UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`HTC CORPORATION; HTC AMERICA, INC.; SAMSUNG ELECTRONICS
`CO., LTD.; and SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner
`
`v.
`
`E-WATCH, INC. and E-WATCH CORPORATION
`Patent Owner
`
`
`
`
`
`CASE IPR2014-009891
`Patent No. 7,643,168 B2
`
`
`
`
`
`DECLARATION OF KENNETH PARULSKI
`
`
`
`
`
`
`
`
`
`1 Case IPR2015-00543 has been joined with this proceeding.
`
`
`
`
`HTC and Samsung, Ex. 1009
`HTC v. E-Watch, IPR2014-00989
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`HTC CORPORATION; HTC AMERICA, INC.; SAMSUNG ELECTRONICS
`CO., LTD.; and SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner
`
`v.
`
`E-WATCH, INC. and E-WATCH CORPORATION
`Patent Owner
`
`
`
`
`
`CASE IPR2014-009891
`Patent No. 7,643,168 B2
`
`
`
`
`
`DECLARATION OF KENNETH PARULSKI
`
`
`
`
`
`
`
`
`
`1 Case IPR2015-00543 has been joined with this proceeding.
`
`
`
`
`HTC and Samsung, Ex. 1009
`HTC v. E-Watch, IPR2014-00989
`
`
`
`TABLE OF CONTENTS
`
`
`Page
`
`
`
`
`B.
`
`C.
`
`INTRODUCTION .......................................................................................... 1
`I.
`SUMMARY OF OPINIONS .......................................................................... 3
`II.
`III. QUALIFICATIONS AND EXPERIENCE .................................................... 4
`A.
`Education and Work Experience .......................................................... 4
`IV. LEVEL OF ORDINARY SKILL IN THE ART ............................................ 6
`V.
`CLAIMS 1–6, 8, 10, 11, 13–18, 21–29, and 31 ............................................. 8
`
`A. Claim Construction ............................................................................... 9
`1.
`Retained visual image data ........................................................ 6
`2.
`Compressed Visual Image Data ............................................... 11
`3.
`Compressed Digital Image Data .............................................. 11
`The combination of Morita and Sarbadhikari teaches or
`suggests Claims 1, 22, 24, 26, 27 and 29 ........................................... 14
`The combination of Morita, Sarbadhikari and Longginou
`teaches or suggests Claims 16-18 ...................................................... 20
`The combination of Wilska and Yamagishi-992 teaches or
`suggests claims 1, 16, 22, 24, 26, 27 and 29 ...................................... 29
`The Petition Provides Reasons or Motivation to Combine ................ 34
`Responses to Specific Arguments in Melendez Declaration ............. 36
`
`D.
`
`E.
`F.
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`-i-
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`HTC and Samsung, Ex. 1009
`HTC v. E-Watch, IPR2014-00989
`
`
`
`DECLARATION OF KENNETH PARULSKI
`IPR2014-00989 (U.S. PATENT NO. 7,643,168 B2)
`
`I.
`
`INTRODUCTION
`
`1. My name is Kenneth Parulski. I was the former Chief Scientist in the
`
`Digital Camera and Devices Division of Eastman Kodak Company and I am
`
`currently Chief Scientist and Managing Member of aKAP Innovation, LLC, which
`
`I founded in June 2012. aKAP Innovation, LLC provides innovation and digital
`
`photography related consulting services, and participates in the development of
`
`ISO (“International Organization for Standardization”) standards for digital
`
`photography.
`
`2.
`
`I have been engaged by, and compensated by, HTC Corporation and
`
`HTC America, Inc. (“HTC”) to investigate and opine on certain issues relating to
`
`U.S. Patent No. 7,643,168 B2, entitled “APPARATUS FOR CAPTURING,
`
`CONVERTING AND TRANSMITTING A VISUAL IMAGE SIGNAL VIA A
`
`DIGITAL TRANSMISSION SYSTEM” (“the ‘168 Patent”).
`
`3.
`
`I provided a declaration that accompanied HTC’s petition for inter
`
`partes review (IPR) in CASE IPR2014-00989, filed on June 9, 2014 (“HTC
`
`Petition”), as Exhibit 1008 (my “2014 Declaration”), which I incorporate by
`
`reference. My 2014 Declaration provides an explanation of my credentials and
`
`experience, the technology relevant to the ‘168 Patent, and my opinions with
`
`respect to the ‘168 Patent.
`
`
`
`HTC and Samsung, Ex. 1009
`HTC v. E-Watch, IPR2014-00989
`
`
`
`DECLARATION OF KENNETH PARULSKI
`IPR2014-00989 (U.S. PATENT NO. 7,643,168 B2)
`
`
`4.
`
`I understand that, on January 7, 2015, Samsung Electronics Co., Ltd.
`
`and Samsung Electronics America, Inc. filed an IPR petition under CASE
`
`IPR2015-00543 that is essentially a copy of the HTC Petition raising the same
`
`grounds and relying on the same prior art and which includes a copy of my 2014
`
`Declaration. I also understand the Patent Trial and Appeal Board (PTAB) has
`
`ordered to join the Samsung IPR proceeding into the HTC IPR proceeding under
`
`CASE IPR2014-00989.
`
`5.
`
`I make this declaration to address issues raised in Patent Owner’s
`
`(“PO”) Response filed on February 20, 2015 (Paper 15, “PO Response”), and the
`
`Expert Declaration of Dr. Jose Luis Melendez (Exhibit 2008, “Melendez
`
`Declaration”).
`
`6.
`
`This declaration is based on the information currently available to me,
`
`including the ‘168 Patent, the prosecution history for the ‘168 Patent, and the
`
`documents in IPR2014-00989 (including, the prior art references and information
`
`discussed in this declaration and my 2014 Declaration, other references specifically
`
`identified in this declaration and my 2014 Declaration, and the PO Response
`
`(Paper 15), including the Melendez Declaration (Ex. 2008) and other exhibits). I
`
`also rely upon my education, experience and expertise in the relevant technologies
`
`and systems. If additional information becomes available, I reserve the right to
`
`continue my investigation and study.
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`
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`-2-
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`HTC and Samsung, Ex. 1009
`HTC v. E-Watch, IPR2014-00989
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`
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`DECLARATION OF KENNETH PARULSKI
`IPR2014-00989 (U.S. PATENT NO. 7,643,168 B2)
`
`II.
`
`SUMMARY OF OPINIONS
`
`7.
`
`For the purpose of this declaration, I have been asked to provide facts,
`
`analysis and my opinions in response to specific arguments and evidence raised by
`
`the PO Response and the Melendez Declaration.
`
`8.
`
`In my opinion, claims 1–6, 8, 10, 11, 13–18, 21–29, and 31 are taught
`
`or suggested by the prior art:
`
` Claims 1-6, 8, 10-11, 13-15, 21-29 and 31 are taught or suggested by
`
`the combination of Morita and Sarbadhikari (Ex. 1008 at ¶¶ 80-113
`
`and Table 1);
`
` Claims 16-18 are taught or suggested by the combination of Morita,
`
`Sarbadhikari, and Longginou (Ex. 1008 at ¶¶ 114-123 and Table 2);
`
` Claims 1-6, 8, 10-11, 16-18, 21-22, 24, 26-27 and 29 are taught or
`
`suggested by the combination of Wilska and Yamagishi-992 (Ex.
`
`1008 at ¶¶ 124-175 and Table 3); and
`
` Claims 13-15, 23, 25, 28 and 31 are taught or suggested by the
`
`combination of Wilska, Yamagishi-992 and McNelley (Ex. 1008 at ¶¶
`
`176-186 and Table 4).
`
`9.
`
`The PO Response and the Melendez Declaration addressed only
`
`certain limitations of independent claims 1, 22, 24, 26, 27 and 29, and dependent
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`HTC and Samsung, Ex. 1009
`HTC v. E-Watch, IPR2014-00989
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`
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`DECLARATION OF KENNETH PARULSKI
`IPR2014-00989 (U.S. PATENT NO. 7,643,168 B2)
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`claim 16, which are a subset of all claims that are at issue in this IPR proceeding
`
`(“the challenged claims). It is my understanding that PO did not contest and
`
`therefore conceded that the remaining elements of claims 1, 22, 24, 26, 27 and 29,
`
`as well as those in the remaining claims under review, including dependent claims
`
`2-6, 8, 10, 11, 13-15, 17-19, 21, 23, 25, 28 and 31, are taught or suggested by the
`
`above combinations of references. In this declaration, I will address the issues
`
`related to the specific limitations of claims 1, 16, 22, 24, 26, 27 and 29 that were
`
`raised in the PO Response and the Melendez Declaration, but I reserve the right to
`
`further opine on additional limitations.
`
`III. QUALIFICATIONS AND EXPERIENCE
`A. Education and Work Experience
`10. A more detailed explanation of my educational and work credentials
`
`is provided in Paragraphs 11 through 20 of my June 9, 2014 declaration in Ex.
`
`1008 and in my CV, which was included in Attachment A to Ex. 1008. But to
`
`highlight a few key qualifications, I received a Master of Science degree and a
`
`Bachelor of Science degree in Electrical Engineering from the Massachusetts
`
`Institute of Technology in 1980. I completed my master’s thesis research while
`
`working at Motorola Corporate Research Labs from 1978 through 1980, where I
`
`developed a system for transmitting a series of digital images from a moving
`
`vehicle over a wireless communications link to a base station.
`
`
`
`
`-4-
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`HTC and Samsung, Ex. 1009
`HTC v. E-Watch, IPR2014-00989
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`
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`DECLARATION OF KENNETH PARULSKI
`IPR2014-00989 (U.S. PATENT NO. 7,643,168 B2)
`
`
`11.
`
`I spent over 30 years at Eastman Kodak Company and held a variety
`
`of positions including Chief Scientist, Chief Architect, Research Fellow, and
`
`Director. I was involved in numerous research and development projects related to
`
`wireless digital cameras and camera phones, beginning in 1994. I am also a named
`
`inventor on over 35 issued US patents which relate to wireless transmission of
`
`images from digital cameras. Examples of these patents include U.S. Patent No.
`
`5,666,159, titled “Electronic camera system with programmable transmission
`
`capability”, U.S. Patent No. 6,731,952, titled “Mobile telephone system having a
`
`detachable camera / battery module” and U.S. Patent No. 6,784,924, titled
`
`“Network configuration file for automatically transmitting images from an
`
`electronic still camera.”
`
`12.
`
`I have authored more than 50 presentations and papers, including
`
`invited talks on digital cameras in the US, Europe and Asia. I authored the
`
`“Digital Photography” chapter in the Consumer Digital Electronics Handbook by
`
`McGraw-Hill 1997, and co-authored the “Color Image Processing for Digital
`
`Cameras” chapter in the Digital Color Imaging Handbook; CRC Press 2003. I
`
`have also developed and taught Kodak internal courses on video technology and
`
`digital cameras.
`
`13.
`
`I am a named inventor on more than 200 issued United States patents.
`
`Most of these inventions related to digital cameras and digital photography
`-5-
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`HTC and Samsung, Ex. 1009
`HTC v. E-Watch, IPR2014-00989
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`
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`DECLARATION OF KENNETH PARULSKI
`IPR2014-00989 (U.S. PATENT NO. 7,643,168 B2)
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`systems, and have been broadly licensed by Kodak to more than 40 companies for
`
`use in digital cameras, smart phones, and photo sharing services. Licensing these
`
`patents provided Kodak with earnings of more than $2 Billion dollars from 2005 to
`
`2010.
`
`14.
`
`I have served as Chair of the IT10 standards committee for digital
`
`photography since 1994. This group provides the officially recognized United
`
`States input for many international standards used by digital cameras, including
`
`smart phone digital cameras. In addition, from March 2007 through February
`
`2013, I was chair of ISO technical committee 42 (ISO/TC42), which is responsible
`
`for all international photography standards. In May 2013, I was elected chair of
`
`the US technical advisory group to ISO/TC42. From June 3-7, 2013, I served as
`
`head of the US delegation to the 23rd plenary meeting of ISO/TC42, held at the
`
`National Museum in Copenhagen, Denmark.
`
`15.
`
`In short, I spent my career conducting digital imaging research,
`
`inventing new technologies and features for digital cameras and digital
`
`photography systems, developing industry standards used by current digital
`
`cameras and smart phones, and designing a wide range of digital cameras and other
`
`digital imaging products that were sold by Eastman Kodak Company.
`
`
`
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`-6-
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`HTC and Samsung, Ex. 1009
`HTC v. E-Watch, IPR2014-00989
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`
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`DECLARATION OF KENNETH PARULSKI
`IPR2014-00989 (U.S. PATENT NO. 7,643,168 B2)
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`IV. LEVEL OF ORDINARY SKILL IN THE ART
`16. As I provided in my 2014 Declaration, “it is my opinion that a person
`
`having ordinary skill in the art [“POSITA”] would have at least a bachelor’s degree
`
`in electrical engineering, computer science, or a related field, and 3-5 years of
`
`experience in designing digital imaging devices. This description is approximate
`
`and additional educational experience in digital imaging could make up for less
`
`work experience and vice versa.” (Ex. 1008 at ¶ 28).
`
`17.
`
`In the Melendez Declaration (Ex. 2008), PO’s expert states, “In
`
`contrast to the declaration of Mr. Parulski . . . , I strongly disagree that a person
`
`having no experience in the design of cellular communications devices could be a
`
`POSITA” (Ex. 2008 at ¶ 38). PO’s expert argued that “[c]ellular 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 ‘168 Patent.” (id.). This statement does not correctly
`
`characterize the ‘168 patent, and misapprehends the statement in my 2014
`
`Declaration.
`
`18. First. the ’168 Patent provides no new teachings related to the design
`
`of cellular communications devices. It simply describes the use of conventional,
`
`
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`-7-
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`HTC and Samsung, Ex. 1009
`HTC v. E-Watch, IPR2014-00989
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`
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`DECLARATION OF KENNETH PARULSKI
`IPR2014-00989 (U.S. PATENT NO. 7,643,168 B2)
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`well-known imaging related formats and protocols such as the well-known Group-
`
`III facsimile encoding and compression, and Group-III facsimile transmission
`
`protocol, JPEG and wavelet compression and PC modems. For example, there is
`
`no detailed discussion of the designs and capabilities of the cellular telephone
`
`which connects to the cellular interface 130 in FIG. 5; Figures 6A and 6B also only
`
`show a picture of a cellular telephone 164. The ‘168 patent treats the cellular
`
`telephone 164 as a mere add-on device “whereby the image data signal can be
`
`transmitted via the cellular telephone to a remote facsimile machine over standard
`
`cellular and telephone company facilities” (Ex. 1001 at 11:32-35).
`
`19. Second, I do not agree with PO’s expert that my definition of a
`
`POSITA excluded “experience in the design of cellular communications devices.”
`
`To the contrary, the definition I provided assumed that the person would have had
`
`sufficient level of familiarity and knowledge with communications devices capable
`
`of transmitting digital image data including knowledge of wireless
`
`communications at the general level as described in the ‘168 patent.
`
`20. Finally, in the event that the Board finds that the level of skill that I
`
`used is different than what has been suggested by the PO, my opinions regarding
`
`the ’168 patent would not change even under the PO’s definition.
`
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`
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`-8-
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`HTC and Samsung, Ex. 1009
`HTC v. E-Watch, IPR2014-00989
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`
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`DECLARATION OF KENNETH PARULSKI
`IPR2014-00989 (U.S. PATENT NO. 7,643,168 B2)
`
`V. CLAIMS 1–6, 8, 10, 11, 13–18, 21–29, AND 31
`A. Claim Construction
`21.
`I understand that a claim subject to inter partes review receives the
`
`“broadest reasonable construction in light of the specification of the patent in
`
`which it appears” under the Patent Office’s Broadest Reasonable Interpretation
`
`(BRI) standard (see my 2014 Declaration in Ex. 1008 at ¶ 23). Based on my
`
`understanding of this standard, the claim constructions proposed by PO (Paper 15
`
`at 11:16-18:19) are overly narrow, and include additional limitations that are not
`
`part of the language of the claims.
`
`22. Retained visual image data: The PO Response construes this term as
`
`“image data that is stored in a manner permitting multiple accesses at the discretion
`
`of a human operator over an extended period of time” (Paper 15 at 15:1-6). I
`
`disagree with PO’s claim construction because it deviates from the language of the
`
`challenged claims.
`
`23. Claim 1, for example, recites the following with respect to “retained
`
`visual image data” in connection with the recited memory and media: “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
`
`
`
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`-9-
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`HTC and Samsung, Ex. 1009
`HTC v. E-Watch, IPR2014-00989
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`
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`DECLARATION OF KENNETH PARULSKI
`IPR2014-00989 (U.S. PATENT NO. 7,643,168 B2)
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`one compression algorithm, the at least one processing platform being provided the
`
`retained visual image data in digital format.” Hence, claim 1 recites “retained
`
`visual image data” twice, once in the context of memory being suitable to provide
`
`“retained visual image data in digital format” and another time in the context of the
`
`processing platform being provided the “retained visual image data.” “Retained
`
`visual image data” appears in similar form in the other independent claims as well.
`
`The claims do not recite other limitations related to “retained visual image data.”
`
`Specifically, the claims do not state “permitting multiple accesses,” “at the
`
`discretion of a human operator,” or “over an extended period of time” with respect
`
`to the recited “retained visual image data.” Nor do the claims recite memory
`
`enabling the “selective recall and viewing” of images. Therefore, PO’s proposed
`
`construction for “retained visual image data” is not supported by the claim
`
`language.
`
`24.
`
` To support the above interpretation, PO points to in the ‘168
`
`specification at 7:31-40, which includes the statement, “This permits the operator
`
`to review all the images retained in the memory 46 and transmit selective images”
`
`(Paper 15, 13:4-12). However, the ‘168 patent also states that memory 46 may be
`
`a SRAM or a DRAM device (Ex. 1001 at 7:27-31), which are well known to be
`
`volatile random access memory (RAM) devices, which do not retain images when
`
`the user turns off the power, or the batteries are depleted (see, for example,
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`HTC and Samsung, Ex. 1009
`HTC v. E-Watch, IPR2014-00989
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`
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`DECLARATION OF KENNETH PARULSKI
`IPR2014-00989 (U.S. PATENT NO. 7,643,168 B2)
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`Attachment AA at 11-17, “pages 1805 to 1820”). PO also entirely ignores the
`
`embodiment of FIG. 1, which includes temporary “memory device 16” (id. at 6:36-
`
`54).
`
`25.
`
`In addition, PO does not explain what constitutes an “extended period
`
`of time” (e.g. does this mean seconds, minutes, hours, or days?). The ‘168
`
`specification does not define such a period, and is silent on the period of time over
`
`which the images from these different types of media can be accessed.
`
`26. Compressed Visual Image Data: The PO proposes that this term
`
`means “retained visual image data that has been selectively recalled from memory
`
`and thereafter been subjected to a compression algorithm” (Paper 15 at 17:10-12).
`
`I disagree because the claim language of the challenged claims of the ‘168 patent
`
`do not support this construction.
`
`27. The claim term “compressed visual image data” when considered on
`
`its own, and in the context of the challenged claims as a whole, does not require
`
`the “selectively recalled” feature that the PO is proposing. For example, the
`
`relevant sections of claim 1 state: “the memory being suitable to retain the visual
`
`image data in digital format . . . 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.” These
`
`sections of claim 1 are very specific that the processing platform is “being
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`HTC and Samsung, Ex. 1009
`HTC v. E-Watch, IPR2014-00989
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`
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`DECLARATION OF KENNETH PARULSKI
`IPR2014-00989 (U.S. PATENT NO. 7,643,168 B2)
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`provided” the retained visual image data, and do not require being “selectively
`
`recalled” from memory.
`
`28. Compressed Digital Image Data: The PO proposes that this term
`
`should mean “compressed visual image data that is in a digital format” (Paper 15 at
`
`18:13-19). I disagree.
`
`29. First, this proposed construction is ambiguous. It is unclear whether
`
`“that is in digital format” is intended to convey that the “visual image data” is in
`
`digital format, the “visual image data after compression” is in digital format,” or
`
`that the “visual image data” and the “visual image data after compression” are
`
`both in digital format.
`
`30. This term only appears in the claims. In the context of the claims, this
`
`terms appears in the following limitation: “the mobile phone being operable to
`
`send to a remote recipient a wireless transmission, the wireless transmission
`
`conveying the compressed digital image data” (Ex. 1001 at 15:42-46).
`
`31. The specification of the ‘168 patent does not provide a definition for
`
`the term “compressed digital image data.” Figure 4 of the ‘168 patent (reproduced
`
`below) has been characterized by Dr. Melendez as being “particularly instructive”
`
`in showing the embodiments of the ‘168 Patent (Ex. 2008 at ¶ 44). Figure 4 shows
`
`digital image data from digital memory 46 is provided to any one of several
`
`compression boxes in paths A through D, including path D that includes “Any
`-12-
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`HTC and Samsung, Ex. 1009
`HTC v. E-Watch, IPR2014-00989
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`DECLARATION OF KENNETH PARULSKI
`IPR2014-00989 (U.S. PATENT NO. 7,643,168 B2)
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`Compression 67”, before being subject to processing by the corresponding
`
`transmission protocols (i.e., G-III transmit protocol 28, PC Modem Protocol 64,
`
`66, and Any Protocol 75) and transmitted through communication channel 32. The
`
`specification of the ‘168 Patent does not describe details regarding the broad
`
`description of “any compression” for “Any Compression 67” of Figure 4 and does
`
`not limit the format of the data that is produced by the “Any Compression 67” (See
`
`Ex. 1001 at 8:11-41, that describes the relevant components in Figure 4).
`
`Therefore, the visual image data after being compressed at the “Any Compression
`
`67” box can be in analog or digital formats. Therefore, the specification of the
`
`‘168 Patent does not require that the visual image data after compression to be in
`
`digital format.
`
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`
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`-13-
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`HTC and Samsung, Ex. 1009
`HTC v. E-Watch, IPR2014-00989
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`
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`DECLARATION OF KENNETH PARULSKI
`IPR2014-00989 (U.S. PATENT NO. 7,643,168 B2)
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`
`
`
`The combination of Morita and Sarbadhikari teaches or suggests
`B.
`Claims 1, 22, 24, 26, 27 and 29
`32.
`
`I have analyzed the statements made by the PO in Section V-A of the
`
`PO Response, as well as the associated paragraphs in the Melendez Declaration,
`
`regarding the PO-asserted shortcomings or deficiencies of the Morita-Sarbadhikari
`
`combination. In my opinion, and as elaborated below, PO’s assertions are not
`
`credible because they ignore the teachings of the relied upon references, and rely
`
`on improper claim constructions. Such assertions do not overcome the teachings in
`
`the combination of Morita and Sarbadhikari with respect to the limitations in
`
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`-14-
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`HTC and Samsung, Ex. 1009
`HTC v. E-Watch, IPR2014-00989
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`
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`DECLARATION OF KENNETH PARULSKI
`IPR2014-00989 (U.S. PATENT NO. 7,643,168 B2)
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`claims 1, 22, 24, 26, 27 and 29 as I analyzed in my 2014 Declaration (Ex. 1008 at
`
`¶¶ 80-113 and Table 1).
`
`33. PO’s arguments in Section V-A-1 of PO’s Response rely on PO’s
`
`construction of the term “Retained Visual Image Data” that requires storage in
`
`memory “in a manner permitting multiple accesses at the discretion of a human
`
`operator over an extended period of time.” I disagree with this interpretation as
`
`explained in the claim construction section. PO then argues that neither
`
`Sarbadhikari nor Morita describe retaining the image data in memory. In this
`
`regard, the Melendez Declaration further argues “Petitioner points to Image Buffer
`
`18 as disclosure representing ‘retained visual image data’. Anyone of ordinary skill
`
`in the art knows very well that an image buffer is a fleetingly temporary storage
`
`between devices that allows the devices to operate independently.” (Ex. 2008 at ¶
`
`50).
`
`34.
`
`I disagree, both as an expert in this technology area on digital image
`
`data storage, and as one of the named inventors in Sarbadhikari, one of many
`
`digital camera patents filed by Eastman Kodak Company in the early or mid 1990s.
`
`As evident from Sarbadhikari’s Figure 2, the image buffer 18 is a random access
`
`memory (RAM) that can hold multiple images (e.g., frames (frames 1, 2, 3, etc.))
`
`(Ex. 1003 at 6:11-14). These statements by the PO and by Dr. Melendez provide
`
`no explanation as to why Sarbadhikari’s image buffer 18, which is capable of
`-15-
`
`
`
`
`HTC and Samsung, Ex. 1009
`HTC v. E-Watch, IPR2014-00989
`
`
`
`DECLARATION OF KENNETH PARULSKI
`IPR2014-00989 (U.S. PATENT NO. 7,643,168 B2)
`
`storing multiple still images and is implemented using a RAM (Id.), provides
`
`“fleetingly temporary storage” while similar RAM in the ‘168 patent (Ex. 1001 at
`
`7:24-34) provides storage that permits access “over an extended period of time.”
`
`As has been well known for decades, a random access memory (RAM), including
`
`the RAM in both Sarbadhikari and the ‘168 patent can store one or more images
`
`and permits multiple accesses at the discretion of a human operator for a period of
`
`time which ends when the operator turns off the power to the device, when the
`
`batteries are depleted, or when the stored image data is overwritten with new
`
`image data as a result of the operator capturing enough new images. Hence, the
`
`contentions made in the PO Response and the Melendez Declaration contradict
`
`Sarbadhikari.
`
`35. Additionally, even under PO’s narrow interpretation of “retained
`
`visual image data”, Sarbadhikari teaches an embodiment which involves storing
`
`the “raw” (uncompressed) image on a memory card and processing the image at
`
`later time: “Processing according to the downloaded algorithm may alternatively
`
`take place as the image data is originally being processed for initial storage at
`
`points 42 or 44, or may be applied at a later time after the initial storage of the
`
`image is complete at point 46. FIG. 5 is a flow diagram showing the steps of
`
`subsequent processing at point 46 (FIG. 4), including after a time lapse. There
`
`may be utility in storing the initial capture in raw form so that different
`-16-
`
`
`
`
`HTC and Samsung, Ex. 1009
`HTC v. E-Watch, IPR2014-00989
`
`
`
`DECLARATION OF KENNETH PARULSKI
`IPR2014-00989 (U.S. PATENT NO. 7,643,168 B2)
`
`algorithms can be applied to achieve the most desirable result. The processing
`
`algorithms themselves, examples of which were described earlier, are
`
`conventional and not themselves part of this invention.” (Ex. 1003 at 9:17-27,
`
`emphasis added, Fig. 5). The removable storage device in Sarbadhikari can be a
`
`PCMCIA card (Id. at 6:45-55), which also corresponds to the ‘168 Patent’s
`
`description of its memory as a “PCMCIA format removable memory” (Ex. 1001 at
`
`7:27-30).
`
`36.
`
`Image compression is one example of a processing algorithm that was
`
`described in Sarbadhikari: “The algorithms and other operating code used by the
`
`processor 22 are stored in the algorithm memory 28. The digital signal processor
`
`22 compresses each still image stored in the image buffer 18 according to a
`
`known image compression algorithm, such as the well-known JPEG (Joint
`
`Photographic Experts Group) discrete cosine transformation-based compression
`
`algorithm. The processor 22 applies a compression algorithm from the memory 28
`
`to the digital image signals, and sends the compressed signals to a removable
`
`storage device via an interface 26.” (Id. at 6:30-40, emphasis added). The memory
`
`card 24 can contain Flash EPROM memory (Id. at 6:53-54). The processing
`
`algorithms, which are downloaded from the memory card 24 can include
`
`compression tables, and the list of algorithms which can be updated includes
`
`compression algorithms (Id. at 4:59-68).
`-17-
`
`
`
`
`HTC and Samsung, Ex. 1009
`HTC v. E-Watch, IPR2014-00989
`
`
`
`DECLARATION OF KENNETH PARULSKI
`IPR2014-00989 (U.S. PATENT NO. 7,643,168 B2)
`
`
`37. Therefore, a POSITA would have understood that Sarbadhikari
`
`teaches that images can be captured and initially stored on a memory card, such as
`
`a PCMCIA card, as “raw” format files, which are later processed by the processing
`
`platform in the camera to produce “finished” JPEG format files. This is a common
`
`feature in many current D-SLR cameras.
`
`38. This teaching in Sarbadhikari negates PO’s assertions. As one of the
`
`named inventors in Sarbadhikari, it is my opinion that the application of these
`
`teachings from Sarbadhikari in the device of Morita is a simple design choice that
`
`would have been straightforward to a POSITA. Morita uses a memory card 10 in
`
`FIG. 1, which is obviously capable of storing the uncompressed image data
`
`provided from image processing circuit 4. A POSITA would have understood that
`
`encoding circuit 5 in Morita can be used to compress the “raw” visual image data
`
`read from the memory card 10 as the image was being transmitted, and that it is not
`
`necessary to store the compressed image data prior to transmission.
`
`39.
`
`In Section V(A)(2) of PO’s Response, PO asserts that the claims
`
`require compressed image data to be “transmitted without being subsequently
`
`retained in the memory after being generated by the at least one compression
`
`algorithm” (Paper 15 at 26:13-15), and that because the stored image data in
`
`Morita is not subject to any compression algorithm after being retrieved from
`
`memory, the disclosure in Morita does not meet the required claim limitations (Id.
`-18-
`
`
`
`
`HTC and Samsung, Ex. 1009
`HTC v. E-Watch, IPR2014-00989
`
`
`
`DECLARATION OF KENNETH PARULSKI
`IPR2014-00989 (U.S. PATENT NO. 7,643,168 B2)
`
`at 27:3-7). PO’s assertions, however, are incorrect and are not supported by the
`
`claims and specification of the ‘168 Patent.
`
`40. The claims of the ‘168 patent do not exclude storage of compressed
`
`image data prior to transmission and do not have any language that indicates such
`
`exclusion. For example, the portions in claim 1 related to “compression” are
`
`reproduced below: “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.” Nothing in the above claim language
`
`prohibits storage of compressed image data prior to transmission.
`
`41.
`
`I also disagree with PO’s assertions because the specification of the
`
`‘168 Patent does not exclude storage of compressed image data prior to
`
`transmission. In fact, in contrast to PO’s assertions, the ‘168 Patent provides
`
`several examples of where compressed image data is stored in memory prior to
`
`transmission: “the image card 72 is a DRAM card or non volatile storage card …
`-19-
`
`
`
`
`HTC and Samsung, Ex. 1009
`HTC v. E-Watch, IPR2014-00989
`
`
`
`DECLARATION OF KENNETH PARULSKI
`IPR2014-00989 (U.S. PATENT NO. 7,643,168 B2)
`
`provides a removable medium for storing the image data as either raw or
`
`compressed data” (Id. at 10:37-40, emphasis added). The specification of the ‘168
`
`Patent also describes that storage of compressed data can be advantageous: “It is
`
`desirable to store compressed rather than raw data in card 72 because of space
`
`and transmission speed factors.” (Ex. 1001 at 8:59-61). The ‘168 Patent further
`
`states: “The image can also be stored in the selected output mode, such as by way
`
`of example, a Group III facsimile mode” (Id. at 13:48-53, emphasis added). It is
`
`clear from this description that the storage of data occurs after the image data has
`
`been compressed. For example, the Group III fax data is compressed via bi-level
`
`compression. The output data, as shown in Figure 4 of the ‘168 Patent can also
`
`include JPEG compressed data and wavelet compressed data.
`
`42.
`
`It is therefore my opinion that there is nothing in the claims or
`
`specification of the ‘168 patent that excludes storage of compressed images prior
`
`to transmission from the claims. Therefore, PO’s assertions regarding the
`
`deficiencies in the disclosure of Morita in Section (V)(A)(2) of the PO’s Response
`
`are incorrect.
`
`
`
`
`-20-
`
`HTC and Samsung, Ex. 1009
`HTC v. E-Watch, IPR2014-00989
`
`
`
`DECLARATION OF KENNETH PARULSKI
`IPR2014-00989 (U.S. PATENT NO. 7,643,168 B2)
`
`
`The combination of Morita, Sarbad
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