Patent Owner MobileMedia Ideas LLC’s Demonstrative
`Exhibit
`for October 18, 2013 Oral Argument
`
`BlackBerry Corp. and BlackBerry Limited
`v. MobileMedia Ideas LLC
`
`IPR2013 – 0016 (JYC)
`Trial Hearing – Mobile Media’s Motion to Amend
`
`October 18, 2013
`
`MobileMedia Ideas
`Exhibit 2012
`Blackberry v. MobileMedia
`IPR 2013-0016
`
`
`Exhibit
`for October 18, 2013 Oral Argument
`
`BlackBerry Corp. and BlackBerry Limited
`v. MobileMedia Ideas LLC
`
`IPR2013 – 0016 (JYC)
`Trial Hearing – Mobile Media’s Motion to Amend
`
`October 18, 2013
`
`MobileMedia Ideas
`Exhibit 2012
`Blackberry v. MobileMedia
`IPR 2013-0016
`
`
`
`Mobile Media’s Motion To Amend The ‘828 Patent Should
`Be Granted
`
`1. Mobile Media Complied With The Guidance From The
`Board Provided In The Conference All
`2. The Motion To Amend Complies With The Statute And
`PTO Rules And Guidelines
`3. The Motion to Amend Presents Claims That Are
`Supported And Definite
`4. The Motion to Amend Proposed Claims That Are
`Narrower In Scope Than The Original Claims
`5. The Motion to Amend Is Supported By Unrebutted Expert
`Opinion That The Proposed Claims Are Not Anticipated
`and Not Obvious
`
`Exhibit 2012
`
`2
`
`
`
`Overview Of Presentation
`
`1. Overview Of The ‘828 Patent
`2. Priority Date Of The ‘828 Patent
`3. Mobile Media’s Motion To Amend Complied With The
`USPTO Practice Guide Trial And Board Guidance
`4. Substitute Claims Marked To Show Changes from
`Original Claims
`5. Specification And Priority Application Support
`
`Exhibit 2012
`
`3
`
`
`
`Overview Of Presentation (cont’d)
`
`6. The Motion To Amend Present Claims That Are (a)
`Narrower In Scope Than The Original Claims, (b) Definite,
`And (c) Supported
`7. Dr. Madisetti Has Presented Unrebutted Expert
`Testimony That The Proposed Claims Are Not
`Anticipated Or Obvious
`
`Exhibit 2012
`
`4
`
`
`
`U.S. Patent No. 6,441,828
`
`Filed: September 18, 1999
`Claims at Issue: 6, 7, 15, 17, 18
`Independent Claim: 6
`Dependent Claims: 7, 15, 17, 18
`Substitute Claims: 19, 20, 21, 22, 23
`Claim 19 is the sole independent
`substitute claim
`
`Exhibit 2012
`
`5
`
`
`
`U.S. Patent No. 6,441,828 – Priority Date and Applications
`
`Priority Date for Proposed Substitute Claims: At least as
`early as January 25, 1999
`Priority Applications:
`1.
`Japanese Patent Application 10-254231 (Ex. 2005), filed September 8,
`1998 – certified translation
`(Ex. 2007)
`Japanese Patent Application 11-016215 (Ex. 2006), filed January 25,
`1999 – certified translation
`(Ex. 2008)
`
`2.
`
`Exhibit 2012
`
`6
`
`
`
`The Motion to Amend Complies With The Statute, PTO
`Rules, And Guidelines And The Board’s Guidance
`
`1. 35 U.S.C. § 316(d)(1)(A) permits the patent owner to cancel
`challenged patent claims, and 35 U.S.C. § 316(d)(1)(B) permits
`the patent owner “[f]or each challenged claim, [to] propose a
`reasonable number of substitute claims.”
`
`2. Mobile Media conferred with the Board prior to filing its motion
`(See Paper No. 20 at 2-4.)
`
`3. Mobile Media’s Motion presents proposed substitute claims
`one-for-one with each cancelled claim in compliance with the
`USPTO Trial Practice Guide, and explained how the proposed
`claims were patentable over the art of record.
`
`4. Mobile Media presented narrower proposed claims that are
`supported and definite and set forth the support.
`
`Exhibit 2012
`
`7
`
`
`
`Mobile Media’s Motion To Amend Followed USPTO Trial
`Practice Guide Guidance Available At The Time Of Its
`Motion
`
`•
`
`•
`
`The Trial Practice Guide Authorizes Amendments Claiming New Subject Matter.
`The following is an example of what
`may be included in a motion to amend.
`The example sets forth a proposed
`substitute claim that replaces original
`patent claims 1–3, a proposed substitute
`claim that replaces original patent claim
`4, and a proposed new claim reciting
`newly claimed subject matter.
`Original patent claims:
`Claim 1: A bucket comprising:
`A shell; and
`an attached handle.
`Claim 2: The bucket of claim 1
`wherein the shell is made of wood.
`Claim 3: The bucket of claim 1
`wherein the handle is made of metal.
`Claim 4: The bucket of claim 1
`wherein the bucket has a volume of 2–
`5 gallons.
`Claim listing in a motion to amend:
`Claims 1–4 (cancelled).
`Claim 5 (substitute for original claims
`1–3): A bucket comprising:
`A shell made of wood; and
`an attached handle made of metal.
`Claim 6 (substitute for original claim
`4): The bucket of claim 5 wherein the
`bucket has a volume of 2–5 gallons.
`Claim 7 (new claim) The bucket of
`claim 5 wherein the metal handle is at
`least partially made of alloy X.
`USPTO Trial Practice Guide Federal Register Vol. 77, No. 157, August 14, 2012
`at 48767 (e.g., Claim 7.)
`
`Exhibit 2012
`
`8
`
`
`
`Substitute Claims Marked to Show Changes From Original
`Claims
`
`
`
`19. (new claim, proposed substitute for claim 6) An image
`displaying 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
`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,
`
`Exhibit 2012
`
`9
`
`
`
`Substitute Claims Marked to Show Changes From Original
`Claims (cont’d)
`
`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,
`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.
` No claim terms were deleted.
`
`Exhibit 2012
`
`10
`
`
`
`Structure Added To The Means for Determining A Direction
`Is Consistent With The Board’s Construction in Paper 16.
`
`The Board Construed The Means For Determining A Direction
`Element To Be As Follows (Paper 16 at 11-12):
`Function: 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.
`Structure: control microcomputer, position detection switch,
`image processing block.
`
`Exhibit 2012
`
`11
`
`
`
`Petitioner’s Arguments That The Specification Fails To Disclose An
`Algorithm For Performing The Claimed Function Of The “Means for
`Determining A Direction” Element Should Be Rejected:
`
`1. The District Court in Mobile Media Ideas LLC v. Research in
`Motion Ltd., et al., 11-cv-02353 (N.D. Tex.) rejected the same
`argument. (Ex. 2009 at 38-39.)
`2. Dr. Madisetti offered unrebutted expert testimony agreeing with
`the District Court (See, e.g., Ex. 2001 ¶¶ 13-36.)
`
`Exhibit 2012
`
`12
`
`
`
`Substitute Claims Marked to Show Changes From Original
`Claims
`
`20. (new claim, proposed substitute for claim 7) The apparatus as
`set forth in claim 619 further 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.
` Similar to example claim 7 in the Trial Practice Guide.
` Narrows the subject matter of proposed claim 19.
`
`Exhibit 2012
`
`13
`
`
`
`Substitute Claims Marked to Show Changes From Original
`Claims
`
`21. (new claim, proposed substitute for claim 15) The apparatus as
`set forth in claim 620 further comprising:
`means for detecting an amount of light around the apparatus;
`
`and
`
`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.
`Similar to example claim 7 in the Trial Practice Guide.
`
` Narrows the subject matter of substitute claims 19 and 20
`
`Exhibit 2012
`
`14
`
`
`
`Substitute Claims Marked to Show Changes From Original Claims
`
`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.
`Similar to claim 7 in the Trial Practice Guide.
`
` Narrows the subject matter of substitute claims 19 and 20.
`
`Exhibit 2012
`
`15
`
`
`
`Substitute Claims Marked to Show Changes From Original
`Claims
`
`23. (new claim, proposed substitute for claim 18) The apparatus
`as set 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.
`Similar to claim 7 in the Trial Practice Guide.
`
` Narrows the subject matter of substitute claims 19 and 20
`
`Exhibit 2012
`
`16
`
`
`
`The Specification and Priority Applications Support The
`Proposed Claims
`
`Claim 19
`Additional element:
`
`Recognition sensor that
`provides a detection signal to
`said Microcomputer based on
`which a displaying status of
`the image of the displaying
`means is changed
`
`Specification
`E.g., Ex. 1001, 6:26-36, 9:27-46,
`Fig. 6, element 41, Fig 15,
`element 66, mislabeled
`element 22; Page 16 at 11
`(citing Ex. 1001, 6:33-36,
`9:42-46, Fig. 6, element 41,
`Fig. 15, element 66
`
`Priority Applications
`E.g., Ex. 2008, ¶¶ [0033]-
`[0038], [0055]-[0058];
`Ex. 2007, ¶¶ [0018]-[0021]
`
`Exhibit 2012
`
`17
`
`
`
`The Specification and Priority Applications Support The
`Proposed Claims
`
`Claim 20
`recognition sensor (a) emits
`light and (b) detects a return
`light from a human body or
`object
`
`Specification
`E.g., Ex. 1001, 6:58-7:17,
`Figs. 1-6, element 5, 10:30-42,
`Fig. 13, element 56
`
`Priority Applications
`E.g., Ex. 2008 ¶¶ [0037]-[0038]
`E.g., Ex. 2007 ¶¶ [0022]-[0023]
`
`Exhibit 2012
`
`18
`
`
`
`The Specification and Priority Applications Support The
`Proposed Claims
`
`Claim 21
`the displaying status remains
`changed for at least an
`expiration time unless the
`microcomputer receives said
`detection signal again
`
`Specification
`E.g., Ex. 1001, 7:18-23,
`Figs. 1-6, element 56, 10:30-42,
`Fig. 13, element 56, claims 3
`and 4
`
`Priority Applications
`E.g., Ex. 2007 ¶¶ [0022]-[0023],
`E.g., Ex. 2008 ¶¶ [0037]-[0039]
`
`Exhibit 2012
`
`19
`
`
`
`The Specification and Priority Applications Support The
`Proposed Claims
`
`Claim 22
`recognition sensor detects
`light from a part of the human
`body at a distance of less than
`20 cm
`
`Specification
`E.g., Ex. 1001, 7:3-7, 7:22-23
`
`Priority Applications
`E.g., Ex. 2008 ¶¶ [0037]-[0039]
`
`Exhibit 2012
`
`20
`
`
`
`The Specification and Priority Applications Support The
`Proposed Claims
`
`Claim 23
`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 play
`back mode of display that
`requires a key to be pressed
`to display each image
`
`Specification
`E.g., Ex. 1001, 4:14-20, 5:51-54,
`11:36, 12:27-29, 12:36-39,
`Figs. 13, 15
`
`Priority Applications
`E.g., Ex. 2008 ¶¶ [0018], [0019],
`[0064], [0070], Ex. 2008, [0018],
`[0019], [0064], [0070]; Ex. 2007,
`¶ [0027]
`
`Exhibit 2012
`
`21
`
`
`
`The Motion to Amend Presents Claims That Are Narrower In
`Scope From The Original Claims
`
`1. Amending The Claims To Add Sufficient Structure to the
`Proposed Claims For Achieving The Recited Function,
`Removes The Element From Being Interpreted According
`To 35 U.S.C. § 112, ¶6
`2. Reciting Sufficient Structure For Means Elements Does
`Not Broaden The Claims
`3. Petitioner Has Failed To Show How An Apparatus That
`Infringes Claims 19-23 Would Not Also Have Infringed
`The Original Claims
`
`Exhibit 2012
`
`22
`
`
`
`Petitioner’s Argument That There Is No Written Description Support For An
`Apparatus That Combines The Image Processing Block With The
`Microcomputer Is Plainly Incorrect
`
`Madisetti Offers Unrebutted Expert Testimony That (Ex. 2011¶¶
`53-60)
`1. The “second embodiment” in the specification is Fig. 13 and
`14, a decorative photo mount for the image display
`apparatus Dr. Madisetti at ¶ ___)
`2. What Petitioner refers to as the “first embodiment” supports
`Claim 19 in and of itself Dr. Madisetti at ¶ ___)
`3. What Petitioner refers to as the “second embodiment”
`supports Claim 19 in and of itself Dr. Madisetti at ¶ ___)
`4. Nothing in the ‘828 patent specification states that what
`Petitioner describes as “independent” embodiments are
`independent and would be understood as such by a person
`of ordinary skill in the art Dr. Madisetti at ¶ ___)
`
`Exhibit 2012
`
`23
`
`
`
`Claim 19’s recitation of a position sensor does not
`impermissibly broaden Claim 19 (Ex. 2011 ¶¶ 66-77)
`
`1. The specification describes the position detection sensor
`as “an automatic position detector provided with a
`gravity sensor or the like.” (Ex. 1001, 9:33-34 (emphasis
`added).)
`2. Petitioner does not describe any way an apparatus that
`infringes proposed Claim 19 would not also have
`infringed original Claim 6
`
`Exhibit 2012
`
`24
`
`
`
`Proposed Claim 21 Is Not Indefinite and Supported By The
`Specification And Is Not Indefinite (Ex. 2011¶¶ 61-64)
`
`Dr. Madisetti offers unrebutted expert testimony
`1. A person of ordinary skill in the art would understand the
`claim to mean if the expiration time has passed and the
`displaying status has changed, it will remain changed for
`at least an expiration time unless the microcomputer
`receives the detection signal again
`2. Claim 21 does not address what causes the expiration
`and does not need to
`
`Exhibit 2012
`
`25
`
`
`
`Claim 23 Is Supported By The Specification (Ex. 2011 ¶ 65)
`
`Dr. Madisetti opined that a person of ordinary skill in the art
`would have understood the “slideshow mode” feature could
`be used with either of Petitioner’s manufactured
`embodiments
`
`Exhibit 2012
`
`26
`
`
`
`Mobile Media Has Presented Unrebutted Expert Testimony
`That Proposed Claims 19-23 Are Not Obvious
`
`1. Mobile Media Presented Declarations From Dr. Vijay
`Madisetti, A Tenured Professor of Electrical and
`Computer Engineering at Georgia Tech University:
`Exs. 2001 and 2011
`2. Petitioner Has Offered No Testimony To Rebut Dr.
`Madisetti
`3. Dr. Madisetti’s Ultimate Opinion Is That Proposed
`Substitute Claims Are Patentable Over Both The Petition
`Prior Art and Opposition Prior Art
`
`Exhibit 2012
`
`27
`
`
`
`Mobile Media Has Presented Unrebutted Expert Testimony
`That:
`
`1. Claims 19-22 Are Not Obvious Based On The Anderson
`‘769 Patent (Ex. 1002) In View of Fullam (Ex. 1008),
`Williams (Ex. 1009), and Hirasawa (Ex. 1010)
`
`2. Claims 19-22 Are Not Obvious Over Najasaki (Ex. 1004) In
`View Of Kagle (Ex. 1005), Fullam (Ex. 1008), and Williams
`(Ex. 1009)
`
`3. Claim 23 Is Not Obvious Over The Combination Of
`Anderson ‘769 Patent, Fullam, Williams, and Flashpoint
`(Ex. 1012)
`
`Exhibit 2012
`
`28
`
`
`
`Claims 19-22 Are Not Obvious Based on the Anderson ‘769
`Patent (Ex. 1002) In View Of Fullam (Ex. 1008), Williams (Ex.
`1009), and Hirasawa (Ex. 1010)
`
`1. Petitioner concedes that Anderson ‘769 does not
`describe the recited position sensor having a moving
`element movable in all directions to automatically detect
`which position the image display apparatus is placed and
`recognition sensor
`
`2. Dr. Madisetti’s expert testimony was unrebutted on this
`point (Ex. 2011 ¶¶ 73-81 (citing Exs. 1002, 2010))
`
`3. Dr. Madisetti’s expert testimony was unrebutted that the
`Anderson ‘769 patent does not describe 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. 2011 ¶ ¶ 82-85)
`
`Exhibit 2012
`
`29
`
`
`
`Claims 19-22 Are Not Obvious Based on the Anderson ‘769
`Patent (Ex. 1002) In View Of Fullam (Ex. 1008), Williams (Ex.
`1009), and Hirasawa (Ex. 1010)
`
`1. Petitioner concedes that Anderson ‘769 does not describe the recited
`position sensor having a moving element movable in all directions to
`automatically detect which position the image display apparatus is
`placed and the recognition sensor. (Paper 23 at 13.)
`2. Dr. Madisetti’s expert testimony was unrebutted on those points (Ex.
`2011 ¶¶ 73-84.)
`3. Dr. Madisetti’s expert testimony was unrebutted that the Anderson
`‘769 patent does not describe 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. 2011 ¶ 82)
`4. Dr. Madisetti’s expert testimony was unrebutted that the Anderson
`‘769 patent does not describe a recognition sensor that (a) emits light
`and (b) detects the light returned from a human body or object (Ex.
`2011 ¶ 83)
`
`Exhibit 2012
`
`30
`
`
`
`Claims 19-22 Are Not Obvious Based on the Anderson ‘769
`Patent (Ex. 1002) In View Of Fullam (Ex. 1008), Williams (Ex.
`1009), and Hirasawa (Ex. 1010) (cont’d)
`
`5. Dr. Madisetti’s expert testimony was unrebutted that the Anderson
`‘769 patent does not describe that the displaying status remains
`changed at least for an expiration time unless the microcomputer
`receives said detection signal again (Ex. 2011 ¶ 84)
`6. Dr. Madisetti’s expert testimony was unrebutted that the Anderson
`‘769 patent does not describe a recognition sensor that detects the
`light returned from a part of the human body at a distance of less than
`20 cm (Ex. 2011 ¶ 85)
`
`Exhibit 2012
`
`31
`
`
`
`Claims 19-22 Are Not Obvious Based on the Anderson ‘769
`Patent (Ex. 1002) In View Of Fullam (Ex. 1008), Williams (Ex.
`1009), and Hirasawa (Ex. 1010)
`Dr. Madisetti’s expert testimony was unrebutted that Fullam (Ex.
`1008), Williams (Ex. 1009), and Hirasawa (Ex. 1010) do not provide
`the teachings missing from the Anderson ‘769 patent:
`1.
`the Fullam conducting ball does not move in all directions; the ball
`rests in one of four possible orientation outputs, first left, first right,
`second right, second left (Ex. 2011 ¶ ¶ 104-120, 80)
`2. Fullam’s sensor is used to determine exposure and focus settings, not
`apparatus orientation (Ex. 2011 ¶¶ 104-120, 181-82)
`3. Fullam also does not describe the recited recognition sensor (Ex. 2011
`¶¶ 104-120, 184-87)
`4. Williams does not describe the recited recognition sensor (Ex. 2011 ¶¶
`104-120, 189-93)
`5. Hirasawa does not describe the sensor position or sensor; it describes
`a dichroic mirror, does not send a detection signal suitable for the
`recited apparatus (Ex. 2011 ¶ ¶ 128-143, 194)
`6. Hirasawa does not describe the position sensor or determining a
`direction in which an image of the image signal is to be displayed (Ex.
`2011 ¶¶ 128-143, 196-201)
`
`Exhibit 2012
`
`32
`
`
`
`Claims 19-22 Are Not Obvious Over Nagasaki (Ex. 1004) In
`View of Kagle (Ex. 1005) Fullam (Ex. 1008), and Williams
`(Ex. 1009)
`The Board determined that Nagasaki does not perform the
`function of determining the direction in which an image of
`the image signal is to be displayed read from a recording
`medium as recited in original Claim 6 (Paper 16 at 22)
`Dr. Madisetti provided unrebutted expert testimony that:
`1. Nagasaki does not describe the recited position sensor
`(Ex. 2011 ¶ ¶ 151-161, 206)
`2. Nagasaki does not describe the recited recognition
`sensor (Ex. 2011 ¶¶ 151-161, 207-210)
`3. Kagle does not describe the position sensor (Ex. 2011 ¶¶
`161-173, 201, 212)
`4. Kagle does not describe the recognition sensor (Ex. 2011
`¶¶ 213, 215, 216, 217)
`
`Exhibit 2012
`
`33
`
`
`
`Claim 23 Is Not Obvious Over The Combination Of The
`Anderson ‘769 Patent, Fullam, Williams, and Flashpoint
`(Ex. 1012)
`Dr. Madisetti offered unrebutted expert testimony (Ex. 2011
`¶¶ 220-227) that:
`1. A person of ordinary skill in the art at the time of would
`not have realized that the Anderson ‘769 patent could
`have been predictably enhanced with the Flashpoint slide
`show feature
`2. Eric C. Anderson, an inventor of Flashpoint, the
`Anderson ‘769 patent, and other patents in this field did
`not come to that realization so easily
`3. Even with that realization, that would not include other
`elements from Claims 19 and 20, which are missing from
`the combinations as discussed previously
`
`Exhibit 2012
`
`34
`
`
`
`Patent Owner Mobile Media Ideas LLC’s Demonstrative
`Exhibit
`for October 18, 2013 Oral Argument
`
`BlackBerry Corp. and BlackBerry Limited
`v. Mobile Media Ideas LLC
`
`IPR2013 – 0016 (JYC)
`Trial Hearing – Mobile Media’s Motion to Amend
`
`October 18, 2013
`
`MobileMedia Idea
`Exhibit 2012
`RIM v. MobileMedia
`IPR 2013-0016
`
`
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