Paper 12
`Entered: May 7, 2015
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`Trials@uspto.gov
`Tel: 571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`APPLE INC.,
`Petitioner,
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`v.
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`E-WATCH, INC.,
`Patent Owner.
`____________
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`Case IPR2015-00411
`Patent 7,365,871 B2
`____________
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`
`Before JAMESON LEE, GREGG I. ANDERSON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
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`LEE, Administrative Patent Judge.
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`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`

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`IPR2015-00411
`Patent 7,365,871 B2
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`I.
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`INTRODUCTION
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`On December 11, 2014, Petitioner (“Apple”) filed a Petition
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`requesting an inter partes review of claims 1–15 of U.S. Patent
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`No. 7,365,871 B2 (Ex. 1001, “the ’871 patent”). On April 9, 2015, Patent
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`Owner, e-Watch, Inc. (“e-Watch”), filed a Preliminary Response (Paper 11,
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`“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314.
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`The standard for instituting an inter partes review is set forth in
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`35 U.S.C. § 314(a) which provides:
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`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.
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`Upon consideration of the Petition and the Preliminary Response, we
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`determine that Apple has not demonstrated a reasonable likelihood of
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`prevailing in showing the unpatentability of any of claims 1–15 of the ’871
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`patent. Accordingly, we do not institute an inter partes review for any of
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`these challenged claims.
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`A. Related Proceedings
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`Apple identifies these related cases involving the ’871 patent: (1) e-
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`Watch, Inc. v. Apple Inc., No. 2:13-CV-1061 (JRG/RSP) (E.D. Tex.), to
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`which the following case numbers in the same tribunal are consolidated:
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`CV-1062, 1063, 1064, 1069, 1070, 1071, 1072, 1073, 1074, 1075, 1077, and
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`1078; (2) IPR2014-00439 (PTAB); (3) IPR2014-00987 (PTAB); (4)
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`IPR2015-00412 (PTAB); (5) IPR2015-00413 (PTAB); (6) IPR2014-00402
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`IPR2015-00411
`Patent 7,365,871 B2
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`(PTAB); (7) IPR2014-00404 (PTAB); (8) IPR2014-00406 (PTAB); (9)
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`IPR2015-00541 (PTAB); (10) IPR2015-00610 (PTAB); and (11) IPR2015-
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`00612 (PTAB). Paper 2, 51; Paper 9, 1. e-Watch identifies an additional
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`civil action involving the ’871 patent: e-Watch, Inc. v. Huawei Technologies
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`Co., Ltd., No. 2:13-CV-01076 (E.D. Tex.). Paper 4, 3.
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`B. The ’871 Patent
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`The ’871 patent relates generally to “image capture and transmission
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`systems and is specifically directed to an image capture, compression, and
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`transmission system for use in connection with land line and wireless
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`telephone systems.” Ex. 1001, 1:17–20. According to the ’871 patent, the
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`system “is particularly well suited for sending and/or receiving images via a
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`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 5:3–6.
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`Figure 1 of the ’871 patent is reproduced below.
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`IPR2015-00411
`Patent 7,365,871 B2
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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
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`transmission to a standard hard copy medium. Id. at 4:27–30.
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`Figure 7A of the ’871 patent is reproduced below.
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`Figure 7A depicts “a hand[-]held device for capturing, storing, and
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`transmitting an image in accordance with the invention.” Id. at 4:46–48,
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`11:3–20.
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`C. Illustrative Claim
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`Of the challenged claims, claims 1, 6, 9, and 12 are independent.
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`Claim 1 is reproduced below:
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`telephone and
`A handheld self-contained cellular
`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:
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`a manually portable housing;
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`an integral image capture device comprising an electronic
`camera contained within the portable housing;
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`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;
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`IPR2015-00411
`Patent 7,365,871 B2
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`a processor in the housing for generating an image data
`signal representing the image framed by the camera;
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`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;
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`a user interface for enabling a user to select the image
`data signal for viewing and transmission;
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`a telephonic system in the housing for sending and
`receiving digitized audio signals and for sending the image data
`signal;
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`alphanumeric input keys in the housing for permitting
`manually input digitized alphanumeric signals to be input to the
`processor, the telephonic system further used for sending the
`digitized alphanumeric signals;
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`for
`adapted
`communications device
`a wireless
`transmitting any of the digitized signals to the compatible
`remote receiving station; and
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`a power supply for powering the system.
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`Ex. 1001, 14:4915:13.
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`D. Prior Art Relied Upon
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`Apple relies on Int. Pub. Pat. App. WO 99/035818 (Ex. 1002,
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`“Monroe”). Pet. 7.
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`E. The Asserted Ground of Unpatentability
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`Apple asserts that claims 1–15 of the ’871 patent are
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`unpatentable under 35 U.S.C. § 102(b) as anticipated by Monroe.
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`Pet. 7.
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`IPR2015-00411
`Patent 7,365,871 B2
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`II. ANALYSIS
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`First, we review the status of Monroe as prior art against the ’871
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`patent. Monroe was published on July 15, 1999. Ex. 1002 [43]. The ’871
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`patent issued from Application 10/336,470, filed on January 3, 2003 (“the
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`child ’470 application”), and is a divisional application of Application
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`09/006,073 (“the parent ’073 application”), filed on January 12, 1998.
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`Ex. 1001 [21], [22], [62]. If Monroe is not prior art with respect to the
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`claims of the ’871 patent, then we would not institute an inter partes review
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`in this proceeding because the only ground of unpatentability asserted by
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`Apple is based on Monroe.
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`Apple contends that the claims of the ’871 patent are not entitled to
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`the earlier filing date of the parent ’073 application under 35 U.S.C. § 120,
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`not because any claim is without written description support or enabling
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`disclosure in the parent ’073 application, but because of lack of co-pendency
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`between the child ’470 application and the parent ’073 application. Pet. 4–5,
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`10–21. According to Apple, because the ’871 patent is not entitled to the
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`1998 filing date of the parent ’073 application, Monroe, with its publication
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`date in 1999, constitutes prior art under 35 U.S.C. § 102(b) to the claims of
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`the ’871 patent, filed on January 3, 2003. Pet. 5.
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`Had Apple’s argument been that the parent ’073 application does not
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`support the subject matter of the challenged claims, and had Apple identified
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`specific claim limitations in that regard, e-Watch would have to show that
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`the challenged claims are entitled to the earlier effective filing date of the
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`parent ’073 application. Here, however, Apple asserts only lack of co-
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`pendency between the parent ’073 application and the child ’470 application.
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`Moreover, Apple asserts lack of co-pendency in a manner that amounts to a
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`collateral attack on a petition decision, in 2003, of an official of the Patent
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`and Trademark Office regarding the status of the parent ’073 application.
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`Specifically, the parent ’073 application was abandoned for failure of
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`the Applicant to file a timely response to an Office Action mailed August
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`29, 2000, and a Notice of Abandonment, notifying the Applicant of that
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`circumstance, was mailed on April 10, 2001. Ex. 1003, 595–597. The child
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`’470 application was filed on January 3, 2003, together with a petition to
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`revive the parent ’073 application (“Petition to Revive Parent ’073
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`Application”) on the basis of “unintentional abandonment.” Ex. 1003, 598–
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`599, 602. The Petition to Revive Parent ’073 Application was granted on
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`March 11, 2003. Ex. 1003, 603–604. Revival of the parent ’073 application
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`thus provided the co-pendency between the parent ’073 application and the
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`child ’470 application to permit the ’871 patent to have the benefit of the
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`earlier filing date of the parent ’073 application, i.e., January 12, 1998.1
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`According to Apple, the parent ’073 application was “purposefully”
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`abandoned on March 1, 2001, and thus the parent ’073 application should
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`not have been revived, by way of the Petition to Revive, as “unintentionally”
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`abandoned. Pet. 10, 17. Apple asserts that the granting, on March 11, 2003,
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`of the Petition to Revive Parent ’073 Application was incorrect. Pet. 13.
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`Apple has not identified proper jurisdiction or authority of the Board
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`either (1) to review and overturn the March 11, 2003, decision of the Patent
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`1 Under 35 U.S.C. § 120, “An application for patent for an invention
`disclosed . . . in an application previously filed in the United States . . . shall
`have the same effect . . . as though filed on the date of the prior application,
`if filed before the patenting or abandonment of . . . the first application. . . .”
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`IPR2015-00411
`Patent 7,365,871 B2
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`and Trademark Office on the Petition to Revive Parent ’073 Application, or
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`(2) to ignore that decision and make our own determination on whether the
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`parent ’073 application should have been revived on the basis of
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`“unintentional” abandonment. In that connection, Apple states:
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`Petitioner respectfully submits that the Board has the
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`authority to evaluate evidence and render decisions on factual
`and legal issues involving priority claims and the status of a
`reference as prior art in instituting the instant Petition. See,
`e.g., IPR2014-00439, Paper 16, pp. 5–8 (where the Board
`rendered a decision on the insufficiency of an inventor affidavit
`as to diligence in reduction to practice during prosecution
`(which impacted the alleged invention date) and made an
`associated determination as to the availability of a reference as
`prior art).
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`Pet. 5. The contention is misplaced.
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`Not all issues having an impact on determination of
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`patentability are the same. Where the issue is the status of an applied
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`reference as prior art, viewed in light of a patent owner’s effort to
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`antedate the date of the reference, as in the case of IPR2014-00439,
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`we can review the evidence submitted to show a date of invention
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`prior to the date of the reference. That issue is substantive and central
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`to the merit of the patentability determination. On the other hand,
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`where the issue is the status of an application as abandoned or
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`revived, the matter is procedural and not central to the substantive
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`merit of a patentability determination. We have jurisdiction to review
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`and determine the former, not the latter. Furthermore, we note also
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`that “PTO revival actions are not subject to third party challenge
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`under the APA.” Exela Pharma Sciences, LLC v. Lee, 781 F.3d 1349,
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`1353 (Fed. Cir. 2015).
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`IPR2015-00411
`Patent 7,365,871 B2
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`Apple does not dispute that the parent ’073 application was
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`revived from abandonment to pending status on March 11, 2003.
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`That fact may not be changed or undone by any decision of the Board
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`in this proceeding. Consequently, Apple has not identified any matter
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`that needs to be addressed or otherwise accounted for by e-Watch, in
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`this proceeding, with regard to according the challenged claims of the
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`’871 patent the earlier filing date of the parent ’073 application.
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`The unchangeable fact is that the child ’470 application was
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`filed on January 3, 2003, and that the parent ’073 application was, on
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`March 11, 2003, revived from abandonment, and thus, there was the
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`necessary co-pendency between the parent ’073 application and the
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`child ’470 application to accord the latter the filing date of the former.
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`Because Monroe was published on July 15, 1999, and because
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`Apple asserts only a lack of co-pendency between the parent ’073
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`application and the child ’470 application as the basis for not
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`according the challenged claims a priority date of January 12, 1998,
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`Apple has not shown sufficiently that Monroe constitutes prior art to
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`any challenged claim of the ’871 patent.
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`III. CONCLUSION
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`For the foregoing reasons, Apple has not shown a reasonable
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`likelihood that it would prevail in establishing the unpatentability of any of
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`claims 1–15 of the ’871 patent on any alleged ground of unpatentability.
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`IPR2015-00411
`Patent 7,365,871 B2
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`Accordingly, it is
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`IV. ORDER
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`ORDERED that the Petition is denied as to all challenged claims of
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`the ’871 patent; and
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`FURTHER ORDERED that no inter partes review is instituted.
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`IPR2015-00411
`Patent 7,365,871 B2
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`FOR PETITIONER:
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`Brian Buroker
`Blair Silver
`bburoker@gibsondunn.com
`bsilver@gibsondunn.com
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`FOR PATENT OWNER:
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`Robert C. Curfiss
`David O. Simmons
`bob@curfiss.com
`dsimmons@sbcglobal.net
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`11