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
`_____________________
`
`PETITIONER’S REPLY
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`1 IPR2015-01366 has been joined with IPR2015-00412.
`
`
`
`

`
`
`
`I.
`II.
`
`TABLE OF CONTENTS
`
`Page
`INTRODUCTION ........................................................................................... 1
`CLAIM CONSTRUCTION ............................................................................ 2
`A.
`“Selectively” Displaying And Transmitting The Digitized
`Frame Image Means “Selecting At Least One Digitized Frame
`Image” (Claims 1, 6, 12) ....................................................................... 2
`“Alphanumeric Signals” Are “Characters Consisting Of Letters
`And/Or Digits” (Claims 1, 6, 12) .......................................................... 4
`There Is No “Integrated Housing” Limitation (Claims 1, 6, 12) .......... 8
`“Non-Audio Digital Signal” Is The Digitized Frame Image, Not
`The Transmission Protocol (Claim 12) ................................................. 9
`III. ARGUMENT ................................................................................................. 12
`A. McNelley And Umezawa Both Selectively Display And
`Transmit An Image (Claims 1, 6, 12) ................................................. 12
`B. McNelley And Umezawa Both Disclose “Alphanumeric
`Signals” (Claims 1, 6, 12) ................................................................... 15
`C. McNelley Discloses “A Portable Housing” And “A Handheld
`Housing” That Is “Self-Contained” (Claims 1, 6, 12) ........................ 18
`D. McNelley And Umezawa Both Teach Or Suggest Non-Audio
`Digital Image Signals (Claim 12)........................................................ 19
`Placing The “Display Window For Viewing The Alphanumeric
`Signals … Within The Display Window For Framing The
`Visual Image” Was An Obvious Design Choice (Claim 7) ................ 20
`The Petition Provided Explicit Motivations To Combine
`McNelley And Umezawa .................................................................... 22
`The Petition Properly Identified A Single Ground Of
`Obviousness ......................................................................................... 23
`Patent Owner’s Expert Profits From Lawsuits Against
`Petitioners ............................................................................................ 23
`McNelley And Umezawa Disclose All Elements Of Claims 1–8
`And 1–14 ............................................................................................. 23
`IV. CONCLUSION .............................................................................................. 25
`
`B.
`
`C.
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`I.
`
`
`
`
`
`
`i
`
`

`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Amazon.com, Inc. v. Barnesandnoble.com, Inc.,
`239 F.3d 1343 (Fed. Cir. 2001) ....................................................................... 6
`Epos Techs. Ltd. v. Pegasus Techs. Ltd.,
`766 F.3d 1338 (Fed. Cir. 2014) ................................................................ 9, 11
`In re O’Farrell,
`853 F.2d 894 (Fed. Cir. 1988) ....................................................................... 23
`In re Seid,
`161 F.2d 229 (CCPA 1947) ........................................................................... 19
`Laryngeal Mask Co. v. Ambu,
`618 F.3d 1367 (Fed. Cir. 2010) ....................................................................... 3
`Liebel-Flarsheim Co. v. Medrad, Inc.,
`358 F.3d 898 (Fed. Cir. 2004) ......................................................................... 7
`Nissan N. Am., Inc. v. Bd. of Regents, Univ. of Tex. Sys.,
`IPR2012-00037, Paper 24 (P.T.A.B. Mar. 19, 2013) ..................................3, 5
`Symantec Corp. v. Computer Assocs. Int’l, Inc.,
`522 F.3d 1279 (Fed. Cir. 2008) ....................................................................... 8
`TomTom, Inc. v. Adolph,
`790 F.3d 1315 (Fed. Cir. 2015) ....................................................................... 9
`Transclean Corp. v. Jiffy Lube Int’l, Inc.,
`474 F.3d 1298 (Fed. Cir. 2007) ....................................................................... 6
`
`
`
`
`ii
`
`

`
`
`
`Exhibit Number
`1001
`1002
`
`1003
`1004
`
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`
`1012
`
`1013
`1014
`1015
`1016
`1017
`1018
`
`1019
`
`1020
`
`1021
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`LIST OF EXHIBITS
`
`Document
`U.S. Patent No. 7,365,871 (“the ’871 patent”)
`Affidavit of David A. Monroe Under 37 C.F.R. § 1.131
`(from the file history of the ‘871 patent)
`Office Action dated 9/27/2004 (from the ’871 file history)
`Response dated 1/6/2005 to Office Action dated 9/27/2004
`(from the ’871 file history))
`Office Action dated 8/9/2005 (from the ’871 file history)
`U.S. Patent No. 5, 550,754 (“McNelley”)
`U.S. Patent No. 5, 491,507 (“Umezawa”)
`Declaration of Steven Sasson
`U.S. Patent No. 5,517,683 (“Collett”)
`Number Pad Diagram
`Decision on Request for Rehearing, IPR2015-00413, Paper
`16 (P.T.A.B. Aug. 31, 2015)
`Memorandum Opinion and Order, No. 2:13-cv-01061 (Mar.
`25, 2015) (D.I. 334)
`Deposition of Jose Melendez (Sept. 28, 2015)
`Reply Declaration of Steven Sasson
`Microsoft Press Computer Dictionary (3d Ed. 1997)
`Oxford Dictionary of Computing (4th Ed. 1996)
`Webster’s New Collegiate Dictionary (1979)
`Complaint, Tierra Intelectual Borinquen, Inc. v. ZTE Corp..
`No. 2:13-cv-00048 (E.D. Tex.)
`Complaint, Steelhead Licensing LLC v. Apple Inc., No. 1:13-
`cv-00033 (D. Del.)
`Complaint, Steelhead Licensing LLC v. ZTE Corp., No. 1:13-
`cv-00047 (D. Del.).
`Patent Assignment Record, FTE Exchange
`Complaint, Garnet Digital, LLC v. Apple Inc., No. 6:11-cv-
`00647 (E.D. Tex.).
`Complaint, Sapphire Dolphin LLC v. Beats Electronics LLC,
`No. 1:14-cv-00190 (D. Del.)
`Declaration of Dr. Jose Melendez, E-Watch Inc. v. Apple,
`Inc., No. 2:13-cv-01061 (E.D. Tex.) (Dkt. 256-1)
`Agreement Between FTE Exchange LLC and Tierra
`Intelectual Borinquen Inc. (USPTO Reel/Frame 29535-469)
`Agreement Between FTE Exchange LLC and Steel Head
`iii
`
`

`
`1027
`
`1028
`
`Licensing LLC (USPTO Reel/Frame 29609-288)
`Agreement Between FTE Exchange and Garnet Digital LLC
`(USPTO Reel/Frame 27102-329)
`Agreement Between FTE Exchange and Sapphire Dolphin
`LLC (USPTO Reel/Frame 31986-612)
`
`
`
`
`
`
`
`iv
`
`

`
`
`
`
`
`Shorthand
`’817 patent
`BRI
`Petition or Pet.
`Decision
`PO
`POSA
`Response or Resp.
`
`GLOSSARY OF ABBREVIATIONS
`
`
`Description
`U.S. Patent No. 7,365,871
`Broadest Reasonable Interpretation
`Petition, IPR2015-00412, Paper 2
`Institution Decision, IPR2015-00412, Paper 12
`Patent Owner
`Person of Ordinary Skill In The Art
`Patent Owner Response, IPR2015-00412, Paper 19
`
`v
`
`

`
`
`
`I.
`
`INTRODUCTION
`
`The record demonstrates that the Board’s institution decision granting
`
`review of claims 1–8 and 12–14 of the ’871 patent in view of McNelley and
`
`Umezawa was correct and should be upheld on final review. In an effort to
`
`distinguish the combination of McNelley and Umezawa, Patent Owner argues for
`
`overly-narrow claim construction positions contradicted by the intrinsic record.
`
`Specifically, PO argues (1) that “selectively displaying” and “selectively
`
`transmitting” digitized frame images (cls. 1, 6, 12) requires selecting “from among
`
`a plurality of digitized framed images that are within memory,” a position already
`
`rejected by the district court and inconsistent with the specification; (2) that
`
`“alphanumeric signals” (cls. 1, 6, 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” despite previously seeking a broader interpretation,
`
`supported by the intrinsic record, in the district court; (3) that the preamble of
`
`claim 1 warrants reading an “integrated housing” limitation not only into claim 1
`
`but also inexplicably into claims 6 and 12 despite those claims not requiring any
`
`such limitation; and (4) that “non-audio digital signals including a selected
`
`digitized framed image” (cl. 12) is not simply a digital, non-audio signal (like a
`
`digital image), but refers to some undisclosed “non-audio digital” protocol.
`
`
`
` 1
`
`

`
`
`
`PO also challenges, with little explanation, the simple design choice to place
`
`a “display window for viewing alphanumeric signals” either inside or outside “the
`
`display window for framing the visual image” (cl. 7). But both McNelley and
`
`Umezawa disclose that exact functionality. Finally, while PO also argues that the
`
`motivations to combine McNelley and Umezawa were conclusory that position is
`
`belied by even a cursory reading of the Petition.
`
`II. CLAIM CONSTRUCTION
`A.
`“Selectively” Displaying And Transmitting The Digitized Frame
`Image Means “Selecting At Least One Digitized Frame Image”
`(Claims 1, 6, 12)
`
`PO argues, incorrectly, that the “selecting” limitations require selecting an
`
`image “from among a plurality of digitized framed images that are within
`
`memory.” Resp. 8-10. But claims 1, 6, and 12 encompass selection of at least one
`
`image for display or transmission. The claims refer to selecting an image in only
`
`singular terms: “accessible for selectively displaying … and accessible for
`
`selectively transmitting … the digitized framed image” (cl. 1, 6); “select the image
`
`data signal for viewing and transmission” (cl. 1); “selectively display the digitized
`
`framed image … and subsequently transmit the digitized framed image” (cl. 6);
`
`“for selectively displaying … and for selectively transmitting … the digitized
`
`frame image” (cl. 12); and “a selected digitized framed image” (cl. 12). No
`
`limitation in claims 1, 6, 7, or 12 describes or contemplates selecting from a group
`
`2
`
`

`
`
`
`of multiple, previously stored images. See Laryngeal Mask Co. v. Ambu, 618 F.3d
`
`1367, 1371 (Fed. Cir. 2010) (it is “improper to add a … limitation to the claims at
`
`issue where none appears”).
`
`The Board and the district court have already rejected e-Watch’s narrow
`
`reading of the selection terms. Ex. 1011 at 2 (rejecting the argument that the Board
`
`had interpreted the selecting as requiring “a selection from two or more images.”);
`
`Ex. 1012 at 55 (selective display and transmission “is not limited to selecting an
`
`image from a group of two or more.”). Instead, the district court adopted a
`
`broader, more reasonable construction: “selecting at least one digitized framed
`
`image retained in memory and [transmitting/displaying] that selection.” Ex. 1012
`
`at 56 (emphasis added). The BRI of these limitations should be at least as broad as
`
`the district court’s construction. See, e.g., Nissan N. Am., Inc. v. Bd. of Regents, U.
`
`of Tex. Sys., IPR2012-00037, Paper 24 at 5-7 (P.T.A.B. Mar. 19, 2013) (adopting
`
`district court constructions as BRI).
`
`While PO cites two statements from the specification that describe storing
`
`multiple images before selection, neither statement precludes selecting “at least
`
`one” image. See, e.g., Resp. 5, 9 (citing ’871 patent at 6:34-43). And the second
`
`statement PO cites from the specification even discloses a single image
`
`embodiment: “Two generic configurations are shown and described; the first
`
`where each image is transmitted as it is captured….” Resp. 8-9 (citing ’871
`
`3
`
`

`
`
`
`patent at 5:6-10) (emphasis added).
`
`PO’s citation to the prosecution history does not compel a different result.
`
`See Resp. 5-6. Specifically, PO cites a discussion in which it distinguished the
`
`claims from another prior art reference, Ida. But Ida was distinguished not because
`
`it failed to show “selection” from among multiple images, but because Ida was
`
`unable to display a single image stored in memory: “A ‘photograph’ stored in
`
`memory section 24 can only be transmitted to a remote station; it cannot be
`
`displayed on the user display 12.” Ex. 2005 at 60-61. Reviewing this exact record,
`
`the district court already determined that “[t]he patentee did not argue [during
`
`prosecution] that selecting an image from a group of two or more was a
`
`distinguishing feature.” Ex. 1012 at 55.
`
`PO’s expert agrees that selecting “at least one or more” is broader than
`
`selecting “from among a plurality.” Ex. 1013 at 117:11-15. “Selecting at least one
`
`digitized framed image” for display/transmission is also more reasonable and thus
`
`should be adopted by the Board. Ex. 1014 ¶¶ 12-17; Ex. 1012 at 55-56.
`
`B.
`
`“Alphanumeric Signals” Are “Characters Consisting Of Letters
`And/Or Digits” (Claims 1, 6, 12)
`
`The
`
`claims
`
`require
`
`combinations of
`
`input
`
`(cls. 1, 6, 12),
`
`sending/transmission (cls. 1, 6), and display (cls. 6, 12) of “alphanumeric signals.”
`
`Specifically, claim 1 states “alphanumeric input keys … for permitting manually
`
`input digitized alphanumeric signals … the telephonic system further used for
`
`4
`
`

`
`
`
`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.” The ’871 patent, however,
`
`does not define the term “alphanumeric.”
`
`The BRI of “alphanumeric” is “characters consisting of letters and/or digits,”
`
`as PO previously stipulated to in the district court. Ex. 1014 at¶¶ 18-32; Ex. 1012
`
`at 9. The very dictionary definition of “alphanumeric” relied on by PO similarly
`
`defines “alphanumeric” as “being a character in an alphanumeric system.” Ex.
`
`2009. Other 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); “[a]ny letter of the English alphabet,
`
`upper or lower case, or any of the decimal digits, 0 to 9” (Ex. 1016 at 3).
`
`But now that the invalidity of its claims is at issue, PO seeks a narrower
`
`construction of “alphanumeric signals” in an effort to exclude a numeric “phone
`
`number.”
`
` Ex. 1013 at 126:25-127:8, 129:13-130:10.
`
` But the BRI of
`
`“alphanumeric signals” should be at least as broad as the district court’s
`
`construction, see Nissan N. Am., Inc., IPR2012-00037, Paper 24 at 5-7, and PO
`
`5
`
`

`
`
`
`cannot argue for a narrower interpretation to avoid invalidity when it previously
`
`stipulated to a broader construction in the infringement litigation. See Transclean
`
`Corp. v. Jiffy Lube Int’l, Inc., 474 F.3d 1298, 1307 (Fed. Cir. 2007) (judicial
`
`estoppel bars party “from asserting clearly inconsistent positions on claim
`
`construction”); Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343,
`
`1351 (Fed. Cir. 2001) (“A patent may not, like a ‘nose of wax,’ be twisted one way
`
`to avoid anticipation and another to find infringement.”).
`
`PO also asks requests the Board require that the “alphanumeric signals” (1)
`
`be sent “to a compatible remote receiving station” (Resp. 28) (2) “along with
`
`digital image and/or audio signals” (Resp. 28) (3) in a manner that permits “the
`
`receiving end user to view the inputted phone number or text message” (Resp. 29).
`
`But transmission of “alphanumeric signals” “to a remote compatible
`
`receiving station” is not an express limitation of any instituted claim. Claim 12
`
`does not mention transmission of alphanumeric signals. See Resp. 26; Ex. 1013 at
`
`130:11-131:14; Ex. 2003 at 61. Claim 6, as PO’s expert admits, does not require
`
`transmission of alphanumeric signals “to a remote compatible receiving station.”
`
`Ex. 1013 at 140:12-141:1 (“[I]t doesn’t require it to go to a compatible remote
`
`receiving station.”). Claim 1 recites “a wireless communications device adapted
`
`for transmitting any of the digitized signals to the compatible remote receiving
`
`station,” but does not say “alphanumeric signals” are sent to that remote receiving
`
`6
`
`

`
`
`
`station or even that “all” digitized signals are sent—it merely says “any.” PO’s
`
`expert agreed that “any” does not mean “all.” Ex. 1013 at 82:14-17. But the BRI
`
`of “any” does not mean “each of the members of a set” as argued by PO’s expert
`
`(id.), but rather “one” or “some.” Ex. 1017 at 3 (“1. one or some indiscriminately
`
`of whatever kind”; “2. one, some, or all indiscriminately of whatever quantity”);
`
`(emphases added). Ex. 1014 ¶ 29. If one or some of the digitized signals are
`
`transmitted to the compatible remote receiving station, this claim limitation is met.
`
`The claims also do not require, as PO argues, transmission of the
`
`alphanumeric signal “along with a digital image and/or audio signals” “in a manner
`
`that permits the end user to view the [alphanumeric signal].” See Resp. 28-29.
`
`PO’s only support for this limitation is a single description of a preferred
`
`embodiment that does not even mention “alphanumeric signals.” Resp. 27 (citing
`
`’871 patent at 4:58-5:2). PO thus asks the Board to improperly “read limitations
`
`from a preferred embodiment … into the claims[.]” Liebel-Flarsheim Co. v.
`
`Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004).
`
`Even if claim 1 requires transmission to a “remote receiving station,” that
`
`transmission is not limited to an “end user,” as PO argues. See Resp. 29. As PO’s
`
`expert admitted, the “remote receiving station” is a “station that was accessible
`
`from a communications standpoint over whatever network it is that’s providing
`
`that access” and “could include a server”—it does not have to be an “end user.”
`
`7
`
`

`
`
`
`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.”); Ex. 1014 ¶¶ 30-32.
`
`C. There Is No “Integrated Housing” Limitation (Claims 1, 6, 12)
`The term “integrated housing” does not appear in the instituted claims of the
`
`’871 patent. PO, without discussing claims 6 and 12, argues that an “integrated
`
`housing limitation” exists in claims 1, 6, and 12 based on the preamble and
`
`selected limitations from claim 1: a “handheld self-contained cellular telephone
`
`and integrated image processing system”; “an integral image capture device …
`
`contained within the portable housing”; and “a telephonic system in the housing.”
`
`Resp. 21-24. PO then extracts a requirement that claims 1, 6, and 12 require “a
`
`singular, integrated housing.” Resp. 21. The claims are not so narrow.
`
`The cited portions of the preamble of claims 1, 6, and 12 are not limiting
`
`under a BRI approach because those portions do not “recite essential structure or
`
`steps” nor are they necessary “to give life, meaning, and vitality to the claim[s].”
`
`Symantec Corp. v. Computer Assocs. Int’l, Inc., 522 F.3d 1279, 1288 (Fed. Cir.
`
`2008). The “housing” limitation only appears in the body of the claim language:
`
`“a manually portable housing” (cls. 1, 6) and “a handheld housing” (cl. 12). And
`
`PO has not argued that the preamble provides essential structure, life, meaning, or
`
`vitality to those “housing” recitations.
`
`Instead, PO argues that other limitations in claim 1 find their antecedent
`
`8
`
`

`
`
`
`basis in the preamble, and thus, the entire preamble must be found to be limiting.2
`
`Resp. 23 (“compatible remote receiving station”; “wireless telephone network”).
`
`This is legally incorrect. A preamble is not limiting for all purposes simply
`
`because part of the preamble provides necessary structure for a claim element. See
`
`TomTom, Inc. v. Adolph, 790 F.3d 1315, 1322-24 (Fed. Cir. 2015). These hooks
`
`into the preamble have nothing to do with an “integrated housing.”
`
`Finally, claims 1, 6, and 12 cannot require an “integrated housing” because
`
`that requires a construction that “excludes a preferred embodiment,” which “is
`
`rarely, if ever correct.” Epos Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338,
`
`1347 (Fed. Cir. 2014). 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. Fig. 6B illustrates the alleged invention in separate, non-
`
`integrated housings, as PO’s expert admits. ’871 patent at 10:36-48; Ex. 1013 at
`
`146:8-147:10; Ex. 1008 ¶¶ 25-26; Ex. 1014 ¶¶ 33-43.
`
`D.
`
`“Non-Audio Digital Signal” Is The Digitized Frame Image, Not
`The Transmission Protocol (Claim 12)
`
`Claim 12 identifies a digital image as one type of “non-audio digital signal”
`
`
`2 While not argued by PO, and thus waived, PO’s expert adds that the antecedent
`
`basis for “cellular telephone network” is in the preamble to claim 6. Ex. 2003 ¶ 69.
`
`9
`
`

`
`
`
`by reciting “the non-audio digital signals including a selected digitized framed
`
`image.” Claim 12 directly contrasts “audio signals” with “non-audio signals” based
`
`on the content of the data (e.g., “acoustic audio” versus “digitized frame image”),
`
`not how it is transmitted. Ex. 1014 ¶¶ 44-53. A “non-audio digital signal” is a
`
`digital signal that is not audio (such as a digitized image). Id. PO’s expert
`
`admitted as much. Ex. 1013 at 155:1-8. In other words, the digitized frame image
`
`is a non-audio digital signal. Ex. 1014 ¶¶ 44-53.
`
`Nevertheless, PO argues that claim 12 requires transmission using a “non-
`
`audio digital signal” protocol. PO’s proposed construction, however, blurs the
`
`difference between “audio” and “non-audio digital signals.” PO argues that
`
`“conventional cellular technology” used “audio signals” to transmit images. Resp.
`
`15. But PO’s expert admitted that those conventional cellular technologies
`
`transmitted “non-audio signals” in 1998. Ex. 1013 at 156:20-23. At one point,
`
`PO’s expert testified that an “audio signal” was “signal types that the network
`
`understands to be audio.” Ex. 1013 at 150:19-22. But he primarily testified that
`
`the line between “audio” and “non-audio” was whether the signal is “capable of
`
`being heard” such that when hooked up “to a speaker, for example, you would hear
`
`it,” like the “squawks of listening to a dial-up connection.” Ex. 1013 at 79:19-25,
`
`80:14-23, 151:12-20; Ex. 2003 ¶ 51.
`
`PO’s expert noted that Ethernet was non-audio because it is being
`
`10
`
`

`
`
`
`transmitted as “data, not as audio” and that modern “4G systems like LTE” are
`
`non-audio digital signals because “it’s packetized information that is transmitted as
`
`data, not as audio,” Ex. 1013 at 152:2-12, 152:19-25 (emphases added). He then
`
`retracted that admission, denying that packetized transmission (which he admitted
`
`is “data”) is “non-audio” (Ex. 1013 at 153:1-154:7).
`
`The only evidence relied upon by PO (but not its expert) for this shifting
`
`definition is a passing statement in an article that refers to a few prevailing wireless
`
`standards as “mobile speech links” (Ex. 2010 at 317), which says nothing about
`
`whether a given standard’s signal is “audio” or “non-audio” and provides no
`
`insight into differentiating the two.
`
`PO’s construction of “non-audio digital signals” would also exclude multiple
`
`embodiments from the specification. Every embodiment of the ’871 patent
`
`transmits digitized image data using facsimile or modem, including the systems
`
`shown in FIGS. 1 to 5. Ex. 1001 at 2:13-17, 2:31-50, 5:2-64, 5:48-59, 6:15-49,
`
`7:3-48, 8:53-65, 9:17-30, 9:46-55, 10:5-25, 10:61-67. PO’s expert testified that
`
`modem and facsimile
`
`transmission are “audio signals,” excluding
`
`these
`
`embodiments from claim 12. Ex. 2003 at 43; Ex. 1013 at 150:1-13; Ex. 1014 ¶ 48.
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`Excluding multiple embodiments from a claim “is rarely, if ever correct.” See
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`EPOS Techs. Ltd., 766 F.3d at 1347.
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`PO’s argument
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`that multi-media messaging service (“MMS”) was
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`11
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`unavailable at the time (Resp. 15) should not be afforded any weight because claim
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`12 does not recite transmission via MMS. PO’s expert adds that transmission of
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`digital image data over a wireless network would require “significant ingenuity or
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`invention” in networking and terminal technologies and was not possible in 1998
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`(Resp. 15; Ex. 2003 ¶¶ 44-45). But that position is belied by: (1) the ’871 patent’s
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`utter lack of specificity or “ingenuity” regarding any particular cellular technology
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`(Ex. 1013 at 84:19-25, 86:23-24, 89:13-15) despite “none of the networks at the
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`time support[ing] the claim functionality” (id. at 86:8-10); (2) the ’871 patent’s
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`disclosure of transmission of digital image data using conventional facsimile and
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`modem (Ex. 1001 at 2:13-17, 2:31-50, 5:2-64, 5:48-59, 6:15-49, 7:3-48, 8:53-65,
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`9:17-30, 9:46-55, 10:5-25, 10:61-67); (3) McNelley’s disclosure of transmission of
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`digital images over a cellular network (Ex. 1006 at 14:15-37; 18:32-34); and (4)
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`the Hanzo article submitted by PO, which describes using existing cellular
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`technology to transmit video (Ex. 2010 at 305, 316-317). Ex. 1014 ¶ 47-53.
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`III. ARGUMENT
`A. McNelley And Umezawa Both Selectively Display And Transmit
`An Image (Claims 1, 6, 12)
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`McNelley and Umezawa disclose selective display and transmission of a
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`digitized frame image. A POSA would understand that McNelley describes a
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`single unit with three modes: camcorder mode, teleconferencing mode, and
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`answering machine mode, as PO’s expert admits. Ex. 1013 at 207:25-208:9; Ex.
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`12
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`
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`1014 ¶¶ 57-59. A POSA would further understand that features from one mode
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`could easily be combined with features from another mode. Ex. 1014 ¶ 60. With
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`regard to selective display, McNelley’s display is used in all modes to play a
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`recorded video. Ex. 1006 at 11:13-47, 21:3-40, 22:1-3. In camcorder mode,
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`videos can be taken, stored, and retrieved (selected) for viewing and playback. See
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`Resp. 17; Ex. 1006 at 7:14-23, 11:13-31, 21:4-40; Ex. 1014 ¶ 57. This same
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`functionality is present in teleconference mode: “In teleconferencing mode, the
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`recorder may record the outgoing signal” or “record or play back a separate signal”
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`using split screen. Ex. 1006 at 11:12-31. Answering machine mode, in
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`prerecording greetings and when recording in general, also utilizes the same
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`“recorder and playback component.” Ex. 1006 at 2:57-61, 13:49-52, 21:41-46.
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`McNelley also “selectively transmits” prerecorded videos from a group of
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`multiple prerecorded videos in answering machine mode. Prior to transmission,
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`multiple greetings are prerecorded and a user designates (selects) one of those
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`prerecorded greetings for his message box: “Multiple greetings may be accessed
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`through a menu system with multiple message ‘boxes’ designated for receiving
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`incoming messages.” Id. at 13:49-53 (“each user” may have “their own box”).
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`PO’s expert agreed. Ex. 1013 at 203:12-20, 204:13-23, 205:12-20. Whether
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`greetings are stored in a separate memory in a “preferable” embodiment, as argued
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`by PO (Resp. 18-19), is irrelevant because multiple greetings are ultimately stored
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`13
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`
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`in that memory. Ex. 1006 at 12:40-49; 13:49-53.
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`Upon answering a call, the memory then “plays back the [previously
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`selected] prerecorded message and the unit transmits the message to the calling
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`terminal.” Ex. 1006 at 13:15-18. That selected, prerecorded video message can
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`also be displayed as it is transmitted. Ex. 1006 at 13:22-30. The act of a user
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`designating a prerecorded video greeting from among multiple greetings is
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`selective transmission and display of an image. Ex. 1014 ¶¶ 61-64.
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`Similarly, Umezawa discloses capture, and then selective display and
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`transmission of an image: “[A] camera which takes a picture to-be-transmitted for
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`the visual communication” and “the transmission of a photographed picture.”
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`Umezawa at 1:61-2:5, 2:34-36, 3:5-7, 8:6-12 (emphases added). The user interface
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`in Umezawa also includes buttons for changing-over picture frames and scrolling
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`the picture frame (selective display) that a POSA would know could be used to
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`change-over and scroll through stored images in McNelley just as they are used for
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`the control panels in Umezawa. Ex. 1014 ¶¶ 67-69.
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`Selective transmission of an image occurs in Umezawa when the user
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`“selects the visual telephone function,” “enters the telephone No. of the opposite
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`party,” and “depresses the transmission/reception key.” Ex. 1007 at 10:3-22,
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`10:35-39; Ex. 1014 ¶¶ 67-69. This is consistent with ’871 patents equating dialing
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`with selecting. Ex. 1001 at 3:14-16, 13:64-65. Selective transmission also occurs
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`14
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`when pausing/unpausing: “[T]he photographing operation of the camera” and “the
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`transmission of a photographed picture” can be temporarily stopped using the
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`pause button. Ex. 1007 at 8:6-19. When paused, a “specified display picture” is
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`transmitted instead. Id. As PO’s expert admitted, this “predetermined and/or
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`designated” photograph results in two different pictures being transmitted. Ex.
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`1013 at 224:19-22, 226:5-6, 229:5-9. Pausing/unpausing selects between these two
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`pictures for transmission. Ex. 1014 ¶ 69.
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`Even if the Board were to agree with PO that the selecting limitations
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`require selecting an image “from among a plurality of digitized framed images that
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`are within memory” (Resp. 8-10), then such functionality would have been obvious
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`and well-known to a POSA to enable the device to choose between one of two files
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`stored in McNelley and Umezawa. Ex. 1014 ¶ 70.
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`B. McNelley And Umezawa Both Disclose “Alphanumeric Signals”
`(Claims 1, 6, 12)
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`The claims require the input (cls. 1, 6, 12), sending/transmission (cls. 1, 6),
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`and display (cls. 6, 12) of “alphanumeric signals.” PO does not contest that
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`McNelley and Umezawa disclose the input, display, and transmission of
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`alphanumeric signals in the form of telephone numbers. Resp. 29 (“[McNelley and
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`Umezawa] merely disclose the ability to type telephone numbers into a display …
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`and then the use of that telephone number to place a call to an appropriate second
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`end user’s device.”); Resp. 28 (Umezawa “discloses the input and display of
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`15
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`
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`‘numeric’ signals.”); see also Ex. 1006 at 7:58-59, 8:11-12; 13:55-67; Ex. 1007 at
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`10:12-22. That should end the matter.
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`But should the Board agree with PO that “alphanumeric signals” requires the
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`litany of additional limitations—both letters and numbers sent to a compatible
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`remote receiving station along with digital image and/or audio signals in a manner
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`that permits the receiving end user to view the inputted phone number or text
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`message—the use of a standard number pad (see Ex. 1010) such as those in
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`McNelley and Umezawa to input text was well-known in 1998 as PO’s expert
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`testified. Ex. 1014 ¶¶ 75-79; Ex. 1008 ¶¶ 55, 75, 125; Ex. 1013 at 41:25-42:4,
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`45:10-13, 46:3-5, 47:13-16. “Multi-tap,” a common text-entry and display system
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`for mobile phones used in text messaging and information entry, was available in
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`January 1998 according to PO’s expert. Ex. 1013 at 42:6-21; Ex. 1014 ¶¶ 77-79.
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`Other cellular devices well-known to POSAs in 1998 used a keyboard with text
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`and numbers. Ex. 1013 at 54:25-55:8; Ex. 1014 ¶ 76.
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`Transmitting letters and numbers was also well-known by POSAs; text
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`messaging by cellular phone was available in 1998. Ex. 1013 at 40:10-16; Ex.
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`1014 ¶ 76. The ’871 patent expressly states that “transmitted imaging tagging”
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`was “readily understood by those who are skilled in the art,” which included
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`tagging an image with “information such as, by way of example, date, time and
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`location” as part of the transmitted signal. Ex. 1001 at 6:7-12. It was well-known
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`16
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`in 1998 that such information could be manually specified for digital images. Ex.
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`1014 ¶¶ 80-81. A POSA would also have known that McNelley’s disclosure of
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`“transmitting/receiving data other than audio and video” (e.g., Ex. 1006 at 20:55-
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`68) (emphasis added) contemplated using McNelley’s keypad to enter and transmit
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`text messages or image information Ex. 1014 ¶ 81.
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`With regard to transmission “to a remote receiving station,