UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`HTC CORPORATION; HTC AMERICA, INC.; SAMSUNG ELECTRONICS
`CO., LTD.; and SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner
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`v.
`
`E-WATCH, INC. and E-WATCH CORPORATION
`Patent Owner
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`
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`CASE IPR2014-009871
`Patent No. 7,365,871 B2
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`1 Case IPR2015-00541 has been joined with this proceeding.
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`IPR2014-00987
`Petitioner’s Reply To Patent Owner’s Response
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`TABLE OF CONTENTS
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`Page
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`I.
`II.
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`
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`C.
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`2.
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`3.
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`2.
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`3.
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`4.
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`INTRODUCTION .......................................................................................... 1
`RESPONSE TO PATENT OWNER’S ARGUMENTS ................................ 1
`A. All limitations in Claim 12 are taught or suggested by Wilska
`and Yamagishi-114 ............................................................................... 1
`1. Wilska teaches or suggests the Non-Audio Digital Image
`Signal Transmission Limitation, as recited in claim 12 ............ 2
`The plain language of claim 12 and the ’871 Patent
`specification supports a BRI of claim 12 that
`encompasses transmission of images via fax ............................. 4
`PO’s contention on Multimedia Messaging Service
`(MMS) with respect to Wilska ................................................... 7
`B. All limitations in Claims 1 and 6 are taught or suggested by
`Wilska and Yamagishi-114 .................................................................. 7
`1.
`PO’s Visual Image Transmission Limitation has no basis
`in the plain language of claims 1 and 6 ..................................... 8
`PO’s Visual Image Transmission Limitation also lacks
`basis in the specification of ’871 Patent .................................. 10
`PO has taken conflicting infringement positions in
`litigation ................................................................................... 12
`The specification of the ’871 Patent identifies fax
`transmissions as the “subject invention” ................................. 13
`5. Wilska’s device is capable of transmitting reproducible
`images ...................................................................................... 13
`PO’s stated reasons against the combination of Wilska and
`Yamagishi-114 are without merit ....................................................... 14
`1.
`Arguments made during a reexamination proceeding of a
`U.S. counterpart to Wilska are not relevant to Wilska’s
`principle of operation ............................................................... 16
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`IPR2014-00987
`Petitioner’s Reply To Patent Owner’s Response
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`TABLE OF CONTENTS
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`Page
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`2.
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`3.
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`Having two processors is not the essential principle of
`operation of Wilska .................................................................. 18
`Yamagishi-114 is capable of being combined with
`Wilska ...................................................................................... 19
`The display limitation recited in claims 2 and 12 is
`obvious over Wilska and Yamagishi-114 ................................ 20
`PO’s assertions of patentability of claim 12 based on
`alleged lack of stated motivations to combine are
`misguided ................................................................................. 22
`Claims 1-8 and 12-15 are challenged as being obvious under 35
`USC 103(a) over the combination of Wilska and Yamagishi-
`114 ...................................................................................................... 22
`III. CONCLUSION ............................................................................................. 23
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`4.
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`5.
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`D.
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`IPR2014-00987
`Petitioner’s Reply To Patent Owner’s Response
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`TABLE OF AUTHORITIES
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` Page(s)
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`Federal Cases
`Baldwin Graphic Sys., Inc. v. Siebert, Inc.,
`512 F.3d 1338 (Fed. Cir. 2008) .......................................................................... 13
`
`Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc.,
`289 F.3d 801 (Fed. Cir. 2002) .............................................................................. 8
`
`EPOS Techs. Ltd. v. Pegasus Techs. Ltd.,
`766 F.3d 1338 (Fed. Cir. 2014) ............................................................................ 6
`
`In re Katz Interactive Call Processing Patent Litig.,
`639 F.3d 1303 (Fed. Cir. 2011) .......................................................................... 16
`
`In re Keller,
`642 F.2d 413 (C.C.P.A. 1981) ............................................................................ 20
`
`In re Mouttet,
`686 F.3d 1322 ............................................................................................... 17, 19
`
`In re Umbarger,
`407 F.2d 425 (C.C.P.A. 1969) ............................................................................ 17
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`IPR2014-00987
`Petitioner’s Reply To Patent Owner’s Response
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`Exhibit #
`1001
`1002
`1003
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`1004
`1005
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`1006
`1007
`1008
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`1009
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`1010
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`1011
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`EXHIBIT LIST
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`Brief Description
`U.S. Patent No. 7,365,871 B2 to David A. Monroe (“the ’871 Patent”)
`U.K. Patent Application GB 2,289,555 A to Wilska et al. (“Wilska”)
`Certified Translation of the Japanese Patent Publication No. H06-
`176114 to Yamagishi (“Yamagishi-114”), Certification of English
`Translation and the Original Japanese Document
`U.S. Patent No. 5,550,754 B2 to McNelley et al. (“McNelley”)
`European Patent Application Publication No. 0594992 A1 to Yamagishi
`(“Yamagishi-992”)
`Declaration of Kenneth Parulski Including Attachments A-D
`Selected Portions of the ’871 Patent Prosecution File History
`Rebuttal Declaration of Kenneth Parulski in Support of Petitioner’s
`Reply to Patent Owner’s Response of February 20, 2015 (“2015
`Parulski Decl.”)
`Select Sections of eWatch Preliminary Contentions in Lawsuits Filed in
`the Eastern District of Texas Against Petitioner HTC
`Select Sections of eWatch Preliminary Contentions in Lawsuits Filed in
`the Eastern District of Texas Against Petitioner Samsung
`Samsung Galaxy S5 User Manual
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`1012
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`Select Sections of AT&T Wireless Picture/Video Messaging
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`I.
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`INTRODUCTION
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`IPR2014-00987
`Petitioner’s Reply To Patent Owner’s Response
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`The Board instituted an IPR of the ’871 Patent based on a finding of a
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`reasonable likelihood that Petitioner would prevail in showing the unpatentability
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`of claims 1-8 and 12-15 under 35 U.S.C. § 103 over Wilska (Ex. 1002) and
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`Yamagishi-114 (Ex. 1003) (Paper 6). Patent Owner (“PO”) filed a Patent Owner
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`Response to the Petition (“Response”, Paper 16) along with a declaration from Mr.
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`Jose Melendez (Ex. 2001) on February 20, 2015. On March 6th, the Board joined
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`IPR2015-00541, which was filed by Samsung against the ’871 patent, with this
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`proceeding. Petitioner HTC and Petitioner Samsung (hereafter “Petitioner”) timely
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`submit this reply to the Response.
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`In view of all the evidence and analyses offered by Petitioner and PO,
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`Petitioner has shown by a preponderance of the evidence that claims 1-8 and 12-15
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`are invalid under §103 and must be canceled.
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`II. RESPONSE TO PATENT OWNER’S ARGUMENTS
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`A. All limitations in Claim 12 are taught or suggested by Wilska and
`Yamagishi-114
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`
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`Section IV(A)(1) of the Response asserts that the combination of Wilska and
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`Yamagishi-114 fails to teach what PO calls the “Non-Audio Digital Image Signal
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`Transmission Limitation” of claim 12, which recites “the wireless telephone being
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`selectively operable to transmit and receive non-audio digital signals, the non-
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`audio digital signals including a selected digitized framed image” (Paper 16, 5:16-
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`IPR2014-00987
`Petitioner’s Reply To Patent Owner’s Response
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`9:5). PO argues that Wilska does not teach this limitation because Wilska’s “image
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`transmission and reception via telefax using an analogue modem and conventional
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`cellular technology would have limited such transmission and reception to being
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`exclusively by way of audio signal” (id. at 8:10-12). PO’s position should be
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`rejected because it has no basis in the plain language of claim 12 or the ’871 Patent
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`specification, and is inconsistent with prior positions taken by PO.
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`
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`1. Wilska teaches or suggests the Non-Audio Digital Image Signal
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`Transmission Limitation, as recited in claim 12: As shown in the Petition (Paper 1
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`at 30:14-31:2), Wilska describes transmitting and receiving non-audio digital
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`signals (e.g., images) in various ways or formats, e.g., a bitmap format, emails, and
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`fax (Ex. 1002 at 5:22 to 6:2; 9:28 to 10:7; 12:23-26; 13:2-18; 13:25-27, 9:28 to
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`10:7; 12:29 to 13:7; Ex. 1006 at ¶¶ 80, 91 and Table 1; Paper 1 at 30:12 to 31:2).
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`Therefore, PO’s contention that Wilska only discloses transmission of images via
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`fax lacks merit. For example, Wilska explains that images captured by camera unit
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`14 can be stored “in the form of a bitmap” in memory 13 (Ex. 1002 at 9:23-24;
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`Paper 1 at 30:19 to 31:2). Wilska also explains that “text or a figure written or
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`drawn on digitizer pad 29 . . . can be stored later as an image in memory unit 13”
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`(i.e., in the form of a bitmap) (Ex. 1002 at 12:15-17; see also id. at 11:29-32), and
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`that “[t]he bitmap images . . . can be later forwarded via telefax or electronic mail
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`services” (id. at 12:23-26). Thus, a POSITA would have understood that Wilska
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`IPR2014-00987
`Petitioner’s Reply To Patent Owner’s Response
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`teaches that any bitmap image stored in memory 13 can be transmitted via
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`electronic mail, regardless of whether the bitmap image is an image captured by
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`camera unit 14 or digitizer pad 29 (see also Ex. 1008 ¶¶ 27-28). Indeed, PO
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`conceded in its Response that electronic mail can be used to transmit more than
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`just images or text obtained via digitizer pad 29, including text recognized from
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`images captured using camera unit 14 (Paper 16 at 9 (“Wilska describes scanning
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`in handwritten text using the camera unit, using character recognition software of
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`the camera unit for creating a text message corresponding to the scanned in
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`handwritten text, and sending such text message via SMS or electronic mail.”)).
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`
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`Moreover, Wilska describes that “cellular mobile phone unit 17 of the
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`notebook computer and the related cellular mobile phone controller 8 are
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`implemented as a digital GSM system” (Ex. 1002 at 13:20-21; see also id. at 5:29-
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`31; Paper 1 at 20:5-6 (emphasis added)) and provide electronic email functionality
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`(id. at 13:29-30; see also id. at 13:2-4; Paper 1 at 15:13-15, 30:15-17, 35:15-17).
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`Thus, contrary to PO’s contention, Wilska discloses that images can be transmitted
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`using a digital transmission protocol, which is not an “audio transmission.”
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`
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`Therefore, Wilska describes transmission of images using non-fax
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`techniques, including via email and GSM (see also Ex. 1008 at ¶¶ 21-34, 56).
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`Accordingly, Wilska discloses the Non-Audio Digital Image Signal Transmission
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`Limitation, even under PO’s contended claim construction that excludes image
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`IPR2014-00987
`Petitioner’s Reply To Patent Owner’s Response
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`transmissions via fax.
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`2.
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`The plain language of claim 12 and the ’871 Patent specification
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`supports a BRI of claim 12 that encompasses transmission of images via fax: PO
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`argues that claim 12 requires transmission of digital signals using a transmission
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`technique that does not use “audio signals . . . [such as those] recognized by
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`anyone who has answered a call from a fax machine and heard audio tones” (Paper
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`16 at 8:12-17). PO’s argument appears to center on whether the broadest
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`reasonable construction of “non-audio digital signals” refers to the transmission
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`protocol (i.e., non-fax protocols) versus the underlying data being transmitted (i.e.,
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`non-speech data such as image or text data). PO’s argument and construction
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`directly contradict the plain language of claim 12 and the specification of the ’871
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`Patent. The recited “transmission and reception of non-audio digital signals” in
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`claim 12 specifies “what” is transmitted and received (i.e., the underlying non-
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`audio data), not “how” such non-audio data is transmitted or received (e.g., the
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`details of the transmission protocol).
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`Specifically, claim 12 recites a wireless telephone operable to receive both
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`“digitized audio signals” and “non-audio digital signals, including a selected
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`digitized framed image.”
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`IPR2014-00987
`Petitioner’s Reply To Patent Owner’s Response
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`Claim 12
`the 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
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`
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`The plain language of claim 12 indicates that “audio” and “non-audio”
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`signals refer to the underlying data being transmitted, i.e., speech and non-speech
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`data, respectively. For example, claim 12 expressly identifies an image as one type
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`of “non-audio digital signal” by reciting “the non-audio digital signals including a
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`selected digitized framed image” (emphasis added) (see also Ex. 1008 at 25-26).
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`
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`PO’s interpretation of “non-audio digital signals” also contradicts the ’871
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`Patent specification, which describes transmitting images (i.e., non-audio data) via
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`Group-III fax. In this regard, each and every embodiment of the ’871 Patent
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`specification includes transmitting digitized image data using Group-III facsimile,
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`including the systems that are shown in FIGS. 1 to 5 of the specification (see Ex.
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`1001 at 5:2-64, 6:15-20; 6:15-49; 7:3-48; 8:53-65; 9:17-30; 10:5-25; 10:61-67). In
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`fact, FIGS. 1 to 3 of the specification describe only Group-III fax encoding and
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`transmission (id.). Thus, PO’s assertion that transmission of digitized image data
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`using fax falls outside of the “non-audio signals” limitation would effectively read
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`IPR2014-00987
`Petitioner’s Reply To Patent Owner’s Response
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`out at least the first three preferred embodiments in FIGS. 1 to 3. See EPOS Techs.
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`Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338, 1347 (Fed. Cir. 2014) (“A claim
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`construction that excludes a preferred embodiment . . . is rarely, if ever correct and
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`would require highly persuasive evidentiary support.” (quoting Anchor Wall Sys.,
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`Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1308 (Fed. Cir. 2003))).
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`See, also, Ex. 1008 at ¶ 24.
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`
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`PO’s interpretation of “non-audio digital signals” also contradicts prior
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`positions taken by PO in district court litigation. For example, in a related district
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`court litigation, PO admitted in its preliminary infringement contentions that the
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`claimed transmission and reception of “audio signals” relates to what underlying
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`data is transmitted or received, rather than how such data is transmitted or
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`received, by identifying “Making a Call with Smart Dial” (Ex. 1009 at 8) and “Call
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`Functions” (Ex. 1010 at 4, 7, 16) as “sending and receiving audio signals.” In
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`addition, PO admitted that the accused products’ voice call functions utilize digital
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`cellular transmission techniques such as 3G or LTE (Ex. 1009 at 9; Ex. 1010 at 2,
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`18), which is a non-audio transmission technique.
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`In summary, PO’s assertion that transmission of digitized image data using
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`fax falls outside the scope of non-audio signals is without merit and must be
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`dismissed (see also Ex. 1008 at ¶¶ 21-26, 58-59, 63-64).
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`IPR2014-00987
`Petitioner’s Reply To Patent Owner’s Response
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`3. PO’s contention on Multimedia Messaging Service (MMS) with
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`respect to Wilska: PO contends that Wilska’s mobile phone did not support MMS
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`for transmitting images (Paper 16 at 9:10-18, Ex. 2001 at 40) and thus would not
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`be able of transmit images via the cellular network. This contention should not be
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`afforded any weight because it is irrelevant to the limitations of claim 12. Claim 12
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`does not recite transmission of image data using MMS.
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`
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`Moreover, PO suggests that transmission of digitized image data over a
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`wireless network without MMS would not have been possible in the mid 1990’s
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`(Paper 16 at 9:10-18). PO’s position is without merit because both Wilska and
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`the ’871 Patent provide accounts of transmission of digitized images over a cellular
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`telephone network without MMS (see also Ex. 1008 at ¶¶ 60-62).
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`B. All limitations in Claims 1 and 6 are taught or suggested by
`Wilska and Yamagishi-114
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`
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`The Petition establishes that the combination of Wilska and Yamagishi-114
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`teaches or suggests all of the limitations of claims 1 and 6 (Paper 1 at 14:20 to 26:2
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`and Ex. 1006 at ¶¶ 79-108 and Table 1). In Section IV(A)(2) of the Response, PO
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`relies on the preamble and other claim limitations to add a new limitation that PO
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`refers to as the “Visual Image Transmission Limitation,” stating that the preamble
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`and other limitations “make it clear that a visual image must be captured and
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`transmitted and not merely a transformation of the image data signal” (Paper 16 at
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`12:6-8), or “a binary derivative of the captured visual image” (id. at 13:2-9).
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`IPR2014-00987
`Petitioner’s Reply To Patent Owner’s Response
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`According to PO, “the image data signal that is generated by the processor is
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`digital data in the form of a signal comprising a digitized framed image, which
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`inherently can be used to digitally reconstruct the image framed by the camera at
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`any point prior to or after being transmitted” (id.).
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`PO’s contentions must be rejected because it has no basis in the plain
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`language of the claims or the ’871 Patent specification, and is inconsistent with
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`prior positions taken by PO.
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`1.
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`PO’s Visual Image Transmission Limitation has no basis in the plain
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`language of claims 1 and 6: As an initial matter, for each of claims 1 and 6, PO’s
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`reliance on the preamble is flawed, because the preamble does not recite essential
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`structure or steps, and was not relied on during prosecution to distinguish prior art.
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`See Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808-9 (Fed.
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`Cir. 2002). Nor is the preamble “necessary to give life, meaning, and vitality” to
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`the claims. Id. Rather, the preamble merely states a purpose or intended use of the
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`alleged invention, which is structurally defined in the claim body.2 Id.
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`2 The preamble of claim 1 provides antecedent support for “the compatible remote
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`receiving station,” but this limitation is not essential to the structure of the claimed
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`IPR2014-00987
`Petitioner’s Reply To Patent Owner’s Response
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`Moreover, regardless of whether or not the preamble is construed as
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`
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`limiting, claim 1 recites “generating an image data signal representing the image
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`framed by the camera” and “sending the image data signal.” As admitted by PO,
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`such “image data signal that is generated by the processor is digital data in the
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`form of a signal” (Paper 16, 6-8). Therefore, the signal that is generated by the
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`processor, stored in memory, and subsequently transmitted to another device is a
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`digital data signal that is a representation of (e.g., derived from) the image framed
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`by the camera. Thus, claim 1 explicitly contemplates what PO calls a “derivative”
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`of the captured visual image (Paper 16 at 13:1-4). This aspect of claim 1 is
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`consistent with the ’871 Patent specification, which describes that once an optical
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`image is captured using a standard analog or digital camera device, signals
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`representing such a visual image are created, conditioned by a gray scale bit map,
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`converted to a half-tone image or other formats that are suitable for transmission,
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`and transmitted to another device (see, e.g., Ex. 1001, 5:29-59; 7:3-48; FIGS. 1-4;
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`Ex. 1008 at ¶¶ 35-38, 58-59).
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`
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`Claim 6 recites, in its preamble, “capturing a visual image, converting the
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`visual image to a digitized image data signal and transmitting digitized image data
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`“handheld self-contained cellular telephone and integrated image processing
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`system.”
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`signal via a cellular telephone network.” The preamble also recites converting the
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`IPR2014-00987
`Petitioner’s Reply To Patent Owner’s Response
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`visual image into “a digitized image data signal,” without any limitation regarding
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`what type of digitized image data signal is to be produced or the visual quality of a
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`visual image reconstructed using such a digitized image data signal. Claim 6 also
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`recites “a processor . . . for capturing and digitizing the framed image in a format
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`for transmission over the cellular telephone network.” The recitation of “a format
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`for transmission” does not place any restriction on the visual quality of the
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`“format,” as long as the format produces a signal that is suitable for transmission
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`over the cellular network. Therefore, PO’s arguments regarding the capability to
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`reconstruct images within an unspecified fidelity have no basis in claim 6.
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`2. PO’s Visual Image Transmission Limitation also lacks basis in the
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`specification of ’871 Patent: PO’s Visual Image Transmission Limitation
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`contradicts the ’871 Patent’s disclosure of converting a visual image into a half-
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`tone image or other format suitable for transmission (Ex. 1001, 5:29-59; 7:3-48;
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`FIGS. 1-4). In fact, PO’s expert admits that FIG. 4 of the ’871 Patent is a
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`representative implementation of its claimed apparatus and that FIG. 4 shows
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`“several compression and transmission protocols that are capable of being
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`‘reversed’ at the receiver in order to extract the captured framed image . . . (unlike
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`for a fax)” (Ex. 2001 at ¶ 37). FIG. 4 shows that the captured image data undergoes
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`a “gray scale bit map” process, and several additional processing operations in
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`each of the formats A-C (e.g., half-tone conversion, JPEG, Wavelet, G-III
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`IPR2014-00987
`Petitioner’s Reply To Patent Owner’s Response
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`encoding & Compression), as well as “Any Conversion” 77, “Any Compression”
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`67 and “Any Protocol” 75 in path D, before the processed signals are provided to
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`the communications interface module 83 for wireless transmission. (see also Ex.
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`1008 at ¶¶ 37-38, 63-64). Therefore, PO’s assertion that “the transmission of fax
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`data merely derived from the image is eliminated from the purview of [the claims]”
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`(Ex. 2001 at ¶ 48:6-8, emphasis in original; see also, id. at ¶38:6-8) is contradictory
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`to the admittedly representative implementation of FIG. 4 (id. at ¶37), which
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`requires each and every wirelessly transmitted signal to have undergone signal
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`processing and compression, and thus be “derived from the image.”
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`PO’s assertion further contradicts the ’871 Patent specification in other
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`ways. For example, FIG. 4 of the ’871 Patent shows data retrieved from memory
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`46 is subject to JPEG compression in path B (Ex. 1001, 7:23-36). As it was well
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`known in the art in the early 1990s, JPEG compression is a commonly used
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`method for lossy compression of digital images (see Ex. 1008 at ¶ 38). Similar to
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`fax images, JPEG-compressed images, once decompressed, can only reproduce a
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`degraded version of the captured image since part of image data is irreversibly lost
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`during JPEG compression and cannot be recovered (see also id. at 38, 59, 83).
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`Accordingly, JPEG-compressed images fit PO’s characterization of faxed images,
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`i.e., JPEG-compressed images are “incapable of being used to digitally reconstruct
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`the image framed by the camera because information needed for such
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`IPR2014-00987
`Petitioner’s Reply To Patent Owner’s Response
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`reconstruction has inherently been lost during such binary derivation” (Paper 16 at
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`14:18 to 15:1). Such distinctions between fax and JPEG are not support by the ’871
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`Patent specification.
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`
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`Therefore, PO’s arguments excluding fax transmissions from the scope of
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`claims 1 and 6 are baseless, and should be rejected.
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`3.
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`PO has taken conflicting infringement positions in litigation: PO’s
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`interpretation of the claims is also inconsistent with PO’s infringement allegations
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`in district court. For example, PO accuses MMS functionality of phones that
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`operate on the AT&T network (Ex. 1010 at 23; Ex. 1011 at 3, 6, 7, 13, 16), which
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`requires images to be compressed if larger than 1 megabyte (MB) (Ex. 1012 at 1-
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`2), despite the fact that reducing the size of an image below 1 MB results in data
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`loss. PO cannot interpret the claims narrowly to avoid prior art, and broadly for
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`infringement.
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`4. The specification of the ’871 Patent identifies fax transmissions as the
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`“subject invention”: The specification of the ’871 Patent, as originally filed,
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`explicitly states that the “invention” in the ’871 Patent must include facsimile
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`transmission of images. For example, the original text of paragraph [0011] states
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`that “the subject invention is an image capture, compression and transmission
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`system that is specifically designed to permit reliable visual image transmission
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`IPR2014-00987
`Petitioner’s Reply To Patent Owner’s Response
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`over land line or wireless communications using commercially available facsimile
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`transmission techniques” (see Ex. 1007 at 4-5, under heading “Replace paragraph
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`[0011] which reads”; emphasis added). During the prosecution of the ’871 Patent,
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`PO attempted to broaden the disclosure of the ’871 Patent by removing “the
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`subject invention,” but it is well settled law that an applicant cannot introduce new
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`matter during prosecution. See Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d
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`1338, 1344 (Fed. Cir. 2008). Therefore, PO’s assertions that facsimile processing
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`and transmission of images fall outside of the scope of the challenged claims are
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`meritless.
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`
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`5. Wilska’s device is capable of transmitting reproducible images: PO
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`argues that Wilska discloses a rudimentary system designed for sending black-and-
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`white documents to a fax machine (Paper 16 at 14:9-11), and incapable of
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`transmission of reproducible images (id. at 13:12-15). To the contrary, Wilska
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`specifically describes that captured images (e.g., of documents or of surroundings
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`such as those of a person (Ex. 1002 at 5:2-7)) are converted into a digital format
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`and stored (e.g., as a bitmap) (id. at 5:2-5; 7:21-26; 9:23-26; 9:28 to 10:2; Paper 1
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`at 26:8 -15 and 28:4-9), and transmitted to another recipient (Ex. 1002 at 9:28 to
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`10:7; 12:29 to 13:7; Paper 1 at 16:18 to 17:9). Wilska also describes that incoming
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`fax images, received in a corresponding manner via a cellular mobile phone, are
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`stored as bitmap images in memory and output on a display for viewing (Ex. 1002
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`at 10:2-7; Paper 1 at 35:7-8). Thus, Wilska does disclose the ability to digitally
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`IPR2014-00987
`Petitioner’s Reply To Patent Owner’s Response
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`reconstruct transmitted images.
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`
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`Further, as discussed above, Wilska’s cellular mobile phone can operate in a
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`digital GSM system (Ex. 1002 at 13:20-21; Paper 1 at 20:5-6), and includes email
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`functionality (Ex. 1002 at 13:29-30; Paper 1 at 35:16). Wilska describes that
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`digitized images can be transmitted via its disclosed email functionality when the
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`user digitizes the message on the display and selects a recipient from the phone list
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`for transmission (Ex. 1002 at 13:2-7 and 16-18; Paper 1 at 30:14-19), or when
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`digitized images stored in memory are later forwarded via email (Ex. 1002 at
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`12:23-26; Paper 1 at 17:12-16).
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`
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`Therefore, PO’s assertions that Wilska fails to disclose anything other than a
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`transmission over an analog fax system are without merit.
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`C.
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`PO’s stated reasons against the combination of Wilska and
`Yamagishi-114 are without merit
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`
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`PO contends that a POSITA would not have been motivated to combine
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`Wilska and Yamagishi-114 (Paper 16, 15:13-49:18) to arrive at the alleged
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`invention of the ’871 patent. Such contentions lack merit and should be dismissed.
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`The Petition demonstrates that a POSITA would have found it obvious or would
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`have been motivated to combine the teachings of Wilska and Yamagishi-114
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`because these references are in the same technical field of the ’871 Patent, address
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`similar technological issues in portable handheld devices, and disclose the same or
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`IPR2014-00987
`Petitioner’s Reply To Patent Owner’s Response
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`similar components, features or functions to capture, store, process, display and
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`transmit images (Paper 1 at 8:4 to 9-18, 14: 11-19; 51:4-57:12; and Ex. 1006, ¶¶
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`82-99). Also, particular considerations would have motivated a POSITA to
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`combine specific features of Yamagishi-114 with Wilska. For example, regarding
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`element [F1] of claim 1, the Petition and Parulski Declaration demonstrate that the
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`combination of Wilska and Yamagishi-114 would have made selective display and
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`transmission of stored image data obvious since such a person would have found it
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`convenient to use the pen, mouse, trackball or the touch-sensitive panel that is
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`described in Yamagishi-114 for selectively viewing an image, to retrieve a
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`particular stored image and/or to transmit that image (e.g., fax the image) to a
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`person or device that is selected by a user (Paper 1 at 18:6-11; Ex. 1006, Pars. 91-
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`92). The Petition similarly provides specific reasons and motivations to combine
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`other limitations that are obvious in view of Wilska and Yamagishi-114 (see e.g.,
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`Paper 1: 18:20 to 19:4, 21:20 to 22: 6, 27:15 to 28:2, 28:12 -14, 30:6-11, 32:18 to
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`33:3, 34:2 to 35:8; Ex. 1006 at ¶¶ 80-82, 89, 92, 97, 99).
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`
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`PO’s primary argument is that combining Wilska and Yamagishi-114 would
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`“necessitate a change in the principle of operation of Wilska” (Paper 16 at 16:17 to
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`27:6, 43:9 to 49:18). PO’s formulation of the principle of operation of Wilska is
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`misguided. Even if it was correct, however, the proposed combinations of Wilska
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`and Yamagishi-114 would not have necessitated a change to the principle of
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`IPR2014-00987
`Petitioner’s Reply To Patent Owner’s Response
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`operation of Wilska.
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`
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`1.
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`Arguments made during a reexamination proceeding of a U.S.
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`counterpart to Wilska are not relevant to Wilska’s principle of operation: PO relies
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`on statements made by Wilska’s patent owner during a reexamination proceeding
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`concerning U.S. Patent No. 6,427,078 (“Wilska ’078”) to support PO’s proposed
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`“Essential Principle of Operation of Wilska” (Paper 16 at 22 to 27). PO’s
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`arguments must be dismissed for at least the following reasons.
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`
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`First, arguments made during reexamination of claims of Wilska ’078 were
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`part of an effort by Wilska ’078’s patent owner to persuade the Patent Office that
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`the claims at issue in the reexamination were novel and non-obvious over Hassan
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`et al. (i.e., U.S. Patent No. 5,50,646 of Ex. 2004). Such arguments do not support
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`an assertion that the technical disclosure of Wilska cannot be combined with
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`Hassan, or other references that describe having a single processing unit.3
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`3 The Federal Circuit has held that “a reference can distinguish prior art in order to
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`show the novelty of an invention without teaching away from combining the prior
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`art with the invention disclosed in the reference.” In re Katz Interactive Call
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`Processing Patent Litig., 639 F.3d 1303, 1321-22 (Fed. Cir. 2011).
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`IPR2014-00987
`Petitioner’s Reply To Patent Owner’s Response
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`Second, while the claims of Wilska ’078 may have been considered novel
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`
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`over Hassan for reciting two processors, Wilska ’078’s patent owner never stated
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`that technical features disclosed in Wilska ’078 cannot be combined with those in
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`Hassan, or other references.4
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`
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`Third, arguments made by Wilska ’078’s patent owner pertained to the
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`understanding of a POSITA at the time of Wilska’s invention in 1994, which is
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`markedly different from a POSITA’s understandings and capabilities at the later
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`time of filing of the ’871 Patent in 1998, because the microprocessor technology
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`and wireless communication technology changed significantly from 1994 to 1998
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`