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`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`GOOGLE INC.
`Petitioner
`
`v.
`
`TLI COMMUNICATIONS LLC
`Patent Owner
`__________________
`
`Case No. ___________
`U.S. Patent No. 6,038,295
`__________________
`
`DECLARATION OF KENNETH A. PARULSKI
`FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 6,038,295 (CLAIMS 17-24)
`__________________
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`B.
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`TABLE OF CONTENTS
`
`I.
`INTRODUCTION ........................................................................................... 1
`BACKGROUND AND QUALIFICATIONS ................................................. 1
`II.
`PERSON OF ORDINARY SKILL IN THE ART .......................................... 6
`III.
`IV. MATERIALS RELIED ON ............................................................................ 7
`V.
`BACKGROUND ON THE STATE OF THE ART IN 1996 .......................... 7
`VI. OVERVIEW OF THE ’295 PATENT .......................................................... 18
`VII. CLAIM CONSTRUCTION .......................................................................... 20
`VIII. PRIOR ART IN THE PROSECUTION HISTORY ..................................... 22
`Parulski ’159, U.S. Patent No. 5,666,159 ........................................... 22
`A.
`Parulski ’678, U.S. Patent No. 5,633,678 ........................................... 23
`B.
`Tatsumi, U.S. Patent No. 5,594,736 .................................................... 24
`C.
`INVALIDITY ANALYSIS ........................................................................... 24
`A.
`Prior Art Relied Upon ......................................................................... 26
`Satoh, U.S. Patent No. 5,717,496 ............................................. 26
`1.
`2. Wolverton, Running MS-DOS Version 6.2 .............................. 36
`Bernardi, U.S. Patent No. 5,546,145 ........................................ 40
`3.
`4. Wilska, U.S. Patent No. 6,427,078. ........................................... 43
`5. Morikawa, U.S. Patent No. 5,613,108. ..................................... 45
`Burstein et al., IEEE ................................................................. 47
`6.
`Partridge, U.S. Statutory Invention Registration No.
`7.
`H1714. ....................................................................................... 49
`Application of the Prior Art to Claims 17-24 of the ’295 Patent. ....... 51
`Obviousness over Prior Art Including Satoh. ........................... 51
`1.
`Claim 17—Satoh in View of Wolverton. ....................... 51
`a.
`Claim 18—Satoh in View of Wolverton and
`b.
`Bernardi. ......................................................................... 61
`Claim 19—Satoh in View of Wolverton. ....................... 63
`Claim 20—Satoh in View of Wolverton. ....................... 65
`Claim 21—Satoh in View of Wolverton. ....................... 66
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`c.
`d.
`e.
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`IX.
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`X.
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`2.
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`Claim 22—Satoh in View of Wolverton. ....................... 67
`f.
`Claim 23—Satoh in View of Wolverton. ....................... 70
`g.
`Claim 24—Satoh in View of Wolverton. ....................... 71
`h.
`Obviousness Over Prior Art Including Wilska. ........................ 73
`Claim 17—Wilska in View of Morikawa. ...................... 73
`a.
`Claim 18—Wilska in View of Morikawa and
`b.
`Burstein. .......................................................................... 79
`Claim 19—Wilska in View of Morikawa. ...................... 81
`Claim 20—Wilska in View of Morikawa. ...................... 83
`Claim 21—Wilska in View of Morikawa. ...................... 84
`Claim 22—Wilska in View of Morikawa and
`Partridge. ........................................................................ 85
`Claim 23—Wilska in View of Morikawa. ...................... 88
`g.
`Claim 24—Wilska in View of Morikawa. ...................... 89
`h.
`CONCLUSION .............................................................................................. 90
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`c.
`d.
`e.
`f.
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`I, Kenneth A. Parulski, hereby declare as follows:
`
`I.
`
`INTRODUCTION
`1.
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`I have been retained as an expert by Google Inc. (“Google”) and have
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`been asked to provide my expert opinions regarding U.S. Patent No. 6,038,295
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`(“the ’295 Patent”).
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`2.
`
`I am being compensated for my time at my standard consulting rate of
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`$525 per hour. I am also being reimbursed for expenses that I incur during the
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`course of this work. My compensation is not contingent upon the results of my
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`study or the substance of my opinions.
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`II. BACKGROUND AND QUALIFICATIONS
`3.
`A detailed description of my professional qualifications, including a
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`list of publications, awards, and professional activities, is contained in my
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`curriculum vitae, a copy of which is attached as Appendix A.
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`4.
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`I received a Master of Science degree and a Bachelor of Science
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`degree in Electrical Engineering from the Massachusetts Institute of Technology in
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`1980. I completed my master’s thesis research while working at Motorola
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`Corporate Research Labs from 1978 through 1980, where I developed a system for
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`transmitting a series of digital images from a moving vehicle over an FM radio
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`communications link to a base station. The laboratory where I worked was
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`managed by Dr. Martin Cooper, who led the Motorola team that built and
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`demonstrated the world’s first handheld cellular telephone.
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`5.
`
`In 1980 I joined Kodak Research Labs, where I began developing and
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`implementing image processing algorithms. Beginning in 1984, I led a project to
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`develop the world’s first color megapixel digital camera system prototype. Prints
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`made using this system were exhibited at the Photokina trade show in 1986, in
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`Kodak’s first public demonstration of its digital photography technology.
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`Photokina is the world’s largest trade show for the imaging industry. I also led
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`teams which developed an image processing VLSI chipset for digital video
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`cameras, and I designed high performance video cameras for industrial and
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`government applications.
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`6.
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`From approximately 1986 through 1992, I served as Kodak’s
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`technical representative to the Advanced Television Research Program at MIT,
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`which developed “source adaptive” video compression technologies now used in
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`most HDTV transmission systems. As part of this project, I became a named
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`inventor on a television decoding patent which was licensed by MIT to many
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`HDTV manufacturers.
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`7.
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`Beginning in 1992, I served as architect of Kodak’s first generation of
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`consumer-oriented digital still cameras, which included the Kodak DC40 camera
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`as well as the Apple QuickTake 100 camera, the first digital camera marketed by
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`Apple. In my role as digital camera architect at Kodak and through my
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`participation in various projects, I acquired experience in all aspects of digital
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`camera design, including the selection of hardware and software components, user
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`interfaces, and image formats.
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`8.
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`From 2001 to 2009, I served as Research Fellow and Director, IP &
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`Standards, Consumer Digital Group at Kodak. In that position, I was the technical
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`leader of Kodak’s digital camera patent licensing program, where I analyzed and
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`provided advice on a very large number of patents involving digital imaging and
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`transmission technology.
`
`9.
`
`From 2010 to 2012, I held the position of Research Fellow and Chief
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`Scientist, Digital Devices and Cameras Division. In that role, I invented and
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`prototyped new digital photography systems, including imaging systems using
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`cloud storage and processing technologies.
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`10.
`
`I was employed by Kodak for a total of more than thirty years, during
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`which time I followed the literature closely, I attended numerous industry
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`conferences where I discussed the state of the art with engineers working in the
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`field, and I supervised the work of numerous engineers performing research and
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`development in the field of digital photography.
`
`11.
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`In 2012, following my employment with Kodak, I founded aKAP
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`Innovation LLC. As Chief Scientist and Managing Member, I provide innovation
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`and digital photography related consulting services and participated in the
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`development of ISO (“International Organization for Standardization”) standards
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`for digital photography.
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`12.
`
`I am a named inventor on more than 200 issued United States patents.
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`Most of these inventions relate to digital cameras and digital photography systems
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`and have been licensed by Kodak to more than 40 companies for use in digital
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`cameras, smartphones, and photo sharing services.
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`13.
`
`I have authored or co-authored numerous publications, including
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`chapters in leading treatises in the field of digital imaging technology. Among
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`these, I authored the “Digital Photography” chapter in the Digital Consumer
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`Electronics Handbook published by MacGraw-Hill in 1997; the “Color Image
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`Processing for Digital Cameras” chapter in the Digital Color Imaging Handbook
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`published by CRC Press in 2003; and the “Digital Camera Image Storage Formats”
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`chapter in Single-Sensor Imaging: Methods and Applications for Digital Cameras,
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`published by CRC Press in 2008. I have also presented at numerous industry
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`conferences around the world on the subject of digital cameras and digital image
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`processing.
`
`14.
`
`I have received a number of awards in recognition of my
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`achievements in the field of digital imaging technology. For example, in 2001, I
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`received the Eastman Award, Kodak’s top technical honor, for the development of
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`digital cameras. In 2002, I received the Technical Achievement Award from the
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`Photo-Imaging Manufacturing and Distributors Association for “pioneering work
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`in the development of digital imaging technology.” I was the first person to be
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`honored by this photographic association for contributions to digital photography.
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`In 2008, I received the Achievement Award from the International Imaging
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`Industries Association (I3A) for “significant contributions to the advancement and
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`growth of the imaging industry.”
`
`15. Since 1994 I have served as Chair of the IT10 standards committee for
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`digital photography. This group provides the officially recognized United States
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`input for many international standards used by digital cameras, including those
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`used in smart phones. In addition, from March 2007 through February 2013, I was
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`chair of ISO technical committee 42 (ISO/TC42), which is responsible for all
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`international photography standards. In May 2013, I was elected chair of the US
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`technical advisory group to ISO/TC42. From June 3-7, 2013, I served as head of
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`the US delegation to the 23rd plenary meeting of ISO/TC42, held at the National
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`Museum in Copenhagen, Denmark.
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`16.
`
`I currently serve as an expert in ISO Technical Committee 42
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`(Photography), and I am co-project leader (with Mr. Toru Nagata of Canon) for
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`both ISO 12234-1:2012, which relates to electronic still-picture imaging formats,
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`and ISO/WD 12234-3, which is intended to standardize the use of extensible
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`metadata in digital photography.
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`17.
`
`I am also a Fellow of the Society of Motion Picture and Television
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`Engineers. In 2001, Kodak received a Technical Emmy Award for contributions I
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`made to the development of the 24P HDTV production standard, which is used by
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`Hollywood studios to produce movies and TV programs.
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`18. My prior expert testimony in the last four years is identified on my
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`CV. See Appendix A.
`
`III. PERSON OF ORDINARY SKILL IN THE ART
`19.
` I have been asked to provide my opinion regarding the qualifications
`
`of a person having ordinary skill in the art (“POSA”) with respect to the ’295
`
`patent. I understand that the POSA is a hypothetical person who is presumed to
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`have known the relevant art at the time of the invention, which I understand here to
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`be sometime at or around June 17, 1996, i.e., the earliest claimed priority date of
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`the ’295 patent. I understand that factors that may be considered in determining
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`the level of ordinary skill in the art may include: (a) the type of problems
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`encountered in the art; (b) prior art solutions to those problems; (c) the rapidity
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`with which innovations are made; (d) the sophistication of the technology; and (e)
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`the educational level of active workers in the field.
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`20.
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`In my opinion, the POSA relevant to the ’295 patent would have at
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`least an undergraduate degree in computer science, computer engineering, or
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`electrical engineering. In addition, the POSA would have at least two years of
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`experience in the field of digital imaging, with a specific focus on image capture,
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`transmission, and storage, or equivalent academic experience (e.g., a masters
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`degree with a similar focus).
`
`IV. MATERIALS RELIED ON
`21.
`In reaching the conclusions described in this declaration, I have relied
`
`on the documents and materials cited herein as well as those identified in Appendix
`
`B attached to this declaration. My opinions are also based upon my education,
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`training, research, knowledge, and personal and professional experience.
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`V. BACKGROUND ON THE STATE OF THE ART IN 1996
`22. As of the early 1990s, and certainly before the June 1996 priority date
`
`of the ’295 patent, the ability to record, communicate, and classify digital images
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`was widely known in the art. This section summarizes the background of the
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`technology described in the ’295 patent.
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`23. Digital camera technology dates back to the 1970s, see, e.g., U.S.
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`Patent No. 4,131,919 (Ex. 1020), and digital cameras with image transmission
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`systems followed soon thereafter. In the early 1980s, Sony developed an
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`electronic still camera that included a color printer and a telephone transmission
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`unit for transmitting images captured by the camera. See Kihara et al., The
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`Electronic Still Camera A New Concept in Photography, CE-28(3) IEEE
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`TRANSACTIONS ON CONSUMER ELECTRONICS, 325 (1982) (Ex. 1021). I personally
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`attended the IEEE Conference on Consumer Electronics in June 1982, where Sony
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`presented their first technical papers describing this camera system, called the
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`“Mavica.”
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`24.
`
`In 1986, Canon introduced its Still Video System, or SVS, in the
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`United States. See The Canon Still Video System is One of a Kind, JOURNAL OF
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`THE ELECTRONICS INDUSTRY at 58-59 (Aug. 1986) (Ex. 1033). The Canon SVS
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`included the RC-701, an electronic still camera capable of capturing color digital
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`images, as well as the RC-971, a still video transceiver for transmitting the images
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`“via public telephone lines” or using a “cellular telephone.” Id. at 58. Early
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`prototypes of the digital camera and phone transmission unit were designed for the
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`1984 Los Angeles Olympic Games so that images of Olympic events could be
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`captured with the camera and wirelessly transmitted to a Japanese newspaper using
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`the Canon electronic transmitter connected to an automobile telephone. Id.; see
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`also Canon, History Hall – Canon Camera Story 1976-1986,
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`http://www.canon.com/camera-museum/history/canon_story/1976_1986/
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`1976_1986.html (last visited Sept. 26, 2014) (Ex. 1022).
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`25. An article I co-authored in 1989 stated that the number of
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`commercially available electronic still cameras was “growing at a very rapid rate,”
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`and such products were being sold by many companies in the1980s, including Fuji,
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`Konica, Minolta, Nikon, Olympus, Panasonic, and Sony. See Kriss et al., Critical
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`technologies for electronic still imaging systems, 1082 SPIE – APPLICATIONS OF
`
`ELECTRONIC IMAGING 157, 159, Table 1 (1989) (Ex. 1023). It was well recognized
`
`at the time that a key benefit of using an electronic still camera was that “[b]y
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`using an image transceiver with a modem and public or private telephone
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`communication systems one can send images anywhere in the world.” Id. at 158 &
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`Fig. 1.
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`26.
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`In 1991, Kodak introduced the Kodak Professional Digital Camera
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`System, later known as the DCS-100. See USER’S MANUAL, KODAK
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`PROFESSIONAL DIGITAL CAMERA SYSTEM (Eastman Kodak Company 1991-1992)
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`(Ex. 1010). The device consisted of a camera back fitted to a Nikon F3 camera
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`and a digital storage unit (DSU) connected to the camera back using a digital
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`interconnect cable. The DSU included a magnetic hard drive for storing the
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`captured images and an LCD for displaying a user interface and the captured
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`images. The DSU also included a set of 12 keys for receiving user input as well as
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`a keyboard connector, enabling the user to enter text such as image titles, captions,
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`and keywords with a connected keyboard.
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`27. The Kodak Professional Digital Camera System was also used to
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`transmit images together with accompanying user-prescribed classification
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`information. The user entered character data for an image using the IPTC-ANPA
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`model,1 “a standard method for enclosing information with a photographic image.”
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`Ex. 1010 at 4-2. Such user-prescribed classification information could include, for
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`example, “a caption,” “the name of the author of the caption,” “a title for the
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`image,” or “the location – city, state, and country – where the image was made.”
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`Id. As the device’s manual states, “[t]hese data, entered with the optional external
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`
`1
`The news industry had a particular interest in the efficient classification and
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`storage of digital images. For that reason, the IPTC, an organization of news
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`agencies, newspapers, and other organizations formed for the establishment of
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`news transmission standards, together with the ANPA, developed standards used to
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`transmit, classify, and store news-related digital photos. Version 2 of the IPTC-
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`ANPA standard, published in 1993, enabled the transmission of “a data object,
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`such as a photographic image” together with additional “information, such as a
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`caption, news category or dateline.” See IPTC – NAA INFORMATION INTERCHANGE
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`MODEL AND DIGITAL NEWSPHOTO PARAMETER RECORD 3 (Comité International
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`des Télécommunications de Presse 1993) (Ex. 1024).
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`keyboard, are stored with individual images on the digital storage unit.” Id.; see
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`also id. at 4-3 through 4-10.
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`28. The user then selected images for transmission from the camera using
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`keys and a display on the DSU. With the DSU and a connected Telebit T2500
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`modem and telephone line, the user transmitted the selected image files, together
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`with the user-entered classification data, from the camera to a computer running
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`Kodak Communications Software, included as part of the Kodak Professional
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`Digital Camera System. Id. at 4-2 (“Later, if an image that includes IPTC-ANPA
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`data is moved from the DSU to a computer system capable of receiving these data
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`– for example by transmitting the file to a Macintosh computer running the
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`included KODAK Communications Software – these data are received with the
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`image.”); see also id. at 4-12. In addition, it was recommended that “a second
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`telephone line [be] available . . . [to] allow personnel at the two sites to talk over
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`the second line while they establish connections and send data on the first line.”
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`Id. at 4-12. Following such transmission, the received files were automatically
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`stored in the hard disk of the computer using the IPTC-ANPA file format.
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`29. The ability to rapidly transmit images and accompanying data was
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`critical to certain industries, including the newspaper business. As of 1992, many
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`press agencies were using electronic picture desk technology to receive and store
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`color digital images transmitted wirelessly by satellite. An industry publication in
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`1992 described systems in use by photojournalists to capture, transmit, and store
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`digital images when reporting from the field. See Andy Williams, Electronic
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`Picture Desks, IFRA Special Report (1992) (Ex. 1011). Photojournalists captured
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`digital images using “still video cameras of sufficient resolution,” such as
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`“Kodak’s new system”—i.e., the Kodak Professional Digital Camera System. Id.
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`at 7. Satellite systems were used to wirelessly transmit the digital photos to
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`newsrooms. Id. at 19 (explaining that satellite networks were “at temporary sites
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`for sports and other events to send pictures back to their main offices”). The
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`transmitted images were then stored as digital images in an external server. Id. at
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`11 (describing the use of “a powerful computer as fileserver . . . on multi-terminal
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`networks.”).
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`30. The storage systems of newspapers were designed to store images
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`taking into consideration classification information input by the photojournalist. A
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`user would input “individual descriptor data relating to the newsphoto” into each
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`digital image file. Id. at 16. Such data included “classification” information “to
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`simplify the storage and retrieval and archiving of pictures”:
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`Perhaps the most interesting and powerful feature for
`editors is the Application Record which is composed of
`separate areas of information in a standard format, much
`like the fields of a database record, such as the picture
`caption, classification, priority level, keywords, byline
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`etc. From this data it is possible to automatically identify
`and group colour picture separations, route the picture
`to one or several different editorial desks like politics,
`sport, art & entertainment, and later to simplify the
`storage and retrieval and archiving of pictures. Next to
`quality and speed, this feature provides a most significant
`advantages of digital news pictures over the analogue
`form.
`Id. at 17 (emphasis added). Accordingly, the user-prescribed classification
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`information was used to organize the image files on the external server and to
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`facilitate their subsequent retrieval.
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`31. Portable camera-telephone devices were also well known as of June
`
`1996. As mobile technologies advanced in the early 1990s, patents were filed and
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`published describing products. Such disclosures included Electronic Still Camera
`
`with Portable Telephone Function, filed by Kyocera and published in 1994 as
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`Japanese Patent App. Pub. No. H06-133081 (Ex. 1025); Information Transmission
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`Device, filed by Konica and published in 1994 as Japanese Patent App. Pub. No.
`
`Hei 6[1994]-268582 (Ex. 1026); Device for Personal Communications, Data
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`Collection and Data Processing, and a Circuit Card, filed by Nokia in 1995 and
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`issued as U.S. Patent No. 6,427,078 (“Wilska”) (Ex. 1006); and Electronic Camera
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`System with Programmable Transmission Capability, filed by Kodak in 1995 and
`
`issued as U.S. Patent No. 5,666,159 (“Parulski ’159”) (Ex. 1027). I am a co-
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`inventor on the latter patent, which I will discuss in more detail below. As such
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`prior art demonstrates, portable devices combining both a digital camera and a
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`telephone were known to the POSA as of June 1996. See also Ex. 1001 (’295
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`patent) at 1:31-32 (acknowledging in the Background that “cellular telephones
`
`[that] may be utilized for image transmission” were known in the art).
`
`32.
`
`In 1995, Toshiba announced the PDR-100 digital camera, a “compact
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`digital still camera equipped with a modem and communications software,
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`allowing users to transmit recorded digital images via standard telephone lines,
`
`without any additional external equipment.” See Toshiba, Press Releases 7
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`August 1995, https://www.toshiba.co.jp/about/press/1995_08/pr0701.htm (last
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`visited Sept. 26, 2014) (Ex. 1028). As Toshiba explained, the PDR-100 “embodies
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`the concept of a ‘digital communication camera’ that can easily record and quickly
`
`transmit images from remote locations.” Id. In addition to the image capture
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`function, the device included a “built-in microphone [which] allows it to record
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`audio signals.” Id. The device contained a PC memory card for storing the
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`compressed images and audio files.
`
`33. A device known as “Isaac” was also disclosed in 1995. Isaac
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`“combine[d] in one unit a pen-based computer, a digital camera, a GPS satellite
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`navigation receiver, and cellular phone channels for both voice and data.” Bodil
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`Jönsson & Arne Svensk, Isaac – A Personal Digital Assistant for the Differently
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`Abled, in THE EUROPEAN CONTEXT FOR ASSISTIVE TECHNOLOGY: PROCEEDINGS OF
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`THE 2ND TIDE CONGRESS 356, 357 (I. Placencia Porrero & R. Puig de la Bellacasa
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`eds., 1995) (Ex. 1029). Developed by the Centre of Rehabilitation Engineering at
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`the Lund Institute of Technology, Isaac was capable of capturing digital images
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`and transmitting them using a cellular phone to a remote computer for storage. Id.
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`Incoming photos received by the remote computer were “marked with the name of
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`the user and stored in the database.” Id. at 358. As an alternative to transmitting
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`images wirelessly from the digital camera, images could be “transferred using a
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`high speed wire connection” to the remote computer for storage. Id. Although
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`originally designed for use by individuals with cognitive disabilities, its developers
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`foresaw “the potential for a much wider use.” Id.
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`34. As the popularity of digital cameras continued to grow in the early
`
`1990s, the efficient storage of large numbers of digital images became increasingly
`
`important. The development of digital camera technology therefore went hand in
`
`hand with improvements in image classification methods, as researchers focused
`
`on improved systems for classifying, transmitting, storing, and retrieving digital
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`images. Such research resulted in several of the systems discussed above, as well
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`as U.S. Patent No. 5,717,496, Electronic Imaging Apparatus, to Satoh et al.
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`(“Satoh”) (Ex. 1003), which I will discuss further below.
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`Ex. GOOG 1002
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`35. Still other disclosures were directed to methods of using classification
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`information with digital images to facilitate their retrieval. One such disclosure
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`was filed by Hitachi in 1994. See Electronic Photography System, U.S. Patent No.
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`5,796,428 (filed Oct. 17, 1994) (“Hitachi”) (Ex. 1030). Recognizing that
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`organizing large numbers of digital images is “troublesome,” id. at 1:35, Hitachi
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`provides a solution—“adding attribute data to the image data” when capturing the
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`digital image, then “storing the image data and attribute data in a mutually
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`associated relationship” in an external storage device for ease of retrieval, id. at
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`abstract. Hitachi’s system comprises “an image capturing unit, an image
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`storage/display unit and means for applying attribute data to data of a picture
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`image at the time of shooting the picture.” Id. at 2:1-4. As Hitachi explains, the
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`picture and attribute data are “transferred to the image storage/display unit,” which
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`“generates album data for classification and display on the basis of the attribute
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`data.” Id. at 3:20-24. Figure 5 describes the storage/display unit, which displays
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`“albums” containing images sorted according to their attribute data. See id. at
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`9:49-10:4. The attribute data disclosed by Hitachi includes date and time data, id.
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`at 2:19, the location where the photograph was shot, id. at 2:34, and “voice data as
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`the attribute data,” id. at 4:45-54. Thus, Hitachi discloses a method by which a
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`user may prescribe classification data to a captured digital image and then transfer
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`the image and accompanying data to an external storage unit, where the image is
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`stored taking into consideration the classification data.
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`36. Yet another disclosure directed to the use of classification information
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`for digital images is Electronic Still Camera for Capturing and Categorizing
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`Images, filed by Eastman Kodak in 1995. See U.S. Patent No. 5,633,678
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`(“Parulski ’678”) (Ex. 1031). This patent, on which I am named as a co-inventor,
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`describes an electronic camera for capturing images representing a variety of
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`subjects and categorizing the images according to their subject matter. Id. at
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`abstract. The camera includes an image sensor for capturing images and a memory
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`for storing the captured digital image data. Switches on the camera enable the user
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`to select a category before one or more images are captured, and the images are
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`stored in files along with the category name and optional text input by the user.
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`The stored digital images are downloaded to the proper file folders in a connected
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`computer according to the category data stored with the digital image data in each
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`file. Id. at 7:4-7. I discuss this patent further below. See infra ¶ 48-49.
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`37.
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`It is clear that, as of June 1996, digital cameras and combined digital
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`camera/telephone devices capable of transmitting images to an external storage
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`device were well known to the POSA, as were methods of storing digital images
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`based on user-prescribed classification information.
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`Ex. GOOG 1002
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`VI. OVERVIEW OF THE ’295 PATENT
`38.
`I have been asked to review and comment on the ’295 patent. The
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`’295 patent describes the transmission of digital images from a camera telephone
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`device to a server, where they are stored taking into consideration classification
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`information prescribed by the user of the camera telephone device. E.g., Ex. 1001
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`at abstract. The ’295 patent contains system, method, and apparatus claims. The
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`steps of the methods claimed in the ’295 patent are depicted in Figure 3 of the
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`specification:
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`39. The ’295 patent acknowledges, correctly, that the elements of the
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`alleged invention were known as of the priority date of June 17, 1996. It was
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`known, for example, that “cellular phones may be utilized for image transmission.”
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`Ex. 1001 (’295 patent) at 1:31-35; see also id. at 1:52-55 (explaining it was known
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`that “voice, data, and image communications were used in telephone systems”).
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`The claimed systems and methods use “a digital photo camera of the type which is
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`known.” Id. at 6:1-2. The claims also use a phone which “includes the standard
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`features of a telephone unit.” Id. at 5:54-55. Likewise, transmission systems
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`comprising a telephone line or antenna were known at the time, as was a server
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`containing a database. See id. 5:1-13, 6:36-38.
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`40. The crux of the ’295 patent is the organization of images on the server
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`taking into consideration classification information prescribed by the user. Id. at
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`2:5-20. According to the patent, the taking of classification information into
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`consideration when storing images permits the images to be “easily retrieved.” Id.
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`at 8:41-45. Classification information consists of (1) “audio data” spoken into the
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`telephone unit, (2) the “time of day and/or date” that the image was recorded or
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`transmitted, (3) the “telephone number” of the telephone unit or server,
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`(4) “information about the location in the memory at which the digital image
`
`should be stored” such as “the location in memory or in the directory structure”
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`where the digital image should be stored, and (5) “other alphanumeric data which
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`Ex. GOOG 1002
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`may be input into the telephone unit.” Id. at 7:20-44; see also id. at Fig. 4 & 4:55-
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`57.
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`VII. CLAIM CONSTRUCTION
`41.
`I have been asked to provide my opinions regarding the construction
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`of certain terms used in the claims of the ’295 patent as would understood by a
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`POSA using a broadest reasonable interpretation (“BRI”). I understand that in an
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`inter partes review, claim terms in an unexpired patent are interpreted according to
`
`their BRI in view of the specification in which they appear. I understand that in
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`determining the BRI, claim terms are given their broadest reasonable meaning in
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`light of the specification as it would be interpreted by one of ordinary skill in the
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`art.
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`42.
`
`I have reviewed the Patent Owner’s Preliminary Response in
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`Facebook, Inc. v. TLI Communications LLC, IPR2014-00566 (July 9, 2014) (Ex.
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`1013), including the constructions proposed in that document by the Patent Owner.
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`I have also reviewed the Decision by the Patent Trial and Appeal Board (“Board”)
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`issued in the Facebook