UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`HTC CORPORATION and HTC AMERICA, INC.
`Petitioners
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`v.
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`E-WATCH, INC. and E-WATCH CORPORATION
`Patent Owner
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`CASE: To Be Assigned
`Patent No. 7,643,168 B2
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`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,643,168 B2
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`Page 1 of 66
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`SAMSUNG EXHIBIT 1009
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`TABLE OF CONTENTS
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`Page
`EXHIBIT LIST ....................................................................................................... iii
`I.
`INTRODUCTION .......................................................................................... 1
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(B) ............................ 1
`A.
`REAL PARTY IN INTEREST ............................................................ 1
`B.
`RELATED MATTERS ........................................................................ 1
`C. NOTICE OF COUNSEL AND SERVICE INFORMATION ............. 1
`III. REQUIREMENTS FOR INTER PARTES REVIEW ................................... 2
`A. GROUND FOR STANDING ............................................................... 2
`B.
`IDENTIFICATION OF CHALLENGE, 37 C.F.R. § 42.104(b) ......... 2
`1.
`Claims Challenged ..................................................................... 2
`2.
`The Prior Art .............................................................................. 2
`3.
`Supporting Evidence Relied Upon For The Challenge ............. 2
`4.
`Statutory Ground(s) Of Challenge And Legal Principles .......... 3
`5.
`Claim Construction under 37 C.F.R. § 42.100(b) ...................... 3
`6.
`How Claims Are Unpatentable Under Statutory Grounds
`Pursuant to 37 C.F.R. § 42.104 (b)(2) ....................................... 3
`IV. OVERVIEW OF THE 168 PATENT ............................................................. 3
`A.
`PRIORITY DATE OF THE CLAIMS OF THE 168 PATENT .......... 3
`B.
`SUMMARY OF THE 168 PATENT ................................................... 3
`C.
`PROPOSED CLAIM CONSTRUCTION ............................................ 4
`THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE 168 PATENT IS UNPATENTABLE ...................... 6
`A.
`IDENTIFICATION OF THE REFERENCES AS PRIOR ART ......... 6
`B.
`SUMMARY OF INVALIDITY POSITIONS ..................................... 9
`C. DIFFERENT INVALIDITY POSITIONS AGAINST EACH
`CLAIM ARE INDEPENDENT, DISTINCTIVE AND NOT
`REDUNDANT ................................................................................... 10
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`V.
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`TABLE OF CONTENTS
`(continued)
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`Page
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`VI. DETAILED EXPLANATION OF FOR UNPATENTABILITY
`GROUNDS FOR CLAIMS 1-6, 8, 10-11, 13-18, 21-29 AND 31 ............... 12
`A. GROUND 1: CLAIMS 1-6, 8, 10-11, 13-15, 21-29 AND 31
`ARE UNPATENTABLE UNDER 35 U.S.C. § 103(a) AS
`BEING OBVIOUS OVER MORITA AND SARBADHIKARI ....... 12
`B. GROUND 2: CLAIMS 16-18 ARE OBVIOUS UNDER 35
`U.S.C. § 103(a) OVER MORITA, SARBADHIKARI, AND
`LONGGINOU .................................................................................... 33
`C. GROUND 3: CLAIMS 1-6, 8, 10-11, 16-18, 21-22, 24, 26-27
`and 29 ARE UNPATENTABLE UNDER 35 U.S.C. § 103(a)
`AS BEING OBVIOUS OVER WILSKA AND YAMAGISHI-
`992 ...................................................................................................... 37
`D. GROUND 4: CLAIMS 13-15, 23, 25, 28 AND 31 ARE
`OBVIOUS UNDER 35 U.S.C. § 103(a) OVER WILSKA,
`YAMAGISHI-992 AND MCNELLEY ............................................. 57
`VII. CONCLUSION ............................................................................................. 59
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`Petition for Inter Partes Review of U.S. Patent 7,643,168 B2
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`
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`EXHIBIT LIST
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`
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`Ex. 1001 U.S. Patent No. 7,643,168 B2 to David A. Monroe (“the 168 Patent”)
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`Ex. 1002 Certified Translation of the Japanese Patent Application
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`Publication No. H06-133081 to Morita (“Morita”) and the
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`corresponding Japanese language patent application
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`Ex. 1003 U.S. Patent No. 5,477,264 to Sarbadhikari et al. (“Sardabhikari”)
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`Ex. 1004
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`PCT Application Publication No. WO 95/23485 to Longginou
`(“Longginou”)
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`Ex. 1005 U.K. Patent Application GB 2,289,555 A to Wilska et al. (“Wilska”)
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`Ex. 1006
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`European Patent Application Publication No. 0594992 A1 to
`Yamagishi (“Yamagishi-992”)
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`Ex. 1007 U.S. Patent No. 5,550,754 B2 to McNelley et al. (“McNelley”)
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`Ex. 1008 Declaration of Kenneth Parulski including Attachments A-D
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`(“Parulski Declaration”)
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`Petition for Inter Partes Review of U.S. Pat. No. 7,643,168 B2
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`I.
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`INTRODUCTION
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`Pursuant to 35 U.S.C. § 311 and 37 C.F.R. § 42.100, HTC Corporation and
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`HTC America, Inc. (“Petitioners”) petition for inter partes review of claims 1-6, 8,
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`10-11, 13-18, 21-29 and 31 (“the Challenged Claims”) of U.S. Pat. No. 7,643,168
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`5
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`B2 (“the 168 Patent,” Ex. 1001). E-Watch, Inc. and E-Watch Corp. are referred to
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`as “Patent Owner” because the 168 Patent is assigned to E-Watch, Inc. based on
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`USPTO records, and E-Watch Corp. claims to be the exclusive licensee of the 168
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`Patent in their complaint filed under Case No. 2:13-cv-01063. This Petition
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`demonstrates a reasonable likelihood that Petitioners will prevail with respect to at
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`10
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`least one of the Challenged Claims which are unpatentable under 35 U.S.C. §103.
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`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(B)
`A. REAL PARTY IN INTEREST
`HTC Corporation and HTC America, Inc. are the real parties in interest.
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`B. RELATED MATTERS
`Patent Owner is asserting the 168 Patent and U.S. Pat. No. 7,365,871 B2
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`against Petitioners in an on-going patent infringement lawsuit in E-WATCH, INC.
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`and E-WATCH CORP. et al. v. HTC et al., 2:13-cv-01063 filed in the E. District of
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`Texas on Dec. 9, 2013, and against other entities in 9 other lawsuits. In addition,
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`Petitioners are pursuing a petition for inter partes review of the 871 Patent.
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`C. NOTICE OF COUNSEL AND SERVICE INFORMATION
`Pursuant to 37 C.F.R. §§ 42.8(b)(3) and 42.10(a), Petitioners appoint Bing
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`Petition for Inter Partes Review of U.S. Pat. No. 7,643,168 B2
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`Ai (Reg. No. 43,312) as the lead counsel, and Cheng C. (Jack) Ko (Reg. No.
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`54,227), Kevin Patariu (Reg. No. 63,210) and Babak Tehranchi (Reg. No. 55,937)
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`as back-up counsel, all at: Perkins Coie LLP, 11988 El Camino Real, Suite 350,
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`San Diego, CA 92130; contact phone: 858-720-5700; fax: 858-720-5799; and the
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`following email for service and all communications:
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`HTC-EWATCH-IPR-Service@perkinscoie.com.
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`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney is concurrently filed.
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`III. REQUIREMENTS FOR INTER PARTES REVIEW
`This Petition complies with all requirements under 37 C.F.R. § 42.104.
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`A. GROUND FOR STANDING
`Pursuant to 37 C.F.R. § 42.104(a), Petitioners hereby certify that the 168
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`Patent is available for inter partes review and that Petitioners are not barred or
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`estopped from requesting inter partes review challenging the 168 Patent.
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`IDENTIFICATION OF CHALLENGE, 37 C.F.R. § 42.104(b)
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`B.
`The precise relief requested is that the Office cancel the Challenged Claims.
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`Claims Challenged
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`1.
`Claims 1-6, 8, 10-11, 13-18, 21-29 and 31 are challenged in this Petition.
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`The Prior Art
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`2.
`The prior art is Morita (Ex.1002), Sarbadhikari (Ex.1003), Longginou (Ex.
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`20
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`1004), Wilska (Ex. 1005),Yamagishi-992 (Ex. 1006) and McNelley (Ex. 1007).
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`3.
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`Supporting Evidence Relied Upon For The Challenge
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`Petition for Inter Partes Review of U.S. Pat. No. 7,643,168 B2
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`The Declaration by Kenneth Parulski (Ex. 1008) and other evidence.
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`Statutory Ground(s) Of Challenge And Legal Principles
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`4.
`The review of the 168 Patent is governed by pre-AIA 35 U.S.C. §§ 102 and
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`103 that were in effect before Mar. 16, 2013. Further, 35 U.S.C. §§ 311 to 319 that
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`5
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`took effect on Sep. 16, 2012 govern this inter partes review.
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`Claim Construction under 37 C.F.R. § 42.100(b)
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`5.
`The 168 Patent is an unexpired patent and a claim therein shall be given its
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`broadest reasonable construction in light of the specification in inter partes review.
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`10
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`6. How Claims Are Unpatentable Under Statutory Grounds
`Pursuant to 37 C.F.R. § 42.104 (b)(2)
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`Section VI provides an explanation of how the Challenged Claims are
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`unpatentable including identification of where each element is found in prior art.
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`IV. OVERVIEW OF THE 168 PATENT
`A.
`PRIORITY DATE OF THE CLAIMS OF THE 168 PATENT
`The 168 Patent was filed on May 17, 2007 as a Continuation of and claiming
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`15
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`the priority of Appl. No. 10/336,470 (Pat. No. 7,365,871) filed Jan. 3, 2003. The
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`168 Patent has a priority date of Jan. 3, 2003. The 470 Appl. is a Divisional of
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`Appl. No. 09/006,073 filed Jan. 12, 1998 (abandoned) but the 168 Patent does not
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`claim the priority date of Jan. 12, 1998. Thus, the priority date of the 168 Patent is
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`no earlier than Jan. 12, 1998.
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`B.
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`SUMMARY OF THE 168 PATENT
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`The 168 Patent describes an image capture, conversion, compression,
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`storage and transmission system (Abstract). The system includes a camera and a
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`transmission device; the camera captures an image that is transmitted to another
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`device using, for example, cellular transmission, radio signal, satellite transmission
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`5
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`and hard line telephonic transmission (5:66 to 6:5). Captured images can be from a
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`digital or analog camera or a video camera (e.g., a camcorder) (2:37-39).
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`Fig. 4 of the 168 Patent illustrates the data path after an image is captured by
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`the camera 10 and conditioned by the gray scale bit map 16 (7:65 to 8:41). The
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`device includes a memory 46, an optional viewer 48, and a format select interface
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`10
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`switch 60 that permits automated or manual selection of the transmitting protocol,
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`such as a Group-III facsimile format, a PC modem protocol, a wavelet compressor
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`or others (Id.). Depending on the selected protocol, the signal output is generated
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`and provided to a communications interface module 83 for transmission (Id.).
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`The claims of the 168 Patent recite apparatuses or mobile handsets that
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`include a portable housing “being wireless” and including, among others, an image
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`collection device (e.g., a camera), a display, a processing platform (e.g., including
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`a processor) that performs data compression, memory, an input device, and a
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`mobile phone providing wireless transmission of compressed digital image data.
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`PROPOSED CLAIM CONSTRUCTION
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`C.
`Petitioners propose construction of claim terms pursuant to the broadest
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`reasonable interpretation (BRI) standard. The proposed claim constructions are
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`offered only to comply with 37 C.F.R. §42.100(b) for the sole purpose of this
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`Petition, and thus do not necessarily reflect appropriate claim constructions in
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`litigation where a different claim construction standard applies.
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`Media being suitable to embody … algorithm: This term appears in three
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`different variations: (1) media being suitable to embody at least one compression
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`algorithm in claims 1-28; (2) compression algorithm embodied at least in part in
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`suitable programmed media in claims 29-31; and (3) transmission protocol
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`algorithm embodied in suitable media in claims 16-18. The 168 Patent does not
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`10
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`explicitly describe these terms, which were added during the prosecution of the
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`168 Patent. Some recitations of “media” (i.e., “news media” and “print media” at
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`1:40-50) are unrelated to the claims. Other references to “media” pertain to storage
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`of captured image data on a “writable optical media” (7:24-31) as one type of a
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`memory device, or storage of compressed image data on a “limited capacity
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`15
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`portable media … such as floppy disks or a portable PCMCIA card” (7:58-62).
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`Other sections of the specification relate to general storage of software in memory
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`that can be used by a processor or a DSP: “…the processor 86 may be any
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`processor or such as a microprocessor or DSP …The circuitry supporting the
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`processor comprises the processor chip 86 and the control store memory (ROM,
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`Flash RAM, PROM, EPROM or the like) 92 for storing the software program
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`Petition for Inter Partes Review of U.S. Pat. No. 7,643,168 B2
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`executed by the processor.” (9:15-29). The specification also describes: “The
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`processor 86 can also perform image compression and output the image …the
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`processor 86 executes a code for performing a bi-level compression of the data
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`and the signal representing the frame data is output” (11:3-10). The specification
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`5
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`uses “circuit” or “circuitry” more than 30 times to refer to various components that
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`perform the disclosed functionalities (6:16-25; 8:42-43; 9:57-59; 12:5-10).
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`Thus, the proposed construction is “media that can embody an algorithm, in
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`hardware form, software form or a combination of hardware and software forms.”
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`Other Claim Terms: Petitioners propose the ordinary and customary
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`meaning for each remaining term in the Challenged Claims of the 168 Patent.
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`V. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE 168 PATENT IS UNPATENTABLE
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`The Challenged Claims are unpatentable under 35 U.S.C. § 103(a) for
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`merely reciting known, predictable and obvious combinations of the cited prior art.
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`15
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`IDENTIFICATION OF THE REFERENCES AS PRIOR ART
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`A.
`The cited references are within the same specific technical field, and relate
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`to the claimed subject matter, of the 168 Patent and were published more than 1
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`year prior to both the Jan. 3, 2003 priority date and Jan. 12, 1998 (the earliest
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`possible priority date). Each reference is prior art under 35 U.S.C. § 102(b).
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`20
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`Morita (JP Pub. No. H06-133081, published May 13, 1994) describes a
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`camera-phone that captures and processes images, saves image data in memory,
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`and transmits image data to another device through a wireless channel (4:17-26;
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`5:16 to 6:7; 7:1-6). The camera includes a lens, an image sensing device, an A/D
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`converter, image processing and image encoding circuits, a display, and
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`modulation-demodulation and transmitter-receiver components integrated in the
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`device (2:20 to 3:5; 3:17 to 4:3; 6:1-7; Figs. 1, 10-11). Some components are
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`fixedly integrated into the device (7:17-16; Fig. 2(a)); some components (e.g.,
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`display, microphone, camera, etc.) are movable and/or removable (11:21 to
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`12:8;12:10-25; Figs. 4, 5(a), (b)).
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`
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`Sarbadhikari (U.S. Patent No. 5,477,264, issued Dec. 19, 1995) describes
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`10
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`an electronic camera for capturing and storing images (Abstract). The camera has
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`an optical section, an A/D converter, image buffers, image memory and processors
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`for controlling image capture operations and processing the captured images (5:55
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`to 6:26; Fig. 2). The device also includes memory for storing algorithms, including
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`compression algorithms, such as a JPEG, that are retrieved by the processor to
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`15
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`perform image compression (6:26-40; Fig. 2, element 28). The camera can be
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`uploaded with modified or updated algorithms (4:47 to 5:40).
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`
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`Longginou (Pub. No. WO 95/23485, published Aug. 31, 1995) describes a
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`hand-held phone in multiple modes of communication based on different protocols,
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`such as cellular, trunking, cordless, etc. (Abstract; 1:21 to 2:4; 12:8-23), e.g.,a dual
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`mode handset using two of the protocols of GSM, MPT1327, Trunking Radio,
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`AMPS, ETACS, TDMA, CDMA, PCN, CT1, CT2, CT3, DECT (10:27 to 11:7).
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`
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`Wilska (U.K. Appl. GB 2,289,555, published Dec. 11, 1995) describes a
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`hand-held device for personal communication, data collection, picture taking and
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`data processing (Abstract). Figs. 1-3 illustrate components including a data
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`5
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`processing unit (2) (“PC in a chip”), a display (9), a user interface (10, 11), a
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`cellular mobile phone and modem (17), memory unit(s) (13), a power source (3),
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`and an application software (Id.). A camera unit (14) is implemented as a fixed or a
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`removable (e.g., a PCMCIA card) component (Abstract; 4:28-30; 5:9-10; 7:21-23)
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`and includes a camera (14a) (e.g., a CCD or an image sensor) and an optics (14b)
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`10
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`section (Abstract; 7:9-10). Fig. 5 provides details of the camera unit. Wilska’s
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`device also includes software that allows use of cellular phone services, data and/or
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`speech transmission, facsimile services, electronic mail, short message service
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`(SMS), camera functions to record images, and other functions (6:4-12).
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`Yamagishi-992 (EP Appl. No. 0594992, published May 4, 1994) describes
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`15
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`an information signal processing apparatus with an electronic camera that allows
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`capture, storage and transmission of images and sound (Abstract; 7:35-41). Fig. 43
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`shows the device includes a lens (3010), a shutter (3012), a microphone, A/D
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`converters, system controlling circuit, image-sound memory (3024), recording
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`media (3100), compressing-expanding circuit, display devices (3038, 3054), audio
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`output device, power supply, modem, and a set of switches (3056) for entering
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`commands, selecting operational modes and executing various camera operations
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`(121:21-58). Three modes of operation are disclosed: recording mode,
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`reproduction mode, and transmission mode, which respectively allow selective
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`capture, viewing and transmission of images and sound captured and stored by the
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`device (e.g., 122:23 to 126:3; Figs. 44 to 46). The device can be part of a portable
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`telephone set and can use a wireless line for transmission and reception of control
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`and data signals (122:22-25; 147:3-13). Transmissions to an external device are via
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`a modem (3028) controlled by controlling circuit (3050) (118:58 to 119:6).
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`McNelley (Pat. No. 5,550,754 , Aug. 27, 1996) describes a telecamcorder: a
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`10
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`combination portable recording video camera and video-conferencing device that
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`can video conference over a telephone network (Abstract). The communication
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`electronics establish a connection over a wireless network to transmit video/audio
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`signals from the device while presenting audio/video signals received from the
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`remote party (Abstract; 14:16-37). The device (e.g., Figs. 8-9) includes an
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`15
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`integrated phone and a camera, microphone, speaker and antenna for
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`transmission/reception of images/sound (6:35 to 7:24), a display (100) and a
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`viewfinder (166) (Id.), which can be separate components, or a single display as a
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`viewfinder and a teleconferencing display (7:2-24).
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`SUMMARY OF INVALIDITY POSITIONS
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`B.
`The cited prior art references disclose all limitations of the Challenged
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`Claims and demonstrate that the claimed subject matter was well known and thus
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`is not patentable (see also Ex. 1008, Pars. 80-184). In particular, the combination
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`of Morita and Sarbadhikari illustrates that claims 1-6, 8, 10-11, 13-15, 21-29 and
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`31 recite known limitations in combinations that were known or obvious to a
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`5
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`person of ordinary skill in the art (“POSITA”) and are thus unpatentable.
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`Longginou describes further details regarding the implementation of particular
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`wireless transmission protocols, that when combined with Morita and Sarbadhikari,
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`renders claims 16-18 obvious and unpatentable. Additionally, the combination of
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`Wilska and Yamagishi-992 (for claims 1-6, 8, 10-11, 16-18, 21-22, 24, 26, 27 and
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`10
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`29) and McNelley (for claims 13-15, 23, 25 , 28 and 31) illustrate that these claims
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`recite known features in obvious combinations. As discussed in Section V-C, each
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`prior art combination in this petition provides a distinct perspective to support
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`obviousness of the Challenged Claims.
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`The Declaration by Kenneth Parulski (Ex. 1008), an expert with
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`15
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`considerable knowledge and practical experience, confirms the invalidity positions
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`and provides details as to how the claimed technology was well known many years
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`before the priority date of the 168 Patent.
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`C. DIFFERENT INVALIDITY POSITIONS AGAINST EACH
`CLAIM ARE INDEPENDENT, DISTINCTIVE AND NOT REDUNDANT
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`This Petition uses six references to form independent and distinct invalidity
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`positions against the Challenged Claims (6 independent claims and 17 dependent
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`claims). The first primary position combines Morita and Sarbadhikari, and the
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`second primary position combines Wilska with Yamagishi-992. Longginou and
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`McNelley are used to complement the primary positions to illustrate obviousness
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`of certain dependent claims. These references are selected because of their
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`5
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`distinctive teachings that cover different technical aspects of the 168 Patent and
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`provide the Office and the public with a fuller view of the prior art landscape that
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`was not considered during the original examination.
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`With regard to the combination of Morita and Sarbadhikari, Morita describes
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`a camera-phone that captures and processes images, and transmits the digital image
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`10
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`data to another device through a wireless transmission channel. Sarbadhikari
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`provides additional technical details about inclusion of software-implemented
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`compression algorithms in digital cameras. With regard to the combination of
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`Wilska and Yamagishi-992, Wilska describes a handheld, all-in-one camera, phone,
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`fax, and computing device that captures images and transmits the captured images
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`via the integrated cellular phone line. Yamagishi-992 discloses a hardware and/or
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`software-based image compression capability, provides detailed operations of a
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`handheld camera device that can be implemented in a portable telephone, and
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`supplements the disclosures in Wilska.
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`To facilitate “just, speedy and inexpensive resolution” in the spirit of 35
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`C.F.R. § 42.1(b), Petitioners made diligent effort in minimizing both the number of
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`references, out of myriad highly relevant prior art references (see e.g., Ex. 1008,
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`Pars. 29-70), and the number of invalidity positions. Thus, this Petition meets the
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`requirements of speedy and inexpensive resolution.
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`Rule 35 C.F.R. § 42.1(b) also requires just resolution of the unpatentability
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`issues. Petitioners respectfully remind the Office that the absence of full and proper
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`prior art references during the original examination is the chief reason that led to
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`the issuance of invalid claims that are now being asserted against the Petitioners.
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`These claims do not meet the statutory requirements for multiple reasons and from
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`different aspects of the prior art teachings. This Petition is a remedial measure for
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`correcting the mistake in the original examination and is necessitated by Patent
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`Owner’s improper enforcement of the invalid claims.
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`Petitioners respectfully submit that the need for just resolution of the
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`unpatentability issues urges the full adoption of all proposed invalidity positions.
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`VI. DETAILED EXPLANATION OF FOR UNPATENTABILITY
`GROUNDS FOR CLAIMS 1-6, 8, 10-11, 13-18, 21-29 AND 31
`A. GROUND 1: CLAIMS 1-6, 8, 10-11, 13-15, 21-29 AND 31 ARE
`UNPATENTABLE UNDER 35 U.S.C. § 103(a) AS BEING OBVIOUS OVER
`MORITA AND SARBADHIKARI
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`The combination of Morita and Sarbadhikari teaches or suggests all the
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`20
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`limitations of claims 1-6, 8, 10-11, 13-15, 21-29 and 31, and renders the subject
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`matter of each claim as a whole obvious and unpatentable (see also Ex. 1008, Pars.
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`80-113 and Table 1). A POSITA would have been motivated, or would have found
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`it obvious, to combine the teachings of Sarbadhikari and Morita since both
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`references are in the same technical field (see Section V-A), and address similar
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`issues by disclosing portable handheld devices that function as digital cameras, and
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`include similar components to capture, store, process, and display images.
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`CLAIM 1 recites “Apparatus comprising: [Element A1] a portable housing,
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`the portable housing being wireless.” Morita describes a portable mobile phone
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`that includes a housing that is wireless for wireless communications (Morita, Title;
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`3:14-15; 7:1-6; 7:17-19; 11:21-22; Fig; 1; Figs. 2(a)-2(b); Figs. 4(a)-4(d)).
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`Element [B1]: “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.” Morita describes its portable handheld device includes a
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`camera section in the housing that includes a lens, a solid state image sensing
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`device, an A/D converter, image processing and encoding circuits and memory (Id.,
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`Title; 3:20 to 4:5; Fig. 10; 3:14-15; 7:1-15; Fig. 1, section A). The captured images
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`correspond to a field of view as seen by the camera lens, which are then converted
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`to digital data via the disclosed A/D converter (Id., 3:20-26; Fig. 10; 8:9-18; Fig. 1).
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`Element [C1]: “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.” Morita’s
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`device includes a display that is supported by the portable housing (Id., 3:20-26;
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`Fig. 10; 7:23-25; 13:6-18; Figs. 1, 2(a),10, elements 7, 8, Figs. 7-8). The display is
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`used for viewing perceptible visual images generated from image signals after A/D
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`conversion and processing by the image processing circuit (Id., 8:9-18; Fig. 1).
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`Element [D1]: “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.” Morita’s device includes
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`a memory (e.g., a fixed internal memory or a removable memory) in the portable
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`housing that stores digital visual image data (Id., 3:26 to 4:5; 8:9-18; 9:1-4; 10:1-6;
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`11:2-4; Fig. 1, elements 26, 10), enabling the digital image data to be retained.
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`Element [E1]: “an input device supported by the portable housing, the input
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`device being operable by the user, operation of the input device by the user
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`enabling the memory to retain the visual image data in digital format, the memory
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`being suitable to provide retained visual image data in digital format.” Morita
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`describes an input device in the housing, e.g., as a button (Id., 7:7-9; 7:23-25; 8:9-
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`18; Figs. 1, 2(a), element 12). The user presses the button halfway to cause image
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`signals obtained by the lens/image sensor to be converted to digital signals (Id.,
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`3:21-24; 8:12-14) and sent to the display driver for viewing on the display (Id.,
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`8:9-18). After pressing the button all the way, the digital image data is stored in
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`internal memory (Id., 8:15-17), and optionally saved in a memory card (Id., 11:2-4).
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`Element [F1]: “media supported by the portable housing, the media being
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`suitable to embody at least one compression algorithm.” Morita’s image processing
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`circuit produces compressed image data at its output (Id., 3:24-25; Fig. 10, element
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`4). Sarbadhikari also describes an electronic camera for capturing and storing
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`images (Sardabhikari, Abstract). The camera includes processors that process the
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`captured images and control image capture operations (Id., 5:55 to 6:31; Fig. 2,
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`elements 20, 22), and a memory that stores image compression algorithms such as
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`JPEG that is retrieved and executed by the processor (Id., 6:26-40; Fig. 2, element
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`28). The memory can be uploaded with modified/updated algorithms to improve
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`existing device capabilities or provide new capabilities (Id., 4:47 to 5:40).
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`A POSITA would have been motivated, or would have found it obvious, to
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`combine Sarbadhikari and Morita to allow a compression algorithm to be stored in
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`memory and accessed by a processor since it would have reduced the cost of
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`development of the device by implementing image compression in software and
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`would have allowed the algorithm to be updated (see also Ex. 1008, Pars. 92-95).
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`Element [G1]: “at least one processing platform supported by the portable
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`housing, the at least one processing platform being operable to execute the at least
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`one compression algorithm, the at least one processing platform being provided the
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`retained visual image data in digital format, execution of the at least one
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`compression algorithm providing compressed visual image data.” Morita describes
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`20
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`a processing platform in the form of any one, or combinations of, an image
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`processing circuit, an encoding circuit or a control unit (Morita, 3:22-25; 7:7-9;
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`8:10-15; Figs. 1 and 10, elements, 4, 5 and 25). The image processing circuit
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`receives digital image data and produces compressed data (Id., 3:22-25).
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`Sarbadhikari also describes a processing platform such as a processor 20, a
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`5
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`digital signal processor 22, algorithm memory 28 and associated components
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`(Sarbadhikari, 5:55 to 6:53). The “processor 22 applies a compression algorithm
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`from memory 28 to digital image signals, and sends the compressed signals to a
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`removable storage device” (Id., 6:37-39). The digital image signals provided to the
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`processor are digital image data from an image buffer 18 (Id., 6:27-38), and thus
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`represent retained visual image data in digital format.
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`A POSITA would have been motivated, or would have found it obvious, to
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`combine Sarbadhikari and Morita to allow a compression algorithm to be executed
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`by a processor to produce compressed image data (retained in memory or
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`otherwise available to processor) since such a capability would have reduced the
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`cost of development of the device by implementing software compression, would
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`have reduced the storage space for storing the captured images and the bandwidth
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`for transmission of such images (see also Ex. 1008, Pars. 92-95).
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`Element [H1]: “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.” Morita’s
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`device includes a mobile phone supported by the housing that can send/receive
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`digital image data to/from another device (Id., Title; 3:14-15; 3:22-25; 7:1-19;
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`8:15-18; 9:7-19; Fig; 1, element B; Figs. 2a, 2b). The image data, which is stored
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`in memory and transmitted, can be in compressed format (Id., 3:22-25).
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`Element [I1]: “movement by the user of the portable housing commonly
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`moving the image collection device, movement by the user of the portable housing
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`commonly moving the display.” As shown in Figs. 2(a), 2(b), and 4(a) to 4(d) of
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`Morita, all device components including the display and the camera, are within a
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`single housing and are thus commonly moved when the device is moved by the
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`user (Id., 7:17 to 8:7; 11:21 to 12:2; Figs. 2 and 4).
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`Claims 22, 24, 26, 27 and 29: These claims include various common
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`features that are substantially similar to those in claim 1. See reasons, analysis and
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`explanations as provided for claim 1. Claim limitations in claims 22, 24, 26, 27 and
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`29 that differ fr