UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________
`
`
`
`IRON DOME LLC
`Petitioner
`v.
`
`E-WATCH, INC.
`Patent Owner
`
`___________________________________
`
`Case: IPR2014-00439
`
`Patent No. 7,365,871
`
`Title: Apparatus For Capturing, Converting And Transmitting A Visual
`Image Signal Via A Digital Transmission System
`
`___________________________________
`
`DECLARATION OF GAVIN CLARKSON IN SUPPORT OF PATENT
`OWNER RESPONSE RELATED TO INTER PARTES REVIEW OF U.S.
`PATENT NO. 7,365,871
`___________________________________
`
`
`
`E-Watch, Inc.
`Exhibit 2040
`Petitioner – Iron Dome LLC
`Patent Owner – E-Watch, Inc.
`IPR2014-00439
`
`
`___________________________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________
`
`
`
`IRON DOME LLC
`Petitioner
`v.
`
`E-WATCH, INC.
`Patent Owner
`
`___________________________________
`
`Case: IPR2014-00439
`
`Patent No. 7,365,871
`
`Title: Apparatus For Capturing, Converting And Transmitting A Visual
`Image Signal Via A Digital Transmission System
`
`___________________________________
`
`DECLARATION OF GAVIN CLARKSON IN SUPPORT OF PATENT
`OWNER RESPONSE RELATED TO INTER PARTES REVIEW OF U.S.
`PATENT NO. 7,365,871
`___________________________________
`
`
`
`E-Watch, Inc.
`Exhibit 2040
`Petitioner – Iron Dome LLC
`Patent Owner – E-Watch, Inc.
`IPR2014-00439
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II.
`
`SUMMARY OF OPINIONS ........................................................................... 3
`
`III. QUALIFICATIONS AND EXPERIENCE ..................................................... 7
`
`A.
`
`EDUCATION AND WORK EXPERIENCE ....................................... 7
`
`B.
`
`COMPENSATION STATEMENT ....................................................... 9
`
`C. DOCUMENTS AND OTHER MATERIAL RELIED UPON ............. 9
`
`IV. STATEMENT OF LEGAL AND CLAIM CONSTRUCTION
`PRINCIPLES ................................................................................................. 10
`
`A.
`
`CLAIM CONSTRUCTION LAW ...................................................... 10
`
`B. ANTICIPATION ................................................................................. 11
`
`C. OBVIOUSNESS ................................................................................. 12
`
`D.
`
`“SELECTIVELY DISPLAYING” ...................................................... 12
`
`E.
`
`F.
`
`“SELECTIVELY TRANSMITTING” ................................................ 15
`
`“SELECTED DIGITIZED FRAMED IMAGE” ................................ 16
`
`V.
`
`LEVEL OF ORDINARY SKILL IN THE ART ........................................... 17
`
`VI. TECHNOLOGY BACKGROUND OF THE CLAIMED SUBJECT
`MATTER OF THE ‘871 PATENT ............................................................... 18
`
`VII. OVERVIEW OF THE ‘871 PATENT .......................................................... 19
`
`VIII. PATENTABILITY OF CLAIMS 1-15 OF THE ‘871 PATENT
`OVER PARULSKI ‘526 PATENT AND REELE ‘037 PATENT ............... 20
`
`
`
`i
`
`
`
`
`
`A.
`
`B.
`
`C.
`
`D.
`
`“USER INTERFACE ENABLING” LIMITATION FROM CLAIMS 1
`AND 6 AND “SELECTIVELY DISPLAYING/TRANSMITTING”
`LIMITATION FROM CLAIMS 1, 6, 9, AND 12. ........................................ 20
`
`TRANSMISSION/RECEPTION”
`SIGNAL
`“NON-AUDIO
`LIMITATION FROM CLAIMS 5, 9, 12, AND 14 AND“DIGITAL
`SIGNALING LIMITATION” FROM CLAIMS 9 AND 12 AND
`“DIGITIZED AUDIO SIGNAL” LIMITATION FROM CLAIMS 1, 9,
`AND 12 ................................................................................................. 24
`
`“PLURAL MEMORY MODULE” LIMITATION FROM
`CLAIMS 4, 10, AND 13 ..................................................................... 26
`
`“PRIOR TO CAPTURE” LIMITATION FROM CLAIMS 2, 9,
`AND 12 ............................................................................................... 28
`
`
`
`
`
`
`
`
`
`
`
`ii
`
`
`
`I.
`
`INTRODUCTION
`
`1. My name is Dr. Gavin Clarkson, and I am an associate professor at
`
`New Mexico State University in Las Cruces, New Mexico. I have been asked to
`
`and have conducted a review of United States Patent No. 6,122,526 (“Parulski ‘526
`
`patent”) and United States Patent No. 3,893,037 (“Reele ‘037 patent”) to determine
`
`whether or not they are invalidating prior art to Patent Owner’s United States
`
`Patent No. 7,365,871 (“’871 patent”). This report summarizes those findings.
`
`2.
`
`This report process has necessarily been multi-faceted given the
`
`acceptance by the United States Patent and Trademark Office (“PTO”) of the
`
`December 27, 2004 Affidavit of David A. Monroe Under 37 CFR 1.131 (“original
`
`Rule 131 affidavit”), which indicates that the invention as claimed in the ‘871
`
`patent (“the ‘871 patent invention”) was first conceived in 1993. Although the
`
`original Rule 131 affidavit swears behind certain patent references by several
`
`years, I have reviewed extensive evidence that the inventor was sufficiently
`
`diligent in his attempts at completing actual reduction to practice of the ‘871 patent
`
`invention during this entire time period. It is my further understanding that the
`
`Declaration of David A. Monroe Pursuant to 28 U.S.C. §1746 and 37 C.F.R.
`
`§1.131 (“new Rule 131 affidavit”) is being filed contemporaneously with this
`
`declaration and serves to temporally disqualify both the Parulski ‘526 patent and
`
`1
`
`
`
`
`
`Reele ‘037 patent as prior art. This new Rule 131 affidavit more comprehensively
`
`details the conception and diligence efforts of the ‘871 patent invention.
`
`3.
`
`Furthermore, since the original Rule 131 affidavit was accepted by the
`
`PTO, the inventor was not required to specifically articulate the distinctions
`
`between the ‘871 patent invention from the disclosures of the Reele ‘037 patent
`
`and Parulski ‘526 patent. Had the inventor been given the opportunity to
`
`specifically articulate the distinctions between the ‘871 patent invention from the
`
`disclosures of the Reele ‘037 patent and Parulski ‘526 patent, in my opinion, he
`
`would have been able to successfully recite the distinctions between the ‘871
`
`patent invention and these patents because neither the Reele ‘037 patent nor the
`
`Parulski ‘526 patent present sufficient teachings for a skilled person to be
`
`motivated to combine these references for arriving at the ‘871 patent invention or
`
`for enabling a skilled person to combine these references for arriving at the ‘871
`
`patent invention.
`
`4. My report details how the ‘871 patent invention differs from the
`
`Parulski ‘526 patent and the Reele ‘037 patent in the absence of the new Rule 131
`
`affidavit and in view of the arguments presented in the above captioned inter
`
`partes review (“IPR”) petition. Nevertheless, it is my view that conception and
`
`diligence have been established by sufficient evidence such that the substantive
`
`
`
`2
`
`
`
`
`
`distinctions between the ‘871 patent invention and the ‘526 patent and ‘037 patent
`
`are irrelevant because those patents do not qualify as prior art.
`
`II.
`
`SUMMARY OF OPINIONS
`
`
`
`5.
`
`Although neither the Reele ‘037 patent nor the Parulski ‘526 patent
`
`contain an enabling disclosure, and thus their validity would likely be challenged
`
`should there be an attempt to enforce either one of these patents by their respective
`
`patent owner, I am not opining as to their validity. I am of the opinion, however,
`
`that the lack of an enabling disclosure in the Parulski ‘526 patent and/or the Reele
`
`‘037 patent makes it impossible for them to be combined to render the ‘871 patent
`
`invention obvious. Furthermore, because of the lack of an enabling disclosure in
`
`the Parulski ‘526 patent and the Reele ‘037 patent, it is my opinion that a skilled
`
`person would not attempt to combine them as it would require undue
`
`experimentation to arrive at the ‘871 patent invention.
`
`
`
`6.
`
`In 1946, Dick Tracy, as depicted in the Dick Tracy comic strip, began
`
`wearing a 2-Way Wrist Radio. In 1964 this technology was upgraded to a 2-Way
`
`Wrist TV. Readers of the comic strip could see the device in operation, but the
`
`comic strip did not contain an enabling disclosure. Thus, Chester Gould, the
`
`American cartoonist who created the Dick Tracy comic strip, shows a 2-Way Wrist
`
`Radio and a 2-Way Wrist TV but does not provide disclosure suitable to enable a
`
`
`
`3
`
`
`
`
`
`functionally operable 2-Way Wrist Radio or a functionally operable 2-Way Wrist
`
`TV.
`
`
`
`7.
`
`In many ways, the Parulski ‘526 patent and the Reele ‘037 patent are
`
`equivalent to the teachings of Chester Gould’s 2-Way Wrist Radio and 2-Way
`
`Wrist TV in terms of their level of disclosure, but with substantially less
`
`functionality.
`
`
`
`8.
`
`The Parulski ‘526 patent is directed to a phone with the dream of an
`
`incorporated camera. The Parulski ‘526 patent shows a phone with limited image
`
`capture and transmission functionalities but does not provide a disclosure (enabling
`
`or otherwise) of a cellular phone with an integrated camera.
`
`
`
`9.
`
`On the other end of the non-integrated spectrum, the Reele ‘037 patent
`
`is directed to a camera with the dream of an incorporated phone. The Reele ‘037
`
`patent shows a camera with limited cellular telephone functionality, but does not
`
`provide a disclosure (enabling or otherwise) of a cellular phone with an integrated
`
`camera.
`
`
`
`10. The Reele ‘037 patent shows but does not provide an enabling
`
`disclosure for a camera with a physically-connected phone. Importantly, the Reele
`
`‘037 patent does not teach a cellular phone with an integrated camera, as evidenced
`
`by the fact that the phone and the camera have separate user interfaces (@ Reele
`
`‘037 patent 4:26-32). Although Reele does suggest combining a camera and a
`
`
`
`4
`
`
`
`
`
`phone together in a single housing (@ Reele ‘037 patent 4:47-65), this is a
`
`combined apparatus, not a cell phone with integrated camera as recited in the ‘871
`
`patent.
`
`11. Furthermore, at best, Reele provides a non-enabling disclosure for
`
`such a single-housing combination and, more accurately, an inoperable disclosure
`
`for such single-housing combination. For example, there is no detail in regard to
`
`the single central control unit 70 (i.e., topically mentioned only at the Reele ‘037
`
`patent 4:57-59 and not shown in any drawing). The operability of the single-
`
`housing combination discussed in reference to FIG. 5 at Reele ‘037 patent 4:47-65
`
`is flawed. Specifically, there is no apparent operable manner disclosed or
`
`suggested in which an image in the memory unit 52 can be provided to the cellular
`
`transmitter/receiver 54 and no apparent operable manner disclosed or suggested for
`
`generating a transmission signal comprising digital content (i.e., the image) from
`
`the cellular transmitter/receiver 54 as the digital-to-analog converter 58 is
`
`incapable of providing for this functionality.
`
`12. Ultimately, the problem that the Reele ‘037 patent seeks to solve is
`
`allowing an image to be previewed on a convenient and inexpensive imaging
`
`medium (e.g., a display screen) and, after approval of the image, allowing it to be
`
`captured on a more expensive imaging medium (i.e., silver-halide photographic
`
`film). This teaches away from the ‘871 patent invention in that this requires
`
`
`
`5
`
`
`
`
`
`verifying framing of an image only after it is captured whereas one problem that
`
`the ‘871 patent is directed to solving is framing of an image prior to capture. In
`
`this respect, Reele teaches away from the disclosure of the ‘871 patent, which goes
`
`against there being a motivation for a skilled person to seek to combine the Reele
`
`‘037 patent with the Parulski ‘526 patent.
`
`13.
`
`In addition to not teaching the recited handheld cellular telephone
`
`with an integrated electronic camera (i.e., an integrated image processing system),
`
`neither the Reele ‘037 patent nor the Parulski ‘526 patent teach various other
`
`recited limitations of the ‘871 patent claims. Examples of these other recited
`
`limitations of the ‘871 patent claims include, but are not limited to, selectively
`
`displaying and transmitting a digitized framed image from memory, a user
`
`interface for enabling such selectively displaying and transmitting, a display for
`
`allowing an image to be viewed and framed prior to being captured, wirelessly
`
`transmitting and receiving a digitized framed image that has been selectively
`
`recalled from memory, a wireless telephone having a wireless transmitter/receiver
`
`for transmitting digitals signals and receiving digital signals sent to the wireless
`
`telephone, or a wireless telephone operable to send and receive digitized audio
`
`signals.
`
`
`
`14.
`
`In my opinion, neither the Parulski ‘526 patent nor the Reele ‘037
`
`patent, nor a combination of the two, serve as invalidating prior art.
`
`
`
`6
`
`
`
`
`
`III. QUALIFICATIONS AND EXPERIENCE
`
`A. EDUCATION AND WORK EXPERIENCE
`
`15.
`
`I earned both a bachelor's degree and an MBA from Rice University.
`
`I also earned a doctorate from the Harvard Business School in Technology and
`
`Operations Management. I am also a cum laude graduate of the Harvard Law
`
`School, where I was the managing editor of the Harvard Journal of Law and
`
`Technology and president of the Native American Law Students Association.
`
`16.
`
`In July 1991, I joined the faculty of Rice University, serving as a
`
`Lecturer in Computer Science until 1998. From 1998 until 2003, I was the KPMG
`
`Fellow at the Harvard Business School. During that time I was also the John M.
`
`Olin Research Fellow in Law, Economics, and Business, the Reginald F. Lewis
`
`Fellow for Law Teaching, and held a university-wide fellowship, the 1665 Harvard
`
`University Native American Program Fellowship. From 2003 until 2008, I was on
`
`the faculty of the School of Information at the University of Michigan where I
`
`conducted extensive research into patent thickets and patent pools. From 2008
`
`until 2012, I was on the faculty at the University of Houston Law Center where I
`
`taught Intellectual Property Strategy, Corporate Law, and Federal Indian Law. I
`
`have been on the faculty at New Mexico State University since 2012, where I also
`
`teach Intellectual Property Strategy and am a faculty advisor to the Arrowhead
`
`Center, a local and regional technology incubation center.
`
`
`
`7
`
`
`
`
`
`17. One of my principal research interests is intellectual property strategy,
`
`particularly the identification and analysis of patent thickets—dense webs of
`
`overlapping intellectual property rights that an organization must “hack” its way
`
`through in order to commercialize new technology. I received several grants from
`
`the National Science Foundation to develop fundamental insights into the
`
`interrelationships between multiple technologies, particularly in the case of patent
`
`pools (an organizational structure where multiple firms aggregate patent rights into
`
`a package for licensing), which are a potential solution to the problem of patent
`
`thickets.
`
`18.
`
`I have almost two decades of management experience, primarily in
`
`the technology industry, and have successfully launched several information
`
`technology companies including a software company, an online database firm, a
`
`special function web development company, and an internet-based education
`
`development enterprise.
`
`19. Of particular relevance to this IPR, in 1992, while on the computer
`
`science faculty at Rice University, I successfully configured a laptop computer to
`
`connect via its internal modem to an analog cell phone. This implementation was
`
`housed in a briefcase containing the laptop computer, the analog cell phone, and an
`
`interface between the modem of the laptop and the analog cellular phone. Using
`
`an early model digital camera, I could take a picture, download it via serial cable to
`
`
`
`8
`
`
`
`
`
`the laptop computer, connect the laptop computer via its internal modem through
`
`the analog cellular phone to a fax machine, and transmit the picture thereto.
`
`20.
`
`In my opinion, the existence of my cellular briefcase system in 1992
`
`does not in any way make the ‘871 patent obvious. One such reason for this is that
`
`none of the functionality of the analog cellular telephone and camera of my cellular
`
`briefcase system was integrated in that there were separate user interfaces for the
`
`phone, the computer, and the camera. Another such reason is that the method of
`
`communication between the camera and the phone of my cellular briefcase system
`
`was radically different than that of the cellular telephone with integrated camera of
`
`the ‘871 patent.
`
`B. COMPENSATION STATEMENT
`
`21.
`
`I am being compensated at a flat fee of $10,000 for preparing this
`
`declaration and at a billing rate of $450 per hour for any future services beyond
`
`this declaration that I provide. My compensation is not contingent upon the
`
`outcome of this inter partes review or any other proceeding, including the pending
`
`lawsuits involving the ‘871 patent, or any issues involved in or related to this inter
`
`partes review.
`
`C. DOCUMENTS AND OTHER MATERIAL RELIED UPON
`
`22. The documents upon which I rely for the opinions expressed in this
`
`declaration are documents identified in this declaration, including the ‘871 patent,
`
`
`
`9
`
`
`
`
`
`the ‘871 patent prosecution history (or at least parts thereof), the ‘526 Parulski
`
`patent, the ‘037 Reele patent, the Merriam-Webster online dictionary (specifically
`
`http://www.merriam-webster.com/dictionary/integrated), the original Rule 131
`
`affidavit of December 27, 2004, Patent Owner e-Watch Inc.’s Response Under 37
`
`C.F.R. §42.120, the new Rule 131 affidavit, and all corroborating declarations.
`
`The new Rule 131 affidavit and the corroborating declarations thereto are being
`
`contemporaneously filed with this declaration.
`
`23. A copy of my resume is provided as Attachment “A” at the end of this
`
`declaration.
`
`IV. STATEMENT OF LEGAL AND CLAIM CONSTRUCTION
`PRINCIPLES
`
`A. CLAIM CONSTRUCTION LAW
`
`
`
`24. A claim in an inter partes review proceeding is interpreted according
`
`to its broadest reasonable construction in light of the specification. 37 C.F.R.
`
`§42.100(b). Claim terms are to be given their ordinary and customary meaning as
`
`would be understood by one of ordinary skill in the art in the context of the entire
`
`patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005)
`
`(en banc); Research in Motion v. Wi-Lan, Case IPR2013-00126, Paper 10 at 7
`
`(P.T.A.B. June 20, 2013).
`
`
`
`25. The inventor may rebut that presumption by providing a definition of
`
`the term in the specification with reasonable clarity, deliberateness, and precision.
`
`
`
`10
`
`
`
`
`
`In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). A claim term is interpreted
`
`using its ordinary and customary meaning to a person of ordinary skill in the art in
`
`the absence of a specialized definition. See 77 Fed. Reg. 48699-48700 (2012),
`
`Response to Comment 35 (citing In re Am. Acad. Of Sci. Tech Ctr., 367 F.3d 1359,
`
`1364 (Fed. Cir. 2004).
`
`
`
`26. Accordingly, the customary meaning applies unless the specification
`
`reveals a special definition given to the claim term by the patentee, in which case
`
`the inventor’s lexicography governs. See Phillips, 415 F.3d at 1316 (“[T]he
`
`specification may reveal a special definition given to a claim term by the patentee
`
`that differs from the meaning that it would otherwise possess. In such cases, the
`
`inventor’s lexicography governs.”).
`
`B. ANTICIPATION
`
`
`
`27.
`
`It is my understanding that for a patent claim to be valid, it must be
`
`novel under 35 U.S.C. §102. The pre-AIA (America Invents Act) version of 35
`
`U.S.C. §102 is applicable in this IPR. Only if each and every limitation of a claim
`
`is disclosed in a single prior art reference is the claimed invention anticipated. It is
`
`my understanding that this requires a showing that each and every element is
`
`described or embodied in the single prior art reference. I also understand that a
`
`prior art reference must be enabling in order to anticipate a claim.
`
`
`
`11
`
`
`
`
`
`C. OBVIOUSNESS
`
`
`
`28.
`
`It is my understanding that for a patent claim to be valid, it must be
`
`non-obvious under 35 U.S.C. §103. I further understand that where any single
`
`prior art reference discloses less than each and every limitation of a patent claim it
`
`is being applied against, that patent claim is only invalid under 35 U.S.C. §103 if
`
`the differences between the claimed subject matter and that single prior art
`
`reference are such that the claimed subject matter as a whole would have been
`
`obvious at the time the invention was made to a person having ordinary skill in the
`
`relevant art. Obviousness is typically shown using a combination of two or more
`
`prior art references that disclose all limitations of the claimed invention.
`
`D.
`
`“SELECTIVELY DISPLAYING”
`
`
`
`29. The phrase “selectively displaying” is recited in all of the independent
`
`claims of the ‘871 patent. The specification of the ‘871 patent provides the
`
`following: “[t]he memory may selectively capture images, as indicated by the
`
`operator interface/capture interface 52, or may be programmed to selectively
`
`capture periodic images or all images. In the embodiment shown in FIG. 2, an
`
`optional viewer device 48 is provided. This permits the operator to recall and
`
`view all or selective images before transmission, as indicated by the operator
`
`interface/recall interface 54. This permits the operator to review all images
`
`
`
`12
`
`
`
`
`
`retained in the memory 46 and transmit selective images, as desired.” @’871
`
`patent 6:34-43 (emphasis added).
`
`
`
`30. Moreover, the prosecution history of the ‘871 patent provides further
`
`support for Patent Owner’s interpretation of “selectively displaying.” In an office
`
`action issued on March 8, 2007 (“the Office Action”), certain independent claims
`
`of record were rejected as being obvious over a combination of two prior art
`
`references – JP 06-268582 to Kawazu (“the Kawazu reference”) in view of US
`
`5,191,601 to Ida (the “Ida reference”).
`
`
`
`31.
`
`In response to the Office Action, the applicant filed an office action
`
`response on September 7, 2007 (“OA Response”) that included remarks clarifying
`
`the claimed invention with respect to the Ida reference. It was submitted that the
`
`present invention provides “the ability for the user to selectively transmit and
`
`display images from memory” (@ OA response, 60:11-12) and that “Ida teaches
`
`transmitting a stored image from memory 24, but it is clearly shown in the same
`
`Fig. 4 and Fig. 5 to clearly lack the ability to display stored images on the device
`
`display of the apparatus which collects the image.” (@ OA Response, 60:12-16).
`
`It was further submitted with respect to Ida that “there is no teaching that the
`
`‘prescribed picture’ stored in memory is selectively displayed by the local user so
`
`that he can determine whether to transmit it to the remote station” (@ OA
`
`Response, 61:9-11) and that “…the Ida reference, properly understood, does not
`
`
`
`13
`
`
`
`
`
`disclose selectively displaying or transmitting a framed image that has been stored
`
`in memory…” (@ OA Response, 61:18-20).
`
`
`
`32.
`
`In response to the filing of the OA Response, the Examiner requested
`
`and conducted an interview with the attorney of record prosecuting the application
`
`that matured into the ‘871 patent. At least one topic of discussion in this interview
`
`was authorization to amend pending independent claims 43 and 51 (i.e., issued
`
`claims 1 and 6) by an Examiner’s Amendment (“the Examiner’s Amendment”).
`
`The Examiner’s Amendment, which was authorized by the attorney of record,
`
`included amendment of pending independent claims 43 and 51 to include language
`
`providing additional specificity with respect to the abovementioned functionality
`
`of the present invention in regard to “the ability for the user to selectively transmit
`
`and display images from memory.” (@ OA Response, 60:11-12). Specifically, the
`
`Examiner’s Amendment added the following underlined language to independent
`
`claims 43 and 51, respectively.
`
`…a memory associated with the processor for receiving and
`storing the digitized framed image, accessible for selectively
`displaying
`in
`the display window and accessible for
`selectively transmitting over the wireless telephone network
`the digitized framed image…
`
`(@ Examiner’s Amendment, 3:1-3).
`
`…a memory associated with the processor for receiving and
`storing the digitized framed image, accessible for selectively
`displaying
`in
`the display window and accessible for
`selectively transmitting over the cellular telephone network
`
`
`
`14
`
`
`
`
`
`the digitized framed image…
`
`(@ Examiner’s Amendment, 4:11-13).
`
`33. This claim
`
`language was added
`
`to
`
`reflect
`
`the patentably
`
`distinguishing functionality of providing the ability for the user to selectively
`
`transmit and display images from memory. As indicated, the prior art of record
`
`did not disclose or suggest the functionality of this amended claim language. @
`
`Office Action, 5:5-6:11. With respect to the Petition, the prior art of record at the
`
`time the Office Action was issued also included the Parulski ‘526 patent and the
`
`Reele ‘037 patent.
`
`34.
`
`In view of the disclosure in the specification and the prosecution
`
`history of the ‘871 Patent, “selectively displaying” refers to displaying a digitized
`
`framed image that has been selected from among a plurality of digitized framed
`
`images that are within memory.
`
`E.
`
`“SELECTIVELY TRANSMITTING”
`
`35. The phrase “selectively transmitting” is recited in all of the
`
`independent claims of the ‘871 Patent.
`
`36. The specification of the ‘871 Patent provides the following:
`
`Two generic configurations are shown and described, the first,
`where each image is transmitted as it is captured, and the
`second, which permits capture, storage, and selective recall
`of captured images for transmission.
`
`
`
`15
`
`
`
`
`
`@’871 Patent 5:6-10 (emphasis added)
`
`The memory may selectively capture images, as indicated by
`the operator interface/capture interface 52, or may be
`programmed to selectively capture periodic images or all
`images. In the embodiment shown in FIG. 2, an optional
`viewer device 48 is provided. This permits the operator to
`recall and view all or selective images before transmission,
`as indicated by the operator interface/recall interface 54. This
`permits the operator to review all images retained in the
`memory 46 and transmit selective images, as desired.
`
`@’871 Patent 6:34-43 (emphasis added)
`
`37.
`
`In view of this disclosure in the specification of the ‘871 Patent,
`
`“selectively transmitting” refers to transmitting a digitized framed image that has
`
`been selected from among a plurality of digitized framed images that are within
`
`memory.
`
`F.
`
`“SELECTED DIGITIZED FRAMED IMAGE”
`
`38. The phrase “selected digitized framed
`
`image”
`
`is recited
`
`in
`
`independent claim 12 of the ‘871 Patent.
`
`
`
`39. As discussed above in reference to “selectively transmitting,” a user is
`
`able to “…recall and view all or selective images before transmission,” which
`
`thereby “…permits the operator to review all images retained in the memory
`
`46 and transmit selective images, as desired.” @’871 Patent 6:34-43 (emphasis
`
`added).
`
`
`
`16
`
`
`
`
`
`
`
`40.
`
`In view of this disclosure in the specification of the ‘871 Patent,
`
`“selected digitized framed image” refers to a digitized framed image that has been
`
`selected from among a plurality of digitized framed images that are within the
`
`memory.
`
`V.
`
`LEVEL OF ORDINARY SKILL IN THE ART
`
`41.
`
`I understand that the claims and specification of a patent must be read
`
`and construed as one of ordinary skill in the art, at the time of the priority date of
`
`the claims, would understand them.
`
`42. The following factors may be considered in determining the level of
`
`ordinary skill in the art: (a) the types of problems encountered by those working in
`
`the field and prior art solutions thereto; (b) the sophistication of the technology in
`
`question, and the rapidity with which innovations occur in the field; (c) the
`
`educational level of active workers in the field; and (d) the educational level of the
`
`inventor.
`
`43. The relevant technologies to the ‘871 Patent are those used in
`
`integrating cellular phones and digital cameras. It is my opinion that a person
`
`having ordinary skill in the art would have at least a bachelor’s degree and/or
`
`relevant professional experience in electrical engineering, computer science, or a
`
`related field, and one year of experience in designing cellular-enabled digital
`
`imaging apparatuses or equivalent experience.
`
`
`
`17
`
`
`
`
`
`44.
`
`In my opinion, in the relevant time period, there were very few
`
`individuals with the necessary skills in both digital camera and cellular phone
`
`design or the requisite experience in developing integrated devices. This being the
`
`case, it would be imperative for a patent reference such as, for example, the Reele
`
`‘037 patent and Parulski ‘526 patent to provide an enabling disclosure of how to
`
`achieve a cellular telephone with an integrated camera.
`
`VI. TECHNOLOGY BACKGROUND OF THE CLAIMED SUBJECT
`MATTER OF THE ‘871 PATENT
`
`45.
`
`In my opinion, an important technological concept to understand in
`
`the context of the ‘871 patent invention is the notion of an integrated device.
`
`Merriam-Webster’s online dictionary defines “integrated” as “having different
`
`parts working together as a unit” and additionally, “marked by the unified control
`
`of all aspects of production from raw materials through distribution of finished
`
`products.” See http://www.merriam-webster.com/dictionary/integrated.
`
`46.
`
`In this instance, the claimed invention’s raw material is visual
`
`information existing in the real world that needs to be captured, digitized and
`
`stored in memory, later selected from memory, and ultimately transmitted to a
`
`remote receiving station. The ‘871 patent teaches an integrated system (i.e., a
`
`cellular telephone with an integrated camera) because it teaches unified control of
`
`all aspects of production [and] distribution of transmittable digital images as
`
`implemented through use of a cellular telephone and camera.
`
`
`
`18
`
`
`
`
`
`47. The aspects of production are as follows:
`
`
`
`1. An image is captured which constitutes the collection of “raw
`
`material.”
`
`2. The captured image is digitized and stored in memory, along with
`
`metadata, if any, which constitutes an intermediate production
`
`step.
`
`3. A previously stored image is selected from memory from among a
`
`plurality of available, previously-captured
`
`images, which
`
`constitutes another intermediate production step.
`
`4. The selected image (and metadata, if any) is transmitted/distributed
`
`to one of a plurality of devices, including, but not limited to,
`
`another device embodying the ‘871 patent, which constitutes the
`
`“distribution of finished products.”
`
`VII. OVERVIEW OF THE ‘871 PATENT
`
`48. Under the ‘871 patent, all aspects of this production process are
`
`conducted under the unified control of a common user interface. In my opinion,
`
`however, neither the Reele ‘037 patent nor the Parulski ‘526 patent teaches the
`
`integration of constituent components of a cellular telephone and constituent
`
`components of a digital camera, and they certainly do not teach the integration of
`
`
`
`19
`
`
`
`
`
`these components in regard to all aspects of the above-mentioned production
`
`process being conducted under the unified control of a common user interface.
`
`49.
`
`I have noted seven particular elements/limitations of the claimed
`
`invention where the IPR petition mischaracterizes the claimed invention,
`
`misconstrues the alleged prior art, or both. In addition, some elements of the
`
`alleged prior art are inoperable, teach away from the ‘871 patent, provide no
`
`motivation to combine, and/or as mentioned previously, do not provide an enabling
`
`disclosure.
`
`VIII. PATENTABILITY OF CLAIMS 1-15 OF THE ‘871 PATENT OVER
`PARULSKI ‘526 PATENT AND REELE ‘037 PATENT
`
`A.
`
`“USER INTERFACE ENABLING” LIMITATION FROM CLAIMS 1
`AND 6 AND “SELECTIVELY DISPLAYING/TRANSMITTING”
`LIMITATION FROM CLAIMS 1, 6, 9, AND 12.
`
`50. Neither the Parulski ‘526 patent nor Reele ‘037 patent disclose a user
`
`interface that provides for unified control of all components.
`
`51.
`
`In the seemingly operable portion of the disclosure of the Reele ‘037
`
`patent in reference to Figs. 3 and 4, the camera functions are handled solely via a
`
`user interface of the camera (e.g., @ Reele patent 4:66-5:24 and 5:38-43), and the
`
`phone functions are handled solely via a user interface of the phone (e.g., @ Reele
`
`patent 5:25-38). These two separate user interfaces have no interaction. As
`
`disclosed by the Reele ‘037 patent, the connection must be established by the
`
`phone user interface before the camera can be tasked via its user interface with
`
`
`
`20
`
`
`
`
`
`transmitting the image to the phone, which is then transmitted to a remote location.
`
`There is no common user interface in this seemingly operable portion
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