United States Patent & Trademark Office
`Patent Trial & Appeal Board
`_________________________________________
`
`IPR2014-00439
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`Patent No. 7,365,871
`_________________________________________
`
`IRON DOME LLC
`Petitioner
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`v.
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`E-WATCH, INC.
`Patent Owner
`
`_________________________________________
`
`
`Petitioner’s Reply to Patent Owner’s Response
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`Steven Yu (Reg. No. 58,776)
`Lead Counsel for Petitioner
`P.O. Box 10034
`Gaithersburg, MD 20898
`Tel: 202.262.0426
`Email: syu@irondome.com
`
`Feb. 10, 2015
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`
`
`Patent Trial & Appeal Board
`_________________________________________
`
`IPR2014-00439
`
`Patent No. 7,365,871
`_________________________________________
`
`IRON DOME LLC
`Petitioner
`
`v.
`
`E-WATCH, INC.
`Patent Owner
`
`_________________________________________
`
`
`Petitioner’s Reply to Patent Owner’s Response
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`
`
`
`
`
`
`
`
`
`
`
`Steven Yu (Reg. No. 58,776)
`Lead Counsel for Petitioner
`P.O. Box 10034
`Gaithersburg, MD 20898
`Tel: 202.262.0426
`Email: syu@irondome.com
`
`Feb. 10, 2015
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`
`
`
`
`
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`
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`IPR2014-00439
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`Table of Contents
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`Introductory Matters and Listing of Facts ............................................................ 1
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`Patent Owner Fails to Establish Conception and Diligence .............................. 1
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`
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`A.
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`B.
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`There is no coherent story of conceiving the entire claimed invention. .... 1
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`1.
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`2. Ordinary business diligence is not the same as the legally-required
`“diligence” for antedating first-in-time prior art. .......................................... 3
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`C. Declarant Clarkson is Unqualified to Give Expert Testimony on Electrical
`Engineering ......................................................................................................................... 7
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`D. Patent Owner’s Claim Construction is Extremely Narrow................................. 8
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`E. The Claims Are Not Different From the Prior Art ............................................. 9
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`1.
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`Selectively Displaying/Transmitting ................................................................... 9
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`2. User Interface Enabling Limitation .................................................................. 10
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`3. Prior to Capture Limitation ............................................................................... 10
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`4. Non-Audio Signal Transmission/Reception Limitation .............................. 11
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`5. Digital Signaling Limitation .............................................................................. 12
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`6. Digitized Audio Signal Limitation ................................................................... 12
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`7. Plural Memory Module Limitation .................................................................. 14
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`8.
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`Integrated Electronic Camera Limitation ....................................................... 15
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` Attached hereto: Appendix A – Petitioner’s Listing of Facts
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`ii
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`Table of Authorities
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`Basmadjian v. Landry,
`54 U.S.P.Q.2d 1617 (BPAI 1997) .................................................................................... 7
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`Griffith v. Kanamaru,
`816 F.2d 624 (Fed. Cir. 1987) ........................................................................................... 7
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`In re Nelson,
`420 F.2d 1079 (CCPA 1970) ............................................................................................. 7
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`Liang v. Borger,
`214 U.S.P.Q. 368 (BPAI 1981) ......................................................................................... 3
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`Monsanto Co. v. Mycogen Plant Sci., Inc.,
`261 F.3d 1356 (Fed. Cir. 2001) ......................................................................................... 3
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`iii
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`IPR2014-00439
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`Currently-Filed Exhibits
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`Exh. 1006 Copy of page 39 of Patent Owner’s Exhibit 2015 as annotated by
`Dr. Winston Ninh during his deposition.
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`Exh. 1007 Deposition Transcript of Dr. Winston Ninh (‘Ninh Dep. Tr.’)
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`Previously-Filed Exhibits
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`Exh. 1001 U.S. Patent No. 7,365,871 (‘challenged patent’)
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`Exh. 1002 Parulski et al.; U.S. Patent No. 6,122,526 (‘Parulski’)
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`Exh. 1003 Reele et al.; U.S. Patent No. 5,893,037 (‘Reele’)
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`Exh. 1004 “AFFIDAVIT OF DAVID A. MONROE UNDER 37 CFR 1.131” dated
`Dec. 27, 2004 in the prosecution history of the challenged patent
`(‘Affidavit’)
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`Exh. 1005 “OFFICE COMMUNICATION” dated Aug. 9, 2005 in the
`prosecution history of the challenged patent (‘Office Action’)
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`Reference to supporting documents indicated by “@____”.
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`Citation Form Used
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`Citations to U.S. Patents are shown as [column number : line numbers].
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`Citations to line-numbered documents are shown as [page number : line numbers].
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`Claim terms are distinguished from other text by “underlining.”
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`iv
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`A.
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`Introductory Matters and Listing of Facts
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`IPR2014-00439
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`Patent Owner attempts to antedate the Parulski and Reele prior art by
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`submitting the declarations of 11 witnesses encompassing a total of 22 exhibits with
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`only sparse explanations about their relevance. It is as if the Patent Owner has simply
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`dumped a pile of papers onto the table and saying that there’s a golden ring
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`somewhere in the pile that demonstrates conception and reduction to practice.
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`Neither the Petitioner nor the Board should not be expected to trawl through these
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`voluminous exhibits to find the information that supports Patent Owner’s position.
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`Patent Owner has made no effort to sort out and summarize the content of
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`these exhibits. Accordingly, for the convenience of the Board, Petitioner offers a
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`summary of Patent Owner’s exhibits by way of a Listing of Facts in the attached
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`Appendix A. Petitioner neither admits nor denies these assertion of facts. This listing
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`of facts does not count under the page limit requirements. See 37 CFR 42.24(c).
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`B.
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`Patent Owner Fails to Establish Conception and Diligence
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`The Parulski and Reele prior art precedes the effective filing date of the
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`challenged patent. The evidence submitted by Patent Owner to antedate Parulski and
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`Reele is insufficient to establish conception and fails to demonstrate sufficient
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`diligence.
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`1. There is no coherent story of conceiving the entire claimed
`invention.
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`1
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`In his declaration, inventor David Monroe mentions the names of the various
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`projects: “FAX-CAM, Mini-RIT, CAM-RIT, ICE, Micro-ICE, HCT, Micro-RIT,
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`Military Micro-RIT, L-RIT, and PICS.” @Monroe Decl. (Exh. 2014) at ¶5, p. 2. But
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`he testifies with personal knowledge only on the subject of the FAX-CAM, CAM-
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`RIT, and Mini-RIT projects. @Id. at ¶9, p. 9. For these three projects, inventor
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`Monroe relies on the testimony of Dr. Winston Ninh for corroboration. @Id. at ¶8-9,
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`pp. 3-16.
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`In deposition, when Dr. Ninh was asked whether any of the diagrams of the
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`FAX-CAM apparatus contained in his declaration show a cellular telephone, his
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`answer was: “No, there isn’t any actual cellular modem in this diagram. It show an
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`interface.” @Ninh Dep. Tr. (Exh. 1007) at p. 26, lns. 2-3; see also lns. 9-11. For the
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`CAM-RIT apparatus, inventor Monroe states that it had a cellular telephone interface,
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`but he does not affirmatively state that it had a cellular telephone itself. @Monroe
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`Decl. at p. 13 (bott.). This is confirmed by the deposition testimony of Dr. Ninh.
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`@Ninh Dep. Tr. at p. 10, ln. 19 – p. 14, ln. 18.
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`In inventor Monroe’s declaration testimony, only the Mini-RIT apparatus is
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`affirmatively stated to have a cellular telephone. @Monroe Decl. at ¶9(j) on p. 15. But
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`inventor Monroe’s declaration omits any diagrams of the Mini-RIT apparatus to
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`corroborate his testimony. He relies completely on the diagrams contained in the
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`declaration testimony of Dr. Winston Ninh. This calls into question whether it was
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`Dr. Winston Ninh who was the inventor, or at least the co-inventor of the claimed
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`2
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`invention. In summary, Patent Owner’s story of conception is lacking – it fails to tell a
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`coherent story that neatly crystallizes the entirety of the claimed invention with all the
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`IPR2014-00439
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`recited elements combined together.
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`2. Ordinary business diligence is not the same as the legally-required
`“diligence” for antedating first-in-time prior art.
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`Patent Owner also cannot antedate the first-in-time prior art because it fails to
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`establish diligent reduction to practice. Assuming that conception occurred in 1992
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`and even further assuming that reduction to practice occurred in mid-1997, Patent
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`Owner must show diligence from the time of the prior art’s critical date (April 24,
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`1995) to mid-1997. See e.g., Monsanto Co. v. Mycogen Plant Sci., Inc., 261 F.3d 1356, 1363
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`(Fed. Cir. 2001). In the present case, the critical time gap spans for over two years. But
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`the “standards for finding reasonable diligence are harsh.” Liang v. Borger, 214
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`U.S.P.Q. 368, 372-73 (BPAI 1981); see also Chisum on Patents, 3A-10, § 10.07
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`(“Diligence is a stringent standard.”).
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`Patent Owner submits the timesheets of various employees as evidence of
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`diligent reduction to practice. These timesheets show work activities being taken at
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`the fast-paced, but otherwise conventional diligence of engineering professionals
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`working in a competitive industry. But the legally-required “diligence” to antedate the
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`Parulski prior art is far more stringent that ordinary business diligence. Patent
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`Owner’s second-in-time inventor is in a race against the first-in-time Parulski prior art.
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`As the finish line approaches, the second-in-time inventor must catch-up to and sprint
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`3
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`past the first-in-time Parulski prior art to win the race. Ordinary business diligence will
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`IPR2014-00439
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`not win this race.
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`The employee timesheets submitted by Patent Owner demonstrate that the
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`employees were engaged in ordinary business diligence, not a race to antedate the
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`Parulski prior art. In ordinary business diligence, workers must prioritize their
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`different projects according to current business needs, such as meeting shipment dates
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`or responding to changes in customer’s specifications. In contrast, diligent reduction
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`to practice requires a single-minded focus on sprinting past the first-in-time prior art.
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`Patent Owner’s timesheets show that work on the claimed invention was frequently
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`“put on the back burner” while other projects took precedence according to business
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`needs at the time.
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`In the evidence submitted by Patent Owner, there is nothing showing that the
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`HCT device (Handheld Communication Terminal) had a cellular telephone or a
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`wireless transceiver of any kind. @Forman Decl. (Exh. 2018) at pp. 2-4, ¶6. A
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`memory that is capable of being “accessible for selectively transmitting over a wireless
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`telephone network” merely indicates a general capability of any memory. There is no
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`indication that the HCT device actually included a cellular telephone or a wireless
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`transceiver of any kind. Likewise, there is no indication that the PICS device actually
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`included a cellular telephone or wireless transceiver of any kind. @Forman Decl. at
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`pp. 4-5, ¶7.
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`The timesheets further show projects identified as “RHC,” “EIS-3,” “IDM,”
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`“LVRS,” “PRISM,” “ISO-9001,” “410-10,” and “SCC-200.” Patent Owner fails to
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`give any description about these other projects and does not indicate that they are
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`related to work on reduction to practice of the claimed invention. Thus, any work
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`performed on the HCT, PICS, RHC, EIS-3, IDM, LVRS, PRISM, ISO-9001, 410-10,
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`or SCC-200 projects would not be in furtherance of reduction to practice. Yet, the
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`timesheets show that work on reduction to practice was frequently put aside in favor
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`of other higher priority (from a business perspective) projects.
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`Patent Owner submits the declaration of Michael Forman (Exh. 2018), who
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`was employed as an electrical engineer at the time. His timesheets show frequent
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`periods in which no work was done on reduction to practice (such as the Micro-RIT
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`project) while other more important projects took higher priority. @Forman Decl.
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`(Exh. 2018) at p. 18 (Fri., spending the entire day on EIS-3); p. 19 (Mon., spending
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`the entire day on EIS-3 and in meetings); p. 23 (Mon., spending the entire day on
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`EIS-3 and meetings); p. 24 (Mon., spending the entire day on EIS-3 and meetings); p.
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`26 (Tues., spending the entire day on EIS-3 and meetings); p. 28 (Thurs. and Fri.,
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`spending entire days on RHC); p. 29 (Tues. and Wed., spending entire days on RHC);
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`p. 32 (Thurs., spending the entire day on IDM); p. 38 (Mon., Wed., Thurs., and Fri.,
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`spending entire days on training, EIS-3, SCC-200, PRISM, or meetings). On the
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`aforementioned days, declarant Forman performed no work on the Micro-RIT
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`project. A lapse in diligence, however brief, defeats a claim of diligence. See, e.g., In re
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`5
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`Mulder, 716 F.2d 1542, 1542-46 (Fed. Cir. 1983) (lack of reasonable diligence where no
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`IPR2014-00439
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`evidence provided for two day period).
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`Patent Owner also submits the declaration of Vinh Le (Exh. 2021), who was
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`employed as a mechanical engineer at the time. His timesheets show frequent periods
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`in which no work was done on reduction to practice (such as the Micro-RIT project)
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`while other more important projects took higher priority. @Le Decl. (Exh. 2021) at
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`pp. 57-58 (Fri. 1/17, Mon. 1/20, and Tues. 1/21, spending entire days on HCT or
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`ISO-9001); p. 59 (Wed., spending the entire day on LVRS and 410-10); p. 60 (Tues.,
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`Wed., Thurs., Fri., spending entire days on 410-10); p. 65 (Wed., spending the entire
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`day on HCT and “410-10”); p. 67 (Fri., spending the entire day in meetings); p. 68
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`(Tues. and Wed., spending entire days on administrative overhead tasks); p. 70 (Wed.,
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`spending the entire day in meetings or administrative overhead tasks); p. 72 (Thurs.,
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`spending the entire day on administrative overhead tasks); p. 72 (Wed., Fri., Sat., and
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`Sun., spending the entire day on RHC); p. 73 (Mon. and Wed., spending the entire day
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`on RHC); p. 76 (Thurs., spending the entire day on LVRS); p. 77 (Wed. and Thurs.,
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`spending the entire day on LVRS or administrative overhead); p. 78 (Mon., Wed., and
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`Thurs., spending the entire day on LVRS, “Voice-Data,” or meetings ); p. 79 (Mon.
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`and Wed., spending entire days on PICS, training, LVRS, or 410-10).
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`Due to the page limitation in this reply, Petitioner cannot address all of the
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`lapses in diligence demonstrated in the timesheets and these are only representative
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`examples for declarants Michael Forman and Vinh Le. Moreover, there are similar
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`lapses in diligence shown in the timesheets for Stephen Baker (software engineer;
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`Exh. 2016), Michael Kight (software engineer; Exh. 2020), and Donald Kayser
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`(software engineer; Exh. 2019). The evidence submitted by Patent Owner shows that
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`reduction to practice was frequently “put on the back burner” while other more
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`important projects took precedence.
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`Moreover, Patent Owner’s two-year delay (between April 24, 1995 to mid-1997)
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`is too long to remove Parulski and Reele as prior art. It is well-established law that the
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`critical time gap cannot exceed two or three months without an adequate excuse.
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`Griffith v. Kanamaru, 816 F.2d 624, 627 (Fed. Cir. 1987) (three months gap was not
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`diligent); Basmadjian v. Landry, 54 U.S.P.Q.2d 1617 (BPAI 1997) (three months gap
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`was not diligent); In re Nelson, 420 F.2d 1079, 1081 (CCPA 1970) (two months gap was
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`not diligent).
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`C. Declarant Clarkson is Unqualified to Give Expert Testimony on
`Electrical Engineering
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`The person of ordinary skill in the art would have at least an electrical
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`engineering background. Patent Owner proffers Dr. Gavin Clarkson as an expert on
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`the technical matters in this IPR proceeding. His education background is an M.B.A.
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`degree in Management Information Systems from Rice University, a law degree from
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`Harvard Law School, and a doctorate in Business Administration (Technology and
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`Operations Management) from Harvard Business School. @Clarkson Decl. (Exh.
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`2040) at p. 33, Attach. A. He is currently an associate professor of finance at New
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`IPR2014-00439
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`Mexico State University, College of Business and a lecturer at Rice University teaching
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`graduate business courses on entrepreneurship and intellectual property strategy.
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`As impressive as his credentials may be, declarant Clarkson lacks the necessary
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`expertise or background in electrical engineering to provide expert testimony on the
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`technical issues raised in this IPR proceeding. Taking into account the limited extent
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`of his expertise in electrical engineering, the Board should exercise its discretion and
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`give little, if any, weight to his testimony.
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`D.
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`Patent Owner’s Claim Construction is Extremely Narrow
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`Patent Owner proposes an extremely narrow construction of the claim term
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`“selectively” (and its variants “select” and “selected”) in relation to the step of
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`displaying and transmitting. Patent Owner argues that this claim term should be
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`limited to selecting “from among a plurality of digitized framed images that are within
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`memory” (which is nowhere recited in the claim language itself). That is, Patent
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`Owner is proposing that this claim term necessarily requires the existence of multiple
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`images stored in memory and the user selects from one of the plurality for displaying
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`or transmission. Under Patent Owner’s proposed claim construction, the term
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`“selectively” does not apply to the situation where only one image is present in
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`memory.
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`Patent Owner’s claim construction improperly imports new limitations into the
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`claim, improperly excludes the single image scenario, and results in a bizarre
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`functional effect. All the claims in the challenged patent are device claims, not method
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`8
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`claims. By its own claim construction, Patent Owner is effectively contending that its
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`device operates as expected when there are multiple images in memory, but for some
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`reason, suddenly cannot perform user-directed displaying and transmitting operations
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`IPR2014-00439
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`when there is only a single image in memory.
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`This nonsense result indicates that Patent Owner’s proposed meaning of this
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`claim term is not its broadest reasonable interpretation. The second reason Patent
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`Owner’s claim construction is flawed is because it contradicts the plain language of
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`the claim itself. For example, relevant portions of claim 1 specifies:
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`… for capturing a visual image …
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`… for displaying an image framed by the camera …
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`… for generating an image data signal representing the image …
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`… for receiving and storing the digitized framed image …
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`Claim 1 repeatedly uses the word “image” in singular form preceded by “a” or “an.”
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`Thus, claim 1 is written to at least encompass the situation where only a single image
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`is present in the memory. This plain language can also be seen in the other
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`independent claims 6, 9, and 12.
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`E. The Claims Are Not Different From the Prior Art
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`Patent Owner further attempts to distinguish the claims over prior art Parulski
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`and Reele. Petitioner addresses these in the same numbered order and headings as
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`Patent Owner’s response.
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`1.
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`Selectively Displaying/Transmitting (claims 1, 6, 9, and 12)
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`9
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`For distinguishing over the prior art, Patent Owner relies on its extremely
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`IPR2014-00439
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`narrow interpretation of the claim term “selectively” for displaying and transmitting.
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`Patent Owner cannot escape the presently applied prior art with its flawed and after-
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`the-fact claim term narrowing.
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`2.
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`User Interface Enabling Limitation (claims 1 and 6)
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`Same as above, for distinguishing over the prior art, Patent Owner relies on its
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`extremely narrow interpretation of the claim term “selectively” for displaying and
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`transmitting. Patent Owner cannot escape the presently applied prior art with its
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`flawed and after-the-fact claim term narrowing.
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`3.
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`Prior to Capture Limitation (claims 2, 9, and 12)
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`In the operation of the claimed invention, the image to be captured can be
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`viewed on the display screen. As recited in claim 12 (and similarly in claims 2 and 9),
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`this allows the feature “whereby an operator can view and frame the image prior to
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`capture.” Petitioner addresses this feature by combining the camera-phone of Parulski
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`with the Reele prior art, which allows the user to view the image on the display screen
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`too see if it is acceptable:
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`The operator views the captured image on the display 20 to determine if the
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`subject is properly framed and exposed. If the captured image is not acceptable,
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`the operator can erase the image from the memory unit 26 …
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`@Reele (Exh. 1003) 5:12-15.
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`10
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`Patent Owner argues that Reele does not meet the “prior to capture” limitation
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`because Reele temporarily stores the captured image in the device memory while
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`displaying it on the display screen, and then allowing it to be erased if the user finds it
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`unacceptable. Patent Owner is essentially arguing that the concept of storing images
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`in the image capture circuit (e.g. the charge-coupled device (CCD) image sensor) and
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`then transferring to the main device memory is inventively distinct from simply storing
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`it temporarily in the main memory to begin with and erasing the image if
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`unacceptable.
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`Petitioner has already challenged Patent Owner to explain how this trivial
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`difference makes for an inventive distinction. @Petition (Paper No. 1), pp. 14 (bott.)
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`– p. 15 (top). Nothing in Patent Owner’s response explains how this is an inventive
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`distinction. The declaration of Patent Owner’s expert devotes only a single paragraph
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`to this claim limitation and simply points out the same trivial distinction. @Clarkson
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`Decl. (Exh. 2040) at p. 28, ¶69. His testimony fails to explain how this trivial
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`distinction amounts in any way to an inventive distinction. In summary, Patent Owner
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`has been given an opportunity to make a rebuttal, but has failed to explain how this
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`distinction is inventive.
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`4. Non-Audio Signal Transmission/Reception Limitation (claims 5,
`9, 12, and 14)
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`Petitioner relies on the combination of Parulski in view of Reele to arrive at
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`this claim limitation. Here, Patent Owner attacks the legitimacy of the combination
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`itself. But its arguments are insufficient. A person of ordinary skill would be led from
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`IPR2014-00439
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`Parulski to Reele with minimal effort. Parulski cites to Reele as being relevant
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`background. @Parulski (Exh. 1002) face page, R col. top. Indeed, a person of
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`ordinary skill in the art would see that Reele, like Parulski, discloses a combined
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`film/digital camera system. @Abstract. With this easily-appreciated combination,
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`someone of ordinary skill in the art reading Parulski would have strong motivation to
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`consider Reele for its further teachings about camera-phone devices.
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`Same as above, for distinguishing over the prior art, Patent Owner also relies
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`on its extremely narrow interpretation of the claim term “selectively” for displaying
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`and transmitting. Patent Owner cannot escape the presently applied prior art with its
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`flawed and after-the-fact claim term narrowing.
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`5.
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`Digital Signaling Limitation (claims 1, 9 and 12)
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`Patent Owner looks only to Reele (secondary prior art) in isolation and
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`overlooks the disclosure of Parulski (primary prior art). Parulski’s device sends and
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`receives “digital image data” to and from the base units. @Parulski (Exh. 1002) at
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`Abstract, bott.
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`6.
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`Digitized Audio Signal Limitation (claims 1, 9 and 12)
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`Parulski’s device sends and receives “digital image data” to and from base units.
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`@Parulski (Exh. 1002) at Abstract, bott. Likewise, Reele’s device transmits “digital
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`image signals.” @Reele (Exh. 1003) at Abstract, bott. Reele’s device has an “A/D
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`converter 56 and a D/A converter 58” that work to make analog-digital signal
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`12
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`conversions between the speaker 62, microphone 64, antenna 34, and the cellular
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`control unit 60. @Id. 4:8-12. As already stated in the original Petition, it is not clear
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`whether the audio signals being received and transmitted by Reele are in digital or
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`analog form.
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`However, Patent Owner fails to explain what, in view of the Parulski and Reele
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`devices that send and receive digital image data over cellular networks, is particularly
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`inventive about operating on a digital voice network instead of an analog voice
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`network. According to the challenged patent, this choice is made simply depending
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`upon the type of cellular network that is available:
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`In an embodiment a system includes a video camera and an integral cellular
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`telephone, wherein the telephone using the standard audio mode or future digital
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`modes, can be used to transmit and receive visual image signals.
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`@’871 Patent, 1:64-67. In the related IPR petition (IPR2014-00987) against the same
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`‘871 patent by petitioner HTC Corp., expert witness Kenneth Parulski stated in his
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`declaration: “In 1991, the first digital cellular system, USDC (United States Digital
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`Cellular) was installed, in order to support the growing demand for cellular phone
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`service in large cities.” See IPR2014-00987 (HTC Corp.), Exh. 1006 at p. 28, ¶59.
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`Petitioner has already challenged the Patent Owner to explain how this trivial
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`difference makes for an inventive distinction. @Petition (Paper No. 1), pp. 24 (bott.)
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`– 25 (top). Nothing in Patent Owner’s response explains how this feature is inventive
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`in view of the fact that the Parulski and Reele devices send and receive digital image
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`data over cellular networks. The declaration of Patent Owner’s expert devotes only a
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`single paragraph to this claim limitation and simply points out the same trivial
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`distinction. @Clarkson Decl. (Exh. 2040) at p. 25, ¶60. His testimony fails to explain
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`how choosing digital signaling as opposed to analog signaling for voice
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`communications amounts in any way to an inventive distinction. In summary, Patent
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`Owner has been given an opportunity to make a rebuttal, but has failed to explain
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`how this distinction is inventive.
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`7.
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`Plural Memory Module Limitation (claims 4, 10, and 13)
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`Patent Owner’s arguments refer to the claim’s recitation of a “removable
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`memory module in addition to the memory.” Patent Owner’s argument is flawed
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`because it looks only to Reele (secondary prior art) in isolation, and not the proposed
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`combination of Parulski and Reele. The primary reference, Parulski, already has an
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`internal memory unit 64. @Parulski (Exh. 1002), FIG. 9. Petitioner’s obviousness
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`argument is that Parulski’s phone can further incorporate the removable flash memory
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`card disclosed by Reele (the secondary reference). @Petition (Paper No. 1), p. 16
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`(top). The combination results in an internal device memory and as an addition, a
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`removable flash memory.
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`Patent Owner’s argument seems to be that the combination requires that all the
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`memory of Parulski must be replaced entirely by this removable flash memory of Reele,
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`and as such, the resulting combination has only one memory unit (i.e. the removable
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`flash memory card) instead of plural memories. There is no such requirement that the
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`already existing memory unit 64 in Parulski must somehow be eliminated to
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`implement the proposed combination with Reele.
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`8.
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`Integrated Electronic Camera Limitation (claims 1 and 6)
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`Here, Patent Owner improperly hides its claim construction position within the
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`prior art analysis. Patent Owner is essentially arguing that the claim term “integrated”
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`means, as the Patent Owner puts it, that the camera and cellular telephone are
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`functionally “under the unified control of a common user interface.” This is an
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`extremely narrow claim construction that: (1) has no support in the original
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`disclosure, and (2) is not the broadest reasonable interpretation of the claim term
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`“integrated.”
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`But in any case, the “unified control” that Patent Owner speaks of is disclosed
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`in Parulski at FIG. 9, which shows a block schematic of the device shown in FIGS. 7
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`and 8. @Parulski (Exh. 1002) 4:33-47. As shown in FIG. 9, there is a single keypad 58
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`and a single display screen 56. This single user interface interacts with both the cellular
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`transceiver 66 and camera module 68. Both the cellular transceiver and the camera
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`module are, as Patent Owner puts it, “under the unified control of a common user
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`interface.” FIGS. 7-9 show only a single common interface – not one interface for the
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`camera and another separate interface for cellular phone.
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`IRON DOME LLC
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`By:
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`/Steven Yu/
`Steven Yu (Reg. No. 58,776)
`Lead Counsel for Petitioner
`P.O. Box 10034
`Gaithersburg, MD 20898
`Tel: 202.262.0426
`Email: syu@irondome.com
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`Appendix A: Petitioner’s Listing of Facts
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`Petitioner lists the following facts as a summary of the witness declarations
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`submitted by Patent Owner in Exhibits 2014-2036 (Exhibit 2023 was omitted from
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`the record). Petitioner neither admits nor denies these facts.
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`1. The witness declarations submitted by Patent Owner contain numerous
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`acronyms for the various different projects. The acronym HCT is for “Handheld
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`Communication Terminal”; the acronym PICS is for “Portable Image Computer
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`System”; the acronym RIT is for “Remote Image Transmitter” (variants of RIT were
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`CAM-RIT, Mini-RIT, Micro-RIT, Military Micro-RIT, and L-RIT); the acronym ICE
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`is for “Integrated Communications Environment.”
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`2.
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`David Monroe (declaration Exhibit 2014) is the inventor of the
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`challenged ‘871 patent and submits his declaration in Exhibit 2014.
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`3. Winston Ninh (declaration Exhibit 2015) was an employee (role
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`unspecified) for the time period from about 1990 to about 1993. He worked on the
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`following projects: FAX-CAM, CAM-RIT, Mini-RIT.
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`4. Stephen Baker (declaration Exhibit 2016) was employed as a software
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`engineer for the time period 1990-1999. He worked on the following projects: ICE,
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`HCT, Micro-RIT, Military Micro-RIT, L-RIT, Micro-ICE, and PICS.
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`5.
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`Glen Davis (declaration Exhibit 2017) was employed as a mechanical
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`draftsman for the time period 1990-2005. He worked on the following projects: HCT,
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`IPR2014-00439
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`Micro-RIT, Military Micro-RIT, L-RIT, and PICS.
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`6. Michael Forman (declaration Exhibit 2018) was employed as an electrical
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`engineer for the time period 1994-2005. He worked on the following projects: HCT,
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`Micro-RIT, Military Micro-RIT, and PICS.
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`7.
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`Donald Kayser (declaration Exhibit 2019) was employed as a software
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`engineer for the time period 1994-1997. He worked on the following projects: ICE,
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`HCT, and PICS.
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`8. Michael Kight (declaration Exhibit 2020) was employed as a software
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`engineer for the time period 1996-2005. He worked on the ICE project.
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`9. Vinh Le (declaration Exhibit 2021) was employed as a mechanical
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`engineer for the time period 1988-2005. He worked on the following projects: HCT,
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`Micro-RIT, Military Micro-RIT, and PICS.
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`10. Aaron Paul Stone (declaration Exhibit 2022) was employed as a
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`mechanical draftsman for the time period 1991-2005. He worked on the following
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`projects: HCT, Micro-RIT, Military Micro-RIT, L-RIT, and PICS.
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`11. Dorothy Calderon (declaration Exhibits 2024-2035) was employed as an
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`accounting assistant and accounting manager for the time period 1992-2005. She kept
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`employee time records for the company and her declaration authenticates the
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`IPR2014-00439
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`timesheets submitted with the above declarations.
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`12. Robert Curfiss (declaration Exhibit 2036) was the patent attorney who
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`worked on the priority patent application for the challenged ‘871 patent from mid-
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`1997 through April 2002.
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`CERTIFICATE OF SERVICE
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`The parties have agreed to electronic service in this matter. The undersigned
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`hereby certifies that the foregoing PETITIONER’S REPLY TO PATENT OWNER’S
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`RESPONSE was served on Feb. 10, 2015 by filing though the Patent Review Processing
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`System and by email to the attorney of record for Patent Owner at the following
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`address:
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`Robert C. Curfiss
`bob@curfiss.com
`19826 Sundance Drive
`Humble, Texas 77346
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`/Steven Yu/
`Steven Yu
`Lead Counsel for Petitioner
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