IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`In the Inter Partcs Review of:
`
`US. Patent No. 7,365,871 B2
`
`Control Number: unassigned
`
`Filing Date: January 3, 2003
`
`For: Apparatus for Capturing, Converting and Transmitting a Visual Image
`Signal Via a Digital Transmission System
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`DECLARATION OF TIM A. WILLIAMS3 PH.D. IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW OF
`US. PATENT NO. 7 365 871 32
`
`Attorney Docket No. 022807-0000054
`
`‘I
`
`ZTE Exhibit 1002
`
`

`

`Table of Contents
`
`Egg
`INTRODUCTION ........................................................................................... 2
`
`A. Background and Qualifications ............................................................. 2
`
`B.
`
`List of Cases Serving as Testifying Expert in Last Four Years ............ 4
`
`C. Compensation ........................................................................................ 4
`
`D. Documents and Other Materials Relied Upon ...................................... 4
`
`II.
`
`LEGAL PRINCIPLES ..................................................................................... 5
`
`A. Claim Interpretation .............................................................................. 5
`
`B. Prior Art ................................................................................................. 6
`
`C Anticipation ........................................................................................... 7
`
`D. Obviousness ........................................................................................... 8
`
`E. Date of Invention ................................................................................. 13
`
`III.
`
`THE “871 PATENT ....................................................................................... 14
`
`A. The ’87] Patent Technology Background and Disclosure .................. 14
`
`B. Challenged Claims of the ’87] Patent ................................................. 18
`
`C.
`
`Person of Ordinary Skill in the Art for the ’871 Patent ...................... 18
`
`D. Claim Construction ............................................................................. 19
`
`IV.
`
`PRIOR ART ................................................................................................... 21
`
`A. US. Patent No. 5,550,754 (“McNelley”) (Ex. 1003) ......................... 21
`
`B. US. Patent No. 5,491,507 (“Umezawa”) (Ex. 1004) ......................... 23
`
`C. Motivation to Combine the Prior Art .................................................. 26
`
`INVALIDITY OF CLAIMS 1-8 AND 12-14 OF THE ’871 PATENT IN
`
`LIGHT OF THE PRIOR ART ....................................................................... 28
`
`A. Ground 1: Claims 1-8 and 12-14 are Obvious in view of McNelley
`and Umezawa ...................................................................................... 28
`
`VI.
`
`REVISION OR SUPPLEMENTATION ..................................................... 116
`
`2
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`ZTE Exhibit 1002
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`

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`I.
`
`INTRODUCTION
`
`1.
`
`My name is Tim A. Williams, PhD.
`
`1 have been asked by ZTE
`
`Corporation and ZTE (USA) Inc. to provide my expert opinions in support of their
`
`petition for interpartes review of Patent No. 7,365,871 B2 (“the ’871 Patent”),
`
`challenging the validity ofclaims 1-8 and 12—14 of the ’871 Patent.
`
`2.
`
`3.
`
`I currently hold the opinions set forth in this declaration.
`
`In summary, it is my opinion that the references cited below render
`
`obvious the claims of the ’87] patent. My detailed opinions on the claims are set
`
`forth below.
`
`A.
`
`4.
`
`Background and Qualifications
`
`I earned a Bachelor's Degree in Electrical Engineering from Michigan
`
`Technological University in 1976. I obtained my Master’s Degree and PhD. in
`
`Electrical Engineering from the University of Texas at Austin in 1982 and 1985,
`
`respectively.
`
`1 obtained a Masters of Business Administration from the University
`
`of Texas at Austin in 1991.
`
`5.
`
`My professional industry experience includes approximately 15 years
`
`at Motorola Inc., where 1 was a Senior Engineer and Senior Member of the
`
`Technical Staff working on the development of communications systems
`
`technologies including the cellular architectures that included Global Systems
`
`3
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`ZTE Exhibit 1002
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`Mobile (GSM) voice codecs and channel modem, as well as Code Division
`
`Multiplexing (CDMA) voice codecs and channel modems to name a few.
`
`6.
`
`I was the co—founder, CTO, Vice President of Engineering and
`
`Business Strategy CEO of Wireless Access, which developed PCS equipment for
`
`2-way paging services. Wireless Access was sold to Glenarye Electronics.
`
`I
`
`served as the CTO and Advisory Board Member of Picazo Communications. 1 was
`
`also an Interim CEO and Advisory Board Member of Atheros Communications
`
`which was acquired by Qualcomm Inc., in 201 l.
`
`I was the founder and CEO of
`
`JetQue Inc, which developed messaging solutions for mobile environments. I was
`
`the founder and CEO of SiBEAM Inc, which developed high speed networking
`
`ICs. SiBEAM was sold to Silicon Image in 201 l.
`
`I have held numerous other
`
`technical and leadership positions in industry that are detailed in my CV that is
`
`attached hereto.
`
`7.
`
`I am a registered Patent Agent (USPTO Reg. No. 50,790).
`
`I am an
`
`inventor and co-inventor on 26 issued patents which are listed in my CV.
`
`8.
`
`I have served as an expert witness in over 75 patent litigation cases
`
`including cases in the Federal District Courts and the International Trade
`
`Commission.
`
`9.
`
`A copy of my complete CV is attached hereto as Exhibit A.
`
`4
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`ZTE Exhibit 1002
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`B.
`
`List of Cases Serving as Testifying Expert in Last Four Years
`
`10.
`
`In the past four years, I have provided technical consulting and expert
`
`testimony on behalf of clients as shown in my attached CV and list of cases in
`
`Exhibit A.
`
`C.
`
`Compensation
`
`1 1.
`
`I am being compensated for my time at the rate of $675 per hour.
`
`This compensation is not contingent upon my performance, the outcome of this
`
`matter, or any issues involved in or related to this matter.
`
`D.
`
`Documents and Other Materials Relied Upon
`
`12.
`
`In forming the opinions set forth in this declaration, I have reviewed
`
`the ’87] patent, its prosecution history, and the prior art references described
`
`below. Additionally, I have considered my own experience and expertise of the
`
`knowledge of the person of ordinary skill in the relevant art in the timeframe of the
`
`claimed priority date of the ’87] patent.
`
`In doing so, I have reviewed information
`
`generally available to, and relied upon, by a person of ordinary skill at the time of
`
`the invention.
`
`I also considered certain documents and filings in IPR2015—00412,
`
`instituted by the Patent Trial and Appeal Board on May 1 l, 2015, including the
`
`petition (Paper No. 2) filed by Petitioner Apple Inc., the Patent Owner’s
`
`Preliminary Response (Paper No. l l), the expert declaration of Steven J. Sasson
`
`(Exhibit 1008), and the Decision on Institution of Inter Fortes Review (Paper No.
`
`12).
`
`5
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`ZTE Exhibit 1002
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`13.
`
`I anticipate using some of the above referenced documents and
`
`information, or other information and material that may be made available during
`
`the course of this proceeding (such as by deposition testimony), as well as
`
`representative charts, graphs, schematics, and diagrams, animations, and models
`
`that will be based on those documents, information, and material, to support and to
`
`explain my testimony before the PTAB regarding the invalidity of the ’871 Patent.
`
`II.
`
`LEGAL PRINCIPLES
`
`A.
`
`Claim Interpretation
`
`14. While I am a registered Patent Agent, I am not a Patent Attorney and I
`
`do not opine in this paper on any particular methodology for interpreting patent
`
`claims. My opinions are limited to what I believe a person of ordinary skill in the
`
`art would have understood the meaning of certain claim terms to be based on the
`
`intrinsic evidence of the ’871 patent.
`
`I use the principles below, however, as a
`
`guide in formulating my opinions.
`
`15.
`
`I am informed and understand that it is a basic principle of patent law
`
`that assessing the validity of a patent claim involves a two-step analysis. In the
`
`first step, the claim language must be properly construed to determine its scope and
`
`meaning.
`
`In the second step, the claim as properly construed must be compared to
`
`the alleged prior art to determine whether the claim is valid.
`
`6
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`ZTE Exhibit 1002
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`16.
`
`I am informed and understand that the words of a patent claim have
`
`their plain and ordinary meaning for a person skilled in the art at the time of the
`
`invention. This meaning must be ascertained from a reading of the patent
`
`documents, paying special attention to the language of the claims, the written
`
`specifications, and the prosecution history.
`
`I understand that an inventor may
`
`attribute special meanings to some terms by defining those terms or by otherwise
`
`incorporating such meanings in these documents.
`
`17. My methodology for determining the meaning of claim phrases was
`
`first to carefully study the ’87] patent.
`
`In particular, I studied the claims
`
`themselves, followed by a study of the background, detailed specification, figures,
`
`and other patent content. Next, I reviewed the file history looking for any
`
`clarifications or limitations that might be attached to claim terms. In some
`
`circumstances, I looked at other documents, such as references applied by the
`
`Patent Office.
`
`B.
`
`Prior Art
`
`18.
`
`It is my understanding that only information which satisfies one of the
`
`categories of prior art set forth in 35 U.S.C. § 102 may be used in any invalidity
`
`analysis under §§ 102 or 103- Therefore, if information is not properly classified
`
`as prior art under one of the subsections of § 102, then it may not be considered in
`
`an anticipation or obviousness determination.
`
`It is also my understanding that, for
`
`7
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`ZTE Exhibit 1002
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`inter parles review, applicable prior art is limited to patents and printed
`
`publications.
`
`19.
`
`I am informed and understand that the earliest claimed priority date
`
`for the ’87] patent is January 12, 1998.
`
`I also understand that prior art references
`
`published on or before January 12, 1997 are always considered prior art to the ’87]
`
`patent, and that prior art references published after January 12, 1997 but before
`
`January 12, 1998 are considered prior art to the ’87] patent unless the patent owner
`
`can prove that the purported invention was conceived before the publication of the
`
`reference.
`
`I understand that a patent granted on an application for patent, filed in
`
`the United States before January 12, 1998, is considered prior art to the ’87] patent
`
`unless the patent owner can prove that the purported invention was conceived
`
`before the filing date of the prior art reference or that the prior art reference and the
`
`’87] patent shared common inventors, were co—owned, or under an obligation of
`
`assignment to a common owner at the time the application was filed.
`
`C.
`
`Anticipation
`
`20.
`
`1 am informed and understand that to anticipate a patent claim under
`
`35 U.S.C. § 102, a. single asserted prior art reference must disclose each and every
`
`element of the claimed invention, either explicitly or inherently, to a person of
`
`ordinary skill in the art. I understand that a disclosure of an asserted prior art
`
`reference can be “inherent” if the missing element must necessarily be present in
`
`8
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`ZTE Exhibit 1002
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`what is explicitly described in the asserted prior art reference and such would be
`
`recognized by a person of ordinary skill in the art. However, I understand that
`
`inherency cannot be established by a mere probabilities or possibilities.
`
`D.
`
`Obviousness
`
`21.
`
`I am also informed and understand that a patent claim is invalid under
`
`35 U.S.C. § 103 if the differences between the invention and the prior art are such
`
`that the subject matter as a whole would have been obvious at the time of the
`
`invention to a person having ordinary skill in the art to which the subject matter
`
`pertains. Obviousness, as I understand, is based on the scope and content of the
`
`prior art, the differences between the prior art and the claim, the level of ordinary
`
`skill in the art, and secondary indications of non-obviousness to the extent they
`
`exist.
`
`22.
`
`I understand that whether there are any relevant differences between
`
`the prior art and the claimed invention is to be analyzed from the view of a person
`
`of ordinary skill in the art at the time of the invention. A person of ordinary skill in
`
`the art is a hypothetical person who is presumed to be aware of all of the relevant
`
`art at the time of the invention. The person of ordinary skill is not an automaton,
`
`and may be able to fit together the teachings of multiple patents employing
`
`ordinary creativity and the common sense that familiar items may have obvious
`
`uses in another context or beyond their primary purposes.
`
`9
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`ZTE Exhibit 1002
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`23.
`
`In analyzing the relevance of the differences between the claimed
`
`invention and the prior art, I understand that I must consider the impact, if any, of
`
`such differences on the obviousness or non-obviousness of the invention as a
`
`whole, not merely some portion of it. The person of ordinary skill faced with a
`
`problem is able to apply his or her experience and ability to solve the problem and
`
`also look to any available prior art to help solve the problem.
`
`24.
`
`An invention is obvious if a designer of ordinary skill in the art, facing
`
`the wide range of needs created by developments in the field, would have seen an
`
`obvious benefit to the solutions tried by the applicant. When there is a design need
`
`or market pressure to solve a problem and there are a finite number of identified,
`
`predictable solutions, it would be obvious to a person of ordinary skill to try the
`
`known options. If a technique has been used to improve one device, and a person
`
`of ordinary skill in the art would recognize that it would improve similar devices in
`
`the same way, using the technique would have been obvious.
`
`25.
`
`I understand that I do not need to look for precise teaching in the prior
`
`art directed to the subject matter of the claimed invention.
`
`I understand that 1 may
`
`take into account the inferences and creative steps that a person of ordinary skill in
`
`the art would have employed in reviewing the prior art at the time of the invention.
`
`For example, if the claimed invention combined elements known in the prior art
`
`and the combination yielded results that were predictable to a person of ordinary
`
`10
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`skill in the art at the time of the invention, then this evidence would make it more
`
`likely that the claim was obvious. On the other hand, if the combination of known
`
`elements yielded unexpected or unpredictable results, or if the prior art teaches
`
`away from combining the known elements, then this evidence would make it more
`
`likely that the claim that successfully combined those elements was not obvious.
`
`26.
`
`In determining whether a claimed invention is invalid for obviousness,
`
`one should consider the scope and content of the prior art, the level of ordinary
`
`skill in the relevant art, the differences between the claimed invention and the prior
`
`art, and Whether the claimed invention would have been obvious to a person
`
`having ordinary skill in the art in light of those differences.
`
`I understand that
`
`hindsight must not be used when comparing the prior art to the invention for
`
`obviousness.
`
`1.
`
`Motivation to Combine
`
`27.
`
`I understand that a claimed invention may be obvious if some
`
`teaching, suggestion or motivation exists that would have led a person of ordinary
`
`skill in the art to combine the invalidating references.
`
`I also understand that this
`
`suggestion or motivation may come from sources such as explicit statements in the
`
`prior art, or from the knowledge of a person having ordinary skill in the alt.
`
`Alternatively, any need or problem known in the field at the time and addressed by
`
`the patent may provide a reason for combining elements of the prior art.
`
`I also
`
`1 1
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`ZTE Exhibit 1002
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`understand that when there is a design need or market pressure, and there are a
`
`finite number of predictable solutions, a person of ordinary skill may be motivated
`
`to apply both his skill and common sense in trying to combine the known options
`
`in order to solve the problem.
`
`28.
`
`Obviousness may also be shown by demonstrating that it would have
`
`been obvious to modify what is taught in a single piece of prior art to create the
`
`patented invention. Obviousness may be shown by showing that it would have
`
`been obvious to combine the teachings of more than one item of prior art.
`
`In
`
`determining whether a piece of prior art could have been combined with other prior
`
`art or with other information within the knowledge of a person having ordinary
`
`skill in the art, the following are examples of approaches and rationales that may
`
`be considered:
`
`0 Combining prior art elements according to known methods to yield
`
`predictable results;
`
`0 Simple substitution of one known element for another to obtain
`
`predictable results;
`
`0 Use of a known technique to improve similar devices (methods, or
`
`products) in the same way;
`
`0 Applying a known technique to a known device (method, or product)
`
`ready for improvement to yield predictable results;
`
`12
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`ZTE Exhibit 1002
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`0 Applying a technique or approach that would have been “obvious to try”
`
`(choosing from a finite number of identified, predictable solutions, with a
`
`reasonable expectation of success);
`
`0 Known work in one field of endeavor may prompt variations of it for use
`
`in either the same field or a different one based on design incentives or
`
`other market forces if the variations would have been predictable to a
`
`person having ordinary skill in the art; or
`
`0 Some teaching, suggestion, or motivation in the prior art that would have
`
`led one of ordinary skill to modify the prior art reference or to combine
`
`prior alt reference teachings to arrive at the claimed invention.
`
`2.
`
`Secondary Considerations
`
`29.
`
`I understand that certain objective factors, sometimes known as
`
`“secondary considerations,” may also be taken into account in determining whether
`
`a claimed invention would have been obvious.
`
`In most instances, these secondaly
`
`considerations of non-obviousness are raised by the patentee. In that context, the
`
`patentee argues an invention would not have been obvious in view of these
`
`considerations, which include: (a) commercial success of a product due to the
`
`merits ofthe claimed invention; (b) a long-felt, but unsatisfied need for the
`
`invention; (0) failure of others to find the solution provided by the claimed
`
`invention; (d) deliberate copying of the invention by others; (6) unexpected results
`
`13
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`achieved by the invention; (f) praise of the invention by others skilled in the art; (g)
`
`lack of independent simultaneous invention within a comparatively short space of
`
`time; (h) teaching away from the invention in the prior art. I also understand that
`
`these objective indications are only relevant to obviousness if there is a connection,
`
`or nexus, between them and the invention covered by the patent claims.
`
`30.
`
`I also understand that secondary considerations of non-obviousness
`
`are inadequate to overcome a strong showing on the primary considerations of
`
`obviousness. For example, where the inventions represented no more than the
`
`predictable use of prior art elements according to their established functions, the
`
`secondary considerations are inadequate to establish non-obviousness.
`
`31.
`
`The Patent Owner did not identify any alleged objective indicia of
`
`non-obviousness in its Preliminary Response (Paper No.
`
`l l) in Case IPR2015-
`
`00412.
`
`I am not aware of any objective indicia of non-obviousness for the “871
`
`patent.
`
`E.
`
`Date of Invention
`
`32.
`
`I understand that absent clear and convincing evidence of invention
`
`date prior to the filing date of a patent, the invention date of the patent is presumed
`
`to be its effective filing date. A prior invention requires a complete conception of
`
`the invention and a reduction to practice of that invention. The patentee has the
`
`14
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`burden of establishing by clear and convincing evidence a date of conception
`
`earlier than the effective filing date of the patent.
`
`33.
`
`Conception is the formation in the mind of the inventor of a definite
`
`and permanent idea of the complete and operative invention. Conception must be
`
`proved by corroborating evidence which shows that the inventor disclosed to
`
`others his complete thought expressed in such clear terms as to enable those skilled
`
`in the art to make the claimed invention. The inventor must also show possession
`
`of every feature recited in the claims, and that every limitation was known to the
`
`inventor at the time of the alleged conception. Furthermore, the patentee must
`
`show that he or she has exercised reasonable diligence in later reducing the
`
`invention to practice, either actual or constructive. The filing of a patent
`
`application can serve as a constructive reduction to practice.
`
`III. THE ’87] PATENT
`
`A.
`
`The ”871 Patent Technology Background and Disclosure
`
`34.
`
`The ’87! patent relates generally to “image capture and transmission
`
`systems and is specifically directed to an image capture, compression. and
`
`transmission system for use in connection with land line and wireless telephone
`
`systems.” Ex. 1001, “871 patent at 1:17—20. According to the “871 patent, the
`
`system “is particularly well suited for sending and/or receiving images Via a
`
`15
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`ZTE Exhibit 1002
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`standard Group III facsimile transmission system and permits capture of the image
`
`at a remote location using an analog or digital camera.” 10'. at 5:3-6.
`
`35.
`
`Figure 7A depicts “a hand held device for capturing, storing and
`
`transmitting an image in accordance with the invention.” Id. at 4:46-48, 11:3-20.
`
`Figure 7A is reproduced below:
`
`
`
`
`36.
`
`Figure l of the ’871 patent provides a block diagram of a basic
`
`facsimile camera configuration for capturing an image via a camera and
`
`transmitting it via Group III facsimile transmission to a standard hard copy
`
`medium. 10’. at 4:27-30. Figure l is reproduced below:
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`
`
`
`
`m
`
`22
`
`26
`
`o
`
`W 36
`
`33
`
`4o
`
`42
`
`
`
`37.
`
`Claim 1 of the ’87] patent, reproduced below, is illustrative.
`
`l. A handheld self-contained cellular telephone and 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:
`
`a manually portable housing;
`
`an integral image capture device comprising an electronic
`
`camera contained within the portable housing;
`
`a display for displaying an image framed by the camera, the
`
`display being supported by the housing, the display and the electronic
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`17
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`ZTE Exhibit 1002
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`camera being commonly movable in the housing when the housing is
`
`moved by hand;
`
`a processor in the housing for generating an image data signal
`
`representing the image framed by the camera;
`
`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;
`
`a user interface for enabling a user to select the image data
`
`signal for viewing and transmission;
`
`a telephonic system in the housing for sending and receiving
`
`digitized audio signals and for sending the image data signal;
`
`alphanumeric input keys in the housing for permitting manually
`
`input digitized alphanumeric signals to be input to the processor; the
`
`telephonic system further used for sending the digitized alphanumeric
`
`signals;
`
`a wireless communications device adapted for transmitting any
`
`of the digitized signals to the compatible remote receiving station;
`
`and
`
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`

`a power supply for powering the system.
`
`B.
`
`Challenged Claims of the ’87] Patent
`
`38.
`
`I understand that the challenged claims of the ’87] patent are claims
`
`1-8 and 12-14. Claims I, 6 and 12 are independent claims, while claims 2-5, 7, 8,
`
`l3 and 14 are dependent claims.
`
`C.
`
`Person of Ordinary Skill in the Art for the ’871 Patent
`
`39.
`
`I expect to offer testimony regarding the level of ordinary skill in the
`
`art relevant to the ’87] patent.
`
`] understand that factors such as the education level
`
`of those working in the field, the sophistication of the technology, the types of
`
`problems encountered in the art, the prior art solutions to those problems, and the
`
`speed at which innovations are made may help establish the level of skill in the art.
`
`40.
`
`The ’871 patent relates to methods and apparatus for wireless
`
`communications. The claimed priority date for the ’87] patent is January 12,
`
`1998.
`
`41.
`
`In the 1998 time frame, I believe a person of ordinary skill in the art
`
`of the subject matter of the ’87] Patent would have had a Bachelor’s degree in
`
`electrical engineering or a similar degree, with 3-5 years of experience in the
`
`design and implementation of such wireless communications systems, or the
`
`equivalent.
`
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`ZTE Exhibit 1002
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`42.
`
`Based on my education and experience in the field of wireless
`
`communications relevant to the ’87] patent, I would have been at least a person of
`
`ordinary skill in the art at the earliest priority date of the “871 patent. Unless
`
`otherwise stated below, when I provide my understanding and analysis below, it is
`
`consistent with the level of ordinary skill in the technologies at or around the
`
`priority date of the “871 patent.
`
`D.
`
`Claim Construction
`
`43.
`
`I understand that for the purpose of interpartes review, claim terms
`
`are presumed to take on their broadest reasonable interpretation (BRI), to a person
`
`of ordinary skill in the art, which is consistent with the specification.
`
`It is my
`
`opinion that this presumption is appropriate for the interpretation of the challenged
`
`claims of the ’871 Patent.
`
`44. My opinions regarding the construction of certain claim terms are
`
`limited only to this inter partes review, under the standard articulated above, and
`
`should not be interpreted as my opinion regarding the construction of those certain
`
`claim terms under the standard of claim construction used in a district court (or any
`
`other) proceeding.
`
`20
`
`ZTE Exhibit 1002
`
`

`

`I.
`
`“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) I “framing the visual
`image (claim 7)”
`
`45.
`
`The ’87} patent’s claims include various limitations related to
`
`“framing an image.” The phrase “an image framed by the camera” appears in
`
`claim 1, the phrase “framing the image to be captured,” appears in claims 2, 9, 12,
`
`the phrase “visually framing a visual image to be captured,” appears in claim 6,
`
`and the phrase “framing the visual image framing and image” appears in claim 7.
`
`The broadest reasonable interpretation for these terms is similar, and refers to using
`
`the camera to establish boundaries of an image. As the claim language itself
`
`demonstrates, “frame” in the context of the claims refers to composing an image
`
`by positioning the subject of the image within the boundaries of the camera’s field
`
`of view. The specification does not provide any further guidance as it fails to use
`
`the terms “framed” or “framing,” and only uses the term “frame” as a noun in an
`
`image processing context. See Ex. [00] at 8:21-23. The prosecution history does
`
`not appear to provide any meaningful guidance on the term. As a result, the
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`broadest reasonable interpretation of “an image framed by the camera” as used in
`
`claim 1 means “an image having boundaries established by the camera”; “framing
`
`[a visual/the] image to be captured” as used in claims 2, 6, 9, and 12 means
`
`“visually establishing the boundaries of an image to be captured”; and “framing the
`
`visual image” as used in claim 7 means “establishing the boundaries of an image.”
`
`21
`
`ZTE Exhibit 1002
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`

`

`Such a construction is consistent with the language of the challenged claims in the
`
`’87] patent and does not conflict with the intrinsic evidence.
`
`46.
`
`I reserve the right to amend my opinions stated herein should the
`
`Board order a construction of claim terms other than my opinion reflected herein
`
`regarding their broadest reasonable interpretation to a person of ordinary skill in
`
`the art at the time of the “871 patent application.
`
`IV.
`
`PRIOR ART
`
`A.
`
`U.S. Patent No. 5,550,754 (“McNelley”) (Ex. 1003)
`
`47.
`
`The McNelley patent, titled “Teleconferencing Camcorder,” was filed
`
`on May 13, 1994 and issued on August 27, [996. As such, it is my understanding
`
`that McNelley qualifies as prior art to the ’87! Patent under 35 U.S.C. § 102(b).
`
`McNelley was not considered by the examiner during prosecution of the ’871
`
`patent.
`
`48.
`
`The McNelley patent discloses a device that combines a portable
`
`recording video camera and video-conferencing terminal. Ex. 1003, McNelley at
`
`Abstract. The McNelley describes a “telecamcorder configured for use as a self-
`
`contained teleconferencing terminal as well as a camcorder” 1d. at 6:35-37. The
`
`disclosed device integrates a phone, camera, microphone, speaker, and antenna for
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`transmission and reception of images and sound.
`
`Id. at Fig. 8.
`
`Illustrative figures
`
`of the McNelley parent’s device are provided below:
`
`22
`
`ZTE Exhibit 1002
`
`

`

`
`
`Id. at Figs. 6-8.
`
`49.
`
`Figure 6 illustrates the preferred placement of the camcorder’s camera
`
`either above (142) or below (144) the display 100 on a perpendicular axis that
`
`passes through the center (146) of the display. 1d. at 617—] 1. Figure 7 illustrates
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`the appearance of a conferee whose image is captured by the camera in position
`
`142 of Figure 6, which permits natural conversation in which people face each
`
`other while talking. 1d. at 6: 1 1—16. Figure 8 illustrates a configuration of a
`
`complete telecamcorder terminal disclosed by the McNelley patent.
`
`Id. at 3:18—19.
`
`Figure 8 shows the telecamcorder in teleconferencing mode where camera 102 is
`
`23
`
`ZTE Exhibit 1002
`
`

`

`pointed in the same direction as the viewing side of the display 100. Id. at 6:37—39.
`
`Camera 102, which is located above display 100 along center axis 150, permits
`
`face-to-face conversation.
`
`Id. at 6:43—45. The rotatable camera boom 156 also
`
`contains microphone 114, light 152, and camera 102.
`
`Id. at 6:45-48. The device’s
`
`handset 174, which includes microphone 176 and speaker 178, functions like a
`
`traditional phone and can be connected directly to the main housing 148 by line
`
`184 through common phone jacks. Id. at 7:41-44. Included on handset 174 are
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`network access controls 186, telecamcorder controls 188, and latch 190 that mates
`
`with latch 92 on the main housing 148.
`
`Id. at 7:58-61.
`
`B.
`
`U.S. Patent No. 5,491,507 (“Umezawa”) (Ex. 1004)
`
`50.
`
`The Umezawa patent, titled “Video Telephone Equipment,” was filed
`
`on October 22, 1993 and issued on February 13, 1996. As such, it is my
`
`understanding that Umezawa qualifies as prior art to the ”871 Patent under 35
`
`U.S.C. § 102(b). Umezawa was not considered by the examiner during
`
`prosecution of the ’871 patent.
`
`51.
`
`Umezawa discloses a video telephone device that permits a user to
`
`send and receive pictures and speech while holding the device in one hand. Ex.
`
`1004, Umezawa at Abstract. Umezawa’s disclosed device includes a microphone,
`
`a speaker, a display panel, a control panel, and a camera. Id. Umezawa’s Figs.
`
`1
`
`and 7 illustrate a preferred embodiment of the disclosed device in vocal
`
`24
`
`ZTE Exhibit 1002
`
`

`

`communication and Visual communication attitudes, respectively. Figures 1 and 7
`
`are reproduced below:
`
`
`
`Id. at Figs. 1, 7.
`
`52. As shown in these figures, Umezawa’s device has a body 2. Id. at
`
`5:31—34. Camera 3, speaker 6 (located within ear pad 4), display panel 1 1,
`
`transmission/reception key 12, termination key 13, control panel 14, functional
`
`keys 15, and microphone 16 are all located on body 2.
`
`Id. at 5:35-49. Control
`
`panel 14 is a liquid crystal display (LCD) with a touch panel.
`
`Id. at 8:23-29.
`
`Umezawa describes using control panel 14 and function keys 15 can be used as a
`
`user interface for changing—over picture frames, scrolling the picture frame,
`
`25
`
`ZTE Exhibit 1002
`
`

`

`inputting telephone numbers, and other functions for video phone transmission. Id.
`
`8:30-35, 10:16-31, 10:62-1 1:8.
`
`53.
`
`Umezawa further discloses that its device includes a circuit board 17,
`
`which contains a pr