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
`_____________________
`
`IPR2015-00412
`IPR2015-013661
`U.S. Patent No. 7,365,871 B2
`_____________________
`
`REPLY DECLARATION OF STEVEN J. SASSON IN SUPPORT OF
`INTER PARTES REVIEW OF U.S. PATENT NO. 7,365,871 B2
`
`Mail Stop
`Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`(cid:36)(cid:83)(cid:83)(cid:79)(cid:72)(cid:3)(cid:44)(cid:81)(cid:70)(cid:17)
`Exh. 1014
`(cid:51)(cid:72)(cid:87)(cid:76)(cid:87)(cid:76)(cid:82)(cid:81)(cid:72)(cid:85)(cid:29)(cid:3)(cid:3)(cid:36)(cid:83)(cid:83)(cid:79)(cid:72)(cid:3)(cid:44)(cid:81)(cid:70)(cid:17)(cid:3)(cid:18)(cid:3)(cid:51)(cid:68)(cid:87)(cid:72)(cid:81)(cid:87)(cid:3)(cid:50)(cid:90)(cid:81)(cid:72)(cid:85)(cid:29)(cid:3)(cid:3)(cid:40)(cid:16)(cid:58)(cid:68)(cid:87)(cid:70)(cid:75)(cid:15)(cid:3)(cid:44)(cid:81)(cid:70)(cid:17)
`(cid:44)(cid:51)(cid:53)(cid:21)(cid:19)(cid:20)(cid:24)(cid:16)(cid:19)(cid:19)(cid:23)(cid:20)(cid:21)
`
`
`1 IPR2015-01366 has been joined with IPR2015-00412.
`
`

`
`
`
`TABLE OF CONTENTS
`
`
`
`B.
`
`C.
`D.
`
`I.
`INTRODUCTION ........................................................................................... 1
`LEVEL OF ORDINARY SKILL IN THE ART ............................................. 2
`II.
`III. CLAIM CONSTRUCTION ............................................................................ 5
`A.
`“Selectively” Displaying and Transmitting The Digitized Frame
`Image Means “Selecting At Least One Digitized Frame Image”
`(Claims 1, 6, and 12) ............................................................................. 5
`“Alphanumeric Signals” Are “Characters Consisting Of Letters
`And/Or Digits” ...................................................................................... 8
`The Claims Do Not Require An “Integrated Housing” ...................... 14
`The Claims Require Transmission Of A “Non-Audio Digital
`Signal,” Such As The “Digitized Frame Image,” Not The Use
`Of A “Non-Audio Digital Signal” For Transmission ......................... 19
`IV. MCNELLEY AND UMEZAWA DISCLOSE ALL ELEMENTS OF
`CLAIMS 1-8 AND 12-14. ............................................................................. 25
`A. McNelley and Umezawa Selectively Display and Transmit .............. 25
`B. McNelley and Umezawa Disclose “Alphanumeric Signals” .............. 31
`C. McNelley Discloses “A Portable Housing” And “A Handheld
`Housing” .............................................................................................. 40
`D. McNelley and Umezawa Both Teach Or Suggest The Non-
`Audio Digital Image Signal Transmission Limitation ........................ 43
`Placing The “Display Window For Viewing The Alphanumeric
`Signals … Within The Display Window For Framing The
`Visual Image” Was An Obvious Design Choice ................................ 46
`F. McNelley and Umezawa Disclose All The Elements of Claims
`1-8 and 12-14 of the ’871 Patent ......................................................... 51
`CONCLUSION .............................................................................................. 57
`
`E.
`
`V.
`
`i
`
`

`
`
`
`I.
`
`INTRODUCTION
`1.
`
`
`
`I am submitting this Reply Declaration on behalf of the Petitioner
`
`Apple Inc. to address several arguments raised in the Patent Owner’s Response
`
`(“Resp.”) and the Declaration of Jose Luis Melendez that were submitted by
`
`e-Watch, Inc. (“Patent Owner”) in this inter partes review of U.S. Patent No.
`
`7,365,871 (“the ’871 patent”) (Ex. 1001), IPR2015-00412.
`
`2.
`
`Based on my review of the Patent Owner’s Response and the
`
`Declaration of Jose Luis Melendez, Patent Owner and Dr. Melendez have argued
`
`that the challenged claims of the ’871 Patent—claims 1-8 and 12-14—require the
`
`following: that (1) “selectively displaying” and “selectively transmitting” digitized
`
`frame images (claims 1, 6, and 12) requires selecting “from among a plurality of
`
`digitized framed images that are within memory”; (2) that “alphanumeric signals”
`
`(claims 1, 6, and 12) requires “both letters and numbers” sent “to a compatible
`
`remote receiving station” “along with digital image and/or audio signals” in a
`
`manner that permits “the receiving end user to view the inputted phone number or
`
`text message”; (3) that the preamble of claim 1 warrants reading an “integrated
`
`housing” limitation not only into claim 1 but also into claims 6 and 12; and (4) that
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`“non-audio digital signals including a selected digitized framed image” (claim 12)
`
`is not simply a digital, non-audio signal content (like a digitized framed image),
`1
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`

`
`
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`but refers to some “non-audio digital” mode of communication. As explained
`
`further below, each of these arguments is incorrect.
`
`II. LEVEL OF ORDINARY SKILL IN THE ART
`3.
`Dr. Melendez asserts that a person having ordinary skill in the
`
`relevant field of art at the time of the invention would have “at least one year of
`
`experience related to the design of . . . cellular communications devices[.]” Ex.
`
`2003, Melendez Decl., at ¶ 34. Dr. Melendez goes on to assert that “[c]ellular
`
`communication systems have improved significantly, and rapidly, over the past
`
`decades and are highly complex, such that a person not skilled in the art area
`
`would be likely to overstate the capabilities of cellular systems and/or oversimplify
`
`them, and as such would not be able to effectively develop a product with
`
`capabilities as disclosed and claimed in the ‘871 Patent.” Id. at ¶ 35.
`
`4.
`
`I disagree with Dr. Melendez’s assertion that a person of ordinary skill
`
`in the art would necessarily have specialized experience related to the design of
`
`cellular communication devices, for several reasons.
`
`5.
`
`First, the ’871 patent discloses no particular “cellular communication
`
`system,” instead referring simply to an unspecified “cellular telephone” or “cellular
`
`transmission.” E.g., ’871 patent at 3:10, 4:65, 9:31-35. Dr. Melendez admitted
`
`that cellular telephones were available before the filing of the ’871 patent. Ex.
`2
`
`

`
`
`
`1013 at 39:16-21. And he further admitted that the ’871 patent does not describe
`
`any particular cellular network or network standard. Id. at 84:15-25, 86:23-25
`
`(“Q.: But, to your knowledge, the ’871 patent in its entirety does not describe any
`
`particular cellular network. . . . A.: It does not describe any particular network.
`
`That’s true. . . . Yeah. I don’t think the patent’s specific to any particular cellular
`
`network.”).
`
`6.
`
`Dr. Melendez only appears
`
`to specifically refer
`
`to cellular
`
`implementation once, with regard to the ’871 patent’s description of “a cellular
`
`telephone interface.” Ex. 1013 at 83:1-84:2; see ’871 patent at 9:31-40. But this
`
`circuitry only consists of standard buffer amplifiers and simple field effect
`
`transistor (“FET”) switches. Id. These are standard components used in a
`
`conventional way to interface to a bidirectional communication port, and they do
`
`not demonstrate special design elements particular to cellular technology.
`
`Specialized experience related to cellular devices is therefore not necessary to
`
`understand the ’871 patent.
`
`7.
`
`Indeed, the ’871 patent specifically disclaims reliance on any one
`
`form of transmission, see id. at 3:8-10, 4:64-66, and it also contemplates
`
`transmission via wired and other wireless forms of communication, such as via
`
`radio or satellite transmission (again with little specificity as to any particular
`3
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`

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`
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`network or standard). Id. at 9:31-35. I do not agree with Dr. Melendez’s view that
`
`a person of ordinary skill in the art requires specialized experience related to
`
`“cellular communications devices” but no particular experience whatsoever related
`
`to the number of other modes of transmission also disclosed in the ’871 patent.
`
`8.
`
`Second, Dr. Melendez admitted in his deposition that a number of the
`
`specific technologies at issue in this proceeding were well-known in the art at the
`
`time the ’871 patent was filed. These include text messaging (Ex. 1013 at 40:10-
`
`15, 91:10-13); the ability to store an image in memory (id. at 55:10-21); facsimile
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`transmission at 10 kilobits per second (id. at 197:8-10, 198:1-2); and the ability to
`
`transmit a video over a wireless network (id. at 198:13-15).
`
`9.
`
`Third, the article Patent Owner attached to its Response to the
`
`Petition, Adaptive Low-Rate Wireless Videophone Schemes (Hanzo & Streit 1995),
`
`discloses means for compressing videos so they can be transmitted live via existing
`
`cellular telephone technology. The authors write that, in 1995, “mobile
`
`videotelephony is becoming realistic over existing mobile speech links[.]” Ex.
`
`2010 at 13. The authors also note that the “video source rate can be fixed to any
`
`arbitrary value in order [to] be able to accommodate the videophone signal by
`
`conventional 2nd generation mobile speech channels . . . at bit rates between 6.7
`
`and 13 kbps.” Id. at 12. McNelley, in particular, repeatedly refers to such
`4
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`

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`
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`compression techniques. See Ex. 1006 at 1:40-44, 12:65-13:2, 18:29-48. Thus the
`
`compression of videos for cellular transmission was known in the art at the time
`
`the ’871 patent was filed.
`
`10. Fourth, Dr. Melendez admitted in his deposition that classes in
`
`cellular technology and other forms of wireless communications were available to
`
`electrical engineering undergraduate students in 1998. Ex. 1013 at 66:20-67:16.
`
`11. While Dr. Melendez is incorrect regarding the level of ordinary skill
`
`in the art, the following analysis (and the analysis in my original Declaration)
`
`remains the same under either definition of the level of ordinary skill in the art.
`
`III. CLAIM CONSTRUCTION
`A.
`“Selectively” Displaying and Transmitting The Digitized Frame
`Image Means “Selecting At Least One Digitized Frame Image”
`(Claims 1, 6, and 12)
`
`12.
`
` Patent Owner has proposed that the Board construe the terms
`
`“selectively displaying,” “selectively transmitting,” and “selected digitized framed
`
`image,” found in independent claims 1, 6, and 12 of the ’871 patent, to mean
`
`“displaying a digitized framed image that has been selected from among a
`
`plurality of digitized framed images that are within memory.” Resp. at 5-8. But
`
`Patent Owner
`
`is
`
`incorrect because “selectively displaying,” “selectively
`
`transmitting,” and “selected digitized frame image” in claims 1, 6, and 12, under
`
`5
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`

`
`
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`their broadest reasonable interpretation, means “selecting at least one digitized
`
`framed image” for display or transmission.
`
`13.
`
` No limitation in claim 1, 6, 7, or 12 describes or contemplates
`
`selecting one image only from a group of multiple, previously stored images. On
`
`the contrary, claims 1, 6, and 12 unambiguously refer to selecting an image in
`
`singular terms: “selectively transmitting . . . the digitized framed image” (claim 1);
`
`“select the image data signal for viewing and transmission” (claim 1); “accessible
`
`for selectively displaying … and accessible for selectively transmitting … the
`
`digitized framed image” (claim 6); “selectively display the digitized framed image
`
`. . . and subsequently transmit the digitized framed image” (claim 6); “for
`
`selectively displaying . . . and for selectively transmitting . . . the digitized frame
`
`image” (claim 12); and “the non-audio digital signals including a selected digitized
`
`framed image” (claim 12).
`
`14.
`
` My opinion is consistent with the portions of the ’871 patent
`
`specification cited in Patent Owner’s Response. The following portion specifically
`
`describes a single image embodiment: “Two generic configurations are shown and
`
`described; the first, where each image is transmitted as it is captured . . . ” Resp. at
`
`8-9 (citing ’871 patent at 5:6-10). While other portions of the specification support
`
`storing multiple images before display, selection, and transmission, none of these
`6
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`
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`portions does anything to preclude selecting “at least one” image. See, e.g., ’871
`
`patent at 6:34-43.
`
`15.
`
` I understand that the Board and the district court have already
`
`rejected Patent Owner’s narrow reading of the “selectively” transmitting and
`
`display as requiring selection “from among a plurality.” Ex. 1011 at 2 (“According
`
`to Petitioner, the Board interpreted the various selecting limitations as requiring a
`
`selection from two or more images. That is incorrect.”); Ex. 1012 at 55 (“The
`
`Court also agrees with Defendants that a user could ‘selectively’ transmit or
`
`display a single image and is not limited to selecting an image from a group of two
`
`or more.”). The district court’s construction, “selecting at least one digitized
`
`framed image retained in memory and [transmitting/displaying] that selection” is
`
`indisputably broader, as Dr. Melendez agreed (Ex. 1013 at 117:11-15), and in my
`
`opinion are both more consistent with the understanding of one of ordinary skill in
`
`the art and more reasonable than Patent Owner’s construction. See Ex. 1012 at 56.
`
`16.
`
` Furthermore, Patent Owner’s Response implies that the invention
`
`claimed in the ’871 patent would not function unless it had more than a single
`
`image in memory. But it would have been clear to a person of ordinary skill in the
`
`art, at least from the aforementioned portion of the specification, that the device
`
`claimed in the ’871 patent can function taking a single image, storing that single
`7
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`
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`image in memory, and selectively displaying and transmitting that single image
`
`instead of a plurality of images.
`
`17.
`
` This is consistent with my prior declaration, submitted on
`
`December 10, 2014 (Ex. 1008), which explains how the ability of a user to
`
`“selectively display an image” would satisfy this limitation. Id. at ¶¶ 46, 50, 91,
`
`117.
`
`B.
`
`“Alphanumeric Signals” Are “Characters Consisting Of Letters
`And/Or Digits”
`18. Claims 1, 6, and 12 contain limitations involving input, display, and
`
`transmission of “alphanumeric signals.” Specifically, claim 1 states “alphanumeric
`
`input keys . . . for permitting manually input digitized alphanumeric signals . . .
`
`the telephonic system further used for sending the digitized alphanumeric signals”;
`
`claim 6 requires “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”; claim 12 requires “a set of input keys . .
`
`. to permit alphanumeric signals to be manually input . . . the alphanumeric signals
`
`being presented in the display for viewing by the operator.”
`
`19. The ’871 patent does not define the term “alphanumeric” or
`
`“alphanumeric signals.”
`
`8
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`

`
`20.
`
`“Alphanumeric signals” in claims 1, 6, and 12, under its broadest
`
`
`
`reasonable interpretation and as a person of ordinary skill in the art would
`
`understand, would be met by signals which are “characters consisting of letters
`
`and/or digits.”
`
`21.
`
`I understand that Patent Owner has already stipulated in the district
`
`court that “alphanumeric” should be construed as “characters consisting of letters
`
`and/or digits,” and the district court adopted this construction. Ex. 1012 at 9.
`
`22.
`
`Indeed, the American Standard Code for Information Interchange
`
`(“ASCII”) was the standard way of digitally representing letters, numbers, and/or
`
`symbols in code, and was the most common way of representing characters on the
`
`Internet until 2007. This is a 7-bit code, with 128 character options, and it would
`
`have been the likely choice by a skilled artisan to represent human readable
`
`characters on a computer device. This ASCII character code would have been
`
`used to represent a number, letter, or a symbol during that time.
`
`23. Dictionaries define “alphanumeric” broadly: “consisting of letters or
`
`digits, or both, and sometimes including control characters, space characters, and
`
`other special characters” (Ex. 1015 at 3, Microsoft Press Computer Dictionary (3d
`
`Ed., 1997)); “Alphanumeric character”: “Any letter of the English alphabet, upper
`
`or lower case, or any of the decimal digits, 0 to 9,” (Ex. 1016 at 3, Oxford
`9
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`

`
`
`
`Dictionary of Computing, (4th Ed., 1996)). The very dictionary definition of
`
`“alphanumeric” relied on by Patent Owner similarly defines “alphanumeric” as
`
`“being a character in an alphanumeric system.” Ex. 2009.
`
`24. A person of ordinary skill in the art would understand that “a
`
`character,” as in this definition in Ex. 2009, cannot be both a letter and a number; it
`
`can be either a letter or a number. Further, each letter and number would have a
`
`unique code designation, such as in the ASCII code set. In addition, the same
`
`skilled artisan would also know that two or more such coded characters, make up
`
`“alphanumeric signals,” and can thus be two or more numbers, two or more letters,
`
`or some combination of letters and numbers. See Ex. 2009. “Alphanumeric
`
`signals” requires two such characters because it is used in the claim in plural form.
`
`25. Patent Owner has not explicitly proposed a construction for
`
`“alphanumeric signals,” which appears in claims 1, 6, and 12. Dr. Melendez
`
`proposes that “alphanumeric signals” narrowly means “consisting of both letters
`
`and numbers and often other symbols.” Ex. 2003 at ¶ 31; see Resp. at 26. Patent
`
`Owner appears to be seeking a construction that excludes a numeric phone number
`
`from its construction of “alphanumeric signals.” See Ex. 1013 at 126:25-127:8,
`
`129:13-130:10. But as previously mentioned, this is not the broadest reasonable
`
`construction of “alphanumeric signals.”
`
`10
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`

`
`26. Though Patent Owner cites Merriam-Webster’s online dictionary
`
`
`
`definition of “alphanumeric” to argue that “alphanumeric” must consist of “both
`
`letters and numbers,” Patent Owner neglects to cite to the latter portion of the same
`
`definition, previously mentioned, that defines “a character in an alphanumeric
`
`system” as also being “alphanumeric.” Ex. 2009. This is consistent with the
`
`understanding a person of ordinary skill in the art would apply to “alphanumeric
`
`signals” and the previous construction agreed to by Patent Owner and adopted by
`
`the district court.
`
`27. Patent Owner and Dr. Melendez add additional limitations to
`
`“alphanumeric signals.” Specifically, Patent Owner asks the Board to narrowly
`
`construe the “alphanumeric signals” terms to require that the “alphanumeric
`
`signals” (1) be sent “to a compatible remote receiving station” (Resp. at 27-28) (2)
`
`“along with digital image and/or audio signals” (id. at 28); and (3) in a manner that
`
`permits “the receiving end user to view the inputted phone number or text
`
`message” (id. at 29). There is no support in the claims or in the specification for
`
`these limitations.
`
`28. Patent Owner’s added limitation that the alphanumeric signals be sent
`
`“to a remote compatible receiving station” is not a limitation of the claims. Claim
`
`12 does not mention transmission of alphanumeric signals. Resp. at 26-27; Ex.
`11
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`

`
`
`
`1013 at 130:11-131:14; Ex. 2003 at ¶ 61. Claim 6, as Dr. Melendez also admits,
`
`does not require transmission of alphanumeric signals “to a remote compatible
`
`receiving station”—and I agree. Ex. 1013 at 140:12-141:1 (“[I]t doesn’t require it
`
`to go to a compatible remote receiving station[.]”). As for Claim 1, it only states
`
`“a wireless communications device adapted for transmitting any of the digitized
`
`signals to the compatible remote receiving station.” It does not say “alphanumeric
`
`signals.” A person of ordinary skill in the art, applying the broadest reasonable
`
`construction, would understand that “transmitting any of the digitized signals” is
`
`not equivalent to “transmitting all of the digitized signals.” Instead, the broadest
`
`reasonable interpretation of “any” in this circumstance is akin to “one” or “some,”
`
`and is not limited to “each of the members of a set,” a much narrower
`
`interpretation, as argued by Dr. Melendez. See Ex. 1013 at 82:14-17. In other
`
`words, as long as one or some of the digitized signals (such as the digitized image
`
`frame) is transmitted to the compatible remote receiving station, this claim
`
`limitation is met.
`
`29. Dictionaries, consistent with the understanding of a skilled artisan,
`
`define “any” as its primary definition as synonymous with “one” or “some”: “1.
`
`one or some indiscriminately of whatever kind”; “2. one, some, or all
`
`indiscriminately of whatever quantity.” Ex. 1017 at 3, Webster’s New Collegiate
`12
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`

`
`
`
`Dictionary (1979) (emphases added). While some definitions may mention “all” or
`
`“every,” the broadest, reasonable interpretation of “any,” consistent with the
`
`understanding of one skilled in the art, is “one” or “some.”
`
`30. The claims also do not require, as Patent Owner argues, transmission
`
`of the alphanumeric signal along with a digital image/audio signal in a manner that
`
`permits the end user to view that alphanumeric signal. Nothing in the specification
`
`supports such a narrow interpretation, and Patent Owner’s cited portion of the
`
`specification falls squarely within the description of a single preferred embodiment
`
`and does not mention “alphanumeric signals” at all. See ’871 patent at 4:58-5:2.
`
`31. Even if claim 1 requires transmission to a “remote receiving station,”
`
`that transmission is not limited to an “end user,” as Patent Owner argues. I agree
`
`with Dr. Melendez that a “remote receiving station” is simply a “station that was
`
`accessible from a communications standpoint over whatever network it is that’s
`
`providing that access” and “could include a server.” Ex. 1013 at 142:6-14; ’871
`
`patent at 2:42-43, 13:7-9, 13:21-23 (“remote receiving devices such as . . . network
`
`servers.”).
`
`32. This is consistent with my prior declaration (Ex. 1008), which
`
`explains how the “dialing controls” in McNelley are “conventional alphanumeric
`
`keypad buttons with which a [person of ordinary skill in the art] would have been
`13
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`
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`well familiar with at the time the ’871 patent was filed.” Id. at ¶ 55. This opinion
`
`is also consistent with the portion of my former declaration, in which I express the
`
`opinion
`
`that
`
`the LCD
`
`touch keypad disclosed
`
`in Umezawa consists of
`
`“alphanumeric input keys.” Id. at ¶ 57.
`
`C. The Claims Do Not Require An “Integrated Housing”
`33.
`I understand that neither Patent Owner nor Dr. Melendez has
`
`proposed an explicit construction of any term that requires an “integrated housing.”
`
`But both Patent Owner and Dr. Melendez, while presenting slightly different
`
`arguments for different claims, urge the Board to find that the claims require that
`
`the device disclosed in claims 1, 6, and 12 of the ’871 patent be contained in “a
`
`singular, integrated housing.”
`
`34.
`
`I note that the term “integrated housing” does not appear anywhere in
`
`the claims of the ’871 patent. Indeed, nothing in the claims, the specification, or
`
`the file history suggests that the inventors intended the alleged invention of the
`
`’871 patent to be limited to an “integrated housing.” To the contrary, the
`
`specification describes “a modular configuration wherein any or all of the devices
`
`can exist as integrated or independent units.” ’871 patent at 1:33-36.
`
`35. Patent Owner purports to base this requirement on the preamble to
`
`claim 1—a “handheld self-contained cellular telephone and integrated image
`14
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`
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`processing system”—and the following limitations: “manually portable housing,”
`
`“an integral image capture device … contained within the portable housing” and “a
`
`telephonic system in the housing.” Resp. at 21-24. Reading these limitations
`
`together, along with a selected discussion of Fig. 7A in the specification, Patent
`
`Owner extracts a requirement that claims 1, 6, and 12 require “a singular,
`
`integrated housing.” Id. at 21. Patent Owner provides no support in the claim
`
`language of claim 6 or 12 for this limitation.
`
`36.
`
`Inconsistently, Dr. Melendez relies solely on the preamble for claim 1
`
`and adds the preamble for claim 6. Dr. Melendez does not point to the limitations
`
`in the body of claim 1 and provides no argument regarding an “integrated housing”
`
`in claim 12. Ex. 2003 at ¶ 69; Ex. 1013 at 144:24-145:1.
`
`37. Patent Owner is incorrect because claims 1, 6, and 12, under their
`
`broadest reasonable interpretation, would be met by a modular configuration where
`
`the various components are independent units physically connected together.
`
`38. Claims 1 and 6 only require a “manually portable housing,” while
`
`claim 12 simply requires “a housing”—there is no mention of the level of
`
`integration. Read in the context of the specification, these claim terms would not
`
`have been understood by a person of ordinary skill in the art to require a “singular,
`
`integrated housing.” The preamble does not provide an antecedent basis for these
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`terms and adds no essential structure, life, meaning, or vitality to the housing
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`limitations.
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`39. Patent Owner argues that the following terms find their antecedent
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`basis in the preamble of claim 1: “compatible remote receiving station” and
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`“wireless telephone network” of claim 1 supposedly find their antecedent basis in
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`the preamble. Resp. at 23. Dr. Melendez adds that the following “cellular
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`telephone network” finds its antecedent basis in the preamble of claim 6. Ex. 2003
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`at ¶ 69; Ex. 1013 at 144:24-145:1.
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`40. Neither “compatible
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`remote
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`receiving station” and “wireless
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`telephone network” of claim 1 nor “cellular telephone network” in claim 6 has
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`anything to do with whether or not the housing is “singular” or “integrated.”
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`41. Furthermore,
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`the
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`’871 patent specification clearly envisions
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`embodiments which are modular instead of integrated in nature. As noted above,
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`the specification describes “a modular configuration wherein any or all of the
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`devices can exist as integrated or independent units.” ’871 patent at 1:33-36. Fig.
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`6B, for example, illustrates the alleged invention operating in separate, non-
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`integrated housings, as Patent Owner’s expert admits. ’871 patent at Fig. 6B, 4:43-
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`45; Ex. 1013 at 146:8-147:10
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`16
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`

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`
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`42. Claims 1, 6, and 12 require a “memory associated with the processor,”
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`and that processor must be “in the housing.” While the Patent Owner might point
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`to Fig. 7A, even that figure demonstrates the ability for the memory to be removed
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`from the “integrated housing,” making the memory a modular component of the
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`alleged invention. ’871 patent at Fig. 7A.
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`17
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`

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`
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`43. And claims 1 and 6 require, in turn, “an integral image capture device
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`comprising an electronic camera contained within the portable housing” and an
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`“integrated electronic camera.” But Fig. 7B shows the camera lens removed from
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`the housing, making a basic component of the camera also a modular component
`
`of the alleged invention. ’871 patent at Fig. 7B. Indeed, this is a standard feature
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`of a digital single-lens reflex (DSLR) camera, having a modular nature which
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`permits the user to incorporate any number of compatible lens (modules) to
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`enhance the photographic options available to the user.
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`18
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`

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`
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`Thus every embodiment is modular and not in a “singular, integrated housing.”
`
`D. The Claims Require Transmission Of A “Non-Audio Digital
`Signal,” Such As The “Digitized Frame Image,” Not The Use Of A
`“Non-Audio Digital Signal” For Transmission
`44. Patent Owner has argued that the Board read certain language in claim
`
`12, “the wireless telephone being selectively operable to transmit and receive non-
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`audio digital signals, the non-audio digital signals including a selected digitized
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`framed image…” to require “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.” Resp.
`
`at 13-14. Patent Owner is incorrect.
`
`45. Claim 12 identifies a digital image as one type of “non-audio digital
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`signal” by reciting “the non-audio digital signals including a selected digitized
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`framed image” (emphasis added) (see also Ex. 1008 at ¶¶ 121-124). Claim 12
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`19
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`

`
`
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`directly contrasts “audio signals” with “non-audio signals” based on the content of
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`the data (e.g., speech versus images), not how it is transmitted. In other words, the
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`digitized frame image transmitted is a type of non-audio digital signal.
`
`46. Claim 12 describes two types of signals: “audio” and “non-audio”
`
`signals:
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`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[.]
`
`’871 patent, cl. 12, limitation (e) (underlining added). The distinction made
`
`between audio and non-audio signals has nothing to do with their mode of
`
`transmission, but instead clearly relates to the content of the signals: audio versus
`
`non-audio (e.g., an image signal). Audio signals are converted “into acoustic
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`audio,” while non-audio signals include “a selected digitized framed image,”
`
`which is converted into a visible image. This is consistent with the understanding
`
`a person of ordinary skill in the art would have had at the time of the filing of the
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`’871 patent.
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`20
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`

`
`47. The broadest reasonable interpretation of the term “non-audio digital
`
`
`
`signals,” as understood by a person of ordinary skill in the art, refers to content of
`
`the transmitted signals, such as digitized framed images, and not to any particular
`
`manner of transmission. Specifically, a “non-audio digital signal,” as understood
`
`by a person of ordinary skill in the art, would be a digital signal of an input that is
`
`not audio. An example of a digital signal of an input that is not audio is a digitized
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`signal of an image. Thus, a digital image signal is a “non-audio image signal,”
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`consistent with the claim limitation that “the non-audio digital signals including a
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`selected digitized framed image” in claim 12. Ex. 1013 at 155:1-8 (agreeing that
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`an image is “not audio” and a digitized signal “is digital”).
`
`48. Furthermore, the ’871 patent specification describes no manner for
`
`using “non-audio digital signals,” as Patent Owner and Dr. Melendez urge, as the
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`media for transmission and reception. Instead, each and every embodiment
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`discloses transmitting digitized image data using Group-III facsimile and modems,
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`including the systems that are shown in Figs. 1 to 5 of the specification. See ’871
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`Patent at 2:13-17, 2:33-50, 5:2-28, 5:29-59, 6:15-45, 7:3-48, 8:53-65, 9:17-30,
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`9:46-55, 10:5-25, 10:61-67. Both means of transmission were conducted via
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`standard telephone “audio signals” according to Dr. Melendez, who admitted that
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`facsimile and dial-up modem transmissions are “audio signals.” See Ex. 1013 at
`21
`
`

`
`
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`151:4-15. If the term “audio signals” was meant to refer to the form of
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`transmission rather than the input to the digitization process as Patent Owner
`
`suggests, that interpretation would exclude the majority of the embodiments in the
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`specification.
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`49. And, if the audio/non-audio terms were meant to refer to the
`
`transmission media, such an interpretation would present additional problems
`
`because the line between “audio” and “non-audio digital signals” proposed by
`
`Patent Owner is unclear at best. Patent Owner argues that “conventional cellular
`
`technology” used “audio signals” to transmit images. Resp. at 15. But Patent
`
`Owner’s expert admitted that those conventional cellular technologies could also
`
`transmit “non-audio signals” in 1998. Ex. 1013 at 156:20-23. Patent Owner’s
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`expert opined that an “audio signal” was “signal types that the network
`
`understands to be audio.” Id. at 150:19-22. But Patent Owner’s expert also
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`testified that the line between “audio” and “non-audio” was whether the signal is
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`“capable of being heard” such that when hooked up