UNITED STATES PATENT AND TRADEMARK OFFICE
`________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________________________
`
`
`Sony Mobile Communications (USA) Inc.
`Petitioner
`v.
`
`E-WATCH, INC.
`Patent Owner
`_______________________________________
`
`Case: IPR2015-00401
`
`Patent No. 7,643,168
`
`Title: Apparatus For Capturing, Converting And Transmitting A Visual
`Image Signal Via A Digital Transmission System
`
`_______________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. §42.107
`
`
`
`E‐Watch, Inc.
`Petitioner – Sony Mobile Communications (USA) Inc.
`Patent Owner – E‐Watch, Inc.
`IPR2015‐00401
`
`
`________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________________________
`
`
`Sony Mobile Communications (USA) Inc.
`Petitioner
`v.
`
`E-WATCH, INC.
`Patent Owner
`_______________________________________
`
`Case: IPR2015-00401
`
`Patent No. 7,643,168
`
`Title: Apparatus For Capturing, Converting And Transmitting A Visual
`Image Signal Via A Digital Transmission System
`
`_______________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. §42.107
`
`
`
`E‐Watch, Inc.
`Petitioner – Sony Mobile Communications (USA) Inc.
`Patent Owner – E‐Watch, Inc.
`IPR2015‐00401
`
`
`
`
`TABLE OF CONTENTS
`
`
`TABLE OF CONTENTS
`
`I.
`
`SUM1\/IARY OF PATENT OWNER’S PRELIMINARY RESPONSE TO
`
` I. SUMMARY OF PATENT OWNER’S PRELIMINARY RESPONSE TO
`PETITIONER’S INTER PARTES REVIEW PETITION.............................. 1
`
`PETITIONER’S INTER PARTES REVIEW PETITION ............................ .. 1
`
`II.
`
`REASONS WHY INTER PARTES REVIEW SHOULD NOT BE
`
`II. REASONS WHY INTER PARTES REVIEW SHOULD NOT BE
`INSTITUTED.................................................................................................. 3
`
`INSTITUTED ................................................................................................ .. 3
`
`A.
`A.
`
`PETITIONER USES CU1\/IULATIVE AND REDUNDANT
`
`PETITIONER USES CUMULATIVE AND REDUNDANT
`PRIOR ART IN ITS PETITION.......................................................... 3
`
`PRIOR ART IN ITS PETITION ........................................................ .. 3
`
`III. CONCLUSION................................................................................................. 4
`
`III. CONCLUSION ............................................................................................... .. 4
`
`CERTIFICATE OF SERVICE....................................................................... 5
`
`CERTIFICATE OF SERVICE ..................................................................... .. 5
`
`
`
`i
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`
`
`EXHIBIT LIST
`
`[EXH. 2001] TABLE SHOWING OTHER INTER PARTES REVIEW
`
` PETITIONS WITH PRIOR ART AND/OR ISSUES THAT
`
` OVERLAP WITH IPR2015-00401 PETITION (“this
`
` petition”)
`
`
`
`
`ii
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`
`
`I.
`
`SUMMARY OF PATENT OWNER’S PRELIMINARY
`RESPONSE TO PETITIONER’S INTER PARTES REVIEW
`PETITION
`e-Watch, Inc. (“e-Watch”) is the owner of United States Patent No.
`
`
`
`7,643,168 (“’168 Patent”). Eight (8) inter partes review (“IPR”) petitions have
`
`been filed related to the ‘168 Patent. The table below provides an update on the
`
`petitioners/real parties-in-interest, status and filing date of each of these
`
`Case Number
`
`Status
`
`Filing Date
`
`IPR2014-00989
`
`Instituted
`
`6/19/2014
`
`IPR2015-00401
`
`No Decision on
`Institution
`
`12/10/2014
`
`proceedings.
`
`Petitioner/Real
`Parties-in-Interest
`HTC Corporation and
`HTC America, Inc.
`(collectively, “HTC”)
`LG Electronics, Inc.,
`LG Electronics
`U.S.A., Inc., LG
`Electronics
`Mobilecomm U.S.A.,
`Inc. (collectively,
`“LG”); Microsoft
`Mobile OY,
`Microsoft
`Corporation, Nokia
`Inc. (collectively,
`“MMO”); Sony
`Corporation, Sony
`Mobile
`Communications
`(USA) Inc., Sony
`Mobile
`Communications AB,
`Sony Mobile
`Communications Inc.
`
`
`
`1
`
`
`
`IPR2015-00407
`
`IPR2015-00408
`
`IPR2015-00414
`
`IPR2015-00543
`
`No Decision on
`Institution
`
`No Decision on
`Institution
`No Decision on
`Institution
`Joined With 2014-
`00989
`
`12/10/2014
`
`12/10/2014
`
`12/11/2014
`
`1/7/2015
`
`IPR2015-00607
`
`IPR2015-00611
`
`No Decision on
`Institution
`No Decision on
`Institution
`
`1/23/2015
`
`1/23/2015
`
`(collectively,
`“Sony”); Sharp
`Corporation and
`Sharp Electronics
`Corporation
`(collectively,
`“Sharp”)
`Kyocera
`Communications, Inc.
`(“Kyocera”)
`LG, MMO, Sony and
`Sharp
`Apple Inc. (“Apple”)
`
`Samsung Electronics
`Co., Ltd and Samsung
`Electronics America,
`Inc. (collectively,
`“Samsung”)
`Samsung
`
`Samsung
`
`
`
`These eight (8) IPR petitions have substantial overlap with respect to the
`
`prior art cited and associated grounds of unpatentability. Even to the extent
`
`different prior art is cited in some of these petitions, the prior art relied on in some
`
`of the petitions is similar to the prior art contained in some of the other petitions.
`
`As a result, many of these petitions, including this petition (i.e., IPR2015-00401),
`
`are redundant and present cumulative prior art and substantially the same
`
`arguments as other earlier-filed IPR petitions, concurrently-filed IPR petitions,
`
`and/or later-filed IPR petitions. The Patent Trial and Appeals Board (“PTAB”)
`
`
`
`2
`
`
`
`should exercise its discretion under 35 U.S.C. 325(d) to deny institution of this
`
`petition for this reason alone.
`
`
`
`
`
`
`II. REASONS WHY INTER PARTES REVIEW SHOULD NOT BE
`
`INSTITUTED
`A.
`PETITIONER USES CUMULATIVE AND REDUNDANT
`
`PRIOR ART IN ITS PETITION
`The Board has discretion to decline to institute inter partes review.
`
`Conopco, Inc. v. Procter & Gamble Co., IPR2014-00628 (paper 21 at 5).
`
`Institution of inter partes review is discretionary, not mandatory. 35 U.S.C.
`
`§314(a). “One factor the Board may take into account when exercising that
`
`discretion is whether ‘the same or substantially the same prior art or arguments
`
`previously were presented to the Office.’” Conopco, Inc. v. Procter & Gamble
`
`Co., IPR2014-00628 (paper 21 at 5). U.S.C. §325(d) provides:
`
`In determining whether to institute or order a proceeding
`under this chapter [post-grant review (PGR)], chapter 30
`[ex parte reexamination] or chapter 31 [inter partes
`review (IPR)], the Director may take into account
`whether, and reject the petition or request because, the
`same or substantially the same prior art or arguments
`previously were presented to the Office.
`As shown in the table attached as Exh. 2001, this petition overlaps with three
`
`
`
`(3) other petitions related to the ‘168 Patent. [Exh. 2001]. In particular, this
`
`petition includes prior art and issues that have been presented to the PTAB by
`
`other petitioners
`
`in IPR2015-00408, IPR2014-00989, and IPR2015-00607.
`
`
`
`3
`
`
`
`IPR2015-00408 and this petition both present seemingly identical prior art,
`
`proposed grounds of rejection, and arguments with respect to all challenged claims.
`
`Sony Mobile Communications (USA) Inc. is listed as a real party-in-interest in IPR
`
`2015-00408 and Petitioner in this petition, IPR2015-00401. Furthermore,
`
`IPR2014-00989 and this petition both rely upon the cited prior art reference of
`
`McNelley (US 5,550,754) in at least one proposed ground of unpatentability.
`
`Moreover, IPR2015-00607 and this petition both rely upon the cited prior art
`
`reference of McNelley (US 5,550,754) in at least one proposed ground of
`
`unpatentability
`
`III. CONCLUSION
`The PTAB should exercise its discretion under 35 U.S.C. § 325(d) to deny
`
`
`
`institution of this petition because it is cumulative and redundant of other pending
`
`IPR matters on the ‘168 patent.
`
`
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`
`Lead Counsel:
`Robert C. Curfiss
`Reg. No. 26,540
`Attorney
`19826 Sundance Drive
`Humble, Texas 77346
`
`Respectfully Submitted,
`
`/David O. Simmons/
`
`
`Back-Up Counsel:
`David O. Simmons
`Reg. No. 43,124
`Patent Agent
`P. O. Box 26584
`Austin, Texas 78755
`
`
`
`4
`
`
`
`Telephone: (832) 573-1442
`Facsimile: (832) 644-6152
`
`
`Telephone: (512) 345-9767
`Facsimile: (512) 345-0021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________________
`Sony Mobile Communications (USA) Inc.
`Petitioner
`v.
`E-WATCH, INC.
`Patent Owner
`___________________________________
`Case: IPR2015-00401
`Patent No. 7,643,168
`Title: Apparatus For Capturing, Converting And Transmitting A Visual
`Image Signal Via A Digital Transmission System
`___________________________________
`
`CERTIFICATE OF SERVICE
`
`A Certificate of Service in compliance with 37 CFR §42.205 is attached to the Patent Owner
`Preliminary Response, certifying that a copy of the Patent Owner Preliminary Response in its
`entirety has been served on Petitioner as detailed below.
`
`Date of Service: April 7, 2015
`
`Manner of Service:
`email with consent of Petitioner
`
`Document(s) Served:
`Patent Owner Preliminary Response for IPR2015-00401
`
`
`Exhibits EXH. 2001
`jamesmahon@andrewskurth.com
`
`Person(s) Served:
`scottbloebaum@andrewskurth.com
`
`
`
` Andrews Kurth LLC
`
`
`4505 Emperor BLVD. Suite 330
`
` Durham, NC 27703
`
`
`
`
`
`/Robert C. Curfiss/
`Reg. No. 26,540
`
`5
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