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 IPR2014-00989
`Patent 7,643,168 B2
`
`____________
`
`Before JAMESON LEE, GREGG I. ANDERSON, and
`MATHEW R. CLEMENTS, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`E-Watch, Inc.
`EXH. 2004
`Petitioner - HTC Corporation et. al
`Patent Owner - E-Watch, Inc.
`IPR2014-00989
`
`Page 1 of 24
`
`
`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 IPR2014-00989
`Patent 7,643,168 B2
`
`____________
`
`Before JAMESON LEE, GREGG I. ANDERSON, and
`MATHEW R. CLEMENTS, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`E-Watch, Inc.
`EXH. 2004
`Petitioner - HTC Corporation et. al
`Patent Owner - E-Watch, Inc.
`IPR2014-00989
`
`Page 1 of 24
`
`
`
`IPR2014-00989
`Patent 7,643,168 B2
`
`
`On June 19, 2014, HTC Corporation and HTC America, Inc.
`
`(“Petitioner”) filed a Petition (Paper 1) pursuant to 35 U.S.C. §§ 311–319 to
`
`institute an inter partes review of claims 1–6, 8, 10, 11, 13–18, 21–29, and
`
`31 of U.S. Patent No. 7,643,168 B2 (“the ’168 patent”), filed January 12,
`
`1998.1 e-Watch, Inc. and e-Watch Corporation (“Patent Owner”) elected not
`
`to file a preliminary response. Applying the standard set forth in 35 U.S.C.
`
`§ 314(a), which requires demonstration of a reasonable likelihood that
`
`Petitioner would prevail with respect to at least one challenged claim, we
`
`institute an inter partes review of claims 1–6, 8, 10, 11, 13–18, 21–29, and
`
`31. The Board has not made a final determination of the patentability of any
`
`claim.
`
`I. BACKGROUND
`
`A. The ’168 patent (Ex. 1001)
`
`The ’168 patent describes an image capture, conversion, compression,
`
`storage and transmission system. Ex. 1001, Abstract. The system includes a
`
`camera and a transmission device; the camera captures an image that is
`
`transmitted to another device using, for example, cellular signal, satellite
`
`transmission and hard line telephonic. Id. at 5:66–6:5. Captured images can
`
`be from a digital or analog camera or a video camera (e.g., a camcorder). Id.
`
`at 2:37–39.
`
`
`1 Petitioner alleges the ’168 patent claims priority to a continuation
`application No. 10/336,470 (US Pat. No. 7,365,871)(“the’470 application”)
`filed January 13, 2003. Pet. 3. The ’470 application is a divisional of an
`application No. 09/006,073 filed January 12, 1998. Id. Petitioner alleges
`that is the earliest date to which Patent Owner could claim priority. Id. We
`use the 1998 date as the priority date for purposes of this Decision.
`
`2
`
`Page 2 of 24
`
`
`
`IPR2014-00989
`Patent 7,643,168 B2
`
`
`Figure 4 of the ’168 patent is reproduced below.
`
`
`
`Figure 4 of the ’168 Patent illustrates the data path after an image is captured
`
`by camera 10 and conditioned by gray scale bit map 16. Id. at 7:65–8:41.
`
`The device includes memory 46, optional viewer 48, and format select
`
`interface switch 60 that permits automated or manual selection of the
`
`transmitting protocol, such as a Group-III facsimile format, a PC modem
`
`protocol, a wavelet compressor or others. Id. Depending on the selected
`
`protocol, the signal output is generated and provided to communications
`
`interface module 83 for transmission. Id.
`
`B. Illustrative claim
`
`Claims 1, 22, 24, 26, 27, and 29 are the independent claims of the
`
`’168 patent. Claim 1 is illustrative of the claims at issue:
`
`1. Apparatus comprising:
`a portable housing, the portable housing being wireless;
`an image collection device supported by the portable
`housing, the image collection device being operable to provide
`visual image data of a field of view;
`a display supported by the portable housing, the display
`
`3
`
`Page 3 of 24
`
`
`
`IPR2014-00989
`Patent 7,643,168 B2
`
`
`being operable to display for viewing by a user a perceptible
`visual image, the perceptible visual image being generated from
`the visual image data;
`memory supported by the portable housing, the memory
`being suitable to receive visual image data in digital format, the
`memory being suitable to retain the visual image data in digital
`format,
`an input device supported by the portable housing, the
`input device being operable by the user;
`operation of the input device by the user enabling the
`memory to retain the visual image data in digital format, the
`memory being suitable to provide retained visual image data in
`digital format;
`media supported by the portable housing, the media
`being suitable to embody at least one compression algorithm;
`at least one processing platform supported by the
`portable housing, the at least one processing platform being
`operable to execute the at least one compression algorithm, the
`at least one processing platform being provided the retained
`visual image data in digital format, execution of the at least one
`compression algorithm providing compressed visual image
`data; and
`a mobile phone supported by the portable housing, the
`mobile phone being operable to send to a remote recipient a
`wireless transmission, the wireless transmission conveying the
`compressed digital image data; and
`movement by the user of the portable housing commonly
`moving the image collection device,
`movement by the user of the portable housing commonly
`moving the display.
`
`Ex. 1001, 15:14–50.
`
`
`
`
`
`
`4
`
`Page 4 of 24
`
`
`
`IPR2014-00989
`Patent 7,643,168 B2
`
`
`C. References relied upon
`
`Petitioner relies on the following references. Pet. 6–9.
`
`Reference
`
`Morita2
`
`Description
`
`Publication or
`Issue Date
`JP H06-133081 May 13, 1994
`
`Sarbadhikari
`
`US 5,477,264
`
`Dec. 19, 1995
`
`Longginou
`
`WO 95/23485
`
`Aug. 31, 1995
`
`Wilska
`
`GB 2,289,555 A Nov. 22, 19953
`
`Yamagishi-992 EP 0 594 992 A1 May 4, 1994
`
`McNelley
`
`US 5,550,754
`
`Aug. 27, 1996
`
`
`D. Asserted grounds of unpatentability
`
`Exhibit No.
`
`Ex. 1002
`
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1006
`
`Ex. 1007
`
`Petitioner challenges claims 1–6, 8, 10, 11, 13–18, 21–29, and 31 of
`
`the ’168 patent as unpatentable on the following grounds. Pet. 12–59.
`
`Reference(s)
`Morita and Sarbadhikari
`
`Claim(s) Challenged
`Basis
`§ 103(a) 1–6, 8, 10, 11, 13–15, 21–
`29, and 31
`Morita, Sarbadihikari, and Longginou § 103(a) 16–18
`Wilska and Yamagishi-992
`§ 103(a) 1–6, 8, 10, 11, 16–18, 21,
`22, 24, 26, 27, and 29
`§ 103(a) 13–15, 23, 25, 28, and 31
`
`Wilska, Yamagishi-992, and
`McNelley
`
`
`E. Related proceedings
`
`Patent Owner has asserted the ’168 patent against Petitioner in the
`
`following action: E-WATCH, INC. v. HTC, No. 2:13-cv-01063, filed in the
`
`
`2 Petitioner filed Morita as pp. 28–37 of Exhibit 1002. Petitioner provided a
`certified English translation of Morita at pp. 1–28 of Exhibit 1002.
`3 Petitioner mistakenly used a publication date of December 11, 1995. Pet.
`8.
`
`5
`
`Page 5 of 24
`
`
`
`IPR2014-00989
`Patent 7,643,168 B2
`
`Eastern District of Texas on December 9, 2013, and against other entities in
`
`nine other lawsuits. In addition, Petitioners filed a petition in IPR2014-
`
`00987 for inter partes review of related U.S. Patent No. 7,365,871 B2. Pet.
`
`1.
`
`F. Claim construction
`
`The Board interprets claims of an unexpired patent using the broadest
`
`reasonable construction in light of the specification of the patent in which
`
`they appear. 37 C.F.R. § 42.100(b); see also Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
`
` 1. “media being suitable to embody . . . algorithm”(claims 1–28)
`
`Petitioner identifies a single term from the ’168 patent for
`
`construction: “media being suitable to embody . . . algorithm.” Pet. 5.
`
`Petitioner proposes the term be construed as “media that can embody an
`
`algorithm, in hardware form, software form or a combination of hardware
`
`and software forms.” Id. at 6. Petitioner’s witness, Mr. Kenneth Parulski,
`
`supports Petitioner’s construction as consistent with the understanding of a
`
`person of ordinary skill in the art. Ex. 1008 ¶ 79.
`
`Petitioner notes:
`
`This term appears in three different variations: (1) media being
`suitable to embody at least one compression algorithm in claims
`1-28; (2) compression algorithm embodied at least in part in
`suitable programmed media in claims 29-31; and (3)
`transmission protocol algorithm embodied in suitable media in
`claims 16-18. The 168 Patent does not explicitly describe these
`terms, which were added during the prosecution of the 168
`Patent.
`
`6
`
`Page 6 of 24
`
`
`
`IPR2014-00989
`Patent 7,643,168 B2
`
`Pet. 5.4 The Specification describes how an image captured by
`
`camera 10 is stored on any one of a variety of memory devices for
`
`storage. Ex. 1001, 7:24-31. One described memory device is
`
`“writeable optical media.” Id. at 7:31. Petitioner also notes that
`
`the’168 patent “uses ‘circuit’ or ‘circuitry’ more than 30 times to refer
`
`to various components that perform the disclosed functionalities.
`
`(citations omitted).” Pet. 6. The Specification does not otherwise
`
`include the word “media” in the context of the claimed invention.
`
`Neither does the Specification describe, nor define, algorithm.
`
`“Media” is defined as “[T]he physical material, such as paper,
`
`disk, and tape, used for storing computer-based information.”
`
`Microsoft Computer Dictionary, 420 (2d ed. 2002). Ex. 3001. The
`
`Microsoft Computer Dictionary further defines “algorithm” as “[A]
`
`finite sequence of steps for solving a logical or mathematical problem
`
`or performing a task.” Id. at 28. In the context of software,
`
`algorithms are used to disclose adequate defining structure to render
`
`the bounds of the claim understandable to one of ordinary skill in the
`
`art. See, e.g., Med. Instrumentation & Diagnostics Corp. v. Elekta
`
`AB, 344 F.3d 1205, 1214 (Fed.Cir.2003).
`
`Accordingly, we construe “media being suitable to embody . . .
`
`algorithm,” and related terms including both “media” and
`
`“algorithm,” as “a storage device for storing software to perform,
`
`
`4 Petitioner has not provided the relevant portion of the prosecution history
`so that we can confirm its representation regarding how the term was added
`to the claims.
`
`7
`
`Page 7 of 24
`
`
`
`IPR2014-00989
`Patent 7,643,168 B2
`
`among other functions, image compression and storage of
`
`transmission protocols.”
`
`2. “commonly moving”(claims 1, 22, and 24)
`
`Claim 1 recites “movement by the user of the portable housing
`
`commonly moving the image collection device,” and “movement by the user
`
`of the portable housing commonly moving the display.” (emphasis added).
`
`Apart from the claims, the ’168 patent does not use the phrase “commonly
`
`moving.” Petitioner does not propose a construction for the term
`
`“commonly moving.” However, Petitioner argues the Morita reference
`
`teaches that “all device components including the display and the camera,
`
`are within a single housing and are thus commonly moved when the device is
`
`moved by the 10 user (Id., 7:17 to 8:7; 11:21 to 12:2; Figs. 2 and 4).” Pet.
`
`17; see also Pet. 44 (discussing Wilska). Based on the use of “commonly
`
`moving” in the claims of the patent, for the purposes of this Decision, we
`
`interpret it to mean that the movement of the portable housing causes
`
`movement of the image collection device or display.
`
`II. ANALYSIS
`
`A. Obviousness over Morita and Sarbadhikari
`
`Petitioner contends that claims 1–6, 8, 10, 11, 13–15, 21–29 and 31 of
`
`the ’168 patent are obvious under 35 U.S.C. § 103 over Morita and
`
`Sarbadhikari. Pet. 12–33. To support this position, Petitioner presents the
`
`testimony of Mr. Parulski. Ex. 1008 ¶¶ 80–113, Table 1. Id. at 12.
`
`1. Morita
`
`Morita describes a portable telephone which wirelessly transmits and
`
`receives audio signals, i.e., a telephonic conversation. Ex. 1002, 4:17–26.
`
`The telephone includes a still camera, which can encode and store digital
`
`8
`
`Page 8 of 24
`
`
`
`IPR2014-00989
`Patent 7,643,168 B2
`
`images. Id. at 5:16– 6:7. The subject of the photograph is framed through
`
`lens 1 and displayed on display 8. Id. at Abstract, Fig. 2(a).
`
`Figure 6 of Morita is reproduced below.
`
`
`
`Figure 6 shows an embodiment of the circuit configuration for the still
`
`camera with portable telephone function. Id. at 15:7–12. An image
`
`processing circuit compresses and encrypts the image data. Id. at 3:23–26.
`
`The image is stored in internal memory 26. Id. at 5:23–25. When a release
`
`button on the phone is pressed, a recipient is called, the image data is read
`
`from memory and sent to the recipient over the phone connection line. Id. at
`
`5:26–6:7.
`
`2. Sarbadhikari
`
`Sarbadhikari describes an electronic imaging system including a
`
`digital camera for capturing and storing images. Ex. 1003, Abstract.
`
`Figure 2 of Sarbadhikari is reproduced below.
`
`
`
`9
`
`Page 9 of 24
`
`
`
`IPR2014-00989
`Patent 7,643,168 B2
`
`Figure 2 is a block diagram of an electronic camera configured to receive
`
`and process enhancement files. Id. at 3:30–32. The camera has an optical
`
`section, an A/D converter, image buffers, image memory and processors for
`
`controlling image capture operations and processing the captured images.
`
`Id. at 5:55–6:26, Fig. 2. The device also includes memory for storing
`
`algorithms, including compression algorithms, such as JPEG, that are
`
`retrieved by the processor to perform image compression. Id. at 6:26–40,
`
`Fig. 2, element 28. Modified or updated algorithms can be uploaded to the
`
`camera. Id. at 4:47–5:40.
`
`3. Claims 1–6, 8, 10–11, 13–15, 21–29 and 31
`
`We first address independent apparatus claim 1. Claims 22, 24, 26,
`
`27, and 29 are also independent claims that recite many of the same
`
`limitations of claim 1. Pet. 17–27. On this record, we are persuaded that
`
`there is a reasonable likelihood that Petitioner would prevail in establishing
`
`that claim 1 is obvious over Morita and Sarbadhikari.
`
`The first recited element of claim 1 is “a portable housing, the
`
`portable housing being wireless.” Petitioner points to several parts of Morita
`
`as teaching this limitation. Pet. 13 (citing Ex. 1002, Title, other citations
`
`omitted).
`
`The next recited element of claim 1 is “an image collection device
`
`supported by the portable housing, the image collection device being
`
`operable to provide visual image data of a field of view.” Morita describes,
`
`as part of its portable handheld device, a traditional still camera section
`
`(Figure 10) as well as a portable phone device (Figure 11). Ex. 1002, 7:1–6.
`
`Morita includes a lens, a solid state image sensing device, an A/D converter,
`
`image processing and encoding circuits and memory. Id. at 3:20–4:5, Fig. 1,
`
`10
`
`Page 10 of 24
`
`
`
`IPR2014-00989
`Patent 7,643,168 B2
`
`section A. Petitioner cites to the just cited portions of Morita as teaching the
`
`“image collection device” limitation. Pet. 13.
`
`Claim 1 further recites, in pertinent part, “a display supported by the
`
`portable housing,” which displays the “visual image data.” On this record,
`
`we are persuaded that Morita discloses a display that is supported by the
`
`portable housing. Ex. 1002, 3:20–26, Fig. 10 (element 8). The display is
`
`used for viewing perceptible visual images generated from image signals
`
`after A/D conversion and processing by the image processing circuit. Id. at
`
`8:9–18, Fig. 1. Petitioner cites to the portions of Morita above relating to the
`
`display to teach the recited display limitation. Pet. 13–14.
`
`Claim 1 next recites, in pertinent part, “memory” which “receives”
`
`and “retains” the “visual image data in digital format.” Petitioner argues
`
`Morita’s disclosure that the image data is transmitted to a control circuit
`
`upon activation of a release button and “stored in a memory card” teaches
`
`the receiving limitation. Pet. 14 (citing Ex. 1002, 3:26–4:5). Petitioner cites
`
`to the storing of the image data as teaching the image data is retained. Id.
`
`Claim 1 further recites, in pertinent part, “an input device . . . to retain
`
`the visual image data in digital format.” Petitioner contends the button of
`
`Morita described in connection with the “memory” limitation immediately
`
`above, is an input device. Pet. 14. Also as described immediately above, the
`
`memory card of Morita saves the image data in digital format. Id.
`
`Claim 1 further recites “media supported by the portable housing, the
`
`media being suitable to embody at least one compression algorithm.”
`
`Morita’s image processing circuit produces compressed image data. Ex.
`
`1002, 3:24–25. In addition to the processing circuit of Morita, Petitioner
`
`cites to Sarbadhikari’s electronic camera’s memory for storing algorithms,
`
`11
`
`Page 11 of 24
`
`
`
`IPR2014-00989
`Patent 7,643,168 B2
`
`including compression algorithms, such as JPEG. Pet. 14–15 (citing Ex.
`
`1003, 6:26–40, Fig. 2, element 28. .
`
`Mr. Parulski explains that Morita “must embody a compression
`
`algorithm.” Ex. 1008 ¶ 92. Mr. Parulski goes on to state that Sarbadhikari
`
`stores code for a compression algorithm, which code is within the camera
`
`and, thus, “supported by the camera housing.” Id. at ¶ 93. Petitioner cites to
`
`the preceding testimony of Mr. Parulski to argue a person of ordinary skill in
`
`the art “would have been motivated, or would have found it obvious, to
`
`combine Sarbadhikari and Morita to allow a compression algorithm to be
`
`stored in memory and accessed by a processor since it would have reduced
`
`the cost of development of the device by implementing image compression
`
`in software and would have allowed the algorithm to be updated. Pet. 15
`
`(citing Ex. 1008 ¶¶ 9295). Claim 1 next recites, in pertinent part, “at least
`
`one processing platform,” which executes the compression algorithm to
`
`provide “compressed visual image data.” Morita describes an image
`
`processing circuit, an encoding circuit, and a control unit, which Petitioner
`
`contends, alone or in combination teaches or suggests the “processing
`
`platform.” Pet. 15–16 (citing Ex. 1002, 3:22–25, 7:7–9, 8:10–15, Figs. 1
`
`and 10, elements, 4, 5 and 25). Morita ultimately compresses the image
`
`data, as required by the “processing platform” limitation of claim 1. Id.
`
`(citing Ex. 1002, 3:22–25), see also Ex. 1008 ¶ 92. Petitioner relies on
`
`Sarbadhikari to teach that “processor 22 applies a compression algorithm
`
`from memory 28 to digital image signals, and sends the compressed signals
`
`to a removable storage device.” Id. (citing Ex. 1003, 6:37-39)(emphasis
`
`added).
`
`12
`
`Page 12 of 24
`
`
`
`IPR2014-00989
`Patent 7,643,168 B2
`
`
`Petitioner also provides rational underpinnings for combining the
`
`compression algorithm of Sarbadhikari with the camera of Morita to meet
`
`the “processing platform” limitation. Pet. 16. Specifically, Petitioner argues
`
`the combination would reduce development costs because “implementing
`
`software compression[] would have reduced the storage space for storing the
`
`captured images and the bandwidth for transmission of such images.” Id.
`
`(citing Ex. 1008 ¶¶ 92–95). More specifically, Mr. Parulski testifies a
`
`person of ordinary skill in the art would have found it obvious to
`
`“incorporate software-based image compression, using for example the
`
`algorithm memory 22 and the digital signal processor 22 taught by
`
`Sarbadhikari, into the camera phone described by Morita, since such a
`
`capability could reduce costs, allow for a more complex compression
`
`algorithm to be used, or reduce the development time needed to design and
`
`debug a new image compression algorithm.” Ex. 1008 ¶ 95.
`
`Claim 1 next recites, in pertinent part, “a mobile phone” which is
`
`operable to send “a remote recipient a wireless transmission, the wireless
`
`transmission conveying the compressed digital image data.” Morita
`
`discloses a mobile phone that can send/receive digital image data to/from
`
`another device. Ex. 1002, Title, 3:14–15, 3:22–25, 7:1–19, 8:15–18, 9:7–19,
`
`Fig. 1 (element B), Figs. 2a, 2b. Morita also discloses the stored image date
`
`is transmitted in compressed format. Id. at 3:22–25. Petitioner cites to the
`
`preceding disclosures of Morita as teaching the wireless transmission of
`
`compressed digital image data. Pet. 16–17.
`
`The final limitation of claim 1 recites “movement by the user of the
`
`portable housing commonly moving the image collection device, movement
`
`by the user of the portable housing commonly moving the display.”
`
`13
`
`Page 13 of 24
`
`
`
`IPR2014-00989
`Patent 7,643,168 B2
`
`Petitioner argues Morita’s components are all within a single housing and
`
`thus subject to being “commonly moved” as we have construed the term.
`
`Pet. 17 (citing Ex. 1002, Figs. 2(a), 2(b), and 4(a) –4(d)).
`
`As discussed above, claims 22, 24, 26, 27, and 29 are independent
`
`claims which recite many of the same limitations of claim 1. Pet. 17–27.
`
`On this record, Petitioner also has presented sufficient evidence and
`
`argument to show that the cited prior art references collectively suggest the
`
`claimed subject matter recited in independent claims 22, 24, 26, 27, and
`
`29. Id. We also have considered the testimony of Mr. Parulski regarding the
`
`independent claims. See Ex. 1008 ¶¶ 86–99, Table 1. Therefore, we
`
`determine that the information presented in the Petition establishes a
`
`reasonable likelihood that Petitioner would prevail on its assertion that
`
`independent claims 22, 24, 26, 27, and 29 would have been obvious over
`
`Morita and Sarbadhikari.
`
`Sarbadhikari also is relied on for the limitations in certain dependent
`
`claims. For example, claim 2, depends from claim 1and recites “the
`
`processing platform including at least one processor.” Concerning claim 2,
`
`Petitioner points to the image processing circuit of Morita as one place
`
`where a processor is disclosed. Pet. 28. Petitioner, however, also noted in
`
`connection with claim 1 above that Sarbadhikari specifically disclosed
`
`processor 22 for applying a compression algorithm. Pet. 16 (citing Ex.
`
`1003, 6:37–39). Mr. Parulski’s testimony corroborates the position taken.
`
`Ex. 1008 ¶ 101. We determine that the information presented in the Petition
`
`establishes a reasonable likelihood that Petitioner would prevail on its
`
`assertion that claim 2 would have been obvious over Morita and
`
`Sarbadhikari.
`
`14
`
`Page 14 of 24
`
`
`
`IPR2014-00989
`Patent 7,643,168 B2
`
`
`Claim 13 depends from claim 1 and recites “the display including a
`
`display screen, the display screen being defined apart from a viewfinder, the
`
`display screen being operable to display for viewing by a user a perceptible
`
`visual image, the perceptible visual image being generated from the visual
`
`image data.” (emphasis added). Sarbadhikari teaches an electronic
`
`viewfinder which is used to both compose the captured images and to
`
`display images after storage in the removable memory card. Ex. 1003, 5:27–
`
`31, 7:28–30. Images may be viewed either on the viewfinder or on a
`
`separate viewscreen. Id. at 10:55–58. Petitioner argues the claim 13
`
`limitation is taught by the viewfinder and viewscreen of Sarbadhikari. Pet.
`
`31 (citing Ex. 1003, 10:5558); see also Ex. 1008 ¶ 109. Further, the
`
`combination would have been obvious to allow more flexible use of the
`
`device. Id. at 32. We determine that the information presented in the
`
`Petition establishes a reasonable likelihood that Petitioner would prevail on
`
`its assertion that claim 13 would have been obvious over Morita and
`
`Sarbadhikari.
`
`Finally, claims 3–6, 8, 10, 11, 14, 15, and 21 depend, directly or
`
`indirectly, from claim 1. Claim 23 depends from claim 22. Claim 25
`
`depends from claim 24. Claim 28 depends from claim 27. Claim 31
`
`depends from claim 29. We have considered Petitioner’s evidence on claims
`
`3–6, 8, 10, 11, 14, 15, 21, 23, 25, 28, and 31 (Pet. 28–33), including the
`
`testimony of Mr. Parulski (Ex. 1008 ¶¶ 100–112, Table 1), and determine
`
`that the Petition establishes a reasonable likelihood that Petitioner would
`
`prevail on its assertion that dependent claims 3–6, 8, 10, 11, 14, 15, 21, 23,
`
`25, 28, and 31 would have been obvious over Morita and Sarbadhikari.
`
`15
`
`Page 15 of 24
`
`
`
`IPR2014-00989
`Patent 7,643,168 B2
`
`
`4. Summary
`
`Based on this record, we conclude that Petitioner has demonstrated a
`
`reasonable likelihood of prevailing on its challenge of claims 1–6, 8, 10, 11,
`
`13–15, 21–29 and 31 as obvious under 35 U.S.C. § 103 over Morita and
`
`Sarbadhikari.
`
`B. Obviousness over Morita, Sarbadhikari and Longginou
`
`Petitioner contends that claims 16–18 of the ’168 patent would have
`
`been obvious under 35 U.S.C. § 103 over Morita, Sarbadhikari, and
`
`Longginou. Pet. 33–37. To support this position, Petitioner presents the
`
`testimony of Mr. Parulski. Ex. 1008 ¶¶ 114–123, Table 2. Id. at 3334.
`
`1. Longginou
`
`Longginou discloses a hand-held phone in multiple modes of
`
`operation based on different network communication protocols and
`
`standards, such as cellular, trunking, cordless, DGPS, etc. Ex. 1004,
`
`Abstract. A dual mode handset can incorporate technology from any two of
`
`the following communication protocols: GSM, MPT1327, Trunking Radio,
`
`AMPS, ETACS, TDMA, CDMA, PCN, CT1, CT2, CT3, DECT. Id. at
`
`10:27–11:7.
`
`2. Claims 16–18
`
`Claim 16 depends from claim 1 and, in pertinent part, recites
`
`additionally “at least one transmission protocol algorithm embodied in
`
`suitable media.” A processing platform executes the protocol so that the
`
`compressed visual image data is provided in a transmission format that is
`
`compatible with the mobile phone for wireless transmission. Ex. 1001,
`
`claim 16.
`
`16
`
`Page 16 of 24
`
`
`
`IPR2014-00989
`Patent 7,643,168 B2
`
`
`Longginou discloses different communication protocols. Ex. 1004,
`
`10:27–11:7. Petitioner argues the limitation is met by Longginou’s
`
`disclosure of software in its handset, including a microprocessor, i.e.,
`
`“processing platform.” Pet. 35 (citing Ex. 1004, 12:19–23, 12:12–13.
`
`Petitioner contends both Morita and Sarbadhikari describe generating
`
`compressed image data. Id. (citing Ex. 1002, 3:24–25, Ex. 1003, 6:27–40),
`
`see also Ex. 1008 ¶¶ 119–121, Table 2.
`
`Claim 17 depends from claim 16 and, in pertinent part, recites
`
`additionally “the mobile phone being operable according to a specified
`
`wireless transmission protocol” that is compatible with the specified wireless
`
`transmission protocol. Petitioner asserts “Longginou discloses claim 17
`
`since it describes the ability to select a wireless protocol (Longginou, 1:21–
`
`22; 6:14–17; 14:7–8) such as GSM, AMPS, ETACS, MPT1327, Trunking
`
`Radio, TDMA and CDMA (Id. [at] Abstract; 1:21 to 2:4; 8:6–13; 10:27 [–]
`
`11:7) to communicate with another device.” Pet. 36. Petitioner further
`
`asserts the combination of Longginou with Morita and Sarbadhikari “would
`
`have provided a more versatile mobile phone, capable of communication in
`
`a wireless network (see also Ex. 1008, Par. 122).” Id.
`
`Claim 18 depends from claim 17 and further limits the “transmission
`
`protocol algorithm” of claims 16 and 17 by providing, in pertinent part,
`
`“compressed visual image data in a compatible format.” Petitioner relies on
`
`the discussion above regarding compression as taught by both Morita and
`
`Sarbadhikari to teach the limitation. Pet. 37; see also Ex. 1008 ¶ 123.
`
`Petitioner also provides rational underpinnings for combining
`
`Longginou with Morita and Sarbadhikari. Specifically the combination
`
`would “enable formatting of compressed image data to make it compatible
`
`17
`
`Page 17 of 24
`
`
`
`IPR2014-00989
`Patent 7,643,168 B2
`
`with a particular transmission protocol (e.g., a wireless protocol such as
`
`GSM) for transmission to another device. Such functionality would have
`
`created a more versatile mobile phone, capable of sending and receiving
`
`voice and data through different communication networks.” Pet. 37 (citing
`
`Ex. 1008 ¶¶ 119-122).
`
`3. Summary
`
`Based on the foregoing, on this record, we conclude that Petitioner
`
`has demonstrated a reasonable likelihood of prevailing on its challenge of
`
`claims 16–18 as obvious under 35 U.S.C. § 103 over Morita, Sarbadhikari,
`
`and Longginou.
`
`C. Obviousness over Wilska and Yamagishi-992
`
`Petitioner contends that claims 1–6, 8, 10, 11, 16–18, 21, 22, 24, 26,
`
`27 and 29 of the ’168 patent are obvious under 35 U.S.C. § 103 over Wilska
`
`and Yamagishi-992. Pet. 37–57. To support this position, Petitioner
`
`presents the testimony of Mr. Parulski. Ex. 1008 ¶¶ 124–175, Table 3. Id.
`
`at 3738.
`
`1. Wilska
`
`Wilska discloses a hand-held device for personal communication, data
`
`collection, picture taking and data processing. Ex. 1005, Abstract. Wilska
`
`discloses a data processing unit which allows Wilska to act as a notebook
`
`computer. Id. at 3:22–4:4. Wilska includes a camera unit for collecting data
`
`for the computer. Id. at Abstract, 4:28–30; 5:9–10; 7:21–23. Wilska
`
`includes software that allows use of cellular phone services, data and/or
`
`speech transmission, facsimile services, electronic mail, short message
`
`service (“SMS”), camera functions to record images, and other functions.
`
`Id. at 6:4–12.
`
`18
`
`Page 18 of 24
`
`
`
`IPR2014-00989
`Patent 7,643,168 B2
`
`
`2. Yamagishi-992
`
`Yamagishi-992 describes an information signal processing apparatus
`
`with an electronic camera that allows capture, storage and transmission of
`
`images and sound. Ex. 1006, Abstract; 7:35–41. Yamagishi-992’s camera,
`
`as shown in Figure 43, includes basic camera components, as well as A/D
`
`converters, system controlling circuit, image-sound memory (3024),
`
`recording media (3100), compressing-expanding circuit, display devices
`
`(3038, 3054), audio output device, power supply, modem, and a set of
`
`switches (3056) for entering commands, selecting operational modes and
`
`executing various camera operations. Id. at 121:21–58. Three modes of
`
`operation are disclosed: recording mode, reproduction mode, and
`
`transmission mode, which respectively allow selective capture, viewing and
`
`transmission of images and sound captured and stored by the device. Id. at
`
`122:23–126:3, Figs. 44–46. The device can be part of a portable telephone
`
`set and wirelessly transmits and receives control and data signals. Id. at
`
`122:22–25, 147:3–13. Transmissions to an external device are via modem
`
`(3028) controlled by controlling circuit (3050). Id. at 118:58–119:6.
`
`3. Claims 1–6, 8, 10–11, 16–18,
`21–22, 24, 26–27 and 29
`
`The combination of Wilska and Yamagishi-992 is asserted against the
`
`same independent claims 1, 22, 24, 26, 27, and 29 as were Morita and
`
`Sarbadhikari, analyzed in section II.A above. As we did previously, we
`
`begin with claim 1. We are persuaded, on this record, that there is a
`
`reasonable likelihood that Petitioner will prevail in establishing that claim 1
`
`would have been obvious over the combination of Wilska and Yamagishi-
`
`992.
`
`19
`
`Page 19 of 24
`
`
`
`IPR2014-00989
`Patent 7,643,168 B2
`
`
`For example, Petitioner cites to Wilska as the principal reference to
`
`teach many of the elements of claim 1. See Pet. 38–44 (Preamble,
`
`limitations identified at B1, D1, and I1). Yamagishi-992 is relied on the
`
`remaining limitations. For example, claim 1 recites a ““media supported by
`
`the portable housing, the media being suitable to embody at least one
`
`compression algorithm.” Petitioner argues Yamagishi-992 teaches the
`
`limitation in its description of a compression circuit that uses an image
`
`compression algorithm. Pet. 41. Among other portions of Yamagishi-992,
`
`Petitioner points to Yamagishi-992’s adaptive discrete cosine transform
`
`(“ADCT”) algorithm “to compress digital image data that is produced by the
`
`image pickup device and the A/D converter.” Id. (citing Ex. 1006, 12:53–
`
`13:13; 119:38–52; Fig. 1, element 22; Fig. 43, element 3022).
`
`Petitioner asserts a person of ordinary skill in the art would have
`
`found it obvious, to combine the compression algorithm of Yamagishi-992
`
`and the memory of Wilska to store and subsequently read and execute the
`
`image compression algorithm, “since the use of compression would have
`
`reduced the storage space needed for storing images, as well as the
`
`bandwidth needed for transmission of images.” Pet. 42 (citing Ex. 1008 ¶¶
`
`138–140).
`
`Petitioner also uses the combination to show the limitation of claim 1
`
`that an “input device” retains the image in “digital format.” Wilska’s
`
`camera takes and saves pictures with a keyboard and mouse or track ball.
`
`Ex. 1005, 4:13–14, Figs. 1–3, 6–8
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
