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`Tel: 571-272-7822
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`
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`Paper 13
`Entered: July 1, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`E-WATCH, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00414
`Patent 7,643,168 B2
`____________
`
`Before JAMESON LEE, GREGG I. ANDERSON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`

`
`IPR2015-00414
`Patent 7,643,168 B2
`
`
`I. INTRODUCTION
`
`On December 11, 2014, Apple Inc. (“Petitioner”) filed a Petition
`
`(Paper 1, “Pet.”) requesting an inter partes review of claims 1–31 of
`
`U.S. Patent No. 7,643,168 B2 (Ex. 1001, “the ’168 patent”). On April 9,
`
`2015, e-Watch, Inc. (“Patent Owner”), filed a Preliminary Response (Paper
`
`11, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314.
`
`We have jurisdiction under 35 U.S.C. § 314, which provides that an
`
`inter partes review may not be instituted “unless . . . 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 Petitioner has demonstrated a reasonable likelihood of
`
`prevailing in showing the unpatentability of any of claims 1–31 of the ’168
`
`patent. Accordingly, we institute an inter partes review of these challenged
`
`claims.
`
`A. Related Proceedings
`
`Petitioner identifies these related cases involving the ’168 patent: (1)
`
`E-Watch, Inc. and E-Watch Corp. 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. Pet. 53, Paper 9, 1.
`
`In addition to the present proceeding, petitions for inter partes review
`
`of the ’168 patent have been filed as follows: IPR2014-00989 (instituted
`
`and joined with IPR2015-00543, “the ’989 IPR”); IPR2015-00401;
`
`IPR2015-00407; IPR2015-00408; IPR2015-00607; and IPR2015-00611.
`
`Pet. 53, Paper 9, 1. Separate petitions for inter partes review of related U.S.
`
`2
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`

`
`IPR2015-00414
`Patent 7,643,168 B2
`
`Patent No. 7,635,871 (“the ’871 patent”)1 have been filed as follows:
`
`IPR2014-00439; IPR2014-00987(instituted and joined with IPR2015-
`
`00541); IPR2015-00402; IPR2015-00404; IPR2015-00406; IPR2015-00411;
`
`IPR2015-00610; and IPR2015-00612. Pet. 53, Paper 9, 1–2.
`
`B. The ’168 patent (Ex. 1001)
`
`The ’168 patent describes an image capture, conversion, compression,
`
`storage and transmission system. Ex. 1001, Abstract. The system includes a
`
`camera and a transmission device; the camera captures an image that is
`
`transmitted to another device using, for example, cellular signal, satellite
`
`transmission and hard line telephonic. Id. at 5:66–6:5. Captured images can
`
`be from a digital or analog camera or a video camera (e.g., a camcorder). Id.
`
`at 2:37–39.
`
`Figure 4 of the ’168 patent is reproduced below.
`
`
`
`Figure 4 of the ’168 Patent illustrates the data path after an image is captured
`
`by camera 10 and conditioned by gray scale bit map 16. Id. at 7:65–8:41.
`
`The device includes memory 46, optional viewer 48, and format select
`
`
`1 The ’168 patent is a continuation of the ’871 patent. Ex. 1001, at [63].
`
`3
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`

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`IPR2015-00414
`Patent 7,643,168 B2
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`interface switch 60 that permits automated or manual selection of the
`
`transmitting protocol, such as a Group-III facsimile format, a PC modem
`
`protocol, a wavelet compressor, or others. Id. Depending on the selected
`
`protocol, the signal output is generated and provided to communications
`
`interface module 83 for transmission. Id.
`
`C. Illustrative Claim
`
`Of the challenged claims, claims 1, 22, 24, 26, 27, and 29 are
`
`independent. Claim 1 is reproduced below:
`
`1. Apparatus comprising:
`a portable housing, the portable housing being wireless;
`an image collection device supported by the portable
`housing, the image collection device being operable to provide
`visual image data of a field of view;
`a display supported by the portable housing, the display
`being operable to display for viewing by a user a perceptible
`visual image, the perceptible visual image being generated from
`the visual image data;
`memory supported by the portable housing, the memory
`being suitable to receive visual image data in digital format, the
`memory being suitable to retain the visual image data in digital
`format,
`an input device supported by the portable housing, the
`input device being operable by the user;
`operation of the input device by the user enabling the
`memory to retain the visual image data in digital format, the
`memory being suitable to provide retained visual image data in
`digital format;
`media supported by the portable housing, the media
`being suitable to embody at least one compression algorithm;
`at least one processing platform supported by the
`portable housing, the at least one processing platform being
`operable to execute the at least one compression algorithm, the
`at least one processing platform being provided the retained
`visual image data in digital format, execution of the at least one
`
`4
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`IPR2015-00414
`Patent 7,643,168 B2
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`
`compression algorithm providing compressed visual image
`data; and
`a mobile phone supported by the portable housing, the
`mobile phone being operable to send to a remote recipient a
`wireless transmission, the wireless transmission conveying the
`compressed digital image data; and
`movement by the user of the portable housing commonly
`moving the image collection device,
`movement by the user of the portable housing commonly
`moving the display.
`
`Ex. 1001, 15:14–50.
`
`
`D. Asserted Grounds of Unpatentability
`
`
`
`Petitioner asserts that claims 1–31 of the ’168 patent are
`
`unpatentable under 35 U.S.C. § 102(b) as anticipated by Monroe.2
`
`Pet. 6–7.
`
`E. Claim construction
`
`In inter partes review, claim terms are given their broadest reasonable
`
`interpretation in light of the specification in which they appear. See
`
`37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 778 F.3d 1271,
`
`1279–83 (Fed. Cir. 2015). Petitioner identifies one term for construction
`
`(Pet. 7–8) while Patent Owner’s Preliminary Response does not include any
`
`proposals.
`
`1. “viewfinder” (claims 10 –13, 23, 25, 28, and 31)
`
`Petitioner identifies the term “viewfinder” for construction and
`
`proposes it be construed as “a device for depicting a view.” Pet. 8.
`
`Petitioner cites to the Specification’s description of embodiments in which
`
`image data is viewed through the viewfinder but where the image data is not
`
`
`2 Int. Pub. Pat. App. WO 99/035818, to Monroe, published July 15, 1999
`(Ex. 1006, “Monroe”).
`
`5
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`IPR2015-00414
`Patent 7,643,168 B2
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`received or displayed by the viewfinder itself but “in a separate back
`
`window.” Id. (citing Ex. 1001, 11:64–65); see also Fig. 7A (depicting
`
`viewfinder 194 separately from back window 198). On this record,
`
`Petitioner’s proposal is the broadest reasonable construction of the term and
`
`is adopted for purposes of this Decision.
`
`2. “media being suitable to embody . . . algorithm” (claims 1–28)
`
`We interpreted the term “media being suitable to embody . . .
`
`algorithm” in the ’989 IPR. HTC Corp. v. e-Watch, Inc., Case IPR2014-
`
`00989, slip op. at 6–8 (PTAB Dec. 9, 2014) (Paper 6). As noted above, the
`
`’989 IPR also involves the ’168 patent. While neither party identifies the
`
`term as needing construction, for the sake of consistency we interpret the
`
`term.
`
`This term appears in three different variations: (1) media being
`
`suitable to embody at least one compression algorithm in claims 1–28; (2)
`
`compression algorithm embodied at least in part in suitable programmed
`
`media in claims 29–31; and (3) transmission protocol algorithm embodied in
`
`suitable media in claims 16–18. The ’168 patent Specification does not
`
`explicitly describe these terms. The Specification does describe how an
`
`image captured by camera 10 is stored on any one of a variety of memory
`
`devices for storage. Ex. 1001, 7:24–31. One described memory device is
`
`“writeable optical media.” Id. at 7:31. The Specification does not otherwise
`
`include the word “media” in the context of the claimed invention. Neither
`
`does the Specification describe, nor define, algorithm.
`
`“Media” is defined as “the physical material, such as paper, disk, and
`
`tape, used for storing computer-based information.” MICROSOFT COMPUTER
`
`DICTIONARY 332 (2d ed. 2002). Ex. 3001. The Microsoft Computer
`
`6
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`

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`IPR2015-00414
`Patent 7,643,168 B2
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`Dictionary further defines “algorithm” as “a finite sequence of steps for
`
`solving a logical or mathematical problem or performing a task.” Id. at 23.
`
`In the context of software, algorithms are used to disclose adequate defining
`
`structure to render the bounds of the claim understandable to one of ordinary
`
`skill in the art. See, e.g., Med. Instrumentation & Diagnostics Corp. v.
`
`Elekta AB, 344 F.3d 1205, 1214 (Fed. Cir. 2003).
`
`Accordingly, we construe “media being suitable to embody . . .
`
`algorithm,” and related terms including both “media” and “algorithm,” as “a
`
`storage device for storing software to perform, among other functions, image
`
`compression and storage of transmission protocols.” ’989 IPR, Decision on
`
`Institution 7–8.
`
`3. “commonly moving” (claims 1, 22, and 24)
`
`As with “media being suitable to embody . . . algorithm,” the term
`
`“commonly moving” was construed in the ’989 IPR. ’989 IPR, Decision on
`
`Institution at 8. Again, neither party proposes an interpretation for the term.
`
`Claim 1, for example, recites “movement by the user of the portable
`
`housing commonly moving the image collection device,” and “movement by
`
`the user of the portable housing commonly moving the display.” (Emphasis
`
`added). Apart from the claims, the ’168 patent does not use the phrase
`
`“commonly moving.” Dr. Robert Stevenson’s Declaration (“Stevenson
`
`Dec.,” Ex. 1003) provides testimony that “movement of the housing by a
`
`user would also necessarily move the camera 102 and the displays 100,
`
`166.” Ex. 1003 ¶ 49; see also Pet. 17 (claim chart).
`
`We interpret “commonly move” in the context of claims 1, 22, and 24
`
`to mean that movement of the portable housing moves the image collection
`
`device and movement of the portable housing moves the display.
`
`7
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`

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`IPR2015-00414
`Patent 7,643,168 B2
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`
`II. ANALYSIS
`
`A. 35 U.S.C. § 325(d)
`
`Patent Owner argues we should exercise our discretion under 35
`
`U.S.C. § 325(d) to deny institution because the present Petition overlaps
`
`with two other petitions asserting unpatentability of the ’168 patent. Prelim.
`
`Resp. 4–5 (citing Ex. 2001). Patent Owner alleges there is substantial
`
`overlap with respect to the prior art cited and associated grounds of
`
`unpatentability. Id. at 4. More specifically, Monroe, the only alleged prior
`
`art reference asserted here, has been asserted in two of the other petitions
`
`involving the ’168 patent. Ex. 2001.3
`
`Each of the proceedings includes a different petitioner and one
`
`(IPR2015-00407) includes additional grounds to those asserted here. We
`
`need to be cognizant of the interests of other petitioners as well as those of
`
`Patent Owner. Accordingly, we decline to exercise our discretion under
`
`§ 325(d) to reject this Petition.
`
`B. Effective Date of ’168 Patent
`
`
`
`First, we review the status of Monroe as prior art against the ’168
`
`patent. Monroe was published on July 15, 1999. Ex. 1006, at [43]. The
`
`’168 patent issued from patent application No. 11/617,509, filed December
`
`28, 2006 (the ’509 application). Ex. 1001, at [21], [22]. The ’509
`
`application is a continuation of application 10/336,470, filed on January 3,
`
`2003 (“the ’470 application”).4 Id. at [63]. The ’470 application is a
`
`divisional application of application 09/006,073 (“the ’073 application”),
`
`filed on January 12, 1998. Ex. 1009, at [62]. If the claims of the ’168
`
`
`3 IPR2015-00407 and IPR2015-00611.
`4 The ’470 application issued as the ’871 patent. Ex. 1001, at [63].
`
`8
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`IPR2015-00414
`Patent 7,643,168 B2
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`patent are entitled to the effective filing date of the ’073 application (January
`
`12, 1998), then Monroe is not prior art and we would not institute an inter
`
`partes review because the only ground of unpatentability asserted by
`
`Petitioner is based on Monroe. Pet. 9.
`
`
`
`Petitioner contends that the claims of the ’168 patent are not entitled
`
`to the earlier filing date of the’073 application under 35 U.S.C. § 120
`
`because the claim of priority was only to the ’470 application and not to the
`
`’073 application. Pet. 5–6, 9–10. According to Petitioner, because the ’168
`
`patent is not entitled to the 1998 filing date of the ’073 application, Monroe
`
`is therefore prior art under 35 U.S.C. § 102(b) to the claims of the ’168
`
`patent. Id. at 9–12.
`
`
`
`The Specification of the ’168 patent states that “[t]his application is a
`
`divisional application of and claims priority from” the ’073 application. Ex.
`
`1001, 1:6–12. Petitioner notes the “specific text is an exact copy of the
`
`priority claim for the ’871 patent.” Pet. 10. Petitioner argues that “[t]his
`
`application” means the ’509 application, which claims priority from the ’470
`
`application. Id. at 10–11.5 According to Petitioner, because the ’168 patent
`
`“mis-identifies the relationship between the ‘509 and ‘470 applications,” it
`
`fails to make “specific reference” to the “relationship of the applications”
`
`required to claim priority from the ’073 application under 37 C.F.R.
`
`
`5 Petitioner further contends that “[t]he ‘509 application is not, nor could not
`[sic] be, a divisional of the ‘470 application because the ‘470 application
`was not then pending at the time the ‘509 application was filed.” Pet. 11.
`The ’509 application (filed December 28, 2006) was copending with the
`’470 application (issued April 29, 2008). We presume this was a mistake
`and Petitioner intended the ’073 application but decline to base this Decision
`on speculation as to what Petitioner might have intended.
`
`9
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`

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`IPR2015-00414
`Patent 7,643,168 B2
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`§ 1.78(a)(2)(i). Id. Petitioner concludes that the earliest date Applicant can
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`claim is the filing date of the ’470 application, January 3, 2003. Id. at 12.
`
`Patent Owner responds that “Petitioner asks the PTAB to determine a
`
`highly subjective issue related to the intent of the application before and
`
`during the revival of abandoned United States Patent Application
`
`09/006,073.” PO Resp. 5 (citing 35 U.S.C. § 311(b)). Patent Owner’s
`
`argument is not responsive to the issues raised in this petition. Specifically,
`
`Patent Owner appears to be conflating the priority claim argument of the
`
`instant Petition with a separate argument, made in IPR2015-00411, in which
`
`Petitioner challenged the Office’s decision to grant a Petition to Revive
`
`during prosecution of the ’871—not the ’168—patent.
`
`We determined that Petitioner “has not identified authority of the
`
`Board either (1) to review and overturn the March 11, 2003, decision of the
`
`Patent and Trademark Office on the Petition to Revive Parent ’073
`
`Application, or (2) to ignore that decision and make our own determination
`
`on whether the parent ’073 application should have been revived on the
`
`basis of ‘unintentional’ abandonment.” Apple Inc. v. e-Watch, Inc., Case
`
`IPR2015-00411, slip op. at 7–8 (PTAB, May 7, 2015) (“’411 IPR,” Paper
`
`12). Unlike the revival question in the ’411 IPR, where Petitioner sought to
`
`collaterally attack a petition decision on revival, the procedural issue of
`
`whether a sufficient priority claim has been made has not been decided
`
`previously during prosecution. Specifically, the issue here is whether the
`
`’509 application perfected a claim of priority to the ’073 application so that
`
`the ’168 patent is entitled to the earlier filing date of the ’073 application.
`
`In order to perfect a priority claim, the ’509 application must
`
`“contain . . . a specific reference” to the ’073 application, i.e., “the earlier
`
`10
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`

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`IPR2015-00414
`Patent 7,643,168 B2
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`filed application” under 35 U.S.C. § 120 (1999). In addition, 37 C.F.R.
`
`§ 1.78(a)(2)(i), the rule in effect as of the filing of the ’509 application,6
`
`provides:
`
`Except for a continued prosecution application filed under
`§ 1.53(d), any nonprovisional application or international
`application designating the United States of America claiming
`the benefit of one or more prior-filed copending nonprovisional
`applications or international applications designating the United
`States of America must contain or be amended to contain a
`reference to each such prior-filed application, identifying it by
`application number (consisting of the series code and serial
`number) or international application number and international
`filing date and indicating the relationship of the applications.
`Cross references to other related applications may be made
`when appropriate (see § 1.14).
`
`(Emphasis added).
`
`Petitioner argues the alleged mistake in referring to the ’509
`
`application as a divisional of the ’073 application requires us to decide
`
`the priority claim is deficient. See Pet. 10–11. We agree that the
`
`language at column 1 of the Specification of the ’509 application does
`
`not accurately represent the chain of priority of the ’509 application.
`
`Rather, it is language copied from the parent application, the ’470
`
`application. Id. at 10.
`
`Applicant filed a Preliminary Amendment that was not entered,
`
`at least not as Applicant requested. See Ex. 1004. Had the
`
`Preliminary Amendment been entered column 1 lines 6 through 12 of
`
`the Specification would read as follows:
`
`
`6 37 C.F.R. § 1.78(a)(2)(i) was in effect for applications filed prior to the
`effective date of the America Invents Act, March 16, 2013.
`
`11
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`IPR2015-00414
`Patent 7,643,168 B2
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`
`This application is a continuation of co-pending Patent Application
`Serial No. 10/336,470 filed on January 3, 2003 entitled APPARATUS
`FOR CAPTURING, CONVERTING AND TRANSMITTING A VISUAL
`IMAGE SIGNAL VIA A DIGITAL TRANSMISSION SYSTEM. This
`application is a divisional application of and claims priority from a
`non-provisional United States Application entitled Apparatus For
`Capturing, Converting And Transmitting A Visual Image Signal Via
`A Digital Transmission System, Ser. No. 09/006,073, having a filing
`date of Jan. 12, 1998; the specification and drawings of which are
`hereby incorporated by reference.
`
`(Ex. 1001, 1:6–12 (emphasis added to additional language from Ex. 1004)).
`
`On the record before us, the exact nature of any possible error is not
`
`obvious and, as such, the circumstances here do not allow us to proceed with
`
`a full understanding of any error. Even were the Preliminary Amendment
`
`entered as set forth above, the resulting language does not clearly and
`
`unambiguously indicate whether “[t]his application” is the ’509 or the ’470
`
`application or how the ’509 application is related to the ’073 application.
`
`The Federal Circuit draws a distinction between what an Examiner
`
`would understand in the course of prosecution of a pending application and
`
`what the public would understand. As to an Examiner, “[t]he proper
`
`standard by which to evaluate the sufficiency of incorporation by reference
`
`language, at this stage of the proceedings, is whether the identity of the
`
`incorporated reference is clear to a reasonable examiner in light of the
`
`documents presented.” Harari v. Hollmer, 602 F.3d 1348, 1352 (Fed. Cir.
`
`2010). Conversely, as to an issued patent the “reasonable examiner”
`
`standard does not apply. Hollmer v. Harari, 681 F.3d 1351, 1357 (Fed. Cir.
`
`2012) (“Harari II”) . Because at issue is an issued patent, we determine that
`
`the standard is similar to that articulated in Harari II, i.e., what would a
`
`person other than an examiner understand? Harari II, 681 F.3d at 1357.
`
`12
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`IPR2015-00414
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`The relationship between the ’509 application and the earlier filed
`
`’073 application is not identified accurately. Specifically, the ’509
`
`application is not a divisional of the earlier-filed ’073 application. From the
`
`perspective of the public, the stated relationship is incorrect and the priority
`
`claim has not been perfected.
`
`On this record, we are not persuaded that the ’509 application
`
`accurately “indicat[es] the relationship of the applications,” as required by
`
`37 C.F.R. § 1.78(a)(2)(i) (pre-AIA), in order to claim priority to the earlier
`
`filed application. Because Monroe was published on July 15, 1999, and
`
`because we determine on this record that the ’509 application is not entitled
`
`to the priority date of January 12, 1998, Petitioner has shown sufficiently for
`
`purposes of this decision that Monroe constitutes prior art to the challenged
`
`claims of the ’168 patent.
`
`C. Anticipation of Claims 1–31 by Monroe
`
`Petitioner contends that claims 1–31 of the ’168 patent are anticipated
`
`under 35 U.S.C. § 102(b) by Monroe. Pet. 12–52. Petitioner supports its
`
`positions with the Declaration of Steven J. Sasson (“Sasson Declaration,”
`
`Ex. 1010 ¶¶ 15–128).
`
`Petitioner alleges PCT Application PCT/US99/00664 claimed priority
`
`to the ’073 application, included a substantially identical specification to the
`
`’073 application, and was published on July 15, 1999, as WO99/035818
`
`(Monroe). Pet. 3 (citing Ex. 1006). Petitioner contends that the disclosure
`
`of Monroe and the Specification of the ’168 patent are “substantially
`
`identical.” Id. at 12. Petitioner argues that that must be the case or the
`
`claims of the ’168 patent would not be supported. Id. (citing Ex. 1010 ¶ 10).
`
`13
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`IPR2015-00414
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`
`Petitioner goes beyond pointing out that the disclosures of Monroe
`
`and the ’168 patent are substantially identical. The Petition specifically
`
`identifies those portions of Monroe that disclose each claim limitation in
`
`claims 1–31. Pet. 12–52. Petitioner also cites to the Sasson Declaration for
`
`additional support. Id. (citing Ex. 1010 ¶¶ 21–128).
`
`We agree with Petitioner that the Specifications of the ’168 patent and
`
`Monroe are substantially identical. For example, with two exceptions, both
`
`the ’168 patent and Monroe include the same seventy-three sheets of
`
`drawings including Figures 1 through 9, inclusive of additional drawings for
`
`many of the figures, e.g., 6A and 6B. The first exception is that Figure 1 of
`
`Monroe includes an “Optional Modem” (drawn in dotted line) before and
`
`after communication channel 32. The second is that the title of Figure 8E is
`
`hand drawn in Monroe and is printed in the ’168 patent.
`
`We have reviewed Petitioner’s argument and evidence that Monroe
`
`discloses each element of claims 1–31 of the ’168 patent, including the
`
`Sasson Declaration as specified above. Based on this record, we conclude
`
`that Petitioner has demonstrated a reasonable likelihood of prevailing on its
`
`challenge that claims 1–31 would are anticipated under 35 U.S.C. § 102(b)
`
`by Monroe.
`
`III. ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that inter partes review is instituted as to claims 1–31 as
`
`anticipated under 35 U.S.C. § 102(b) by Monroe; and
`
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(a), inter
`
`partes review of the ’168 patent is hereby instituted commencing on the
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`IPR2015-00414
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`entry date of this Order, and, pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`
`§ 42.4, notice is hereby given of the institution of a trial.
`
`
`
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`15
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`IPR2015-00414
`Patent 7,643,168 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
`
`
`16