Paper No. __
`Filed: January 23, 2015
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`
`Filed on behalf of: Samsung Electronics Co., Ltd. and
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`
`
`Samsung Electronics America, Inc.
`
`By:
`Steven L. Park (stevenpark@paulhastings.com)
`Naveen Modi (naveenmodi@paulhastings.com)
`Elizabeth L. Brann (elizabethbrann@paulhastings.com)
`Paul Hastings LLP
`
`
`
`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. 7,365,871
`____________________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,365,871
`
`

`

`Petition for Inter Partes Review – Patent No. 7,365,871
`
`
`TABLE OF AUTHORITIES ................................................................................... iii
`
`TABLE OF CONTENTS
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`LIST OF EXHIBITS ................................................................................................ iv
`
`I.
`
`Introduction ...................................................................................................... 1
`
`II. Mandatory Notices Under 37 C.F.R. § 42.8 .................................................... 2
`
`A.
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`B.
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`Real Party-in-Interest ............................................................................ 2
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`Related Matters ...................................................................................... 2
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`1.
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`2.
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`Litigations ................................................................................... 2
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`Inter Partes Reviews ................................................................... 3
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`C.
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`Lead and Back-Up Counsel ................................................................... 4
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`III. Payment of Fees Under 37 C.F.R. § 42.15(a) ................................................. 5
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`IV. Requirements for Inter Partes Review Under 37 C.F.R. § 42.104 .................. 5
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`A. Grounds for Standing ............................................................................ 5
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`B.
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`Identification of Challenge .................................................................... 5
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`V.
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`The ’871 Patent ................................................................................................ 7
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`A. Overview of the ’871 Patent .................................................................. 7
`
`B.
`
`Prosecution History of the ’871 Patent ................................................. 8
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`VI. Claim Construction .......................................................................................... 9
`
`VII. Detailed Explanation of Grounds for Unpatentability ..................................11
`
`A.
`
`Summary of the Prior Art ....................................................................11
`
`1. Wilska ........................................................................................11
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`2.
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`3.
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`Yamagishi-114 ..........................................................................12
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`Kurashige ..................................................................................13
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`Petition for Inter Partes Review – Patent No. 7,365,871
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`B. Wilska, Yamagishi-114, and Kurashige Render Obvious Claims
`9-11 ......................................................................................................14
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`1.
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`2.
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`3.
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`Claim 9 ......................................................................................15
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`Claim 10 ....................................................................................37
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`Claim 11 ....................................................................................38
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`VIII. Conclusion .....................................................................................................39
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`
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`ii
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`Petition for Inter Partes Review – Patent No. 7,365,871
`
`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
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`35 U.S.C. § 103(a) ................................................................................................... 11
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`Other Authorities
`
`37 C.F.R. § 42.8 ......................................................................................................... 2
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`37 C.F.R. § 42.8(b)(1) ................................................................................................ 2
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`37 C.F.R. § 42.8(b)(2) ................................................................................................ 2
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`37 C.F.R. §§ 42.8(b)(3)-(4) ........................................................................................ 4
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`37 C.F.R. § 42.15(a) ................................................................................................... 5
`
`37 C.F.R. § 42.104 ..................................................................................................... 5
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`37 C.F.R. § 42.104(a) ................................................................................................. 5
`
`37 C.F.R. § 42.300(b) ................................................................................................ 9
`
`iii
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`Petition for Inter Partes Review – Patent No. 7,365,871
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`LIST OF EXHIBITS1
`U.S. Patent No. 7,365,871 to Monroe
`
`U.K. Patent Application Pub. No. GB 2289555 to Wilska et al.
`
`JP Patent Application Pub. No. H06-176114 to Yamagishi, an
`English-Language Translation, and a Certificate of Translation
`
`European Patent Application Pub. No. 0734156 to Kurashige et al.
`
`Declaration of Dr. Alan Bovik
`
`Curriculum Vitae of Dr. Alan Bovik
`
`HTC Corp. v. e-Watch, Inc., IPR2014-00987, Petition, Paper No. 1
`(June 19, 2014)
`
`HTC Corp. v. e-Watch, Inc., IPR2014-00987, Institution Decision,
`Paper No. 6 (Dec. 9, 2014)
`
`Office Action mailed Mar. 8, 2007, in U.S. Patent Application No.
`10/336,470
`
`Response to Non-Final Office Action dated Sep. 7, 2007, in U.S.
`Patent Application No. 10/336,470
`
`Notice of Allowance mailed Dec. 27, 2007, in U.S. Patent
`Application No. 10/336,470
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`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.
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`iv
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`Petition for Inter Partes Review – Patent No. 7,365,871
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`I.
`
`Introduction
`
`Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
`
`(collectively, “Petitioner”) request inter partes review of claims 9-11 of U.S. Patent
`
`No. 7,365,871 (“the ’871 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 9-11 of the
`
`’871 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
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`claims 9-11 of the ’871 patent.
`
`In particular, in IPR2014-00987, HTC Corporation and HTC America, Inc.
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`(“HTC”) filed a petition for inter partes review challenging all but claims 9-11 of
`
`the ’871 patent. See, e.g., Ex. 1007 at 3. Just recently, the Board instituted trial on
`
`the challenged claims.2 See, e.g., Ex. 1008 at 11. Because HTC’s petition did not
`
`challenge claims 9-11, these claims were not addressed by the Board. But as
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`demonstrated below, claims 9-11 recite features similar to the features of the
`
`claims addressed in the Board’s decision, and are therefore obvious over the prior
`
`art that formed the basis for the Board’s decision, with the addition of one
`
`reference, which discloses the well-known and conventional camera control
`
`2 On January 7, 2015, Petitioner filed a petition that substantially copies the ground
`
`in HTC’s petition that was adopted by the Board. See IPR2015-00541.
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`1
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`Petition for Inter Partes Review – Patent No. 7,365,871
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`features recited in claim 9 (e.g., lens zoom, focus). Accordingly, claims 9-11 of
`
`the ’871 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
`In accordance with 37 C.F.R. § 42.8(b)(2), Petitioner identifies the following
`
`related matters.
`
`Litigations
`
`1.
`Patent Owner has asserted the ’871 patent and U.S. Patent No. 7,643,168
`
`(“the ’168 patent”), which claims priority to the ’871 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
`
`’871 patent and ’168 patent against other entities in nine other lawsuits in the
`
`Eastern District of Texas (case nos. 2:13-cv-01061, -01063, -01064, -01069,
`
`
`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.
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`2
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`Petition for Inter Partes Review – Patent No. 7,365,871
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`-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.
`
`Inter Partes Reviews
`2.
`Several petitions for inter partes review have been filed challenging the ’871
`
`and ’168 patents.
`
`Regarding the ’871 patent, as noted above, 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). 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. This Petition
`
`challenges the claims not challenged in HTC’s petition (i.e., claims 9-11). The
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`Board also instituted an inter partes review of the ’871 patent on August 4, 2014,
`
`based on a petition filed by Iron Dome LLC on February 18, 2014 (IPR2014-
`
`00439). In addition, other entities have filed petitions for 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.
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`3
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`Petition for Inter Partes Review – Patent No. 7,365,871
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`As for the ’168 patent, the Board instituted an inter partes review of the ’168
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`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. Petitioner is filing
`
`concurrently herewith another petition challenging the claims not challenged in
`
`HTC’s petition. 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.
`
`C. Lead and Back-Up Counsel
`In accordance with 37 C.F.R. §§ 42.8(b)(3)-(4), Petitioner identifies the
`
`following lead and back-up counsel and service information.
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`Lead counsel is Steven L. Park (Reg. No. 47,842), Paul Hastings LLP, 1170
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`Peachtree Street, NE, Suite 100, Atlanta, GA 30309, Telephone: (404) 815-2223,
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`Fax: (404) 685-5223, E-mail: stevenpark@paulhastings.com; and back-up counsel
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`is Naveen Modi (Reg. No. 46,224), Paul Hastings LLP, 875 15th St. N.W.,
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`Washington, D.C., 20005, Telephone: 202.551.1700, Fax: 202.551.1705, Email:
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`naveenmodi@paulhastings.com; and Elizabeth L. Brann (Reg. No. 63,987), Paul
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`Hastings LLP, 4747 Executive Drive, 12th Floor, San Diego, CA 92121,
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`Petition for Inter Partes Review – Patent No. 7,365,871
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`Telephone: (858) 458-3014, Fax: (858) 458-3114, E-mail:
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`elizabethbrann@paulhastings.com.
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`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.
`
`A. Grounds for Standing
`Petitioner certifies that, under 37 C.F.R. § 42.104(a), the ’871 patent is
`
`available for inter partes review, and that Petitioner is not barred or estopped from
`
`requesting inter partes review of the ’871 patent on the grounds identified.
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`Identification of Challenge
`
`B.
`Petitioner respectfully requests review of claims 9-11 of the ’871 patent, and
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`cancellation of these claims as unpatentable, based on the following ground:
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`Claims 9-11 are obvious under 35 U.S.C. § 103 over U.K. Patent
`
`Application Pub. No. GB 2289555 to Wilska et al. (“Wilska”) (Ex. 1002), JP
`
`Patent Application Pub. No. H06-176114 to Yamagishi (“Yamagishi-114”) (Ex.
`
`
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`5
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`Petition for Inter Partes Review – Patent No. 7,365,871
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`1003)4, and European Patent Application Pub. No. 0734156 to Kurashige et al.
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`(“Kurashige”) (Ex. 1004).
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`All of the references mentioned above are prior art to the ’871 patent under
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`35 U.S.C. § 102(b). Specifically, the ’871 patent attempts to claim priority to 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 ’871 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.
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`Yamagishi-114 published on June 24, 1994, Wilska published on November
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`22, 1995, and Kurashige published on September 25, 1996. Therefore, Yamagishi-
`
`114, Wilska, and Kurashige are prior art to the ’871 patent at least under 35 U.S.C.
`
`§ 102(b) because they all published more than one year before the earliest possible
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`priority date of January 12, 1998.
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`The sections that follow explain how the challenged claims should be
`
`construed and how the construed claims are unpatentable over the ground
`
`identified above.
`
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`4 Ex. 1003 includes the Japanese application publication, an English-language
`
`translation, and a Certificate of Translation. Citations in this Petition are to the
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`English-language translation.
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`Petition for Inter Partes Review – Patent No. 7,365,871
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`V. The ’871 Patent
`A. Overview of the ’871 Patent
`The ’871 patent describes an image capture, conversion, compression,
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`storage, and transmission system. Ex. 1001 at Abstract; Ex. 1005, ¶¶ 14-17. The
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`system includes a camera and a transmission interface; the camera captures an
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`image that can be transmitted to another device using, e.g., cellular transmission,
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`radio signal, satellite transmission, and hard line telephonic transmission. Ex. 1001
`
`at 4:58-5:2; Ex. 1005, ¶¶ 15-16. Captured images can be from a digital camera, an
`
`analog camera, or a video camera (e.g., a camcorder). Ex. 1001 at 1:37-39; Ex.
`
`1005, ¶ 15.
`
`Figure 4 of the ’871 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 7:3-
`
`48. The device includes a memory 46, an optional viewer 48, and a format select
`
`interface switch 60 that permits either automated or manual selection of the
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`transmitting protocol, such as a Group-III facsimile format, a PC modem protocol,
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`a wavelet compressor, or others. Id. Depending on the selected protocol, the
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`signal output is generated and provided to a communications interface module 83
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`for transmission. Id.
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`The ’871 patent includes fifteen claims, four of which are independent (i.e.,
`
`claims 1, 6, 9, and 12). The claims are generally directed to a handheld self-
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`7
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`Petition for Inter Partes Review – Patent No. 7,365,871
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`contained cellular telephone and integrated image processing systems (e.g., claims
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`1-5), handheld cellular telephones having an integrated electronic camera (e.g.,
`
`claims 6-8), combinations of a handheld cellular telephone and electronic camera
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`(e.g., claims 9-11), and combinations of a handheld wireless telephone and digital
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`camera (e.g., claims 12-15). Ex. 1005, ¶ 17. Claims 9-11 are the only claims at
`
`issue in this Petition. Claim 9 recites a housing, an electronic camera, a display, a
`
`processor, a memory, a cellular telephone, alphanumeric input keys, a power
`
`supply, a wireless transmitter/receiver, and digital/analog circuits for converting
`
`digital commands to analog signals for controlling camera functions. Claims 10
`
`and 11 depend from claim 9.
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`Prosecution History of the ’871 Patent
`
`B.
`The ’871 patent was filed on January 3, 2003, as a divisional of U.S. Patent
`
`Application No. 09/006,073, filed on January 12, 1998, which is now abandoned.
`
`The prosecution history of the ’871 patent included many office actions, responses
`
`and amendments by the applicant, and examiner interviews. Certain papers filed in
`
`the final stages of prosecution are helpful in understanding what led to allowance.
`
`In particular, in an office action mailed on March 8, 2007, the examiner
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`allowed claims 55, 60, and 62, which eventually issued as claims 9-11 with further
`
`amendments, because, according to the examiner, “it would not have been obvious
`
`to have the system, as claimed, include the features of having a camera operation
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`8
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`Petition for Inter Partes Review – Patent No. 7,365,871
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`control capability through the use of digital/analog circuits for converting digital
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`commands to analog signals for controlling gain, pedestal setup, white clip, lens
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`focus, white balance, lens iris, lens zoom and other functions of the camera from a
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`local input device, a remote device, or as automatic or programmed functions.”
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`Ex. 1009 at 10. In addition, in an office action response submitted on September 7,
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`2007, the applicant argued that all pending claims are allowable because the
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`references cited by the examiner “do[] not disclose selectively displaying or
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`transmitting a framed image that has been stored in memory.” Ex. 1010 at 59-62.
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`The examiner then allowed all the claims. Ex. 1011 at 5-7. The examiner did not,
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`however, consider other prior art that discloses the subject matter of claims 9-11 of
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`the ’871 patent, including the features mentioned above, such as the prior art
`
`references discussed herein. The examiner also did not have the other evidence
`
`presented in this Petition.
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`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 ’871 patent has not expired. Thus, for purposes of this
`
`proceeding, the claims of the ’871 patent should be given their broadest reasonable
`
`construction.
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`9
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`Petition for Inter Partes Review – Patent No. 7,365,871
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`Any term not construed herein should be interpreted in accordance with its
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`plain and ordinary meaning under the broadest reasonable construction. Given the
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`different claim construction standards used by the PTO and district courts,
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`Petitioner expressly reserves the right to argue a different construction for any term
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`during litigation.5
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`Specifically, claim 9 recites “framing the image to be captured.” In
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`IPR2014-00987, HTC proposed that the broadest reasonable interpretation of
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`“framing the image to be captured” is “obtaining an image of an object using a
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`viewfinder, or providing data representing an image of an object on a display.” Ex.
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`1007 at 6-7. The Board in IPR2014-00987 did not adopt this exact construction,
`
`but instead adopted a similar interpretation of this term: “establishing the
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`boundaries of the image to be captured.” Ex. 1008 at 6-7. For purposes of this
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`proceeding, Petitioner uses the Board’s interpretation of this term in IPR2014-
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`00987.
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`As explained by the Board in IPR2014-00987, “[t]he term ‘frame’ is used in
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`the Specification, but it is used as a noun, not as a verb, and only in an image-
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`processing context,” and “[t]he terms ‘framed’ and ‘framing’ are not used in the
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`Specification.” Id. at 6. But, “[a]s used in the claims, ‘framed’ and ‘framing’
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`appear to refer to composing an image by positioning the subject of the image
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`5 Petitioner reserves all other arguments, such as § 112 arguments, for litigation.
`10
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`Petition for Inter Partes Review – Patent No. 7,365,871
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`within the boundaries of the camera’s field of view.” Id. Thus, for purposes of
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`this proceeding, Petitioner proposes that the broadest reasonable interpretation of
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`“framing the image to be captured” is “establishing the boundaries of the image to
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`be captured,” as adopted by the Board in IPR2014-00987. See id. at 6-7.
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`Petitioner notes, however, that the prior art analysis provided by HTC meets both
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`HTC’s interpretation and the Board’s interpretation, as evidenced by the Board’s
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`institution of trial in IPR2014-00987.
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`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
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`combinations of the cited prior art.
`
`A.
`
`Summary of the Prior Art
`1. Wilska
`Wilska Describes a portable, hand-held device for personal communication,
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`data collection, picture taking and data processing. Ex. 1002 at Abstract; Ex. 1005,
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`¶¶ 23-25. Figures 1-3 illustrate internal and external components, including a data
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`processing unit (2), a display (9), user interface (10, 11), a cellular mobile
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`telephone and modem (17), memory unit(s) (13), power source (e.g., a battery) (3),
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`and application software. Ex. 1002 at Abstract; Ex. 1005, ¶ 24.
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`The device includes a camera unit (14) that is fixedly integrated into the
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`device, or implemented as a removable component (e.g., a PCMCIA card). Ex.
`11
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`Petition for Inter Partes Review – Patent No. 7,365,871
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`1002 at Abstract, 4:28-30, 5:9-10, 7:21-23; Ex. 1005, ¶¶ 24-25. The camera unit
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`(14) includes a camera (14a), e.g., a CCD or a semiconductor image sensor, and
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`optics (14b) connected thereto. Ex. 1002 at Abstract, 7:9-10; Ex. 1005, ¶ 25.
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`Figure 5 of Wilska provides further details of the camera unit.
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`Wilska’s device allows the use of cellular phone services, data and/or speech
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`transmission, facsimile services for transmission of images, electronic mail, short
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`message service, camera functions to record images, and other functions. Ex. 1002
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`at 6:4-12.
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`Yamagishi-114
`2.
`Yamagishi-114 describes a device that includes a camera and an image
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`processing system, which can be implemented in a portable wireless phone. Ex.
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`1003 at Abstract, 18:23-24, Fig. 14; Ex. 1005, ¶¶ 26-29. Figure 1 shows the device
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`components: lens (10), shutter (12), A/D converter (16), display (64), control units
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`(20, 40, 60), image memory (24), recording media (90) (e.g., hard disk, removable
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`memory card), program memory (62), compression unit (22), battery (70),
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`communication unit (100), keyboard (id. at Abstract), and operating means (66)
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`(e.g., a mouse, a touch-sensitive panel, switches, keys) to operate the camera (Ex.
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`1003 at 18:17-19), allow selection of items (id. at 7:16-18), and entry of commands
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`(id. at 5:10-11). Ex. 1005, ¶ 27.
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`12
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`Petition for Inter Partes Review – Patent No. 7,365,871
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`Some components (e.g., memory, communication units) can be designed as
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`removable modules or as fixed sections of the device. Ex. 1003 at 10:9-13; 19:5-
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`29. In a “through-mode” of operation, the display (or a section of it) operates as a
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`viewfinder to continuously show images that are picked up by the camera. Id. at
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`7:18-19; 8:18-23; Ex. 1005, ¶ 28. The device can also operate in a “monitor-
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`mode,” where a stored image is selected, read from memory and viewed on the
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`display. Ex. 1003 at 7:18-21; Ex. 1005, ¶ 28.
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`Figure 14 illustrates a device which combines a digital camera and a mobile
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`phone. Ex. 1005, ¶ 29. The telephone may operate normally as a wireless phone
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`for sending and receiving telephone calls, and as an electronic camera for taking,
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`storing, and viewing images. Ex. 1003 at 18:36-45; Ex. 1005, ¶¶ 27-29. The
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`device’s communication module can communicate bi-directionally with external
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`devices to transfer data and control signals based on appropriate communication
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`protocols. Ex. 1003 at 5:38-47; Ex. 1005, ¶¶ 27-29.
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`Kurashige
`3.
`Kurashige discloses a system for saving a set of video camera parameters for
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`fast setup/re-setup of a digital camera. Ex. 1004 at 2:5-9; Ex. 1005, ¶¶ 30-32.
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`Such a system can be useful in a variety of settings, such as based on the video
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`requirements of a region to which a manufacturer seeks to initially ship a video
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`camera or when a video camera component is to be replaced. Ex. 1004 at 2:5-17;
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`Ex. 1005, ¶ 32. A picture pickup block is detachably attached to the video camera
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`body which has the picture pickup elements. Ex. 1004 at 3:46-52; Ex. 1005, ¶ 31.
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`The picture pickup block has memory means for storing setup data for setting up
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`the video camera, and the video camera body has a control means for setting up the
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`video camera based on the setup data stored in the memory means. Ex. 1004 at
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`3:46-52; Ex. 1005, ¶ 31. Kurashige discloses various camera features that can be
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`controlled during the setup process, including: gain (Ex. 1004 at 5:10-16, 7:9-25),
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`setup (id. at 3:48-52, 5:42-51, 6:23-28), white clip (id. at 7:55-8:4), white balance
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`(id. at 7:9-21, 8:2-4, 17:58-18:7), and lens iris (id. at 17:58-18:7). Ex. 1005, ¶ 31.
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`Kurashige also discloses a camera control unit (CCU) that controls camera
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`“pedestal level.” Ex. 1004 at 2:50-51; Ex. 1005, ¶ 31.
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`B. Wilska, Yamagishi-114, and Kurashige Render Obvious Claims 9-
`11
`Wilska, Yamagishi-114, and Kurashige render obvious claims 9-11 of the
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`’871 patent. Ex. 1005, ¶¶ 33-92. Indeed, the Board has already instituted inter
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`partes review of the remaining claims of the ’871 patent, based on a petition filed
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`by HTC in IPR2014-00987, which relies on Wilska and Yamagishi-114. Ex. 1008
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`at 10-11. The Board did not address claims 9-11 in its institution decision because
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`HTC did not challenge those claims. Nevertheless, claims 9-11 recite features that
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`are similar to features of the remaining claims of the ’871 patent, and therefore
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`most of the limitations of claims 9-11 are disclosed or suggested by the prior art
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`Petition for Inter Partes Review – Patent No. 7,365,871
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`that formed the basis for the Board’s decision. Therefore, with respect to these
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`limitations, the analysis below is substantively identical to the analysis provided by
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`HTC in its petition.
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`Moreover, as explained in detail below, a person of ordinary skill in the art
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`at the time of the alleged invention (“POSITA”) would have been motivated, or
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`would have found it obvious, to combine the teachings of Wilska, Yamagishi-114,
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`and Kurashige. For instance, all three references are in the same technical field,
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`and address similar issues by disclosing portable handheld devices that function as
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`digital cameras, and include similar components to capture, store, process, and
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`display images. See supra Part VII.A.
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`Claim 9
`1.
`CLAIM 9 recites “[Element A9] A combination of handheld cellular
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`telephone and electronic camera comprising.” Wilska describes a small-sized,
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`portable, and hand-held device (Ex. 1002 at Abstract, 3:22-26, 10:20-24, claims 1,
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`9), which includes a cellular phone (id. at 5:22-28, claim 4, Fig. 3 (element 17)), an
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`integrated image processing system in the form of a PC-in-a-chip, and/or an image
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`processing unit that includes a microprocessor (id. at 4:27-5:7, Figs. 3 (element 2),
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`5 (elements 5, 14a, 14c)). Ex. 1005, ¶¶ 34-39. Wilska’s camera unit and the
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`associated image processing components can be fixedly integrated into the device.
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`Ex. 1002 at Abstract, 4:27-5:10, 7:1-15, 7:21-23, Figs. 1 (elements 14a, 14b, 14c),
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`3 (element 17), 5; Ex. 1005, ¶¶ 35-39.
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`Wilska’s integrated radiotelephone (i.e., cellular mobile phone) can send
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`both data and speech using, for example, a GSM wireless protocol. Ex. 1002 at
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`5:22-6:2, 6:6-8; Ex. 1005, ¶ 36. Wilska’s camera captures images (Ex. 1002 at 5:2-
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`7, 5:27-29, 6:6-8, 7:23-26, 9:23-30, 13:22-25), and transmits the captured images
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`to another device in the cellular network in the form of, for example, a fax, or
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`email. Id. at 5:22-6:2, 9:28-10:2, 12:23-26, 13:2-18, 13:25-27; Ex. 1005, ¶ 37.
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`In IPR2014-00987, the Board instituted trial based on a similar analysis.
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`Specifically, claim 12 of the ’871 patent recites a substantially similar element,
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`which, as discussed in HTC’s petition in IPR2014-00987, is disclosed by Wilska.
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`Ex. 1007 at 26; see also id. at 14-15, 20. The Board instituted trial in IPR2014-
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`00987 on claim 12 based on HTC’s petition. Ex. 1008 at 9-10.
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`Element [B9]: “a housing.” Wilska’s portable, hand-held device has a
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`manually portable housing with dimensions of 6.7 x 3.3 x 1.2 inches. Ex. 1002 at
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`Abstract, 1:5-6, 3:22-26, 10:20-24, Figs. 1-2, 6-9 (“housing (1)”). Ex. 1005, ¶¶ 38-
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`39.
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`In IPR2014-00987, the Board instituted trial based on a similar analysis.
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`Specifically, claim 1 of the ’871 patent recites a substantially similar element,
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`which, as discussed in HTC’s petition in IPR2014-00987, is disclosed by Wilska.
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`Ex. 1007 at 15; see also id. at 22, 26. The Board instituted trial in IPR2014-00987
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`on claim 1 based on HTC’s petition. Ex. 1008 at 9-10.
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`Element [C9]: “an electronic camera integral within the housing.” Wilska
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`describes that its device includes a camera that can be implemented as an
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`integrated component (Ex. 1002 at Abstract, 4:28-30, 5:9-10, 7:21-23, Fig. 3
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`(element 17)), and includes an optics section, an image sensor, and a processing
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`unit with associated memory (id. at 4:27-5:7, 7:1-15, 7:21-26, Figs. 1 (elements
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`14a, 14b, 14c), 5). Ex. 1005, ¶¶ 40-41.
`
`In IPR2014-00987, the Board instituted trial based on a similar analysis.
`
`Specifically, claim 1 of the ’871 patent recites a substantially similar element,
`
`which, as discussed in HTC’s petition in IPR2014-00987, is disclosed by Wilska.
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`Ex. 1007 at 15-16; see also id. at 20. The Board instituted trial in IPR2014-00987
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`on claim 1 based on HTC’s petition. Ex. 1008 at 9-10.
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`Element [D9]: “a display in the housing for framing the image to be
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`captured by an image capture device and for viewing the image, whereby an
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`operator can view and frame the image prior to capture.” Wilska and Yamagishi-
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`114 disclose or suggest this feature, including a display for establishing the
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`boundaries of the image to be captured. Ex. 1005, ¶¶ 41-45. Figures 1-3 and 6-7
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`of Wilska show a display (9) in a housing (1) of the device. Ex. 1002 at 4:6-11,
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`Figs. 1-3, 6-7 (element 9); Ex. 1005, ¶ 43. The display presents an image captured
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`by the device. Ex. 1002 at 7:23-31, 8:21-24, 10:5-7; Ex. 1005, ¶ 43.
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`Yamagishi-114 also describes a camera that is implemented as part of a
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`portable wireless phone. Ex. 1003 at Abstract,