UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________
`
`HTC CORPORATION AND HTC AMERICA, INC.,
`Petitioner
`v.
`
`E-WATCH, INC. AND E-WATCH CORPORATION,
`Patent Owner
`
`___________________________________
`
`Case: IPR2014-00987
`
`US Patent No. 7,365,871
`
`Title: Apparatus for Capturing, Converting and Transmitting a Visual Image
`Signal via a Digital Transmission System
`
`___________________________________
`
`DECLARATION OF DR. JOSE LUIS MELENDEZ IN SUPPORT OF
`PATENT OWNER RESPONSE RELATED TO INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,365,871
`___________________________________
`
`E-Watch, Inc.
`EXH. 2001
`Petitioner – HTC Corporation et. al
`
`Patent Owner – E-Watch, Inc.
`IPR2014-00987
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`  
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`TABLE OF CONTENTS
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`
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`INTRODUCTION  .....................................................................................................................................  1  
`I.  
`II.   SUMMARY  OF  OPINIONS  ......................................................................................................................  3  
`III.   QUALIFICATIONS  AND  EXPERIENCE  .....................................................................................................  4  
`A.   EDUCATION AND WORK EXPERIENCE  ..........................................................................  4  
`B.   COMPENSATION STATEMENT  .........................................................................................  7  
`C.  
`INFORMATION CONSIDERED IN FORMING OPINION  .................................................  8  
`IV.   STATEMENT  OF  LEGAL  AND  CLAIM  CONSTRUCTION  PRINCIPLES  .......................................................  8  
`A.   CLAIM CONSTRUCTION LAW  ..........................................................................................  8  
`B.   ANTICIPATION  .....................................................................................................................  9  
`C.   OBVIOUSNESS  .....................................................................................................................  9  
`D.   “FRAMED”  ..........................................................................................................................  10  
`V.   PERSON  OF  ORDINARY  SKILL  IN  THE  ART  ...........................................................................................  10  
`VI.   OVERVIEW  OF  THE  ‘871  PATENT  .......................................................................................................  13  
`VII.   PATENTABILITY  OF  CLAIMS  1-­‐8  and  12-­‐15  OF  THE  ‘871  PATENT  OVER  WILSKA  and  
`YAMAGISHI  ...................................................................................................................................  14  
`A.   “NON-AUDIO DIGITAL SIGNALS INCLUDING A SELECTED DIGITIZED FRAMED
`IMAGE” LIMITATION FROM CLAIMS 12-15  ........................................................................  14  
`B.   “CAPTURING A VISUAL IMAGE AND TRANSMITTING IT” AND “…SELECTIVELY
`8.  .......................................................................................................................................  16  
`
`TRANSMITTING …THE DIGITIZED FRAMED IMAGE” LIMITATION FROM CLAIMS 1-
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`i
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`I.
`
`INTRODUCTION
`1. My name is Dr. Jose Luis Melendez, I am an independent expert in
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`the fields of imaging and wireless technologies, and I reside in Lakeway, Texas, a
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`community in close proximity to the Texas capital city of Austin. I have been
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`asked to and have conducted a review of Great Britain 2289555A (“Wilska”) and
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`Japanese H06-176114 (“Yamagishi”) to determine whether or not these foreign
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`documents are invalidating prior art to Patent Owner’s United States Patent No.
`
`7,365,871 (“’871 patent”). Additionally, I have reviewed the IPR2014-00987
`
`petition submitted by HTC Corporation and HTC America, Inc. (“Petitioner(s)”)
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`along with its exhibits, including the report of Mr. Kenneth Parulski (“Parulski
`
`declaration”). I have also reviewed the IPR petition of Samsung Electronics Co.,
`
`Ltd. and Samsung Electronics America, Inc. (together “Samsung”) for the ‘168
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`Patent, which petition I understand may be joined with the subject IPR, though I
`
`found the Samsung petition to add no new substantive arguments over the subject
`
`Petition. In this report, I will address only certain aspects of the petition, patent
`
`claims, and Parulski declaration that I believe will be of particular benefit to the
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`Patent Trial and Appeal Board (PTAB) in evaluating the petition, in light of the
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`record and totality of stakeholder arguments, in coming to its final decisions
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`regarding the ‘871 patent.
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`1
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`2.
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`During the prosecution of the ‘871 patent and prior to its acceptance
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`and publication, an impressive nearly 200 references were cited as prior art as
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`being relevant to the allowed invention comprising a combination of both United
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`States and foreign patents, applications and other publications. Many of these
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`references related to systems that generally serve to combine imaging and wireless
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`technologies, an indication, as will be noted in further detail here, that the ‘871
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`patent claims and invention that was necessarily distinguished during prosecution
`
`from the generic concept of combining imaging and wireless, of which Wilska and
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`Yamagishi separately and together, only reveal disclosures and teachings that are
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`distinguishable from the ‘871 patent. As such, a person of ordinary skill in the art
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`(POSITA), even as defined by Mr. Parulski, would thus have not been motivated to
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`combine these references, nor have been enabled if having so done, to come to the
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`‘871 patent’s invention.
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`3. My report highlights certain aspects of how the ‘871 patent invention
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`differs from Wilska and Yamagishi in view of the arguments presented in
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`IPR2014-00987 petition, the Parulski declaration, and in light of the ‘871 patent
`
`itself. My report is intended as a supplement to arguments put forward in the e-
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`Watch Patent Owner Response to which it is appended.
`
`4.
`
`This declaration and rebuttal is based on the information presently
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`available to me. Should additional information become available, I reserve the
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`right to supplement my opinion based upon information that may subsequently
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`become available which may include a review of information that may be
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`produced, or from testimony or depositions that are subsequently taken.
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`II.
`
`SUMMARY OF OPINIONS
`5.
`Neither Wilska nor Yamagishi anticipate the ‘871 patent claims, and
`
`neither the Petitioner nor its expert, Mr. Parulski, dispute this claim, relying instead
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`on an attempted combination of Wilska and Yamagishi together with claims of
`
`obviousness.
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`6.
`
`Neither Wilska nor Yamagishi contain disclosures (enabling or
`
`otherwise) particularly with respect to cellular transmission of captured visual
`
`images over cellular networks.
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`7.
`
`The claims of the 871 Patent are directed to technical issues or needs
`
`that were not well recognized nor understood, and technical solutions that were not
`
`well developed to address the technical issues or needs, at the time of the priority
`
`date of the ‘871 Patent – January 12, 1998.
`
`8.
`
`It is my opinion that Claims 1-8 and 12-15 of the ‘871 Patent recite
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`distinct features that were not published before and not otherwise publicly known
`
`before the priority date of the ‘871 Patent and as such are not rendered obvious by
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`the prior art cited in HTC’s IPR2014-00987 petition.
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`3
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`9. Wilska is directed to a rudimentary camera envisioned to convert
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`visual images into telefax data, the telefax data then transmitted by conventional
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`fax (9:28-32 – 10:1-2) methods over conventional cellular interfaces (5:29-31) of
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`Wilska’s time (1995). The camera is envisioned as an alternative means for
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`inputting text (9:17-20) by a scanner (1:23-30 – 2:1-7).
`
`
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`10. Yamagishi is directed to an electronic camera with information
`
`processing and data management features. Yamagishi envisioned and details non-
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`cellular interfaces for data exchange having “connectors” (6:1-5).
`
`
`
`11.
`
`In my opinion, neither Wilska nor Yamagishi, nor a combination of
`
`the two, serve as invalidating prior art of at least Claims 1-8 and Claims 12-15 of
`
`the ‘871 patent. As detailed herein, neither reference discloses transmission of
`
`digital images as non-audio digital signals or transmission of captured visual
`
`images over cellular networks.
`
`III. QUALIFICATIONS AND EXPERIENCE
`A. EDUCATION AND WORK EXPERIENCE
`12.
`I also hold a Doctor of Philosophy in Electrical Engineering from
`
`Stanford University (awarded January 6, 1994) with a Grade Point Average of
`
`4.0/4.0. I have a Bachelor of Science in Electrical Engineering from the
`
`Massachusetts Institute of Technology (awarded June 4, 1990) and graduated with
`
`a Grade Point Average of 5.0/5.0. I also obtained a Master of Science in Electrical
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`
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`4
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`Engineering and Computer Science from
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`the Massachusetts Institute of
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`Technology (awarded February 20, 1991) with a Grade Point Average of 4.8/5.0.
`
`13. My doctoral thesis involved the definition, solution and validation of a
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`stiffly coupled differential equation model for the formation of high performance
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`imaging devices. In performance of my doctoral thesis I developed novel
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`algorithms for the solution of the complex equations and implemented those
`
`algorithms in computer code. I verified the models and algorithms through
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`experimentation including constructing and characterizing the sensing portions of
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`the electronic imaging devices.
`
`14.
`
`I am co-inventor of patented technology related to the formation and
`
`maintenance of high data rate wireless data links. Devices exhibiting 100 Mb/sec
`
`data rates utilizing the high data rate optical wireless technology were
`
`demonstrated publicly in 2001, and included real time, live transmission of a
`
`feature length film.
`
`15. While at Texas Instruments, I managed the wireless infrastructure
`
`business that designed, tested, and marketed semiconductor components for use
`
`within the radio frequency signal chain of high performance radios used in
`
`infrastructure applications such as cellular base stations. The business group I
`
`managed designed, developed and sold some of the very first radio components
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`tested in emerging (at the time) generations of cellular systems first capable of
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`
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`5
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`transmitting high speed, high quality images as data by way of digital
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`transmissions (Multimedia Messaging Service – MMS).
`
`16.
`
`In 2002, I founded Commoca, Inc. (“Commoca”). Commoca
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`developed hardware, embedded software (or “firmware”), and network services for
`
`the deployment of converged voice and data services over wired and wireless
`
`communications networks. Commoca devices utilized IEEE 802.11 (“WiFi” or
`
`“Wi-Fi”) technology to connect touch screen telephones to access points and were
`
`believed to have been amongst the first of such devices to do so. Converged
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`communications devices provided by Commoca were field tested by BellSouth
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`Corporation at consumer locations in Florida and Georgia in 2006.
`
`17.
`
`In 2008, while working as a research consultant for the University of
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`Texas Southwestern Medical in Dallas (UTSW), I co-invented a novel multi-
`
`wavelength imaging system (US 8,838,211) and worked to develop and produce a
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`product through a university spinoff company which I led. In early 2013,
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`following successful clinical studies, the resulting system was cleared by the US
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`Food & Drug Administration for use in the United States. The system captured
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`and analyzed high resolution, uncompressed images and subsequently created
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`pulsatility maps representative of the underlying physiology for use in evaluating
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`deep tissue wounds. Resulting images were compressed and transmitted over a
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`variety of communications networks.
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`
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`6
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`18. As highlighted above, my professional experience and knowledge
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`areas include imaging and wireless communications devices and systems as are
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`relevant to the subject matter of this report. Also as detailed in my CV in Exhibit
`
`A attached, I am an inventor of subject matter claimed in 28 U.S. Patents.
`
`Additional information concerning my background, qualifications, publications,
`
`conferences, honors, and awards are described in my CV.
`
`B. COMPENSATION STATEMENT
`I am paid for my work concerning the subject inter partes review
`19.
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`(IPR) at a rate of $475 per hour. My compensation is not dependent upon the
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`outcome of the subject IPR. I may also be reimbursed for travel and other
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`expenses that I incur in the course of my work on the subject IPR. I have no
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`personal interest in the outcome of the subject IPR. I have been deposed
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`previously as an Expert involving infringement and validity of wireless patents.
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`Prior to this writing, I have never testified at a hearing or trial.
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`20. The opinions I express in this report are based on my own personal
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`knowledge and professional judgment. If called as a witness during the
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`proceedings in the subject IPR, I am prepared to testify competently about my
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`opinions.
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`C.
`INFORMATION CONSIDERED IN FORMING OPINION
`21. The documents upon which I rely for the opinions expressed in this
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`declaration are documents identified in this declaration, including the Petition for
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`inter partes review of U.S. Pat. No. 7,365,871 B2 (including attachments), the
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`Decision of Institution for the subject IPR, the ‘871 patent, the ‘871 patent
`
`prosecution history (or at least parts thereof), Wilska, Yamagishi, and Patent
`
`Owner e-Watch Inc.’s Response. I have also relied on my own experiences and
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`expert knowledge in the relevant technologies and systems that were in use (or
`
`were not in use) at the time of the invention.
`
`IV. STATEMENT OF LEGAL AND CLAIM CONSTRUCTION
`PRINCIPLES
`A. CLAIM CONSTRUCTION LAW
`I understand that a claim in an inter partes review proceeding is
`22.
`
`
`
`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
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`the context of the entire patent disclosure.
`
`
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`23.
`
`I understand that the inventor may rebut that presumption by
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`providing a definition of the term in the specification with reasonable clarity,
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`deliberateness, and precision; and that a claim term is to be interpreted using its
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`
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`ordinary and customary meaning to a person of ordinary skill in the art in the
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`absence of a specialized definition.
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`
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`24. As such, I further understand that the customary meaning applies
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`unless the specification reveals a special definition given to the claim term by the
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`patentee, in which case the inventor’s lexicography governs.
`
`B. ANTICIPATION
`25.
`I understand that for a patent claim to be valid, it must be novel under
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`
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`35 U.S.C. §102. I also understand that the version of 35 U.S.C. §102 in effect
`
`prior to the American Invents Act is applicable for this IPR. I understand that if
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`each and every limitation of a claim is disclosed in a single prior art reference then
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`the claimed invention is anticipated, though I found no such claims to be made by
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`the Petitioner. I further understand that it is the Petitioner’s burden to show that
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`each and every element is described or embodied in the single prior art reference in
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`order to establish anticipation. I also understand that a prior art reference must be
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`enabling in order to anticipate a claim.
`
`C. OBVIOUSNESS
`26.
`I understand that for a patent claim to be valid it must be non-obvious
`
`
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`under 35 U.S.C. §103. I further understand that where any single prior art
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`reference discloses less than each and every limitation of a patent claim it is being
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`used against, that patent claim is only invalid under 35 U.S.C. §103 if the
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`differences between the claimed subject matter and that single prior art reference
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`are such that the claimed subject matter as a whole would have been obvious at the
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`time that the invention was made to a person having ordinary skill in the relevant
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`art. Typically obviousness is shown using a combination of two or more prior art
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`references that disclose all the limitations of the claimed invention
`
`D.
`27.
`
`“FRAMED”
`I understand that in its Decision to institute inter partes review
`
`
`
`concerning Case IPR2014-00987, the Patent Trial and Appeal Board wrote, “On
`
`this record, and for purposes of this Decision, we determine that the broadest
`
`reasonable interpretation of ‘an image framed by the camera’ is ‘an image having
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`boundaries established by the camera,’ and the broadest reasonable interpretation
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`of ‘framing [a/the] image to be captured’ (claims 2, 9, 12), ‘visually framing a
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`visual image to be captured’ (claim 6), and ‘framing the visual image’ (claim 7) is
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`‘establishing the boundaries of the image to be captured.’” My opinions as set
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`forth in this report are consistent with the proposed construction.
`
`V.
`
`PERSON OF ORDINARY SKILL IN THE ART
`28.
`It is my understanding that the claims and specification of a patent
`
`must be read and construed as a person of ordinary skill in the art (POSITA), at the
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`time of the priority date of the claims, would understand them.
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`29.
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`I further understand that the following factors may be considered in
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`determining the level of ordinary skill in the art: (a) the types of problems
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`encountered by those working in the field and prior art solutions thereto; (b) the
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`sophistication of the technology in question, and the rapidity with which
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`innovations occur in the field; (c) the educational level of active workers in the
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`field; and (d) the educational level of the inventor.
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`30. The relevant technologies to the ‘871 Patent are those used in
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`integrating digital cameras together with mobile phones capable of both audio and
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`image communications on cellular networks. In my opinion a person having
`
`ordinary skill in the art (POSITA) would have had at least a bachelor’s degree
`
`and/or relevant professional experience in electrical engineering, computer science,
`
`or a related field, and at least one year of experience related to the design of both
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`cellular communications devices and digital imaging products.
`
`31.
`
`In contrast to the declaration of Mr. Parulski (¶28), I strongly disagree
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`that a person having no experience in the design of cellular communications
`
`devices could be a POSITA. Cellular communication systems have improved
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`significantly, and rapidly, over the past decades and are highly complex, such that
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`a person not skilled in the art area would be likely to overstate the capabilities of
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`cellular systems and/or oversimplify them, and as such would not be able to
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`effectively develop a product with capabilities as disclosed and claimed in the ‘871
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`Patent.
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`32.
`
`Indeed Mr. Parulski’s own background establishes quite clearly his
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`extensive expertise in digital photography (¶29-56). Yet, Mr. Parulski’s mentions
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`of communications of images by telephone lines or cellular appear to characterize
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`the communications portions as mere add-ons, even appearing to suggest (¶31) that
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`transmitting digital images over “conventional communications channels” would
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`have been trivial in 1977, yet offering no explanation as to why smartphones
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`capable of capturing, transmitting and receiving digital images over cellular
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`networks did not exist even over two decades later.
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`33. Without expert knowledge as
`
`to
`
`the
`
`limitations of cellular
`
`transmission in the 1990s, one could imagine, incorrectly, that cellular systems at
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`the time of the ‘871 invention were capable of transmitting or receiving anything,
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`which is simply not true.
`
`34.
`
`In my opinion, in the relevant time period, there were very few
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`individuals with the necessary skills in both digital camera and cellular
`
`communications or the requisite experience in developing such integrated devices.
`
`This being the case, it would be critical for a patent reference such as, for example,
`
`Wilska and Yamagishi to provide an enabling disclosure of how to achieve an
`
`integrated digital cellular camera telephone, which they do not.
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`VI. OVERVIEW OF THE ‘871 PATENT
`35. An important technological concept to understand in the context of the
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`‘871 Patent invention is that of an integrated device for framing and preserving
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`visual images existing in the real world by capturing, digitizing and storing in
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`memory for subsequent selection from memory, and ultimate transmission to a
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`remote receiving station. The ‘871 patent teaches an integrated system (i.e., a
`
`cellular telephone with an integrated camera) because it teaches a single device
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`having unified control of all of the image signal chain (from capture to
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`transmission) of visual images as implemented through use of a cellular telephone
`
`and camera.
`
`
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`36. Important comprehended aspects of the image signal chain include:
`
`1. An image is framed and captured.
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`2. The captured image is digitized and stored in memory (where it
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`may be recalled for viewing or selected for transmission).
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`3. A captured image selected for transmission is transferred to
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`another device (e.g. another device embodying the ‘871 patent).
`
`37. Figure 4 of the ‘871 Patent is particularly instructive as it
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`demonstrates a variety of embodiments of the ‘871 Patent in addition to the G-III
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`protocol that specifically include several compression and transmission protocols
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`that are capable of being “reversed” at the receiver in order to extract the captured
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`framed image (52 in Figure 4 of ‘871) at the recipient device (unlike for a fax, as
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`will be discussed later herein).
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`VII. PATENTABILITY OF CLAIMS 1-8 AND 12-15 OF THE ‘871
`PATENT OVER WILSKA AND YAMAGISHI
`A.
`
`“NON-AUDIO DIGITAL SIGNALS INCLUDING A SELECTED
`DIGITIZED FRAMED IMAGE” LIMITATION FROM CLAIMS 12-15
`38. Wilska fails to disclose the Claim 12 (as well as Claims 13-15 which
`
`depend on Claim 12) requirement to transmit "non-audio digital signals including a
`
`selected digitized framed image." In contrast to the claimed invention, Wilska
`
`expressly discloses transmission of telefax image information (9:28-32 – 10:1-7) in
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`an environment where the cellular technology is described as "conventional" (5:28-
`
`31). At the time of Wilska (published November 1995), conventional transmission
`
`of a fax image was by audio means. This has likely been experienced by anyone
`
`who has answered a telephone call from a fax machine, as doing so results in
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`hearing the audio tones characteristic of fax transmissions. Transmission of fax by
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`non-audio means as packets was not devised until after publication of Wilska.
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`39. While Mr. Parulski relies on Wilska and Yamagishi in his expert
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`declaration, he makes several references in the Technology Background section of
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`his report (¶57-69) to transmission of images in the prior art by telephonic means,
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`including by standard telephone line (¶69). As would be appreciated by a
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`POSITA, as well as laypersons who recall using dial up modems to transmit data
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`over telephone lines, such modems function by transmitting audio sounds, and as
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`such, just like in Wilska and Yamagushi, fail to meet or disclose the non-audio
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`limitation of the ‘871 Claims 12-15.
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`40. Wilska makes a mention of transmission of "messages" by SMS and
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`also of electronic mail (6:6-12). However, these electronic mail messages are
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`disclosed within the Wilska specification as consisting of text. For example, "The
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`user writes the message" (13:20-30) and "converted ASCII texts/graphics" (12:23-
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`26). In fact, "standard" cellular technologies at the time of Wilska did not support
`
`Multimedia Messaging Service (MMS), which was added to cellular standards well
`
`after the time of Wilska. The MMS standards were created specifically to provide a
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`mechanism to transmit and receive multimedia messages (video and still images)
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`as non-audio images through the cellular network, since SMS was not capable of
`
`doing so. One of skill in the art would know that Wilska's description of
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`transmission of electronic mail, SMS or "standard" cellular technologies failed to
`
`disclose transmission of visual images. Making the assumption that such
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`descriptions include image transmission would be inconsistent with the absence of
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`MMS at the time of Wilska. Even if one were to conceive of a method to transmit
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`images by way of SMS utilizing "standard" cellular technologies of the time of
`
`Wilska, no such methods were taught or obvious from Wilska. Further, such
`
`methods would be impractical given the SMS standard only allows for 160
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`characters of an electronic message (i.e. text) to be transmitted by or received by a
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`cellular phone.
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`41. Both Petitioner and Petitioner’s declarant appear to overlook the fact
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`that neither fax signals nor telephone modems at the time of the invention were
`
`capable of transmitting or receiving “non-audio digital signals including a selected
`
`digitized framed image”.
`
`42. Neither Wilska nor Yamagishi, nor a combination of the two, teaches
`
`this capability.
`
`B.
`
`43.
`
` “CAPTURING A VISUAL IMAGE AND TRANSMITTING IT” AND
`“…SELECTIVELY TRANSMITTING …THE DIGITIZED FRAMED
`IMAGE” LIMITATION FROM CLAIMS 1-8.
`In reference to the '871 Patent Independent Claim 1 (as well as Claims
`
`2-5 which depend on Claim 1), significant limitations are noticeably absent from
`
`the cited art, Wilska and Yamagishi. The preamble specifically requires that the
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`apparatus of Claim 1 be capable of transmitting a captured visual image,
`
`exemplified by the phrase “for capturing a visual image and transmitting it.”
`
`Similarly, Claim 1 further requires “a memory…for selectively transmitting over
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`the wireless telephone network the digitized framed image,” eliminating from the
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`purview of Claim 1 the transmission of fax data merely derived from the image.
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`44. To understand this point, it is useful to understand the distinction
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`made in Claim 1 between an “image data signal” and “the image framed by the
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`camera”, whereby the former is a representation of the latter. Specifically, the
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`processor of Claim 1 performs the function of “generating an image data signal
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`representing the image framed by the camera.” As such, an “image data signal”
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`and “image framed by the camera” are not equivalents. Further, the “digitized
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`framed image” mentioned in the memory claim element fulfills the aspirational
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`language from the preamble describing an apparatus for transmitting a captured
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`visual image. It is this digitized framed image that is supplied to the processor for
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`transmission to a compatible remote receiving station.
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`45.
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`In contrast to the claimed invention, Wilska and Yamagishi fail to
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`disclose transmitting the captured/digitized framed image to a compatible remote
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`receiving station of a wireless telephone network. No disclosure in Yamagishi has
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`been identified as purporting to meet this limitation. Further, Wilska discloses
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`only the transmission of telefax data derived from a captured image (i.e. a fax). As
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`is well known in the art, a fax transmission at the time of the invention, required a
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`one-way, permanent transformation of a captured image into fax data represented
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`as a series of tones (signals) that could be transmitted over a telephone line and
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`interpreted by a recipient fax machine into a black and white derivative of the
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`captured image, but could never be used to recover the captured image itself
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`(because the captured image is not a part of the fax transmission). This distinction
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`is also consistent with the fact that the “standard” cellular technologies referenced
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`by Wilska were not capable of transmitting a captured framed image as disclosed
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`by the '871.
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`46.
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`In its Petition (15:12-15), the Petitioner erroneously equivocates the
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`images captured by the camera to be the images transmitted in Wilska by fax,
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`where in actuality the images transferred by fax are at best a derivative of the
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`captured framed image that do not in fact contain the captured image, nor can the
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`captured image be extracted from the data contained therein. Additionally, as
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`noted in the prior section, Wilska’s brief mentions of “electronic mail” are clearly
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`for text, and there is no mention, nor reason to believe that Wilska envisioned
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`“electronic mail” to mean the modern emailing of image attachments as such
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`would not have been possible with the conventional cellular standards referred to
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`and relied upon by Wilska.
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`47. Petitioner appears to gloss over the point that the ‘871 Patent provides
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`for the transmission of the captured framed image, while Wilska and/or Yamagishi
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`do not, by writing (17:10-16) “Wilska’s images (e.g. stored in bitmap format) can
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`be transmitted over a telephone network to a selected party”, instead of what really
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`is happening – that captured images are converted to a fax from which the captured
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`image can no longer be obtained.
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`48.
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`In reference to '871 Independent Claim 6 (as well as Claims 7-8 which
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`depend upon Claim 6), similar limitations are noticeably absent from the cited art,
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`Wilska and Yamagishi. Specifically, Claim 6 requires “a memory…for selectively
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`transmitting over the cellular telephone network the digitized framed image”.
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`Additionally, Claim 6 requires to “subsequently transmit the digitized framed
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`image over the cellular telephone network”. As such, and as the case for Claim 1
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`previously discussed above, the transmission of fax data merely derived from the
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`image is eliminated from the purview of Claim 6.
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`49. Petitioners expert declarant seemingly overlooks
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`these critical
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`limitations that are not present in Wilska or Yamagishi, by providing no additional
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`commentary beyond that contained in the Petition.
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`50. Neither Wilska nor Yamagishi, nor a combination of the two, teaches
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`this capability.
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`51. Even if all elements of the claims could be found by modifying
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`Wilska to include portions of Yamagishi, the references counsel against such
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`combination. Specifically, Yamagishi utilizes a control means 60 to control both
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`the electronic viewfinder and image recording processes, both of which are labor-
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`intensive processes. For example, Yamagishi describes the steps for using the
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`viewfinder, which include: transfer[ing] an image formed on the image pickup
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`element 12 to the information processing apparatus 300 via the A/D converter 16,
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`memory control circuit 20, image memory 24, memory control circuit 20 again,
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`interface 52, and connector 54. Yamagishi goes on to state that “The control
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`means 60 writes acquired image data in an internal video memory of the display
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`means 64 via the connector 74 and interface72, and then reads the image data to
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`display it as a viewfinder display screen on the display means 64 (S24).”” (8:18-
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`23). The complexity of these processes cast doubt on the physical ability of
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`combining them with Wilska’s processes for recording and transmitting images
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`using hardware available at the time. Further, Yamagishi specifically counsels
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`against such a combination by splitting up telephone and camera functionality.
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`52. Specifically, Yamagishi describes an embodiment wherein a portable
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`wireless telephone is used as the information processing apparatus 300. (18:23, Fig
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`14). However, the portable telephone and imaging functions of Yamagishi’s
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`embodiment are described separately, and no interaction between such functions is
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`described by Yamagishi other than the fact that a single housing (information