NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

POLYCOM, INC.,

Appellant

v.

FULLVIEW, INC.,

Appellee

______________________

2018-1829

______________________

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. 95/001,876.

______________________

Decided: April 29, 2019

______________________

SALVATORE P. TAMBURO, Blank Rome LLP, Washington, DC, argued for appellant. Also represented by KEITH 

ALAN RUTHERFORD, KEITH E. LUTSCH, Houston, TX. 

 JOSEPH LAZAROFF, Law Offices of Joseph L. Lazaroff, 

Rowayton, CT, argued for appellee. 

 ______________________

Before LOURIE, CLEVENGER, and WALLACH, Circuit 

Judges.
2 POLYCOM, INC. v. FULLVIEW, INC.

CLEVENGER, Circuit Judge.

Polycom, Inc. appeals a Patent Trial and Appeal Board 

(“the Board”) inter partes reexamination decision, which 

held claims 1–21 and 25–39 of U.S. Patent No. 6,700,711 

(“the ’711 patent”) not obvious under 35 U.S.C. § 103, and 

claims 1, 5, 9–15, 25, 29, and 33–39 not anticipated under 

35 U.S.C. § 102. Because the Board correctly concluded 

that claims 1–21 and 25–39 of the ’711 would not have been 

obvious, and because we hold that Polycom waived its anticipation argument, we affirm. 

BACKGROUND

I

Cameras have long been capable of capturing an image 

that reflects a certain portion of the scene in front of them. 

The concept of telepresence, however, has fueled the desire 

to capture not just a portion of a scene, but, instead, the 

entire scene in which a camera is situated. Telepresence 

refers to providing sensory information, especially visual 

and audio information, from a given scene and relaying it 

back to a person at a remote site. Many businesses use 

telepresence, for instance, to enable their employees to attend meetings in remote locations without requiring the 

employee to physically travel to that location. In order to 

achieve telepresence, one or more cameras must be capable 

of capturing multiple views of a given scene, such that a 

person can mimic physically being in that scene by switching between the various views. 

The use of more than one camera to capture a scene 

naturally creates challenges. Certain aspects of the scene 

may go uncaptured because the cameras are arranged at 

the remote scene in such a way that there are spaces between the fields of view they are capable of capturing. 

Clearly, a user, such as an employee participating in a remote meeting, would be hindered by the fact that he could 

not view the entire meeting scene. 
POLYCOM, INC. v. FULLVIEW, INC. 3

In more advanced telepresence systems, the views from 

two cameras can be used to simulate a third view from the 

points between those cameras, so that a user can view the 

entire scene. The third, simulated view is created by “interpolating” between the two actual camera views. ’711 patent col. 1 ll. 55–60. While interpolation may allow the user 

to view the entire scene in which the cameras are situated, 

it also creates other problems. Such procedures produce 

irregularities in the simulated images due to the different 

viewing angles and viewing directions of the actual camera 

images. They also require a great amount of computational 

power, which in turn drives up the expense and drives 

down the efficiency of such systems. 

The prior art recognized that one or more mirrors could 

be used with one or more cameras to capture the entire 

scene, thereby reducing or eliminating the need for interpolation. A problem that remained unresolved, however, 

was the existence of image artifacts in the resulting composite image caused by “portions of individual images being 

captured off edges of mirrors.” Id. col. 2 ll. 29–30. 

In an effort to solve the issues inherent in prior 

telepresence systems, the ’711 patent describes using mirrors and multiple cameras to capture images of a scene and 

then merging those images to produce a composite, panoramic image that eliminates “at least a portion of a camera’s field of view.” Id. Abstract. 

In one embodiment of the invention, the cameras are 

positioned around a polyhedron where each face of the polyhedron has a reflective surface. The cameras each view a 

different reflective face of the polyhedron as shown in Figure 2 below. 
4 POLYCOM, INC. v. FULLVIEW, INC.

Cameras 52, 54, 56, and 58 are associated with reflective sides 48, 42, 44, and 46, respectively. The cameras all 

share a virtual optical center 90—the position from which 

the camera’s field of view appears to originate—within the 

pyramid. The field of view of each camera—the reflection 

it views off of the reflective surface of the polyhedron—is 

merged with the individual fields of view of the other cameras and arranged to form a composite field of view, which 

is a continuous 360-degree view of an area when taken as 

a whole. 

In another embodiment of the invention, the cameras 

are positioned around the pyramid “so that their effective 

optical centers are offset from each other. The offsets produce narrow blind regions that remove image distortions 

received from the edges of the pyramid’s reflective surface.” 

Id. col. 3 ll. 12–15. 

Figure 14, which depicts the additional embodiment, is 

a top view of the pyramid arrangement shown in Figure 2. 

In reference to Figure 2, cameras 52, 54, 56, and 58 have 

been moved upward in the direction of base 50. As a result, 

virtual optical centers 500, 502, 504, and 506, which correspond to cameras 52, 54, 56, and 58, respectively, are 

moved away from virtual optical center 90. According to 
POLYCOM, INC. v. FULLVIEW, INC. 5

the invention, it is desirable to move the cameras away 

from optical center 90 because then they do not capture images from the narrow planar shaped regions, 524, 526, 528, 

and 530, also called “blind regions,” which include image 

artifacts created by the edges of the reflective polyhedron. 

Eliminating those regions from the cameras’ fields of view 

alleviates the need for image processing, and, therefore, extensive computational power. The specification notes that 

“it is desirable to keep virtual optical centers 500, 502, 504, 

and 506 closely clustered so that planes 524, 526, 528, and 

530 are only as thin as necessary to avoid edge artifacts”

while minimizing any noticeable effect seen by the user. 

Id. col. 9 ll. 61-64.

The ’711 patent claims both a method and an apparatus. Claim 1 is illustrative of the claimed method and 

Claim 16 is illustrative of the claimed apparatus:

1. A method of producing a composite image with a 

plurality of sensors each having an individual field 

of view, comprising the steps of:

for at least one of the plurality of sensors, 

redirecting at least a portion of its individual field of view with a reflective area; and
6 POLYCOM, INC. v. FULLVIEW, INC.

merging images corresponding to the individual fields of view to produce the composite image having a corresponding field of 

view, wherein each one of at least two fields 

of view corresponding to images that are 

merged has a portion, where the images are 

merged, that has viewing directions that 

are substantially similar to the viewing directions of the other portion, and wherein 

the viewing directions within each one of 

such two portions appear to originate substantially from a point that is offset from 

the point for the other one of such two portions.

16. A viewing apparatus having a composite field 

of view, comprising: 

at least two image sensors, each having an 

individual field of view;

at least one reflective area that redirects at 

least part of the individual field of view associated with one of the image sensors,

the individual fields of view of at least two 

image sensors being merged to produce the 

composite field of view, at least portions of 

each of the two individual merged fields of 

view having substantially similar viewing 

directions where they are merged, and the 

merged fields of view creating in the composite field of view at least one blind region 

that encompasses at least a portion of an 

edge of the reflective area and that lies between portions of two individual fields of 

view; and

a memory for storing data representative of 

said composite field of view electronically.
POLYCOM, INC. v. FULLVIEW, INC. 7

Id. col. 10 ll. 43–59, col. 11 ll. 40–57.

II

The relevant prior art references disclose improvements in image processing. One piece of prior art, an article entitled “Seamless Image-Connection Technique for a 

Multiple-Sensor Camera” (“Uehira”), describes a refinement to prior methods of improving HDTV picture resolution. Kazutake Uehira & Kazumi Komiya, Seamless 

Image-Connection Technique for a Multiple-Sensor Camera, E77-B IEICE Trans. Comm. 232 (1994). The prior art

methods utilized multiple two-dimensional charge-coupled 

device (“CCD”) sensors arrayed in a focal plane. Though 

the prior method reduced the cost of a high-resolution camera, it was not easy to join the images from the separate 

CCD sensors without losing part of the image in the process. The authors of Uehira solved that problem by using 

a pyramidal mirror to produce four separate focal planes 

that “prevent gaps along the joining lines of the combined 

image,” as shown below in Figure 4. Id. at 232. “Each CCD 

sensor reads a quarter of the image and the four quarterimages are combined in to one HDTV picture.” Id. The authors demonstrated that they could reduce image discontinuity at the joining lines and eliminate shading caused by 

the pyramidal mirror by using certain image-processing 

techniques, such as electrical correction and dark-and 

white-level correction.
8 POLYCOM, INC. v. FULLVIEW, INC.

Another piece of prior art, U.S. Patent No. 5,444,478, 

entitled “Image Processing Method and Device for Constructing an Image from Adjacent Images” (“Lelong”), discloses a method of processing images to construct a target 

image from adjacent source images where the source and 

the target images have “substantially common view 

points.” Lelong Abstract. Lelong, like the ’711 patent,

sought to improve the concept of telepresence, or as Lelong 

refers to it, “telemonitoring.” Id. col. 1 ll. 28–31. Lelong 

wanted to create a device that could provide views to a user 

at a remote location that simulated the views seen by a stationary observer present at another location. For example, 

Lelong wanted a remote user to be able to see to the left 

and right, as well as above and below, an imaginary stationary observer at the scene.

To achieve that goal, Lelong’s system requires that the 

combined fields of view of each camera capture all of the 

details of the scene “so that no object under surveillance is 

left out.” Id. col. 6 ll. 37–38. To ensure that no aspects of 

a scene are left uncaptured, the cameras in Lelong are “arranged in such a way that their optical centers P, referred 

to as view points[,] coincide,” id. col. 6 ll. 64–66, or are “very 

close” to coinciding, as shown in Figure 1G. Id. col. 6 l. 39. 

Unlike the system disclosed in the ’711 patent, Lelong’s 

system does not use a mirror.
POLYCOM, INC. v. FULLVIEW, INC. 9

The cameras in Figure 1G, though not shown, are clustered around P, which denotes the “view point” or “optical 

center” of the cameras. Id. col. 6 ll. 65–66. Lelong explains 

that, in certain circumstances, the view points of the cameras need not be the same, i.e., “coincide physically.” Id.

col. 7 ll. 3–4. The patent assumes, however, that “the condition of coincidence is fulfilled sufficiently if the distance 

separating each of these view points is small as regards

[sic] their distance to the filmed panoramic scene.” Id. col 7 

ll. 5–8. Stated another way, Lelong assumes that the condition of coincidence is fulfilled when the ratio between the 

distance to the panoramic scene and the distance separating the view points is equal to or greater than fifty. When 

the ratio is equal to or greater than fifty, Lelong explains 

that “it is not necessary to use costly optical mirror systems 

which are difficult to adjust for achieving a strict coincidence of the view points.” Id. col. 7 ll. 13–15.

III

On January 26, 2012, Polycom filed a request for reexamination of the ’711 patent. The Examiner granted Polycom’s request in part, finding that it demonstrated a 

reasonable likelihood of prevailing on anticipation of 

claims 1–8, 12–21, 25–32, and 36–39 by Lelong and on obviousness of claims 1–5, 9–18, 25–29, 38, and 33–39 over 

Uehira. Obviousness over the combination of Lelong and 

Uehira was asserted as a ground for reexamination in Polycom’s request, but the Examiner determined that “the request and claim charts . . . d[id] not make clear the 

limitations Lelong is lacking and the limitations for which 

Uehira is cited or how Lelong is modified by Uehira.” J.A. 

264. Thus, the Examiner declined to institute reexamination on that ground. In sum, the Examiner instituted reexamination of claims 1–21 and 25–39, but declined to 

institute reexamination with respect to claims 22–24 of the 

’711 patent.
10 POLYCOM, INC. v. FULLVIEW, INC.

On March 14, 2012, the Examiner issued a non-final 

office action rejecting claims 1–8, 12–21, 25–32, and 36–39 

as anticipated by Lelong. The Examiner also rejected 

claims 1–5, 9–18, 25–29, 38, and 33–39 as anticipated by 

Uehira.1

Polycom petitioned for review of the partial denial of 

its reexamination request. The Director denied Polycom’s 

petition.

The Examiner later withdrew the anticipation rejection based on Lelong, however, because Lelong “[did] not 

expressly or inherently describe ‘at least one reflective area 

for redirecting at least a portion of the field of view associated with one of the image sensors.’” J.A. 516. The Examiner also noted that Lelong “did not make obvious 

‘redirecting at least a portion of its individual field of view 

with a reflective area’” because Lelong disclosed that optical mirrors were costly and difficult to use, and therefore 

taught away from the use of such mirrors. Id.

In the Action Closing Prosecution, the Examiner rejected claims 1, 5, 9–15, 25, 29, and 33–39 as anticipated 

by Uehira. The Examiner confirmed the patentability of 

claims 2–4, 6–8, 16–21, 26–28, and 30–32 by withdrawing

the anticipation and obviousness rejections under Lelong 

and the anticipation rejection under Uehira. Polycom appealed the Examiner’s decision not to reject claims 1–8, 12–

21, 25–32, and 36–39 as anticipated by or obvious over 

Lelong. Fullview appealed the Examiner’s rejection of 

claims 1, 5, 9–15, 25, 29, and 33–39 as anticipated by 

Uehira.

 

1 The Examiner did not reconcile its rejection for anticipation by Uehira with the fact that the Examiner had 

granted Polycom’s request for reexamination on the basis 

that Uehira rendered obvious claims 1–5, 9–18, 25–29, 38, 

and 33–39.
POLYCOM, INC. v. FULLVIEW, INC. 11

In the Board’s Decision on Appeal, it reversed the Examiner’s rejection of claims 1, 5, 9–15, 25, 29, and 33–39 as 

anticipated by Uehira because it found that Uehira did not 

describe the following limitation: “wherein the viewing directions within each one of such two portions appear to 

originate substantially from a point that is offset from the 

point for the other one of such two portions.” Polycom , Inc. 

v. Fullview, Inc., Appeal No. 2014-3318, 2014 WL 4923553, 

at *4 (P.T.A.B. Sept. 29, 2014) (“Board Decision”). The 

Board also found that the Examiner erred in concluding 

that Lelong did not teach or suggest mirrors and that 

Lelong teaches away from the redirecting limitation of 

claim 1.

The Board then went on to reject claims 1–39 as obvious over the combination of Lelong and Uehira, a ground 

on which the Examiner refused to institute. Notably, the 

Board found that it was obvious to “employ Uehira’s mirrors in Lelong’s system to ‘redirect[] at least a portion of [a 

sensor’s] individual field of view with a reflective area’ as 

recited in claim 1.” Id. at *7.

The Board also found that a person of ordinary skill in 

the art (“POSA”) would have known to arrange the optical 

elements taught by Lelong and Uehira “such that two sensors having substantially similar viewing directions produce images that appear to originate from offset view

points by placing them at different distances from a reflective surface that redirects their individual fields of view toward the same scene.” Id. The Board thus found claim 1 

invalid over Lelong and Uehira. 

The Board also found claim 2 obvious over the two references because Uehira disclosed “gaps along the joining 

lines of the combined image” that could be “prevented” 

when an image focused at the focal plane is wider than the 

corresponding area of an object. Id. at *3 (citing Uehira, 

supra, at 233). Additionally, Lelong disclosed “arranging

sensors such that view points are not strictly coincident, 
12 POLYCOM, INC. v. FULLVIEW, INC.

which one skilled in the art would realize creates gaps or 

overlaps.” Id. at *8. Thus, the Board found claim 2 satisfied 

because the references disclosed “at least one blind region 

that encompasses at least a portion of an edge of a reflective area and that lies between the two portions of the two 

individual fields of view.” Id.

Because the rest of the claims recited either varying

the numbers of sensors or electronically merging and storing data, the Board found those claims were also obvious 

variations in view of Lelong and Uehira. The Board therefore entered that new ground of rejection and, under 37 

C.F.R. § 41.77(b) (2004), provided Fullview with the option 

of reopening prosecution or requesting rehearing.

In response to the Board’s decision, Fullview filed a request to reopen prosecution and presented new evidence in 

the form of two declarations: one of Arun Netravali 

(“Netravali Declaration”) and one of Vishvjit S. Nalwa 

(“Nalwa Declaration”). Polycom filed comments responsive 

to Fullview’s request and presented new evidence in the 

form of a declaration of Stephen D. Fantone (“Fantone Declaration”). After receiving the parties’ submissions, the 

Board then remanded the proceeding to the Examiner to 

issue a determination that each rejection should be maintained or overcome by the new evidence.

The Examiner determined that the response by 

Fullview, along with the Netravali Declaration, overcame 

the new grounds of rejection by the Board. The Examiner 

found that it would not have been obvious to employ 

Uehira’s mirrors in Lelong’s system to redirect at least a 

portion of a sensor’s individual field of view with a reflective area because, as the Netravali Declaration explained, 

“it is counterintuitive why anyone would use mirrors to 

make the viewpoints of multiple sensors coincide (as in 

Uehira) only to turn around and deliberately offset the 

viewpoints.” J.A. 764. The Examiner also determined that 

“moving the sensors or mirrors of Uehira does not change 
POLYCOM, INC. v. FULLVIEW, INC. 13

the sensor’s viewpoints precisely because the ‘field of view’ 

of each sensor is in front of its image-forming lens, where 

it is out of reach of the mirrors of Uehira.” J.A. 765.

The Examiner found that the combination of Lelong 

and Uehira also did not disclose the type of blind regions 

required by the ’711 patent’s claims because any blind regions in Uehira would be “wedge-shaped, each such wedge 

expanding from the common viewpoint shared by multiple 

CCD sensor[s], with the viewing directions on either side 

of such ‘blind regions’ not being substantially similar.” 

J.A. 766. The Examiner also noted that Polycom never addressed how any alleged blind regions disclosed by Lelong 

“encompass a portion of an edge of a reflective area, as required by the claims.” Id.

Following the Examiner’s determination during the reopened prosecution, Fullview and Polycom filed responsive 

comments. The proceeding was then returned to the Board 

to reconsider the matter and issue a new decision. The 

Board affirmed the Examiner’s non-adoption of the rejection of claims 1–39 as obvious over the combination of 

Lelong and Uehira. The Board noted that it was persuaded 

by the Netravali Declaration that Polycom failed to demonstrate “that Lelong (or Uehira) discloses or suggests the 

‘viewing directions’ or ‘portions’ of at least two fields of view 

as recited in claim 1.” J.A. 27. According to the Board, 

Polycom did not explain how the “view points” of Lelong 

both could be “substantially similar” yet “substantially . . . 

offset” from each other at the same time. J.A. 28.

Fullview then requested a rehearing of the Board’s decision, arguing the Board abused its discretion by considering obviousness over Lelong and Uehira, and that the 

Board applied the wrong claim construction standard to an 

expired patent. Polycom also requested rehearing, claiming the Board’s non-obviousness determination was not 

supported by substantial evidence. Polycom did not request rehearing of the Board’s failure to find claims 1–8, 
14 POLYCOM, INC. v. FULLVIEW, INC.

12–21, 25–32, and 36–39 anticipated over Lelong, despite 

the Board’s holding that the Examiner erred in concluding 

the Lelong taught away from the use of mirrors.

First, the Board withdrew its rejection of claims 22–24 

because, as both Fullview and Polycom argued, the Board 

did not have the authority to consider those claims as they 

were never subject to reexamination. The Board then considered and rejected Fullview’s argument that the Board 

abused its discretion in entering a new ground of rejection. 

The Board also denied Polycom’s request for a rehearing of 

the Board’s decision to affirm the Examiner’s non-adoption 

of the rejection of claims 1–21 and 25-39.

Polycom appeals from the Board’s decision on rehearing. We have jurisdiction to consider Polycom’s appeal under 28 U.S.C. § 1295(a)(4)(A).

DISCUSSION

Polycom argues that the alleged inconsistencies in the 

Board’s original decision, its decision after reopening prosecution, and its decision on rehearing warrant reversal. 

First, Polycom contends that the Board should have found 

the challenged claims of the ’711 patent anticipated by 

Lelong after determining during the first Board hearing 

that, contrary to the Examiner’s finding, Lelong disclosed 

mirrors. According to Polycom, the Examiner withdrew 

her anticipatory rejection because Lelong taught away 

from mirrors, and thus, the Board’s finding that Lelong did 

not, in fact, teach away from mirrors should have ended the 

Board’s analysis. Second, Polycom claims that the Board 

inextricably adopted a different reading of the ’711 patent’s

claims and Lelong’s disclosure than was laid out in its original decision to erroneously affirm the Examiner’s nonobviousness determination.

The ultimate determination of obviousness is a question of law, but that determination is based on underlying 

factual findings. See In re Gartside, 203 F.3d 1305, 1316 
POLYCOM, INC. v. FULLVIEW, INC. 15

(Fed. Cir. 2000). We review the Board’s legal determinations de novo and any underlying factual determinations 

for substantial evidence. In re Baxter Int’l, Inc., 678 F.3d 

1357, 1361 (Fed. Cir. 2012). Anticipation, on the other 

hand, is strictly a question of fact subject to substantial evidence review. Microsoft Corp. v. Biscotti, Inc., 878 F.3d 

1052, 1068 (Fed. Cir. 2017).

I

Fullview contends that we need not address Polycom’s 

anticipation argument because it was waived below. According to Fullview, Polycom should have included its anticipation argument in its request for rehearing, and, 

because it failed to do so, it cannot resurrect that argument 

now on appeal. We agree with Fullview.

Polycom argues that it is not required to first request 

rehearing before challenging a Board decision on appeal. 

To support its argument, Polycom cites a case which held

that “[n]owhere does the statute granting parties the right 

to appeal a final written decision in an [inter partes review 

(‘IPR’)] require that the party first file a request for rehearing before the Board, especially a rehearing of the initial 

institution decision.” In re Magnum Oil Tools Int’l, Ltd., 

829 F.3d 1364, 1377 (Fed. Cir. 2016). But that precedent 

does nothing to save Polycom’s argument from waiver here. 

In Magnum, the Patent and Trademark Office argued

that the appellant had to raise its concerns to the Board in 

a request for rehearing of the initial institution decision, 

but we found that the appellant’s issue was not with the 

Board’s decision to institute the IPR on some grounds instead of others. Id. at 1373. Its issue, instead, was with 

certain statements that the Board made in that institution 

decision regarding the obviousness of the claimed invention which were later relied upon in the Board’s final written decision. Id. at 1373-74. We thus found that, because 

those determinations were incorporated into the final written decision, which is directly appealable to this court, the 
16 POLYCOM, INC. v. FULLVIEW, INC.

appellant did not need to make arguments regarding those 

statements in a request for rehearing of the institution decision. Id. at 1377.

Here, while Polycom could have directly appealed the 

Board’s reopen decision to this Court, it instead decided to 

request rehearing of that decision. Because it made that 

strategic decision, it was required to include all of the 

“points believed to have been misapprehended or overlooked in rendering the Board’s opinion reflecting its decision.” 37 C.F.R. § 41.79 (2004). While it is true that the 

Board’s reopen decision did not address arguments regarding anticipation over Lelong, the reopen decision “is 

deemed to incorporate the earlier decision[s], except for 

those portions specifically withdrawn.” 37 C.F.R. § 41.77. 

The Board’s original decision addressed the Examiner’s decision to withdraw her anticipation rejection over Lelong. 

That aspect of the Board’s original decision was never withdrawn. Thus, Polycom could have, and should have, raised 

the anticipation argument in its request for rehearing because this court should not be put in the position of reviewing an alleged error in the Board’s reasoning that the 

Board itself was not given a chance to address when it considered Polycom’s other arguments on rehearing. See In re 

NuVasive, Inc., 842 F.3d 1376, 1380 (Fed. Cir. 2016) (explaining that such a course of action “deprives the court of 

‘the benefit of the [Board]’s informed judgment’” (citation 

omitted)). For those reasons, we find that Polycom waived 

its arguments regarding anticipation of the ’711 patent 

over Lelong.

II

Polycom also challenges the Board’s nonobviousness 

determination. First, Polycom contends that the Board 

misread claim 1 to require a substantial offset between the 

cameras. Second, Polycom argues that the Board incorrectly interpreted Lelong to teach that mirrors are not used 

when the offset is small. Third, Polycom claims that the 
POLYCOM, INC. v. FULLVIEW, INC. 17

Board erred in its determination that, if Lelong taught a 

large offset, then the viewing directions would not be “substantially similar,” as required by claim 1. Fourth, Polycom argues that the Board’s incorrect reading of claim 1 to 

require a substantial offset also led to error in the Board’s 

analysis of a POSA’s motivation to combine Lelong and 

Uehira. 

Polycom’s first argument fails because, even if the 

Board incorrectly interpreted claim 1 to require that the 

offset between the points be substantial in its decision after 

the reopened prosecution, it rectified that error in its decision on rehearing. The Board assumed that the claimed 

offset was not substantial, and found that “Lelong explicitly disclose[d] that when the ‘offset’ of the ‘view points’ . . . 

is not substantial, then ‘costly optical mirror systems’ (or 

reflective areas) are not used.” J.A. 10. 

To counter the Board’s determination, Polycom argues 

on appeal that the Board’s rehearing decision inexplicably 

contradicts the Board’s prior analysis of Lelong in its original decision. According to Polycom, the Board previously 

determined that Lelong did not teach away from the use of 

mirrors, but instead indicated that mirrors may not be necessary in certain situations. 

Polycom mischaracterizes the Board’s original decision. The Board disagreed with the Examiner that Lelong 

taught away from the claimed invention, “at least for applications where the distance to the filmed scene is relatively small,” relative to the distance between the view 

points. Polycom, 2014 WL 4923553, at *5 (emphasis 

added). The Board also recognized, however, that “Lelong 

purport[ed] to render mirrors unnecessary in situations 

where ‘the distance separating each of these view points is 

small as regards [sic] their distance to the filmed panoramic scene.’” Id. (emphasis added). The Board did not 

comment definitively on whether Lelong taught away from 

the use of mirrors when the distance separating the view 
18 POLYCOM, INC. v. FULLVIEW, INC.

points was small as compared to their distance to the panoramic scene. See id. (“[W]ithout regard to whether 

Lelong’s statement ‘criticizes, discredits, or otherwise discourages’ the use of mirrors in all contexts.”). 

Polycom’s second argument is also unpersuasive because the Board’s determination that Lelong does not teach 

the use of mirrors when the offset is small is supported by 

substantial evidence. First, despite Polycom’s arguments 

to the contrary, the Board did not improperly read Lelong 

to be limited to a small offset in absolute terms. The Board 

noted “that Lelong . . . discloses that when the offset is not 

substantial (e.g., “ 5cm or 10 cm [when] the distance to the 

panoramic scene is 5 m”), then ‘costly optical mirror systems’ are not used.” J.A. 10. The Board thus clearly recognized that the offset’s size was relative—not absolute—to 

the distance to the panoramic scene. 

Moreover, as the Board’s quoted language indicates, 

Lelong does, in fact, state that “it is not necessary to use 

costly optical mirror systems which are difficult to adjust 

for achieving a strict coincidence of the viewpoints” when 

the offset distance is small relative to the cameras’ distance 

to the panoramic scene. Lelong col. 7 ll. 13–15. The Board 

found that Polycom did not explain why it would have been 

obvious to a POSA to incorporate a reflective area into 

Lelong despite that disclosure. Polycom’s attempt to offer 

that missing explanation through its expert’s declaration 

is unavailing.

On appeal, Polycom cites to Dr. Fantone’s declaration 

for the proposition that, when the scene being captured is 

about two meters away, a POSA would understand that an 

optical mirror system could be used in Lelong’s invention. 

The Board, however, clearly credited Fullview’s expert’s 

declaration, as opposed to the Fantone Declaration. See

J.A. 26-27 (citing the Netravali Declaration as persuasive

“that [Polycom] has not demonstrated sufficiently that 

Lelong (or Uehira) discloses or suggests the ‘viewing 
POLYCOM, INC. v. FULLVIEW, INC. 19

directions’ of ‘portions’ of at least two fields of view as recited in claim 1”). “The Board has broad discretion as to 

the weight to give to declarations offered in the course of 

prosecution.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 

1359, 1368 (Fed. Cir. 2004). Polycom does not present any 

persuasive evidence for why the Board abused its discretion in crediting the Netravali Declaration over the Fantone Declaration. Moreover, Dr. Fantone never explained 

how the “substantially similar” “viewing directions” from 

“offset” “points” limitation would be satisfied in the situation where a mirror system is used to capture a panoramic 

scene two meters away from the cameras. Thus, the Board 

did not abuse its discretion.

Polycom’s third argument focuses on the Board’s alleged error in finding that the viewing directions would not 

be substantially similar, as required by claim 1, if Lelong 

disclosed a large offset between the view points. Polycom 

claims that Figure 1G of Lelong is essentially the same as 

Figure 14 in the ’711 patent. According to Polycom, Figure 

14 demonstrates that, for example, “if the viewing directions are both pointing northeast when the offset (gap) is 

small, they are still pointing northeast (i.e., the same direction) when the offset (gap) is large.” Appellant’s Op. Br. 

34. While the Board did not specifically address Polycom’s 

argument in its decisions, that omission does not constitute 

reversible error. See Yeda Research v. Mylan Pharm. Inc., 

906 F.3d 1031, 1046 (Fed. Cir. 2018) (“[F]ailure to explicitly 

discuss every fleeting reference or minor argument does 

not alone establish that the Board did not consider it.”).

Polycom cites no support for its argument, and, as Polycom admits, Figure 1G does not include the use of mirrors. 

Additionally, Fullview’s expert’s declaration, which the 

Board credited in its decision after the reopened prosecution, contradicted Polycom’s unsupported attorney argument. See J.A. 716 (“[O]ffset (rather than coincident) 

viewpoints result in dissimilar viewing directions to any 

object and yet, according to the patent, viewing directions 
20 POLYCOM, INC. v. FULLVIEW, INC.

from different view-points are substantially similar where 

the images are merged.”); see also Icon Health & Fitness, 

Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017) 

(“Attorney argument is not evidence.”).

As for Polycom’s fourth argument, it contends that

Lelong does not characterize the offset between view points 

in absolute terms. Polycom therefore claims that the Board 

was wrong to limit Lelong’s teaching to a small or a large 

offset distance. Because Lelong’s teaching is not so limited, 

and because the claims require only an offset, Polycom contends that Lelong’s teaching, in combination with Uehira’s 

mirrors, should have been enough to render the ’711 patent’s claims obvious. Polycom’s argument is not persuasive.

The Board read claim 1 to recite:

[A] ‘viewing direction of one portion of an image 

that is ‘substantially similar’ to a ‘viewing direction’ of a portion of another image and that the 

‘viewing direction of the one portion appears to 

‘originate’ from a ‘point’ that is offset from the 

‘point’ from which the other ‘viewing direction’ (of 

the portion of the other image) appears to originate.

J.A. 9. Polycom argued below that Lelong discloses cameras arranged in such a way that “their optical centers P, 

referred to as view points[,] coincide.” J.A. 147. Polycom 

therefore claimed that Lelong discloses substantially similar viewing directions, as required by claim 1 of the ’711 

patent, because if the view points coincided then the viewing directions from those points must be substantially similar. Polycom also argued that Lelong’s cameras, and thus

its view points, need not coincide physically, and, instead, 

can be separated or offset from each other. Based on that 

argument, Polycom contended that the offsets claimed by 

the ’711 patent were also disclosed in Lelong. As the Board 

recognized, those positions are clearly contradictory. 
POLYCOM, INC. v. FULLVIEW, INC. 21

Missing from Polycom’s evidence or arguments was an explanation of how the viewing directions of Lelong’s cameras 

could be substantially similar, while simultaneously appearing to originate from points that are offset from each 

other. 

Moreover, Fullview’s expert’s declaration, which the 

Board credited, explained the counterintuitive nature of 

“us[ing] mirrors to make the viewpoints of multiple sensors 

coincide . . . only to turn around and deliberately offset the 

viewpoints,” such that the offset is perceptible to the 

viewer. J.A. 716. Lelong discloses the use of mirrors, as an 

alternative to its claimed non-mirrored optical system, to 

achieve “strict coincidence of view points,” Lelong col. 7 l. 

15, in situations where the “condition of coincidence” is not 

satisfied because the distance between the view points is 

large relative to the distance to the panoramic scene. Id.

col. 7 l. 5. Polycom therefore failed to counter Fullview’s 

evidence in two respects. Polycom did not show that a 

POSA would be motivated to use Uehira’s mirror’s in 

Lelong’s optical system with insubstantial offsets. It also 

failed to show that a POSA would be motivated to use the 

mirrored optical system discussed in Lelong to arrive at the 

claimed invention, which requires the use of a mirror to 

achieve “substantially similar” viewing directions that appear to originate from offset, not coincident, view points. 

We thus affirm the Board’s ultimate determination that 

neither Lelong nor Uehira disclosed or suggested “the 

claimed ‘viewing directions’ of ‘portions’ of fields of view or 

the substantial similarity or offsets of points of apparent 

origination of such viewing directions.” J.A. 29. 

III

Last, Fullview raises an argument in its opposition 

brief alleging that the Board abused its discretion in entering a new ground of rejection based on obviousness over 

Lelong and Uehira. At oral argument, however, Fullview

made clear that argument was meant only as one in the 
22 POLYCOM, INC. v. FULLVIEW, INC.

alternative if this court decided not to affirm the Board’s 

nonobviousness finding. Oral Arg. at 25:54–26:21. 

Fullview further agreed to withdraw that argument if this 

court affirmed the Board’s nonobviousness findings. Id. 

Because we affirm the Board on that ground, we need not

reach Fullview’s new-ground-of-rejection argument. 

CONCLUSION

After careful analysis of the parties’ arguments and the 

Board’s determination, we affirm the Board’s finding that

claims 1–21 and 25–39 of the ’711 patent would not have 

been obvious in view of the combination of Lelong and 

Uehira. We also find that Polycom waived its argument 

regarding anticipation for failing to raise it below. 

AFFIRMED

COSTS

No costs.