throbber
Paper No. __
`Filed: January 7, 2015
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`
`
`Filed on behalf of: Samsung Electronics Co., Ltd. and
`
`
`
`Samsung Electronics America, Inc.
`
`By:
`Steven L. Park (stevenpark@paulhastings.com)
`Naveen Modi (naveenmodi@paulhastings.com)
`Elizabeth L. Brann (elizabethbrann@paulhastings.com)
`Paul Hastings LLP
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner
`
`v.
`
`E-WATCH, INC.
`Patent Owner
`
`____________________
`
`Patent No. 7,365,871
`____________________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,365,871
`
`
`
`
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`
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`

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`Petition for Inter Partes Review – Patent No. 7,365,871
`
`TABLE OF CONTENTS
`
`LIST OF EXHIBITS ................................................................................................ iv
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ................................... 2
`
`A.
`
`B.
`
`REAL PARTY IN INTEREST ............................................................. 2
`
`RELATED MATTERS ......................................................................... 2
`
`1.
`
`2.
`
`Litigations ................................................................................... 2
`
`Inter Partes Reviews ................................................................... 3
`
`C. NOTICE OF COUNSEL AND SERVICE INFORMATION .............. 4
`
`III. PAYMENT OF FEES UNDER 37 C.F.R. § 42.15(a) .................................... 4
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW ...................................... 4
`
`A. GROUND FOR STANDING................................................................ 5
`
`B.
`
`IDENTIFICATION OF CHALLENGE ................................................ 5
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`Claims Challenged ...................................................................... 5
`
`The Prior Art ............................................................................... 5
`
`Supporting Evidence Relied Upon For The Challenge .............. 5
`
`Statutory Ground(s) Of Challenge And Legal Principles ........... 5
`
`Claim Construction ..................................................................... 6
`
`How Claims Are Unpatentable Under Statutory Grounds
`Pursuant to 37 C.F.R. § 42.104 (b)(2) ........................................ 6
`
`V. OVERVIEW OF THE ’871 PATENT ............................................................ 6
`
`A.
`
`B.
`
`PRIORITY DATE OF THE CLAIMS OF THE ’871 PATENT .......... 6
`
`SUMMARY OF THE ’871 PATENT ................................................... 6
`
`
`
`i
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`

`

`Petition for Inter Partes Review – Patent No. 7,365,871
`
`C.
`
`D.
`
`SUMMARY OF PROSECUTION FILE HISTORY............................ 8
`
`PROPOSED CLAIM CONSTRUCTION............................................. 8
`
`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE ’871 PATENT IS UNPATENTABLE ....................10
`
`A.
`
`B.
`
`C.
`
`IDENTIFICATION OF THE REFERENCES AS PRIOR ART ........10
`
`SUMMARY OF INVALIDITY POSITIONS ....................................13
`
`CLAIMS 1-8 AND 12-15 ARE OBVIOUS UNDER 35 U.S.C.
`§ 103(a) OVER WILSKA AND YAMAGISHI-114 ..........................13
`
`VII. CONCLUSION ..............................................................................................37
`
`
`
`
`
`ii
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`Petition for Inter Partes Review – Patent No. 7,365,871
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 10, 13
`
`Statutes
`
`35 U.S.C. § 102(b) ................................................................................................... 10
`
`35 U.S.C. § 103(a) ............................................................................................. 10, 13
`
`Other Authorities
`
`37 C.F.R. § 1.131 ................................................................................................. 8, 11
`
`37 C.F.R. § 42.8 ......................................................................................................... 2
`
`37 C.F.R. § 42.8(b)(1) ................................................................................................ 2
`
`37 C.F.R. § 42.8(b)(2) ................................................................................................ 2
`
`37 C.F.R. §§ 42.8(b)(3)-(4) ........................................................................................ 4
`
`37 C.F.R. § 42.15(a) ................................................................................................... 4
`
`37 C.F.R. § 42.100(b) ................................................................................................ 6
`
`37 C.F.R. § 42.104 ..................................................................................................... 4
`
`37 C.F.R. § 42.104(a) ................................................................................................. 5
`
`37 C.F.R. § 42.104 (b)(2) ........................................................................................... 6
`
`
`
`
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`iii
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`

`

`Petition for Inter Partes Review – Patent No. 7,365,871
`
`LIST OF EXHIBITS
`
`U.S. Patent No. 7,365,871 to Monroe, as filed in IPR2014-00987
`
`U.K. Patent Application GB 2,289,555 to Wilska et al., as filed in
`IPR2014-00987
`
`Certified Translation of Japanese Patent Publication No. H06-176114
`to Yamagishi, Certification of English Translation, and the Original
`Japanese Document, as filed in IPR2014-00987
`
`Reserved
`
`Reserved
`
`Declaration of Kenneth Parulski including Attachments A-D, as filed
`in IPR2014-00987
`
`Selected Portions of the ’871 Patent Prosecution File History, as filed
`in IPR2014-00987
`
`HTC Corp. v. e-Watch, Inc., IPR2014-00987, Petition, Paper No. 1
`(June 19, 2014)
`
`HTC Corp. v. e-Watch, Inc., IPR2014-00987, Institution Decision,
`Paper No. 6 (Dec. 9, 2014)
`
`
`
`
`iv
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`
`
`
`
`
`
`
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`

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`Petition for Inter Partes Review – Patent No. 7,365,871
`
`I.
`
`INTRODUCTION
`
`Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
`
`(collectively, “Petitioner”) request inter partes review of claims 1-8 and 12-15 of
`
`U.S. Patent No. 7,365,871 (“the ’871 Patent”) (Ex. 1001), which is assigned to
`
`e-Watch, Inc. (“Patent Owner”). On December 9, 2014, the Board instituted an
`
`inter partes review of the same claims based on a petition filed by HTC
`
`Corporation and HTC America, Inc. (“HTC”) in IPR2014-00987 (“HTC IPR”)
`
`(see Ex. 1009 at 9-11; Ex. 1008 at 14-36). This Petition proposes the same ground
`
`of rejection proposed in the HTC IPR that was adopted by the Board, and relies on
`
`the same analysis, evidence, and expert testimony. Therefore, Petitioner submits
`
`concurrently herewith a request for joinder with the HTC IPR. In the event joinder
`
`is not granted, Petitioner respectfully requests that a proceeding be instituted based
`
`on this petition alone.
`
`This Petition shows, by a preponderance of the evidence, that there is a
`
`reasonable likelihood that Petitioner will prevail on claims 1-8 and 12-15 of the
`
`’871 Patent based on prior art that the U.S. Patent Office (“the Office”) did not
`
`have before it or did not fully consider during prosecution, and that renders these
`
`claims obvious. Accordingly, claims 1-8 and 12-15 of the ’871 Patent should be
`
`found unpatentable and canceled.
`
`
`
`1
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`

`

`Petition for Inter Partes Review – Patent No. 7,365,871
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`A. REAL PARTY IN INTEREST
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner identifies Samsung Electronics
`
`Co., Ltd. and Samsung Electronics America, Inc. as the real parties-in-interest.
`
`B. RELATED MATTERS
`In accordance with 37 C.F.R. § 42.8(b)(2), Petitioner identifies the following
`
`related matters.
`
`Litigations
`
`1.
`Patent Owner has asserted the ’871 Patent and U.S. Patent No. 7,643,168
`
`(“the ’168 Patent”), which claims priority to the ’871 Patent, against Samsung
`
`Electronics Co., Ltd. and Samsung Telecommunications America, Inc. in a patent
`
`litigation filed on December 9, 2013, in the U.S. District Court for the Eastern
`
`District of Texas (case no. 2:13-cv-01062). 1 Patent Owner has also asserted the
`
`’871 Patent and ’168 Patent against other entities in nine other lawsuits in the
`
`Eastern District of Texas (case nos. 2:13-cv-01061, -01063, -01064, -01069,
`
`-01070, -01071, -01072, -01073, -01074, -01075, -01076, -01077, and -01078).
`
`
`1 Effective January 1, 2015, Samsung Telecommunications America, LLC (“STA”)
`
`merged into Samsung Electronics America, Inc., and STA ceased to exist as a
`
`separate corporate entity.
`
`
`
`2
`
`

`

`Petition for Inter Partes Review – Patent No. 7,365,871
`
`These litigations have been consolidated and case no. 2:13-cv-01061 has been
`
`designated as the lead case.
`
`Inter Partes Reviews
`2.
`Several petitions for inter partes review have been filed challenging the ’871
`
`and ’168 Patents.
`
`Regarding the ’871 Patent, as noted above, the Board instituted an inter
`
`partes review of the ’871 Patent on December 9, 2014, based on a petition filed by
`
`HTC on June 19, 2014 (IPR2014-00987) (“HTC IPR”) (see Ex. 1009 at 9-11; Ex.
`
`1008 at 14-36). This Petition copies the ground of rejection proposed in the HTC
`
`IPR that was adopted by the Board. The Board also instituted an inter partes
`
`review of the ’871 Patent on August 4, 2014, based on a petition filed by Iron
`
`Dome LLC on February 18, 2014 (IPR2014-00439). In addition, other entities
`
`have filed petitions for inter partes review of the ’871 Patent (IPR2015-00402,
`
`IPR2015-00404, IPR2015-00406, IPR2015-00411, IPR2015-00412, and IPR2015-
`
`00413). These matters remain pending.
`
`As for the ’168 Patent, the Board instituted an inter partes review of the
`
`’168 Patent on December 9, 2014, based on a petition filed by HTC on June 19,
`
`2014 (IPR2014-00989). Petitioner is filing concurrently herewith a petition for
`
`inter partes review that copies the grounds of rejection proposed by HTC in
`
`IPR2014-00989 that was adopted by the Board. Other entities have also filed
`
`
`
`3
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`

`

`Petition for Inter Partes Review – Patent No. 7,365,871
`
`petitions for inter partes review of the ’168 Patent (IPR2015-00401, IPR2015-
`
`00407, IPR2015-00408, and IPR2015-00414). These matters remain pending.
`
`C. NOTICE OF COUNSEL AND SERVICE INFORMATION
`In accordance with 37 C.F.R. §§ 42.8(b)(3)-(4), Petitioner identifies the
`
`following lead and back-up counsel and service information.
`
`Lead counsel is Steven L. Park (Reg. No. 47,842), Paul Hastings LLP, 1170
`
`Peachtree Street, NE, Suite 100, Atlanta, GA 30309, Telephone: (404) 815-2223,
`
`Fax: (404) 685-5223, E-mail: stevenpark@paulhastings.com; and back-up counsel
`
`is Naveen Modi (Reg. No. 46,224), Paul Hastings LLP, 875 15th St. N.W.,
`
`Washington, D.C., 20005, Telephone: 202.551.1700, Fax: 202.551.1705, Email:
`
`naveenmodi@paulhastings.com; and Elizabeth L. Brann (Reg. No. 63,987), Paul
`
`Hastings LLP, 4747 Executive Drive, 12th Floor, San Diego, CA 92121,
`
`Telephone: (858) 458-3014, Fax: (858) 458-3114, E-mail:
`
`elizabethbrann@paulhastings.com.
`
`III. PAYMENT OF FEES UNDER 37 C.F.R. § 42.15(a)
`The required fees are submitted herewith. The Office is authorized to charge
`
`any additional fees due at any time during this proceeding to Deposit Account No.
`
`50-2613.
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW
`This Petition complies with all requirements under 37 C.F.R. § 42.104.
`
`
`
`4
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`

`

`Petition for Inter Partes Review – Patent No. 7,365,871
`
`A. GROUND FOR STANDING
`Petitioner certifies that, under 37 C.F.R. § 42.104(a), the ’871 Patent is
`
`available for inter partes review, and that Petitioner is not barred or estopped from
`
`requesting inter partes review of the ’871 Patent on the grounds identified.
`
`IDENTIFICATION OF CHALLENGE
`
`B.
`The precise relief requested is that the Office cancel the Challenged Claims.
`
`Claims Challenged
`
`1.
`Claims 1-8 and 12-15 of the ’871 Patent are challenged in this Petition.
`
`The Prior Art
`
`2.
`The prior art references relied upon are Wilska (Ex. 1002) and Yamagishi-
`
`114 (Ex. 1003).
`
`Supporting Evidence Relied Upon For The Challenge
`
`3.
`The Declaration by Kenneth Parulski (Ex. 1006) and other supporting
`
`evidence in the List of Exhibits above are filed herewith.
`
`Statutory Ground(s) Of Challenge And Legal Principles
`
`4.
`The review of the ’871 Patent is governed by pre-AIA 35 U.S.C. §§ 102 and
`
`103 that were in effect before Mar. 16, 2013. Further, 35 U.S.C. §§ 311 to 319 that
`
`took effect on Sep. 16, 2012 govern this inter partes review.
`
`
`
`5
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`

`

`Petition for Inter Partes Review – Patent No. 7,365,871
`
`Claim Construction
`5.
`The ’871 Patent is an unexpired patent. In inter partes review, a claim in the
`
`’871 Patent shall be given its broadest reasonable construction in light of the
`
`specification of the patent in which it appears. 37 C.F.R. § 42.100(b).
`
`6. How Claims Are Unpatentable Under Statutory Grounds
`Pursuant to 37 C.F.R. § 42.104 (b)(2)
`
`Section VI provides an explanation of how claims 1-8 and 12-15 of the ’871
`
`Patent are unpatentable, including the identification of where each element of the
`
`claim is found in the prior art patents or printed publications.
`
`V. OVERVIEW OF THE ’871 PATENT
`PRIORITY DATE OF THE CLAIMS OF THE ’871 PATENT
`A.
`The application for the ’871 Patent was filed on January 3, 2003, as a
`
`purported divisional of Appl. No. 09/006,073, filed January 12, 1998 (abandoned).
`
`Although Petitioner disagrees that the ’871 Patent is entitled to a priority date of
`
`January 12, 1998, Petitioner has assumed January 12, 1998, as the priority date for
`
`purposes of this Petition.
`
`SUMMARY OF THE ’871 PATENT
`
`B.
`The ’871 Patent describes an image capture, conversion, compression,
`
`storage and transmission system (Ex. 1001, Abstract). The system includes a
`
`camera and a transmission interface; the camera captures an image that can be
`
`transmitted to another device using, e.g., cellular transmission, radio signal,
`
`
`
`6
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`Petition for Inter Partes Review – Patent No. 7,365,871
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`satellite transmission and hard line telephonic transmission (id., 4:58-5:2).
`
`Captured images can be from a digital camera, an analog camera or a video camera
`
`(e.g., a camcorder) (id., 1:37-39).
`
`Fig. 4 of the ’871 Patent illustrates the data path after an image is captured
`
`by the camera 10 and conditioned by the gray scale bit map 16 (id., 7:3-48). The
`
`device includes a memory 46, an optional viewer 48, and a format select interface
`
`switch 60 that permits either automated or manual selection of the transmitting
`
`protocol, such as a Group-III facsimile format, a PC modem protocol, a wavelet
`
`compressor or others (id.). Depending on the selected protocol, the signal output is
`
`generated and provided to a communications interface module 83 for transmission
`
`(id.).
`
`The claims recite handheld self-contained cellular telephone and integrated
`
`image processing systems (id., claims 1-5), handheld cellular telephones having an
`
`integrated electronic camera (id., claims 6-8), and combinations of handheld
`
`wireless telephone and digital camera (id., claims 12-15). Claim 1 recites a
`
`housing, an image capture device, a display, a processor, a memory, alphanumeric
`
`input keys, a user interface, a telephone system, a wireless communication device,
`
`and a power supply.
`
`
`
`7
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`

`

`Petition for Inter Partes Review – Patent No. 7,365,871
`
`SUMMARY OF PROSECUTION FILE HISTORY
`
`C.
`The original examination of the ’871 Patent included seven Office Actions,
`
`several examiner interviews and an examiner amendment. Notably, in response to
`
`the September 27, 2004 Office Action, Patent Owner filed an affidavit under 37
`
`C.F.R. § 1.131 to contend an earlier invention date of March 18, 1993, nearly five
`
`(5) years before its earliest priority date of January 12, 1998.
`
`The Office rejected the claims multiple times based on prior art and Patent
`
`Owner countered with multiple claim amendments. In the response of September
`
`7, 2007, Patent Owner amended claims and deleted certain paragraphs from the
`
`specification (see Ex. 1007) that describe prior art teachings, and constitute
`
`admitted prior art (“APA”) by Patent Owner.
`
`None of the cited references in this Petition was before the Office during the
`
`original examination. Therefore, the ’871 Patent was granted based on an
`
`incomplete record of relevant prior art.
`
`PROPOSED CLAIM CONSTRUCTION
`
`D.
`Petitioner proposes construction of claim terms below pursuant to the
`
`broadest reasonable interpretation (BRI) standard for inter partes review and to
`
`comply with 37 C.F.R. §§ 42.100(b) and 42.104(b)(3) and for the sole purpose of
`
`this Petition. Thus, the proposed BRI claim constructions do not necessarily reflect
`
`
`
`8
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`

`

`Petition for Inter Partes Review – Patent No. 7,365,871
`
`appropriate claim constructions to be used in litigation and other proceedings
`
`where a different claim construction standard applies.2
`
`Framing an image: This term appears in the claims in different variations:
`
`“an image framed by the camera” (claim 1); “framing the [an] image to be
`
`captured” (claims 2, 12); “visually framing a visual image to be captured” (claim
`
`6); “framing the visual image” (claim 7). In IPR2014-00987, HTC proposed that
`
`the broadest reasonable interpretation of these phrases is “obtaining an image of an
`
`object using a viewfinder, or providing data representing an image of an object on
`
`a display” (Ex. 1008 at 6-7). The Board in IPR2014-00987 did not adopt this exact
`
`construction, but instead adopted a similar interpretation. For “image framed by the
`
`camera,” the Board interpreted it as “an image having boundaries established by
`
`the camera,” and for all other “framing” terms, the Board interpreted them as
`
`“establishing the boundaries of the image to be captured” (Ex. 1009 at 6-7).
`
`As explained by the Board in IPR2014-00987, “[t]he term ‘frame’ is used in
`
`the Specification, but it is used as a noun, not as a verb, and only in an image-
`
`processing context,” and “[t]he terms ‘framed’ and ‘framing’ are not used in the
`
`Specification” (id. at 6). But, “[a]s used in the claims, ‘framed’ and ‘framing’
`
`appear to refer to composing an image by positioning the subject of the image
`
`within the boundaries of the camera’s field of view” (id.).
`
`
`2 Petitioner reserves all other arguments, such as § 112 arguments, for litigation.
`9
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`Petition for Inter Partes Review – Patent No. 7,365,871
`
`For purposes of this proceeding, Petitioner proposes that the broadest
`
`reasonable interpretation of “image framed by the camera” is “an image having
`
`boundaries established by the camera,” and of all other “framing” terms is
`
`“establishing the boundaries of the image to be captured,” as adopted by the Board
`
`in IPR2014-00987 (see id. at 6-7). Petitioner notes, however, that the prior art
`
`analysis provided by HTC meets both HTC’s interpretation and the Board’s
`
`interpretation, as evidenced by the Board’s institution of trial in IPR2014-00987.
`
`Other Claim Terms: Petitioner proposes the ordinary and customary
`
`meaning for each of the remaining terms in claims 1-8 and 12-15 of the ’871
`
`Patent.
`
`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ’871 PATENT IS UNPATENTABLE
`
`Claims 1-8 and 12-15 are unpatentable under 35 U.S.C. § 103(a) for merely
`
`reciting predictable and obvious combinations of elements that were well known
`
`many years prior to the earliest possible priority date of the ’871 Patent (see also
`
`Ex. 1006, Pars. 29-70) and were taught or suggested by the cited prior art in this
`
`Petition. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007).
`
`IDENTIFICATION OF THE REFERENCES AS PRIOR ART
`
`A.
`As detailed below, the cited prior art references are within the same specific
`
`technical field, and relate to the claimed subject matter, of the ’871 Patent. All
`
`cited references were published more than one year prior to January 12, 1998, the
`
`
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`10
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`Petition for Inter Partes Review – Patent No. 7,365,871
`
`earliest possible priority date of the ’871 Patent, and, therefore, are prior art under
`
`35 U.S.C. § 102(b). The cited references cannot be sworn behind by a declaration
`
`under 37 C.F.R. §1.131. In addition, none of the cited references were before the
`
`Office in the original examination.
`
`Wilska (U.K. Appl. No. GB 2,289,555, published Nov. 22, 1995) describes
`
`a portable, hand-held device for personal communication, data collection, picture
`
`taking and data processing (Ex. 1002, Abstract). Figs. 1-3 illustrate internal and
`
`external components, including a data processing unit (2), a display (9), user
`
`interface (10, 11), a cellular mobile telephone and modem (17), memory unit(s)
`
`(13), power source (e.g., a battery) (3) and application software (id.). The device
`
`includes a camera unit (14) that is fixedly integrated into the device, or
`
`implemented as a removable component (e.g., a PCMCIA card) (id., Abstract;
`
`4:28-30; 5:9-10; 7:21-23). The camera unit (14) includes a camera (14a), e.g., a
`
`CCD or a semiconductor image sensor, and optics (14b) connected thereto (id.,
`
`Abstract; 7:9-10). Fig. 5 of Wilska provides further details of the camera unit.
`
`Wilska’s device allows the use of cellular phone services, data and/or speech
`
`transmission, facsimile services for transmission of images, electronic mail, short
`
`message service, camera functions to record images, and other functions (id., 6:4-
`
`12).
`
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`11
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`Petition for Inter Partes Review – Patent No. 7,365,871
`
`Yamagishi-114 (JP Publication No. H06-176114, published Jun. 24, 1994)
`
`describes a device that includes a camera and an image processing system and can
`
`be implemented in a portable wireless phone (Ex. 1003, Abstract, 18:23-24; Fig.
`
`14). Fig. 1 shows the device components: lens (10), shutter (12), A/D converter
`
`(16), display (64), control units (20, 40, 60), image memory (24), recording media
`
`(90) (e.g., hard disk, removable memory card), program memory (62),
`
`compression unit (22), battery (70), communication unit (100), keyboard
`
`(Abstract), operating means (66) (e.g., a mouse, a touch-sensitive panel, switches,
`
`keys) to operate the camera (id., 18:17-19), allow selection of items (id., 7:16-18)
`
`and entry of commands (id., 5:10-11). Some components (e.g., memory,
`
`communication units) can be designed as removable modules or as fixed sections
`
`of the device (id., 10:9-13; 19:5-29). In a “through-mode” of operation, the display
`
`(or a section of it) operates as a viewfinder to continuously show images that are
`
`picked up by the camera (id., 7:18-19; 8:18-23). The device can also operate in a
`
`“monitor-mode,” where a stored image is selected, read from memory and viewed
`
`on the display (id., 7:18-21).
`
`Fig. 14 illustrates a device which combines a digital camera and a mobile
`
`phone. The telephone may operate normally as a wireless phone for sending and
`
`receiving telephone calls (id., 18:36-45), and as an electronic camera for taking,
`
`storing and viewing images (id.). The device’s communication module can
`
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`12
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`Petition for Inter Partes Review – Patent No. 7,365,871
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`communicate bi-directionally with external devices to transfer data and control
`
`signals based on appropriate communication protocols (id., 5:38-47).
`
`SUMMARY OF INVALIDITY POSITIONS
`
`B.
`The cited prior art references disclose all the limitations of claims 1-8 and
`
`12-15 of the ’871 Patent and render each claim as a whole obvious and
`
`unpatentable under 35 U.S.C. § 103(a). The combination of Wilska and
`
`Yamagishi-114 illustrates that claims 1-8 and 12-15 recite features in combinations
`
`that were known or obvious to a person of ordinary skill in the art and are thus
`
`unpatentable. The Declaration by Mr. Parulski (Ex. 1006), an expert with
`
`considerable knowledge and extensive experience in this technical field, confirms
`
`and supports the Petitioner’s invalidity positions, and provides details as to how the
`
`claimed technology was well known many years before the earliest possible
`
`priority date of the 871 Patent.
`
`C. CLAIMS 1-8 AND 12-15 ARE OBVIOUS UNDER 35 U.S.C.
`§ 103(a) OVER WILSKA AND YAMAGISHI-114
`
`The combination of Wilska and Yamagishi-114 teaches or suggests all the
`
`limitations of claims 1-8 and 12-15 and renders each claim as a whole obvious and
`
`unpatentable (see also Ex. 1006, Pars. 79-108 and Table 1). A person of ordinary
`
`skill in the art (“POSITA”) would have been motivated, or would have found it
`
`obvious, to combine Yamagishi-114 and Wilska since both are in the same
`
`technical field (see Section VI.A), and address similar issues by disclosing
`
`
`
`13
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`Petition for Inter Partes Review – Patent No. 7,365,871
`
`implementations of portable handheld devices that function as both digital cameras
`
`and mobile telephones, and include similar components to capture, store, process,
`
`and display images. See KSR, 550 U.S. at 417-18.
`
`CLAIM 1 recites “[P1-1] A handheld self-contained cellular telephone and
`
`integrated image processing system.” Wilska describes a small-sized, portable and
`
`hand-held device (Ex. 1002, Abstract; 3:22-26; 10:20-24; claims 1, 9) that includes
`
`a cellular phone (id., 5:22-28; claim 4; Fig. 3, element 17), an integrated image
`
`processing system in the form of a PC-in-a-chip and/or an image processing unit
`
`that includes a microprocessor (id., 4:27 to 5:7; Fig. 3, element 2; Fig. 5, elements
`
`14a, 14c). Wilska’s camera unit and the associated image processing components
`
`can be fixedly integrated into the device (id., Abstract; 4:28-30; 5:9-10; 7:21-23).
`
`Claim 1 preamble also recites: “[P1-2] 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.” Wilska’s
`
`device includes an integrated radiotelephone (i.e., a cellular mobile phone) that can
`
`send both data and speech using, for example, a GSM wireless protocol (id., 5:22
`
`to 6:2; 6:6-8). Wilska’s device also captures images using a camera (id., 5:2-7;
`
`5:27-29; 6:6-8; 7:23-26; 9:23-30; 13:22-25), and transmits the captured images to
`
`another device in the cellular network in the form of, for example, a fax, or email
`
`(id., 5:22 to 6:2; 9:28 to 10:2; 12:23-26; 13:2-18; 13:25-27).
`
`
`
`14
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`

`

`Petition for Inter Partes Review – Patent No. 7,365,871
`
`Element [A1]: “a manually portable housing.” Wilska’s portable, hand-held
`
`device has a manually portable housing with dimensions of (6.7 x 3.3 x 1.2)
`
`inches. (id., Abstract:1-2; 1:5-6; 3:22-26; 10:20-24; Figs. 1-2, and 6-9: “housing
`
`(1)”).
`
`Element [B1]: “an integral image capture device comprising an electronic
`
`camera contained within the portable housing.” Wilska describes that its devices
`
`includes a camera that can be implemented as an integrated component (id.,
`
`Abstract; 4:28-30; 5:9-10; 7:21-23; Fig. 3, element 17), and includes an optics
`
`section, an image sensor and a processing unit with associated memory (id., 4:27 to
`
`5:2-7; 7:1-15; 7:21-26; Fig. 1, elements 14a, 14b, 14c; Fig. 5).
`
`Element [C1]: “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.”
`
`Figs. 1-3, and 6-7 of Wilska show a display (9) supported by the housing (1) of the
`
`device (id., 4:6-11; Figs. 1-3; 6-7, element 9) that is commonly movable when the
`
`housing is moved by hand. The display presents an image framed by the camera
`
`since the images that are received through the camera section have boundaries
`
`established by the camera section and can be immediately viewed on the display
`
`(id., 7:23-31; 8:21-24). Yamagishi-114 also describes a device that can operate in a
`
`“through-mode,” where a display functions as a viewfinder to continuously show
`
`
`
`15
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`

`

`Petition for Inter Partes Review – Patent No. 7,365,871
`
`the image signals picked up by the camera section (Ex. 1003, 7:18-19; 8:18-23;
`
`8:28-29; 8:37 to 9:9; 20:24-26) (see also the discussions related to element [B12]
`
`and Claim 2 below).
`
`Element [D1]: “a processor in the housing for generating an image data
`
`signal representing the image framed by the camera.” Wilska’s device includes a
`
`processing unit which can be one semiconductor chip comprising a processor (Ex.
`
`1002, 3:28-30; Fig. 3, element 2). Wilska also describes an image processing unit
`
`with a microprocessor (id., 5:2-5; 7:1-7; 7:15-26; Fig. 5, elements 14c and 23).
`
`Image signals from the CCD image sensor are transferred to the processing unit
`
`14(c), and are stored in memory (e.g., DRAM or SRAM) (id., 7:1-15; 7:23-26; Fig.
`
`5).
`
`Element [E1]: “a memory associated with the processor for receiving and
`
`storing the digitized framed image.” Wilska’s device includes a memory unit that
`
`receives and stores digital image data of the camera section; such data is processed
`
`by a microprocessor prior to storage, and is thus in digital format (id., 4:21-23; 7:1-
`
`7; 7:11-15; 7:23-26; 8:21-24; 9:7-13; 9:23-24; 9:28-30; 10:9-13; Fig. 5, elements
`
`14c, 24; 12:23-26; Fig. 3, element 13).
`
`Element [F1]: “accessible for selectively displaying in the display window
`
`and accessible for selectively transmitting over the wireless telephone network the
`
`digitized framed image.” Wilska’s stored images can be displayed when the user
`
`
`
`16
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`

`

`Petition for Inter Partes Review – Patent No. 7,365,871
`
`wishes to view them; or when the user selects particular images on the screen for
`
`modification (id., 7:26-31; 9:7-13; 9:14-16; 10:5-7; 12:23-27). Wilska’s images
`
`(e.g., stored in bitmap format) can be transmitted over a telephone network to a
`
`selected party (id., 9:28 to 10:2; 12:23-26; 13:2-18).
`
`Like Wilska, Yamagishi-114 also describes a hand-held portable image
`
`capture device incorporated in a mobile phone (see Section VI.A) and specifically
`
`describes a memory that holds digital image data captured by the camera of the
`
`device (Ex. 1003, 5:33; 8:28-29; 9:1-3; 9:14-20; 9:40-42; Fig. 1, elements 24, 62,
`
`90, 96). The data in memory can be selectively accessed by the user “according to
`
`information entered at an operating means” (id., 20:29-32 ). Examples of such
`
`operating means include a mouse, a trackball, a touch-sensitive panel, keys and
`
`switches (id., 7:16-18; 18:17-19). Yamagishi-114 also describes transmission of
`
`data to and from the camera-phone device (id., 5:38-47; Fig. 1, element 100).
`
`The combination of Wilska and Yamagishi-114 makes selective display and
`
`transmission of stored image data obvious to a POSITA since such a person would
`
`have found it convenient to use the pen, mouse, trackball or the touch-sensitive
`
`panel, that is described in Yamagishi-114 for selectively viewing an image, to
`
`retrieve a particular stored image and/or to transmit that image (e.g., fax the image)
`
`to a person or device that is selected by a user (see also Ex. 1006, Pars. 91-92).
`
`
`
`17
`
`

`

`Petition for Inter Partes Review – Patent No. 7,365,871
`
`Element [G1]: “a user interface for enabling a user to select the image data
`
`signal for viewing and transmission.” Wilska describes a user interface such as a
`
`keyboard, mouse or a trackball (Ex. 1002, 1:8; 4:13-14; 8:29-30; 9:14-16; 10:9-11;
`
`14:1-3; 15:claim 1; Figs. 1-2, and 6-9; elements 10, 11), which can be used for
`
`selection of images (id., 9:14-16). Yamagishi-114 also discloses a user interface,
`
`e.g., a pen, a mouse, a trackball, a touch-sensitive panel, switches, keys (Ex. 1003,
`
`7:16-18; 18:17-19) that can be used to select images for display (id., 20:29-32) and
`
`transmission (id., 7:16-18; 18:17-19).
`
`A POSITA would have been motivated, or would have found it obvious, to
`
`combine the teachings of Wilska and Yamagishi-114 to utilize a user interface to
`
`enable the selection of stored image for viewing and transmission of that image
`
`(e.g., fax the image), since a user interface such as a touch-sensitive screen would
`
`have made the selection of an image easier (see also Ex. 1006, Pars. 91-92).
`
`Element [H1]: “a telephonic system in the housing for sending and
`
`receiv

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