Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 13
`Entered: May 18, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`E-WATCH, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00413
`Patent 7,365,871 B2
`____________
`
`Before JAMESON LEE, GREGG I. ANDERSON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 13
`Entered: May 18, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`E-WATCH, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00413
`Patent 7,365,871 B2
`____________
`
`Before JAMESON LEE, GREGG I. ANDERSON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2015-00413
`Patent 7,365,871 B2
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`
`I.
`
`INTRODUCTION
`
`Petitioner (“Apple”) filed a Petition requesting an inter partes review
`of claims 1–3, 5–7, 12, and 14 of U.S. Patent No. 7,365,871 B2 (Ex. 1001,
`“the ’871 patent”). Paper 2 (“Pet.”). Patent Owner, e-Watch, Inc. (“e-
`Watch”), filed a Preliminary Response (Paper 12, “Prelim. Resp.”). We
`have jurisdiction under 35 U.S.C. § 314. The standard for instituting an
`inter partes review is set forth in 35 U.S.C. § 314(a) which provides:
`THRESHOLD.—The Director may not authorize an inter
`partes review to be instituted unless the Director determines
`that the information presented in the petition filed under section
`311 and any response filed under section 313 shows that there
`is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`
`Upon consideration of the Petition and the Preliminary Response, we
`determine that Apple has not demonstrated a reasonable likelihood of
`prevailing in showing the unpatentability of any of claims 1–3, 5–7, 12, and
`14 of the ’871 patent. We do not institute an inter partes review for any
`claim.
`
`A. Related Proceedings
`Apple identifies these related cases involving the ’871 patent: (1) E-
`Watch, Inc. v. Apple Inc., No. 2:13-CV-1061 (JRG/RSP) (E.D. Tex.), to
`which the following case numbers in the same tribunal are consolidated:
`CV-1062, 1063, 1064, 1069, 1070, 1071, 1072, 1073, 1074, 1075, 1077, and
`1078; (2) IPR2014-00439; (3) IPR2014-00987; (4) IPR2015-00411; (5)
`IPR2015-00412; (6) IPR2014-00402; (7) IPR2014-00404; (8) IPR2014-
`00406; (9) IPR2015-00541; (10) IPR2015-00610; and (11) IPR2015-00612.
`
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`Paper 2, 56–57; Paper 10, 1. Further, e-Watch identifies an additional civil
`action involving the ’871 patent: e-Watch, Inc. v. Huawei Technologies Co.,
`Ltd., No. 2:13-CV-01076 (E.D. Tex.). Paper 4, 3.
`
`B. The ’871 Patent
`The ’871 patent relates generally to “image capture and transmission
`systems and is specifically directed to an image capture, compression, and
`transmission system for use in connection with land line and wireless
`telephone systems.” Ex. 1001, 1:17–20. According to the ’871 patent, the
`system “is particularly well suited for sending and/or receiving images via a
`standard Group III facsimile transmission system and permits capture of the
`image at a remote location using an analog or digital camera.” Id. at 5:3–6.
`Figure 1 of the ’871 patent is reproduced below.
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`Figure 1 is a block diagram of a basic facsimile camera configuration for
`capturing an image via a camera and transmitting it via Group III facsimile
`transmission to a standard hard copy medium. Id. at 4:27–30.
`Figure 7A of the ’871 patent is reproduced below.
`
`
`Figure 7A depicts “a hand[-]held device for capturing, storing, and
`transmitting an image in accordance with the invention.” Id. at 4:46–48,
`11:3–20.
`C. Illustrative Claim
`Of the challenged claims, claims 1, 6, and 12 are independent. Claim
`1 is reproduced below:
`telephone and
`1.
`A handheld self-contained cellular
`integrated image processing system for both sending and
`receiving telephonic audio signals and for capturing a visual
`image and transmitting it to a compatible remote receiving
`station of a wireless telephone network, the system comprising:
`a manually portable housing;
`an integral image capture device comprising an electronic
`camera contained within the portable housing;
`a display for displaying an image framed by the camera,
`the display being supported by the housing, the display and the
`electronic camera being commonly movable in the housing
`when the housing is moved by hand;
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`a processor in the housing for generating an image data
`signal representing the image framed by the camera;
`a memory associated with the processor for receiving and
`storing the digitized framed image, accessible for selectively
`displaying in the display window and accessible for selectively
`transmitting over the wireless telephone network the digitized
`framed image;
`a user interface for enabling a user to select the image
`data signal for viewing and transmission;
`a telephonic system in the housing for sending and
`receiving digitized audio signals and for sending the image data
`signal;
`alphanumeric input keys in the housing for permitting
`manually input digitized alphanumeric signals to be input to the
`processor, the telephonic system further used for sending the
`digitized alphanumeric signals;
`for
`adapted
`a wireless
`communications device
`transmitting any of the digitized signals to the compatible
`remote receiving station; and
`a power supply for powering the system.
`Ex. 1001, 14:4915:13.
`
`D. Prior Art Relied Upon
`
`Apple relies on these prior art references:
`
`
`
`
`Parulski1
`Umezawa2
`
`
`
`
`US Pat. 5,666,159
`US Pat. 5,491,507
`
`Ex. 1006
`Ex. 1007
`
`Pet. 9. Apple also relies on the declaration testimony of Mr. Steven
`Sasson. Ex. 1008.
`
`1 Parulski issued on September 9, 1997, based on an application filed on
`April 24, 1995.
`2 Umezawa issued on February 13, 1996.
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`E. The Asserted Ground of Unpatentability
`
`The sole ground of unpatentability alleged by Apple is that claims
`1–3, 5–7, 12, and 14 of the ’871 patent are unpatentable, under 35 U.S.C.
`§ 103, as obvious over Parulski and Umezawa. Pet. 9.
`
`II. ANALYSIS
`A. The Status of Parulski as Prior Art
`As an initial matter, we review whether the references relied upon by
`Petitioner qualify as prior art. Parulski has an effective filing date of April
`24, 1995. Parulski qualifies as prior art under 35 U.S.C. §§ 102(a) and
`102(e), because it was not published more than one year prior to the
`effective filing date of the ’871 patent, and it has an effective filing date
`(April 24, 1995) earlier than that of the ’871 patent (January 12, 1998).
`Parulski was applied in an Office Action during prosecution of the
`application that issued as the ’871 patent. Ex. 1003, 10. A declaration (Ex.
`1002, “Monroe Declaration”) was then submitted by the Applicant, in
`response to the Office Action, to antedate Parulski as a prior art reference.
`Although the Examiner determined that the Monroe Declaration sufficiently
`antedated Parulski (Ex. 1005, 2), we are not bound by that determination.
`We have reviewed the Monroe Declaration and determine, for reasons
`discussed below, that it is insufficient to antedate Parulski.
`Priority of invention goes to the first party to reduce to practice unless
`the other party can show that it was the first to conceive the invention and
`that it exercised reasonable diligence in later reducing that invention to
`practice. Brown v. Barbacid, 276 F.3d 1327, 1337 (Fed. Cir. 2002); Cooper
`v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998); Mahurkar v. C.R. Bard,
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`Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996). An inventor’s testimony,
`standing alone, is insufficient to prove conception, as some form of
`corroboration is required. Mahurkar, 79 F.3d at 1577; Price v. Symsek,
`988 F.2d 1187, 1194 (Fed. Cir. 1993). A rule of reason applies to determine
`whether the inventor’s testimony has been corroborated. Price, 988 F.2d
`at 1194.
`During the period in which reasonable diligence must be shown, there
`must be continuous exercise of reasonable diligence. In re McIntosh,
`230 F.2d 615, 619 (CCPA 1956); see also Burns v. Curtis, 172 F.2d 588,
`591 (CCPA 1949) (referring to “reasonably continuous activity”). A party
`alleging diligence must account for the entire critical period. Griffith v.
`Kanamuru, 816 F.2d 624, 626 (Fed. Cir. 1987); Gould v. Schawlow,
`363 F.2d 908, 919 (CCPA 1966). Even a short period of unexplained
`inactivity is sufficient to defeat a claim of diligence. Morway v. Bondi, 203
`F.2d 742, 749 (CCPA 1953); Ireland v. Smith, 97 F.2d 95, 99–100 (CCPA
`1938). In In re Mulder, 716 F.2d 1542, 1542–46 (Fed. Cir. 1983), for
`example, the Federal Circuit affirmed a determination of lack of reasonable
`diligence, where the evidence of record was lacking for a two-day critical
`period. Likewise, in Rieser v. Williams, 255 F.2d 419, 424 (CCPA 1958),
`there was no showing of diligence where no activity was shown during the
`first thirteen days of the critical period.
`A party alleging diligence must provide corroboration with evidence
`that is specific both as to facts and dates. Gould, 363 F.2d at 920; Kendall v.
`Searles, 173 F.2d 986, 993 (CCPA 1949). The rule of reason does not
`dispense with the need for corroboration of diligence that is specific as to
`
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`dates and facts. Gould, 363 F.2d at 920; Kendall, 173 F.2d at 993; see
`Coleman v. Dines, 754 F.2d 353, 360 (Fed. Cir. 1985).
`The Monroe Declaration does not establish, adequately, conception of
`the subject matter of any challenged claim prior to the effective filing date of
`Parulski, April 24, 1995. The Monroe Declaration does not correlate the
`elements of the challenged claims of the ’871 patent to that which
`purportedly was conceived by him prior to April 24, 1995. For example,
`Mr. Monroe testified that he conceived “the invention” at least as early as
`March 18, 1993 (Ex. 1002 ¶ 17), but did not explain how the evidence of
`that conception correspond to the elements of any challenged claim.
`The Monroe Declaration does not make a sufficient showing of
`continuous exercise of reasonable diligence from just prior to the effective
`filing date of Parulski, i.e., April 24, 1995, to the effective filing date of the
`’871 patent, i.e., January 12, 1998. For example, the Monroe Declaration
`reveals extended periods of little activity that have not been adequately
`explained, such as between 1992 (the first comprehensive circuit for a
`handheld Remote Image Transceiver (“R.I.T.”)) and November 1995 (a
`concept proposal of a handheld R.I.T. using secure radio transmission), and
`between November 1995 and mid-1997 (a prototype of the first commercial
`embodiment of the invention).
`Although the Monroe Declaration alleges an actual reduction to
`practice, the alleged date of actual reduction to practice is unclear, as is what
`particular completed structure, successfully tested for its intended purpose, is
`relied on as that actual reduction to practice. In that regard, paragraph 19 of
`the Monroe Declaration (Ex. 1002) states as follows:
`
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`The above facts establish reduction to practice prior to the
`earliest effective dates of the 131 Prior Art, or as a minimum,
`establish conception of the invention prior to the earliest
`effective date of the 131 Prior Art coupled with due diligence
`from prior to this date to a subsequent reduction of practice
`culminating in the prototype of the commercial embodiment
`Exhibit 15 in mid-1997.
`
`It is axiomatic that evidence has to be explained. Paragraph 17 of the
`Monroe Declaration (Ex. 1002) states:
` As shown by the Exhibits attached hereto, I conceived the
`invention at least as early as March 18, 1993 and worked
`diligently
`in developing a commercially viable product
`culminating in the first commercial handheld R.I.T. in late
`1997.
` This handheld R.I.T. used cellular
`telephone
`transmission technology, as evidenced by Exhibits 15–17 as
`first conceived and document[ed] as early as March 18, 1993,
`see Exhibits (6–13).
`It is unclear whether the Monroe Declaration, with regard to its assertion of
`actual reduction to practice, relies on the structure of the “prototype of the
`commercial embodiment Exhibit 15 in mid-1997,” the structure of a
`“commercial handheld R.I.T. [product] in late 1997,” or some other structure
`allegedly completed at another time. In any event, the Monroe Declaration
`does not explain how any such completed structure was successfully tested
`for its intended purpose or meets all requirements of any challenged claim.
`
`Moreover, an actual reduction to practice date in 1997 would not be of
`help to the Patent Owner, because the effective filing date of Parulski is
`April 24, 1995, prior to any time in 1997, and the Monroe Declaration is
`deficient with regard to demonstration of continuous exercise of reasonable
`diligence from a time just prior to April 24, 1995, to either constructive
`reduction to practice on January 12, 1998, or any time in 1997.
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`B. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); In
`re Cuozzo Speed Technologies LLC, 778 F.3d 1271, 1281–82 (Fed. Cir.
`2015) (“Congress implicitly adopted the broadest reasonable interpretation
`standard in enacting the AIA,” and “the standard was properly adopted by
`PTO regulation”); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`48,766 (Aug. 14, 2012). Claim terms also are given their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art in the context of the entire disclosure. In re Translogic Tech., Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`If an inventor acts as his or her own lexicographer, the definition must
`be set forth in the specification with reasonable clarity, deliberateness, and
`precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243,
`1249 (Fed. Cir. 1998). If a feature is not necessary to give meaning to what
`the inventor means by a claim term, it would be “extraneous” and should not
`be read into the claim. Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 950
`(Fed. Cir. 1993); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co.,
`849 F.2d 1430, 1433 (Fed. Cir. 1988).
`
`Only terms which are in controversy need to be construed, and only to
`the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
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`“an image framed by the camera” (claim 1) / “framing the image to be
`captured” (claims 2, 9, 12) / “visually framing a visual image to be
`captured” (claim 6) / “framing the visual image” (claim 7)
`
`Claim 1 recites “an image framed by the camera.” Claims 2, 6, 7, 9,
`
`and 12 recite similar limitations. Petitioner proposes that these terms be
`construed to mean “obtaining data representing an image as shown on a
`display.” Pet. 10–11. Patent Owner does not propose a construction for
`these terms and does not take a position on Petitioner’s proposed
`construction.
`
`As used in the claims, “framed” and “framing” appear to refer to
`composing an image by positioning the subject of the image within the
`boundaries of the camera’s field of view. The terms “framed” and
`“framing” are not used in the Specification. The term “frame” is used in the
`Specification, but it is used as a noun, not as a verb, and only in an image-
`processing context. E.g., Ex. 1001, 8:21–23 (“At this point a single frame is
`captured in RAM 71 and/or on the portable medium RAM 72.”).
`
`On the present record, the broadest reasonable interpretation of “an
`image framed by the camera” is “an image having boundaries established by
`the camera”; the broadest reasonable interpretation of “framing [a/the] image
`to be captured” (claims 2, 9, 12) is “visually establishing the boundaries of
`an image to be captured” (claim 6); and the broadest reasonable
`interpretation of “framing the visual image” (claim 7) is “establishing the
`boundaries of an image.”
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`C. Obviousness of Claims 1–3, 5–7, 12,
`and 14 over Parulski and Umezawa
`Obviousness is determined on the basis of underlying factual
`
`inquiries, including: (1) the scope and content of the prior art; (2)
`differences between the claimed subject matter and the prior art; (3) the level
`of ordinary skill in the art; and (4) secondary considerations of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). A
`patent claim is unpatentable under 35 U.S.C. § 103 if the differences
`between the claimed subject matter 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 to which said subject matter
`pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
`
`Parulski (Exhibit 1006)
`Parulski describes an electronic camera system that includes “a
`
`programmable transmission capability for selectively transmitting electronic
`image data to a plurality of remote receiver units.” Ex. 1006, 1:44–47.
`Figures 7–9 of Parulski are reproduced below.
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`Figure 7 illustrates a front view of a combined telephone/camera unit; Figure
`8 illustrates a top view of the same combined telephone/camera unit; and
`Figure 9 illustrates a schematic block diagram of the combined
`telephone/camera unit shown in Figures 7 and 8. Ex. 1006, 2:26–32.
`
`As shown in these figures, a cellular telephone is provided with the
`components of an electronic camera to form combined telephone/camera
`unit 48. Id. at 4:27–29. The combined telephone/camera unit 48 includes
`lens 50, flash unit 52, antenna 54, liquid crystal display screen 56, telephone
`keypad 58, internal bus 60, control processing unit 62, memory unit 64, and
`cellular transceiver 66. Id. at 4:29–36.
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`The user takes a picture by pressing an image capture switch (not
`
`shown) or, alternatively, a key on keypad 58. Id. at 4:41–46. “The
`digitize[d] picture data generated by the camera module 68 is stored in the
`memory unit 64 and displayed on the display screen 56.” Id. at 4:46–48.
`“To transmit the image, the user dials the telephone number of a desired fax
`machine that is to receive the image using the keypad 58.” Id. at 4:49–51.
`“The number is transmitted to the fax machine via the cellular transceiver
`66.” Id. at 4:51–52. “The stored image is then converted to the appropriate
`fax standard by the control processing unit 62, and is transmitted to the
`receiving fax machine using the normal cellular telephone system that
`includes an RF link from the cellular transceiver 66 to a cellular base unit,
`which connects to the normal wire, fiber, and satellite telephone system as
`shown in FIG. 11.” Id. at 4:55–61.
`Umezawa (Exhibit 1007)
`Umezawa discloses a video telephone in a casing for holding in one
`
`hand, which permits a user to transmit and receive pictures and speech.
`Ex. 1007, Abst. The video telephone includes a microphone, s speaker, a
`display panel, a control panel, and a camera. Id. Figure 7 of Umezawa is
`reproduced below:
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`Figure 1 shows a perspective external view of an embodiment of a video
`telephone according to Umezawa. Ex. 1007, 4:24–26.
`
`As shown in Figure 1, Umezawa’s video telephone 1 has body 2. Ex.
`1007, 5:31–34. Mounted on body 2 are camera 3, speaker 6 within ear pad
`4, display panel 11, transmission/reception key 12, termination key 13,
`control panel 14, functional keys 15, and microphone 16. Id. at 5:35–49.
`
`Umezawa’s Figure 3 is reproduced blow.
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`Figure 3 is an exploded view of Umezawa’s video telephone, illustrating
`various components within the video telephone. Ex. 1007, 4:30–31. The
`video telephone includes circuit board 17 containing a processor and a
`memory, communication device 18, speaker 6, liquid crystal display panel
`11, control circuit board 20, microphone 16, battery 90, antenna 21, and
`camera 3. Id. at 5:53–62.
`Discussion of Obviousness
`
`Apple has not shown a reasonable likelihood that it would prevail in
`establishing claims 1–3, 5–7, 12, and 14 are unpatentable as obvious over
`Parulski and Umezawa. Apple contends that Parulski discloses all of the
`elements of claim 1. Alternatively, with respect to what Apple identifies as
`limitations 1(f), 1(l), and 1(n), Apple contends that each would have been
`
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`rendered obvious by the combination of Parulski and Umezawa. Pet. 24–32.
`For reasons discussed below, we determine that Apple has made a sufficient
`showing that Parulski discloses each of limitations 1(f), 1(l), and 1(n).
`
`With respect to limitation 1(f) (“a display for displaying an image
`framed by the camera, the display being supported by the housing, the
`display and the electronic camera being commonly movable in the housing
`when the housing is moved by hand”), Apple cites to various portions of
`Parulski to support its contention that Parulski discloses the limitation. Pet.
`24–25. e-Watch in its Preliminary Response does not dispute the contention.
`On this record, Apple has made a sufficient showing. In particular, Apple
`correctly notes (Pet. 25) that Parulski states that the picture data generated
`by the camera module is stored in the memory unit 64 and displayed on the
`display screen 56. Ex. 1006, 4:46–48.
`
`With respect to limitation 1(l) (“alphabetic input keys in the housing
`for permitting manually input digitized alphanumeric signals to be input to
`the processor, the telephonic system further used for sending the digitized
`alphanumeric signals”), Apple cites to various portions of Parulski to
`support its contention that Parulski discloses the limitation. Pet. 28–29.
`e-Watch in its Preliminary Response does not dispute the contention. On
`this record, Apple has made a sufficient showing. In particular, Apple cites
`to Parulski’s statement (Ex. 1002, 4:51–52) that “[t]he [telephone] number is
`transmitted to the fax machine via the cellular transceiver 66.” Pet. 29.
`
`With respect to limitation 1(n) (“a power supply for powering the
`system”), Apple relies on the testimony of Mr. Sasson (Ex. 1008 ¶ 52) to
`support its contention that the electronics of Parulski’s device necessarily
`must have a power supply. Pet. 31. e-Watch in its Preliminary Response
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`does not dispute the contention. On this record, Apple has made a sufficient
`showing.
`
`Apple has not, however, made a sufficient showing for what it
`identifies as limitation 1(j) (“a user interface for enabling a user to select the
`image data signal for viewing and transmission”). Pet. 27–28. With respect
`to limitation 1(j), Apple cites to various portions of Parulski to support its
`contention that Parulski discloses the limitation. Id. But the explanation is
`insufficient. Limitation 1(j) is “a user interface for enabling a user to select
`the image data signal for viewing and transmission.” Pet. 27. Apple
`explains only (1) that display screen 56 and keypad 58 are coupled to
`internal bus 60, (2) that to take a picture, Parulski uses a key on the keypad
`as an image capture switch, and (3) that the keypad is also used to transmit
`the image. Pet. 27–28. Per limitation 1(j), it is an already generated “image
`data signal” that must be selected via a user interface, not a scene of a
`picture that has yet to be taken.
`
`For limitation 1(j), Apple does not present an alternative argument
`based on the disclosure of Umezawa. We also have reviewed the testimony
`of Mr. Sasson relied on by Apple to account for limitation 1(j), and find that
`it suffers from the same deficiency. Mr. Sasson additionally notes that in
`Parulski, multiple images can be transmitted, one after the other. Ex. 1008
`¶ 46. Mr. Sasson does not explain, however, why that means the keypad is
`used to select which images are displayed for viewing or which images are
`selected for transmission. The deficiency of claim 1 applies also to claims 2,
`3, and 5, each of which depends from claim 1.
`
`Regarding independent claim 6, limitation 6(n) as identified by Apple
`(Pet. 44, “a user interface for enabling a user to selectively display the
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`IPR2015-00413
`Patent 7,365,871 B2
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`digitized framed image in the display window and subsequently transmit the
`digitized framed image over the cellular telephone network”) is similar to
`limitation 1(j) discussed above in the context of claim 1. Apple relies on the
`same deficient arguments it asserted in connection with limitation 1(j)
`regarding the disclosure of Parulski. For limitation 6(n), Apple additionally
`relies on the disclosure of Umezawa to establish that the camera is used to
`create a “framed image” of a scene, a picture of which will be taken.
`Pet. 44–45. But that does not cure the deficiency discussed above, in the
`context of limitation 1(j), regarding the selection of an already generated or
`digitized image. Apple’s explanation is inadequate. This deficiency applies
`also to claim 7, which depends from claim 6.
`
`Regarding independent claim 12, limitation 12(e) as identified by
`Apple (Pet. 48, “a memory associated with the processor for receiving and
`storing the digitized framed image, for selectively displaying in the display
`window and for selectively transmitting over a wireless telephone network
`the digitized framed image”) is similar to limitations 1(j) and 6(n) discussed
`above. According to limitation 12(e), an already digitized image must be
`subject to selection from memory for display, and, similarly, for
`transmission. Apple relies on this statement from Parulski: “The digitize[d]
`picture generated by the camera module 68 is stored in the memory unit 64
`and displayed on the display screen 56.” Pet. 27, 48 (citing Ex. 1006, 4:46–
`48). The cited text is not sufficiently on point, relative to the limitation that
`one or more stored images are selectable from memory for display. Instead,
`the image output from camera module 68 simply may be sent both to the
`display and the memory. In that regard, Apple does not provide an adequate
`explanation. For limitation 12(e), Apple additionally relies on the disclosure
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`IPR2015-00413
`Patent 7,365,871 B2
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`of Umezawa to establish that the camera is used to create a “framed image”
`of a scene a picture of which will be taken. Pet. 48–49. But that does not
`cure the deficiency with regard to the selection of an already generated or
`digitized image that is stored in memory. Apple’s explanation is inadequate.
`This deficiency applies also to claim 14, which depends from claim 12.
`
`III. CONCLUSION
`For the foregoing reasons, Apple has not shown a reasonable
`
`likelihood that it would prevail in establishing the unpatentability of any of
`claims 1–3, 5–7, 12, and 14 of the ’871 patent as obvious over Parulski and
`Umezawa.
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that the Petition is denied as to all challenged claims of
`the ’871 patent; and
`FURTHER ORDERED that no inter partes review is instituted.
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`IPR2015-00413
`Patent 7,365,871 B2
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`FOR PETITIONER:
`Brian Buroker
`Blair Silver
`Gibson, Dunn & Crutcher LLP
`bburoker@gibsondunn.com
`bsilver@gibsondunn.com
`
`FOR PATENT OWNER:
`Robert C. Curfiss
`bob@curfiss.com
`
`David O. Simmons
`IVC Patent Agency
`dsimmons1@sbcglobal.net
`
`
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`21
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