`
`Attorney Docket No. 51020-057 USIPR
`
`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
`____________
`
`SECOND DECLARATION OF DR. VIJAY K. MADISETTI
`
`I. INTRODUCTION AND SCOPE OF ASSIGNMENT
`
`1.
`
`My name is Dr. Vijay Madisetti. I am a tenured Professor in Electrical and
`
`Computer Engineering at Georgia Tech, where I have been teaching since 1989,
`
`and a Fellow of the IEEE. A copy of my CV (Ex. 2002), which sets forth my
`
`qualifications in greater detail is attached to the Declaration of Dr. Vijay K.
`
`Madisetti (Ex. 2001) as Appendix A.
`
`2.
`
`My background, retention by the Patent Owner of U.S. Patent No. 6,441,828
`
`(“the ‘828 patent”), MobileMedia Ideas LLC (“MobileMedia”) in connection with
`
`the Petition For Inter Partes Review of U.S. Patent No. 6,441,828 Under 35 U.S.C.
`
`§ 312 And 37 C.F.R. § 42.104, dated October 12, 2012 (“Petition”) are briefly
`
`described at paragraphs 1-12 of Ex. 2001.
`
`1
`
`MobileMedia
`EX. 2011, Page1
`RIM v. MobileMedia
`Case IPR2013-00016
`
`
`
`
`
`3.
`
`I submit this Second Declaration in connection with MobileMedia’s Motion
`
`Attorney Docket No. 51020-057 USIPR
`
`to Amend the Patent, in which it cancelled original claims 6, 7, 15, 17, and 18, and
`
`proposed new substitute claims 19 through 23.
`
`4.
`
`I have reviewed the Petitioner’s Opposition to Patent Owner’s Motion To
`
`Amend, dated July 18, 2013 (“Opposition”), as well as the additional exhibits
`
`submitted concurrently with the Opposition that were not submitted with the
`
`Petition: Ex. 1008)( U.S. Patent No. 5,764,291 (“Fullam”), issued June 9, 1998
`
`and filed September 30, 1994); Ex. 1009 (U.S. Patent No. 5,956,564 (“Williams”),
`
`issued October 18, 2005 and filed October 8, 1998); Ex. 1010 (U.S. Patent No. 6,
`
`091,450 (“Hirasawa”), issued July 18, 2000 and filed June 10, 1997); Ex. 1011
`
`(U.S. Patent No. 6, 738,075 (“Torres”) issued May 18, 2004 and filed December
`
`31, 1998); Ex. 1012 (U.S. Patent No. 5,812,736 (“Flashpoint”) issued September
`
`22, 1998 and filed September 30, 1996) (collectively, “the Opposition Prior Art ”) .
`
`5.
`
` As I explained in paragraphs 53-67 of Ex. 2001, it is my technical opinion
`
`that proposed new claims 19-23 are supported by the written description of the
`
`specification of the ‘828 patent and the written description of the Japanese
`
`applications to which the application that matured into the ‘828 patent claims
`
`priority.
`
`6.
`
`As I explained in paragraphs 68-132 of Ex. 2001, it was my technical
`
`opinion that proposed new claims 19-23 are not anticipated by or rendered obvious
`
`2
`
`MobileMedia
`EX. 2011, Page2
`RIM v. MobileMedia
`Case IPR2013-00016
`
`
`
`
`
`Attorney Docket No. 51020-057 USIPR
`
`to a person of ordinary skill in the art at the time of the invention of the ‘828 patent
`
`in light of the five prior art references (Exs. 1002-1006) cited in the Petition
`
`(“Petition Prior Art”).
`
`7.
`
`In the Opposition, Petitioner argues that the proposed substitute claims are
`
`unpatentable. Specifically, Petitioner argues that claim 19 is indefinite under 35
`
`U.S.C. § 112 ¶ 2 and that the structural limitations added to claim 19 are
`
`insufficient to overcome the presumption that under 35 U.S.C. § 112 ¶ 6 applies to
`
`the “means for determining a direction in which an image of the image signal is to
`
`be displayed read from the recording medium” and that if it is determined that no
`
`longer invokes Section 112 ¶ 6, then it improperly enlarges the scope of the
`
`original claims of the ‘828 patent.
`
`8.
`
`Petitioner argues that the ‘828 patent does not describe an algorithm for
`
`performing the claimed “determining function.”
`
`9.
`
`Petitioner argues that claim 19 has no written description support in the ‘828
`
`patent or the foreign priority applications for an apparatus that combines the image
`
`processing block of what Petitioner describes as the “second embodiment” with the
`
`microcomputer of what Petitioner describes as the “first embodiment” and that
`
`claim 19 is purportedly unpatentable under 35 U.S.C. § 112 ¶ 1.
`
`
`
`3
`
`MobileMedia
`EX. 2011, Page3
`RIM v. MobileMedia
`Case IPR2013-00016
`
`
`
`
`
`Attorney Docket No. 51020-057 USIPR
`
`10.
`
`Petitioner argues that claim 21 is indefinite under 35 U.S.C. § 112 ¶ 2
`
`because a person of ordinary skill in the art purportedly would not understand the
`
`scope of the claim 21 phrase “unless the microcomputer receives said detection
`
`signal again” in light of the specification.
`
`11.
`
`Petitioner also argues that claim 21 is unpatentable under 35 U.S.C. § 112 ¶
`
`1 because it purportedly lacks written description support in the specification.
`
`12.
`
`Petitioner argues that claim 23 is unpatentable under 35 U.S.C. § 112 ¶ 1
`
`because it purportedly lacks written description support the specification.
`
`13.
`
`Petitioner argues that claim19 is unpatentable because it purportedly
`
`enlarges the scope of the original claims.
`
`14.
`
`Petitioner also argues that claims 19-23 are unpatentable as obvious under
`
`35 U.S.C. § 103.
`
`15.
`
`Specifically, Petitioner argues that claims 19-22 are obvious over the
`
`combination of Anderson (Ex. 1002) in view of Fullam (Ex. 1008), Williams (Ex.
`
`1009), and Hirasawa (Ex. 1010).
`
`16.
`
`Petitioner also argues that claims 19-22 are obvious over Nagasaki (Ex.
`
`1004) in view of Kagle (Ex. 1005), Fullam (Ex. 1008), and Williams (Ex. 1009)
`
`17.
`
`Petitioner argues that claim 23 is obvious over the combination of Anderson,
`
`Fullam (Ex. 1008), Williams (Ex. 1009), and Flashpoint (Ex. 1012).
`
`4
`
`MobileMedia
`EX. 2011, Page4
`RIM v. MobileMedia
`Case IPR2013-00016
`
`
`
`
`
`Attorney Docket No. 51020-057 USIPR
`
`18.
`
`I disagree with Petitioner on all of these issues and I submit this Reply
`
`Declaration to respond to the arguments made in the Opposition.
`
`II. SUMMARY OF OPINIONS
`
`19. As I explain below, it continues to be my technical opinion that the
`
`substitute claims 19-23 are definite, supported by the specification of the ‘828
`
`patent and the September 8, 1999 and January 25, 1999 Japanese priority
`
`applications, and are entitled to a priority date at least as early as January 25, 1999.
`
`The proposed substitute claims respond to, and obviate, the asserted grounds of
`
`unpatentability involved in this trial presented in the Petition regarding the original
`
`claims. This was achieved by adding new, additional limitations that obviate
`
`arguments that the original claims were invalid over the Petition Prior Art.
`
`Moreover, it continues to be my opinion that the proposed substitute claims would
`
`not have been obvious to a person of ordinary skill in the art in light of the Petition
`
`Prior Art. They do not enlarge the scope of the original claims they are replacing,
`
`or introduce new matter.
`
`20.
`
`It is also my opinion that the substitute claims 19-23 are patentable over the
`
`Opposition Prior Art.
`
`21. As explained below, the proposed new claims 19-23 incorporate features
`
`that are not described in the Petition Prior Art and Opposition Prior Art. It is my
`
`technical opinion that proposed substitute claims 19-23 are not anticipated by the
`
`5
`
`MobileMedia
`EX. 2011, Page5
`RIM v. MobileMedia
`Case IPR2013-00016
`
`
`
`
`
`Attorney Docket No. 51020-057 USIPR
`
`Petition Prior Art and Opposition Prior Art, and would not have been obvious to a
`
`person of ordinary skill in the art as of September 8, 1998 or January 25, 1999, or
`
`September 8, 1999, in light of the Petition Prior Art and Opposition Prior Art.
`
`III. PERSON OF ORDINARY SKILL IN THE ART AT THE
`TIME OF THE INVENTION
`
`22.
`
`I note that Petitioner has not provided any expert opinion to rebut my
`
`opinion of a person of ordinary skill in the art at the time of the invention. It is my
`
`opinion that a person of ordinary skill in the art would be someone with a Bachelor
`
`of Science in Electrical Engineering or Computer Science with two years design &
`
`coding experience for image processing devices.
`
`IV. CLAIM CONSTRUCTION PRINCIPLES AND PRINCIPLES
`OF ANTICIPATION AND OBVIOUSNESS
`
`23.
`
`I understand that in an inter partes review, claim terms in an unexpired
`
`patent are given their broadest reasonable construction in light of the specification
`
`of the patent in which they appear as those terms would be interpreted by a person
`
`of ordinary skill in the art. (Paper 16 at 6.)
`
`24.
`
`I also understand that with regard to original claim 6 of the ‘828 patent, that
`
`the preamble of claim 6 does not add any further limitation that is not already
`
`present in the body of the claim.
`
`25.
`
`The original claims of the ‘828 patent at issue in this review inter partes
`
`contained several means-plus function terms. I understand from counsel for
`
`6
`
`MobileMedia
`EX. 2011, Page6
`RIM v. MobileMedia
`Case IPR2013-00016
`
`
`
`
`
`Attorney Docket No. 51020-057 USIPR
`
`MobileMedia that even when a claim element uses language that generally falls
`
`under the step or means-plus-function format, however, 112 ¶ 6 still does not apply
`
`when the claim limitation itself recites sufficient acts for performing the specified
`
`function.
`
`26. When construing means-plus-function terms, one is to look to the
`
`specification and identify the corresponding structure that actually performs the
`
`claimed function. (Paper 16 at 7.) In its Motion to Amend, MobileMedia has
`
`added elements to the claims and modified elements to certain means-plus-function
`
`claim terms that are not means-plus-function elements, and it has also added
`
`elements to means-plus-function claim elements to modify them to include specific
`
`structures to perform the claimed function, which I understand place further,
`
`narrowing limitations on those terms, which were not limiting terms in the original
`
`claims. It is my understanding that adding certain structural limitations in the
`
`proposed new claims results in those limitations no longer invoking means-plus-
`
`function treatment when there is sufficient structure to perform the function, even
`
`when the claim uses “means” language.
`
`27.
`
`Invalidity by anticipation requires that the four corners of a single, prior art
`
`document describe every element of the claimed invention, either expressly or
`
`inherently, such that a person of ordinary skill in the art could practice the
`
`invention without undue experimentation.
`
`7
`
`MobileMedia
`EX. 2011, Page7
`RIM v. MobileMedia
`Case IPR2013-00016
`
`
`
`
`
`Attorney Docket No. 51020-057 USIPR
`
`28.
`
`I understand that if the prior art reference does not expressly set forth a
`
`particular element of the claim, that reference still may anticipate if that element is
`
`“inherent” in its disclosure. An element is inherent in a disclosure if one of
`
`ordinary skill in the art, at the time of the filing of the patent at issue, would have
`
`found that the disclosure makes clear that the missing descriptive matter is
`
`necessarily present in the thing described in the disclosure. Inherency, however,
`
`may not be established by probabilities or possibilities. The mere fact that a certain
`
`thing may result from a given set of circumstances is not sufficient.
`
`29.
`
`I also understand that to anticipate a means plus function claim element, a
`
`prior art reference must disclose an identical or equivalent structure that performs
`
`the same function, as the function and corresponding structure of the means plus
`
`function element.
`
`30.
`
`In addition to disclosing every element of the challenged claim, a prior art
`
`reference must enable one of ordinary skill in the art to make the anticipating
`
`subject matter without undue experimentation. I understand that undue
`
`experimentation is a conclusion reached by weighing factual considerations, such
`
`as, the quantity of experimentation necessary and the amount of direction of
`
`guidance presented.
`
`31.
`
`I understand that a patent claim is obvious if the differences between the
`
`claimed subject matter and the prior art are such that the subject matter as a whole
`
`8
`
`MobileMedia
`EX. 2011, Page8
`RIM v. MobileMedia
`Case IPR2013-00016
`
`
`
`
`
`Attorney Docket No. 51020-057 USIPR
`
`would have been obvious at the time the invention was made to a person having
`
`ordinary skill in the art. MobileMedia’s counsel has informed me that obviousness
`
`is a question of law based on underlying questions of fact. The underlying factual
`
`inquiries in an obviousness analysis include: (1) determining the scope and content
`
`of the prior art; (2) resolving the level of ordinary skill in the prior art; (3)
`
`ascertaining the differences between the claimed invention and the prior art; and
`
`(4) considering objective evidence of nonobviousness.
`
`32. With regard to determining the scope and content of the prior art, I have
`
`been informed by MobileMedia’s counsel that a reference qualifies as prior art for
`
`an obviousness determination when the prior art reference is analogous to the
`
`claimed invention. I understand that there are at least two tests that define the
`
`scope of analogous prior art: (1) whether the art is from the same field of endeavor,
`
`regardless of the problem addressed, and (2) if the reference is not within the field
`
`of the inventor's endeavor, whether the reference is reasonably pertinent to the
`
`particular problem with which the inventor is involved. I understand that the field
`
`of endeavor is determined by reference to explanations of the invention’s subject
`
`matter in the patent application, including the embodiments, function, and structure
`
`of the claimed invention. I also understand that a reference is reasonably pertinent
`
`if it is one which, because of the matter with which it deals, logically would have
`
`commended itself to an inventor's attention in considering his problem.
`
`9
`
`MobileMedia
`EX. 2011, Page9
`RIM v. MobileMedia
`Case IPR2013-00016
`
`
`
`
`
`Attorney Docket No. 51020-057 USIPR
`
`33.
`
` I understand that a patent claim composed of several elements is not proved
`
`obvious merely by demonstrating that each of its elements was, independently,
`
`known in the prior art. I also understand that the Petitioner has the burden to show
`
`that a person of ordinary skill in the relevant field had a reason to combine the
`
`elements in the manner claimed when asserting obviousness in view of a
`
`combination of references. MobileMedia’s counsel has informed me that I should
`
`value “common sense” over “rigid preventative rules” in determining whether a
`
`motivation to combine exists. I understand that any need or problem known in the
`
`field of endeavor at the time of the invention and addressed by the patent can
`
`provide a reason for combining the elements in the manner claimed. However, I
`
`also understand that if a person of ordinary skill in the art would have had reason
`
`to attempt to make the composition or device, or carry out the claimed process, the
`
`Petitioner must also demonstrate that such a person would have had a reasonable
`
`expectation of success in doing so.
`
`34.
`
`Further, I understand that hindsight may not be used to determine
`
`obviousness; in other words, it is wrong to use the patent as a guide through the
`
`prior art references, combining the right references in the right way so as to
`
`achieve the result of the claims of the challenged patent. I also understand that
`
`conclusory statements are insufficient to support the legal conclusion of
`
`obviousness. Instead, I have been informed that there must be an articulated basis
`
`10
`
`MobileMedia
`EX. 2011, Page10
`RIM v. MobileMedia
`Case IPR2013-00016
`
`
`
`
`
`Attorney Docket No. 51020-057 USIPR
`
`on which it can be concluded that it would have been obvious to make the claimed
`
`invention. MobileMedia’s counsel has informed me that often, it will be
`
`necessary for a court to look to interrelated teachings of multiple patents, the
`
`effects of demands known to the design community or present in the market place,
`
`and the background knowledge possessed by a person having ordinary skill in the
`
`art in order to determine whether there was an apparent reason to combine known
`
`elements in the fashion claimed by a patent. I have also been informed that a
`
`teaching, suggestion, or motivation to combine prior art references can provide
`
`useful insight into whether patent claims are obvious. However, I understand that
`
`this obviousness analysis is not confined by a formalistic conception of the words
`
`teaching, suggestion, and motivation, or by overemphasis on the importance of
`
`published articles and the explicit content of issued patents. Although the
`
`obviousness analysis is not confined by a formalistic conception of the words
`
`teaching, suggestion, and motivation, I understand that it does require identifying a
`
`reason that would have prompted a person of ordinary skill in the relevant field to
`
`combine the elements in the way the claimed invention does. I further understand
`
`that a reference may be said to teach away when a person of ordinary skill, upon
`
`reading the reference, would be discouraged from following the path set out in the
`
`reference, or would be led in a direction divergent from the path that was taken by
`
`the applicant. I also understand that a reference may teach away from a use when
`
`11
`
`MobileMedia
`EX. 2011, Page11
`RIM v. MobileMedia
`Case IPR2013-00016
`
`
`
`
`
`Attorney Docket No. 51020-057 USIPR
`
`that use would render the result inoperable. I understand that there is no
`
`suggestion or motivation to make a modification to a prior art reference if the
`
`proposed modification would render the prior art invention unsatisfactory for its
`
`intended purpose. I also understand that an obviousness allegation cannot be
`
`supported by a combination of references that would require a substantial
`
`reconstruction and redesign of the elements shown in the primary reference as well
`
`as a change in the basic principle under which the primary reference was designed
`
`to operate.
`
`V. THE PROPOSED NEW CLAIMS ARE NOT INDEFINITE
`AND ARE SUPPORTED BY THE ‘828 PATENT.
`
`A. Proposed Claim 19 Is Not Indefinite.
`
`35.
`
`Petitioner argues that the “means for determining” of proposed claim 19
`
`purportedly “fails to include an algorithm that explains how the control
`
`microcomputer uses the posture information and the displaying-direction
`
`information to determine a direction in which the image signal is to be displayed
`
`and does not actually disclose how to combine the two pieces of information – (i)
`
`the orientation of the apparatus and (ii) the direction information stored with the
`
`image.”
`
`36.
`
` Even if the microcomputer structure could somehow be ignored as a matter
`
`of law and the “means for determining” could continue to be construed to continue
`
`to invoke Section 112, paragraph 6, Petitioner’s argument should be rejected.
`
`12
`
`MobileMedia
`EX. 2011, Page12
`RIM v. MobileMedia
`Case IPR2013-00016
`
`
`
`
`
`Attorney Docket No. 51020-057 USIPR
`
`37.
`
`I disagree with Petitioner that the specification of the ‘828 patent does not
`
`describe an algorithm for performing this function as recited in issued claim 6. In
`
`MobileMedia Ideas LLC v. Research in Motion Ltd., et al., 11-cv-02353 (N.D.
`
`Tex.), Petitioner made the same argument, contending that this element was
`
`indefinite for failing to describe the algorithm for performing this function. That
`
`argument was rejected in that Court’s claim construction ruling (See Ex. 2009 at
`
`38-39), and with good reason.
`
`38.
`
` The district court concluded that “[Petitioner] literally does not know which
`
`way is up. Yes, literally.” (Ex. 2009 at 39.)
`
`39.
`
`I have reviewed MobileMedia’s response to that argument and, like the
`
`District Court, found it persuasive. I understand that the algorithm of a means-
`
`plus-function element can be described in the text of the specification.
`
`40.
`
` The specification describes how the invention uses and compares the two
`
`data points, direction-displaying information stored with the image and
`
`information on the direction of the apparatus to perform the function of
`
`determining a direction in which an image of the image signal is to be displayed on
`
`the displaying means according to a posture in which an image of the image signal
`
`is placed and information on a direction in which an image is to be displayed of an
`
`image signal read from memory.
`
`13
`
`MobileMedia
`EX. 2011, Page13
`RIM v. MobileMedia
`Case IPR2013-00016
`
`
`
`
`
`Attorney Docket No. 51020-057 USIPR
`
`41.
`
`The specification describes that the position detection switch 41 detects
`
`whether the image display apparatus 1 is placed with the longer or shorter side
`
`down, and sends a detection signal to the control microcomputer 42 which reads
`
`displaying-direction information from the memory card 12 via the memory card
`
`controller 40, so that the image can be displayed in the same normal direction. (Ex.
`
`1001, 6:26-35.)
`
`42.
`
`The specification also describes that a position detection signal from
`
`position detection switch 66 is sent to the image processing block 65 and that the
`
`image processing block 65 determines a direction in which an image 70 is to be
`
`displayed on the display panel 52 so that the side V of the screen of the display
`
`panel 52 is vertical while the side H is horizontal and allows displaying the image
`
`70 on the display panel 52 in the determined direction. In case the display panel 52
`
`has a rectangular screen having one side indicated with a reference V and other
`
`side indicated with a reference H, when the position detection signal indicates that
`
`the image display apparatus 50 is placed with the longer side down, the image
`
`processing block 65 determines a direction in which an image 70 is to be displayed
`
`on the display panel 52 so that the side H of the screen of the display panel 52 is
`
`vertical while the side V is horizontal, as shown in FIG. 16B, and allows the image
`
`processing circuitry (e.g., image processing block and control microcomputer) to
`
`14
`
`MobileMedia
`EX. 2011, Page14
`RIM v. MobileMedia
`Case IPR2013-00016
`
`
`
`
`
`Attorney Docket No. 51020-057 USIPR
`
`display the image 70 on the display panel 52 in the determined direction. (Ex.
`
`1001, 9:27-67.)
`
`43.
`
`The displaying-direction information for an image is read from memory.
`
`(See, e.g., Ex. 1001, 5:60-67.) An “automatic position detector provided with a
`
`gravity sensor or the like to automatically detect in which position the image
`
`display apparatus 50 is placed and set a position in which an image is to be
`
`displayed, or the like. A position detection signal from the position detection
`
`switch 66 is sent to the image processing block 65.” (Ex. 1001, 9:33-41.)
`
`44.
`
`Even if that limitation were able to be construed as a means-plus-function
`
`limitation, it is my understanding that a specification need only include sufficient
`
`descriptive text by which a person of skill in the field of the invention would
`
`“know and understand what structure corresponds to the means limitation.” See,
`
`e.g., Typhoon Touch, Inc. v. Dell, Inc. 659 F.3d 1376, 1383-1384 (Fed. Cir. 2001).
`
`“Precedent and practice permit a patentee to express that procedural algorithm in
`
`any understandable terms including as a mathematical formula, in prose, or as a
`
`flow chart, or in any other manner that provides sufficient structure.” Id. at 1385.
`
`45. As I explained in the Madisetti Declaration (e.g., Ex. 2001 , ¶¶ 24-36), the
`
`specification describes in prose the algorithm used to perform the function, which
`
`plainly involves comparing the two pieces of information.
`
`15
`
`MobileMedia
`EX. 2011, Page15
`RIM v. MobileMedia
`Case IPR2013-00016
`
`
`
`
`
`Attorney Docket No. 51020-057 USIPR
`
`B. Claim 19 Does Not Impermissibly Enlarge The Scope Of The Original
`Claim 6 When The Means For Determining Is Properly Construed As
`No Longer Invoking 35 U.S.C. § 112, Paragraph 6.
`
`
`46. Construing the “means for determining” to no longer invoke Section
`
`112, paragraph 6, does not enlarge claim scope. Petitioner has also failed to focus
`
`on the claim as a whole. Petitioner ignores that proposed claim 19 narrowed the
`
`structure from the original claim 6 to require a position sensor with a moving
`
`element moved in all directions as opposed to a position sensor that could be
`
`moved both in two directions and in all directions.
`
`47.
`
`The specification makes clear that the position sensor “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).) Proposed claim 19 amended original claim 6
`
`to recite specific and sufficient structure for the “means for determining” from
`
`original claim 6 resulting in the “means for determining” no longer invoking 35
`
`U.S.C. § 112, paragraph 6. (Ex. 2003.)
`
`48.
`
`Proposed claim 19 adds structure to the determining means that is
`
`reflected in the Board’s construction of the corresponding construction of that
`
`limitation in Paper 16. In Paper 16, the Board considered the corresponding
`
`structure for this limitation to be the control microcomputer, the position detection
`
`16
`
`MobileMedia
`EX. 2011, Page16
`RIM v. MobileMedia
`Case IPR2013-00016
`
`
`
`
`
`Attorney Docket No. 51020-057 USIPR
`
`switch, and the image processing block both as described in columns 6 and 9 of the
`
`‘828 patent specification and Figs. 6 and 15). (Paper 16 at 11-12.)
`
`49.
`
`Proposed claim 19 narrows the structure from original claim 6 to
`
`require a sensor with a moving element moved in all directions as opposed to one
`
`that could be moved either in two directions and all directions (see, e.g., Ex. 2001 ¶
`
`57 (citing Ex. 1001, 6:26-36) and adds a recognition sensor that further narrows the
`
`claim from original claim 6.
`
`50.
`
`Petitioner’s argument that amending the claim in a manner that no
`
`longer invokes MPF treatment somehow broadens the claim because claim 19 no
`
`longer includes the algorithm makes no sense. In its Petition, Petitioner argued
`
`that the’828 patent specification did not describe an algorithm for the determining
`
`means, a position which the district court strongly rejected, as I have explained
`
`herein and in my original Declaration. In Paper 16, the Board did not adopt
`
`Petitioner’s arguments that the specification did not describe an algorithm for the
`
`determining means, but the Board did not address or provide its own construction
`
`for the algorithm for the determining means in original claim 6. As I explained in
`
`my original Declaration, which was not rebutted, a person of ordinary skill in the
`
`art at the time of the invention would have understood the ‘828 patent specification
`
`to describe in words the algorithm for the “determining means” of claim 6 to be
`
`described as comparing information on the “posture in which the apparatus is
`
`17
`
`MobileMedia
`EX. 2011, Page17
`RIM v. MobileMedia
`Case IPR2013-00016
`
`
`
`
`
`Attorney Docket No. 51020-057 USIPR
`
`placed and information on a direction in which an image of the image signal is to
`
`be displayed read from the recording medium. Claim 19 still requires the
`
`determination to be made according to that same information. The district court
`
`also agreed, adopting MobileMedia’s construction, concluding that it was
`
`Petitioner that literally does not know which way is up. Yes, literally.” (Ex. 2009
`
`at 39.)
`
`51.
`
`I have addressed the Petitioner’s argument that the use of “position
`
`sensor” as opposed to a “position detection somehow improperly broadened claim
`
`19 from original claim 6 in greater detail below. In short, Petitioner argues that
`
`the position sensor impermissibly enlarges the scope of claim 19 because claim 19
`
`does not support a sensor and supports only a position detection switch. I disagree.
`
`The ‘828 patent specification describes the position detection switch as “an
`
`automatic position detector provided with a gravity sensor or the like.” (See, e.g.,
`
`Ex. 1001, 9:33-34, emphasis supplied.)
`
`52. Claim 19 also further narrows original claim 6 by including the
`
`recognition sensor. Indeed, Petitioner has failed to show any conceivable way that
`
`an apparatus that infringes proposed claims 19-23 would not also have infringed
`
`the original claims.
`
`
`
`
`
`18
`
`MobileMedia
`EX. 2011, Page18
`RIM v. MobileMedia
`Case IPR2013-00016
`
`
`
`
`
`C. The Specification Supports Proposed Claim 19.
`
`Attorney Docket No. 51020-057 USIPR
`
`53.
`
` I understand that under the written description requirement of 35 U.S.C. §
`
`112, paragraph 1, the patent specification must reasonably convey to those skilled
`
`in the art, that the inventor had possession of the claimed subject matter as of the
`
`filing date. Petitioner resorts to misdirection and obfuscation in arguing that I
`
`“improperly splice[d] together the two independent embodiments described in the
`
`‘828 patent,” the first described in relation to Figures 1-12, and the second
`
`described in relation to Figures 13-17, starting at column 7, line 57.
`
`54.
`
`Specifically, Petitioner argues that there is no written description support for
`
`an apparatus that combines the “image processing block” of what it describes as
`
`the second embodiment with the “microcomputer” of what it describes as the first
`
`embodiment. This is a manufactured distinction that is plainly incorrect for several
`
`reasons.
`
`55.
`
`First, what the specification is referring to when it describes a “second
`
`embodiment” is Figs. 13 and 14, a decorative photo mount for the image display
`
`apparatus. (Ex. 1001, 7:56-57 (“Next, a second embodiment of the present
`
`invention will be described herebelow with reference to FIGS. 13 and 14.”).) The
`
`“second embodiment” is never described in the ‘828 patent with regard to the
`
`image processing block, position sensor or position detection switch, and control
`
`microcomputer. (Id.)
`
`19
`
`MobileMedia
`EX. 2011, Page19
`RIM v. MobileMedia
`Case IPR2013-00016
`
`
`
`
`
`Attorney Docket No. 51020-057 USIPR
`
`56.
`
`Second, what Petitioner describes as the “first embodiment” supports claim
`
`19 in and of itself. Indeed, one need look no further than Fig. 6 and column 5,
`
`lines 51- 59 and column 6, lines 26 to 36, for example to find all of the structure
`
`recited in claim 19 for the “means for detection”: the position sensor (e.g., position
`
`detection switch 41 that can have a moving element that is movable in all
`
`directions, the control microcomputer 42, and image processing block 43.
`
`57.
`
`Those portions of the specification state that during playback, the control
`
`microcomputer reads compressed image data from memory that is processed by
`
`image processing block 43 for display. They also describe a position detection
`
`switch 41 that may be of a type of which a moving element is moved in all
`
`directions, detects whether the image display apparatus 1 is placed with the longer
`
`or shorter side down, and sends a detection signal to the control microcomputer 42
`
`which will read the displaying direction information from memory. With these
`
`two pieces of information (which a person of ordinary skill plainly would have
`
`understood are being compared), the image can be displayed in the same normal
`
`direction.
`
`58.
`
`Third, what Petitioner describes as the “second embodiment” also supports
`
`claim 19, in and of itself. One need look no further, for example, than Fig. 15 and
`
`column 9, lines 17 through column 10, line 21 to see the automatic position
`
`detection switch (mislabeled 22 in Fig. 15 and described as 66 in the specification)
`
`20
`
`MobileMedia
`EX. 2011, Page20
`RIM v. MobileMedia
`Case IPR2013-00016
`
`
`
`
`
`Attorney Docket No. 51020-057 USIPR
`
`“provided with a gravity sensor or the like to automatically detect in which
`
`position the image display apparatus 50 is placed.” Figure 15 does not
`
`specifically include a microcomputer, but column 9 makes clear that digital image
`
`data, including direction displaying information, is read from memory and a person
`
`of ordinary skill in the art at the time of the invention would have understood that a
`
`control microcomputer/CPU necessarily would have been used to do that.
`
`59.
`
`Fourth, there is nothing in the specification that states that what Petitioner
`
`describes as two “independent” embodiments are in fact “independent” or would
`
`have been understood as such by a person of ordinary skill at the time of the
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
