UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`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
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`
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`
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`
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`
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`
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`1 Case IPR2015-00543 has been joined with this proceeding.
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`IPR2014-00989
`Petitioner’s Reply To Patent Owner’s Response
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`
`TABLE OF CONTENTS
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`Page
`
`2.
`
`2.
`
`3.
`
`B.
`
`C.
`
`D.
`
`INTRODUCTION .......................................................................................... 1
`RESPONSE TO PATENT OWNER’S ARGUMENTS ................................ 1
`A.
`PO’s claim construction fails to comply with the broadest
`reasonable interpretation standard ........................................................ 1
`1.
`Retained Visual Image Data ...................................................... 1
`2.
`Compressed Visual Image Data ................................................. 3
`3.
`Compressed Digital Image Data ................................................ 4
`The combination of Morita and Sarbadhikari teaches or
`suggests all limitations of claims 1-6, 8, 10-11, 13-15, 21-29,
`and 31 (Ground 1) ................................................................................ 5
`1.
`The combination of Morita and Sarbadhikari teaches or
`suggests compression of retained visual image data ................. 5
`The combination of Morita and Sarbadhikari teaches or
`suggests transmission of compressed image data ...................... 7
`The combination of Morita, Sarbadhikari and Longginou
`teaches or suggests all the feature of claims 16-18 (Ground 2) ........... 8
`1.
`Storage of Compressed Image Data ........................................... 8
`2.
`Transmission Protocol Algorithm .............................................. 9
`The combination of Wilska and Yamagishi-992 teaches or
`suggests all limitations in claims 1, 22, 24, 26, 27 and 29
`(Ground 3) .......................................................................................... 13
`1.
`The combination of Wilska and Yamagishi-992 teaches
`or suggests compression of retained visual image data ........... 13
`The combination of Wilska and Yamagishi-992 teaches
`or suggests wireless transmission of compressed digital
`data ........................................................................................... 15
`The combination of Wilska and Yamagishi-992 describes
`providing compressed image data ............................................ 15
`
`I.
`II.
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`IPR2014-00989
`Petitioner’s Reply To Patent Owner’s Response
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`TABLE OF CONTENTS
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`Page
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`F.
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`E.
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`Claim 16 is obvious over the combination of Wilska and
`Yamagishi-992 ................................................................................... 23
`PO’s stated reasons for Petitioner’s allegedly flawed
`obviousness arguments against claim 16 are without merit ............... 24
`III. CONCLUSION ............................................................................................. 25
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`IPR2014-00989
`Petitioner’s Reply To Patent Owner’s Response
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`EPOS Techs. Ltd. v. Pegasus Techs. Ltd.,
`766 F.3d 1338 (Fed. Cir. 2014) ...................................................................... 3, 22
`
`Vivid Techs., Inc. v. Am. Sci. & Eng’r, Inc.,
`200 F.3d 795 (Fed. Cir. 1999) .................................................................... 8, 9, 14
`
`Nichia v. Emcore,
`IPR2013-00005, Final Written Decision, Paper 68 (Feb. 11, 2014) .................... 3
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`IPR2014-00989
`Petitioner’s Reply To Patent Owner’s Response
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`
`
`Exhibit #
`1001
`
`EXHIBIT LIST
`
`Brief Description
`U.S. Patent No. 7,643,168 B2 to David A. Monroe (“the ‘168 Patent”)
`
`1002
`
`Certified Translation of the Japanese Patent Application Publication No.
`
`H06-133081 to Morita (“Morita”) and the corresponding Japanese
`
`language patent application
`
`
`
`
`
`1003
`
`U.S. Patent No. 5,477,264 to Sarbadhikari et al. (“Sardabhikari”)
`
`
`
`1004
`
`PCT Application Publication No. WO 95/23485 to Longginou
`
`(“Longginou”)
`
`
`
`1005
`
`U.K. Patent Application GB 2,289,555 A to Wilska et al. (“Wilska”)
`
`1006
`
`European Patent Application Publication No. 0594992 A1 to Yamagishi
`
`(“Yamagishi-992”)
`
`
`
`1007
`
`U.S. Patent No. 5,550,754 B2 to McNelley et al. (“McNelley”)
`
`1008
`
`Declaration of Kenneth Parulski including Attachments A-D
`
`
`
`1009
`
`Rebuttal Declaration of Kenneth Parulski in Support of Petitioner’s
`
`Reply to Patent Owner’s Response of February 20, 2015
`
`1010
`
`Select Sections of e-Watch Preliminary Infringement Contentions
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`IPR2014-00989
`Petitioner’s Reply To Patent Owner’s Response
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`
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`I.
`
`INTRODUCTION
`
`The Board instituted an IPR of claims 1-6, 8, 10, 11, 13-18, 21-29, and 31 of
`
`the ‘168 Patent under 35 U.S.C. §103 (Paper 6). Patent Owner (“PO”) filed the
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`Patent Owner Response (“Response,” Paper 15) to the Petition along with a
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`declaration by Dr. Jose Melendez (Ex. 2008) on February 20, 2015. On March 6th,
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`the Board joined IPR2015-00543, which was filed by Samsung against the ‘168
`
`Patent, with this proceeding. In reply to PO’s Response, Petitioner timely submits
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`this reply (“Reply”) accompanied by a rebuttal declaration by Mr. Kenneth
`
`Parulski (Ex. 1009). The evidence and analyses offered by Petitioner and PO in
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`this proceeding shows by a preponderance of the evidence that claims 1-6, 8, 10,
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`11, 13-18, 21-29, and 31 are invalid and must be canceled.
`
`II. RESPONSE TO PATENT OWNER’S ARGUMENTS
`
`A.
`PO’s claim construction fails to comply with the broadest
`reasonable interpretation standard
`
`
`
`PO’s Response proposes claim constructions for three terms (Paper 15,
`
`11:16-18:19). However, the proposed constructions have no basis in the claims and
`
`the ‘168 patent specification under the BRI standard.
`
`
`
`1.
`
`Retained Visual Image Data: PO construes “retained visual image
`
`data” 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, in contrast to
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`IPR2014-00989
`Petitioner’s Reply To Patent Owner’s Response
`temporarily stored image data” (Paper 15 at 15:2-6). PO’s construction
`
`impermissibly imports limitations into the claims that are inconsistent with the
`
`claim language and the specification. The claims merely recite “memory” suitable
`
`to “receive,” “retain,” and “provide” “visual image data in digital format.” The
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`“visual image data” is “retained” in response to “operation of the input device by
`
`the user,” and “at least one processing platform” (or “processor”) is “provided the
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`retained visual image data in digital format” for the purpose of “providing
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`compressed visual image data.” The claims do not recite “multiple accesses,” “an
`
`extended period of time,” “discretion of a human operator,” or “selective recall and
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`viewing” of images (id. at 14), as PO contends. In fact, PO’s construction
`
`introduces confusion into the claims. For example, “extended period of time” is
`
`vague because a POSITA would not know how long is an “extended period of
`
`time.” Thus, there is no basis in the claim language for PO’s construction.
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`
`
`Moreover, PO’s construction has no basis in the ‘168 Patent specification.
`
`The terms “multiple accesses,” “an extended period of time” or “discretion of a
`
`human operator” are not disclosed in the specification.2 Nor is there any specific
`
`
`
`2 The specification does not recite “retained visual image data.” The term
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`“retained” appears only once, but the specification does not define the term with
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`IPR2014-00989
`Petitioner’s Reply To Patent Owner’s Response
`discussion of “multiple accesses at the discretion of a human operator over an
`
`extended period of time,” or comparison between storage of image data “over an
`
`extended period of time” and “temporarily stored image data.” PO’s claim
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`construction is also inconsistent with the specification’s disclosure of SRAM and
`
`DRAM (Ex. 1001 at 7:24:34), which are temporary memory devices that lose their
`
`stored contents when powered off (Ex. 1009 at ¶¶ 24, 34). Furthermore, PO’s
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`construction is improper because it inexplicably excludes the embodiment of FIG.
`
`1, which includes temporary “memory device 16” (id. at 6:36-54). EPOS Techs.
`
`Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338, 1347 (Fed. Cir. 2014).
`
`
`
`Therefore, PO’s proposed construction violates the BRI standard and must
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`be dismissed. This term should be given its plain and ordinary meaning under the
`
`BRI standard (see also Ex. 1009 at ¶¶ 22-25).
`
`
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`2.
`
`Compressed Visual Image Data: The challenged claims recite, “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” (e.g., Ex. 1001 at 15: 35-42). PO construes this
`
`term as “retained visual image data that has been selectively recalled from memory
`
`
`
`reasonable clarity, deliberateness, and precision. See Nichia v. Emcore, PTAB
`
`Case IPR2013-00005, Final Written Decision, Paper 68 at pp. 7-8 (Feb. 11, 2014).
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`IPR2014-00989
`Petitioner’s Reply To Patent Owner’s Response
`and thereafter been subjected to a compression algorithm” (Paper 15 at 17:15-13).
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`As an initial matter, because PO’s construction of this term includes “retained
`
`visual image data,” PO’s construction is wrong for the reasons discussed in Section
`
`(II)(A)(1) with respect to “retained visual image data.” Further, PO’s construction
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`of “compressed visual image data” requires an image be “selectively recalled”
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`from memory prior to compression, but the claims do not recite this feature. PO
`
`attempts to improperly import limitations from certain embodiments in the
`
`specification, while ignoring others, including the embodiment of FIG. 1, which
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`does not recite selective display and transmission of images. (Ex. 1001 at 6:36-54).
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`
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`Thus, this term should be given its plain and ordinary meaning under the
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`BRI standard (see, also, Ex. 1009 at ¶¶ 26-28).
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`
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`3.
`
`Compressed Digital Image Data: The term “the compressed digital
`
`image data” lacks antecedent basis in the claims and does not appear in the ‘168
`
`Patent specification. Notwithstanding, this term appears to refer to the “retained
`
`visual image data in digital format” that is compressed to provide “compressed
`
`visual image data,” as recited in the claims. This interpretation is consistent with
`
`the specification, which in Figures 2 and 4 shows that image data from digital
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`memory 46 is provided to compression box 18, 62, 66, or 65 (see, also, Ex. 1009 at
`
`¶¶ 22-25). On the other hand, PO’s construction of the term as “compressed visual
`
`image data that is in a digital format” (Paper 15 at 18:13-19) is ambiguous because
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`IPR2014-00989
`Petitioner’s Reply To Patent Owner’s Response
`it is unclear whether the phrase “that is in digital format” modifies the “visual
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`image data” or the “compressed visual image data,” or both. Figure 4 of the ‘168
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`Patent discloses that image data, subsequent to compression, can be in any format
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`(see, Ex. 1009 at ¶31). Thus, PO’s construction improperly limits the image data
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`after compression to necessarily be in digital format (id. at ¶¶ 28-31).
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`
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`Therefore, under BRI, this term should be given its plain and ordinary
`
`meaning. To the extent that any construction is needed under the BRI, this term
`
`should be construed to mean “digital image data that has been compressed.”
`
`B.
`The combination of Morita and Sarbadhikari teaches or suggests
`all limitations of claims 1-6, 8, 10-11, 13-15, 21-29, and 31 (Ground 1)
`
`
`
`PO’s assertions against the combination of Morita and Sarbadhikari should
`
`be rejected because they are based on erroneous claim construction positions and a
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`misreading of the prior art (Paper 15 at 19:7 to 25:15, 25:16 to 27:17).
`
`
`
`1.
`
`The combination of Morita and Sarbadhikari teaches or suggests
`
`compression of retained visual image data: PO argues that the combination of
`
`Morita and Sarbadhikari does not disclose the compression of retained visual
`
`image data, as recited in the challenged claims, because the combination does not
`
`disclose compression of data that is stored in “a device in which visual image data
`
`can be retained (i.e., retained visual image data) and from which it can be
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`retrieved” (i.e., stored in a manner permitting multiple accesses at the discretion of
`
`a human operator over an extended period of time, in contrast to temporarily stored
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`IPR2014-00989
`Petitioner’s Reply To Patent Owner’s Response
`image data ) (id. at 15 and 19-25). In other words, PO contends that Morita and
`
`Sarbadhikari fail to teach or suggest a memory that retains the visual image data
`
`prior to compression (but rather both of these references only describe storage of
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`image data after compression) (id. at 23:9 to 24:9).
`
`
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`PO’s argument is without merit because it is premised solely on its proposed
`
`claim constructions of “retained visual image data” and “compressed visual image
`
`data,” which, for the reasons discussed above, have no basis in the claims and
`
`specification. Properly construed under the BRI, these terms do not exclude
`
`compression of data retained in temporary memory. Therefore, as described in the
`
`Petition, Sarbadhikari’s description of RAM (referred to as “image buffer 18”) that
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`stores a plurality of captured visual image data in digital format (Ex. 1003 at 6:11-
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`14, Fig. 2; Paper 1 at 16:4-10), and provides the stored image data to a signal
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`processor for compression (Ex. 1003 at 6:33-40, Fig. 2; Paper 1 at 16:4-10),
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`discloses the compression of retained visual image data of the challenged claims.
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`
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`The challenged claims broadly recite “the memory being suitable to retain
`
`the visual image data in digital format” and thus do not restrict the memory to any
`
`particular type of memory. The ‘168 Patent specification discloses examples of the
`
`memory in various configurations, including a memory (which PO admits as being
`
`represented by memory device 46 in Figures 2-4 (Paper 15 at 20:5-7)) that can be a
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`temporary memory in the form of a SRAM or a DRAM (Ex. 1001 at 7:24-34).
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`IPR2014-00989
`Petitioner’s Reply To Patent Owner’s Response
`Sarbadhikari’s RAM, therefore, is consistent with the claims and the description of
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`SRAM or DRAM in the ‘168 specification (see also Ex. 1009 at ¶34).
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`
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`Sarbadhikari also describes an embodiment where captured images are first
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`stored on a removable memory in raw format, and after a time lapse (e.g., in
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`“Ready” mode), the stored raw image data is retrieved and subjected to a
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`processing algorithm such as a compression algorithm (Ex. 1003 at 6:30-40, 9:17-
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`27, Fig. 5; Ex. 1009 at ¶¶ 35-38). Sarbadhikari’s removable memory can be a
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`PCMCIA card (Ex. 1003 at 6:45-55), which is consistent with the ‘168 Patent
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`specification’s disclosure of “PCMCIA format removable memory” (Ex. 1001 at
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`7:27-30). Therefore, Sarbadhikari teaches the compression of retained visual image
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`data even under PO’s erroneous proposed construction.
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`
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`2.
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`The combination of Morita and Sarbadhikari teaches or suggests
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`transmission of compressed image data: PO asserts that Morita and Sarbadhikari
`
`fail to teach or suggest the transmission of compressed image data, because this
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`combination does not disclose the transmission of compressed image data “without
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`being subsequently retained in the memory after being generated by the at least one
`
`compression algorithm” (Paper 15 at 26:6-27:10). Neither the claims nor the
`
`specification, however, preclude storing compressed image data prior to
`
`transmission, and PO provides no proof to the contrary.
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`
`
`In fact, PO’s argument is inconsistent with the specification of the ‘168
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`IPR2014-00989
`Petitioner’s Reply To Patent Owner’s Response
`Patent that storage of data in compressed format is desirable “because of space and
`
`transmission speed factors” (Ex. 1001 at 8:59-61), and that “[t]he 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). Stored Group III fax data constitutes stored
`
`compressed image data because it undergoes compression operations prior to
`
`storage (id. at 11:3-7; FIG. 2, elements 18 and 24; Ex. 1009 at ¶ 41). Stored
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`compressed image data is also described in the form of image data stored in the
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`selected output mode in JPEG- or Wavelet-compressed format (i.e., modes B and
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`C of switch 60 in FIG. 4 of ‘168 Patent) (Ex. 1001 at 8:15-32, and Fig. 4). In
`
`addition, the ‘168 specification describes that “the image card 72 is a DRAM card
`
`or non volatile storage card . . . and provides a removable medium for storing the
`
`image data as either raw or compressed data” (id. at 10:37-40; Ex. 1009 at ¶ 41).
`
`
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`Moreover, the challenged claims use the open-ended, inclusive “comprising”
`
`term in defining the claimed combinations, and therefore “do not exclude the
`
`presence . . . of factors in addition to those explicitly recited.” Vivid Techs., Inc. v.
`
`Am. Sci. & Eng’r, Inc., 200 F.3d 795, 811 (Fed. Cir. 1999). So long as the
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`combination of Morita and Sarbadhikari teaches or suggests compressing and then
`
`transmitting retained visual image data—which it does—it is of no consequence
`
`that the combination also teaches storing the compressed visual image data prior to
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`transmission (Paper 1 at 14:20 to 17:4) (see, also, Ex. 1009 at ¶¶ 33-42).
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`IPR2014-00989
`Petitioner’s Reply To Patent Owner’s Response
`C. The combination of Morita, Sarbadhikari and Longginou teaches
`or suggests all the feature of claims 16-18 (Ground 2)
`
`1.
`
`Storage of Compressed Image Data
`
`
`
`Regarding claim 16, PO asserts that compressed image data cannot be stored
`
`in memory “prior to being subjected to the at least one transmission protocol
`
`algorithm” (Paper 15 at 28:4 to 31:13). PO’s argument is not supported by the
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`claims and the specification, as neither precludes storing compressed image data
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`prior to being subjected to the at least one transmission protocol algorithm.
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`Moreover, the independent claims use the open-ended, inclusive “comprising”
`
`term in defining claimed combinations, and therefore “do not exclude the presence
`
`. . . of factors in addition to those explicitly recited.” Vivid Techs., 200 F.3d at 811.
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`Therefore, as described in the Petition, the combination of Morita, Sarbadhikari
`
`and Longginou teaches or suggests all of the limitations of claim 16 (Paper 1 at
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`6:20 to 7:16, 13:11 to 15:4, 34:15 to 35:12).
`
`2.
`
`Transmission Protocol Algorithm
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`
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`PO further asserts that Longginou allegedly improperly interchanges the
`
`terms “standards” and “communication protocols,” and that Longginou does not
`
`disclose protocols capable of transmission of visual image data (Paper 15 at 31:14
`
`to 32:17). These arguments are without merit for at least the following reasons.
`
`
`
`a)
`
`Longginou teaches or suggests the transmission protocol algorithm of
`
`claims 16-18: As discussed in the Petition, Longginou discloses transmission
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`IPR2014-00989
`Petitioner’s Reply To Patent Owner’s Response
`protocol algorithms, as recited in claims 16-18. For example, Longginou describes
`
`the use of a “cellular phone communication protocol,” which may be “compliant to
`
`one of the following standards, AMPS, ETACS, GSM, CDMA, TDMA.” (Ex.
`
`1004 at 10:13-21). Longginou also describes that its dual mode handset operates
`
`using any two of a number of transmission protocols, including GSM and CDMA
`
`(id. at 11:4-7; Paper 1 at 34:15 to 35:6). Each transmission protocol (or “mode”) is
`
`implemented in different modules in Longginou’s device (Ex. 1004 at 11:21-25).
`
`The modules include a microprocessor and integrated circuitry, and the handset
`
`contains the software needed for each module (id. at 12:12-15 and 12:19-23; Ex.
`
`1008 at ¶ 120). Longginou goes on to explain that “that the various modules will
`
`produce signals for transmission and reception on antenna 20 according to different
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`formats and protocols and often for transmission/reception on different carrier
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`frequencies” (id. at 4:17-20, emphasis added), and “[e]ach module is adapted to
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`operate according to a particular, but different communications protocol or
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`‘mode’” (id. at 11:22-24) Thus, Longginou explicitly discloses a device that
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`produces signals according to a specific protocol for (wireless) transmission that
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`uses a protocol or an algorithm (see also Ex. 1009 at ¶ 46).
`
`
`
`b)
`
`PO’s assertion regarding Longginou’s alleged interchange of protocol
`
`and standard is unsubstantiated: PO argues that Longginou improperly refers to
`
`standards (e.g., GSM, AMPS, CDMA) as protocols (Paper 15 at 32:3-8). This
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`IPR2014-00989
`Petitioner’s Reply To Patent Owner’s Response
`argument is factually wrong and should be dismissed. As shown above, Longginou
`
`discloses the use of “cellular phone communication protocol[s, which] may be
`
`compliant to one of the following standards, AMPS, ETACS, GSM, CDMA,
`
`TDMA” (Ex. 1004 at 10:13-21). Moreover, PO fails to provide any factual support
`
`for the assertion that GSM, CDMA, etc., do not constitute protocols or algorithms,
`
`even though it was well known prior to 1998 that communication protocols can be
`
`standardized and included in a standard specification (Ex. 1009 at ¶¶ 47-49). In
`
`fact, PO’s assertion that GSM and CDMA cannot be construed as protocols or
`
`algorithms is in stark contrast with PO’s own infringement contentions against
`
`HTC’s One Max mobile device, which construes the “transmission protocol
`
`algorithm” of claim 16 to be “WiFi, GSM/GPRS/EDGE 850/900/1800/1900 MHz
`
`(2G), 2.5G, 3G UMTS/HSPA, 3G CDMA and 4G – LTE” (Ex. 1010 at 6).
`
`
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`Further, the ‘168 specification describes Group III facsimile transmission
`
`protocol as one of several transmission protocols that can be implemented it its
`
`claimed apparatus (Ex. 1001 at 6:36-54; 8:15-21; Figs. 1-4, element 28), while at
`
`the same time stating: “[t]he current standards, CCITT Group III and Group IV,
`
`define methods to scan and transmit high quality, bi-level images with a high
`
`degree of success and has become commercially acceptable throughout the world”
`
`(id. at 1:27-30, emphasis added). Thus, the ‘168 Patent’s own specification
`
`contradicts PO’s assertion that communications standards do not constitute
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`IPR2014-00989
`Petitioner’s Reply To Patent Owner’s Response
`communication protocols or algorithms (see, also, Ex. 1009 at ¶49).
`
`
`
`c)
`
`The ‘168 specification and the challenged claims do not include
`
`specific details regarding the transmission protocol: Neither the challenged claims,
`
`nor the ‘168 Patent specification place any restrictions on the type of the claimed
`
`transmission protocol algorithm. In this regard, claim 16 broadly recites “execution
`
`of the at least one transmission protocol algorithm providing the compressed visual
`
`image data in a transmission format.” The ‘168 Patent specification generally
`
`mentions names of example protocols: “PC Modem Protocol,” “G-III Transmit
`
`Protocol,” or “Any Protocol” (Ex. 1001 at 8:15-30, Figure 4, elements 28, 64, 66
`
`and 75). The disclosure in the ‘168 patent does not exclude, or provides any basis
`
`to exclude, any wireless communication protocols such as CDMA or GSM. Thus,
`
`the ‘168 patent specification does not support PO’s assertion that standard wireless
`
`communication protocols, such as CDMA, GSM and others, must be excluded
`
`from the scope of the challenged claims (see also Ex. 1009 at ¶ 47).
`
`
`
`d)
`
`PO’s assertion that image data transmission via Longginou’s disclosed
`
`“standards” would not have been possible is without merit: PO alleges that
`
`wireless communication standards disclosed in Longginou, such as GSM and
`
`CDMA, were not capable of transmitting visual image data (Paper 13 at 32:9-11).
`
`PO’s argument is unsubstantiated and is simply not true. For example, based at
`
`least on the disclosure of Wilska, which describes the transmission of images via
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`IPR2014-00989
`Petitioner’s Reply To Patent Owner’s Response
`GSM (e.g., Ex. 1005 at 5:28-31, 13:20-22), a POSITA would have understood that
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`Longginou’s discussion of GSM-compliant protocols discloses protocols that are
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`capable of transmitting visual image data ( e.g., Ex. 1004 at 10:13-21).
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`Moreover, PO’s argument is based on a single figure from a book discussed
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`in the Melendez Declaration (Ex. 2008 at ¶¶ 54-57). However, the relied upon
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`figure is irrelevant and Mr. Melendez ignores other sections of the book that
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`clearly describe GSM’s and IS-95a’s (also known as cdmaOne) non-voice data
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`transmission capabilities (see, also, Ex. 1009 at ¶¶ 51-53). Such transmission
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`capabilities of GSM and CDMA could have been used, and indeed were being
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`used, to transmit digital image data, as supported by the accompanying Parulski
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`declaration and associated attachments (id. at ¶¶ 54-56).
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`Therefore, PO’s and Mr. Melendez’s assertions regarding the inability to
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`transmit images via standard wireless technologies should be rejected.
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`D. The combination of Wilska and Yamagishi-992 teaches or
`suggests all limitations in claims 1, 22, 24, 26, 27 and 29 (Ground 3)
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`
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`PO’s assertions against the combination of Wilska and Yamagishi-992 are
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`unfounded for at least the following reasons.
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`
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`1.
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`The combination of Wilska and Yamagishi-992 teaches or suggests
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`compression of retained visual image data: PO argues that the combination of
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`Wilska and Yamagishi-992 fails to teach or suggest compression of retained visual
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`image data because (a) Yamagishi-992 describes compressing and then storing
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`IPR2014-00989
`Petitioner’s Reply To Patent Owner’s Response
`image data “prior to being subsequently transmitted without being further
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`subjected to any compression algorithm” (Id. at 35:10-13; 36:18-20), and (b)
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`Yamagishi-992 purportedly teaches away from this limitation (Id. at 35:14-17).
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`PO’s arguments should be rejected because they are based on erroneous claim
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`construction positions and a misreading of the prior art.
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`
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`a) Yamagishi-992 teaches or suggests compression of retained visual
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`image data: As shown in the Petition, Yamagishi-992 teaches or suggests
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`compression of retained visual image data by, for example, a sequence of steps
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`including storing a digitized captured image in image memory 2024, reading the
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`digitized captured image from image memory 2024, compressing the digitized
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`captured image, and storing the compressed digitized image back in image
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`memory 2024 (Ex. 1006 at 97:23-46; 99:26-28; 118:49-53; 119:38-52; 121: 55-56;
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`Paper 1 at 43:4-13). The fact that Yamagishi-992 discloses storing the compressed
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`digitized captured image back in memory 2024 is of no consequence, as neither the
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`claims nor the specification of the ‘168 Patent precludes storage of compressed
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`image data prior to transmission, and the specification even describes the benefits
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`of storing compressed image data (Ex. 1001 at 13:48-53). Further, the challenged
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`claims are open ended “comprising” claims that “do not exclude the presence . . .
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`of factors in addition to those explicitly recited.” Vivid Techs., 200 F.3d at 811.
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`b)
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`Yamagishi-992 does not teach away from providing compressed
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`IPR2014-00989
`Petitioner’s Reply To Patent Owner’s Response
`image data: PO erroneously asserts that Yamagishi-992 teaches away from
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`providing the compressed image data since it allegedly describes “that retained
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`image data is expanded immediately prior to transmission if having been retrieved
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`from the memory in a compressed format” (Paper 15 at 35:14-17). Yamagishi-992,
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`however, merely states, “if necessary, the image data and the sound data are
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`expanded by the compressing expanding circuit 3022 before transmission” (Ex.
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`1006 at 130:2-5, emphasis added). Such optional language does not support PO’s
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`teaching away argument. In addition, PO ignores other embodiments of
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`Yamagishi-992 that transmit compressed image data without the option to expand
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`before sending (see id. at 95:47-57 and 96:25-35; see also Ex. 1009 at ¶¶ 60-61).
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`
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`2.
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`The combination of Wilska and Yamagishi-992 teaches or suggests
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`wireless transmission of compressed digital data: PO asserts that the combination
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`of Wilska and Yamagishi-992 fails to teach or suggest the transmission of
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`compressed image data since: (a) the challenged claims allegedly prohibit storage
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`of compressed digital data prior to transmission (Paper 1 at 37:8 to 41:6), and (b)
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`Yamagishi-992 allegedly teaches away from this limitation (Id. at 41:6-9). The
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`Petitioner respectfully disagrees.
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`
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`As discussed above, the challenged claims do not prohibit storage of
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`compressed image data prior to transmission (Sections II-A, II-B-1 and II-B-2 of
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`this Replay), and Yamagishi-992 does not teach away from this limitation (Section
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`- 15 -
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`IPR2014-00989
`Petitioner’s Reply To Patent Owner’s Response
`(II)(D)(1-b) of this Reply). As shown in the Petition, the combination of Wilska
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`and Yamagishi-992 teaches or suggests this limitation (Paper 1 at 44:2-8).
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`3.
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`The Combination of Wilska and Yamagishi-992 describes providing
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`compressed image data: In Section (V)(C)(3) of the Response, PO argues that (a)
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`Wilska’s images cannot be used to “digitally reconstruct the visual image data . . .
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`because the information needed for such reconstruction has inherently been lost
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`during such binary derivation” (Paper 15 at 43:18-20; 44:18 to 45:3). PO further
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`asserts that (b) Wilska’s modem is purportedly an analog modem that cannot
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`transmit images other than “analog binary derivatives” of the original image (id. at
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`44:8-13), and Wilska purportedly “uses tonal (i.e., audio) signals” for fax
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`transmissions (id. at 44:16-18), which allegedly is outside of the scope of
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`challenged claims. PO also implies that (c) because Wilska’s device did not use
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`multimedia messaging service (MMS), it could not have transmitted image data
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`(id. at 45:11-17). The Petitioner disagrees for at least the following reasons.
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`
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`As an initial matter, PO’s Response does not dispute that Yamagishi-992
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`teaches or suggests providing compressed image data (Paper 1 at 3:15, 39:5-12,
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`44:2-14). Therefore, Yamagishi-992 in combination with Wilska teaches or
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`suggests the “Visual Image Transmission Limitation” as contended by PO. Further,
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`as discussed below, Wilska teaches this feature.
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`
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`a-1) Wilska’s disclosure describes transmission of images that can be
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`- 16 -
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`

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`IPR2014-00989
`Petitioner’s Reply To Patent Owner’s Response
`reconstructed for viewing: The Response argues that Wilska discloses a
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`rudimentary system designed for sending documents to a fax machine (Paper 15 at
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`44:1-16), and incapable of transmission of reproducible images (id. at 44:18 to
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`45:3). Contrary to such assertions, Wilska describes that captured images (e.g., of
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`documents or of surroundings such as those of a person (Ex. 1005 at 5:2-7; Paper 1
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`at 38:14-19)) are converted into digital format and stored (e.g., as a bitmap) (Ex.
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`1005 at 5:2-5, 7:21-26, 9:23-26, 9:28 to 10:2; Paper 1 at 40:8-11, 42: 15 to 43:3),
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`and transmitted to another recipient (Ex. 1005 at 9:28 to 10:7, 12:29 to 13:7; Paper
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`1 at 44:3-8, 47:20 to 48:9). Wilska also describes incoming fax images, received in
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`a corresponding manner via a cellular mobile phone, are stored as bitmaps images
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`in memory of the mobile device and output to its display for viewing (Ex. 1005 at
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`10:2-7; Paper 1 at 47:20 to 48:9; see, also, Ex. 1009 at ¶¶ 62-64)
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`In addition, Wilska’s cellular mobile phone can operate in a digital GSM
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`system (Ex. 1005 at 13:20-21; Paper 1 at 55:2-4) and includes email functionality
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`implemented in a digital GSM system (Ex. 1005 at 13:29-30; Paper 1 at 55:2-9).
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`For example, Wilska explains that images captured by camera unit 14 can be
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`stored “in the form of a bitmap” in memory 13 (Ex. 1002 at