`571-272-7822
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`Paper 6
`Entered: December 9, 2014
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`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 IPR2014-00987
`Patent 7,365,871 B2
`
`
`
`Before JAMESON LEE, GREGG I. ANDERSON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`Page 1 of 12
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`SAMSUNG EXHIBIT 1008
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`IPR2014-00987
`Patent 7,365,871 B2
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`I.
`HTC Corporation and HTC America, Inc. (“Petitioner”) filed a
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`INTRODUCTION
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`Petition requesting inter partes review of claims 1–8 and 12–15 (“the
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`challenged claims”) of U.S. Patent No. 7,365,871 (Ex. 1001, “the ’871
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`patent”). Paper 1 (“Pet.”). e-Watch, Inc. and e-Watch Corporation (“Patent
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`Owner”) did not file a Preliminary Response. We have jurisdiction under 35
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`U.S.C. § 314, which provides that an inter partes review may only be
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`authorized if “the information presented in the petition . . . and any
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`[preliminary] response . . . shows that there is a reasonable likelihood that
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`the petitioner would prevail with respect to at least 1 of the claims
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`challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the
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`Petition, we determine that the information presented by Petitioner
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`establishes that there is a reasonable likelihood that Petitioner would prevail
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`in showing the unpatentability of claims 1–8 and 12–15 of the ’871 patent.
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`Accordingly, pursuant to 35 U.S.C. § 314, we institute an inter partes review
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`of claims 1–8 and 12–15 of the ’871 patent.
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`A. Related Proceedings
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`Petitioner and Patent Owner indicate that the ’871 patent is involved
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`in eleven co-pending district court cases in the U.S. District Court for the
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`Eastern District of Texas. Pet. 1–2; Paper 5, 3. The ’871 patent also is
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`involved in IPR2014-00439. Paper 5, 4. Petitioner also filed a petition in
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`IPR2014-00989 involving related U.S. Patent No. 7,643,168 B2. Pet. 2;
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`Paper 5, 4.
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`2
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`IPR2014-00987
`Patent 7,365,871 B2
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`B. The ’871 Patent
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`The ’871 patent relates generally to “image capture and transmission
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`systems and is specifically directed to an image capture, compression, and
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`transmission system for use in connection with landline and wireless
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`telephone systems.” Ex. 1001, 1:17–20. According to the ’871 patent, the
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`system “is particularly well-suited for sending and/or receiving images via a
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`standard Group III facsimile transmission system and permits capture of the
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`image at a remote location using an analog or digital camera. Id. at 5:3–7.”
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`Figure 1 of the ’871 patent is reproduced below.
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`“Figure 1 is a block diagram of a basic facsimile camera configuration for
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`capturing an image via a camera and transmitting it via Group III facsimile
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`transmission to a standard hard copy medium.” Id. at 4:27–30.
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`Figure 7A of the ’871 patent is reproduced below.
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`3
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`Figure 7A depicts “a hand[-]held device for capturing, storing, and
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`transmitting an image in accordance with the invention.” Id. at 4:46–48,
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`11:3–20.
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`C. Illustrative Claim
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`Of the challenged claims, claims 1, 6, and 12 are independent. Claim
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`1 is reproduced below:
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`telephone and
`A handheld self-contained cellular
`1.
`integrated image processing system for both sending and
`receiving telephonic audio signals and for capturing a visual
`image and transmitting it to a compatible remote receiving
`station of a wireless telephone network, the system comprising:
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`a manually portable housing;
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`an integral image capture device comprising an electronic
`camera contained within the portable housing;
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`a display for displaying an image framed by the camera,
`the display being supported by the housing, the display and the
`electronic camera being commonly movable in the housing
`when the housing is moved by hand;
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`a processor in the housing for generating an image data
`signal representing the image framed by the camera;
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`a memory associated with the processor for receiving and
`storing the digitized framed image, accessible for selectively
`displaying in the display window and accessible for selectively
`transmitting over the wireless telephone network the digitized
`framed image;
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`a user interface for enabling a user to select the image
`data signal for viewing and transmission;
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`a telephonic system in the housing for sending and
`receiving digitized audio signals and for sending the image data
`signal;
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`alphanumeric input keys in the housing for permitting
`manually input digitized alphanumeric signals to be input to the
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`processor, the telephonic system further used for sending the
`digitized alphanumeric signals;
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`for
`adapted
`device
`communications
`a wireless
`transmitting any of the digitized signals to the compatible
`remote receiving station; and
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`a power supply for powering the system.
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`Ex. 1001, 14:49-15:13.
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`D. References Relied Upon
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`Petitioner relies upon the following references:
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`Wilska
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`GB 2 289 555 A
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`Nov. 22, 1995
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`Yamagishil
`(“Yamagishi—1 14”)
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`JP HO6—l76l 14
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`June 24, 1994
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`McNelley
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`US 5,550,754
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`Aug. 27, 1996
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`Yamagishi
`(“Yamagishi—992”)
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`EP 0 594 992 A1 May 4, 1994
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`Ex. 1002
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`Ex. 1003
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`Ex. 1004
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`Ex. 1005
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`E. The Asserted Grounds of Unpatentabilfly
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`Petitioner argues that the challenged claims are unpatentable as
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`obvious over the following grounds:
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`1-8 and 12-15
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`References
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`Wilska and Yamaishi-114
`McNelle and Yamaishi—992
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`Basis
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`§ 103
`§ 103
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`Claims challen ; ed
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`1-8 and 12-15
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`II. ANALYSIS
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`A. Claim Construction
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`In an inter partes review, claim terms in an unexpired patent are
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`interpreted according to their “broadest reasonable construction in light of
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`1 Unless otherwise noted, citations are to the certified English translation of
`Yamagichi-114 at pages 1-34 of Exhibit 1003.
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`the specification of the patent” in which they appear.” 37 C.F.R.
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`§ 42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766
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`(Aug. 14, 2012). Also, claim terms are given their ordinary and customary
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`meaning, as would be understood by one of ordinary skill in the art in the
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`context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
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`1257 (Fed. Cir. 2007).
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`1. “an image framed by the camera” (claim 1) / “framing the image to
`be captured” (claims 2, 9, 12) / “visually framing a visual image to be
`captured” (claim 6) / “framing the visual image” (claim 7)
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`Claim 1 recites “an image framed by the camera.” Claims 2, 6, 7, 9,
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`and 12 recite similar limitations. Petitioner proposes that these terms be
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`construed to mean “obtaining an image of an object using a viewfinder, or
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`providing data representing an image of an object on a display.” Pet. 6–7.
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`Petitioner argues that the Specification uses the term “frame” in an image-
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`processing context, whereas the claims appear to use “framed” or “framing”
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`in a different context. Id. (citing Ex. 1001, 4:58–62, 7:49–8:23, 8:39–47,
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`10:9–21).
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`As used in the claims, “framed” and “framing” appear to refer to
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`composing an image by positioning the subject of the image within the
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`boundaries of the camera’s field of view. The terms “framed” and
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`“framing” are not used in the Specification. The term “frame” is used in the
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`Specification, but it is used as a noun, not as a verb, and only in an image-
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`processing context. See, e.g., Ex. 1001, 8:21–23 (“At this point a single
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`frame is captured in RAM 71 and/or on the portable medium RAM 72.”).
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`On this record, and for purposes of this Decision, we determine that
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`the broadest reasonable interpretation of “an image framed by the camera” is
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`“an image having boundaries established by the camera,” and the broadest
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`reasonable interpretation of “framing [a/the] image to be captured” (claims
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`2, 9, 12), “visually framing a visual image to be captured” (claim 6), and
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`“framing the visual image” (claim 7) is “establishing the boundaries of the
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`image to be captured.”
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`B. Challenged Claims – Obvious over Wilska and Yamagishi-114
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`Petitioner argues that the claims 1–8 and 12–15 are unpatentable
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`under 35 U.S.C. § 103(a) as obvious over Wilska and Yamagishi-114. Pet.
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`14–36.
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`Wilska (Exhibit 1002)
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`Wilska describes portable, hand-held device for personal
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`communication, data collection, and data processing. Ex. 1002, Abstract.
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`Figures 1 and 3 of Wilska are reproduced below.
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`
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`Figures 1 depicts an exemplary device with an integrated camera unit. Id. at
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`2:22–24. Figure 3 depicts a block diagram of a device according to Wilska.
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`Id. at 2:30–31. The device includes housing 1, camera unit 14, display 9,
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`data processing unit 2 comprising processor 4, one or more memory units
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`13, keyboard 10 and/or mouse/track ball 11, cellular mobile phone unit 17,
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`and battery 3. Id. at 3:17–5:7, 5:22–6:2. A picture taken by camera 14a
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`through optics 14b is transferred to image processing unit 14c and through
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`its microprocessor 23 to memory unit 24, such as RAM. Id. at 7:23–26. The
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`user can immediately view the picture on display 9. Id. at 7:26–27. A user
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`may also fax an image using a telefax application by selecting an image and
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`defining a receiver, after which the image is transmitted as a bitmap and a
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`telefax message from memory unit 13 via cellular mobile phone unit 17. Id.
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`at 9:28–10:2.
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`Yamagishi-114 (Exhibit 1003)
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`Yamagishi-114 describes information processing apparatus 300 with
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`image pickup apparatus 200. Ex. 1003, 4:11–12.
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`Figure 14 is reproduced below.
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`
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`Figure 14 depicts an embodiment in which information processing apparatus
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`300 is a portable wireless telephone. Id. at 18:23. Image pickup apparatus
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`200 comprises image pickup means 202, program storage means 50,
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`interface 52, and connector 54. Id. at 4:14–15. Information processing
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`apparatus 300 includes display means 64 for displaying characters and
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`images, such as a liquid crystal display unit. Id. at 5:8–9. Display means 64
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`includes a viewfinder that continuously shows the signal from an image
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`pickup element, such as image pickup means 202. Id. at 7:18–20. Display
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`means 64 may also display operating modes of image pickup apparatus
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`200—e.g., shutter speed, f-number, gain-up state—as, e.g., an electronic dial
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`or a mode select dial. Id. at 7:6–16.
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`Analysis
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`In light of the arguments and evidence, Petitioner has established a
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`reasonable likelihood that claims 1–8 and 12–15 are unpatentable as obvious
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`over Wilska and Yamagishi-114.
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`For claim 1, for example, we are persuaded that Petitioner’s citations
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`to Wilksa teach each of the recited limitations except for “a display for
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`displaying an image framed by the camera, the display being supported by
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`the housing, the display and the electronic camera being commonly movable
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`in the housing when the housing is moved by hand.” Pet. 14–36.
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`For that limitation, Petitioner relies upon both Wilska and Yamagishi-
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`114 (Pet. 16)), and Petitioner’s expert, Mr. Kenneth Parulski, testifies that:
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`A person of ordinary skill in the art at the time of the [’]871
`Patent would have understood that it would be obvious and
`straightforward to apply the teachings of Yamagishi-114 in the
`Wilska device, in order to display images as they are being
`framed using the “through-mode” described by Yamagishi-114,
`or after they have been captured and stored using the “monitor-
`mode” described by Yamagishi-114, or to simultaneously
`display a “through-mode” window and a “monitor-mode”
`window on the LCD display of the Wilska device. The
`hardware components described in Wilska are capable of
`providing these functions, which could be advantageously used
`by software applications such as the business card handler
`application 36 described by Wilska.
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`Ex. 1006 ¶ 82. We are persuaded that Yamagishi-114’s disclosure of a
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`“through-mode” teaches a display “for displaying an image framed by the
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`camera,” as recited in claim 1.
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`Petitioner argues that a person of ordinary skill in the art would have
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`been motivated to combine Yamagishi-114 and Wilska in the particular
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`manner proposed by Petitioner because they are “in the same technical
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`field,” “address similar issues” (those of portable, handheld devices that
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`function as both digital cameras and mobile telephones), and “include
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`similar components to capture, store, process, and display images.” Pet. 14.
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`On the record before us, we are persuaded that Petitioner has provided
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`sufficiently an articulated reasoning with some rational underpinning to
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`support the legal conclusion of obviousness. See KSR Int’l Co. v. Teleflex
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`Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed.
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`Cir. 2006)).
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`Conclusion
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`On this record, we are persuaded that Petitioner has established a
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`reasonable likelihood that it would prevail in showing that claims 1–8 and
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`12–15 are unpatentable as obvious over Wilska and Yamagishi-114.
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`C. Challenged Claims – Obvious over McNelley and Yamagishi-992
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`Petitioner argues that the claims 1–8 and 12–15 are unpatentable
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`under 35 U.S.C. § 103(a) as obvious over McNelley and Yamagishi-992.
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`Pet. 36–60.
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`We have discretion to institute inter partes review as to some asserted
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`grounds and not others. 37 C.F.R. § 42.108(a); see also 35 U.S.C. § 314(a)
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`(authorizing institution of inter partes review under particular
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`circumstances, but not requiring institution under any circumstances). This
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`discretion is consistent with the requirement that the regulations for inter
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`partes review proceedings take into account “the efficient administration of
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`the Office” and “the ability of the Office to timely complete [instituted]
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`proceedings,” 35 U.S.C. § 316(b), as well as with the requirement that the
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`rules for inter partes review proceedings be “construed to secure the just,
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`speedy, and inexpensive resolution of every proceeding.” 37 C.F.R.
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`§ 42.1(b). Accordingly, for reasons of administrative necessity, and to
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`ensure timely completion of the instituted proceeding, we exercise our
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`discretion and do not institute a review based on obviousness over McNelley
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`and Yamagishi-992.
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`III. CONCLUSION
`For the foregoing reasons, we determine that Petitioner has
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`established that there is a reasonable likelihood that Petitioner would prevail
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`in establishing the unpatentability of claims 1–8 and 12–15 of the ’871
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`patent.
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`The Board has not made a final determination on the patentability of
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`any challenged claims.
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`Accordingly, it is
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`IV. ORDER
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`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
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`hereby instituted for claims 1–8 and 12–15 under 35 U.S.C. § 103 as
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`obvious over Wilska and Yamagishi-114; and
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(d) and
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`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial on the
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`grounds of unpatentability authorized above; the trial commences on the
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`entry date of this Decision.
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`PETITIONER
`
`
`Bing Ai
`Cheng C. Ko
`Kevin Patariu
`Babak Tehranchi
`Perkins Coie LLP
`Ai-ptab@perkinscoie.com
`CKo@perkinscoie.com
`KPatariu@perkinscoie.com
`BTehranchi@perkinscoie.com
`
`
`PATENT OWNER
`
`Robert C. Curfiss
`bob@curfiss.com
`
`David O. Simmons
`IVC Patent Agency
`Dsimmons1@sbcglobal.net
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