Trials@uspto.gov
`571-272-7822
`
`Paper 16
`Entered: August 4, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD .
`
`IRON DOIVIE LLC
`
`Petitioner
`
`'
`
`V.
`
`E-WATCH, INC.
`Patent Owner
`
`Case IPR2014-00439
`
`Patent 7,365,871
`
`Before JAIVIESON LEE, GREGG I. ANDERSON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEIVIENTS, Administrative Patent Judge.
`
`DECISION
`
`Institutionof Inter Partes Review
`
`37 CFR. § 42.108
`
`Kyocera Ex. 1004
`p. 1
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`Kyocera Ex. 1004
`p. 1
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`

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`IPR2014-00439
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`Patent 7,365,871
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`I.
`
`INTRODUCTION
`
`Iron Dome LLC (“Petitioner”) filed a Petition‘requesting interpartes
`
`review of claims 1-15 (“the challenged claims”) of US. Patent No.
`
`7,365,871 (Ex. 1001, “the ’871 patent”). Paper 1 (“Pet.”). e-Watch, Inc.
`
`(“Patent Owner”) filed a Preliminary Response. Paper 9 (“Prelim Resp.”).
`
`We have jurisdiction under 35 U.S.C. § 314, which provides that an inter
`
`partes review may only be authorized if “the information presented in the
`
`petition .
`
`.
`
`. and any [preliminary] response .
`
`.
`
`. shows that there is a
`
`reasonable likelihood that the petitioner would prevail with respect to at least
`
`1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).Upon
`consideration of the Petition and Preliminary Response, we determine that
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`the information presented by Petitioner establishes that there is a reasonable
`
`likelihood that Petitioner would prevail in showing the unpatentability of
`
`only claims 1 and 3' of the _’871 patent. Accordingly, pursuant to 35 U.S.C.
`
`§ 314, we institute an inter partes review of claims 1 and 3 of the ’871
`
`patent.
`
`A. Related Proceedings
`
`Petitioner and Patent Owner indicate that the ’87 1 patent is involved
`
`in eleven co-pending district court cases in the US. District Court for the
`
`Eastern District of Texas. Pet. 2; Paper 7, 3.
`
`B. The ’87] Patent
`
`The ’871 patent relates generally to image capture and transmission
`
`systems, and is directed specifically to an image capture, compression, and
`
`transmission system for use in connection with landline and wireless
`
`telephone systems. Ex. 1001, 1:17-20. According to the ’871 patent, the
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`Kyocera Ex. 1004
`p.2
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`Kyocera Ex. 1004
`p. 2
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`11312201400439
`Patent 7,365,871
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`system is particularly well-suited for sending and/or receiving images via a
`
`standard Group III facsimile transmission system and permits capture of the
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`image at a remote location using an analog or digital camera. Id. at 53-7.
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`.
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`Figure 1 of the ’871 patent is reproduced below.
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`Flt-3.1
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`o
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`-— «a.»
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`..
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`1
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`6
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`1a
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`20
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`24
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`28
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`_
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`mm
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`22
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`e-m .
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`o-m
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`mm“
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`26
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`o
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`W 36
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`38
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`4o
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`42
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` 32/ 1'34
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`“Figure ,1 is a block diagram of a basic facsimile camera configuration for
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`capturing an image via a camera and transmitting it via Group III facsimile
`
`transmission to a standard hard copy medium.” Id. at 4:27-30.
`
`Figure 7A of the ’871 patent is reproduced below.
`
`196
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`Kyocera Ex. 1004
`p-3‘
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`Kyocera Ex. 1004
`p. 3
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`IPR2014-00439
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`Patent 7,365,871 -
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`Figure 7A depicts a “hand-held‘device for capturing, storing, and
`
`transmitting an image in accordance with the invention.” Id. at 4:46-48,
`
`1123-20.
`
`C. Illustrative Claim
`
`Of the challenged claims, claims 1, 6, 9, and 12 are independent.
`
`‘ Claim 1 is reproduced below:
`
`telephone
`self-contained cellular
`A handheld
`1.
`integrated image processing system for. both sending and,
`receiving telephonic audio signals and for capturing a visual
`image and transmitting it
`to a compatible remote receiving
`station of a wireless telephone network, the system comprising:
`
`and
`
`a manually portable housing;
`
`an integral image capture device comprising an electronic
`camera contained within the portable housing;
`
`a display for displaying an image framed by the camera,
`the display being supported by the housing, the display and the
`electronic camera being commonly movable in the housing
`when the housing is moved by hand;
`
`a processor in the housing for generating an image data
`signal representing the image framed by the camera;
`
`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;
`
`a user interface for enabling a user to select the image
`data signal for viewing and transmission;
`
`a telephonic system in the housing for sending and
`receiving digitized audio signals and for sending the image data
`signal;
`
`alphanumeric input keys in the housing for permitting
`manually input digitized alphanumeric signals to be input to the
`
`4
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`Kyocera Ex. 1004
`p. 4
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`Kyocera Ex. 1004
`p. 4
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`lPR2014-00439
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`Patent 7,365,871
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`processor, the telephonic system further uSed for sending the
`digitized alphanumeric signals;
`
`for
`adapted
`device
`communications
`a wireless
`transmitting any of the digitized signals to the compatible
`’ remote receiving station; and
`
`a power supply for powering the system.
`
`D. References Relied Upon
`
`Petitioner relies upon the following references:
`
`' Parulski
`
`Reele
`
`US 6,122,526
`
`Sept. 19, 2000
`
`US 5,893,037
`
`April 6, 1999
`
`Ex. 1002
`
`Ex. 1003
`
`E. The Asserted Grounds of Unpatentability
`
`Petitioner argues that the challenged claims are unpatentable‘as
`
`obvious over Parulski and Reele.
`
`II. ANALYSIS
`
`A. Status ofParulski and Reele as Prior Art
`
`As an initial matter, we review whether the references relied upon by
`Petitioner qualify as prior art. Parulski has an effective filing date of April
`
`24, 1995. Reele has an effective filing date of December 9, 1994. Both
`Parulski and Reele qualify as prior art under 35 U.S.C. §§ 102(a) and 102(e),
`because neither was issued or published more than one year prior to the
`effective filing date ofthe ’871 patent, but the effective filing date of each is
`earlier than the effective filing date cf the ’871 patent (January 12, 1998).
`
`Patent Owner argues that Parulski cannot be prior art in this proceeding,
`
`because US. Patent No. 5,666,159 to Parulski (“Parulski ’159”), which has
`
`the same specification and priority date as Parulski, was determined during
`
`prosecution to be antedated and the affidavit submitted during prosecution,
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`Kyocera Ex. 1004
`p.5
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`Kyocera Ex. 1004
`p. 5
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`IPR2014-00439
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`Patent 7,365,871
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`therefore, overcomes all §102(a) and §102(e) prior art having an effective
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`date of April 24, 1995 or later. Prelim. Resp. 3-10 (citing Exs. 2001-2002
`
`(Affidavit of David A. Monroe Under 37 CFR 1.131) (“2004 Monroe
`
`Declaration”); Ex. 2003 (Office Action dated August 9, 2005)). Patent
`
`Owner is correct that the Examiner determined during prosecution that the
`
`2004 Monroe Declaration sufficiently antedated Parulski ’159. Ex. 2003, 2.
`
`We are not, however, bound by that determination. We have reviewed the
`
`2004 Monroe Declaration and the prosecution record, and, on the record
`
`before us at this time, we find Patent Owner’s arguments that Parulski is
`
`sufficiently antedated by the 2004 Monroe Declaration to be unpersuasive
`
`for the reasons discussed below.
`
`Priority of invention goes to the first party to reduce to practice unless
`
`the other party can show that it was the first to conceive the invention and
`
`that it exercised reasonable diligence in later reducing that invention to
`
`practice. Brown v. Barbacid, 276 F.3d 1327, 1337 (Fed. Cir. 2002); Cooper
`
`v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998); Mahurkar v. CR. Bard,
`
`Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996). An inventor’s testimony,
`
`standing alone, is insufficient to prove conception, as some form of _
`
`corroboration is required. Mahurkar, 79 F.3d at 1577; Price v. Symsek, 988
`
`F.2d 1187, 1194 (Fed. Cir. 1993). A rule of reason applies to determine
`
`whether the inventor’s testimony has been corroborated. Price, 988 F.2d at
`1194.
`'
`
`During the period in which reasonable diligence must be shown, there
`
`must be continuous exercise of reasonable diligence. In re McIntosh, 230
`
`F.2d 615, 619 (CCPA 1956); see also Burns v. Curtis, 172 F.2d 588, 591
`
`(CCPA 1949) (referring to “reasonably continuous activity”). A party
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`Kyocera Ex. 1 004
`p. 6
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`Kyocera Ex. 1004
`p. 6
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`IPR2014-00439
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`Patent 7,365,871
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`alleging diligence must account for the entire critical period. Griffith v.
`
`Kanamuru, 816 F.2d 624, 626 (Fed. Cir. 1987); Gould v. Schawlow, 363
`
`F.2d 908, 919 (CCPA 1966). Even a short period of unexplained inactivity
`
`is sufficient to defeat a claim of diligence. Morway v. Bondi, 203 F.2d 742,
`
`749 (CCPA 1953); Ireland v. Smith, 97 F.2d 95, 99-100 (CCPA 1938). In In
`
`re Mulder, 716 F.2d 1542, 1542-46 (Fed. Cir. 1983), for example, the
`
`Federal Circuit affirmed a determination of lack of reasonable diligence,
`
`where the evidence of record was lacking for a two-day critical period.
`3 Likewise, in Rieser v. Williams, 255 F.2d 419, 424 (CCPA 1958), there was
`
`no showing of diligenCe where no. activity was shown during the first
`
`thirteen days of the critical period.
`
`A party alleging'diligence must provide corroboration with evidence
`
`that is specific both as to facts and dates. Gould, 363 F.2d at 920; Kendall v.
`
`Searles, 173 F.2d 986, 993 (CCPA 1949). The rule of reason does not
`dispense with the need for corroboration of diligence that is specific as to
`
`dates and facts. Gould, 363 F.2d at 920; Kendall, 173 F.2d at 993; see also
`
`Coleman v. Dines, 754 F.2d 353, 360 (Fed. Cir. 1985).
`l On this record, Patent Owner has not shown that the 2004 Monroe
`
`Declaration addresses the continuous exercise of reasonable diligence
`
`adequately. For example, the 2004 Monroe Declaration shows extended
`
`periods of little activity that have not been adequately explained, such as
`
`between 1992 (the first comprehensive circuit for a handheld Remote Image
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`Transceiver (“R.I.T.”)) and November 1995 (a concept proposal of a
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`handheld R.I.T. using secure radio transmission), and between November
`
`1995 and mid-1997 (a prototype of the first commercial embodiment of the
`
`invention). Both periods are subsequent to the effective filing dates of Reele
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`Kyocera Ex. 1004
`p. 7
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`Kyocera Ex. 1004
`p. 7
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`IPR2014-00439
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`Patent 7,365,871
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`and Parulski.
`
`Also, Patent Owner must establish conception and reduction to
`practice of the subject matter of each of the challenged claims. The 2004
`
`Monroe Declaration fails to relate the claims of the ’871 patent to the
`invention that is alleged to be earlier in time. For example, Mr. Monroe
`
`testifies to the dates on which he developed several R.I.T.’s, including a
`
`commercial handheld R.I.T. completed in late 1997. Ex. 1004 1111 9-17. The
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`2004 Monroe Declaration does not, however, relate any of the discussed
`
`R.I.T. devices to any element of any claim of the ’871 patent. It is not clear,
`
`for example, that the 2004 Monroe Declaration adequately accounts for the
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`“telephonic system” element of claim 1. According to the 2004 Monroe
`
`Declaration, cellular telephone compatibility was not present in the
`
`November 1995 proposal for a handheld R.I.T., but it was present in the
`final product completed in late 1997. Ex. 1004 111] 14, 17. As a result, it is
`
`not clear when Mr. Monroe Conceived of a handheld R.I.T. that included
`
`cellular telephone computability. Even assuming that Mr. Monroe
`
`conceived of a handheld R.I.T. that included cellular telephone compatibility
`
`shortly after November 1995, that would not be earlier than the effective
`
`filing dates of Parulski and Reele.
`For the foregoing reasons, on the present record, we are persuaded by
`
`\
`
`the Petitioner’s argument that the 2004 Monroe Declaration, either by itself
`
`or in combination with the evidence currently of record, does not properly
`
`antedate Parulski and Reele.
`
`B. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are
`
`interpreted according to their “broadest reasonable construction in light of
`
`8
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`Kyocera Ex. 1004
`p. 8
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`Kyocera Ex. 1004
`p. 8
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`IPR2014-00439
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`Patent 7,365,871
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`the specification of the patent in which they appear.” 37 C.F.R. § 42.100(b);
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
`
`2012). Also, claim terms are given their ordinary and customary meaning,-
`
`as would be understood by one of ordinary skill in the art in the context of
`the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`
`”(Fed. Cir. 2007).
`
`1.
`
`“image capture device ” (claims I, 2, 9)
`
`Petitioner proposes that “image capture device” be construed to
`encompass at least “a digital camera or the electronic component of a digital
`1 camera that performs the actual image capture, which is typically a charge
`coupled device (CCD).” Pet. 6-7. As support for its proposed construction,
`
`Petitioner cites the Specification. Id. (citing Ex. 1001, Fig. 1,5:30-32).
`
`Patent Owner does not dispute Petitioner’s proposed construction.
`
`We, however, conclude that Petitioner’s proposed construction is
`
`unreasonably narrow to the extent that it eXcludes an analog image capture
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`device, as described in the ’871 patent. Ex. 1001, 5230-32. On this record,
`and for purposes ofthis Decision, we determine that the broadest reasonable
`
`interpretation of “image capture device” includes, but is not limited to, a
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`digital camera and the component of a digital camera that performs the
`
`actual image capture.
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`2.
`
`“digitizedframed image ” (claims I, 6, 9, 12)
`
`Petitioner proposes that “digitized framed image” be construed to
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`' encompass at least “a digital photo image.” Pet. 7. As support for its
`
`proposed construction, Petitioner cites the Specification. Id. (citing Ex.
`1001, Fig. 1, 5:30-32). Patent Owner does not dispute Petitioner’s proposed
`
`construction. The term “digitized framed image” is not used apart from the
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`Kyocera Ex. 1004
`p. 9
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`Kyocera Ex. 1004
`p. 9
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`IPR2014—00439
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`Patent 7,365,871
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`claims. The claims require, however, that the “digitized framed image” be
`
`the image framed by the camera. The ’871 patent describes an exemplary
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`“image capture device” as “a standard analog or digital camera device 10 for
`
`capturing a visual image in the typical fashion.” Ex. 1001, 5:30-32.
`
`Accordingly, “digitized frame image” must be broad enough to encompass
`the output of a digital camera device. On this record, and for purposes of
`
`this Decision, we determine that “digitized framed image” is broad enough
`
`to include a digital photo image.
`
`3.
`
`”remote receiving station” (claim 1)
`
`Petitioner proposes that “content data” be construed to “encompass at
`least fax machines, cellular phones, and personal computers.” Pet. 7. As
`support for its proposed construction, Petitioner cites the Specification. Id.
`(citing Ex. 1001, Figs. 1-3, 2:39-43). Patent Owner does not dispute
`Petitioner’s proposed construction. The ’871 patent does not define the term
`
`“remote receiving station,” but describes it being “where the image is
`
`downloaded for viewing on a screen or printing on hard paper copy or other
`
`medium.” Ex. 1001, 4:67-52. The ’871 patent also describes “remote
`
`receiving devices, such as, by way of example, personal computers and
`
`network servers” (id. at 2:42-43, 1318-9 and 21-23), “a remote Group-III
`
`receiving system 34” (id. at 5:54-55), and “a remote facsimile machine” (id.
`
`at 10:47). On this record, and for purposes of this Decision, we determine
`that “remote receiving station” is broad enough to encompass at least remote
`
`fax machines, remote cellular phones, and remote personal computers.
`4. “alphanumeric input keys” (claims I and 9)
`1
`
`Petitioner prOposes that “alphanumeric input keys” be constrUed to
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`“encompass at least telephone keypads.” Pet. 7. As support for its proposed
`
`10
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`Kyocera Ex. 1004
`p. 10
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`Kyocera Ex. 1004
`p. 10
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`IPR2014-00439
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`Patent 7,365,871 '
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`construction, Petitioner cites the Specification. Id. (citing Ex. 1001, Fig. 7,
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`2:30-32, 11:19—20). Patent Owner does not dispute Petitioner’s proposed
`construction. The term “alphanumeric input keys” is not used in the ’871
`
`patent, apart from the claims. The ’871 patent does, however, describe an
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`“integrated keyboard” (Ex. 1001, 2:30-32), “operator interface button keys
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`98” (id. at 11:8-9), and a “keypad for the telephone” (id. at 11:19-20).
`
`Moreover, Figures 6A-C and 7A depict embodiments with a conventional
`
`telephone keypad. On this record, and for purposes of this Decision, we
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`determine that “alphanumeric input keys” is broad enough to include a
`
`telephone keypad.
`
`C. Challenged Claims — Obvious over Parulski and Reele
`
`Petitioner argues that the claims 1-15 are unpatentable under 35
`
`U.S.C. § 103(a) as obvious over Parulski and Reele. Pet. 8-33.
`
`Parulski (Exhibit 10022
`
`Parulski describes an electronic camera system that includes “a
`
`transmission mechanism for sending image data to selected receiver units.”
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`Ex.1002,'1:14-16.
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`11
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`Kyocera Ex. 1004
`p. 11
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`Kyocera Ex. 1004
`p. 11
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`IPR2014-00439
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`Patent 7,365,871
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`Figures 7, 8, and 9 of Parulski are reproduced below.
`
`
`
`F169
`
`‘ Figure 7 depicts combined telephone/camera unit 48 in accordance with a
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`second embodiment of the invention of Parulski. Id. at 2:33-35. Figure 8
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`depicts a top View of combined telephone/camera unit 48. Id. at 2:36-37.
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`Figure 9 is a schematic block diagram of the combined telephone/camera
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`unit 48. Id. at 2:38-39. In the depicted embodiment, a cellular telephone is
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`provided with the components of an electronic image camera to form a
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`combined telephone/camera unit 48. Id. at 4:34-36. The combined unit 48
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`includes liquid crystal display screen 56 and telephone keypad 58. Id. at
`
`I
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`4:38-43.
`
`'
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`The user takes a picture by pressing an image capture switch (not
`
`shown) or, alternatively, a key on keypad 58. Id. at 4:48-53. “The digitized
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`picture data generated by the camera module 68 is stored in memory unit 64
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`and displayed on display screen 56.” Id. at 4:53-55 (emphasis omitted). “To
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`transmit the image, the user dials the telephone number of a desired fax
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`12
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`Kyocera Ex. 1004 .
`p. 12
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`p. 12
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`machine that is to receive 'the image using the keypad 58.” Id. at 4:56-58
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`(emphasis omitted). “The number is transmitted to the fax machine via the
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`cellular transceiver 66.” Id. at 4:58-59 (emphasis omitted). “The stored
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`image is then converted to the appropriate fax standard by control processing
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`unit 62, and is transmitted to the receiving fax machine using the normal
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`cellular telephone system that includes an RF link from cellular transceiver
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`66 to a cellular base unit, which connects to the normal wire, fiber, and
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`satellite telephone system.” Id. at 4:62-67 (emphasis omitted).
`
`g
`Reele (Exhibit 10032
`Reele describes “an electronic/silver-halide image capture system that
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`is capable of transmitting captured image data via cellular communication
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`transmission.” Id. at 1:10-14.
`
`Figure 4 of Reele is reproduced below.
`
`66
`VOICE
`
`
`‘COG-
`-
`CELLULAR
`
`I.
`CONTROL
`
`UNIT —— —:l CONNECTOR
`i
`-
`
`
`
`
`
`
`
`
`26
`fll :
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`
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`30
`
`WE
`CENERA TOR
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`68
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` 32
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`HG. 4
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`Figure 4 depicts a functional block diagram of cellular telephone 28
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`illustrated in Figure 2. Id. at 2:49-50. Cellular phone 28 includes cellular
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`transmitter/receiver circuit 54 coupled to antenna 34. Id. at 3:64—66.
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`Cellular band voice transmission signals received by transmitter/receiver
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`13
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`Kyocera Ex. 1004
`p. 13
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`Kyocera Ex. 1004
`p. 13
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`[PR2014-00439
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`circuit 54 are supplied to speaker 62. Id. at 3266-4: 1. Microphone 64 is
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`coupled to transmitter/receiver circuit 54 to enable cellular band
`
`transmission of voice signals to remote locations. Id. at 4: l-4. Operation of
`transmitter/receiver circuit 54 is controlled by cellular control unit 60. Id. at
`
`4:4-8. Cellular control unit 60 also is coupled to display 30 and keypad 32.
`
`Id. A/D converter 56 and D/A converter 58 permit analog signals received
`by transmitter/receiver circuit 54 from speaker 62 or antenna 34 to be '
`
`converted to digital signals and supplied to cellular control unit 60. Id. at
`
`428-15. A/D converter 56 and D/A converter 58 also permit digital data
`
`supplied from cellular control unit 60 to be converted to an analog signal for
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`transmission by transmitter/receiver circuit 54. Id. Display 30 is used to
`
`display various messages tothe operator of the telephone. Id. at 4:15-17.
`
`The reference states that “it will be understood that [telephone 28 and
`camera 10] may be readily combined within a single housing as an
`
`integrated module.” Id. at 4:47-51 (emphasis omitted).
`
`m I
`
`n light of the arguments and evidence, Petitioner has established a
`
`reasonable likelihood that claims l-15 are unpatentable as obvious over
`Parulski and Reele. Specifically, we are persuadedvthat Petitioner’s citations
`
`support Petitioner’s contentions. For example, Petitioner relies upon the
`combination ofParulski with Reele. Pet. 14-33. Petitioner argues that
`
`“someone of ordinary skill in the art reading Parulski would have strong
`
`motivation to consider Reele for its further teachings about combination
`
`camera-phone devices,” because Reele is listed amongst the References
`
`Cited on the face of Parulski and because Reele is directed to the same topic
`
`of camera-phone devices. Pet. 8. Petitioner describes Reele’s disclosure
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`14
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`Kyocera Ex. 1004
`p. 14
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`Kyocera Ex. 1004
`p. 14
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`[PR2014-00439
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`Patent 7,365,871
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`and argues that “there is motivation to add useful features disclosed by Reele
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`into the camera-phone of Parulski.” Pet. 12. On the record before us, we are
`
`persuaded that Petitioner has provided sufficiently an articulated reasoning
`
`with some rational underpinning to support the legal conclusion of
`
`obviousness. See KSR, 550 US. 418 (2007) (citing In re Kahn, 441 F.3d
`
`977, 988 (Fed. Cir. 2006)).
`
`Patent Owner does not argue that Parulski or Reele fails to teach or
`
`suggest any limitation of claims 1-15.
`
`Conclusion
`
`On this record, we are persuaded that Petitioner has established a
`
`reasonable likelihood that it would prevail in showing that claims 1-15 are
`
`unpatentable as obvious over Parulski and Reele.
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`III. CONCLUSION
`
`For the foregoing reasons, we determine that Petitioner has
`
`established that there is a reasonable likelihood that Petitioner would prevail
`
`in. establishing the unpatentability of claims 1-15 of the ’871 patent.
`
`The Board has not made a final determination on the patentability of
`
`i any challenged claims.
`
`Accordingly, it is
`
`-
`
`IV. ORDER
`
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
`
`hereby instituted for claims 1—15 under 35 U.S.C. § 103 as obvious over
`
`Parulski and Reele; and
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(d) and
`
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial on the
`
`15
`
`Kyocera Ex. 1004
`p. 15
`
`Kyocera Ex. 1004
`p. 15
`
`

`

`IPR2014-00439
`
`Patent 7,365,871
`
`grounds of unpatentability authorized above; the trial commences on the
`
`entry date of this Decision.
`
`16
`
`Kyocera Ex. 1004
`p. 16
`
`Kyocera Ex. 1004
`p. 16
`
`

`

`IPR2014-00439
`
`Patent 7,365,871
`
`For PETITIONER:
`
`Steven Yu
`
`ROZMED LLC
`
`syu@patent—interceptcom
`
`For PATENT OWNER:
`
`- Robert C. Curfiss
`
`bob@curfiss.com
`
`and
`
`David 0. Simmons
`
`IVC Patent Agency
`dsimmons 1 @sbcglobal.net
`
`17
`
`Kyocera Ex. 1004
`p. 17
`
`‘Mm.
`
`Kyocera Ex. 1004
`p. 17
`
`

`

`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria. Virginia 223134450
`www.uspto.gov
`
`NOTICE OF ALLOWANCE AND FEE(S) DUE
`
`MOORE LANDREY
`1609SH0ALCREEKBLVD
`
`AUSTIN, TX 78701
`
`SAFAIPOUR, HOUSHANG
`
`2625
`DATE MAILED: 12/27/2007
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO
`
`07-0197
`David A. Monroe
`01/03/2003
`10/336,470
`TITLE OF INVENTION: APPARATUS FOR CAPTURING, CONVERTING AND TRANSMITTING A VISUAL IMAGE SIGNAL VIA A DIGITAL
`TRANSMISSION SYSTEM
`
`8448
`
`APPLN. TYPE
`
`SMALL ENTITY
`
`ISSUE FEE DUE
`
`PUBLICATION FEE DUE
`
`PREV. PAID ISSUE FEE
`
`TOTAL FEE(S) DUE
`
`DATE DUE
`
`nonprovisional
`
`$1440
`
`$300
`
`$1740
`
`03/2 7/2008
`
`THE APPLICATION IDENTIFIED ABOVE HAS BEEN EXAMINED AND IS ALLOWED FOR ISSUANCE AS A PATENT.
`
`THIS APPLICATION IS SUBJECT TO WITHDRAWAL FROM ISSUE AT THE INITIATIVE OF THE OFFICE OR UPON
`PETITION BY THE APPLICANT. SEE 37 CFR 1.313 AND MPEP 1308.
`
`THE ISSUE FEE AND PUBLICATION FEE (IF REQUIRED) MUST BE PAID WITHIN THREE MONTHS FROM THE
`MAILING DATE OF THIS NOTICE OR THIS APPLICATION SHALL BE REGARDED AS ABANDONED.
`THIS
`STA! [JTQBXm QAEISQT E.w. SEE 35 U.S.C. 151. THE ISSUE FEE DUE INDICATED ABOVE DOES
`NOT REFLECT A CREDIT FOR ANY PREVIOUSLY PAID ISSUE FEE IN THIS APPLICATION.
`IF AN ISSUE FEE HAS
`PREVIOUSLY BEEN PAID IN THIS APPLICATION (AS SHOWN ABOVE), THE RETURN OF PART B OF THIS FORM
`WILL BE CONSIDERED A REQUEST TO REAPPLY THE PREVIOUSLY PAID ISSUE FEE TOWARD THE ISSUE FEE NOW
`DUE.
`
`HOW TO REPLY TO THIS NOTICE:
`
`1. Review the SMALL ENTITY status shown above.
`
`If the SMALL ENTITY is shown as YES, verify your current
`SMALL ENTITY Status:
`
`If the SMALL ENTITY is shown as NO:
`
`A. If the status is the same, pay the TOTAL FEE(S) DUE shown
`above.
`
`A. Pay TOTAL FEE(S) DUE shown above, or
`
`B. If the status above is to be removed, check box 5b on Part B -
`Fee(s) Transmittal and payythe PUBLICATION FEE (if required)
`and- twice the amount of the ISSUE FEE shown above, or
`
`B. If applicant claimed SMALL ENTITY status before, or is now
`claiming SMALL ENTITY status, check box 5a on Part B - Fee(s)
`Transmittal and pay the PUBLICATION FEE (if required) and l/2
`the ISSUE FEE shown above.
`
`11. PART B - FEE(S) TRANSMITTAL, or its equivalent, must be completed and returned to the United States Patent and Trademark Office
`(USPTO) with your ISSUE FEE and PUBLICATION FEE (if required). If you are charging the fee(s) to your deposit account, section "4b"
`of Part B - Fee(s) Transmittal should be completed and an extra copy of the form should be submitted. If an equivalent of Part B is filed, a
`request to reapply a previously paid issue fee must be clearly made, and delays in processing may occur due to the difficulty in recognizing
`the paper as an equivalent of Part B.
`
`111. All communications regarding this application must give the application number. Please direct all communications prior to issuance to
`Mail Stop ISSUE FEE unless advised to the contrary.
`
`IMPORTANT REMINDER: Utility patents issuing on applications filed on or after Dec. 12, 1980 may require payment of
`maintenance fees. It is patentee's responsibility to ensure timely payment of maintenance fees when due.
`
`PTOL-85 (Rev. 08/07) Approved for use through 08/31/2010.
`
`Page 1 0”
`
`Kyocera EX. 1004
`p. 18
`
`Kyocera Ex. 1004
`p. 18
`
`

`

`PART B - FEE(S) TRANSMITTAL
`
`Complete and send this form, together with applicable fee(s), to: Mail Mail Stop ISSUE FEE
`Commissioner for Patents
`PO. Box 1450
`Alexandria, Virginia 22313-1450
`(571)-273-2885
`
`or E3;
`
`7590
`67589
`MOORE LANDREY
`1609 SHOAL CREEK BLVD
`AUSTIN, TX 78701
`
`I2/Z7/2007
`
`through 5 should be completed where
`INSTRUCTIONS: This form should be used for transmitting the ISSUE FEE and PUBLICATION FEE (if required% Blocks I
`appropriate. All fithher correspondence including the Patent, advance orders and notification of maintenance fees will
`e mailed to the current corres ondence address as
`maintenance ee noti ications.
`in icated unlpss corrfected below or directed otherwise in Block I, by (a) specifying a new correspondence address; and/or (b) indicating a separate " EE ADDRESS" for
`CURRENT CORRESPONDENCE ADDRESS (Notc:Usc Block I forany change ofaddress)
`NOW: A certificate 0i maliln can only 56 11563 i0? 301116500 mailings oi the
`Fee(s) Transmittal. This certi icate cannot be used for any other accompanying
`papers. Each additional paper, such as an asSignment or formal drawmg, must
`ave its own certificate of mailing or transmiSSion.
`C
`fi
`I'M ili
`T
`i
`I
`rig or
`erti cate o
`a
`ransm $5 on
`that this IFee s Transmittal isf be%ng depositedllwith the Unlited
`IShereb cerfif
`erVice wrt
`su iCient osta e or irst cass mai
`in an enve o e
`tates osta
`addressed to the Mail Sto
`ISSUEpFEEgaddress above, or bein
`facsimiie
`transmitted to the USPTO ( 7]) 273-2885, on the date indicated be ow,
`(Dcpositor's name)
`
`
`
`
`(Signature)
`
`
`
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`07-0 I 97
`David A. Monroe
`OI /03/2003
`lO/3 36,470
`TITLE OF INVENTION: APPARATUS FOR CAPTURING, CONVERTING AND TRANSMITTING A VISUAL IMAGE SIGNAL VIA A DIGITAL
`TRANSMISSION SYSTEM
`
`8448
`
`APPLN, TYPE
`
`SMALL ENTITY
`
`ISSUE FEE DUE
`
`PUBLICATION FEE DUE
`
`PREV. PAID ISSUE FEE
`
`TOTAL FEE(S) DUE
`
`DATE DUE
`
`nonprovisional
`
`NO
`
`SAFAIPOUR, HOUSI-IANG
`
`$1440
`
`2625
`
`1. Chan e of correspondence address or indication of "Fee Address" (37
`CFR I. 63).
`D Chan e of corres ondence address (or Change of Correspondence
`Address orm PTO/ 8/122) attached.
`
`D "Fee Address" indication (or "Fee Address" Indication form
`PTO/SB/47; Rev 03-02 or more recent) attached. Use of a Customer
`Number is required.
`
`$300
`
`$0
`
`$1740
`
`03/27/2008
`
`358-474000
`
`2. For printing on the patent front page, list
`(I) the names of up to 3 registered patent attorneys
`or agents OR, alternatively,
`(2) the name ofa single firm (having as a member a
`registered attorney or agent) and the names of up to
`2 registered patent attorneys or agents. If no name is
`listed, no name Will be printed.
`
`
`
`l
`
`2
`
`3
`
`3. ASSIGNEE NAME AND RESIDENCE DATA TO BE PRINTED ON THE PATENT (print or type)
`If an assignee is identified below, the document has been filed for
`PLEASE NOTE: Unless an assi
`ee is identified below, no assignee data will appear on the patent.
`recordation as set forth in 37 CF 3.I I. Completion of this form is NOT a substitute for filing an aSSIgnment.
`(A) NAME OF ASSIGNEE
`(B) RESIDENCE: (CITY and STATE OR COUNTRY)
`
`Please check the appropriate assignee category or categories (will not be printed on the patent) : D Individual D Corporation or other private group entity D Government
`
`4a. The following fee(s) are submitted:
`E] Issue Fee
`
`.
`
`4b. Payment of Fee(s): (Please first reapply any previously paid issue fee shown above)
`D A check is enclosed.
`
`D Payment by credit card. Form PTO-2038 is attached.
`D Publication Fee (No small entity discount permitted)
`D Advance Order - # of Copies
`D The Director is hereby authorized to charge the required fee(s), any deficiency, or credit. any
`
`overpayment, to Deposn Account Number enclose an extra copy of this form).
`5. Change in Entity Status (from status indicated above)
`D b. Applicant is no longer claiming SMALL ENTITY status. See 37 CFR |.27(g)(2).
`D a. Applicant claims SMALL ENTITY status. See 37 CFR l.27.
`NOTE: The Issue Fee and Publication Fee (if required) will not be accepted from anyone other than the applicant; a registered attorney or agent; or the assignee or other party in
`interest as shown b the records of the United States Patent and Trademark Office.
`
`’
`
`Authorized Signature
`
`Typed or printed name
`
`Date
`
`Registration No.
`
`This collection ofinformation is required by 37 CFR l.3l |. The information is re uired to obtain or retain a benefit by the public which is to file (and by the USPTO to process)
`-an application. Confidentiality is governed by 35 U.S.C. l22 and 37 CFR l.l4. T is collection is estimated to take I minutes to complete, including gathering, preparing, and
`submitting the completed application form to the USPTO. Time will va
`de endin upon the individual case. Any comments on the amount of time you require to com lete
`this form and/or stfgestions for reducmg this burden, should be sent to t e Ciiief Infiormation Officer, US. Patent and Trademark Office, US. Department ofCommerce,
`.0.
`Box 1450, Alexan na, Vir inia 22313-1450. DO NOT SEND FEES 0R COMPLETED FORMS TO THIS ADDRESS. SEND TO: Commissroner for Patents, PO. Box I450,
`Alexandria, Virginia 223 If-MSO.
`Under the Paperwork Reduction Act of I995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`
`PTOL-85 (Rev. 08/07) Approved for use through 08/3l/2010.
`
`OMB 0651-0033
`
`Kyocera Ex. 1004
`US. Patent and Trademark Office; US. DEPARTMEBT QI‘QCOMMERCE
`
`Kyocera Ex. 1004
`p. 19
`
`

`

`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box I450
`Alexandria. Virginia 223I3-I450
`www.usp|o.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED TNVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`10/336,470
`
`OI/03/2003
`
`David A. Monroe
`
`07-0I97
`
`8448
`
`MOORE LANDREY
`I609 SHOAL CREEK BLVD
`
`AUSTIN, TX 78701
`
`SAFAIPOUR, HOUSHANG
`PAPER NUMBER
`
`2625
`DATE MAILED: 12/27/2007
`
`Determination of Patent Term Adjustment under 35 U.S.C. 154 (b)
`(application filed on or after May 29, 2000)
`
`The Patent Term Adjustment to date is 0 day(s). If