UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`RESEARCH IN MOTION CORP and RESEARCH IN MOTION LIMITED
`Petitioner,
`v.
`MOBILEMEDIA IDEAS LLC
`Patent Owner
`____________
`Case IPR2013-00016 (JYC)
`Patent U.S. 6,441,828
`____________
`
`
`PATENT OWNER’S MOTION
`TO AMEND THE PATENT
`
`
`
`
`
`
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`RESEARCH IN MOTION CORP and RESEARCH IN MOTION LIMITED
`Petitioner,
`v.
`MOBILEMEDIA IDEAS LLC
`Patent Owner
`____________
`Case IPR2013-00016 (JYC)
`Patent U.S. 6,441,828
`____________
`
`
`PATENT OWNER’S MOTION
`TO AMEND THE PATENT
`
`
`
`
`
`
`
`
`
`Attorney Docket No. 51020-057 USIPR
`
`Pursuant to 35 U.S.C. § 316(d)(1)(b) and 37 C.F.R. § 42.121, Patent
`
`Owner MobileMedia Ideas LLC (“MobileMedia”) moves to amend the
`
`patent. MobileMedia’s Motion to Amend is supported by the accompanying
`
`Declaration of Dr. Vijay K. Madisetti, dated May 20, 2013 (“Madisetti
`
`Decl.”) (Ex. 2001). An Appendix is included listing the Exhibits
`
`accompanying this Motion, which are cited herein and in the Madisetti
`
`Declaration. Since MobileMedia is proposing to cancel all of the claims that
`
`are at issue in this inter partes review and is replacing them with a
`
`reasonable number of substitute claims, it is not necessary for MobileMedia
`
`to submit a Patent Owner’s Response and therefore MobileMedia will not be
`
`submitting a Patent Owner’s Response.
`
`If any fees are due in connection with this matter, the Commissioner
`
`is hereby authorized to charge them to Attorney Deposit Account 50-3081.
`
`I.
`
`INTRODUCTION
`
`U.S. Patent No. 6,441,828 (‘the ‘828 patent”) is directed to an image
`
`displaying apparatus that automatically displays digital images stored in
`
`memory in a normal, correct direction (i.e., landscape or portrait), based on
`
`direction-displaying information for the image stored in memory and the
`
`orientation of the device. (See, e.g., Ex. 2001 at ¶¶ 13-26 (citing, e.g., Ex.
`
`1001, Abstract, 1:5-8, 1:64-2:2, 3:38-41, 5:48-59, 6:27-35, 8:62-9:4, 9:27-
`
`
`
`1
`
`
`
`
`67; Fig. 16.)) The specification of the ‘828 patent also describes including
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`Attorney Docket No. 51020-057 USIPR
`
`the following features into the apparatus:
`
`• a position sensor having a moving element that is movable in all
`
`directions to automatically detect which position the image display apparatus
`
`is placed;
`
`• a recognition sensor that provides a detection signal to a
`
`microcomputer based on which a displaying status of the image displaying
`
`means is changed for at least an expiration time unless the microcomputer
`
`receives the detection signal again;
`
`• a recognition sensor that (a) emits light and (b) detects the light
`
`returned from a human body or object and can detect light from a part of a
`
`human body at a distance of less than 20 cm;
`
`• a slide show mode of display that does not require a key to be
`
`pressed to display each image and is different than a playback mode of
`
`display that requires a key to be pressed to display each image, with which
`
`the automatic display works.
`
`(See, e.g., Ex. 2001 ¶¶ 37-39.) These features were not recited in the claims
`
`upon which the Board instituted this inter partes review. (Id.) In this
`
`Motion to Amend, MobileMedia proposes canceling claims 6, 7, 15, 17, and
`
`
`
`2
`
`
`
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`18, and presents new claims 19, 20, 21, 22, and 23 as proposed substitutes
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`Attorney Docket No. 51020-057 USIPR
`
`for original claims 6, 7, 15, 17, and 18.
`
`Proposed new claims 19-23 recite the features noted above, which are
`
`described and supported in the ‘828 patent specification and the Japanese
`
`applications to which the application that matured into the ‘828 patent
`
`claims priority, Japanese Patent Application 10-254231 (Ex. 2005), filed
`
`September 8, 1998 (a certified translation of which is Ex. 2007) and
`
`Japanese Patent Application 11-016215 (Ex. 2006), filed January 25, 1999 (a
`
`certified translation of which is Ex. 2008), which support a priority date of at
`
`least as early as January 25, 1999, for the proposed new claims.
`
`As explained below and in greater detail in the Madisetti Declaration
`
`(Ex. 2001), the proposed substitute claims respond to and obviate the
`
`grounds of unpatentability involved in this trial by adding additional
`
`limitations to the claims that are at issue in this inter partes review. The
`
`additional limitations do not enlarge the scope of the claims, or introduce
`
`new matter. Proposed new claims 19-23 incorporate features that are not
`
`described in the prior art Petitioner relies upon in deeming this review, (Exs.
`
`1002-1006.) (“Petition Prior Art”). (Ex. 2001 at ¶¶ 68-123, 124-32.)
`
`
`
`3
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`
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`Attorney Docket No. 51020-057 USIPR
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`The original claims at issue in this review contained limitations that
`
`were written in means-plus-function format. As explained below, certain of
`
`the proposed new claims incorporate sufficient structure for achieving the
`
`specified function so that certain of these elements no longer invoke 35
`
`U.S.C. § 112 ¶ 6. In other claims, the additional features were added with
`
`non-means-plus function language. As explained in greater detail in the
`
`Madisetti Declaration and below, the proposed new claims are novel and
`
`result in an apparatus with combinations of features that would not have
`
`been obvious to a person of ordinary skill in the art at the time of the
`
`invention. MobileMedia respectfully requests that proposed new claims 19-
`
`23 be allowed.
`
`II. CLAIM LISTING
`
`The following is a listing of all claims at issue in this inter partes
`
`review, including new claims proposed in this Motion to Amend as
`
`substitute claims for canceled claims, marked up to show changes from the
`
`corresponding original ‘828 patent claims for which they are proposed as
`
`substitutes. Deleted language is in “strikethrough” font and added language
`
`is underlined.
`
`Claims 6, 7, 15, 17, 18. (Canceled)
`
`
`
`4
`
`
`
`
`19. (new claim, proposed substitute for claim 6) An image displaying
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`Attorney Docket No. 51020-057 USIPR
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`apparatus for displaying image data read from a recording medium,
`
`comprising:
`
`image signal generating means for generating an image signal for
`
`display based on image information read from the recording medium;
`
`image displaying means for displaying the image signal produced by
`
`the image signal generating means; and
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`means for determining a direction in which an image of the image
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`signal is to be displayed on the image displaying means according to a
`
`posture in which the apparatus is placed and information on a direction in
`
`which an image of the image signal is to be displayed read from the
`
`recording medium,
`
`said means for determining a direction comprising (a) a position
`
`sensor having a moving element that is movable in all directions to
`
`automatically detect which position the image display apparatus is placed,
`
`(b) an image processing block which displays said image signal in a correct
`
`direction regardless of the posture of the apparatus in response to a signal
`
`from said position sensor, and (c) a microcomputer,
`
`
`
`5
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`
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`
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`Attorney Docket No. 51020-057 USIPR
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`the apparatus further comprising a recognition sensor that provides a
`
`detection signal to said microcomputer based on which a displaying status of
`
`the image displaying means is changed.
`
`20. (new claim, proposed substitute for claim 7) The apparatus as set forth
`
`in claim 619further comprising means whereby the recording medium is set
`
`into the apparatus from outside, wherein said recognition sensor (a) emits
`
`light and (b) detects the light returned from a human body or object.
`
`21. (new claim, proposed substitute for claim 15) The apparatus as set forth
`
`in claim 620further comprising:
`
`
`
`
`
`means for detecting an amount of light around the apparatus; and
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`means for adjusting an operation of the image displaying means based
`
`on a decision signal from the light detecting means, wherein the displaying
`
`status remains changed for at least an expiration time unless the
`
`microcomputer receives said detection signal again.
`
`22. (new claim, proposed substitute for claim 17) The apparatus as set forth
`
`in claim 6 20, further comprising display mode selecting means for selecting
`
`one of a plurality of image displaying modes wherein said recognition sensor
`
`detects the light returned from a part of the human body at a distance of less
`
`than 20 cm.
`
`
`
`6
`
`
`
`
`23. (new claim, proposed substitute for claim 18) The apparatus as set
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`Attorney Docket No. 51020-057 USIPR
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`forth in claim 17 20, the image signal generating means generates an image
`
`for each of a plurality of menu items indicating the plurality of image
`
`displaying modes, and one of the plurality of menu items is selected by the
`
`display mode selecting means , wherein a slide show mode of display can be
`
`selected that does not require a key to be pressed to display each image and
`
`is different than a playback mode of display that requires a key to be pressed
`
`to display each image.
`
`III. DISCUSSION OF PROPOSED NEW CLAIMS 19-23, THE
`SPECIFICATION SUPPORT FOR THEM, AND THEIR
`PRIORITY DATE
`A claim limitation will be interpreted to invoke 35 U.S.C. § 112, ¶ 6, if
`
`it meets the following 3-prong analysis: (A) the claim limitation must use
`
`the phrase “means for” or “step for;”(B) the “means for” or “step for” must
`
`be modified by functional language; and (C) the phrase “means for” or “step
`
`for” must not be modified by sufficient structure, material or acts for
`
`achieving the specified function. See, e.g., Manual of Patent Examining
`
`Procedure (“MPEP”) § 2181.
`
`But even where a claim limitation uses the language “means for” or
`
`“step for” §112, ¶6, will not apply where the limitation is modified with
`
`sufficient structure for achieving the function. MPEP § 2181 (citing, e.g.,
`
`
`
`7
`
`
`
`
`Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1303-04, 50 U.S.P.Q.2d
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`Attorney Docket No. 51020-057 USIPR
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`1429, 1435-36 (Fed. Cir. 1999) (holding “positioning means for moving”
`
`does not invoke 35 U.S.C. §112, ¶ 6, because the claim further provides a
`
`list of the structure underlying the means and the detailed recitation of the
`
`structure for performing the moving function removes this element from the
`
`purview of 35 U.S.C. §112, ¶ 6); Cole v. Kimberly-Clark Corp., 102 F.3d
`
`524, 531, 41 U.S.P.Q.2d 1001, 1006 (Fed. Cir. 1996) (holding “perforation
`
`means for tearing” does not invoke 35 U.S.C. §112, ¶ 6, because the claim
`
`describes the structure supporting the tearing function (i.e., perforation)).
`
`Proposed new claim 19 is based on and adds limitations to ‘828 patent
`
`claim 6. (Ex. 2001 ¶ 53.) The “image signal generating means” as recited in
`
`proposed new claim 19 should be construed as RIM advocated and the
`
`Board construed it with regard to claim 6 in Paper 16. (Id.) The function is
`
`“generating an image signal for display” and the corresponding structure is
`
`the control microcomputer 42 and image processing blocks 43 and 65. (Id.
`
`(citing Paper 16 at 8-10 (citing Petition at 22-23 (citing Ex. 1001 at 5:51-59,
`
`9:17-22; Figs. 6, 15)).)
`
`The “image displaying means for displaying the image signal” as
`
`recited in proposed new claim 19 claim should be construed as RIM
`
`advocated and the Board construed it in Paper 16 with regard to claim 6.
`
`
`
`8
`
`
`
`
`(Ex. 2001 ¶ 54 (citing (Paper 16 at 10-11).) The function should be
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`Attorney Docket No. 51020-057 USIPR
`
`construed as “displaying the image signal” and the corresponding structure
`
`should be construed as a display panel such as an LCD or plasma display
`
`panel. Id. (citing Petition at 24 (citing Ex. 1001, 3:38-39; Fig. 3).)
`
`Proposed claim 19 further defines the invention by requiring the
`
`“means for determining a direction in which an image of the image signal is
`
`to be displayed on the image displaying means according to a posture in
`
`which the apparatus is placed and information on a direction in which an
`
`image of the image signal is to be displayed read from the recording
`
`medium” to include (a) a position sensor having a moving element that is
`
`movable in all directions to automatically detect which position the image
`
`display apparatus is placed, (b) an image processing block which displays
`
`said image signal in a correct direction regardless of the posture of the
`
`apparatus in response to a signal from said position sensor, and (c) a
`
`microcomputer. The addition of this structure to the element results in the
`
`element no longer invoking § 112, ¶ 6. (Ex. 2001 ¶¶ 55-57.) This amended
`
`claim limitation should thus be construed according to its plain, ordinary
`
`meaning in light of the specification. (Id.)
`
`This element of proposed claim 19 is supported in the ‘828 patent
`
`specification as filed. (See, e.g., Id. ¶ 57 (citing Ex. 1001, 6:26-36, 9:27-46;
`
`
`
`9
`
`
`
`
`Fig 6, element 41; Fig. 15, element 66, mislabeled as element 22); see also
`
`Attorney Docket No. 51020-057 USIPR
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`Paper 16 at 11 (citing Ex. 1001, 6:33-36, 9:42-46, Fig. 6, element 41, Fig.
`
`15, element 66).) The position detection switch 41 “may be either a type of
`
`which a moving element is moved in two directions or a type of which a
`
`pendulum type element is moved in all directions.” (See, e.g., Ex. 2001 ¶ 57
`
`(citing Ex. 1001, 6:26-36 (emphasis added).) This element of proposed
`
`claim 19 is also supported in the Japanese parent applications. (Id. Ex. 2001
`
`¶ 57 (citing Ex. 2008 ¶¶ [0033], [0055]-[0057]; Ex. 2007 ¶¶ [0018] -
`
`[0021].)) This element now cites sufficient structure to no longer invoke
`
`Section 112, paragraph 6. It should be construed according to its plain,
`
`ordinary meaning in light of the specification. (Id.)
`
`Proposed claim 19 also further defines the invention by requiring a
`
`recognition sensor that provides a detection signal to said microcomputer
`
`based on which a displaying status of the image displaying means is
`
`changed. (Ex. 2001 ¶ 58.)
`
`This element of proposed claim 19 is supported in the ‘828 patent
`
`specification. Original claims 3 and 16 recite a recognition means in means-
`
`plus-function format. The recognition sensor element of claim 19 is written
`
`in non-means-plus-function format, and is supported in the specification and
`
`the 1999 Japanese priority application. (See, e.g., Ex. 2001 ¶¶ 58-59 (citing,
`
`
`
`10
`
`
`
`
`e.g., Ex. 1001, 6:58-7:17, Figs. 1, 3, 6, 8, element 5, 10:30-42, Fig. 13,
`
`Attorney Docket No. 51020-057 USIPR
`
`element 56; Ex. 2008 ¶¶ [0037]-[0038]; Ex. 2007 ¶¶ [0022]-[0023]).) It
`
`should be construed according to its plain, ordinary meaning in light of the
`
`specification. Displaying status is described in the ‘828 patent specification
`
`as turning on or off supply of power to the display panel. Ex. 2001 ¶ 59
`
`(citing (Ex. 1001, 5:19-25, 6:60-7:23; Claims 3 and 4).)
`
`Proposed claim 20 is a substitute for claim 7, and depends from
`
`proposed claim 19. It more specifically defines the invention of proposed
`
`claim 19 by requiring recognition sensor (a) emits light and (b) detects a
`
`return light from a human body or object. (Ex. 2001 ¶ 60.)
`
`This element of claim 20 is written in non-means plus function format
`
`and should be construed according to its plain, ordinary meaning in light of
`
`the specification. It is supported in both the ‘828 patent specification and the
`
`Japanese priority applications. (See, e.g., Ex. 2001 ¶ 61 (citing Ex. 1001,
`
`6:58-7:17, Figs. 1-6, element 5; 10:30-42; Fig. 13, element 56; Ex. 2008 ¶¶
`
`[0037]-[0038]; Ex. 2007 ¶¶ [0022] -[0023]).)
`
`Proposed claim 21 is a substitute for claim 15 that more specifically
`
`defines the invention of claim 20 by requiring that the displaying status
`
`remains changed for at least an expiration time unless the microcomputer
`
`receives said detection signal again. (Ex. 2001 ¶ 62.)
`
`
`
`11
`
`
`
`
`
`Attorney Docket No. 51020-057 USIPR
`
`This added element of proposed claim 21 is written in non-means plus
`
`function format, and should be construed according to its plain, ordinary
`
`meaning in light of the specification. It is supported in the specification and
`
`is supported in both the ‘828 patent specification and the Japanese priority
`
`applications. (See, e.g., Ex. 2001 ¶ 63 (citing Ex. 1001, 7:18-7:23, Figs. 1-6,
`
`element 5, 10:30-42, Fig. 13, element 56, claims 3 and 4 Ex. 2008 ¶¶ [0037]-
`
`[0039]; claims 3 and 4; Ex. 2007 ¶¶ [0022] -[0023]).) It should be construed
`
`according to its plain, ordinary meaning based on the specification. (Ex.
`
`2001 ¶ 63.)
`
`Proposed new claim 22 is a substitute for claim 17 that more
`
`specifically defines the invention of claim 21 by requiring the recognition
`
`sensor detects light from a part of the human body at a distance of less than
`
`20 cm. (Ex. 2001 ¶ 64)
`
`This added element of proposed new claim 22 is written in non-means
`
`plus function format, and should be construed according to its plain,
`
`ordinary meaning in light of the specification. (Ex. 2001 ¶ 64.) It is
`
`supported in both the ‘828 patent specification and the 1999 Japanese
`
`priority application. (See, e.g., Ex. 2001 ¶ 65 (citing Ex. 1001, 7:3-7, 7:22-
`
`23; Ex. 2008 ¶¶ [0037]-[0039]).)
`
`
`
`12
`
`
`
`
`
`Attorney Docket No. 51020-057 USIPR
`
`Proposed new claim 23 is a substitute for claim 18 that more
`
`specifically defines the invention to require that the apparatus has a slide
`
`show mode of display that can be selected that does not require a key to be
`
`pressed to display each image and is different than a playback mode of
`
`display that requires a key to be pressed to display each image. (Ex. 2001 ¶
`
`66.)
`
` This added element of proposed new claim 23 is recited in non-means-
`
`plus function language, and should be construed according to its plain,
`
`ordinary meaning in light of the specification. Proposed claim 23 is
`
`supported in both the ‘828 patent specification and the Japanese priority
`
`applications. (See, e.g., Ex. 2001 ¶ 67 (citing Ex. 1001, 4:14-20, 5:51-54,
`
`11:36-46, 12:27-29, 12:36-39; Figs. 13, 15; Ex. 2008, ¶¶ [0018], [0019],
`
`[0064], [0070]; Ex. 2007 ¶ [0027]).)
`
`The ‘828 patent states that a control button on the panel may include a
`
`display mode for “slide show of a digital image, fade display and the like.”
`
`(Ex. 1001, 11:36-46.) The ‘828 patent describes a slide show mode of
`
`display that differs from a playback mode as indicated by the play start stop
`
`button and fast forward/backward search buttons and it describes keys 18a,
`
`18b, 18c, 18d, and 18e, which are select and set control buttons for a
`
`playback mode that differs from the slide show mode of display in that the
`
`
`
`13
`
`
`
`
`playback mode requires a key to be pressed to display each individual image
`
`Attorney Docket No. 51020-057 USIPR
`
`The device can play back images stored on a removable memory card 12 or
`
`built-in memory 63 on the apparatus. (See, e.g., Ex. 1001, Fig. 6, element
`
`12; Fig. 15, element 63.)
`
`IV. THE PROPOSED NEW CLAIMS 19-23 ARE PATENTABLY
`DISTINCT FROM THE PETITION PRIOR ART.
`As explained in greater detail in the Madisetti Declaration, new claims
`
`19-23 are patentably distinct from the Petition Prior Art (Ex. 2001 at ¶¶ 68 -
`
`132.) The proposed new claims recite an apparatus with the automatic
`
`display features described above that incorporate additional combinations of
`
`features that would not have been obvious to a person of ordinary skill at the
`
`time of the invention based on the Petition Prior Art. (Id.)
`
`
`
`14
`
`
`
`
`V. RELIEF REQUESTED
`
`Attorney Docket No. 51020-057 USIPR
`
`For the foregoing reasons and the reasons stated in the Madisetti
`
`Declaration, MobileMedia respectfully submits that the proposed new claims
`
`19-23 are supported by the specification and Japanese priority applications,
`
`are novel and would not have been obvious to a person of ordinary skill in
`
`the art as of the time of the invention of the ‘828 patent and therefore should
`
`PROSKAUER ROSE LLP
`
`/Anthony C. Coles, Reg. No. 34,139/
`Anthony C. Coles, Reg. No. 34,139
`
`/John C. Stellabotte, Reg. No. 47,969/
`John C. Stellabotte, Reg. No. 47,969
`Attorneys for Patent Owner
`
`
`
`15
`
`be allowed.
`
`
`
`
`
`
`
`
`
`
`
`Date: May 20, 2013
`PROSKAUER ROSE LLP
`One International Place
`Boston, Massachusetts 02110
`
`
`
`
`
`
`EXHIBIT APPENDIX
`
`Exhibit
`2001
`2002
`
`2003
`2004
`2005
`2006
`2007
`2008
`
`2009
`2010
`
`
`Description
`Declaration of Dr. Vijay K. Madisetti, dated May 20, 2013
`CV of Dr. Vijay K. Madisetti
`Proposed new claims marked up to show changes from the
`original ‘828 patent claims for which they are proposed as
`substitutes
`Clean version of proposed new claims
`Japanese Patent Application JP-10-254231
`Japanese Patent Application JP 11-016215
`Certified Translation of JP 10-254231
`Certified Translation of JP 11-016215
`Markman Order in MobileMedia Ideas, LLC v.
`Research In Motion, Ltd, Civil Action No. 3:11-CV-2353-N
`(N.D. Tex.), dated February 27, 2013
`U.S. Patent Application No. 08/384,012
`
`
`
`
`
`
`
`Attorney Docket No. 51020-057 USIPR
`
`
`
`CERTIFICATE OF SERVICE
`
`
`The undersigned certifies that THE PATENT OWNER’S MOTION
`TO AMEND THE PATENT and Exhibits 2001-2010 were served on May
`20, 2013 in their entirety electronically on:
`
`
`CPdocketMattson@oblon.com
`
`/John C. Stellabotte, Reg. No. 47,969/
`John C. Stellabotte, Reg. No. 47,969
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