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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; 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
`
`
`
`
`
`
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`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION
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`
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`1 Case IPR2015-00541 has been joined with this proceeding.
`
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`
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`Case IPR2014-00987 on Patent No. 7,365,871
`Petitioner’s Response to Patent Owner’s Motion for Observation
`
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`Petitioner HTC and Petitioner Samsung hereby file this response to Patent
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`
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`Owner’s Motion for Observation Regarding Cross-Examination of Kenneth
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`Parulski, dated May 25, 2015, pursuant to the Board’s Scheduling Order, dated
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`December 9, 2014 (Paper 7).
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`RESPONSE TO OBSERVATION NUMBER 1
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`
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`The cited testimony is incomplete and does not properly reflect Mr.
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`Parulski’s testimony. Mr. Parulski has never denied that the ’871 patent has claims
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`that include limitations related to the transmission of images. Rather, consistent
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`with the cited testimony, Mr. Parulski’s position has always been that the ’871
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`patent “simply describes the use of conventional, well-known imaging related
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`formats and protocols such as the well-known Group-III facsimile encoding and
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`compression, and Group-III facsimile transmission protocol, JPEG and wavelet
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`compression and PC modems,” and that “there is no detailed discussion of the
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`designs and capabilities of the cellular telephone which connects to the cellular
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`interface 130 in FIG. 5; Figures 6A and 6B also only show a picture of a cellular
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`telephone 164.” Ex. 1008, ¶ 18. Mr. Parulski testified to this fact during his
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`deposition. See Ex. 2019 at 17:9-25.
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`RESPONSE TO OBSERVATION NUMBER 2
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`
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`The cited testimony is incomplete and does not properly reflect Mr.
`
`Parulski’s testimony. The cited testimony merely restates a portion of the
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`1
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`
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`Case IPR2014-00987 on Patent No. 7,365,871
`Petitioner’s Response to Patent Owner’s Motion for Observation
`
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`“wireless telephone” limitation of claim 12, which recites “the wireless telephone
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`being selectively operable to accept and digitize audio signals to be transmitted, the
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`wireless telephone being selectively operable to convert received digitized audio
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`signals into acoustic audio, the wireless telephone being selectively operable to
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`transmit and receive non-audio digital signals, the non-audio digital signals
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`including a selected digitized framed image.” In addition, the cited testimony is
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`consistent with Mr. Parulski’s position regarding the description in the ’871 patent
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`of well-known and conventional cellular telephones, as discussed above with
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`respect to Patent Owner’s first observation. See Ex. 1008, ¶ 18; Ex. 2019 at 17:9-
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`25.
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`RESPONSE TO OBSERVATION NUMBER 3
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`
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`The cited testimony is incomplete and does not properly reflect Mr.
`
`Parulski’s testimony. In addition, the relevant portions of Mr. Parulski’s testimony
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`do not support Patent Owner’s contention that Mr. Parulski’s definition of a
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`POSITA improperly excludes experience in the design of cellular communications
`
`devices. As discussed above with respect to Patent Owner’s first observation, Mr.
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`Parulski recognizes that certain claims recite limitations related to the transmission
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`of images and opines that the ’871 patent merely describes the use of well-known
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`and conventional cellular telephones. See Ex. 1008, ¶ 18; Ex. 2019 at 17:9-25.
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`Moreover, Mr. Parulski previously described and testified that his definition of a
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`- 2 -
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`Case IPR2014-00987 on Patent No. 7,365,871
`Petitioner’s Response to Patent Owner’s Motion for Observation
`
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`POSITA does not exclude experience in the design of cellular communications
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`devices. Ex. 1008, ¶ 19; Ex. 2019 at 13:1-15:21.
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`RESPONSE TO OBSERVATION NUMBER 4
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`
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`The cited testimony is incomplete and does not properly reflect Mr.
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`Parulski’s testimony. In addition, the relevant portions of Mr. Parulski’s testimony
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`do not support Patent Owner’s contention that the definition of a POSITA must
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`include experience related to the design of cellular communications devices or that
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`Mr. Parulski does not qualify as an expert with respect to the ’871 patent. For
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`example, Mr. Parulski testified that “I don’t believe it would be necessary to be an
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`expert in cellular communications technologies or devices in order to be a person
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`of ordinary skill in the art for the ’871 patent,” because the ’871 patent relates to
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`transmitting digital image data over standard cellular and telephone company
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`facilities, and does not describe the details of a cellular telephone. Ex. 2019 at
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`17:9-25; see also Ex. 1008, ¶ 18. Furthermore, the cited testimony follows Mr.
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`Parulski’s position that he is a POSITA with respect to the ’871 patent, even if
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`experience in cellular communications devices is required. Ex. 2019 at 13:1-
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`15:21; see also Ex. 1008, ¶¶ 10, 11, 18-20.
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`RESPONSE TO OBSERVATION NUMBER 5
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`
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`The cited testimony is incomplete and does not properly reflect Mr.
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`Parulski’s testimony. Nor does the testimony support Patent Owner’s contention
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`- 3 -
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`
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`Case IPR2014-00987 on Patent No. 7,365,871
`Petitioner’s Response to Patent Owner’s Motion for Observation
`
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`regarding the construction of “non-audio digital signals,” as recited in claim 12.
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`The cited testimony was part of an exchange between Patent Owner and Mr.
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`Parulski regarding Patent Owner’s position that Petitioner’s construction of “non-
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`audio digital signals” creates a redundancy. Ex. 2019 at 19:3-22:6. During this
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`exchange, Mr. Parulski explained that there is no redundancy because “digitized
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`frame image is one type of non-audio digital signal and that there can be other
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`types of non-audio digital signals, such as, for example, text.” Id. at 19:3-13. Mr.
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`Parulski further explained that “when it says the non-audio digital signals including
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`a selected digitized frame image, that is being more specific in pointing to the fact
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`that the non-audio digital signal must include a digitized frame image.” Id. at
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`21:11-22:6.
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`RESPONSE TO OBSERVATION NUMBER 6
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`
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`The cited testimony is incomplete and does not properly reflect Mr.
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`Parulski’s testimony. The cited testimony is consistent with Mr. Parulski’s
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`statements in Paragraph 24 of the 2015 Parulski Decl. (Ex. 1008), which is that
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`PO’s interpretation of “non-audio digital signal” ignores the use of Group-III fax in
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`the ’871 patent. Mr. Parulski has never denied that some embodiments allow for
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`conventional compression methods other than Group-III fax. Thus, the relevant
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`portions of Mr. Parulski’s testimony do not support Patent Owner’s contention
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`regarding the construction of “non-audio digital signal.” See Ex. 1008, ¶¶ 23, 25,
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`- 4 -
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`
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`Case IPR2014-00987 on Patent No. 7,365,871
`Petitioner’s Response to Patent Owner’s Motion for Observation
`
`
`26.
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`RESPONSE TO OBSERVATION NUMBER 7
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`
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`The cited testimony is incomplete and does not properly reflect Mr.
`
`Parulski’s testimony. Nor does it support Patent Owner’s contention regarding the
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`construction of “non-audio digital signals.” The cited testimony merely restates a
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`portion of the specification of the ’871 patent. See Ex. 1001 at 1:64-67. In
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`addition, Patent Owner ignores Mr. Parulski’s testimony that this portion of the
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`’871 patent is not “describing the state of the art at the time,” because at the time
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`the ’871 patent was filed, there was existing digital transmission modes such as
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`GSM, and “there wasn’t a need to speculate about the possibility of future digital
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`modes. There were actually systems that had been developed and were for sale
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`that provided digital transmission and which allowed digital images to be
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`transmitted digitally.” Ex. 2019 at 31:11 - 32:1.
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`RESPONSE TO OBSERVATION NUMBER 8
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`
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`The cited testimony is incomplete and does not properly reflect Mr.
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`Parulski’s testimony. Nor does it support Patent Owner’s contention regarding the
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`construction of “visual image transmission.” Mr. Parulski’s testimony merely
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`points out that, while there is no explicit claim language excluding Group-III fax
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`from the purview of the claims, Patent Owner’s and Dr. Melendez’s interpretation
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`of the claims “seek to remove prior art that related to Group-III fax and distinguish
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`- 5 -
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`
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`Case IPR2014-00987 on Patent No. 7,365,871
`Petitioner’s Response to Patent Owner’s Motion for Observation
`
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`over that prior art,” and that, “therefore, they would need to also exclude the same
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`Group-III fax descriptions in the ’871 patent from the purview of the claims.” Id.
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`at 51:7-56:1.
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`RESPONSE TO OBSERVATION NUMBER 9
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`
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`The cited testimony is incomplete and does not properly reflect Mr.
`
`Parulski’s testimony. Nor does it support Patent Owner’s contention regarding the
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`construction of “visual image transmission.” The cited testimony is consistent
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`with paragraph 38 of the 2015 Parulski Decl. (Ex. 1008), which states, for
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`example, that “the PO Response and Melendez Declaration do not describe any
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`way of obtaining an ‘image data signal’ or ‘digitized framed image’ that is NOT
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`‘merely derived from the image.’” For example, Mr. Parulski testified that, like
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`Group-III fax, JPEG compression results in a derivative of a captured image
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`because JPEG compression is lossy. See Ex. 2019 at 56:3-58:1, 64:8-65:2, 68:3-
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`19. Mr. Parulski further testified that there is no distinction between JPEG and
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`Group-III fax because both JPEG and Group-III fax images would be displayed
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`identically on the transmitting device and the receiving device. See id. at 56:3-
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`62:5, 64:8-65:2, 66:19-68:19. Mr. Parulski also pointed out that it is irrelevant that
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`Group-III fax would result in a black and white representation rather than a color
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`representation, because “JPEG also is capable of storing and transmitting black and
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`white images.” Id. at 61:11-62:5.
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`- 6 -
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`
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`Case IPR2014-00987 on Patent No. 7,365,871
`Petitioner’s Response to Patent Owner’s Motion for Observation
`
`
`RESPONSE TO OBSERVATION NUMBER 10
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`
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`The cited testimony is incomplete and does not properly reflect Mr.
`
`Parulski’s testimony. The testimony is consistent with Mr. Parulski’s statements in
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`paragraph 44 of the 2015 Parulski Decl. (Ex. 1008), including that none of the
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`claims in Wilska recite a second data processing unit. The cited testimony only
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`concerns specific embodiments in Wilska’s specification, and not the claims of
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`Wilska, which recite many features, none of which are a second processor. Ex.
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`2019 at 72:6-74:9; see also Ex. 1008, ¶ 44 (citing Ex. 1002 at 15:2-7). Therefore,
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`the relevant portions of Mr. Parulski’s testimony do not support Patent Owner’s
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`contention regarding Wilska.
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`RESPONSE TO OBSERVATION NUMBER 11
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`
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`The cited testimony is incomplete and does not properly reflect Mr.
`
`Parulski’s testimony. Nor does the testimony support Patent Owner’s contentions
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`regarding Wilska. The testimony is consistent with Mr. Parulski’s statements in
`
`the 2015 Parulski Decl., including that it is a design choice to use one processor
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`instead of multiple processors, as functions performed by a smartphone with
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`multiple processors can also be performed by a smartphone with a single
`
`processor. See Ex. 1008, ¶¶ 45-47. In addition, Mr. Parulski did not state that all
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`smartphones use multiple processors, as Patent Owner suggests. Rather, Mr.
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`Parulski stated that he is aware of “some” smartphones that use multiple
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`- 7 -
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`
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`Case IPR2014-00987 on Patent No. 7,365,871
`Petitioner’s Response to Patent Owner’s Motion for Observation
`
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`processors. See Ex. 2019 at 76:13-22
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`RESPONSE TO OBSERVATION NUMBER 12
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`
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`The cited testimony is incomplete and does not properly reflect Mr.
`
`Parulski’s testimony. The testimony is consistent with Mr. Parulski’s statements in
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`paragraph 56 of the 2015 Parulski Decl. (Ex. 1008). Also, Patent Owner ignores
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`Mr. Parulski’s testimony that Attachment DD was published in August of 1995,
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`some years before filing the ’871 patent in 1998, and that “certainly GSM systems
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`were capable of network level architectures of transmitting digital data, although
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`they were primarily used for speech at that time.” Ex. 2019 at 78:6-80:16. Mr.
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`Parulski further clarified that Attachment DD does not mischaracterize GSM
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`technology, but instead that Patent Owner’s counsel may be misinterpreting the
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`statement in Attachment DD “to indicate that GSM was exclusively for mobile
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`speech.” Id. According to Mr. Parulski, “it certainly was not exclusively used for
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`speech,” [i]t was used for SMS, text messages,” “[i]t was used for e-mail,” and
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`“[i]t was used for e-mail attachments.” Id.; see also id. at 35:15-37:25, 41:11-
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`45:11, 81:2-87:4, 107:19-112:23.
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`RESPONSE TO OBSERVATION NUMBER 13
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`
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`The testimony cited above is incomplete and does not properly reflect Mr.
`
`Parulski’s testimony. The testimony is consistent with Mr. Parulski’s statements in
`
`paragraph 56 of the 2015 Parulski Decl. (Ex. 1008). In addition, while it is true
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`- 8 -
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`
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`Case IPR2014-00987 on Patent No. 7,365,871
`Petitioner’s Response to Patent Owner’s Motion for Observation
`
`
`that Mr. Parulski testified that “[e]xactly how the video over GSM operated is not
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`described here [in Attachment HH to Exhibit 1008],” Mr. Parulski testified that the
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`attachment shows that “video over GSM was demonstrated in 1995.” Ex. 2019 at
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`83:12-87:4. Mr. Parulski went on to explain that “a number of references,
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`including Wilska, describ[e] how the image can be captured with a camera and
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`transmitted, for example, as an e-mail attachment over a GSM digital network.”
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`Id. at 84:17-85:23; see also id. at 35:15-37:25, 41:11-45:11, 78:6-80:16, 81:2-87:4,
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`107:19-112:23.
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`
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`Respectfully submitted,
` /Bing Ai/
`Lead Counsel,
`Bing Ai, Reg. No. 43,312
`
`Back-Up Counsel
`Cheng C. (Jack) Ko, Reg. No. 54,227
`Kevin Patariu, Reg. No. 63,210
`Babak Tehranchi, Reg. No. 55,937
`
`PERKINS COIE LLP
`
`Counsel for HTC Corporation and HTC
`America, Inc.
`
`Dated: June 9, 2015
`
`
`
`
` /Steven L. Park/
`Lead Counsel,
`Steven L. Park, Reg. No. 47,842
`
`Back-Up Counsel
`Naveen Modi, Reg. No. 46,224
`Elizabeth L. Brann, Reg. No. 63,987
`
`
`PAUL HASTINGS LLP
`
`Counsel for Samsung Electronics Co., Ltd.
`and Samsung Electronics America, Inc.
`
`Dated: June 9, 2015
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`- 9 -
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`
`
`Case IPR2014-00987 on Patent No. 7,365,871
`Petitioner’s Response to Patent Owner’s Motion for Observation
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true copy of the foregoing
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION FOR
`OBSERVATION was served this 9th day of June 2015 by electronic mail upon the
`following:
`LEAD COUNSEL
`Robert C. Curfiss
`19826 Sundance Drive
`Humble, Texas 77346-1402
`bob@curfiss.com
`
`
`BACK-UP COUNSEL
`David O. Simmons
`IVC Patent Agency
`P.O. Box 26584
`Austin, Texas 77755
`Dsimmons1@sbcglobal.net
`
`Gregory S. Donahue
`DiNovo Price Ellwanger & Hardy LLP
`7000 North MoPac Expressway , Suite 350
`Austin, TX 78731
`gdonahue@dpelaw.com
`
`
`Respectfully submitted,
` /Bing Ai/
`Lead Counsel,
`Bing Ai, Reg. No. 43,312
`
`Back-Up Counsel
`Cheng C. (Jack) Ko, Reg. No. 54,227
`Kevin Patariu, Reg. No. 63,210
`Babak Tehranchi, Reg. No. 55,937
`
`PERKINS COIE LLP
`
`Counsel for HTC Corporation and HTC
`America, Inc.
`
`Dated: June 9, 2015
`
`
`
`
` /Steven L. Park/
`Lead Counsel,
`Steven L. Park, Reg. No. 47,842
`
`Back-Up Counsel
`Naveen Modi, Reg. No. 46,224
`Elizabeth L. Brann, Reg. No. 63,987
`
`
`PAUL HASTINGS LLP
`
`Counsel for Samsung Electronics Co., Ltd.
`and Samsung Electronics America, Inc.
`
`Dated: June 9, 2015
`
`
`
`
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