United States Patent 8: Trademark Office
`
`Patent Trial 8: Appeal Board
`
`IRON DOME LLC
`
`Petitioner
`
`V.
`
`E—\X/ATCI-I, INC.
`Patent Owner
`
`Petition for Inter Partes Review
`
`of
`
`Patent No. 7,365,871 (to David Monroe)
`Titled: Apparatus for Capturing, Converting and Transmitting ...
`Issued from: Application No. 10/ 336,470
`Issue date: April 29, 2008
`
`For Paralegal:
`
` Number of Claims Challenged = 15
`
`Power of Attorney enclosed
`Fee paid online by credit card
`
`
`
`Contact: John Yim
`Phone: 703.749.0500
`
`Email:
`
`jyim@yimassociates.com
`
`
`
`
`
`E—Watch, Inc
`Exhibit 2009
`
`|PR2014-00439
`
`Petitioner - Iron Dome LLC
`
`Patent Owner — E—Watch Inc
`
`

`
`US 7,355,371
`
`Table of Contents
`
`1.
`
`Introductory Matters
`
`- 1 -
`
`A.
`
`B.
`
`C.
`
`Relief Requested
`
`.......................................................................... .. ~ 1 —
`
`Grounds for Standing ..........................
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`...............
`
`...... .. ~ 1 »-
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`Mandatory N0tices..,..,.......,, ...........................
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`......... .. - 1 -
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`3 -
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`II.
`
`Prior Art
`
`A.
`
`B.
`
`Earliest possible effecflve filing date .i.s]an11a,ry 12, 1998........... .......
`
`- 3 -
`
`Swc-ar.-Behjnd Affidavit Under Rule 131........, ..................................
`
`- 4 —
`
`III. Technical Background 8; Claim Construction......................................-- 6 -
`
`A.
`
`Technical Background of the Challengrad Patent .................
`
`- 6 ~
`
`' B.
`
`Claim Consttuctlh-n......,........ ....................................................
`
`............ ..
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`~« 6 —
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`IV. Grounds for
`
`8 -
`
`A.
`
`B.
`
`Parulskj »« primary reference...............................
`
`......... .. — 8 -
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`Reels — secondaxy reference..................................................................... .. — 8 M
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`V.
`
`Claim Analysis
`
`9 -
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`........................ ,. — 9 --
`...............
`...................................................
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`«— 14 «v»
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`Independent Claim 1 ............
`M.
`...................
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`.
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`m
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`Claim] 3 ............................
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`-15 -
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`3 .................
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`........................................
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`— 32 —
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`ii
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`

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`Claim 14 ................................................................................................... .. - 32 —
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`Claim 15 ................................................................................................... .. — 32-
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`US 7,365,871
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`

`
`US 7,365,871
`
`Exhibit List
`
`Exh. 1001 US. Patent No. 7,365,871 (‘challenged patent’)
`
`I:-Exh. 1002 Parulski et 31.; US, Patent No. 6,122,526 (‘Parulski’)
`
`Exh. 1003 Reele et a1.; US. Patent No. 5,893,037 (‘Reele’)
`
`Exh. 1004
`
`“AFFIDAVIT OF‘ DAVID A. MONROE UN:oE12. 37 CFR 1.131” dated
`
`Dec. 27, 2004 in the prosecution h.isI:o1:§’ of the challenged patent
`
`(‘Affidavit’)
`
`Exh. 1005
`
`“OFFICE COMMU'NICATION"’ dated Aug, 9, 2005 in the
`prosecution history of the challenged patent (‘O ffice Action’)
`
`Citation Forrn Used
`
`Reference to supporting documents indicated by “@
`
`”.
`
`Citations to US. Patents are shown as [column number : line numbers].
`
`Citations to linemumbered documents are shown. as [page number 2 line numbers].
`
`Claim terms are distinguished from other text by “t1nder}ining.”
`
`iv
`
`

`
`US ?,365,B?1
`
`Issue Presented
`
`The Challenged patent was recently” asserted in patent infringement lawsuits
`
`against mobile smartphones that transmit photo images over wireless cellular
`
`networks, such as Apple’s iPhone 45 and SaII1su11g’s Galaxy SIII. A Search of the
`
`prior art reveals that the claims are obvipnus over two patent publications that both
`
`disclose a combination cantera—phpne that transtrfits digital photos over wireless
`
`cellular networks. Simply put, what the challenged patent claims as an invcnticm was
`
`already known in the prior art.
`
`

`
`US 7,365,871
`
`I.
`
`Introductory Matters
`
`IRON DOME LLC (‘Petitioner’) petitions for Inter Partes Review (‘1_l_';‘_1§) of U.S.
`
`Patent No. 7,365,871 (‘challenged patent’; @EXl1. 1001), which is owned by E-
`
`WATCH, INC.
`
`A. Relief Requested
`Petitioner requests cancellation of claims 1-15 (total of 15 claims) of the
`
`challenged patent for obviousness under 35 U.S.C. § 103.
`
`B. Grounds for Standing
`
`Petitioner certifies that the challenged patent is available for IPR and that
`
`Petitioner is not barred or estopped from requesting an IPR challenging the patent
`
`claims on the grounds identified in this petition.
`
`C. Mandatory Notices
`
` : (1) IRON DOME LLC, a Virginia limited liability
`
`company, which is a wholly—owned subsidiaryof ROZMED LLC, a Virginia limited
`
`liability cornpany; and (2) Steven S. Yu, M.D., an individual residing in Rockville,
`
`Maryland and the rnanaging member of ROZMED LLC.
`Indiyidual Steven S. Yu, M.D. declares that there are no other parties that are
`
`funding this IPR, nor par1:icipa1:ing in any manner in this IPR; and further that this
`
`statement is being made wiili the knowledge that willful false statements and the like
`
`so made are punishable by fine or imprisonment, or both, under Section 1001 of Title
`
`18 of the United States Code.
`
`

`
`us 7,355,371
`
`Related Matters: The challenged. patent has been asserted by the patent owner
`
`l;.‘*l-\7(/atch, Inc. in litigation against numerous defendants alleging infringernennt by
`
`smartphones that are capable of transmitting photo images over cellular networks. On
`
`or about December 9, 2013., the patent owner E-Watch, Inc. filed the following civil
`
`actions in the Us. District Court for the Eastern District of Texas: 2;13~Ct-'—OlU6l
`
`through 01064, 01071, and 01073 through 01078.
`
`individual Steven S. Yu, MD. declares that Petitioner is not a party to any of
`
`these civil actions, not has Petitioner been given or taken any direct financial interest
`
`relating to the outcome of these civil actions; and further that this statement is being
`
`made with the knowledge that willful false statements and the like so made are
`
`punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of the
`
`United States Code.
`
`From the challenged patent, a divisional application Serial No. 11 f617,509 Was
`
`granted as U.S. Patent No. 7,643,168, Concuritently with this IPR taetition, Petitioner
`
`is also filing an IPR petition against US. Patent No. 7,643,168.
`
`Electronic Service: Petitioners consent to service by email at:
`
`j}-'im@yimassociates.c<)m.
`
` Lead Counsel
`
`
`
`
`
`
`
`john J. Yirn (Reg. No. 47,197)
`]oI—1N]. YLM 8.: i"issocta”res LLC
`7600 lfleesbtntg Pike
`East Building, Suite 470
`
`Steven S. Yu (Reg. No. 58,776)
`'1{ozM3::If> I..J_.,C
`
`PO Box 10034
`
`Ciaitlietsbtirg,
`
`20898
`
`

`
`
`sons orner, 43
`ii
`
`Tel:
`703.749.0500
`Fax:
`202.379.1723
`
`Email;
`
`jyim@yirnassociates.t:orn
`
`Tel: 202.262.0426
`Email: sj,ru@.rozn1ed.com
`
`us 7,355,371
`
`a
`
`II.
`
`Prior Art References
`
`A. Earliest possible effective filing date is January 12, 1998
`
`The challenged patent was granted from a divisional of application Serial No.
`
`09/006,073 filed onjanuary 12, 1998. Thus, the earliest possible effective filing date is
`
`January 12, 1998.3 The prior art publi(,:ations referenced herein are as follows.
`
`1. Parulslti et al.; US‘ Patent No. 6,122,526 (°Parulsl:i’ @Exh. 1002)2
`
`§ 102(e) prior art date 1 Apr. 24, 1995
`
`2. Reele et 3.1.; US. Patent No. 5,893,037 {‘Reele’ @Exh. 1003?
`
`§ 1U2(e) prior art date = Dec. 9, 1994
`
`Neither of the above patent publications were speci fically applied in a rejection
`
`1 We reserve the right to dispute whether the Challenged claims should legitimately
`have the benefit of this or any other earlier filing date (or even the latest filing date,
`i.e. lack of written support).
`
`2 Parulslti is a US. patent granted from application Serial No. 09 /232,594 (filed on
`_]an. 19, 1999), itself a Cotltinllation of application Serial 0, 08/842,458 (filed on
`April 24, 1997), itself a divisional of application Serial No, 08/426,993 that was filed
`on April 24, 1995. Therefore, Parulski is prior art under at least 35 U.S.C § 102(e).
`
`3' Reele is a US. patent granted from application Serial No, 08/739,237 filed on
`October 29, 1996, which itself is a continuation of application Serial No. 08/ 353,023
`filed on December 9, 1994. Therefore, Reele is prior art under at least 35 U.S.C §
`iozgg.
`
`

`
`US 7,365,871
`
`against the claims during the original prosecution.
`
`B. Swear-Behind Affidavit Under Rule 131
`
`In the prosecution of the challenged patent, the applicant submitted an
`
`affidavit under Rule 131 along with evidence to “swear—behind” prior art that the
`
`examiner was applying to reject the claims. @Affidav'it (Exh. 1004). For point of
`
`reference, January 12, 1998. is the earliest possible effective filing date for the
`
`challenged patent. @Affidavit 1, 1] 2. The examiner’s earliest prior art was dated
`
`March 18, 1994. @3, 1] 5.
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`After enumerating a series of dates and associated actions, the inventor’s
`
`affidavit concludes that his invention occurred on March 18, 1993 (or earlier). @5,
`
`1]17. In addition, the inventor declares that there was diligent reduction to pracfice
`
`from conception on March 18, 1993 (or earlier) and over four subsequent years to
`
`when the first prototype was made in mid~1997 and when the commercial product
`A was made in late 1997. @4, 1]14 8: 5, 1117. After the Rule 131 affidavit was submitted
`
`to the examiner, the examiner sent an “OFFICE COMMUNICATION” indicating that the
`
`affidavit was sufficient to overcome four of the six prior art references. @Office
`
`Action 2, fl2 (Exh. 1005).
`
`Petitioner has thoroughly reviewed the inventofs affidavit. First, it is not clear
`
`how the asserted dates and the associated actions firmly establish that the inventor in
`
`March 1993, hadfullpa5.ve.rsz'0n of the invention 45 now claimed in the challenged patent.
`
`This is almost five years before the January 1998 filing date. In 1993, the inventor was
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`_4_
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`9
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`
`us 7,365,371
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`‘working in the field of wireless communication devices, and this work may have been
`
`in a direction reward; the invention described in the January i998 patent application (as
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`were trtariy of the inventor’s peers in this rapidly developing technology at the time).
`
`But merely working in the relevant technological field in a direction towards the
`
`invention does not establish that in 1993, the inventor had _;‘irZ!parrernon of the
`
`invention 51.!’ new claimed in the challenged patent.
`
`Second, moving the invention date back by abxarrfivejearr before the actual
`
`filing date is far beyond the ordinary grace period granted. by US, patent lavas. With
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`the practical understanding that inventors are typically busy people (as well their
`
`patent attorneys), having many demands on their time and other important projects
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`requiring their attention, the US. patent laws will concede to moving the invention
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`date back afiw dry; or even afcw week: so long as the inventor demonstrates that he
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`was diligently reducing his invention to practice for that duration. But on its face,
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`asking to have the effective invention date moved back by aimortfiwyearr is out of the
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`question.
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`In sumrnary, there are legtimate questions about the legal sufficiency of the
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`applicant’s attempt to antedate the prior art. If the patent owner wishes to maintain
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`this assertion of prior conception, then the evidence submitted warrants fat: more
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`scrutiny than what was given by the examiner in the original prosecution of the
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`challenged patent, Petitioner intends to use discovery, as permitted. by the IPR rules,
`
`10
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`

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`Us 7,365,371
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`to further investigate this issue.
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`III. Technical Background & Claim Construction
`
`A. Technical Background of the Challenged Patent
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`The challenged patent is directed to a cellular communication system that has a
`
`camera to capture an image, compress the image, and transmit the image to a remove
`
`recipient device over a wireless cellular network. @1:25~»36, 64436. For example, FIG.
`
`7 shows a camera 190 having a lens 192 and viewfinder 194. A cellu.l.a1f phone is
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`integrated into the camera housing to that images can be transmitted to a remote
`
`receiving station over a wireless cellular network. @1 1:16-19. The keypad for the
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`cellular phone is shown on the back display Window 198. @11:19—2U. FIG. 4 shows
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`an example of a remote receiving station for receiving images from the camera system
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`over the wireless communication channel 32 (see right side of figure). To view the
`
`transmitted images, the reniove receiving station is equipped with a fax machine 34
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`(Gmlll type), personal computer 85, video telephone 89, and server 91. @,7:44—48.
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`B. Claim Construction
`
`In the context of an infarpartss review, claim "terms must be given their broadest
`
`reasonable interpretation (“_L3WElm”) in view of the specification.
`
`1.
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`“irtiagc capture device”
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`According to the challenged patent, FIG. 1 shows the simplest embodiment
`
`having a “standard. analog or digital camera device 10 for capturing a visual image in
`
`‘~561-
`
`11
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`

`
`US ?,355,s?1X
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`the typical fashion.” @550-32. Thus, the BR}; of this term encompasses, at least, a
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`digital camera or the electronic component of a digital camera that performs the
`
`actual image capture, which is typically a charged coupled device (CCD).
`
`2. “digtized framed irriag”
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`Wie refer again to the challenged patenfs statement that FIG. 1 shows the
`
`siinplest embodiment having a “standard analog or digital camera device 10 for
`
`capturing a visual image in the typical fashion.” @5:ZiU—32. For a digital camera, an
`
`image captured “in the typical fashion” is a digitized photo image. Thus§ the BRI of
`
`this term encompasses, at least, a digital photo image.
`
`3. “remote receiving statiggn”
`
`This claitn term refers to the recipient device of the wireless transmission. The
`
`challenged patent states that its sys tem has versatile capability and “permits
`
`transmission of captured data to a standard biwlevel facsimile machine .. , as well as to
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`other remote receiving devices such as, by way of example, personal computers and
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`network servers.” @2:39»43. FIGS, 1, 2; and 3 show a fax machine 34 as the remote
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`recipient device over wireless communication channel 32. Accordingiy, the
`
`of the
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`term “remote receiving station” encompasses, at least, fax machines, cellular phones,
`
`and personal computers.
`
`4. “alphanumeric input keys”
`
`The challenged patent states that data “niay be input from an integrated
`
`keyboard or from a remote device.” @2:30—32. For FIG. 7, the challenged patent
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`
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`r7r
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`12
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`

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`explains that the “keypad for the telephone is indicated at 202.” @11:19»-20. Thus, the
`
`BRI of this term encompass, at least, telephone kcypads.
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`us 7,355,371
`
`IV. Grounds for Challenge
`
`Petitioner requests cancellation of claims 1-15 of the challenged patent for
`
`obviousness over Parulski in View of Reele.
`
`A. Patulski ~— primary reference
`
`Parulski describes a “combined telephone/camera unit” with a cellular
`
`transceiver. @Pa.rulski, Abstract (Exh. 1002). FIGS. 7 and 8 ofPamlski show an
`
`example in which a “cellular telephone is provided with the components of an
`
`electronic image camera to form a combined telephone/camera unit 48.” @,-4:32-34.
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`As conventional, this cellular phone has an antenna 54, liquid crystal display screen 56,
`
`control processing unit 62, and internal bus 60 that is connected to a camera module
`
`68, telephone keypad 58, memory unit 64, and cellular transceiver 66.
`
`B. Reele - secondary reference
`
`Reele is specifically cited by Parulski as being relevant background. @PflflflSld,
`face page, R col. top.Moreove1:_, like Panilski, Reele discloses a combined filrn/digital
`
`camera system. @Abstract. The camera system can include a cellular phone for
`
`transmitting the images taken by the camera. @Id. Thusr with Parulski specifically
`
`citing to Rcele on its face page as relevant background_, and with Reele indeed being
`
`directed to the same topic of camera—phone devices, someone of ordinaqr sldll in the
`
`13
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`

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`art reading Parulski would have strong motivation to consider Reele for its further
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`teachings about combination camera—phone devices.
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`US 7,365,871
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`V.
`
`Claim Analysis
`
`The challenged claims are obvious over the cellular camera—pho.ne disclosed by
`
`Parulski in view of the cellular camera—phone disclosed by Reele.
`
`Independent Claim 1
`
`a) (claim 1 preamble) “A handheld self—contained cellular telephone and
`integrated image processing system”
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`In FIG. 7 of Parulski, the combined cellular camera—phone unit 48, which has
`
`an antenna 54, is both portable and wireless. @Parulski 4:34-38 (Exh. 1002).
`
`Moreover, the claims listing in Parulski discloses a “portable handheld telephone.”
`
`@6:15.
`
`b)
`
`(claim 1 preamble) “ or both sending and receiving telephonic audio
`siggals”
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`This claim term is essentially stating that the cellular phone is capable of
`
`making and receiving an ordinary voice phone call. Parulski discloses a cellular phone
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`and it should be well—understood that any telephone has the ability to receive an
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`ordinary voice call, i.e. “sending and receiving telephonic audio sigpals.” Otherwise, it
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`‘would not be called a “phone.”
`
`14
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`

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`US 7,365,871
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`C)
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`a visual ima _e and transmittin it
`’
`(claim 1 preamble) “ or ca
`to a compatible remote receiving station of a wireless telephone
`network”
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`As explained above, we interpret “remote receiving stafign” to encompass a
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`receiving site that has a fax machine (Le. the fax machine receives the images
`
`transmitted by the cellular phone). @IPR 7. FIG. ? ofParulski shows a cellular
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`telephone 48 that includes a digital camera. @Patulslti 4:34-36. Parulski further
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`explains that the “stored image is then converted to the appropriate fax standard .. .
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`and is transmitted to the receiving fax machine using the normal cellular telephone
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`system that includes an RF linir £tom the cellular transceiver 66.” @4:62—6S.
`
`cl)
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`[claim 1) “the sggstecm comprising: a manually portable housing”
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`In FIG. 7 of Parulslti, the combined cellular camerawphone unit 48, which has
`
`an antenna 54, is both portable and wireless. @l?’arulski. 4:3-$38. Moreover, the claims
`
`listing in Parulski discloses a “portable handheld telephone.” @6:15.
`
`s
`¢
`e) {claim 1) ‘ an integral image capture device comprising an electronic
`camera contained §;__fl’l,'.l1l’.IT|. the portable housing”
`
`As explained above, a digital camera is representative of an “iiliage capture
`
`device.” @IPR 6. In FIG. 7 of Parulski; the combined cellular camera»-phone unit 48
`
`is portable. @Parulski 4:34-38. ‘The handheld unit -18 has a “camera module 68.”
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`@4;43—45,
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`.M1()_
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`15
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`

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`US 7,365,871
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`1)
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`(claim 1} “a-dis la "for dis 1 Vin an ima e framed b" the camera
`
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`[and] commonly m.o1,gable [with the electronic camera] in the housing
`when the housing is mggved bv hand”
`
`This claim tennis essentially stating that the cellular phone has a display and
`
`that the camera and display are integrated in the same housing. In FIG. 7 ofParu1sl:i,
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`the handheld unit 48 has a liquid crystal display screen 56. @'Pan1lsl<i 4:38-31 9. Patulski
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`explains that the digitized picture data generated by the camera 68 is displayed on the
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`display screen 56. @415 3~55.
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`' g) (claim 1) “a c____O1‘f in the housin for v eneratin an iinae d ta
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`
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`signal representing the image framed by the camer”
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`In FIG. 7 ofPa1:ulski, the handheld unit 48 has a “camera module 68:, which
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`indudes the same basic components as iflusttated in FIG. 4.” @l?arulski 4:43~45. FIG.
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`4 of Parulski shows an “image signal processor 40 that processes an analog image
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`signal generated by the electronic imaging sensor 36 into digital image data
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`[by] an
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`analog-to-digital (A/D) converter,” @3:3l-37.
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`h) (claim 1) “a H1(?.II1(JL§’ associated with the processor for receiving and
`storing the giggtized framed ima;”
`
`Referring to FIG. 7, Parulski explains that the digitized picture data generated
`
`by the camera 68 is displayed on the display screen 56 and stored in the memory unit
`
`54. @4;53_55.
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`H11-
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`16
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`

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`US 7,365,371
`
`i)
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`(claim 1) “[the digtized framed irnagj accessihle for selectivelg
`dis_pla§,;ig_1g in the display window and accessible for selectively
`transmitting over the wireless telephone network the digtiaed framed
`irnage”
`
`Further to the preeeciing paragraph, Parulski explains that the “stored image is
`
`then converted to the appropriate fax standard
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`and is transmitted to the receiving
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`fax machine using the normal cellular telephone system that includes an RF link from
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`the cellular transceiver 66.” @4:62—66.
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`(claim 1) “a user interface for enabling a user to select the imag data
`sign] for viewing and transmission”
`
`In FIG. 7 of Parulski, there is a telephone keypad 58 on the ceilular phone.
`
`'
`
`@ParuE.slti 4:40. Parulski further explains that the “#” key on the keypad 58 can he
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`used as the image capture switch. @4:51—53. This causes the digitized picture data to
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`be displayed on the display screen 56. @455. Parulski further explains: “To transmit
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`the image, the user dials the telephone number of a desired fax machine that is to
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`receive the image using the l:e"§;'pacl 58.” @4:56~58. Thus, the keypad 58 is a “LE
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` ’ that enables the user to capture the image for viewing (by pressing the “#”
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`key) and transmitting (by dialing the telephone number).
`
`1:) (claim 1) “a telep hggnic system in the housing for sending and
`’
`receiving digitized audio sigals and for sending the irnag data
`signal”
`T
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`FIG. 7 of Paruiski shows the combined camera-phone 48 having a cellular
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`transceiver 66, @Parulski 4:42. Like Parulsici, Reele also discloses a ca1:nera~phone that
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`transmits digital images through a cellular phone. As such, there is rnoiivation to add
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`-12_
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`17
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`US 7,365,871
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`useful features disclosed by Reele into the camera~phone of P?11'L‘llSl{i.
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`FIG. 4 of Reele shows a cellular phone 28 having a speaker 62 and microphone
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`64. @Reele 3:64 W 4:2 (Bath. 1003). This cellular phone 28 has a “transmitter/receiver
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`circuit 54 [that] is controlled by a cellular oontrol unit 60.” @4:5w6. The circuit
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`includes an “A/D converter 56 and a D /A converter 58” which work to make
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`analog»-digital signal conversions between the speaker 62, microphone 64, antenna 34,
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`and the cellular control unit 60. Someone of ordinary skill in the art would consider
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`this “telephonic S§St(‘:II1 .. . for sending and receijzing digtized audio sigals” in the
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`transceiver circuit of Reele to be Suitable for use in the cellular transceiver 66 circuit
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`of Parulsld.
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`1)
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`(claim 1} “alphanutneric input lteys in the housing for permitting
`mggnuallg input digtized alphanumeric signals to be iriput to the
`processor, the telephonic sggstem further used for sending the
`digitized alphanumeric sign, als”
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`As explained above, a telephone keypad. is representative of “alphanumeric
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`input kegs,” @Il3R 7. l3aJfulski explains that to “tI:ansn1‘it the image, the user dials the
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`telephone I11lI‘I1i;3et of a desired fax machine that is to arcceive the image using the
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`keypad 58.” @Parulski 4:56-58. As shown in FIG. 9 of Par-ulski§ input from keypad
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`58:13 received by control processing unit 62 and memory unit (34 via internal bus 60.
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`Thus, when the user presses keys on the keypad 58, the “alphanumeric” entries are
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`being input into the control processing unit 62 as digital signals. As explain ed in the
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`preceding paragraph, someone of ordinary skill in the art would consider the
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`18
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`US ?,365,871
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`transceiver circuit in the camera~—phone of Reele to be suitable for use in the camera-
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`phone of13'arL1lsl:i.As also explained in the preceding paragraph and shown in FIG. 4
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`of Reelet, this transceiver circuit of Reele is equipped with analog—digital converters
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`and circuitry associated with the keypad 32, -cellular control unit 60, and transceiver 54-
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`for “sending the digtized alphanumeric sg;;;a'15.”
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`In)
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`‘a mreless communications device adapted for
`(Claim 1)
`
`tr nsmittin 1 an of the di itized si
`3.118 t
`the com ati.
`le remote
`receiving station”
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`As explained in the preceding paragraphs, both. Parulski and Reele disclose a
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`camera-phone device that includes a cellular phone to transmit digital photos.
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`11)
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`(claim 1) “a power supplv for powering the sgtem”
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`Being a portable electronic device, it is understood that the combined camera»
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`phone 48 in FIG. 7 of Parulski has a power supply, But in case there is any doubt,
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`Parulski refers to FIG. 5 and explains that the pembased computer 12 has a “power
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`switch (not shown) to activate a camera application program stored in a memory unit
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`of the pen-based computer 12, and then flips up the flash unit 24 which causes power
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`to be supplied to the camera module 10 by activatiiig a power switch (not sl1oWn).”
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`@Paru1ski 3:50-55 (italics added).
`
`Claim 2
`
`Claim 2. depends from claim 1 and specifies that the “displav for framing the
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`imag to he captured by the image capture device is operab_l_e_ to dis;;_lag the imacrae at
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`the system whereby the irnage can be viewed and framed prior to capture in die
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`'
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`\
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`-14-
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`19
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`US ?,365,.s71
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` .” This claim term is simply stating that the display screen is functioning as a
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`viewfinder, .i.e. allowing the user to see the framed image before snapping a photo.
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`As explained above, because Reele also discloses a camera—phone that transmits
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`digital images through a cellular phone, there is motivation to add useful features
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`disclosed by Reels into the camera—phone of Pamlski. Reele explains how a digital
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`photo is captured and processed:
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`The digital image signal generated from the image processing circuit 48
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`is preferably nmtulraaeoury supplied to the display 20 and the memory unit
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`52. The operator views the captured image on the display 20 to
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`determine if the subject is prapergxframm’ and exposed. If the captured
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`image is not acceptable, the operator can erase the image from the
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`memory unit 26 by activating an erase button (not shown) on the
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`operator controi interface 22 to send an erase command signal’ to the
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`camera control unit 50.
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`@Reele 5:948 (italics added).
`This passage indicates that the display 20 in Reele is being used as the
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`viewfinder. There is noinventive distinction between the different ways in which
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`image data may be held transiently inside the device (eg. stored in a memory unit and
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`then erased, transfer between different memory units, etc.).
`
`Claim 3
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`Claim 3 depends from claim 1 and specifies the display is “ or jggjewing
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`alphanumeric messags in;:_)ut at the alphanumeric keys .” In FIG, 7 of Partilski, there
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`M15-
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`20
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`us 7,365,871
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`is a telephone keypad 58 on the cellular phone. @Parulski 4240. Someone of ordinary
`
`skill in the art would understand that when the user enters a phone number to dial
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`into the keypad 58, those numerals would appear on the display screen 561 For
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`example, if the user dials the number “312~555»~1234” to call a Etiend in Chicago,
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`those numerals would appear on the display screen 56.
`
`Claim 4
`
`Claim 4 depends from claim 1 and specifies that the system further comprises a
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`“removable memory module ... for storing captured image data sglals.” As explained
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`above, be(:a11Se'Reele also discloses a cameramphone that transmits digital images
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`through a Cellular phone, there is motivation to add usefui features disclosed by Reele
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`into the carneranpbone of Parulski. In the camera—phone of Reele, the “memory unit
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`52 preferably includes standard PCMIA interface slots into which removable non~
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`volatile flash EEPROM memory cards
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`can be inserted.” @1{eele 3:35—41.
`
`Claim 5
`
`Claim 5 depends from claim 1 and specifies that the display is “for viewing
`
`incorning imge data sigals.” As explained above, because Reele also discloses a
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`c2.me1‘a~ph0ne that transmits digital images through a cellular phone, there is V
`motivation to add usefill features disclosed by Reele into the camera—phone of
`
`Parulslri.
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`Reele discloses a video conferencing capability of the camerawphone system.
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`«W16¢R4
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`21
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`us 7,365,871
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`Reele explains that tile display 20 of the camera could be used to “display an image of
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`a calling party when the operator is using the cellular phone_28, and an image of the
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`operator taken by the camera 10 can be transmitted to the calling party, thereby
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`providing a video conferencing capability.” @Reele 6:5—1U. Thus, during a video
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`r:onfere11Ci11g session, the display 20 would be used “for viexfing incoming image data
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` ” (ie, a video of the caller’s face).
`
`Independent Claim 6
`
`a)
`
`(Claim 6 preamble) ‘C handheld cellular telephone havingan
`3!
`tntgated electronic camera
`
`‘.66
`b) (claim 6 preamble)
`sigals”
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`or both sending and receiving telephonic audio
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`C)
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`{claim 6 preamble) “ or can turing a visual imag”
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`These elements of independent claim 6 recite substantially the same limitations
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`as elements (a) through (C) of claim 1, and as such, we apply the same analysis for
`
`claim 1 set forth above. @)II’R. 9.
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`cl) (claim 6 preamble) '”c:or1ve.r’rin_ the V15
`data Sigal”
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`In FIG, 7 of Parulski, the handheld unit 48 has a “camera module 68, which
`
`includes the same basic components as illustrated in FIG. 4.” @Parulski 4:43-45. FIG.
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`4 of Parulski shows an “image signal processor 4-0 that processes an analog image
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`signal generated by the electronic imaging sensor 36 into digital image data ... [by] an
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`analog—to—dig.ital (AID) converter.” @3:31—37.
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`US 7,365,871
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`:3) {claim 6 preamble.) “transmitting djgtized image data sigal via a
`cellular telephone network”
`
`Parulski explains that the digitized picture data generated by the camera 68 is
`
`stored in memory unit 64. @Patulslr:i 4:53-55. Parulski further explains that the
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`“stored image is then converted to the appropriate fax standard
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`and is transmitted
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`to the receiving fax machine using the normal cellular telephone system that includes
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`an RF link from the cellular transceiver 66.” @4:62—66.
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`t) {claim 6) “the cellular telephone comprising a manuallv portable
`housing supporting the cellular telephone and the integated
`electronic camera ... being rnoyable in common. with the housing”
`
`in FIG. 7 of Parulski, the combined camera~phone unit 48 is portable.
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`@;Parulski 4:34~38. ivioireovcr, the claims listing in Parulski discloses a “portable
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`handheldtelephotle.” @6215. The cellular phone and the camera are integrated into
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`the same handheld housing, i.e. “being movable in common.”
`
`g)
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`including a transmitter,/receiver for
`6) “a cellular telephone
`ttansrnittingr and receifingr audio telep hone messages oyer a cellular
`telephone network”
`'
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`This claim term is essentially stating that the cellular phone is capable of
`
`making and receiving ordinary voice phone calls or voice messages. Parulski discloses
`
`a cellular phone and it is Well-understood that my telephone has the ability to males
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`and receive ordinary VOlC(E: calls /messages. But in case there is‘ any doubt, tlze face
`
`page of Paruiski specifically cites to Reele as relevant baclrgtound. FIG. 4 of Reele
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`shows a cellular. phone 28 having a transmitter/receiver circuit 54. @Reele 3:64:66.
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`US 7,365,871
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`“Cellular band voice transmission signals received by the transmitter/ receiver circuit
`
`54 are supplied to a Speaker 62
`
`a conventional manner.” @3:66 ~— 4:1. Regarding its
`
`capability to make phone calls, Reele states that a “microphone 64 is coupled to the
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`tra.nsrnitter/receiver circuit 54 in a conventional manner to enable cellular band
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`transmission of voice signals to remote locations.” @4:1—4.
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`h) (claim 6} “a kegpad for entering manually input alphanumeric signals
`to be transmitted over the cellular telephone network”
`
`In FIG. 7 of Patulski, there is a telephone keypad 58 on the cellular phone.
`
`@Parulski 4:40. Parulski explains that to “transmit the image, the user dials the
`
`telephone number of a desired fax machine that is to receive the image using the
`
`I keypad 58.” @4:56w-58. Someone of ord.inary skill in the art would understand that
`
`when the user dials the telephone number “312—555-1234” to reach a fax machine in
`
`C