`571-272-7822
`
` Paper 16
` Entered: August 4, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`IRON DOME LLC
`Petitioner
`
`v.
`
`E-WATCH, INC.
`Patent Owner
`
`Case IPR2014-00439
`Patent 7,365,871
`
`Before JAMESON LEE, GREGG I. ANDERSON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`e-Watch, Inc.
`EXH. 2008
`Petitioner: Apple, Inc. , et al.
`Patent Owner: e-Watch, Inc.
`IPR2015-00414
`
`1
`
`
`
`IPR2014-00439
`Patent 7,365,871
`
`
`I.
`INTRODUCTION
`Iron Dome LLC (“Petitioner”) filed a Petition requesting inter partes
`review of claims 1-15 (“the challenged claims”) of U.S. Patent No.
`7,365,871 (Ex. 1001, “the ’871 patent”). Paper 1 (“Pet.”). e-Watch, Inc.
`(“Patent Owner”) filed a Preliminary Response. Paper 9 (“Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 314, which provides that an inter
`partes review may only be authorized if “the information presented in the
`petition . . . and any [preliminary] response . . . shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).Upon
`consideration of the Petition and Preliminary Response, we determine that
`the information presented by Petitioner establishes that there is a reasonable
`likelihood that Petitioner would prevail in showing the unpatentability of
`only claims 1 and 3 of the ’871 patent. Accordingly, pursuant to 35 U.S.C.
`§ 314, we institute an inter partes review of claims 1 and 3 of the ’871
`patent.
`
`A. Related Proceedings
`Petitioner and Patent Owner indicate that the ’871 patent is involved
`in eleven co-pending district court cases in the U.S. District Court for the
`Eastern District of Texas. Pet. 2; Paper 7, 3.
`
`B. The ’871 Patent
`The ’871 patent relates generally to image capture and transmission
`systems, and is directed specifically to an image capture, compression, and
`transmission system for use in connection with landline and wireless
`telephone systems. Ex. 1001, 1:17-20. According to the ’871 patent, the
`
`2
`
`2
`
`
`
`IPR2014-00439
`Patent 7,365,871
`
`system is particularly well-suited for sending and/or receiving images via a
`standard Group III facsimile transmission system and permits capture of the
`image at a remote location using an analog or digital camera. Id. at 5:3-7.
`Figure 1 of the ’871 patent is reproduced below.
`
`
`“Figure 1 is a block diagram of a basic facsimile camera configuration for
`capturing an image via a camera and transmitting it via Group III facsimile
`transmission to a standard hard copy medium.” Id.at 4:27-30.
`Figure 7A of the ’871 patent is reproduced below.
`
`
`
`3
`
`3
`
`
`
`IPR2014-00439
`Patent 7,365,871
`
`Figure 7A depicts a “hand-held device for capturing, storing, and
`transmitting an image in accordance with the invention.” Id. at 4:46-48,
`11:3-20.
`
`C. Illustrative Claim
`Of the challenged claims, claims 1, 6, 9, and 12 are independent.
`Claim 1 is reproduced below:
`telephone and
`1.
`A handheld self-contained cellular
`integrated image processing system for both sending and
`receiving telephonic audio signals and for capturing a visual
`image and transmitting it to a compatible remote receiving
`station of a wireless telephone network, the system comprising:
`a manually portable housing;
`an integral image capture device comprising an electronic
`camera contained within the portable housing;
`a display for displaying an image framed by the camera,
`the display being supported by the housing, the display and the
`electronic camera being commonly movable in the housing
`when the housing is moved by hand;
`a processor in the housing for generating an image data
`signal representing the image framed by the camera;
`a memory associated with the processor for receiving and
`storing the digitized framed image, accessible for selectively
`displaying in the display window and accessible for selectively
`transmitting over the wireless telephone network the digitized
`framed image;
`a user interface for enabling a user to select the image
`data signal for viewing and transmission;
`a telephonic system in the housing for sending and
`receiving digitized audio signals and for sending the image data
`signal;
`alphanumeric input keys in the housing for permitting
`manually input digitized alphanumeric signals to be input to the
`
`4
`
`4
`
`
`
`IPR2014-00439
`Patent 7,365,871
`
`
`processor, the telephonic system further used for sending the
`digitized alphanumeric signals;
`for
`adapted
`a wireless
`communications device
`transmitting any of the digitized signals to the compatible
`remote receiving station; and
`a power supply for powering the system.
`
`D. References Relied Upon
`Petitioner relies upon the following references:
`Parulski
`US 6,122,526
`Sept. 19, 2000
`Reele
`US 5,893,037
`April 6, 1999
`
`Ex. 1002
`Ex. 1003
`
`E. The Asserted Grounds of Unpatentability
`Petitioner argues that the challenged claims are unpatentable as
`obvious over Parulski and Reele.
`
`II. ANALYSIS
`
`A. Status of Parulski and Reele as Prior Art
`As an initial matter, we review whether the references relied upon by
`Petitioner qualify as prior art. Parulski has an effective filing date of April
`24, 1995. Reele has an effective filing date of December 9, 1994. Both
`Parulski and Reele qualify as prior art under 35 U.S.C. §§ 102(a) and 102(e),
`because neither was issued or published more than one year prior to the
`effective filing date of the ’871 patent, but the effective filing date of each is
`earlier than the effective filing date of the ’871 patent (January 12, 1998).
`Patent Owner argues that Parulski cannot be prior art in this proceeding,
`because U.S. Patent No. 5,666,159 to Parulski (“Parulski ’159”), which has
`the same specification and priority date as Parulski, was determined during
`prosecution to be antedated and the affidavit submitted during prosecution,
`
`5
`
`5
`
`
`
`IPR2014-00439
`Patent 7,365,871
`
`therefore, overcomes all §102(a) and §102(e) prior art having an effective
`date of April 24, 1995 or later. Prelim. Resp. 3-10 (citing Exs. 2001-2002
`(Affidavit of David A. Monroe Under 37 CFR 1.131) (“2004 Monroe
`Declaration”); Ex. 2003 (Office Action dated August 9, 2005)). Patent
`Owner is correct that the Examiner determined during prosecution that the
`2004 Monroe Declaration sufficiently antedated Parulski ’159. Ex. 2003, 2.
`We are not, however, bound by that determination. We have reviewed the
`2004 Monroe Declaration and the prosecution record, and, on the record
`before us at this time, we find Patent Owner’s arguments that Parulski is
`sufficiently antedated by the 2004 Monroe Declaration to be unpersuasive
`for the reasons discussed below.
`Priority of invention goes to the first party to reduce to practice unless
`the other party can show that it was the first to conceive the invention and
`that it exercised reasonable diligence in later reducing that invention to
`practice. Brown v. Barbacid, 276 F.3d 1327, 1337 (Fed. Cir. 2002); Cooper
`v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998); Mahurkar v. C.R. Bard,
`Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996). An inventor’s testimony,
`standing alone, is insufficient to prove conception, as some form of
`corroboration is required. Mahurkar, 79 F.3d at 1577; Price v. Symsek, 988
`F.2d 1187, 1194 (Fed. Cir. 1993). A rule of reason applies to determine
`whether the inventor’s testimony has been corroborated. Price, 988 F.2d at
`1194.
`During the period in which reasonable diligence must be shown, there
`must be continuous exercise of reasonable diligence. In re McIntosh, 230
`F.2d 615, 619 (CCPA 1956); see also Burns v. Curtis, 172 F.2d 588, 591
`(CCPA 1949) (referring to “reasonably continuous activity”). A party
`
`6
`
`6
`
`
`
`IPR2014-00439
`Patent 7,365,871
`
`alleging diligence must account for the entire critical period. Griffith v.
`Kanamuru, 816 F.2d 624, 626 (Fed. Cir. 1987); Gould v. Schawlow, 363
`F.2d 908, 919 (CCPA 1966). Even a short period of unexplained inactivity
`is sufficient to defeat a claim of diligence. Morway v. Bondi, 203 F.2d 742,
`749 (CCPA 1953); Ireland v. Smith, 97 F.2d 95, 99-100 (CCPA 1938). In In
`re Mulder, 716 F.2d 1542, 1542-46 (Fed. Cir. 1983), for example, the
`Federal Circuit affirmed a determination of lack of reasonable diligence,
`where the evidence of record was lacking for a two-day critical period.
`Likewise, in Rieser v. Williams, 255 F.2d 419, 424 (CCPA 1958), there was
`no showing of diligence where no activity was shown during the first
`thirteen days of the critical period.
`A party alleging diligence must provide corroboration with evidence
`that is specific both as to facts and dates. Gould, 363 F.2d at 920; Kendall v.
`Searles, 173 F.2d 986, 993 (CCPA 1949). The rule of reason does not
`dispense with the need for corroboration of diligence that is specific as to
`dates and facts. Gould, 363 F.2d at 920; Kendall, 173 F.2d at 993; see also
`Coleman v. Dines, 754 F.2d 353, 360 (Fed. Cir. 1985).
`On this record, Patent Owner has not shown that the 2004 Monroe
`Declaration addresses the continuous exercise of reasonable diligence
`adequately. For example, the 2004 Monroe Declaration shows extended
`periods of little activity that have not been adequately explained, such as
`between 1992 (the first comprehensive circuit for a handheld Remote Image
`Transceiver (“R.I.T.”)) and November 1995 (a concept proposal of a
`handheld R.I.T. using secure radio transmission), and between November
`1995 and mid-1997 (a prototype of the first commercial embodiment of the
`invention). Both periods are subsequent to the effective filing dates of Reele
`
`7
`
`7
`
`
`
`IPR2014-00439
`Patent 7,365,871
`
`and Parulski.
`Also, Patent Owner must establish conception and reduction to
`practice of the subject matter of each of the challenged claims. The 2004
`Monroe Declaration fails to relate the claims of the ’871 patent to the
`invention that is alleged to be earlier in time. For example, Mr. Monroe
`testifies to the dates on which he developed several R.I.T.’s, including a
`commercial handheld R.I.T. completed in late 1997. Ex. 1004 ¶¶ 9-17. The
`2004 Monroe Declaration does not, however, relate any of the discussed
`R.I.T. devices to any element of any claim of the ’871 patent. It is not clear,
`for example, that the 2004 Monroe Declaration adequately accounts for the
`“telephonic system” element of claim 1. According to the 2004 Monroe
`Declaration, cellular telephone compatibility was not present in the
`November 1995 proposal for a handheld R.I.T., but it was present in the
`final product completed in late 1997. Ex. 1004 ¶¶ 14, 17. As a result, it is
`not clear when Mr. Monroe conceived of a handheld R.I.T. that included
`cellular telephone computability. Even assuming that Mr. Monroe
`conceived of a handheld R.I.T. that included cellular telephone compatibility
`shortly after November 1995, that would not be earlier than the effective
`filing dates of Parulski and Reele.
`For the foregoing reasons, on the present record, we are persuaded by
`the Petitioner’s argument that the 2004 Monroe Declaration, either by itself
`or in combination with the evidence currently of record, does not properly
`antedate Parulski and Reele.
`
`B. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their “broadest reasonable construction in light of
`
`8
`
`8
`
`
`
`IPR2014-00439
`Patent 7,365,871
`
`the specification of the patent in which they appear.” 37 C.F.R. § 42.100(b);
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
`2012). Also, claim terms are given their ordinary and customary meaning,
`as would be understood by one of ordinary skill in the art in the context of
`the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`(Fed. Cir. 2007).
`1. “image capture device” (claims 1, 2, 9)
`Petitioner proposes that “image capture device” be construed to
`encompass at least “a digital camera or the electronic component of a digital
`camera that performs the actual image capture, which is typically a charge
`coupled device (CCD).” Pet. 6-7. As support for its proposed construction,
`Petitioner cites the Specification. Id. (citing Ex. 1001, Fig. 1, 5:30-32).
`Patent Owner does not dispute Petitioner’s proposed construction.
`We, however, conclude that Petitioner’s proposed construction is
`unreasonably narrow to the extent that it excludes an analog image capture
`device, as described in the ’871 patent. Ex. 1001, 5:30-32. On this record,
`and for purposes of this Decision, we determine that the broadest reasonable
`interpretation of “image capture device” includes, but is not limited to, a
`digital camera and the component of a digital camera that performs the
`actual image capture.
`2. “digitized framed image” (claims 1, 6, 9, 12)
`Petitioner proposes that “digitized framed image” be construed to
`encompass at least “a digital photo image.” Pet. 7. As support for its
`proposed construction, Petitioner cites the Specification. Id. (citing Ex.
`1001, Fig. 1, 5:30-32). Patent Owner does not dispute Petitioner’s proposed
`construction. The term “digitized framed image” is not used apart from the
`
`9
`
`9
`
`
`
`IPR2014-00439
`Patent 7,365,871
`
`claims. The claims require, however, that the “digitized framed image” be
`the image framed by the camera. The ’871 patent describes an exemplary
`“image capture device” as “a standard analog or digital camera device 10 for
`capturing a visual image in the typical fashion.” Ex. 1001, 5:30-32.
`Accordingly, “digitized frame image” must be broad enough to encompass
`the output of a digital camera device. On this record, and for purposes of
`this Decision, we determine that “digitized framed image” is broad enough
`to include a digital photo image.
`3. “remote receiving station” (claim 1)
`Petitioner proposes that “content data” be construed to “encompass at
`least fax machines, cellular phones, and personal computers.” Pet. 7. As
`support for its proposed construction, Petitioner cites the Specification. Id.
`(citing Ex. 1001, Figs. 1-3, 2:39-43). Patent Owner does not dispute
`Petitioner’s proposed construction. The ’871 patent does not define the term
`“remote receiving station,” but describes it being “where the image is
`downloaded for viewing on a screen or printing on hard paper copy or other
`medium.” Ex. 1001, 4:67-5:2. The ’871 patent also describes “remote
`receiving devices, such as, by way of example, personal computers and
`network servers” (id. at 2:42-43, 13:8-9 and 21-23), “a remote Group-III
`receiving system 34” (id. at 5:54-55), and “a remote facsimile machine” (id.
`at 10:47). On this record, and for purposes of this Decision, we determine
`that “remote receiving station” is broad enough to encompass at least remote
`fax machines, remote cellular phones, and remote personal computers.
`4. “alphanumeric input keys” (claims 1 and 9)
`Petitioner proposes that “alphanumeric input keys” be construed to
`“encompass at least telephone keypads.” Pet. 7. As support for its proposed
`
`10
`
`10
`
`
`
`IPR2014-00439
`Patent 7,365,871
`
`construction, Petitioner cites the Specification. Id. (citing Ex. 1001, Fig. 7,
`2:30-32, 11:19-20). Patent Owner does not dispute Petitioner’s proposed
`construction. The term “alphanumeric input keys” is not used in the ’871
`patent, apart from the claims. The ’871 patent does, however, describe an
`“integrated keyboard” (Ex. 1001, 2:30-32), “operator interface button keys
`98” (id. at 11:8-9), and a “keypad for the telephone” (id. at 11:19-20).
`Moreover, Figures 6A-C and 7A depict embodiments with a conventional
`telephone keypad. On this record, and for purposes of this Decision, we
`determine that “alphanumeric input keys” is broad enough to include a
`telephone keypad.
`
`C. Challenged Claims – Obvious over Parulski and Reele
`Petitioner argues that the claims 1-15 are unpatentable under 35
`U.S.C. § 103(a) as obvious over Parulski and Reele. Pet. 8-33.
`Parulski (Exhibit 1002)
`Parulski describes an electronic camera system that includes “a
`transmission mechanism for sending image data to selected receiver units.”
`Ex. 1002, 1:14-16.
`
`11
`
`11
`
`
`
`IPR2014-00439
`Patent 7,365,871
`
`
`Figures 7, 8, and 9 of Parulski are reproduced below.
`
`
`Figure 7 depicts combined telephone/camera unit 48 in accordance with a
`second embodiment of the invention of Parulski. Id. at 2:33-35. Figure 8
`depicts a top view of combined telephone/camera unit 48. Id. at 2:36-37.
`Figure 9 is a schematic block diagram of the combined telephone/camera
`unit 48. Id. at 2:38-39. In the depicted embodiment, a cellular telephone is
`provided with the components of an electronic image camera to form a
`combined telephone/camera unit 48. Id. at 4:34-36. The combined unit 48
`includes liquid crystal display screen 56 and telephone keypad 58. Id. at
`4:38-43.
`The user takes a picture by pressing an image capture switch (not
`shown) or, alternatively, a key on keypad 58. Id. at 4:48-53. “The digitized
`picture data generated by the camera module 68 is stored in memory unit 64
`and displayed on display screen 56.” Id. at 4:53-55 (emphasis omitted). “To
`transmit the image, the user dials the telephone number of a desired fax
`
`12
`
`12
`
`
`
`IPR2014-00439
`Patent 7,365,871
`
`machine that is to receive the image using the keypad 58.” Id. at 4:56-58
`(emphasis omitted). “The number is transmitted to the fax machine via the
`cellular transceiver 66.” Id. at 4:58-59 (emphasis omitted). “The stored
`image is then converted to the appropriate fax standard by control processing
`unit 62, and is transmitted to the receiving fax machine using the normal
`cellular telephone system that includes an RF link from cellular transceiver
`66 to a cellular base unit, which connects to the normal wire, fiber, and
`satellite telephone system.” Id.at 4:62-67 (emphasis omitted).
`Reele (Exhibit 1003)
`Reele describes “an electronic/silver-halide image capture system that
`is capable of transmitting captured image data via cellular communication
`transmission.” Id. at 1:10-14.
`Figure 4 of Reele is reproduced below.
`
`Figure 4 depicts a functional block diagram of cellular telephone 28
`illustrated in Figure 2. Id. at 2:49-50. Cellular phone 28 includes cellular
`transmitter/receiver circuit 54 coupled to antenna 34. Id. at 3:64-66.
`Cellular band voice transmission signals received by transmitter/receiver
`
`
`
`13
`
`13
`
`
`
`IPR2014-00439
`Patent 7,365,871
`
`circuit 54 are supplied to speaker 62. Id. at 3:66-4:1. Microphone 64 is
`coupled to transmitter/receiver circuit 54 to enable cellular band
`transmission of voice signals to remote locations. Id. at 4:1-4. Operation of
`transmitter/receiver circuit 54 is controlled by cellular control unit 60. Id. at
`4:4-8. Cellular control unit 60 also is coupled to display 30 and keypad 32.
`Id. A/D converter 56 and D/A converter 58 permit analog signals received
`by transmitter/receiver circuit 54 from speaker 62 or antenna 34 to be
`converted to digital signals and supplied to cellular control unit 60. Id. at
`4:8-15. A/D converter 56 and D/A converter 58 also permit digital data
`supplied from cellular control unit 60 to be converted to an analog signal for
`transmission by transmitter/receiver circuit 54. Id. Display 30 is used to
`display various messages to the operator of the telephone. Id. at 4:15-17.
`The reference states that “it will be understood that [telephone 28 and
`camera 10] may be readily combined within a single housing as an
`integrated module.” Id. at 4:47-51 (emphasis omitted).
`Analysis
`In light of the arguments and evidence, Petitioner has established a
`reasonable likelihood that claims 1-15 are unpatentable as obvious over
`Parulski and Reele. Specifically, we are persuaded that Petitioner’s citations
`support Petitioner’s contentions. For example, Petitioner relies upon the
`combination of Parulski with Reele. Pet. 14-33. Petitioner argues that
`“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,” because Reele is listed amongst the References
`Cited on the face of Parulski and because Reele is directed to the same topic
`of camera-phone devices. Pet. 8. Petitioner describes Reele’s disclosure
`
`14
`
`14
`
`
`
`IPR2014-00439
`Patent 7,365,871
`
`and argues that “there is motivation to add useful features disclosed by Reele
`into the camera-phone of Parulski.” Pet. 12. On the record before us, we are
`persuaded that Petitioner has provided sufficiently an articulated reasoning
`with some rational underpinning to support the legal conclusion of
`obviousness. See KSR, 550 U.S. 418 (2007) (citing In re Kahn, 441 F.3d
`977, 988 (Fed. Cir. 2006)).
`Patent Owner does not argue that Parulski or Reele fails to teach or
`suggest any limitation of claims 1-15.
`Conclusion
`On this record, we are persuaded that Petitioner has established a
`reasonable likelihood that it would prevail in showing that claims 1-15 are
`unpatentable as obvious over Parulski and Reele.
`
`III. CONCLUSION
`For the foregoing reasons, we determine that Petitioner has
`established that there is a reasonable likelihood that Petitioner would prevail
`in establishing the unpatentability of claims 1-15 of the ’871 patent.
`The Board has not made a final determination on the patentability of
`any challenged claims.
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
`hereby instituted for claims 1-15 under 35 U.S.C. § 103 as obvious over
`Parulski and Reele; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(d) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial on the
`
`15
`
`15
`
`
`
`IPR2014-00439
`Patent 7,365,871
`
`grounds of unpatentability authorized above; the trial commences on the
`entry date of this Decision.
`
`
`16
`
`16
`
`
`
`IPR2014-00439
`Patent 7,365,871
`
`For PETITIONER:
`
`Steven Yu
`ROZMED LLC
`syu@patent-intercept.com
`
`For PATENT OWNER:
`
`Robert C. Curfiss
`bob@curfiss.com
`
`and
`
`David O. Simmons
`IVC Patent Agency
`dsimmons1@sbcglobal.net
`
`
`
`17
`
`17