IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. GoPro, Inc. Petitioner, Contour, LLC Patent Owner

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1 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD GoPro, Inc. Petitioner, v. Contour, LLC Patent Owner U.S. Patent No. 8,896,694 to O Donnell et al. Issue Date: November 25, 2014 Title: Portable Digital Video Camera Configured for Remote Image Acquisition Control and Viewing Inter Partes Review No.: Unassigned Petition for Inter Partes Review of U.S. Patent No. 8,896,694 Mail Stop PATENT BOARD Patent Trial and Appeal Board U.S. Patent and Trademark Office P.O. Box 1450 Alexandria, VA

2 Petition for Inter Partes Review of U.S. Patent No. 8,896,694 TABLE OF CONTENTS Page I. INTRODUCTION... 1 II. OVERVIEW... 1 III. MANDATORY NOTICES (37 C.F.R. 42.8(a)(1))... 5 A. Real parties-in-interest (37 C.F.R. 42.8(b)(1))... 5 B. Related matters (37 C.F.R. 42.8(b)(2))... 5 C. Designation of Lead and Back-up Counsel (37 C.F.R. 42.8(b)(3))... 6 D. Notice of Service Information (37 C.F.R. 42.8(b)(4))... 6 IV. GROUNDS FOR STANDING (37 C.F.R (a))... 6 V. RELIEF REQUESTED (37 C.F.R (a)(1))... 7 VI. REASONS FOR THE REQUESTED RELIEF (37 C.F.R (a)(1))... 7 A. Summary of the 694 Patent... 7 B. Prosecution History C. Claim Construction Camera Scene to be recorded Record D. Priority Date of the Challenged Claims E. Person of Ordinary Skill in the Art and the Scope and Content of the Prior Art F. State of the Art i

3 Petition for Inter Partes Review of U.S. Patent No. 8,896,694 VII. IDENTIFICATION OF CHALLENGES A. Challenged Claims B. Statutory Grounds for Challenges VIII. THE CHALLENGED CLAIMS ARE NOT PATENTABLE A. Challenge 1: Claims 1-13, and Are Unpatentable over Boland in View of the GoPro Catalog Boland GoPro Catalog Claim 1: [1.0] A point of view digital video camera system, comprising: [1.1] an integrated hands-free portable viewfinderless video camera, the video camera including [1.1.1] a lens and [1.1.2] an image sensor, [1.1.3] the image sensor capturing light propagating through the lens and representing a scene to be recorded, and [1.1.4] the image sensor producing real time video image data of the scene without displaying the scene to a user of the video camera, [1.1.5] wherein the real time video image data of the scene relates to an activity in which the user of the video camera is about to engage, the video camera comprising [1.2] a camera processor for receiving the video image data directly or indirectly from the image sensor, and [1.3] a wireless connection protocol device operatively connected to the camera processor to [1.3.1] send real time video image content by wireless transmission directly to and [1.3.2] receive control signals or data signals by wireless transmission directly from [1.3.3] a wireless connection-enabled controller, [1.4] wherein the camera processor is configured to [1.4.1] generate the video image content simultaneously at a first resolution and at a second resolution, the video image content at the first resolution and the second resolution corresponding to the video image ii

4 Petition for Inter Partes Review of U.S. Patent No. 8,896,694 data representing the scene to be recorded, wherein the first resolution is lower than the second resolution, [1.4.2] stream the real time video image content at the first resolution using the wireless connection protocol device to the wireless connectionenabled controller without displaying the video image content at the video camera, [1.4.3] receive the control signals for adjusting image capture settings of the video camera, [1.4.4] adjust the image capture settings of the video camera prior to recording the scene, and [1.4.5] in response to a record command, cause the video image content at the second resolution to be stored at the video camera; [1.5] a mounting interface coupled to the video camera; [1.6] a mount configured to be mounted to the body, a garment, or a vehicle of the user of the video camera, [1.6.1] the mount configured to receive the mounting interface for rotatably mounting the camera on the body, the garment, or the vehicle of the user of the video camera, [1.6.2] the mounting interface and the mount further configured for manual adjustment of the video camera with respect to the user of the video camera; and [1.7] the wireless connection-enabled controller for controlling the video camera, the controller comprising executable instructions for execution on a personal portable computing device operable by a user of the personal portable computing device, wherein when executed, the executable instructions cause the personal portable computing device to [1.7.1] receive video image content at the first resolution directly from the video camera, [1.7.2] display the video image content at the first resolution on a display of the portable computing device for adjustment of the image capture settings prior to the user of the video camera recording the activity, [ ] the video image content at the first resolution comprising a preview image of the scene which is not recorded on the camera or the personal portable computing device, [ ] the preview image iii

5 Petition for Inter Partes Review of U.S. Patent No. 8,896,694 allowing the user of the video camera to manually adjust an angle of the video camera with respect to the user of the video camera, and [1.7.3] generate the control signals to the wireless connection protocol device on the video camera to allow the user of the personal portable computing device to remotely adjust the image capture settings prior to the video camera recording the activity, wherein the control signals comprise [ ] at least one of frame alignment, multi-camera synchronization, remote file access, data acquisition, and resolution setting adjustment and [ ] at least one of lighting setting adjustment, audio setting adjustment, and color setting adjustment Claim Claim Claim Claim Claim Claim Claim Claim Claim Claim Claim Claim Claim Claim Claim Claim iv

6 Petition for Inter Partes Review of U.S. Patent No. 8,896,694 Claim B. Challenge 2: Claims 14 and 17 Are Unpatentable over Boland in View of the GoPro Catalog and Ueyama Ueyama Claim Claim IX. Conclusion v

7 Petition for Inter Partes Review of U.S. Patent No. 8,896,694 TABLE OF AUTHORITIES Page(s) STATUTES 35 U.S.C , U.S.C , 7, 24-25, U.S.C U.S.C. 311 et seq Section 3(n)(1) of the Leahy-Smith American Invents Act. Pub. L , 3(n)(1), Sept. 16, 2011, 125 Stat OTHER AUTHORITIES 37 C.F.R et seq C.F.R. 42.8(a)(1) C.F.R. 42.8(b)(1) C.F.R. 42.8(b)(2) C.F.R. 42.8(b)(3) C.F.R. 42.8(b)(4) C.F.R (a)(1) C.F.R (b) C.F.R (a)(2) C.F.R (a) C.F.R , 7 MPEP , 41, 45 MPEP vi

8 Petition for Inter Partes Review of U.S. Patent No. 8,896,694 PETITIONER S EXHIBIT LIST Exhibit No. GOPRO-1001 GOPRO-1002 GOPRO-1003 GOPRO-1004 Description U.S. Patent No. 8,890,954 ( the 954 Patent ) U.S. Patent No. 8,896,694 ( the 694 Patent ) File History of the 954 Patent File History of the 694 Patent GOPRO-1005 U.S. Prov. Pat. App. No. 61/382,404 GOPRO-1006 GOPRO-1007 GOPRO-1008 International App. No. PCT/US2011/ ( the 418 PCT ) Declaration of Petitioner s Expert, Kendyl A. Román ( Román ) Curriculum Vitae of Román GOPRO-1009 International PCT Pub. No. WO 2009/ A1 ( the 391 PCT Pub. ) GOPRO-1010 GOPRO-1011 GOPRO-1012 GOPRO-1013 GOPRO-1014 GOPRO-1015 GOPRO-1016 GOPRO-1017 U.S. Pub. Pat. App. No. 2010/ ( Boland ) GoPro July 2009 Sales Catalog ( GoPro Catalog ) Declaration of Damon Jones regarding GoPro Catalog U.S. Patent No. 7,362,352 ( Ueyama ) Sony Handycam Handbook HDR XR520VE ( Camcorder Manual ) U.S. Pub. Pat. App. No. 2007/ ( Román Publication ) U.S. Patent No. 7,257,158 ( Figueredo ) U.S. Patent No. 8,199,251 ( Woodman ) GOPRO-1018 U.S. Prov. Pat. App. No. 61/112,666 GOPRO-1019 Table of Related Applications vii

9 Petition for Inter Partes Review of U.S. Patent No. 8,896,694 I. INTRODUCTION Pursuant to 35 U.S.C. 311 et seq. and 37 C.F.R et seq., Petitioner files the instant Petition for Inter Partes Review of U.S. Patent No. 8,896,694 ( the 694 Patent ). Petitioner respectfully submits that all 20 claims of the 694 Patent ( the Challenged Claims ) are unpatentable under 35 U.S.C. 103 over the prior art and that there is a reasonable likelihood that Petitioner will prevail pursuant to 37 C.F.R Accordingly, it is respectfully requested that the Board institute inter partes review. II. OVERVIEW The Challenged Claims of the 694 Patent are unpatentable as obvious over the prior art. The claims are directed to a compilation of conventional features that were well-known in the art of point of view ( POV ) wireless cameras, such as those popularly used in action sports. Choosing from a finite number of identified, predictable solutions with a reasonable expectation of success is not invention, but rather an obvious combination of known features. The specification of the 694 Patent provides little insight as to why the claimed combination contains a patentable distinction over the prior art. The specification does not elaborate or describe any new technological problems or solutions related to the combination claimed, nor that the combination resulted in unexpected results, or otherwise constituted something new and inventive over 1

10 prior art wireless POV cameras. For example, the 694 Patent has a Summary of the Disclosure section that lists various features to set the invention apart from the prior art, including particular GPS technology, a specific GPS antenna improvement, a signal security feature, a laser alignment system, and a rotatable image-capture horizon feature but none of those features are found in the issued claims. Instead, the claims morphed during prosecution into a different set of features in an attempt to distinguish specific prior art references identified by the Examiner. It appears as though the 694 Patent issued simply because the applicant added whatever limitations it could in reaction to the cited art, without regard to whether the features, alone or in combination, contained something patentable. They do not. In fact, the Examiner identified each of the claimed features in the cited prior art, but acquiesced to the applicant, observing that there was no strong motivation to combine, which is not the appropriate standard. In this Petition, virtually all of the claimed features are taught by the primary reference, Boland, and any modification is fully supported by well-founded motivations to combine with the other cited reference. As late as 2014, the Patent Owner heavily amended the claims to limit them inter alia to: (1) a POV video camera for capturing video of a scene, (2) a controller in wireless communication with the camera, and (3) wherein the controller is able to wirelessly receive and preview a lower quality image of the 2

11 scene to allow the user to adjust camera settings and position prior to the user starting a recording. This claimed selection of such conventional features, however, is nothing more than combining known prior art features according to known methods to achieve predictable results. For example, Petitioner s own prior art disclosed the use of remote wireless controllers for previewing and controlling Petitioner s POV cameras as early as Further, previewing and making adjustments to camera capture settings prior to recording is the conventional and intuitive approach, widely supported by conventional camcorders. As to using lower quality video for previewing, conventional camcorders commonly generate a low resolution version of video, for example, to facilitate navigating the much larger data of the main, high resolution video. Streaming low resolution video to the wireless controller for the preview is a natural choice, given bandwidth restrictions of wireless protocols like Bluetooth and data processing restrictions and small screen sizes of many smartphone-based wireless controllers. As detailed more fully herein, the claimed limitations of the independent claims are fully described in the following prior art, which was not before the Examiner: 1. Boland (Ex. 1010) teaches a POV camera that generates and transmits video in multiple resolutions and wirelessly communicates with a remote controller to control the video parameters of how a scene is recorded. The following figures 3

12 from Boland have been annotated to identify relevant features of the Challenged Claims: POV Camera Wireless Controllerr 2. Petitioner s own GoPro Catalog (Ex. 1011) discloses a POV camera that can record in multiple resolutions and wirelessly communicates with a remote controller to control the parameters of how a scene is recorded, including the ability to preview streaming video of the scene prior to recording it: Preview Screen Ex. 1011, 2. POV Camera Wireless Controller Id. at 15. 4

13 The GoPro Catalog describes a POV wireless camera suitable for use with extreme sports (e.g., including mounts for bicycles, motorcycles, snow mobiles, etc.) with a wireless controller having a screen to provide the functionality of previewing a scene before recording in order to allow the appropriate adjustment of the recording parameters, e.g., With a 30 / 10m range and the ability to wirelessly transmit a preview image of your photo or video before you start recording, the wireless remote opens up a world of filming opportunities and convenience. Ex. 1011, 15. III. MANDATORY NOTICES (37 C.F.R. 42.8(a)(1)) A. Real parties-in-interest (37 C.F.R. 42.8(b)(1)) The real party-in-interest in this Petition is GoPro, Inc. B. Related matters (37 C.F.R. 42.8(b)(2)) As of the filing date of this Petition and to the best knowledge of the Petitioner, Petitioner identifies the following judicial and administrative matters that could affect, or be affected by, a decision pertaining to this petition. (1) Contour, LLC v. GoPro, Inc., et al., D. Utah Case No.: 14-cv-864-PMW, in which GoPro was first added as a defendant on January 5, (2) Petition for Inter Partes Review of U.S. Pat. No. 8,890,954 (Case No. Unassigned) ( the 954 Patent, Ex. 1001), filed simultaneously with this Petition and challenging the patentability of all claims in the parent to the 694 Patent. (3) The pending examination of U.S. Patent Application No. 14/496,915, 5

14 which is a continuation of the 694 Patent. See Ex ( Table of Related Applications ). C. Designation of Lead and Back-up Counsel (37 C.F.R. 42.8(b)(3)) Lead Counsel: Patrick D. McPherson, USPTO Reg. No. 46,255 DUANE MORRIS LLP, 505 9th St. NW, Ste. 1000, Washington, D.C P: (202) ; F: (202) ; PDMcPherson@duanemorris.com Back-Up Counsel: David T. Xue, Ph.D., USPTO Reg. No. 54,554 DUANE MORRIS LLP, 2475 Hanover St., Palo Alto, CA P: (650) ; F: (650) ; DTXue@duanemorris.com D. Notice of Service Information (37 C.F.R. 42.8(b)(4)) Please direct all correspondence to lead and back-up counsel at the above addresses. Petitioner consents to electronic service at the addresses above. IV. GROUNDS FOR STANDING (37 C.F.R (a)) Petitioner certifies that the 694 Patent is available for inter partes review and that Petitioner is not barred or estopped from requesting an inter partes review challenging the claims on the grounds herein. Although the 694 Patent issued less than 9 months ago, inter partes review is available because the 694 Patent is not a first to file patent under Section 3(n)(1) of the Leahy-Smith American Invents Act ( AIA ). Pub. L , 3(n)(1), Sept. 16, 2011, 125 Stat More specifically, the 694 Patent is a continuation of the 954 Patent (Ex. 1001), which is itself a national stage application of PCT/US2011/ ( the 418 PCT, 6

15 Ex. 1006), filed on September 13, The 694 Patent claims priority to, shares a common disclosure with, and was filed with the same claims as, the 418 PCT. Thus, it is not a first to file patent (see MPEP ) and inter partes review is available under 37 C.F.R (a)(2). Likewise, pre-aia versions of 35 U.S.C. 102, 103 and 112 govern and are cited herein. V. RELIEF REQUESTED (37 C.F.R (a)(1)) Petitioner respectfully requests institution of an inter partes review pursuant to 37 C.F.R and cancellation of all claims of the 694 Patent. VI. REASONS FOR THE REQUESTED RELIEF (37 C.F.R (a)(1)) As explained below and in the attached Declaration of Petitioner s Expert, Kendyl A. Román, ( Román, Ex. 1007), the camera systems described and claimed in the 694 Patent are obvious over the prior art. As detailed in Sections VII-VIII, this Petition and Román explain where each element is found in the prior art and why each of the Challenged Claims would have been obvious to a person of ordinary skill in the art ( POSA ) at the time of the invention. A. Summary of the 694 Patent The 694 Patent is generally related to a video camera or camcorder that is configured for remote image acquisition control and viewing. Ex. 1002, 1:17-20; Ex. 1007, 46. The 694 Patent acknowledges that portable, wireless, POV digital video cameras were known in the prior art. Ex. 1002, 1: Indeed, Figures 1 7

16 to 19 of the 694 Patent, including the admitted prior art of Figures 1 and 2, were already published in the Patent Owner s WO 2009/ A1 ( the 391 PCT Pub., Ex. 1009) more than one year before the priority date claimed in the 694 Patent. Compare Ex with Ex Thus, each of the first 19 figures of the instant patent and the associated text is Patent Owner s generated prior art. See id. Although the applicant disclosed later published versions of the disclosure in the 391 PCT Pub., it did not disclose the PCT publication, which was the version that was available as prior art under 35 U.S.C. 102(b). See, e.g., Ex. 1004, 26. The specification of the 694 Patent lists various features to set it apart from the prior art, but they are not in the claims as issued. For example, the Summary of the Disclosure section characterizes the disclosed POV camera as including specific product features, including: a) global positioning system (GPS) technology (Ex at 1:57) including a GPS receiver integrated in the video camera (id. at 1:67-2:2) and having higher [GPS] antenna gain (id. at 2:15-21); b) multi- angle and three-dimensional video (id. at 1:64-67); c) a separate signal security module (id. at 2:22-28); d) camera portions rotatable relative to the camera housing for electrically or mechanically rotating the camera s horizontal image plane (id. at 2:28-32, 48-53); 8

17 e) a laser alignment system (id. at 2:54-59); f) a microphone and manually operable switch for audio and video (id. at 2:60-65); and g) a quick release mechanism used in conjunction with the laser alignment system. (id. at 2:66-3:2.) None of these features which the applicant highlighted in distinguishing the prior art are recited in the Challenged Claims. Instead, the Challenged Claims are generally directed to conventional design features commonly contained in prior art wireless POV cameras. Aspects of the preferred embodiments that generally correspond to features in the Challenged Claims are discussed below. The POV digital camera system includes camera 10 and wireless controller 510, which is shown running on an Apple iphone : Ex. 1002, Figs. 4A and 38, 20:29-40; Ex. 1007, 48. Camera 10 is portable, wearable, and does not have a screen or other viewfinder, but relies on screen 532 9

18 of the wireless controller for the viewfinder function. Ex. 1002, 16:41-51, 20:31-36; Ex. 1007, 48. The digital video camera 10 has a mounting interface that is configured to attach to a mount, which can be rotatably mounted on a user, a garment, or a vehicle. Ex. 1007, 49. For example, as annotated below, Fig. 3A shows a mounting interface having housing rail cavities 122 shaped to engage the rails 136 of the mount of Fig. 18: Mount Mounting Interface Digital video camera 10 further has a lens 26 and an image sensor 18, wherein the image sensor 18 captures light (annotated in orange) travelling through the lens and generates an electrical signal that is video image data (annotated in green), based on the light incident on the sensor: 10

19 Lens 26 Image Sensor 18 Light Video Image Dataa Ex. 1002, Fig. 7 (annotations added), 6:6-19 (describing lens), 26:39-41 (referencing video data produced by image sensor 18); Ex. 1007, 50. The video image data is sent to a processor 500 on the camera. Ex. 1002, 26:39-41, Fig. 30, Fig. 40; Ex. 1007, 51. The camera processor then generates video image content (annotated in blue) from the video image data (annotated in green): Camera Processor 500 Video Image Data Video Image Content Ex. 1002, Fig. 30, 26:39-41; Ex. 1007, 51. Thee digital video camera 10 is configured to communicate wirelessly via, e.g., Bluetooth Module 400, with a 11

20 viewer/controller 510, which is disclosed as application software running on a smartphone, such as an iphone. Ex. 1002, 20:31-40; Ex. 1007, 52. In some embodiments, a user is able to preview images on the viewer/controller 510 and alter video settings, such as lighting and color, using wireless control signals from the viewer/controller 510: Ex. 1002, Fig. 34, 22:35-23:27; Ex. 1007, 53. The user is also able to wirelessly start and stop recording on the digital video camera 10. Ex. 1002, 25:10-25; Ex. 1007, 54. The 694 Patent references briefly: Alternative implementations of a remote viewer include one or more of reduced resolution or frame rate.... Reduced resolution or frame rate entails recording video in two 12

21 formats, high quality and low quality, in which the lower quality file is streamed or played back after the recorded action has taken place. For streaming implementation, wireless connection bandwidth can be monitored to adapt to the available bandwidth, the resolution, bit rate, and frame rate on the secondary recording. Ex. 1002, 20:9-18. The 694 Patent specification does not elaborate or describe any new technological problems or solutions related to any of these features, nor that their implementation resulted in unexpected results, or otherwise constitute something new and inventive over prior art wireless POV cameras. Ex. 1007, 55. B. Prosecution History On September 13, 2010, the applicant filed provisional application number 61/382,404 ( the 404 Provisional, Ex. 1005). Ex. 1002, 1:7-12. The 404 Provisional concluded with a Claim Outline that recites many of the features set forth in the Summary of the Disclosure section of the 694 Patent, discussed above. Ex. 1005, 33. For example, claim 1 in the Claim Outline required the camera to include GPS technology. Id. On September 13, 2011, the applicant filed the 418 PCT (Ex. 1006), claiming priority to the 404 Provisional. The 418 PCT entered the United States as a national stage application in 2013 (which ultimately issued as the 954 Patent). 13

22 On May 2, 2014, while the application for the 954 Patent was pending examination, the applicant filed the instant continuation application for the 694 Patent. Ex. 1004, The applicant re-filed claims (1-13) from the 418 PCT (Ex. 1006), the broadest of which were generally directed to the basic structure of a POV camera in wireless communication with a remote controller for transmitting image content to the controller and receiving control signals from the controller. Ex. 1004, On May 12, 2014, the applicant filed a preliminary amendment canceling all of those claims (1-13) and presenting new claims (14-33), which were significantly narrower than the cancelled claims. Id. at For example, the first independent claim in the new set required capturing light of a scene to be recorded, adjusting image capture settings... prior to recording the scene and streaming video to a display of the controller prior to the video camera recording the scene. Id. Then, during a series of interviews in June and July, 2014, the applicant demonstrated one of its commercial products to the USPTO and discussed further claim amendments to gain patentability of its then pending claims. Id. at Ultimately, the applicant agreed to heavily amend the claims in an attempt to overcome the prior art identified by the Examiner. Id. at For example, the Applicant agreed to limit its claims to additional features, such as requiring a camera processor that generates two different qualities of video image content and 14

23 streams the lower quality version to the wireless controller prior to recording. Id. at 80. In the Examiner s Reason s for Allowance, the Examiner mapped all features of the independent claims of the 694 Patent onto a combination of five prior art references, but then allowed the claims, stating Features of [the three independent claims] are found or suggested in different prior arts as shown above, However [sic], in consideration as whole there is no strong motivation or reasoning at the time of the invention to combine the entire prior art references to arrive at the claimed invention. Id. at However, as described above, the specification does not elaborate on these features, present any technological solution as to how to implement them, set forth any unexpected results or criticality, or provide any other indication that the particular list of newly claimed features amounts to anything more than a simple and predictable design choice from among a finite number of known options for implementing a solution. Ex. 1007, 55. C. Claim Construction Under 37 C.F.R (b), the patent claims are to be given their broadest reasonable interpretation in light of the specification. Consistent with this standard, a proposed interpretation for certain claim terms is provided below. Any claim term not described below therefore is entitled to its broadest reasonable interpretation, which Petitioner does not believe impacts the invalidity analysis 15

24 described herein. It is noted that this interpretation is applicable to the Inter Partes Review sought herein only and should not be construed as constituting, in whole or in part, the Petitioner s own interpretation of any claims for any other purposes, including any litigation. Accordingly, Petitioner expressly reserves the right to present an interpretation of a claim term in other proceedings, which is different, in whole or in part, of that presented in this Petition. 1. Camera The term camera is expressly recited in all of the claims. The 694 Patent specification defines the term camera as: For purposes of this description, the term camera is intended to cover camcorder(s) as well as camera(s). Ex. 1002, 5:47-49; see also 1: Therefore, a Person of Ordinary Skill in the Art ( POSA ) would understand the term camera to mean a camera or camcorder. Ex. 1007, Scene to be recorded This term is expressly recited in Claims 1 and 11. Both claims 1 and 11 refer to light passing through the lens of the camera and representing a scene to be recorded. See, e.g., claim 1, phrase [1.1.3]; see also, claim 11, phrase [11.0] and [11.3.2]. The claims then refer to the image sensor producing real time video image data. See, e.g., [1.1.4]; see also [11.3.3]. A POSA understands that the video image data is generated from the captured light of the scene to be recorded. 16

25 Ex. 1007, 92. The camera processor then generates video image content... corresponding to the video image data representing the scene to be recorded. See, e.g., [1.4.1]; see also [11.6]. The video image content is then used to adjust image capture settings prior to recording the scene. See, e.g., [ ]; see also [ ]. A POSA understands from the claim language that a scene to be recorded means a scene viewed by the camera prior to recording. Id. at Record This term is expressly recited in Claims 1, 3, 11, 15 and 18. For the reasons described below, a POSA understands this term to mean store in response to a record command. Id. at The language of the claims is instructive. In claim 1 of the 694 Patent, limitation [1.4.5] requires a camera processor configured to... in response to a record command, cause the video image content at the second resolution to be stored at the video camera. This is consistent with the usage in the specification, which refers to recording in the sense of storing in response to a record command. See, e.g., Ex. 1002, 25:12-14 ( The user wanting to start a recording session taps the Start Record actuator to transmit to Bluetooth -enabled Cameras 1 and 2 a Start Recording command signal. ). This is also consistent with a POSA s customary use of the term recording, in which the term does not refer to temporary storage in a buffer or the like. Id. at 97. For example, Ueyama uses this 17

26 terminology in its disclosure in which high resolution images temporarily stored in a buffer are not referred to as recorded. Ex. 1013, 10:16-44; Ex. 1007, 97. D. Priority Date of the Challenged Claims The 694 Patent was filed on May 2, 2014 as a continuation of the 954 Patent (Ex. 1001), which was a national phase application of the 418 PCT (Ex. 1006) filed September 13, Ex. 1002, 1:7-12. The 694 Patent claims priority benefit to provisional application number 61/382,404 (Ex. 1005), filed September 13, Ex. 1002, 1:7-12. Patent Owner claims that the effective filing date of the claims of the 694 Patent is September 13, By accepting Patent Owner s claim for purposes of this Petition only, Petitioner does not concede that September 13, 2010 is in fact the effective filing date. Petitioner, therefore, reserves all rights to challenge Patent Owner s claim in other proceedings. E. Person of Ordinary Skill in the Art and the Scope and Content of the Prior Art A POSA is a hypothetical person who is presumed to be aware of all pertinent prior art, thinks along conventional wisdom in the art, and is a person of ordinary creativity. With respect to the 694 Patent, a POSA in the September 13, 2010 timeframe would have had a computer science or electrical engineering education and experience in the field of digital video cameras, and knowledge of the scientific literature concerning the same. The education and experience levels may vary between persons of ordinary skill, with some persons holding a basic 18

27 Bachelor s degree with three years of relevant work experience, and others holding a Masters or Ph.D. but having one to two years of experience. Ex. 1007, 37. F. State of the Art The following section describes the state of the art in portable digital video cameras as of the effective filing date, September 2010 (see VI(D), supra). Id. at 5, The prior art references discussed in this section are not relied on by Petitioner as a grounds for invalidity. Instead these prior art references and discussions of what was known to a POSA provide a general description of the state of the art at the time of the invention, provide additional motivation to combine the primary references of Boland, the GoPro Catalog and Ueyama, and provide support for why a POSA would have a reasonable expectation of success in combining the teachings of the references. These additional prior art references are exemplary in nature, relied upon by Román and are properly included to provide factual support for his opinions and can be properly considered by the Board to show the general state of the art, to identify motivation to combine the teachings of the primary references, to support reasonable expectation of success, to rebut any claims of unpredictability in the art, and to rebut any claims of unexpected results. As of September 2010, the state of the art pertinent to the 694 Patent included portable, wireless, POV digital video cameras. Id. at 56. For example, 19

28 the 694 Patent describes that portable, wireless, POV digital video cameras were known in the prior art. Ex. 1002, 1:40-49, Figs. 1E, 2A, 2B. As a further example, wireless preview and control of a POV camera is described in Petitioner s own prior art patent U.S. 8,199,251 ( Woodman ), which was published in March 2010 and claims priority to July 2008 over two years prior to the earliest priority date of the 694 Patent. Ex. 1017, 1:6-10; Ex. 1007, 74. Woodman describes a wireless POV digital camera for use during fast paced physical activities. Ex. 1017, 1:19-62; Ex. 1007, 74. This wireless camera uses Bluetooth technology to communicate with a remote preview screen. Ex. 1017, 7:10-19, Fig. 6; Ex. 1007, 74. The camera transmits image information to the remote preview screen of the scene to be recorded, which assists the user in aligning the camera for a shot. Ex. 1017, 7:20-22, 7:5-10; Ex. 1007, 74. The remote preview screen has control buttons to control various camera operations from the remote preview screen using the wireless link. Ex. 1017, 7:20-27; Ex. 1007, 74. It was also known at the time of the invention to generate video image content in high and low resolution simultaneously. Ex. 1007, 75. For example, the Camcorder Manual (Ex. 1014) discloses a handheld digital video camera that creates a low resolution, low frame rate version of every high resolution video. Ex. 1007, 75. Further, the Camcorder Manual describes: Reduced-size images which enable you to view many images at the same time on an index screen called 20

29 thumbnails. Ex. 1014, 57. The purpose for creating high resolution video images simultaneously is that while the high resolution video image provides a better viewing experience it also requires much more data. Ex. 1007, 75. On the other hand, the low resolution images require much less data which makes it easier to manipulate and navigate through (than the high resolution data) for the purpose of previewing a scene to be recorded or for providing a lower quality index image reel for subsequently navigating higher quality video. Ex. 1007, 75. For example, the Camcorder Manual describes the conventional, widespread technique of using a video file comprising low resolution thumbnails used to find a scene to be played back in high resolution: Movies can be dividedd by a set time and the first scene of each division is displayedd on the index screen. You can start playing back a movie from the selected thumbnail. Ex. 1014, 45; Ex. 1007, 75. At the time of the invention, a commonly known design constraint when generating and using high and low resolution video image content with a camera 21

30 having a remote preview screen was that there were multiple restrictions on the ability and efficiency of using and transmitting the large amounts of data associated with high resolution video. Ex. 1007, 76. In addition to data processing limitations and small screen sizes of many smartphones at the time of the invention, the wireless technology, typically Bluetooth, for transmitting data between the camera and the remote preview screen was bandwidth limited. Id. at 76. A POSA understood that bandwidth restrictions of Bluetooth would sometimes dictate a lower level of resolution for transmitted video data. Id. It was widely known that a lower frame rate and/or resolution would permit streaming over a bandwidth limited wireless link, and further that such parameters could be changed dynamically depending on congestion on the link. Id. For example, the Román Publication (Ex. 1015) disclosed a digital video camera 2030, 2010 wirelessly transmitting video image content for viewing on a remote wireless controller See, e.g., Ex. 1015, Fig. 20B. Figueredo (Ex. 1016) which is related to and incorporated by reference into the Román Publication (Ex. 1015, [0004]) discloses providing preview video image content in low resolution, and providing different resolutions simultaneously to different remote preview screens, where the resolution of the video image content is based on the available bandwidth for the receiver. Ex. 1016, 8:4-6 ( The transmitter 201 is capable of simultaneously transmitting the data stream of video images to multiple receivers 22

31 206. ), 6:17-21 ( Thus, a user interfacing with one of the plurality of receivers 206 is able to modify the frame size, frame rate, compression algorithm, and other parameters of the incoming stream of video images to one of the plurality of receivers 206. ); Ex. 1007, 77. Figueredo, for example, explained: Further, if network congestion prevents medical quality at the current settings, the physician can change the settings (e.g., compression method, area of image, frame rate, contrast, etc.) until medical quality transmission can be achieved and maintained. If medical quality live transmission cannot be achieved in a given circumstance, e.g., over a 56K bit per second modem connection, the remote physician can still remotely direct the selection of the image (e.g., with a setting of one frame per second) and remotely start and stop the recorder, and then later download the recorded video. Ex. 1016, 7: As shown by this example, the common sense solution of transmitting lower resolution or frame rate video image content in a wireless environment of restricted bandwidth was well known. Ex. 1007, 77. Thus, at the time of the invention of 694 Patent, the state of the art was fairly well-developed including the use of a portable wireless camera communicating with a remote preview screen, generating video images simultaneously in high and low resolution, providing low resolution video image content wirelessly to the remote preview screen for the purpose of previewing a 23

32 screen prior to recording, and adjusting the video parameters of the camera from the remote preview screen. VII. IDENTIFICATION OF CHALLENGES A. Challenged Claims All 20 claims of the 694 Patent are challenged in this Petition. B. Statutory Grounds for Challenges Challenge 1: Claims 1-13, and are obvious under 35 U.S.C. 103 over U.S. Pub. Pat. App. No. 2010/ ( Boland ) (Ex. 1010) in view of the GoPro Sales Catalog ( GoPro Catalog ) (Ex. 1011). Boland was published on May 13, 2010 from an application filed on Nov. 5, 2009 and claims priority to U.S. Prov. App. No. 61/112,666 filed Nov. 7, 2008 (Ex. 1018). Ex. 1010, [0001]. Boland is prior art at least under 35 U.S.C. 102(e). Boland was not cited or applied by the Examiner during the prosecution of the 694 Patent. The GoPro Catalog was distributed publicly at least as early as July 2009, when GoPro attended the 2009 Tucker Rocky Dealer Show and handed the GoPro Catalog to potential customers. Ex. 1012, Thus, it is a printed publication at least as early as July 2009, and is therefore available as prior art under 35 U.S.C. 102(b). The GoPro Catalog was not cited or applied by the Examiner during the prosecution of the 694 Patent. 24

33 Challenge 2: Claims 14 and 17 are obvious under 35 U.S.C. 103 over Boland in view of the GoPro Catalog and further in view of U.S. 7,362,352 ( Ueyama ) (Ex. 1013). Ueyama was published more than one year prior to the earliest priority date of the 694 Patent. Thus, it is available as prior art at least under 35 U.S.C. 102(b). Ueyama was not cited or applied by the Examiner during the prosecution of the 694 Patent. VIII. THE CHALLENGED CLAIMS ARE NOT PATENTABLE A. Challenge 1: Claims 1-13, and Are Unpatentable over Boland in View of the GoPro Catalog Claims 1-13, and are rendered obvious under 35 U.S.C. 103 by Boland (Ex. 1010) in view of the GoPro Catalog (Ex. 1011). See Ex. 1007, As shown below, each of the limitations of these claims are taught by these references and any potential distinction that may be argued by the Patent Owner would have been obvious. Id. at Boland Boland is a published patent application titled Video Recording Camera Headset, filed on Nov. 5, See Ex. 1010, 1. As set forth in the overview above, II, Boland discloses a POV wireless digital video camera system including: (1) a POV video camera for capturing video of a scene; (2) a controller in wireless communication with the camera; and (3) the controller able to preview the scene to allow the user to adjust settings and position prior to recording. 25

34 Ex Boland describes the use of conventional wireless technology to establish a communication path between the video camera and a controller for communicating control signals and audio and video files. Ex. 1010, Fig. 1 and 3A (annotated in II, supra); Ex. 1007, 100. Boland also describes the existing practice of providing a low resolution video file to the controller as a preview. Ex. 1007, 100. As described in Boland, and shown below, POV camera 100 has a lens 105 and an image sensor 205, which is a charge coupled device (CCD) or CMOS image sensor. Ex. 1010, [0054]. The image sensor 205 captures light (annotated in orange) travelling through the lens and generates an electrical signal that is video image data (annotated in green): Camera Processor 210 Video Image Data Image Sensor 205 Lens 105 Light Video Image Content 26

35 Ex. 1010, Fig. 2A; Ex. 1007, 101. The camera processor 210 generates the video image content (annotated in blue) and sends it to radio 240 for wireless transmission to wireless controller 201. Id. Boland s processor is described as having a CODEC, such as an MPEG 4 CODEC for generating compressed video. Ex. 1010, [0045]. Boland s Radio 240 is disclosed as having a low data rate (bandwidth) in Bluetooth compliant embodiments. Id. at [0043]. Boland also describes camera processor 201 generating multiple video streams at different resolutions simultaneously by processing each stream sequentially on a frame-by-frame basis. Id. at Fig. 2C, [0057]; Ex. 1007, GoPro Catalog Like Boland, the GoPro Catalog discloses a hands-free, portable, wireless, viewfinderless video camera. See, e.g., Ex. 1011, 2-3; Ex. 1007, 105. The GoPro Catalog is in the same field as Boland. The camera described in the GoPro Catalog is a POV digital video camera system having a wireless remote with a preview screen. See, e.g., Ex. 1011, 2 (illustrating camera mounted for POV), 6 (digital: see, e.g., CMOS, Mbit/s, 32GB SD card), 15 (wireless remote control); Ex. 1007, 105. Like Boland, the GoPro Catalog further discloses a built-in RF transceiver (Ex. 1011, 6) that transmits preview video to, and receives control signals from, a wireless remote control as claimed. See, e.g., Ex. 1011, 6, 15 (referring to remote control, showing screen, and describing 27

36 transmit a preview image of your... video before you start recording ); Ex. 1007, 105. The GoPro Catalog describes a full line of mounts usable in different environments and explicitly discloses the claimed mounting between the camera and user. Id. at 2, 3, The GoPro Catalog explicitly teaches previewing prior to recording. Ex. 1011, 15; Ex. 1007, 106. The following analysis shows where each of the elements of Claims 1-13, and are taught by Boland in view of the GoPro Catalog: Claim 1: [1.0] A point of view digital video camera system, comprising: Boland discloses a camera system as claimed. Ex. 1007, 108. In Boland, the headset 100 together with wireless communication handset 201 is a POV digital video camera system. See, e.g., Ex. 1010, Fig. 1, Fig. 3A, [0006] ( a video recording camera system configured to record video from a user's perspective. ); [0044] ( output as digitally encoded image data stream ) (emphasis added); Ex. 1007, 108. [1.1] an integrated hands-free portable viewfinderless video camera, the video camera including [1.1.1] a lens and [1.1.2] an image sensor, Boland discloses this limitation. Ex. 1007, [1.1] Boland discloses an integrated hands-free portable viewfinderless video camera 100: The headset 100 therefore provides... hands-free video... recording for a handset paired to the headset 100 (Ex. 1010, [0030]), which is viewfinderless (see, e.g., id. at Fig. 1) and portable (id. at [0002] invention... in the field of portable 28

37 electronic devices ). The headset 100 is viewfinderless and does not display video: in stand-alone embodiments, the additional functionality provided by the handset 100 (e.g., viewfinder) is not available. Id. at [0062], FIG. 1 (handset 100 lacks screen or other viewfinder). The Boland camera 100 is integrated in that it incorporates multiple components. Ex. 1007, Boland also describes the camera 100 as being integrated with the handset 201 by virtue of its wireless link: Because the video data 216 may be transmitted to the wireless communication handset 201, the wireless communication handset 201 may be integrated with headset 100 as the user s video recorder control interface with the view screen 303 serving as a preview screen or a view finder similar to a conventional video recorder. Id. at [0061] (emphasis added). Boland further discloses that headset camera 100 includes a [1.1.1] lens 105 and [1.1.2] an image sensor 205. Id. at [0033]; FIG. 2A. [1.1.3] the image sensor capturing light propagating through the lens and representing a scene to be recorded, and Boland alone, or in view of the GoPro Catalog, teaches this limitation. Ex. 1007, Boland s image sensor 205 captures light from the lens that represents a scene: the video data recording pipeline includes at least a lens 105 coupled to one or more optical image sensors 205 to provide an input image signal(s) 209 to a processor 210. Id. at [0033]; FIG. 2A. The claim further requires that the light represents a scene to be recorded, 29

38 which a POSA understands to be a scene viewed by the camera prior to recording. VI(C)(2), supra. In that respect, Boland teaches that its remote wireless controller provides a viewfinder function of a conventional video recorder, which was widely known to display video to the user prior to the user pressing a record button: Because the video data 216 may be transmitted to the wireless communication handset 201, the wireless communication handset 201 may be integrated with headset 100 as the user's video recorder control interface with the view screen 303 serving as a preview screen or a view finder similar to a conventional video recorder. Ex. 1010, [0061]; Ex. 1007, 114. See also [0058] ( The view screen 303 is to serve as a viewfinder for the headset 100 and may further provide for previewing of video recorded by the headset 100. ) Although Boland utilizes a recorded video data buffer 229, the buffer 229 is a temporary, circular buffer which overwrites video in it, unless a user designates a segment of video as a video clip file 231. See, e.g., Ex. 1010, [0035], [0053]. Thus the video in the buffer 229 is of a scene to be recorded in the context of the 694 Patent. Indeed, as described above, a buffer like Boland s buffer 229 is called for by the limitations of claim 1. VI(C)(3), supra; Ex. 1007, 115. Thus, Boland teaches this limitation. To the extent the Patent Owner argues, or the Board finds, that Boland does not sufficiently disclose the limitation, it would have been obvious in view of the 30

39 teaching of the GoPro Catalog. The GoPro Catalog expressly teaches streaming video to a wireless remote before the user starts recording: With a 30 / 10 m range and the ability to wirelessly transmit a preview image of your... video before you start recording, the wireless remote opens up a world of filming opportunities and convenience. Ex. 1011, 15 (emphasis added). It would have been obvious to implement Boland s previewing viewfinder functionality before recording as taught by the GoPro Catalog such that the light propagating through the Boland lens represents a scene to be recorded as claimed. Ex. 1007, 117. A POSA would have been motivated to follow the teaching of the GoPro Catalog for multiple reasons. First, as just discussed, Boland already teaches using its screen 303 as a remote viewfinder. Second, a POSA would predictably follow the teaching in the GoPro Catalog that previewing video before you start recording opens up a world of filming opportunities and convenience. Ex. 1011, 15; Ex. 1007, 117. A POSA would readily understand that just like a conventional camcorder providing video to a viewfinder screen before the user presses the record button gives the user the opportunity to adjust the camera position and settings in view of the previewed shot, with the predictable improvement of avoiding a poor quality recording. Ex. 1007, 117. Indeed, doing so would involve nothing more than applying a known technique to a known device ready for improvement to yield predictable results. Id. Thus, this limitation is taught by 31

40 Boland alone, or in view of the GoPro Catalog. [1.1.4] the image sensor producing real time video image data of the scene without displaying the scene to a user of the video camera, Boland teaches this limitation. Ex. 1007, A POSA understands that Boland s image sensor 205 produces real time video image data (input signals 209) when it is operating and exposed to light. Ex. 1007, 118; see Ex. 1010, FIG. 2A, [0033] ( one or more optical image sensors 205 [] provide an input image signal(s) 209 to a processor 210 ); [0073] ( video data 216A may include... video data sent as a live video feed.... ). Finally, the image sensor in Boland s camera produces the real-time video image data without the camera displaying the scene to the user. Ex. 1007, 119. Boland s camera does not have a display and thus teaches this limitation. See [1.1]. [1.1.5] wherein the real time video image data of the scene relates to an activity in which the user of the video camera is about to engage, the video camera comprising: Boland teaches this limitation. Ex. 1007, 120. The real time video image data of the scene is taught by Boland as discussed above. See [1.1.3]. The remaining language in [1.1.5] merely refers to an intended use that is not given patentable weight. See, e.g., MPEP 2114 ( recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus ). The real time video image data of Boland can be of a scene 32

41 that relates to an activity in which the user of the video camera is about to engage. Ex. 1007, 3. Nonetheless, a POSA understands that the limitation is taught because Boland s headset 100 is a POV camera pointing toward the scene viewed by the user an orientation that necessarily relates to an activity in which the user is about to engage. See id. at 120; Ex. 1010, Fig. 1 (showing POV arrangement), [0043]. Thus, Boland teaches this limitation. [1.2] a camera processor for receiving the video image data directly or indirectly from the image sensor, and Boland teaches this limitation. Ex. 1007, Boland discloses that camera processor (processor 210) receives image signals 209 (video image data) as claimed: video data recording pipeline includes... optical image sensors 205 to provide an input image signal(s) 209 to a processor 210. Ex. 1010, [0033], Fig. 2A, Fig. 2B, [ ] (describing structure of processor 210). [1.3] a wireless connection protocol device operatively connected to the camera processor to [1.3.1] send real time video image content by wireless transmission directly to and [1.3.2] receive control signals or data signals by wireless transmission directly from [1.3.3] a wireless connection-enabled controller, Boland discloses this limitation. Ex. 1007, Boland s radio 240 is a wireless connection protocol device operatively connected to processor 210 and in direct, two-way wireless communication with handset 201. See, e.g., Ex. 1007, 124; Ex. 1010, Fig. 2A ([1.3]: radio 240; [1.3.1]: video data 216 direct to handset 201; [1.3.2]: video control 218 direct from handset 201); Fig. 3A 33

42 ([1.3.1]: video 216A direct to handset; [1.3.2]: video control 218A direct from handset). Boland describes [1.3.1]: the processor 210 is to provide video data 216 to radio 240 for wireless transmission of the image data traffic over the communication channel 202 to the wireless communication handset 201. Ex. 1010, [0045]. Boland discloses [1.3.2] that the radio 240 is also for receiving headset control commands issued from the wireless communication handset using the installed application as a control command interface. Id. at [0011]. With respect to [1.3.3], Boland discloses that [a]n exemplary wireless communication handset 201 is [an]... Iphone commercially available through Apple, Inc. of Cupertino, Calif., and the like (Ex. 1010, [0058]) that includes application software executed on the handset 201 (id. at [0060]). While reference is made repeatedly herein to handset 201 for brevity when referring to the controller, it should be understood that the claimed wireless connection-enabled controller includes the application software running on handset 201. See [1.7], infra. [1.4] wherein the camera processor is configured to: Boland s processor 210 is a camera processor. Ex. 1010, Fig. 2A, Fig. 2B, [ ], [ ]; Ex. 1007, 130. [1.4.1] generate the video image content simultaneously at a first resolution and at a second resolution, the video image content at the first resolution and the second resolution corresponding to the video image data representing the scene to be recorded, wherein the first resolution is lower than the second resolution, Boland in view of the GoPro Catalog teaches this limitation. See [1.1.3]; 34

43 Ex. 1007, Boland teaches generating video image content at two resolutions, one high and one low, with the low resolution being used to preview the video at the wireless controller. Ex. 1010, [0053], [0069] ( the handset 201 is also used to preview (perhaps in a low resolution format) video data that is stored on the headset in the non-volatile recorded video data buffer ); Ex. 1007, 131. Furthermore, Boland teaches that the low resolution preview video can be generated in real time from buffer 229, and thus simultaneously, as high resolution video is streamed to buffer 229. Ex. 1010, [0069], [0073] ( the video data 216A may include video frames streamed from the headset 100 [] as output from the recorded video data buffer to the handset 201 in substantially real time ); Ex. 1007, 132. A POSA understands that to achieve the low resolution preview in real time, camera processor 210 generates the high resolution video, storing it frame-by-frame to circular buffer 229, while at the same time, generating the lower resolution stream frame-by-frame out of the buffer, with both streams being created at the same time, even though a particular frame from one stream is used to create a particular frame of the other stream. Ex. 1007, 132; see also VIII (A)(1), supra (describing Boland s processor 210 generating multiple, parallel video streams simultaneously by processing frames sequentially from each 35

44 stream). Indeed, this was well known to a POSA, as generating low resolution for preview is the conventional way that camcorders worked and the conventional approach for constrained environments such as when streaming video over Bluetooth to a personal portable computing device, as in Boland. (Ex. 1010, [ ]). See also VI(F), supra; Ex. 1007, 132. To the extent that the Patent Owner argues or that the Board finds that the low resolution preview must be generated prior to recording, that would be obvious in view of Boland s teachings above, or further obvious in view of the GoPro Catalog expressly teaching wirelessly transmit[ting] a preview image of your... video before you start recording. Ex. 1011, 15. See [1.1.3]. [1.4.2] stream the real time video image content at the first resolution using the wireless connection protocol device to the wireless connection-enabled controller without displaying the video image content at the video camera, Boland teaches this limitation as set out above. See [1.1.3, 1.3, 1.4, 1.4.1]; Ex. 1007, 134. Clause [1.4.2] further requires the streaming to occur without display at the video camera, which is disclosed by the video camera in Boland not having a screen. See [1.1]; Ex. 1007, 134. [1.4.3] receive the control signals for adjusting image capture settings of the video camera, Boland teaches this limitation. Ex. 1007, 135. Boland s camera processor 210 is configured to receive control signals from the handset controller (see [1.3]). See also Ex. 1010, Fig. 2A (processor 210 shown receiving video control 218). 36

45 Boland teaches using the controller (handset 201) to control the camera processor s adjustment of camera capture settings: handset 201 is configured to... configure the headset video capture parameters (e.g., recording rates and levels, image formats, zooms, etc.). Ex. 1010, [0059]. Boland teaches that any command employed in a conventional digital video recorder may be included in the video control commands 218. Id. at [0063]. [1.4.4] adjust the image capture settings of the video camera prior to recording the scene, and Boland in view of the GoPro Catalog teaches this limitation. See [1.1.3, 1.4.3]; Ex. 1007, 136. Boland s camera processor 210 is configured to adjust the image capture settings. See [1.4.3]. It would have been obvious to do so prior to recording in view of the teaching in the GoPro Catalog. See [1.1.3]; Ex. 1007, 136. A POSA would readily understand that previewing before recording allows for filming opportunity and convenience, Ex. 1011, 15, by allowing Boland s camera adjustments to occur before recording starts. Ex. 1007, 136. A POSA would be motivated to do so for the readily apparent and predictable benefit of avoiding poor video recordings for example, if the camera were pointed in the wrong direction or wrong lighting setting. Id. Indeed, a POSA understands that previewing and making adjustments prior to recording is the conventional approach, widely supported by conventional camcorders. Id. 37

46 [1.4.5] in response to a record command, cause the video image content at the second resolution to be stored at the video camera; Boland teaches this limitation. Ex. 1007, Boland s camera processor 210 is configured to store as a clip file, the higher resolution video in response to a record command. Id. For example, Boland teaches that on the headset 100, Application software manages execution of video control commands 218 received from a handset application to: start recording a video clip. Ex. 1010, [0053]. Further, where video at the second resolution had been stored simultaneously in temporary buffer 299, Boland teaches that a user can use a record command ( clip command ) to direct that a segment of the buffered video be stored as a clip file within a section of the storage medium 228 managed under a file system. Ex. 1010, [0041]; see also Ex. 1010, [0068], Fig. 6; Ex. 1007, 138. [1.5] a mounting interface coupled to the video camera; [1.6] a mount configured to be mounted to the body, a garment, or a vehicle of the user of the video camera, [1.6.1] the mount configured to receive the mounting interface for rotatably mounting the camera on the body, the garment, or the vehicle of the user of the video camera, [1.6.2] the mounting interface and the mount further configured for manual adjustment of the video camera with respect to the user of the video camera; and Boland in view of the GoPro Catalog teaches this limitation. Ex. 1007, Providing adjustable, rotatable mounting as claimed would have been obvious in view of Boland s suggestion of using various wearable form factors, such as a necklace, broach, arm band, etc. for mounting Boland s portable, POV 38

47 camera. Ex. 1010, [0006], Fig. 1. As annotated in the figure below, the GoPro Catalog teaches the mounting interface and mount as claimed: MANUALLY ADJUSTABLE & ROTATABLE MOUNTING INTERFACE MOUNT Ex. 1011, 2; see also Ex. 1011, 3, 11 (describing advantages, and showing closeups, of mounting equipment); 7, 8, 9 (mounting to user s vehicle), 12 (mounting to the user). It would have been obvious to implement headset 100 of Boland using the rotatable, adjustable mounting form factors of the GoPro Catalog for the selfevident and predictable benefit of being able to mount and position the POV camera as desired relative to the camera user (such as relative to the user s helmet) or vehicle (such as relative to a bike s handle bars). Id.; Ex. 1007, 143. A POSA would have also been motivated by the advantages expressly taught in the GoPro Catalog. See, e.g., Ex. 1011, 3 ( bomber suction cup proven to over 150 mph ), 39