IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent of: Monroe
`
`U.S. Patent No.: 7,365,871
`
`Attorney Docket No.: 30387-222292
`
`Issue Date:
`
`April 29, 2008
`
`Case No. IPR2015-00402
`
`Appl. Serial No.: 10/336,470
`
`Filing Date:
`
`January 3, 2003
`
`Title:
`
`
`
`APPARATUS FOR CAPTURING, CONVERTING AND
`TRANSMITTING A VISUAL IMAGE SIGNAL VIA A DIGI-
`TAL TRANSMISSION SYSTEM
`
`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. 7,365,871 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`

`
`Petition for IPR of U.S. Patent No. 7,365,871
`
`Dkt. No 30387-222292
`
`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) .............................. 5
`
`IV. SUMMARY OF THE ’871 PATENT ...................................................................... 6
`
`A. Brief Description ....................................................................................... 6
`
`B. Summary of the Prosecution History of the ’871 Patent .......................... 7
`
`C. Invention Date of the ’871 Patent ............................................................. 8
`
`V. MANNER OF APPLYING CITED PRIOR ART TO EVERY CLAIM FOR WHICH AN
`
`IPR IS REQUESTED, THUS ESTABLISHING A REASONABLE LIKELIHOOD THAT
`
`THE CHALLENGED CLAIMS ARE UNPATENTABLE ........................................... 10
`
`A. Ground 1 – Nagai (Ex. 1004) and Lemelson (Ex. 1005) Combine to
`
`Render Obvious Claims 1-8, 12-15 ........................................................10
`
`ii
`
`

`
`Petition for IPR of U.S. Patent No. 7,365,871
`
`Dkt. No 30387-222292
`
`B. Ground 2 –Lemelson (Ex. 1005) and Ohnsorge (Ex. 1006) Combine to
`
`Render Obvious Claims 1-3, 5-7, 12, and 14-15 ....................................22
`
`C. Ground 3: Lemelson (Ex. 1005), Ohnsorge (Ex. 1006) and Sasaki (Ex.
`
`1007) Combine to Render Obvious Claims 4, 8 and 13 .........................32
`
`D. Ground 4: Nagamine (Ex. 1008) Renders Obvious Claims 1-7, 12 and
`
`14-15 .......................................................................................................33
`
`E. Ground 5: Nagamine (Ex. 1008) and Sasaki (Ex. 1007) Combine to
`
`Render Obvious Claims 4, 8 and 13 .......................................................42
`
`VI. NON-REDUNDANCY OF GROUNDS PRESENTED ............................................... 44
`
`VII. CONCLUSION .................................................................................................. 44
`
`iii
`
`

`
`Petition for IPR of U.S. Patent No. 7,365,871
`
`Dkt. No 30387-222292
`
`Ex. 1001 U.S. Patent No. 7,365,871 to Monroe (“the ’871 patent”)
`
`EXHIBITS
`
`Ex. 1002 Prosecution History of the ’871 Patent with appended physical exhibits
`
`(“the Prosecution History”)
`
`Ex. 1003 Declaration of Dr. Robert Stevenson, Ph.D.
`
`Ex. 1004 JP Application Publication Number 09-037129 (“Nagai”)
`
`Ex. 1005 U.S. Patent No. 4,485,400 (“Lemelson”)
`
`Ex. 1006 U.S. Patent No. 5,485,504 (“Ohnsorge”)
`
`Ex. 1007 U.S. Patent No. 5,018,017 (“Sasaki”)
`
`Ex. 1008 U.S. Patent No. 6,564,070 (“Nagamine”)
`
`Ex. 1009 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. 1010 BellSouth, IBM Unveil Personal Communicator Phone http://re-
`
`search.microsoft.com/en-us/um/people/bibuxton/buxtoncollec-
`
`tion/a/pdf/press%20release%201993.pdf.
`
`Ex. 1011 Buxton Collection: Simon, http://research.microsoft.com/en-us/um/peo-
`
`ple/bibuxton/buxtoncollection/a/pdf/press%20release%201993.pdf.
`
`iv
`
`

`
`Petition for IPR of U.S. Patent No. 7,365,871
`
`Dkt. No 30387-222292
`
`Ex. 1012 Walke, The Roots of GPRS: The first System for Mobile Packet based
`
`Global Internet Access. IEEE Wireless Communications, October 2013
`
`Ex. 1013 ETSI GSM Technical Specification 7.07, Digital cellular telecommuni-
`
`cations system (Phase 2+); AT command set for GSM Mobile Equipment
`
`(ME), July 1996
`
`Ex. 1014 Richards, The 30 Most Important Digital Cameras of All time, Pop-
`
`Photo.com (Oct. 22, 2013), http://www.popphoto.com/gear/2013/10/30-
`
`most-important-digital-cameras.
`
`Ex. 1015 Canon Camera Museum: Canon Camera Story, 1976-1986,
`
`http://www.canon.com/camera-museum/his-
`
`tory/canon_story/1976_1986/1976_1986.html.
`
`Ex. 1016 Kriss, et al., Critical technologies for electronic still imaging systems,
`
`SPIE vol. 1082, pp. 157-184.
`
`Ex. 1017 NikonWeb.com, http://www.nikonweb.com/rc760/ (last visited Dec. 08,
`
`2014).
`
`Ex. 1018 U.S. Patent 5,477,264.
`
`Ex. 1019 Keith A. Hadley, Kodak SV9600 Still Video Transceiver, Proc. SPIE
`
`1071, Optical Sensors and Electronic Photography, 238 (1989).
`
`Ex. 1020 Japanese Patent Application H03-107891.
`
`Ex. 1021 David Ewing, Que’s Computer User’s Dictionary 494 (5th Ed., 1994)
`
`v
`
`

`
`Petition for IPR of U.S. Patent No. 7,365,871
`
`Dkt. No 30387-222292
`
`Ex. 1022 Bryan Pfaffenberger, Webster’s New World Computer Dictionary 361
`
`(9th Ed., 2001)
`
`Ex. 1023 U.S. Patent No. 5,977,867
`
`Ex. 1024 Wikipedia on Point-and-Shoot Camera, http://en.wikipe-
`
`dia.org/wiki/Point-and-shoot_camera.
`
`Ex. 1025 U.S. Des. 207,491
`
`Ex. 1026 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)
`
`
`
`vi
`
`

`
`Petition for IPR of U.S. Patent No. 7,365,871
`
`Dkt. No 30387-222292
`
`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 1-8 and 12-15 (“the Challenged Claims”) of U.S. Patent No.
`
`7,365,871 (“the ’871 patent”). As explained in this petition, there exists a reasona-
`
`ble likelihood that Petitioner will prevail in demonstrating unpatentability of at
`
`least one of the Challenged Claims based on the teachings set forth in the refer-
`
`ences 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 ’871 Patent and U.S. Pat. No. 7,643,168 (“the
`
`’168 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. 7,365,871
`
`Dkt. No 30387-222292
`
`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 ’168 patent (IPR2015-00401).
`
`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. 7,365,871
`
`Dkt. No 30387-222292
`
`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 ’871 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 requests 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 Ex. 1003, the Declaration of Dr. Robert Stevenson, Ph.D., ref-
`
`erenced throughout this Petition.
`
`Ground
`
`‘871 Patent Claims
`
`Basis for Rejection
`
`Ground 1 1-8, 12-15
`
`Obvious under § 103(a) over Nagai (JP
`Application Publication Number H09-
`
`3
`
`

`
`Petition for IPR of U.S. Patent No. 7,365,871
`
`Dkt. No 30387-222292
`
`Ground
`
`‘871 Patent Claims
`
`Basis for Rejection
`
`Ground 2 1-3, 5-7, 12, 14-15
`
`Ground 3 4, 8, 13
`
`Ground 4 1-7, 12-15
`
`Ground 5 4, 8, 13
`
`037129) and Lemelson (U.S. Patent No.
`4,485,400)
`
`Obvious under § 103(a) over Lemelson
`(U.S. Patent No. 4,485,400) and
`Ohnsorge (U.S. Patent No. 5,485,504)
`
`Obvious under § 103(a) over Lemelson
`(U.S. Patent No. 4,485,400) and
`Ohnsorge (U.S. Patent No. 5,485,504)
`and further in view of Sasaki (U.S. Pa-
`tent No. 5,018,017)
`
`Obvious under § 103 by Nagamine (U.S.
`Patent No. 6,564,070)
`
`Obvious under § 103(a) over by
`Nagamine (U.S. Patent No. 6,564,070)
`in view of Sasaki (U.S. Patent No.
`5,018,017)
`
`The ’871 patent issued from the divisional patent application of a parent ap-
`
`plication filed on January 12, 1998. As a consequence, the priority date for the
`
`’871 patent is no earlier than January 12, 1998. See infra Section IV.C.
`
`Nagai, Japanese Patent Application H09-037129, qualifies as prior art under
`
`35 U.S.C. § 102(a). Specifically, Nagai (Ex. 1004) published on February 7, 1997,
`
`and therefore predates the earliest priority date of the ’871 patent.
`
`Lemelson, U.S. Patent No. 4,485,400, qualifies as prior art under 35 U.S.C.
`
`§ 102(b). Specifically, Lemelson (Ex. 1005) issued on November 27, 1984, and
`
`therefore predates the earliest priority date of the ’871 patent by more than a year.
`
`4
`
`

`
`Petition for IPR of U.S. Patent No. 7,365,871
`
`Dkt. No 30387-222292
`
`Ohnsorge, U.S. Patent No. 5,485,504, qualifies as prior art under 35 U.S.C.
`
`§ 102(b). Specifically, Ohnsorge (Ex. 1006) issued on January 16, 1996, and
`
`therefore predates the earliest priority date of the ’871 patent by more than a year.
`
`Sasaki, U.S. Patent No. 5,018,017, qualifies as prior art under 35 U.S.C. §
`
`102(b). Specifically, Sasaki (Ex. 1007) issued on May 21, 1991, and therefore pre-
`
`dates the earliest priority date of the ’871 patent by more than a year.
`
`Nagamine, U.S. Patent No. 6,564,070, qualifies as prior art under 35 U.S.C.
`
`§ 102(e). Specifically, Nagamine (Ex. 1008) was filed on September 22, 1997, and
`
`therefor predates the earliest priority date of the ’871 patent.
`
`C. Claim Construction under 37 C.F.R. §§ 42.104(b)(3)
`
`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).
`
`(i)
`
`Selectively Displaying (claims 1, 6, 9, 12)
`
`Based on the broadest reasonable interpretation standard and the description
`
`in the ’871 patent, the term “selectively displaying” should be construed as “choos-
`
`ing from one or more for display.” See, e.g., ’871 patent at 5:6-10, 6:37-45. Nei-
`
`ther the claim language nor the specification requires that the selection must take
`
`place among more than a single image. Thus, the broadest reasonable interpreta-
`
`tion should be “choosing from one or more for display.”
`
`(ii)
`
`Selectively Transmitting (claims 1, 6, 9, 12)
`
`5
`
`

`
`Petition for IPR of U.S. Patent No. 7,365,871
`
`Dkt. No 30387-222292
`
`Based on the broadest reasonable interpretation standard and the description
`
`in the ’871 patent, the term “selectively transmitting” should be construed as
`
`“choosing from one or more for transmission.” See, e.g., ’871 patent at 5:6-10,
`
`6:37-45. Neither the claim language nor the specification requires that the selec-
`
`tion must take place among more than a single image. Thus, the broadest reasona-
`
`ble interpretation should be “choosing from one or more for transmission.”
`
`IV. Summary Of The ’871 Patent
`
`A. Brief Description
`
`The ’871 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 ’871 patent includes 15 claims, of which claims 1, 6,
`
`9, and 12 are independent.
`
`The ’871 patent describes a system including a camera and a communication
`
`device. See Ex. 1001 at 1:64-2:7. According to the ’871 patent, the system can be
`
`integrated into a portable system comprising a cellular telephone, id. at 1:64-67, a
`
`desk system utilizing a standard landline telephone, id. at 2:1-4, or other transmis-
`
`sion methods such as “hardwired networks, radio and satellite transmissions,” id. at
`
`2:4-7. Additionally, the system includes memory to store captured image data, id.
`
`at 6:33-49, which can be accessed for preview on a display screen, id. at 8:39-48.
`
`6
`
`

`
`Petition for IPR of U.S. Patent No. 7,365,871
`
`Dkt. No 30387-222292
`
`The ’871 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 1:56-58, such as in “law enforcement and emergency vehicles,” id.
`
`at 1:61. As such, the ’871 patent describes portability of the system as a focus of
`
`an embodiment. Id. at 2:55-58.
`
`B.
`
`Summary of the Prosecution History of the ’871 Patent
`
`The ’871 patent was filed on January 3, 2003 as U.S. Patent Application No.
`
`10/336,470 (“the ‘470 application”), and issued on April 29, 2008. The ’470 appli-
`
`cation was a divisional application originating from its parent, U.S. Patent Applica-
`
`tion No. 09/006,073 (“the ’073 application”), which was filed on January 12, 1998.
`
`See 1002.
`
`Amendments to the ’871 patent claims in the late stages of the prosecution
`
`are helpful in understanding the feature that led to allowance. In particular, the
`
`Applicant gained allowance by amending the claims to require “a user interface for
`
`enabling a user to select the image data signal for viewing and transmission.” Ex.
`
`1002 at 513 (underline in original). The Applicant argued that the cited prior art
`
`references fail to teach “the ability to display stored images on the device display,”
`
`id. at 516 (emphasis in original). Therefore, it was the ability to selectively display
`
`and transmit image data which allegedly distinguished the ’871 patent over the
`
`cited prior art references. The cited references in this Petition, however, were not
`
`7
`
`

`
`Petition for IPR of U.S. Patent No. 7,365,871
`
`Dkt. No 30387-222292
`
`before the Office during the original examination. Therefore, the ’871 Patent was
`
`granted based on an incomplete record of relevant prior art.
`
`C.
`
`Invention Date of the ’871 Patent
`
`In order to overcome several prior art references cited during the prosecution
`
`of the ’871 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 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 ’871 patent—a
`
`portable device having both phone and camera functionalities and also equipped
`
`with an image display monitor—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., Ex. 1002 at 193-272, or a portable device lacking
`
`the claimed image display monitor, id. at 273-301.1 The Affidavit also fails to ad-
`
`dress many other claimed features of the ’871 patent, most notably the feature to
`
`
`
`1 See all exhibits submitted by Applicant at pgs. 1877-2067 of Ex. 1002.
`
`8
`
`

`
`Petition for IPR of U.S. Patent No. 7,365,871
`
`Dkt. No 30387-222292
`
`selectively display and transmit image data that led to allowance. See supra Sec-
`
`tion IV.B. Thus, there is no objective evidence corroborating the conception of,
`
`for example, “a memory associated with the processor for receiving and storing the
`
`digitized framed image, accessible for selectively displaying in the display window
`
`and accessible for selectively transmitting over the wireless telephone network the
`
`digitized framed image” 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
`
`large gaps during which no activity has been demonstrated. For example, the Af-
`
`fidavit 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
`
`9
`
`

`
`Petition for IPR of U.S. Patent No. 7,365,871
`
`Dkt. No 30387-222292
`
`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 1993.
`
`At least for the above reasons, the ’871 patent should not be given an inven-
`
`tion date any earlier than the January 12, 1998 filing date of its parent application.
`
`V. Manner Of Applying Cited Prior Art To Every Claim For Which
`An IPR Is Requested, Thus Establishing A Reasonable Likelihood That The
`Challenged Claims Are Unpatentable
`
`As noted above in section IV, the Office allowed the claims of the ’871 pa-
`
`tent based on the selective nature of displaying and transmitting image data, which
`
`is found in prior art references such as Nagai, Lemelson, and Nagamine. Through
`
`the disclosures and combinations that immediately follow, Nagai, Lemelson, and
`
`Nagamine, as well as other references are used in combinations to demonstrate a
`
`complete lack of patentability of the Challenged Claims.
`
`A. Ground 1 – Nagai (Ex. 1004) and Lemelson (Ex. 1005)
`Combine to Render Obvious Claims 1-8, 12-15
`
`As shown in greater detail in the following claim chart, Nagai in combina-
`
`tion with Lemelson discloses and renders obvious each and every limitation of
`
`claims 1-8, 12-15. Accordingly, these claims are unpatentable as obvious under 35
`
`U.S.C. § 103(a). Specifically, Nagai discloses a cellular phone equipped with a
`
`CCD camera that captures and transmits images over the cellular network. See
`
`e.g., Ex. 1004 at [0013], Figs. 3, 4. Nagai discloses internal and removable storage
`
`devices, selectively accessible in accordance to user command for retrieving stored
`
`10
`
`

`
`Petition for IPR of U.S. Patent No. 7,365,871
`
`Dkt. No 30387-222292
`
`data for display and transmission. Id. at [0013]-[0016]. While Nagai does not ex-
`
`plicitly disclose a power supply, one of ordinary skill in the art would understand
`
`that the portable telephone disclosed in Nagai would include a power supply. Ex.
`
`1003 at ¶ 36. For example, Nagai is specifically directed to “equipping the mobile
`
`telephone function on the electronic still camera, in a situation such as when the
`
`electronic still camera is used to shoot a commemorative photo on a vacation or the
`
`like.” Ex. 1004 at [0010]; Ex. 1003 at ¶ 36. At the time of the invention, it was
`
`common for mobile devices such as mobile phones and digital cameras to include
`
`internal power supplies such as a battery. Ex. 1003 at ¶ 36. Additionally, although
`
`the device taught in Nagai utilizes a touch panel, Nagai acknowledges that physical
`
`keys can also be used. Ex. 1004 at [0008]; Ex. 1003 at ¶ 46.
`
`Moreover, the features that Nagai does not explicitly teach were readily
`
`available and widely known well before the time of filing of the application that
`
`led to ’871 patent as evidenced by the disclosure of Lemelson. Ex. 1003 at ¶ 50.
`
`For example, integrating a power supply in the portable telephone of Nagai as
`
`taught by Lemelson would allow for greater portability (one of the goals of Nagai).
`
`Ex. 1003 at ¶ 36. Similarly, incorporating a physical keyboard (as taught by
`
`Lemelson) rather than a touch panel would result in greater tactile feedback to the
`
`user. Ex. 1003 at ¶ 47. As a result, one of ordinary skill in the art would have
`
`11
`
`

`
`Petition for IPR of U.S. Patent No. 7,365,871
`
`Dkt. No 30387-222292
`
`been motivated and would have had multiple reasons to combine Nagai with
`
`Lemelson to incorporate these features. Id.
`
`[1pre] A handheld self-con-
`tained cellular telephone and
`integrated image processing
`system for both sending and
`receiving telephonic audio
`signals and for capturing a
`visual image and transmit-
`ting it to a compatible remote
`receiving station of a wire-
`less telephone network, the
`system comprising:
`[1a] a manually portable
`housing;
`
`[1b] an integral image cap-
`ture device comprising an
`electronic camera contained
`within the portable housing;
`[1c] a display for displaying
`an image framed by the cam-
`era, the display being sup-
`ported by the housing, the
`display and the electronic
`camera being commonly
`movable in the housing when
`the housing is moved by
`hand;
`[1d] a processor in the hous-
`ing for generating an image
`data signal representing the
`image framed by the camera;
`
`Nagai illustrates in Fig. 3 an “electronic still cam-
`era” in the shape of a portable cellular phone. See
`Ex. 1004 at Fig. 3. More specifically, Nagai dis-
`closes an “imaging device such as a CCD” and
`components that make up a cellular telephone such
`as a microphone 15, a speaker 17, a TDMA pro-
`cessing circuit 19, a two-way wireless communica-
`tion circuit 20, and an antenna 21 for sending and
`receiving telephonic audio signals and for capturing
`and transmitting a visual image. Id. at Fig. 4,
`[0013]-[0014]; Ex. 1003 at ¶ 38.
`In Fig. 3, Nagai illustrates a cellular phone housing
`which provides structural support for the compo-
`nents contained therein. See Ex. 1004 at Fig. 4; Ex.
`1003 at ¶ 39.
`Nagai discloses an electronic still camera having a
`lens 1 and an “imaging device such as a CCD” 2
`contained in the housing. Ex. 1004 at [0013]-
`[0014], Fig. 4; Ex. 1003 at ¶ 40.
`Nagai discloses a liquid crystal monitor 14 sup-
`ported by the housing. Ex. 1004 at [0013], Fig. 4.
`The monitor 14 displays images framed by the
`camera. Id. at [0014], Figs. 6-9. The monitor 14
`and the camera (lens1 and CCD 2) are held within
`the same housing, see id. at Fig. 4, and commonly
`movable in the housing when the housing is moved
`by hand. Ex. 1003 at ¶ 41.
`
`Nagai discloses a microcomputer 10 which “per-
`forms system management of the entire electronic
`still camera,” a signal processing circuit 4, and an
`A/D converter 3. Ex. 1004 at [0013]. The pro-
`cessing circuit 4 receives image signals from the
`A/D converter 3 and outputs image data which rep-
`resents the images framed by the camera (lens 1
`
`12
`
`

`
`Petition for IPR of U.S. Patent No. 7,365,871
`
`Dkt. No 30387-222292
`
`and CCD 2). Id. at [0013], Fig. 4; Ex. 1003 at ¶ 42-
`43.
`
`In addition, with respect to claim element [1d], although Nagai describes the
`
`A/D converter 3 and the processing circuit 4 separately from the microcomputer
`
`10, one of ordinary skill in the art would understand that the microcomputer 10 can
`
`be integrated with and perform the functionalities of the A/D converter 3 and the
`
`processing circuit 4. Ex. 1003 at ¶ 43. Indeed, one of skill in the art would have
`
`readily integrated these components in order to reduce cost, achieve greater pro-
`
`grammability, and to reduce the size of the circuitry. Id.
`
`[1e] a memory associated
`with the processor for receiv-
`ing and storing the digitized
`framed image, accessible for
`selectively displaying in the
`display window and accessi-
`ble for selectively transmit-
`ting over the wireless tele-
`phone network the digitized
`framed image;
`
`Nagai discloses an image memory 6 which stores
`the digitized image data, as well as an attribute
`memory 7 which stores attribute information of im-
`ages stored in the memory 6. Ex. 1004 at [0013],
`Fig. 4. Nagai also discloses a common memory 23
`and an attribute memory 24, which act as remova-
`ble equivalents of memories 6 and 7, respectively.
`Id. The image data stored in the memories is acces-
`sible for selective display on the monitor 14 in the
`playback state shown in Figs. 7 and 8. Id. at
`[0015], Figs. 7-8. Specifically, image data is read
`out from the memory 23 according to a command
`from the microcomputer 10 which operates accord-
`ing to user input. Id. The image data is also acces-
`sible for selective transmission over the wireless
`transmission network via the image codec circuit
`18, TDMA processing circuit 19, the wireless com-
`munication circuit 20, and the antenna 21. Id. at
`[0016]. Specifically, “the user selects an image to
`be sent by commanding the microcomputer.” Id.;
`Ex. 1003 at ¶ 44.
`
`13
`
`

`
`Petition for IPR of U.S. Patent No. 7,365,871
`
`Dkt. No 30387-222292
`
`[1f] a user interface for ena-
`bling a user to select the im-
`age data signal for viewing
`and transmission;
`
`[1g] a telephonic system in
`the housing for sending and
`receiving digitized audio sig-
`nals and for sending the im-
`age data signal;
`
`[1h] alphanumeric input keys
`in the housing for permitting
`manually input digitized al-
`phanumeric signals to be in-
`put to the processor, the tele-
`phonic system further used
`for sending the digitized al-
`phanumeric signals;
`
`Nagai discloses a touch panel interface 11 that, in
`combination with a touch panel 12A, enables a user
`to “perform[] operation of the entire electronic still
`camera device,” Ex. 1004 at [0013], including se-
`lection of image data signals for viewing, id. at
`[0015], Figs. 7-9, and transmission, id. at [0016].
`See also Ex. 1003 at ¶ 41.
`Nagai discloses a cellular telephonic system in the
`housing comprising a microphone 15, a speaker 17,
`a TDMA processing circuit 19, a two-way wireless
`communication circuit 20, and an antenna 21. Ex.
`1004 at Fig. 4, [0013]-[0014]. This telephonic sys-
`tem transmits and receives data, including digitized
`audio signals using the voice codec circuit 17 and
`image data signal using the video codec circuit 18.
`Id. at [0013]; Ex. 1003 at ¶ 45.
`Nagai discloses a touch panel 12A which enables a
`user to “perform[] operation of the entire electronic
`still camera device.” Ex. 1004 at [1003], Fig. 10.
`Nagai also discloses operation switches 12B as an
`alternative form of input means. Id. at [0008], Figs.
`1-2. Nagai describes a “phone number input
`standby state,” id. at [0014], in which the touch
`panel 12A displays alphanumeric input keys for tel-
`ephone number input. Id.; Ex. 1003 at ¶ 46.
`
`Lemelson discloses alphanumeric input keys in the
`housing (digitally encoded keyboard 76) for permit-
`ting manually input digitized alphanumeric signals
`to be input to the processor, Ex. 1005 at 6:11-22,
`7:49-60, 9:23-37, 14:55-15:6. The telephone sys-
`tem is used to send the digitized alphanumeric sig-
`nals. Id.; Ex. 1003 at ¶ 47.
`
`With respect to claim element [1h], one of ordinary skill in the art would un-
`
`derstand that, because the microcomputer 10 “performs the system management of
`
`the entire electronic still camera,” Ex. 1004 at [0013], the microcomputer 10 would
`
`14
`
`

`
`Petition for IPR of U.S. Patent No. 7,365,871
`
`Dkt. No 30387-222292
`
`also receive the manually input alphanumeric signals from the input keys and pro-
`
`cess them for transmission. Ex. 1003 at ¶ 42, 46. Moreover, one of skill in the art
`
`would understand that the use of soft keys or hard keys is a matter of design choice
`
`and that incorporating a physical keyboard (as taught by Lemelson) rather than a
`
`touch panel would result in greater tactile feedback to the user. Id. at ¶ 47.
`
`[1i] a wireless communica-
`tions device adapted for
`transmitting any of the digit-
`ized signals to the compati-
`ble remote receiving station;
`and
`[1j] a power supply for pow-
`ering the system.
`
`Nagai discloses a two-way wireless communication
`circuit 20. Ex. 1004 at [0013], Fig. 4. The commu-
`nication circuit 20 transmits and receives digitized
`signals to and from a compatible remote receiving
`station. Id. at [0013], [0014], [0016]; Ex. 1003 at ¶
`45.
`Lemelson discloses a power supply for powering
`the system. Ex. 1005 at 6:36-40; Ex. 1003 at ¶ 50.
`
`With respect to claim element [1j], one of ordinary skill in the art would un-
`
`derstand that portable electronic devices such as the electronic still camera dis-
`
`closed in Nagai require an integrated power supply for powering the system. Ex.
`
`1003 at ¶ 49. To the extent Nagai is found not to explicitly disclose this claim lim-
`
`itation [1j], Lemelson can be combined with Nagai to meet this limitation and one
`
`of skill in the art would have readily incorporated a power supply in order to allow
`
`for greater portability. Id. at ¶ 50.
`
`[2] The self-contained cellu-
`lar telephone and integrated
`image processing system
`of claim 1, wherein the dis-
`play for framing the image to
`be captured by the image
`
`Nagai discloses a through-screen display state in
`which the monitor 14 is operable to display framed
`images for viewing prior to storing in the memory
`23. See Ex. 1004 at [0014], Fig. 7; Ex. 1003 at ¶
`52.
`
`
`15
`
`

`
`Petition for IPR of U.S. Patent No. 7,365,871
`
`Dkt. No 30387-222292
`
`capture device is operable to
`