Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 6
`Entered: December 9, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION and HTC AMERICA, INC.,
`Petitioner,
`
`v.
`
`E-WATCH, INC. and E-WATCH CORPORATION,
`Patent Owner.
`
`
`Case IPR2014-00987
`Patent 7,365,871 B2
`
`
`
`Before JAMESON LEE, GREGG I. ANDERSON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`Paper 6
`Entered: December 9, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION and HTC AMERICA, INC.,
`Petitioner,
`
`v.
`
`E-WATCH, INC. and E-WATCH CORPORATION,
`Patent Owner.
`
`
`Case IPR2014-00987
`Patent 7,365,871 B2
`
`
`
`Before JAMESON LEE, GREGG I. ANDERSON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`IPR2014-00987
`Patent 7,365,871 B2
`
`
`I.
`
`INTRODUCTION
`
`HTC Corporation and HTC America, Inc. (“Petitioner”) filed a
`
`Petition requesting inter partes review of claims 1–8 and 12–15 (“the
`
`challenged claims”) of U.S. Patent No. 7,365,871 (Ex. 1001, “the ’871
`
`patent”). Paper 1 (“Pet.”). e-Watch, Inc. and e-Watch Corporation (“Patent
`
`Owner”) did not file a Preliminary Response. We have jurisdiction under 35
`
`U.S.C. § 314, which provides that an inter partes review may only be
`
`authorized if “the information presented in the petition . . . and any
`
`[preliminary] response . . . shows that there is a reasonable likelihood that
`
`the petitioner would prevail with respect to at least 1 of the claims
`
`challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the
`
`Petition, we determine that the information presented by Petitioner
`
`establishes that there is a reasonable likelihood that Petitioner would prevail
`
`in showing the unpatentability of claims 1–8 and 12–15 of the ’871 patent.
`
`Accordingly, pursuant to 35 U.S.C. § 314, we institute an inter partes review
`
`of claims 1–8 and 12–15 of the ’871 patent.
`
`A. Related Proceedings
`
`Petitioner and Patent Owner indicate that the ’871 patent is involved
`
`in eleven co-pending district court cases in the U.S. District Court for the
`
`Eastern District of Texas. Pet. 1–2; Paper 5, 3. The ’871 patent also is
`
`involved in IPR2014-00439. Paper 5, 4. Petitioner also filed a petition in
`
`IPR2014-00989 involving related U.S. Patent No. 7,643,168 B2. Pet. 2;
`
`Paper 5, 4.
`
`2
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`
`
`IPR2014-00987
`Patent 7,365,871 B2
`
`
`B. The ’871 Patent
`
`The ’871 patent relates generally to “image capture and transmission
`
`systems and is specifically directed to an image capture, compression, and
`
`transmission system for use in connection with landline and wireless
`
`telephone systems.” Ex. 1001, 1:17–20. According to the ’871 patent, the
`
`system “is particularly well-suited for sending and/or receiving images via a
`
`standard Group III facsimile transmission system and permits capture of the
`
`image at a remote location using an analog or digital camera. Id. at 5:3–7.”
`
`Figure 1 of the ’871 patent is reproduced below.
`
`“Figure 1 is a block diagram of a basic facsimile camera configuration for
`
`capturing an image via a camera and transmitting it via Group III facsimile
`
`transmission to a standard hard copy medium.” Id. at 4:27–30.
`
`Figure 7A of the ’871 patent is reproduced below.
`
`
`
`
`
`3
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`
`
`IPR2014-00987
`Patent 7,365,871 B2
`
`Figure 7A depicts “a hand[-]held device for capturing, storing, and
`
`transmitting an image in accordance with the invention.” Id. at 4:46–48,
`
`11:3–20.
`
`C. Illustrative Claim
`
`Of the challenged claims, claims 1, 6, and 12 are independent. Claim
`
`1 is reproduced below:
`
`telephone and
`A handheld self-contained cellular
`1.
`integrated image processing system for both sending and
`receiving telephonic audio signals and for capturing a visual
`image and transmitting it to a compatible remote receiving
`station of a wireless telephone network, the system comprising:
`
`a manually portable housing;
`
`an integral image capture device comprising an electronic
`camera contained within the portable housing;
`
`a display for displaying an image framed by the camera,
`the display being supported by the housing, the display and the
`electronic camera being commonly movable in the housing
`when the housing is moved by hand;
`
`a processor in the housing for generating an image data
`signal representing the image framed by the camera;
`
`a memory associated with the processor for receiving and
`storing the digitized framed image, accessible for selectively
`displaying in the display window and accessible for selectively
`transmitting over the wireless telephone network the digitized
`framed image;
`
`a user interface for enabling a user to select the image
`data signal for viewing and transmission;
`
`a telephonic system in the housing for sending and
`receiving digitized audio signals and for sending the image data
`signal;
`
`alphanumeric input keys in the housing for permitting
`manually input digitized alphanumeric signals to be input to the
`
`4
`
`
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`IPR2014-00987
`Patent 7,365,871 B2
`
`
`processor, the telephonic system further used for sending the
`digitized alphanumeric signals;
`
`for
`adapted
`communications device
`a wireless
`transmitting any of the digitized signals to the compatible
`remote receiving station; and
`
`a power supply for powering the system.
`
`Ex. 1001, 14:4915:13.
`
`D. References Relied Upon
`
`Petitioner relies upon the following references:
`
`Wilska
`Yamagishi1
`(“Yamagishi-114”)
`
`GB 2 289 555 A
`
`Nov. 22, 1995
`
`JP H06-176114
`
`June 24, 1994
`
`McNelley
`
`US 5,550,754
`
`Aug. 27, 1996
`
`Yamagishi
`(“Yamagishi-992”)
`
`EP 0 594 992 A1 May 4, 1994
`
`Ex. 1002
`
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1005
`
`E. The Asserted Grounds of Unpatentability
`
`Petitioner argues that the challenged claims are unpatentable as
`
`obvious over the following grounds:
`
`References
`Wilska and Yamagishi-114
`McNelley and Yamagishi-992
`
`Basis Claims challenged
`§ 103
`1–8 and 12–15
`§ 103
`1–8 and 12–15
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are
`
`interpreted according to their “broadest reasonable construction in light of
`
`
`
`1 Unless otherwise noted, citations are to the certified English translation of
`Yamagichi-114 at pages 1–34 of Exhibit 1003.
`
`5
`
`
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`IPR2014-00987
`Patent 7,365,871 B2
`
`the specification of the patent” in which they appear.” 37 C.F.R.
`
`§ 42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766
`
`(Aug. 14, 2012). Also, claim terms are given their ordinary and customary
`
`meaning, as would be understood by one of ordinary skill in the art in the
`
`context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`
`1257 (Fed. Cir. 2007).
`
`1. “an image framed by the camera” (claim 1) / “framing the image to
`be captured” (claims 2, 9, 12) / “visually framing a visual image to be
`captured” (claim 6) / “framing the visual image” (claim 7)
`
`Claim 1 recites “an image framed by the camera.” Claims 2, 6, 7, 9,
`
`and 12 recite similar limitations. Petitioner proposes that these terms be
`
`construed to mean “obtaining an image of an object using a viewfinder, or
`
`providing data representing an image of an object on a display.” Pet. 6–7.
`
`Petitioner argues that the Specification uses the term “frame” in an image-
`
`processing context, whereas the claims appear to use “framed” or “framing”
`
`in a different context. Id. (citing Ex. 1001, 4:58–62, 7:49–8:23, 8:39–47,
`
`10:9–21).
`
`As used in the claims, “framed” and “framing” appear to refer to
`
`composing an image by positioning the subject of the image within the
`
`boundaries of the camera’s field of view. The terms “framed” and
`
`“framing” are not used in the Specification. The term “frame” is used in the
`
`Specification, but it is used as a noun, not as a verb, and only in an image-
`
`processing context. See, e.g., Ex. 1001, 8:21–23 (“At this point a single
`
`frame is captured in RAM 71 and/or on the portable medium RAM 72.”).
`
`On this record, and for purposes of this Decision, we determine that
`
`the broadest reasonable interpretation of “an image framed by the camera” is
`
`“an image having boundaries established by the camera,” and the broadest
`
`6
`
`
`
`IPR2014-00987
`Patent 7,365,871 B2
`
`reasonable interpretation of “framing [a/the] image to be captured” (claims
`
`2, 9, 12), “visually framing a visual image to be captured” (claim 6), and
`
`“framing the visual image” (claim 7) is “establishing the boundaries of the
`
`image to be captured.”
`
`B. Challenged Claims – Obvious over Wilska and Yamagishi-114
`
`Petitioner argues that the claims 1–8 and 12–15 are unpatentable
`
`under 35 U.S.C. § 103(a) as obvious over Wilska and Yamagishi-114. Pet.
`
`14–36.
`
`Wilska (Exhibit 1002)
`
`Wilska describes portable, hand-held device for personal
`
`communication, data collection, and data processing. Ex. 1002, Abstract.
`
`Figures 1 and 3 of Wilska are reproduced below.
`
`
`
`Figures 1 depicts an exemplary device with an integrated camera unit. Id. at
`
`2:22–24. Figure 3 depicts a block diagram of a device according to Wilska.
`
`Id. at 2:30–31. The device includes housing 1, camera unit 14, display 9,
`
`data processing unit 2 comprising processor 4, one or more memory units
`
`13, keyboard 10 and/or mouse/track ball 11, cellular mobile phone unit 17,
`
`and battery 3. Id. at 3:17–5:7, 5:22–6:2. A picture taken by camera 14a
`
`through optics 14b is transferred to image processing unit 14c and through
`
`its microprocessor 23 to memory unit 24, such as RAM. Id. at 7:23–26. The
`
`7
`
`
`
`IPR2014-00987
`Patent 7,365,871 B2
`
`user can immediately view the picture on display 9. Id. at 7:26–27. A user
`
`may also fax an image using a telefax application by selecting an image and
`
`defining a receiver, after which the image is transmitted as a bitmap and a
`
`telefax message from memory unit 13 via cellular mobile phone unit 17. Id.
`
`at 9:28–10:2.
`
`Yamagishi-114 (Exhibit 1003)
`
`Yamagishi-114 describes information processing apparatus 300 with
`
`image pickup apparatus 200. Ex. 1003, 4:11–12.
`
`Figure 14 is reproduced below.
`
`
`
`Figure 14 depicts an embodiment in which information processing apparatus
`
`300 is a portable wireless telephone. Id. at 18:23. Image pickup apparatus
`
`200 comprises image pickup means 202, program storage means 50,
`
`interface 52, and connector 54. Id. at 4:14–15. Information processing
`
`apparatus 300 includes display means 64 for displaying characters and
`
`images, such as a liquid crystal display unit. Id. at 5:8–9. Display means 64
`
`includes a viewfinder that continuously shows the signal from an image
`
`pickup element, such as image pickup means 202. Id. at 7:18–20. Display
`
`8
`
`
`
`IPR2014-00987
`Patent 7,365,871 B2
`
`means 64 may also display operating modes of image pickup apparatus
`
`200—e.g., shutter speed, f-number, gain-up state—as, e.g., an electronic dial
`
`or a mode select dial. Id. at 7:6–16.
`
`Analysis
`
`In light of the arguments and evidence, Petitioner has established a
`
`reasonable likelihood that claims 1–8 and 12–15 are unpatentable as obvious
`
`over Wilska and Yamagishi-114.
`
`For claim 1, for example, we are persuaded that Petitioner’s citations
`
`to Wilksa teach each of the recited limitations except for “a display for
`
`displaying an image framed by the camera, the display being supported by
`
`the housing, the display and the electronic camera being commonly movable
`
`in the housing when the housing is moved by hand.” Pet. 14–36.
`
`For that limitation, Petitioner relies upon both Wilska and Yamagishi-
`
`114 (Pet. 16)), and Petitioner’s expert, Mr. Kenneth Parulski, testifies that:
`
`A person of ordinary skill in the art at the time of the [’]871
`Patent would have understood that it would be obvious and
`straightforward to apply the teachings of Yamagishi-114 in the
`Wilska device, in order to display images as they are being
`framed using the “through-mode” described by Yamagishi-114,
`or after they have been captured and stored using the “monitor-
`mode” described by Yamagishi-114, or to simultaneously
`display a “through-mode” window and a “monitor-mode”
`window on the LCD display of the Wilska device. The
`hardware components described in Wilska are capable of
`providing these functions, which could be advantageously used
`by software applications such as the business card handler
`application 36 described by Wilska.
`
`Ex. 1006 ¶ 82. We are persuaded that Yamagishi-114’s disclosure of a
`
`“through-mode” teaches a display “for displaying an image framed by the
`
`camera,” as recited in claim 1.
`
`9
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`
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`IPR2014-00987
`Patent 7,365,871 B2
`
`
`Petitioner argues that a person of ordinary skill in the art would have
`
`been motivated to combine Yamagishi-114 and Wilska in the particular
`
`manner proposed by Petitioner because they are “in the same technical
`
`field,” “address similar issues” (those of portable, handheld devices that
`
`function as both digital cameras and mobile telephones), and “include
`
`similar components to capture, store, process, and display images.” Pet. 14.
`
`On the record before us, we are persuaded that Petitioner has provided
`
`sufficiently an articulated reasoning with some rational underpinning to
`
`support the legal conclusion of obviousness. See KSR Int’l Co. v. Teleflex
`
`Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed.
`
`Cir. 2006)).
`
`Conclusion
`
`On this record, we are persuaded that Petitioner has established a
`
`reasonable likelihood that it would prevail in showing that claims 1–8 and
`
`12–15 are unpatentable as obvious over Wilska and Yamagishi-114.
`
`C. Challenged Claims – Obvious over McNelley and Yamagishi-992
`
`Petitioner argues that the claims 1–8 and 12–15 are unpatentable
`
`under 35 U.S.C. § 103(a) as obvious over McNelley and Yamagishi-992.
`
`Pet. 36–60.
`
`We have discretion to institute inter partes review as to some asserted
`
`grounds and not others. 37 C.F.R. § 42.108(a); see also 35 U.S.C. § 314(a)
`
`(authorizing institution of inter partes review under particular
`
`circumstances, but not requiring institution under any circumstances). This
`
`discretion is consistent with the requirement that the regulations for inter
`
`partes review proceedings take into account “the efficient administration of
`
`the Office” and “the ability of the Office to timely complete [instituted]
`
`10
`
`
`
`IPR2014-00987
`Patent 7,365,871 B2
`
`proceedings,” 35 U.S.C. § 316(b), as well as with the requirement that the
`
`rules for inter partes review proceedings be “construed to secure the just,
`
`speedy, and inexpensive resolution of every proceeding.” 37 C.F.R.
`
`§ 42.1(b). Accordingly, for reasons of administrative necessity, and to
`
`ensure timely completion of the instituted proceeding, we exercise our
`
`discretion and do not institute a review based on obviousness over McNelley
`
`and Yamagishi-992.
`
`III. CONCLUSION
`
`For the foregoing reasons, we determine that Petitioner has
`
`established that there is a reasonable likelihood that Petitioner would prevail
`
`in establishing the unpatentability of claims 1–8 and 12–15 of the ’871
`
`patent.
`
`The Board has not made a final determination on the patentability of
`
`any challenged claims.
`
`Accordingly, it is
`
`IV. ORDER
`
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
`
`hereby instituted for claims 1–8 and 12–15 under 35 U.S.C. § 103 as
`
`obvious over Wilska and Yamagishi-114; and
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(d) and
`
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial on the
`
`grounds of unpatentability authorized above; the trial commences on the
`
`entry date of this Decision.
`
`
`
`11
`
`
`
`IPR2014-00987
`Patent 7,365,871 B2
`
`PETITIONER
`
`
`Bing Ai
`Cheng C. Ko
`Kevin Patariu
`Babak Tehranchi
`Perkins Coie LLP
`Ai-ptab@perkinscoie.com
`CKo@perkinscoie.com
`KPatariu@perkinscoie.com
`BTehranchi@perkinscoie.com
`
`
`PATENT OWNER
`
`Robert C. Curfiss
`bob@curfiss.com
`
`David O. Simmons
`IVC Patent Agency
`Dsimmons1@sbcglobal.net
`
`
`12
`
`
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