Takeaway: When addressing a ground of unpatentability based on a combination of references, a patent owner must address all of the references, not just one of the references.

In its Final Written Decision, the Board found that all challenged claims (1-10) of the ’371 Patent are unpatentable. The ’371 Patent relates to multimedia sensors for use in connection with a digital networked surveillance system, specifically a fully digital camera system capable of providing high resolution still image and/or streaming video signals via a network to a centralized, server-supported security and surveillance system.

The Board began with claim construction, stating that the claim terms are given their broadest reasonable construction in light of the specification. The Board construed two terms.  First, the Board construed “compressor,” adopting Petitioner’s construction based upon the extrinsic definition provided that is consistent with the specification.  The Board rejected Patent Owner’s proposed construction, finding that the two references referred to in Patent Owner’s declaration do not support its position.  The Board then construed the term “digital image data,” which Patent Owner wanted to limit to video data.  The Board rejected this argument finding that “digital image data” as used in the specification is broad enough to cover either still image or video data.

The Board then turned to the first ground of unpatentability – that claims 1-10 are obvious over Bonshihara and Seeley. Petitioner argued that Bonshihara discloses every limitation of claims 1-10 except for certain features, which could be modified in view of Seeley.  Patent Owner first argued that Seeley does not disclose “the transmission of full resolution snapshots and compressed video.”  The Board found this was misplaced because claim 1 does not recite “full resolution snapshots and compressed video” and Patent Owner only attacked Seeley individually even though the ground is based on a combination of Bonshihara and Seeley.  Patent Owner also asserted that one of ordinary skill would not modify Bonshihara to include two transmitted compressed digital image data streams because of bandwidth, but the Board rejected this argument because it found that Bonshihara discloses two transmitted compressed digital image data streams, and Seeley discloses expressly that the relay of two compressed digital image data streams would have been done in a manner that preserves as good a quality as is permissible given a communication channel bandwidth and requisite compression requirements.  The Board also rejected Patent Owner’s arguments that Seeley does not disclose “that video images may be relayed after sending snapshots” and that neither Seeley nor Bonshihara discloses a camera configured for communication with an internet protocol network.

The Board next examined the second ground of unpatentability – that claims 1-10 are obvious over Ely, Seeley, and Fernandez. Patent Owner asserted that for the same reasons that Seeley cannot be combined with Bonshihara, Seeley cannot be combined with Ely. The Board rejected this argument for the same reasons as above.  Patent Owner also asserted that Ely does not disclose “the retrieved selection of the compressed digital image data having a retrieved image resolution . . . .”  The Board again was not persuaded because the ground of unpatentability is based on a combination of Ely and Seeley.  Further, the Board found that one of ordinary skill would have known to modify the two transmissions from camera unit of Ely in the way described in Seeley.

The Board then dismissed Petitioner’s Motion to Exclude Patent Owner’s expert declaration, stating that even without excluding the evidence, it found the claims unpatentable.

Mobotix Corp. v. e-Watch, Inc., IPR2013-00334
Paper 39: Final Written Decision
Dated: October 10, 2014
Patent: 7,733,371
Before: Jameson Lee, Michael W. Kim, and Matthew R. Clements
Written by: Kim