Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 12
`Entered: June 23, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`E-WATCH, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00408
`Patent 7,643,168 B2
`____________
`
`
`
`Before JAMESON LEE, GREGG I. ANDERSON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper 12
`Entered: June 23, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`E-WATCH, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00408
`Patent 7,643,168 B2
`____________
`
`
`
`Before JAMESON LEE, GREGG I. ANDERSON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`IPR2015-00408
`Patent 7,643,168 B2
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`I. INTRODUCTION
`On December 10, 2014, LG electronics, Inc., (“Petitioner”)1 filed a
`Petition (Paper 1, “Pet.”) pursuant to 35 U.S.C. §§ 311–319 to institute an
`inter partes review of claims 1–31 of U.S. Patent No. 7,643,168 B2 (“the
`’168 patent”), filed January 12, 1998.2 On April 2, 2015, e-Watch, Inc.
`(“Patent Owner”) filed a Preliminary Response (Paper 11, “Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 314.
`The standard for instituting an inter partes review is set forth in
`35 U.S.C. § 314(a) which provides:
`THRESHOLD.—The Director may not authorize an inter
`partes review to be instituted unless the Director determines
`that the information presented in the petition filed under section
`311 and any response filed under section 313 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.
`
`Upon consideration of the Petition and the Preliminary Response, and
`applying the standard set forth in 35 U.S.C. § 314(a), which requires
`demonstration of a reasonable likelihood that Petitioner would prevail with
`respect to at least one challenged claim, we institute an inter partes review
`
`
`1 In the Petition as originally filed Microsoft Mobil OY was also a
`Petitioner, but its involvement was terminated in our Decision on Joint
`Motion to Terminate. See Paper 10.
`2 Petitioner alleges the ’168 patent claims priority to a continuation
`application No. 10/336,470 (US Pat. No. 7,365,871)(“the’470 application”)
`filed January 13, 2003. Pet. 4. The ’470 application is a divisional of an
`application No. 09/006,073 filed January 12, 1998. Id.; Ex. 1001, 1:6 –12.
`Petitioner alleges that is the earliest date to which Patent Owner could claim
`priority. Id. We use the 1998 date as the priority date for purposes of this
`Decision. See II.B.
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`of claims 1–31. The Board has not made a final determination of the
`patentability of any claim.
`A. Related proceedings
`Patent Owner has asserted the ’168 patent and related U.S. Patent No.
`7,365,871 (“the ’871 Patent”) against Petitioner in the following action: e-
`Watch, Inc. v. LG Electronics, Inc., No. 2:13-cv-01064, filed in the Eastern
`District of Texas on December 10, 2013. Pet. 1–2. Patent Owner has filed
`several other lawsuits asserting the ’168 and ’871 patents against other
`entities. Id.; Paper 10, 2–3.
`In addition to the present proceeding, petitions for inter partes review
`of the ’168 patent have been filed by: HTC Corporation and HTC America,
`Inc. (collectively “HTC,” IPR2014-00989 (“’989 IPR”)); Sony Mobil
`Communications (USA), Inc. (“Sony,” IPR2015-00408); Kyocera
`Communications, Inc. (“Kyocera,” IPR2015-00407); and Apple, Inc.
`(“Apple,” IPR2015-00414). Id.; Paper 5 at 3–4. Separate petitions for inter
`partes review of the ’871 patent have been filed by: Petitioner (IPR2015-
`00404); HTC (IPR2014-00987); Iron Dome LLC (IPR2014-00439); Sony
`(IPR2015-00402); Kyocera (IPR2015-00406); and Apple (IPR2014-00411,
`412, and 413). Id.
`
`B. The ’168 patent (Ex. 1001)
`The ’168 patent describes an image capture, conversion, compression,
`storage and transmission system. Ex. 1001, Abstract. The system includes a
`camera and a transmission device; the camera captures an image that is
`transmitted to another device using, for example, cellular signal, satellite
`transmission and hard line telephonic. Id. at 5:66–6:5. Captured images can
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`be from a digital or analog camera or a video camera (e.g., a camcorder). Id.
`at 2:37–39.
`Figure 4 of the ’168 patent is reproduced below.
`
`
`Figure 4 of the ’168 Patent illustrates the data path after an image is captured
`by camera 10 and conditioned by gray scale bit map 16. Id. at 7:65–8:41.
`The device includes memory 46, optional viewer 48, and format select
`interface switch 60 that permits automated or manual selection of the
`transmitting protocol, such as a Group-III facsimile format, a PC modem
`protocol, a wavelet compressor or others. Id. Depending on the selected
`protocol, the signal output is generated and provided to communications
`interface module 83 for transmission. Id.
`C. Illustrative Claim
`Of the challenged claims, claims 1, 22, 24, 26, 27, and 29 are
`independent. Claim 1 is reproduced below:
`1. Apparatus comprising:
`a portable housing, the portable housing being wireless;
`an image collection device supported by the portable
`housing, the image collection device being operable to provide
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`visual image data of a field of view;
`a display supported by the portable housing, 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;
`memory supported by the portable housing, the memory
`being suitable to receive visual image data in digital format, the
`memory being suitable to retain the visual image data in digital
`format,
`an input device supported by the portable housing, the
`input device being operable by the user;
`operation of the input device by the user enabling the
`memory to retain the visual image data in digital format, the
`memory being suitable to provide retained visual image data in
`digital format;
`media supported by the portable housing, the media
`being suitable to embody at least one compression algorithm;
`at least one processing platform supported by the
`portable housing, the at least one processing platform being
`operable to execute the at least one compression algorithm, the
`at least one processing platform being provided the retained
`visual image data in digital format, execution of the at least one
`compression algorithm providing compressed visual image
`data; and
`a mobile phone supported by the portable housing, the
`mobile phone being operable to send to a remote recipient a
`wireless transmission, the wireless transmission conveying the
`compressed digital image data; and
`movement by the user of the portable housing commonly
`moving the image collection device,
`movement by the user of the portable housing commonly
`moving the display.
`
`Ex. 1001, 15:14–50.
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`D. Asserted grounds of unpatentability
`Petitioner challenges claims 1–31 of the ’168 patent as unpatentable
`on the following grounds. Pet. 3–5, 10–58.
`Claim(s) Challenged
`Reference(s)
`Basis
`§ 103(a) 1–31
`§ 103(a) 16–18
`§ 103(a) 1–18, 21–31
`§ 103(a) 19, 20
`
`McNelley3
`McNelley and Nagai4
`Nagai
`Nagai and Sakata5
`
`
`E. Claim construction
`In inter partes review, claim terms are given their broadest reasonable
`interpretation in light of the specification in which they appear. See
`37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 778 F.3d 1271,
`1279–83 (Fed. Cir. 2015). Petitioner identifies two terms for construction
`Pet. 5–6. Patent Owner’s Preliminary Response does not include any
`proposals.
`
`1. “transmission protocol” (claims 16 –18)
`Petitioner identifies the term “‘transmission protocol’” for
`construction and proposes it should be construed as “‘one or more rules
`governing transmission.’” Pet. 5. Petitioner cites to the Specification as
`explaining that “transmission protocols are virtually endless.” Id. (citing Ex.
`1001, 2:44–45). On this record, Petitioner’s proposal is the broadest
`
`
`3 U.S. Patent No. 5,550,754, to McNelley et. al., issued August 27, 1996
`(“McNelley,” Ex. 1004).
`4 JP No. H9-37129, to Nagai, published February 7, 1997, and translation
`(“Nagai,” Ex. 1005).
`5 JP No. H8-191435, to Sakata, published July 23, 1996, and translation
`(“Sakata,” Ex. 1006).
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`reasonable construction of the term and is adopted for purposes of this
`Decision.
`2. “media being suitable to embody . . . algorithm”(claims 1–28)
`
`We interpreted the term “media being suitable to embody . . .
`algorithm” in the ’989 IPR. HTC Corp. v. e-Watch, Inc., IPR2014-00989,
`slip. op. at 6–8 (PTAB Dec. 9, 2014)(Paper 6). As noted above, the ’989
`IPR also is also involves the ’168 patent. Petitioner proposes we construe
`the term as “media having an algorithm in the form of hardware, software or
`a combination of hardware and software.” Pet. 5.
`This term appears in three different variations: (1) media being
`suitable to embody at least one compression algorithm in claims 1–28; (2)
`compression algorithm embodied at least in part in suitable programmed
`media in claims 29–31; and (3) transmission protocol algorithm embodied in
`suitable media in claims 16–18. The ’168 patent Specification does not
`describe these terms explicitly. The Specification does describe how an
`image captured by camera 10 is stored on any one of a variety of memory
`devices for storage. Ex. 1001, 7:24–31. One described memory device is
`“writeable optical media.” Id. at 7:31. The Specification otherwise does not
`include the word “media” in the context of the claimed invention. Neither
`does the Specification describe, nor define, algorithm.
`“Media” is defined as “the physical material, such as paper, disk, and
`tape, used for storing computer-based information.” MICROSOFT COMPUTER
`DICTIONARY, 332 (2d ed. 2002). Ex. 3001. The Microsoft Computer
`Dictionary further defines “algorithm” as “[a] finite sequence of steps for
`solving a logical or mathematical problem or performing a task.” Id. at 23.
`In the context of software, algorithms are used to disclose adequate defining
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`structure to render the bounds of the claim understandable to one of ordinary
`skill in the art. See, e.g., Med. Instrumentation & Diagnostics Corp. v.
`Elekta AB, 344 F.3d 1205, 1214 (Fed. Cir. 2003).
`Accordingly, we construe “media being suitable to embody . . .
`algorithm,” and related terms including both “media” and “algorithm,” as “a
`storage device for storing software to perform, among other functions, image
`compression and storage of transmission protocols.” ’989 IPR, Decision on
`Institution at 7–8.
`3. “commonly moving”(claims 1, 22, and 24)
`As with “media being suitable to embody . . . algorithm,” the term
`“commonly moving” was construed in the ’989 IPR. ’989 IPR, Decision on
`Institution at 8. Neither party proposes an interpretation for the term but for
`the sake of consistency we construe it consistently with the ’989 IPR.
`Claim 1, for example, recites “movement by the user of the portable
`housing commonly moving the image collection device,” and “movement by
`the user of the portable housing commonly moving the display.” (Emphasis
`added). Apart from the claims, the ’168 patent does not use the phrase
`“commonly moving.” Dr. Robert Stevenson’s Declaration (“Stevenson
`Dec.,” Ex. 1003) provides testimony that “movement of the housing by a
`user would also necessarily move the camera 102 and the displays 100,
`166.” Ex. 1003 ¶ 49; see also Pet. 18 (claim chart).
`We interpret “commonly move” in the context of claims 1, 22, and 24
`to mean that movement of the portable housing moves the image collection
`device and movement of the portable housing moves the display.
`
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`II. ANALYSIS
`A. 35 U.S.C. § 325(d)
`The sole contention raised by Patent Owner in its Preliminary
`Response is that we should exercise our discretion under 35 U.S.C. § 325(d)
`to deny institution because the present Petition overlaps with eight other
`petitions asserting unpatentability of the ’168 patent. Prelim. Resp. 1–4
`(citing Ex. 2001). Patent Owner alleges there is substantial overlap with
`respect to the prior art cited and associated grounds of unpatentability. Id. at
`2. More specifically, McNelley, the primary prior art reference asserted
`here, has been asserted in three of the other petitions involving the ’168
`patent. Ex. 2001.6
`Each of the proceedings includes a different petitioner and others
`include altogether different grounds than those asserted here. We need to be
`cognizant of the interests of other petitioners as well as those of Patent
`Owner. Accordingly, we decline to exercise our discretion under
`§ 325(d) to reject this Petition.
`B. Effective Date of ’168 Patent
`
`
`
`Petitioner contends that during prosecution of the ’168 patent
`applicant submitted an Affidavit by David Monroe under 37 C.F.R. § 1.131
`(“Monroe Affidavit”) to claim a priority date of March 18, 1993.7 Pet. 7–9.
`Petitioner argues the Monroe Affidavit fails to support the March 1993 date
`and, therefore, the effective date of the ’168 patent should not be any earlier
`than the January 12, 1998, the filing date of the earliest priority application.
`Id. at 9–10. If the ’168 patent is accorded the March 18, 1993 filing date,
`
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`6 IPR2014-00989 (joined with IPR2014-00543), IPR2015-00401, and
`IPR2015-00607.
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`none of the references asserted here are prior art and institution must be
`denied.
`During prosecution of the application that issued as the ’168 patent,
`Applicant filed a Response to Final Office Action (Ex. 1002, 814–828) with
`the Monroe Affidavit (id. at 829–943) and a Request for Continued
`Examination (Ex. 1002, 950–951) in order for the Monroe Affidavit to be
`considered. The Examiner then allowed the application without any specific
`comment on the Monroe Affidavit. Ex. 1002, 991. We are not, however,
`bound by that determination.
`Petitioner contends that the Monroe Affidavit does not corroborate
`conception and does not establish continuous exercise of reasonable
`diligence. Pet. 7–9. Patent Owner elected not to respond to Petitioner’s
`contentions regarding effective date in its Preliminary Response.
`As to conception, an inventors allegations of an invention date must
`be corroborated. In re NTP, Inc., 654 F.3d 1279, 1291 (Fed. Cir. 2011).
`Also, the Monroe Affidavit must establish conception and reduction to
`practice of the subject matter of each of the challenged claims. The Monroe
`Affidavit fails to relate the claims of the ’168 patent8 to the exhibits
`identified in support of the alleged date of invention. Petitioner argues, and
`we agree, that the Monroe affidavit does not show evidence corroborating
`invention of the claim 1 limitation “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.” Pet. 8–9.
`
`7 File history of ’168 patent, Exhibit 1002, 829–833, ¶ 5.
`8 Amended claims were presented in the Response to Final Office action and
`became the issued claims of the ’168 patent when the application was
`allowed.
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`The Monroe Affidavit also must show that Applicant exercised
`reasonable diligence in later reducing that invention to practice. Pet. 9
`(citing In re McIntosh, 230 F.2d 615, 619 (CCPA 1956)).9 A party alleging
`diligence must provide corroboration with evidence that is specific both as to
`facts and dates. Kendall v. Searles, 173 F.2d 986, 993 (CCPA 1949). We
`agree with Petitioner that the Monroe Affidavit does not address adequately
`the continuous exercise of reasonable diligence. For example, the Monroe
`Affidavit “does not explain whether any efforts were made to reduce the
`invention to practice between 1992 (the first comprehensive circuit for a
`handheld Remote Image Transceiver (“R.I.T.”)) and November 1995 (a
`concept proposal of a handheld R.I.T. using secure radio transmission).”
`Pet. 9.
`We have reviewed the Monroe Affidavit, the attached exhibits 1–17,
`relevant portions of the prosecution record, and Petitioner’s arguments as
`above. On the record before us at this time, we find Petitioner has shown
`sufficiently that the Monroe Affidavit does not establish an invention date of
`March 18, 1993.
`
`C. Obviousness over McNelley
`Petitioner contends that claims 1–31 of the ’168 patent are obvious
`under 35 U.S.C. § 103 over McNelley. Pet. 10–33 (including claim charts).
`Petitioner supports its positions with the Stevenson Declaration. Ex. 1003
`¶¶ 36–67.
`
`
`9 See Brown v. Barbacid, 276 F.3d 1327, 1337 (Fed. Cir. 2002); Cooper v.
`Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998); Mahurkar v. C.R. Bard,
`Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996).
`
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`
`1. McNelley
`McNelley discloses a combination portable recording video camera
`and video-conferencing device or “telecamcorder” that can video conference
`over a telephone network. Ex. 1004, Abstract, 5:1–7. The device includes
`an integrated phone and a camera, microphone, speaker and antenna for
`transmission/reception of images/sound. Id. at 6:35–7:24. Also disclosed
`are display 100 and separate viewfinder 166, or a single display as a
`viewfinder and a teleconferencing display. Id. at 7:2–24.
`2. Claims 1, 22, 24, 26, 27, and 29
`We first address independent apparatus claim 1. Claims 22, 24, 26,
`27, and 29 are the only remaining independent claims and recite many of the
`same limitations as claim 1. See Pet. 28–33 (claim charts). On this record,
`we are persuaded that there is a reasonable likelihood that Petitioner would
`prevail in establishing that claim 1 and the remaining independent claims
`similar to claim 1 would have been obvious over McNelley.
`The preamble of claim 1 recites an apparatus, which McNelley
`teaches in its telecamcorder. Pet. 12–13 (citing Ex. 1004, 5:1–9)(other
`citations omitted). The first recited element of claim 1 is “a portable
`housing, the portable housing being wireless.” McNelley teaches that “the
`telecamcorder can serve as a portable wireless teleconferencing terminal
`much like a portable cellular phone.” Ex. 1004, 14:28–31. Petitioner points
`to this disclosure and others as teaching this limitation. Pet. 13 (citing Ex.
`1004, 14:28–31, 4:61–5:11, 7:66–8:9, Figs. 8, 12; Ex. 1003 ¶ 37).
`The next recited element of claim 1 is “an image collection device
`supported by the portable housing, the image collection device being
`operable to provide visual image data of a field of view.” McNelley
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`discloses a camera and other components are contained on a camera boom
`that can rotate on a pivot. Ex. 1004, 6:45–58. The camera is capable of
`“capturing” images of persons attending a teleconference. Id. The images
`are converted to digital images and “remain digital through all subsequent
`processing.” Id. at 12:66–13:7. Petitioner cites to the preceding disclosures
`and the testimony of Dr. Stevenson in alleging McNelley discloses the
`limitation. Pet. 13–14 (citing Ex. 1003 ¶ 38).
`Claim 1 further recites, in pertinent part, “a display supported by the
`portable housing,” which displays the “visual image data.” On this record,
`we are persuaded that McNelley discloses a display that “displays the image
`captured by the camera 102.” Ex. 1004, 7:8–10. Petitioner cites to the
`portions of McNelley above relating to the display to teach the recited
`display limitation. Pet. 13–14. The limitation also recites that the display is
`operable to make a visual image from the visual image data. Petitioner cites
`to McNelley’s teaching that images are converted to digital and remain
`digital. Id. (citing Ex. 1004, 12:66–13:7, Ex. 1003 ¶ 39).
`Claim 1 next recites, in pertinent part, “memory” which “receives”
`and “retains” the “visual image data in digital format.” Petitioner argues
`McNelley’s disclosure of a “removable recording medium” and a controller
`that routes audio and video signals to a “recording/playback electronics
`package” meets the limitation. Pet. 15 (citing Ex. 1004, 8:37–41, Fig. 10,
`21:19–26; see also id. at 21:41–56, Fig. 30, element 422, Fig. 31, elements
`424, 426; Ex. 1003 ¶ 40).
`Claim 1 further recites, in pertinent part, “an input device supported
`by the portable housing [and] . . . operable by the user.” Petitioner contends
`dialing controls 186 and telecamcorder controls 188 of McNelley “built into
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`the main housing 148” is an input device. Pet. 15–16 (citing Ex. 1004,
`8:10–15; see also id. at 7:51–65, Fig. 8, Fig. 12; Ex. 1003 ¶ 41–42).
`Claim 1 further recites that operation of the input device enables the
`memory to “retain the visual image data” and “provide retained visual image
`data in digital format.” The telecamcorder of McNelley makes a recording
`of audio and video signals for recording and playback. Ex. 1004, 21:19–40.
`The system controller includes speaker and display electronics for audio
`reproduction and display. Id. McNelley also discloses that digital video
`cameras include a charged coupled device (CCD) and when electrical values
`are read from the CCD the “values are immediately converted into digital
`values and remain digital through all subsequent processing.” Id. at 12:66–
`13:7; Ex. 1003 ¶ 43. Petitioner cites to the preceding disclosures of
`McNelley for the “visual image data” limitation recited previously. Pet. 16.
`Continuing with the limitations of claim 1, a compression algorithm
`embodied in “media supported by the portable housing” is recited.
`McNelley discloses that “[c]ompression/decompression schemes are
`numerous and currently essential for phone network teleconferencing.” Ex.
`1004, 18:28–32. McNelley also discloses that ASIC chips are used in digital
`compression formats and the chips can be built into McNelley’s
`telecamcorder readily. Id. at 18:36–48. Petitioner cites to McNelley’s
`disclosures and to testimony at paragraph 44 of the Stevenson Declaration
`that “[a]lthough not explicitly stated, one of ordinary skill in the art would
`understand that such compression and decompression techniques would
`include an algorithm to compress and decompress image data.” Pet. 15–16
`(citing Ex. 1003 ¶¶ 44–46).
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`Claim 1 next recites, in pertinent part, “at least one processing
`platform,” which executes the compression algorithm to provide
`“compressed visual image data.” McNelley explains that video images are
`captured by a video camera which includes electronics that output a final
`video signal fed to the controller. Ex. 1004, 21:3–18. The controller also
`receives an audio signal. Id. Petitioner contends McNelley’s controller as
`disclosed above is the claimed “processing platform.” Pet. 17. Petitioner
`cites to the immediately preceding discussion regarding media embodying a
`compression algorithm to meet the remainder of the limitation. Id.
`Claim 1 next recites, in pertinent part, “a mobile phone” which is
`operable to send “a remote recipient a wireless transmission, the wireless
`transmission conveying the compressed digital image data.” McNelley
`discloses “the telecamcorder can serve as a portable wireless
`teleconferencing terminal much like a portable cellular phone.” Ex. 1004,
`14:28–31. An operator can transmit video and audio signals from the device
`while displaying video signals and reproducing audio signals. Id. at
`Abstract. Petitioner cites to the preceding disclosures of McNelley as
`teaching the wireless transmission of compressed digital image data. Pet.
`17–18; Ex. 1003 ¶ 48.
`The final limitations of claim 1 recite respectively “movement by the
`user of the portable housing commonly moving the image collection device,
`movement by the user of the portable housing commonly moving the
`display.” Based in part on paragraph 49 of the Stevenson Declaration,
`Petitioner argues McNelley’s components are all within a single housing and
`thus subject to being “commonly mov[ed]” as we have construed the term.
`Pet. 18 (citing Ex. 1004, Figs. 8–21, elements 102 and 406; Ex. 1003 ¶ 49).
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`As discussed above, claims 22, 24, 26, 27, and 29 are independent
`claims which recite many of the same limitations of claim 1. Pet. 26–32.
`We also have considered the testimony of Dr. Stevenson regarding the
`independent claims, particularly as it relates to the processing platform for
`executing the compression algorithm. Pet. 17–18 (citing Ex. 1003 ¶¶ 36,
`44–47); Ex. 1007.10 On this record, we determine that the information
`presented in the Petition has shown a reasonable likelihood that Petitioner
`would prevail on its assertion that independent claims 1, 22, 24, 26, 27, and
`29 would have been obvious over McNelley.
`3. Claims 2–21, 23, 25, 28, 30, and 31
`Claims 2–21 depend, directly or indirectly, from claim 1. Claim 23
`depends from claim 22. Claim 25 depends from claim 24. Claim 28
`depends from claim 27. Claims 30 and 31 depend from claim 29. We have
`considered Petitioner’s evidence on claims 2–21, 23, 25, 28, 30, and 31,
`including the testimony of Dr. Stevenson. Pet. 19–33; Ex. 1003 ¶¶ 52–67.
`We determine that, on this record, the Petition has shown a reasonable
`likelihood that Petitioner would prevail on its assertion that dependent
`claims 2–21, 23, 25, 28, 30, and 31 would have been obvious over
`McNelley.
`
`4. Summary
`Based on this record, we conclude that Petitioner has demonstrated a
`reasonable likelihood of prevailing on its challenge of claims 1–31 would
`have been obvious under 35 U.S.C. § 103 over McNelley.
`
`
`
`
`
`10 McGRAW-HILL DICTIONARY of SCIENTIFIC and TECHNICAL
`TERMS, 1525 (5th Ed. 1994).
`
`16
`
`
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`IPR2015-00408
`Patent 7,643,168 B2
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`
`D. Obviousness over McNelley and Nagai
`Petitioner contends that claims 16–18 of the ’168 patent would have
`been obvious under 35 U.S.C. § 103 over McNelley and Nagai. Pet. 33–36
`(including claim charts). To support this position, Petitioner presents the
`testimony of Dr. Stevenson. Ex. 1003 ¶ 68.
`1. Nagai
`Nagai discloses a still camera that wirelessly communicates images.
`Ex. 1005, Abstract. The camera includes a display and a microcomputer and
`memory controller. Id. The user interface to the microcomputer is a touch
`panel that may be activated to display an image on the display. Id.
`2. Claims 16–18
`Claim 16 depends from claim 1 and, in pertinent part, recites
`additionally “at least one transmission protocol algorithm embodied in
`suitable media.” Claim 16 further recites that a processing platform
`executes the protocol so that the compressed visual image data is provided in
`a transmission format that is compatible with the mobile phone for wireless
`transmission.
`Relative to claim 16, Petitioner contends that Nagai discloses a
`TDMA circuit for cellular transmission. Pet. 34–35; see Ex. 1005 ¶ 4.11
`Petitioner’s claim chart also cites to additional disclosure in Nagai relating to
`TDMA circuitry. Id. at 35 (citing Ex. 1005, Fig. 4, ¶ 14). Dr. Stevenson
`testifies that “[o]ne of skill in the art would have combined the TDMA
`transmission circuit of Nagai to implement cellular features of McNelley in
`order to obtain compatibility with cellular networks operating using TDMA
`protocols.” Id. at 34; Ex. 1003 ¶ 68; see Pet. 35.
`
`11 Our paragraph references do not include Petitioner’s use of [].
`
`17
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`Claim 17 depends from claim 16 and claim 18 depends from claim 17.
`Petitioner relies on the same disclosure of Nagai cited in connection with
`claim 16 to meet the limitations of claims 17 and 18. Pet. 33.
`Petitioner provides rational underpinnings for combining McNelley
`and Nagai. Specifically, Petitioner argues that
`cellular networks at the time of the invention commonly
`employed TDMA protocol, one of skill in the art would have
`been especially motivated to modify McNelley to adopt the
`TDMA protocol in order to ensure that the telecamcorder of
`McNelley could be sold and used in numerous geographic
`locations throughout the world.
`
`
`Pet. 34.
`
`3. Summary
`Based on the foregoing, on this record, we conclude that Petitioner
`has demonstrated a reasonable likelihood of prevailing on its challenge of
`claims 16–18 as obvious under 35 U.S.C. § 103 over McNelley and Nagai.
`E. Obviousness over Nagai
`Petitioner contends that claims 1–18 and 21–31 of the ’168 patent are
`obvious under 35 U.S.C. § 103 over Nagai. Pet. 36–56 (including claim
`charts). To support this position, Petitioner presents the testimony of Dr.
`Stevenson. Ex. 1003 ¶¶ 69–96.
`1. Claims 1–12, 16–18, 21–22, 24, 26–27, 29, and 30
`Nagai is asserted against the same independent claims 1, 22, 24, 26,
`27, and 29 as was McNelley, analyzed in section II.C. above. As we did
`previously, we begin with claim 1. We are persuaded, on this record, that
`there is a reasonable likelihood that Petitioner will prevail in establishing
`that claim 1 would have been obvious over Nagai.
`
`18
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`Petitioner cites to Nagai as the principal reference to teach many of
`the elements of claim 1. Pet. 36–42. To the extent Nagai does not show a
`limitation explicitly, Petitioner identifies and explains why that limitation
`would have been obvious to the person of ordinary skill over Nagai. For
`example, claim 1’s recitation of the “media being suitable to embody at least
`one compression algorithm,” Petitioner argues that one of ordinary skill in
`the art would understand that “the compression and decompression circuit 8
`of Nagai would include a compression algorithm to perform the compression
`and decompression of outgoing and incoming voice and digital data.” Pet.
`39–40 (citing Ex. 1003 ¶¶ 69, 76); see Ex. 1005, Fig. 4 (compression and
`decompression circuit 8).
`We are persuaded on this record that the remaining limitations of
`claim 1 are obvious over Nagai. Pet. 36–56 (including claim charts); Ex.
`1003 ¶¶ 69–96. We also are persuaded that, on this record, Petitioner has
`produced sufficient evidence and argument for us to conclude that there is a
`reasonable likelihood that Petitioner would prevail in showing that the
`independent claims 22, 24, 26, 27, and 29 and dependent claims 2–12, 16–
`18, 21, and 30 would have been obvious over Nagai.
`2. Claims 13–15, 23, 25, 28, and 31
`Claims 13–15, 23, 25, 28, and 31 each depend directly or indirectly
`from independent claims 1, 22, 24, 27, or 29. Claim 13, which depends
`from claim 1, is exemplary of the claimed subject matter, reciting “the
`display including a display screen, the display screen being defined apart
`from a viewfinder, the display screen being operable to display for viewing
`by a user a perceptible visual image, the perceptible visual image being
`generated from the visual image data.” Emphasis added.
`
`19
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`IPR2015-00408
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`
`Petitioner cites to Nagai’s “‘through-screen display state,’ in which
`the display monitor 14 acts as a viewfinder, as a separate operation mode
`from the playback mode, wherein the display screen 14 does not function as
`a viewfinder but rather as a display for image data retrieved from the image
`memory.” Pet. 46–47 (citing Ex. 1005 ¶¶ 14 –15; Ex. 1003 ¶ 93). Although
`the “through-screen display state” may provide similar functionality to what
`is claimed, the claim language states the display and view finder functions
`are “apart.” The plain and ordinary meaning of “apart” requires two
`separate elements. Nagai’s combined display and viewfinder are one in the
`same and are not “apart.” Neither the Petition nor the testimony of Dr.
`Stevenson offer any explanation as to why a person of ordinary skill in the
`art would understand the single component of Nagai to t
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