Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 19
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` Filed: September 9, 2015
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`SUMMIT 6 LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00806
`Patent 7,765,482 B2
`____________
`
`
`
`Before HOWARD B. BLANKENSHIP, GEORGIANNA W. BRADEN, and
`KERRY BEGLEY, Administrative Patent Judges.
`
`BEGLEY, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Google Inc. (“Petitioner”)1 filed a Petition requesting inter partes
`
`
`
`review of claims 12, 13, 16, 18, 19, 21–25, 35–38, 40–42, 44–46, and 49
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`(“the challenged claims”) of U.S. Patent No. 7,765,482 B2 (Ex. 1001, “the
`
`
`1 The Petition also lists HTC Corporation and HTC America, Inc.
`(collectively, “HTC”) as petitioners. Paper 1 (“Pet.”), 1 n.1. HTC and
`Patent Owner later filed a joint motion to terminate HTC’s participation in
`the case, pursuant to settlement. Paper 9. We granted the motion. Paper 11.
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`’482 patent”). Pet. 1 n.1, 5. Summit 6 LLC (“Patent Owner”) filed a
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`Preliminary Response to the Petition. Paper 12 (“Prelim. Resp.”).
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`Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be
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`instituted unless “the information presented in the petition . . . and any
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`response . . . shows that there is a reasonable likelihood that the petitioner
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`would prevail with respect to at least 1 of the claims challenged in the
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`petition.” Having considered the Petition and the Preliminary Response, we
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`conclude that there is a reasonable likelihood that Petitioner would prevail in
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`establishing the unpatentability of each of the challenged claims of the
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`’482 patent. Therefore, we institute inter partes review of these claims.
`
`I. BACKGROUND
`
`A. THE ’482 PATENT
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`
`
`According to the ’482 patent, at the time of the disclosed invention,
`
`sharing digital images over the Internet was complex and required “a level
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`of sophistication . . . beyond that of the ordinary user.” Ex. 1001, 1:20–34.
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`The patent purports to solve this problem with a “web-based media
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`submission tool,” which “allows submission of media objects in a
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`convenient, intuitive manner” that does not require the user to make any
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`modifications to media objects before sending or uploading them. Id. at
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`1:45–48, 2:60–67.
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`
`
`The tool disclosed in the ’482 patent allows a user to select media
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`objects stored at a first location (e.g., a client). Id. at [57], 2:3–6, 2:44–47,
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`4:46–47. The media objects may be “pictures (images), movies, videos,
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`graphics, sound clips.” Id. at 2:47–48. The user selects the media objects
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`through either a “drag and drop” or a file browsing functionality. Id. at
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`3:20–48. The tool then may allow the user to confirm the selected media
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`objects with a visual representation, such as a thumbnail image. Id. at [57],
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`2:9–11, 3:65–4:3.
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`Next, the tool pre-processes the selected media objects, “automatically
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`prepar[ing]” the objects “to meet the requirements of [a] second location”
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`(e.g., a server or web site). Id. at [57], 2:14–17, 2:44–3:12, 5:1–4, 5:26–33.
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`The media objects may be pre-processed in “any number of ways,” such as
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`changing the file format or quality setting, cropping, adding text or
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`annotations, and resizing, which includes “compression.” Id. at [57], 4:52–
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`4:67. After this pre-processing is complete, the tool transmits or uploads the
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`media objects to the second location. Id. at [57], 3:17–19.
`
`B. ILLUSTRATIVE CLAIM
`
`Challenged claims 12, 13, 24, 25, and 35–38 are independent
`
`claims. See id. at 10:40–14:41. Claim 12, reproduced below, is
`
`illustrative of the recited subject matter.
`
`12. A computer implemented method of pre-processing media
`objects in a local device for subsequent transmission to a
`remote device, comprising:
`a. receiving pre-processing parameters from a remote
`device, said pre-processing parameters including a
`specification of an amount of media data;
`b. receiving an identification of a group of one or more
`media objects for transmission, a collective media data of
`said group of one or more media objects being limited by
`said received pre-processing parameters;
`c. pre-processing said identified group of one or more
`media objects using said received pre-processing
`parameters, wherein said pre-processing comprises
`encoding or otherwise converting said media object; and
`d. transmitting said pre-processed group of one or more
`media objects to the remote device.
`
`Id. at 10:40–55.
`
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`IPR2015-00806
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`C. ASSERTED PRIOR ART
`
`The Petition relies upon the following references, as well as the
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`supporting Declaration of Paul Clark, D.Sc. (Ex. 1003):
`
`U.S. Patent No. 6,018,774 (issued Jan. 25, 2000) (Ex. 1006, “Mayle”);
`
`U.S. Patent No. 6,035,323 (issued Mar. 7, 2000) (Ex. 1007, “Narayen”);
`
`U.S. Patent No. 6,223,190 B1 (issued Apr. 24, 2001) (Ex. 1005,
`
`“Aihara”); and
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`U.S. Patent No. 6,930,709 B1 (issued Aug. 16, 2005) (Ex. 1004,
`
`“Creamer”).
`
`D. ASSERTED GROUNDS OF UNPATENTABILITY
`
`Petitioner asserts the following grounds of unpatentability. Pet. 5.
`
`Challenged Claims
`12, 13, 16, 18, 19, 21–25, 35–
`38, 40–42, 44–46, and 49
`12, 13, 16, 18, 19, 21–25, 35–
`38, 40–42, 44–46, and 49
`
`
`
`References
`Basis
`§ 103 Creamer and Aihara
`
`§ 103 Mayle and Narayen
`
`II. ANALYSIS
`
`A. CLAIM INTERPRETATION
`
`We begin our analysis by addressing the meaning of the claims. The
`
`Board interprets claims in an unexpired patent using the “broadest
`
`reasonable construction in light of the specification of the patent in which
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`[they] appear[].” 37 C.F.R. § 42.100(b); see In re Cuozzo Speed Techs.,
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`LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015) (holding that “Congress
`
`implicitly approved the broadest reasonable interpretation standard in
`
`enacting the AIA” and that “the standard was properly adopted by PTO
`
`regulation”). Under this standard, we presume a claim term carries its
`
`“ordinary and customary meaning,” which is “the meaning that the term
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`would have to a person of ordinary skill in the art in question” at the time of
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`the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`
`2007) (citation and quotations omitted).
`
`On this record and for purposes of this decision, we determine that
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`only “said identification,” in claim 18, requires construction. Claim 18
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`depends from claim 13, which recites two types of identifications—
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`“identification of digital content” and “identification of a user”:
`
`13. A computer implemented method of pre-processing
`digital content in a client device for subsequent electronic
`publishing, comprising:
`a. receiving an identification of digital content . . . ;
`b. pre-processing said identified digital content at said client
`device in accordance with one or more pre-processing
`parameters that are received from a device separate from
`said client device to produce pre-processed digital
`content . . . ;
`c. retrieving information that enables identification of a
`user, said retrieved information being available to said
`client device prior to said received identification; and
`d. transmitting a message from said client device to said
`server device for subsequent publishing device to said
`one or more devices that are remote from said server
`device and said client device, said transmitted message
`including said pre-processed digital content and said
`retrieved information.
`
`Ex. 1001, 10:56–11:12 (emphases added). Claim 18 adds: “wherein said
`
`pre-processing comprises pre-processing in accordance with one or more
`
`pre-processing parameters that have been stored in memory of said client
`
`device prior to said identification.” Id. at 11:22–25 (emphasis added).
`
`Petitioner and Patent Owner agree that “said identification” in
`
`claim 18 should be construed to encompass “identification of digital
`
`content.” Pet. 12–13; Prelim. Resp. 12. On this record, we determine that
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`“said identification,” as recited in claim 18, refers to “identification of digital
`
`content” in claim 13. We reach this conclusion for several reasons.
`
`First, claim 13 links the “identification of digital content” to “pre-
`
`processing.” Step a of claim 13 recites “receiving an identification of digital
`
`content” and step b involves “pre-processing said identified digital content at
`
`said client device in accordance with one or more pre-processing parameters
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`that are received from a device separate from said client device.” Ex. 1001,
`
`10:62. In order for the client device to perform this pre-processing on the
`
`identified digital content using the pre-processing parameters, the client
`
`device necessarily must have received the “identification of digital content”
`
`as well as the “pre-processing parameters.” Id. at 10:59–65. It is consistent
`
`with this requisite timing of claim 13 that claim 18 be interpreted to require
`
`a more specific timing relationship between the identification of digital
`
`content and the pre-processing parameters, specifically that the “pre-
`
`processing parameters . . . have been stored in memory of said client device
`
`prior to” the identification of digital content. Id. at 11:26–29.
`
`Second, claim 13 includes other limitations related to the timing of the
`
`identification of digital content that further support interpreting “said
`
`identification” in claim 18 to refer to “identification of digital content.” Step
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`c of claim 13 recites: “retrieving information that enables identification of a
`
`user, said retrieved information being available to said client device prior to
`
`said received identification.” Id. at 11:4–6. Particularly given the use of
`
`“received” rather than “retrieved,” we are persuaded that the antecedent
`
`basis of “said received identification” in this step is the “identification of
`
`digital content” that is “receiv[ed]” by the client in step a. See id. at 10:59,
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`11:4–6. Claim 13, thus, requires that the retrieved information, enabling
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`user identification, be available to the client device before the received
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`identification of digital content. This required timing supports interpreting
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`“said identification” in claim 18 to refer to the “identification of digital
`
`content” in claim 13, such that claim 18 adds an additional requirement
`
`relating to the status of the client device before the identification of digital
`
`content—i.e., that the pre-processing parameters are stored in the memory of
`
`the client device before this identification of digital content.
`
`Finally, “identification of digital content” is the only identification
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`required by claim 13, which also weighs in favor of interpreting “said
`
`identification” in claim 18 to refer to “identification of digital content.” In
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`claim 13, the identification of digital content is expressly received and pre-
`
`processed. Id. at 10:59 (“receiving an identification of digital content”); id.
`
`at 10:62 (“pre-processing said identified content”). In contrast, claim 13
`
`requires only information enabling the identification of a user: “retrieving
`
`information that enables identification of a user.” Id. at 11:4–5. Claim 13,
`
`therefore, expressly recites an identification of digital content but does not
`
`recite any actual identification of the user.
`
`Based on the analysis above, we are persuaded that a person of
`
`ordinary skill in the art, upon reading the ’482 patent, would have
`
`“reasonable certainty” that “said identification” in claim 18 refers to the
`
`“identification of digital content” in claim 13, and that this interpretation is
`
`the only plausible construction of the claim language. See Nautilus, Inc. v.
`
`Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014) (“[A] patent is invalid
`
`for indefiniteness if its claims, read in light of the specification delineating
`
`the patent, and the prosecution history, fail to inform, with reasonable
`
`certainty, those skilled in the art about the scope of the invention.”); Ex parte
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`Miyazaki, 89 U.S.P.Q.2d 1207 (BPAI 2008) (precedential) (holding that a
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`claim is properly rejected as indefinite if it “is amenable to two or more
`
`plausible claim constructions”); Ex. 2030, 36–41. Accordingly, we
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`determine that “said identification” in claim 18 refers to the “identification
`
`of digital content” recited in claim 13.
`
`B. OBVIOUSNESS OVER CREAMER AND AIHARA
`
`
`
`Petitioner argues that the challenged claims of the ’482 patent would
`
`have been obvious over Creamer and Aihara. Pet. 23–40.
`
`1. Creamer
`
`Creamer discloses a camera that can transmit real-time and stored
`
`digital images to a local user directory on the Internet, such that “[a]ny
`
`Internet user[] may then access and view the uploaded . . . images.”
`
`Ex. 1004, [57], 2:48–65, 12:9–17. According to Creamer, numerous
`
`parameters control the operation of the camera, and these parameters can be
`
`stored on the camera and adjusted by a user. Id. at 12:48–60. In particular,
`
`a user “may place a setup or configuration file,” including various image
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`settings and parameters, in a “destination directory” on the Internet. Id. at
`
`[57], 3:50–56, 13:36–48, 24:1–15, Fig. 5. The camera then may “download”
`
`and store these parameters. Id. at 24:1–15. For example, the user may
`
`specify “color property parameters . . . as well as settings for (e.g., JPEG)
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`compression level, resolution, . . . [and] any cropping of the image,” which
`
`are stored in the camera in an “IMAGE ADJUST” group. Id. at 12:48–49,
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`13:36–45, 24:1–15, Fig. 5.
`
`Creamer explains how its camera “captur[es], compress[es], and
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`stor[es] an image” as part of a “capture routine.” Id. at 18:18–20. This
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`capture routine is illustrated in Figure 8 of Creamer, reproduced below.
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`Figure 8 depicts the capture routine, in which the camera checks if the
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`capture is based on an event (e.g., a trigger) or a timer at step S26; then
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`identifies an image slot in memory at step S28 or S30; and “initiates a
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`capture” at step S32. Id. at 18:20–45. At step S34, the camera “store[s] an
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`image,” which is assembled into an “analog image signal,” “convert[ed] . . .
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`to a digital image signal,” and “passed . . . to the image memory (at this
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`point without compression).” Id. at 18:46–56. Next, at step S36, “image
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`adjustment . . . is performed on the image in image memory,” “according to
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`the parameters and settings stored in the IMAGE FILES: IMAGE ADJUST
`
`and other groups.” Id. at 18:61–19:3. Finally, at step S38, a “compression
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`engine” “compress[es] the image in the image memory” to the appropriate
`
`image slot, “according to settings stored in the IMAGE FILES: IMAGE
`
`ADJUST” group. Id. at 19:9–13.
`
`
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`After the capture routine, control passes to the transmit routine. Id. at
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`19:23–24. In the transmit routine, the camera checks whether the stored
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`settings indicate that the image is to be uploaded immediately or in a batch
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`of images, and uploads the image accordingly. See id. at 19:24–46.
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`2. Aihara
`
`Aihara discloses a method and system for capturing images using a
`
`digital camera and then generating a formatted electronic document, such as
`
`a hypertext markup language (“HTML”) file, that includes the images.
`
`Ex. 1005, [57], 2:59–3:3. The disclosed camera preferably includes a LCD
`
`screen that provides for various modes, including a “play mode.” Id. at
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`6:39–59, Fig. 5A. In play mode, the user can review previously captured
`
`images on the LCD screen. Id. at 1:34–36, 6:65–7:10.
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`In certain embodiments, the camera is provided with a script, which
`
`includes instructions and formatting commands to create the electronic
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`document. Id. at 3:4–15, 7:29–38. The script may either provide
`
`instructions to a user to capture specific images (id. at 3:7–8, 7:44–45, 8:10–
`
`18) or prompt a user “to select pictures from a set stored in the memory of
`
`the camera” or “elsewhere” (id. at 8:25–28; see id. at 7:39–43). The camera
`
`then generates a HTML file, referencing the images, that “is formatted in
`
`accordance with the script’s predefined model.” Id. at 3:16–25. “[T]he
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`HTML file can be made directly available over the Internet through the use
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`of a web server hosted by the digital camera.” Id. at 3:37–40.
`
`3. Independent Claims 12, 13, 24, 25, and 35–38
`
`
`
`We first address the challenged independent claims of the ’482 patent,
`
`claims 12, 13, 24, 25, and 35–38. Having considered the arguments and
`
`evidence of record, we are persuaded that Petitioner has made a sufficient
`
`showing that the combination of Creamer and Aihara teaches or suggests
`
`each limitation of these claims. Moreover, at this stage of the proceeding,
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`Petitioner has proffered adequate evidence that a person of ordinary skill in
`
`the art would have had reason to combine these references, with a reasonable
`
`expectation of success, to reach the method recited in each claim. In our
`
`analysis below, we address the limitations and issues that Patent Owner
`
`contests in the Preliminary Response.
`
`a. “receiving pre-processing parameters from a remote device,
`said pre-processing parameters including a specification
`of an amount of media data” (claim 12a)
`
`
`
`Claim 12 recites: “receiving pre-processing parameters from a remote
`
`device, said pre-processing parameters including a specification of an
`
`amount of media data.” Ex. 1001, 10:43–45. Petitioner argues that Creamer
`
`and Aihara teach or suggest this limitation. Pet. 24–25. Petitioner points to
`
`Creamer’s disclosures2 regarding its camera downloading parameters, such
`
`as compression level, that a user places in a setup or configuration file in the
`
`user’s destination directory. Id. Patent Owner responds that “Creamer never
`
`specifies an amount of digital content” and, instead, “discusses the use of an
`
`optional parameter that changes the compression level of a captured image
`
`based on the rate of data transmission.” Prelim. Resp. 26. Patent Owner
`
`contends that “modifying the compression level merely changes the amount
`
`of data” but “[c]hanging the amount of data is not a specification of an
`
`amount of data[;] just as reducing the amount of water in a container does
`
`not specify the amount of water in the container.” Id. at 27.
`
`
`2 For these and many other limitations of the challenged claims, Petitioner
`appears to argue that both Creamer and Aihara, or both Mayle and Narayen,
`teach or suggest the relevant limitation. In this decision, we address only the
`teachings and suggestions necessary to reach a determination as to whether
`institution of inter partes review is warranted. Thus, we do not address all
`of Petitioner’s alternative arguments at this stage of the proceeding.
`
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`On this record, we are persuaded that Creamer teaches or suggests
`
`“receiving pre-processing parameters from a remote device.” In Creamer, a
`
`user “may place a setup or configuration file,” with parameters specifying
`
`the desired resolution and compression level of images, in a destination
`
`directory on the Internet. Ex. 1004, [57], 3:50–56, 13:36–48, 24:1–15,
`
`Fig. 5. Creamer’s camera may “download” these operational parameters
`
`from the “defined directory.” Id. at 24:1–15.
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`
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`As to whether these “pre-processing parameters includ[e] a
`
`specification of an amount of media data,” Petitioner has shown sufficiently
`
`that setting a compression level—which is used to adjust images—specifies
`
`the amount of media data. At this stage of the proceeding, we are persuaded
`
`that specifying a compression level constitutes a specification of an amount
`
`of media data, because compressing an image to meet a certain compression
`
`standard alters the amount of stored data. See Ex. 1003 ¶ 38 (opining that
`
`compression “reduces the overall size of a file of digital content, to limit the
`
`digital content”); Ex. 3001 (MICROSOFT COMPUTER DICTIONARY (5th ed.
`
`2002)), 142 (defining “data compression” as “[a] means of reducing the
`
`amount of space or bandwidth needed to store or transmit a block of data”).
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`Accordingly, Petitioner has proffered adequate evidence to show that
`
`Creamer teaches or suggests “receiving pre-processing parameters from a
`
`remote device, said pre-processing parameters including a specification of
`
`an amount of media data,” as recited in claim 12.
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`b. “receiving an identification of” media object(s) or digital content
`(claims 12b, 13a, 24a, 25a)
`
`Claim 12 recites “receiving an identification of a group of one or more
`
`media objects for transmission.” Ex. 1001, 10:46–47. Claims 24 and 25
`
`include this language, with “media object” in place of “group of one or more
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`media objects.” Id. at 11:46–47, 11:64–65. Similarly, claim 13 includes the
`
`limitation: “receiving an identification of digital content.” Id. at 10:59.
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`Petitioner argues that Creamer and Aihara teach or suggest these
`
`limitations. Pet. 25–26, 28, 32–33. Petitioner points to Aihara’s disclosure
`
`of a user “‘select[ing] pictures from a set stored in the memory of the
`
`camera.’” Id. (quoting Ex. 1005, 8:26–28). Patent Owner, in addition to
`
`disputing that Creamer teaches or suggests the relevant limitations, asserts
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`“Petitioner has not met its burden to show that Aihara” teaches or suggests
`
`the limitations. Prelim. Resp. 23–25, 30. In particular, Patent Owner argues
`
`that Petitioner merely points to Aihara’s disclosure regarding selection of
`
`pictures, without showing that Aihara teaches or suggests that this selection
`
`is for the purpose of transmission. Id. at 25.
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`On the record before us, we are persuaded that Aihara’s disclosure
`
`that a “user could be prompted to select pictures from a set stored in the
`
`memory of the camera . . . or elsewhere” teaches or suggests receiving an
`
`identification of media objects or digital content, as recited in claims 12, 13,
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`24, and 25. Ex. 1005, 8:25–28; Pet. 25 (citing Ex. 1005, 8:4–41); id. at 26
`
`(quoting Ex. 1005, 8:26–28); see Ex. 1005, 7:39–43. The cited portions of
`
`Aihara explain that this selection of pictures is made for purposes of
`
`incorporating the selected pictures into a HTML file, or web site. Ex. 1005,
`
`8:26–36. Therefore, at this stage of the proceeding, we are persuaded that
`
`Aihara teaches or suggests that the selection of images is for transmission,
`
`contrary to Patent Owner’s assertions.
`
`Accordingly, on the record before us, Petitioner has made a sufficient
`
`showing that Aihara teaches or suggests “receiving an identification of a
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`group of one or more media objects for transmission,” as recited in claim 12,
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`and the corresponding limitations of claims 13, 24, and 25.
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`c. “pre-processing said identified” media object(s) or digital content
`“using” or “in accordance with” “pre-processing parameters”
`(claims 12c, 13b, 24b, 25b, 35b, 36a, 37a, 38b)
`
`
`
`Claim 12 recites “pre-processing said identified group of one or more
`
`media objects using said received pre-processing parameters.” Ex. 1001,
`
`10:50–52. Claims 13, 24, 25, 35, and 38 similarly require “pre-processing”
`
`identified or selected media objects or digital content “in accordance with
`
`one or more pre-processing parameters.” Id. at 10:62–64, 11:48–51, 11:66–
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`12:1, 12:63–64, 14:1–3. Likewise, claims 36 and 37 recite “digital content”
`
`being “pre-processed” “in accordance with pre-processing parameters.” Id.
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`at 13:20–22, 13:43–45.
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`
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`Petitioner argues that both Creamer and Aihara teach or suggest these
`
`limitations. Pet. 26–27. Petitioner points to Creamer’s disclosure that its
`
`compression engine “compress[es] the image in image memory 220 to the
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`appropriate slot” in memory, “according to settings stored in the IMAGE
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`FILES: IMAGE ADJUST.” Id. (quoting Ex. 1004, 19:9–15). According to
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`Patent Owner, however, Creamer does not teach or suggest pre-processing
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`of identified, existing image files, because the compression steps to which
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`Petitioner cites are performed on “raw image data.” Id. at 29. In other
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`words, in Patent Owner’s view, these compression steps define how a
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`“captured image” or “raw pixel data” is packaged into a “digital image file
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`saved in general purpose memory”—“not how to process an existing image
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`file” that has been identified for transmission. Id.
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`As explained above, Petitioner has made a sufficient showing that
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`Aihara teaches or suggests identifying media objects or digital content for
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`transmission. For the reasons given below, we are persuaded that Creamer
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`teaches the remaining aspects of these limitations, namely pre-processing
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`media objects or digital content pursuant to pre-processing parameters.
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`In particular, as shown in Figure 8 of Creamer, reproduced above, in
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`step S34 of the capture routine, image pickup 248 “store[s] an image.”
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`Ex. 1004, 18:46–57. The image then “undergoes processing to assemble an
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`analog image signal” and “convert[] the . . . signal to a digital image signal,
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`which is passed by the compression engine 224 and memory controller 226
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`to the image memory (at this point, without compression).” Id. at 18:46–56
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`(emphasis added). Then, in steps S36 and S38, respectively, “image
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`adjustment” and compression are performed on “the image in image
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`memory 220,” “according to the parameters and settings stored in the
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`IMAGE FILES: IMAGE ADJUST” group. Id. at 13:37–41, 18:61–19:13.
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`On this record, these disclosures in Creamer regarding sending a
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`“digital image signal” to memory “without compression” (S34) before
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`further processing, including adjustment (S36) and compression (S38), of
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`“the image in image memory” persuade us that Creamer’s camera performs
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`adjustment and compression on an actual digital image, despite Patent
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`Owner’s arguments to the contrary. Petitioner also has shown sufficiently
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`that this processing, according to set parameters, by the camera in Creamer
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`teaches pre-processing using pre-processing parameters. See Ex. 1003
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`¶¶ 36, 40. As Dr. Clark testifies, “when [Creamer’s] camera . . . captures an
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`image, renders the analog information of the image into a digital format, and
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`then compresses the digital image, the way in which the digital image is
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`coded in the memory of the device is altered.” Id. ¶ 40. Moreover, the
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`’482 patent specification identifies compression as an example of pre-
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`processing. Ex. 1001, 4:56–60; Prelim. Resp. 28 (citing Ex. 1001, 4:56–60)
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`(“Compression and resizing the image are two disclosed examples of
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`preprocessing.”).
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`Accordingly, we are persuaded that the combination of Creamer and
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`Aihara teaches or suggests “pre-processing said identified group of one or
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`more media objects using said received pre-processing parameters” in
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`claim 12 and the corresponding limitations of claims 13, 24, 25, and 35–38.
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`d. “pre-processing parameters” controlling or enabling said client device
`to place “said digital content into a specified form in preparation for
`publication” (claims 13b, 35b, 38b)
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`
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`Claims 13 and 38 recite “pre-processing parameters controlling said
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`client device in a placement of said digital content into a specified form in
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`preparation for publication.” Ex. 1001, 10:66–11:1, 14:5–8. Claim 35
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`similarly recites “pre-processing parameters enabling said client device to
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`place said digital content into a specified form in preparation for
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`publication.” Id. at 12:66–13:2.
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`
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`In arguing that Creamer and Aihara teach or suggest these
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`limitations,3 Petitioner points to Creamer’s disclosures that its compression
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`engine performs image compression under the JPEG standard or other
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`compression schemes and image formats, such as Tag Image File Format
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`(“TIFF”) or Graphics Interchange Format (“GIF”). Pet. 24–29. In addition,
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`3 For claims 35 and 38, the Petition refers to its analysis of other claim
`limitations but, as Patent Owner points out, fails to refer to a limitation that
`recites “pre-processing parameters” placing “said digital content into a
`specified form in preparation for publication.” See Pet. 33–34; Prelim.
`Resp. 34. We determine that the Petition’s analysis of claim 13 sufficiently
`puts Patent Owner on notice of Petitioner’s position regarding the relevant
`claim language. For purposes of this decision, we treat this analysis as
`applying to the corresponding language in claims 35 and 38.
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`Petitioner argues, with supporting testimony from Dr. Clark, that these
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`formats were “well known in the art” as “formats suitable for Internet
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`publishing.” Id. at 29 (citing Ex. 1003 ¶ 41).
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`Patent Owner contests that Creamer and Aihara teach or suggest these
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`limitations. Prelim. Resp. 31. Patent Owner asserts that Creamer, in
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`column 19, lines 9–20, teaches that its camera performs compression in
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`preparation for transmission, rather than publication. Id. at 32–33.
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`According to Patent Owner, in Creamer, “the compression rate is modulated
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`based on the transmission rate between the camera and the image host, not
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`based on the transmission rate (or any other characteristic) of the channel
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`between that host and any end downstream recipient to which the item is
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`‘published.’” Id.
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`
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`At this stage of the proceeding, we are persuaded that Petitioner has
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`proffered adequate evidence to show that the compression engine of
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`Creamer’s camera compresses image files “into a specified form in
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`preparation for publication.” As Petitioner points out, Creamer expressly
`
`discloses that its “compression engine” “performs image compression under
`
`a JPEG standard, but may be alternatively arranged to output other image
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`formats (e.g., TIFF, GIF) and/or other compression schemes (e.g., Huffman,
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`wavelet, fractal),” pursuant to stored parameters or settings. Ex. 1004, 8:21–
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`25, 19:9–12. Creamer explains that the compressed images, “(e.g., JPEG)
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`image files,” are “uploaded . . . to the local user directory” on the Internet,
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`such that “[a]ny Internet 308 user may then access and view the uploaded
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`(e.g., JPEG) images from the user directory.” Id. at 12:2–17. Dr. Clark
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`testifies that JPEG, GIF, and HTML are “[f]ormats of digital content suitable
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`for Internet publishing [that] were well known in the art.” Ex. 1003 ¶ 41.
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`On the record before us, we are not persuaded by Patent Owner’s
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`argument that Creamer’s camera performs compression only for purposes of
`
`transmission, not publication. We do not agree, at this stage in the
`
`proceeding, that Creamer’s disclosure is as narrow as Patent Owner’s
`
`contends. For example, Patent Owner’s argument appears to be based on
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`image compression in Creamer where a particular condition is met,
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`specifically “‘if the MISC OPTION: ADAPTIVE parameter is set to change
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`. . . the image compression depending on the data rate.’” Prelim. Resp. 32–
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`33 (quoting Ex. 1004, 19:13–16) (emphasis added). This specific condition,
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`however, does not limit Creamer’s other disclosures regarding compression
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`by the compression engine, discussed above.
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`Thus, Petitioner has shown sufficiently that Creamer teaches or
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`suggests “pre-processing parameters controlling said client device in a
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`placement of said digital content into a specified form in preparation for
`
`publication” in claims 13 and 38, and the comparable limitation in claim 35.
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`e. Reason to Combine Creamer and Aihara
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`
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`Petitioner argues that a person of ordinary skill in the art would have
`
`had reason to combine Creamer and Aihara, with a reasonable expectation of
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`success in doing so. Pet. 11–14; Ex. 1003 ¶¶ 30–31. Petitioner proposes
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`mo