IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`In re Patent of: Monroe
`U.S. Patent No.: 7,643,168
`Issue Date:
`January 5, 2010
`Appl. Serial No.: 11/617,509
`Filing Date:
`December 28, 2006
`Title:
`APPARATUS FOR CAPTURING, CONVERTING AND TRANSMITTING
`A VISUAL IMAGE SIGNAL VIA A DIGITAL TRANSMISSION SYS-
`TEM
`
`Attorney Docket No. 30387-222291
`Case No. IPR2015-00401
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT NO. 7,643,168
`PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`

`
`Petition for IPR of U.S. Patent No. 7,643,168
`
`Dkt. No 30387-222291
`
`TABLE OF CONTENTS
`
`I.
`
`MANDATORY NOTICES UNDER 37 C.F.R § 42.8(A)(1)...................................... 1
`
`A. Real Parties-In-Interest Under 37 C.F.R. § 42.8(b)(1) ............................. 1
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ......................................... 1
`
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ..................... 2
`
`D. Service Information .................................................................................. 2
`
`II.
`
`PAYMENT OF FEES – 37 C.F.R. § 42.103........................................................... 2
`
`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ....................................... 3
`
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)................................. 3
`
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested ............... 3
`
`C. Claim Construction under 37 C.F.R. §§ 42.104(b)(3) .............................. 4
`
`1.
`
`“Transmission Protocol” (claim 16-18) .......................................... 5
`
`2.
`
`“Media being suitable to embody … algorithm (claims 1, 22, 24,
`
`26, 27) .............................................................................................. 5
`
`IV. SUMMARY OF THE ’168 PATENT ...................................................................... 5
`
`A. Brief Description ....................................................................................... 5
`
`B. Summary of the Prosecution History of the ’168 Patent .......................... 6
`
`C. Invention Date of the ’168 Patent ............................................................. 7
`
`V. MANNER OF APPLYING CITED PRIOR ART TO EVERY CLAIM FOR WHICH IPR
`IS REQUESTED, THUS ESTABLISHING A REASONABLE LIKELIHOOD THAT AT
`LEAST ONE CLAIM OF THE ’168 IS UNPATENTABLE ........................................ 9
`
`i
`
`

`
`Petition for IPR of U.S. Patent No. 7,643,168
`
`Dkt. No 30387-222291
`
`A. Ground 1 – McNelley (Ex. 1004) Renders Obvious Claims 1-31 .........10
`
`B. Ground 2 – McNelley (EX. 1004) and Nagai (EX. 1005) Combine to
`Render Obvious Claims 16-18 ................................................................32
`
`C. Ground 3 – Nagai (Ex. 1005) Renders Obvious Claims 1-18, and 21-31
` .................................................................................................................34
`
`D. Ground 4 – Nagai (Ex. 1005) and Sakata (EX. 1006) Render Obvious
`Claims 19 and 20. ...................................................................................55
`
`VI. NON-REDUNDANCY OF GROUNDS PRESENTED ............................................... 57
`
`VII. CONCLUSION .................................................................................................. 58
`
`ii
`
`

`
`Petition for IPR of U.S. Patent No. 7,643,168
`
`Dkt. No 30387-222291
`
`EXHIBITS
`
`EX. 1001 U.S. Patent No. 7,643,168 to Monroe (“the ’168 patent”)
`
`EX. 1002 Prosecution History of the ’168 patent with appended physical
`
`exhibits (“the Prosecution History”)
`
`EX. 1003 Declaration of Dr. Robert Stevenson, Ph.D.
`
`EX. 1004 U.S. Patent No. 5,550,754 (“McNelley”)
`
`EX. 1005
`
`Japanese Patent No. H9-37129 (“Nagai”) and Certified Transla-
`
`tion
`
`EX. 1006
`
`Japanese Patent No. H8-191435 (“Sakata”) and Certified Trans-
`
`lation
`
`EX. 1007 McGraw-Hill Dictionary of Scientific and Technical Terms
`
`Fifth Edition, 1994.
`
`EX. 1008 Roger Cheng, The First Call from a Cell Phone Was Made 40
`
`Years Ago Today, CNET (April 13, 2013 7:13 AM PDT)
`
`http://www.cnet.com/news/the-first-call-from-a-cell-phone-
`
`was-made-40-years-ago-today/
`
`EX. 1009 BellSouth, IBM Unveil Personal Communicator Phone
`
`http://research.microsoft.com/en-us/um/people/bibuxton/bux-
`
`toncollection/a/pdf/press%20release%201993.pdf.
`
`iii
`
`

`
`Petition for IPR of U.S. Patent No. 7,643,168
`
`Dkt. No 30387-222291
`
`EX. 1010 Buxton Collection: Simon, http://research.microsoft.com/en-
`
`us/um/people/bibuxton/buxtoncollection/a/pdf/press%20re-
`
`lease%201993.pdf.
`
`EX. 1011 Walke, The Roots of GPRS: The first System for Mobile Packet
`
`based Global Internet Access. IEEE Wireless Communications,
`
`October 2013
`
`Ex. 1012
`
`ETSI GSM Technical Specification 7.07, Digital cellular tele-
`
`communications system (Phase 2+); AT command set for GSM
`
`Mobile Equipment (ME), July 1996
`
`Ex. 1013 Richards, The 30 Most Important Digital Cameras of All time,
`
`PopPhoto.com (Oct. 22, 2013), http://www.pop-
`
`photo.com/gear/2013/10/30-most-important-digital-cameras.
`
`Ex. 1014
`
`Canon Camera Museum: Canon Camera Story, 1976-1986,
`
`http://www.canon.com/camera-museum/his-
`
`tory/canon_story/1976_1986/1976_1986.html.
`
`Ex. 1015
`
`Kriss, et al., Critical technologies for electronic still imaging
`
`systems, SPIE vol. 1082, pp. 157-184.
`
`Ex. 1016
`
`NikonWeb.com, http://www.nikonweb.com/rc760/ (last visited
`
`Dec. 08, 2014)
`
`Ex. 1017
`
`U.S. Patent 5,477,264.
`
`iv
`
`

`
`Petition for IPR of U.S. Patent No. 7,643,168
`
`Dkt. No 30387-222291
`
`Ex. 1018
`
`Keith A. Hadley, Kodak SV9600 Still Video Transceiver, Proc.
`
`SPIE 1071, Optical Sensors and Electronic Photography, 238
`
`(1989)
`
`Ex. 1019
`
`Japanese Patent Application H03-107891
`
`Ex. 1020 M. Irvin et al, A New Generation of MPEG-2 Video Encoder
`
`ASIC & Its Application to New Technology Markets, Interna-
`
`tional Broadcasting Convention Conference Publication No.
`
`428 (1996).
`
`Ex. 1021
`
`Gregory K. Wallace et al., JPEG Still Picture Compression
`
`Standard, Optical Engineering, Vol. 30, no. 7, pp. 947-954
`
`(1991).
`
`Ex. 1022 Wikipedia on Composite Video, http://en.wikipe-
`
`dia.org/wiki/Composite_video.
`
`Ex. 1023 WO 96/15620
`
`Ex. 1024
`
`David Ewing, Que’s Computer User’s Dictionary 494 (5th Ed.,
`
`1994)
`
`Ex. 1025
`
`Bryan Pfaffenberger, Webster’s New World Computer Dic-
`
`tionary 361 (9th Ed., 2001)
`
`Ex. 1026
`
`U.S. Des. 207,491
`
`v
`
`

`
`Petition for IPR of U.S. Patent No. 7,643,168
`
`Dkt. No 30387-222291
`
`Ex. 1027
`
`O’Rourke et al, Robust Transmission of Compressed Images
`
`over Noisy Gaussian Channels, 1995 International Conference
`
`on Acoustics, Speech and Signal Processing, Vol. 4, 2319-
`
`2322 (1995).
`
`Ex. 1028
`
`U.S. Patent No. 4,485,400 to Lemelson
`
`
`
`vi
`
`

`
`Petition for IPR of U.S. Patent No. 7,643,168
`
`Dkt. No 30387-222291
`
`Sony Mobile Communications (USA) Inc. (“Sony Mobile” or “Petitioner”)
`
`petitions for Inter Partes Review (“IPR”) under 35 U.S.C. §§ 311–319 and 37
`
`C.F.R. § 42 of claims 1-31 (“the Challenged Claims”) of U.S. Patent No. 7,643,168
`
`(“the ’168 patent”). As explained in this petition, there exists a reasonable likeli-
`
`hood that Petitioner will prevail in demonstrating unpatentability of at least one of
`
`the Challenged Claims based on teachings set forth in the references presented in
`
`this petition.
`
`I. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(A)(1)
`
`A. Real Parties-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`
`LG Electronics, Inc., LG Electronics U.S.A., Inc., LG Electronics
`
`Mobilecomm U.S.A., Inc., (collectively, LGE); Microsoft Mobile OY, Microsoft
`
`Corporation, Nokia Inc. (collectively, “MMO”); Sony Corporation, Sony Mobile
`
`Communications (USA) Inc., Sony Mobile Communications AB, Sony Mobile
`
`Communications Inc. (collectively, “Sony”); Sharp Corporation, and Sharp
`
`Electronics Corporation (collectively, “Sharp”) are the real parties-in-interest.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`Patent Owner is asserting the ’168 Patent and U.S. Pat. No. 7,365,871 (“the
`
`’871 Patent”) against Petitioner in an on-going patent infringement lawsuit in E-
`
`WATCH, INC. et al. v. SONY CORPORATION et al., 2:13-cv-01073 (filed Dec.
`
`10, 2013) filed in the Eastern District of Texas. Patent Owner is also asserting
`
`1
`
`

`
`Petition for IPR of U.S. Patent No. 7,643,168
`
`Dkt. No 30387-222291
`
`these patents against other entities in at least 10 other lawsuits. To date, two other
`
`petitions for IPR have been filed against the ’871 patent (IPR 2014-00987 by HTC
`
`Corporation and HTC America, Inc. (collectively “HTC”) and IPR2014-00439 by
`
`Iron Dome LLC) and are currently pending. In addition, HTC filed a separate peti-
`
`tion for IPR of the ’168 patent (IPR2014-00989). Petitioner is also pursuing a sep-
`
`arate IPR of the ’871 patent (IPR2015-00402).
`
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`
`Petitioner designates James V. Mahon, Reg. No. 41,966, as Lead Counsel
`
`and L. Scott Bloebaum, Reg. No. 59,419 as Backup Counsel. Please address all
`
`correspondence and service to counsel at the addresses provided in 1(D), below.
`
`Petitioner also consents to electronic service by email at the email addresses shown
`
`in 1(D)
`
`D.
`
`Service Information
`
`Lead Counsel
`James V. Mahon
`ANDREWS KURTH LLP
`4505 Emperor Blvd, Ste. 330
`Durham, NC 27703
`jamesmahon@andrewskurth.com
`Phone: 919-864-7210
`Fax: 202-974-9551
`USPTO Reg. No. 41,966
`
`Back-up Counsel
`L. Scott Bloebaum
`ANDREWS KURTH LLP
`4505 Emperor Blvd, Ste. 330
`Durham, NC 27703
`scottbloebaum@andrewskurth.com
`Phone: 919-864-7215
`Fax: 202-974-9552
`USPTO Reg. No. 59,419
`
`II.
`
`PAYMENT OF FEES – 37 C.F.R. § 42.103
`
`2
`
`

`
`Petition for IPR of U.S. Patent No. 7,643,168
`
`Dkt. No 30387-222291
`
`Petitioner authorizes the Patent and Trademark Office to charge Deposit Ac-
`
`count 50-2849 for the fee set in 37 C.F.R. § 42.15(a) for this Petition and further
`
`authorizes payment for any additional fees to be charged to this Deposit Account.
`
`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
`
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`
`Petitioner certifies that the ’168 patent is available for IPR. The petition is
`
`being filed within one year of service of the complaint against Petitioner. Peti-
`
`tioner is not barred or estopped from requesting this IPR on the below-identified
`
`grounds.
`
`quested
`
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief Re-
`
`Petitioner requests IPR of the Challenged Claims on the grounds set forth in
`
`the table shown below, and request that each of the Challenged Claims be found
`
`unpatentable. An explanation of unpatentability under the statutory grounds identi-
`
`fied below is provided in the form of detailed description and claim charts that fol-
`
`low, indicating where each element can be found in the cited prior art, and the rele-
`
`vance of that prior art. Additional explanation and support for each ground of re-
`
`jection is set forth in Exhibit 1003, the Declaration of Dr. Robert Stevenson, Ph.D.,
`
`referenced throughout this Petition.
`
`Ground ’168 Patent Claims
`
`Basis for Rejection
`
`3
`
`

`
`Petition for IPR of U.S. Patent No. 7,643,168
`
`Dkt. No 30387-222291
`
`1-31
`
`16-18
`
`§ 103: McNelley
`
`§ 103: McNelley and Nagai
`
`1-18, and 21-31
`
`§ 103: Nagai
`
`19 and 20
`
`§ 103: Nagai and Sakata
`
`1
`
`2
`
`3
`
`4
`
`
`
`The ’168 patent issued from a continuation application claiming priority to
`
`U.S. Application No. 10/336,470, now the ’871 patent. The ’871 patent, in turn,
`
`claimed priority to and issued from a divisional patent application of a parent ap-
`
`plication filed on January 12, 1998. As a consequence, the priority date for the
`
`’168 patent is no earlier than January 12, 1998. See infra Section IV.C.
`
`McNelley, U.S. Patent No. 5,550,754, qualifies as prior art under 35 U.S.C.
`
`§ 102(b). Specifically, McNelley (Ex. 1004) issued on August 26, 1996, and there-
`
`fore predates the earliest priority date of the ’168 patent by more than a year.
`
`Nagai, Japanese Patent Application H09-037129, qualifies as prior art under
`
`35 U.S.C. § 102(a). Specifically, Nagai (Ex. 1005) published on February 7, 1997,
`
`and therefore predates the earliest priority date of the ’168 patent.
`
`Sakata, Japanese Patent Application No. H8-191435, qualifies as prior art
`
`under 35 U.S.C. § 102(b). Specifically, Sakata (Ex. 1006) published on July 23,
`
`1996, and therefore predates the earliest priority date of the ’168 patent by more
`
`than a year.
`
`C. Claim Construction under 37 C.F.R. §§ 42.104(b)(3)
`
`4
`
`

`
`Petition for IPR of U.S. Patent No. 7,643,168
`
`Dkt. No 30387-222291
`
`A claim subject to IPR is given its “broadest reasonable construction in light
`
`of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b).
`
`1.
`
`“Transmission Protocol” (claim 16-18)
`
`Based on the broadest reasonable interpretation standard, the term “transmis-
`
`sion protocol” should be construed as “one or more rules governing transmission.”
`
`The ’168 patent states that “transmission protocols are virtually endless” and pro-
`
`vides no other description that would further narrow this term. See, e.g., Ex. 1001
`
`at 2:44-45.
`
`2.
`
`“Media being suitable to embody … algorithm (claims 1, 22,
`24, 26, 27)
`
`Based on the broadest reasonable interpretation standard, the term “media
`
`being suitable to embody at least one compression algorithm” should be construed
`
`as “media having an algorithm in the form of hardware, software or a combination
`
`of hardware and software.” The ’168 patent discloses storage of an algorithm in the
`
`context of a “limited capacity 15 portable media … such as floppy disks or a porta-
`
`ble PCMCIA card”. Ex. 1001 at 7:58-62. Other sections of the specification relate
`
`to general storage of software in memory that can be used by a processor. Id. at
`
`11:3-10.
`
`IV. SUMMARY OF THE ’168 PATENT
`
`A. Brief Description
`
`5
`
`

`
`Petition for IPR of U.S. Patent No. 7,643,168
`
`Dkt. No 30387-222291
`
`The ’168 patent is purportedly directed to an integrated image capturing sys-
`
`tem which is capable of transmitting captured image data using wired and wireless
`
`communication means. The ’168 patent includes 31 claims, of which claims 1, 22,
`
`24, 26, 27 and 29 are independent.
`
`The ’168 patent describes a system including a camera and a communication
`
`device. See Ex. 1001 at 2:64-3:6. According to the ’168 patent, the system can be
`
`integrated into a portable system comprising a cellular telephone, id. at 2:64-67, a
`
`desk system utilizing a standard landline telephone, id. at 3:1-4, or other transmis-
`
`sion methods such as “hardwired networks, radio and satellite transmissions,” id. at
`
`3:4-6.
`
`The ’168 patent states that the system would be “useful for applications
`
`where immediate transmission of visual images of scenes, people and objects is de-
`
`sirable,” id. at 2:56-59, such as in “law enforcement and emergency vehicles,” id.
`
`at 2:62-63. As such, the ’168 patent describes portability of the system as a focus
`
`of an embodiment. Id. at 3:53-55.
`
`B.
`
`Summary of the Prosecution History of the ’168 Patent
`
`The ’168 patent issued from a continuation application claiming priority to
`
`U.S. Patent Application No. 10/336,470 (now the ’871 patent). The file history of
`
`the ’168 patent is brief. In response to a Non-Final office action, the applicant can-
`
`celed all claims and added new claims. Ex. 1002 at 772. The examiner issued a
`
`6
`
`

`
`Petition for IPR of U.S. Patent No. 7,643,168
`
`Dkt. No 30387-222291
`
`final rejection of all new claims. Id. at 789. Applicant submitted an Affidavit by
`
`David Monroe under 37 CFR 1.131 to overcome the prior art, which led to a notice
`
`of allowance. Id. at 829, 957.
`
`C.
`
`Invention Date of the ’168 Patent
`
`In order to overcome several prior art references cited during the prosecution
`
`of the ’168 patent, the Applicant submitted an Affidavit by David Monroe under
`
`37 CFR 1.131 to claim a priority date of March 18, 1993. The Affidavit fails to
`
`support the earlier date of invention for the following reasons.
`
`First, “it has long been the case that an inventor's allegations of earlier in-
`
`vention alone are insufficient—an alleged date of invention must be corroborated.”
`
`In re NTP, Inc., 654 F.3d 1279, 1291 (Fed. Cir. 2011). The Affidavit by Mr. Mon-
`
`roe simply fails to corroborate that the invention as claimed in the ’168 patent—a
`
`portable device having both phone and camera functionalities and also equipped
`
`with an image display monitor for displaying an image captured by the camera—
`
`was indeed invented by the alleged date. Instead, the Affidavit shows either a non-
`
`portable device capable of performing some of the claimed functionalities, see e.g.,
`
`7
`
`

`
`Petition for IPR of U.S. Patent No. 7,643,168
`
`Dkt. No 30387-222291
`
`Ex. 1002 at 835-914, or a portable device lacking the claimed image display moni-
`
`tor, id. at 915-943. 1 Thus, there is no objective evidence corroborating the concep-
`
`tion of, for example, “the display being operable to display for viewing by a user a
`
`perceptible visual image, the perceptible visual image being generated from the
`
`visual image data” as required by claim 1.
`
`Second, the declaration fails to adequately show continuous exercise of rea-
`
`sonable diligence. See e.g., In re McIntosh, 230 F.2d 615, 619 (CCPA 1956)
`
`(holding that an earlier invention date can only be awarded “by showing the con-
`
`tinuous exercise of reasonable diligence”). To the contrary, the Affidavit shows
`
`
`
`1 See all exhibits submitted by Applicant at pgs. 1011-1201 of Ex. 1002. Pe-
`
`titioner notes that while Exhibit 9 submitted by the Applicant appears to have a
`
`display, there is no objective evidence that “the display being operable to display
`
`for viewing by a user a perceptible visual image, the perceptible visual image be-
`
`ing generated from the visual image data” as required by, for example, claim 1 or
`
`that the device exhibits any of the other claimed functions. Id. at 1110-11. Moreo-
`
`ver, the Applicant refers to Exhibit 9 as an “additional concept[]” that appears to
`
`have not been reduced to practice as the prototype (Exhibit 17) does not have such
`
`a display. Id. at 833, 1011
`
`8
`
`

`
`Petition for IPR of U.S. Patent No. 7,643,168
`
`Dkt. No 30387-222291
`
`large gaps during which no activity has been demonstrated. For example, the Affi-
`
`davit does not explain whether any efforts were made to reduce the invention to
`
`practice between 1992 (the first comprehensive circuit for a handheld Remote Im-
`
`age Transceiver (“R.I.T.”)) and November 1995 (a concept proposal of a handheld
`
`R.I.T. using secure radio transmission). Considering that diligence can be denied
`
`for unaccounted time periods as short as a few days, see e.g., In re Mulder, 716
`
`F.2d 1542, 1542-46 (Fed. Cir. 1983) (a two-day hiatus was sufficient to defeat a
`
`claim of diligence); Rieser v. Williams, 255 F.2d 419, 424 (CCPA 1958) (a time
`
`period of less than a month, during which no record of diligence exists, denied the
`
`claim of reasonable diligence), the gaps in the Affidavit spanning several years cer-
`
`tainly cannot meet the required diligence to claim the invention date in 1994.
`
`At least for the above reasons, the ’168 patent should not be given an inven-
`
`tion date any earlier than the January 12, 1998, the filing date of the earliest prior-
`
`ity application.
`
`V. MANNER OF APPLYING CITED PRIOR ART TO EVERY CLAIM FOR
`WHICH IPR IS REQUESTED, THUS ESTABLISHING A REASONABLE LIKELIHOOD
`THAT AT LEAST ONE CLAIM OF THE ’168 IS UNPATENTABLE
`
`This petition shows how the references listed above anticipate or render ob-
`
`vious the Challenged Claims of the ’168 patent. As detailed below, this petition
`
`demonstrates a reasonable likelihood of Petitioner prevailing with respect to each
`
`(and therefore at least one) of the Challenged Claims of the ’168 patent.
`
`9
`
`

`
`Petition for IPR of U.S. Patent No. 7,643,168
`
`Dkt. No 30387-222291
`
`A. Ground 1 – McNelley (Ex. 1004) Renders Obvious Claims
`
`1-31
`
`Claims 1-31 are rendered obvious by McNelley and invalid under 35 U.S.C.
`
`§ 103 as discussed and shown in the claim charts below. These claim charts are
`
`supported by the expert declaration of Dr. Robert Stevenson, Ph.D. (Ex. 1003).
`
`McNelley discloses an integrated video conferencing system which captures
`
`video and audio, displays the captured video to the local user by either a display
`
`screen or separate viewfinder, and, if the user desires, can transmits the video and
`
`audio over a wireless network, such as a cellular phone network. See e.g., Ex.
`
`1004 at Abstract, Claim 42. McNelley teaches that multiple design choices can be
`
`made and, therefore, embodiments may combine many different elements and in-
`
`clude different configurations. Id. at Figs. 8-16. McNelley teaches a system archi-
`
`tecture that allows multiple hardware embodiments and flexibility of design.
`
`McNelley further teaches that it is advantageous for the system to represent
`
`image information digitally and to keep the information in digital form for display-
`
`ing, storage, and transmission of the data. Id. at 12:66 – 13:9. Here, again,
`
`McNelley discloses that there are many storage technologies that can be used to
`
`store image data, such as tape, disk, and solid state memory. Id. at 12:50-54;
`
`21:22-26. McNelley further discloses that the device can be portable and imple-
`
`mentations can also be battery powered. Id. at 6:61-62. Additionally, McNelley
`
`teaches that a wide variety of input devices can be chosen for user control as input
`
`10
`
`

`
`Petition for IPR of U.S. Patent No. 7,643,168
`
`Dkt. No 30387-222291
`
`to control a processor for dialing and telecamcorder control, for example. Id. at
`
`6:43-54, 7:51 – 8:18; Figs. 8 (186, 188) and 12 (186,188); 20:54-55 (Microproces-
`
`sor) and Figs. 30-31. McNelley further teaches that video can be compressed be-
`
`fore transmission using a solid state medium (specifically, an ASIC) for compres-
`
`sion functionality. Id. at 18:36-48. As was well known at the time, such ASICs
`
`could combine processing hardware and software (firmware) to implement com-
`
`pression algorithms. Ex. 1003 at ¶ 36, 44-45, 47.
`
`The following claim chart and accompanying discussion further details rele-
`
`vant disclosure of McNelley that renders obvious the claims of the ’168 patent.
`
`Claim Element
`
`1. [Pre] Apparatus
`comprising:
`
`Disclosure
`
`“A camcorder (telecamcorder) of the present invention
`contains an integral video-phone capable of receiving and
`sending teleconferencing signals and includes a built-in
`display to view an incoming teleconferencing signal and
`a video pickup device that can produce an image of the
`operator for transmission during teleconferencing. The
`telecamcorder operates either as a conventional cam-
`corder or a teleconferencing terminal allowing one single
`device to have multiple uses.” Ex. 1004 at 5:1-9 (empha-
`sis added); see also, e.g., id. at 1:6-11; 14:28-31; Figs. 8,
`12; Ex. 1003 at ¶ 37.
`
`
`11
`
`

`
`Petition for IPR of U.S. Patent No. 7,643,168
`
`Dkt. No 30387-222291
`
`
`
`[a] a portable hous-
`ing, the portable
`housing being wire-
`less;
`
`
`
`
`
`McNelley discloses a portable and wireless teleconfer-
`encing terminal.
`
`“[T]he telecamcorder can serve as a portable wireless tel-
`econferencing terminal much like a portable cellular
`phone.” Ex. 1004 at 14:28-31 (emphasis added); see
`also, e.g., 4:61-5:11; 7:66-8:9; Figs. 8, 12.
`“The telecamcorder may be powered by the battery or by
`an electrical outlet …” Id. at 18:55-57; Ex. 1003 at ¶ 37.
`
`[b] an image collec-
`tion device supported
`
`“The microphone 114, an optional light 152, and a re-
`mote sensor 154, along with the camera 102, are con-
`tained on a camera boom 156 that can rotate a full 360
`
`12
`
`

`
`Petition for IPR of U.S. Patent No. 7,643,168
`
`Dkt. No 30387-222291
`
`by the portable hous-
`ing, the image col-
`lection device being
`operable to provide
`visual image data of
`a field of view;
`
`[c] a display sup-
`ported by the porta-
`ble housing, the dis-
`play being operable
`to display for view-
`ing by a user a per-
`ceptible visual im-
`age, the perceptible
`visual image being
`generated from the
`visual image data;
`
`degrees on a pivot 158. In camcorder mode, the camera
`boom 156 is turned 180 degrees, allowing the camera
`102, the microphone 114, the light 152, and the sensor
`154 to be directed toward the action to be videographed
`while using the display 100 as a camera viewfinder. The
`camera boom 156 may be pointed in any direction in ei-
`ther teleconferencing mode or camcorder mode, thus al-
`lowing recording of the operator's own image while in
`camcorder mode or capturing other images besides the
`local conferee for transmission to the distant conferee
`while in teleconferencing mode.” Ex. 1004 at 6:45-58
`(emphasis added); see also id. at 6:35-4; 8:46-67; 12:66-
`13:7; Fig. 12, element 102; Fig. 30, element 406.
`
`“Instead of the expense and quality loss due to repeated
`digital-to-analog and analog-to-digital conversions, it is
`advantageous to start digital and stay digital all the way.
`To this end, digital video cameras employ circuit boards
`that include a charged coupled device (CCD) optical
`pickup. As electrical values area read from the CCE, the
`values are immediately converted into digital values and
`remain digital through all subsequent processing.” Id. at
`12:66-13:7 (emphasis added); Ex. 1003 at ¶ 38.
`
`See disclosure set forth above with respect to claim ele-
`ment 1[b]. See also, Ex. 1004 at 6:10-13; Figs. 7-8.
`
`“The telecamcorder of FIG. 8 may also include a tradi-
`tional single-eye viewfinder 166. A mounting bracket
`168 attaches the viewfinder 166 and has two pivots al-
`lowing vertical170 and horizontal172 positioning of the
`viewfinder 166. The viewfinder 166 may be optical or
`may contain a small electronic display that displays the
`image captured by the camera 102. The single-eye view-
`finder 166 causes less battery drain than the larger tele-
`conferencing display 100, an important factor in situa-
`tions where long battery life is a necessity. Also, the sin-
`gle-eye viewfinder 166 allows the camcorder operator to
`more effectively track moving objects. The telecamcorder
`may be configured without the single-eye viewfinder 166
`
`13
`
`

`
`Petition for IPR of U.S. Patent No. 7,643,168
`
`Dkt. No 30387-222291
`
`and then utilizes one display 100 as both teleconferencing
`display and viewfinder. The single(cid:173)eye viewfinder 166
`may also simply be a second video display which is
`viewed with one eye or both eyes and is substantially
`smaller than the display 100 used for teleconferencing. If
`the viewfinder, as well as the display screen, is provided
`by an electronic display, either the display screen or the
`viewfinder may be configured for use in both the cam-
`corder mode and the teleconferencing mode.” Id. at 7:4-
`23 (emphasis added).
`
`“Instead of the expense and quality loss due to repeated
`digital-to-analog and analog-to-digital conversions, it is
`advantageous to start digital and stay digital all the way.
`To this end, digital video cameras employ circuit boards
`that include a charged coupled device (CCD) optical
`pickup. As electrical values area read from the CCE, the
`values are immediately converted into digital values and
`remain digital through all subsequent processing.” Id. at
`12:66-13:7 (emphasis added); Ex. 1003 at ¶ 39.
`
`McNelley discloses a memory for receiving and retaining
`the visual image data in digital format.
`
`“A removable recording medium 209 is placed into the
`telecamcorder 209 through a door 212 which is released
`by a latch 214 and then closed for recording.” Ex. 1004
`at 8:37-41 (emphasis added); Fig. 10.
`
` “
`
` If the telecamcorder is being used to make a recording,
`the controller 400 conditions the audio and video signals,
`if necessary, and routes them to a recording/playback
`electronics package 420. The recording electronics pro-
`cesses the signals for storage in memory 422. The
`memory 422 actually comprises any type of data record-
`ing medium ranging from tape and disks to solid state mi-
`croelectronic memory.” Id. at 21:19-26 (emphasis
`added); see also id. at 21:41-56; Fig. 30, element 422;
`Fig. 31, elements 424, 426; Ex. 1003 at ¶ 40.
`
`
`14
`
`[d] memory sup-
`ported by the porta-
`ble housing, the
`memory being suita-
`ble to receive visual
`image data in digital
`format, the memory
`being suitable to re-
`tain the visual image
`data in digital for-
`mat,
`
`

`
`Petition for IPR of U.S. Patent No. 7,643,168
`
`Dkt. No 30387-222291
`
`See also claim element 1[f], below.
`
`[e] an input device
`supported by the
`portable housing, the
`input device being
`operable by the user;
`
` “Fig. 9 shows a left side view of the telecamcorder illus-
`trated in Fig. 8. This figure shows the dialing controls
`186 and the telecamcorder controls 188 built into the
`main housing 148. Built-in controls may serve in lieu of
`controls on the handset 174.” Ex. 1004 at 8:10-15 (em-
`phasis added); see also id. at 7:51-65; Figs. 8, 12; Ex.
`1003 at ¶ 41-42.
`
`[f] operation of the
`input device by the
`user enabling the
`memory to retain the
`visual image data in
`digital format, the
`memory being suita-
`ble to provide re-
`tained visual image
`data in digital for-
`mat;
`
`“If the telecamcorder is being used to make a recording,
`the controller 400 conditions the audio and video signals,
`if necessary, and routes them to a recording/playback
`electronics package 420. The recording electronics 420
`processes the signals for storage in memory 422. The
`memory 422 actually comprises any type of data record-
`ing medium ranging from tape and disks to solid state mi-
`croelectronic memory. The recording electronics 420
`vary according to the exact type of memory 422 em-
`ployed. . . . The system controller 400 routes the re-
`ceived signals to speaker electronics 408 and a speaker
`410 for audio reproduction and display electronics 418
`and a display 416 for display of video.” Ex. 1004 at
`21:19-40 (emphasis added); see also id. at 13:10-27;
`claim 15.
`
` “Instead of the expense and quality loss due to repeated
`digital-to-analog and analog-to-digital conversions, it is
`advantageous to start digital and stay digital all the way.
`To this end, digital video cameras employ circuit boards
`that include a charged coupled device (CCD) optical
`pickup. As electrical values area read from the CCE, the
`values are immediately converted into digital values and
`remain digital through all subsequent processing.” Id. at
`12:66-13:7 (emphasis added); Ex. 1003 at ¶ 43.
`
`[g] media supported
`by the portable hous-
`ing, the media being
`suitable to embody at
`
`“Recent advances in compression technology promise
`full motion, real-time teleconferencing using a single
`phone line, cable, or wireless broadcast. Such advanced
`digital compression formats use small ASIC chips for
`
`15
`
`

`
`Petition for IPR of U.S. Patent No. 7,643,168
`
`Dkt. No 30387-222291
`
`least one compres-
`sion algorithm;
`
`compression and decompression. These chips can readily
`be built into a telecamcorder.” Ex. 1004 at 18:36-48
`(emphasis added); Ex. 1003 at ¶ 44-46.
`
`“FIG. 30 presents a block diagram of a simple telecam-
`corder. The heart of the unit is a system controller/mode
`selector 400. This section mediates data flow in the tele-
`camcorder, and all the other sections of the device feed
`into the controller 400. Video images are captured by a
`video camera 406 which is connected to video camera
`electronics 404. The video camera electronics 404 pro-
`vides the video camera 406 with proper supply voltages
`and control signals and processes the output of the cam-
`era 406 into a final video signal to be fed to the controller
`400. Similarly, a microphone 414 and microphone elec-
`tronics 412 provide an audio signal which is fed to con-
`troller 400. Ex. 1004 at 21:3-18 (emphasis added); Fig.
`30; Ex. 1003 at ¶ 47.
`
`
`[h] at least one pro-
`cessing platform sup-
`ported by the porta-
`ble housing, the at
`least one processing
`platform being oper-
`able to execute the at
`least one compres-
`sion algorithm, the at
`least one processing
`platform being pro-
`vided the retained
`visual image data in
`digital format, execu-
`tion of the at least
`one compression al-
`gorithm providing
`compressed visual
`image data; and
`
`
`
`See also claim element 1[g], above, regarding ASIC
`chips and media.
`
`