`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`HTC CORPORATION and HTC AMERICA, INC.
`Petitioners
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`v.
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`E-WATCH, INC. and E-WATCH CORPORATION
`Patent Owner
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`CASE: To Be Assigned
`Patent No. 7,365,871 B2
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`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,365,871 B2
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`TABLE OF CONTENTS
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`Page
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`EXHIBIT LIST ....................................................................................................... iii
`I.
`INTRODUCTION .......................................................................................... 1
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(B) ............................ 1
`A.
`REAL PARTY IN INTEREST ............................................................ 1
`B.
`RELATED MATTERS ........................................................................ 1
`C. NOTICE OF COUNSEL AND SERVICE INFORMATION ............. 2
`III. REQUIREMENTS FOR INTER PARTES REVIEW ................................... 2
`A. GROUND FOR STANDING ............................................................... 2
`B.
`IDENTIFICATION OF CHALLENGE ............................................... 3
`1.
`Claims Challenged ..................................................................... 3
`2.
`The Prior Art .............................................................................. 3
`3.
`Supporting Evidence Relied Upon For The Challenge ............. 3
`4.
`Statutory Ground(s) Of Challenge And Legal Principles .......... 3
`5.
`Claim Construction .................................................................... 3
`6.
`How Claims Are Unpatentable Under Statutory Grounds
`Pursuant to 37 C.F.R. § 42.104 (b)(2) ....................................... 3
`IV. OVERVIEW OF THE 871 PATENT ............................................................. 4
`A.
`PRIORITY DATE OF THE CLAIMS OF THE 871 PATENT .......... 4
`B.
`SUMMARY OF THE 871 PATENT ................................................... 4
`C.
`SUMMARY OF PROSECUTION FILE HISTORY........................... 5
`D.
`PROPOSED CLAIM CONSTRUCTION ............................................ 6
`THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE 871 PATENT IS UNPATENTABLE ...................... 7
`A.
`IDENTIFICATION OF THE REFERENCES AS PRIOR ART ......... 7
`B.
`SUMMARY OF INVALIDITY POSITIONS ................................... 11
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`V.
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`-i-
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`TABLE OF CONTENTS
`(continued)
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`Page
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`
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`C. DIFFERENT INVALIDITY POSITIONS AGAINST EACH
`CLAIM ARE INDEPENDENT, DISTINCTIVE AND NOT
`REDUNDANT ................................................................................... 12
`VI. DETAILED EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY OF CLAIMS 1-8 AND 12-15 OF 871
`PATENT ....................................................................................................... 14
`A. GROUND 1: CLAIMS 1-8 AND 12-15 ARE OBVIOUS
`UNDER 35 U.S.C. § 103(a) OVER WILSKA AND
`YAMAGISHI-114 .............................................................................. 14
`B. GROUND 2: CLAIMS 1-8 AND 12-15 ARE OBVIOUS
`UNDER 35 U.S.C. § 103(a) OVER MCNELLEY AND
`YAMAGISHI-992 .............................................................................. 36
`VII. CONCLUSION ............................................................................................. 60
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`-ii-
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`EXHIBIT LIST
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`Ex. 1001 U.S. Patent No. 7,365,871 B2 to David A. Monroe (“the 871 Patent”)
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`Ex. 1002 U.K. Patent Application GB 2,289,555 A to Wilska et al. (“Wilska”)
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`Ex. 1003 Certified Translation of the Japanese Patent Publication No. H06-
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`176114 to Yamagishi (“Yamagishi-114”), Certification of English
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`Translation and the Original Japanese Document
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`Ex. 1004 U.S. Patent No. 5,550,754 B2 to McNelley et al. (“McNelley”)
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`Ex. 1005
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`
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`European Patent Application Publication No. 0594992 A1 to
`Yamagishi (“Yamagishi-992”)
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`Ex. 1006 Declaration of Kenneth Parulski including Attachments A-D
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`Ex. 1007
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`Selected Portions of the 871 Patent Prosecution File History
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`-iii-
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`

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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871 B2
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`I.
`
`INTRODUCTION
`
`Pursuant to 35 U.S.C. § 311 and 37 C.F.R. § 42.100, HTC Corp. and HTC
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`America, Inc. (collectively “Petitioners”) petition for inter partes review of claims
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`1-8 and 12-15 of U.S. Pat. No. 7,365,871 B2 (“the 871 Patent,” Ex. 1001). E-
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`5
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`Watch, Inc. and E-Watch Corporation are collectively referred to as Patent Owner
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`because the 871 Patent is assigned to E-Watch, Inc. based on USPTO records and
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`E-Watch Corporation claims to be the exclusive licensee of the 871 Patent in their
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`complaint filed under Case No. 2:13-cv-01063 in the Eastern District of Texas.
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`This Petition shows that there is a reasonable likelihood that Petitioners will
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`prevail with respect to at least one of the claims 1-8 and 12-15. These claims are
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`unpatentable under 35 U.S.C. §103. The Office is respectfully requested to institute
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`a trial for inter partes review and to cancel claims 1-8 and 12-15.
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`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(B)
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`A. REAL PARTY IN INTEREST
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`15
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`HTC Corporation and HTC America, Inc. are the real parties in interest.
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`B. RELATED MATTERS
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`Patent Owner is asserting the 871 Patent and U.S. Pat. No. 7,643,168 B2
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`(“the 168 Patent”) against Petitioners in an on-going patent infringement lawsuit in
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`E-WATCH, INC. and E-WATCH CORPORATION et al. v. HTC CORPORATION
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`20
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`and HTC AMERICA, INC. et al., 2:13-cv-01063 filed in the Eastern District of
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871 B2
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`Texas on Dec. 9, 2013, and is also asserting these patents against other entities in 9
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`other lawsuits. A petition for inter partes review under Case IPR2014-00439 was
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`filed by IRON DOME LLC on Feb. 18, 2014 and is pending. In addition,
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`Petitioners are pursuing a separate petition for inter partes review of the 168 Patent.
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`5
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`C. NOTICE OF COUNSEL AND SERVICE INFORMATION
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`Pursuant to 37 C.F.R. §§ 42.8(b)(3) and 42.10(a), Petitioners appoint Bing
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`Ai (Reg. No. 43,312) as lead counsel, and Cheng C. (Jack) Ko (Reg. No. 54,227),
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`Kevin Patariu (Reg. No. 63,210) and Babak Tehranchi (Reg. No. 55,937) as back-
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`up counsel, all at the mailing address: Perkins Coie LLP, 11988 El Camino Real,
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`10
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`Suite 350, San Diego, CA 92130; contact numbers: 858-720-5700 (phone), 858-
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`720-5799 (fax); and the following email for service and all communications:
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`HTC-EWATCH-IPR-Service@perkinscoie.com.
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`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney executed by Petitioners for
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`appointing the above designated counsel is concurrently filed.
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`15
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`III. REQUIREMENTS FOR INTER PARTES REVIEW
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`This Petition complies with all requirements under 37 C.F.R. § 42.104.
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`A. GROUND FOR STANDING
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`Pursuant to 37 C.F.R. § 42.104(a), Petitioners hereby certify that the 871
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`Patent is available for inter partes review and that Petitioners are not barred or
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`20
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`estopped from requesting inter partes review challenging claims of the 871 Patent.
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871 B2
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`B.
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`IDENTIFICATION OF CHALLENGE
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`Pursuant to 37 C.F.R. § 42.104(b), the precise relief requested is that the
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`Patent Trial and Appeal Board cancel claims 1-8 and 12-15 of the 871 Patent.
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`1.
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`Claims Challenged
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`5
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`Claims 1-8 and 12-15 of the 871 Patent are challenged in this Petition.
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`2.
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`The Prior Art
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`The prior art references relied upon are Wilska (Ex. 1002), Yamagishi-114
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`(Ex. 1003), McNelley (Ex. 1004) and Yamagishi-992 (Ex. 1005) (see Exhibit List).
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`3.
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`Supporting Evidence Relied Upon For The Challenge
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`The Declaration by Kenneth Parulski (Ex. 1006) and other supporting
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`evidence in the Exhibit List are filed herewith.
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`4.
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`Statutory Ground(s) Of Challenge And Legal Principles
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`The review of the 871 Patent is governed by pre-AIA 35 U.S.C. §§ 102 and
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`103 that were in effect before Mar. 16, 2013. Further, 35 U.S.C. §§ 311 to 319 that
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`15
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`took effect on Sep. 16, 2012 govern this inter partes review.
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`5.
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`Claim Construction
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`The 871 Patent is an unexpired patent. In inter partes review, a claim in the
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`871 Patent shall be given its broadest reasonable construction in light of the
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`specification of the patent in which it appears. 37 C.F.R. § 42.100(b).
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`20
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`6. How Claims Are Unpatentable Under Statutory Grounds
`Pursuant to 37 C.F.R. § 42.104 (b)(2)
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`-3-
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871 B2
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`Section VI provides an explanation of how claims 1-8 and 12-15 of the 871
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`Patent are unpatentable, including the identification of where each element of the
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`claim is found in the prior art patents or printed publications..
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`IV. OVERVIEW OF THE 871 PATENT
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`5
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`A.
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`PRIORITY DATE OF THE CLAIMS OF THE 871 PATENT
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`The application for the 871 Patent was filed on Jan. 3, 2003 as a divisional
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`of Appl. No. 09/006,073 filed Jan. 12, 1998 (abandoned). Therefore, the priority
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`date of the claims of the 871 Patent is no earlier than Jan. 12, 1998.
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`B.
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`SUMMARY OF THE 871 PATENT
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`The 871 Patent describes an image capture, conversion, compression,
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`storage and transmission system (Abstract). The system includes a camera and a
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`transmission interface; the camera captures an image that can be transmitted to
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`another device using, e.g., cellular transmission, radio signal, satellite transmission
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`and hard line telephonic transmission (4:58-5:2). Captured images can be from a
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`digital camera, an analog camera or a video camera (e.g., a camcorder) (1:37-39).
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`Fig. 4 of the 871 Patent illustrates the data path after an image is captured by
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`the camera 10 and conditioned by the gray scale bit map 16 (7:3-48). The device
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`includes a memory 46, an optional viewer 48, and a format select interface switch
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`60 that permits either automated or manual selection of the transmitting protocol,
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`such as a Group-III facsimile format, a PC modem protocol, a wavelet compressor
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871 B2
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`or others (Id.). Depending on the selected protocol, the signal output is generated
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`and provided to a communications interface module 83 for transmission (Id.).
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`The claims recite handheld self-contained cellular telephone and integrated
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`image processing systems (claims 1-5), handheld cellular telephones having an
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`5
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`integrated electronic camera (claims 6-8), combinations of handheld wireless
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`telephone and digital camera (claims 12-15). Claim 1 recites a housing, an image
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`capture device, a display, a processor, a memory, alphanumeric input keys, a user
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`interface, a telephone system, a wireless communication device, a power supply.
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`C.
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`SUMMARY OF PROSECUTION FILE HISTORY
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`10
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`The original examination of the 871 Patent included seven Office Actions,
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`several examiner interviews and an examiner amendment. Notably, in response to
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`the Sep. 27, 2004 Office Action, Patent Owner filed an affidavit under 37 C.F.R. §
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`1.131 to contend an earlier invention date of Mar. 18, 1993, nearly five (5) years
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`before its earliest priority date of Jan. 12, 1998.
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`The Office rejected the claims multiple times based on prior art and Patent
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`Owner countered with multiple claim amendments. In the response of Sep. 7, 2007,
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`Patent Owner amended claims and deleted certain paragraphs from the
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`specification (see Ex. 1007) that describe prior art teachings, and constitute
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`admitted prior art (“APA”) by Patent Owner.
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`None of the cited references in this Petition was before the Office during the
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871 B2
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`original examination. Therefore, the 871 Patent was granted based on an
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`incomplete record of relevant prior art.
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`D.
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`PROPOSED CLAIM CONSTRUCTION
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`Petitioners propose construction of claim terms below pursuant to the
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`5
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`broadest reasonable interpretation (BRI) standard for inter partes review and to
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`comply with 37 C.F.R. §§ 42.100(b) and 42.104(b)(3) and for the sole purpose of
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`this Petition. Thus, the proposed BRI claim constructions do not necessarily reflect
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`appropriate claim constructions to be used in litigation and other proceedings
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`where a different claim construction standard applies.
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`10
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`Framing an image: This term appears in different variations: “an image
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`framed by the camera” (claim 1); “framing the image to be captured” (claims 2, 9,
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`12); “visually framing a visual image to be captured (claim 6); framing the visual
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`image” (claim 7). The 871 Patent does not explicitly describe these terms in the
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`context of the claimed language. Further, some references to a “frame” in the 871
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`15
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`Patent specification appear unrelated to the use of this term in the claims, e.g., the
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`description of frames of a received analog video signal from what appears to be an
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`analog input connector of the device (7:49 to 8:23).
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`The specification provides the following references that describe a frame:
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`“an image capture and transmission system captures either one or more single
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`frame analog images or digital images or image data or visual data or visual
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871 B2
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`images” (4:58-62). “The display unit 96 … provides … a visual read-out of the
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`status of the collection and transmission of a selected frame” (8:39-47). “[T]he
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`processor accesses the RAM and manipulates the data representing each frame
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`image … the processor executes a code for performing a bi-level compression of
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`5
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`the data and the signal representing the frame data is output.” (10:9-21).
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`Based on the above, the proposed BRI construction for this term is
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`“obtaining an image of an object using a viewfinder, or providing data representing
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`an image of an object on a display.”
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`Other Claim Terms: Petitioners propose the ordinary and customary
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`meaning for each of the remaining terms in claims 1-8 and 12-15 of the 871 Patent.
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`V. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE 871 PATENT IS UNPATENTABLE
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`Claims 1-8 and 12-15 are unpatentable under 35 U.S.C. § 103(a) for merely
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`reciting predictable and obvious combinations of elements that were well known
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`15
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`many years prior to the 1998 priority date of the 871 Patent (see also Ex. 1006,
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`Pars. 29-70) and were taught or suggested by the cited prior art in this Petition.
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`A.
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`IDENTIFICATION OF THE REFERENCES AS PRIOR ART
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`As detailed below, the cited prior art references are within the same specific
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`technical field, and relate to the claimed subject matter, of the 871 Patent. All cited
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`20
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`references were published more than one year prior to the Jan. 12, 1998 priority
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`date of the 871 Patent and, therefore, are prior art under 35 U.S.C. § 102(b). The
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871 B2
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`cited references cannot be sworn behind by a declaration under 37 C.F.R. §1.131.
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`In addition, none of the cited references were before the Office in the original
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`examination and are presented to the Office for the first time.
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`Wilska (U.K. Appl. No. GB 2,289,555, published Nov. 22, 1995) describes
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`5
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`a portable, hand-held device for personal communication, data collection, picture
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`taking and data processing (Abstract). Figs. 1-3 illustrate internal and external
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`components, including a data processing unit (2), a display (9), user interface (10,
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`11), a cellular mobile telephone and modem (17), memory unit(s) (13), power
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`source (e.g., a battery) (3) and application software (Id.).
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`10
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`The device includes a camera unit (14) that is fixedly integrated into the
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`device, or implemented as a removable component (e.g., a PCMCIA card)
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`(Abstract; 4:28-30; 5:9-10; 7:21-23). The camera unit (14) includes a camera (14a),
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`e.g., a CCD or a semiconductor image sensor, and optics (14b) connected thereto
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`(Abstract; 7:9-10). Fig. 5 of Wilska provides further details of the camera unit.
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`15
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`Wilska’s device allows the use of cellular phone services, data and/or speech
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`transmission, facsimile services for transmission of images, electronic mail, short
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`message service, camera functions to record images, and other functions (6:4-12).
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`
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`Yamagishi-114 (JP Publication No. H06-176114, published Jun. 24, 1994)
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`describes a device that includes a camera and an image processing system and can
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`20
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`be implemented in a portable wireless phone (Abstract, 18:23-24; Fig. 14). Fig. 1
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871 B2
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`shows the device components: lens (10), shutter (12), A/D converter (16), display
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`(64), control units (20, 40, 60), image memory (24), recording media (90) (e.g.,
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`hard disk, removable memory card), program memory (62), compression unit (22),
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`battery (70), communication unit (100), keyboard (Abstract), operating means (66)
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`5
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`(e.g., a mouse, a touch-sensitive panel, switches, keys) to operate the camera
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`(18:17-19), allow selection of items (7:16-18) and entry of commands (5:10-11).
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`Some components (e.g., memory, communication units) can be designed as
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`removable modules or as fixed sections of the device (10:9-13; 19:5-29). In a
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`“through-mode” of operation, the display (or a section of it) operates as a
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`10
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`viewfinder to continuously show images that are picked up by the camera (7:18-19;
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`8:18-23). The device can also operate in a “monitor-mode,” where a stored image
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`is selected, read from memory and viewed on the display (7:18-21).
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`Fig. 14 illustrates a device which combines a digital camera and a mobile
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`phone. The telephone may operate normally as a wireless phone for sending and
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`15
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`receiving telephone calls (18:36-45), and as an electronic camera for taking,
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`storing and viewing images (Id.). The device’s communication module can
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`communicate bi-directionally with external devices to transfer data and control
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`signals based on appropriate communication protocols (5:38-47).
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`Yamagishi-992 (EP Appl. No. 0594992, published May 4, 1994) describes
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`20
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`an information signal processing apparatus with an electronic camera that allows
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871 B2
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`capture, storage and transmission of images and sound (Abstract; 7:35-41). The
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`device in Fig. 43 includes a lens, a shutter, two A/D converters, a microphone,
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`image/sound memory (3024), recording media (3100), power supply, system
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`controlling circuit, display devices, compressing-expanding circuit, audio output
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`5
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`device, modem and switches (3056) for command entry, selection of operational
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`modes and executing camera operations (121:21-58). The device has three modes
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`of operation: recording, reproduction and transmission, that respectively allow
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`selective capture, viewing and transmission of images/sound by the device (122:23
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`to 126:3; Figs. 44-46). Image/sound data is transmitted to an external device by a
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`10
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`modem, controlled by the system controlling circuit (118:58 to 119:6). The device
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`can be part of a portable telephone set, and can use a wireless line for
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`transmission/reception of control and data signals (120:15-25; 147:3-13).
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`
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`McNelley (Pat. No. 5,550,754, issued Aug. 27, 1996) describes a handheld
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`telecamcorder: a combination portable camcorder and video-conferencing device
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`15
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`that operates over a telephone network (Abstract; 2:43-49). The device includes a
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`display that can function as a viewfinder in video-graphing objects (Abstract). The
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`communication electronics can establish a connection over a wireless telephone
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`network to transmit video/audio signals from the device while presenting video
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`signals and audio signals that arrive over the network (Abstract; 14:16-37).
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`20
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`Figs. 8 and 9 show a telecamcorder that includes a camera (102), a
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871 B2
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`microphone (114), a light (152), a display (100), a viewfinder (166), controls (164)
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`for zoom and record/playback functions, a handgrip (160) (housing the batteries), a
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`speaker (112) and an antenna (196) for transmission and reception of images and
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`sound (6:35 to 7:24). Fig. 9 depicts the integrated handset (of Fig. 8) that includes
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`5
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`dialing control (186) and telecamcorder controls (188) (8:10-18). Fig. 12 shows
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`one implementation where the main housing (148) can move vertically along the
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`rods (216), and the camera (102) can rotate via the handle (226) (8:64 to 9:13).
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`Fig. 30 shows some of the telecamcorder’s components. A controller (or
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`mode selector) mediates the data flow (21:7-40). Video images captured by a video
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`10
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`camera are provided to video camera electronics that provide the video camera
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`with proper supply voltages and control signals and process the output of the
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`camera (Id.). If the device is used to make a recording, the controller can condition
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`the audio/video signals, and route them to recording/playback electronics, which
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`process the signals for storage in memory (Id.). In a teleconferencing mode, the
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`15
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`controller routes the signal to a network access (or “communication electronics
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`package”), which establishes contact with a network, sends properly processed
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`audio/video signals to the network and receives audio/video (Id.). The controller
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`routes the received signals to speaker electronics and a speaker for audio
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`reproduction, and to display electronics and a display for display of video (Id.).
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`20
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`B.
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`SUMMARY OF INVALIDITY POSITIONS
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`-11-
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871 B2
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`The cited prior art references disclose all the limitations of claims 1-8 and
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`12-15 of the 871 Patent and render each claim as a whole obvious and unpatentable
`
`under 35 U.S.C. § 103(a). The combination of Wilska and Yamagishi-114
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`illustrates that claims 1-8 and 12-15 recite features in combinations that were
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`5
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`known or obvious to a person of ordinary skill in the art and are thus unpatentable.
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`Additionally, the combination of McNelley and Yamagishi-992 also illustrates
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`these claims merely recite known features in obvious combinations. As discussed
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`in Section V-C, each prior art combination in this Petition provides a distinct
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`perspective to support obviousness and unpatentability of claims 1-8 and 12-15.
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`10
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`The Declaration by Mr. Parulski (Ex. 1006), an expert with considerable
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`knowledge and extensive experience in this technical field, confirms and supports
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`the Petitioners’ invalidity positions, and provides details as to how the claimed
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`technology was well known many years before the priority date of the 871 Patent.
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`C. DIFFERENT INVALIDITY POSITIONS AGAINST EACH
`CLAIM ARE INDEPENDENT, DISTINCTIVE AND NOT REDUNDANT
`
`15
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`This Petition uses four references to form two independent and distinct
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`invalidity positions against claims 1-8 and 12-15 of the 871 Patent. The first
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`position combines Wilska with Yamagishi-114, and the second position combines
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`Yamagishi-992 with McNelley. These references are selected because of their
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`20
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`distinctive teachings that cover different technical aspects of the 871 Patent and
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`provide the Office and the public with a fuller view of the prior art landscape that
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871 B2
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`was not discussed or duly considered during the original examination.
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`With regard to the first combination based on Wilska and Yamagishi-114,
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`Wilska describes a handheld, all-in-one camera, phone, fax, and computing device
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`that captures images and transmits the captured images via the integrated cellular
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`phone line. Yamagishi-114 provides additional technical details and supplements
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`the disclosures in Wilska. With regard to the second position based on McNelley
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`and Yamagishi-992, McNelley describes a handheld telecamcorder that can be
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`used for both recording videos and videoconferencing, which emphasizes live
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`reception and transmission of video and audio images. Yamagishi-992 provides
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`detailed step-by-step operations of a handheld camera that can be implemented in a
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`portable phone and supplements the disclosures in McNelley.
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`In the spirit of 35 C.F.R. § 42.1(b) to facilitate “just, speedy and inexpensive
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`resolution”, Petitioners diligently minimized the number of references, out of
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`myriad highly relevant references (see e.g., Ex. 1006, Pars. 29-70), and the number
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`of invalidity positions. Thus, this Petition meets the requirements of speedy and
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`inexpensive resolution.
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`Rule 35 C.F.R. § 42.1(b) also requires just resolution of the unpatentability
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`issues. In this regard, Petitioners respectfully remind the Office that the absence of
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`full and proper prior art references during the original examination is the chief
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`reason that led to the issuance of invalid claims 1-8 and 12-15 being asserted in
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871 B2
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`patent litigation. Claims 1-8 and 12-15 fail to meet the statutory requirements for
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`multiple reasons and from different aspects of the prior art teachings. This Petition
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`is a remedial measure for correcting the mistake in the original examination and is
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`necessitated by Patent Owner’s improper enforcement of the invalid claims.
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`Petitioners respectfully submit that the need for just resolution of the
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`unpatentability issues urges the full adoption of all proposed invalidity positions.
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`VI. DETAILED EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY OF CLAIMS 1-8 AND 12-15 OF 871 PATENT
`A. GROUND 1: CLAIMS 1-8 AND 12-15 ARE OBVIOUS UNDER
`35 U.S.C. § 103(a) OVER WILSKA AND YAMAGISHI-114
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`The combination of Wilska and Yamagishi-114 teaches or suggests all the
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`limitations of claims 1-8 and 12-15 and renders each claim as a whole obvious and
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`unpatentable (see also, Ex. 1006, Pars. 79-108 and Table 1). A person of ordinary
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`skill in the art (“POSITA”) would have been motivated, or would have found it
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`obvious, to combine Yamagishi-114 and Wilska since both are in the same
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`technical field (see Section V-A), and address similar issues by disclosing
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`implementations of portable handheld devices that function as both digital cameras
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`and mobile telephones, and include similar components to capture, store, process,
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`and display images.
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`CLAIM 1 recites “[P1-1] A handheld self-contained cellular telephone and
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`integrated image processing system.” Wilska describes a small-sized, portable and
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871 B2
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`hand-held device (Wilska, Abstract; 3:22-26; 10:20-24; claims 1, 9) that includes a
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`cellular phone (Id., 5:22-28; claim 4; Fig. 3, element 17), an integrated image
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`processing system in the form of a PC-in-a-chip and/or an image processing unit
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`that includes a microprocessor (Id., 4:27 to 5:7; Fig. 3, element 2; Fig. 5, elements
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`14a, 14c). Wilska’s camera unit and the associated image processing components
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`can be fixedly integrated into the device (Id., Abstract; 4:28-30; 5:9-10; 7:21-23).
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`Claim 1 preamble also recites: “[P1-2] for both sending and receiving
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`telephonic audio signals and for capturing a visual image and transmitting it to a
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`compatible remote receiving station of a wireless telephone network.” Wilska’s
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`device includes an integrated radiotelephone (i.e., a cellular mobile phone) that can
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`send both data and speech using, for example, a GSM wireless protocol (Id., 5:22
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`to 6:2; 6:6-8). Wilska’s device also captures images using a camera (Id., 5:2-7;
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`5:27-29; 6:6-8; 7:23-26; 9:23-30; 13:22-25), and transmits the captured images to
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`another device in the cellular network in the form of, for example, a fax, or email
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`(Id., 5:22 to 6:2; 9:28 to 10:2; 12:23-26; 13:2-18; 13:25-27).
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`Element [A1]: “a manually portable housing.” Wilska’s portable, hand-held
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`device has a manually portable housing with dimensions of (6.7 x 3.3 x 1.2) inches.
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`(Id., Abstract:1-2; 1:5-6; 3:22-26; 10:20-24; Figs. 1-2, and 6-9: “housing (1)”).
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`Element [B1]: “an integral image capture device comprising an electronic
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`camera contained within the portable housing.” Wilska describes that its devices
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871 B2
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`includes a camera that can be implemented as an integrated component (Id.,
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`Abstract; 4:28-30; 5:9-10; 7:21-23; Fig. 3, element 17), and includes an optics
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`section, an image sensor and a processing unit with associated memory (Id., 4:27
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`to 5:2-7; 7:1-15; 7:21-26; Fig. 1, elements 14a, 14b, 14c; Fig. 5).
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`Element [C1]: “a display for displaying an image framed by the camera, the
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`display being supported by the housing, the display and the electronic camera
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`being commonly movable in the housing when the housing is moved by hand.”
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`Figs. 1-3, and 6-7 of Wilska show a display (9) supported by the housing (1) of the
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`device (Id., 4:6-11; Figs. 1-3; 6-7, element 9) that is commonly movable when the
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`housing is moved by hand. The display presents an image framed by the camera
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`since the images that are received through the camera section can be immediately
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`viewed on the display (Id., 7:23-31; 8:21-24). Yamagishi-114 also describes a
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`device that can operate in a “through-mode,” where a display functions as a
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`viewfinder to continuously show the image signals picked up by the camera
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`section (Yamagishi-114, 7:18-19; 8:18-23; 8:28-29; 8:37 to 9:9; 20:24-26) (see
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`also the discussions related to element B[12] and Claim 2 below).
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`Element [D1]: “a processor in the housing for generating an image data
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`signal representing the image framed by the camera.” Wilska’s device includes a
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`processing unit which can be one semiconductor chip comprising a processor (Id.,
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`3:28-30; Fig. 3, element 2). Wilska also describes an image processing unit with a
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871 B2
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`microprocessor (Id., 5:2-5; 7:1-7; 7:15-26; Fig. 5, elements 14c and 23). Image
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`signals from the CCD image sensor are transferred to the processing unit 14(c),
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`and are stored in memory (e.g., DRAM or SRAM) (Id., 7:1-15; 7:23-26; Fig. 5).
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`Element [E1]: “a memory associated with the processor for receiving and
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`storing the digitized framed image.” Wilska’s device includes a memory unit that
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`receives and stores digital image data of the camera section; such data is processed
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`by a microprocessor prior to storage, and is thus in digital format (Id., 4:21-23; 7:1-
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`7; 7:11-15; 7:23-26; 8:21-24; 9:7-13; 9:23-24; 9:28-30; 10:9-13; Fig. 5, elements
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`14c, 24; 12:23-26; Fig. 3, element 13).
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`Element [F1]: “accessible for selectively displaying in the display window
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`and accessible for selectively transmitting over the wireless telephone network the
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`digitized framed image.” Wilska’s stored images can be displayed when the user
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`wishes to view them; or when the user selects particular images on the screen for
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`modification (Id., 7:26-31; 9:7-13; 9:14-16; 10:5-7; 12:23-27). Wilska’s images
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`(e.g., stored in bitmap format) can be transmitted over a telephone network to a
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`selected party (Id., 9:28 to 10:2; 12:23-26; 13:2-18).
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`Like Wilska, Yamagishi-114 also describes a hand-held portable image
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`capture device incorporated in a mobile phone (see Section V-A) and specifically
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`describes a memory that holds digital image data captured by the camera of the
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`device (Yamagishi-114, 5:33; 8:28-29; 9:1-3; 9:14-20; 9:40-42; Fig. 1, elements 24,
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871 B2
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`62, 90, 96). The data in memory can be selectively accessed by the user “according
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`to information entered at an operating means” (Id., 20:29-32 ). Examples of such
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`operating means include a mouse, a trackball, a touch-sensitive panel, keys and
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`switches (Id., 7:16-18; 18:17-19). Yamagishi-114 also describes transmission of
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`data to and from the camera-phone device (Id., 5:38-47; Fig. 1, element 100).
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`The combination of Wilska and Yamagishi-114 makes selective display and
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`transmission of stored image data obvious to a POSITA since such a person would
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`have found it convenient to use the pen, mouse, trackball or the touch-sensitive
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`panel, that is described in Yamagishi-114 for selectively viewing an image, to
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`retrieve a particular stored image and/or to transmit that image (e.g., fax the image)
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`to a person or device that