Petition for Inter Partes Review of U.S. Pat. No. 7,643,168
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`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
`_____________________
`
`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.
`
`V.
`
`
`INTRODUCTION .......................................................................................... 1
`I.
`II. GROUNDS FOR STANDING PURSUANT TO 37 C.F.R. §
`42.104(a) ......................................................................................................... 4
`III. OVERVIEW OF THE ‘168 PATENT ........................................................... 4
`IV.
`IDENTIFICATION OF CHALLENGE PURSUANT TO 37 C.F.R.
`§ 42.104(B) ..................................................................................................... 6
`A.
`37 C.F.R. § 42.104(b)(1):Claims For Which Inter Partes
`Review Is Requested ............................................................................ 6
`37 C.F.R. § 42.104(b)(2): The Prior Art And Specific Grounds
`On Which The Challenge To The Claims Is Based ............................. 6
`37 C.F.R. § 42.104(b)(3): Claim Construction .................................... 7
`37 C.F.R. § 42.104(b)(4): How The Construed Claims Are
`Unpatentable ......................................................................................... 8
`37 C.F.R. § 42.104(b)(5): Supporting Evidence .................................. 9
`E.
`THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE ‘168 PATENT IS UNPATENTABLE ..................... 9
`A.
`Since the Patent Owner broke the priority chain, claims 1-31
`are anticipated by the substantially identical specification for
`the ‘818 publication. ............................................................................. 9
`1.
`The Effective Filing Date For The ‘168 Patent Is January
`3, 2003 ........................................................................................ 9
`The ‘818 Publication Has substantially the identical
`disclosure as the ‘168 Patent, and so the ‘818 Publication
`anticipates the ’168 Patent claims either explicitly or
`inherently. ................................................................................ 12
`Independent Claim 1 and its dependent claims .................................. 13
`Independent Claim 22 and its dependent claims ................................ 32
`Independent Claim 24 and its dependent claims ................................ 37
`Independent Claim 26 and its dependent claims ................................ 41
`Independent Claim 27 and its dependent claims ................................ 44
`
`2.
`
`B.
`C.
`D.
`E.
`F.
`
`
`
`
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`-i-
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`

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`TABLE OF CONTENTS
`(continued)
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`Page
`
`
`
`Independent Claim 29 and its dependent claims ................................ 49
`G.
`VI. Mandatory Notices Pursuant to 37 C.F.R. § 42.8(a)(1) ............................... 52
`A.
`C.F.R. § 42.8(b)(a): Real Party-In-Interest ........................................ 53
`B.
`C.F.R. § 42.8(b)(2): Related Matters ................................................. 53
`C.
`C.F.R. § 42.8(b)(3) and (4): Lead and Back-up Counsel and
`Service Information ............................................................................ 54
`VII. Conclusion .................................................................................................... 54
`
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`Petition for Inter Partes Review of U.S. Pat. No. 7,643,168
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`TABLE OF AUTHORITIES
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`Page
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`
`
`CASES
`
`Encyclopaedia Britannica, Inc. v. Alpine Elecs. of America, Inc,
`609 F.3d 1345 (Fed. Cir. 2010) ............................................................................ 9
`
`In re Am. Acad. Sci. Tech. Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004) ............................................................................ 7
`
`Medtronic Corevalue, LLC v. Edwards Lifesciences Corp.,
`741 F.3d 1359 (Fed. Cir. 2014) .................................................................... 10, 11
`
`STATUTES
`
`35 U.S.C. § 102 .......................................................................................................... 7
`
`35 U.S.C. § 102(b) ............................................................................................. 4, 7, 9
`
`35 U.S.C. § 120 .............................................................................................. 9, 10, 11
`
`35 U.S.C. § 154(a)(2) ............................................................................................... 10
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 1.68 ......................................................................................................... 9
`
`37 C.F.R. § 1.78(a)(2)(i) .................................................................................... 10, 11
`
`37 C.F.R. § 41.100(b) ................................................................................................ 7
`
`37 C.F.R. § 42.8(a)(1) .............................................................................................. 52
`
`37 C.F.R. § 42.8(b) .................................................................................................. 52
`
`37 C.F.R. § 42.10(b) ................................................................................................ 54
`
`37 C.F.R. § 42.104(a) ................................................................................................. 4
`
`
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`-iii-
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`Petition for Inter Partes Review of U.S. Pat. No. 7,643,168
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`37 C.F.R. § 42.104(B) ................................................................................................ 6
`
`37 C.F.R. § 42.104(b)(1):Claims ............................................................................... 6
`
`37 C.F.R. § 42.104(b)(2) ............................................................................................ 6
`
`37 C.F.R. § 42.104(b)(3) ............................................................................................ 7
`
`37 C.F.R. § 42.104(b)(4) ............................................................................................ 8
`
`37 C.F.R. § 42.104(b)(5) ............................................................................................ 9
`
`IPR2014-00439, Paper 16, pp. 5-8 ............................................................................. 4
`
`MPEP § 2111 ............................................................................................................. 7
`
`
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`-iv-
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`Petition for Inter Partes Review of U.S. Pat. No. 7,643,168
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`EXHIBIT LIST
`
`U.S. Patent No. 7,643,168 (“the ‘168 patent”)
`Application Data Sheet filed December 28, 2006 (from the file
`history of the ‘168 patent)
`Specification filed December 28, 2006 (from the file history of
`the ‘168 patent)
`Preliminary Amendment filed December 28, 2006 (from the file
`history of the ‘168 patent)
`Filing Receipt mailed February 2, 2007 (from the file history of
`the ‘168 patent)
`WO 1999/035818 (“the ‘818 publication”)
`Notice of Publication mailed May 17, 2007 (from the file history
`of the ‘168 patent)
`Patent Application Publication No. US 2007/0109594 (the
`published application corresponding to the ‘168 patent)
`U.S. Patent No. 7,365,871 (“the ’871 patent”)
`Declaration of Steven Sasson (“Sasson Decl.”)
`Office Action dated October 4, 2007 (from the file history of the
`‘168 patent)
`
`-v-
`
`Ex. 1001
`Ex. 1002
`
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1006
`Ex. 1007
`
`Ex. 1008
`
`Ex. 1009
`Ex. 1010
`Ex. 1011
`
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`Petition for Inter Partes Review of U.S. Pat. No. 7,643,168
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`INTRODUCTION
`
`
`I.
`
`U.S. Patent No. 7,643,168 (Ex. 1001, “the ‘168 patent”) is currently being
`
`asserted against Apple by the alleged assignee, e-Watch, Inc. (“e-Watch”), in a
`
`patent infringement lawsuit (See also, 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 in the art before the filing date of the ‘168 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.
`
`By purposely breaking the priority chain, the Patent Owner allowed an
`
`earlier related and published PCT application having an identical specification to
`
`become anticipatory prior art for each and every element claimed, thus invalidating
`
`the claims. The Patent Owner purposely broke the priority chain to the earliest
`
`application as reflected by the following:
`
` The Patent Owner filed an ADS (Ex. 1002) stating that the application
`
`for the ‘168 patent was a continuation of 10/336,470 filed January 3,
`
`2003.
`
` The Patent Owner filed a Preliminary Amendment dated December 28,
`
`2006 (Ex. 1004) in the application for the ‘168 patent stating “This
`
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`Petition for Inter Partes Review of U.S. Pat. No. 7,643,168
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`application is a continuation of co-pending Patent Application Serial
`
`No. 10/336,470 filed on January 3, 2003….”
`
` A filing receipt (Ex. 1005) was mailed February 2, 2007 for the
`
`application of the ‘168 patent stating only, regarding domestic priority
`
`data, that “This application is a CON of 10/336,470 01/02/2003” with
`
`no reference whatsoever to the ‘073 application, and the Patent Owner
`
`took no steps to challenge that statement of domestic priority.
`
` A notice of publication (Ex. 1007) was mailed May 17, 2007 for the
`
`application of the ‘168 patent, indicating that the application was being
`
`published as Patent Application Publication No. US 2007/0109594 (Ex.
`
`1008), the published application (Publication No. US 2007/0109594)
`
`referred only to the ‘470 application in the domestic priority
`
`information and not to the ‘073 application, and the Patent Owner took
`
`no steps to challenge that statement of domestic priority.
`
`These statements are not contradicted by col. 1, lines 6-12 of the issued
`
`patent (which states “This application is a divisional application of … Ser. No.
`
`09/006,073.”), because this portion of the Specification is defective on its face.
`
`There was no co-pendency of the ‘168 patent application with the 09/006,073
`
`application, so the ‘168 patent could never have been a divisional of the ’073
`
`
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`2
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`Petition for Inter Partes Review of U.S. Pat. No. 7,643,168
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`application. Yet the ‘168 patent has a substantially identical specification as the
`
`’073 application. A portion of the family tree related to this petition is as follows:
`
`
`
`PCT Application PCT/US99/00664 claimed priority to U.S. Appl. No.
`
`09/006,073, included a substantially identical specification as the ’073 application,
`
`and was published o July 15, 1999 as WO99/035818 (Ex. 1006, “the ‘818
`
`publication”). Since the ‘818 publication and the ‘168 patent have substantially
`
`identical disclosures, and since the ‘168 patent has an effective filing date that is
`
`more than one year after the publication date of the ‘818 publication, the ‘818
`
`
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`3
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`Petition for Inter Partes Review of U.S. Pat. No. 7,643,168
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`publication is 35 U.S.C. §102(b) anticipating prior art. So all claims of the ‘168
`
`patent are invalid.
`
`Petitioner respectfully submits that the Board has the authority to evaluate
`
`evidence and render decisions on factual and legal issues involving priority claims
`
`and the status of a reference as prior art in instituting the instant Petition. See, e.g.,
`
`IPR2014-00439, Paper 16, pp. 5-8 (where the Board rendered a decision on the
`
`insufficiency of an inventor affidavit as to diligence in reduction to practice during
`
`prosecution (which impacted the alleged invention date) and made an associated
`
`determination as to the availability of a reference as prior art).
`
`II. GROUNDS FOR STANDING PURSUANT TO 37 C.F.R. § 42.104(a)
`Petitioner Apple certifies that the ‘168 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 ‘168 PATENT
`The ‘168 patent was filed on December 28, 2006, as a continuation of
`
`application No. 10/336,470, filed on January 3, 2003, now U.S. Patent No.
`
`7,365,871 (“the ‘871 patent”). The ‘168 patent contains 31 claims, Figures 1-9, and
`
`approximately 22 columns of specification which describe in various embodiments:
`
`“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
`
`
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`4
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`Petition for Inter Partes Review of U.S. Pat. No. 7,643,168
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`facsimile transmission techniques. The invention incorporates a
`camera and signal converter into an integrated unit wherein the
`converted signal may be transmitted on a real time basis or may be
`stored in memory for later recall and transmission.” Ex. 1001, 2:24-
`31.1
`
`Consistent with the data printed on the face of the ‘168 patent, the ‘168
`
`application data sheet claimed priority solely to the ‘871 patent application. Ex.
`
`1002, Application Data Sheet (“ADS”) filed December 28, 2006. The ‘871 patent
`
`application was filed as a divisional application of later abandoned application No.
`
`09/006,073 (never published), which was filed on January 12, 1998. The
`
`specification filed with the ‘168 application was an identical copy of the text of the
`
`‘871 specification. As a copy, it included the original ‘871 priority claim recited as:
`
`“This application is a divisional application of … Ser. No. 09/006,073.” Ex. 1003,
`
`Specification filed December 28, 2006 ¶ [0001].
`
`To correct the erroneous priority claim for the new application, the Applicant
`
`submitted a preliminary amendment with the ‘168 application that amended the
`
`‘168 specification to reflect the correct priority claim to the ‘871 application as
`
`disclosed in the ADS filed with the ‘168 patent. Ex. 1004, ‘168 patent Preliminary
`
`Amendment filed December 28, 2006. That amendment recited:
`
`
`1 In this Petition, all emphasis is added unless otherwise indicated.
`
`
`
`5
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`Petition for Inter Partes Review of U.S. Pat. No. 7,643,168
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`In specification, paragraph 0001, before the first sentence,
`
`insert, “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.”
`
`There was no further claim for priority made in the ‘168 application. That priority
`
`claim appears on the front page of the ‘168 patent.
`
`During prosecution of the ‘168 patent, the Applicant submitted information
`
`disclosure statements on October 17, 2007 and October 20, 2009. The Examiner
`
`submitted lists of references cited on October 4, 2007, December 12, 2008, August
`
`20, 2009, and November 16, 2009. None of these disclosures refer to the then
`
`abandoned application No. 09/006,073, the ‘818 publication or the expired
`
`international application PCT/US99/00664, filed on January 12, 1999.
`
`IV.
`
`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 1-31 of the ‘168 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 reference:
`
` WO 1999/035818 (Ex. 1006) (“the ‘818 publication”).
`
`
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`6
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`Petition for Inter Partes Review of U.S. Pat. No. 7,643,168
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`The specific statutory grounds under which 35 U.S.C. § 102 on which the
`
`challenge to the claims are based and the references relied upon for each ground are
`
`as follows:
`
` Claims 1-31 are anticipated under 35 U.S.C. § 102(b) by the ‘818
`
`publication.
`
`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 ‘168 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 broadest
`
`reasonable interpretation, which for the avoidance of doubt for one term is
`
`presented below. Because the standard for claim construction at the Patent Office
`
`is different than that used during a litigation in a United States District Court (see
`
`also, 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 ‘168 patent as appropriate in any such
`
`proceeding.
`
`Viewfinder: This term appears claims 10-13, 23, 25, 28 and 31. The
`
`proposed BRI construction is “a device for depicting a view.” This construction is
`
`
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`7
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`Petition for Inter Partes Review of U.S. Pat. No. 7,643,168
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`broad enough to cover viewfinders that may or may not be electrical devices. This
`
`is appropriate because claims 13, 23, 28, and 31 each contemplate embodiments in
`
`which “a display screen [is] apart from the viewfinder.” In addition, the
`
`specification also describes embodiments in which image data is viewed through
`
`the viewfinder but where the image data is not received or displayed by the
`
`viewfinder itself: “The LCD unit may be positioned to be visible through the
`
`viewfinder 194 or may be in a separate back window 198.” Ex. 1001, ‘168 patent,
`
`11:64–65.
`
`Based on the above, the proposed BRI construction for this term is “a device
`
`for depicting a view.”
`
`D.
`
`37 C.F.R. § 42.104(b)(4): How The Construed Claims Are
`Unpatentable
`
`A detailed explanation of how claims 1-31 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. Included at Ex.
`
`1010 is a Declaration of Steven Sasson (“Sasson Decl.”) under 37 C.F.R. § 1.68
`
`further supporting the petition. 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.
`
`
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`8
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`Petition for Inter Partes Review of U.S. Pat. No. 7,643,168
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`V. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ‘168 PATENT IS UNPATENTABLE
`A.
`
`Since the Patent Owner broke the priority chain, claims 1-31 are
`anticipated by the substantially identical specification for the ‘818
`publication.
`
`Claims 1-31 are anticipated under 35 U.S.C. § 102(b) by the ‘818 publication
`
`that published on July 15, 1999 -- more than one year prior to the earliest applicable
`
`filing date for the ‘168 patent. The ‘818 publication also has substantially the same
`
`specification as the ‘168 patent. Ex. 1010, Sasson Decl., ¶¶ 18-19.
`
`1.
`
`The Effective Filing Date For The ‘168 Patent Is January 3,
`2003
`
`The earliest priority claim for the ‘168 patent is January 3, 2003, because that
`
`is the date the Applicant chose. A claim to benefit of priority under 35 U.S.C. §
`
`120 to the earliest of a chain of patent applications must make specific reference to
`
`“each application in the chain of priority to refer to the prior applications.”
`
`Encyclopaedia Britannica, Inc. v. Alpine Elecs. of America, Inc, 609 F.3d 1345,
`
`1352 (Fed. Cir. 2010). Such a “specific reference” to an application in a priority
`
`claim requires precise details, including those details recited in the implementing
`
`regulation for § 120, that is, 37 C.F.R. § 1.78(a)(2)(i). Medtronic Corevalue, LLC
`
`v. Edwards Lifesciences Corp., 741 F.3d 1359, 1366 (Fed. Cir. 2014). “The
`
`patentee is the person best suited to understand the genealogy and relationship of
`
`her applications; a requirement for her to clearly disclose this information should
`
`present no hardship. Id. at 1366.
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`
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`9
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`Petition for Inter Partes Review of U.S. Pat. No. 7,643,168
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`In prosecution of the ‘168 patent, the Application Data Sheet (“ADS”)
`
`clearly identified the priority claim to Application Serial Number 10/366,470 (“the
`
`‘470 application”) filed January 3, 2003, which matured into the ‘871 Patent. Ex.
`
`1002. This priority claim appears on the front page of the ‘168 patent. Ex. 1001.
`
`Similarly, the preliminary amendment, clearly identifies the priority claim to only
`
`the ‘470 Application filed on January 3, 2003. Ex. 1004.
`
`The specification of the ‘168 patent states, “This application is a divisional
`
`application of and claims priority from a non-provisional United States Application
`
`… Ser. No. 09/006,073, having a filing date of January 12, 1998 ….” Ex.1001,
`
`‘168 patent, 1:6-12. This specific text is an exact copy of the priority claim for the
`
`‘871 patent. Compare Ex. 1001, ‘168 patent, 1:6-12 with Ex. 1009, ‘871 patent, 1:6-
`
`12. As amended in 1995, the patent statute defines the term of the patent based on
`
`the filing date of the earliest U.S. application for which benefit under 35 U.S.C. §
`
`120 is claimed. See 35 U.S.C. § 154(a)(2). By statute, the start of the potential
`
`term of a patent -- and its end date -- based on a chain of applications linked under
`
`§ 120, is a choice made by the patentee. In effect, by strategically choosing the
`
`effective filing date, the patentee can enlarge or shorten its term of protection.
`
`The text referring to the ‘073 application at col. 1:6-12 of the ‘168 patent
`
`cannot form a basis for a priority claim back to January 12, 1998, for the simple
`
`reason that it is incorrect on its face. The phrase “This application” in this specific
`
`
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`10
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`Petition for Inter Partes Review of U.S. Pat. No. 7,643,168
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`text of the ‘168 patent must be construed to refer to the application from which the
`
`‘168 patent arose, that is, Application Serial Number 11/617,509 (“the ‘509
`
`Application”) filed on December 28, 2006. See Medtronic, 741 F.3d at 1366
`
`(rejecting attempt to define “this application” to have meaning other than “the
`
`present application”).
`
`The ‘509 application is a continuation of the ‘470 application, as noted on
`
`the face of the ‘168 patent. The relationships between the ‘073 application
`
`(abandoned “Grandparent”), the ‘470 application (‘871 patent), and the ‘509
`
`application (‘168 patent) are illustrated in the drawing shown at page 6 hereof.
`
`Contrary to the text of the ‘168 patent, the ‘509 application is not a divisional of the
`
`‘073 application.
`
`Pursuant to 37 C.F.R. § 1.78(a)(2)(i), to claim priority under 35 U.S.C. §
`
`120, the required “specific reference” must include the “relationship of the
`
`applications.” As recited by the text at col. 1:6-12 of the ‘168 patent, the
`
`relationship of the ‘509 application to the asserted ‘470 application is not correct on
`
`its face. The ‘509 application is not, nor could not be, a divisional of the ‘470
`
`application because the ‘470 application was not then pending at the time the ‘509
`
`application was filed. The text referencing the ‘073 application mis-identifies the
`
`relationship between the ‘509 and ‘470 applications. Because of this mis-
`
`identification, that text cannot be a valid basis for extending the priority claim back
`
`
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`11
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`Petition for Inter Partes Review of U.S. Pat. No. 7,643,168
`
`
`to the ‘470 filing date of January 12, 1998. Accordingly, the earliest applicable
`
`priority date for the ‘168 patent is the ‘470 application filing date of January 3,
`
`2003 – the date the Applicant chose.
`
`2.
`
`identical
`The ‘818 Publication Has substantially the
`disclosure as the ‘168 Patent, and so the ‘818 Publication
`anticipates the ‘168 Patent claims either explicitly or
`inherently.
`
`
`
`As the ‘168 patent and ‘818 publication have substantially identical
`
`specifications, the Patent Owner cannot rebut the fact that the ‘818 publication
`
`teaches each and every feature of the claims without admitting that the claims or
`
`specific claim term is not supported by the ‘168 patent specification. So, each
`
`claim term is explicitly or inherently found not only in the exemplary portions of
`
`the ‘818 publication, but in other portions of the ‘818 publication. Ex. 1010,
`
`Sasson Decl., ¶ 19. The following discussion identifies exemplary excerpts from
`
`the ‘818 publication that disclose each limitation of claims 1-31 of the ‘168 patent.
`
`Id. All emphasis in the excerpts below is added except where expressly noted.
`
`B.
`Independent Claim 1 and its dependent claims
`Claim 1 preamble: The preamble recites “Apparatus comprising.” The ‘818
`
`publication recites “an apparatus for capturing, converting and transmitting a visual
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`image via standard facsimile transmissions systems.” Ex. 1006, ‘818 publication at
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`page 6:13-14. Ex. 1010, Sasson Decl., ¶ 21.
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`Claim 1 (b) recites “a portable housing, the portable housing being
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`wireless.” As disclosed by the ‘818 publication, “[t]he configuration shown in Fig.
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`6B is a basic portable system, with a battery powered portable module 160 having
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`a self-contained power source 162. The system may include an integral RAM
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`and/or the removable memory module as indicated by the image card 72. The
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`camera 10 may be an integral feature of the portable module 160.” Ex. 1006, ‘818
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`publication at page 15:1-4. “Turning now to Figs. 7A and 7B, the camera body 190
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`is similar to a standard 35 millimeter camera housing ….” Id. at page 15:22-23. “In
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`addition, where desired, an integral cellular phone can be incorporated in the
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`camera housing and transmission can be sent directly from the camera housing to a
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`remote receiving station. The keypad for the telephone is indicated at 202.” Id. at
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`page 15:29-31. See id., Fig. 7A, 7B. Ex. 1010, Sasson Decl., ¶¶ 21-22.
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`Claim 1 (c) recites “an image collection device supported by the portable
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`housing, the image collection device being operable to provide visual image data
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`of a field of view.” The ‘818 publication discloses, “preferred embodiment permits
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`capture of a video image using a digital camera, an analog camera, or a video
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`camera such as a camcorder.” Ex. 1006, ‘818 publication at page 3:1-2. Visual
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`image data can be viewed with viewfinder 194 shown in Fig. 7A. Id. at 15:22-23.
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`Ex. 1010, Sasson Decl., ¶ 23.
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`Claim 1 (d) recites “a display supported by the portable housing, the display
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`being operable to display for viewing by a user a perceptible visual image, the
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`perceptible visual image being generated from the visual image data.” The ‘818
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`publication discloses, “Turning now to Figs. 7A and 7B, the camera body 190 is
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`similar to a standard 35 millimeter camera housing and is adapted to receive a
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`standard lens 192 with a viewfinder 194.” Ex. 1006, ‘818 publication at page
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`15:22-23, Fig. 8A-1. Ex. 1010, Sasson Decl., ¶ 24.
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`Claim 1 (e) recites “memory supported by the portable housing, the memory
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`being suitable to receive visual image data in digital format, the memory being
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`suitable to retain the visual image data in digital format.” The ‘818 publication
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`discloses, “Once the image is captured by the camera 10 and is presented at 44 to
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`the memory device 46, it is stored for later recall and transmission.” Ex. 1006, ‘818
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`publication at page 9:19-20. “The specific type of memory device is optional and
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`may include, for example, an SRAM device, a DRAM, Flash RAM, hard drive,
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`floppy disk, PCMCIA format removable memory (see, for example, the PCMCIA
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`card 50 in Fig. 7A), writeable optical media or other storage device.” Id. at page
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`9:20-24 (referring to Fig. 2). The memory is suitable to receive the visual image
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`data in digital format because “[a]n analog to digital (A/D) converter 74 converts
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`the video portion of the analog signal from the camera and produces the digital
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`signal for output at line 76. The digital output data on path 76 is introduced into a
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`data multiplexer circuit 81 and into the RAM memory unit(s) 71, 72. Id. at page
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`11:15-17 (referring to Fig. 5). Ex. 1010, Sasson Decl., ¶ 25.
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`Claim 1 (f) recites “an input device supported by the portable housing, the
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`input device being operable by the user.” The ‘818 publication shows in Figs. 7A
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`and 7B a “camera body 190 [that] is similar to a standard 35 millimeter camera
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`housing” with “operator interface button keys” that are “housed within the housing
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`and may be positioned on the back plate 196 of the body.” Ex. 1006, ‘818
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`publication at page 15:22-26. Ex. 1010, Sasson Decl., ¶ 26.
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`Claim 1 (g) recites “operation of the input device by the user enabling the
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`memory to retain the visual image data in digital format, the memory being
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`suitable to provide retained visual image data in digital format.” The ‘818
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`publication discloses that "when the camera is activated either by the operator or
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`by automation, the system processor 86 detects the initiation of the camera and
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`capture sequence and sends a signal via line 88 to the read/write control 84. The
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`read/write control then monitors the incoming video signal 83 to find the horizontal
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`and vertical sync pulse to identify the beginning of a frame. The read/write control
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`then initiates writing to memory at the RAM devices to initiate capture of the
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`frame.” Ex. 1006, ‘818 publication at page 11:28-31; page 12:1 (referring to Fig.
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`5). Ex. 1010, Sasson Decl., ¶ 27.
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`Claim 1 (h) recites “media supported by the portable housing, the media
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`being suitable to embody at least one compression algorithm.” The ‘818
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`publication discloses that “the processor executes a code for performing a bi-level
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`compression of the data” (Ex. 1006, ‘818 publication at page 14:21-22, referring to
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`Fig. 5), and the “circuitry supporting the processor comprises the processor chip 86
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`and the control store memory (ROM, Flash RAM, PROM, EPROM or the like) 92
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`for storing the software program executed by the processor,” (Id. at page 12:8-10).
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`Ex. 1010, Sasson Decl., ¶ 28.
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`Claim 1 (i) recites “at least one processing platform supported by the
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`portable housing, the at least one processing platform being operable to execute the
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`at least one compression algorithm, the at least one processing platform being
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`provided the retained visual image data in digital format, execution of the at least
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`one compression algorithm providing compressed visual image data.” The ‘818
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`publication discloses, “the processor accesses the RAM and manipulates the data
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`representing each frame image. For example, the processor will perform the gray
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`scale to half tone conversions described in connection with Figs. 1-4 to prepare the
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`signal for facsimile transmission. The processor can also perform image
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`compression and output the image as a gray scale.” Ex. 1006, ‘818 publication at
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`page 14:17-20 (referring to Fig. 5). Ex. 1010, Sasson Decl., ¶ 29.
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`Claim 1 (j) recites “a mobile phone supported by the portable housing, the
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`mobile phone being operable to send to a remote recipient a wireless transmission,
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`the wireless transmission conveying the compressed digital image data.” The ‘818
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`publication discloses, “The system of the present invention also contemplates
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`wireless transmission over a cellular telephone, radio frequency, satellite
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`transmission or the like.” Ex. 1006, ‘818 publication at page 13:20-21. In the
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`preferred embodiment, “the system includes a video camera and an integral
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`cellular telephone, wherein the telephone using the standard audio mode or future
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`digital modes, can be used to transmit and receive visual image signals.” Id. at
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`page 3:18-20. “