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; 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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`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION
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`1 Case IPR2015-00543 has been joined with this proceeding.
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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
`
`
`
`
`
`
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION
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`
`
`1 Case IPR2015-00543 has been joined with this proceeding.
`
`
`
`
`
`Case IPR2014-00989 on Patent No. 7,643,168
`Petitioner’s Response to Patent Owner’s Motion for Observation
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`Petitioner HTC and Petitioner Samsung hereby file this response to Patent
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`
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`Owner’s Motion for Observation Regarding Cross-Examination of Kenneth
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`Parulski, dated May 25, 2015, pursuant to the Board’s Scheduling Order, dated
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`December 9, 2014 (Paper 7).
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`RESPONSE TO OBSERVATION NUMBER 1
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`The cited testimony is incomplete and does not properly reflect Mr.
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`Parulski’s testimony. In addition, the relevant portions of Mr. Parulski’s testimony
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`do not support Patent Owner’s contention that Mr. Parulski’s definition of a
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`POSITA improperly excludes experience in the design of cellular communications
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`devices. Consistent with the cited testimony, Mr. Parulski explained in the 2015
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`Parulski Decl. that the ’168 patent “simply describes the use of conventional, well-
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`known imaging related formats and protocols such as the well-known Group-III
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`facsimile encoding and compression, and Group-III facsimile transmission
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`protocol, JPEG and wavelet compression and PC modems,” and that “there is no
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`detailed discussion of the designs and capabilities of the cellular telephone which
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`connects to the cellular interface 130 in FIG. 5; Figures 6A and 6B also only show
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`a picture of a cellular telephone 164.” Ex. 1009, ¶ 18. In fact, Mr. Parulski
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`testified to this fact during his deposition. See Ex. 2019 at 17:9-25. Moreover, Mr.
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`Parulski previously described and testified that his definition of a POSITA does
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`not exclude experience in the design of cellular communications devices. Ex.
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`1
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`
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`Case IPR2014-00989 on Patent No. 7,643,168
`Petitioner’s Response to Patent Owner’s Motion for Observation
`
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`1009, ¶ 19; Ex. 2019 at 13:1-15:21.
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`RESPONSE TO OBSERVATION NUMBER 2
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`
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`The cited testimony is incomplete and does not properly reflect Mr.
`
`Parulski’s testimony. In addition, the relevant portions of Mr. Parulski’s testimony
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`do not support Patent Owner’s contention that the definition of a POSITA must
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`include experience related to the design of cellular communications devices or that
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`Mr. Parulski does not qualify as an expert with respect to the ’168 patent. For
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`example, Mr. Parulski testified that “I don’t believe it would be necessary to be an
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`expert in cellular communications technologies or devices in order to be a person
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`of ordinary skill in the art,” because the patent relates to transmitting digital image
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`data over standard cellular and telephone company facilities, and does not describe
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`the details of a cellular telephone. Ex. 2019 at 17:9-25; see also Ex. 1009, ¶ 18.
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`Furthermore, the cited testimony follows Mr. Parulski’s position that he is a
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`POSITA with respect to the ’168 patent, even if experience in cellular
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`communications technologies devices is required. Ex. 2019 at 13:1-15:21; see also
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`Ex. 1009, ¶¶ 10, 11, 18-20.
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`RESPONSE TO OBSERVATION NUMBER 3
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`
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`The cited testimony is incomplete and does not properly reflect Mr.
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`Parulski’s testimony. Nor does it support Patent Owner’s contention regarding the
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`construction of “retained visual image data.” Mr. Parulski merely testified that
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`- 2 -
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`
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`Case IPR2014-00989 on Patent No. 7,643,168
`Petitioner’s Response to Patent Owner’s Motion for Observation
`
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`memory 46 is “capable of” and “can” store images for later recall. Ex. 2019 at
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`93:19-94:15. Mr. Parulski also testified that memory 46 can be a volatile memory
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`device such as a SRAM or DRAM device (id. at 95:19-99:9), and that “‘retained’
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`merely means store” (id. at 95:1-17). Therefore, Mr. Parulski’s testimony is
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`consistent with his statements in the 2015 Parulski Decl. regarding the construction
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`of “retained visual image data.” See Ex. 1009, ¶¶ 22-25.
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`RESPONSE TO OBSERVATION NUMBER 4
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`
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`The cited testimony is incomplete and does not properly reflect Mr.
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`Parulski’s testimony. Nor does it support Patent Owner’s position that paragraphs
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`35 and 36 of the 2015 Parulski Decl. are beyond the scope of a reply brief. Mr.
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`Parulski testified that these paragraphs are merely responding to the Patent
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`Owner’s and Dr. Melendez’s arguments concerning Sarbadhikari, and are
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`primarily quotes directly from Sarbadhihari. Ex. 2019 at 99:16-100:16.
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`RESPONSE TO OBSERVATION NUMBER 5
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`
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`The cited testimony is incomplete and does not properly reflect Mr.
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`Parulski’s testimony. Nor does it support Patent Owner’s position that the claims
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`exclude storage of compressed image data prior to transmission. While Mr.
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`Parulski agreed that the JPEG compression path in Figure 4 of the ’168 patent does
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`not show an image being stored in memory 46 after compression, Mr. Parulski
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`testified that with JPEG compression there “necessarily is some amount of memory
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`- 3 -
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`
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`Case IPR2014-00989 on Patent No. 7,643,168
`Petitioner’s Response to Patent Owner’s Motion for Observation
`
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`that’s used.” Id. at 101:2-19. Furthermore, Patent Owner’s counsel’s questioning
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`on a single embodiment disclosed in Figure 4 ignores the fact that “[n]othing in the
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`claim language prohibits storage of compressed image data prior to transmission”
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`and that “the ‘168 Patent provides several examples of where compressed image
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`data is stored in memory prior to transmission,” as discussed in the 2015 Parulski
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`Decl. See Ex. 1009, ¶¶ 39-40.
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`RESPONSE TO OBSERVATION NUMBERS 6 AND 7
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`
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` The cited testimony is incomplete and does not properly reflect Mr.
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`Parulski’s testimony. Nor does it support Patent Owner’s position that the prior art
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`does not disclose a “transmission protocol algorithm.” Mr. Parulski explained in
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`his testimony that it was unnecessary to review or cite the GSM standard because
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`“Rappaport is more than sufficient to describe GSM and describe the GSM
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`protocol.” Ex. 2019 at 107:19-109:5. For example, Mr. Parulski testified that
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`Attachment BB to Ex. 1009 includes a section of Rappaport that details the GSM
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`radio subsystem, including “GSM data transmission both for compressed speech . .
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`. as well as for various types of digital data.” Ex. 2019 at 107:19-108:21. Mr.
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`Parulski further explained that a POSITA would have known that digital images
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`could be transmitted over GSM using the data channel rather than using the speech
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`channel, consistent with what is disclosed in Rappaport. Id. at 109:6-112:23; see
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`also id. at 35:15-37:25, 41:11-45:11, 78:6-80:16, 81:2-87:4, 107:19-112:23. For
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`- 4 -
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`
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`Case IPR2014-00989 on Patent No. 7,643,168
`Petitioner’s Response to Patent Owner’s Motion for Observation
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`example, Mr. Parulski testified that “by 1996 I personally was aware that the Nokia
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`9000 communicator could communicate digital images and, for example, receive
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`Web pages over GSM using this type of data channel.” Id. at 112:9-23. Therefore,
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`Mr. Parulski’s testimony is consistent with Mr. Parulski’s position in the 2015
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`Parulski Decl. that the prior art discloses a “transmission protocol algorithm.” See
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`
`
` /Steven L. Park/
`Lead Counsel,
`Steven L. Park, Reg. No. 47,842
`
`Back-Up Counsel
`Naveen Modi, Reg. No. 46,224
`Elizabeth L. Brann, Reg. No. 63,987
`
`
`
`PAUL HASTINGS LLP
`
`Counsel for Samsung Electronics Co., Ltd.
`and Samsung Electronics America, Inc.
`
`Dated: June 9, 2015
`
`Ex. 1009, ¶¶ 43-58.
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`
`
`Respectfully submitted,
` /Bing Ai/
`Lead Counsel,
`Bing Ai, Reg. No. 43,312
`
`Back-Up Counsel
`Cheng C. (Jack) Ko, Reg. No. 54,227
`Kevin Patariu, Reg. No. 63,210
`Babak Tehranchi, Reg. No. 55,937
`
`PERKINS COIE LLP
`
`Counsel for HTC Corporation and HTC
`America, Inc.
`
`Dated: June 9, 2015
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`
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`- 5 -
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`
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`Case IPR2014-00989 on Patent No. 7,643,168
`Petitioner’s Response to Patent Owner’s Motion for Observation
`
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true copy of the foregoing
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION FOR
`OBSERVATION was served this 9th day of June 2015 by electronic mail upon the
`following:
`
`LEAD COUNSEL
`Robert C. Curfiss
`19826 Sundance Drive
`Humble, Texas 77346-1402
`bob@curfiss.com
`
`
`BACK-UP COUNSEL
`David O. Simmons
`IVC Patent Agency
`P.O. Box 26584
`Austin, Texas 77755
`Dsimmons1@sbcglobal.net
`
`Gregory S. Donahue
`DiNovo Price Ellwanger & Hardy LLP
`7000 North MoPac Expressway , Suite 350
`Austin, TX 78731
`gdonahue@dpelaw.com
`
`
`
`
` /Steven L. Park/
`Lead Counsel,
`Steven L. Park, Reg. No. 47,842
`
`Back-Up Counsel
`Naveen Modi, Reg. No. 46,224
`Elizabeth L. Brann, Reg. No. 63,987
`
`PAUL HASTINGS LLP
`
`Counsel for Samsung Electronics Co., Ltd.
`and Samsung Electronics America, Inc.
`
`
`
`Dated: June 9, 2015
`
`Respectfully submitted,
` /Bing Ai/
`Lead Counsel,
`Bing Ai, Reg. No. 43,312
`
`Back-Up Counsel
`Cheng C. (Jack) Ko, Reg. No. 54,227
`Kevin Patariu, Reg. No. 63,210
`Babak Tehranchi, Reg. No. 55,937
`
`PERKINS COIE LLP
`
`Counsel for HTC Corporation and HTC
`America, Inc.
`
`Dated: June 9, 2015
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