Trials@uspto.gov
`571-272-7822
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`
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`Paper 6
`Entered: December 9, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`HTC CORPORATION and HTC AMERICA, INC.,
`Petitioner,
`
`v.
`
`E-WATCH, INC. and E-WATCH CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2014-00989
`Patent 7,643,168 B2
`
`____________
`
`
`
`Before JAMESON LEE, GREGG I. ANDERSON, and
`MATHEW R. CLEMENTS, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`Page 1 of 24
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`SAMSUNG EXHIBIT 1009
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`571-272-7822
`
`
`
`
`
`
`Paper 6
`Entered: December 9, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`HTC CORPORATION and HTC AMERICA, INC.,
`Petitioner,
`
`v.
`
`E-WATCH, INC. and E-WATCH CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2014-00989
`Patent 7,643,168 B2
`
`____________
`
`
`
`Before JAMESON LEE, GREGG I. ANDERSON, and
`MATHEW R. CLEMENTS, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`Page 1 of 24
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`SAMSUNG EXHIBIT 1009
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`IPR2014-00989
`Patent 7,643,168 B2
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`
`On June 19, 2014, HTC Corporation and HTC America, Inc.
`
`(“Petitioner”) filed a Petition (Paper 1) pursuant to 35 U.S.C. §§ 311–319 to
`
`institute an inter partes review of claims 1–6, 8, 10, 11, 13–18, 21–29, and
`
`31 of U.S. Patent No. 7,643,168 B2 (“the ’168 patent”), filed January 12,
`
`1998.1 e-Watch, Inc. and e-Watch Corporation (“Patent Owner”) elected not
`
`to file a preliminary response. Applying the standard set forth in 35 U.S.C.
`
`§ 314(a), which requires demonstration of a reasonable likelihood that
`
`Petitioner would prevail with respect to at least one challenged claim, we
`
`institute an inter partes review of claims 1–6, 8, 10, 11, 13–18, 21–29, and
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`31. The Board has not made a final determination of the patentability of any
`
`claim.
`
`I. BACKGROUND
`
`A. The ’168 patent (Ex. 1001)
`
`The ’168 patent describes an image capture, conversion, compression,
`
`storage and transmission system. Ex. 1001, Abstract. The system includes a
`
`camera and a transmission device; the camera captures an image that is
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`transmitted to another device using, for example, cellular signal, satellite
`
`transmission and hard line telephonic. Id. at 5:66–6:5. Captured images can
`
`be from a digital or analog camera or a video camera (e.g., a camcorder). Id.
`
`at 2:37–39.
`
`
`1 Petitioner alleges the ’168 patent claims priority to a continuation
`application No. 10/336,470 (US Pat. No. 7,365,871)(“the’470 application”)
`filed January 13, 2003. Pet. 3. The ’470 application is a divisional of an
`application No. 09/006,073 filed January 12, 1998. Id. Petitioner alleges
`that is the earliest date to which Patent Owner could claim priority. Id. We
`use the 1998 date as the priority date for purposes of this Decision.
`
`2
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`Figure 4 of the ’168 patent is reproduced below.
`
`
`
`Figure 4 of the ’168 Patent illustrates the data path after an image is captured
`
`by camera 10 and conditioned by gray scale bit map 16. Id. at 7:65–8:41.
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`The device includes memory 46, optional viewer 48, and format select
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`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
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`protocol, a wavelet compressor or others. Id. Depending on the selected
`
`protocol, the signal output is generated and provided to communications
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`interface module 83 for transmission. Id.
`
`B. Illustrative claim
`
`Claims 1, 22, 24, 26, 27, and 29 are the independent claims of the
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`’168 patent. Claim 1 is illustrative of the claims at issue:
`
`1. Apparatus comprising:
`a portable housing, the portable housing being wireless;
`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;
`a display supported by the portable housing, the display
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`3
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`being operable to display for viewing by a user a perceptible
`visual image, the perceptible visual image being generated from
`the visual image data;
`memory supported by the 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,
`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;
`media supported by the portable housing, the media
`being suitable to embody at least one compression algorithm;
`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; and
`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; and
`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.
`
`Ex. 1001, 15:14–50.
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`C. References relied upon
`
`Petitioner relies on the following references. Pet. 6—9.
`
`Reference
`
`Description
`
`Publication or
`Issue Date
`
`Exhibit No.
`
`Morita‘
`
`JP H06-133081
`
`May 13, 1994
`
`Ex. 1002
`
`Sarbadhikari
`
`US 5,477,264
`
`Dec. 19, 1995
`
`Ex. 1003
`
`Longginou
`
`WO 95/23485
`
`Aug. 31, 1995
`
`Ex. 1004
`
`Wilska
`
`GB 2,289,555 A
`
`Nov. 22, 1995
`
`Ex. 1005
`
`Yamagishi-992 EP 0 594 992 A1 May 4, 1994
`
`Ex. 1006
`
`Ex. 1007
`
`McNelle
`
`US 5,550,754
`
`Au_. 27, 1996
`
`D. Asserted grounds ofzmpatentabilily
`
`Petitioner challenges claims 1—6, 8, 10, 11, 13—18, 21—29, and 31 of
`
`the ’ 168 patent as unpatentable on the following grounds. Pet. 12—59.
`
`Referenc s m Claim 5 Challened
`Morita and Sarbadhikari
`§ 103(a)
`1—6, 8, 10, 11, 13—15, 21—
`29, and 31
`
`Morita, Sarbadihikari, and Lon_ _inou
`
`16—18
`
`§ “’3‘”
`
`22, 24, 26, 27, and 29
`
`
`
`McNelle
`
`E. Related proceedings
`
`Patent Owner has asserted the ’ 168 patent against Petitioner in the
`
`following action: E— WA TCH, INC. V. HTC, No. 2: l3-cv-01063, filed in the
`
`2 Petitioner filed Morita as pp. 28—37 of Exhibit 1002. Petitioner provided a
`certified English translation of Morita at pp- 1—28 of Exhibit 1002.
`3 Petitioner mistakenly used a publication date of December 11, 1995. Pet.
`8.
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`Eastern District of Texas on December 9, 2013, and against other entities in
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`nine other lawsuits. In addition, Petitioners filed a petition in IPR2014-
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`00987 for inter partes review of related U.S. Patent No. 7,365,871 B2. Pet.
`
`1.
`
`F. Claim construction
`
`The Board interprets claims of an unexpired patent using the broadest
`
`reasonable construction in light of the specification of the patent in which
`
`they appear. 37 C.F.R. § 42.100(b); see also Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
`
` 1. “media being suitable to embody . . . algorithm”(claims 1–28)
`
`Petitioner identifies a single term from the ’168 patent for
`
`construction: “media being suitable to embody . . . algorithm.” Pet. 5.
`
`Petitioner proposes the term be construed as “media that can embody an
`
`algorithm, in hardware form, software form or a combination of hardware
`
`and software forms.” Id. at 6. Petitioner’s witness, Mr. Kenneth Parulski,
`
`supports Petitioner’s construction as consistent with the understanding of a
`
`person of ordinary skill in the art. Ex. 1008 ¶ 79.
`
`Petitioner notes:
`
`This term appears in three different variations: (1) media being
`suitable to embody at least one compression algorithm in claims
`1-28; (2) compression algorithm embodied at least in part in
`suitable programmed media in claims 29-31; and (3)
`transmission protocol algorithm embodied in suitable media in
`claims 16-18. The 168 Patent does not explicitly describe these
`terms, which were added during the prosecution of the 168
`Patent.
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`Pet. 5.4 The Specification describes how an image captured by
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`camera 10 is stored on any one of a variety of memory devices for
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`storage. Ex. 1001, 7:24-31. One described memory device is
`
`“writeable optical media.” Id. at 7:31. Petitioner also notes that
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`the’168 patent “uses ‘circuit’ or ‘circuitry’ more than 30 times to refer
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`to various components that perform the disclosed functionalities.
`
`(citations omitted).” Pet. 6. The Specification does not otherwise
`
`include the word “media” in the context of the claimed invention.
`
`Neither does the Specification describe, nor define, algorithm.
`
`“Media” is defined as “[T]he physical material, such as paper,
`
`disk, and tape, used for storing computer-based information.”
`
`Microsoft Computer Dictionary, 420 (2d ed. 2002). Ex. 3001. The
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`Microsoft Computer Dictionary further defines “algorithm” as “[A]
`
`finite sequence of steps for solving a logical or mathematical problem
`
`or performing a task.” Id. at 28. In the context of software,
`
`algorithms are used to disclose adequate defining structure to render
`
`the bounds of the claim understandable to one of ordinary skill in the
`
`art. See, e.g., Med. Instrumentation & Diagnostics Corp. v. Elekta
`
`AB, 344 F.3d 1205, 1214 (Fed.Cir.2003).
`
`Accordingly, we construe “media being suitable to embody . . .
`
`algorithm,” and related terms including both “media” and
`
`“algorithm,” as “a storage device for storing software to perform,
`
`
`4 Petitioner has not provided the relevant portion of the prosecution history
`so that we can confirm its representation regarding how the term was added
`to the claims.
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`among other functions, image compression and storage of
`
`transmission protocols.”
`
`2. “commonly moving”(claims 1, 22, and 24)
`
`Claim 1 recites “movement by the user of the portable housing
`
`commonly moving the image collection device,” and “movement by the user
`
`of the portable housing commonly moving the display.” (emphasis added).
`
`Apart from the claims, the ’168 patent does not use the phrase “commonly
`
`moving.” Petitioner does not propose a construction for the term
`
`“commonly moving.” However, Petitioner argues the Morita reference
`
`teaches that “all device components including the display and the camera,
`
`are within a single housing and are thus commonly moved when the device is
`
`moved by the 10 user (Id., 7:17 to 8:7; 11:21 to 12:2; Figs. 2 and 4).” Pet.
`
`17; see also Pet. 44 (discussing Wilska). Based on the use of “commonly
`
`moving” in the claims of the patent, for the purposes of this Decision, we
`
`interpret it to mean that the movement of the portable housing causes
`
`movement of the image collection device or display.
`
`II. ANALYSIS
`
`A. Obviousness over Morita and Sarbadhikari
`
`Petitioner contends that claims 1–6, 8, 10, 11, 13–15, 21–29 and 31 of
`
`the ’168 patent are obvious under 35 U.S.C. § 103 over Morita and
`
`Sarbadhikari. Pet. 12–33. To support this position, Petitioner presents the
`
`testimony of Mr. Parulski. Ex. 1008 ¶¶ 80–113, Table 1. Id. at 12.
`
`1. Morita
`
`Morita describes a portable telephone which wirelessly transmits and
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`receives audio signals, i.e., a telephonic conversation. Ex. 1002, 4:17–26.
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`The telephone includes a still camera, which can encode and store digital
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`images. Id. at 5:16– 6:7. The subject of the photograph is framed through
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`lens 1 and displayed on display 8. Id. at Abstract, Fig. 2(a).
`
`Figure 6 of Morita is reproduced below.
`
`
`
`Figure 6 shows an embodiment of the circuit configuration for the still
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`camera with portable telephone function. Id. at 15:7–12. An image
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`processing circuit compresses and encrypts the image data. Id. at 3:23–26.
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`The image is stored in internal memory 26. Id. at 5:23–25. When a release
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`button on the phone is pressed, a recipient is called, the image data is read
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`from memory and sent to the recipient over the phone connection line. Id. at
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`5:26–6:7.
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`2. Sarbadhikari
`
`Sarbadhikari describes an electronic imaging system including a
`
`digital camera for capturing and storing images. Ex. 1003, Abstract.
`
`Figure 2 of Sarbadhikari is reproduced below.
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`
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`Figure 2 is a block diagram of an electronic camera configured to receive
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`and process enhancement files. Id. at 3:30–32. The camera has an optical
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`section, an A/D converter, image buffers, image memory and processors for
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`controlling image capture operations and processing the captured images.
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`Id. at 5:55–6:26, Fig. 2. The device also includes memory for storing
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`algorithms, including compression algorithms, such as JPEG, that are
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`retrieved by the processor to perform image compression. Id. at 6:26–40,
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`Fig. 2, element 28. Modified or updated algorithms can be uploaded to the
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`camera. Id. at 4:47–5:40.
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`3. Claims 1–6, 8, 10–11, 13–15, 21–29 and 31
`
`We first address independent apparatus claim 1. Claims 22, 24, 26,
`
`27, and 29 are also independent claims that recite many of the same
`
`limitations of claim 1. Pet. 17–27. On this record, we are persuaded that
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`there is a reasonable likelihood that Petitioner would prevail in establishing
`
`that claim 1 is obvious over Morita and Sarbadhikari.
`
`The first recited element of claim 1 is “a portable housing, the
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`portable housing being wireless.” Petitioner points to several parts of Morita
`
`as teaching this limitation. Pet. 13 (citing Ex. 1002, Title, other citations
`
`omitted).
`
`The next recited element of claim 1 is “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 describes,
`
`as part of its portable handheld device, a traditional still camera section
`
`(Figure 10) as well as a portable phone device (Figure 11). Ex. 1002, 7:1–6.
`
`Morita includes a lens, a solid state image sensing device, an A/D converter,
`
`image processing and encoding circuits and memory. Id. at 3:20–4:5, Fig. 1,
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`section A. Petitioner cites to the just cited portions of Morita as teaching the
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`“image collection device” limitation. Pet. 13.
`
`Claim 1 further recites, in pertinent part, “a display supported by the
`
`portable housing,” which displays the “visual image data.” On this record,
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`we are persuaded that Morita discloses a display that is supported by the
`
`portable housing. Ex. 1002, 3:20–26, Fig. 10 (element 8). The display is
`
`used for viewing perceptible visual images generated from image signals
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`after A/D conversion and processing by the image processing circuit. Id. at
`
`8:9–18, Fig. 1. Petitioner cites to the portions of Morita above relating to the
`
`display to teach the recited display limitation. Pet. 13–14.
`
`Claim 1 next recites, in pertinent part, “memory” which “receives”
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`and “retains” the “visual image data in digital format.” Petitioner argues
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`Morita’s disclosure that the image data is transmitted to a control circuit
`
`upon activation of a release button and “stored in a memory card” teaches
`
`the receiving limitation. Pet. 14 (citing Ex. 1002, 3:26–4:5). Petitioner cites
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`to the storing of the image data as teaching the image data is retained. Id.
`
`Claim 1 further recites, in pertinent part, “an input device . . . to retain
`
`the visual image data in digital format.” Petitioner contends the button of
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`Morita described in connection with the “memory” limitation immediately
`
`above, is an input device. Pet. 14. Also as described immediately above, the
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`memory card of Morita saves the image data in digital format. Id.
`
`Claim 1 further recites “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. Ex.
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`1002, 3:24–25. In addition to the processing circuit of Morita, Petitioner
`
`cites to Sarbadhikari’s electronic camera’s memory for storing algorithms,
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`including compression algorithms, such as JPEG. Pet. 14–15 (citing Ex.
`
`1003, 6:26–40, Fig. 2, element 28. .
`
`Mr. Parulski explains that Morita “must embody a compression
`
`algorithm.” Ex. 1008 ¶ 92. Mr. Parulski goes on to state that Sarbadhikari
`
`stores code for a compression algorithm, which code is within the camera
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`and, thus, “supported by the camera housing.” Id. at ¶ 93. Petitioner cites to
`
`the preceding testimony of Mr. Parulski to argue a person of ordinary skill in
`
`the art “would have been motivated, or would have found it obvious, to
`
`combine Sarbadhikari and Morita to allow a compression algorithm to be
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`stored in memory and accessed by a processor since it would have reduced
`
`the cost of development of the device by implementing image compression
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`in software and would have allowed the algorithm to be updated. Pet. 15
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`(citing Ex. 1008 ¶¶ 9295). Claim 1 next recites, in pertinent part, “at least
`
`one processing platform,” which executes the compression algorithm to
`
`provide “compressed visual image data.” Morita describes an image
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`processing circuit, an encoding circuit, and a control unit, which Petitioner
`
`contends, alone or in combination teaches or suggests the “processing
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`platform.” Pet. 15–16 (citing Ex. 1002, 3:22–25, 7:7–9, 8:10–15, Figs. 1
`
`and 10, elements, 4, 5 and 25). Morita ultimately compresses the image
`
`data, as required by the “processing platform” limitation of claim 1. Id.
`
`(citing Ex. 1002, 3:22–25), see also Ex. 1008 ¶ 92. Petitioner relies on
`
`Sarbadhikari to teach that “processor 22 applies a compression algorithm
`
`from memory 28 to digital image signals, and sends the compressed signals
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`to a removable storage device.” Id. (citing Ex. 1003, 6:37-39)(emphasis
`
`added).
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`Petitioner also provides rational underpinnings for combining the
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`compression algorithm of Sarbadhikari with the camera of Morita to meet
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`the “processing platform” limitation. Pet. 16. Specifically, Petitioner argues
`
`the combination would reduce development costs because “implementing
`
`software compression[] would have reduced the storage space for storing the
`
`captured images and the bandwidth for transmission of such images.” Id.
`
`(citing Ex. 1008 ¶¶ 92–95). More specifically, Mr. Parulski testifies a
`
`person of ordinary skill in the art would have found it obvious to
`
`“incorporate software-based image compression, using for example the
`
`algorithm memory 22 and the digital signal processor 22 taught by
`
`Sarbadhikari, into the camera phone described by Morita, since such a
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`capability could reduce costs, allow for a more complex compression
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`algorithm to be used, or reduce the development time needed to design and
`
`debug a new image compression algorithm.” Ex. 1008 ¶ 95.
`
`Claim 1 next recites, in pertinent part, “a mobile phone” which is
`
`operable to send “a remote recipient a wireless transmission, the wireless
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`transmission conveying the compressed digital image data.” Morita
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`discloses a mobile phone that can send/receive digital image data to/from
`
`another device. Ex. 1002, Title, 3:14–15, 3:22–25, 7:1–19, 8:15–18, 9:7–19,
`
`Fig. 1 (element B), Figs. 2a, 2b. Morita also discloses the stored image date
`
`is transmitted in compressed format. Id. at 3:22–25. Petitioner cites to the
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`preceding disclosures of Morita as teaching the wireless transmission of
`
`compressed digital image data. Pet. 16–17.
`
`The final limitation of claim 1 recites “movement by the user of the
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`portable housing commonly moving the image collection device, movement
`
`by the user of the portable housing commonly moving the display.”
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`Petitioner argues Morita’s components are all within a single housing and
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`thus subject to being “commonly moved” as we have construed the term.
`
`Pet. 17 (citing Ex. 1002, Figs. 2(a), 2(b), and 4(a) –4(d)).
`
`As discussed above, claims 22, 24, 26, 27, and 29 are independent
`
`claims which recite many of the same limitations of claim 1. Pet. 17–27.
`
`On this record, Petitioner also has presented sufficient evidence and
`
`argument to show that the cited prior art references collectively suggest the
`
`claimed subject matter recited in independent claims 22, 24, 26, 27, and
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`29. Id. We also have considered the testimony of Mr. Parulski regarding the
`
`independent claims. See Ex. 1008 ¶¶ 86–99, Table 1. Therefore, we
`
`determine that the information presented in the Petition establishes a
`
`reasonable likelihood that Petitioner would prevail on its assertion that
`
`independent claims 22, 24, 26, 27, and 29 would have been obvious over
`
`Morita and Sarbadhikari.
`
`Sarbadhikari also is relied on for the limitations in certain dependent
`
`claims. For example, claim 2, depends from claim 1and recites “the
`
`processing platform including at least one processor.” Concerning claim 2,
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`Petitioner points to the image processing circuit of Morita as one place
`
`where a processor is disclosed. Pet. 28. Petitioner, however, also noted in
`
`connection with claim 1 above that Sarbadhikari specifically disclosed
`
`processor 22 for applying a compression algorithm. Pet. 16 (citing Ex.
`
`1003, 6:37–39). Mr. Parulski’s testimony corroborates the position taken.
`
`Ex. 1008 ¶ 101. We determine that the information presented in the Petition
`
`establishes a reasonable likelihood that Petitioner would prevail on its
`
`assertion that claim 2 would have been obvious over Morita and
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`Sarbadhikari.
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`Claim 13 depends from claim 1 and recites “the display including a
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`display screen, the display screen being defined apart from a viewfinder, the
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`display screen being operable to display for viewing by a user a perceptible
`
`visual image, the perceptible visual image being generated from the visual
`
`image data.” (emphasis added). Sarbadhikari teaches an electronic
`
`viewfinder which is used to both compose the captured images and to
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`display images after storage in the removable memory card. Ex. 1003, 5:27–
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`31, 7:28–30. Images may be viewed either on the viewfinder or on a
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`separate viewscreen. Id. at 10:55–58. Petitioner argues the claim 13
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`limitation is taught by the viewfinder and viewscreen of Sarbadhikari. Pet.
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`31 (citing Ex. 1003, 10:5558); see also Ex. 1008 ¶ 109. Further, the
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`combination would have been obvious to allow more flexible use of the
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`device. Id. at 32. We determine that the information presented in the
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`Petition establishes a reasonable likelihood that Petitioner would prevail on
`
`its assertion that claim 13 would have been obvious over Morita and
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`Sarbadhikari.
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`Finally, claims 3–6, 8, 10, 11, 14, 15, and 21 depend, directly or
`
`indirectly, from claim 1. Claim 23 depends from claim 22. Claim 25
`
`depends from claim 24. Claim 28 depends from claim 27. Claim 31
`
`depends from claim 29. We have considered Petitioner’s evidence on claims
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`3–6, 8, 10, 11, 14, 15, 21, 23, 25, 28, and 31 (Pet. 28–33), including the
`
`testimony of Mr. Parulski (Ex. 1008 ¶¶ 100–112, Table 1), and determine
`
`that the Petition establishes a reasonable likelihood that Petitioner would
`
`prevail on its assertion that dependent claims 3–6, 8, 10, 11, 14, 15, 21, 23,
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`25, 28, and 31 would have been obvious over Morita and Sarbadhikari.
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`15
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`Page 15 of 24
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`SAMSUNG EXHIBIT 1009
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`IPR2014-00989
`Patent 7,643,168 B2
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`4. Summary
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`Based on this record, we conclude that Petitioner has demonstrated a
`
`reasonable likelihood of prevailing on its challenge of claims 1–6, 8, 10, 11,
`
`13–15, 21–29 and 31 as obvious under 35 U.S.C. § 103 over Morita and
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`Sarbadhikari.
`
`B. Obviousness over Morita, Sarbadhikari and Longginou
`
`Petitioner contends that claims 16–18 of the ’168 patent would have
`
`been obvious under 35 U.S.C. § 103 over Morita, Sarbadhikari, and
`
`Longginou. Pet. 33–37. To support this position, Petitioner presents the
`
`testimony of Mr. Parulski. Ex. 1008 ¶¶ 114–123, Table 2. Id. at 3334.
`
`1. Longginou
`
`Longginou discloses a hand-held phone in multiple modes of
`
`operation based on different network communication protocols and
`
`standards, such as cellular, trunking, cordless, DGPS, etc. Ex. 1004,
`
`Abstract. A dual mode handset can incorporate technology from any two of
`
`the following communication protocols: GSM, MPT1327, Trunking Radio,
`
`AMPS, ETACS, TDMA, CDMA, PCN, CT1, CT2, CT3, DECT. Id. at
`
`10:27–11:7.
`
`2. Claims 16–18
`
`Claim 16 depends from claim 1 and, in pertinent part, recites
`
`additionally “at least one transmission protocol algorithm embodied in
`
`suitable media.” A processing platform executes the protocol so that the
`
`compressed visual image data is provided in a transmission format that is
`
`compatible with the mobile phone for wireless transmission. Ex. 1001,
`
`claim 16.
`
`16
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`Page 16 of 24
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`SAMSUNG EXHIBIT 1009
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`IPR2014-00989
`Patent 7,643,168 B2
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`Longginou discloses different communication protocols. Ex. 1004,
`
`10:27–11:7. Petitioner argues the limitation is met by Longginou’s
`
`disclosure of software in its handset, including a microprocessor, i.e.,
`
`“processing platform.” Pet. 35 (citing Ex. 1004, 12:19–23, 12:12–13.
`
`Petitioner contends both Morita and Sarbadhikari describe generating
`
`compressed image data. Id. (citing Ex. 1002, 3:24–25, Ex. 1003, 6:27–40),
`
`see also Ex. 1008 ¶¶ 119–121, Table 2.
`
`Claim 17 depends from claim 16 and, in pertinent part, recites
`
`additionally “the mobile phone being operable according to a specified
`
`wireless transmission protocol” that is compatible with the specified wireless
`
`transmission protocol. Petitioner asserts “Longginou discloses claim 17
`
`since it describes the ability to select a wireless protocol (Longginou, 1:21–
`
`22; 6:14–17; 14:7–8) such as GSM, AMPS, ETACS, MPT1327, Trunking
`
`Radio, TDMA and CDMA (Id. [at] Abstract; 1:21 to 2:4; 8:6–13; 10:27 [–]
`
`11:7) to communicate with another device.” Pet. 36. Petitioner further
`
`asserts the combination of Longginou with Morita and Sarbadhikari “would
`
`have provided a more versatile mobile phone, capable of communication in
`
`a wireless network (see also Ex. 1008, Par. 122).” Id.
`
`Claim 18 depends from claim 17 and further limits the “transmission
`
`protocol algorithm” of claims 16 and 17 by providing, in pertinent part,
`
`“compressed visual image data in a compatible format.” Petitioner relies on
`
`the discussion above regarding compression as taught by both Morita and
`
`Sarbadhikari to teach the limitation. Pet. 37; see also Ex. 1008 ¶ 123.
`
`Petitioner also provides rational underpinnings for combining
`
`Longginou with Morita and Sarbadhikari. Specifically the combination
`
`would “enable formatting of compressed image data to make it compatible
`
`17
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`Page 17 of 24
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`SAMSUNG EXHIBIT 1009
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`IPR2014-00989
`Patent 7,643,168 B2
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`with a particular transmission protocol (e.g., a wireless protocol such as
`
`GSM) for transmission to another device. Such functionality would have
`
`created a more versatile mobile phone, capable of sending and receiving
`
`voice and data through different communication networks.” Pet. 37 (citing
`
`Ex. 1008 ¶¶ 119-122).
`
`3. Summary
`
`Based on the foregoing, on this record, we conclude that Petitioner
`
`has demonstrated a reasonable likelihood of prevailing on its challenge of
`
`claims 16–18 as obvious under 35 U.S.C. § 103 over Morita, Sarbadhikari,
`
`and Longginou.
`
`C. Obviousness over Wilska and Yamagishi-992
`
`Petitioner contends that claims 1–6, 8, 10, 11, 16–18, 21, 22, 24, 26,
`
`27 and 29 of the ’168 patent are obvious under 35 U.S.C. § 103 over Wilska
`
`and Yamagishi-992. Pet. 37–57. To support this position, Petitioner
`
`presents the testimony of Mr. Parulski. Ex. 1008 ¶¶ 124–175, Table 3. Id.
`
`at 3738.
`
`1. Wilska
`
`Wilska discloses a hand-held device for personal communication, data
`
`collection, picture taking and data processing. Ex. 1005, Abstract. Wilska
`
`discloses a data processing unit which allows Wilska to act as a notebook
`
`computer. Id. at 3:22–4:4. Wilska includes a camera unit for collecting data
`
`for the computer. Id. at Abstract, 4:28–30; 5:9–10; 7:21–23. Wilska
`
`includes software that allows use of cellular phone services, data and/or
`
`speech transmission, facsimile services, electronic mail, short message
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`service (“SMS”), camera functions to record images, and other functions.
`
`Id. at 6:4–12.
`
`18
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`Page 18 of 24
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`SAMSUNG EXHIBIT 1009
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`IPR2014-00989
`Patent 7,643,168 B2
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`2. Yamagishi-992
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`Yamagishi-992 describes an information signal processing apparatus
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`with an electronic camera that allows capture, storage and transmission of
`
`images and sound. Ex. 1006, Abstract; 7:35–41. Yamagishi-992’s camera,
`
`as shown in Figure 43, includes basic camera components, as well as A/D
`
`converters, system controlling circuit, image-sound memory (3024),
`
`recording media (3100), compressing-expanding circuit, display devices
`
`(3038, 3054), audio output device, power supply, modem, and a set of
`
`switches (3056) for entering commands, selecting operational modes and
`
`executing various camera operations. Id. at 121:21–58. Three modes of
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`operation are disclosed: recording mode, reproduction mode, and
`
`transmission mode, which respectively allow selective capture, viewing and
`
`transmission of images and sound captured and stored by the device. Id. at
`
`122:23–126:3, Figs. 44–46. The device can be part of a portable telephone
`
`set and wirelessly transmits and receives control and data signals. Id. at
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`122:22–25, 147:3–13. Transmissions to an external device are via modem
`
`(3028) controlled by controlling circuit (3050). Id. at 118:58–119:6.
`
`3. Claims 1–6, 8, 10–11, 16–18,
`21–22, 24, 26–27 and 29
`
`The combination of Wilska and Yamagishi-992 is asserted against the
`
`same independent claims 1, 22, 24, 26, 27, and 29 as were Morita and
`
`Sarbadhikari, analyzed in section II.A above. As we did previously, we
`
`begin with claim 1. We are persuaded, on this record, that there is a
`
`reasonable likelihood that Petitioner will prevail in establishing that claim 1
`
`would have been obvious over the combination of Wilska and Yamagishi-
`
`992.
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`19
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`Page 19 of 24
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`SAMSUNG EXHIBIT 1009
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`IPR2014-00989
`Patent 7,643,168 B2
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`For example, Petitioner cites to Wilska as the principal reference to
`
`teach many of the elements of claim 1. See Pet. 38–44 (Preamble,
`
`limitations identified at B1, D1, and I1). Yamagishi-992 is relied on the
`
`remaining limitations. For example, claim 1 recites a ““media supported by
`
`the portable housing, the media being suitable to embody at least one
`
`compression algorithm.” Petitioner argues Yamagishi-992 teaches the
`
`limitation in its description of a compression circuit that uses an image
`
`compression algorithm. Pet. 41. Among other portions of Yamagishi-992,
`
`Petitioner points to Yamagishi-992’s adaptive discrete cosine transform
`
`(“ADCT”) algorithm “to compress digital image data that is produced by the
`
`image pickup device and the A/D converter.” Id. (citing Ex. 1006, 12:53–
`
`13:13; 119:38–52; Fig. 1, element 22; Fig. 43, element 3022).
`
`Petitioner asserts a person of ordinary skill in the art would have
`
`found it obvious, to combine the compression algorithm of Yamagishi-992
`
`and the memory of Wilska to store and subsequently read and execute the
`
`image compression algorithm, “since the use of compression would have
`
`reduced the storage space needed for storing images, as well as the
`
`bandwidth needed for transmission of images.” Pet. 42 (citing Ex. 1008 ¶¶
`
`138–140).
`
`Petitioner also uses the combination to show the limitation of claim 1
`
`that an “input device” retains the image in “digital format.” Wilsk
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