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
`
`US Patent No. 7,643,168
`
`Title: Apparatus for Capturing, Converting and Transmitting a Visual Image
`Signal via a Digital Transmission System
`
`___________________________________
`
`DECLARATION OF DR. JOSE LUIS MELENDEZ IN SUPPORT OF
`PATENT OWNER RESPONSE RELATED TO INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,643,168
`___________________________________
`
`E-Watch, Inc.
`EXH. 2008
`Petitioner - HTC Corporation et. al
`Patent Owner - E-Watch, Inc.
`IPR2014-00989
`
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`TABLE OF CONTENTS
`
`INTRODUCTION  .....................................................................................................................................  1  
`I.  
`II.   SUMMARY  OF  OPINIONS  ......................................................................................................................  3  
`III.   QUALIFICATIONS  AND  EXPERIENCE  .....................................................................................................  6  
`A.   EDUCATION AND WORK EXPERIENCE  ..........................................................................  6  
`B.   COMPENSATION STATEMENT  .........................................................................................  9  
`C.  
`INFORMATION CONSIDERED IN FORMING OPINION  .................................................  9  
`IV.   STATEMENT  OF  LEGAL  AND  CLAIM  CONSTRUCTION  PRINCIPLES  .....................................................  10  
`A.   CLAIM CONSTRUCTION LAW  ........................................................................................  10  
`B.   ANTICIPATION  ...................................................................................................................  10  
`C.   OBVIOUSNESS  ...................................................................................................................  11  
`D.   “RETAINED VISUAL IMAGE DATA”  ..............................................................................  11  
`E.  
`“COMMONLY  MOVING”  (CLAIMS  1,  22,  AND  24)  ............................................................  12  
`V.   PERSON  OF  ORDINARY  SKILL  IN  THE  ART  ...........................................................................................  13  
`VI.   OVERVIEW  OF  THE  ‘168  PATENT  .......................................................................................................  15  
`VII.   PATENTABILITY  OF  CLAIMS  1-­‐6,  8,  10,  11,  13-­‐18,  21-­‐29  and  31  OF  THE  ‘168  PATENT  OVER  
`MORITA,  SARBADHIKARI,  AND  LONGGINOU  ................................................................................  16  
`A.   “[PROCESSING PLATFORM] / [PROCESSOR] BEING PROVIDED THE RETAINED VISUAL
`IMAGE DATA”  ..................................................................................................................  16  
`B.  
`[THE]  [COMPRESSED]  VISUAL  IMAGE  DATA”.  ..................................................................  19  
`VIII.   PATENTABILITY  OF  CLAIMS  1-­‐6,  8,  10,  11,  13-­‐18,  21-­‐29  and  31  OF  THE  ‘168  PATENT  OVER  
`WILSKA  AND  YAMAGISHI  ..............................................................................................................  24  
`
`“THE  AT  LEAST  ONE  TRANSMISSION  PROTOCOL  ALGORITHM”  AND  “PROVIDING  
`
`“MEDIA  BEING  SUITABLE  TO  EMBODY…ALGORITHM”  (CLAIMS  1-­‐28)  AND  
`
`
`
`i
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`Page 2 of 43
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`A.  
`B.  
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`“[PROCESSING  PLATFORM]  /  [PROCESSOR]  BEING  PROVIDED  THE  RETAINED  VISUAL  
`
`  
`
`IMAGE  DATA”  ...................................................................................................................  24  
`DATA”.  ..............................................................................................................................  27  
`
`“THE  PERCEPTIBLE  VISUAL  IMAGE  BEING  GENERATED  FROM  THE  [RETAINED]  
`VISUAL  IMAGE  DATA”  AND  “CONVEYING  THE  COMPRESSED  DIGITAL  IMAGE  
`
`
`
`ii
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`I.
`
`INTRODUCTION
`1. My name is Dr. Jose Luis Melendez, I am an independent expert in
`
`the fields of imaging and wireless technologies, and I reside in Lakeway, Texas, a
`
`community in close proximity to the Texas capital city of Austin.
`
`2.
`
`I have been asked to and have conducted a review of Great Britain
`
`2289555A (“Wilska”) and European 0594992A1 (“Yamagishi”) to determine
`
`whether or not these foreign documents are, or combine to be, invalidating prior art
`
`to Patent Owner’s United States Patent No. 7,643,168 (“’168 patent”).
`
`3.
`
`I have also been asked to and have conducted a review of Japanese
`
`H06-133081 (“Morita”) and US 5,477,264 (“Sarbadhikari”) to determine whether
`
`or not these documents are, or combine to be, invalidating prior art to Patent
`
`Owner’s United States Patent No. 7,643,168 (“’168 patent”). Additionally, I have
`
`been asked
`
`to review PCT Application Publication No. WO 95/23485
`
`(“Longginou”) together with Morita and Sarbadhikari in light of Claims 16-18.
`
`4. Additionally, I have reviewed the IPR2014-00989 petition submitted
`
`by HTC Corporation and HTC America, Inc. (“Petitioner(s)”) along with its
`
`exhibits, including the report of Mr. Kenneth Parulski (“Parulski declaration”). I
`
`have also reviewed the IPR petition of Samsung Electronics Co., Ltd. and Samsung
`
`Electronics America, Inc. (together “Samsung”) for the ‘168 Patent, which petition
`
`1
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`I understand may be joined with the subject IPR, though I found the Samsung
`
`petition to add no new substantive arguments over the subject Petition. In this
`
`report, I will address only certain aspects of the petition, patent claims, and
`
`Parulski declaration that I believe will be of particular benefit to the Patent Trial
`
`and Appeal Board (PTAB) in evaluating the petition, in light of the record and
`
`totality of stakeholder arguments, in coming to its final decisions regarding the
`
`‘168 patent.
`
`5.
`
`During the prosecution of the ‘168 patent and prior to its acceptance
`
`and publication, over 150 references were cited as prior art as being relevant to the
`
`allowed invention comprising a combination of both United States and foreign
`
`patents, applications and other publications. Many of these references related to
`
`systems that generally serve to combine imaging and wireless technologies, an
`
`indication, as will be noted in further detail here, that the ‘168 patent claims and
`
`invention that was necessarily distinguished during prosecution from the generic
`
`concept of combining imaging and wireless, of which Wilska and Yamagishi
`
`separately and together, as well as Morita and Sarbadhikari (together with
`
`Longginou for Claims 16-18), separately and together, reveal disclosures and
`
`teachings that are distinguishable from the ‘168 patent. As such, a person of
`
`ordinary skill in the art (POSITA), even as defined by Mr. Parulski, would thus
`
`
`
`2
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`have not been motivated to combine these references, nor have been enabled if
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`having so done, to come to the ‘168 patent’s invention.
`
`6. My report highlights certain aspects of how the ‘168 patent invention
`
`differs from Wilska and Yamagishi, and separately Morita and Sarbadhikari
`
`(together with Longginou for Claims 16-18), in view of the arguments presented in
`
`IPR2014-00989 petition, the Parulski declaration, and in light of the ‘168 patent
`
`itself. My report is intended as a supplement to arguments put forward in the e-
`
`Watch Patent Owner Response to which it is appended.
`
`7.
`
`This declaration and rebuttal is based on the information presently
`
`available to me. Should additional information become available, I reserve the
`
`right to supplement my opinion based upon information that may subsequently
`
`become available which may include a review of information that may be
`
`produced, or from testimony or depositions that are subsequently taken.
`
`II.
`
`SUMMARY OF OPINIONS
`8.
`The claims of the ‘168 Patent are directed to technical issues or needs
`
`related to the image signal chain within integrated imaging and wireless
`
`communications devices that were not well recognized nor understood, and
`
`technical solutions that were not well developed to address the technical issues or
`
`needs, at the time of the priority date of the ‘168 Patent – January 12, 1998.
`
`
`
`3
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`9.
`
`Neither Wilska nor Yamagishi anticipate the ‘168 patent claims, and
`
`neither the Petitioner nor its expert, Mr. Parulski, dispute this claim, relying instead
`
`on an attempted combination of Wilska and Yamagishi together with claims of
`
`obviousness. Similarly, neither Morita nor Sarbadhikari (together with Longginou
`
`for Claims 16-18) anticipate the ‘168 patent claims, and neither the Petitioner nor
`
`Mr. Parulski dispute this claim (together with Longginou for Claims 16-18),
`
`relying instead on an attempted combination of Morita and Sarbadhikari together
`
`with claims of obviousness.
`
`10. As detailed herein, neither Wilska nor Yamagishi (nor their proposed
`
`combination) contain disclosures (enabling or otherwise) particularly with respect
`
`to wireless transmission conveying the compressed digital image data (from which
`
`the perceptible visual image may be generated). Furthermore, neither Wilska nor
`
`Yamagishi (nor their proposed combination) disclose a processor or a processing
`
`platform “being provided the retained visual image data” as is required in all
`
`claims. Yamagishi teaches the opposite, while Wilska is silent on compression.
`
`11. As detailed herein, neither Morita nor Sarbadhikari (nor their
`
`proposed combination) disclose a processor or a processing platform “being
`
`provided the retained visual image data” as is required in all claims, teaching
`
`instead the opposite. As to Claims 16- 18, Longginou does nothing more than
`
`name a laundry list of wireless standards existing in 1995 that were all incapable of
`
`
`
`4
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`transmitting visual image data, and specifically does not disclose any “transmission
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`protocol algorithm” capable of “providing compressed visual image data” in a
`
`compatible format. Indeed, Longginou does not disclose any algorithms
`
`whatsoever.
`
`12. Thus it is my opinion that Claims 1-6, 8, 10, 11, 13-18, 21-29, and 31
`
`of the ‘168 Patent recite distinct features that were not published before and not
`
`otherwise publicly known before the priority date of the ‘168 Patent and as such
`
`are not rendered obvious by the prior art cited in HTC’s IPR2014-00989 petition.
`
`13. Wilska is directed to a rudimentary camera envisioned to convert
`
`visual images into telefax data, the telefax data then transmitted by conventional
`
`fax (9:28-32 – 10:1-2) methods over conventional cellular interfaces (5:29-31) of
`
`Wilska’s time (1995). The camera is envisioned as an alternative means for
`
`inputting text (9:17-20) by a scanner (1:23-30 – 2:1-7).
`
`
`
`14. Yamagishi is directed to an electronic camera with information
`
`processing and data management features with emphasis on the capabilities of the
`
`recording medium. Yamagishi envisioned and details non-cellular interfaces for
`
`data exchange having “connectors” (13:25-30).
`
`
`
`15. Morita is directed to a camera having a portable telephone set
`
`interface to solve the problem of cameras having limited storage abilities.
`
`
`
`5
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`16. Sarbadhikari is directed at electronic imaging architectures making
`
`use of removable storage media to faciliate migration to newer capabilities over
`
`time.
`
`17. Longginou is directed to a portable and conventional telephone with
`
`the added capability of selectively operating on two different wireless systems.
`
`III. QUALIFICATIONS AND EXPERIENCE
`A. EDUCATION AND WORK EXPERIENCE
`18.
`I hold a Doctor of Philosophy in Electrical Engineering from Stanford
`
`University (awarded January 6, 1994) with a Grade Point Average of 4.0/4.0. I also
`
`have a Bachelor of Science in Electrical Engineering from the Massachusetts
`
`Institute of Technology (awarded June 4, 1990) earned with a Grade Point Average
`
`of 5.0/5.0. I also obtained a Master of Science in Electrical Engineering and
`
`Computer Science from the Massachusetts Institute of Technology (awarded
`
`February 20, 1991) with a Grade Point Average of 4.8/5.0.
`
`19. My doctoral thesis involved the definition, solution and validation of a
`
`stiffly coupled differential equation model for the formation of high performance
`
`imaging devices. In performance of my doctoral thesis I developed novel
`
`algorithms for the solution of the complex equations and implemented those
`
`algorithms in computer code. I verified the models and algorithms through
`
`experimentation including constructing and characterizing the sensing portions of
`
`the electronic imaging devices.
`
`
`
`6
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`20.
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`I am co-inventor of patented technology related to the formation and
`
`maintenance of high data rate wireless data links. Devices exhibiting 100 Mb/sec
`
`data rates utilizing the high data rate optical wireless technology were
`
`demonstrated publicly in 2001, and included real time, live transmission of a
`
`feature length film.
`
`21. While at Texas Instruments, I managed the wireless infrastructure
`
`business that designed, tested, and marketed semiconductor components for use
`
`within the radio frequency signal chain of high performance radios used in
`
`infrastructure applications such as cellular base stations. The business group I
`
`managed designed, developed and sold some of the very first radio components
`
`tested in emerging (at the time) generations of cellular systems first capable of
`
`transmitting high speed, high quality images as data by way of digital
`
`transmissions (Multimedia Messaging Service – MMS).
`
`22.
`
`In 2002, I founded Commoca, Inc. (“Commoca”). Commoca
`
`developed hardware, embedded software (or “firmware”), and network services for
`
`the deployment of converged voice and data services over wired and wireless
`
`communications networks. Commoca devices utilized wireless IEEE 802.11
`
`(“WiFi” or “Wi-Fi”) technology to connect touch screen telephones to access
`
`points and were believed to have been amongst the first of such devices to do so.
`
`
`
`7
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`Converged communications devices provided by Commoca were field tested by
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`BellSouth Corporation at consumer locations in Florida and Georgia in 2006.
`
`23.
`
`In 2008, while working as a research consultant for the University of
`
`Texas Southwestern Medical in Dallas (UTSW), I co-invented a novel multi-
`
`wavelength imaging system (US 8,838,211) and worked to develop and produce a
`
`product through a university spinoff company which I led. In early 2013,
`
`following successful clinical studies, the resulting system was cleared by the US
`
`Food & Drug Administration for use in the United States. The system captured
`
`and analyzed high resolution, uncompressed images and subsequently created
`
`pulsatility maps representative of the underlying physiology for use in evaluating
`
`deep tissue wounds. Resulting images were compressed and transmitted over a
`
`variety of communications networks.
`
`24. As highlighted above, my professional experience and knowledge
`
`areas include imaging and wireless communications devices and systems as are
`
`relevant to the subject matter of this report. Also as detailed in my CV in
`
`Exhibit A attached, I am an inventor of subject matter claimed in 28 U.S. Patents.
`
`Additional information concerning my background, qualifications, publications,
`
`conferences, honors, and awards are described in my CV.
`
`
`
`8
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`B. COMPENSATION STATEMENT
`I am paid for my work concerning the subject inter partes review
`25.
`
`(IPR) at a rate of $475 per hour. My compensation is not dependent upon the
`
`outcome of the subject IPR. I may also be reimbursed for travel and other
`
`expenses that I incur in the course of my work on the subject IPR. I have no
`
`personal interest in the outcome of the subject IPR. I have been deposed
`
`previously as an Expert involving infringement and validity of wireless patents.
`
`Prior to this writing, I have never testified at a hearing or trial.
`
`26. The opinions I express in this report are based on my own personal
`
`knowledge and professional judgment. If called as a witness during the
`
`proceedings in the subject IPR, I am prepared to testify competently about my
`
`opinions.
`
`C.
`INFORMATION CONSIDERED IN FORMING OPINION
`27. The documents upon which I rely for the opinions expressed in this
`
`declaration are documents identified in this declaration, including the Petition for
`
`inter partes review of U.S. Pat. No. 7,643,168 B2 (including attachments), the
`
`Decision of Institution for the subject IPR, the ‘168 patent, the ‘168 patent
`
`prosecution history (or at least parts thereof), Wilska, Yamagishi, Morita,
`
`Sarbadhikari, and Patent Owner e-Watch Inc.’s Response. I have also relied on my
`
`
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`own experiences and expert knowledge in the relevant technologies and systems
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`that were in use (or were not in use) at the time of the invention.
`
`IV. STATEMENT OF LEGAL AND CLAIM CONSTRUCTION
`PRINCIPLES
`A. CLAIM CONSTRUCTION LAW
`I understand that a claim in an inter partes review proceeding is
`28.
`
`
`
`interpreted according to its broadest reasonable construction in light of the
`
`specification. 37 C.F.R. §42.100(b). Claim terms are to be given their ordinary and
`
`customary meaning as would be understood by one of ordinary skill in the art in
`
`the context of the entire patent disclosure.
`
`
`
`29.
`
`I understand that the inventor may rebut that presumption by
`
`providing a definition of the term in the specification with reasonable clarity,
`
`deliberateness, and precision; and that a claim term is to be interpreted using its
`
`ordinary and customary meaning to a person of ordinary skill in the art in the
`
`absence of a specialized definition.
`
`
`
`30. As such, I further understand that the customary meaning applies
`
`unless the specification reveals a special definition given to the claim term by the
`
`patentee, in which case the inventor’s lexicography governs.
`
`B. ANTICIPATION
`31.
`I understand that for a patent claim to be valid, it must be novel under
`
`
`
`35 U.S.C. §102. I also understand that the version of 35 U.S.C. §102 in effect
`
`
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`10
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`prior to the American Invents Act is applicable for this IPR. I understand that if
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`each and every limitation of a claim is disclosed in a single prior art reference then
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`the claimed invention is anticipated, though I found no such claims to be made by
`
`the Petitioner. I further understand that it is the Petitioner’s burden to show that
`
`each and every element is described or embodied in the single prior art reference in
`
`order to establish anticipation. I also understand that a prior art reference must be
`
`enabling in order to anticipate a claim.
`
`C. OBVIOUSNESS
`32.
`I understand that for a patent claim to be valid it must be non-obvious
`
`
`
`under 35 U.S.C. §103. I further understand that where any single prior art
`
`reference discloses less than each and every limitation of a patent claim it is being
`
`used against, that patent claim is only invalid under 35 U.S.C. §103 if the
`
`differences between the claimed subject matter and that single prior art reference
`
`are such that the claimed subject matter as a whole would have been obvious at the
`
`time that the invention was made to a person having ordinary skill in the relevant
`
`art. Typically obviousness is shown using a combination of two or more prior art
`
`references that disclose all the limitations of the claimed invention.
`
`D.
`“RETAINED VISUAL IMAGE DATA”
`33. For the purposes of the present IPR, the broadest reasonable
`
`
`
`interpretation of “retained visual image data” is image data that is stored in a
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`manner permitting multiple accesses at the discretion of a human operator over an
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`extended period of time, in contrast to temporarily stored image data acting as a
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`buffer between devices (e.g. a processor and an image pickup device) that allows
`
`the devices to operate independently. The specification of the ‘168 Patent makes
`
`this abundantly clear, as it describes how “memory may selectively capture
`
`images” (7:31-32) and works with an optional viewer device that “permits the
`
`operator to recall and view all or selective images before transmission …. This
`
`permits the operator to review all images retained in the memory 46 and transmit
`
`selective images, as desired,” (7:36-41). Selective recall and viewing is enabled by
`
`the described memory, in which the specification describes the images being
`
`retained. This selective, or discretionary recall requires storage that persists over
`
`time, rather than a merely temporary or transient type of storage.
`
`E.
`
`
`
`34.
`
`TO
`SUITABLE
`BEING
`“MEDIA
`(CLAIMS
`1- 28) AND
`EMBODY…ALGORITHM”
`“COMMONLY MOVING” (CLAIMS 1, 22, AND 24)
`I understand that in its Decision to institute inter partes review
`
`concerning Case IPR2014-00989, the Patent Trial and Appeal Board (PTAB)
`
`construed, “media being suitable to embody . . . algorithm,” and related terms
`
`including both “media” and “algorithm,” as “a storage device for storing software
`
`to perform, among other functions, image compression and storage of transmission
`
`protocols” (p. 7-8). I also understand that the PTAB provided a construction for
`
`
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`“commonly moving” for the purposes of its decision (p. 8). My opinions as set
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`forth in this report are consistent with the proposed constructions, though my
`
`opinions do not rely on the constructions. As such, I do not opine herein
`
`specifically as to the proposed constructions.
`
`V.
`
`PERSON OF ORDINARY SKILL IN THE ART
`35.
`It is my understanding that the claims and specification of a patent
`
`must be read and construed as a person of ordinary skill in the art (POSITA), at the
`
`time of the priority date of the claims, would understand them.
`
`36.
`
`I further understand that the following factors may be considered in
`
`determining the level of ordinary skill in the art: (a) the types of problems
`
`encountered by those working in the field and prior art solutions thereto; (b) the
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`sophistication of the technology in question, and the rapidity with which
`
`innovations occur in the field; (c) the educational level of active workers in the
`
`field; and (d) the educational level of the inventor.
`
`37. The relevant technologies to the ‘168 Patent are those used in
`
`integrating digital cameras together with mobile phones capable of both audio and
`
`image communications on cellular networks. In my opinion, a person having
`
`ordinary skill in the art (POSITA) would have had at least a bachelor’s degree
`
`and/or relevant professional experience in electrical engineering, computer science,
`
`
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`or a related field, and at least one year of experience related to the design of both
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`cellular communications devices and digital imaging products.
`
`38.
`
`In contrast to the declaration of Mr. Parulski (¶28), I strongly disagree
`
`that a person having no experience in the design of cellular communications
`
`devices could be a POSITA. Cellular communication systems have improved
`
`significantly, and rapidly, over the past decades and are highly complex, such that
`
`a person not skilled in the art area would be likely to overstate the capabilities of
`
`cellular systems and/or oversimplify them, and as such would not be able to
`
`effectively develop a product with capabilities as disclosed and claimed in the ‘871
`
`Patent.
`
`39.
`
`Indeed Mr. Parulski’s own background establishes quite clearly his
`
`extensive expertise in digital photography (¶29-56). Yet, Mr. Parulski’s mentions
`
`of communications of images by telephone lines or cellular appear to characterize
`
`the communications portions as mere add-ons, even appearing to suggest (¶31) that
`
`transmitting digital images over “conventional communications channels” would
`
`have been trivial in 1977, yet offering no explanation as to why smartphones
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`capable of capturing, transmitting and receiving digital images over cellular
`
`networks did not exist even over two decades later.
`
`40. Without expert knowledge as
`
`to
`
`the
`
`limitations of cellular
`
`transmission in the 1990s, one could imagine, incorrectly, that cellular systems at
`
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`the time of the ‘871 invention were capable of transmitting or receiving anything,
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`which is simply not true.
`
`41.
`
`In my opinion, in the relevant time period, there were very few
`
`individuals with the necessary skills in both digital camera and cellular
`
`communications or the requisite experience in developing such integrated devices.
`
`VI. OVERVIEW OF THE ‘168 PATENT
`42. An important technological concept to understand in the context of the
`
`‘168 Patent invention is that of an integrated device for framing and preserving
`
`visual images existing in the real world by capturing, digitizing and storing in
`
`memory for subsequent selection from memory, and ultimate transmission to a
`
`remote recipient. The ‘168 patent teaches an integrated system (i.e., a wireless
`
`telephone with an integrated camera) because it teaches a single device having
`
`unified control of all of the image signal chain (from capture to transmission) of
`
`visual images as implemented through use of a wireless telephone and camera.
`
`
`
`43. Important comprehended aspects of the image signal chain include:
`
`1. Visual image data is retained from which the perceptible visual
`
`image may be generated.
`
`2. The retained visual image data may be recalled for viewing or
`
`selected for transmission.
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`3. The retained visual image data is compressed.
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`15
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`4. The compressed visual image data is conveyed to a remote
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`recipient (e.g. another device embodying the ‘168 patent).
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`44. Figure 4 of the ‘168 Patent is particularly instructive as it
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`demonstrates a variety of embodiments of the ‘168 Patent in addition to the G-III
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`protocol that specifically include several compression and transmission protocols
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`that are capable of being “reversed” at the receiver in order to extract the
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`perceptible visual image data from the visual image data in digital format (52 in
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`Figure 4 of ‘168) at the remote recipient (unlike for a fax, as will be discussed later
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`herein).
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`VII. PATENTABILITY OF CLAIMS 1-6, 8, 10, 11, 13-18, 21-29 AND 31 OF
`THE ‘168 PATENT OVER MORITA, SARBADHIKARI, AND
`LONGGINOU
`A.
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`“[PROCESSING PLATFORM] / [PROCESSOR] BEING PROVIDED
`THE RETAINED VISUAL IMAGE DATA”
`In reference to the ‘168 Patent Independent Claim 1 (as well as
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`45.
`
`Claims 1-6, 8, 10, 11, 13-18, and 21 which depend upon Claim 1), Independent
`
`Claim 22 (as well as Claim 23 which depends upon Claim 22), Independent Claim
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`24 (as well as Claim 25 which depends upon Claim 24), Independent Claims 26,
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`27, and 29 (as well as Claim 31 which depends upon Claim 29) significant
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`limitations are noticeably absent from the cited art, Morita and Sarbadhikari.
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`46.
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`Independent Claims 1, 22, 24, 26 and 27 require “at least one
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`processing platform being provided the retained visual image data”, and similarly
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`Independent Claim 29 requires “at least one processor being provided the retained
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`visual image data”. Furthermore, it is the “processing platform” of Independent
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`Claims 1, 22, 24, 26 and 27, and the “processor” of Independent Claim 29 “being
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`operable to execute the at least one compression algorithm”.
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`47. Restated, the processor / processing platform must be provided for
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`compression visual image data that is stored in a manner permitting multiple
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`accesses at the discretion of a human operator over an extended period of time (i.e.
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`retained). Conversely, providing image data temporarily stored in a manner acting
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`as a buffer between devices that allows the two devices to operate independently
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`fails to provide retained visual image data.
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`48. Morita, Sarbadhikari, Petitioner, and Petitioner’s Expert Mr. Parulski
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`all fail to show a prior art processor for compression that is provided retained
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`visual image data. In fact, the memory shown by Morita, Sarbadhikari, Petitioner,
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`and Mr. Parulski is storing the outputted compressed image data, rather than being
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`provided with the retained image data for compression.
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`
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`49. Starting with Morita, note that according to Petitioner (IPR Petition
`
`14:4-9) the retained visual image data is stored in either of elements 10 or 26 of
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`Fig. 1 of Morita, while Petitioner claims the compression is occuring in the “image
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`processing” circuit (element 4 of Morita Fig. 1 and Fig. 10). As is clear from the
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`diagram, Morita is disclosing input for compression that is not the retained visual
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`image data. The output of the compression is the image data that is subsequently
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`retained. Mr. Parulski affirms the proceeding in his expert declaration though he
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`makes reference to the encoding circuit (element 5 of Morita Fig. 1) as
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`compressing the image data. The PTAB, in its decision to institute the IPR, also
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`affirms this conclusion on Page 9 in reference to Fig. 6 of Morita. Thus, whether it
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`is element 4 or element 5 that does the compression, the conclusion remains the
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`same. With apparent unanimous agreement, there is no processing platform or
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`processor shown in Morita that is “provided the retained visual image data” for
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`compression. Note that this is consistent with the entirety of Morita, who’s
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`primary emphasis is in solving the problem of limited memory in cameras. It
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`would not have made sense for Morita to retain images on the camera that were not
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`already efficiently compressed.
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`50. Moving on to Sarbadhikari, the Petitioner (IPR Petition 16:4-10)
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`indicates that processor 22 (of Sarbadhikari Fig. 2) performs the compression and
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`that the output is sent to “a removable storage device”. Erroneously, Petitioner
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`points to Image Buffer 18 as disclosure representing “retained visual image data”.
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`Anyone of ordinary skill in the art knows very well that an image buffer is a
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`fleetingly temporary storage used between devices that allows the devices to
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`operate independently. Such buffers do not “retain” image data as is disclosed in
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`the ‘168 Patent, permitting subsequent, discretionary recall. Indeed, Mr. Parulski’s
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`silence on this matter suggests he could not possibly disagree with such a
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`proposition, since he does not precisely
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`indicate which element within
`
`Sarbadhikari supposedly retains the image data. Instead, Mr. Parulski affirms that
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`the buffer memory does not retain the visual images, but instead “temporarily
`
`stores the images in a buffer memory” (82). The only element disclosed in
`
`Sarbadhikari capable of retaining image data is memory 24 (Fig. 2), which is not a
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`memory that provides image data to a processor for compression, but is instead the
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`exact opposite, a memory that retains image data post compression.
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`B.
`
`51.
`
` “THE AT LEAST ONE TRANSMISSION PROTOCOL
`ALGORITHM”
`AND
`“PROVIDING
`[THE]
`[COMPRESSED] VISUAL IMAGE DATA”.
`In reference to the ‘168 Patent dependent Claims 16-18 significant
`
`limitations are noticeably absent from the cited art, Morita and Sarbadhikari, and
`
`specifically Longginou which is mistakenly alleged by Petitioner to disclose the
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`subject limitations discussed in this section.
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`52. Specifically, Claims 16-18 all require “at least one transmission
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`protocol algorithm” capable of “providing…visual image data” in a “compatible”
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`format. More specifically Claim 16 requires “ execution of the at least one
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`transmission protocol algorithm providing the compressed visual image data in a
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`transmission forma