Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 50
`Entered: May 6, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`APPLE INC.,
`ZTE CORPORATION and ZTE (USA) INC.,
`Petitioners,
`
`v.
`
`e-WATCH, INC.,
`Patent Owner.
`___________
`
`Case IPR2015-00412
`Case IPR2015-013661
`Patent 7,365,871 B2
`____________
`
`
`Before JAMESON LEE, GREGG I. ANDERSON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`1 IPR2015-01366 has been joined with IPR2015-00412. There are two
`petitioners: (1) Apple Inc. and (2) ZTE Corporation and ZTE (USA) Inc.
`
`
`Tel: 571-272-7822
`
`Paper 50
`Entered: May 6, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`APPLE INC.,
`ZTE CORPORATION and ZTE (USA) INC.,
`Petitioners,
`
`v.
`
`e-WATCH, INC.,
`Patent Owner.
`___________
`
`Case IPR2015-00412
`Case IPR2015-013661
`Patent 7,365,871 B2
`____________
`
`
`Before JAMESON LEE, GREGG I. ANDERSON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`1 IPR2015-01366 has been joined with IPR2015-00412. There are two
`petitioners: (1) Apple Inc. and (2) ZTE Corporation and ZTE (USA) Inc.
`
`
`
`IPR2015-00412 and IPR2015-01366
`Patent 7,365,871 B2
`
`
`I.
`
`BACKGROUND
`
`Introduction
`A.
`In IPR2015-00412, Apple Inc. (“Apple”) filed a petition (Paper 2,
`“Pet.”) to institute an inter partes review of claims 1–8 and 12–14 of U.S.
`Patent No. 7,365,871 B2 (Ex. 1001, “the ’871 patent”). eWatch, Inc. (“e-
`Watch”) filed a Preliminary Response (Paper 11). On May 11, 2015, we
`issued a Decision (Paper 12 “Inst. Dec.”) instituting trial on claims 1–8 and
`12–14 of the ’871 patent. e-Watch filed a Patent Owner Response (Paper 19,
`“PO Resp.”), and Apple filed a Reply (Paper 30, “Reply”).
` After institution of trial in IPR2015-00412, ZTE Corporation and
`ZTE (USA) Inc. (“ZTE”) filed a petition in IPR2015-01366 to institute an
`inter partes review of claims 1–8 and 12–14 of the ’871 patent on the same
`ground for which we instituted trial in IPR2015-00412, and also a Motion
`for Joinder to join IPR2015-01366 with IPR2015-00412. On September 16,
`2015, we instituted trial in IPR2015-01366 and granted the Motion for
`Joinder, on the conditions that (1) Apple Inc. will not rely on ZTE’s petition
`or ZTE’s witness Tim A. Williams, (2) ZTE has no participation in the joined
`proceeding except for the opportunity to continue as sole petitioner if Apple
`settles with e-Watch, and (3) ZTE withdraws reliance on its technical
`witness as well as all arguments submitted in its own petition, and relies,
`instead, solely on Apple’s petition and technical witness. IPR2015-01366,
`Papers 8, 9; IPR2015-00412, Paper 23.
`Apple and ZTE collectively will be referred to as “Petitioners.” e-
`Watch will be referred to as Patent Owner. Hereinafter, all paper numbers
`refer to entries in IPR2015-00412.
`
`2
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`
`Oral Hearing was held on January 8, 2016. A transcript of the Oral
`Hearing is included in the record. Paper 49 (“Tr.”).
`Petitioners have shown by a preponderance of the evidence that each
`of claims 12–14 of the ’871 patent is unpatentable. Petitioners, however,
`have not shown by a preponderance of the evidence that any one of claims
`1–8 is unpatentable.
`
`Related Proceedings
`B.
`Apple identifies these related cases involving the ’871 patent: (1) E-
`Watch, Inc. and E-Watch Corporation v. Apple Inc., No. 2:13-CV-1061
`(JRG/RSP) (E.D. Tex.), to which the following case numbers in the same
`tribunal are consolidated: CV-1062, 1063, 1064, 1069, 1070, 1071, 1072,
`1073, 1074, 1075, 1077, and 1078; (2) IPR2014-00439 (PTAB);
`(3) IPR2014-00987 (PTAB); (4) IPR2015-00411 (PTAB); (5) IPR2015-
`00413 (PTAB); (6) IPR2015-00402 (PTAB); (7) IPR2015-00404 (PTAB);
`(8) IPR2015-00406 (PTAB); (9) IPR2015-00541 (PTAB); (10) IPR2015-
`00610 (PTAB); and (11) IPR2015-00612 (PTAB). Paper 2, 50–51; Paper 9,
`1. Patent Owner e-Watch identifies an additional civil action involving the
`’871 patent: e-Watch, Inc. and e-Watch Corporation v. Huawei Technologies
`Co., Ltd. and Huawei Technologies USA, Inc., No. 2:13-CV-01076 (E.D.
`Tex.). Paper 4, 3. ZTE did not identify any additional related proceeding.
`The ’871 Patent
`C.
`The ’871 patent relates generally to “image capture and transmission
`systems and is specifically directed to an image capture, compression, and
`transmission system for use in connection with land line and wireless
`telephone systems.” Ex. 1001, 1:17–20. According to the ’871 patent, the
`system “is particularly well suited for sending and/or receiving images via a
`
`3
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`standard Group III facsimile transmission system and permits capture of the
`image at a remote location using an analog or digital camera.” Id. at 5:3–6.
`Figure 1 of the ’871 patent is reproduced below.
`
`
`Figure 1 is a block diagram of a basic facsimile camera configuration for
`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.
`
`
`Figure 7A depicts “a hand[-]held device for capturing, storing, and
`transmitting an image in accordance with the invention.” Id. at 4:46–48,
`11:3–20.
`
`4
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`
`Of the challenged claims, claims 1, 6, and 12 are independent.
`Representative claims 1, 6, and 12 are reproduced below:
`1.
`A handheld self-contained cellular
`telephone and
`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:
`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
`processor, the telephonic system further used for sending the
`digitized alphanumeric signals;
`a wireless communications device adapted for transmitting any
`of the digitized signals to the compatible remote receiving
`station; and
`a power supply for powering the system.
`Id. at 14:49−15:13.
`
`5
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`
`A handheld cellular telephone having an integrated
`6.
`electronic camera for both sending and receiving telephonic
`audio signals and for capturing a visual image, converting the
`visual image to a digitized image data signal and transmitting
`digitized image data signal via a cellular telephone network, the
`cellular telephone comprising:
`a manually portable housing supporting the cellular telephone
`and the integrated electronic camera, the cellular telephone
`and the integrated electronic camera being movable in
`common with the housing;
`a cellular telephone in the housing, the cellular telephone further
`including a transmitter/receiver for transmitting and receiving
`audio telephone messages over a cellular telephone network,
`a keypad for entering manually input alphanumeric signals to
`be transmitted over the cellular telephone network, and a
`display window for viewing the manually input alphanumeric
`signals[;]
`an integral electronic camera in the housing, the camera for
`visually framing a visual image to be captured;
`a processor associated with the electronic camera for capturing
`and digitizing the framed image in a format for transmission
`over the cellular telephone network via the cellular telephone;
`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 cellular telephone network
`the digitized framed image;
`a user interface for enabling a user to selectively display the
`digitized framed
`image
`in
`the display window and
`subsequently transmit the digitized framed image over the
`cellular telephone network; and
`an integrated power supply for powering both the cellular
`telephone and the camera.
`Id. at 15:33–67.
`12. A combination of handheld wireless telephone and digital
`camera comprising:
`
`6
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`
`a handheld housing which supports both the wireless telephone
`and the digital camera, the wireless telephone and the
`electronic camera being commonly movable with the
`housing;
`a display supported in the housing for framing an image to be
`captured and for viewing the image, whereby an operator can
`view and frame the image prior to capture;
`a processor for processing the image framed by the camera for
`generating a digitized frame image as displayed in the
`display;
`a memory associated with the processor for receiving and storing
`the digitized framed image, for selectively displaying in the
`display window and for selectively transmitting over a
`wireless telephone network the digitized framed image;
`the wireless telephone being selectively operable to accept and
`digitize audio signals to be transmitted, the wireless telephone
`being selectively operable to convert received digitized audio
`signals into acoustic audio, the wireless telephone being
`selectively operable to transmit and receive non-audio digital
`signals, the non-audio digital signals including a selected
`digitized framed image;
`a set of input keys supported by the housing to permit
`alphanumeric signals to be manually input by an operator into
`the wireless telephone, the alphanumeric signals being
`presented in the in the display for viewing by the operator;
`a power supply supported by the housing;
`the wireless telephone including a wireless transmitter/receiver
`for transmitting digital signals sent from and receiving digital
`signals sent to the wireless telephone; and
`at least one camera control circuit connected to an input device
`for controlling at least one of the following functions: gain,
`pedestal, setup, white clip, lens focus, white balance, lens iris,
`lens zoom.
`Id. at 16:51–18:2.
`
`
`7
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`
`Evidence Relied Upon by Petitioners
`D.
`Petitioners rely on the following prior art:
`Reference
`
`Date
`
`Exhibit
`No.
`08/27/1996 Ex. 1006
`02/13/1996 Ex. 1007
`
`McNelley
`Umezawa
`
`US Pat. No. 5,550,754
`US Pat. No. 5,491,507
`
`
`Petitioners also rely on the Declarations of Mr. Steven Sasson.2
`Exs. 1008, 1014 (Ex. 1014 was filed in support of Petitioners’ Reply).
`
`E.
`
`The Asserted Ground of Unpatentability
`
`Basis
`§ 103(a)
`
`Claim(s)
`Reference(s)
`McNelley and Umezawa 1–8 and 12–14
`
`II. ANALYSIS
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); In re
`Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278 (Fed. Cir. 2015), cert.
`granted sub nom. Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 890 (mem.)
`(2016). Consistent with the rule of broadest reasonable interpretation, claim
`terms also 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
`
`
`2 Patent Owner, in its Patent Owner Response, relies on the Declaration of
`Dr. Jose Luis Melendez (Ex. 2003).
`
`8
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`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007); In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
`Although understanding the claim language may be aided by
`explanations contained in the written description, it is important not to
`import claim limitations that are not a part of the claim. SuperGuide Corp.
`v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). For example, a
`particular embodiment appearing in the written description may not be read
`into a claim when the claim language is broader than the embodiment. Id.;
`see also In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).3 That is no
`different even if the patent specification describes only a single embodiment.
`See Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1372–73 (Fed.
`Cir. 2014); In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed.
`Cir. 2004); Liebel-Flarsheim Co. v. Medrad Inc., 358 F.3d 898, 906 (Fed.
`Cir. 2004).
`If a feature is not necessary to give meaning to what the inventor
`means by a claim term, it would be “extraneous” and should not be read into
`the claim. Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 950 (Fed. Cir.
`1993); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d
`1430, 1433 (Fed. Cir. 1988).
`If a patentee desires to be his or her own lexicographer, the purported
`definition must be set forth in either the specification or prosecution history.
`CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).
`
`
`3 A patent applicant is not required to describe explicitly in the specification
`every embodiment of the invention. See LizardTech, Inc. v. Earth Res.
`Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005).
`
`
`9
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`Such a definition must be set forth with reasonable clarity, deliberateness,
`and precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d
`1243, 1249 (Fed. Cir. 1998); In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994). “Absent claim language carrying a narrow meaning, the [Patent and
`Trademark Office] should only limit the claim based on the specification or
`prosecution history when those sources expressly disclaim the broader
`definition.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); see also
`Liebel-Flarsheim, 358 F.3d at 906–09.
`Only terms that are in controversy need to be construed, and only to
`the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman
`Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`“an image framed by the camera” (claim 1) /
`1.
`“framing the image to be captured” (claims 2, 9, 12) /
`“visually framing a visual image to be captured” (claim
`6) / “framing the visual image” (claim 7)
`Claim 1 recites “an image framed by the camera.” Claims 2, 6, 7, 9,
`
`and 12 recite similar limitations. Petitioners propose that these terms be
`construed to mean “obtaining data representing an image as shown on a
`display.” Pet. 9–10. In our Decision to Institute Trial in IPR2015-00412
`(Paper 12), we determined:
`
`[T]he broadest reasonable interpretation of “an image
`framed by the camera” is “an image having boundaries
`established by
`the camera”;
`the broadest
`reasonable
`interpretation of “framing [a/the] image to be captured” (claims
`2, 9, 12) is “visually establishing the boundaries of an image to
`be captured” (claim 6); and the broadest reasonable interpretation
`of “framing the visual image” (claim 7) is “establishing the
`boundaries of an image.”
`
`10
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`Subsequent to institution of trial in IPR2015-00412 and IPR2015-01366,
`none of the parties disagreed with our construction. Accordingly, we adopt
`these same constructions based on the full record for the reasons stated in
`our Decision to Institute Trial in IPR2015-00412. Inst. Dec. 7 (Paper 12).
`“selectively displaying” / “selectively transmitting”
`2.
`and “selected digitized framed image”
`Patent Owner urges that each of the terms “selectively displaying,”
`
`“selectively transmitting,” and “selected digitized framed image” should also
`be construed. PO Resp. 5. Each of the terms “selectively displaying” and
`“selectively transmitting” is recited in each of independent claims 1, 6, and
`12. The term “selected digitized framed image” is recited in independent
`claim 12. Because Patent Owner makes of record certain portions of the
`prosecution history of the ’871 patent as shedding light on the meaning of
`these terms, for clarification purposes we also construe these terms.
`
`Patent Owner contends that during prosecution of the ’871 patent,
`after certain independent claims were rejected as obvious over a
`combination of JP 06-268582 (“Kawazu”) and U.S. Patent No. 5,191,601
`(“Ida”), Applicant argued that the invention provides “the ability for the user
`to selectively transmit and display images from memory” and that “Ida
`teaches transmitting a stored image from memory 24, but it is clearly shown
`in the same Fig. 4 and Fig. 5 to clearly lack the ability to display stored
`images on the device display of the apparatus which collects the image.” PO
`Resp. 6 (quoting Ex. 2005, 60:11–16). Patent Owner further notes that the
`Applicant further asserted with respect to Ida that “there is no teaching that
`the ‘prescribed picture’ stored in memory is selectively displayed by the
`local user so that he can determine whether to transmit it to the remote
`station” and that “. . . the Ida reference, properly understood, does not
`
`11
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`disclose selectively displaying or transmitting a framed image that has been
`stored in memory . . . .” Id. at 6–7 (quoting Ex. 2005, 61:9–11 and 61:18–
`20).
`Patent Owner explains that in response to the above-noted arguments
`
`of the Applicant, a personal interview was conducted between the
`Applicant’s representative and the Examiner, in response to which the
`Examiner, via an Examiner’s Amendment, added the following underlined
`language to independent application claims 43 and 51, respectively, which
`issued as patent claims 1 and 6:
`“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” [patent claim 1]; and
`“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 cellular telephone network the digitized
`framed image.” [patent claim 6]
`PO Resp. 7–8 (citing Ex. 2006, 9–11). Patent Owner asserts that the above-
`noted amendment “was specifically added to reflect the patentably
`distinguishing functionality of providing the ability for the user to
`selectively transmit and display images from memory.” Id. at 8.
`
`With specific regard to “selectively transmitting,” Patent Owner
`additionally refers to the following disclosures in the Specification of the
`’871 patent:
`Two generic configurations are shown and described, the first,
`where each image is transmitted as it is captured, and the second,
`which permits capture, storage, storage, and selective recall
`of captured images for transmission.
`
`12
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`PO Resp. 8–9 (citing Ex. 1001, 5:6–10 (emphasis added)), and
`The memory [can] selectively capture images, as indicated by the
`operator interface/capture interface 52, or may be programmed
`to selectively capture periodic images or all images. In the
`embodiment shown in FIG. 2, an optional viewer device 48 is
`provided. This permits the operator to recall and view all or
`selective images before transmission, as indicated by the
`operator interface/recall interface 54. This permits the operator
`to review all images retained in the memory 46 and transmit
`selective images, as desired [to the Group-III transmission
`system].
`Id. at 9 (citing Ex. 1001, 6:34–43 (emphasis added)).
`
`With regard to the term “selected digitized framed image,” Patent
`owner relies on the same disclosures quoted above in connection with the term
`“selectively transmitting.” Id. at 9–10.
`
`Based on the above-noted contentions, Patent Owner asserts:
`
`“selectively displaying” refers to displaying a digitized
`framed image that has been selected from among a plurality of
`digitized framed images that are within memory.
`
`“selectively transmitting” refers to transmitting a digitized
`framed image that has been selected from a plurality of digitized
`framed images that are within memory.
`
`“selected digitized framed image” refers to a digitized
`framed image that has been selected from among a plurality of
`digitized framed images that are within the memory.
`
`Id. at 8–10. Despite the representations made by Patent Owner regarding the
`exchanges between the Applicant and the Examiner during prosecution, we
`agree with Petitioners that Patent Owner’s proposed constructions for these
`terms are excessively narrow under the rule of broadest reasonable
`interpretation.
`
`13
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`The prosecution history recounted by Patent Owner above indicates
`
`that the articulated distinction from the Ida reference centers on Ida’s failure
`to describe displaying an image selected from within the memory. Whether
`Ida’s memory stores one image or a plurality of images was not of
`significance. Under this circumstance, it is not justifiable, under the rule of
`broadest reasonable interpretation, to require a selection from among a
`plurality of images stored in memory. The claims are broad enough to
`encompass storing just one image in memory and having that image selected
`for displaying and for transmission. The fact that the Specification of the
`’871 patent discloses embodiments in which more than one images is stored
`in memory does not justify importing limitations from the Specification into
`the claims. See SuperGuide Corp., 358 F.3d at 875.
`
`We find no express definition in the Specification of the ’871 patent
`or in any of the prosecution history identified by Patent Owner, for the terms
`at issue here, much less one set forth with reasonable clarity, deliberateness,
`and precision. If a patentee desires to be his or her own lexicographer, the
`purported definition must be set forth in the specification or prosecution
`history. CCS Fitness, Inc., 288 F.3d at 1366. Such a definition must be set
`forth with reasonable clarity, deliberateness, and precision. Renishaw PLC,
`158 F.3d at 1249; Paulsen, 30 F.3d at 1480. Patent Owner also identifies
`nothing in the Specification or prosecution history of the ’871 patent that
`constitutes a disclaimer or disavowal with regard to these terms that is
`sufficiently specific so as to require the storage of more than one image in
`the memory.
`In patent law, “the name of the game is the claim.” In re Hiniker Co.,
`150 F.3d 1362, 1369 (Fed. Cir. 1998). Section 112 of the 1952 Patent Act
`
`14
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`requires that the claims themselves set forth the limits of the patent grant.
`Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc).
`It is well settled that a particular embodiment appearing in the written
`description may not be read into a claim when the claim language is broader
`than the embodiment. SuperGuide Corp., 358 F.3d at 875; In re Van Geuns,
`988 F.2d at 1184. That is no different even if the patent specification
`describes only a single embodiment. See Hill-Rom Servs., Inc., 755 F.3d at
`1372–73 (“[e]ven when the specification describes only a single
`embodiment, the claims of the patent will not be read restrictively unless the
`patentee has demonstrated a clear intention to limit the claim scope using
`‘words or expressions of manifest exclusion or restriction’”); In re Am.
`Acad. of Sci. Tech. Ctr., 367 F.3d at 1369 (“We have cautioned against
`reading limitations into a claim from the preferred embodiment described in
`the specification, even if it is the only embodiment described, absent clear
`disclaimer in the specification.”); Liebel-Flarsheim Co., 358 F.3d at 906. As
`the U.S. Court of Appeals for the Federal Circuit stated, “[a]bsent claim
`language carrying a narrow meaning, the PTO should only limit the claim
`based on the specification or prosecution history when those sources
`expressly disclaim the broader definition.” In re Bigio, 381 F.3d at 1325.
`No disclaimer or disavowal, sufficient to limit the claims to storing more
`than one image in memory, has been identified by Patent Owner.
`For the foregoing reasons, we construe these terms as follows:
`“selectively displaying” means displaying a digitized
`
`framed image that has been selected from at least one image
`stored within memory.
`“selectively transmitting” means transmitting a digitized
`
`framed image that has been selected from at least one image
`stored within memory.
`
`15
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`“selected digitized framed image” means a digitized
`
`framed image that has been selected from at least one image
`stored within memory.
`
`B. Obviousness of Claims 1–8
`and 12–14 over McNelley and Umezawa
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`With regard to the level of ordinary skill in the art, the Petition itself
`does not expressly set forth a definition. Patent Owner asserts:
`The technical art associated with the ’871 Patent relates to the
`field of integrating a camera together with a mobile phone to
`create a device capable of both audio and image communications
`on cellular networks. A person of ordinary skill in the relevant
`art (“POSITA”) of the ’871 Patent would have had at least a
`bachelor’s degree and/or relevant professional experience in
`electrical engineering, computer science, or a related field, and
`at least one year of experience related to the design of both
`cellular communications devices and digital imaging products.
`PO Resp. 3–4. We are not persuaded that one with ordinary skill in the art
`necessarily would have had experience in designing cellular
`communications devices. Based on the Specification of the ’871 patent, we
`determine that the invention is not about achieving improvements in cellular
`
`16
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`IPR2015-00412 and IPR2015-01366
`Patent 7,365,871 B2
`
`communication technology. Rather, it is necessary for one with ordinary
`skill in the art only to be familiar with what a cellular communication
`network required as an input source and what the expected format and/or
`protocol would be for sending and receiving information to and from the
`cellular network. It is noted that even Patent Owner’s stated definition does
`not require any actual experience in designing cellular communication
`devices, but just experience “related to” the design of cellular
`communication devices. Other than the foregoing, we determine that no
`express finding is necessary, on this record, and that the level of ordinary
`skill in the art is reflected by the prior art of record. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d
`1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`
`1. McNelley (Exhibit 1006)
`McNelley discloses a combination portable recording video camera
`
`and video-conferencing terminal. Ex. 1006, Abstr. McNelley describes its
`device as a “telecamcorder configured for use as a self-contained
`teleconferencing terminal as well as a camcorder.” Id. at 6:35–37. The
`device includes an integrated phone, camera, microphone, speaker, display,
`and antenna for transmission/reception of images and sound. Id. at Fig. 8,
`6:35–58, 7:24–38.
`
`17
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`IPR2015-00412 and IPR2015-01366
`Patent 7,365,871 B2
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`
`
`Figures 6–8 of McNelley are reproduced below:
`
`
`Figure 6 illustrates a preferred placement of the camcorder camera in
`
`relation to the teleconferencing display. Id. at 3:14–15. Figure 7 illustrates
`a preferred captured image of a conferee. Id. at 3:16–17. Figure 8 illustrates
`a configuration of a complete telecamcorder terminal. Id. at 3:18–19.
`Speaker 112 and microphone 114 together serve as a built-in speaker phone.
`Id. at 7:31–32. The provision of handset 174 in addition to or in lieu of
`built-in speaker phone is optional. Id. at 7:39–41. Figure 8 shows the
`telecamcorder in teleconferencing mode where camera 102 is pointed in the
`same direction as the viewing side of display 100. Id. at 6:37–39. Camera
`102 is placed above display 100 along center axis 150, thus permitting
`
`18
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`IPR2015-00412 and IPR2015-01366
`Patent 7,365,871 B2
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`straight-on face-to-face conversation. Id. at 43–45. Microphone 114, light
`152, and camera 102 are contained in rotatable camera boom 156. Id. at 45–
`48. Optional handset 174, including microphone 176 and speaker 178,
`functions like a traditional phone and can be connected directly to main
`housing 148 by line 184 via common phone jacks. Id. at 7:41–44. Handset
`174 also includes network access controls 186, telecamcorder controls 188,
`and latch 190 that mates with latch 92 on main housing 148. Id. at 7:58–61.
`
`2. Umezawa (Exhibit 1007)
`Umezawa discloses a video telephone in a casing for holding in one
`
`hand, which permits a user to transmit and receive pictures and speech.
`Ex. 1007, Abstr. The video telephone includes a microphone, a speaker, a
`display panel, a control panel, and a camera. Id. Figure 1 of Umezawa is
`reproduced below:
`
`
`
`19
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`IPR2015-00412 and IPR2015-01366
`Patent 7,365,871 B2
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`Figure 1 shows a perspective external view of an embodiment of a video
`telephone according to Umezawa. Id. at 4:24–26.
`
`As shown in Figure 1, Umezawa’s video telephone 1 has body 2.
`Ex. 1007, 5:31–34. Mounted on body 2 are camera 3, speaker 6 within ear
`pad 4, display panel 11, transmission/reception key 12, termination key 13,
`control panel 14, functional keys 15, and microphone 16. Id. at 5:35–49.
`
`Umezawa’s Figure 3 is reproduced blow.
`
`
`
`
`Figure 3 is an exploded view of Umezawa’s video telephone, illustrating
`various components within the video telephone. Id. at 4:30–31. The video
`telephone includes circuit board 17 containing a processor and a memory,
`communication device 18, speaker 6, liquid crystal display panel 11, control
`circuit board 20, microphone 16, battery 90, antenna 21, and camera 3.
`Id. at 5:53–62.
`
`20
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`IPR2015-00412 and IPR2015-01366
`Patent 7,365,871 B2
`
`
`3. Claims 1, 6, and 12
`With respect to claims 1 and 6, as explained below, Petitioner has not
`established the unpatentability of either claim by a preponderance of the
`evidence. With respect to claim 12, notwithstanding the arguments and
`evidence presented by Patent Owner, which are discussed below, we are
`persuaded by the arguments and evidence presented by Petitioners. Claim
`12 has been shown as unpatentable by a preponderance of the evidence.
`We specifically discuss only a representative sample of Petitioners’
`positions with regard to claim 12, because Patent Owner is deemed to have
`admitted those aspects of the ground of unpatentability that are uncontested
`by Patent Owner and are material facts. See 37 C.F.R. § 42.23(a); see also
`Paper 13, 3 (“The patent owner is cautioned that any arguments for
`patentability not raised in the response will be deemed waived.”).
`
`Preamble Recitations
`Claim 1, in its preamble, recites: “[a] handheld self-contained cellular
`telephone and integrated image processing system.” E
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