throbber
Patent No. 7,365,871 B2
`Petition For Inter Partes Review
`
`Paper No. 1
`
`IN THE
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`ZTE CORPORATION AND ZTE (USA) INC.,
`
`
`
`
`
`
`
`- vs. -
`
`E-WATCH, INC.,
`
`
`Petitioners
`
`Patent Owner
`
`
`
`_____________
`
`Patent No. 7,365,871 B2
`Issued: April 29, 2008
`Inventor: David A. Monroe
`Title: APPARATUS FOR CAPTURING, CONVERTING AND
`TRANSMITTING A VISUAL IMAGE SIGNAL VIA A DIGITAL
`TRANSMISSION SYSTEM
`
`Inter Partes Review No.
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO.
`7,365,871 B2 UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. §§ 42.1-.80,
`42.100-.123
`_____________
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`
`Patent No. 7,365,871 B2
`Petition For Inter Partes Review
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`INTRODUCTION .......................................................................................... 1
`
`II. MANDATORY NOTICES (37 C.F.R. § 42.8(A)(1)) .................................... 1
`
`A.
`
`Real Party-In-Interest (37 C.F.R. § 42.8(b)(1)) ................................... 1
`
`B. Notice of Related Matters (37 C.F.R. § 42.8(b)(2)) ............................. 1
`
`C. Designation of Lead and Backup Counsel (37 C.F.R. § 42.8(b)(3)) ... 2
`
`D.
`
`Service of Information (37 C.F.R. § 42.8(b)(4)) .................................. 3
`
`III. GROUNDS FOR STANDING (37 C.F.R. § 42.104(A)) ............................... 3
`
`IV.
`
`IDENTIFICATION OF CHALLENGE (37 C.F.R. § 42.104(B)) ................. 3
`
`A.
`
`B.
`
`Effective Filing Date of the ’871 patent ............................................... 3
`
`There Is a Reasonable Likelihood That at Least One Claim of the ’871
`Patent Is Unpatentable under 35 U.S.C. § 103(a). ............................... 4
`
`V. OVERVIEW OF THE ’871 PATENT ........................................................... 5
`
`VI. LEVEL OF ORDINARY SKILL ................................................................... 6
`
`VII. CONSTRUCTION OF THE CHALLENGED CLAIMS (37 C.F.R. §
`42.104(B)(3)) .................................................................................................. 7
`
`1.
`
`“an image framed by the camera” (claim 1), “framing the
`image to be captured” (claims 2 & 12), “visually framing a
`visual image to be captured” (claim 6) and “framing the visual
`image” (claim 7) ........................................................................... 8
`
`VIII. THE CHALLENGED CLAIMS ARE UNPATENTABLE. .......................... 9
`
`A. Overview of the Prior Art ..................................................................... 9
`
`1. U.S. Patent No. 5,550,754 (“McNelley”) (Ex. 1003) .................. 9
`
`2. U.S. Patent No. 5,491,507 (“Umezawa”) (Ex. 1004) ................ 11
`
`ii
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`

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`Patent No. 7,365,871 B2
`Petition For Inter Partes Review
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`B.
`
`Specific Grounds for the Petition ....................................................... 16
`
`1. Ground 1: Claims are 1-8 and 12-14 are Obvious in view of
`McNelley and Umezawa ............................................................ 16
`
`2. Claim Charts............................................................................... 26
`
`Claim Chart 1: McNelley and Umezawa .......................................... 26
`
`IX. CONCLUSION ............................................................................................. 57
`
`
`
`iii
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`Patent No. 7,365,871 B2
`Petition For Inter Partes Review
`
`
`TABLE OF AUTHORITIES
`
`CASES
`In re Am. Acad. of Sci. Tech Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004) ............................................................................ 7
`
`Page(s)
`
`In re Yamamoto,
`740 F.2d 1569 (Fed. Cir. 1984) ............................................................................ 7
`
`STATUTES
`
`35 U.S.C. § 102 ................................................................................................ 4, 9, 11
`
`35 U.S.C. § 103 ...................................................................................................... 4, 5
`
`35 U.S.C. § 311 .................................................................................................... 1, 57
`
`35 U.S.C. § 314(a) ..................................................................................................... 5
`
`RULES
`
`37 C.F.R. § 42.8 ................................................................................................. 1, 2, 3
`
`37 C.F.R. § 42.100 ................................................................................................. 1, 7
`
`37 C.F.R. § 42.101 ................................................................................................... 57
`
`37 C.F.R. § 42.104 ........................................................................................... 3, 7, 16
`
`
`
`
`
`iv
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`Patent No. 7,365,871 B2
`Petition For Inter Partes Review
`
`
`EXHIBIT LIST (37 C.F.R. § 42.63(e))
`
`Exhibit
`
`Description
`
`1001
`
`1002
`
`1003
`
`1004
`
`U.S. Patent No. 7,365,871 B2 to David A. Monroe
`
`Declaration of Tim A. Williams, Ph.D.
`
`U.S. Patent No. 5,550,754 to McNelley
`
`U.S. Patent No. 5,491,507 to Umezawa
`
`v
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`

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`Patent No. 7,365,871 B2
`Petition For Inter Partes Review
`
`I.
`
`INTRODUCTION
`In accordance with 35 U.S.C. §§ 311-319 and 37 C.F.R. §§ 42.1-.80 &
`
`42.100-.123, inter partes review is respectfully requested for claims 1-8 and 12-14
`
`of United States Patent No. 7,365,871 B2 to David A. Monroe, titled “Apparatus
`
`for Capturing, Converting and Transmitting a Visual Image Signal via a Digital
`
`Transmission System” (the “’871 patent”) owned by e-Watch, Inc. (“e-Watch”).
`
`(Ex. 1001.) This petition demonstrates that there is a reasonable likelihood that the
`
`petitioners will prevail on at least one of the claims challenged in the petition based
`
`on prior art references that the Office did not have before it during prosecution.
`
`Claims 1-8 and 12-14 of the ’871 patent should therefore be canceled as unpatent-
`
`able. This petition is filed concurrently with a motion for joinder with Case
`
`IPR2015-00412 pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b).
`II. MANDATORY NOTICES (37 C.F.R. § 42.8(A)(1))
`A. Real Party-In-Interest (37 C.F.R. § 42.8(b)(1))
`The real parties-in-interest for this petition are ZTE Corporation and ZTE
`
`(USA) Inc. (collectively, “Petitioner”).
`
`B. Notice of Related Matters (37 C.F.R. § 42.8(b)(2))
`This petition presents the same prior art references, and the same ground ap-
`
`plying those references, in Apple Inc.’s petition upon which inter partes review
`
`was instituted in Case IPR2015-00412 (PTAB May 11, 2015). The ’871 patent is
`
`also involved in Case IPR2014-00439 (terminated), IPR2014-00987 (instituted),
`
`1
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`Patent No. 7,365,871 B2
`Petition For Inter Partes Review
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`IPR2015-00402 (pending), IPR2015-00404 (pending), IPR2015-00406 (pending),
`
`IPR2015-00411 (not instituted), IPR2015-00412 (instituted), IPR2015-00413 (not
`
`instituted), IPR2015-00541 (instituted), and IPR 2015-00610 (pending). The ’871
`
`patent is presently the subject of the following patent infringement lawsuits
`
`brought by e-Watch, Inc. in the following E.D. Tex. district court litigations: Civil
`
`Action No. 2:13-CV-1061 (JRG/RSP) (Lead Case) and consolidated case nos. 13-
`
`CV-1062; 1063; 1064; 1069; 1070; 1071; 1072; 1073; 1074; 1075; 1076; 1077;
`
`and 1078.
`
`C. Designation of Lead and Backup Counsel (37 C.F.R. § 42.8(b)(3))
`Petitioner provides the following designation of counsel:
`
`Lead Counsel
`Steven A. Moore (Reg. No. 55,462)
`PILLSBURY WINTHROP SHAW
`PITTMAN LLP
`Postal and Hand Delivery Address
`501 W. Broadway Suite 1100
`San Diego, CA 92101
`Telephone: 619.544.3112
`Facsimile: 619.236.1995
`Email: steve.moore@pillsburylaw.com
`
`Back-Up Counsel
`Barry K. Shelton (Reg. No. 43,113)
`PILLSBURY WINTHROP SHAW
`PITTMAN LLP
`Postal and Hand Delivery Address
`111 Congress Avenue, Suite 400
`Austin, TX 78701
`Telephone: 512.375.4907
`Facsimile: 512.270.7823
`Email: barry.shelton@pillsburylaw.com
`
`2
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`Patent No. 7,365,871 B2
`Petition For Inter Partes Review
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`Back-Up Counsel
`Richard W. Thill (Reg. No. 53,686)
`PILLSBURY WINTHROP SHAW
`PITTMAN LLP
`Postal and Hand Delivery Address
`501 W. Broadway Suite 1100
`San Diego, CA 92101
`Telephone: 619.544.3112
`Facsimile: 619.236.1995
`Email: richard.thill@pillsburylaw.com
`D.
`Service of any documents via hand-delivery may be made at the postal mail-
`
`Back-Up Counsel
`Brian Nash (Reg. No. 58,105)
`PILLSBURY WINTHROP SHAW
`PITTMAN LLP
`Postal and Hand Delivery Address
`111 Congress Avenue, Suite 400
`Austin, TX 78701
`Telephone: 512.375.4929
`Facsimile: 512.375.4901
`Email: brian.nash@pillsburylaw.com
`
`Service of Information (37 C.F.R. § 42.8(b)(4))
`
`ing addresses of the respective lead and back-up counsel designated above with
`
`courtesy copies to the email address Docket_IP@pillsburylaw.com. Petitioner
`
`consents to electronic service.
`
`III. GROUNDS FOR STANDING (37 C.F.R. § 42.104(A))
`
`Petitioner certifies pursuant to Rule 42.104(a) that the ’871 patent is availa-
`
`ble for inter partes review and that Petitioner is not barred or estopped from re-
`
`questing an inter partes review challenging the validity of the above-referenced
`
`claims of the ’871 patent on the grounds identified in the petition.
`IV.
`
`IDENTIFICATION OF CHALLENGE (37 C.F.R. § 42.104(B))
`A. Effective Filing Date of the ’871 patent
`The ’871 patent issued from Application No. 10/336,470. It was filed on
`
`January 3, 2003 as a division of Application No. 09/006,073, filed on January 12,
`
`1998, which was previously abandoned and revived to provide co-pendency with
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`Patent No. 7,365,871 B2
`Petition For Inter Partes Review
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`the ’871 application. Challenged claims 1, 6 and 12 of the ’871 patent are inde-
`
`pendent claims. The effective filing date of these claims and claims that depend on
`
`them (claims 2-5, 7, 8, 13 and 14) is no earlier than January 12, 1998.
`
`B.
`
`There Is a Reasonable Likelihood That at Least One Claim of the
`’871 Patent Is Unpatentable under 35 U.S.C. § 103(a).
`
`The challenged claims 1-8 and 12-14 of the ’871 patent are generally di-
`
`rected to an image capture and transmission system for use in connection with land
`
`line and wireless telephone systems. See Exhibit 1001, ’871 patent at 1:17-20.
`
`Prior art had disclosed the subject matter of these claims. The claims are unpatent-
`
`able in view of the following patents and publications:
`
` U.S. Patent No. 5,550,754 was filed on May 13, 1994 and issued Au-
`
`gust 27, 1996 to McNelley (“McNelley”). Because McNelley issued
`
`more than one year prior to the effective filing date of the ’871 patent,
`
`McNelley is prior art to the ’871 patent under § 102(b) (Ex. 1003);
`
`and
`
` U.S. Patent No. 5,491,507 was filed on October 22, 1993 and issued
`
`February 13, 1996 to Umezawa (“Umezawa”). Because Umezawa is-
`
`sued more than one year prior to the effective filing date of the ’871
`
`patent, Umezawa is prior art to the ’871 patent under § 102(b) (Ex.
`
`1004).
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`Patent No. 7,365,871 B2
`Petition For Inter Partes Review
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`Section VIII below explains how the above-cited patents and patent applica-
`
`tion publication create a reasonable likelihood that Petitioner will prevail on at
`
`least one of the challenged claims. See 35 U.S.C. § 314(a). Indeed, section
`
`VIII.B.1, as supported by the claim charts in Section VIII.B.2 and Declaration of
`
`Tim A. Williams, Ph.D. (“Williams Decl.,” Ex. 1002), demonstrates that all of the
`
`challenged claims are rendered obvious in view of each of these references. Peti-
`
`tioner requests cancellation of challenged claims 1-8 and 12-14 as unpatentable
`
`under 35 U.S.C. § 103(a).
`V. OVERVIEW OF THE ’871 PATENT
`The ’871 patent relates generally to “image capture and transmission sys-
`
`tems and is specifically directed to an image capture, compression, and transmis-
`
`sion 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 par-
`
`ticularly well suited for sending and/or receiving images via a standard Group III
`
`facsimile transmission system and permits capture of the image at a remote loca-
`
`tion using an analog or digital camera.” Id. at 5:3-6.
`
`Claim 1 is representative and is reproduced below:
`
`1. 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 com-
`patible remote receiving station of a wireless telephone network, the
`system comprising:
`
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`Patent No. 7,365,871 B2
`Petition For Inter Partes Review
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`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 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 repre-
`senting 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 tele-
`phonic 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
`a power supply for powering the system.
`Id., claim 1 at 14:49-15:13.
`VI. LEVEL OF ORDINARY SKILL
`A person of ordinary skill in the art of the subject matter of the ’871 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. Ex. 1002, Williams Decl. ¶¶ 39-42.
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`6
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`Patent No. 7,365,871 B2
`Petition For Inter Partes Review
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`VII. CONSTRUCTION OF THE CHALLENGED CLAIMS (37 C.F.R. §
`42.104(B)(3))
`The terms in claims 1-8 and 12-14 are to be given their broadest reasonable
`
`interpretation (“BRI”), as understood by one of ordinary skill in the art and con-
`
`sistent with the disclosure. See 37 C.F.R. § 42.100(b); see also In re Yamamoto,
`
`740 F.2d 1569, 1571 (Fed. Cir. 1984); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d
`
`1359, 1363-64 (Fed. Cir. 2004). Petitioner notes that this is not the same interpre-
`
`tation that would be given to the claims in other proceedings, because the standard
`
`of claim construction used in this proceeding differs from the standard used to in-
`
`terpret claims in a district court proceeding. Consequently, constructions of the
`
`claim terms that the Panel may adopt in this proceeding, and positions Petitioner
`
`takes in response to those constructions, are not relevant to or binding upon Peti-
`
`tioner in current or subsequent litigation related to the ’871 patent. See SAP Am.,
`
`Inc. v. Versata Dev. Grp., Inc., CBM2012–00001, at 6–19 (PTAB June 11, 2013)
`
`(explaining that the broadest reasonable interpretation standard is only relevant to
`
`Patent Office proceedings). In particular, Petitioner expressly reserves the right to
`
`and may submit constructions for the claims or for individual claim terms in e-
`
`Watch, Inc. v. ZTE Corporation, et al., Civil Action No. 2:13-CV-1071, consoli-
`
`dated with lead case e-Watch, Inc. v. Apple Inc., Civil Action No. 2:13-CV-1061,
`
`now pending in the United District Court for the Eastern District of Texas, Mar-
`
`shall Division, under the legal standard applicable in those proceedings which are
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`Patent No. 7,365,871 B2
`Petition For Inter Partes Review
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`different than those proposed or adopted in this proceeding, including how a per-
`
`son of ordinary skill in the art would understand the claims in light of relevant in-
`
`trinsic and extrinsic evidence.
`
`1.
`
`“an image framed by the camera” (claim 1), “framing the
`image to be captured” (claims 2 & 12), “visually framing a
`visual image to be captured” (claim 6) and “framing the
`visual image” (claim 7)
`
`The term “an image framed by the camera” appears in claim 1, the term
`
`“framing the image to be captured” appears in claims 2 and 12, the term “visually
`
`framing a visual image to be captured” appears in claim 6, and the term “framing
`
`the visual 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. This interpretation is demonstrated by the claim language itself, which uses
`
`“frame” to refer to composing an image by position the subject of the image within
`
`the boundaries of the camera’s field of view. See Ex. 1002, Williams Decl. at ¶ 45.
`
`The specification does not provide any further guidance as it fails to use the
`
`terms “framed” or “framing” in the written description, and only uses the term
`
`“frame” as a noun in an image processing context. See Ex. 1001 at 8:21-23.
`
`As a result, the broadest reasonable interpretation of “an image framed by
`
`the camera” as used in claim 1 is “an image having boundaries established by the
`
`camera.” Ex. 1002, Williams Decl. at ¶ 45. The broadest reasonable interpretation
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`Patent No. 7,365,871 B2
`Petition For Inter Partes Review
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`of “framing [a visual/the] image to be captured” as used in claims 2, 6, 9, and 12, is
`
`“visually establishing the boundaries of an image to be captured.” Id. The broad-
`
`est reasonable interpretation of “framing the visual image” as used in claim 7 is
`
`“establishing the boundaries of an image.” Id. Such constructions are consistent
`
`with the language of the challenged claims in the ’871 patent and do not conflict
`
`with the intrinsic evidence. Id.
`VIII. THE CHALLENGED CLAIMS ARE UNPATENTABLE.
`A. Overview of the Prior Art
`1.
`U.S. Patent No. 5,550,754 (“McNelley”) (Ex. 1003)
`The McNelley patent, titled “Teleconferencing Camcorder,” was filed on
`
`May 13, 1994 and issued on August 27, 1996. McNelley qualifies as prior art to
`
`the ’871 Patent under 35 U.S.C. § 102(b). McNelley was not considered by the
`
`examiner during prosecution of the ’871 patent.
`
`McNelley discloses a device that combines a portable recording video cam-
`
`era and video-conferencing terminal. Ex. 1003, McNelley at Abstract. McNelley
`
`describes a “telecamcorder configured for use as a self-contained teleconferencing
`
`terminal as well as a camcorder.” Id. at 6:35-37. The disclosed device integrates a
`
`phone, camera, microphone, speaker, and antenna for transmission and reception
`
`of images and sound. Id. at Fig. 8. Illustrative figures of the McNelley patent’s
`
`device are provided below:
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`Patent No. 7,365,871 B2
`Petition For Inter Partes Review
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`Id. at Figs. 6-8.
`
`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. Id. at 6:7-11. Figure 7 illustrates the ap-
`
`pearance 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. Id. at 6:11-16. Figure 8 illustrates a configuration of a complete telecam-
`
`corder terminal disclosed by the McNelley patent. Id. at 3:18-19. Figure 8 shows
`
`the telecamcorder in teleconferencing mode where camera 102 is pointed in the
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`Patent No. 7,365,871 B2
`Petition For Inter Partes Review
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`same direction as the viewing side of the display 100. Id. at 6:37-39. Camera 102,
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`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 micro-
`
`phone 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 com-
`
`mon phone jacks. Id. at 7:41-44. Included on handset 174 are network access con-
`
`trols 186, telecamcorder controls 188, and latch 190 that mates with latch 92 on the
`
`main housing 148. Id. at 7:58-61.
`
`U.S. Patent No. 5,491,507 (“Umezawa”) (Ex. 1004)
`
`2.
`The Umezawa patent, titled “Video Telephone Equipment,” was filed Octo-
`
`ber 22, 1993 and issued on February 13, 1996. 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.
`
`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 Figures 1
`
`and 7 illustrate a preferred embodiment of the disclosed device in vocal communi-
`
`cation and visual communication attitudes, respectively. Figures 1 and 7 are re-
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`11
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`Patent No. 7,365,871 B2
`Petition For Inter Partes Review
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`produced below:
`
`Id. at Figs. 1, 7.
`
`
`
`
`
`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 11, transmis-
`
`sion/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 de-
`
`scribes using control panel 14 and function keys 15 can be used as a user interface
`
`for changing-over picture frames, scrolling the picture frame, inputting telephone
`
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`Patent No. 7,365,871 B2
`Petition For Inter Partes Review
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`numbers, and other functions for video phone transmission. Id. 8:30-35, 10:16-31,
`
`10:62-11:8.
`
`Umezawa further discloses that its device includes a circuit board 17, which
`
`contains a processor and a memory, a communication device 18, speaker 6, LCD
`
`11, control circuit board 20, microphone 16, battery 90, antenna 21, and camera 3.
`
`Id. at 5:53-62. These internal components are illustrated in an exploded view of
`
`Umezawa video telephone, which is illustrated in Figure 3, reproduced below:
`
`
`
`Id. at Fig. 3.
`
`3. Motivation to Combine the Prior Art
`It would have been obvious to person of ordinary skill in the art to combine
`
`the teachings of McNelley, the teachings of Umezawa, and the knowledge of a per-
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`Patent No. 7,365,871 B2
`Petition For Inter Partes Review
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`son of ordinary skill in the art at the time of the alleged invention of the ’871 pa-
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`tent. A person skilled in the art would combine these teachings because these ref-
`
`erences both relate to hand-held devices that combine a camera and a wireless tele-
`
`phone for recording, sending, and receiving audio and video, and both references
`
`address similar problems. Ex. 1002, Williams Decl. at ¶ 54. That is, a person of
`
`ordinary skill in the art seeking to solve the problems identified in the ’871 patent
`
`would look to these prior art references for teaching. Id. The combination of these
`
`prior art elements, or substitution of one element for another, would require noth-
`
`ing more than the knowledge or common sense of a skilled artisan using known
`
`methods to yield predictable results in this field of technology. Id.
`
`More specifically, a person of ordinary skill in the art would actually be en-
`
`couraged to combine these particular references because each reference (McNelley
`
`and Umezawa) provides solutions to challenges faced by the system disclosed in
`
`each reference. Id. at ¶ 55. Because each of the references attempt to address the
`
`same technical issues of creating a hand-held video conferencing device that al-
`
`lows for integrated telephone and image processing, the solution proposed in each
`
`reference is applicable to the other reference and interchangeable with other ways
`
`to address challenges each has in common, such as: (1) the need to transmit and
`
`receive audio and video signals; (2) the need for a small device capable of easy and
`
`convenient operation (such as with one hand); and (3) the need for the device to be
`
`14
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`Patent No. 7,365,871 B2
`Petition For Inter Partes Review
`
`mobile and self-powered. Id. These are routine technical problems at the time the
`
`’871 patent was filed, and one of ordinary skill in the art would have been familiar
`
`with such problems and motivated to look to references such as McNelley and
`
`Umezawa for suggested solutions. Id.
`
`A person of ordinary skill in the art, for example, would have been motivat-
`
`ed to reduce the size and increase the convenience of the McNelley telecamcorder
`
`device. Id. at ¶ 56. Indeed, McNelley itself teaches that size and weight are
`
`known problems for telecamcorder devices, and that size reduction solutions
`
`should be explored. See, e.g., Exhibit 1003, McNelley at 12:24-35 (noting the
`
`need for size and weight reductions and suggesting solid state storage as an op-
`
`tion). Thus, a person of ordinary skill in the art would have been motivated to look
`
`to other solutions for further size reduction and convenient hand-held operation of
`
`the McNelley device. Ex. 1002, Williams Decl. at ¶ 56.
`
`The Umezawa hand-held video conferencing device is likewise directed at
`
`improving one-handed user operation and size reduction. See e.g., Exhibit 1004,
`
`Umezawa, 1:35-40. The Umezawa user interface enables user selection of images
`
`for display and transmission, as well as the confirmation of entered numbers
`
`through its display, in a one-handed implementation. See, e.g., id. at Fig. 7, 8:23-
`
`29, 10:3-22. One of ordinary skill in the art would have therefore been motivated
`
`to combine the device in McNelley with device features from Umezawa—such as
`
`15
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`

`
`Patent No. 7,365,871 B2
`Petition For Inter Partes Review
`
`its processor and processing functionality, its LCD touch control panel and user in-
`
`terface—at least for the purpose of providing a more convenient and smaller de-
`
`vice that can be held in one hand, easily operated, and allows for confirming the
`
`accuracy of a data entry (such as telephone numbers) using its display. Ex. 1002,
`
`Williams Decl. at ¶ 56. Accordingly, a person of ordinary skill would have found
`
`it obvious to combine the McNelley and Umezawa devices and disclosures.
`
`The combination of McNelley and Umezawa discloses and renders obvious each of
`
`the limitations of the Asserted Claims because each of the claimed features is dis-
`
`closed in these references, either expressly or inherently, as explained in detail be-
`
`low and in the claim charts in the following section.
`
`Specific Grounds for the Petition
`
`B.
`Pursuant to 37 C.F.R. § 42.104(b), the following section and corresponding
`
`claim charts demonstrate that there is a reasonable likelihood that the challenged
`
`claims are unpatentable.
`
`1. Ground 1: Claims are 1-8 and 12-14 are Obvious in view of
`McNelley and Umezawa
`
`Claims 1-8 and 12-14 of the ’871 patent are obvious over the combination of
`
`McNelley (Ex. 1003) in view of Umezawa (Ex. 1004) for at least the reasons given
`
`below, including the claim charts. McNelley discloses the claimed wireless tele-
`
`phone integrated with an electronic camera in a “handheld” and “manually portable
`
`16
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`

`
`Patent No. 7,365,871 B2
`Petition For Inter Partes Review
`
`housing” as recited in claims 1, 6 and 12. Ex. 1003, McNelley at 6:35-39, 10:16-
`
`18, 14:16-18; id. at Fig. 8; id. at 8:10-15; see also Ex. 1002, Williams Decl. at ¶¶
`
`59-63, 99-105, 124-126.
`
`Under a broadest reasonable interpretation of the “framing” terms discussed
`
`above, McNelley discloses “a display for displaying an image framed by the cam-
`
`era” / “a display supported in the housing for framing an image to be captured” as
`
`recited in claims 1 and 12. Ex. 1003, McNelley at 5:1-7, 6:37-43, 7:14-16, 10:16-
`
`18; see also Ex. 1002, Williams Decl. at ¶¶ 64, 127. Similarly, under the same
`
`broadest reasonable interpretation, McNelley’s camera and display are used “for
`
`visually framing a visual image to be captured” as recited in claim 6. Ex. 1003,
`
`McNelley at 5:1-7, 6:37-43, 7:14-16, 10:16-18; see also Ex. 1002, Williams Decl.
`
`at ¶¶ 112. In other words, McNelley’s device displays images from its integrated
`
`camera on the integrated display, which is used to visually establish the boundaries
`
`of an image to be captured by the camera.
`
`McNelley also discloses “a processor in the housing for generating an image
`
`data signal representing the image framed by the camera” as recited in claim 1, “a
`
`processor associated with the electronic camera for capturing and digitizing the
`
`framed image in a format for transmission over the cellular telephone network via
`
`the cellular telephone” as recited in claim 6, and “a processor for processing the
`
`image framed by the camera for generating a digitized framed image as displayed
`
`17
`
`

`
`Patent No. 7,365,871 B2
`Petition For Inter Partes Review
`
`in the display” as recited in claim 12. McNelley discloses video camera electron-
`
`ics shown in Figure 30 which process the output of the camera 406 into a final vid-
`
`eo signal to be fed to the controller 400 and which are contained in the housing.
`
`Ex. 1003, McNelley at 21:13-16. McNelley also discloses that advanced digital
`
`compression can be implemented using ASIC chips, id. at 18:43-48, the use of mi-
`
`croprocessors for operational functions, id. at 20:54-58, and that image capture and
`
`recording can be digitized, id. at 12:36-39, 13:5-9. These digitized images are
`
`viewed on the display, which can acts as a viewfinder. See id. at 6:41-43, 7:14-16.
`
`Accordingly, McNelley discloses the claimed processors of claims 1, 6, and 12.
`
`Ex. 1002, Williams Decl. at ¶¶ 65-69, 113, 128.
`
`McNelley discloses “a memory associated with the processor for receiving
`
`and storing het digitized image, accessible for selectively displaying in the display
`
`window and accessible for selectively transmitting over the wireless telephone
`
`network the digitized framed image,” as recited in claims 1 and 6, and recited simi-
`
`larly in claim 12. McNelley’s device includes recording electronics 420, which
`
`processes signals for storage in memory 422, which can comprise any type of data
`
`recording medium ranging from tape and disks to solid state microelectronic
`
`memory. Ex. 1003, McNelley at 21:19-26. Image capture, recording, and storage
`
`can be digitized. See id. at 12:36-39, 13:5-9, 20:54-58. These stored signals in-
`
`clude video image signals, and the stored signals can be played back through the
`
`18
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`

`
`Patent No. 7,365,871 B2
`Petition For Inter Partes Review
`
`speaker and display or sent out over connection 104 to a remote terminal or net-
`
`work including a wireless network allowing it to operate like a portable cellular
`
`phone. See id. at 21:48-67, 22:1-3, 14:28-31. Thus, the memory in the McNelley
`
`device is used for receiving and storing digitized framed images that can be selec-
`
`tively displayed in the display or selectively transmitted over a wireless telephone
`
`network. McNelley therefore discloses the claimed “memory” in recited in claims
`
`1, 6, and 12. Ex. 1002, Williams Decl. at ¶¶ 70-76, 114-116, 129.
`
`McNelley discloses “a telephonic system in the housing for sending and re-
`
`ceiving digitized audio signals and for sending the image data signal,” as recited in
`
`claim 1, “a cellular telephone . . . including a transmitter/receiver for transmitting
`
`and receiving audio telephone messages over a cellular telephone network” as re-
`
`cited in claim 6, and “the wireless telephone being selectively operable to accept
`
`and digitize audio signals to be transmitted[,] . . . cover received digitized audio
`
`signals into acoustic audio[, and] . . . transmit and receive non-audio digital sig-
`
`nals” as recited

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