Paper No. __
`Filed: January 23, 2015
`
`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
`
`

`

`Petition for Inter Partes Review – Patent No. 7,643,168
`
`
`LIST OF EXHIBITS ................................................................................................ iv
`
`TABLE OF CONTENTS
`
`I.
`
`Introduction ...................................................................................................... 1
`
`II. Mandatory Notices Under 37 C.F.R. § 42.8 .................................................... 2
`
`A.
`
`B.
`
`C.
`
`Real Party-in-Interest ............................................................................ 2
`
`Related Matters ...................................................................................... 2
`
`Lead and Back-Up Counsel ................................................................... 4
`
`III. Payment of Fees Under 37 C.F.R. § 42.15(a) ................................................. 4
`
`IV. Requirements for Inter Partes Review Under 37 C.F.R. § 42.104 .................. 4
`
`A. Grounds for Standing ............................................................................ 5
`
`B.
`
`Identification of Challenge .................................................................... 5
`
`V.
`
`The ’168 Patent ................................................................................................ 6
`
`A. Overview of the ’168 Patent .................................................................. 6
`
`B.
`
`Prosecution History of the ’168 Patent ................................................. 8
`
`VI. Claim Construction .......................................................................................... 9
`
`A.
`
`“media being suitable to embody at least one compression
`algorithm” (Claim 1) ............................................................................. 9
`
`B.
`
`“commonly moving” (Claim 1) ...........................................................11
`
`VII. Detailed Explanation of Grounds for Unpatentability ..................................12
`
`A.
`
`Summary of the Prior Art ....................................................................12
`
`1. McNelley ...................................................................................12
`
`2.
`
`Sarbadhikari ..............................................................................13
`
`3. Morita ........................................................................................13
`
`
`
`
`
`i
`
`
`
`

`

`Petition for Inter Partes Review – Patent No. 7,643,168
`
`4. Wilska ........................................................................................14
`
`5.
`
`Yamagishi-992 ..........................................................................15
`
`B. Ground 1: McNelley and Sarbadhikari Render Obvious Claims
`19 and 20 .............................................................................................15
`
`1.
`
`2.
`
`Claim 19 ....................................................................................16
`
`Claim 20 ....................................................................................35
`
`C. Ground 2: Morita, Sarbadhikari, and McNelley Render Obvious
`Claims 19 and 20 .................................................................................36
`
`1.
`
`2.
`
`Claim 19 ....................................................................................37
`
`Claim 20 ....................................................................................45
`
`D. Ground 3: Wilska, Yamagishi-992, and McNelley Render
`Obvious Claims 19 and 20 ..................................................................46
`
`1.
`
`2.
`
`Claim 19 ....................................................................................47
`
`Claim 20 ....................................................................................57
`
`E.
`
`The Board Should Adopt All of the Proposed Grounds .....................58
`
`VIII. Conclusion .....................................................................................................60
`
`
`
`
`
`
`
`
`
`ii
`
`
`
`

`

`Petition for Inter Partes Review – Patent No. 7,643,168
`
`
`
`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) ..................................................................................................... 6
`
`35 U.S.C. § 103 .......................................................................................................... 5
`
`35 U.S.C. § 103(a) ................................................................................................... 12
`
`35 U.S.C. § 316(b) ................................................................................................... 60
`
`Other Authorities
`
`37 C.F.R. § 1.131 ....................................................................................................... 8
`
`37 C.F.R. § 42.1(b) .................................................................................................. 60
`
`37 C.F.R. § 42.8 ......................................................................................................... 2
`
`37 C.F.R. § 42.8(b)(1) ................................................................................................ 2
`
`37 C.F.R. § 42.15(a) ................................................................................................... 4
`
`37 C.F.R. § 42.104 ..................................................................................................... 4
`
`37 C.F.R. § 42.104(a) ................................................................................................. 5
`
`37 C.F.R. § 42.300(b) ................................................................................................ 9
`
`
`
`
`
`iii
`
`

`

`Petition for Inter Partes Review – Patent No. 7,643,168
`
`LIST OF EXHIBITS1
`U.S. Patent No 7,643,168 to Monroe
`
`JP Patent Application Pub. No. H06-133081 to Morita, an English-
`Language Translation, and a Certificate of Translation
`
`U.S. Patent No. 5,477,264 to Sarbadhikari et al.
`
`U.S. Patent No. 5,550,754 to McNelley et al.
`
`U.K. Patent Application Pub. No. GB 2289555 to Wilska et al.
`
`European Patent Application Pub. No. 0594992 to Yamagishi
`
`Declaration of Dr. Alan Bovik
`
`Curriculum Vitae of Dr. Alan Bovik
`
`HTC Corp. v. e-Watch, Inc., IPR2014-00989, Institution Decision,
`Paper No. 6 (Dec. 9, 2014)
`
`HTC Corp. v. e-Watch, Inc., IPR2014-00989, Petition, Paper No. 1
`(June 19, 2014)
`
`Excerpts from Microsoft Computer Dictionary (2nd ed. 2002)
`
`Office Action mailed Oct. 4, 2007, in U.S. Patent Application No.
`11/617,509
`
`Response to Non-Final Office Action dated Jan. 4, 2008, in U.S.
`Patent Application No. 11/617,509
`
`Final Office Action mailed Dec. 12, 2008, in U.S. Patent Application
`No. 11/617,509
`
`Response to Final Office Action dated March 13, 2009, in U.S.
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1 Citations to non-patent publications are to the page numbers of the publication
`
`and citations to patent publications are to column:line or page:line numbers.
`
`
`
`iv
`
`

`

`Petition for Inter Partes Review – Patent No. 7,643,168
`
`Patent Application No. 11/617,509
`
`1016
`
`
`
`Notice of Allowance mailed Nov. 16, 2009, in U.S. Patent
`Application No. 11/617,509
`
`
`
`
`
`
`
`v
`
`

`

`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 19 and 20 of U.S.
`
`Patent No. 7,643,168 (“the ’168 patent”) (Ex. 1001), which is assigned to e-Watch,
`
`Inc. (“Patent Owner”). This Petition shows, by a preponderance of the evidence,
`
`that there is a reasonable likelihood that Petitioner will prevail on claims 19 and 20
`
`of the ’168 patent based on prior art that the U.S. Patent Office (“PTO”) did not
`
`have before it or did not fully consider during prosecution, and that renders
`
`obvious claims 19 and 20 of the ’168 patent.
`
`In particular, claim 19 depends from independent claim 1, and claim 20
`
`depends from claim 19. Just recently, the Board instituted trial on claim 1 and
`
`some of the other claims of the ’168 patent based on a petition filed by HTC
`
`Corporation and HTC America, Inc. (collectively, “HTC”) in IPR2014-00989.2
`
`See, e.g., Ex. 1009 at 23. The Board’s decision, however, did not address
`
`dependent claims 19 and 20 because HTC’s petition did not challenge those
`
`claims. But as demonstrated below, the prior art that formed the basis for the
`
`Board’s decision also renders obvious claims 19 and 20, which merely recite well-
`
`known features related to rudimentary positioning and movability of components
`
`2 On January 7, 2015, Petitioner filed a petition that substantially copies the
`
`grounds raised in HTC’s petition. See IPR2015-00543.
`
`
`
`1
`
`

`

`Petition for Inter Partes Review – Patent No. 7,643,168
`
`of the housing recited in claim 1. Thus, claims 19 and 20 of the ’168 patent should
`
`be found unpatentable and canceled.
`
`II. Mandatory Notices Under 37 C.F.R. § 42.8
`A. Real Party-in-Interest
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner identifies Samsung Electronics
`
`Co., Ltd. and Samsung Electronics America, Inc. as the real parties-in-interest.
`
`B. Related Matters
`Patent Owner has asserted the ’168 patent and U.S. Patent No. 7,365,871
`
`(“the ’871 patent”), which is a parent of the ’168 patent, against Samsung
`
`Electronics Co., Ltd. and Samsung Telecommunications America, LLC in a patent
`
`litigation filed on December 9, 2013, in the U.S. District Court for the Eastern
`
`District of Texas (case no. 2:13-cv-01062).3 Patent Owner has also asserted the
`
`’168 patent and ’871 patent against other entities in nine other lawsuits in the
`
`Eastern District of Texas (case nos. 2:13-cv-01061, -01063, -01064, -01069,
`
`-01070, -01071, -01072, -01073, -01074, -01075, -01076, -01077, and -01078).
`
`These litigations have been consolidated and case no. 2:13-cv-01061 has been
`
`designated as the lead case.
`
`
`3 Effective January 1, 2015, Samsung Telecommunications America, LLC (“STA”)
`
`merged into Samsung Electronics America, Inc., and STA ceased to exist as a
`
`separate corporate entity.
`
`
`
`2
`
`

`

`Petition for Inter Partes Review – Patent No. 7,643,168
`
`Several petitions for inter partes review have been filed challenging the ’168
`
`and ’871 patents. Regarding the ’168 patent, as noted above, 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). On January 7, 2015, Petitioner
`
`filed a petition that substantially copies the grounds raised in HTC’s petition,
`
`which were adopted by the Board, along with a motion for joinder. See IPR2015-
`
`00543. This Petition challenges the claims not challenged in HTC’s petition (i.e.,
`
`claims 19 and 20). Other entities have also filed petitions for inter partes review
`
`of the ’168 patent (IPR2015-00401, IPR2015-00407, IPR2015-00408, and
`
`IPR2015-00414). Petitioner is filing concurrently herewith a petition that
`
`substantially copies the petition filed in IPR2015-00414. These matters remain
`
`pending.
`
`As for the ’871 patent, 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 August 4, 2014, based on a petition filed by
`
`Iron Dome LLC on February 18, 2014 (IPR2014-00439). On January 7, 2015,
`
`Petitioner filed a petition that substantially copies the ground in HTC’s petition
`
`that was adopted by the Board, along with a motion for joinder. See IPR2015-
`
`00541. Petitioner is filing concurrently herewith another petition challenging the
`
`claims not challenged in HTC’s petition. Other entities have also filed petitions for
`
`
`
`3
`
`

`

`Petition for Inter Partes Review – Patent No. 7,643,168
`
`
`inter partes review of the ’871 patent (IPR2015-00402, IPR2015-00404, IPR2015-
`
`00406, IPR2015-00411, IPR2015-00412, and IPR2015-00413). Petitioner is filing
`
`concurrently herewith a petition that substantially copies the petition filed in
`
`IPR2015-00411. These matters remain pending.
`
`C. Lead and Back-Up Counsel
`Lead counsel is Steven L. Park (Reg. No. 47,842), Paul Hastings LLP, 1170
`
`Peachtree Street, NE, Suite 100, Atlanta, GA 30309, Telephone: (404) 815-2223,
`
`Fax: (404) 685-5223, E-mail: stevenpark@paulhastings.com; and back-up counsel
`
`is Naveen Modi (Reg. No. 46,224), Paul Hastings LLP, 875 15th St. N.W.,
`
`Washington, D.C., 20005, Telephone: 202.551.1700, Fax: 202.551.1705, Email:
`
`naveenmodi@paulhastings.com; and Elizabeth L. Brann (Reg. No. 63,987), Paul
`
`Hastings LLP, 4747 Executive Drive, 12th Floor, San Diego, CA 92121,
`
`Telephone: (858) 458-3014, Fax: (858) 458-3114, E-mail:
`
`elizabethbrann@paulhastings.com.
`
`III. Payment of Fees Under 37 C.F.R. § 42.15(a)
`The required fees are submitted herewith. The PTO is authorized to charge
`
`any additional fees due at any time during this proceeding to Deposit Account No.
`
`50-2613.
`
`IV. Requirements for Inter Partes Review Under 37 C.F.R. § 42.104
`This Petition complies with all the requirements of 37 C.F.R. § 42.104.
`
`
`
`4
`
`

`

`Petition for Inter Partes Review – Patent No. 7,643,168
`
`
`A. Grounds for Standing
`Petitioner certifies that, under 37 C.F.R. § 42.104(a), the ’168 patent is
`
`available for inter partes review, and that Petitioner is not barred or estopped from
`
`requesting inter partes review of the ’168 patent on the grounds identified.
`
`Identification of Challenge
`
`B.
`Petitioner respectfully requests review of claims 19 and 20 of the ’168
`
`patent, and cancellation of these claims as unpatentable, based on the following
`
`grounds:
`
`Ground 1: Claims 19 and 20 are obvious under 35 U.S.C. § 103 over U.S.
`
`Patent No. 5,550,754 to McNelley et al. (“McNelley”) (Ex. 1004) and U.S. Patent
`
`No. 5,477,264 to Sarbadhikari et al. (“Sarbadhikari”) (Ex. 1003);
`
`Ground 2: Claims 19 and 20 are obvious under 35 U.S.C. § 103 over JP
`
`Patent Application Pub. No. H06-133081 to Morita (“Morita”) (Ex. 1002)4,
`
`Sarbadhikari, and McNelley; and
`
`Ground 3: Claims 19 and 20 are obvious under 35 U.S.C. § 103 over U.K.
`
`Patent Application Pub. No. GB 2289555 to Wilska et al. (“Wilska”) (Ex. 1005),
`
`
`4 Ex. 1002 includes the Japanese application publication, an English-language
`
`translation, and a Certificate of Translation. Citations in this Petition are to the
`
`English-language translation.
`
`
`
`5
`
`

`

`Petition for Inter Partes Review – Patent No. 7,643,168
`
`
`European Patent Application Pub. No. 0594992 to Yamagishi (“Yamagishi-992”)
`
`(Ex. 1006), and McNelley.
`
`All of the references mentioned above are prior art to the ’168 patent under
`
`35 U.S.C. § 102(b). Specifically, the ’168 patent attempts to claim priority to U.S.
`
`Patent Application No. 10/336,470, filed on January 3, 2003, which matured into
`
`the ’871 patent, and U.S. Patent Application No. 09/006,073, filed on January 12,
`
`1998, which is now abandoned. Ex. 1001 at Cover Page, 1:6-12. Although
`
`Petitioner disagrees that the ’168 patent is entitled to a priority date of January 12,
`
`1998, Petitioner has assumed January 12, 1998, as the priority date for purposes of
`
`this Petition. Yamagishi-992 published on May 4, 1994, Morita published on May
`
`13, 1994, Wilska published on November 22, 1995, Sarbadhikari issued on
`
`December 19, 1995, and McNelley issued on August 27, 1996. Therefore, these
`
`references are prior art to the ’168 patent at least under 35 U.S.C. § 102(b) because
`
`they all issued or published more than one year before the earliest possible priority
`
`date of January 12, 1998.
`
`V. The ’168 Patent
`A. Overview of the ’168 Patent
`The ’168 patent describes an image capture, conversion, compression,
`
`storage, and transmission system. Ex. 1001 at Abstract; Ex. 1009 at 2. The system
`
`includes a camera and a transmission device; the camera captures an image that is
`
`
`
`6
`
`

`

`Petition for Inter Partes Review – Patent No. 7,643,168
`
`
`transmitted to another device using, for example, cellular transmission, radio
`
`signal, satellite transmission, or hard line telephonic transmission. Ex. 1001 at
`
`5:66-6:5; Ex. 1009 at 2; Ex. 1007, ¶¶ 15-16. Captured images can be from a digital
`
`or analog camera or a video camera (e.g., a camcorder). Ex. 1001 at 2:37-39; Ex.
`
`1009 at 2; Ex. 1007, ¶ 15.
`
`Fig. 4 of the ’168 patent illustrates the data path after an image is captured
`
`by the camera 10 and conditioned by the gray scale bit map 16. Ex. 1001 at 7:65-
`
`8:41; Ex. 1009 at 3. The device includes a memory 46, an optional viewer 48, and
`
`a format select interface switch 60 that permits automated or manual selection of
`
`the transmitting protocol, such as a Group-III facsimile format, a PC modem
`
`protocol, a wavelet compressor, or others. Ex. 1001 at 7:65-8:41; Ex. 1009 at 3;
`
`Ex. 1007, ¶ 16. Depending on the selected protocol, the signal output is generated
`
`and provided to a communications interface module 83 for transmission. Ex. 1001
`
`at 7:65-8:41; Ex. 1009 at 3; Ex. 1007, ¶¶ 15-16.
`
`The ’168 patent includes thirty-one claims, six of which are independent
`
`(i.e., claims 1, 22, 24, 26, 27, and 29). The claims are generally directed to
`
`apparatuses or mobile handsets that include a portable housing “being wireless”
`
`and including, among other things, an image collection device (e.g., a camera), a
`
`display, a processing platform (e.g., including a processor) that performs data
`
`compression, memory, an input device, and a mobile phone providing wireless
`
`
`
`7
`
`

`

`Petition for Inter Partes Review – Patent No. 7,643,168
`
`
`transmission of compressed digital image data. Ex. 1007, ¶ 17. Dependent claims
`
`19 and 20, which depend from claim 1, are the only claims that are at issue in this
`
`Petition.
`
`Prosecution History of the ’168 Patent
`
`B.
`The ’168 patent was filed on December 28, 2006, as a continuation of U.S.
`
`Patent Application No. 10/336,470, filed on January 3, 2003, which matured into
`
`the ’871 patent. The prosecution history of the ’168 patent was brief. The first
`
`office action was mailed on October 4, 2007. Ex. 1012. In response, the applicant
`
`cancelled all pending claims and added new claims, without argument. Ex. 1013.
`
`The examiner rejected the newly added claims in a final office action mailed on
`
`December 12, 2008. Ex. 1014. The applicant then submitted an affidavit under 37
`
`C.F.R. § 1.131 to swear behind the references cited by the examiner, which
`
`resulted in allowance. Ex. 1015; Ex. 1016. The examiner did not, however,
`
`consider other prior art that discloses the subject matter of claims 19 and 20 of the
`
`’168 patent, such as the prior art references discussed herein, which predate the
`
`earliest effective filing date of the ’168 patent by more than a year and therefore
`
`cannot be antedated. The examiner also did not have the other evidence presented
`
`in this Petition.
`
`
`
`8
`
`

`

`Petition for Inter Partes Review – Patent No. 7,643,168
`
`
`VI. Claim Construction
`A claim subject to inter partes review receives the “broadest reasonable
`
`construction in light of the specification of the patent in which it appears.” 37
`
`C.F.R. § 42.300(b). The ’168 patent has not expired. Thus, for purposes of this
`
`proceeding, the claims of the ’168 patent should be given their broadest reasonable
`
`construction. Any term not construed herein should be interpreted in accordance
`
`with its plain and ordinary meaning under the broadest reasonable construction.
`
`Given the different claim construction standards used by the PTO and district
`
`courts, Petitioner expressly reserves the right to argue a different construction for
`
`any term during litigation.5
`
`A.
`
`“media being suitable to embody at least one compression
`algorithm” (claim 1)
`
`Claim 1 recites “media being suitable to embody at least one compression
`
`algorithm.” In IPR2014-00989, HTC proposed that the broadest reasonable
`
`interpretation of “media being suitable to embody . . . algorithm” in claim 1 and
`
`related terms in other claims is “media that can embody an algorithm, in hardware
`
`form, software form or a combination of hardware and software forms.” Ex. 1010
`
`at 5-6. The Board in IPR2014-00989 did not adopt this exact interpretation, but
`
`instead adopted a similar interpretation of this term: “a storage device for storing
`
`software to perform, among other functions, image compression and storage of
`
`
`5 Petitioner reserves all other arguments, such as § 112 arguments, for litigation.
`9
`
`
`
`

`

`Petition for Inter Partes Review – Patent No. 7,643,168
`
`
`transmission protocols.” Ex. 1009 at 6-7. For purposes of this proceeding,
`
`Petitioner uses the Board’s interpretation of this term in IPR2014-00989.
`
`As the Board explained in IPR2014-00989, the specification of the ’168
`
`patent “describes how an image captured by camera 10 is stored on any one of a
`
`variety of memory devices for storage,” such as “writeable optical media.” Id. at 7
`
`(quoting Ex. 1001, 7:24-31). The specification also uses “‘circuit’ or ‘circuitry’
`
`more than 30 times to refer to various components that perform the disclosed
`
`functionalities.’” Ex. 1009 at 7 (quoting Ex. 1010 at 6). Otherwise, the
`
`specification does not include the word “media” in the context of the claimed
`
`invention. Nor does it describe or define the word “algorithm.” Ex. 1009 at 7.
`
`As noted by the Board, dictionaries available at the time of the alleged
`
`invention defined “‘[m]edia’ . . . as ‘[T]he physical material, such as paper, disk,
`
`and tape, used for storing computer-based information’” and “‘algorithm’ as ‘[A]
`
`finite sequence of steps for solving a logical or mathematical problem or
`
`performing a task.’” Id. at 7 (quoting Ex. 1011 at 28, 420). The Board also noted
`
`that “[i]n 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.” Ex. 1009 at 7 (citing Med. Instrumentation & Diagnostics Corp. v.
`
`Elekta AB, 344 F.3d 1205, 1214 (Fed.Cir.2003)).
`
`
`
`10
`
`

`

`Petition for Inter Partes Review – Patent No. 7,643,168
`
`
`Thus, for purposes of this proceeding, Petitioner proposes that the broadest
`
`reasonable interpretation of the “media” terms is “a storage device for storing
`
`software to perform, among other functions, image compression and storage of
`
`transmission protocols,” as adopted by the Board in IPR2014-00989. Petitioner
`
`notes, however, that of the claims at issue in this petition, only claim 1 recites the
`
`“media” term, i.e., “media being suitable to embody at least one compression
`
`algorithm.” Therefore, this term should be construed as “a storage device for
`
`storing software to perform, among other functions, image compression,” as
`
`adopted by the Board in IPR2014-00989. Petitioner also notes that the prior art
`
`analysis provided by HTC meets both HTC’s interpretation and the Board’s
`
`interpretation, as evidenced by the Board’s institution of trial in IPR2014-00989.
`
`“commonly moving” (claim 1)
`
`B.
`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.” In IPR2014-00989, HTC did not propose
`
`an interpretation of “commonly moving” in claim 1 and other claims.
`
`Nevertheless, the Board found that the broadest reasonable interpretation of this
`
`term is “that the movement of the portable housing causes movement of the image
`
`collection device or display.” Ex. 1009 at 8. As noted by the Board, the
`
`specification of “the ’168 patent does not use the phrase ‘commonly moving’” and
`
`
`
`11
`
`

`

`Petition for Inter Partes Review – Patent No. 7,643,168
`
`
`this interpretation is consistent with “the use of ‘commonly moving’ in the claims
`
`of the patent.” Id.
`
`Therefore, for purposes of this proceeding, Petitioner uses the Board’s
`
`interpretation of this term in IPR2014-00989. Petitioner notes, however, that the
`
`prior art analysis provided by HTC meets the Board’s interpretation, as evidenced
`
`by the Board’s institution of trial in IPR2014-00989.
`
`VII. Detailed Explanation of Grounds for Unpatentability
`As explained in detail below, 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.
`
`A.
`
`Summary of the Prior Art
`1. McNelley
`McNelley describes a telecamcorder, which is a combination portable
`
`recording video camera and video-conferencing device that can video conference
`
`over a telephone network. Ex. 1004 at Abstract; Ex. 1007, ¶¶ 26-28. The
`
`communication electronics of the device establish a connection over a wireless
`
`network to transmit video/audio signals from the device while presenting
`
`video/audio signals received from the remote party. Ex. 1004 at Abstract, 14:16-
`
`37; Ex. 1007, ¶¶ 26-27. The device (e.g., Ex. 1004 at Figs. 8-9) includes an
`
`integrated phone and camera, including a microphone, speaker, and antenna for
`
`transmission/reception of images/sound (id. at 6:35-7:24), a display (100) and a
`12
`
`
`
`

`

`Petition for Inter Partes Review – Patent No. 7,643,168
`
`
`viewfinder (166) (id.), which can be separate components, or a single display as a
`
`viewfinder and a teleconferencing display (id. at 7:2-24). Ex. 1007, ¶ 27.
`
`Sarbadhikari
`2.
`Sarbadhikari describes an electronic camera for capturing and storing
`
`images. Ex. 1003 at Abstract; Ex. 1007, ¶¶ 30-31. The camera has an optical
`
`section, an A/D converter, image buffers, image memory, and processors for
`
`controlling image capture operations and processing the captured images. Ex.
`
`1003 at 5:55-6:26, Fig. 2; Ex. 1007, ¶¶ 30-31. The device also includes memory
`
`for storing algorithms, including compression algorithms, such as a JPEG, that are
`
`retrieved by the processor to perform image compression. Ex. 1003 at 6:26-40,
`
`Fig. 2 (element 28); Ex. 1007, ¶¶ 30-31. The camera can be uploaded with
`
`modified or updated algorithms. Ex. 1003 at 4:47-5:40; Ex. 1007, ¶ 31.
`
`3. Morita
`Morita describes a camera-phone that captures and processes images, saves
`
`image data in memory, and transmits image data to another device through a
`
`wireless channel. Ex. 1002 at 4:17-26, 5:16-6:7, 7:1-6; Ex. 1007, ¶ 33. The
`
`camera includes a lens, an image sensing device, an A/D converter, image
`
`processing and image encoding circuits, a display, and modulation-demodulation
`
`and transmitter-receiver components integrated in the device. Ex. 1002 at 2:20-
`
`3:5, 3:17-4:3, 6:1-7, Figs. 1, 10-11; Ex. 1007, ¶ 33. Some components are fixedly
`
`
`
`13
`
`

`

`Petition for Inter Partes Review – Patent No. 7,643,168
`
`
`integrated into the device (Ex. 1002 at 7:17-16, Fig. 2(a)); some components (e.g.,
`
`display, microphone, camera, etc.) are movable and/or removable (id. at 11:21-
`
`12:8, 12:10-25, Figs. 4, 5(a), (b)).
`
`4. Wilska
`Wilska describes a hand-held device for personal communication, data
`
`collection, picture taking and data processing. Ex. 1005 at Abstract; Ex. 1007, ¶¶
`
`35-37. Figures 1-3 illustrate components 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), memory unit(s) (13), a power source (3), and an application software.
`
`Ex. 1005 at Abstract; Ex. 1007, ¶¶ 35-36. A camera unit (14) is implemented as a
`
`fixed or a removable (e.g., a PCMCIA card) component (Ex. 1005 at Abstract,
`
`4:28-30, 5:9-10, 7:21-23), and includes a camera (14a) (e.g., a CCD or an image
`
`sensor) and an optics (14b) section (id. at Abstract, 7:9-10). Ex. 1007, ¶ 37.
`
`Figure 5 provides details of the camera unit. Wilska’s device also includes
`
`software that allows use of cellular phone services, data and/or speech
`
`transmission, facsimile services, electronic mail, short message service (SMS),
`
`camera functions to record images, and other functions. Ex. 1005 at 6:4-12; Ex.
`
`1007, ¶ 36.
`
`
`
`14
`
`

`

`Petition for Inter Partes Review – Patent No. 7,643,168
`
`
`Yamagishi-992
`5.
`Yamagishi-992 describes an information signal processing apparatus with an
`
`electronic camera that allows capture, storage and transmission of images and
`
`sound. Ex. 1006 at Abstract, 7:35-41; Ex. 1007, ¶ 39. Figure 43 shows the device
`
`includes a lens (3010), a shutter (3012), a microphone, 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. Ex. 1006 at
`
`121:21-58. Three modes of 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. See, e.g.,
`
`id. at 122:23-126:3, Figs. 44-46. The device can be part of a portable telephone set
`
`and can use a wireless line for transmission and reception of control and data
`
`signals. Id. at 122:22-25, 147:3-13; Ex. 1007, ¶ 39. Transmissions to an external
`
`device are via a modem (3028) controlled by controlling circuit (3050). Ex. 1006
`
`at 118:58-119:6; Ex. 1007, ¶ 39.
`
`B. Ground 1: McNelley and Sarbadhikari Render Obvious Claims 19
`and 20
`McNelley and Sarbadhikari render obvious claims 19 and 20 of the ’168
`
`patent. Ex. 1007, ¶¶ 40-99. In particular, the combination of McNelley and
`
`
`
`15
`
`

`

`Petition for Inter Partes Review – Patent No. 7,643,168
`
`
`Sarbadhikari discloses or suggests all of the limitations of claim 1, from which
`
`claim 19 depends, as well as the limitations of claims 19 and 20. Id. Indeed, the
`
`Board adopted a ground for unpatentability presented by HTC in its petition for
`
`inter partes review in IPR2014-00989 that is based on a prior art combination that
`
`includes these references, among others. Ex. 1010 at 57-59; Ex. 1009 at 21-23.
`
`Moreover, as explained in detail below, a person of ordinary skill in the art
`
`at the time of the alleged invention (“POSITA”) would have been motivated, or
`
`would have found it obvious, to combine the teachings of McNelley and
`
`Sarbadhikari. For instance, these references are in the same technical field, and
`
`address similar issues by disclosing portable handheld devices that function as
`
`digital cameras, and include similar components to capture, store, process, and
`
`display images. See supra Part VII.A.
`
`Claim 19
`
`1.
`Because claim 19 depends from claim 1, claim 19 includes all of the
`
`limitations of claim 1. Therefore, an analysis of both claim 1 and claim 19 is
`
`provided below.
`
`CLAIM 1: recites “Apparatus comprising: [Element A1] a portable
`
`housing, the portable housing being wireless.” McNelley discloses these features
`
`of claim 1. Ex. 1007, ¶¶ 42-46. For example, McNelley describes “[a] camcorder
`
`(telecamcorder),” which contains “an integral video-phone capable of receiving
`
`
`
`16
`
`

`

`Petition for Inter Partes Review – Patent No. 7,643,168
`
`
`and sending teleconferencing signals and includes a built-in display to view an
`
`incoming teleconferencing signal and a video pickup device that can produce an
`
`image of the operator for transmission during teleconferencing.” Ex. 1004 at 5:1-
`
`9; see also id. at Abstract, 1:6-11