United States Patent & Trademark Office
`Patent Trial & Appeal Board
`_________________________________________
`
`IRON DOME LLC
`Petitioner
`
`v.
`
`E-WATCH, INC.
`Patent Owner
`_________________________________________
`
`Petition for Inter Partes Review
`of
`
`Patent No. 7,365,871 (to David Monroe)
`Titled: Apparatus for Capturing, Converting and Transmitting …
`Issued from: Application No. 10/336,470
`Issue date: April 29, 2008
`_________________________________________
`
`For Paralegal:
`Number of Claims Challenged = 15
`Power of Attorney enclosed
`Fee paid online by credit card
`
`Contact: Steven Yu
`Phone: 202.262.0426
`Email: syu@patent-intercept.com
`
`e-Watch, Inc.
`EXH. 2004
`Petitioner: Apple, Inc. , et al.
`Patent Owner: e-Watch, Inc.
`IPR2015-00414
`
`1
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`US 7,365,871
`
`Table of Contents
`
`
`I.
`
`II.
`
`Introductory Matters .............................................................................. - 1 -
`A.
`Relief Requested ............................................................................................. - 1 -
`B.
`Grounds for Standing .................................................................................... - 1 -
`C. Mandatory Notices ......................................................................................... - 1 -
`Prior Art References ............................................................................... - 3 -
`A.
`Earliest possible effective filing date is January 12, 1998 ....................... - 3 -
`B.
`Swear-Behind Affidavit Under Rule 131 ................................................... - 3 -
`III. Technical Background & Claim Construction...................................... - 6 -
`A.
`Technical Background of the Challenged Patent ..................................... - 6 -
`B.
`Claim Construction ........................................................................................ - 6 -
`IV. Grounds for Challenge ........................................................................... - 8 -
`A.
`Parulski - primary reference.......................................................................... - 8 -
`B.
`Reele - secondary reference .......................................................................... - 8 -
`Claim Analysis ........................................................................................ - 9 -
`Independent Claim 1 ..................................................................................... - 9 -
`Claim 2............................................................................................................ - 14 -
`Claim 3............................................................................................................ - 15 -
`Claim 4............................................................................................................ - 15 -
`Claim 5............................................................................................................ - 16 -
`Independent Claim 6 ................................................................................... - 17 -
`Claim 7............................................................................................................ - 22 -
`Claim 8............................................................................................................ - 22 -
`Independent Claim 9 ................................................................................... - 23 -
`Claim 10 ......................................................................................................... - 28 -
`Claim 11 ......................................................................................................... - 28 -
`Independent Claim 12 ................................................................................. - 28 -
`Claim 13 ......................................................................................................... - 32 -
`ii
`
`V.
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`2
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`

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`Claim 14 ......................................................................................................... - 32 -
`Claim 15 ......................................................................................................... - 32 -
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`US 7,365,871
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`US 7,365,871
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`Exhibit List
`Exh. 1001 U.S. Patent No. 7,365,871 (‘challenged patent’)
`
`Exh. 1002 Parulski et al.; U.S. Patent No. 6,122,526 (‘Parulski’)
`
`Exh. 1003 Reele et al.; U.S. Patent No. 5,893,037 (‘Reele’)
`
`Exh. 1004 “AFFIDAVIT OF DAVID A. MONROE UNDER 37 CFR 1.131” dated
`Dec. 27, 2004 in the prosecution history of the challenged patent
`(‘Affidavit’)
`
`Exh. 1005 “OFFICE COMMUNICATION” dated Aug. 9, 2005 in the
`prosecution history of the challenged patent (‘Office Action’)
`
`
`
`
`Citation Form Used
`
`
`Reference to supporting documents indicated by “@____”.
`Citations to U.S. Patents are shown as [column number : line numbers].
`Citations to line-numbered documents are shown as [page number : line numbers].
`Claim terms are distinguished from other text by “underlining.”
`
`
`
`
`
`iv
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`4
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`US 7,365,871
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`Issue Presented
`
`
`
`The challenged patent was recently asserted in patent infringement lawsuits
`
`against mobile smartphones that transmit photo images over wireless cellular
`
`networks, such as Apple’s iPhone 4S and Samsung’s Galaxy SIII. A search of the
`
`prior art reveals that the claims are obvious over two patent publications that both
`
`disclose a combination camera-phone that transmits digital photos over wireless
`
`cellular networks. Simply put, what the challenged patent claims as an invention was
`
`already known in the prior art.
`
`
`
`v
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`US 7,365,871
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`I.
`
`Introductory Matters
`
`IRON DOME LLC (‘Petitioner’) petitions for Inter Partes Review (‘IPR’) of U.S.
`
`Patent No. 7,365,871 (‘challenged patent’; @Exh. 1001), which is owned by E-
`
`WATCH, INC.
`
`A. Relief Requested
`Petitioner requests cancellation of claims 1-15 (total of 15 claims) of the
`
`challenged patent for obviousness under 35 U.S.C. § 103.
`
`B. Grounds for Standing
`Petitioner certifies that the challenged patent is available for IPR and that
`
`Petitioner is not barred or estopped from requesting an IPR challenging the patent
`
`claims on the grounds identified in this petition.
`
`C. Mandatory Notices
`Real Parties-in-Interest: (1) IRON DOME LLC, a Virginia limited liability
`
`
`
`company, which is a wholly-owned subsidiary of ROZMED LLC, a Virginia limited
`
`liability company; and (2) Steven S. Yu, M.D., an individual residing in Rockville,
`
`Maryland and the managing member of ROZMED LLC.
`
`
`
`Individual Steven S. Yu, M.D. declares that there are no other parties that are
`
`funding this IPR, nor participating in any manner in this IPR; and further that this
`
`statement is being made with the knowledge that willful false statements and the like
`
`so made are punishable by fine or imprisonment, or both, under Section 1001 of Title
`
`18 of the United States Code.
`
`
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`US 7,365,871
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`
`
`Related Matters: The challenged patent has been asserted by the patent owner
`
`E-Watch, Inc. in litigation against numerous defendants alleging infringement by
`
`smartphones that are capable of transmitting photo images over cellular networks. On
`
`or about December 9, 2013, the patent owner E-Watch, Inc. filed the following civil
`
`actions in the U.S. District Court for the Eastern District of Texas: 2:13-cv-01061
`
`through 01064, 01071, and 01073 through 01078.
`
`
`
`Individual Steven S. Yu, M.D. declares that Petitioner is not a party to any of
`
`these civil actions, nor has Petitioner been given or taken any direct financial interest
`
`relating to the outcome of these civil actions; and further that this statement is being
`
`made with the knowledge that willful false statements and the like so made are
`
`punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of the
`
`United States Code.
`
`
`
`Electronic Service: Petitioner consents to service by email at:
`
`syu@patent-intercept.com.
`
`Lead Counsel
`
`Back-Up Counsel
`
`Steven Yu (Reg. No. 58,776)
`ROZMED LLC
`PO Box 10034
`Gaithersburg, MD 20898
`Tel: 202.262.0426
`Email: syu@patent-intercept.com
`
`John J. Yim (Reg. No. 47,197)
`JOHN J. YIM & ASSOCIATES LLC
`7600 Leesburg Pike
`East Building, Suite 470
`Tysons Corner, VA 22043
`Tel: 703.749.0500
`Fax: 202.379.1723
`Email: jyim@yimassociates.com
`
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`US 7,365,871
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`II. Prior Art References
`
`A. Earliest possible effective filing date is January 12, 1998
`The challenged patent was granted from a divisional of application Serial No.
`
`09/006,073 filed on January 12, 1998. Thus, the earliest possible effective filing date is
`
`January 12, 1998.1 The prior art publications referenced herein are as follows.
`
`1. Parulski et al.; U.S. Patent No. 6,122,526 (‘Parulski’ @Exh. 1002)2
`§ 102(e) prior art date = Apr. 24, 1995
`
`2. Reele et al.; U.S. Patent No. 5,893,037 (‘Reele’ @Exh. 1003)3
`§ 102(e) prior art date = Dec. 9, 1994
`
`Neither of the above patent publications were specifically applied in a rejection
`
`against the claims during the original prosecution.
`
`B. Swear-Behind Affidavit Under Rule 131
`In the prosecution of the challenged patent, the applicant submitted an
`
`affidavit under Rule 131 along with evidence to “swear-behind” prior art that the
`
`
`1 We reserve the right to dispute whether the challenged claims should legitimately
`have the benefit of this or any other earlier filing date (or even the latest filing date,
`i.e. lack of written support).
`2 Parulski is a U.S. patent granted from application Serial No. 09/232,594 (filed on
`Jan. 19, 1999), itself a continuation of application Serial No. 08/842,458 (filed on
`April 24, 1997), itself a divisional of application Serial No. 08/426,993 that was filed
`on April 24, 1995. Therefore, Parulski is prior art under at least 35 U.S.C § 102(e).
`3 Reele is a U.S. patent granted from application Serial No. 08/739,237 filed on
`October 29, 1996, which itself is a continuation of application Serial No. 08/353,023
`filed on December 9, 1994. Therefore, Reele is prior art under at least 35 U.S.C §
`102(e).
`
`
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`examiner was applying to reject the claims. @Affidavit (Exh. 1004). For point of
`
`reference, January 12, 1998 is the earliest possible effective filing date for the
`
`challenged patent. @Affidavit 1 ¶2. The examiner’s earliest prior art was dated March
`
`18, 1994. @3 ¶5.
`
`After enumerating a series of dates and associated actions, the inventor’s
`
`affidavit concludes that his invention occurred on March 18, 1993 (or earlier). @5
`
`¶17. In addition, the inventor declares that there was diligent reduction to practice
`
`from conception on March 18, 1993 (or earlier) and over four subsequent years to
`
`when the first prototype was made in mid-1997 and when the commercial product
`
`was made in late 1997. @4 ¶14, 5 ¶17. After the Rule 131 affidavit was submitted to
`
`the examiner, the examiner sent an “OFFICE COMMUNICATION” indicating that the
`
`affidavit was sufficient to overcome four of the six prior art references. @Office
`
`Action 2 ¶2 (Exh. 1005, p. 3).
`
`Petitioner has thoroughly reviewed the inventor’s affidavit. First, it is not clear
`
`how the asserted dates and the associated actions firmly establish that the inventor in
`
`March 1993, had full possession of the invention as now claimed in the challenged patent.
`
`This is almost five years before the January 1998 filing date. In 1993, the inventor was
`
`working in the field of wireless communication devices, and this work may have been
`
`in a direction towards the invention described in the January 1998 patent application (as
`
`were many of the inventor’s peers in this rapidly developing technology at the time).
`
`
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`US 7,365,871
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`But merely working in the relevant technological field in a direction towards the
`
`invention does not establish that in 1993, the inventor had full possession of the
`
`invention as now claimed in the challenged patent.
`
`Second, moving the invention date back by almost five years before the actual
`
`filing date is far beyond the ordinary grace period granted by U.S. patent laws. With
`
`the practical understanding that inventors are typically busy people (as well their
`
`patent attorneys), having many demands on their time and other important projects
`
`requiring their attention, the U.S. patent laws will concede to moving the invention
`
`date back a few days or even a few weeks so long as the inventor demonstrates that he
`
`was diligently reducing his invention to practice for that duration. But on its face,
`
`asking to have the effective invention date moved back by almost five years is out of the
`
`question.
`
`In summary, there are legitimate questions about the legal sufficiency of the
`
`applicant’s attempt to antedate the prior art. If the patent owner wishes to maintain
`
`this assertion of prior conception, then the evidence submitted warrants far more
`
`scrutiny than what was given by the examiner in the original prosecution of the
`
`challenged patent. Petitioner intends to use discovery, as permitted by the IPR rules,
`
`to further investigate this issue.
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`US 7,365,871
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`III. Technical Background & Claim Construction
`A. Technical Background of the Challenged Patent
`
`The challenged patent is directed to a cellular communication system that has a
`
`camera to capture an image, compress the image, and transmit the image to a remove
`
`recipient device over a wireless cellular network. @1:25-36, 64-66. For example, FIG.
`
`7 shows a camera 190 having a lens 192 and viewfinder 194. A cellular phone is
`
`integrated into the camera housing to that images can be transmitted to a remote
`
`receiving station over a wireless cellular network. @11:16-19. The keypad for the
`
`cellular phone is shown on the back display window 198. @11:19-20. FIG. 4 shows
`
`an example of a remote receiving station for receiving images from the camera system
`
`over the wireless communication channel 32 (see right side of figure). To view the
`
`transmitted images, the remove receiving station is equipped with a fax machine 34
`
`(G-III type), personal computer 85, video telephone 89, and server 91. @7:44-48.
`
`B. Claim Construction
`
`In the context of an inter partes review, claim terms must be given their broadest
`
`reasonable interpretation (“BRI”) in view of the specification.
`
`1. “image capture device”
`
`According to the challenged patent, FIG. 1 shows the simplest embodiment
`
`having a “standard analog or digital camera device 10 for capturing a visual image in
`
`the typical fashion.” @5:30-32. Thus, the BRI of this term encompasses, at least, a
`
`digital camera or the electronic component of a digital camera that performs the
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`US 7,365,871
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`actual image capture, which is typically a charged coupled device (CCD).
`
`2. “digitized framed image”
`
`We refer again to the challenged patent’s statement that FIG. 1 shows the
`
`simplest embodiment having a “standard analog or digital camera device 10 for
`
`capturing a visual image in the typical fashion.” @5:30-32. For a digital camera, an
`
`image captured “in the typical fashion” is a digitized photo image. Thus, the BRI of
`
`this term encompasses, at least, a digital photo image.
`
`3. “remote receiving station”
`
`This claim term refers to the recipient device of the wireless transmission. The
`
`challenged patent states that its system has versatile capability and “permits
`
`transmission of captured data to a standard bi-level facsimile machine … as well as to
`
`other remote receiving devices such as, by way of example, personal computers and
`
`network servers.” @2:39-43. FIGS. 1, 2, and 3 show a fax machine 34 as the remote
`
`recipient device over wireless communication channel 32. Accordingly, the BRI of the
`
`term “remote receiving station” encompasses, at least, fax machines, cellular phones,
`
`and personal computers.
`
`4. “alphanumeric input keys”
`
`The challenged patent states that data “may be input from an integrated
`
`keyboard or from a remote device.” @2:30-32. For FIG. 7, the challenged patent
`
`explains that the “keypad for the telephone is indicated at 202.” @11:19-20. Thus, the
`
`BRI of this term encompass, at least, telephone keypads.
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`
`IV. Grounds for Challenge
`Petitioner requests cancellation of claims 1-15 of the challenged patent for
`
`obviousness over Parulski in view of Reele.
`
`A. Parulski - primary reference
`Parulski describes a “combined telephone/camera unit” with a cellular
`
`transceiver. @Parulski, Abstract (Exh. 1002). FIGS. 7 and 8 of Parulski show an
`
`example in which a “cellular telephone is provided with the components of an
`
`electronic image camera to form a combined telephone/camera unit 48.” @4:32-34.
`
`As conventional, this cellular phone has an antenna 54, liquid crystal display screen 56,
`
`control processing unit 62, and internal bus 60 that is connected to a camera module
`
`68, telephone keypad 58, memory unit 64, and cellular transceiver 66.
`
`B. Reele - secondary reference
`Reele is specifically cited by Parulski as being relevant background. @Parulski,
`
`face page, R col. top. Moreover, like Parulski, Reele discloses a combined film/digital
`
`camera system. @Abstract. The camera system can include a cellular phone for
`
`transmitting the images taken by the camera. @Id. Thus, with Parulski specifically
`
`citing to Reele on its face page as relevant background, and with Reele indeed being
`
`directed to the same topic of camera-phone devices, someone of ordinary skill in the
`
`art reading Parulski would have strong motivation to consider Reele for its further
`
`teachings about combination camera-phone devices.
`
`
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`US 7,365,871
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`V. Claim Analysis
`The challenged claims are obvious over the cellular camera-phone disclosed by
`
`Parulski in view of the cellular camera-phone disclosed by Reele.
`
`Independent Claim 1
`
`a) (claim 1 preamble) “A handheld self-contained cellular telephone and
`integrated image processing system”
`
`In FIG. 7 of Parulski, the combined cellular camera-phone unit 48, which has
`
`an antenna 54, is both portable and wireless. @Parulski 4:34-38 (Exh. 1002).
`
`Moreover, the claims listing in Parulski discloses a “portable handheld telephone.”
`
`@6:15.
`
`b) (claim 1 preamble) “for both sending and receiving telephonic audio
`signals”
`
`
`
`This claim term is essentially stating that the cellular phone is capable of
`
`making and receiving an ordinary voice phone call. Parulski discloses a cellular phone
`
`and it should be well-understood that any telephone has the ability to receive an
`
`ordinary voice call, i.e. “sending and receiving telephonic audio signals.” Otherwise, it
`
`would not be called a “phone.”
`
`c) (claim 1 preamble) “for capturing a visual image and transmitting it
`to a compatible remote receiving station of a wireless telephone
`network”
`
`
`
`As explained above, we interpret “remote receiving station” to encompass a
`
`receiving site that has a fax machine (i.e. the fax machine receives the images
`
`transmitted by the cellular phone). @IPR 7. FIG. 7 of Parulski shows a cellular
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`telephone 48 that includes a digital camera. @Parulski 4:34-36. Parulski further
`
`explains that the “stored image is then converted to the appropriate fax standard …
`
`and is transmitted to the receiving fax machine using the normal cellular telephone
`
`system that includes an RF link from the cellular transceiver 66.” @4:62-65.
`
`d) (claim 1) “the system comprising: a manually portable housing”
`
`In FIG. 7 of Parulski, the combined cellular camera-phone unit 48, which has
`
`an antenna 54, is both portable and wireless. @Parulski 4:34-38. Moreover, the claims
`
`listing in Parulski discloses a “portable handheld telephone.” @6:15.
`
`e) (claim 1) “an integral image capture device comprising an electronic
`camera contained within the portable housing”
`
`As explained above, a digital camera is representative of an “image capture
`
`device.” @IPR 6. In FIG. 7 of Parulski, the combined cellular camera-phone unit 48
`
`is portable. @Parulski 4:34-38. The handheld unit 48 has a “camera module 68.”
`
`@4:43-45.
`
`f) (claim 1) “a display for displaying an image framed by the camera …
`[and] commonly movable [with the electronic camera] in the housing
`when the housing is moved by hand”
`
`This claim term is essentially stating that the cellular phone has a display and
`
`that the camera and display are integrated in the same housing. In FIG. 7 of Parulski,
`
`the handheld unit 48 has a liquid crystal display screen 56. @Parulski 4:38-39. Parulski
`
`explains that the digitized picture data generated by the camera 68 is displayed on the
`
`display screen 56. @4:53-55.
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`g) (claim 1) “a processor in the housing for generating an image data
`signal representing the image framed by the camera”
`
`In FIG. 7 of Parulski, the handheld unit 48 has a “camera module 68, which
`
`includes the same basic components as illustrated in FIG. 4.” @Parulski 4:43-45. FIG.
`
`4 of Parulski shows an “image signal processor 40 that processes an analog image
`
`signal generated by the electronic imaging sensor 36 into digital image data … [by] an
`
`analog-to-digital (A/D) converter.” @3:31-37.
`
`h) (claim 1) “a memory associated with the processor for receiving and
`storing the digitized framed image”
`
`Referring to FIG. 7, Parulski explains that the digitized picture data generated
`
`by the camera 68 is displayed on the display screen 56 and stored in the memory unit
`
`64. @4:53-55.
`
`i) (claim 1) “[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”
`
`Further to the preceding paragraph, Parulski explains that the “stored image is
`
`then converted to the appropriate fax standard … and is transmitted to the receiving
`
`fax machine using the normal cellular telephone system that includes an RF link from
`
`the cellular transceiver 66.” @4:62-66.
`
`j) (claim 1) “a user interface for enabling a user to select the image data
`signal for viewing and transmission”
`
`In FIG. 7 of Parulski, there is a telephone keypad 58 on the cellular phone.
`
`@Parulski 4:40. Parulski further explains that the “#” key on the keypad 58 can be
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`used as the image capture switch. @4:51-53. This causes the digitized picture data to
`
`be displayed on the display screen 56. @4:55. Parulski further explains: “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.” @4:56-58. Thus, the keypad 58 is a “user
`
`interface” that enables the user to capture the image for viewing (by pressing the “#”
`
`key) and transmitting (by dialing the telephone number).
`
`k) (claim 1) “a telephonic system in the housing for sending and
`receiving digitized audio signals and for sending the image data
`signal”
`
`FIG. 7 of Parulski shows the combined camera-phone 48 having a cellular
`
`transceiver 66. @Parulski 4:42. Like Parulski, Reele also discloses a camera-phone that
`
`transmits digital images through a cellular phone. As such, there is motivation to add
`
`useful features disclosed by Reele into the camera-phone of Parulski.
`
`FIG. 4 of Reele shows a cellular phone 28 having a speaker 62 and microphone
`
`64. @Reele 3:64 – 4:2 (Exh. 1003). This cellular phone 28 has a “transmitter/receiver
`
`circuit 54 [that] is controlled by a cellular control unit 60.” @4:5-6. The circuit
`
`includes an “A/D converter 56 and a D/A converter 58” which work to make
`
`analog-digital signal conversions between the speaker 62, microphone 64, antenna 34,
`
`and the cellular control unit 60. Someone of ordinary skill in the art would consider
`
`this “telephonic system … for sending and receiving digitized audio signals” in the
`
`transceiver circuit of Reele to be suitable for use in the cellular transceiver 66 circuit
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`of Parulski.
`
`l) (claim 1) “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”
`
`As explained above, a telephone keypad is representative of “alphanumeric
`
`input keys.” @IPR 7. Parulski explains that 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.” @Parulski 4:56-58. As shown in FIG. 9 of Parulski, input from keypad
`
`58 is received by control processing unit 62 and memory unit 64 via internal bus 60.
`
`Thus, when the user presses keys on the keypad 58, the “alphanumeric” entries are
`
`being input into the control processing unit 62 as digital signals. As explained in the
`
`preceding paragraph, someone of ordinary skill in the art would consider the
`
`transceiver circuit in the camera-phone of Reele to be suitable for use in the camera-
`
`phone of Parulski. As also explained in the preceding paragraph and shown in FIG. 4
`
`of Reele, this transceiver circuit of Reele is equipped with analog-digital converters
`
`and circuitry associated with the keypad 32, cellular control unit 60, and transceiver 54
`
`for “sending the digitized alphanumeric signals.”
`
`m) (claim 1) “a wireless communications device adapted for
`transmitting any of the digitized signals to the compatible remote
`receiving station”
`
`As explained in the preceding paragraphs, both Parulski and Reele disclose a
`
`camera-phone device that includes a cellular phone to transmit digital photos.
`
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`n) (claim 1) “a power supply for powering the system”
`
`Being a portable electronic device, it is understood that the combined camera-
`
`phone 48 in FIG. 7 of Parulski has a power supply. But in case there is any doubt,
`
`Parulski refers to FIG. 5 and explains that the pen-based computer 12 has a “power
`
`switch (not shown) to activate a camera application program stored in a memory unit
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`of the pen-based computer 12, and then flips up the flash unit 24 which causes power
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`to be supplied to the camera module 10 by activating a power switch (not shown).”
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`@Parulski 3:50-55 (italics added).
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`Claim 2
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`Claim 2 depends from claim 1 and specifies that the “display for framing the
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`image to be captured by the image capture device is operable to display the image at
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`the system whereby the image can be viewed and framed prior to capture in the
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`memory.” This claim term is simply stating that the display screen is functioning as a
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`viewfinder, i.e. allowing the user to see the framed image before snapping a photo.
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`As explained above, because Reele also discloses a camera-phone that transmits
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`digital images through a cellular phone, there is motivation to add useful features
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`disclosed by Reele into the camera-phone of Parulski. Reele explains how a digital
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`photo is captured and processed:
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`The digital image signal generated from the image processing circuit 48
`is preferably simultaneously supplied to the display 20 and the memory unit
`52. The operator views the captured image on the display 20 to
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`determine if the subject is properly framed and exposed. If the captured
`image is not acceptable, the operator can erase the image from the
`memory unit 26 by activating an erase button (not shown) on the
`operator control interface 22 to send an erase command signal to the
`camera control unit 50.
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`@Reele 5:9-18 (italics added).
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`This passage indicates that the display 20 in Reele is being used as the
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`viewfinder. There is no inventive distinction between the different ways in which
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`image data may be held transiently inside the device (e.g. stored in a memory unit and
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`then erased, transfer between different memory units, etc.).
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`Claim 3
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`Claim 3 depends from claim 1 and specifies the display is “for viewing
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`alphanumeric messages input at the alphanumeric keys.” In FIG. 7 of Parulski, there
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`is a telephone keypad 58 on the cellular phone. @Parulski 4:40. Someone of ordinary
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`skill in the art would understand that when the user enters a phone number to dial
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`into the keypad 58, those numerals would appear on the display screen 56. For
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`example, if the user dials the number “312-555-1234” to call a friend in Chicago,
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`those numerals would appear on the display screen 56.
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`Claim 4
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`Claim 4 depends from claim 1 and specifies that the system further comprises a
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`“removable memory module … for storing captured image data signals.” As explained
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`above, because Reele also discloses a camera-phone that transmits digital images
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`through a cellular phone, there is motivation to add useful features disclosed by Reele
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`into the camera-phone of Parulski. In the camera-phone of Reele, the “memory unit
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`52 preferably includes standard PCMIA interface slots into which removable non-
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`volatile flash EEPROM memory cards … can be inserted.” @Reele 3:35-41.
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`Claim 5
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`Claim 5 depends from claim 1 and specifies that the display is “for viewing
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`incoming image data signals.” As explained above, because Reele also discloses a
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`camera-phone that transmits digital images through a cellular phone, there is
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`motivation to add useful features disclosed by Reele into the camera-phone of
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`Parulski.
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`Reele discloses a video conferencing capability of the camera-phone system.
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`Reele explains that the display 20 of the camera could be used to “display an image of
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`a calling party when the operator is using the cellular phone 28, and an image of the
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`operator taken by the camera 10 can be transmitted to the calling party, thereby
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`providing a video conferencing capability.” @Reele 6:5-10. Thus, during a video
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`conferencing session, the display 20 would be used “for viewing incoming image data
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`signals” (i.e. a video of the caller’s face).
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`Independent Claim 6
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`a) (claim 6 preamble) “A handheld cellular telephone having an
`integrated electronic camera”
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`b) (claim 6 preamble) “for both sending and receiving telephonic audio
`signals”
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`c) (claim 6 preamble) “for capturing a visual image”
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`
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`These elements of independent claim 6 recite substantially the same limitations
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`as elements (a) through (c) of claim 1, and as such, we apply the same analysis for
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`claim 1 set forth above. @IPR 9.
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`d) (claim 6 preamble) “converting the visual image to a digitized image
`data signal”
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`In FIG. 7 of Parulski, the handheld unit 48 has a “camera module 68, which
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`includes the same basic components as illustrated in FIG. 4.” @Parulski 4:43-45. FIG.
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`4 of Parulski shows an “image signal processor 40 that processes an analog image
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`signal generated by the electronic imaging sensor 36 into digital image data … [by] an
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`analog-to-digital (A/D) converter.” @3:31-37.
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`e) (claim 6 preamble) “transmitting digitized image data signal via a
`cellular telephone network”
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`
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`Parulski explains that the digitized picture data generated by the camera 68 is
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`stored in memory unit 64. @Parulski 4:53-55. Parulski further explains that the
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`“stored image is then converted to the appropriate fax standard … and is transmitted
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`to the receiving fax machine using the normal cellular telephone system that includes
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`an RF link from the cellular transceiver 66.” @4:62-66.
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`f) (claim 6) “the cellular telephone comprising: a manually portable
`housing supporting the cellular telephone and the integrated
`electronic camera … being movable in common with the housing”
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`In FIG. 7 of Parulski, the combined camera-phone unit 48 is portable.
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`@Parulski 4:34-38. Moreover, the claims listing in Parulski discloses a “portable
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`handheld telephone.” @6:15. The cellular phone and the camera are integrated into
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`the same handheld housing, i.e. “being movable in common.”
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`g) (claim 6) “a cellular telephone … including a transmitter/receiver for
`transmitting and receiving audio telephone messages over a cellular
`telephone network”
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`
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`This claim term is essentially stating that the cellular phone is capable of
`
`making and receiving ordinary voice phone calls or voice messages. Parulski discloses
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`a cellular phone and it is well-understood that any telephone has the ability to make
`
`and receive ordinary voice calls/messages. But in case there is any doubt, the face
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`page of Parulski specifically cites to Re