UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`RESEARCH IN MOTION CORPORATION
`Petitioner
`
`v.
`
`MOBILEMEDIA IDEAS LLC
`Patent Owner
`____________
`
`Case IPR2013-00016 (JYC)
`Patent U.S. 6,441,828
`
`____________
`
`
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO AMEND
`
`388883US
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`RESEARCH IN MOTION CORPORATION
`Petitioner
`
`v.
`
`MOBILEMEDIA IDEAS LLC
`Patent Owner
`____________
`
`Case IPR2013-00016 (JYC)
`Patent U.S. 6,441,828
`
`____________
`
`
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO AMEND
`
`388883US
`
`
`
`
`
`U.S. Patent 6,441,828
`Opposition to Motion to Amend
`
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`TABLE OF CONTENTS
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`Page
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`MMI’s MOTION IS NON-COMPLIANT ...................................................... 1
`
`I.
`
`II.
`
`THE SUBSTITUTE CLAIMS ARE UNPATENTABLE............................... 2
`
`A.
`
`
`
`Claim 19 Is Indefinite under 35 U.S.C. § 112 ¶ 2 ................................. 2
`
`1.
`
`2.
`
`The term “means for determining …” still invokes § 112 ¶ 6 .... 2
`
`The ‘828 Patent Does Not Describe an Algorithm for
`Performing the Claimed Function of “determining ….” ............ 4
`
`B.
`
`
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`C.
`
`
`
`D.
`
`
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`E.
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`
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`F.
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`Claim 19 Lacks Written-Description Support in the Specification ...... 7
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`Claim 21 is Indefinite under § 112 ¶ 2 .................................................. 7
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`Claim 21 Lacks Written-Description Support in the Specification ...... 8
`
`Claim 23 Lacks Written-Description Support in the Specification ...... 8
`
`If “means for determining …” No Longer Invokes § 112 ¶ 6, then
`Claim 19 Impermissibly Enlarges the Original Claim’s Scope ............ 9
`
`1.
`
`2.
`
`Claim 19 Recites a “Position Sensor,” whereas the
`Corresponding Structure in Claim 6 is a “Position Detection
`Switch” ........................................................................................ 9
`
`Claim 19 Does Not Include Structure to Perform the
`Function of “determining a direction … according to
`[1] a posture … and [2] information on a direction …
`read from the recording medium” ............................................. 10
`
`G.
`
`
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`Claims 19–23 Are Unpatentable as Obvious under
`35 U.S.C. § 103 ................................................................................... 13
`
`III. CONCLUSION .............................................................................................. 15
`
`
`
`i
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`U.S. Patent 6,441,828
`Opposition to Motion to Amend
`
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`TABLE OF AUTHORITIES
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`Page
`
`Cases
`
`Altiris, Inc. v. Symantec Corp.,
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`318 F.3d 1363 (Fed. Cir. 2003). ...................................................................... 2
`
`Ariad Pharm., Inc. v. Eli Lilly & Co.,
`598 F.3d 1336 (Fed. Cir. 2010) (en banc) ...................................................... 7
`
`
`Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech.,
`
`521 F.3d 1328 (Fed. Cir. 2008) ...................................................... 4, 5, 11, 12
`
`Harris Corp. v. Ericsson Inc.,
`
`417 F.3d 1241 (Fed. Cir. 2005) ..................................................................... 12
`
`KSR Int'l Co. v. Teleflex Inc.,
`
`550 U.S. 398 (2007)....................................................................................... 14
`
`Quantum Corp. v. Rodime, PLC,
`
`65 F.3d 1577 (Fed. Cir. 1995) ......................................................................... 9
`
`Statutes
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`35 U.S.C. § 112, ¶ 1 .............................................................................................. 7, 8
`
`35 U.S.C. § 112, ¶ 2 ............................................................................................... 2, 7
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`35 U.S.C. § 112, ¶ 6 ..........................................................................................passim
`
`35 U.S.C. § 316(d)(3)........................................................................................... 9, 13
`
`Rules and Other Authorities
`
`37 C.F.R. § 42.121(a)(2) ............................................................................................ 1
`
`Idle Free Systems, Inc. v. Bergstrom, Inc.,
`
`Case IPR2012-0027 (JL), Paper 26 (June 11, 2013) ................................... 1, 2
`
`
`
`ii
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`U.S. Patent 6,441,828
`Opposition to Motion to Amend
`
`I.
`
`MMI’s MOTION IS NON-COMPLIANT
`
`MobileMedia Ideas LLC’s (“MMI”) Motion to Amend (“Motion”) fails to
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`comply with the Board’s Order of May 16, 2013, which states, “MobileMedia must
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`explain how the proposed substitute claims obviate the grounds of unpatentability
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`authorized in this trial, and why they are patentable over the prior art of record.”
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`(Paper 20, 3.) MMI’s Motion acknowledges that requirement but merely points to
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`the Madisetti Declaration for providing the requisite explanation. (Mot. 14.)
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`Because the Motion lacks the required explanation, it should be denied.
`
`
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`Independently, the Board should deny the Motion because it fails to provide
`
`a claim construction. The Order of May 16, 2013 states that MMI “should include
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`a claim construction of the proposed substitute claims.” (Paper 20, 3.) MMI’s
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`repetitive statements that the new claim language “should be construed according
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`to its plain, ordinary meaning” (Mot. 9–13) is insufficient because it prejudices
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`RIM’s ability to explain how the claims are unpatentable within the 15-page limit
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`of this Opposition.
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`
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`Additionally, the Motion should be denied with respect to claims 20–23
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`because it fails to comply with 37 C.F.R. § 42.121(a)(2). Those claims “do[] not
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`either include or narrow each feature of the challenged claim[s] being replaced.”
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`Idle Free Sys. v. Bergstrom., IPR2012-0027, Paper 26, June 11, 2013, 5. Substitute
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`claims 20–23 improperly delete many of the original claim features. (See Mot. 5-
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`
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`1
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`U.S. Patent 6,441,828
`Opposition to Motion to Amend
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`7.) This is improper because “a substitute claim may not enlarge the scope of the
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`challenged claim it replaces by eliminating any feature.” Idle Free Sys., 5.
`
`II.
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`THE SUBSTITUTE CLAIMS ARE UNPATENTABLE
`
`A.
`
` Claim 19 Is Indefinite under 35 U.S.C. § 112 ¶ 2
`
`1.
`
`The term “means for determining …” still invokes § 112 ¶ 6
`
`
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`MMI’s argument that “means for determining …” in claim 19 is not a
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`means-plus-function limitation is incorrect. (See Mot. 9.) A claim limitation is
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`presumed to invoke § 112 ¶ 6 when it explicitly uses the phrase “means for” and
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`includes functional language. The presumption applies here because claim 19 uses
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`the term “means for” and recites the function “determining a direction in which an
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`image of the image signal is to be displayed on the image displaying means
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`according to [1] a posture in which the apparatus is placed and [2] information on a
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`direction in which an image of the image signal is to be displayed read from the
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`recording medium.” (Bracketed annotations added.)
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`The structural limitations that MMI adds to claim 19 are insufficient to
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`overcome the presumption that § 112 ¶ 6 applies. “This presumption can be
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`rebutted where the claim, in addition to the functional language, recites structure
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`sufficient to perform the claimed function in its entirety.” Altiris, Inc. v. Symantec
`
`Corp., 318 F.3d 1363, 1375–76 (Fed. Cir. 2003) (emphasis added). As shown
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`below, MMI clearly has not overcome this presumption.
`
`
`
`2
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`U.S. Patent 6,441,828
`Opposition to Motion to Amend
`
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`Claim 19 appends to claim 6 the following language relating to the “means
`
`for determining”:
`
`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
`
`(Mot. 5.) Sub-elements (a) and (b) above pertain only to the posture of the
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`apparatus. With respect to posture, the position sensor “detect[s] which position the
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`image display apparatus is placed,” and the image-processing block “displays said
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`image signal in a correct direction regardless of the posture of the apparatus in
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`response to a signal from said position sensor.” Neither the position sensor nor the
`
`image-processing block determines the display direction according to “[2]
`
`information on a direction in which an image of the image signal is to be displayed
`
`read from the recording medium.” (See Ex. 1001, 6:26–35.)
`
`
`
`That leaves the microcomputer, claim 19 sub-element (c). The generic
`
`microcomputer is insufficient structure for performing the function of “determining
`
`a direction in which an image of the image signal is to be displayed on the image
`
`displaying means according to [1] a posture in which the apparatus is placed and
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`[2] information on a direction in which an image of the image signal is to be
`
`
`
`3
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`U.S. Patent 6,441,828
`Opposition to Motion to Amend
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`displayed read from the recording medium.” At best, the structure in claim 19 only
`
`relates to the use of the posture to determine the direction in which to display an
`
`image. There is no structure in claim 19 that determines the direction according to
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`“[2] information on a direction in which an image of the image signal is to be
`
`displayed read from the recording medium.” Accordingly, claim 19 sub-elements
`
`(a), (b), and (c) are insufficient to overcome the presumption that § 112 ¶ 6 applies.
`
`2.
`
`The ‘828 Patent Does Not Describe an Algorithm for
`Performing the Claimed Function of “determining ….”
`
`
`
`As noted in the cited portions of the ‘828 patent in the Board’s Decision
`
`instituting inter partes review, the control microcomputer is the only structure in
`
`the ‘828 patent that receives both information about the posture of the apparatus
`
`and displaying-direction information read from memory. (Paper 16, 11.) Because
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`“determining …” in claim 19 is a computer (microcomputer) implemented
`
`function, the corresponding structure under § 112 ¶ 6 must include the algorithm
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`with which the control microcomputer is programmed for performing the claimed
`
`function. Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328,
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`1333 (Fed. Cir. 2008). However, the specification fails to include an algorithm that
`
`explains how the control microcomputer uses the posture information and the
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`displaying-direction information to determine a direction in which an image of the
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`apparatus is to be displayed, as claimed. For example, the specification does not
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`indicate whether the microcomputer compares the posture information with the
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`
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`4
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`U.S. Patent 6,441,828
`Opposition to Motion to Amend
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`direction-displaying information, or whether it rotates the image (or not) once
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`based on the posture information and rotates it again (or not) based on the
`
`displaying-direction information. The ‘828 patent is silent with respect to the
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`algorithm used to determine the correct direction to display an image according to
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`both [1] a posture in which the apparatus is placed and [2] information on a
`
`direction in which an image is to be displayed read from the recording medium.
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`A computer-implemented means-plus-function limitation is indefinite if the
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`specification fails to disclose the algorithm corresponding to the function.
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`Aristocrat, 521 F.3d at 1337-38. Claim 19 is unpatentable because it requires a
`
`microcomputer to perform the specialized function of “determining” based on [1]
`
`posture and [2] information from the recording medium and the specification does
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`not disclose an algorithm for performing that function. The specification discloses
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`the inputs (position detection switch 41 and displaying-direction information from
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`memory card 12) but is silent as to how that data is used to determine which way to
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`display an image. (Ex. 1001, 6:19–35.)
`
`Clearly recognizing this deficiency, MMI attempts to supplement the
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`disclosure of the ‘828 patent with an expert declaration. However, the Madisetti
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`Declaration affords the ‘828 patent no help. Madisetti alleges that the
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`“specification describes how the invention uses and compares the two data points”
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`to achieve the “determining” function of claim 19 (Ex. 2001 ¶ 33, emphasis
`
`
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`5
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`U.S. Patent 6,441,828
`Opposition to Motion to Amend
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`added), but the ‘828 patent, in fact, says nothing about comparing two data points
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`to determine a display direction. He also improperly splices together the two
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`independent embodiments described in the ‘828 patent. (Id. ¶¶ 33–35.) The first
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`embodiment is described in relation to Figures 1–12, and the second embodiment
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`is described in relation to Figures 13–17 starting at column 7, line 57. The second
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`embodiment cannot be used as support for the substitute claims because it does not
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`include the claim 19 element “microcomputer” and it does not describe any
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`structure that determines the correct direction to display an image according to
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`both “[1] a posture in which the apparatus is placed and [2] information on a
`
`direction in which an image is to be displayed read from the recording medium.”
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`(See Ex. 1001, 9:42–46, Fig. 15.) The second embodiment determines the display
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`direction based only on “[1] a posture in which the apparatus is placed.” (See Ex.
`
`1001, 9:27–46.)
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`Independently, the specification and claim 19 contradict each other as to
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`what structure performs the function of “determining a direction ….” The
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`specification implies that the “microcomputer” is programmed to determine a
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`direction, see Ex. 1001, 6:19–35, but claim 19 states that the “image processing
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`block [] displays said image signal in a correct direction regardless of the posture
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`of the apparatus in response to a signal from said position sensor.” Thus, claim 19
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`
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`6
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`U.S. Patent 6,441,828
`Opposition to Motion to Amend
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`combines the image processing block from the second embodiment with the
`
`microcomputer from the first embodiment, leaving claim 19 insolubly ambiguous.
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`Accordingly, claim 19 and all claims dependent therefrom are indefinite
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`under 35 U.S.C. § 112 ¶ 2. For these reasons alone, the Motion should be denied.
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`B.
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` Claim 19 Lacks Written-Description Support in the Specification
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`Under the written description requirement of 35 U.S.C. § 112 ¶ 1, the patent
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`specification must reasonably convey to those skilled in the art that the inventor
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`had possession of the claimed subject matter as of the filing date. Ariad Pharm.,
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`Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). As noted
`
`above, claim 19 combines elements of the first embodiment and the second
`
`embodiment described in the ‘828 patent’s specification. There is no written-
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`description support in the ‘828 patent or the foreign priority applications for an
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`apparatus that combines the image processing block of the second embodiment
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`with the microcomputer of the first embodiment. Accordingly, claim 19 is
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`unpatentable under § 112 ¶ 1.
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`C.
`
` Claim 21 is Indefinite under § 112 ¶ 2
`
`A person of ordinary skill in the art would not understand the scope of the
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`claim 21 phrase “unless the microcomputer receives said detection signal again,”
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`in light of the specification. Specifically, it is not possible to discern whether
`
`receiving the detection signal again causes the expiration time to reset or whether
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`
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`7
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`U.S. Patent 6,441,828
`Opposition to Motion to Amend
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`no change takes place until the expiration time expires. The specification discusses
`
`keeping the display status changed for a set time following a detection signal but
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`provides no discussion as to what may happen if the microcomputer receives the
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`detection signal again. (Ex. 1001, 7:18–23.) Therefore, claim 21 is indefinite.
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`D.
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` Claim 21 Lacks Written-Description Support in the Specification
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`Further, claim 21 is unpatentable under 35 U.S.C. § 112 ¶ 1 because it lacks
`
`written-description support in the specification. As discussed above, the
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`specification fails to describe what happens when the apparatus receives
`
`subsequent detection signals, as required by the claim 21 phrase “unless the
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`microcomputer receives said detection signal again.” Thus, the specification does
`
`not convey to a person of ordinary skill in the art that the inventor possessed the
`
`claimed subject matter as of the filing date.
`
`E.
`
` Claim 23 Lacks Written-Description Support in the Specification
`
`Claim 23 is unpatentable under 35 U.S.C. § 112 ¶ 1 because it lacks written-
`
`description support. Claim 23 depends on claim 20, which in turn depends on
`
`claim 19. Claim 23 improperly combines the “slide show mode” feature (Ex. 1001,
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`11:35–45) of the second embodiment with the subject matter of claim 19, which
`
`corresponds to the first embodiment. As noted above, the first embodiment – but
`
`not the second embodiment – determines the correct direction to display an image
`
`according to both [1] a posture in which the apparatus is placed and [2]
`
`
`
`8
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`U.S. Patent 6,441,828
`Opposition to Motion to Amend
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`information on a direction in which an image is to be displayed read from the
`
`recording medium, as recited in claim 19. (See Ex. 1001, 9:42–46, Fig. 15.)
`
`F.
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`
`
`If “means for determining …” No Longer Invokes § 112 ¶ 6, then
`Claim 19 Impermissibly Enlarges the Original Claim’s Scope
`
`The Board should deny the Motion because the substitute claims improperly
`
`enlarge the scope of the original claims of the ‘828 Patent, in violation of 35
`
`U.S.C. § 316(d)(3). A new claim broadens the scope of the original claims if it
`
`includes any subject matter that would not have infringed the original patent.
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`Quantum Corp. v. Rodime, PLC, 65 F.3d 1577, 1580 (Fed. Cir. 1995) (observing
`
`that a new claim is broader than original claims if it is broader in any respect).
`
`1. Claim 19 Recites a “Position Sensor,” whereas the Corresponding
`Structure in Claim 6 is a “Position Detection Switch”
`
`The Board construed the “means for determining a direction” in claim 6
`
`under § 112 ¶ 6, and determined that the corresponding structure in the ‘828 patent
`
`specification is “the control microcomputer, the position detection switch, and the
`
`image processing block.” (Paper 16, 12.) MMI argues that the “means for
`
`determining a direction” in proposed claim 19 does not invoke § 112 ¶ 6. (Mot. 9.)
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`If claim19 does not invoke § 112 ¶ 6, then the proposed amendment impermissibly
`
`enlarges the scope of the claims, unless claim 19 recites the same structure (or
`
`equivalents) that corresponds to the “means for determining a direction” in claim 6.
`
`It does not.
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`
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`9
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`
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`U.S. Patent 6,441,828
`Opposition to Motion to Amend
`
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`Claim 19 improperly enlarges the scope of claim 6 by claiming a “position
`
`sensor having a moving element …” instead of the “position detection switch”
`
`described in the ‘828 patent specification. A device that uses a position sensor
`
`having a moving element to determine the posture of the device cannot literally
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`infringe claim 6 unless the position sensor is a position detection switch or the
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`accused structure is equivalent to the corresponding structure in the specification,
`
`including the position detection switch. Accordingly, by claiming a “position
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`sensor” in claim 19, MMI attempts to enlarge the scope of the original claims.
`
`2.
`
`Claim 19 Does Not Include Structure to Perform the
`Function of “determining a direction … according to [1] a
`posture … and [2] information on a direction … read from
`the recording medium”
`
`MMI proposes new claim 19 as a substitute for claim 6, and asserts that
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`“[t]he addition of [new] structure to the element [means for determining a
`
`direction] results in the element no longer invoking § 112, ¶ 6.” (Mot. 9.) On its
`
`face, substitute claim 19 enlarges the scope of claim 6 because, if written in non-
`
`means-plus-function format, claim 19 is no longer “construed to cover the
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`corresponding structure, material, or acts described in the specification and
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`equivalents thereof.” 35 U.S.C. § 112, ¶ 6.
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`Analysis of the scope of the “means for determining” limitation in claim 6 is
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`necessary to determine whether claim 19 improperly enlarges the scope of the
`
`original claims. In construing claim 6, the Board made no determination with
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`
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`10
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`U.S. Patent 6,441,828
`Opposition to Motion to Amend
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`respect to whether that structure was sufficient to perform the claimed function or
`
`with respect to the algorithm that the control microcomputer uses to perform the
`
`claimed function. (Paper 16, 12.) This would have raised issues of indefiniteness,
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`which are not addressed for original claims in inter partes review.
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`Because the Board’s construction identifies the control microcomputer as
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`corresponding structure, that structure also includes the algorithm disclosed in the
`
`specification for performing the claimed function. See Aristocrat Techs. Australia
`
`Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). The function in
`
`claim 6 reads: “determining a direction in which an image of the image signal is to
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`be displayed on the image displaying means according to [1] a posture in which the
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`apparatus is placed and [2] information on a direction in which an image of the
`
`image signal is to be displayed read from the recording medium.” As noted by the
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`Board’s citations to the ‘828 patent’s specification, the image processing block
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`determines a direction in which an image is to be displayed “according to the
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`position detection signal.” (Paper 16, 12, citing Ex. 1001, 9:27–46.) Thus, the
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`image-processing block does not determine an image display direction based on
`
`both [1] the posture in which the apparatus is placed and [2] direction information
`
`read from the recording medium, as claimed.
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`The control microcomputer is the only structure in the ‘828 patent that
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`receives both [1] a signal indicating the detected posture and [2] displaying-
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`
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`11
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`U.S. Patent 6,441,828
`Opposition to Motion to Amend
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`direction information from the memory card. (See Paper 16, 11, citing Ex. 1001,
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`6:26–35.) Consequently, it is also the only structure in the ‘828 patent that can
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`“determin[e] a direction in which an image of the image signal is to be displayed
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`on the image displaying means according to [1] a posture in which the apparatus is
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`placed and [2] information on a direction in which an image of the image signal is
`
`to be displayed read from the recording medium,” as recited in claim 6. Because
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`this is a computer implemented function, the corresponding structure under § 112 ¶
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`6 must include the algorithm with which the control microcomputer is programmed
`
`for performing the claimed function. Aristocrat, 521 F.3d at 1333.
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`Proposed claim 19 does not recite an algorithm for performing the claim
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`6/claim19 function of “determining a direction in which an image of the image
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`signal is to be displayed … according to a posture in which the apparatus is placed
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`and information on a direction in which an image of the image signal is to be
`
`displayed read from the recording medium.” Thus, if the “means for determining
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`…” in claim 19 no longer invokes § 112 ¶ 6, then the scope of claim 19 is enlarged
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`relative to claim 6 because claim 6 invokes § 112 ¶ 6, and “the corresponding
`
`structure is the algorithm,” which is not recited in claim 19. Harris Corp. v.
`
`Ericsson Inc., 417 F.3d 1241, 1253 (Fed. Cir. 2005).
`
`Proposed claim 19 encompasses any apparatus that uses the elements recited
`
`therein, irrespective of the algorithm used by the control microcomputer to perform
`
`
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`12
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`U.S. Patent 6,441,828
`Opposition to Motion to Amend
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`the claimed function. Because “means for determining . . .” in claim 6 invokes
`
`§ 112 ¶ 6 and is limited to the algorithm described in the specification for
`
`performing the claimed function, claim 19, if it no longer involves § 112 ¶ 6,
`
`encompasses subject matter that does not infringe claim 6. Claim 6 includes the
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`corresponding structure for determining a direction in which an image of the image
`
`signal is to be displayed according to, among other things, [2] information on a
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`direction in which an image of the image signal is to be displayed read from the
`
`recording medium. Claim 19 omits that structure if it does not invoke § 112 ¶ 6.
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`Section 316(d)(3) forbids enlarging the scope of claims during inter partes review
`
`proceedings, and therefore the Board should deny MMI’s Motion.
`
`G.
`
` Claims 19–23 Are Unpatentable as Obvious under 35 U.S.C. § 103
`
`Claim 19–22 are obvious over Anderson (Ex. 1002) in view of Fullam (Ex.
`
`1008) and Williams (Ex. 1009).1 Anderson teaches all the limitations of claim 19
`
`except the position sensor and the recognition sensor, and MMI does not argue
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`otherwise. The claimed position sensor reads on an orientation sensor, such as
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`Fullam’s, that includes a mass (ball 330) movable in all directions. (Ex. 1008,
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`3:34–40, Figs. 5A, 5B.) One of ordinary skill in the art would have understood that
`
`Fullam’s orientation sensor could be used in Anderson’s orientation unit to detect
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`1 Fullam is 102(b) prior art. Williams is 102(e) prior art relative to MMI’s alleged
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`January 25, 1999 priority date. (Mot. 3.)
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`13
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`U.S. Patent 6,441,828
`Opposition to Motion to Amend
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`orientation. The claimed recognition sensor reads on a proximity detector, such as
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`Williams’s, that uses reflected light to detect the presence of a user and adjust a
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`backlit LCD display to save power. (Ex. 1009, 10:61–64, 11:11–30, Fig.15.) One
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`of ordinary skill in the art would have understood that Anderson’s LCD could be
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`controlled with Williams’s proximity detector to save power. (Ex. 1009, 2:1–5.)
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`See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
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`With respect to claims 20–22, Williams’s detector emits light periodically
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`and detects the light reflected from a person’s eye. (Ex. 1009, 11:19–21, 11:26–
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`31.) If the eye is not detected then the backlight is powered down. (Id.) Williams’s
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`detector inherently can detect reflected light at less than 20 cm, as evidenced by
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`Hirasawa, which uses a recognition sensor to detect reflections from an eye
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`looking through a viewfinder of a still camera. (Ex. 1010, 1:8, 8:16–24.)2
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`Claim 23 is obvious over Anderson, Fullam, Williams, and FlashPoint,
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`which describes an improvement for a camera’s slide show feature. (Ex. 1012,
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`5:59–6:14.) FlashPoint describes that the claimed slide show mode was a
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`conventional digital camera feature. (Id. 1:38–45.) One of ordinary skill in the art
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`would have realized that Anderson’s camera could be predictably enhanced with
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`the conventional or improved slide show feature of FlashPoint.
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`2 Torres (Ex. 1011, 5:9–10) evidences that prior art cameras could have
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`conventional viewfinders and LCD view finders.
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`U.S. Patent 6,441,828
`Opposition to Motion to Amend
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`Claims 19–22 are obvious over Nagasaki (Ex. 1004) in view of Kagle (Ex.
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`1005), Fullam (Ex. 1008), and Williams (Ex. 1009). It would have been obvious to
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`one of ordinary skill in the art to combine Fullam and Williams with the
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`combination of Nagasaki and Kagle set forth in the Petition for the same apparent
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`reasons stated above for Anderson. Claim 23 is obvious over Nagasaki in view of
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`Kagle, Fullam, Williams, and FlashPoint. It would have been obvious to one of
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`ordinary skill in the art that FlashPoint’s slide show feature would predictably
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`benefit Nagasaki’s tablet, which also has an LCD display.
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`III.
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`CONCLUSION
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`For the foregoing reasons, MMI’s Motion to Amend should be denied.
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`Respectfully submitted,
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`/Robert C. Mattson /
`Robert C. Mattson, Reg. #42,850
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`Customer Number: 22850
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`U.S. Patent 6,441,828
`Opposition to Motion to Amend
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`EXHIBIT APPENDIX
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`U.S. Patent No. 6,441,828 (for inter partes review)
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`U.S. Patent No. 6,262,769 (“Anderson”), issued July 17, 2001,
`and filed July 31, 1997
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`U.S. Patent No. 5,760,760 (“Helms”), issued June 2, 1998, and
`filed July 17, 1995
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`European Patent Application Pub. No. 0587161A2
`(“Nagasaki”), published March 16, 1994.
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`U.S. Patent No. 6,148,149 (“Kagle”), issued November 14,
`2000, and filed May 26, 1998
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`U.S. Patent No. 6,396,472 (“Jacklin”), issued May 28, 2002,
`and filed October 28, 1996
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` MobileMedia Ideas, LLC v. Apple, Inc., Civ. No. 10-258-SLR,
`Memorandum Opinion filed November 8, 2012
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`U.S. Patent No. 5,764,291 (“Fullam”), issued June 9, 1998 and
`filed September 30, 1994
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`U.S. Patent No. 6,956,564 (“Williams”), issued October 18,
`2005 and filed October 8, 1998
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`U.S. Patent No. 6,091,450 (“Hirasawa”), issued July 18, 2000
`and filed June 10, 1997
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`U.S. Patent No. 6,738,075 (“Torres”), issued May 18, 2004 and
`filed December 31, 1998
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`U.S. Patent No. 5,812,736 (“Flashpoint”), issued September 22,
`1998 and filed September 30, 1996
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`16
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`Exhibit 1001
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`Exhibit 1002
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`Exhibit 1003
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`Exhibit 1004
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`Exhibit 1005
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`Exhibit 1006
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`Exhibit 1007
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`Exhibit 1008
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`Exhibit 1009
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`Exhibit 1010
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`Exhibit 1011
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`Exhibit 1012
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`U.S. Patent 6,441,828
`Opposition to Motion to Amend
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`CERTIFICATE OF SERVICE
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`I hereby certify that, on July 18, 2013, I caused a true and correct copy of the
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`foregoing PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION
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`TO AMEND to be served electronically on the following:
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`MMI-USPTO-Comm@Proskauer.com
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`/Robert C. Mattson/
`Robert C. Mattson, Reg. #42,850
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`17
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