any - definition of any in English from the Oxford dictionary
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`of 12
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`EXHIBIT
`wlr:
`
`DATE:
`
`Kinkade RDA CAR CSR
`
`E-Watch, Inc.
`Petitioner - Apple, Inc.
`Patent Owner - E-Watch, Inc.
`IPR2015-00412
`EXH. 2013
`
`11/9/2015 4:11 PM
`
`1
`
`

`
`any - definition of any in English from the Oxford dictionary
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`à á â aâçèéêëiiîïnòòôoôùúûû ß any
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`of 12
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`
`any - definition of any in English from the Oxford dictionary
`
`http:// www. oxforddictionaries .com /definition/english /any
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`
`any - definition of any in English from the Oxford dictionary
`
`http://www.oxforddictionaries.com/definition/english/any
`
`lJ
`
`home
`British & World English
`any
`
`Share this entry
`email cite discuss
`any
`See definition in Oxford Advanced Learner's Dictionary
`Top 1000 frequently used words
`Line breaks: any
`Pronunciation: Tani/
`
`Definition of any in English:
`
`determiner & pronoun
`1 [usually with negative or in questions] Used to refer to one or some of a thing or number of things, no matter
`how much or how many: [as determiner]: I don't have any choice do you have any tips to pass on? [as
`pronoun]: someone asked him for a match, but Joe didn't have any you don't know any of my friends
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`
`any - definition of any in English from the Oxford dictionary
`
`http : / /www.oxforddictionaries.com /definition /english /any
`
`More example sentences
`
`Not like you liad any choice about the matter, packed lunches were banned, so you had to cough up.
`He tiptoed around it, trying not to get any of the putrid matter slop onto his fluffy bunny slippers.
`Not that any of that matters, but if these guys mess up again, an awful lot of people are going to get mad.
`Get more examples
`
`Synonyms
`some, a piece of, a part of, a bit of
`View synonyms
`1.I Anyone: the city council ceased payments to any but the gged
`More example sentences
`
`Those who do not register in time to participate in the player selection system shall be ineligible, with
`these exceptions -- any who were sick or injured or any who became new permanent residents of the
`community after the selection.
`He doubted any would stop him if the}rd seen his coat of arms.
`Buses will evacuate any who can't drive away.
`Get more examples
`
`Synonyms
`anyone, anybody
`View synonyms
`2Whichever of a specified class might be chosen: [as determiner]: these constellations are visible atany hour of
`the night [as pronoun]: the illness may be due to any of several couses
`More example sentences
`
`She cringed, remembering how Sara had asked her to take notes in any of the classes she would be
`missing.
`Boxing will be in for a treat if any of the class of 2004 show even a flash of their brilliance.
`An hour spent with any of those people and you feel like clapping for joy, or asking ifyou can do it all
`again.
`Get more examples
`
`Synonyms
`whichever, whichever comes to hand, no matter which, never mind which
`informal any old
`View synonyms
`
`adverb
`
`[usually with negative or in questions, as submodifier] Back to top
`lAt all; in some degree (used for emphasis): he wasn't any good at basketball why look any further? no one
`would be any the wiser
`More example sentences
`
`Luckily they don't have to scrape about any further as the survey is in again.
`If it had gone on any longer we may well not have lived to tell the tale.
`This, however, didn't make her feel any the better.
`Get more examples
`
`Synonyms
`
`of 12
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`
`

`
`any - definition of any in English from the Oxford dictionary
`
`http : / /www.oxforddictionaries.com /definition /english/any
`
`at all, in the least, to any extent, to some extent, somewhat, in any degree, to some degree
`View synonyms
`1.1 US informal At all (used alone, not qualifying another word): I didn't hurt you any
`More example sentences
`
`Yes he has hit into bad luck, and the new defensive approach hasn't helped him any.
`It didn't seem to hurt him any.
`He has a slight limp due to a healed injury to a front foreleg, but that sure doesn't hinder him any!
`Get more examples
`
`Usage
`
`When used as a pronoun any can be used with either a singular or a plural verb, depending on the context: we
`needed more sugar but there wasn't any left (singular verb) or are any of the new videos available? (plural
`verb).
`
`Phrases
`
`any amount of
`
`see amount.
`any more (also anymore)
`2
`
`[usually with negative or in questions] To any further extent; any longer: she refused to listen any more
`More example sentences
`Looking fora bargain, or trying to find an old disc that the big chains don't carry any more.
`Back from school, I sat in my room, too weak and tired to do any more, so glad to rest.
`After a few years, I could no longer fool myself that the drugs were working any more.
`Get more examples
`
`any old
`3
`
`see old.
`any road (up)
`4
`
`chiefly Northern English informal tenu for anyway. any road, I'm sure you'll make a go of it
`More example sentences
`On occasion, he would add: `They're vermin any road up - rainbow trout, ah mean.'
`But, any road, don't buy shoes - they'll never fit.
`Any road, in Sports Personality of the Year, we the British public usually hit the nail on the head.
`Get more examples
`any time (also anytime)
`5
`
`At whatever time: she can come any time
`More example sentences
`I am writing to complain about people who light bonfires any time, day or night.
`The centre presented Heather with a gold card allowing her to visit any time.
`Kevin Hayes stood in front of Cusack any time he tried to take a quick puck -out.
`Get more examples
`any time (or day or minute etc.) now
`6
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`
`

`
`any - definition of any in English from the Oxford dictionary
`
`http : / /www.oxforddictionaries.com /definition /english /any
`
`get them back any day now
`
`informal Very soon: we
`More example sentences
`My finger traced out his features as I suddenly became aware that any minute now, I would faint.
`Plus, she couldn't shake that feeling that they were going to get caught soon, that this fim would
`end, any day now.
`Two new books are out on the subject, two others will be out any day now, and the Spitzer data will
`soon be in print.
`Get more examples
`be not having any (of it)
`7
`
`informal Be uninterested or disagree: 1 tried to make polite conversation, but he wasn't having any
`More example sentences
`Lucy and Misty were fine all taking their tablets between two pieces of ham, but when it came to
`Eric he was not having any of it and the tablet rolled away.
`Anthony apologized, but she was not having any of it.
`He demanded money from the shopkeeper; who bravely picked up a piece of metal and told him he
`was not having any.
`Get more examples
`
`not just any
`8
`
`A particular or special thing of its type rather than any ordinary one of that type: he had an actingjob at
`last and not just any part, but the lead in a new film
`More example sentences
`Again, a music festival is not just any other ordinary event.
`He knew, that the fifth was a thief, notjust any ordinary thief, but one who had more brains than the
`others of his guild.
`She needed to get herself a bike, and not just any ordinary bike.
`Get more examples
`
`Origin
`
`Old English ænig (see one, -y1), of Germanic origin; related to Dutch eenig and German einig.
`
`Words that rhyme with any
`
`antennae, Benny, blenny, Dene, fenny, jenny, Kenny, Kilkenny, Lenny, many, penne, penny, Rennie
`Definition of any in:
`
`US English dictionary
`English synonyms
`US English synonyms
`
`Share this entry
`email cite discuss
`
`What do you find interesting about this word or phrase?
`
`Comments that don't adhere to our Community Guidelines may be moderated or removed.
`
`of 12
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`11/9/2015 4:11 PM
`
`7
`
`

`
`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Apple Inc.
`
`Petitioner
`
`v.
`
`E- Watch, Inc.
`
`Patent Owner
`
`Case IPR2015 -00412
`
`Patent 7,365,871
`
`PETITION FOR INTER PARTES REVIEW
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313 -1450
`
`8
`
`

`
`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`III.
`
`IV.
`
`INTRODUCTION
`
`GROUNDS FOR STANDING PURSUANT TO 37 C.F.R. § 42.104(A)
`
`OVERVIEW OF THE `871 PATENT
`
`IDENTIFICATION OF CHALLENGE PURSUANT TO 37 C.F.R.
`§ 42.104(B)
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`37 C.F.R. § 42.104(b)(1): Claims For Which Inter Partes
`Review Is Requested
`
`37 C.F.R. § 42.104(b)(2): The Prior Art And Specific
`Grounds On Which The Challenge To The Claims Is Based
`
`37 C.F.R. § 42.104(b)(3): Claim Construction
`
`37 C.F.R. § 42.104(b)(4): How The Construed Claims Are
`Unpatentable
`
`37 C.F.R. § 42.104(b)(5): Supporting Evidence
`
`V.
`
`THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE `871 PATENT IS UNPATENTABLE
`
`A.
`
`Claims 1 -8 and 12 -14 Are Obvious Over McNelley In View
`of Umezawa
`
`1.
`
`2.
`
`3.
`
`4.
`
`Independent Claim 1 is Unpatentable Over McNelley
`and Umezawa
`Independent Claim 6 is Unpatentable Over McNelley
`and Umezawa
`Independent Claim 12
`McNelley and Umezawa
`and
`Dependent Claims
`13 -14
`7 -8,
`2 -5,
`Unpatentable Over McNelley and Umezawa
`
`is Unpatentable Over
`
`are
`
`1
`
`2
`
`2
`
`8
`
`8
`
`8
`
`8
`
`10
`
`10
`
`10
`
`10
`
`15
`
`26
`
`37
`
`45
`
`9
`
`

`
`TABLE OF CONTENTS
`(continued)
`
`B.
`
`Different Bases of Unpatentability in Petitioner's Three
`Petitions Regarding the `871 Patent are Independent,
`Distinct and not Redundant
`
`VI. MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8(A)(1)
`
`A.
`
`B.
`
`C.
`
`C.F.R. § 42.8(b)(a): Real Party-In- Interest
`
`C.F.R. § 42.8(b)(2): Related Matters
`
`C.F.R. § 42.8(b)(3) and (4): Lead and Back -up Counsel and
`Service Information
`
`VII. CONCLUSION
`
`Page
`
`48
`
`50
`
`50
`
`50
`
`51
`
`52
`
`10
`
`

`
`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
`
`TABLE OF AUTHORITIES
`
`CASES
`
`Graham v. John Deere Co.
`383 U.S. 1 (1966)
`
`In re Am. Acad. Sci. Tech. CM,
`367 F.3d 1359 (Fed. Cir., 2004)
`
`KSR Intl Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007)
`
`STATUTES
`
`35 U.S.C. §§ 102
`
`35 U.S.C. § 102(b)
`
`35 U.S.C. § 103
`
`35 U.S.C. § 103(a)
`
`OTHER AUTHORITIES
`
`35 C.F.R. § 42.1(b)
`
`37 C.F.R. § 1.68
`
`37 C.F.R. § 41.100(b)
`
`37 C.F.R. § 42.8(A)(1)
`
`37 C.F.R. § 42.8(b)
`
`37 C.F.R. § 42.10(b)
`
`37 C.F.R. § 42.104(A)
`
`Page
`
`12
`
`9
`
`passim
`
`8
`
`4,
`
`11
`
`10,
`
`11,
`
`12
`
`8
`
`50
`
`10
`
`8
`
`50
`
`50
`
`51
`
`2
`
`11
`
`

`
`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
`
`00
`
`37 C.F.R. §42.104(B) .............................................................................................. ..3
`
`00
`
`37 C.F.R. § 42.104(b)(1) .......................................................................................... ..s
`
`00
`
`37 C.F.R. §42.104(b)(2) .......................................................................................... ..s
`
`37 C.F.R. §42.104(b)(3) .......................................................................................... ..s
`
`37 C.F.R. §42.104(b)(4) ........................................................................................ ..10
`
`.- o o00
`
`I--L
`
`37 C.F.R. §42.104(b)(5) ........................................................................................ ..10
`
`0
`MPEP § 2111 ........................................................................................................... ..9
`
`r+a
`1.--1w
`
`MPEP § 2141 ................................................................................................... ..13,14
`a
`
`_iv_
`
`12
`
`12
`
`

`
`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
`
`EXHIBIT LIST
`
`Ex. 1001
`Ex. 1002
`
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1006
`Ex. 1007
`Ex. 1008
`Ex. 1009
`
`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 file history of the `871
`patent)
`Response dated 1/6/2005 to Office Action dated 9/27/2004 (from
`the file history of the `871 patent)
`Office Action dated 8/9/2005 (from the file history of the `871
`patent)
`U.S. Patent No. 5, 550, 754 ( "the `754 patent" or "McNelley ")
`U.S. Patent No. 5, 491, 507 ( "the `507 patent" or "Umezawa ")
`Declaration of Steven Sasson ( "Sasson Decl. ")
`U.S. Patent No. 5,517,683 ( "the `683 patent" or "Collett ")
`
`-v-
`
`13
`
`

`
`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
`
`I.
`
`INTRODUCTION
`
`The Petition demonstrates that U.S. Patent No. 5,550,754 ( "McNelley" or
`
`"the `754 patent ") in combination with U.S. Patent No. 5,491,507 ( "Umezawa" or
`
`"the `507 patent ") renders at least claims 1 -8 and 12 -14 of U.S. Patent No.
`
`7,365,871 ( "Monroe" or "the `871 patent ") obvious. Petitioner further provides
`
`declaratory evidence from a distinguished expert, Dr. Sasson, who has been
`
`working in this technological field for over 40 years, that corroborates why a
`
`person of ordinary skill in the art ( "POSA ") would have found it obvious to
`
`combine the references, and once combined, why the references render obvious
`
`each and every element of the claims. Additionally, as McNelley and Umezawa
`
`were issued in February and August of 1996, respectively, well over year before
`
`the January 1998 effective filing date of the `871 patent, neither prior art reference
`
`can be antedated - -- even if the previously filed 131 Declaration and evidence were
`
`considered to meet the stringent requirements for ante dating prior art.1
`
`Accordingly, the Board should institute trial for claims 1 -8 and 12 -14 of the `871
`
`patent.
`
`The `871 patent is currently being asserted against Apple by the alleged
`
`1 Petitioner notes that the Board found the 131 Declaration and evidence
`
`submitted during original prosecution failed to meet the strict legal requirements to
`
`swear behind a prior art reference in IPR2014-00439. Paper 16, p. 8.
`
`14
`
`

`
`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
`
`assignee, e- Watch, Inc. ( "e- Watch "), in a patent infringement lawsuit (e- Watch,
`
`Inc. v. Apple Inc., 2:13 -cv -1061 (E.D. Tx.)) to recover alleged damages for
`
`integrated camera cell phones -- products well known before the filing date of the
`
``871 patent. E -Watch has filed separate related lawsuits concerning the same
`
`patents against a variety of manufacturers of camera phones including Kyocera,
`
`Samsung, HTC Corp., LG Electronics, ZTE Corp., Sony, Sharp, Nokia, Huawei
`
`Technologies, Inc. and Blackberry Limited. See also, Case Nos. 2:13- cv -1062-
`
`1064, 1069 -1078.
`
`II.
`
`GROUNDS FOR STANDING PURSUANT TO 37 C.F.R. § 42.104(A)
`
`Petitioner Apple certifies that the `871 patent is available for inter partes
`
`review and that Petitioner is not barred or estopped from requesting inter partes
`
`review challenging the patent claims on the grounds identified herein.
`
`III. OVERVIEW OF THE `871 PATENT
`The `871 patent was filed on January 3, 2003, as a divisional application of
`
`abandoned application No. 09/006,073 filed on January 12, 1998. This patent
`
`contains approximately 14 columns of specification in which figures 1 -9 are
`
`described and in which various embodiments are described that provide:
`
`"an image capture, compression and transmission system that is
`specifically designed to permit reliable visual image transmission over
`land line or wireless communications using commercially available
`
`facsimile transmission techniques. Embodiments incorporate a
`
`-2-
`
`15
`
`

`
`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
`
`camera and signal converter into an integrated unit wherein the
`converted signal can be transmitted on a real time basis or may be
`
`stored in memory for later recall and transmission. Embodiments
`
`provide maximum flexibility, with the camera/converter /telephone or
`
`other transmission device being designed in a modular configuration
`
`wherein any or all of the devices can exist as integrated or
`
`independent units." Ex. 1001, 1:25 -36.2
`
`The application for the `871 patent includes claims that cover a combination
`
`of conventional elements of a cell phone and a camera. The `871 patent discloses:
`
`"The configuration shown in FIG. 6B [reproduced below] is a basic portable
`
`system, with a battery powered portable module 160 having a self -contained
`
`power source 162. The system can include an integral RAM and/or the removable
`
`memory module as indicated by the image card 72. The camera 10 can be an
`
`integral feature of the portable module 160, or can be a detached unit, as desired.
`
`In the illustrated embodiment, a cellular telephone 164 is provided with a data
`
`jack 166 for connecting to the output jack 168 of the module, whereby the image
`
`data signal can be transmitted via the cellular telephone to a remote facsimile
`
`machine over standard cellular and telephone company facilities." Ex. 1001, 10:35-
`
`48.
`
`The elements disclosed in Fig. 6A and B (below) of the `871 patent are
`
`2 In this Petition, all emphasis is added unless otherwise indicated.
`
`-3-
`
`16
`
`

`
`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
`
`conventional components that are combined in a conventional way. Figure 6A
`
`shows a desktop system where the conventional camera 10 and telephone are
`
`distinct, but connected, elements (connected via desktop 150). F 6B shows the
`
`camera 10 integrated with the portable system 160, including the memory 72 and
`
`the battery 162. That portable system 160, however, includes a separate cellular
`
`phone 164. As explained in specification, the modularity of the components is
`
`meant to provide the "maximum flexibility" such that such that the various
`
`elements could be integral, or not. See Ex. 1001, 1:24 -36.
`
`FIG. 6B
`
`During prosecution of the `871 patent, claims incorporating a combination of
`
`conventional components such as a camera, memory, power supply and cell phone
`
`were repeatedly rejected over prior art. For example, the Examiner rejected claims
`
`over §102(b) references such as Collett (Ex. 1009, U.S. Patent No. 5,517,683).
`
`-4-
`
`17
`
`

`
`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
`
`Regarding the then pending base independent claim 43, the Examiner explained
`
`that Collett disclosed a "handheld self -contained cellular telephone and integrated
`
`image processing system," the system comprising i) a housing, ii) an image capture
`
`device, iii) a display, iv) a processor in the housing for generating an image data
`
`signal, v) a telephonic system in the housing, vi) alpha numeric input keys in the
`
`housing, vii) a wireless communications device, and viii) a power supply. Ex.
`
`1005, Office Action dated Aug. 9, 2005, at 12 -13.
`
`Notwithstanding the eventual allowance of the `871 patent claims, other
`
`prior art that was not of record in the prosecution discloses the subject matter of the
`
`claimed invention. In particular, McNelley discloses a handheld camcorder which
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`operates as a teleconferencing terminal (referred to as a telecamcorder) and
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`includes a wireless cell phone device, camera, display, memory and power supply.
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`Ex. 1006, McNelley, 6:7 -58, 7:66 -8:13, 18:49 -57, 21:23 -26, Figs. 6 -9. As shown in
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`Figs. 6 -9 (reproduced below) of McNelley, the handheld camcorder housing 148
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`incorporates a display 100 which operates as a viewfinder for the camera 102. Id.
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`at 6:48 -52. The telecamcorder also incorporates a wireless cell phone device
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`through which video pictures are received and sent, which may be configured as a
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`separate handset 174 as shown in Fig. 8 or may be integrated as shown in Fig. 9.
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`Id. at 7:66 -8:13. In Fig. 9, the built -in dialing controls for the cell phone device are
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`illustrated. Id. In Fig. 8, the cell phone handset 174 is depicted as detachable, like
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`-5-
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`18
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`that disclosed in the `871 patent, and McNelley discloses that the cell phone is
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`modular such that it can be either built -in or detachable. Id at 10:59 -67. Fig. 7 also
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`illustrates the operation of the LCD display 100 as a viewfinder, displaying the
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`image to be recorded by the camera 102. Id. at 6:48 -52. McNelley discloses
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`substantially the same structure, components and functionality of the elements
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`recited in the `871 patent claims. Ex. 1008, Sasson Decl. ¶ 19.
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`In addition to McNelley, Umezawa also discloses a hand held
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`teleconferencing device. Fig. 7 of Umezawa, reproduced below, illustrates that
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`particular device. Umezawa explicitly discloses a video phone device 1,
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`comprising signal processing means (e.g., processor /memory on circuit board 17)
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`for permitting at least either of a vocal communication and a visual
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`communication; a speaker 6 which emits received speech for the vocal
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`communication; a microphone 16 which accepts speech to -be- transmitted for said
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`-6-
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`19
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`vocal communication; an LCD display panel 11 which displays a received picture
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`for the visual communication; a camera 3 which takes a picture to- be- transmitted
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`for the visual communication; an LCD touch control panel 14 through which a
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`user of the video telephone equipment 1 gives an operation command to the signal
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`processing means; and a casing 2 which is provided with the display panel 11,the
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`speaker 6 and the microphone 16; the display panel 11 being arranged between the
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`speaker 6 and the microphone 16 on the casing 2; a communication device 18; and
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`a battery 90. See Ex. 1007, Umezawa, 1:61 -2:8, 8:23 -29, 5:29 -6:5.
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`113. Patent
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`Feb. qant
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`Shell 7nv
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`5,491,507
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`FIG.7
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`Both McNelley and Umezawa disclose hand held teleconferencing devices
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`which record, transmit and receive digital audio and video over a wireless cell
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`phone. They incorporate modular components having conventional and predictable
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`-7-
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`20
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`

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`21
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`broadest reasonable interpretation in light of the disclosure of the `871 patent.
`
`Petitioner submits that, for the purposes of this review, each claim should be
`
`construed in accordance with its plain and ordinary meaning under the required
`
`broadest reasonable interpretation, which for the avoidance of doubt for one term is
`
`presented below. Because the standard
`
`claim construction at the Patent Office
`
`is different than that used during a litigation in a United States District Court (see
`
`In re Am. Acad. Sci. Tech. Ctr., 367 F.3d 1359, 1364, 1369 (Fed. Cir., 2004);
`
`MPEP § 2111), Petitioner expressly reserves the right to assert a different claim
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`construction in litigation for any term of the `871 patent as appropriate in any such
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`proceeding.
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`Framing an image: This term appears in different variations: "an image
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`framed by the camera" (claim 1); "framing [the /an] image to be captured" (claims
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`2 and 12); "visually framing a visual image to be captured" (claim 6); "framing the
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`visual image" (claim 7). The `871 patent does not explicitly describe these terms in
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`the context of the claimed language. The specification provides the following
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`references that describe a frame: "an image capture and transmission system
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`captures either one or more single frame analog images or digital images or image
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`data or visual data or visual images...." Ex.1001, `871 patent, 4:58 -61. "The
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`display unit 96 ... provides
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`a visual read -out of the status of the collection and
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`transmission of a selected frame." Id. at 8:39 -42. "[T]he processor accesses the
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`-9-
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`RAM and manipulates the data representing each frame image.... [T]he processor
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`executes a code for performing a bi -level compression of the data and the signal
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`representing the frame data is output...." Id. at 10:9 -19. See also Ex. 1008, Sasson
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`Dec1. ¶¶ 28 -30.
`
`Based on the above, the proposed BRI construction for this term is
`
`"obtaining data representing an image as shown on a display."
`
`D.
`
`37 C.F.R. § 42.104(b)(4): How The Construed Claims Are
`Unpatentable
`A detailed explanation of how claims 1 -8 and 12 -14 are unpatentable,
`
`including the identification of how each claim element is found in the prior art, is
`
`set forth below at Section V.
`
`E.
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`37 C.F.R. § 42.104(6)(5): Supporting Evidence
`
`An Appendix of Exhibits supporting this petition is attached, including Ex.
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`1008 -- the Declaration of Steven Sasson under 37 C.F.R. § 1.68. In addition, the
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`relevance of the evidence to the challenged claims, including an identification of
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`the specific portions of the evidence supporting the challenge, is included in
`
`Section V.
`
`V.
`
`THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE `871 PATENT IS UNPATENTABLE
`
`A.
`
`Claims 1 -8 and 12 -14 Are Obvious Over McNelley In View of
`Umezawa
`
`Claims 1 -8 and 12 -14 are obvious under 35 U.S.C. § 103 in view of the
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`-10-
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`23
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`disclosure of a teleconferencing camcorder in McNelley and the disclosure of a
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`video telephone in Umezawa. McNelley was issued on August 27, 1996, based on
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`an application filed May 13, 1994. Umezawa was issued on February 13, 1996,
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`based on an application filed October 22, 1993. Both McNelley and Umezawa are
`
`prior art to the `871 patent under 35 U.S.C. §102(b).
`
`A claim is not patentable "if the differences between the subject matter
`
`sought to be patented and the prior art are such that the subject matter as a whole
`
`would have been obvious at the time the invention was made to a person having
`
`ordinary skill in the art." 35 U.S.C. §103. The basis for patentability of the `871
`
`claims over the prior art rests on the allegedly novel combination of known
`
`structures having specific known functional features.
`
`No individual claim elements of the claimed cell phone or camera are
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`alleged to be novel as of the effective filing date of the `871 patent. As noted
`
`above, combining conventional components - having predictable features - such as
`
`a i) housing, ii) image capture device, iii) display, iv) processor in the housing for
`
`generating an image data signal, v) telephone system in the housing, vi)
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`alphanumeric input keys in the housing, vii) wireless communication device, and
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`viii) power supply was known in the art. See Ex. 1005 Office Action dated August
`
`9, 2005. At the time of the filing of the `871 patent, all the claimed components of
`
`the claimed combinations recited in claims 1 -8 and 12 -14 were well known and
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`24
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`were being combined by those of ordinary skill in the art in various combinations.
`
`Ex. 1008, Sasson Decl., IN 18 -27. The ability to combine various components to
`
`incorporate their known features involves mere routine skill in the art. Id.
`
`Notwithstanding the Patentee's allegations of novelty, the combination of
`
`known camera and cell phone components would have been obvious to persons of
`
`ordinary skill in the art ( "POSA "). McNelley discloses an integral video -phone
`
`capable of receiving and sending video teleconferencing signals in which a
`
`wireless network is used such that the telecamcorder can serve as a portable
`
`wireless teleconferencing terminal much like a portable cellular phone. See Ex.
`
`1006, McNelley. Umezawa also discloses video telephone equipment which
`
`permits a user to transmit and receive pictures and speech integrated in a hand held
`
`casing. See Ex. 1007, Umezawa, 1:5 -10.
`
`For the prior art ground, Petitioner states where each element is found in the
`
`prior art, i.e., Petitioner evaluates the scope and contents of the prior art, any
`
`differences between the art and the claims, and the knowledge of person of
`
`ordinary skill in the art in accordance with Graham v. John Deere Co. 383 U.S. 1
`
`(1966) and KSR Intl Co. v. Teleflex, Inc., 550 U.S. 398 (2007).3 For each ground
`
`under § 103 a more than adequate written rationale is provided to support the
`
`3E-Watch has provided no evidence, and Petitioner is aware of none,
`
`supporting secondary considerations of nonobviousness.
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`-12-
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`combination. See KSR, 550 U.S. 398 at 418. This discussion and accompanying
`
`evidence shows a reasonable likelihood to prevail on the proposed ground.
`
`For instance, throughout arguments below discussing the ground of
`
`unpatentability of the claims, the Petitioner asserts that for any features not explicit
`
`or implicit in McNelley, a POSA would have found it obvious to combine
`
`McNelley with Umezawa to enhance the teleconferencing system of McNeely with
`
`the well -known features of Umezawa. "[A] patent for a combination which only
`
`unit