Takeaway: A definition provided in a glossary nearly ten years after the filing date of the patent may still have probative value, and will not be excluded for that reason alone.

In its Final Written Decision, the Board found that Petitioner failed to established by a preponderance of the evidence that claims 1, 18, 35, 36, 39, 44, and 46 of the ’628 patent are unpatentable. The ’628 patent “generally relates to image data collection in general and particularly to an image data collector with coordinated illumination and global shutter control.” Trial was instituted on the following grounds: (1) claims 1, 18, 35, and 46 obvious over Silverbrook, Guidash, and Micron; (2) claims 36 and 39 obvious over Silverbrook, Guidash, Micron, and Hennick; and (3) claim 44 obvious over Silverbrook, Guidash, Micron, and Longacre.

The Board first addressed claim construction, stating that it construed the claim terms “bar code symbols”, “bar code processing module”, “illumination time”, exposure time”, and “frame time” in its Decision on Institution. Because neither party disputed the constructions of “illumination time” and “exposure time”, the Board maintained them, and only further discussed the terms “bar code symbols”, “bar code processing module”, and “frame time”.

Patent Owner disputed the Board’s interpretations of “bar code symbols” and “bar code processing module.” Specifically, Patent Owner argued that the Board’s construction that “bar code symbols” means “printed patterns containing data that can be recovered by laser scanning or image sensing” was too broad. Instead, Patent Owner contended that the construction should be “a particular character, including each of start/stop characters or a finder pattern, quiet zones, data characters and check characters required by a particular bar code symbology that together form a complete scannable entity.” Specifically, during the cross-examination of Petitioner’s expert, Patent Owner showed the expert a copy of a page of text and a copy of the back cover a magazine the includes an advertisement for a watch, and asked him to distinguish those samples from the definition of “bar code symbols” provided by Petitioner and accepted by the Board in the Decision on Institution. The Board agreed based on this testimony and the testimony of Patent Owner’s expert that its original interpretation was too broad, and that Patent Owner’s interpretation was appealing because it effectively imposes constraints that distinguish “bar codes” from other types of “printed patterns containing data.” However, the Board also found problems with Patent Owner’s interpretation. Thus, because neither party provided a construction that the Board found appropriately commensurate with the broadest reasonable interpretation and the decision did not hinge on the precise contours of a construction of “bar code symbols” or “bar code processing module,” the Board decided not to adopt any explicit construction of those terms.

The Board amended its construction of “frame time” in accordance with Petitioner’s contention that the term should be construed as including timing delays, because it was consistent with testimony from Patent Owner’s witnesses.

Petitioner moves to exclude certain paragraphs and exhibits of the Smith Declaration as incomplete under 37 C.F.R. § 42.65 and to exclude Ex. 2020 as irrelevant and hearsay. Specifically, Petitioner argued that paragraphs 31-34 and Exhibits B and C of the Smith Declaration are incomplete because “the testing was not sufficiently explained to permit the Board to meaningfully weigh the evidence,” because the Smith Declaration “fails to disclose the particular hardware and software used to run the tests as required under 37 C.F.R. [§] 42.64[(b)](2) . . . and completely fails to address the Board’s requirement of identifying ‘How the test is regarded in the relevant art.’” Patent Owner responded that Mr. Smith “encoded the Silverbrook pseudo code that describes the Silverbrook image processing algorithm, . . . and provided his complete source code in Exhibit C to his Declaration.” However, the Board was not persuaded that the Declaration was deficient, because the expert explained how he performed the tests, including a complete copy of his source code, and explains the relevance of the tests in the art on the introduction of noise when the algorithm described by Silverbrook is applied to certain types of bar codes. Thus, the Board determined that Petitioner’s arguments go to the weight itshould give Mr. Smith’s testimony, and not admissibility. Accordingly, the Board did not exclude the identified portions of the expert’s testimony.

Exhibit 2020 was a definition of “bar code symbol” provided in the Symbol Technologies glossary, and Petitioner contends that it is hearsay as an out-of-court statement used to prove the meaning of a term at issue and irrelevant because it bears a date nearly ten years after the issue date of the ’628 patent. The Board determined that Petitioner’s arguments regarding the date of the glossary go to the weight that should be afforded to the definition, not to its admissibility, and that the probative value of the glossary in helping evaluate Patent Owner’s expert’s opinion of an appropriate construction of “bar code symbols” substantially outweighs any prejudicial effect of its admission. Thus, the exhibit was not excluded. However, the Board agreed with Petitioner that Patent Owner’s filing of an Internet Archive copy of the glossary from an earlier time was untimely, and thus that exhibit was expunged.

The Board then assessed Patent Owner’s Motion to exclude the entirety of Petitioner’s expert’s declaration testimony. Patent Owner contended that the Declaration is not based on sufficient facts or data, that it is unreliable because it uses “an entirely incorrect legal framework,” and because the expert is not qualified to offer expert testimony in this proceeding. The Board agreed that the transcript of the expert’s deposition raised legitimate questions regarding the reliability of his Declaration, but the Board disagreed with Patent Owner’s argument that “reduction of credibility alone is not an option in this case, and the declaration of Dr. Deppe must be excluded.” Thus, the Board denied Patent Owner’s motion to exclude the Deppe Declaration.

The Board then assessed the grounds of unpatentability. Petitioner argued that Figures 103 and 167 of Silverbrook disclosed the limitations “said illumination period is less than a frame time of said [CMOS based image reader / bar code reading device],” as recited in claims 1 and 35. Specifically, Petitioner argued that the “icapture” signal shown in Fig. 103 and the “capture” signal shown in Figure 167 “serve as reference signals for the ‘flash’ signal” shown in Figure 167. Further, Petition supported its contention that the frame time “is the period between ‘capture’ or ‘icapture’ signals,” with testimony by its expert. The Board had credited that testimony in its Institution Decision, but based on controverting evidence developed during the trial no longer gives that testimony credit. Instead, the Board gives greater weight to Patent Owner’s expert, because (1) the use of different labels, i.e., “capture” versus “icapture,” is at least suggestive that the signals are different; (2) the different shape of the signals with “icapture” having a pyramidal shape and “capture” having a square shape, reinforces the suggestion that they are different signals, and that one of ordinary skill in the art would have viewed them as different signals; and (3) the Board found the testimony of Dr. Deppe had diminished reliability because he was unable to answer several questions at his deposition related to details of Figures 103 and 167. Accordingly, the Board concluded that Petitioner had not established, by a preponderance of the evidence, that Silverbrook discloses “said illumination period is less than a frame time of said [CMOS based image reader / bar code reading device],” as recited in claims 1 and 35, or that Silverbrook discloses “said illumination control timing pulse has a duration of less than a frame time of said SMOS based bar code reading device,” as recited in claims 18, 36, 39, 44, and 46.

Fujian Newland Computer Co., Ltd. v. Hand Held Products, Inc., IPR2013-00595
Paper 52: Final Written Decision
Dated: February 18, 2015
Patent: 7,568,628
Before: Kevin F. Turner, Bryan F. Moore, and Patrick M. Boucher
Written by: Boucher