Trials@uspto.gov
`Tel: 571-272-7822
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`
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`
`
`
`Paper 12
`Entered: May 11, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`E-WATCH, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00412
`Patent 7,365,871 B2
`____________
`
`
`Before JAMESON LEE, GREGG I. ANDERSON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`
`
`
`
`Paper 12
`Entered: May 11, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`E-WATCH, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00412
`Patent 7,365,871 B2
`____________
`
`
`Before JAMESON LEE, GREGG I. ANDERSON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`IPR2015-00412
`Patent 7,365,871 B2
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`
`I.
`
`INTRODUCTION
`
`Petitioner (“Apple”) filed a Petition requesting 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”). Paper 2 (“Pet.”). Patent Owner, e-Watch, Inc. (“e-Watch”),
`
`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, we
`
`determine that Apple has demonstrated a reasonable likelihood of prevailing
`
`in showing the unpatentability of claims 1–8 and 12–14 of the ’871 patent.
`
`A. Related Proceedings
`
`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) IPR2014-00402 (PTAB); (7) IPR2014-00404 (PTAB);
`
`(8) IPR2014-00406 (PTAB); (9) IPR2015-00541 (PTAB); (10) IPR2015-
`
`00610 (PTAB); and (11) IPR2015-00612 (PTAB). Paper 2, 50–51; Paper 9,
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`
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`2
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`IPR2015-00412
`Patent 7,365,871 B2
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`1. 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.
`
`B. The ’871 Patent
`
`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
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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
`
`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.
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`Figure 1 of the ’871 patent is reproduced below.
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`3
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`IPR2015-00412
`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
`
`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,
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`
`
`11:3–20.
`
`C. Illustrative Claim
`
`Of the challenged claims, claims 1, 6, and 12 are independent. Claim
`
`1 is reproduced below:
`
`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:
`
`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;
`
`
`
`4
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`IPR2015-00412
`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;
`
`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;
`
`for
`adapted
`communications device
`a wireless
`transmitting any of the digitized signals to the compatible
`remote receiving station; and
`
`a power supply for powering the system.
`
`Ex. 1001, 14:4915:13.
`
`D. Prior Art Relied Upon
`
`
`
`
`
`
`
`Apple relies on these prior art references:
`
`McNelley
`
`Umezawa
`
`
`
`
`
`US Pat. 5,550,754
`
`Ex. 1006
`
`US Pat. 5,491,507
`
`Ex. 1007
`
`Pet. 8.
`
`
`
`Apple also relies on the declaration testimony of Mr. Steven
`
`Sasson. Ex. 1008.
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`5
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`E. The Asserted Ground of Unpatentability
`
`
`
`The sole ground of unpatentability alleged by Apple is that claims 1–8
`
`and 12–14 of the ’871 patent are unpatentable, under 35 U.S.C. § 103,
`
`because they would have been obvious over McNelley and Umezawa. Id.
`
`A. Claim Construction
`
`II. ANALYSIS
`
`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 Technologies LLC, 778 F.3d 1271, 1281–82 (Fed. Cir.
`
`2015) (“Congress implicitly adopted the broadest reasonable interpretation
`
`standard in enacting the AIA,” and “the standard was properly adopted by
`
`PTO regulation”); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`
`48,766 (Aug. 14, 2012). 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 disclosure. In re Translogic Tech., Inc.,
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`504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`
`
`If an inventor acts as his or her own lexicographer, the definition must
`
`be set forth in the specification with reasonable clarity, deliberateness, and
`
`precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243,
`
`1249 (Fed. Cir. 1998). 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.,
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`849 F.2d 1430, 1433 (Fed. Cir. 1988).
`
`
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`6
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`Patent 7,365,871 B2
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`
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`Only terms which are in controversy need to be construed, and only to
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`the extent necessary to resolve the controversy. 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) / “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. Petitioner proposes that these terms be
`
`construed to mean “obtaining data representing an image as shown on a
`
`display.” Pet. 9–10. Patent Owner does not propose a construction for these
`
`terms and does not take a position on Petitioner’s proposed construction.
`
`
`
`As used in the claims, “framed” and “framing” appear to refer to
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`composing an image by positioning the subject of the image within the
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`boundaries of the camera’s field of view. The terms “framed” and
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`“framing” are not used in the Specification. The term “frame” is used in the
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`Specification, but it is used as a noun, not as a verb, and only in an image-
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`processing context. E.g., Ex. 1001, 8:21–23 (“At this point a single frame is
`
`captured in RAM 71 and/or on the portable medium RAM 72.”).
`
`
`
`On the present record, the 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.”
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`
`
`
`
`7
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`
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`B. Obviousness of Claims 1–8 and
`12–14 over McNelley and Umezawa
`
`
`
`Obviousness is determined on the basis of underlying factual
`
`inquiries, including: (1) the scope and content of the prior art; (2)
`
`differences between the claimed subject matter and the prior art; (3) the level
`
`of ordinary skill in the art; and (4) secondary considerations of
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`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). A
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`patent claim is unpatentable under 35 U.S.C. § 103 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).
`
`McNelley (Exhibit 1006)
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`
`
`McNelley discloses a combination portable recording video camera
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`and video-conferencing terminal. Ex. 1006, Abst. 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
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`device includes an integrated phone, camera, microphone, speaker, and
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`antenna for transmission/reception of images and sound. Fig. 8.
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`
`
`
`
`
`
`8
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`
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`Figures 6–8 of McNelley are reproduced below:
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`
`
`
`
`Figure 6 illustrates a preferred placement of the camcorder camera in
`
`relation to the teleconferencing display. Ex. 1006, 3:14–15. Figure 7
`
`illustrates a preferred captured image of a conferee. Id. at 3:16–17. Figure 8
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`illustrates a configuration of a complete telecamcorder terminal. Id. at 3:18–
`
`19. Figure 8 shows the telecamcorder in teleconferencing mode where
`
`camera 102 is pointed in the same direction as the viewing side of display
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`100. Id. at 6:37–39. Camera 102 is placed above display 100 along center
`
`axis 150, thus permitting straight-on face-to-face conversation. Id. at 43–45.
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`Microphone 114, light 152, and camera 102 are contained in rotatable
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`camera boom 156. Id. at 45–48. Handset 174, including microphone 176
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`9
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`IPR2015-00412
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`and speaker 178, functions like a traditional phone and can be connected
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`directly to main housing 148 by line 184 via common phone jacks. Id. at
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`7:41–44. Handset 174 also includes network access controls 186,
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`telecamcorder controls 188, and latch 190 that mates with latch 92 on main
`
`housing 148. Id. at 7:58–61.
`
`Umezawa (Exhibit 1007)
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`
`
`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, Abst. The video telephone includes a microphone, a speaker, a
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`display panel, a control panel, and a camera. Id. Figure 7 of Umezawa is
`
`reproduced below:
`
`
`
`Figure 1 shows a perspective external view of an embodiment of a video
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`telephone according to Umezawa. Ex. 1007, 4:24–26.
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`
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`
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`10
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`IPR2015-00412
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`
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`As shown in Figure 1, Umezawa’s video telephone 1 has body 2. Ex.
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`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,
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`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. Ex. 1007, 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
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`camera 3. Id. at 5:53–62.
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`11
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`IPR2015-00412
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`Discussion of Obviousness
`
`
`
`In light of the arguments and evidence submitted by the parties, Apple
`
`has established a reasonable likelihood that claims 1–8 and 12–14 are
`
`unpatentable as obvious over McNelley and Umezawa.
`
`
`
`For instance, with respect to independent claim 1, Apple contends that
`
`McNelley discloses what Apple identifies as limitations 1(g) (“a processor in
`
`the housing for generating an image data signal representing the image
`
`framed by the camera”), 1(i) (“[memory] accessible for selectively
`
`displaying in the display window and accessible for selectively transmitting
`
`over the wireless telephone network the digitized framed image”), and 1(l)
`
`(“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”).
`
`Pet. 17–25.
`
`
`
`With respect to limitation 1(g), Apple notes (1) that McNelley
`
`discloses video camera electronics 404 shown in Figure 30 which processes
`
`the output of the camera 406 into a final video signal to be fed to the
`
`controller 400 and which are contained in the housing, (2) that McNelley
`
`discloses the use of ASIC chips for digital compression, (3) that McNelley
`
`discloses digital recording, and (4) that McNelley discloses use of
`
`microprocessors for operational functions. Pet. 17. e-Watch in its
`
`Preliminary Response does not dispute these substantive contentions. On
`
`this record, we are persuaded sufficiently by Apple that McNelley discloses
`
`limitation 1(g).
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`
`
`With respect to limitation 1(i), Apple notes (1) that McNelley’s
`
`recording electronics 420 processes signals for storage in memory 422 and
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`12
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`IPR2015-00412
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`that stored messages can be played back through the speaker and display
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`416, (2) that McNelley discloses a memory for storing digitized framed
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`images, and (3) that McNelley discloses recording electronics 420, which
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`also plays stored messages from memory to be sent out over connection 104
`
`to a remote terminal. Pet. 19–20. e-Watch in its Preliminary Response does
`
`not dispute these substantive contentions. On this record, we are persuaded
`
`sufficiently by Apple that McNelley discloses limitation 1(i).
`
`
`
`With respect to limitation 1(l), Apple states:
`
`McNelley discloses (e.g., Figs. 8 and 9) dialing controls 186
`and telecamcorder controls 188 built into the main housing 148.
`McNelley also describes digital operation and use over a
`wireless cellular phone network as described above for each
`element claim 1(k). The dialing controls 186, also referred to
`as network access controls 186 (Id. at 7:58-59, 8:11-12) are
`conventional alphanumeric keypad buttons with which a POSA
`would have been well familiar at the time of the ’871 patent
`was filed, and in the context of McNelley’s disclosed digital
`operation with the processor. A POSA would have understood
`these digitized alphanumeric signals to be sent across the digital
`wireless network, e.g., for network access. Ex. 1008, Sasson
`Decl., ¶¶ 55-58.
`
`Pet. 24. e-Watch in its Preliminary Response does not dispute these
`
`substantive contentions. On this record, we are persuaded sufficiently by
`
`Apple that McNelley discloses limitation 1(l).
`
`
`
`We are not persuaded sufficiently, however, by Apple’s contention
`
`that McNelley discloses limitation 1(j) (“a user interface for enabling a user
`
`to select the image data signal for viewing and transmission”). Although it
`
`appears that McNelley’s combination video camera and video-conferencing
`
`should or may have such a feature, Apple has not provided a sufficient
`
`explanation. Specifically, Apple simply notes that McNelley’s display 100
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`can be used both as a teleconferencing display and viewfinder, in a
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`camcorder mode and a teleconferencing mode, and then concludes that
`
`limitation 1(j) is met. Pet. 22. Nevertheless, Apple presents an alternative
`
`contention, that Umezawa’s video telephone includes such a user interface.
`
`Id. Apple notes that “Umezawa’s user interface includes buttons for
`
`changing-over picture frames, scrolling the picture frame, inputting
`
`telephone numbers, and starting/stopping a video phone transmission.” Id.
`
`e-Watch in its Preliminary Response does not dispute this substantive
`
`contention about Umezawa’s disclosure.
`
`
`
`Apple further explains that it would have been obvious to one with
`
`ordinary skill in the art to include in McNelley’s telecamcorder the user
`
`interface feature of Umezawa’s video telephone, for reasons of size
`
`reduction and convenience of operation. Pet. 22–23. A user interface that
`
`enables user selection of images for display and transmission does, indeed,
`
`enhance operational convenience of McNelley’s telecamcorder. On this
`
`record, we are satisfied that there is sufficient reasoning with rational
`
`underpinnings for one of ordinary skill in the art to include in McNelley’s
`
`telecamcorder a user interface such as that in Umezawa, to enable selection
`
`of an image for display and transmission.
`
`
`
`Regarding independent claim 6, we are persuaded similarly by
`
`Apple’s arguments and evidence as in the case of claim 1. For instance,
`
`limitation 6(h) as identified by Apple is similar to limitation 1(l), limitation
`
`6(k) as identified by Apple is similar to limitation 1(g), limitation 6(m) as
`
`identified by Apple is similar to limitation 1(i), and limitation 6(n) as
`
`identified by Apple is similar to limitation 1(j).
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`14
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`We are not persuaded, however, by Apple’s contention that McNelley
`
`discloses limitation 6(i) as identified by Apple (“a display window for
`
`viewing the manually input alphanumeric signals”) (Pet. 31). In that regard,
`
`Apple asserts that McNelley discloses that multiple greetings may be
`
`accessed from memory through a menu system, and, thus, McNelley’s
`
`display is operable to display alphanumeric messages for viewing. Pet. 31.
`
`But Apple does not explain adequately why the stored messages are
`
`alphanumeric inputs manually entered by the user.
`
`
`
`Nevertheless, Apple presents several alternative contentions with
`
`regard to limitation 6(i): (1) that it was conventional in the art for control
`
`input to be displayed on a liquid crystal display when it is entered (Pet. 31
`
`(citing Ex. 2008 ¶ 79 – Sasson Declaration)), and (2) that Umezawa
`
`discloses entering telephone numbers on a user interface for its video
`
`telephone, whereby the entered numbers are displayed on display control
`
`panel 14. Pet. 31–32. e-Watch in its Preliminary Response does not dispute
`
`that it was conventional in the art to have control inputs displayed, or that
`
`Umezawa discloses displaying the telephone numbers entered through
`
`Umezawa’s user interface. Apple further explains that in light of
`
`Umezawa’s teaching of displaying the manually inputted telephone
`
`numbers, it would have been obvious to one of ordinary skill in the art to
`
`have displayed, in McNelley’s telecamcorder, inputs manually entered
`
`through the user interface, to confirm that the inputs are entered correctly.
`
`Pet. 32. On this record, we are satisfied that there is sufficient reasoning
`
`with rational underpinnings for one of ordinary skill in the art to have
`
`displayed in McNelley’s telecamcorder the alphanumeric inputs entered by a
`
`user.
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`15
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`Regarding independent claim 12, we are persuaded similarly by
`
`Apple’s arguments and evidence as in the case of claims 1 and 6. For
`
`instance, limitation 12(d) as identified by Apple is similar to limitations 1(g)
`
`and 6(k), limitation 12(e) as identified by Apple is similar to limitations 1(i)
`
`and 6(m), and limitation 12(g) as identified by Apple is similar to limitation
`
`6(i). We further are persuaded sufficiently, on this record, that McNelley
`
`discloses limitation 12(f) as identified by Apple (Pet. 40) (“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 frame image”).
`
`Apple points to various portions of McNelley to support its contention.
`
`Pet. 41. e-Watch in its Preliminary Response does not dispute this
`
`contention regarding the substantive disclosure of McNelley.
`
`
`
`The above analysis with respect to the independent claims is
`
`representative. Apple similarly addressed sufficiently each of the dependent
`
`claims. Pet. 45–48.
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`
`
`e-Watch asserts that Apple failed to identify any difference between
`
`the challenged claims and the disclosure of McNelley. Prelim. Resp. 8. The
`
`reality, however, is that Apple has made its case with several alternatives,
`
`starting with no difference between the claims and McNelley, and ending
`
`with up to 4 potential differences between McNelley and claim 1 (1(g), 1(i),
`
`1(j), 1(l)), up to 5 differences between McNelley and claim 6 (6(h), 6(i),
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`6(k), 6(m), 6(n)), and up to 4 differences between McNelley and claim 12
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`(12(d), 12(e), 12(f), and 12(g)). The assertion of no difference whatsoever
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`16
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`IPR2015-00412
`Patent 7,365,871 B2
`
`in the analysis does create some confusion, but not sufficiently so to warrant
`
`dismissal of the alleged ground of obviousness. We need not decide, for
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`purposes of this decision, what we would do if Apple established that
`
`McNelley anticipates each challenged claim where the only alleged ground
`
`of unpatentability is based on obviousness. As discussed above, we are not
`
`persuaded by Apple that McNelley discloses each and every limitation of
`
`independent claim 1, 6, or 12.
`
`
`
`e-Watch urges that institution of inter partes review is discretionary
`
`under 35 U.S.C. § 314(a) and that we should exercise our discretion in favor
`
`of non-institution because the same or substantially the same prior art or
`
`arguments previously were presented to the Office. Prelim. Resp. 4. In that
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`connection, it is noted that in determining whether to institute a proceeding,
`
`the Director “may take into account whether, and reject the petition or
`
`request because, the same or substantially the same prior art or arguments
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`previously were presented to the office.” 35 U.S.C. § 325(d). We have
`
`considered the prior art and arguments presented by the respective Petitions
`
`in IPR2014-00987 and IPR2015-00413 involving the ’871 patent, but do not
`
`regard the overlap in prior art applied and arguments asserted therein,
`
`relative to those asserted by Apple here, sufficient to warrant a discretionary
`
`denial of Apple’s Petition in this case.
`
`
`
`e-Watch further asserts that Apple’s filing of 3 petitions against the
`
`’871 patent, via IPR2015-00411, IPR2015-00412, and IPR2015-00413,
`
`constitutes an attempt to harass e-Watch and should not be condoned.
`
`Prelim. Resp. 5–7. We disagree, given that Apple asserted only a single
`
`ground of unpatentability in each one of these proceedings, all of which
`
`were filed on the same day.
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`17
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`IPR2015-00412
`Patent 7,365,871 B2
`
`
`III. CONCLUSION
`
`
`
`For the foregoing reasons, Apple has shown a reasonable likelihood
`
`that it would prevail in establishing the unpatentability of each of claims 1–8
`
`and 12–14 of the ’871 patent as obvious over McNelley and Umezawa.
`
`
`
`The Board has not made a final determination on the patentability of
`
`any challenged claim.
`
`Accordingly, it is
`
`IV. ORDER
`
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
`
`hereby instituted for each of claims 1–8 and 12–14 of the ’871 patent, under
`
`35 U.S.C. § 103, as obvious over McNelley and Umezawa; 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
`
`grounds of unpatentability authorized above, and that the trial commences
`
`on the entry date of this Decision.
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`18
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`IPR2015-00412
`Patent 7,365,871 B2
`
`FOR PETITIONER:
`
`Brian Buroker
`Blair Silver
`Gibson, Dunn & Crutcher LLP
`bburoker@gibsondunn.com
`bsilver@gibsondunn.com
`
`FOR PATENT OWNER:
`
`Robert C. Curfiss
`bob@curfiss.com
`
`David O. Simmons
`IVC Patent Agency
`dsimmons@sbcglobal.net
`
`
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`19
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