`
`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 IPR2015-00413
`
`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
`
`

`

`TABLE OF CONTENTS
`
`PAGE
`
`B.
`
`C.
`D.
`
`
`INTRODUCTION .......................................................................................... 1
`I.
`II. GROUNDS FOR STANDING PURSUANT TO 37 C.F.R.
`§ 42.104(A) ..................................................................................................... 3
`III. OVERVIEW OF THE ‘871 patent ................................................................. 3
`IV.
`IDENTIFICATION OF CHALLENGE PURSUANT TO 37 C.F.R.
`§ 42.104(B) ..................................................................................................... 9
`A.
`37 C.F.R. § 42.104(b)(1): Claims For Which Inter Partes
`Review Is Requested ............................................................................ 9
`37 C.F.R. § 42.104(b)(2): The Prior Art And Specific Grounds
`On Which The Challenge To The Claims Is Based ............................. 9
`37 C.F.R. § 42.104(b)(3): Claim Construction .................................... 9
`37 C.F.R. § 42.104(b)(4): How The Construed Claims Are
`Unpatentable ....................................................................................... 11
`37 C.F.R. § 42.104(b)(5): Supporting Evidence ................................ 11
`E.
`THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE ‘871 PATENT IS UNPATENTABLE ................... 11
`A.
`Claims 1-3, 5-7, 12 and 14 Are Obvious Over Parulski In View
`of Umezawa ........................................................................................ 11
`1.
`Applicant’s Traversal Of Parulski Was Facially Incorrect
`and failed to build a record that would affect institution
`under 35 U.S.C. § 325(d). ........................................................ 15
`The Monroe Rule 131 Affidavit Is Insufficient ....................... 18
`Parulski and Umezawa Render Obvious Claims 1-3, 5-7,
`12 and 14 of the ‘871 patent. ................................................... 21
`B. Different Bases of Unpatentability in Petitioner’s Three
`Petitions Regarding the ‘871 Patent are Independent, Distinct
`and not Redundant .............................................................................. 54
`VI. MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8(A)(1) ........ 56
`A.
`37 C.F.R. § 42.8(b)(a): Real Party-In-Interest ................................... 56
`B.
`37 C.F.R. § 42.8(b)(2): Related Matters ............................................ 56
`
`V.
`
`2.
`3.
`
`
`
`
`
`-i-
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`
`

`

`TABLE OF CONTENTS
`(continued)
`
`PAGE
`
`
`
`C.
`
`37 C.F.R. § 42.8(b)(3) and (4): Lead and Back-up Counsel and
`Service Information ............................................................................ 57
`VII. CONCLUSION ............................................................................................. 58
`
`
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
`
`TABLE OF AUTHORITIES
`
`Page
`
`
`
`
`
`CASES
`
`Brown v. Barbacid,
`276 F.3d 1327 (Fed. Cir. 2002) .......................................................................... 19
`
`Chen v. Bouchard,
`68 U.S.P.Q.2d 1705 (Fed. Cir. 2003) ................................................................. 19
`
`Coleman v. Dines,
`754 F.2d 353 (Fed. Cir. 1985) ............................................................................ 20
`
`Cooper v. Goldfarb,
`154 F.3d 1321 (Fed. Cir. 1998) .......................................................................... 19
`
`Graham v. John Deere Co.
`383 U.S. 1 (1966) ................................................................................................ 13
`
`Griffith v. Kanamaru,
`816 F.2d 624 (Fed. Cir. 1987) ............................................................................ 20
`
`In re Am. Acad. Sci. Tech. Ctr.,
`367 F.3d 1359 (Fed. Cir., 2004) ......................................................................... 10
`
`In re McIntosh,
`230 F.2d 615 (CCPA 1956) ................................................................................ 20
`
`In re Mulder,
`716 F.2d 1542 (Fed. Cir. 1983) .......................................................................... 20
`
`Ireland v. Smith,
`97 F.2d 95 (CCPA 1938) .................................................................................... 20
`
`Kendall v. Searles,
`173 F.2d 986 (CCPA 1949) ................................................................................ 20
`
`
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`-iii-
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`

`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
`
`
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) .....................................................................................passim
`
`Mahurkar v. C.R. Bard, Inc.,
`79 F.3d 1572 (Fed. Cir. 1996) ............................................................................ 19
`
`Morway v. Bondi,
`203 F.2d 742 (CCPA 1953) ................................................................................ 20
`
`Price v. Symsek,
`988 F.2d 1187 (Fed. Cir. 1993) .......................................................................... 19
`
`Rieser v. Williams,
`255 F.2d 419 (CCPA 1958) ................................................................................ 20
`
`STATUTES
`
`35 U.S.C. §§ 102 ........................................................................................................ 9
`
`35 U.S.C. § 102(b) ............................................................................................... 5, 12
`
`35 U.S.C. § 102(e) ............................................................................................... 1, 11
`
`35 U.S.C. § 103 ............................................................................................ 11, 12, 13
`
`35 U.S.C. § 103(a) ..................................................................................................... 9
`
`35 U.S.C. § 325(d) ......................................................................................... 2, 15, 18
`
`OTHER AUTHORITIES
`
`35 C.F.R. § 42.1(b) .................................................................................................. 56
`
`37 C.F.R. § 1.68 ....................................................................................................... 11
`
`37 C.F.R § 1.131 ...................................................................................................... 18
`
`37 C.F.R. § 1.131(b) ................................................................................................ 19
`
`37 C.F.R. § 41.100(b) ................................................................................................ 9
`
`
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`-iv-
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
`
`
`37 C.F.R. § 42.8(A)(1) ............................................................................................. 56
`
`37 C.F.R. § 42.8(b) .................................................................................................. 56
`
`37 C.F.R. § 42.8(b)(2) .............................................................................................. 56
`
`37 C.F.R. § 42.8(b)(3) and (4) ................................................................................. 57
`
`37 C.F.R. § 42.8(b)(a) .............................................................................................. 56
`
`37 C.F.R. § 42.10(b) ................................................................................................ 57
`
`37 C.F.R. § 42.104(A)................................................................................................ 3
`
`37 C.F.R. § 42.104(B) ................................................................................................ 9
`
`37 C.F.R. § 42.104(b)(1) ............................................................................................ 9
`
`37 C.F.R. § 42.104(b)(2) ............................................................................................ 9
`
`37 C.F.R. § 42.104(b)(3) ............................................................................................ 9
`
`37 C.F.R. § 42.104(b)(4) .......................................................................................... 11
`
`37 C.F.R. § 42.104(b)(5) .......................................................................................... 11
`
`IPR2014-00439, Paper 16, pp. 5-8 ......................................................................... 1, 2
`
`MPEP § 2111 ........................................................................................................... 10
`
`MPEP § 2141 ..................................................................................................... 14, 15
`
`
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`-v-
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
`
`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. 5,666,159 (“the ‘159 patent” or “Parulski”)
`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”)
`
`
`
`
`
`
`
`
`
`
`Ex. 1001
`Ex. 1002
`
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1006
`Ex. 1007
`Ex. 1008
`Ex. 1009
`
`
`
`
`
`
`
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`-vi-
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
`
`INTRODUCTION
`
`
`I.
`
`The Petition demonstrates that U.S. Patent No. 5,666,159 (“Parulski” or “the
`
`‘159 patent”) in combination with U.S. Patent No. 5,491,507 (“Umezawa” or “the
`
`‘507 patent”) renders at least claims 1-3, 5-7, 12, and 14 of U.S. Patent No.
`
`7,365,871 (“Monroe” or “the ‘871 patent”) obvious. Petitioner further provides
`
`declaratory evidence (Ex. 1008) from a distinguished expert, Dr. Sasson, who has
`
`been working in this technological field for over 40 years, that corroborates why a
`
`POSA (person of ordinary skill in the art at the time of the invention) would have
`
`found it obvious to combine the references, and once combined, why the
`
`references render obvious each and every element of the claims.
`
`Petitioner asserts that Parulski, which was overcome through a Rule 131
`
`Declaration (Ex. 1002, which may also be referred to as an Affadavit herein) in
`
`original prosecution, is a proper reference in this proceeding for at least two
`
`reasons. First, the 131 Declaration filed during original prosecution failed to
`
`demonstrate the claimed invention was conceived and diligently reduced to
`
`practice before the §102(e) date of Parulski. The Board already found this to be
`
`true in a concurrent inter partes review proceeding.1 The Board agreed there were
`
`both major gaps of unexplained activity and that the technology of the claimed
`
`
`1 See IPR2014-00439, Paper 16, pp. 5-8.
`
`
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`

`

`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
`
`
`invention was not developed until at the earliest 1997, if at all.2 Second, Petitioner
`
`asserts that the lack of scrutiny provided by the original examiner to both the
`
`original 131 Declaration (Ex. 1002) and Parulski (Ex. 1006) makes clear that
`
`Petitioner is not asserting the “same or substantially the same prior art or
`
`arguments previously were presented to the Office.” 35 U.S.C. §325(d). The Board
`
`has also agreed with this position insofar as the concurrent proceeding was
`
`instituted based on Parulski.3
`
`Moreover, not only is Parulski a proper reference, but it teaches or suggests
`
`almost every claim feature4, and anything it may be alleged to lack is explicitly or
`
`inherently found in Umezawa, which issued well over a year before the effective
`
`filing date of the ‘871 patent and cannot be antedated Accordingly, the Board
`
`should institute trial for claims 1-3, 5-7, 12 and 14 of the ‘871 patent.
`
`
`2 Id.
`
`3 Id. at 14-15.
`
`4 Id. at 5-6 and 14-15, relying on a continuation application of Parulski, U.S.
`
`Patent No. 6,122,256 (“the ‘256 patent”); see also IPR2014-00439, Paper 1, pp. 8-
`
`32 relying on the ‘256 patent, which was relied upon by the Board in its decision to
`
`institute. The ‘159 patent was used in rejections in the Office Action (Ex. 1003, pp.
`
`10-12) from original prosecution.
`
`
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`-2-
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`

`

`
`
`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
`
`The ‘871 patent is currently being asserted against Apple by the alleged
`
`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. E-Watch has asserted this litigation based on the defective and
`
`unsupported Rule 131 Affidavit, which attempts to establish an invention date five
`
`(5) years earlier than the earliest applicable filing date (January 12, 1998).
`
`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. 09/006073 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:
`
`
`
`-3-
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`

`
`
`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
`
`“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
`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, 1:25-36.5
`The application for the ‘871 patent includes claims for 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 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.
`
`5 In this Petition, all emphasis is added unless otherwise indicated.
`
`
`
`-4-
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`

`

`
`
`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
`
`The elements disclosed in Fig. 6A and B (below) of the ‘871 patent are
`
`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). Fig 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).
`
`Regarding the then pending base independent claim 43, the Examiner explained
`
`
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`-5-
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
`
`
`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 claims, the Examiner
`
`also recognized that Parulski disclosed much of the claimed subject matter.
`
`Referring to Figs. 7-9 (reproduced below), the Examiner noted that “Parulski
`
`discloses a self-contained image processing system (see Figs 1, 2, and 7-9) for
`
`capturing a visual image and transmitting it to a remote receiving station (see
`
`abstract), with the system comprising an image capture device (camera module 10,
`
`column 3, lines 6 through 40), a processor (pen-based computer 12) for generating
`
`a data signal representing the image (column 3, lines 27 through column 4, line 6),
`
`a communications device (RF transmitter module 14) adapted for transmitting the
`
`data signal to the remote receiving station (column 4, lines 4 through 25), and a
`
`wireless transmission system between the communications device and the
`
`compatible receiving station (column 4, lines 7 through 25).” Ex. 1003, Office
`
`Action dated September 27, 2004, p. 10.
`
`
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`-6-
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`

`
`
`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
`
`
`
`In addition to Parulski, 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
`
`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
`
`
`
`-7-
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
`
`
`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 and 5:29-6:5.)
`
`
`
`Both Parulski and Umezawa disclose hand held devices which record and
`
`transmit digital audio and picture data over a wireless cell phone. They incorporate
`
`modular components having conventional and predictable functions, including an
`
`LCD display, control panel, memory, processor, and battery. The combination of
`
`Parulski and Umezawa yields the subject matter of the ‘871 patent claims.
`
`
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`-8-
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`

`

`
`IV.
`
`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
`
`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 1-3, 5-7, 12, and 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. 5,666,159 (Parulski) (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 1-3, 5-7, 12 and 14 are unpatentable under pre-AIA 35 U.S.C.
`
`§ 103(a) over Parulski 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
`
`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
`
`
`
`-9-
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
`
`
`broadest reasonable interpretation, which for the avoidance of doubt for one term is
`
`given below. Because the standard for claim construction at the Patent Office is
`
`different than that used during litigation in a U.S. 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 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.
`
`
`
`-10-
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`

`

`
`
`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
`
`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 1-3, 5-7, 12 and 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 1-3, 5-7, 12 and 14 Are Obvious Over Parulski In View of
`Umezawa
`
`Claims 1-3, 5-7, 12 and 14 are obvious under 35 U.S.C. § 103 in view of the
`
`disclosure of a teleconferencing camcorder in Parulski and the disclosure of a
`
`video telephone in Umezawa patent. Parulski was issued on September 9, 1997,
`
`based on an application filed April 24, 1995. The Parulski patent is prior art under
`
`35 U.S.C. § 102(e). Umezawa was issued on February 13, 1996, based on an
`
`
`
`-11-
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`application filed October 22, 1993. The Umezawa patent is prior art to the ‘871
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`patent under 35 U.S.C. §102(b).
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`A claim is not patentable “if the differences between the subject matter
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`sought to be patented and the prior art are such that the subject matter as a whole
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`would have been obvious at the time the invention was made to a person having
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`ordinary skill in the art.” 35 U.S.C. §103. The basis for patentability of the ‘871
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`patent claims over the prior art rests on the allegedly novel combination of known
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`structures having specific known functional features.
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`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
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`above, combining conventional components – having predictable features – such as
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`a i) housing, ii) image capture device, iii) display, iv) processor in the housing for
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`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.) At the time of the filing of
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`the ‘871 patent, all the claimed components of the claimed combinations recited in
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`claims 1-3, 5-7, 12 and 14 were well known and were being combined by those of
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`ordinary skill in the art in various combinations. Ex. 1008, Sasson Decl., ¶ 21. The
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`ability to combine various components to incorporate their known features
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`involves mere routine skill in the art. Id.
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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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`Notwithstanding the Patentee’s allegations of novelty, the combination of
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`known camera and cell phone components would have been obvious to a POSA.
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`The ‘159 patent discloses a self-contained image processing system for capturing a
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`visual image and transmitting it to a remote receiving station. See Ex. 1003, p. 10.
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`The ‘507 patent also discloses video telephone equipment which permits a user to
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`transmit and receive pictures and speech integrated in a hand held casing. See Ex.
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`1007, Umezawa, 1:5-10.
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`For the prior art ground, Petitioner states where each element is found in the
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`prior art, i.e., Petitioner evaluates the scope and contents of the prior art, any
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`differences between the art and the claims, and the knowledge of person of
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`ordinary skill in the art in accordance with Graham v. John Deere Co. 383 U.S. 1
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`(1966) and KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).6 For each ground
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`under § 103 a more than adequate written rationale is provided to support the
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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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`6 E-Watch has provided no evidence, and Petitioner is aware of none,
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`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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`or implicit in the ‘159 patent, a POSA would have found it obvious to combine the
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`‘159 patent with the ‘507 patent to enhance the teleconferencing system of Parulski
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`with the well-known features of Umezawa. “[A] 'patent for a combination which
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`only 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 Parulski and Umezawa address the same technical issues
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`as the ‘871 patent claims, i.e., creating a hand held image display and transmission
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`device, that is, an integrated wireless telephone and image processing device which
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`is handheld and portable and includes a variety of integrated features permitting
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`image and audio transmission and reception within a small self-powered structure.
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`Ex. 1008, Sasson Decl., ¶ 72-73. These are routine technical problems about which
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`a POSA would have been familiar. Id. So a POSA would have found it obvious,
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`based on the similarity of the problems, to look to references such as Parulski and
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`-14-
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`Umezawa to suggest solutions. Id. As of the effective filing date of the ‘871 patent,
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`a POSA would have found it obvious to combine the features of each of Parulski
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`and Umezawa because they both relate to similar technical issues and their
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`combination would have been nothing more than combining prior art elements
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`according to known methods, with no change in their respective functions, to yield
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`predictable results. Id. See, KSR, 550 U.S. at 416.; 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 Parulski, including Umezawa’s rotatable
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`camera, processor functionality and user interface functionality which permit hand-
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`held video-phone conferencing, at least for the purpose of providing video
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`conference functionality in Parulski’s handheld telephone/camera so that Parulski’s
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`telephone/camera could be used for video conferencing as well as taking/sending
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`and receiving still photographs. Ex. 1007, Umezawa, e.g., Fig. 7 and 1:7-10 and
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`36-40. Ex. 1008, Sasson Decl., ¶ 23.
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`1.
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`Applicant’s Traversal Of Parulski Was Facially Incorrect
`and failed to build a record that would affect institution
`under 35 U.S.C. § 325(d).
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`In addition to the Board finding that the related ‘256 patent (a continuation
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`of the ‘159 patent), either alone or in combination with US Patent No. 5,893,037
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`(Reele) likely rendered unpatentable claims 1-15 of the ‘871 patent in IPR2014-
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`00439, the ‘159 patent was cited in the file history of the ‘871 patent. As applied
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`-15-
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`by the Examiner, Parulski anticipated Applicant’s then pending claims by
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`disclosing “a self-contained image processing system (see Figs. 1, 2 and 7-9) for
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`capturing a visual image and transmitting it to a remote receiving station (see
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`abstract), with the system comprising an image capture device (camera module 10,
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`column 3, lines 6 through 40), a processor (pen-based computer 12) for generating
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`a digital signal representing the image (column 3, lines 27 through column 4, line
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`6), a communications device (RF transmitter module 14) adapted for transmitting
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`the data signal to the remote receiving station (column 4, lines 4 through 25), and a
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`wireless transmission system between the communications device and the
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`compatible receiving station (column 4, lines 7 through 25).” Ex. 1003, Office
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`Action dated 9/27/2004, p. 10.
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`Applicant argued that Parulski did not “disclose, nor does it suggest the use
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`of a combi