Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 7
`Entered: July 24, 2015
`
`
`
`
`
`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.
`____________
`
`Case IPR2015-00607
`Patent 7,643,168 B2
`____________
`
`Before JAMESON LEE, GREGG I. ANDERSON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 7
`Entered: July 24, 2015
`
`
`
`
`
`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.
`____________
`
`Case IPR2015-00607
`Patent 7,643,168 B2
`____________
`
`Before JAMESON LEE, GREGG I. ANDERSON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`IPR2015-00607
`Patent 7,643,168 B2
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`
`I. INTRODUCTION
`
`Samsung Electronics, Co., Ltd. and Samsung Electronics America,
`
`Inc. (“Samsung” or “Petitioner”) filed a Petition requesting inter partes
`
`review of claims 19 and 20 of U.S. Patent No. 7,643,168 B2 (Ex. 1001, “the
`
`’168 patent”) (“Pet.,” Paper 1). On May 7, 2015, e-Watch, Inc. (“Patent
`
`Owner”), filed a Preliminary Response (“Prelim. Resp.,” Paper 6). We have
`
`jurisdiction under 35 U.S.C. § 314.
`
`For the reasons explained below, we institute an inter partes review of
`
`claims 19 and 20 of the ’168 patent. We have not yet made a final
`
`determination with respect to the patentability of any claim.
`
`A. Related proceedings
`
`Patent Owner has asserted the ’168 patent and related U.S. Patent No.
`
`7,365,871 (“the ’871 patent”) against Petitioner in Case No. 2:13-cv-01062,
`
`filed in the Eastern District of Texas on December 9, 2013. Pet. 2; Paper 5,
`
`2–3. Patent Owner has filed several other lawsuits asserting the ’168 and
`
`’871 patents 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). Pet. 2; Paper 5, 2–3
`
`(not separately listing -1069, -1070, and -1072).
`
`In addition to the present proceeding, petitions for inter partes review
`
`of the ’168 patent have been filed as follows: IPR2014-00989 (instituted
`
`and joined with IPR2015-00543, filed by Petitioner, “the ’989 IPR”);
`
`IPR2015-00401; IPR2015-00407; IPR2015-00408; and IPR2015-00414. Id.
`
`Petitioner has filed a separate petition for inter partes review, IPR2015-
`
`2
`
`
`
`IPR2015-00607
`Patent 7,643,168 B2
`
`00611, which substantially copies IPR2015-00414.1 Pet. 3–4; Paper 5, 3–4.
`
`Separate petitions for inter partes review of the related ’871 patent2 have
`
`been filed as follows: IPR2014-00439; IPR2014-00987 (instituted and
`
`joined with IPR2015-00541); IPR2015-00402; IPR2015-00404; IPR2015-
`
`00406; IPR2015-00411; IPR2015-00412; and IPR2015-00413; IPR2015-
`
`00610; and IPR2015-00612. Pet. 3–4; Paper 5, 3–5.
`
`B. 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
`
`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 Case No. IPR2015-00611 has been instituted and joined with IPR2015-
`00414.
`2 The ’168 patent is a continuation of the ’871 patent. Ex. 1001, at [63].
`
`3
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`IPR2015-00607
`Patent 7,643,168 B2
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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.
`
`The device includes memory 46, optional viewer 48, and 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. Id. Depending on the selected
`
`protocol, the signal output is generated and provided to communications
`
`interface module 83 for transmission. Id.
`
`C. Claims
`
`Challenged claim 19 is dependent on independent claim 1 and
`
`challenged claim 20 is dependent on claim 19. Claims 1, 19, and 20 are
`
`reproduced below:
`
`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;
`
`4
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`
`
`IPR2015-00607
`Patent 7,643,168 B2
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`
`a display supported by the portable housing, the display
`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.
`
`
`19. The apparatus according to claim 1 and further
`comprising:
`
`5
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`IPR2015-00607
`Patent 7,643,168 B2
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`
`the portable housing including a first housing section, the
`image collection device being supported by the [first]3 housing
`section,
`the portable housing including a second housing section,
`the display being supported by the second housing section,
`the first housing section being adjoined to the second
`housing section,
`the second housing section being movable in common
`with the first housing section when the first housing section is
`moved by the user,
`the first housing section being movable in common with
`the second housing section when the second housing section is
`moved by the user,
`the first housing section being supported for movement
`relative to the second housing section,
`the image collection device being movable in common
`with the first housing section relative to the display when the
`first housing section is moved relative to the second housing
`section.
`
`Ex. 1001, 17:34–56.
`
`
`20. The apparatus according to claim 19 and further
`comprising:
`the first housing section being supported for pivotal
`movement relative to the second housing section about a pivot
`axis.
`
`
`Ex. 1001, 17:57–61.
`
`D. References relied upon
`
`Petitioner relies on the following references. Pet. 5–6.
`
`Reference
`
`Morita4
`
`Description
`
`Publication or
`Issue Date
`JP H06-133081 May 13, 1994
`
`Exhibit No.
`
`Ex. 1002
`
`
`3 The printed claim recites “rust.” Petitioner assumes, as do we, for
`purposes of this Decision that “first” is the correct word. See Pet. 30 n.6.
`
`6
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`
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`IPR2015-00607
`Patent 7,643,168 B2
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`Sarbadhikari
`
`US 5,477,264
`
`Dec. 19, 1995
`
`McNelley
`Wilska
`
`Aug. 27, 1996
`US 5,550,754
`GB 2,289,555 A Nov. 22, 1995
`
`Yamagishi-992 EP 0 594 992 A1 May 4, 1994
`
`Ex. 1003
`
`Ex. 1004
`Ex. 1005
`
`Ex. 1006
`
`
`
`E. Asserted grounds of unpatentability
`
`Petitioner challenges claims 19 and 20 of the ’168 patent as
`
`unpatentable on the following grounds. Pet. 5–6, 16–58.
`
`Reference(s)
`McNelley and Sarbadhikari
`Morita, Sarbadhikari, and McNelley
`Wilska, Yamagishi-992, and
`McNelley
`
`
`Claims Challenged
`Basis
`§ 103(a) 19 and 20
`§ 103(a) 19 and 20
`§ 103(a) 19 and 20
`
`F. Claim construction
`
`In inter partes review, claim terms are given their broadest reasonable
`
`interpretation in light of the specification in which they appear. See
`
`37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, No. 2014-1301, slip
`
`op. at 16–19 (Fed. Cir. July 8, 2015). Petitioner identifies two terms for
`
`construction. Pet. 9–12. Patent Owner’s Preliminary Response does not
`
`include any proposals.
`
`1. “media being suitable to embody . . . algorithm”
`
`We interpreted the term “media being suitable to embody . . .
`
`algorithm” in the ’989 IPR. HTC Corp. v. e-Watch, Inc., IPR2014-00989,
`
`slip op. at 6–8 (PTAB Dec. 9, 2014) (Paper 6). As noted above, the ’989
`
`4 Petitioner includes the Japanese application publication, an English-
`language translation, and a Certificate of Translation. Ex. 1002. Citations in
`the Petition and in this Decision are to the English-language translation. See
`Pet. 5.
`
`7
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`
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`IPR2015-00607
`Patent 7,643,168 B2
`
`IPR also involves the ’168 patent. For purposes of this proceeding,
`
`Petitioner adopts our construction from the ’989 IPR, i.e., “a storage device
`
`for storing software to perform, among other functions, image compression
`
`and storage of transmission protocols.” Pet. 11.
`
`The ’168 patent Specification does not describe explicitly the term
`
`“media being suitable to embody at least one compression algorithm.” The
`
`Specification does describe how an image captured by camera 10 is stored
`
`on any one of a variety of memory devices for storage. Ex. 1001, 7:24–31.
`
`One described memory device is “writeable optical media.” Id. at 7:31. The
`
`Specification otherwise does not include the word “media” in the context of
`
`the claimed invention. The Specification neither describes nor defines
`
`“algorithm.”
`
`“Media” is defined as “the physical material, such as paper, disk, and
`
`tape, used for storing computer-based information.” MICROSOFT COMPUTER
`
`DICTIONARY 332 (2d ed. 2002). Ex. 3001. The 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 23.
`
`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 adopt our construction from the ’989 IPR as also
`
`proposed by Petitioner. ’989 IPR, Decision on Institution at 7–8.
`
`2. “commonly moving”
`
`As with “media being suitable to embody . . . algorithm,” the term
`
`“commonly moving” was construed in the ’989 IPR. ’989 IPR, Decision on
`
`8
`
`
`
`IPR2015-00607
`Patent 7,643,168 B2
`
`Institution at 8. Petitioner adopts our construction from the ’989 IPR, i.e.,
`
`“that the movement of the portable housing causes movement of the image
`
`collection device or display.” Pet. 11 (citing ’989 IPR, Decision on
`
`Institution 8).
`
`Claim 1, for example, 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.” We have rephrased our interpretation in some of the
`
`related IPRs and now interpret “commonly move” in the context of claims 1,
`
`19, and 20 to mean that movement of the portable housing moves the image
`
`collection device and movement of the portable housing moves the display.
`
`II. ANALYSIS
`
`A. 35 U.S.C. § 325(d)
`
`Patent Owner asserts that there are a total of eight IPR petitions filed
`
`asserting unpatentability of the claims of the ’168 patent. Prelim. Resp. 1–3.
`
`Patent Owner also alleges the prior art relied on in this Petition was cited in
`
`the ’989 IPR and was also cited in invalidity contentions filed in the district
`
`court litigation. Id. at 3. Patent Owner argues the prior art cited is
`
`cumulative and redundant. Id. at 4 (citing Ex. 2001). Patent Owner asks us
`
`to exercise our discretion under 35 U.S.C. § 325(d) and deny institution. Id.
`
`at 3.
`
`Each of the proceedings includes a different petitioner and includes
`
`grounds additional to those asserted here. We need to be cognizant of the
`
`9
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`IPR2015-00607
`Patent 7,643,168 B2
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`interests of other petitioners as well as those of Patent Owner. Accordingly,
`
`we decline to exercise our discretion under § 325(d) to reject this Petition.
`
`B. Obviousness of Claims 19 and 20 Over McNelley and Sarbadhikari
`
`Petitioner contends that claims 19 and 20 of the ’168 patent would
`
`have been obvious under 35 U.S.C. § 103 over McNelley and Sarbadhikari.
`
`Pet. 15–36. To support this position, Petitioner presents the testimony of Dr.
`
`Alan Bovik (“Bovik Declaration,” Ex. 1007 ¶¶ 40–99).
`
`1. McNelley
`
`McNelley discloses a combination portable recording video camera
`
`and video-conferencing device or “telecamcorder” that can video conference
`
`over a telephone network. Ex. 1004, Abstract, 5:1–7. The device includes
`
`an integrated phone and a camera, microphone, speaker and antenna for
`
`transmission/reception of images/sound. Id. at 6:35–7:24. Also disclosed
`
`are display 100 and separate viewfinder 166, or a single display as a
`
`viewfinder and a teleconferencing display. Id. at 7:2–24.
`
`
`
`
`
`10
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`
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`IPR2015-00607
`Patent 7,643,168 B2
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`
`Figure 8 of McNelley is reproduced below.
`
`
`
`
`
`As illustrated in Figure 8, camera boom 156 is pivotally connected to main
`
`housing 148. Ex. 1004, 6:59–61. The camera boom supports camera 102.
`
`Id. at 6:66–7:3. The main housing includes display 100. Id. at 6:35–7:3,
`
`Fig. 8.
`
`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.
`
`
`
`11
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`
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`IPR2015-00607
`Patent 7,643,168 B2
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`Figure 2 is a block diagram of an electronic camera configured to receive
`
`and process enhancement files. Id. at 3:30–32. 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.
`
`Id. at 5:55–6:26, Fig. 2. The device also includes memory for storing
`
`algorithms, including compression algorithms, such as JPEG, that are
`
`retrieved by the processor to perform image compression. Id. at 6:26–40,
`
`Fig. 2, element 28. Modified or updated algorithms can be uploaded to the
`
`camera. Id. at 4:47–5:40.
`
`3. Claim 1
`
`We recognize that claim 1 is not named expressly by Petitioner as a
`
`challenged claim. However, challenged claims 19 depends directly from
`
`independent claim 1 and claim 20 depends from claim 19. In this
`
`circumstance, it is appropriate to apply Petitioner’s arguments to claim 1 as
`
`well. On this record, we are persuaded that there is a reasonable likelihood
`
`that Petitioner would prevail in establishing that claim 1 would have been
`
`obvious over McNelley and Sarbadhikari.
`
`The preamble of claim 1 recites an apparatus, which McNelley
`
`teaches in its telecamcorder. Pet. 16–17 (citing Ex. 1004, 5:1–9). The first
`
`recited element of claim 1 is “a portable housing, the portable housing being
`
`wireless.” McNelley teaches that “the telecamcorder can serve as a portable
`
`wireless teleconferencing terminal much like a portable cellular phone.” Ex.
`
`1004, 14:28–31. Petitioner points to this disclosure and others as teaching
`
`this limitation. Pet. 16–17 (citing Ex. 1004, Abstract, 2:35–40, 4:61–5:11,
`
`7:66–8:9, 18:55–57, claim 1, Figs. 8, 12).
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`12
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`IPR2015-00607
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`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.” McNelley
`
`discloses a camera and other components are contained on a camera boom
`
`that can rotate on a pivot. Ex. 1004, 6:35–7:3. The camera is capable of
`
`“capturing” images of persons attending a teleconference. Id. The images
`
`are converted to digital images using a “charged coupled device (CCD)
`
`optical pickup” to collect images. Id. at 12:35–13:9. Petitioner cites to the
`
`preceding as well as “[i]n camcorder mode, the camera boom 156 is turned
`
`180 degrees, allowing the camera 102, the microphone 114, the light 152,
`
`and the sensor 154 to be directed toward the action to be videographed while
`
`using the display 100 as a camera viewfinder.” Pet. 17–18 (citing Ex. 1004,
`
`6:48–52). Petitioner cites to the preceding disclosures, among other
`
`citations, and the testimony of Dr. Bovik in alleging McNelley discloses the
`
`limitation. Id. (citing Ex. 1007 ¶¶ 47–50).
`
`Claim 1 further recites, in pertinent part, “a display supported by the
`
`portable housing,” which displays the “visual image data.” McNelley
`
`discloses that “[t]he device is preferably provided with a video display
`
`screen that functions as a viewfinder in video-graphing the surroundings.”
`
`Ex. 1004, Abstract, 6:7–16, 6:35–52, 7:4–23, 9:2–8, claim 1, Figs. 6–8
`
`(element 100), 12 (element 100). Petitioner cites to the portions of
`
`McNelley above relating to the display to teach the recited display
`
`limitation. Pet. 18–19. Petitioner also points to McNelley’s disclosure that
`
`“[t]he telecamcorder may be configured without the single-eye viewfinder
`
`166 and then utilizes one display 100 as both teleconferencing display and
`
`viewfinder” or “[t]he single-eye viewfinder 166 may also simply be a second
`
`13
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`IPR2015-00607
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`video display which is viewed with one eye or both eyes and is substantially
`
`smaller than the display 100 used for teleconferencing.” Id. at 19 (citing Ex.
`
`1004, 7:14–20; Ex. 1007 ¶¶ 51–54).
`
`Claim 1 next recites, in pertinent part, “memory” which “receives”
`
`and “retains” the “visual image data in digital format.” Petitioner relies on,
`
`among other citations, McNelley’s disclosure of a “removable recording
`
`medium” and a controller that routes audio and video signals to a
`
`“recording/playback electronics package” as teaching the limitation. Pet. 20
`
`(citing Ex. 1004, 21:19–26, Fig. 30 (element 422), 8:37–41, Fig. 10 (element
`
`209); Ex. 1007 ¶¶ 55–58). McNelley discloses that digital recording can
`
`employ “digital recording devices, such as magnetic hard disks, floppy
`
`disks, floptical disks, cartridge drives, digital tape, CD-ROM, and
`
`holographic storage systems.” Id. at 20–21 (citing Ex. 1004, 12:50–54).
`
`Claim 1 further recites, in pertinent part, “an input device supported
`
`by the portable housing [and] . . . operable by the user.” Petitioner cites to
`
`various controls including the “separate handset unit 174” which includes
`
`“network access controls 186” (i.e., dialing controls) and “telecamcorder
`
`controls 188.” Pet. 21 (citing Ex. 1004, 7:58–61; Ex. 1007 ¶¶ 59–62).
`
`Claim 1 further recites that operation of the input device enables the
`
`memory to “retain the visual image data” and “provide retained visual image
`
`data in digital format.” McNelley describes controls 188 as “telecamcorder
`
`controls” (Ex. 1004, 7:58–61), and explains that “controls 164 [are] for
`
`various features such as camera . . . record/playback functions.” Pet. 22
`
`(citing Ex. 1004, 6:61–64). Petitioner also cites to claim 1 of McNelley for
`
`its recitation of a “control means for controlling . . . the recording means,”
`
`14
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`which is “for recording and playing back video records.” Id. (citing Ex.
`
`1004, claim 1; Ex. 1007 ¶ 63).
`
`Continuing with the limitations of claim 1, a compression algorithm
`
`embodied in “media supported by the portable housing” is recited.
`
`McNelley discloses that “[c]ompression/decompression schemes are
`
`numerous and currently essential for phone network teleconferencing.”
`
`Ex. 1004, 18:29–45. McNelley also discloses that ASIC chips are used in
`
`digital compression formats and the chips can be built into McNelley’s
`
`telecamcorder readily. Id. at 18:29–48. Petitioner cites to McNelley’s
`
`disclosures and to testimony at paragraph 65 of the Bovik Declaration that
`
`“[s]uch chips constitute storage devices for storing software to perform,
`
`among other functions, image compression.” Pet. 23.
`
`In addition, Petitioner cites to Sarbadhikari as an electronic camera
`
`which stores images and includes a memory for storing image compression
`
`algorithms. Id. (citing Ex. 1003, 6:26–40; Ex. 1007 ¶¶ 66–68). Petitioner
`
`contends that it would have been obvious to a person of ordinary skill in the
`
`art to combine McNelley and Sarbadhikari based, in part, on McNelley’s
`
`statement that compression technology is “currently essential for phone
`
`network teleconferencing.” Id. at 24 (citing Ex. 1004, 18:29–47; Ex. 1007 ¶
`
`69; KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (a commonsense
`
`combination of known elements in a predictable way to produce predictable
`
`results). We are persuaded that Petitioner has shown rational underpinnings
`
`for combining McNelley and Sarbadhikari.
`
`Claim 1 next recites, in pertinent part, “at least one processing
`
`platform,” which executes the compression algorithm to provide
`
`“compressed visual image data.” Petitioner argues McNelley discloses a
`
`15
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`simple telecamcorder comprised of “a system controller/mode selector 400,”
`
`and associated components, which constitute a processing platform as
`
`meeting the limitation. Pet. 25 (citing Ex. 1004, 21:7–9, Fig. 30). Further
`
`support is cited in controller 400 which “mediates data flow in the
`
`telecamcorder, and all the other sections of the device feed into the
`
`controller 400.” Id. (citing Ex. 1004, 21:9–11). Petitioner cites to the
`
`immediately preceding discussion regarding media embodying a
`
`compression algorithm to meet the remainder of the limitation. Id. at 25–26.
`
`Petitioner also cites to Sarbadhikari’s “processor 20, digital signal processor
`
`22, algorithm memory 28, and associated components” as teaching this
`
`limitation. Pet. 26. Motivation for the combination by a person of ordinary
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`skill in the art is based on the disclosure of Sarbadhikari “because it would
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`have reduced the cost of development of the device by implementing image
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`compression in software rather than in an ASIC, and because it would have
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`allowed the algorithm to be updated, as described in Sarbadhikari.” Id. at
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`27 (citing Ex. 1003, 4:47–5:40; Ex. 1007 ¶ 75).
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`Claim 1 next recites, in pertinent part, “a mobile phone” which is
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`operable to send “a remote recipient a wireless transmission, the wireless
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`transmission conveying the compressed digital image data.” McNelley
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`discloses, and Petitioner relies on, a portable telecamcorder “equipped with
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`communication electronics that establish a connection over a network, and
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`then transmits video and audio signals from the device while displaying
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`video signals and reproducing audio signals that arrive over the network.”
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`Pet. 28 (citing Ex. 1004, Abstract, 7:66–8:1, 14:15–18, 14:27–32, 21:29–40,
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`claim 1, Figs. 8 (elements 174, 194, 196), 12). Again citing to McNelley’s
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`disclosure of digital compression formats, Petitioner argues McNelley
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`16
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`IPR2015-00607
`Patent 7,643,168 B2
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`“discloses a mobile phone supported by the portable housing operable to
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`send to a remote recipient a wireless transmission conveying the compressed
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`digital image data.” Id. at 29 (citing Ex. 1007 ¶¶ 76–78).
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`The final limitations of claim 1 recite respectively “movement by the
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`user of the portable housing commonly moving the image collection
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`device,” and “movement by the user of the portable housing commonly
`
`moving the display.” Petitioner cites to McNelley’s disclosure of a display
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`and camera all within one housing, which “makes these components
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`commonly movable when the user moves the device.” Pet. 29 (citing Ex.
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`1004, 6:35–7:23, 8:64–9:13, Figs. 8, 12; Ex. 1007 ¶¶ 79–80).
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`4. Claims 19 and 20
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`We next turn to dependent claim 19, the first limitation being that the
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`portable housing includes “a first housing section, the image collection
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`device being supported by the [first] housing section.” Petitioner relies on
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`McNelley to meet this limitation of claim 19 and cites McNelley’s Figures
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`8–13 as illustrating multiple embodiments in which a portable housing
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`includes a first housing section where the image collection device is
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`supported by the first housing section. Pet. 29–30 (citing Ex. 1004, 6:24–
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`9:50; Ex. 1007 ¶¶ 81–83). Petitioner cites to the camera supported on the
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`camera boom, pivotally connected to the main housing, as the image
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`collection device. Id. at 30 (citing Ex. 1004, 6:35–7:3; Ex. 1007 ¶ 82).
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`Claim 19 next recites “the portable housing including a second
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`housing section, the display being supported by the second housing section.”
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`McNelley discloses main housing 148 supporting display 100. Ex. 1004,
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`6:35–7:3. Petitioner cites to this disclosure and an annotation of Figure 8 as
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`meeting the second housing limitation. Pet. 31–32; Ex. 1007 ¶ 85.
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`17
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`IPR2015-00607
`Patent 7,643,168 B2
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`The next limitation is “the first housing section being adjoined to the
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`second housing section.” Petitioner again points to Figures 8–13 of
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`McNelley as illustrating that the first housing section, the camera boom, is
`
`pivotally connected to, and thus adjoins, the second housing section, the
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`main housing. Pet. 32–33 (citing Ex. 1004, 6:24–9:50, 6:59–61; Ex. 1007
`
`¶¶ 87–88).
`
`Claim 19 further recites that “the second housing section being
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`movable in common with the first housing section when the first housing
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`section is moved by the user.” Again relying on Figures 8–13 of McNelley,
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`Petitioner contends the first and second housing sections disclosed are a
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`single mobile housing and are, thus, commonly moved when the device is
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`moved by a user. Pet. 33 (citing Ex. 1004, 6:24–9:50; Ex. 1007 ¶¶ 89–90).
`
`Continuing through the limitations of claim 19, the claim recites that
`
`the first housing moves “relative to the second housing section.” Petitioner
`
`cites pivot 162 of Figure 8 as disclosing vertical and horizontal movement of
`
`the camera boom relative to the main housing. Pet. 33–34 (citing Ex. 1004,
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`6:64–7:3; Ex. 1007 ¶ 94).
`
`The last recited element of claim 19 is “the image collection device
`
`being movable in common with the first housing section relative to the
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`display when the first housing section is moved relative to the second
`
`housing section.” Petitioner argues, based in part on the disclosures of
`
`McNelley previously discussed, that any movement of the first housing
`
`section commonly moves the camera supported by the first housing section.
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`Pet. 34–35 (citing Ex. 1007 ¶ 97).
`
`Claim 20 depends from claim 19 and recites “the first housing section
`
`being supported for pivotal movement relative to the second housing section
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`18
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`IPR2015-00607
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`about a pivot axis.” Petitioner argues this limitation is shown in McNelley
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`for the same reasons discussed above in connection with certain limitations
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`of claim 19. Pet. 35 (citing Ex. 1007 ¶¶ 98–99). Further, as illustrated in
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`Figure 12, “the first housing section is supported for pivotal movement
`
`relative to the second housing section because the first housing section is
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`‘pivotally mounted by its ends’ onto the second housing section.” Id. at 36
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`(citing Ex. 1004, 8:64–9:2; Ex. 1007 ¶ 99).
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`5. Summary
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`Based on this record, we conclude that Petitioner has demonstrated a
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`reasonable likelihood of prevailing on its challenge of claims 19 and 20 as
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`obvious under 35 U.S.C. § 103 over McNelley and Sarbadhikari.
`
`C. Obviousness of Claims 19 and 20 Over
`Morita, Sarbadhikari and McNelley
`
`Petitioner contends that claims 19 and 20 of the ’168 patent would
`
`have been obvious under 35 U.S.C. § 103 over Morita, Sarbadhikari, and
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`McNelley. Pet. 36–46. To support this position, Petitioner offers the Bovik
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`Declaration. Ex. 1007 ¶¶ 100–133.
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`1. Morita
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`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
`
`lens 1 and displayed on display 8. Id. at Abstract, Fig. 2(a).
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`Figure 6 of Morita is reproduced below.
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`
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`19
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`IPR2015-00607
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`
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`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. Claim 1
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`As above, we first address independent apparatus claim 1. On this
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`record, we are persuaded that there is a reasonable likelihood that Petitioner
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`would prevail in establishing that the limitations of claim 1 are shown in the
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`combination of Morita and Sarbadhikari, and that claims 19 and 20 would
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`have been obvious over those same references in combination with
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`McNelley.
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`Petitioner cites to Morita as the principal reference to teach many of
`
`the elements of claim 1. Pet. 37–43. To the extent Morita does not show a
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`limitation explicitly, Petitioner identifies and explains why that limitation
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`would have been obvious to the person of ordinary skill over the
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`combination of Morita and Sarbadhikari. For example, in connection with
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`20
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`IPR2015-00607
`Patent 7,643,168 B2
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`claim 1’s recitation of the “media being suitable to embody at least one
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`compression algorithm,” Petitioner argues that Morita’s “image processing
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`circuit produces compressed image data at its output.” Pet. 39–40 (citing
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`Ex. 1002, 3:24–25, Fig. 10 (element 4); Ex. 1007 ¶ 118). Similarly,
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`Petitioner notes that Sarbadhikari’s camera includes processors that process
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`the captured images and “a memory that stores image compression
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`algorithms such as JPEG that is retrieved and executed by the processor.”
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`Id. (citing Ex. 1003, 6:26–40, Fig. 2 (element 28); Ex. 1007 ¶¶ 119–20).
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`Thus, Petitioner argues Sarbadhikari discloses a memory supported by the
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`portable housing which performs, among other things, image compression.
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`Id. at 40 (citing Ex. 1007 ¶¶ 119–20).
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`Based on the preceding, Petitioner contends the person of ordinary
`
`skill in the art would have been motivated to combine Sarbadhikari and
`
`Morita to store a compression algorithm in memory access by a processor
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`“since it would have reduced the cost of development of the device by
`
`implementing image compression in software, allowed the algorithm to be
`
`updated, and decreased the size of the image.” Pet. 40 (citing Ex. 1007
`
`¶ 121).
`
`On this record, we agree with Petitioner that the combination of
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`Morita and Sarbadhikari combines “known elements in a predictable way to
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`produce predictable results.” Pet. 40 (citing KSR, 550 U.S. at 417; Ex. 1007
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`¶ 121). Petitioner has shown rational underpinnings for combining Morita
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`and Sarbadhikari to establish that claim 1 would have been obvious. We are
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`also persuaded, on this record, that the remaining limitations of claim 1 are
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`disclosed by Morita or the combination of Morita with Sarbadhikari and that
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`21
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`IPR2015-00607
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`claim 1 as a whole would have been obvious. Id. at 34–43; Ex. 1007
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`¶¶ 102–129.
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`3. Claims 19 and 20
`
`With respect to claims 19 and 20, we have reviewed t
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