Patent Owner Response
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`IPR2015-00412
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________
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`APPLE INC.,
`Petitioner
`v.
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`E-WATCH, INC.,
`Patent Owner
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`___________________________________
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`Case: IPR2015-00412
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`Patent No. 7,365,871
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`Title: Apparatus For Capturing, Converting And Transmitting A Visual
`Image Signal Via A Digital Transmission System
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`___________________________________
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`PATENT OWNER E-WATCH INC’S RESPONSE
`UNDER 37 C.F.R. §42.120
`___________________________________
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`
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`Petitioner – Apple Inc.
`Patent Owner – E-Watch, Inc.
`IPR2015-00412
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`IPR2015-00412
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`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 No. 7,365,871
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`Title: Apparatus For Capturing, Converting And Transmitting A Visual
`Image Signal Via A Digital Transmission System
`
`___________________________________
`
`PATENT OWNER E-WATCH INC’S RESPONSE
`UNDER 37 C.F.R. §42.120
`___________________________________
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`
`
`Petitioner – Apple Inc.
`Patent Owner – E-Watch, Inc.
`IPR2015-00412
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`Patent Owner Response
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`IPR2015-00412
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`TABLE OF CONTENTS
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` I. STATEMENT OF MATERIAL FACTS IN DISPUTE ................................. 1
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`II.
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`INTRODUCTION ........................................................................................... 1
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`A.
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`B.
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`C.
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`D.
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`E.
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`Statement Of Relief Requested ........................................................... 1
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`Overview of United States Patent No. 7,365,871 ................................ 2
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`Level of Ordinary Skill in the Art ........................................................ 3
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`Claim Construction .............................................................................. 4
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`Summary Of Patent Owner’s Argument ........................................... 10
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`III. CONTEXT OF INVENTIVE DISCLOSURE OF REFERENCES RELIED
`UPON BY PETITIONER ............................................................................. 11
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`A.
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`B.
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`United States Patent No. 5,550,754 (“McNelley”) ............................ 11
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`United States Patent No. 5,491,507 (“Umezawa”) ............................ 12
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`IV.
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`PATENT OWNER’S RESPONSE TO PETITIONER’S CLAIM ANALYSIS
`AND OBVIOUSNESS ASSERTIONS ................................................................ 13
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`A.
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`References Relied Upon Do Not Disclose Or Suggest All Limitations
`Of The Challenged Claims ........................................................................ 13
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`1.
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`Non-Audio Digital Image Signal Transmission Limitation As
`Recited In Claim 12 .................................................................. 13
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`2.
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`3.
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`4.
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`5.
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`Selective Display and Transmission Limitation As Recited In
`Claims 1, 6 and 12 ................................................................... 16
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`Integrated Housing Limitation As Recited in Claims 1, 6 and
`12 ............................................................................................. 21
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`Alphanumeric Limitation As Recited in Claims 1, 6 and 12 .. 25
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`Display Window Limitation As Recited In Claim 7 ............... 29
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`B.
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`Considerations Weighing Against Motivation To Combine
`References ................................................................................................. 31
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`1.
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`2.
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`Alleged Obviousness Ground With Respect to McNelley and
`Umezawa Is Based Solely On Conclusory Statements ........... 32
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`Proposed Obviousness Ground Violates 37 C.F.R. §42.104 ....... 34
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`CONCLUSION ............................................................................................. 37
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`V.
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`Patent Owner Response
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`EXHIBIT LIST
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`Previously or Currently Filed – Patent Owner
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`[EXH. 2001] Table Showing Other Inter Partes Review Petitions with Prior
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` Art and/or Issues that Overlap with IPR2015-00412 Petition
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` (“this petition” or “the Petition”)
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`[EXH. 2002] Defendants’ Invalidity Contentions in Parallel District Court
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` Litigation (Redacted Version)
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`[EXH. 2003] Expert Witness Declaration of Dr. Jose Melendez (“Melendez
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` Declaration”)
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`[EXH. 2004] March 8, 2007 Office Action for U.S. Patent Application No.
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` 10/336,470 (“Office Action”)
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`[EXH. 2005] September 7, 2007 Office Action Response for U.S. Patent
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` Application No. 10/336,470 (“Office Action Response”)
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`[EXH. 2006] December 27, 2007 Examiner’s Amendment for U.S. Patent
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` Application No. 10/336,470 (“Examiner’s Amendment”)
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`[EXH. 2007] Institution Decision in IPR2015-00413 (Paper 13)
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`[EXH. 2008] Merriam-Webster Online Dictionary Definition of “within”
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`[EXH. 2009] Merriam-Webster Online Dictionary Definition of
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` “alphanumeric”
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`[EXH. 2010] “Adaptive Low-Rate Wireless Videophone Schemes” from
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` IEEE Transactions on Circuits and Systems for Video
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` Technology, Vol. 5, No. 4, August 1995
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`Previously Filed – Petitioner
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`[EXH. 1001] U.S. Patent No. 7,365,871 (“the ‘871 Patent”)
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`[EXH. 1002] Affidavit of David A. Monroe Under 37 C.F.R. 1.131 (from
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` the file history of the ‘871 Patent)
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`[EXH 1003] Office Action Dated 9/27/2004 (from the file history of the
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` ‘871 Patent
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`[EXH. 1004] Response Dated 1/6/2005 to Office Action Dated 9/27/2004
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` (from the file history of the ‘871 Patent)
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`[EXH. 1005] Office Action Dated 8/9/2005 (from the file history of the ‘871
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` Patent)
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`[EXH. 1006] U.S. Patent No. 5,550,754 (“the ‘754 Patent” or “McNelley”)
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`[EXH. 1007] U.S. Patent No. 5,491,507 (“the ‘507 Patent” or “Umezawa”)
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`[EXH. 1008] Declaration of Steven Sasson (“Sasson Declaration”)
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`[EXH. 1009] U.S. Patent No. 5,517,683 (“the ‘683 Patent” or “Collett”)
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`I.
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`STATEMENT OF MATERIAL FACTS IN DISPUTE
`Petitioner did not submit a statement of material facts in its Petition for Inter
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`Partes review (“this Petition” or “the Petition”). Accordingly, no response to a
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`statement of material facts is due pursuant to 37 C.F.R. §42.23(a), and no facts are
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`admitted.
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`II.
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`INTRODUCTION
`Patent Owner E-Watch, Inc. (hereinafter “Patent Owner”) respectfully
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`submits this Patent Owner Response under 35 U.S.C. §§311–319 and 37 C.F.R.
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`§42.120. It is being timely filed by August 3, 2015 pursuant to the parties’
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`stipulation on due dates filed as Paper Number 16 on June 8, 2015.
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`“In an inter partes review instituted under this chapter, the petitioner shall
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`have the burden of proving a proposition of unpatentability by a preponderance of
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`the evidence.” 35 U.S.C. §316(e). Petitioner’s proposition of unpatentability fails
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`to meet that burden with respect to any of the claims of U.S. Patent No. 7,365,871
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`(“the ’871 Patent”).
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`A.
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`Statement of Relief Requested
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`Pursuant to 35 U.S.C. §316, Patent Owner respectfully requests that the
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`Patent Trial And Appeal Board (“the Board” or “PTAB”) find that originally issued
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`Claims 1-15 of the ‘871 Patent (“the ‘871 Patent Claims”) are valid and,
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`specifically, that Claims 1-8 and 12-15 of the ‘871 Patent are patentable in view of
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`the proposed ground of unpatentability under consideration.
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`B. Overview of United States Patent No. 7,365,871
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`The United States Patent and Trademark Office (“USPTO”) issued the ‘871
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`Patent entitled “Apparatus for Capturing, Converting and Transmitting a Visual
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`Image Signal Via a Digital Transmission System” on April 29, 2008. The ‘871
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`Patent generally relates to “image capture and transmission systems and is
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`specifically directed to an image capture, compression, and transmission system for
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`use in connecting with land line and wireless telephone systems.” ‘871 Patent at
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`1:17-19. Various “[e]mbodiments incorporate a camera and signal converter into
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`an integrated unit wherein the converted signal can be transmitted on a real time
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`basis or may be stored in memory for later recall and transmission.” Id. at 1:29-32.
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`“Embodiments permit a still frame visual image to be captured at a remote
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`location and sent immediately, over wireless communications systems, to a remote
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`location such as, by way of example, a computer system wherein the image could
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`be merged directly into newsprint.” Id. at 1:46-50. “In an embodiment a system
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`includes a video camera and an integral cellular telephone, wherein the telephone
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`using the standard audio mode or future digital modes, can be used to transmit and
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`receive visual image signals.” Id. at 1:64-67.
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`“Embodiments permit capture of a video image using a digital camera, an
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`analog camera, or a video camera such as a camcorder.” Id. at 1:37-39. “The
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`captured video image is then converted into still frame digitized format for
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`transmission over any of a variety of transmission systems ranging from Group-III
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`facsimile to computer, or to a like device at a remote location, in any protocol
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`desired.” Id. at 1:39-43. See also [EXH. 2003] (Melendez Declaration) at 16-17.
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`C.
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`Level of Ordinary Skill in the Art
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`“The person of ordinary skill in the art is a hypothetical person who is
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`presumed to have known the relevant art at the time of the invention.” Manual of
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`Patent Examining Procedure (“MPEP”) 2141.II.C. Factors that may be considered
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`in determining the level of ordinary skill in the art may include: type of problems
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`encountered in the art; (2) prior art solutions to those problems; (3) rapidity with
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`which innovations are made; (4) sophistication of the technology; and (5)
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`educational level of active workers in the field. In re GPAC, 57 F.3d 1573, 1579
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`(Fed. Cir. 1995).
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`The technical art associated with the ‘871 Patent relates to the field of
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`integrating a camera together with a mobile phone to create a device capable of both
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`audio and image communications on cellular networks. A person of ordinary skill in
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`the relevant art (“POSITA”) of the ‘871 Patent would have had at least a bachelor’s
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`degree and/or relevant professional experience in electrical engineering, computer
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`science, or a related field, and at least one year of experience related to the design of
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`both cellular communications devices and digital imaging products. See also [EXH.
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`2003] at 14-16. A POSITA would also have had access to relevant technical
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`publications, text books and online references at the time of the invention just prior
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`to January 12, 1998 which is the date of United States Application No. 09/006,073 to
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`which the ‘871 Patent claims priority.
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`D. Claim Construction
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`In an inter partes review, claim terms in an unexpired patent are given their
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`broadest reasonable construction in light of the specification of the patent. 37 CFR
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`§42.100(b). Under the broadest reasonable interpretation standard, claim terms are
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`presumed to be given their ordinary and customary meaning, as would be understood
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`by one of ordinary skill in the art in the context of the entire disclosure. In re
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`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
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`The Board has already construed “an image framed by the camera,” “framing
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`[a/the] image to be captured” and “framing the visual image” in its May 11, 2015
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`Institution Decision (Paper 12) (“Institution Decision”). The Board concluded these
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`phrases meant “an image having boundaries established by the camera,” “visually
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`establishing the boundaries of an image to be captured,” and “establishing the
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`boundaries of an image,” respectively. Institution Decision at 7.
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`Patent Owner respectfully submits that “selectively displaying,” “selectively
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`transmitting” and “selected digitized framed image” should also be construed. The
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`phrase “selectively displaying” is recited in all of the at-issue independent claims
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`(i.e., 1, 6 and 12) of the ‘871 Patent. As an example, a representative portion of
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`independent claim 1 that recites “selectively displaying” is reproduced below.
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`memory associated with the processor for receiving and storing
`for selectively
`the digitized
`framed
`image, accessible
`displaying in the display window and accessible for selectively
`transmitting over the cellular telephone network the digitized
`framed image…
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` ‘871 Patent at 14:63-67 (emphasis added). In relation to the “selectively
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`displaying” limitation, the specification of the ‘871 Patent provides the following:
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`The memory may 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.
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`Id. at 6:34-43 (emphasis added). The prosecution history of the ‘871 Patent
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`also provides insight on the meaning of “selectively displaying” as used in the ‘871
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`Patent claims. On March 8, 2007, an office action issued for U.S. Patent
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`Application No. 10/336,470 (“’470 Patent Application”), the application that
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`matured into the ‘871 Patent. [EXH 2004] (“Office Action”). In this Office
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`Action, certain independent claims of record were rejected as being obvious over a
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`combination of two prior art references – JP 06-268582 to Kawazu (“Kawazu
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`reference” or “Kawazu”) in view of U.S. Patent No. 5,191,601 to Ida ( “Ida
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`reference” or “Ida”). In response to this Office Action, the applicant filed an office
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`action response on September 7, 2007 that included remarks clarifying the claimed
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`invention with respect to the Ida reference. [EXH 2005] (“Office Action
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`Response”).
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`Applicant submitted that the present invention provides “the ability for the
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`user to selectively transmit and display images from memory” and that “Ida teaches
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`transmitting a stored image from memory 24, but it is clearly shown in the same
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`Fig. 4 and Fig. 5 to clearly lack the ability to display stored images on the device
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`display of the apparatus which collects the image.” [EXH. 2005] at 60:11-16.
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`Applicant further asserted with respect to Ida that “there is no teaching that the
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`‘prescribed picture’ stored in memory is selectively displayed by the local user so
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`that he can determine whether to transmit it to the remote station” and that “…the
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`Ida reference, properly understood, does not disclose selectively displaying or
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`transmitting a framed image that has been stored in memory…” Id. at 61:9-11 and
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`61:18-20.
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`In response to filing of the Office Action Response, the Examiner requested
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`and conducted an interview with the attorney of record for the ‘470 Application. At
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`least one topic of discussion in this interview was authorization to amend pending
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`independent claims 43 and 51 (i.e. issued claims 1 and 6) by an Examiner’s
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`Amendment (“the Examiner’s Amendment”) [EXH. 2006]. The Examiner’s
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`Amendment, which was authorized by the attorney of record and mailed on
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`December 27, 2007 as part of a Notice of Allowance, included amendment of
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`pending independent claims 43 and 51 to include language providing additional
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`specificity with respect to the abovementioned functionality of the present invention
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`in regard to “the ability for the user to selectively transmit and display images from
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`memory.” [EXH. 2006] at 9-11.
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`Specifically, the Examiner’s Amendment added the following underlined
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`language to independent claims 43 and 51, respectively, “a memory associated with
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`the processor for receiving and storing the digitized framed image, accessible for
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`selectively displaying in the display window and accessible for selectively
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`transmitting over the wireless telephone network the digitized framed image” and
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`“a memory associated with the processor for receiving and storing the digitized
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`framed image, accessible for selectively displaying in the display window and
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`accessible for selectively transmitting over the cellular telephone network the
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`digitized framed image.” Id. This claim language was specifically added to reflect
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`the patentably distinguishing functionality of providing the ability for the user to
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`selectively transmit and display images from memory.
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`Accordingly, in view of the independent claim language, disclosure in the
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`specification and the prosecution history of the ‘871 Patent, “selectively displaying”
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`refers to displaying a digitized framed image that has been selected from among a
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`plurality of digitized framed images that are within memory.
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`The term “selectively transmitting” is also recited in all of the at-issue
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`independent claims (i.e., 1, 6 and 12) of the ‘871 Patent. As an example, a
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`representative portion of independent claim 1 that recites “selectively transmitting”
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`is reproduced below.
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`memory associated with the processor for receiving and storing
`the digitized framed image, accessible for selectively displaying
`for selectively
`in
`the display window and accessible
`transmitting over the cellular telephone network the digitized
`framed image…
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`‘871 Patent at 14:63-67 (emphasis added). The specification of the ‘871
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`Patent provides the following:
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`Two generic configurations are shown and described, the first,
`where each image is transmitted as it is captured, and the
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`second, which permits capture, storage, and selective recall
`of captured images for transmission.
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`The memory may 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.
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`Id. at 5:6-10, 6:34-43 (all emphasis added) Accordingly, in view of this
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`disclosure in the specification of the ‘871 Patent and the previously discussed
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`prosecution history, “selectively transmitting” refers to transmitting a digitized
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`framed image that has been selected from among a plurality of digitized framed
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`images that are within memory.
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`The term “selected digitized framed image” is recited in independent claim
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`12 of the ‘871 Patent. A portion of independent claim 12, reciting “selected
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`digitized framed image” is reproduced below.
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`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…
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`‘871 Patent at 17:5-8 (emphasis added). As discussed above in reference to
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`“selectively transmitting,” a user is able to “…recall and view all or selective
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`images before transmission,” which thereby “…permits the operator to review
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`all images retained in the memory 46 and transmit selective images, as desired.”
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`’871 Patent at 6:34-43 (emphasis added).
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`Accordingly, in view of this disclosure in the specification of the ‘871 Patent,
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`“selected digitized framed image” refers to a digitized framed image that has been
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`selected from among a plurality of digitized framed images that are within the
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`memory.
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`Patent Owner respectfully submits that the remainder of the terms of the ‘871
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`Patent are readily understood by those in the art, and therefore the Board need not
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`construe other terms for the purposes of the instant review. See U.S. Surgical Corp.
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`v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (claim construction is
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`appropriate to “clarify and when necessary to explain what the patentee covered by
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`the claims,” but is not an “obligatory exercise in redundancy”).
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`E.
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`Summary of Patent Owner’s Argument
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`While the Petition is imprecisely constructed with respect to whether an
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`anticipation or obviousness ground of rejection is being alleged, Patent Owner
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`believes that no proposed ground of unpatentability is premised on anticipation
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`under 35 U.S.C. §102. Instead, unpatentability for all of the challenged ‘871 Patent
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`claims appears to be premised on obviousness based upon a single combination of
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`references (i.e. Claims 1-8 and 12-15 are alleged to be unpatentable under U.S.C.
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`§103(a) as being obvious over U.S. Patent No. 5,550,754 (“McNelley”) in view of
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`U.S. Patent No. 5,491,507 (“Umezawa”)).
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`This proposed ground of unpatentability fails for several reasons. One such
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`reason is that the proposed combination of references does not disclose or suggest
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`each and every limitation as recited by the ‘871 Patent Claims, including the “Non-
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`Audio Digital Image Signal Transmission Limitation,” “Integrated Housing
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`Limitation,” “Alphanumeric Limitation,” “Selective Display and Transmission
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`Limitation,” and “Display Window Limitation” as will be discussed in detail supra.
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`Another such reason is that Petitioner does not articulate a sufficient reason
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`or rational underpinning for the proposed combination necessary to support a legal
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`conclusion of obviousness under current legal precedent and USPTO guidelines.
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`Petitioner’s proposed obviousness ground is based solely on “mere conclusory
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`statements,” and Petitioner fails to present any cogent reasoning as to why a person
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`of ordinary skill in the art would have or even could have combined the relied upon
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`references to arrive at the invention as recited in such one or more claims of the
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`‘871 Patent. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
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`Another final such reason is that Petitioner has improperly combined an
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`anticipatory ground of rejection with an obviousness ground of rejection, causing
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`the proposed ground of rejection to lack precision and violate 37 C.F.R. §42.104.
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`III. CONTEXT OF INVENTIVE DISCLOSURE OF REFERENCES
`RELIED UPON BY PETITIONER
`A. United States Patent No. 5,550,754 (“McNelley”)
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`McNelley generally discloses a “telecamcorder configured for use as a self-
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`contained teleconferencing terminal as well as a camcorder.” McNelley at 6:35-37.
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`“FIG. 8 illustrates the telecamcorder in teleconferencing mode where the camera 102
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`is pointed in the same direction as the viewing side of the display 100 which images
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`the distant conferee from the incoming video telephone signal.” Id. at 6:37-41. “A
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`separate handset unit 174 that includes a microphone 176 and a speaker 178 may
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`serve in addition to or in lieu of the previously-mentioned built-in speaker phone.”
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`Id. at 7:39-41. “The handset 174 functions similarly to a traditional phone receiver
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`and can be directly connected to the main housing by a line 184 by means of
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`common phone jacks (not shown).” Id. at 7:41-44
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`B. United States Patent No. 5,491,507 (“Umezawa”)
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`Umezawa generally relates “to video telephone equipment, and more
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`particularly to a video telephone equipment of so-called handy type which permits a
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`user to transmit and receive pictures and speech with its casing held in one hand.”
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`Umezawa at 1:7-10. “The handy type video telephone equipment generally
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`indicated by numeral 1 is mainly constructed of the body 2 thereof which is thin and
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`flat and which is in a vertically long shape, a camera 3 which is turnably mounted on
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`the right side surface of the body 2, an ear pad 4 which is foldably mounted on the
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`upper part of the front of the body 2, a speaker 6 which is arranged at the central part
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`of the ear pad 4, an antenna 21 which is mounted on the right side of the top surface
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`of the body 2, and a battery assembly 9 which is detachably mounted on the lower
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`part of the rear surface of the body 2.” Id. at 5:31-42.
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`IV. PATENT OWNER’S RESPONSE TO PETITIONER’S CLAIM
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`ANALYSIS AND OBVIOUSNESS ASSERTIONS
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`A. References Relied Upon Do No Disclose or Suggest All Limitations
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`of the Challenged Claims
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`“In an inter partes review instituted under this chapter, the petitioner shall
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`have the burden of proving a proposition of unpatentability by a preponderance of
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`the evidence.” 35 U.S.C. §316(e). Petitioner has not met this burden with respect to
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`at least the following limitations of the ‘871 Patent claims.
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`1.
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`Non-Audio Digital Image Signal Transmission Limitation As
`Recited In Claim 12
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`Independent Claim 12 of the ‘871 Patent recites, “the wireless telephone
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`being selectively operable to transmit and receive non-audio digital signals, the
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`non-audio digital signals including a selected digitized framed image…” (“Non-
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`Audio Digital Image Signal Transmission Limitation”). ’871 Patent at 17:5-8.
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`This language requires the telephone to be capable of using non-audio digital
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`signals for transmission and receipt of the selected digitized framed image (i.e. the
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`non-audio digital signals include/contain the selected digitized framed image).
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`Petitioner appears to rely upon disclosure from both McNelley and
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`Umezawa
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`for allegedly
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`teaching
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`the Non-Audio Digital
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`Image Signal
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`Transmission Limitation. Petitioner asserts that “McNelley discloses that the
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`telecamcorder includes an integral video-phone capable of receiving and sending
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`teleconferencing signals and transmitting/receiving data other than audio and
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`video, that the telecamcorder is applicable to any type of network such as a
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`wireless cellular telephone network, and that the device is equipped with
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`communication electronics that establish a connection over a network and
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`transmits/receive video and audio signals while displaying video signals and
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`reproducing audio signals.” Petition at 41.
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`In its analysis of McNelley as applied to Claim 12 of the ‘871 Patent,
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`Petitioner completely ignores the requirement of the Non-Audio Digital Image
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`Signal Transmission Limitation that mandates that the wireless telephone be
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`capable of transmitting and receiving the selected digitized framed image using
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`non-audio digital signals. None of Petitioner’s citations to McNelley related to the
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`Non-Audio Digital Image Signal Transmission Limitation discuss the specific type
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`of signals being used to transmit the digitized framed image. See McNelley,
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`Abstract, 5:1-7, 14:16-18, and 20:56-58 as cited in the Petition at 41.
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`Image transmission and reception using conventional cellular technology
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`was done exclusively by way of audio signals at the time of McNelley (1994). See
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`also [EXH. 2003] at 17-23 and [EXH. 2010] at 317. Consequently, McNelley
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`does not disclose or suggest, nor would it be expected to disclose or suggest, any
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`means by which a non-audio transmission of video or images can occur over a
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`cellular network. McNelley’s disclosed conventional cellular technologies did not
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`support or comprehend what is now known as multi-media messaging service
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`(MMS), which was specifically developed for enabling wireless transmission and
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`reception of video and still images by non-audio means. While SMS (Short
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`Message Service) existed at the time of McNelley for sending text messages, no
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`method of using conventional cellular technologies for enabling transmission and
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`reception of images using SMS is disclosed or suggested in McNelley and is not
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`obvious therefrom. Id.
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`Petitioner further asserts that Umezawa discloses the Non-Audio Digital
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`Image Signal Transmission Limitation, stating “Umezawa discloses a handheld
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`video phone for transmitting/receiving pictures and speech and processing means,
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`e.g., a processor and a memory, for permitting visual and vocal communication.”
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`Petition at 41. “Thus, Umezawa suggests digital processing in this regard and
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`selective functionality of receiving and playing digital and image data signals and
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`transmitting digital voice and image data signals.” Id. at 41-42.
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`Both the Petition and the disclosure of Umezawa are silent in regard to the
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`specific type of signals being used to transmit and receive the digitized framed
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`image. There is certainly no disclosure in Umezawa related to the transmission or
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`receipt of images via non-audio means. Again, this makes sense because
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`transmission of both voice/audio and video/images over a cellular network at the
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`time of Umezawa (1993) was done by audio means rather than non-audio means
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`(e.g. as packets) as previously discussed. See also [EXH. 2003] at 17-23.
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`Petitioner’s citations to Umezawa do not disclose any specifics related to how
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`videos or images are transmitted or received, but rather only mention that videos
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`and images are transmitted and received. See Umezawa, 1:5-10, 1:41-47, 1:61-2:8
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`and 5:55-62 as cited in the Petition at 41.
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`Accordingly, Petitioner has failed to provide a prior art combination that
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`renders Claim 12, or any of the claims depending therefrom (i.e. Claims 13-15), of
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`the ‘871 Patent obvious and, thus, unpatentable under 35 U.S.C. §103(a).
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`Petitioner has not met its burden of proving a proposition of unpatentability of
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`Claims 12-15 of the ‘871 Patent by a preponderance of the evidence, as required
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`by 35 U.S.C. § 316(e).
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`2.
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`Selective Display and Transmission Limitation As Recited In
`Claims 1, 6 and 12
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`All independent claims of the ‘871 patent require “a user interface for
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`enabling a user to select the image data signal for viewing and transmission,”
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`“selectively displaying,” “selectively transmitting” and/or a “selected digitized
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`framed image” (“Selective Display and Transmission Limitation”). ‘871 Patent at
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`14:63-15:2; 15:57-65; 16:63-17:8.
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`Neither McNelley nor Umezawa disclose
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`the Selective Display and
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`Transmission Limitation. The PTAB has already determined that Petitioner’s
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`contention that McNelley discloses “a user interface for enabling a user to select the
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`image data signal for viewing and transmission” is unpersuasive and that Petitioner
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`did not provide a sufficient explanation in its Petition regarding the presence of this
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`limitation. Institution Decision at 13. Nevertheless, for the sake of completeness,
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`Patent Owner will discuss the alleged disclosure of McNelley related to this
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`limitation and explain why it is inadequate.
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`McNelley contemplates two primary modes of operation, neither of which
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`involve selective display and transmission of an image. McNelley at 7:14-23 and
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`6:35-58. In the first mode, camcorder mode, videos can be taken, stored and
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`presumably retrieved for viewing and playback, but there is no disclosure of
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`transmission of the selected and recalled/displayed video in video camera mode. Id.
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`at 11:13-15. In the second mode, teleconferencing mode, the captured images are
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`streamed in real time and no selective display or transmission occurs. Id. at 6:35-58.
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`Indeed, the framed image from one device is transmitted and the incoming image
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`from the other teleconference participant/device is traditionally shown on the
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`display. Id.
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`Petitioner’s citations to the use of a telecamcorder as a video answering
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`machine (a possible third mode of operation discussed only briefly in McNelley) in
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`McNelley are also unavailing for disclosing the Selective Display and Transmission
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`Limitation for multiple reasons. The video answering machine operation of
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`McNelley involves sending a specially recorded video message upon detection of a
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`“ring.” Id. at 21:57-67. Upon detecting the “ring,” the video answering machine
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`automatically transmits the video message from memory and does not display the
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`video message on the display screen prior to transmission. See also [EXH. 2003] at
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`23-27. The video message is not being selected from the display screen for
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`transmission but instead is a p
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