Paper No. __
`Filed: January 7, 2015
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`Filed on behalf of: Samsung Electronics Co., Ltd. and
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`
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`Samsung Electronics America, Inc.
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`By:
`Steven L. Park (stevenpark@paulhastings.com)
`Naveen Modi (naveenmodi@paulhastings.com)
`Elizabeth L. Brann (elizabethbrann@paulhastings.com)
`Paul Hastings LLP
`
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
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`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner
`
`v.
`
`E-WATCH, INC.
`Patent Owner
`
`____________________
`
`Patent No. 7,643,168
`____________________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,643,168
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`
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`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. 7,643,168
`____________________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,643,168
`
`
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`
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`Petition for Inter Partes Review – Patent No. 7,643,168
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`
`LIST OF EXHIBITS ................................................................................................ iii
`
`TABLE OF CONTENTS
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`I.
`
`INTRODUCTION ........................................................................................... 1
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`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ................................... 1
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`III. PAYMENT OF FEES UNDER 37 C.F.R. § 42.15(a) .................................... 3
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`IV. REQUIREMENTS FOR INTER PARTES REVIEW ...................................... 3
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`V. OVERVIEW OF THE ’168 PATENT ............................................................ 4
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`VI. PROPOSED CLAIM CONSTRUCTION ....................................................... 5
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`VII. DETAILED EXPLANATION OF UNPATENTABILITY ............................ 8
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`A.
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`IDENTIFICATION OF THE REFERENCES AS PRIOR ART .......... 8
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`B. GROUND 1: CLAIMS 1-6, 8, 10, 11, 13-15, 21-29, AND 31
`ARE OBVIOUS OVER MORITA AND SARBADHIKARI ............11
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`C. GROUND 2: CLAIMS 16-18 ARE OBVIOUS OVER
`MORITA, SARBADHIKARI, AND LONGGINOU .........................32
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`D. GROUND 3: CLAIMS 1-6, 8, 10, 11, 16-18, 21, 22, 24, 26, 27,
`AND 29 ARE OBVIOUS OVER WILSKA AND
`YAMAGISHI-992 ...............................................................................37
`
`E.
`
`GROUND 4: CLAIMS 13-15, 23, 25, 28, AND 31 ARE
`OBVIOUS OVER WILSKA, YAMAGISHI-992 AND
`MCNELLEY .......................................................................................57
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`F.
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`THE BOARD SHOULD ADOPT ALL GROUNDS .........................60
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`VIII. CONCLUSION ..............................................................................................60
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`i
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`Petition for Inter Partes Review – Patent No. 7,643,168
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .....................................................................................passim
`
`Statutes
`
`35 U.S.C. § 102(b) ..................................................................................................... 8
`
`35 U.S.C. § 103(a) ..................................................................................................... 8
`
`Other Authorities
`
`37 C.F.R. § 42.8(b) .................................................................................................... 1
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`37 C.F.R. § 42.15(a) ................................................................................................... 3
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`37 C.F.R. §42.100(b) ................................................................................................. 5
`
`
`
`ii
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`Petition for Inter Partes Review – Patent No. 7,643,168
`
`LIST OF EXHIBITS
`
`U.S. Patent No. 7,643,168 to Monroe, as filed in IPR2014-00989
`
`Certified Translation of Japanese Patent Application Publication No.
`H06-133081 to Morita and the corresponding Japanese language
`patent application, as filed in IPR2014-00989
`
`U.S. Patent No. 5,477,264 to Sarbadhikari et al., as filed in IPR2014-
`00989
`
`PCT Application Publication No. WO 95/23485 to Longginou, as
`filed in IPR2014-00989
`
`U.K. Patent Application GB 2,289,555 to Wilska et al., as filed
`in IPR2014-00989
`
`European Patent Application Publication No. 0594992 to Yamagishi,
`as filed in IPR2014-00989
`
`U.S. Patent No. 5,550,754 to McNelley et al., as filed in IPR2014-
`00989
`
`Declaration of Kenneth Parulski including Attachments A-D, as filed
`in IPR2014-00989
`
`HTC Corp. v. e-Watch, Inc., IPR2014-00989, Petition, Paper No. 1
`(June 19, 2014)
`
`HTC Corp. v. e-Watch, Inc., IPR2014-00989, Institution Decision,
`Paper No. 6 (Dec. 9, 2014)
`
`Excerpts from Microsoft Computer Dictionary (2nd ed. 2002), as
`filed in IPR2014-00989
`
`
`
`iii
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`Petition for Inter Partes Review – Patent No. 7,643,168
`
`I.
`
`INTRODUCTION
`
`Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
`
`(collectively, “Petitioner”) request inter partes review of claims 1-6, 8, 10-11,
`
`13-18, 21-29, and 31 of U.S. Patent No. 7,643,168 (“the ’168 Patent”) (Ex. 1001),
`
`which is assigned to e-Watch, Inc. (“Patent Owner”). On December 9, 2014, the
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`Board instituted an inter partes review of the same claims based on a petition filed
`
`by HTC Corporation and HTC America, Inc. (“HTC”) in IPR2014-00989 (“HTC
`
`IPR”) (see Ex. 1010 at 8-23; Ex. 1009 at 12-59). This Petition proposes the same
`
`grounds of rejection proposed in the HTC IPR and 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. If joinder is not
`
`granted, Petitioner requests that a proceeding be instituted based on this Petition.
`
`This Petition shows, by a preponderance of the evidence, that there is a
`
`reasonable likelihood that Petitioner will prevail based on prior art that was not
`
`considered during prosecution, and that renders the claims obvious. Accordingly,
`
`the challenged claims should be found unpatentable and canceled.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`Real Party-in-Interest: Petitioner identifies Samsung Electronics Co., Ltd.
`
`and Samsung Electronics America, Inc. as the real parties-in-interest.
`
`Related Matters: Patent Owner has asserted the ’168 Patent and U.S. Patent
`
`
`
`1
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`Petition for Inter Partes Review – Patent No. 7,643,168
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`No. 7,365,871 (“the ’871 Patent”), which is a parent of the ’168 Patent, against
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`Samsung Electronics Co., Ltd. and Samsung Telecommunications America, LLC1
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`in a patent litigation filed on December 9, 2013, in the U.S. District Court for the
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`Eastern District of Texas (case no. 2:13-cv-01062). Patent Owner has also asserted
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`the ’168 Patent and ’871 Patent against other entities in nine other lawsuits in the
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`Eastern District of Texas (case nos. 2:13-cv-01061, -01063, -01064, -01069,
`
`-01070, -01071, -01072, -01073, -01074, -01075, -01076, -01077, and -01078).
`
`These cases have been consolidated with case no. 2:13-cv-01061 as the lead case.
`
`As noted, 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) (“HTC IPR”) (see Ex. 1010 at 8-23; Ex. 1009 at 12-59). This Petition
`
`copies the grounds of rejection proposed in the HTC IPR and adopted by the
`
`Board. Other entities have also filed petitions on the ’168 Patent (IPR2015-00401,
`
`IPR2015-00407, IPR2015-00408, and IPR2015-00414). In addition, 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), and a review on
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`August 4, 2014, based on a petition filed by Iron Dome LLC on February 18, 2014
`
`1 Effective January 1, 2015, Samsung Telecommunications America, LLC (“STA”)
`
`merged into Samsung Electronics America, Inc., and STA ceased to exist as a
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`separate corporate entity.
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`
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`2
`
`
`
`Petition for Inter Partes Review – Patent No. 7,643,168
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`(IPR2014-00439). Petitioner is filing concurrently herewith a petition that copies
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`the ground of rejection proposed by HTC in IPR2014-00439 and adopted by the
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`Board. Other entities have also filed petitions on the ’871 Patent (IPR2015-00402,
`
`IPR2015-00404, IPR2015-00406, IPR2015-00411, IPR2015-00412, and IPR2015-
`
`00413). All these matters remain pending.
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`Counsel and Service Information: Lead counsel is Steven L. Park (Reg.
`
`No. 47,842), Paul Hastings LLP, 1170 Peachtree Street, NE, Suite 100, Atlanta,
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`GA 30309, Tel.: (404) 815-2223, Fax: (404) 685-5223, E-mail:
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`stevenpark@paulhastings.com; and back-up counsel is Naveen Modi (Reg. No.
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`46,224), Paul Hastings LLP, 875 15th St. N.W., Washington, D.C., 20005, Tel.:
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`202.551.1700, Fax: 202.551.1705, Email: naveenmodi@paulhastings.com; and
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`Elizabeth L. Brann (Reg. No. 63,987), Paul Hastings LLP, 4747 Executive Drive,
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`12th Floor, San Diego, CA 92121, Tel.: (858) 458-3014, Fax: (858) 458-3114,
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`E-mail: elizabethbrann@paulhastings.com.
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`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 other fees due at any time to Deposit Account No. 50-2613.
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW
`Ground for Standing: Petitioner certifies that the ’168 Patent is available
`
`for inter partes review, and that Petitioner is not barred or estopped from
`
`
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`3
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`
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`Petition for Inter Partes Review – Patent No. 7,643,168
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`requesting such review of the ’168 Patent on the grounds identified.
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`Identification of Challenge: Petitioner requests that claims 1-6, 8, 10-11,
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`13-18, 21-29 and 31 be cancelled as being obvious under 35 U.S.C. § 103 based on
`
`the prior art discussed herein, including Morita (Ex.1002), Sarbadhikari (Ex.1003),
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`Longginou (Ex. 1004), Wilska (Ex. 1005),Yamagishi-992 (Ex. 1006), and
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`McNelley (Ex. 1007). Section VI explains how the claims should be construed and
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`section VII provides a detailed explanation of how the claims are unpatentable.
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`V. OVERVIEW OF THE ’168 PATENT
`The ’168 Patent attempts to claim priority to U.S. Patent Application No.
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`10/336,470, filed on January 3, 2003, which matured into the ’871 Patent, and U.S.
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`Patent Application No. 09/006,073, filed on January 12, 1998, which is now
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`abandoned. Ex. 1001 at Cover Page, 1:6-12. Although Petitioner disagrees that the
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`’168 Patent is entitled to a priority date of January 12, 1998, Petitioner has
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`assumed January 12, 1998, as the priority date for purposes of this Petition.
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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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`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). Fig. 4 of
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`
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`4
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`Petition for Inter Partes Review – Patent No. 7,643,168
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`the ’168 Patent illustrates the data path after an image is captured by the camera 10
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`and conditioned by the gray scale bit map 16 (7:65 to 8:41). The device includes a
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`memory 46, an optional viewer 48, and a format select interface switch 60 that
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`permits automated or manual selection of the transmitting protocol, such as a
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`Group-III facsimile format, a PC modem protocol, a wavelet compressor or others
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`(id.). Depending on the selected protocol, the signal output is generated and
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`provided to a communications interface module 83 for transmission (id.).
`
`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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`VI. PROPOSED CLAIM CONSTRUCTION
`The ’168 Patent is an unexpired patent. Therefore, Petitioner proposes
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`construction of claim terms pursuant to the broadest reasonable interpretation
`
`(BRI) standard. Petitioner proposes the ordinary and customary meaning for each
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`remaining term in the challenged claims. The proposed claim constructions are
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`offered only to comply with 37 C.F.R. §42.100(b), and do not necessarily reflect
`
`appropriate claim constructions in litigation where a different standard applies.2
`
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`2 Petitioner reserves all other arguments, such as § 112 arguments, for litigation.
`5
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`Petition for Inter Partes Review – Patent No. 7,643,168
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`“Media” terms: Claims 1, 22, 24, 26, and 27 recite “media being suitable to
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`embody at least one compression algorithm,” claims 16 and 18 recite “at least one
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`transmission protocol algorithm embodied in suitable media,” and claim 29 recites
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`“at least one compression algorithm embodied at least in part in suitable
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`programmed media.” In IPR2014-00989, HTC proposed that the broadest
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`reasonable interpretation of these phrases is “media that can embody an algorithm,
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`in hardware form, software form or a combination of hardware and software
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`forms” (Ex. 1009 at 5-6). The Board in IPR2014-00989 did not adopt this exact
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`interpretation, but instead adopted a similar interpretation of these phrases: “a
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`storage device for storing software to perform, among other functions, image
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`compression and storage of transmission protocols” (Ex. 1010 at 6-7).
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`As the Board explained in IPR2014-00989, the specification of the ’168
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`Patent “describes how an image captured by camera 10 is stored on any one of a
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`variety of memory devices for storage,” such as “writeable optical media” (Ex.
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`1010 at 7 (quoting Ex. 1001, 7:24-31)). The specification also uses “‘circuit’ or
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`‘circuitry’ more than 30 times to refer to various components that perform the
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`disclosed functionalities’” (Ex. 1010 at 7 (quoting Ex. 1009 at 6)). Otherwise, the
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`specification does not include the word “media” in the context of the claimed
`
`invention. Nor does it describe or define the word “algorithm” (Ex. 1010 at 7).
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`As noted by the Board, dictionaries available at the time of the alleged
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`
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`6
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`Petition for Inter Partes Review – Patent No. 7,643,168
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`invention defined “‘[m]edia’ . . . as ‘[T]he physical material, such as paper, disk,
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`and tape, used for storing computer-based information’” and “‘algorithm’ as ‘[A]
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`finite sequence of steps for solving a logical or mathematical problem or
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`performing a task’” (id. at 7 (quoting Ex. 1011 at 28, 420)). The Board also noted
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`that “[i]n the context of software, algorithms are used to disclose adequate defining
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`structure to render the bounds of the claim understandable to one of ordinary skill
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`in the art” (Ex. 1010 at 7 (citing Med. Instrumentation & Diagnostics Corp. v.
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`Elekta AB, 344 F.3d 1205, 1214 (Fed.Cir.2003))).
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`For this proceeding, Petitioner proposes that the BRI of these phrases is “a
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`storage device for storing software to perform, among other functions, image
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`compression and storage of transmission protocols,” as adopted by the Board in
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`IPR2014-00989. Petitioner notes, however, that the prior art analysis provided by
`
`HTC meets both HTC’s interpretation and the Board’s interpretation, as evidenced
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`by the Board’s institution of trial in IPR2014-00989.
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`“Commonly moving”: Claims 1, 22, and 24 recite “movement by the user
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`of the portable housing commonly moving the image collection device” and
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`“movement by the user of the portable housing commonly moving the display.” In
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`IPR2014-00989, HTC did not propose an interpretation of “commonly moving.”
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`Nevertheless, the Board found that the broadest reasonable interpretation of this
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`term is “that the movement of the portable housing causes movement of the image
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`7
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`Petition for Inter Partes Review – Patent No. 7,643,168
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`collection device or display” (Ex. 1010 at 8). As noted by the Board, the
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`specification of “the ’168 patent does not use the phrase ‘commonly moving’” and
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`this interpretation is consistent with “the use of ‘commonly moving’ in the claims
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`of the patent.” Id. For purposes of this proceeding, Petitioner proposes the Board’s
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`interpretation of this term. Petitioner notes that the prior art analysis provided by
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`HTC meets the Board’s interpretation, as evidenced by the Board’s institution of
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`trial in IPR2014-00989.
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`VII. DETAILED EXPLANATION OF UNPATENTABILITY
`The challenged claims are unpatentable under 35 U.S.C. § 103(a) for merely
`
`reciting known, predictable and obvious combinations of the cited prior art. See
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`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007). The expert declaration by
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`Kenneth Parulski cited herein provides support for the invalidity positions (see Ex.
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`1008, Pars. 80-184).
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`IDENTIFICATION OF THE REFERENCES AS PRIOR ART
`
`A.
`The cited references are within the same technical field of the ’168 Patent
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`and were published more than one year prior to Jan. 12, 1998 (the earliest possible
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`priority date). As a result, each reference is prior art under 35 U.S.C. § 102(b).
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`Morita (JP Pub. No. H06-133081, pub. May 13, 1994) describes a camera-
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`phone that captures and processes images, saves image data in memory, and
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`transmits image data to another device through a wireless channel (Ex. 1002, 4:17-
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`8
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`Petition for Inter Partes Review – Patent No. 7,643,168
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`26; 5:16 to 6:7; 7:1-6). The camera includes a lens, an image sensing device, an
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`A/D 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 (id., 2:20 to 3:5; 3:17 to 4:3; 6:1-7; Figs. 1, 10-11).
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`Sarbadhikari (U.S. Patent No. 5,477,264, issued Dec. 19, 1995) describes
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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 (Ex.
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`1003, 5:55 to 6:26; Fig. 2). The device also includes memory for storing
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`algorithms, including compression algorithms, that are retrieved by the processor
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`to perform image compression (id., 6:26-40; Fig. 2, element 28). The camera can
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`be uploaded with modified or updated algorithms (id., 4:47 to 5:40).
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`Longginou (Pub. No. WO 95/23485, pub. Aug. 31, 1995) describes a hand-
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`held phone in multiple modes of communication based on different protocols. (Ex.
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`1004, Abstract; 1:21 to 2:4; 10:27 to 11:7; 12:8-23).
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`Wilska (U.K. Appl. GB 2,289,555, pub. Nov. 22, 1995) describes a hand-
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`held device for personal communication, data collection, picture taking and data
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`processing (Ex. 1005, Abstract). Figs. 1-3 illustrate components including a data
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`processing unit (2), a display (9), a user interface (10, 11), a cellular mobile phone
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`and modem (17), and memory unit(s) (13). A camera unit (14) is implemented as a
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`9
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`Petition for Inter Partes Review – Patent No. 7,643,168
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`fixed or a removable (e.g., a PCMCIA card) component (id., Abstract; 4:28-30;
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`5:9-10; 7:21-23) and includes a camera (14a) (e.g., a CCD or an image sensor) and
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`an optics (14b) section (id., Abstract; 7:9-10). Fig. 5 provides details of the camera
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`unit. Wilska’s device also includes software that allows, for example, use of
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`cellular phone services, data and/or speech transmission, facsimile services,
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`electronic mail, and camera functions to record images (id., 6:4-12).
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`Yamagishi-992 (EP Appl. No. 0594992, pub. May 4, 1994) describes an
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`information signal processing apparatus with an electronic camera that allows
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`capture, storage and transmission of images and sound (Ex. 1006, Abstract; 7:35-
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`41). Fig. 43 shows the device includes a lens (3010), a shutter (3012), a
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`microphone, A/D converters, system controlling circuit, image-sound memory
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`(3024), recording media (3100), compressing-expanding circuit, display devices
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`(3038, 3054), audio output device, power supply, modem, and a set of switches
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`(3056) for entering commands, selecting operational modes and executing various
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`camera operations (id., 121:21-58). Three modes of operation are disclosed:
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`recording mode, reproduction mode, and transmission mode (id., e.g., 122:23 to
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`126:3; Figs. 44 to 46). The device can be part of a portable telephone set and can
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`use a wireless line for transmission and reception of control and data signals (id.,
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`122:22-25; 147:3-13). Transmissions to an external device are via a modem (3028)
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`controlled by controlling circuit (3050) (id., 118:58 to 119:6).
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`10
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`Petition for Inter Partes Review – Patent No. 7,643,168
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`McNelley (Pat. No. 5,550,754 , Aug. 27, 1996) describes a telecamcorder: a
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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 (Ex. 1007, Abstract). The
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`communication electronics establish a connection over a wireless network to
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`transmit video/audio signals from the device while presenting audio/video signals
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`received from the remote party (id., Abstract; 14:16-37). The device (e.g., Figs. 8-
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`9) includes an integrated phone and a camera, microphone, speaker and antenna for
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`transmission/reception of images/sound (id., 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 (id., 7:2-24).
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`B. GROUND 1: CLAIMS 1-6, 8, 10, 11, 13-15, 21-29, AND 31
`ARE OBVIOUS OVER MORITA AND SARBADHIKARI
`
`The combination of Morita and Sarbadhikari teaches or suggests all the
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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 person of ordinary skill in the art (“POSITA”) would have
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`been motivated, or would have found it obvious, to combine the teachings of
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`Sarbadhikari and Morita since both references are in the same technical field (see
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`Section VII.A), and address similar issues by disclosing portable handheld devices
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`that function as digital cameras, and include similar components to capture, store,
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`process, and display images. See KSR, 550 U.S. at 417-18.
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`11
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`Petition for Inter Partes Review – Patent No. 7,643,168
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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 (Ex. 1002,
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`Title; 3:14-15; 7:1-6; 7:17-19; 11:21-22; Fig; 1; Figs. 2(a)-2(b); Figs. 4(a)-4(d)).
`
`Element [B1]: “an image collection device supported by the portable
`
`housing, the image collection device being operable to provide visual image data
`
`of a field of view.” Morita’s device includes a camera section in the housing that
`
`includes a lens, a solid state image sensing device, an A/D converter, image
`
`processing and encoding circuits and memory (id., Title; 3:20 to 4:5; Fig. 10; 3:14-
`
`15; 7:1-15; Fig. 1, section A). The captured images correspond to a field of view as
`
`seen by the camera lens, which are then converted to digital data via the disclosed
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`A/D converter (id., 3:20-26; Fig. 10; 8:9-18; Fig. 1).
`
`Element [C1]: “a display supported by the portable housing, the display
`
`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
`
`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).
`
`Element [D1]: “memory supported by the portable housing, the memory
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`12
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`Petition for Inter Partes Review – Patent No. 7,643,168
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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
`
`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
`
`enabling the memory to retain the visual image data in digital format, the memory
`
`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-
`
`18; Figs. 1, 2(a), element 12). The button is pressed halfway to cause image signals
`
`obtained by the lens/image sensor to be converted to digital signals (id., 3:21-24;
`
`8:12-14) and sent to the display driver for viewing on the display (id., 8:9-18).
`
`After pressing the button all the way, the digital image data is stored in internal
`
`memory (id., 8:15-17), and optionally saved in a memory card (id., 11:2-4).
`
`Element [F1]: “media supported by the portable housing, the media being
`
`suitable to embody at least one compression algorithm.” Morita’s image processing
`
`circuit produces compressed image data at its output (id., 3:24-25; Fig. 10, element
`
`4). Sarbadhikari also describes an electronic camera for capturing and storing
`
`images (Ex. 1003, Abstract). The camera includes processors that process the
`
`
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`13
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`Petition for Inter Partes Review – Patent No. 7,643,168
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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
`
`JPEG that is retrieved and executed by the processor (id., 6:26-40; Fig. 2, element
`
`28). The memory can be uploaded with modified/updated algorithms to improve
`
`existing device capabilities or provide new capabilities (id., 4:47 to 5:40). Thus,
`
`Sarbadhikari discloses a storage device for storing software to perform, among
`
`other functions, image compression.
`
`A POSITA would have been motivated, or would have found it obvious, to
`
`combine Sarbadhikari and Morita to allow a compression algorithm to be stored in
`
`memory and accessed by a processor since it would have reduced the cost of
`
`development of the device by implementing image compression in software and
`
`would have allowed the algorithm to be updated (see also Ex. 1008, Pars. 92-95).
`
`Element [G1]: “at least one processing platform supported by the portable
`
`housing, the at least one processing platform being operable to execute the at least
`
`one compression algorithm, the at least one processing platform being provided the
`
`retained visual image data in digital format, execution of the at least one
`
`compression algorithm providing compressed visual image data.” Morita describes
`
`a processing platform in the form of any one, or combinations of, an image
`
`processing circuit, an encoding circuit or a control unit (Ex. 1002, 3:22-25; 7:7-9;
`
`8:10-15; Figs. 1 and 10, elements, 4, 5 and 25). The image processing circuit
`
`
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`14
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`Petition for Inter Partes Review – Patent No. 7,643,168
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`receives digital image data and produces compressed data (id., 3:22-25).
`
`Sarbadhikari also describes a processing platform such as a processor 20, a
`
`digital signal processor 22, algorithm memory 28 and associated components (Ex.
`
`1003, 5:55 to 6:53). The “processor 22 applies a compression algorithm from
`
`memory 28 to digital image signals, and sends the compressed signals to a
`
`removable storage device” (id., 6:37-39). The digital image signals provided to the
`
`processor are digital image data from an image buffer 18 (id., 6:27-38), and thus
`
`represent retained visual image data in digital format.
`
`A POSITA would have been motivated, or would have found it obvious, to
`
`combine Sarbadhikari and Morita to allow a compression algorithm to be executed
`
`by a processor to produce compressed image data (retained in memory or
`
`otherwise available to processor) since such a capability would have reduced the
`
`cost of development of the device by implementing software compression, would
`
`have reduced the storage space for storing the captured images and the bandwidth
`
`for transmission of such images (see also Ex. 1008, Pars. 92-95).
`
`Element [H1]: “a mobile phone supported by the portable housing, the
`
`mobile phone being operable to send to a remote recipient a wireless transmission,
`
`the wireless transmission conveying the compressed digital image data.” Morita’s
`
`device includes a mobile phone supported by the housing that can send/receive
`
`digital image data to/from another device (Ex. 1002, Title; 3:14-15; 3:22-25; 7:1-
`
`
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`15
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`Petition for Inter Partes Review – Patent No. 7,643,168
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`19; 8:15-18; 9:7-19; Fig; 1, element B; Figs. 2a, 2b). The image data, which is
`
`stored in memory and transmitted, can be in compressed format (id., 3:22-25).
`
`Element [I1]: “movement by the user of the portable housing commonly
`
`moving the image collection device, movement by the user of the portable housing
`
`commonly moving the display.” As shown in Figs. 2(a), 2(b), and 4(a)-(d) of
`
`Morita, all components including the display and the camera are within a single
`
`housing and thus the movement of the portable housing causes movement of the
`
`image collection device and display (id., 7:17 to 8:7; 11:21 to 12:2; Figs. 2 and 4).
`
`Claims 22, 24, 26, 27 and 29: These claims include various common
`
`features that are substantially similar to those in claim 1. See reasons, analysis and
`
`explanations as provided for claim 1. Claim limitations in claims 22, 24, 26, 27 and
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`29 that differ from those in claim 1 are discussed below.
`
`CLAIM 22: The differences with claim 1 are: recitation of limitations in a
`
`different order, and inclusion of the terms “field of view” and “in digital format” in
`
`element [G22]. The mappings of prior art sections in claim 1 apply here. Images
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`captured by the device correspond to a field of view of the camera lens and are
`
`converted to digital data via the A/D converter (Ex. 1002, 3:20-26; Fig. 10; 8:9-18;
`
`Fig. 1).
`
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`16
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`Petition for Inter Partes Review – Patent No. 7,643,168
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`Table 1 - Mapping of Claim 22 to Morita and Sarbadhikari
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`Claim of US 7643168
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`22. [A22] Apparatus comprising: a
`portable housing, the portable housing
`being wireless:
`
`Exemplary Teachings
`
`See Element [A1];
`
`Ex. 1002, Title; 3:14-15; 7:1-6; 7:17-19;
`11:21-22; Fig; 1; Figs. 2(a) and 2(b);
`Figs. 4(a) to 4(d)
`See Element [B1];
`
`Ex. 1002, Title; 3:20 to 4:5; Fig. 10;
`3:14-15; 7:1-15; Fig. 1, section A; 8:9-
`18
`See Element [D1];
`
`Ex. 1002, 3:26 to 4:5; 8:9-18; 9:1-4;
`10:1-6; 11:2-4; Fig. 1, elements 26
`and/or 10
`
`See Element [E1];
`
`Ex. 1002, 3:21-24; 7:7-9; 7:23-25; 8:9-
`18; 11:2-4; Figs. 1 and 2(a), element 12
`
`[B22] an image collection device
`supported by the portable housing, the
`image collection device being operable
`to provide visual image data of a field of
`view;
`[C22] memory
`the
`supported by
`portable housing, the memory being
`suitable to receive visual image data in
`digital
`format,
`the memory being
`suitable to retain the visual image data
`in digital format,
`[D22] an input device supported by the
`portable housing, the input device being
`operable by the user; operation of the
`input device by the user enabling the
`memory to retain the visual image data
`in digital format, the memory being
`suitable to provide retained visual image
`data in digital format;
`[E22] media supported by the portable
`housing, the media being suitable to
`embody at least one compression
`algorithm;
`
`[F22] at least one processing platform
`supported by the portable housing, the at
`least one processing platform being
`operable to execute the at least one
`compression algorithm, the at least one
`processing platform being provided the
`
`
`
`See Element [F1];
`
`Ex. 1002, 3:24-25
`
`Ex. 1003, Abstract; 4:47 to 5:40, 5:55 to
`6:40; Fig. 2, elements 20, 22 and 28
`See Element [G1];
`
`Ex. 1002, 3:22-25; 7:7-9; 8:10-15; Figs.
`1 and 10, elements, 4, 5 and 25
`
`Ex. 1003, 5:55 to 6:53
`17
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`Petition for Inter Partes Review – Patent No. 7,643,168
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`See Element [C1];
`
`Ex. 1002, 3:20-26; Fig. 10; 7:23-25;
`8:9-18; 13:6-18; Figs. 1, 2(a) and 10,
`elements 7 and
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