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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________________________
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`HTC CORPORATION AND HTC AMERICA, INC.
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`Petitioner
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`v.
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`E-WATCH, INC.
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`Patent Owner
` ___________________________________
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`Case: IPR2014-00989
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`Patent No. 7,643,168
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`Title: Apparatus For Capturing, Converting And Transmitting A Visual Image
`Signal Via A Digital Transmission System
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`___________________________________
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`PATENT OWNER E-WATCH INC’S RESPONSE
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`UNDER 37 C.F.R. §42.120
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`___________________________________
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`
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`
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`E-Watch, Inc.
`Petitioner – HTC Corporation et. al
`Patent Owner – E-Watch, Inc.
`IPR2014-00989
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`Patent Owner Response
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`IPR2014-00989
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`TABLE OF CONTENTS
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` I.
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`STATEMENT OF MATERIAL FACTS IN DISPUTE........................................ 1
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`II.
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`INTRODUCTION .................................................................................................... 1
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`A.
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`B.
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`C.
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`Statement Of Relief Requested.................................................................... 1
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`Summary Of Patent Owner’s Argument..................................................... 2
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`Earliest Effective Filing Date Of The ‘168 Patent...................................... 4
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`III. CONTEXT OF INVENTIVE DISCLOSURE OF REFERENCES RELIED
`UPON BY PETITIONER ........................................................................................ 6
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`A.
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`B.
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`C.
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`D.
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`E.
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`F.
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`Japanese Patent Publication No. H06-133081 (“Morita”)......................... 6
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`U.S. Patent No. 5,477,264 (“Sarbadhikari”)............................................... 7
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`PCT Published Application No. WO 95/23485 (“Longginou”) ............... 8
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`United Kingdom Published Application No. GB 2,289,555 (“Wilska”).. 9
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`European Published Application No. 0594992 (“Yamagishi-992”)......... 9
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`U.S. Patent No. 5,550,754 (“McNelley”) .................................................10
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`IV. CLAIM CONSTRUCTION...................................................................................11
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`A.
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`B.
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`C.
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`
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`“Retained Visual Image Data”...................................................................12
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`“Compressed Visual Image Data”.............................................................15
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`“Compressed Digital Image Data”............................................................17
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`V.
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`PATENT OWNER’S RESPONSE TO PETITIONER’S CLAIM ANALYSIS
`AND OBVIOUSNESS ASSERTIONS ....................................................................18
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`A.
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`References Relied Upon In Ground 1 Do Not Disclose Or Suggest All
`Limitations Of The Challenged Claims........................................................18
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`1.
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`2.
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`Compressed Visual Image Data Providing Limitation As Recited
`In Claims 1, 22, 24, 26, 27, and 29.................................................19
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`Compressed Digital Image Data Conveying Limitation As
`Recited In Claims 1, 22, 24, 26, 27, and 29...................................25
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`B.
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`References Relied Upon In Ground 2 Do Not Disclose Or Suggest All
`Limitations Of The Challenged Claims........................................................27
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`1.
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`2.
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`Transmission Format Providing Limitation As Recited In Claim
`16 ......................................................................................................28
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`Transmission Protocol Algorithm Execution Limitation As
`Recited In Claim 16-18...................................................................31
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`C.
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`References Relied Upon In Ground 3 Do Not Disclose Or Suggest All
`Limitations Of The Challenged Claims........................................................32
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`1.
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`2.
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`3.
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`Compressed Visual Image Data Providing Limitation As Recited
`In Claims 1, 22, 24, 26, 27, and 29.................................................33
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`Compressed Digital Image Data Conveying Limitation As
`Recited In Claims 1, 22, 24, 26, 27, and 29...................................37
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`Visual Image Transmission Limitation As Recited In Claims 1,
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`22, 24, 26, 27, and 29 ......................................................................41
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`4.
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`Transmission Format Providing Limitation As Recited In Claim
`16 ......................................................................................................46
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`D.
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`Petitioner’s Obviousness Analysis Is Flawed .............................................49
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`1.
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`Obvious Analysis For Claim 16 in Ground 2 Relies On
`“Conclusory Statements” ...............................................................49
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`VI. CONCLUSION.......................................................................................................54
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`EXHIBIT LIST
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`
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`Currently Filed – Patent Owner
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` [EXH. 2001] U.S. Patent Application No. 11/617,509 of David A. Monroe
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`(“the ’509 Application”)
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` [EXH. 2002] U.S. Patent Application No. 10/336,470 of David A. Monroe
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`(“the ’470 Application”)
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` [EXH. 2003] U.S. Patent Application No. 09/006,073 of David A. Monroe
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`(“the ’073 Application”)
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` [EXH. 2004] PTAB Decision to Institute for IPR2014-00439 (“the ’439
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`decision”)
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` [EXH. 2005] U.S. Patent No. 6,122,526 (“the Parulski ‘526 patent”)
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` [EXH. 2006] U.S. Patent No. 5,943,603 (“the Parulski ‘603 patent”)
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`[EXH. 2007] U.S. Patent No. 5,666,159 (“the Parulski ‘159 patent”)
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`[EXH. 2008] Expert Witness Declaration of Dr. Jose Luis Melendez
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` (“Melendez Declaration”)
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`Previously Filed – Petitioner
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`[Ex. 1001] U.S. Patent No. 7,643,168 (“the ’168 Patent”)
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`[Ex. 1002] Certified Translation of the Japanese Patent Application
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` Publication No. H06-133081 to Morita (“Morita”)
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` and the corresponding Japanese language patent application
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`[Ex. 1003] U.S. Patent No. 5,477,264 to Sarbadhikari et al.
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` (“Sarbadhikari”)
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`[Ex. 1004] PCT Application Publication No. WO 95/23485 to Longginou
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` (“Longginou”)
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`[Ex. 1005] U.K. Patent Application GB 2,289,555 A to Wilska et al.
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` (“Wilska”)
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`[Ex. 1006] European Patent Application Publication No. 0594992 A1 to
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` Yamagishi (“Yamagishi-992”)
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`[Ex. 1007] U.S. Patent No. 5,550,754 B2 to McNelley et al. (“
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` McNelley”)
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`[Ex. 1008] Declaration of Kenneth Parulski including Attachments A-D
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` (“Parulski”)
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`I.
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`STATEMENT OF MATERIAL FACTS IN DISPUTE
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`Petitioner did not submit a statement of material facts in its Petition for Inter
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`Partes review (“the Petition”). Accordingly, no response to a statement of material
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`facts is necessary pursuant to 37 C.F.R. §42.23(a), and no facts are admitted.
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`II.
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`INTRODUCTION
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`Patent Owner E-Watch, Inc. (hereinafter “Patent Owner”) respectfully submits this
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`Patent Owner Response under 35 U.S.C. §§311–319 and 37 C.F.R. §42.120. It is
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`being timely filed by February 20, 2015.
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`“In an inter partes review instituted under this chapter, the petitioner shall have the
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`burden of proving a proposition of unpatentability by a preponderance of the
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`evidence.” 35 U.S.C. §316(e). Petitioner’s propositions of unpatentability fail to meet
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`that burden with respect to any of the claims of U.S. Patent No. 7,643,168 (“the ’168
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`Patent”).
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`A.
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`Statement of Relief Requested
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`Pursuant to 35 U.S.C. §316, Patent Owner respectfully requests that the Patent
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`Trial And Appeal Board (i.e., “the Board”) find that originally issued claims 1-31 of
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`the ‘168 Patent (“the ‘168 Patent Claims”) are not invalid and, specifically, that claims
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`1-6, 8, 10-11, 13-18, 21-29, and 31 of the ‘168 Patent are patentable in view of the
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`instituted grounds of unpatentability.
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`B.
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`Summary of Patent Owner’s Argument
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`None of the proposed grounds of unpatentability are premised on anticipation
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`under 35 U.S.C. §102. Instead, all four of the proposed grounds of unpatentability are
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`premised on obviousness under 35 U.S.C. §103 based upon different combinations of
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`references as follows:
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`(a) Claims 1-6, 8, 10-11, 13-15, 21-29 and 31 alleged as being
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`unpatentable under U.S.C. § 103(a) as being obvious over Japanese
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`Patent Application Publication No. H06-133081 (“Morita”) [Exh.
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`1002] in view of U.S. Patent No. 5,477,264 (“Sarbadhikari”) [Exh.
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`1003];
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`(b) Claims 16-18 alleged as being obvious under 35 U.S.C. § 103(a) over
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`Morita in view of Sarbadhikari and further in view of PCT Published
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`Application No. WO 95/23485 (“Longginou”) [Exh. 1004];
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`(c) Claims 1-6, 8, 10-11, 16-18, 21-22, 24, 26-27 and 29 alleged as being
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`obvious under 35 U.S.C. § 103(a) over United Kingdom Published
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`Application No. GB 2,289,555 (“Wilska”) [Exh. 1005] in view of
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`European Published Application No. 0594992 (“Yamagishi-992”)
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`[Exh. 1006]; and
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`(d) Claims 13-15, 23, 25, 28 and 31 alleged as being obvious under 35
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`U.S.C. § 103(a) over Wilska in view of Yamagishi-992 and further in
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`view of U.S. Patent No. 5,550,754 (“McNelley”) [Exh. 1007].
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`These proposed grounds of unpatentability each fail for at least one reason. One
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`such reason is that the proposed combination of references fails to disclose or suggest
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`each and every limitation as recited by the ‘168 Patent Claims. In particular, as set
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`forth herein, Morita and Wilska (i.e., the primary references relied upon in the Petition
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`for all four proposed grounds of unpatentability) each lack one or more limitations
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`present in each independent claim of the ‘168 Patent and each lack one or more
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`limitations present in at least one of the dependent claims of the ‘168 Patent.
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`Sarbadhikari, Yamagishi-992,Longginou and McNelley (i.e., the secondary references
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`relied upon in the Petition) also do not disclose or suggest these one or more
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`limitations lacking in Morita and Wilska.
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`Another such reason is that, with respect to one or more of the claims in the ‘168
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`Patent, Morita, Sarbadhikari, and Longginou would not and could not have been
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`combined in the manner Petitioner suggests. Petitioner does not articulate a sufficient
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`reason or rational underpinning for the proposed combinations necessary to support a
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`legal conclusion of obviousness under current legal precedent and United States Patent
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`and Trademark Office (“USPTO”) guidelines. Instead, Petitioner’s proposed
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`obviousness grounds are based solely on “mere conclusory statements,” and Petitioner
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`fails to present any cogent reasoning as to why a person of ordinary skill in the art
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`would have or even could have combined the relied upon references to arrive at the
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`invention as recited in claim 16 of the ‘168 Patent. KSR Int’l Co. v. Teleflex Inc., 550
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`U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). These
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`types of allegations fail to provide the specificity required by 37 C.F.R.
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`§42.104(b)(4,5). Consequently, the Petition’s grounds for unpatentability that rely
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`upon the proposed combination of Morita, Sarbadhikari, and Longginou are legally
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`deficient and should be rejected. See 37 C.F.R. §42.104(b)(5); KSR Int’l Co., 550 U.S.
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`at 418 (quoting In re Kahn, 441 F.3d at 988).
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`C.
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`Earliest Effective Filing Date of the ‘168 Patent
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`In its decision regarding institution of proceedings in this matter, the Board has
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`indicated that the earliest effective filing date of the ‘168 Patent is January 12, 1998.
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`@’168 Patent Institution Decision, page 2: footnote 1. The patent application from
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`which the ‘168 patent issued (i.e., U.S. patent application no. 11/617,509 – “the ‘509
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`application” – [EXH. 2001]) is a continuation patent application that claimed priority
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`from copending U.S. patent application no. 10/336,470 (“the ‘470 application” –
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`[EXH. 2002]). The ‘470 application is a divisional application that claimed priority
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`from copending U.S. patent application serial no. 09/006,073 (i.e., “the ‘073
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`application” – [EXH. 2003]). In this respect and consistent with the Board’s
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`determination that the earliest effective filing date of the ‘168 Patent is January 12,
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`1998 (i.e., the filing date of the ‘073 application), priority is provided from the ‘509
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`application to the ‘073 application through the ‘470 application.
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`Neither the ‘509 application nor the ‘470 application is a continuation in-part
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`(“CIP”) application. In view of this continuation status of the ‘509 application with
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`respect to the ‘470 application and the ‘470 application with respect to the ‘073
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`application, all three applications share a common written description. Thus, as
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`determined by the Board, priority of the ‘168 Patent claims is provided by the ‘509
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`application properly claiming priority from the ‘470 application as a continuation
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`patent application thereof and the ‘470 application properly claiming priority from the
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`‘073 application as a divisional application thereof.
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`The Board has previously acknowledged that this type of chain of priority claims
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`for a series of non-CIP applications is sufficient for establishing an earliest effective
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`filing date. Specifically, in its Decision on institution of inter partes review
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`proceedings in IPR2014-00439 (i.e., “the ‘439 IPR decision” – [EXH 2004]), the
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`Board conducted an analysis of facts and determined that the effective filing date for
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`purposes of priority of U.S. patent no. 6,122,526 (i.e., “the Parulski ‘526 patent” –
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`[EXH 2005]) was April 24, 1995. @EXH 2004, page 5:section II.A. This analysis
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`included a determination that the patent application from which the Parulski ‘526
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`patent issued (i.e., U.S. patent application no. 09/232,594, “the Parulski ‘594
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`application”,) is a continuation patent application that claimed priority from
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`copending U.S. patent application no. 08/842,458 (“the Parulski ‘458 application”,
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`which issued as U.S. patent no. 5,943,603 – [EXH 2006]) and that the Parulski ‘458
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`application is a divisional application of U.S. patent application no. 08/426,993 – “the
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`Parulski ‘993 application” ”, which issued as U.S. patent no. 5,666,159 – [EXH
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`2007]). The actual filing date of the Parulski ‘993 application is April 24, 1995. In
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`this respect, priority of the Parulski ‘526 patent is provided by the Parulski ‘594
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`application properly claiming priority from the Parulski ‘458 application as a
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`continuation patent application thereof and the Parulski ‘458 application properly
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`claiming priority from the Parulski ‘993 application as a divisional application thereof.
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`Through its analysis of the priority claims of a series of non-CIP applications, the
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`Board determined that the earliest effective filing date of the Parulski ‘526 patent is
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`April 24, 1995.
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`Likewise, in this proceeding, the Board should maintain its decision that affords
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`an earliest effective filing date to the ‘168 Patent of January 12, 1998 (i.e., the filing
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`date of the ‘073 application), as priority is provided from the ‘509 application to the
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`‘073 application through the ‘470 application.
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`III. CONTEXT OF INVENTIVE DISCLOSURE OF REFERENCES RELIED
`UPON BY PETITIONER
`Japanese Patent Application Publication No. H06-133081 (“Morita”)
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`A.
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`Morita’s invention is directed to an electronic still camera which is equipped with
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`a portable telephone set which sends and receives a signal of telephonic conversation
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`wirelessly. @Morita, 3:14-15. The problem that Morita’s invention is directed to
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`solving is that, although memory cards are used as external storage media, the number of
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`images that can be stored in a memory card is small and memory cards are still
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`expensive. @Morita, 4:8-10. Morita attempts to solve this problem by installing a
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`portable telephone function in order to be able to photograph without loading a memory
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`card. @Morita, 4:15-17. In implementing this solution, Morita discloses that the
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`camera is activated only while a picture is being taken and that taking of the picture
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`results in the phone dialing a previously-inputted number to which the picture or a batch
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`of pictures is to be sent. @Morita, 7:7-15 and 14:11-14. Morita further discloses that it
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`is possible to view previously transmitted images by configuration of the control access
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`so that the recipient’s storage media can be controlled by the transmission circuit, where
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`the image data can be transmitted from the said storage media. @Morita, 11:7-10. In
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`view of the disclosures by Morita, a skilled person would appreciate that Morita seeks to
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`improve the manner in which image data is transmitted from a camera equipped with
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`portable phone functionality to storage of a remote recipient device for reducing memory
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`and storage capacity requirements of the camera and for allowing access to such image
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`data via the storage of a remote recipient device rather than from the camera.
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`B.
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`U.S. Patent No. 5,477,264 to Sarbadhikari et al. (“Sarbadhikari”)
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`Sarbadhikari’s invention is directed to electronic imaging and, more specifically, to
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`electronic imaging with an electronic still camera that utilizes a removable storage
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`device for storing images. @Sarbadhikari, 1:6-9. In clarifying the solution directed to
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`the problem being solved, Sarbadhikari discloses that a camera according to this
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`invention, however, uses the removable media to transfer software previously recorded
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`on the memory card (such as improved camera firmware to process the image, or a
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`special access code) to the camera. The advantageous effect is that the operation of the
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`camera or playback device can be improved some years after the camera is purchased,
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`by using an "enhanced" memory card containing improved software for operating the
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`camera or playback device. @Sarbadhikari, 3:8-16. Therefore, the removable image
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`storage device is capable of two-way communication with the camera. That is, the
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`card slot interface is not limited to "dumping" image data downstream to the
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`removable storage device, but also allows communication from the removable storage
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`device upstream to the camera as well. @Sarbadhikari, 4:47-49. In view of the
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`disclosures by Sarbadhikari, a skilled person will appreciate that this two-way
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`communication capability of the removable storage device is intended to solve the
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`problem of enabling functionality of conventional digital cameras to be readily altered
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`and updated.
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`C.
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`PCT Published Application No. WO 95/23485 (“Longginou”)
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`Longginou’s invention is directed to a multi-mode communication system that
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`includes a hand held phone module and that incorporates means for allowing selection
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`of one from a multiple of available modes of operation. Preferably, the modes of
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`operation comprise different forms of network communications protocols and
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`standards. In a preferred form of the invention, the communications protocols and
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`standards include those associated with cellular telephones, trunk radio systems,
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`Digital GPS networks, and cordless localized access networks. @Longginou, 1:16-
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`2:4. In view of the disclosures by Longginou, a skilled person will appreciate that the
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`invention of Longginou is specifically directed to solving access issues via a single
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`hand held unit to communicate through different communications protocols and
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`standards.
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`D. United Kingdom Published Application No. GB 2,289,555 (“Wilska”)
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`Wilska’s invention is directed to a device for personal communication, data
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`collection and data processing. The device is a small-sized, portable and hand-held work
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`station. @Wilska, abstract:1-2. The device consists of a small-sized housing
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`comprising a data processing unit which contains a data processor with peripheral
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`circuits and memory units, a display, a user interface, a number of peripheral device
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`interfaces, a power source, preferably a battery, and application software. @Wilska, 1:5-
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`9. As specifically disclosed by Wilska, the general purpose of this invention is to
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`provide a new device for personal communication, data collection and processing which
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`improves communication especially between a user and the device. A special purpose
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`of the invention of Wilska is to provide a device for personal communication, data
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`collection and processing which makes it possible to collect data efficiently and to
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`communicate with the environment. @Wilska, 2:1-6.
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`E.
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`European Published Application No. 0594992 (“Yamagishi-992”)
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`
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`Yamagishi-992’s invention is directed to an information signal processing
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`apparatus for recording an information signal in a recording medium. @Yamagishi-
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`992, 1:7-9. The information signal processing apparatus is arranged to receive, as an
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`input, an information signal to temporarily store therein the input information signal
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`and to temporarily store therein management information prepared during a recording
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`of the information signal in the recording medium, thereby recording the temporarily
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`stored information signal and management information in the recording medium.
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`Accordingly, the invention of Yamagishi-992 makes it possible to record an
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`information signal having a large amount of information in the recording medium
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`without lowering a recording speed, and it is also possible to easily reduce the size,
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`weight and cost of the apparatus. @Yamagishi-992, 148:4-17.
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`F.
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`U.S. Patent No. 5,550,754 (“McNelley”)
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`McNelley’s invention is directed to a specially-devised portable video recorder
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`that can be used as a regular recording video camera and as a teleconferencing terminal
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`and video answering machine thereby making video teleconferencing less expensive
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`and more convenient. @McNelley, 1:9-11. McNelley specifically defines the terms
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`"teleconferencing," "video teleconferencing," "video-conferencing," "video telephone,"
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`and "video-phone" to all refer to a communication system that provides simultaneous
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`sound and visual communication. @McNelley, 1:21-24. The invention provides a
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`device that is both a portable hand-held camcorder and is also a complete
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`teleconferencing device that comprises audio and video-phone circuitry and audio and
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`video answering capability. Economy is achieved by allowing components to be used
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`for multiple purposes. The video camera is used for both camcorder purposes, i.e., on
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`vacations, etc., and teleconferencing purposes, i.e., for recording video messages and
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`for transmitting the user's image during a teleconference. @McNelley, 2:44-53.
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`McNelley discloses that a telecamcorder of the invention contains an integral video-
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`phone capable of receiving and sending teleconferencing signals and includes a built-in
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`display to view an incoming teleconferencing signal and a video pickup device that can
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`produce an image of the operator for transmission during teleconferencing. The
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`telecamcorder operates either as a conventional camcorder or a teleconferencing
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`terminal allowing one single device to have multiple uses. @McNelley, 5:1-9.
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`Accordingly, a skilled person will appreciate that the invention of McNelley is
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`specifically directed to communication systems that provide simultaneous sound and
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`visual communication.
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`IV. CLAIM CONSTRUCTION
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`A claim in an inter partes review proceeding is interpreted according to its broadest
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`reasonable construction in light of the specification. 37 C.F.R. § 42.100(b). Claim
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`terms are to be given their ordinary and customary meaning as would be understood by
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`one of ordinary skill in the art in the context of the entire patent disclosure. Phillips v.
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`AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc); Research in Motion v.
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`Wi-Lan, Case IPR2013-00126, Paper 10 at 7 (P.T.A.B. June 20, 2013). The inventor
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`may rebut that presumption by providing a definition of the term in the specification
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`with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475,
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`1480 (Fed. Cir. 1994). A claim term is interpreted using its ordinary and customary
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`meaning to a person of ordinary skill in the art (“POSITA” - @Melendez Declaration,
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`¶35-41) [EXH. 2008] in the absence of a specialized definition. See 77 Fed. Reg.
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`48699-48700 (2012), Response to Comment 35 (citing In re Am. Acad. Of Sci. Tech
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`Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Accordingly, the customary meaning
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`applies unless the specification reveals a special definition given to the claim term by
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`the patentee, in which case the inventor’s lexicography governs. See Phillips, 415 F.3d
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`at 1316 (“[T]he specification may reveal a special definition given to a claim term by
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`the patentee that differs from the meaning that it would otherwise possess. In such
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`cases, the inventor’s lexicography governs.”).
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`A.
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` “Retained Visual Image Data”
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`The term “retained visual image data” is recited in all of the independent claims
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`(i.e., 1, 22, 24, 26, 27, and 29) of the ‘168 Patent. As an example, a representative
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`portion of independent claim 1 that recites “retained visual image data” is reproduced
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`below.
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`… operation of the input device by the user enabling the memory to retain
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`the visual image data in digital format, the memory being suitable to
`provide retained visual image data in digital format… @‘168 Patent,
`15:29-32
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`
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`The ‘168 Patent discloses the following:
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`The memory may selectively capture images, as indicated by the operator
`interface/capture interface 52, or may be programmed to selectively
`capture periodic images or all images. In the embodiment shown in FIG. 2,
`an optional viewer device 48 is provided. This permits the operator to
`recall and view all or selective images before transmission, as indicated by
`the operator interface/recall interface 54. This permits the operator to
`review all images retained in the memory 46 and transmit selective
`images… @’168 Patent, 7:31-40 (emphasis added).
`……
`The configuration of FIG. 3 incorporates all of the features of FIGS. 1 and
`2, and additionally,
`includes an
`interim data compression and
`decompression scheme to permit increased utilization of the memory or
`storage medium 46. As shown in FIG. 3, an interim format compressor 56
`is inserted between the gray scale bit map 16 and the memory device 46.
`This permits compression and reduction of the data required to store
`the image, effectively increasing the capacity of the storage device. It is
`an objective of the storage device to preserve the gray scale quality of the
`image for viewing at the location of capture. An interim format
`decompression device 58 is inserted between the output of the memory
`device 46 and the rest of the system, whether the optional viewer 48 is
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`utilized, or the output is entered directly into the half-tone convertor 18.
`The interim compression/decompression scheme is particularly useful
`when all of the image data is to be permanently archived, or when limited
`capacity portable media are used, such as, by way of example, floppy disks
`or a portable PCMCIA card. It will be noted that the remainder of the
`system shown in FIG. 3 is identical to the system shown and described in
`FIG. 2. @’168 Patent, 7:44-64 (emphasis added).
`…
`An analog to digital (A/D) converter 74 converts the video portion of the
`analog signal from the camera and produces the digital signal for output at
`line 76. The digital output data on path 76 is introduced into a data
`multiplexer circuit 81 and into the RAM memory unit(s) 71, 72. In the
`exemplary embodiment, the portable RAM memory 72 is an image card
`such as, by way of example, a PCMCIA SRAM card or a PCMCIA Flash
`RAM card. However, it will be readily understood that any suitable RAM
`memory configuration can be used within the teachings of the invention. It
`is desirable to store compressed rather than raw data in card 72
`because of space and transmission speed factors. @’168 Patent, 8:50-61
`(emphasis added).
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`
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`The disclosed selective recall and viewing is enabled by the described memory,
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`in which the specification describes the images being retained. Such selective, or
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`discretionary recall requires storage that persists over time, rather than a merely
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`temporary or transient type of storage. Accordingly, in view of the disclosures in the
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`specification of the ‘168 Patent and for the purposes of the present IPR, the broadest
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`reasonable interpretation of “retained visual image data” is image data that is stored
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`in a manner permitting multiple accesses at the discretion of a human operator over
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`an 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
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`the devices to operate independently. See also @ Melendez Declaration, ¶33.
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`B.
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`“Compressed Visual Image Data”
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`The term “compressed visual image data” is recited in all of the independent claims
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`(i.e., 1, 22, 24, 26, 27, and 29) of the ‘168 Patent. As an example, a representative
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`portion of independent claim 1 that recites “compressed visual image data” is
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`reproduced below.
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`… 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… the mobile phone being operable to send to a remote recipient a
`wireless transmission, the wireless transmission conveying the compressed
`digital image data… @‘168 Patent, 14:36-45.
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`
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`The specification of the ‘168 Patent provides the following:
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`As shown in FIG. 4 the image capture device includes the memory device
`46 and the optional viewer 48 for incorporating maximum capability.
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`However, any of the schemes of FIGS. 1-3 would be suitable for producing
`a transmittable signal. In the embodiment shown, a format select
`interface switch 60 is positioned to receive the fully conditioned signal
`on line 59. This would permit either automated or manual selection of the
`transmitting protocol, including the Group-III facsimile system previously
`described in connection with FIGS. 1-3, as indicated by selecting format
`select switch 60 position A; or PC modem protocol as illustrated by the
`JPEG compressor 62 and protocol generator 64, as indicated by selecting
`format select switch position B; or the wavelet compressor and PC modem
`protocol, as illustrated by the wavelet compressor 66 and PC modem
`protocol generator 68 by selecting switch position C; or any selected
`conversion network 65, (if needed) with a compatible compressor 67 (if
`needed) and compatible protocol generator 75 (if needed), as indicated by
`switch position D; or a serial protocol scheme 77, with serial drivers 79
`directly to a hardwired personal computer 81 by selecting switch position
`E. Of course, it will be readily understood by those skilled in the art that
`one or a plurality of transmitting protocols may be simultaneously selected.
`Depending on the protocol selected, the signal output is generated at
`the selected output module and introduced to a communications
`interface module 83 via a modem or other device, as needed, for
`transmission via a transmission system to a compatible receiving
`station such as the Group-III facsimile device 34, the personal
`computer 85, the video telephone 89, and/or other server or receiving
`device 91 for distribution. @’168 Patent, 8:11-41 (emphasis added).
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`The benefit of such compression of retained visual image data arises from the
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`manner in which different modes of image transmission are implemented. Specifically,
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`different modes of visual image data transmission require a respective configuration of
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`image compression. For example, a first mode of visual imag
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