`
`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
`
`
`
`
`
`
`
`
`
`

`

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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`TABLE OF CONTENTS
`
`Page
`
`I.
`
`INTRODUCTION .......................................................................................... 1
`
`II. GROUNDS FOR STANDING PURSUANT TO 37 C.F.R. § 42.104(A) ..... 2
`
`III. OVERVIEW OF THE ‘871 PATENT ........................................................... 2
`
`IV.
`
`IDENTIFICATION OF CHALLENGE PURSUANT TO 37 C.F.R.
`§ 42.104(B) ..................................................................................................... 8
`
`A.
`
`B.
`
`C.
`
`D.
`
`37 C.F.R. § 42.104(b)(1): Claims For Which Inter Partes
`Review Is Requested ............................................................................. 8
`
`37 C.F.R. § 42.104(b)(2): The Prior Art And Specific
`Grounds On Which The Challenge To The Claims Is Based ............... 8
`
`37 C.F.R. § 42.104(b)(3): Claim Construction ..................................... 8
`
`37 C.F.R. § 42.104(b)(4): How The Construed Claims Are
`Unpatentable ........................................................................................ 10
`
`E.
`
`37 C.F.R. § 42.104(b)(5): Supporting Evidence ................................. 10
`
`V.
`
`THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ‘871 PATENT IS UNPATENTABLE ............................ 10
`
`A.
`
`Claims 1-8 and 12-14 Are Obvious Over McNelley In View
`of Umezawa ......................................................................................... 10
`
`1.
`
`2.
`
`3.
`
`4.
`
`Independent Claim 1 is Unpatentable Over McNelley
`and Umezawa ........................................................................... 15
`Independent Claim 6 is Unpatentable Over McNelley
`and Umezawa ........................................................................... 26
`Independent Claim 12
`is Unpatentable Over
`McNelley and Umezawa .......................................................... 37
`Dependent Claims 2-5, 7-8, and 13-14 are
`Unpatentable Over McNelley and Umezawa .......................... 45
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`-i-
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`TABLE OF CONTENTS
`(continued)
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`Page
`
`B. Different Bases of Unpatentability in Petitioner’s Three
`Petitions Regarding the ‘871 Patent are Independent,
`Distinct and not Redundant ................................................................. 48
`
`VI. MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8(A)(1) ........ 50
`
`A.
`
`B.
`
`C.
`
`C.F.R. § 42.8(b)(a): Real Party-In-Interest ......................................... 50
`
`C.F.R. § 42.8(b)(2): Related Matters .................................................. 50
`
`C.F.R. § 42.8(b)(3) and (4): Lead and Back-up Counsel and
`Service Information ............................................................................. 51
`
`VII. CONCLUSION ............................................................................................. 52
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
`
`TABLE OF AUTHORITIES
`
`Page
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`
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`CASES
`
`Graham v. John Deere Co.
`383 U.S. 1 (1966) ................................................................................................ 12
`
`In re Am. Acad. Sci. Tech. Ctr.,
`367 F.3d 1359 (Fed. Cir., 2004) ........................................................................... 9
`
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) .....................................................................................passim
`
`STATUTES
`
`35 U.S.C. §§ 102 ........................................................................................................ 8
`
`35 U.S.C. § 102(b) ............................................................................................... 4, 11
`
`35 U.S.C. § 103 ............................................................................................ 10, 11, 12
`
`35 U.S.C. § 103(a) ..................................................................................................... 8
`
`OTHER AUTHORITIES
`
`35 C.F.R. § 42.1(b) .................................................................................................. 50
`
`37 C.F.R. § 1.68 ....................................................................................................... 10
`
`37 C.F.R. § 41.100(b) ................................................................................................ 8
`
`37 C.F.R. § 42.8(A)(1) ............................................................................................. 50
`
`37 C.F.R. § 42.8(b) .................................................................................................. 50
`
`37 C.F.R. § 42.10(b) ................................................................................................ 51
`
`37 C.F.R. § 42.104(A)................................................................................................ 2
`
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`37 C.F.R. § 42.104(B) ................................................................................................ 8
`
`37 C.F.R. § 42.104(b)(1) ............................................................................................ 8
`
`37 C.F.R. § 42.104(b)(2) ............................................................................................ 8
`
`37 C.F.R. § 42.104(b)(3) ............................................................................................ 8
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`37 C.F.R. § 42.104(b)(4) .......................................................................................... 10
`
`37 C.F.R. § 42.104(b)(5) .......................................................................................... 10
`
`MPEP § 2111 ............................................................................................................. 9
`
`MPEP § 2141 ..................................................................................................... 13, 14
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`-iv-
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`
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`Ex. 1001
`Ex. 1002
`
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1006
`Ex. 1007
`Ex. 1008
`Ex. 1009
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`EXHIBIT LIST
`
`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”)
`
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`-v-
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`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.
`
`
`
`-1-
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`

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`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
`
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`-2-
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`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.
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`
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`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.
`
`
`
`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).
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`-4-
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`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
`
`operates as a teleconferencing terminal (referred to as a telecamcorder) and
`
`includes a wireless cell phone device, camera, display, memory and power supply.
`
`Ex. 1006, McNelley, 6:7-58, 7:66-8:13, 18:49-57, 21:23-26, Figs. 6-9. As shown in
`
`Figs. 6-9 (reproduced below) of McNelley, the handheld camcorder housing 148
`
`incorporates a display 100 which operates as a viewfinder for the camera 102. Id.
`
`at 6:48-52. The telecamcorder also incorporates a wireless cell phone device
`
`through which video pictures are received and sent, which may be configured as a
`
`separate handset 174 as shown in Fig. 8 or may be integrated as shown in Fig. 9.
`
`Id. at 7:66-8:13. In Fig. 9, the built-in dialing controls for the cell phone device are
`
`illustrated. Id. In Fig. 8, the cell phone handset 174 is depicted as detachable, like
`
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`-5-
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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
`
`modular such that it can be either built-in or detachable. Id. at 10:59-67. Fig. 7 also
`
`illustrates the operation of the LCD display 100 as a viewfinder, displaying the
`
`image to be recorded by the camera 102. Id. at 6:48-52. McNelley discloses
`
`substantially the same structure, components and functionality of the elements
`
`recited in the ‘871 patent claims. Ex. 1008, Sasson Decl. ¶ 19.
`
`
`
`In addition to McNelley, Umezawa also discloses a hand held
`
`teleconferencing device. Fig. 7 of Umezawa, reproduced below, illustrates that
`
`particular device. Umezawa explicitly discloses a video phone device 1,
`
`comprising signal processing means (e.g., processor/memory on circuit board 17)
`
`for permitting at least either of a vocal communication and a visual
`
`communication; a speaker 6 which emits received speech for the vocal
`
`communication; a microphone 16 which accepts speech to-be-transmitted for said
`
`
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`-6-
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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
`
`for the visual communication; a camera 3 which takes a picture to-be-transmitted
`
`for the visual communication; an LCD touch control panel 14 through which a
`
`user of the video telephone equipment 1 gives an operation command to the signal
`
`processing means; and a casing 2 which is provided with the display panel 11, the
`
`speaker 6 and the microphone 16; the display panel 11 being arranged between the
`
`speaker 6 and the microphone 16 on the casing 2; a communication device 18; and
`
`a battery 90. See Ex. 1007, Umezawa, 1:61-2:8, 8:23-29, 5:29-6:5.
`
`
`
`Both McNelley and Umezawa disclose hand held teleconferencing devices
`
`which record, transmit and receive digital audio and video over a wireless cell
`
`phone. They incorporate modular components having conventional and predictable
`
`
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`-7-
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`

`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
`
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`functions, including an LCD display and control panel, memory, processor, and
`
`battery. These are the same components and associated functionality recited in the
`
`claims of the ‘871 patent. The combination of McNelley and Umezawa yields the
`
`subject matter of the ‘871 patent claims.
`
`IV.
`
`IDENTIFICATION OF CHALLENGE PURSUANT TO 37 C.F.R.
`§ 42.104(B)
`A.
`
`37 C.F.R. § 42.104(b)(1): Claims For Which Inter Partes Review
`Is Requested
`
`Inter Partes review is requested for claims 1-8 and 12-14 of the ‘871 patent.
`
`B.
`
`37 C.F.R. § 42.104(b)(2): The Prior Art And Specific Grounds On
`Which The Challenge To The Claims Is Based
`Inter Partes review is requested in view of the following prior art references:
`
`
`
`
`
`U.S. Patent No. 5,550,754 (McNelley) Ex. 1006.
`
`U.S. Patent No. 5,491,507 (Umezawa) Ex. 1007.
`
`The specific statutory grounds under which 35 U.S.C. §§ 102 or 103 on
`
`which the challenge to the claims are based and the references relied upon for each
`
`ground are as follows:
`
`
`
`Claims 1-8 and 12-14 are unpatentable under pre-AIA 35 U.S.C. §
`
`103(a) over McNelley in view of Umezawa.
`
`37 C.F.R. § 42.104(b)(3): Claim Construction
`
`C.
`Pursuant to 37 C.F.R. § 41.100(b), solely for the purposes of this review,
`
`Petitioner construes the claim language such that the claims are given their
`
`
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`-8-
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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 for 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
`
`construction in litigation for any term of the ‘871 patent as appropriate in any such
`
`proceeding.
`
`Framing an image: This term appears in different variations: “an image
`
`framed by the camera” (claim 1); “framing [the/an] image to be captured” (claims
`
`2 and 12); “visually framing a visual image to be captured” (claim 6); “framing the
`
`visual image” (claim 7). The ‘871 patent does not explicitly describe these terms in
`
`the context of the claimed language. The specification provides the following
`
`references that describe a frame: “an image capture and transmission system
`
`captures either one or more single frame analog images or digital images or image
`
`data or visual data or visual images….” Ex.1001, ‘871 patent, 4:58-61. “The
`
`display unit 96 … provides … a visual read-out of the status of the collection and
`
`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
`
`executes a code for performing a bi-level compression of the data and the signal
`
`representing the frame data is output….” Id. at 10:9-19. See also Ex. 1008, Sasson
`
`Decl. ¶¶ 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.
`
`37 C.F.R. § 42.104(b)(5): Supporting Evidence
`
`E.
`An Appendix of Exhibits supporting this petition is attached, including Ex.
`
`1008 -- the Declaration of Steven Sasson under 37 C.F.R. § 1.68. In addition, the
`
`relevance of the evidence to the challenged claims, including an identification of
`
`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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`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
`
`video telephone in Umezawa. McNelley was issued on August 27, 1996, based on
`
`an application filed May 13, 1994. Umezawa was issued on February 13, 1996,
`
`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
`
`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)
`
`alphanumeric input keys in the housing, vii) wireless communication device, and
`
`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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`
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`-11-
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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., ¶¶ 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 Int’l 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
`
`3 E-Watch has provided no evidence, and Petitioner is aware of none,
`
`supporting secondary considerations of nonobviousness.
`
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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
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`evidence shows a reasonable likelihood to prevail on the proposed ground.
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`For instance, throughout arguments below discussing the ground of
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`unpatentability of the claims, the Petitioner asserts that for any features not explicit
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`or implicit in McNelley, a POSA would have found it obvious to combine
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`McNelley with Umezawa to enhance the teleconferencing system of McNeely with
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`the well-known features of Umezawa. “[A] patent for a combination which only
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`unites old elements with no change in their respective functions . . . obviously
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`withdraws what already is known into the field of its monopoly and diminishes the
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`resources available to skillful men.' … The combination of familiar elements
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`according to known methods is likely to be obvious when it does no more than
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`yield predictable results." KSR, 550 at 415-16 (citation omitted). And, “[f]or the
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`same reason, if a technique has been used to improve one device, and a person of
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`ordinary skill in the art would recognize that it would improve similar devices in
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`the same way, using the technique is obvious unless its actual application is
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`beyond his or her skill.” Id. at 417; MPEP § 2141.
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`For example, both patents address the same technical issues of creating a
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`hand held video conferencing device, that is, an integrated wireless telephone and
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`image processing device which is handheld and portable and includes a variety of
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`integrated features permitting image and audio transmission and reception within a
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`small self-powered structure. See Ex. 1008, Sasson Decl., ¶¶ 22, 27. These are
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`routine technical problems about which a POSA would have been familiar. Id.
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`Such a POSA would have found it obvious based on the similarity of the problems
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`to look to references such as McNelley and Umezawa to suggest solutions. Id. As
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`of the effective filing date of the ‘871 patent, a POSA would have found it obvious
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`to combine the disclosures of McNelley and Umezawa because they both relate to
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`similar technical issues and their combination would have been nothing more than
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`combining prior art elements according to known methods, with no change in their
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`respective functions, to yield predictable results. Id.; See, KSR, 550 U.S. at 416;
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`MPEP § 2141.
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`For example, a POSA would have found it obvious to incorporate teachings
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`from Umezawa into the system of McNeely, including inclusion of Umezawa’s
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`processor functionality and LCD touch control panel (user interface), at least for
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`the purposes of providing a smaller and more convenient handheld
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`videoconferencing device that could be held in one hand, for providing a more
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`convenient means of user control via the LCD touch control panel as a user
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`interface, and for providing an ability to view alphanumeric messages on the
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`display, e.g., to confirm the accuracy of the phone number of the other party. See,
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`e.g., Ex. 1006, McNelley, FIGS. 8, 10-12 and Ex. 1007, Umezawa, FIG. 7, 1:36-
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`40, 8:23-29, 10:3-22.
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`The combination of McNelley and Umezawa teaches or suggests to a POSA
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`at the time of the filing of the ‘871 patent each of the limitations for the asserted
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`claims as described below.
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`1.
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`Independent Claim 1 is Unpatentable Over McNelley and
`Umezawa
`Claim 1 preamble: The preamble (a) recites “A handheld self-contained
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`cellular telephone and integrated image processing system.” McNelley discloses a
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`handheld telecamcorder that sends and receives video images and audio over a
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`wireless, cellular telephone network. Ex. 1006, McNelley, 6:35-37, 10:16-18, 8:10-
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`15, 14:16-18, Abstract. The device has an integrated image processing system
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`including a camera, camera electronics and a system controller. Id. at 21:7-30; Fig.
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`30; Ex. 1008, Sasson Decl., ¶ 34.
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`The preamble (b) also recites “for both sending and receiving telephonic
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`audio signals.” McNelley discloses that the telecamorder with integrated video-
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`phone receives and sends teleconferencing signals and serves as a portable wireless
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`teleconferencing terminal much like a portable cellular phone. Ex. 1006,
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`McNelley, 5:1-3, 14:28-31, Abstract; Ex. 1008, Sasson Decl., ¶ 35.
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`The preamble (c) also recites “for capturing a visual image and transmitting
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`it to a compatible remote receiving station of a wireless telephone network.”
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`McNelley’s telecamcorder with integrated video-phone receives and sends
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`teleconferencing signals and “includes a built in display to view an incoming
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`teleconferencing signal and a video pickup device that can produce an image of the
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`operator for transmissions during teleconferencing.” Ex. 1006, McNelley, 5:1-7.
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`The unit includes a controller 400 that routes the teleconferencing signal to a
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`network access or communication electronics package 402, which establishes
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`contact with a network and sends and receives audio and video signals to/from the
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`wireless cellular network. Ex. 1006, McNelley, 21:30-36, 14:16-18; Ex. 1008,
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`Sasson Decl., ¶ 36.
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`Claim 1 (d) recites “the system comprising: a manually portable housing.”
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`McNelley’s telecamcorder is both handheld and manually portable, as
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`shown in Figs. 8 and 9 (housing 148). The operator can hold the entire unit in front
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`of him. Ex. 1006, McNelley, 6:35-37, 10:16-18; Ex. 1008, Sasson Decl., ¶ 37.
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`Claim 1(e) recites “an integral image capture device comprising an
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`electronic camera contained within the portable housing.” The telecamcorder
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`includes an electronic video camera 102 within portable housing 148 (Figs. 8 and
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`9), also shown as video camera 406 associated with system controller 400 and
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`camera electronics 404 (Fig. 30). Ex. 1006, McNelley, 6:37-39. The camera can
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`include a charge coupled device (CCD) optical pickup. Id. at 13:5-8; Ex. 1008,
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`Sasson Decl., ¶ 38.
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`Claim 1 (f) recites “a display for displaying an image framed by the camera,
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`the display being supported by the housing, the display and the electronic camera
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`being commonly movable in the housing when the housing is moved by hand.”
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`McNelley’s telecamcorder includes a display 100 for viewing an image, which is
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`also operable as a view finder for framing an image. Ex. 1006, McNelley, 6:41- 43,
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`7:14-16. A rotating hand grip 160 and pivots 158 and 160 permit horizontal and
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`vertical movement for different positioning and framing orientations. Id. at 6:59-
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`7:3; Ex. 1008, Sasson Decl., ¶ 39.
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`Claim 1(g) recites “a processor in the housing for generating an image data
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`signal representing the image framed by the camera.” McNelley discloses video
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`camera electronics 404 of Fig. 30 which “processes the output of the camera 406
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`into a final video signal to be fed to the controller 400” and which are contained in
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`the telecamcorder housing. Ex. 1006, McNelley, 21:13-16; 4:3-4. McNelley
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`discloses the use of ASIC chips for digital compression, and discloses that “digital
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`recording” can be used as well as microprocessors for operational functions. Id. at
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`18:43-48; 12:36-39; 20:54-66; Ex. 1008, Sasson Decl., ¶ 40.
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`An argument might be made by the Patent Owner that McNelley does not
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`explicitly or inherently teach this claim feature. It does, but even if it did not, the
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`claim feature is explicitly taught in Umezawa.
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`Umezawa discloses a video telephone (e.g., video phone equipment 1 in Fig.
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`7) comprising signal processing means for permitting that permit audio and visual
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`communication, a display panel for displaying a received picture for the visual
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`communication, and a camera which takes a picture to be transmitted for the visual
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`communication, and discloses a main circuit board 17 which includes a processor
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`and a memory. The