted for use as Wakabayashi’s imager device 27,
which is on one chip and substrate. Petitioner has not proposed to leave
anything off or drop anything from what are shown in Ackland’s Figure 6.
Second, Ackland does not describe or refer to “on chip” or “single chip”
with respect to its circuits, certainly not the “processing circuitry” absent
from Figure 6. Ackland also does not describe that the intended purpose for
the CMOS imager is to have it integrated on the same chip as the processing
circuitry.
The evidence does not support Patent Owner’s contention that
Ackland’s “processing circuitry” is required to be on the same chip as the
circuits shown in Ackland’s Figure 6 for Ackland’s CMOS sensor to work.
The evidence also does not support Patent Owner’s contention that the
intended purpose of CMOS image sensors, such as that disclosed by
Ackland, would be to integrate all of its circuitry and components on a
single semiconductor chip or one plane.
Further, Patent Owner’s argument fails to take into account the
disadvantages of CCD imagers as compared to CMOS imagers with
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separately located processing circuitry. For instance, in the Patent Owner
Response, Patent Owner notes that for a CCD pixel array, the entire CCD
array must be driven to achieve the output of a single pixel. Id. at 13. And,
Patent Owner describes an “Achilles’ heel” of CCD imagers:
CCD imagers generally used a bucket brigade design of
pixel array (illustrated below) that has since been described to be
its own “Achilles’ heel.” [Ex. 2053] at 1. (“The Achilles’ heel
of CCDs is fundamental to the CCD operating principle—the
need for nearly perfect charge transfer.”). To read out a CCD
array, a single line “is scanned out from the horizontal shift
register onto a capacitor which converts each charge packet to a
voltage for subsequent amplification and buffering.” Ex. 2050
at 2. In other words, CCD array readout is “a process of repeated
lateral transfer of charge in a MOS electrode-based analog shift-
register, where “photo-generated signals are read after they are
shifted into appropriate positions. Ex. 2056 at 1:52–56. This
shifting process “requires high fidelity and low loss,” further
requiring “[a] specialized semiconductor fabrication process . . .
to obtain these characteristics.” Id. at 1:56–58. Higher voltages
also are needed to drive the charge from each pixel through the
entire array to read out the image data. Ex. 2036 at 9; Ex. 2063
at 3; Ex. 2004 at 4.
Id. at 13–14. During oral hearing, counsel for Patent Owner also
acknowledged that a CCD imager performs destructive readout which is
not the case for CMOS imagers. Tr. 15:1–18. Even Dr. Lebby, Patent
Owner’s expert, has testified to advantages of CMOS imagers not tied to
complete integration of all associated components, i.e., lower power
requirements, increased resistance to radio frequency interference (RFI)
and electromagnetic interference (EMI), and flexible readout of the signal
charge without destroying the accumulated charge. Ex. 2088 ¶¶ 77, 83.
Thus, a CMOS imager at the time was known to be better than a CCD
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imager in some ways even one with separately located processing
circuitry.
As noted above, Petitioner asserts that the lower costs of CMOS
imagers would have motivated a POSITA to combine Ackland’s CMOS
imagers – instead of CCD imagers – with Wakabayashi’s solid state imager
apparatus to produce a low cost imaging device. Pet. 33–34 (citing Ex.
1060; Ex. 1004 ¶ 89, 92–94). Patent Owner, in response, presents
persuasive rebuttal, noting that replacing the CCD array with a CMOS array
would not yield much cost savings, and that the majority of those savings are
actually brought about by incorporating all the relevant timing, control and
image processing circuitry onto a single chip, rather than on multiple circuit
boards. Resp. 42–43 (citing Ex. 1060, 54; Ex. 2060, 3). Petitioner replies
that the cost advantage of CMOS imagers “is not entirely due to adding
circuitry to the chip” but also because CMOS “fabrication facilities by this
point in time were very standardized” and unlike CCD manufacturing, did
not require new investment. Reply 13–14 (citing Ex. 2076, 193:7–194:20,
44:6–47:10; Ex. 2088 ¶ 78; Ex. 1086 ¶ 35–36). Patent Owner points out that
this argument does not rebut or even address Patent Owner’s assertion that
utilizing a camera-on-a-chip design provides the vast majority of cost
savings while using CMOS instead of CCD yields a minimal amount of such
savings. Sur-Reply 21–22.
Patent Owner’s arguments and corresponding evidence have created
substantial doubt as to Petitioner’s stated motivation to combine teachings
based on reduced cost. We are not persuaded by Petitioner that reduced cost
would have been a motivation for one with ordinary skill in the art to
combine Wakabayashi and Ackland in the manner proposed by Petitioner.
However, Petitioner has no need for that stated motivation or reason to
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combine. As discussed above, Petitioner provides ample and sufficient
motivation and suggestion to combine by identifying that Wakabayashi
teaches the use of a “solid state imager,” and that Ackland specifically
describes that its device is for use in a “solid state camera,” where it is not in
dispute that a CMOS imager is a solid state imager.
Considering all the arguments of the parties on this issue and the
related evidence, we find that the cited art teaches this limitation.
1[c] wherein a plurality of CMOS pixels within
said array of CMOS pixels each include an
amplifier

Petitioner relies on Ackland for teaching this limitation. Pet. 44–46
(citing Ex. 1004 (Neikirk Decl.) ¶¶ 111–113). Ackland states, “active pixel
35 further includes . . . an amplifier formed by a voltage follower-transistor
125 . . . Typically, the active pixel 35 will be one of a plurality of such active
pixels forming an array.” Ex. 1006, 3:22–29. And, we note that in the
“Background of the Invention,” section of the ’896 patent, it is
acknowledged that CMOS imagers with an amplifier at each pixel site had
been previously developed. Ex. 1001, 2:1–5. We find that Ackland teaches
this limitation.
1[d] said first circuit board further including
timing and control circuitry thereon, said timing
and control circuitry being coupled to said array
of CMOS pixels

Petitioner relies on a combination of Wakabayashi and Ackland for
teaching this limitation. Pet. 46–48 (citing Ex. 1004 (Neikirk Decl.) ¶¶ 114–
118). With regard to Wakabayashi, Petitioner relies on the disclosure of
circuit board 29. Pet 46; see also annotated Figs. 3 and 7 (reproduced
above). With regard to Ackland, the Petition states:
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Ackland discloses said image sensor (e.g., “active pixel
imaging system”) including timing and control circuitry (e.g.,
“timing controller 20”), said timing and control circuitry being
coupled to said array of CMOS pixels (e.g., “timing controller
20” coupled to the “CMOS…pixel array” through “row decoder
10” in the “exemplary active pixel image sensor” shown in Fig.
6).

Id. With regard to the combination of Wakabayashi and Ackland, the
Petition states:
While Wakabayashi does not detail the timing and control
circuitry of its “imager device 27 [] electrically connected to the
camera circuit board 29,” Ackland describes circuitry including
a “timing controller 20 provid[ing] timing signals” that control
the imaging system “to achieve a desired frame rate.” Ackland,
8:24- 34. As shown in Figure 6, the timing controller 20 is
coupled to the CMOS pixel array for timing and control of the
pixels. Neikirk, ¶¶ 115-117.

Id. at 46–47. Patent Owner does not argue this limitation. See generally
Resp. We find that the combination proposed by Petitioner, i.e., including
Ackland’s CMOS imager in Wakabayashi, teaches this limitation.
1[e] said image sensor producing a pre-video
signal

Petitioner relies on Ackland’s CMOS pixel array for teaching this
limitation. Pet. 48–49 (citing Ex. 1004 (Neikirk Decl.) ¶¶ 119–121). As
cited by Petitioner, Ackland states:
The output voltage signals generated by the activated row 35 are
simultaneously provided to the corresponding amplifiers 18 via
the column output line 65. Output signals from the amplifiers 18
are provided to the common output line 19 in serial fashion based
on timing control signals from the timing control 20. The output
signals are routed to suitable processing circuitry, not shown.

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Ex. 1006, 8:44–51, see also Fig. 6. Patent Owner does not argue this
limitation. See generally Resp. Ackland supports Petitioner’s contention
regarding this limitation. We find Ackland’s pixel array teaches this
limitation.
1[f] wherein the image sensor is generally square
shape along the first plane
Petitioner relies on Wakabayashi for teaching this limitation. Pet. 49–
50 (citing Ex. 1004 (Neikirk Decl.) ¶¶ 122–124). The Petition states,
“’imager device 27 [] electrically connected to the camera circuit board 29
by soldering’ is generally square shaped along the first plane as illustrated in
Fig. 7.” Id. at 49. Imager device 27 in Figure 7 of Wakabayashi is depicted
as generally square in shape. Patent Owner does not argue this limitation.
See generally Resp. We find that Wakabayashi teaches this limitation.
1[g] a second circuit board mounted in said
housing, said second circuit board being
electrically coupled to said first circuit board, said
second circuit board having a length and a width
thereto, wherein said length and width of said
second circuit board define a second plane, said
second circuit board including circuitry thereon to
convert said pre-video signal to a post-video
signal, said second circuit board being offset from
said first circuit board, said second plane of said
second circuit board being substantially parallel to
said first plane of said first circuit board
Petitioner relies on Wakabayashi for teaching or suggesting this
limitation. Pet. 50–57 (citing Ex. 1004 (Neikirk Decl.) ¶¶ 125–135). With
regard to the recited “second circuit board mounted is said housing,”
Petitioner points to the “circuit board 39” disclosed in Wakabayashi. Id., see
also Ex. 1027, 6:21–22 (“circuit board 39 is disposed in the housing 3”),
Fig. 5. With regard to the recited “second circuit board being electrically
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coupled to said first circuit board,” Petitioner points to “flexible board 51”
disclosed in Wakabayashi. Id., see also Ex. 1027, 6:34–37 (“The flexible
board 51 has one end connected to the camera circuit board 29 by soldering
and the other end connected to a connector 52 on the circuit board 39.”),
Fig. 7. With regard to the recited “said second circuit board having a length
and a width thereto, wherein said length and width of said second circuit
board define a second plane . . . said second circuit board being offset from
said first circuit board, said second plane of said second circuit board being
substantially parallel to said first plane of said first circuit board,” the
Petition states:
Wakabayashi also discloses that “circuit board 39,” as
illustrated in Fig. 5, has a length and a width that define a second
plane. Figs. 3 and 7, further illustrate that this plane is
substantially parallel to the first plane defined by the length and
width of “circuit board 29.” Wakabayashi further discloses that
the “circuit board 39” is offset from “circuit board 29.”

Id. at 53. In support, the Petition includes annotated versions of Figures 3, 5,
and 7 (reproduced below).
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Id. at 53–55. Annotated Figures 3, 5, and 7 depict “circuit board 39” and
support Petitioner’s contentions regarding its physical arrangement and
relation to “circuit board 29.”
With regard to the recited “said second circuit board including
circuitry thereon to convert said pre-video signal to a post-video signal,”
Petitioner points to the “camera signal processing circuit” disclosed in
Wakabayashi. Id. at 50–55, see also Ex. 1027, 9:14–18 (“The camera circuit
102, which includes a camera signal processing circuit, a synchronization
signal generator circuit, and so on, generates a video signal 103 in a
television signal format from the opto-electrically converted signal 101.”).
The Petition states:
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A POSITA would have been motivated and found it
obvious and straightforward to locate the processing circuitry to
convert the pre-video signal to a post-video signal on
Wakabayashi’s “circuit board 39 [which] includes a signal
processing circuit…, a driver circuit…, a system circuit, a power
supply circuit, and so on” because it is the larger of two circuit
boards in the imager apparatus and there is more space where
circuit board 39 is mounted than in the camera head where circuit
board 29 is mounted. E.g., Wakabayashi, 6:5-10, 9:15-19, Figs.
3, 5; Neikirk, ¶74. Furthermore, by mounting this processing
circuitry on circuit board 39 instead of circuit board 29, the size
of circuit board 29 is advantageously reduced and the video
camera unit that rotates is made smaller. E.g., Wakabayashi,
Abstract, 2:37- 39, 3:40-44, 14:6-10, Figs. 3, 5; Neikirk, ¶74.
Wakabayashi teaches one objective is to make “the video camera
unit… small,” “composed of minimally necessary parts,” and
“compact to realize a reduction in weight of [the]…rotating
mechanism,” so that “less strength is required” for the “rotatable
joining portion” to “join the video camera with the housing”
portion of the imager apparatus. E.g., Wakabayashi, Abstract,
2:37-39, 3:40-44, 14:6-10. Neikirk, ¶74. Placement of the
processing circuitry on circuit board 39 furthers this objective.
Neikirk, ¶74.

Pet. 26–27.
We agree with Petitioner that a skilled artisan would have found that it
would be advantageous in order to reduce the size of the video camera unit
of Wakabayashi by placing the circuitry to convert said pre-video signal to a
post-video signal on a separate, second board. The Petition further provides
that “[t]he number of circuit boards and configuration of circuitry across the
circuit boards was a well-known engineering consideration guided by the
dimensions of the intended housing” and “[e]ven with respect to circuitry to
convert pre-video signals to post-video signals, it was a well-known
engineering consideration to move the circuitry from a circuit board directly
attached to the image sensor chip to one that is remote to the image sensor
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chip.” Id. at 27–28. Patent Owner acknowledges that Wakabayashi,
“expressly discloses an off-chip circuit design and architecture in which
multiple imaging components are located on circuit boards separate from the
image sensor.” Resp. 21. Wakabayashi supports Petitioner’s contentions as
to this limitation.
Patent Owner argues that the combination of Wakabayashi and
Ackland fails to disclose timing and control circuitry on a first circuit board
and circuitry to convert pre-video signals to post-video signals on a second
circuit board as recited in claim 1. Resp. 45. Specifically, Patent Owner
argues that Wakabayashi teaches off-chip circuitry and that “Ackland’s
CMOS image sensor teaches . . . an on-chip design architecture including the
pixel array, timing control and signal processing on-chip.” Resp. 46.
However, as discussed above, Wakabayashi clearly and indisputably teaches
a two circuit board architecture in an imaging device. See Pet. 63 (showing
Ex. 1027, Fig. 7 (annotated) (reproduced below)).

Annotated Figure 7 of Wakabayashi depicts first circuit board 29 (blue) and
second circuit board 39 (green). And, Ackland just as clearly and
indisputably teaches “timing controller” circuitry on a first board with the
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pixel array and “processing circuitry” elsewhere. See Pet. 49 (showing Ex.
1006, Fig. 6 (annotated) (reproduced below).

Annotated Figure 6 of Ackland depicts the “timing controller” circuitry and
the “processing circuitry” in separate locations. And, Ackland states,
“[o]utput signals from the amplifiers 18 are provided to the common output
line 19 in serial fashion based on timing control signals from the timing
control 20. The output signals are routed to suitable processing circuitry, not
shown.” Ex. 1006, 8:48–52. In light of these explicit teachings, we find
Petitioner’s argument that a combination of Wakabayashi and Ackland
teaches this limitation to be well-supported and Patent Owner’s contrary
argument to be non-persuasive.
1[h] a lens mounted in said housing, said lens
being integral with said imaging device, said lens
focusing images on said array of CMOS pixels of
said image sensor
Petitioner relies on Wakabayashi for teaching this limitation. Pet. 56–
57 (citing Ex. 1004 (Neikirk Decl.) ¶¶ 131–135). Petitioner points to “lens
25” disclosed in Wakabayashi. Id. The Petition states:
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Wakabayashi discloses a “lens 25” in a “lens case 24”
which is “secured” to the “mounting plate 28” “with a screw.”
Wakabayashi, 5:56-61, 6:11-19. As discussed [above],
“mounting plate 28……is fixed to the camera case 16.”
Wakabayashi, 5:62- 65. Thus, lens 25 is integral with
Wakabayashi’s imager apparatus. Neikirk, ¶¶132-133.
Wakabayashi further explains that “lens 25” is used to “focus[]”
an “image……on the imager device 27.”

Pet. 56 (citing Ex. 1027, 2:51–54, 5:56–65, 6:11–19, Fig. 3). The cited
passages and Figure 3 of Wakabayashi support Petitioner’s contention.
Patent Owner does not argue this limitation. See generally Resp. We find
Wakabayashi teaches this limitation.
1[i] a video screen, said video screen being
electrically coupled to said second circuit board,
said video screen receiving said post-video signal
and displaying images from said post-video signal
Petitioner relies on Wakabayashi for teaching this limitation. Pet. 57–
59 (citing Ex. 1004 (Neikirk Decl.) ¶¶ 136–140). Petitioner points to “liquid
crystal display 6” and “liquid crystal panel 38” disclosed in Wakabayashi.
Id. The Petition states:
Wakabayashi discloses a “liquid crystal display 6” having
a “liquid crystal panel 38” coupled to the “circuit board 39.”
E.g., Wakabayashi, 4:44-46, 6:5-10. The “circuit board 39”
includes a “driver circuit for the liquid crystal panel 38.”
Wakabayashi explains that the “liquid crystal display serv[es] as
a display unit” to display images from the “video signal 111 []
outputted” from “circuit board 39” and “allows a user to monitor
an image.”

Pet. 58 (citing Ex. 1027, Abstract, 1:6–15, 2:40–45, 4:44–46, 5:7–12, 6:5–
10, 9:14–38, 10:1–7, 10:15–17, Figs. 1–3, 10, 11). The cited passages and
figures of Wakabayashi support Petitioner’s contention. Patent Owner does
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not argue this limitation. See generally Resp. We find Wakabayashi teaches
this limitation.
1[j] a power supply mounted in said housing, said
power supply being electrically coupled to said
first circuit board to provide power to said array
of CMOS pixels and said timing and control
circuitry, said power supply also being electrically
coupled to said second circuit board to provide
power thereto
Petitioner relies on Wakabayashi for teaching this limitation. Pet. 59–
61 (citing Ex. 1004 (Neikirk Decl.) ¶¶ 141–143). Petitioner points to
“battery 45 [ ] disposed in housing 3” disclosed in Wakabayashi. Id. The
Petition states:
Wakabayashi discloses the portable imager apparatus is
powered by “battery 45 [] disposed in…housing 3.”
Wakabayashi, 6:21-27. A POSITA would have understood that,
as a standalone device with a battery as the only disclosed source
of power, the battery provides power to the “circuit board 29” to
provide power to circuitry thereon, including the “imager device
27.” Neikirk, ¶143. Additionally, this battery provides power to
the second circuit 39 board which, includes a “power supply
circuit.”

Pet. 60 (citing Ex. 1027, 4:44–49, 6:7–10, 6:21–27, Fig. 5). The cited
passages and Figure 5 of Wakabayashi support Petitioner’s contention.
Patent Owner does not argue this limitation. See generally Resp. We find
Wakabayashi teaches this limitation.
1[k] wherein, a largest dimension of said second
circuit board along said second plane is greater
than a largest dimension of said image sensor
along said first plane
Petitioner relies on Wakabayashi for teaching this limitation. Pet. 61–
63 (citing Ex. 1004 (Neikirk Decl.) ¶¶ 145–146). Petitioner points to
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Figures 5 and 7 of Wakabayashi as showing that the largest dimension of
“circuit board 39” is greater than the largest dimension of “circuit board 29.”
Id. The Petition states:
Wakabayashi discloses that the largest dimension of
“circuit board 39” is greater than the largest dimension of “circuit
board 29” because [. . .] the user holds the part of the housing 3
of the camera where circuit board 39 is located in one hand, while
the video camera unit where circuit imaging device 27 and circuit
board 29 are located is “made small” such that it may be
manipulated by a finger and thumb. Neikirk, ¶¶145-146.

Pet. 60 (citing Ex. 1027, Abstract, 3:39–45, 4:58–5:2, 7:20–24, Figs. 5, 7).
The cited passages and Figures 5 and 7 of Wakabayashi support Petitioner’s
contention. Patent Owner does not argue this limitation. See generally
Resp. We find Wakabayashi teaches this limitation.
In summary, including consideration of the evidence of
nonobviousness submitted by Patent Owner, as discussed above, we
determine that Petitioner’s showing that the combination of Wakabayashi
and Ackland teaches all the limitations of claim 1 is sound and well-
supported.
Claim 5
The imaging device of claim 1, wherein said
power supply is a battery.
Petitioner relies on Wakabayashi and its showing with regard to
element 1[j] as discussed above. Pet. 63 (citing Ex. 1004 (Neikirk Decl.)
¶¶ 147–148). Patent Owner does not argue this limitation. See generally
Resp. We find Wakabayashi teaches the power supply is a battery.
Claim 21
Petitioner relies heavily on its showing with regard to claim 1 for
establishing that the combination of Wakabayashi and Ackland teaches or
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54
suggests all the limitations of claim 21. Pet. 63–72 (citing Ex. 1004 (Neikirk
Decl.) ¶¶ 149–185). Claim 21 recites:
21. An imaging device comprising:

a housing;

an image sensor mounted in said housing, said image
sensor including a planar substrate having a length and a width
thereto, wherein said length and width of said planar substrate
define a first plane, said planar substrate including an array of
CMOS pixels thereon, wherein a plurality of CMOS pixels
within said array of 25 CMOS pixels each include an amplifier,
said planar substrate further including timing and control
circuitry thereon, said timing and control circuitry being
coupled to said array of CMOS pixels, said image sensor 26
producing a pre-video signal, wherein the image sensor is
generally square shape along the first plane;

a circuit board mounted in said housing, said circuit
board being electrically coupled to said planar substrate, said
circuit board having a length and a width thereto, wherein said
length and width of said circuit board define a second plane,
said circuit board including circuitry thereon to convert said
pre-video signal to a post-video signal, said circuit board being
offset from said planar substrate, said second plane of said
circuit board being substantially parallel to said first plane of
said planar substrate;

a lens mounted in said housing, said lens being integral
with said imaging device, said lens focusing images on said
array of CMOS pixels of said image sensor;

a video screen, said video screen being electrically
coupled to said circuit board, said video screen receiving said
post-video signal and displaying images from said post-video
signal; and

a power supply mounted in said housing, said power
supply being electrically coupled to said planar substrate to
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provide power to said array of CMOS pixels and said timing
and control circuitry, said power supply also being electrically
coupled to said circuit board to provide power thereto;

wherein a largest dimension of said second circuit board
along said second plane is greater than a largest dimension of
said image sensor along said first plane.

Ex. 1001, 25:18–26:28 (emphasis added). Claim 21 differs from claim 1 in
that the “image sensor” of claim 21 includes a “planar substrate,” whereas
the “image sensor” of claim 1 includes a “first circuit board.” As it relied
upon “imager device 27” as disclosed in Wakabayashi for teaching the “first
circuit board” of claim 1, Petitioner relies on the same “imager device 27” as
teaching the “planar substrate” of claim 21. See Pet. 64–69. Thus,
Petitioner’s and Patent Owner’s arguments are essentially the same as those
discussed above for claim 1, and our analysis is the same, except that
Petitioner now has to account for (1) a planar substrate having a length and a
width defining a first plane and electrically connected to Wakabayashi’s
circuit board 29, (2) the first plane being offset from and substantially
parallel with a second plane defined by the length and width of
Wakabayashi’s circuit board 39, and (3) the battery has to power both the
planar substrate including the array of CMOS pixels and corresponding
timing and control circuitry, and Wakabayashi’s circuit board 39.
Annotated Figure 7 of Wakabayashi appears on page 65 of the
Petition and is reproduced below:
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Patent 9,667,896 B2
56

Annotated Figure 7 of Wakabayashi shows imager device 27, a planar
substrate defining a first plane, and electrically coupled to circuit board 29.
Further, planar substrate is on circuit board 29, and thus the same battery
that powers circuit board 29 powers planar substrate 27 including the array
of CMOS pixels and corresponding timing and control circuitry. See Pet.
70–71.
Regarding the requirement of the first plane being offset from and
substantially parallel with a second plane defined by the length and width of
Wakabayashi’s circuit board 39, Petitioner asserts:
Wakabayashi discloses in Figs. 3 and 7 that the plane
defined by length and width of “circuit board 39” (see [1.g]) is
substantially parallel to the plane defined by the length and width
of “imager device 27.” Wakabayashi further discloses that the
“circuit board 39” is offset from “imager device 27.”

Pet. 68. With regard to battery 45 powering circuit board 39, Petitioner
asserts that Wakabayashi teaches the “battery [is] coupled to ‘circuit board
39’ to power ‘driver circuit’ and to ‘power supply circuit’” that are included
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on circuit board 39. Pet. 71, see also id. at 60 (citing Ex. 1027, 6:7–10).
Patent Owner does not provide counter arguments for these assertions.
Petitioner’s assertions are consistent with and supported by the cited
evidence.
For the foregoing reasons, Petitioner’s showing that the combination
of Wakabayashi and Ackland teaches or suggests all the limitations of claim
21 is sound and well-supported.
III. CONCLUSION12
Having considered the arguments and evidence of the parties, we
determine that Petitioner has established by a preponderance of the evidence
that claims 1, 5, and 21 of the ’896 patent would have been obvious in view
of Wakabayashi and Ackland. The cited references teach all the elements of
these claims and there existed a motivation to combine the cited references
in the manner set forth in the challenged claims. Patent Owner’s arguments
to the contrary are not persuasive. In light of all the arguments and
evidence, we conclude that Petitioner has established that claims 1, 5, and 21
of the ’896 patent are unpatentable.

12 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
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IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1, 5, and 21 of the ’896 patent are
unpatentable.
In summary:

Claims

35
U.S.C. §
Reference(s)/Basis Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1, 5, 21 103 Wakabayashi,
Ackland
1, 5, 21
Overall
Outcome
1, 5, 21
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Patent 9,667,896 B2
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FOR PETITIONER:
Scott A. McKeown
James L. Davis, Jr.
Carolyn Redding
ROPES & GRAY LLP
scott.mckeown@ropesgray.com
james.l.davis@ropesgray.com
carolyn.redding@ropesgray.com

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