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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________
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`HTC CORPORATION AND HTC AMERICA, INC.
`Petitioner
`v.
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`E-WATCH, INC.
`Patent Owner
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`___________________________________
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`Case: IPR2014-00987
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`Patent No. 7,365,871
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`Title: Apparatus For Capturing, Converting And Transmitting A Visual
`Image Signal Via A Digital Transmission System
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`___________________________________
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`PATENT OWNER E-WATCH INC’S RESPONSE
`UNDER 37 C.F.R. §42.120
`___________________________________
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`E-Watch, Inc.
`Petitioner – HTC Corporation et. al
`Patent Owner – E-Watch, Inc.
`IPR2014-00987
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`IPR2014-00987
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________
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`HTC CORPORATION AND HTC AMERICA, INC.
`Petitioner
`v.
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`E-WATCH, INC.
`Patent Owner
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`___________________________________
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`Case: IPR2014-00987
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`Patent No. 7,365,871
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`Title: Apparatus For Capturing, Converting And Transmitting A Visual
`Image Signal Via A Digital Transmission System
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`___________________________________
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`PATENT OWNER E-WATCH INC’S RESPONSE
`UNDER 37 C.F.R. §42.120
`___________________________________
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`E-Watch, Inc.
`Petitioner – HTC Corporation et. al
`Patent Owner – E-Watch, Inc.
`IPR2014-00987
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`Patent Owner Response
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`IPR2014-00987
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`TABLE OF CONTENTS
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` I. STATEMENT OF MATERIAL FACTS IN DISPUTE..................................1
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`II.
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`INTRODUCTION.............................................................................................1
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`A.
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`B.
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`Statement Of Relief Requested.............................................................1
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`Summary Of Patent Owner’s Argument ..............................................2
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`III. CONTEXT OF INVENTIVE DISCLOSURE OF REFERENCES RELIED
`UPON BY PETITIONER.................................................................................4
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`A.
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`B.
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`United Kingdom Application No. GB 2,289,555 (“Wilska”) ..............4
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`Japanese Publication No. H06-176114 (“Yamagishi”)........................5
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`IV.
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`PATENT OWNER’S RESPONSE TO PETITIONER’S CLAIM ANALYSIS
`AND OBVIOUSNESS ASSERTIONS................................................................. 5
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`A.
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`References Relied Upon Do Not Disclose Or Suggest All Limitations
`Of The Challenged Claims......................................................................... 5
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`1.
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`2.
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`Non-Audio Digital Image Signal Transmission Limitation As
`Recited In Claims 1, 6, and 12.....................................................6
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`Visual Image Transmission Limitation As Recited In Claims 1 and
`6.................................................................................................10
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`B.
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`Considerations Weighing Against Motivation To Combine
`References................................................................................................ 15
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`V.
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`1.
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`2.
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`3.
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`4.
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`5.
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`Essential Principle Of Operation Of Wilska ................................. 16
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`Obviousness Analysis For Combining “Special Purpose” Device
`with Wilska Consists Of “Conclusory Statements”..................... 27
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`Obviousness Analysis For Display Viewfinder Limitation in
`Claims 2 and 12 Consists Of “Conclusory Statements”..............34
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`Obviousness Analysis For Digitized Framed Image Displaying
`Limitation in Claim 12 Consists Of “Conclusory Statements”....39
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`Proposed Combination Would Require Change In Principle Of
`Operation of Wilska ...................................................................43
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`CONCLUSION ...............................................................................................50
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`EXHIBIT LIST
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`Currently Filed – Patent Owner
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`[EXH. 2001] Expert Witness Declaration of Dr. Jose Luis Melendez
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` (“Melendez Declaration”)
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`[EXH. 2002] U.S. Patent 6,427,078 (“Wilska’s ‘078 Patent”)
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`[EXH. 2003] Office Action Reply In Inter Partes Reexamination Of U.S.
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` Patent 6,427,078 of Wilska et al. Under Control No.
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` 90/012,637 (“Wilska ‘637 IPX Office Action Reply”)
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`[EXH. 2004] U.S. Patent 5,550,646 (“Hassan”)
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`Previously Filed – Petitioner
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` [Ex. 1001] U.S. Patent No. 7,365,871 (“the ’871 Patent”)
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` [Ex. 1002] United Kingdom (U.K.) Patent Application GB 2,289,555 A to
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` Wilska (“Wilska”)
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` [Ex. 1003] Certified Translation of the Japanese Patent Application
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` Publication No. H06-176114 to Yamagishi (“Yamagishi”),
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` Certification of English Translation and the Original Japanese
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` Document
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`[Ex. 1004] U.S. Patent No. 5,550,754 B2 to McNelley et al.
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` (“McNelley ”)
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`[Ex. 1005] European Patent Application Publication No. 0594992 A1 to
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` Yamagishi (“Yamagishi-992”)
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`[Ex. 1006] Declaration of Kenneth Parulski including Attachments A-D
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` (“Parulski Declaration”)
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`[Ex. 1007] Select Portions of the 871 Prosecution File History(“‘871
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` Prosecution File History”)
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`I.
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`STATEMENT OF MATERIAL FACTS IN DISPUTE
`Petitioner did not submit a statement of material facts in its Petition for Inter
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`Partes review (“the Petition”). Accordingly, no response to a statement of material
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`facts is due pursuant to 37 C.F.R. §42.23(a), and no facts are admitted.
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`II.
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`INTRODUCTION
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`Patent Owner E-Watch, Inc. (hereinafter “Patent Owner”) respectfully
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`submits this Patent Owner Response under 35 U.S.C. §§311–319 and 37 C.F.R.
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`§42.120. It is being timely filed by February 20, 2015.
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`“In an inter partes review instituted under this chapter, the petitioner shall
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`have the burden of proving a proposition of unpatentability by a preponderance of
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`the evidence.” 35 U.S.C. §316(e). Petitioner’s proposition of unpatentability fails
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`to meet that burden with respect to any of the claims of U.S. Patent No. 7,365,871
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`(“the ’871 Patent”).
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`A.
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`Statement of Relief Requested
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`Pursuant to 35 U.S.C. §316, Patent Owner respectfully requests that the
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`Patent Trial And Appeal Board (i.e., “the Board”) find that originally issued Claims
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`1-15 of the ‘871 Patent (“the ‘871 Patent Claims”) are valid and, specifically, that
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`Claims 1-8 and 12-15 of the ‘871 Patent are patentable in view of the proposed
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`ground of unpatentability under consideration.
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`B.
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`Summary of Patent Owner’s Argument
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`No proposed ground of unpatentability is premised on anticipation under 35
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`U.S.C. §102. Instead, unpatentability for all of the challenged ‘871 Patent Claims is
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`premised on obviousness based upon a single combination of references:
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`(a) Claims 1-8 and 12-15 alleged as being unpatentable under
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`U.S.C. §103(a) as being obvious over U.K. Patent Application
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`GB 2,289,555 (“Wilska”) [Ex. 1002] in view of Japanese
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`Patent Application Publication No. H06-176114 (“Yamagishi”)
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`[Ex. 1003].
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`This proposed ground of unpatentability fails for several reasons. One such
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`reason is that the proposed combination of references fails to disclose or suggest
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`each and every limitation as recited by the ‘871 Patent Claims. In particular, as set
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`forth herein, Wilska (i.e., the primary reference relied upon in the Petition) lacks
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`one or more limitations present in each independent claim of the ‘871 Patent.
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`Yamagishi (i.e., the secondary reference relied upon in the Petition) does not
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`disclose or suggest these one or more limitations lacking in Wilska.
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`Another such reason is that, with respect to combining Wilska and Yamagishi
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`in regard to one or more of the claims in the ‘871 Patent, Petitioner does not
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`articulate a sufficient reason or rational underpinning for the proposed combination
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`necessary to support a legal conclusion of obviousness under current legal
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`precedent and United States Patent and Trademark Office (“USPTO”) guidelines.
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`Instead, Petitioner’s proposed obviousness ground is based solely on “mere
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`conclusory statements,” and Petitioner fails to present any cogent reasoning as to
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`why a person of ordinary skill in the art would have or even could have combined
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`the relied upon references to arrive at the invention as recited in such one or more
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`claims of the ‘871 Patent. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
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`(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). These types of
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`allegations fail to provide the specificity required by 37 C.F.R. §42.104(b)(4,5).
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`Consequently, the Petition’s grounds for unpatentability that rely upon the proposed
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`combination of Wilska and Yamagishi are legally deficient. See 37 C.F.R.
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`§42.104(b)(4,5); KSR Int’l Co., 550 U.S. at 418 (quoting In re Kahn, 441 F.3d at
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`988).
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`Still another such reason is that, with respect to combining Wilska and
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`Yamagishi in regard to one or more the claims in the ‘871 Patent, Petitioner does
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`not address the manner in which Yamagishi teaches away from the key principle of
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`operation of Wilska. In order to combine Wilska and Yamagishi, Wilska would
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`need to be modified in a manner that would require substantial reconstruction and
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`would adversely impact Wilska’s principle of operation. Thus, such a combination
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`would not have been obvious to a person of ordinary skill in the art.
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`III. CONTEXT OF INVENTIVE DISCLOSURE OF REFERENCES
`RELIED UPON BY PETITIONER
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`A. Wilska
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`Wilska’s invention is directed to a device for personal communication, data
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`collection and data processing. The device is a small-sized, portable and hand-held
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`work station. @Wilska, abstract:1-2. The device consists of a small-sized housing
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`comprising a data processing unit which contains a data processor with peripheral
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`circuits and memory units, a display, a user interface, a number of peripheral device
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`interfaces, a power source, preferably a battery, and application software. @Wilska,
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`1:5-9. As specifically disclosed by Wilska, the general purpose of this invention is
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`to provide a new device for personal communication, data collection and processing
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`which improves communication especially between a user and the device and the
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`special purpose of the invention is to provide a device for personal communication,
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`data collection and processing which makes it possible to collect data efficiently
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`and to communicate with the environment. @Wilska, 2:1-6.
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`Yamagishi’s invention is directed to an image processing system for
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`photographing an image. @Yamagishi, 3:7. In one embodiment, the image
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`processing system comprises an information processing apparatus including
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`operating means for entering information, processing means for processing and
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`outputting information entered at the operating means, an interface for connecting
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`an external apparatus, and an image pickup apparatus detachable from the interface
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`and further including image pickup means for picking up an object image and
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`storage means for storing programs one of which is run by the processing means to
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`operate (i.e., control) the image pickup means. @Yamagishi, 3:43-46. A display
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`means 64 displays a screen showing a state of the image pickup means and a screen
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`showing a viewfinder operable in a through mode and/or monitor mode.
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`@Yamagishi, 3:33-37. A portable wireless telephone can be used as the
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`information processing apparatus. @Yamagishi, 18:23.
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`IV. PATENT OWNER’S RESPONSE TO PETITIONER’S CLAIM
`ANALYSIS AND OBVIOUSNESS ASSERTIONS
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`A.
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`References Relied Upon Do Not Teach Or Suggest All Limitations Of The
`Challenged Claims
`“In an inter partes review instituted under this chapter, the petitioner shall
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`have the burden of proving a proposition of unpatentability by a preponderance of
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`the evidence.” 35 U.S.C. §316(e). Petitioner has not met the burden of proving a
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`proposition of unpatentability by a preponderance of the evidence with respect to at
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`least the following limitations of the ‘871 Patent Claims.
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`1. Non-Audio Digital Image Signal Transmission Limitation As Recited In Claim 12
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`Independent Claim 12 of the ‘871 Patent recites:
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`…the wireless telephone being selectively operable to transmit
`and receive non-audio digital signals, the non-audio digital
`signals including a selected digitized framed image… @’871
`Patent, 17:5-8.
`This limitation is referred to herein as “the Non-Audio Digital Image Signal
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`Transmission Limitation.” Petitioner relies upon disclosure from Wilska for
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`allegedly teaching the Non-Audio Digital Image Signal Transmission Limitation.
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`Specifically, in attempting to show that Wilska discloses the Non-Audio Digital
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`Image Transmission Limitation, Petitioner makes the following assertions with
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`respect to Wilska in regard to Claim 12.
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`Wilska describes transmitting and receiving non-audio digital
`signals, such as images in a bitmap format, SMS texts and
`emails (Wilska, 5:22 to 6:2; 9:28 to 10:7; 12:23-26; 13:2-18;
`13:25-27). Wilska’s device is selectively operable to receive
`and/or send non-audio data such as fax images when the user
`selects to run the telefax application to send a fax to another
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`party or receive a fax (Id., 9:28 to 10:7; 12:29 to 13:7). The sent
`fax message includes the selected digitized framed image which
`is produced by using the device’s camera to take a picture of a
`document or a scene, and converting the image into bitmap
`format suitable for fax transmission (Id., 9:5-8; 9:23-26).
`@Petition, 30:14-31:2.
`Petitioner has misconstrued the relied upon disclosure of Wilska. This
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`disclosure does not teach or suggest the Non-Audio Digital Image Signal
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`Transmission Limitation.
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`As recited in Claim 12, the Non-Audio Digital Image Transmission
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`Limitation requires a wireless telephone being selectively operable to transmit and
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`receive non-audio digital signals and wherein the non-audio digital signals include
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`a selected digitized framed image. In contrast, Wilska teaches something quite
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`different. Specifically, Wilska’s disclosure in regard to image transmission
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`focuses on image transmission via telefax through use of conventional cellular
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`technology. For example, Wilska discloses:
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`Both data and speech can be transmitted via integrated cellular
`mobile phone unit 17. The data transmission properties are
`based on an analogue modem and the GSM data interface, for
`instance, the technology of both of them being conventional.
`@Wilska 5:28-31.
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`The user selects the telefax application from the application
`programs and defines a receiver for the message. Next the
`picture of the notes is transmitted as a bitmap and a telefax
`message from the mobile organiser's memory unit via cellular
`mobile phone unit 17 comprising a telefax modem. Incoming
`telefax messages are received in a corresponding manner via
`cellular mobile phone 17 and stored in the mobile organiser's
`memory as bitmaps. @Wilska, 9:30-10:4.
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` Wilska’s disclosed image transmission and reception via telefax using an
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`analogue modem and conventional cellular technology would have limited such
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`transmission and reception to being exclusively by way of audio signal. This is
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`because use of these signal communication implementations (i.e., telefax, analogue
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`modem, and conventional cellular technology) are inherently limited to using
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`audio signals as the means of transmitting both voice and data signals, as
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`recognized by anyone who has answered a call from a fax machine and heard
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`audio tones. Wilska does not disclose or suggest any means by which a non-audio
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`fax can be sent. As such, the disclosures of Wilska do not disclose or suggest a
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`wireless telephone being selectively operable to transmit and receive non-audio
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`digital signals and the non-audio digital signals including a selected digitized
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`framed image, as required by the Non-Audio Digital Image Signal Transmission
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`Wilska makes mention of using short message service (SMS) and electronic
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`mail. @Wilska, 13:4-7; 13:20-30. However, as Wilska notes, these transmissions
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`are specific to transmission of messages that consisted of text. Wilska describes
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`scanning in handwritten text using the camera unit, using character recognition
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`software of the camera unit for creating a text message corresponding to the
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`scanned in handwritten text, and sending such text message via SMS or electronic
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`mail. @Wilska, 9:17-20; 12:15-20; 12:23-2613:20-26. Wilska makes no mention
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`of using SMS or electronic mail for sending images and Wilska’s disclosures
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`present no means for doing so. For example, Wilska’s disclosed conventional
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`cellular technologies did not support or comprehend what is now known as multi-
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`media messaging service, which was specifically developed for enabling wireless
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`transmission and reception of video and still images. It was well known at the
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`time of Wilska’s disclosure that SMS was specifically configured for enabling
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`transmission and reception of messages consisting of text. No method of using
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`conventional cellular technologies for enabling transmission and reception of
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`images using SMS is disclosed or suggested in the disclosures of Wilska and are
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`not obvious therefrom. See also @Melendez Declaration, ¶38-42 [EXH. 2001].
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`Accordingly, Petitioner has failed to provide a prior art combination that
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`renders Claim 12 of the ‘871 Patent obvious and, thus, any claims dependent
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`thereon, unpatentable under 35 U.S.C. §103(a) and, moreover, has failed to meet
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`its burden of proving a proposition of unpatentability of Claims 12-15 of the ‘871
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`Patent by a preponderance of the evidence, as required by 35 U.S.C. § 316(e).
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`2. Visual Image Transmission Limitation As Recited In Claims 1 and 6
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`The preamble of independent Claim 1 of the ‘871 Patent recites:
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`A handheld self-contained cellular telephone and integrated
`image processing system for both sending and receiving
`telephonic audio signals and for capturing a visual image and
`transmitting it to a compatible remote receiving station of a
`wireless telephone network, the system comprising: @’871
`Patent, 14:49-53.
`In general, a preamble limits the invention if it recites essential structure or
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`steps, or if it is “necessary to give life, meaning, and vitality” to the claim.
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`Catalina Marketing Int’l., Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed.
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`Cir. 2002); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed.
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`Cir. 1999). Here, the preamble of independent Claim 1 expressly states that it is a
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`visual image that the recited system captures and transmits to a compatible remote
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`receiving station of a wireless telephone.
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`This is reinforced by the body of Claim 1 of the ‘871 Patent, which recites
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`“a display for displaying an image framed by the camera” (e.g., displaying the
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`visual image as framed by the camera), “a processor in the housing for generating
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`an image data signal representing the image framed by the camera” (e.g.,
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`generating a visual image data signal representing the visual image framed by the
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`camera), “a memory associated with the processor for receiving and storing the
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`digitized framed image” (e.g., receiving and storing in digital form the visual
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`image data signal,) “a user interface for enabling a user to select the image data
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`signal for viewing and transmission” (e.g., enabling a user to select the visual
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`image data signal), as well as the Specification of the ‘871 Patent, which includes
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`numerous instances of disclosure describing that a disclosed system or device
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`provides for visual image capture via a camera thereof and transmission via a
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`wireless communication device thereof (e.g., @’871 Patent, Abstract; 1:46-48;
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`1:65-67; 4:4-6; 4:58-5:2; 5:29-32). Poly-America, L.P. v. GSE Lining Tech., Inc.,
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`383 F.3d 1303, 1309-10 (Fed. Cir. 2004) (“blown-film” in the preamble was
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`limiting where the specification was “replete with references to the invention as a
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`“blown-film liner” and described it as a fundamental characteristic of the
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`invention).
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`Moreover, the recited limitation of “the compatible remote receiving station”
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`(@’871 Patent, 15:11-12) directly finds antecedent basis and specificity from the
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`preamble (e.g., “a compatible remote receiving station of a wireless telephone
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`network” as recited in the preamble). The Petitioners have treated the preamble of
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`claim 1 as limiting in its alleged ground of unpatentability. @Petition, 14:20-
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`15:15). For at least these reasons, the preamble of independent Claim 1 is limiting,
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`and irrespective of whether the preamble is limiting, the claim limitations of Claim
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`1 independently make it clear that a visual image must be captured and transmitted
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`and not merely a transformation of the image data signal as discussed infra at 13.
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`The aforementioned recitations in the preamble and body of Claim 1 of the
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`‘871 Patent are jointly referred to herein as “the Visual Image Transmitting
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`Limitation.” Petitioner relies upon disclosure from Wilska and Yamagishi for
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`allegedly teaching the Visual Image Transmitting Limitation. Although Petitioner
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`makes various assertions in attempting to show that the combination of Wilska and
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`Yamagishi discloses the Visual Image Transmitting Limitation (e.g., @Petition,
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`15:9-15; 16:8-16; 16:18-17:3; 17:5-9; 18:13-18:4; 19:6-9), Petitioner has
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`misconstrued at least the disclosure of Wilska as it relates to the Visual Image
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`Transmitting Limitation.
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`The Visual Image Transmitting Limitation requires capturing a visual image
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`and transmitting such captured visual image (i.e., “capturing a visual image and
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`transmitting it”). @’871 Patent, 14:51-52. In this respect, the Visual Image
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`Transmitting Limitation requires that the recited system of Claim 1 be configured
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`for capturing and transmitting a visual image as opposed to a binary derivative of
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`the captured visual image. For example, the image framed by the camera is the
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`visual content captured by the camera and the image data signal is a digital data
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`representation of that visual content. In this respect, the image data signal that is
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`generated by the processor is digital data in the form of a signal comprising a
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`digitized framed image, which inherently can be used to digitally reconstruct the
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`image framed by the camera at any point prior to or after being transmitted.
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`As recited in Claim 1, it is the image data signal that is wirelessly
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`transmitted to a compatible remote receiving station of a wireless telephone
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`network. (@’871 Patent, 14:51-53; 15:3-5; 15:10-12. In contrast, Wilska discloses
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`generating and transmitting a transformation of an image data signal that,
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`critically, cannot be used to digitally reconstruct the image framed by the camera
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`at any point prior to or after being transmitted. As Petitioner recognizes, Wilska’s
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`disclosed means for telephonically transmitting an image is limited to telefax.
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`@Petition, 19:5-9. As discussed above [supra at IV.A.1], Wilska makes no
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`mention of using SMS or electronic mail for sending visual images and Wilska’s
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`disclosures present no means for doing so.
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` Wilska discloses that a telefax application is used for transmitting images
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`via telefax. Although Wilska never defines the meaning of “telefax,” Wilska’s
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`disclosure defines the structure that is in place for implementing such transmitting
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`of images via telefax. Specifically, Wilska discloses that the modem of the cellular
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`mobile telephone 17 used for transmitting images via telefax is a fax modem
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`(@Wilska 9:32-10:2) and that the fax modem is an analog modem (@Wilska
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`5:30). Wilska’s disclosed structure for enabling transmission of images via
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`Wilska’s disclosed telefax arrangement specifically limits the manner in which an
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`image in Wilska can be transmitted. This is because Wilska’s telefax arrangement
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`is specifically configured for transmitting and receiving documents to and from a
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`fax machine or another telefax arrangement . To this end, based on the manner in
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`which Wilska’s telefax arrangement necessarily operates, it transforms an image
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`data signal (i.e., the original image data signal) into a new signal (i.e., a
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`transformed image data signal) that is specifically configured for being received by
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`a telefax arrangement. This transformation creates an analog binary derivative of
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`the original visual image, which is capable of being transmitted using tonal (i.e.,
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`audio) signals by which fax machines communicate. However, this analog binary
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`derivative is incapable of being used to digitally reconstruct the image framed by
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`the camera because information needed for such reconstruction has inherently been
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`lost during such binary derivation. For example, the transformation entails
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`extracting and converting a portion of image information from the original image
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`data signal and all other image information thereof is discarded. See also @
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`Melendez Declaration, ¶43-47 and 49-50.
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`Independent Claim 6 also recites language comprising the Visual Image
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`Transmitting Limitation and, thus, is similarly distinguished from the combination
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`of Wilska and Yamagishi. See also @ Melendez Declaration, ¶48-50.
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`Accordingly, Petitioner has failed to provide a prior art combination that
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`renders Claims 1 and 6 of the ‘871 Patent obvious and, thus, any claims dependent
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`thereon, unpatentable under 35 U.S.C. §103(a) and, moreover, has failed to meet
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`its burden of proving a proposition of unpatentability of Claims 1-8 of the ‘871
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`Patent by a preponderance of the evidence, as required by 35 U.S.C. § 316(e).
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`B.
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`Considerations Weighing Against Motivation To Combine References
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` As required by MPEP 2143.01, obviousness can be established by
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`combining or modifying the teachings of the prior art to produce the claimed
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`invention where there is some teaching, suggestion, or motivation to do so. In
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`re Kahn, 441 F.3d 977, 986, 78 USPQ2d 1329, 1335 (Fed. Cir. 2006)
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`(discussing rationale underlying the motivation-suggestion-teaching test as a
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`guard against using hindsight in an obviousness analysis). More specifically, in
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`accordance with MPEP 2143.01(IV), a statement that modifications of the prior
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`art to meet the claimed invention would have been well within the ordinary skill
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`of the art at the time the claimed invention was made because the references
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`relied upon teach that all aspects of the claimed invention were individually
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`known in the art is not sufficient to establish a prima facie case of obviousness
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`without some objective reason to combine the teachings of the references. Ex
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`parte Levengood, 28 USPQ2d 1300 (Bd. Pat. App. & Inter. 1993).
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`‘‘‘[R]ejections on obviousness cannot be sustained by mere conclusory
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`statements; instead, there must be some articulated reasoning with some
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`rational underpinning to support the legal conclusion of obviousness.’” KSR,
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`550 U.S. at 418, 82 USPQ2d at 1396 (quoting In re Kahn, 441 F.3d 977, 988,
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`78 USPQ2d 1329, 1336 (Fed. Cir. 2006)). In this respect, to establish a prima
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`facie case of obviousness, it is necessary to present a showing that the
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`references relied upon teach all aspects of the claimed invention and to present
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`an articulated reasoning with some rational underpinning to support the legal
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`conclusion of obviousness to combine the teachings of the references.
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`1. Essential Principle Of Operation Of Wilska
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`It is important to understand an essential principle of operation of Wilska,
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`which is also a significant distinction between Wilska and Yamagishi. This
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`essential principle of operation of Wilska has a notable adverse impact on a
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`POSITA’s motivation to modify Wilska and/or combine Wilska with Yamagishi
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`for arriving at the claimed invention. Petitioner has stated the following:
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`A person of ordinary skill in the art (“POSITA”) would have
`been motivated, or would have found it obvious, to combine
`Yamagishi and Wilska since both are in the same technical
`field (see Section V-A), and address similar issues by
`disclosing implementations of portable handheld devices that
`function as both digital cameras and mobile telephones, and
`include similar components to capture, store, process, and
`display images. @Petition, 14:13-19.
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`Wilska and Yamagishi both include disclosure relating to implementation of
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`devices that can function as both a digital camera and a portable wireless
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`telephone. However, the manner in which Wilska implements such digital camera
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`and portable wireless telephone functionality is critically different than the manner
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`in which such digital camera and portable wireless telephone functionality is
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`implemented in Yamagishi. In fact, so different that this manner by which each of
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`these references respectively implements such digital camera and portable wireless
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`telephone functionality would be a key factor, if not the sole factor, in a POSITA
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`assessing the motivation to modify Wilska and/or combine Wilska with Yamagishi
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`to arrive at the invention as claimed in the ‘871 Patent.
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`Wilska, which
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`is
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`the primary
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`reference
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`in Petitioner’s proposed
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`combination, teaches a processing element arrangement that has been admitted by
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`Wilska’s patent owner to be a key distinguishing characteristic of the inventive
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`disclosures therein. This processing element arrangement has a specific division
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`of processing image information between a main unit processing element (i.e.,
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`central processor 4 @Wilska, FIG. 3) and a camera unit processing element (i.e.,
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`microprocessor 23 @Wilska, FIG. 5) such that the camera unit processing element
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`is allocated responsibility for storing image information for later recall and
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`processing by the main unit processing element thereby keeping the main unit
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`processing element free to handle the other tasks.
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` In regard to FIG. 3 of Wilska, Wilska discloses:
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`The notebook computer comprises data processing unit 2
`(Figure 3) which is preferably arranged on one semiconductor
`chip. Data processing unit 2 comprises processor 4, which is
`preferably a low power RISC processor. Data processing unit 2
`further comprises input/output controller 5, display controller 6,
`memory controller 7 and cellular mobile phone controller 8.
`@Wilska 3:28-4:1.
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`In regard to FIG. 5 of Wilska, Wilska discloses:
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`The notebook computer further comprises a data collection
`device, which is implemented by means of a camera unit. The
`embodiment of Figure 1 represents camera unit 14 (Figure 3)
`fitted in housing 1 of the notebook computer as a stationary part
`thereof. In this application, camera 14a of camera unit 14 and
`related optics 14b are arranged on the same side of the housing
`as display 9, though a different disposition is also possible.
`Camera unit 14 is connected via input/output controller 5 to
`data processing unit 2 (Figure 3). Camera unit 14, which is
`represented in the form of a block diagram in Figure 5, consists
`of camera arrangement 140, which comprises camera 14a
`provided with suitable optics 14b, and image processing unit
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`…
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`14c connected to the camera arrangement. This data collection
`unit can be used to transfer data presented on paper or the like
`as well as an image taken of the surroundings, for instance of a
`person, to the notebook computer to be processed further.
`@Wilska, 4:27-5:7.
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`In principle, the structure of both camera card 15 and camera
`unit 14 conforms to the block diagram shown in Figure 5.
`Camera card 15 consists of camera arrangement 140 which
`comprises camera 14a and optics 14b, image processing unit
`14c, battery 21 and interface 22 to external systems which in
`this case is a standard PCMCIA interface concerning camera
`card 15. Image processing unit 14c comprises microprocessor
`23 and a number of memory units 24. @Wilska, 7:1-9.
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`In regard to operability of the camera unit 14 with respect to the notebook
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`computer data processing unit 2, Wilska discloses:
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`IPR201
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