`Paper No.
`Filed: January 7, 2015
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`
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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.
`
`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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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`HTC CORPORATION and HTC
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`
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`
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`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioners
`
`Petitioner
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`v.
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`E-WATCH, INC. and E WATCH CORPORATION
`
`Patent Owner
`____________________
`CASE: To Be Assigned
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`Page 1 of 80
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`SAMSUNG EXHIBIT 1012
`SAMSUNG v. E-WATCH INC.
`Trial IPR2015-00543
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`
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`Petition for Inter Partes Review – Patent No. 7,643,168
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`Patent No. 7,643,168 B2
`____________________
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`
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`PETITION FOR INTER PARTES REVIEW
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`OF U.S. PATENT NO. 7,643,168 B2
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`Petition for Inter Partes Review – Patent No. 7,643,168
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`EXHIBIT LIST OF EXHIBITS ............................................................................ iiiiii
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ......................................................................................... 11
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(B) ........................... 21
`
`A.
`
`B.
`
`REAL PARTY IN INTEREST ........................................................... 21
`
`RELATED MATTERS ....................................................................... 21
`
`C. NOTICE OF COUNSEL AND SERVICE INFORMATION ............ 42
`III. REQUIREMENTS FOR INTER PARTES REVIEWPAYMENT OF
`FEES UNDER 37 C.F.R. § 42.15(a) ...........................................................3 2
`IV. REQUIREMENTS FOR INTER PARTES REVIEW. ..................................... 3
`A. GROUND FOR STANDING .............................................................. 52
`
`B.
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`IDENTIFICATION OF CHALLENGE, 37 C.F.R. § 42.104(b) ........ 52
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`Claims Challenged .................................................................... 52
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`The Prior Art ............................................................................. 53
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`Supporting Evidence Relied Upon For The Challenge ............ 63
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`Statutory Ground(s) Of Challenge And Legal Principles ......... 63
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`Claim Construction under 37 C.F.R. § 42.100(b) ..................... 63
`
`How Claims Are Unpatentable Under Statutory Grounds
`Pursuant to 37 C.F.R. § 42.104 (b)(2) ...................................... 63
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`IV. OVERVIEW OF THE ’168 PATENT ........................................................ 63
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`VI. PROPOSED CLAIM CONSTRUCTION ....................................................... 5
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`A.
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`B.
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`C.
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`PRIORITY DATE OF THE CLAIMS OF THE 168 PATENT ......... 63
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`SUMMARY OF THE 168 PATENT .................................................. 74
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`PROPOSED CLAIM CONSTRUCTION ........................................... 85
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`VII. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE 168 PATENT ISDETAILED
`EXPLANATION OF UNPATENTABLE ............................................... 106
`
`A.
`
`B.
`
`IDENTIFICATION OF THE REFERENCES AS PRIOR ART ... 126
`
`SUMMARY OF INVALIDITY POSITIONS ............................... 1610
`
`C. DIFFERENT INVALIDITY POSITIONS AGAINST EACH
`CLAIM ARE INDEPENDENT, DISTINCTIVE AND NOT
`REDUNDANT ............................................................................... 1711
`
`VI. DETAILED EXPLANATION OF FOR UNPATENTABILITY
`GROUNDS FOR CLAIMS 1 6, 8, 10 11, 13 18, 21 29 AND 31 ........... 1813
`
`BA. 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 ... 1813
`
`CB. GROUND 2: CLAIMS 16-18 ARE OBVIOUS UNDER 35
`U.S.C. § 103(a) OVER MORITA, SARBADHIKARI, AND
`LONGGINOU ................................................................................ 4135
`
`DC. GROUND 3: CLAIMS 1-6, 8, 10, 11, 16-18, 21 , 22, 24, 26 ,
`27 ANDand 29 ARE UNPATENTABLE UNDER 35 U.S.C. §
`103(a) AS BEING OBVIOUS OVER WILSKA AND
`YAMAGISHI-992 .......................................................................... 4539
`
`ED. 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 60
`
`F.
`
`THE BOARD SHOULD ADOPT ALL GROUNDS ......................... 60
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`VIII. CONCLUSION ......................................................................................... 6062
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`Petition for Inter Partes Review – Patent No. 7,643,168
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`TABLE OF AUTHORITIES
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` 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
`
`37 C.F.R. § 42.15(a) ................................................................................................... 3
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`37 C.F.R. §42.100(b) ................................................................................................. 5
`
`
`
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`iii
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`Page 5 of 80
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`
`
`Ex.
`1001
`
`Ex.
`1002
`
`Ex.
`1003
`
`Ex.
`1004
`
`Ex.
`1005
`
`Ex.
`1006
`
`Ex.
`1007
`
`Ex.
`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 – of U.S. Patent 7,643,168 B2
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`EXHIBIT LIST OF EXHIBITS
`
`U.S. Patent No. 7,643,168 B2 to David A. Monroe (“the 168
`Patent”), as filed in IPR2014-00989
`
`Certified Translation of the Japanese Patent Application Publication
`No. H06-133081 to Morita (“Morita”) and the corresponding
`Japanese language patent application, as filed in IPR2014-00989
`U.S. Patent No. 5,477,264 to Sa.rbadhika.riSarbadhikari et al.
`(“Sardabhikari”)., as filed in IPR2014-00989
`
`PCT Application Publication No. WO 95/23485 to Longginou
`(“Longginou”), as filed in IPR2014-00989
`U.K. Patent Application GB 2,289,555 A to Wilska et al.
`(“Wilska”)., as filed in IPR2014-00989
`
`European Patent Application Publication No. 0594992 A1 to
`Yamagishi (“Yamagishi 992”), as filed in IPR2014-00989
`U.S. Patent No. 5,550,754 B2 to McNelley et al. (“McNelley”)., as
`filed in IPR2014-00989
`
`Declaration of Kenneth Parulski including Attachments A-D
`(“Parulski Declaration”) , 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
`
`
`
`iv
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`Page 6 of 80
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`Petition for Inter Partes Review –of U.S. Patent 7,643,168 B2
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`I.
`
`INTRODUCTION
`
`Pursuant to 35 U.S.C. § 311Samsung Electronics Co., Ltd. and Samsung
`
`Electronics37 C.F.R. § 42.100, HTC Corporation and HTC America, Inc.
`
`(“Petitioners”) petition for(collectively, “Petitioner”) request inter partes review of
`
`claims 1-6, 8, 10-11, 13 -18, 21-29, and 31 (“the Challenged Claims”) of U.S.
`
`Pat.Patent No. 7,643,168 B2 (“the 168’168 Patent,” ”) (Ex. 1001). E Watch, Inc.
`
`and E Watch Corp. are referred to as “Patent Owner” because the 168 Patent ),
`
`which is assigned to E Watch, Inc. e-Watch, Inc. (“Patent Owner”). On December
`
`9, 2014, the Board instituted an inter partes review of the same claims based on
`
`USPTO records, and E Watch Corp. claims to be the exclusive licensee of the 168
`
`Patent in their complaint a petition filed under Case No. 2:13 cv 01063. 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 demonstratesproposes the
`
`same grounds of rejection proposed in the HTC IPR and adopted by the Board, and
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`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 PetitionersPetitioner will prevail with respect to at 10
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`least one of the Challenged Claims which arebased on prior art that was not
`
`considered during prosecution, and that renders the claims obvious. Accordingly,
`
`the challenged claims should be found unpatentable under 35 U.S.C. §103and
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`canceled.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(B)
`A. REAL PARTY IN INTEREST
`HTC Corporation and HTC Real Party-in-Interest: Petitioner identifies
`
`Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. areas the
`
`real parties -in -interest.
`
`B.
`RELATED MATTERS
`Related Matters: Patent Owner has asserted the ’168 Patent Owner is
`
`asserting the 168 and U.S. Patent and U.S. Pat. No. 7,365,871 B2(“the ’871
`
`Patent”), which is a parent of the ’168 Patent, against Petitioners in an on
`
`goingSamsung Electronics Co., Ltd. and Samsung Telecommunications America,
`
`LLC1 in a patent infringement lawsuit in E WATCH, INC. and E WATCH CORP.
`
`et allitigation. v. HTC et al., 2:13 cv 01063 filed in the E.on December 9, 2013, in
`
`the U.S. District Court for the Eastern District of Texas on Dec. 9, 2013, and (case
`
`1 Effective January 1, 2015, Samsung Telecommunications America, LLC (“STA”)
`
`merged into Samsung Electronics America, Inc., and STA ceased to exist as a
`
`separate corporate entity.
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`
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`2
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`no. 2:13-cv-01062). Patent Owner has also asserted the ’168 Patent and ’871
`
`Patent against other entities in 9nine other lawsuits. in the Eastern District of
`
`Texas (case nos. 2:13-cv-01061, -01063, -01064, -01069,
`
`-01070, -01071, -01072, -01073, -01074, -01075, -01076, -01077, and -01078).
`
`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
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`Board. Other entities have also filed petitions on the ’168 Patent (IPR2015-00401,
`
`IPR2015-00407, IPR2015-00408, and IPR2015-00414). In addition, Petitioners are
`
`pursuing a petition for inter partes review of the 871 Patentthe Board instituted an
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`inter partes review of the ’871 Patent on December 9, 2014, based on a petition
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`filed by HTC on June 19, 2014 (IPR2014-00987), and a review on August 4, 2014,
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`based on a petition filed by Iron Dome LLC on February 18, 2014 (IPR2014-
`
`00439). Petitioner is filing concurrently herewith a petition that copies the ground
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`of rejection proposed by HTC in IPR2014-00439 and adopted by the Board. Other
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`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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`
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`3
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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
`
`Ai (Reg. No. 43,312) as the lead counsel, and Cheng C. (Jack) Ko (Reg. No.
`
`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: HTC EWATCH IPR
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`Service@perkinscoie.com.
`
`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney is concurrently filed.
`
`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)
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`The required fees are submitted herewith. The Office is authorized to charge
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`4
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`any other fees due at any time to Deposit Account No. 50-2613.
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`III.IV.
`
`REQUIREMENTS FOR INTER PARTES REVIEW
`
`This Petition complies with all requirements under 37 C.F.R. § 42.104.
`
`A. GROUND FOR STANDING
`Pursuant to 37 C.F.R. § 42.104(a), Petitioners hereby certifyGround for
`
`Standing: Petitioner certifies that the 168’168 Patent is available for inter partes
`
`review, and that Petitioners are Petitioner is not barred or estopped from requesting
`
`inter partessuch review challengingof the 168’168 Patent on the grounds
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`identified.
`
`B.
`IDENTIFICATION OF CHALLENGE, 37 C.F.R. § 42.104(b)
`The precise relief requested is Identification of Challenge: Petitioner
`
`requests that the Office cancel the Challenged Claims.
`
`1.
`
`Claims Challenged
`Claimsclaims 1-6, 8, 10-11, 13-18, 21-29 and 31 are challenged in this
`
`Petition.
`
`2.
`
`The Prior Art
`The be cancelled as being obvious under 35 U.S.C. § 103 based on the prior
`
`art isdiscussed herein, including Morita (Ex.1002), Sarbadhikari (Ex.1003),
`
`Longginou (Ex. 1004), Wilska (Ex. 1005),Yamagishi-992 (Ex. 1006)), and
`
`McNelley (Ex. 1007). Section VI explains how the claims should be construed and
`
`section VII provides a detailed explanation of how the claims are unpatentable.
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`5
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`3.
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`Supporting Evidence Relied Upon For The Challenge
`The Declaration by Kenneth Parulski (Ex. 1008) and other evidence.
`
`4.
`
`Statutory Ground(s) Of Challenge And Legal Principles
`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
`
`took effect on Sep. 16, 2012 govern this inter partes review.
`
`5.
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`Claim Construction under 37 C.F.R. § 42.100(b)
`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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`6.
`
`How Claims Are Unpatentable Under Statutory Grounds
`Pursuant to 37 C.F.R. § 42.104 (b)(2)
`Section VI provides an explanation of how the Challenged Claims are
`
`unpatentable including identification of where each element is found in prior art.
`
`IV.V. OVERVIEW OF THE 168’168 PATENT
`A.
`PRIORITY DATE OF THE CLAIMS OF THE 168 PATENT
`The 168’168 Patent was filed on May 17, 2007 as a Continuation of and
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`claiming theattempts to claim priority of Appl. to U.S. Patent Application No.
`
`10/336,470 (Pat. No. 7,365,871), filed Jan.on January 3, 2003. The 168, which
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`matured into the ’871 Patent, and U.S. Patent has a priority date of Jan. 3, 2003.
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`The 470 Appl. is a Divisional of Appl. No. Application No. 09/006,073, filed
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`Jan.on January 12, 1998 (, which is now abandoned. Ex. ) but the 168 Patent does
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`6
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`not claim 1001 at Cover Page, 1:6-12. Although Petitioner disagrees that the ’168
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`Patent is entitled to a priority date of January 12, 1998, Petitioner has assumed
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`January 12, 1998, as the priority date of Jan. 12, 1998. Thus, the priority date of
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`the 168 Patent is no earlier than Jan. 12, 1998for purposes of this Petition.
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`B.
`
`SUMMARY OF THE 168 PATENT
`The 168’168 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).
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` Fig. 4 of the 168’168 Patent illustrates the data path after an image is
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`captured by the camera 10 and conditioned by the gray scale bit map 16 (7:65 to
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`8:41). The device includes a memory 46, an optional viewer 48, and a format
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`select interface switch 60 that permits automated or manual selection of the
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`transmitting protocol, such as a Group-III facsimile format, a PC modem protocol,
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`a wavelet compressor or others (Id.). id.). Depending on the selected protocol, the
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`signal output is generated and provided to a communications interface module 83
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`for transmission (Idid.).
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`The claims of the 168’168 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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`C.VI. PROPOSED CLAIM CONSTRUCTION
`
`Petitioners proposeThe ’168 Patent is an unexpired patent. Therefore,
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`Petitioner proposes construction of claim terms pursuant to the broadest reasonable
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`interpretation (BRI) standard. Petitioner proposes the ordinary and customary
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`meaning for each remaining term in the challenged claims. The proposed claim
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`constructions are offered only to comply with 37 C.F.R. §42.100(b) for the sole
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`purpose of this Petition, and thus), and do not necessarily reflect appropriate claim
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`constructions in litigation where a different claim construction standard applies.2
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`“Media being suitable to embody ... algorithm: This term appears in three
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`different variations: (” terms: Claims 1) , 22, 24, 26, and 27 recite “media being
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`suitable to embody at least one compression algorithm in claims 1 28; (2),” claims
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`16 and 18 recite “at least one transmission protocol algorithm embodied in suitable
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`media,” and claim 29 recites “at least one compression algorithm embodied at least
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`in part in suitable programmed media in claims 29 31; and (3) transmission
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`protocol algorithm embodied in suitable media.” In IPR2014-00989, HTC
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`2 Petitioner reserves all other arguments, such as § 112 arguments, for litigation.
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`proposed that the broadest reasonable interpretation of these phrases is “media that
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`can embody an algorithm, in hardware form, software form or a combination of
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`hardware and software forms” (Ex. 1009 at 5-6). The Board in IPR2014-00989 did
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`not adopt this exact interpretation, but instead adopted a similar interpretation of
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`these phrases: “a storage device for storing software to perform, among other
`
`functions, image compression and storage of transmission protocols” (Ex. 1010 at
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`6-7).
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`As the Board explained in claims 16 18. The 168 Patent does not explicitly
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`describe these terms, which were added during the prosecution of the 168IPR2014-
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`00989, the specification of the ’168 Patent. Some recitations of “media” (i.e.,
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`“news media” and “print media” at 1:40 50) are unrelated to the claims. Other
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`references to “media” pertain to storage of “describes how an image captured
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`image databy camera 10 is stored on a “writableany one of a variety of memory
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`devices for storage,” such as “writeable 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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`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 processor
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`or such as a microprocessor or DSP ... The circuitry supporting the processor
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`comprises the processor chip 86 and the control store memory (ROM, Flash RAM,
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`PROM, EPROM or the like) 92 for storing the software program executed by the
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`processor.” (9:15 29). Ex. 1010 at 7 (quoting Ex. 1001, 7:24-31)). The
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`specification also describes: “The processor 86 can also perform image
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`compression and output the image ...the processor 86 executes a code for
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`performing a bi level compression of the data and the signal representing the
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`frame data is output” (11:3 10). The specification uses “circuit”“‘circuit’ or
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`“circuitry”‘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
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`10functionalities’” (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
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`invention. Nor does it describe or define the word “algorithm” (Ex. 1010 at 7).
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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
`The Challenged ClaimsAs noted by the Board, dictionaries available at the
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`time of the alleged invention defined “‘[m]edia’ . . . as ‘[T]he physical material,
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`such as paper, disk, and tape, used for storing computer-based information’” and
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`“‘algorithm’ as ‘[A] finite sequence of steps for solving a logical or mathematical
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`problem or performing a task’” (id. at 7 (quoting Ex. 1011 at 28, 420)). The Board
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`also noted that “[i]n the context of software, algorithms are used to disclose
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`adequate defining structure to render the bounds of the claim understandable to one
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`of ordinary skill in the art” (Ex. 1010 at 7 (citing Med. Instrumentation &
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`Diagnostics Corp. v. 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
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`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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`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
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`The challenged claims are unpatentable under 35 U.S.C. § 103(a) for merely
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`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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`A.
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`IDENTIFICATION OF THE REFERENCES AS PRIOR ART
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`The cited references are within the same specific technical field, and relate
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`to the claimed subject matter, of the 168’168 Patent and were published more than
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`1one year prior to both the Jan. 3, 2003 priority date and Jan. 12, 1998 (the earliest
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`possible priority date). EachAs a result, each reference is prior art under 35 U.S.C.
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`§ 102(b).
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`Morita (JP Pub. No. H06-133081, publishedpub. 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 (Ex. 1002,
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`4:17-26; 5:16 to 6:7; 7:1-6). The camera includes a lens, an image sensing device,
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`an 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). 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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`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, such as a JPEG, that are retrieved
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`by the processor to perform image compression (id., 6:26-40; Fig. 2, element 28).
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`The camera can be uploaded with modified or updated algorithms (id., 4:47 to
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`5:40).
`
`Longginou (Pub. No. WO 95/23485, publishedpub. Aug. 31, 1995)
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`describes a hand-held phone in multiple modes of communication based on
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`different protocols, such as cellular, trunking, cordless, etc. (. (Ex. 1004, Abstract;
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`1:21 to 2:4; 12:8 23), e.g.,a dual mode handset using two of the protocols of GSM,
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`MPT1327, Trunking Radio, AMPS, ETACS, TDMA, CDMA, PCN, CT1, CT2,
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`CT3, DECT (10:27 to 11:7; 12:8-23).
`
`Wilska (U.K. Appl. GB 2,289,555, published Dec. 11pub. Nov. 22, 1995)
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`describes a hand-held device for personal communication, data collection, picture
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`taking and data processing (Ex. 1005, Abstract). Figs. 1-3 illustrate components
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`including a data processing unit (2) (“PC in a chip”),), a display (9), a user
`
`interface (10, 11), a cellular mobile phone and modem (17), and memory unit(s)
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`(13), a power source (3), and an application software (Id). ). A camera unit (14) is
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`implemented as a fixed or a removable (e.g., a PCMCIA card) component (id.,
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`Abstract; 4:28-30; 5:9-10; 7:21-23) and includes a camera (14a) (e.g., a CCD or an
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`image sensor) and an optics (14b) section (id., Abstract; 7:9-10). Fig. 5 provides
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`details of the camera unit. Wilska’s device also includes software that allows, for
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`example, use of cellular phone services, data and/or speech transmission, facsimile
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`services, electronic mail, short message service (SMS), and camera functions to
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`record images, and other functions ( (id., 6:4-12).
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`Yamagishi-992 (EP Appl. No. 0594992, publishedpub. May 4, 1994)
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`describes an information signal processing apparatus with an electronic camera
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`that allows capture, storage and transmission of images and sound (Ex. 1006,
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`Abstract; 7:35-41). Fig. 43 shows the device includes a lens (3010), a shutter
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`(3012), a microphone, A/D converters, system controlling circuit, image-sound
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`memory (3024), recording media (3100), compressing-expanding circuit, display
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`devices (3038, 3054), audio output device, power supply, modem, and a set of
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`switches (3056) for entering commands, selecting operational modes and executing
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`various camera operations (id., 121:21-58). Three modes of operation are
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`disclosed: recording mode, reproduction mode, and transmission mode, which
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`respectively allow selective capture, viewing and transmission of images and
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`sound captured and stored by the device ( (id., e.g., 122:23 to 126:3; Figs. 44 to
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`46). The device can be part of a portable telephone set and can use a wireless line
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`for transmission and reception of control and data signals (id., 122:22-25; 147:3-
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`13). Transmissions to an external device are via a modem (3028) controlled by
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`controlling circuit (3050) (id., 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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`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) (Idid.), which can be separate components, or a single display as
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`a viewfinder and a teleconferencing display (id., 7:2-24).
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`B.
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`SUMMARY OF INVALIDITY POSITIONS
`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. GROUND 1: CLAIMS 1-6, 8, 10, 11, 13-15, 21-29,
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`AND 31
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`ARE1008, Pars. 80 184). In particular, the combination of Morita and
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`Sarbadhikari illustrates that claims 1 6, 8, 10 11, 13 15, 21 29 and 31 recite known
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`limitations in combinations that were known or obvious to a person of ordinary
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`skill in the art (“POSITA”) and are thus unpatentable.
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`Longginou describes further details regarding the implementation of
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`particular wireless transmission protocols, that when combined with Morita and
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`Sarbadhikari, renders claims 16 18 obvious and unpatentable. Additionally, the
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`combination of Wilska and Yamagishi 992 (for claims 1 6, 8, 10 11, 16 18, 21 22,
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`24, 26, 27 and 29) and McNelley (for claims 13 15, 23, 25 , 28 and 31) illustrate
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`that these claims recite known features in obvious combinations. As discussed in
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`Section V C, each prior art combination in this petition provides a distinct
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`perspective to support obviousness of the Challenged Claims.
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`The Declaration by Kenneth Parulski (Ex. 1008), an expert with
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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
`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
`
`cla
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