UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`HTC CORPORATION; HTC AMERICA, INC.; SAMSUNG ELECTRONICS
`CO., LTD.; and SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner
`
`v.
`
`E-WATCH, INC. and E-WATCH CORPORATION
`Patent Owner
`
`
`
`
`
`CASE IPR2014-009871
`Patent No. 7,365,871 B2
`
`
`
`
`
`DECLARATION OF KENNETH PARULSKI
`
`
`
`
`
`
`
`
`
`
`1 Case IPR2015-00541 has been joined with this proceeding.
`
`
`
`
`HTC and Samsung, Ex. 1008
`HTC v. E-Watch, IPR2014-00987
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`HTC CORPORATION; HTC AMERICA, INC.; SAMSUNG ELECTRONICS
`CO., LTD.; and SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner
`
`v.
`
`E-WATCH, INC. and E-WATCH CORPORATION
`Patent Owner
`
`
`
`
`
`CASE IPR2014-009871
`Patent No. 7,365,871 B2
`
`
`
`
`
`DECLARATION OF KENNETH PARULSKI
`
`
`
`
`
`
`
`
`
`
`1 Case IPR2015-00541 has been joined with this proceeding.
`
`
`
`
`HTC and Samsung, Ex. 1008
`HTC v. E-Watch, IPR2014-00987
`
`
`
`TABLE OF CONTENTS
`
`
`Page
`
`
`INTRODUCTION .......................................................................................... 1
`I.
`SUMMARY OF OPINIONS .......................................................................... 3
`II.
`III. QUALIFICATIONS AND EXPERIENCE .................................................... 4
`A.
`Education and Work Experience .......................................................... 4
`IV. LEVEL OF ORDINARY SKILL IN THE ART ............................................ 6
`V.
`CLAIMS 1-8 and 12-15 .................................................................................. 8
`A. All Limitations of Claims 1, 6 and 12 are Taught or Suggested
`by Wilska and Yamagishi-114 ............................................................. 8
`1.
`Non-audio Digital Signals .......................................................... 8
`2.
`“Visual Image Transmission” .................................................. 15
`3. Motivation to Combine ............................................................ 17
`Responses to Specific Arguments in Melendez Declaration ............. 25
`
`B.
`
`
`
`
`
`-i-
`
`
`
`HTC and Samsung, Ex. 1008
`HTC v. E-Watch, IPR2014-00987
`
`
`
`DECLARATION OF KENNETH PARULSKI
`IPR2014-00987 (U.S. PATENT NO. 7,365,871 B2)
`
`I.
`
`INTRODUCTION
`
`1. My name is Kenneth Parulski. I was the former Chief Scientist in the
`
`Digital Camera and Devices Division of Eastman Kodak Company and I am
`
`currently Chief Scientist and Managing Member of aKAP Innovation, LLC, which
`
`I founded in June 2012. aKAP Innovation, LLC provides innovation and digital
`
`photography related consulting services, and participates in the development of
`
`ISO (“International Organization for Standardization”) standards for digital
`
`photography.
`
`2.
`
`I have been engaged by, and compensated by, HTC Corporation and
`
`HTC America, Inc. (“HTC”) to investigate and opine on certain issues relating to
`
`U.S. Patent No. 7,365,871 B2, entitled “APPARATUS FOR CAPTURING,
`
`CONVERTING AND TRANSMITTING A VISUAL IMAGE SIGNAL VIA A
`
`DIGITAL TRANSMISSION SYSTEM” (“the ’871 Patent”).
`
`3.
`
`I provided a declaration that accompanied HTC’s petition for inter
`
`partes review (IPR) in CASE IPR2014-00987, filed on June 9, 2014 (“HTC
`
`Petition”), as Exhibit 1006 (my “2014 Declaration”), which I incorporate by
`
`reference. My 2014 Declaration provides an explanation of my credentials and
`
`experience, the technology relevant to the ’871 patent, and my opinions with
`
`respect to the ’871 Patent.
`
`
`
`HTC and Samsung, Ex. 1008
`HTC v. E-Watch, IPR2014-00987
`
`
`
`DECLARATION OF KENNETH PARULSKI
`IPR2014-00987 (U.S. PATENT NO. 7,365,871 B2)
`
`
`4.
`
`I understand that, on January 7, 2015, Samsung Electronics Co., Ltd.
`
`and Samsung Electronics America, Inc. filed an IPR petition under CASE
`
`IPR2015-00541 (“Samsung Petition”) that is essentially a copy of the HTC Petition
`
`and which includes a copy of my 2014 Declaration. I also understand the Patent
`
`Trial and Appeal Board (PTAB) has ordered to join the IPR proceeding based on
`
`the Samsung Petition into the IPR proceeding based on the HTC Petition under
`
`CASE IPR2014-00987.
`
`5.
`
`I make this declaration to address issues raised in Patent Owner’s
`
`(“PO”) Response filed on February 20, 2015 (Paper 16, “PO Response”), and the
`
`Expert Declaration of Dr. Jose Luis Melendez (Exhibit 2001, “Melendez
`
`Declaration”).
`
`6.
`
`This declaration is based on the information currently available to me,
`
`including the ’871 Patent, the prosecution history for the ’871 Patent, and the
`
`documents in IPR2014-00987 (including the prior art references and information
`
`discussed in this declaration and my 2014 Declaration, other references specifically
`
`identified in this declaration and my 2014 Declaration, and the PO Response
`
`(Paper 16), including the Melendez Declaration (Ex. 2001) and other exhibits). I
`
`also rely upon my education, experience and expertise in the relevant technologies
`
`and systems. If additional information becomes available, I reserve the right to
`
`continue my investigation and study.
`
`
`
`
`-2-
`
`HTC and Samsung, Ex. 1008
`HTC v. E-Watch, IPR2014-00987
`
`
`
`DECLARATION OF KENNETH PARULSKI
`IPR2014-00987 (U.S. PATENT NO. 7,365,871 B2)
`
`II.
`
`SUMMARY OF OPINIONS
`
`7.
`
`For the purpose of this declaration, I have been asked to provide facts,
`
`analysis and my opinions in response to specific arguments and evidence raised by
`
`the PO Response and the Melendez Declaration.
`
`8.
`
`As set forth in this declaration, as well as in my 2014 Declaration (see
`
`Exhibit 1006 at ¶¶ 79-108), it is my opinion that all of the limitations of claims 1-8
`
`and 12-15 are taught or suggested by the combination of Wilska (Ex. 1002) and
`
`Yamagishi-114 (Ex. 1003).
`
`9.
`
`The PO Response and the Melendez Declaration address only certain
`
`limitations of independent claims 1, 6 and 12, a subset of all claims that are at issue
`
`in this IPR proceeding. It is my understanding that PO did not contest and
`
`therefore conceded that the remaining elements of claims 1, 6 and 12, as well as
`
`the remaining claims under review, including dependent claims 2-5, 7, and 13-15,
`
`are taught or suggested by the combination of Wilska and Yamagishi-114. In this
`
`declaration, I will address the issues related to the specific limitations of claims 1,
`
`6 and 12 that were raised in the PO Response and the Melendez Declaration, but I
`
`reserve the right to further opine on additional limitations.
`
`
`
`
`-3-
`
`HTC and Samsung, Ex. 1008
`HTC v. E-Watch, IPR2014-00987
`
`
`
`DECLARATION OF KENNETH PARULSKI
`IPR2014-00987 (U.S. PATENT NO. 7,365,871 B2)
`
`III. QUALIFICATIONS AND EXPERIENCE
`A. Education and Work Experience
`10. A more detailed explanation of my educational and work credentials
`
`is provided in Paragraphs 11 through 20 of my June 9, 2014 declaration in Ex.
`
`1006 and in my CV, which was included in Attachment A to Ex. 1006. I received
`
`a Master of Science degree and a Bachelor of Science degree in Electrical
`
`Engineering from the Massachusetts Institute of Technology in 1980. I completed
`
`my master’s thesis research while working at Motorola Corporate Research Labs
`
`from 1978 through 1980, where I developed a system for transmitting a series of
`
`digital images from a moving vehicle over a wireless communications link to a
`
`base station.
`
`11.
`
`I spent over 30 years at Eastman Kodak Company and held a variety
`
`of positions including Chief Scientist, Chief Architect, Research Fellow, and
`
`Director. I was involved in numerous research and development projects related to
`
`wireless digital cameras and camera phones, beginning in 1994. I am also a named
`
`inventor on over 35 issued US patents which relate to wireless transmission of
`
`images from digital cameras. Examples of these patents include U.S. Patent No.
`
`5,666,159, titled “Electronic camera system with programmable transmission
`
`capability,” U.S. Patent No. 6,731,952, titled “Mobile telephone system having a
`
`detachable camera / battery module,” and U.S. Patent No. 6,784,924, titled
`
`
`
`
`-4-
`
`HTC and Samsung, Ex. 1008
`HTC v. E-Watch, IPR2014-00987
`
`
`
`DECLARATION OF KENNETH PARULSKI
`IPR2014-00987 (U.S. PATENT NO. 7,365,871 B2)
`
`“Network configuration file for automatically transmitting images from an
`
`electronic still camera.”
`
`12.
`
`I have authored more than 50 presentations and papers, including
`
`invited talks on digital cameras in the US, Europe and Asia. I authored the
`
`“Digital Photography” chapter in the Consumer Digital Electronics Handbook by
`
`McGraw-Hill 1997, and co-authored the “Color Image Processing for Digital
`
`Cameras” chapter in the Digital Color Imaging Handbook; CRC Press 2003. I
`
`have also developed and taught Kodak internal courses on video technology and
`
`digital cameras.
`
`13.
`
`I am a named inventor on more than 200 issued United States patents.
`
`Most of these inventions related to digital cameras and digital photography
`
`systems, and have been broadly licensed by Kodak to more than 40 companies for
`
`use in digital cameras, smart phones, and photo sharing services. Licensing these
`
`patents provided Kodak with earnings of more than $2 Billion dollars from 2005 to
`
`2010.
`
`14.
`
`I have served as Chair of the IT10 standards committee for digital
`
`photography since 1994. This group provides the officially recognized United
`
`States input for many international standards used by digital cameras, including
`
`smart phone digital cameras. In addition, from March 2007 through February
`
`2013, I was chair of ISO technical committee 42 (ISO/TC42), which is responsible
`-5-
`
`
`
`
`HTC and Samsung, Ex. 1008
`HTC v. E-Watch, IPR2014-00987
`
`
`
`DECLARATION OF KENNETH PARULSKI
`IPR2014-00987 (U.S. PATENT NO. 7,365,871 B2)
`
`for all international photography standards. In May 2013, I was elected chair of
`
`the US technical advisory group to ISO/TC42. From June 3-7, 2013, I served as
`
`head of the US delegation to the 23rd plenary meeting of ISO/TC42, held at the
`
`National Museum in Copenhagen, Denmark.
`
`15.
`
`In short, I spent my career conducting digital imaging research,
`
`inventing new technologies and features for digital cameras and digital
`
`photography systems, developing industry standards used by current digital
`
`cameras and smart phones, and designing a wide range of digital cameras and other
`
`digital imaging products that were sold by Eastman Kodak Company
`
`IV. LEVEL OF ORDINARY SKILL IN THE ART
`16. As I explained in my 2014 Declaration, “it is my opinion that a person
`
`having ordinary skill in the art would have at least a bachelor’s degree in electrical
`
`engineering, computer science, or a related field, and 3-5 years of experience in
`
`designing digital imaging devices. This description is approximate and additional
`
`educational experience in digital imaging could make up for less work experience
`
`and vice versa.” (Ex. 1006 at ¶ 28).
`
`17.
`
`In the Melendez Declaration (Ex. 2001), PO’s expert states, “In
`
`contrast to the declaration of Mr. Parulski . . . , I strongly disagree that a person
`
`having no experience in the design of cellular communications devices could be a
`
`POSITA” (Ex. 2001 at 31). PO’s expert argued that “[c]ellular communication
`
`
`
`
`-6-
`
`HTC and Samsung, Ex. 1008
`HTC v. E-Watch, IPR2014-00987
`
`
`
`DECLARATION OF KENNETH PARULSKI
`IPR2014-00987 (U.S. PATENT NO. 7,365,871 B2)
`
`systems have improved significantly, and rapidly, over the past decades and are
`
`highly complex, such that a person not skilled in the art area would be likely to
`
`overstate the capabilities of cellular systems and/or oversimplify them, and as such
`
`would not be able to effectively develop a product with capabilities as disclosed
`
`and claimed in the ‘871 Patent.” (Ex. 2001 at ¶ 31). The statements by PO’s expert
`
`do not correctly characterize the ’871 patent, and misapprehend the statements in
`
`my 2014 Declaration.
`
`18. First, the ’871 patent provides no new teachings related to the design
`
`of cellular communications devices. It simply describes the use of conventional,
`
`well-known imaging related formats and protocols such as the well-known Group-
`
`III facsimile encoding and compression, and Group-III facsimile transmission
`
`protocol, JPEG and wavelet compression and PC modems. For example, there is
`
`no detailed discussion of the designs and capabilities of the cellular telephone
`
`which connects to the cellular interface 130 in FIG. 5; Figures 6A and 6B also only
`
`show a picture of a cellular telephone 164. The ’871 patent treats the cellular
`
`telephone 164 as a mere add-on device “whereby the image data signal can be
`
`transmitted via the cellular telephone to a remote facsimile machine over standard
`
`cellular and telephone company facilities” (Ex. 1001 at 10:45-48).
`
`19. Second, I do not agree with PO’s expert that my definition of a
`
`POSITA excluded “experience in the design of cellular communications devices.”
`-7-
`
`
`
`
`HTC and Samsung, Ex. 1008
`HTC v. E-Watch, IPR2014-00987
`
`
`
`DECLARATION OF KENNETH PARULSKI
`IPR2014-00987 (U.S. PATENT NO. 7,365,871 B2)
`
`To the contrary, the definition I provided assumed that the person would have had
`
`a sufficient level of familiarity and knowledge with communications devices
`
`capable of transmitting digital image data.
`
`20. Finally, in the event that the Board finds that the level of skill that I
`
`used is different than what has been suggested by the PO, my opinions regarding
`
`the ’871 patent would not change even under the PO’s definition.
`
`V. CLAIMS 1-8 AND 12-15
`A. All Limitations of Claims 1, 6 and 12 are Taught or Suggested by
`Wilska and Yamagishi-114
`1.
`In the PO Response, PO contends that Wilska does not disclose the
`
`Non-audio Digital Signals
`
`21.
`
`limitation of “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,” as recited in claim 12, and that Wilska does not use “non-
`
`audio” signals to transmit images because Wilska only describes using fax, which
`
`uses “audio tones” rather than “non-audio” signals (Paper 16 at 8:10-21; see also
`
`Melendez Declaration in Ex. 2001 at ¶¶ 38-39). I disagree, because PO’s
`
`contention contradicts the clear teachings in Wilska, as well as what is described in
`
`the claims and detailed description of the ’871 Patent with respect to claim 12.
`
`22. Based on my review of the ’871 Patent specification, the term “non-
`
`audio digital signal” is not used anywhere in the text or drawings. The prosecution
`-8-
`
`
`
`
`HTC and Samsung, Ex. 1008
`HTC v. E-Watch, IPR2014-00987
`
`
`
`DECLARATION OF KENNETH PARULSKI
`IPR2014-00987 (U.S. PATENT NO. 7,365,871 B2)
`
`file history of the ’871 Patent shows that PO added the term “non-audio digital
`
`signal” when adding a new independent claim 55 in an amendment filed on Jan. 6,
`
`2005, in response to an office action, which later became issued claim 12.
`
`23. PO seems to contend that “non-audio digital signal” means a digital
`
`signal that is not transmitted or received by means of audio signals, and therefore
`
`excludes transmissions or receptions by a fax machine since such transmissions use
`
`audio signals “as recognized by anyone who has answered a call from a fax
`
`machine and heard audio tones” (id. at 8:10 to 9:1). PO’s interpretation of “non-
`
`audio digital signal” is inconsistent with the language of claim 12, which shows
`
`that “non-audio digital signal” refers to what is being transmitted, not how data is
`
`being transmitted. For example, claim 12 recites one type of a non-audio digital
`
`signal by stating “the non-audio digital signals including a selected digitized
`
`framed image.”
`
`24. PO’s interpretation of a “non-audio digital signal” also ignores a large
`
`portion of the ’871 Patent specification that describes embodiments that use
`
`Group-III fax, which uses so-called “audio tones” as described by the PO (see Ex.
`
`1001, 5:2-59, 6:15-49; 7:3-48; 8:53-65; 9:17-30; 10:5-25; 10:61-67).
`
`25. Notably, claim 12 does not place any specific requirements or
`
`restrictions on the transmission method that the recited wireless telephone uses to
`
`transmit non-audio digital signals, which include a selected digitized framed
`-9-
`
`
`
`
`HTC and Samsung, Ex. 1008
`HTC v. E-Watch, IPR2014-00987
`
`
`
`DECLARATION OF KENNETH PARULSKI
`IPR2014-00987 (U.S. PATENT NO. 7,365,871 B2)
`
`image. For example, there is no requirement in claim 12 that the non-audio digital
`
`signals be transmitted using carrier signals outside the audible range, or that the
`
`digitized audio signals be transmitted using carrier signals inside the audible range.
`
`The relevant portion in Claim 12 recites:
`
`[T]he wireless telephone being selectively operable to accept and digitize
`
`audio signals to be transmitted, the wireless telephone being selectively
`
`operable to convert received digitized audio signals into acoustic audio, 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.
`
`26. The first part of the above portion of claim 12 relates to acoustic
`
`audio, and states that the wireless telephone is “selectively operable to convert
`
`received digitized audio signals into acoustic audio.” This feature implies that the
`
`digitized audio signals are not audible and must be converted into acoustic audio in
`
`order to be audible, but this feature is separate from the reception or transmission
`
`of non-audio digital signals. It is common engineering knowledge that an analog
`
`audio signal is sampled by an Analog to Digital Converter (ADC) circuit at a
`
`certain selected sampling rate (e.g., 44.1 KHz for digital sound for audio CD,
`
`48KHz for digital sound for standard DVD and 96KHz for digital sound for Blu-
`
`Ray DVD) to convert the analog signal into a digitized audio signal. Such
`-10-
`
`
`
`
`HTC and Samsung, Ex. 1008
`HTC v. E-Watch, IPR2014-00987
`
`
`
`DECLARATION OF KENNETH PARULSKI
`IPR2014-00987 (U.S. PATENT NO. 7,365,871 B2)
`
`digitized audio signals are not audible signals, and need to be converted back into
`
`analog signals, to produce audible sound.
`
`27. Regardless, as shown in my 2014 Declaration, Wilska discloses the
`
`claimed “non-audio digital signals” under both (1) my interpretation of the term,
`
`which focuses on the underlying data being transmitted, and (2) PO’s contended
`
`interpretation, which focuses on the transmission protocol used to transmit the
`
`underlying data.
`
`28. My 2014 Declaration explains that Wilska describes transmitting and
`
`receiving non-audio digital signals, such as digitized framed images captured by a
`
`camera, in various ways or formats, e.g., a bitmap format, emails and fax (Ex. 1002
`
`at 5:22 to 6:2; 9:28 to 10:7; 12:23-26; 13:2-18; 13:25-27; Ex. 1006 at ¶¶ 80, 91 and
`
`Table 1). My 2014 Declaration also explains that Wilska describes an
`
`implementation where “cellular mobile phone unit 17 of the notebook computer
`
`and the related cellular mobile phone controller 8 are implemented as a digital
`
`GSM system” (Ex. 1002 at 13:20-21; Paper 1 at 20:5-6). As explained in my 2014
`
`Declaration, Wilska describes that email functionality can be implemented in such
`
`a digital GSM system (Ex. 1002 at 13:29-30). For example, Wilska explains that
`
`“text or a figure written or drawn on digitizer pad 29 . . . can be stored later as an
`
`image in memory unit 13” (i.e., in the form of a bitmap) (Ex. 1002 at 12:15-17; see
`
`also id. at 11:29-32), and that “[t]he bitmap images . . . can be later forwarded via
`-11-
`
`
`
`
`HTC and Samsung, Ex. 1008
`HTC v. E-Watch, IPR2014-00987
`
`
`
`DECLARATION OF KENNETH PARULSKI
`IPR2014-00987 (U.S. PATENT NO. 7,365,871 B2)
`
`telefax or electronic mail services” (id. at 12:23-26). Because Wilska teaches that
`
`images captured by camera unit 14 are also stored in memory 13 as bitmap images,
`
`and makes no distinction between bitmap images representing an image captured
`
`by a camera and bitmap images representing text or figures written or drawn on a
`
`digitizer pad, a POSITA would have understood that Wilska teaches that any
`
`bitmap image stored in memory 13 can be transmitted via electronic mail,
`
`including a bitmap image that represents an image captured by camera unit 14.
`
`29. Therefore, with respect to the claim term “non-audio digital signals,”
`
`under my interpretation, my 2014 Declaration explains that Wilska teaches or
`
`suggests wireless transmission of non-audio signals, including digital images, and
`
`therefore discloses “the wireless telephone being selectively operable to transmit
`
`and receive non-audio digital signals,” as recited in claim 12. Examples in Wilska
`
`as cited in my 2014 Declaration include a digital GSM network, a bitmap format,
`
`emails and fax.
`
`30. Under PO’s interpretation as “a digital signal which has been
`
`transmitted or received using a transmission or reception technique that does not
`
`use audio tones or audio signals,” my 2014 Declaration provides specific citations
`
`in Wilska for disclosing transmission of images using non-audio digital signals,
`
`e.g., disclosing wireless telephone transmission of images using non-audio digital
`
`signals via email and a digital GSM network. (Ex. 1006 at ¶¶ 86, 93,; Ex. 1002 at
`-12-
`
`
`
`
`HTC and Samsung, Ex. 1008
`HTC v. E-Watch, IPR2014-00987
`
`
`
`DECLARATION OF KENNETH PARULSKI
`IPR2014-00987 (U.S. PATENT NO. 7,365,871 B2)
`
`13:20-21.) I also explained in my 2014 Declaration that Wilska discloses a GSM
`
`modem, which uses digital modulation and network level architectures and
`
`services (Ex. 1006 at ¶¶ 86, 93, 96; Ex. 1002 at 13:20-21).
`
`31. Also, a person of ordinary skill in the art at the time of filing of the
`
`’871 Patent in 1998 would have understood that the digital modulation used in
`
`GSM clearly does NOT use “audio tones.”
`
`32.
`
`I described in my 2014 Declaration (Ex. 1006 at ¶ 61) that Global
`
`System for Mobile (GSM) was introduced in Europe in 1991 in order to provide a
`
`unified cellular telephony standard and a wide range of network services. The
`
`well-known textbook by Rappaport referenced in my 2014 Declaration (id.)
`
`describes some of the features of GSM. In order to respond to the specific points
`
`raised by the Melendez Declaration regarding GSM’s inability to transmit image
`
`data, certain relevant sections of the Rappaport book are reproduced in
`
`Attachment AA to this declaration. As corroborated by these excerpts from
`
`Rappaport’s textbook, “the GSM standard is gaining worldwide acceptance as the
`
`first universal digital cellular system with modern network features extended to the
`
`mobile user” (Attachment AA at 4, “page 9”), “GSM is the world’s first cellular
`
`system to specify digital modulation and network level architectures and
`
`services” (id., emphasis added), and “Figure 10.5 shows the block diagram of the
`
`GSM system architecture” (id. at 8, “page 503”). This figure, reproduced below,
`-13-
`
`
`
`
`HTC and Samsung, Ex. 1008
`HTC v. E-Watch, IPR2014-00987
`
`
`
`DECLARATION OF KENNETH PARULSKI
`IPR2014-00987 (U.S. PATENT NO. 7,365,871 B2)
`
`shows that mobile stations (MS) can communicate with ISDN and other data
`
`networks using the GSM system.
`
`
`
`33. The 1994 description in Wilska (a UK Patent filed by the European
`
`Company Nokia) postdates the 1991 introduction of GSM in Europe by several
`
`years. Therefore, the “digital GSM system” of Wilska (Ex. 1002 at 13:20-21)
`
`would have been well understood by a POSITA to use digital transmission
`
`technologies capable of transmission and reception of both speech and data, as
`
`depicted in Figure 10.5 of Rappaport shown above.
`
`
`
`
`-14-
`
`HTC and Samsung, Ex. 1008
`HTC v. E-Watch, IPR2014-00987
`
`
`
`DECLARATION OF KENNETH PARULSKI
`IPR2014-00987 (U.S. PATENT NO. 7,365,871 B2)
`
`
`34. As explained in the Petition and in my 2014 Declaration, Wilska also
`
`teaches transmission of images using email, and describes that captured images are
`
`stored “in the form of a bitmap” (Ex. 1002 at 9:23-24), and that “bitmap images . .
`
`. can be later forwarded via . . . electronic mail services” (id. at 12:23-27) (Ex.
`
`1006 at ¶¶ 85-86, 91-92). Also, attaching image files to an email message was a
`
`well-known method of transmitting images over networks.
`
`“Visual Image Transmission”
`
`2.
`In the PO Response, PO contends that claims 1-8 require
`
`35.
`
`“transmitting a captured visual image” rather than “the transmission of fax data
`
`merely derived from the image” (Paper 16 at 10:14-20; see also Ex. 2001 at ¶¶ 43-
`
`50). I disagree for reasons that are explained below.
`
`36. Claim 1 simply recites transmitting an “image data signal” and claim
`
`6 simply recites transmitting the “digitized framed image.” There is no limitation
`
`in claim 1 or 6 that qualifies the quality of the visual images that can be reproduced
`
`using the transmitted image or that restrict the transmissions to only non-fax
`
`transmissions.
`
`37. The detailed description of the ’871 Patent is almost entirely devoted
`
`to a description of various embodiments which employ Group-III fax. As admitted
`
`by PO (Paper 16 at 12:6-8; 14:15-19; Ex. 2001, ¶¶ 43-45), all of such Group-III fax
`
`transmissions in the ’871 Patent must also transmit “fax data merely derived from
`
`
`
`
`-15-
`
`HTC and Samsung, Ex. 1008
`HTC v. E-Watch, IPR2014-00987
`
`
`
`DECLARATION OF KENNETH PARULSKI
`IPR2014-00987 (U.S. PATENT NO. 7,365,871 B2)
`
`the image,” and therefore also do not meet the limitations in claims 1-8, according
`
`to the PO’s interpretation. This interpretation is unreasonable since it excludes the
`
`Group-III fax processing and transmission path that is in each of Figures 1 to 5 of
`
`the ’871 patent, including the admittedly representative embodiment of Figure 4
`
`(Ex. 2001 at ¶ 37).
`
`38. Additionally, the PO Response and Melendez Declaration do not
`
`describe any way of obtaining an “image data signal” or “digitized framed image”
`
`that is NOT “merely derived from the image.” Each of the formats A-D in Fig. 4
`
`of the ’871 Patent are compressed (for example by JPEG compressor 62, wavelet
`
`compressor 66 or compatible compressor 67) before the signal is introduced to the
`
`communications interface module 83 (Ex. 1001 at 7:23-36; Figure 4). It is well
`
`known that baseline JPEG compression uses a lossy compression technique (see
`
`Attachment BB at 3 to 6, “pp. 9.2-9.5”). Baseline JPEG compression uses the
`
`discrete cosine transform (DCT) to convert blocks of image data into DCT
`
`coefficients, which are coarsely quantized in order to provide a high compression
`
`ratio. When the resulting JPEG-compressed image data is decompressed at the
`
`receiver, these quantization errors degrade the reproduced image, resulting in the
`
`loss of some of the original visual image data, which cannot be recovered.
`
`Therefore, the communications interface module 83 receives “data merely derived
`
`
`
`
`-16-
`
`HTC and Samsung, Ex. 1008
`HTC v. E-Watch, IPR2014-00987
`
`
`
`DECLARATION OF KENNETH PARULSKI
`IPR2014-00987 (U.S. PATENT NO. 7,365,871 B2)
`
`from the image” using every specific format described in the ’871 patent for
`
`transmission through the communication channel 32.
`
`39. Further, even under PO’s interpretation, Wilska describes an
`
`embodiment which transmits a “captured visual image” since Wilska teaches
`
`transmission of images using email attachments over digital GSM networks (as an
`
`alternative to telefax) (Ex. 1002 at 13:20-21, 13:29-30; Paper 1 at 20:5-6, 35:16),
`
`which was a well-know approach to transmitting digital images.
`
`40. Wilska also states that fax images (bitmap files) can be reproduced on
`
`a receiving mobile device for viewing (Ex. 1002 at 10:2-7; Paper 1 at 35:7-8),
`
`which once again contradicts the PO’s characterization of Wilska that the “fax”
`
`signals that are transmitted by Wilska’s device cannot be used to reconstruct the
`
`visual image (Paper 16 at 13:12-15).
`
`3. Motivation to Combine
`41. PO argues that (1) “the manner in which Wilska implements such
`
`digital camera and portable wireless telephone functionality is critically different”
`
`than the manner in which Yamagishi-114 implements it (Paper 16 at 17:13-18),
`
`and (2) “the proposed combination would require change in the principle of
`
`operation of Wilska,” since “[h]aving the central processor 6 of Wilska continually
`
`active for enabling the viewfinder functionality . . . is at direct odds with the
`
`admitted essential functionality of Wilska having a specific division of processing
`
`
`
`
`-17-
`
`HTC and Samsung, Ex. 1008
`HTC v. E-Watch, IPR2014-00987
`
`
`
`DECLARATION OF KENNETH PARULSKI
`IPR2014-00987 (U.S. PATENT NO. 7,365,871 B2)
`
`image information between a main unit processing element and a camera
`
`processing unit element” (Paper 16 at 43:14 to 44: 11, 46:17 to 47:6).
`
`42. The Melendez Declaration further argues that (3) concerning the steps
`
`for using the viewfinder described by Yamagishi-114, “[t]he complexity of these
`
`processes cast doubt on the physical ability of combining them with Wilska’s
`
`processes for recording and transmitting images” (Ex. 2001 at ¶ 51), and that (4)
`
`“usage of the telephone and a camera functions are wholly separate” (id. at ¶ 52) in
`
`Yamagishi-114 and that “[t]his separation of telephone and imaging functionality
`
`discourages any combination of Yamagishi” (id.) with Wilska.
`
`43.
`
`I disagree with the above assertions by the PO and Dr. Melendez. To
`
`explain Wilska’s implementation, the PO cites extensively from a reexamination
`
`proceeding concerning a patent related to Wilska, which began in 2012, including
`
`an office action dated June 14, 2014, and implies that a POSITA in 1998 would
`
`have understood the teachings of Wilska in light of what the PO wrote more than a
`
`decade later during reexamination of a different patent. Clearly a POSITA in 1998
`
`would not have had access to this material, and could rely only on the information
`
`in the published Wilska patent application.
`
`44. Even if the arguments made in 2014 had instead been made in 1998,
`
`they pertain only to the specific claims in the reexamined patent that required two
`
`processors (see Ex. 2002, claim 1 in U.S. 6,427,078 C1 and claim 73 in 6,427,078
`-18-
`
`
`
`
`HTC and Samsung, Ex. 1008
`HTC v. E-Watch, IPR2014-00987
`
`
`
`DECLARATION OF KENNETH PARULSKI
`IPR2014-00987 (U.S. PATENT NO. 7,365,871 B2)
`
`B1). Wilska’s patent owner was simply attempting to persuade the patent office
`
`that these two-processor claims should be found patentable over prior art that
`
`disclosed only one processor. These arguments cannot be generalized to
`
`characterize the entire disclosure of Wilska, nor do they suggest that Wilska’s
`
`device could not have operated using only a single processor. To the contrary,
`
`every claim of Wilska (Ex. 1002 at 15:2-7) is directed to a device which includes
`
`only a single data processing unit (2). There is no requirement in any of the claims
`
`that the device include a second processing element (e.g. microprocessor 23).
`
`Therefore, it is clear that using two processing elements is not the principle of
`
`operation of Wilska.
`
`45. As the PO admits, “Wilska and Yamagishi both include disclosure
`
`relating to implementation of devices that can function as both a digital camera and
`
`a portable wireless telephone” (Paper 16 at 17:13-15). A POSITA would have
`
`understood that the number of processing elements used in a combination camera /
`
`wireless telephone is merely a design choice, and that the features performed by a
`
`single processing element could be split between two or more processing elements
`
`for a variety of reasons, including the availability and capabilities of existing
`
`components.
`
`46.
`
` Even if the PO’s assertions are taken at face value, that Wilska
`
`offloads some of the processing to a second processor to keep the main
`-19-
`
`
`
`
`HTC and Samsung, Ex. 1008
`HTC v. E-Watch, IPR2014-00987
`
`
`
`DECLARATION OF KENNETH PARULSKI
`IPR2014-00987 (U.S. PATENT NO. 7,365,871 B2)
`
`“microprocessor . . . free to handle the other tasks of the cell phone, e.g., operating
`
`system management, application processing, call control” and that “[k]eeping the
`
`microprocessor free to handle the last of these tasks can be particularly
`
`advantageous because the user interface signals are often time-sensitive” (Paper 16
`
`at 25:4-20), such statements simply confirm that Wilska’s division of processing
`
`was a design choice that was made based on economic considerations to avoid
`
`using a single, high-performance processor for handling all the required operations,
`
`which likely would have been more expensive and would have dissipated more
`
`power. Furthermore, processors in January of 1998 (i.e., the alleged priority date
`
`of the ’871 Patent) were considerably more powerful than those in 1994, when
`
`Wilska’s patent was filed (see, for e
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
