`Entered: September 16, 2015
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`Trials@uspto.gov
`Tel: 571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
`
`ZTE CORPORATION and ZTE (USA) INC.,
`Petitioners,
`
`v.
`
`E-WATCH, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01336
`Patent 7,365,871 B2
`____________
`
`
`Before JAMESON LEE, GREGG I. ANDERSON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
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`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`Grant of Motion for Joinder
`37 C.F.R. § 122(b)
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`IPR2015-01366
`Patent 7,365,871 B2
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`I.
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`INTRODUCTION
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`Petitioner, ZTE Corporation and ZTE (USA) Inc. (collectively
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`“ZTE”), filed a petition requesting an inter partes review of claims 1–8 and
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`12–14 of U.S. Patent No. 7,365,871 B2 (Ex. 1001, “the ’871 patent”). Paper
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`1 (“Pet.”). Patent Owner, e-Watch, Inc. (“e-Watch”), did not file a
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`preliminary response. We have jurisdiction under 35 U.S.C. § 314. The
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`standard for instituting an inter partes review is set forth in 35 U.S.C.
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`§ 314(a) which provides:
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`THRESHOLD.—The Director may not authorize an inter
`partes review to be instituted unless the Director determines
`that the information presented in the petition filed under section
`311 and any response filed under section 313 shows that there
`is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
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`Upon consideration of the Petition and the evidence submitted by
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`ZTE, we determine that ZTE has demonstrated a reasonable likelihood of
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`prevailing in showing the unpatentability of claims 1–8 and 12–14 of the
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`’871 patent.
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`A. Related Proceedings
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`ZTE identifies these related cases involving the ’871 patent: (1) E-
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`Watch, Inc. and E-Watch Corporation v. Apple Inc., No. 2:13-CV-1061
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`(JRG/RSP) (E.D. Tex.), to which the following case numbers in the same
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`tribunal are consolidated: CV-1062, 1063, 1064, 1069, 1070, 1071, 1072,
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`1073, 1074, 1075, 1076, 1077, and 1078; (2) IPR2014-00439 (PTAB);
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`(3) IPR2014-00987 (PTAB); (4) IPR2015-00402 (PTAB); (5) IPR2015-
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`00404 (PTAB); (6) IPR2015-00406 (PTAB); (7) IPR2015-00411 (PTAB);
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`IPR2015-01366
`Patent 7,365,871 B2
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`(8) IPR2015-00412 (PTAB); (9) IPR2015-00413 (PTAB); (10) IPR2015-
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`00541 (PTAB); and (11) IPR2015-00610 (PTAB). Pet. 1–2. e-Watch does
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`not identify any additional related district court litigation, but additionally
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`identifies IPR2015-00612 (PTAB) as involving the ’871 patent. Paper 6.
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`B. The ’871 Patent
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`The ’871 patent relates generally to “image capture and transmission
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`systems and is specifically directed to an image capture, compression, and
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`transmission system for use in connection with land line and wireless
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`telephone systems.” Ex. 1001, 1:17–20. According to the ’871 patent, the
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`system “is particularly well suited for sending and/or receiving images via a
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`standard Group III facsimile transmission system and permits capture of the
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`image at a remote location using an analog or digital camera.” Id. at 5:3–6.
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`Figure 1 of the ’871 patent is reproduced below.
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`Patent 7,365,871 B2
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`Figure 1 is a block diagram of a basic facsimile camera configuration for
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`capturing an image via a camera and transmitting it via Group III facsimile
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`transmission to a standard hard copy medium. Id. at 4:27–30.
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`Figure 7A of the ’871 patent is reproduced below.
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`Figure 7A depicts “a hand[-]held device for capturing, storing, and
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`transmitting an image in accordance with the invention.” Id. at 4:46–48,
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`
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`11:3–20.
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`C. Illustrative Claim
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`Of the challenged claims, claims 1, 6, and 12 are independent. Claim
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`1 is reproduced below:
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`telephone and
`A handheld self-contained cellular
`1.
`integrated image processing system for both sending and
`receiving telephonic audio signals and for capturing a visual
`image and transmitting it to a compatible remote receiving
`station of a wireless telephone network, the system comprising:
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`a manually portable housing;
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`an integral image capture device comprising an electronic
`camera contained within the portable housing;
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`a display for displaying an image framed by the camera,
`the display being supported by the housing, the display and the
`electronic camera being commonly movable in the housing
`when the housing is moved by hand;
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`a processor in the housing for generating an image data
`signal representing the image framed by the camera;
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`a memory associated with the processor for receiving and
`storing the digitized framed image, accessible for selectively
`displaying in the display window and accessible for selectively
`transmitting over the wireless telephone network the digitized
`framed image;
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`a user interface for enabling a user to select the image
`data signal for viewing and transmission;
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`a telephonic system in the housing for sending and
`receiving digitized audio signals and for sending the image data
`signal;
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`alphanumeric input keys in the housing for permitting
`manually input digitized alphanumeric signals to be input to the
`processor, the telephonic system further used for sending the
`digitized alphanumeric signals;
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`for
`adapted
`communications device
`a wireless
`transmitting any of the digitized signals to the compatible
`remote receiving station; and
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`a power supply for powering the system.
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`Ex. 1001, 14:4915:13.
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`D. Evidence Relied Upon
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`
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`ZTE relies on these prior art references:
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`Reference
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`Date
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`Exhibit
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`McNelley
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`U.S. Patent No. 5,550,754
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`Aug. 27, 1996 Ex. 1003
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`Umezawa
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`U.S. Patent No. 5,491,507
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`Feb. 13, 1996 Ex. 1004
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`
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`Pet. 16–25. ZTE also relies on the Declaration testimony of Tim A.
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`Williams, Ph.D. (Ex. 1002). Pet. 5.
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`E. The Asserted Ground of Unpatentability
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`The sole ground of unpatentability alleged by ZTE is that claims 1–8
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`and 12–14 of the ’871 patent are unpatentable, under 35 U.S.C. § 103, as
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`obvious over McNelley and Umezawa. Pet. 16.
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`A. Claim Construction
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`II. ANALYSIS
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`In an inter partes review, claim terms in an unexpired patent are
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`interpreted according to their broadest reasonable construction in light of the
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`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); In
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`re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015).
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`Even under the rule of broadest reasonable interpretation, claim terms
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`generally also are given their ordinary and customary meaning, as would be
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`understood by one of ordinary skill in the art in the context of the entire
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`disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
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`2007). Only terms which are in controversy need to be construed, and only
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`to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am.
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`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
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`If an inventor acts as his or her own lexicographer, the definition must
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`be set forth in the specification with reasonable clarity, deliberateness, and
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`precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243,
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`1249 (Fed. Cir. 1998). If a feature is not necessary to give meaning to what
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`the inventor means by a claim term, it would be “extraneous” and should not
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`be read into the claim. Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 950
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`(Fed. Cir. 1993); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co.,
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`849 F.2d 1430, 1433 (Fed. Cir. 1988).
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`“an image framed by the camera” (claim 1)
`“framing the image to be captured” (claims 2)
`“framing an image to be captured (claim 12)
`“visually framing a visual image to be captured” (claim 6)
`“framing the visual image” (claim 7)
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`Claim 1 recites “an image framed by the camera.” Claim 2 recites
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`“framing the image to be captured.” Claim 12 recites “framing an image to
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`be captured.” Claim 6 recites “visually framing a visual image to be
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`captured.” Claim 7 recites “framing the visual image.” Petitioner proposes
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`that “an image framed by the camera” means “an image having boundaries
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`established by the camera.” Pet. 8. Petitioner proposes that “framing the
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`image to be captured,” “framing an image to be captured,” and “visually
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`framing a visual image to be captured” each mean “visually establishing the
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`boundaries of an image.” Id. at 9. Petitioner proposes that “framing the
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`visual image” means “establishing the boundaries of an image.” Id.
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`As used in the claims, “framed” and “framing” appear to refer to
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`composing an image by positioning the subject of the image within the
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`boundaries of the camera’s field of view. The terms “framed” and
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`“framing” are not used in the Specification. The term “frame” is used in the
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`Specification, but it is used as a noun, not as a verb, and only in an image-
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`processing context. See, e.g., Ex. 1001, 8:21–23 (“At this point a single
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`frame is captured in RAM 71 and/or on the portable medium RAM 72.”).
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`On the present record, the broadest reasonable interpretation of “an
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`image framed by the camera” (claim 1) is “an image having boundaries
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`established by the camera”; the broadest reasonable interpretation of
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`“framing the image to be captured,” “visually framing a visual image to be
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`captured,” or “framing an image to be captured” (claims 2, 6, and 12) is
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`“visually establishing the boundaries of an image to be captured”; and the
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`broadest reasonable interpretation of “framing the visual image” (claim 7) is
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`“establishing the boundaries of an image.”
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`B. Obviousness of Claims 1–8 and
`12–14 over McNelley and Umezawa
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`
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`Obviousness is determined on the basis of underlying factual
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`inquiries, including: (1) the scope and content of the prior art; (2)
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`differences between the claimed subject matter and the prior art; (3) the level
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`of ordinary skill in the art; and (4) secondary considerations of
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`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). A
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`patent claim is unpatentable under 35 U.S.C. § 103 if the differences
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`between the claimed subject matter and the prior art are such that the subject
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`matter as a whole would have been obvious at the time the invention was
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`made to a person having ordinary skill in the art to which said subject matter
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`pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
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`McNelley (Exhibit 1003)
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`
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`McNelley discloses a combination portable recording video camera
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`and video-conferencing terminal. Ex. 1003, Abst. McNelley describes its
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`device as a “telecamcorder configured for use as a self-contained
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`teleconferencing terminal as well as a camcorder.” Id. at 6:35–37. The
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`device includes an integrated phone, camera, microphone, speaker, and
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`antenna for transmission/reception of images and sound. Id. at Fig. 8.
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`Figures 6–8 of McNelley are reproduced below:
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`Figure 6 illustrates a preferred placement of the camcorder camera in
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`relation to the teleconferencing display. Id. at 3:14–15. Figure 7 illustrates
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`a preferred captured image of a conferee. Id. at 3:16–17. Figure 8 illustrates
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`a configuration of a complete telecamcorder terminal. Id. at 3:18–19.
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`Figure 8 shows the telecamcorder in teleconferencing mode where camera
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`102 is pointed in the same direction as the viewing side of display 100. Id.
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`at 6:37–39. Camera 102 is placed above display 100 along center axis 150,
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`thus permitting straight-on face-to-face conversation. Id. at 6:43–45.
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`Microphone 114, light 152, and camera 102 are contained in rotatable
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`camera boom 156. Id. at 6:45–48. Handset 174, including microphone 176
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`and speaker 178, functions like a traditional phone and can be connected
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`directly to main housing 148 by line 184 via common phone jacks. Id. at
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`7:41–44. Handset 174 also includes network access controls 186,
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`telecamcorder controls 188, and latch 190 that mates with latch 92 on main
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`housing 148. Id. at 7:58–61.
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`Umezawa (Exhibit 1004)
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`
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`Umezawa discloses a video telephone in a casing for holding in one
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`hand, which permits a user to transmit and receive pictures and speech.
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`Ex. 1004, Abst. The video telephone includes a microphone, a speaker, a
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`display panel, a control panel, and a camera. Id. Figure 1 of Umezawa is
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`reproduced below:
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`Figure 1 shows a perspective external view of an embodiment of a video
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`telephone according to Umezawa. Id. at 4:24–26.
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`As shown in Figure 1, Umezawa’s video telephone 1 has body 2. Id.
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`at 5:31–34. Mounted on body 2 are camera 3, speaker 6 within ear pad 4,
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`display panel 11, transmission/reception key 12, termination key 13, control
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`panel 14, functional keys 15, and microphone 16. Id. at 5:35–49.
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`Umezawa’s Figure 3 is reproduced blow.
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`Figure 3 is an exploded view of Umezawa’s video telephone, illustrating
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`various components within the video telephone. Id. at 4:30–31. The video
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`telephone includes circuit board 17 containing a processor and a memory,
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`communication device 18, speaker 6, liquid crystal display panel 11, control
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`circuit board 20, microphone 16, battery 90, antenna 21, and camera 3. Id.
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`at 5:53–62.
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`Discussion of Obviousness
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`
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`In light of the arguments and evidence submitted by ZTE, we
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`determine that ZTE has established a reasonable likelihood that claims 1–8
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`and 12–14 are unpatentable as obvious over McNelley and Umezawa.
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`
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`For instance, with respect to limitations 1(g) of claim 1, 6(k) of claim
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`6, and 12(d) of claim 12, which pertain to a processor that generates an
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`image data signal (claim 1), a processor for capturing and digitizing the
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`framed image (claim 6), and a processor for processing the image framed by
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`the camera for generating a digitized framed image for display (claim 12),
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`ZTE identifies sufficient disclosure of such a processor in McNelley’s
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`disclosure. Pet. 17–18. In particular, ZTE states:
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`McNelley discloses video camera electronics shown in Figure
`30 which process the output of the camera 406 into a final
`video 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
`microprocessors 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.
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`Id. at 18.
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`
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`With respect to limitations 1(i) of claim 1, 6(m) of claim 6, and 12(e)
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`of claim 12, which pertain to a memory “accessible for selectively
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`displaying in the display window and accessible for selectively transmitting
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`over the wireless telephone network the digitized framed image” (claim 1), a
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`memory “accessible for selectively displaying in the display window and
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`accessible for selectively transmitting over the cellular telephone network
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`the digitized framed image” (claim 6), and “a memory associated with the
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`processor for receiving and storing the digitized framed image, for
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`selectively displaying in the display window and for selectively transmitting
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`over a wireless telephone network the digitized framed image” (claim 12),
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`ZTE identifies sufficient disclosure of such a processor in McNelley’s
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`disclosure. Id. at 18–19. In particular, ZTE states:
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`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 include video image signals, and the stored
`signals can be played back through the speaker and display or
`sent out over connection 104 to a remote terminal or network
`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 selectively
`displayed in the display or selectively transmitted over a
`wireless telephone network.
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`Id.
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`
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`With respect to limitations 1(l) of claim 1 and 6(h) of claim 6, which
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`pertain to “alphanumeric input keys in the housing for permitting manually
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`input digitized alphanumeric signals to be input to the processor, the
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`telephonic system further used for sending the digitized alphanumeric
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`signals” (claim 1), and “a keypad for entering manually input alphanumeric
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`signals to be transmitted over the cellular telephone network” (claim 6), ZTE
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`identifies sufficient disclosure for such input keys and keypad in McNelley’s
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`disclosure. Id. at 21. In particular, ZTE states:
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`The McNelley device includes a set of input keys in the housing
`which permit alphanumeric signals to be manually input by an
`operator, as illustrated in McNelley’s Figure 9. Ex. 1003,
`McNelley at Fig. 9. As McNelley describes, “the dialing
`controls 186 and the telecamcorder controls 188 [are] built into
`the main housing 148. Built-in controls may serve in lieu of
`controls on the handset 174.” Id. at Fig. 9, 8:10–15. One of
`ordinary skill in the art would have understood these controls to
`allow for the alphanumeric signals to be manually input into the
`McNelley by an operator. Ex. 1002, Williams Decl. at ¶¶ 81–
`87, 107–108, 132–135.
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`Pet. 21. Dr. Williams also testifies that “the input from the dialing controls
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`186 in a digital wireless telephonic system as taught in McNelley are
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`digitized alphanumeric signals, and these digitized alphanumeric signals
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`would be sent across the digital wireless network as disclosed in McNelley,
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`e.g., for network access.” Ex. 1002 ¶ 84.
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`
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`With respect to limitations 6(i) of claim 6 and 12(g) of claim 12,
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`which pertain to “a display window for viewing the manually input
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`alphanumeric signals” (claim 6), and “a set of input keys supported by the
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`housing to permit alphanumeric signals to be manually input by an operator
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`into the wireless telephone, the alphanumeric signals being presented in the
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`display for viewing by the operator” (claim 12), ZTE identifies sufficient
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`disclosure for such input keys and keypad in McNelley’s disclosure. Pet. 21,
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`41, 54–55. In particular, ZTE states:
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`Although McNelley does not expressly disclose that the
`alphanumeric signals would be presented in the display for
`viewing by the operator, it was conventional in the art to have
`control inputs displayed on a display (such as an LCD),
`particularly if such a display is already present on the device
`and is capable of displaying such signals. Id. at ¶¶ 92–93, 109,
`132–133. One of ordinary skill in the art would have
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`understood the McNelley device’s display to be capable of
`displaying alphanumeric signals. See, e.g., Ex. 1003, McNelley
`at 22:1–3. Thus, it would have been obvious to one of ordinary
`skill in the art for the input from controls 188 to be displayed on
`the provided display. See Ex. 1002, Williams Decl. at ¶¶ 92–
`93, 109, 132–133. Thus, McNelley combined with the
`understanding of one ordinarily skilled in the art renders this
`limitation obvious.
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`Id. at 21–22.
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`
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`With regard to limitations 1(j) of claim 1 and 6(n) of claim 6, which
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`pertain to “a user interface for enabling a user to select the image data signal
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`for viewing and transmission” (claim 1), and “a user-interface for enabling a
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`user to selectively display the digitized framed image in the display window
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`and subsequently transmit the digitized framed image over the cellular
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`telephone network” (claim 6), ZTE’s position is not clearly expressed. For
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`instance, in the claim chart on pages 31 and 47 of the Petition, multiple
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`portions of McNelley’s disclosure are listed as corresponding to these
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`limitations. Yet, the explanation or narrative of how the limitations are met,
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`as expressed on pages 22 and 23 of the Petition, indicate reliance only on
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`Umezawa’s disclosure to meet these limitations. Such ambiguous use of the
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`claim chart, not supported by corresponding narrative elsewhere in the
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`Petition, creates confusion and raises a notice issue as to whether and how e-
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`Watch should respond to the unexplained disclosure of McNelley. Where a
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`claim chart in a petition lists, for a particular limitation, portions of multiple
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`references, as here, the petitioner should ensure that the narrative elsewhere
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`in the petition is clear in how the portions fit together to meet the
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`corresponding limitation.
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`In this case, we focus on Umezawa’s disclosure because that is what
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`ZTE has addressed in its narrative. ZTE identifies sufficient disclosure for
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`such an interface in Umezawa’s disclosure. Pet. 22. In particular, ZTE
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`states:
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`Umezawa also discloses the claimed “user interface for
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`enabling a user to select the image data signal for viewing and
`transmission” as recited in claim 1 and recited similarly in
`claim 6. Umezawa’s user interface includes control panel 14
`and function keys 15 for changing-over pictures, scrolling the
`picture frame, inputting telephone numbers, and starting and
`stopping a video phone transmission. [sic] Ex. 1004, Umezawa
`patent at 8:30–35, 10:16–31, 10:62–11:8. Thus, Umezawa
`expressly discloses a user interface that enables a user to select
`the image data signal for viewing and transmission. Ex. 1002,
`Williams Decl. at ¶¶ 77–78, 117–118.
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`Id. at 22. We also are, on this record, sufficiently persuaded by the reasons
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`asserted by ZTE with regard to combining teachings of McNelley and
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`Umezawa, with regard to limitations 1(j) and 6(n). ZTE has articulated
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`sufficient reasoning with rational underpinnings. For example, ZTE states:
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`One of ordinary skill would have been motivated to
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`combine Umezawa’s user
`input and
`interface with
`the
`McNelley device. As described above, Umezawa’s user
`interface functionality allows for size reduction and more
`convenient hand-held operation, problems that McNelley was
`interested in solving. The Umezawa interface’s ability to
`enable user selection of images for display and transmission
`enhances the operational convenience of McNelley’s device.
`Accordingly, it would have been obvious to one of ordinary
`skill in the art to combine McNelley with Umezawa to achieve
`the claimed features. Ex. 1002, Williams Decl. at ¶¶ 77–78,
`117–118.
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`Id. at 22–23.
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`We further are persuaded sufficiently, on this record, that McNelley
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`discloses limitation 12(f) as identified by ZTE (Pet. 52–53) (“the wireless
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`telephone being selectively operable to accept and digitize audio signals to
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`be transmitted, the wireless telephone being selectively operable to convert
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`received digitized audio signals into acoustic audio, the wireless telephone
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`being selectively operable to transmit and receive non-audio digital signals,
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`the non-audio digital signals including a selected digitized frame image”).
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`ZTE points to various portions of McNelley to support its contention.
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`Id. at 53–54.
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`The above analysis with respect to the independent claims is
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`representative. ZTE similarly addressed sufficiently each of the dependent
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`claims. Id. at 21–25.
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`III. CONCLUSION
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`
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`For the foregoing reasons, ZTE has shown a reasonable likelihood
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`that it would prevail in establishing the unpatentability of each of claims 1–8
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`and 12–14 of the ’871 patent as obvious over McNelley and Umezawa.
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`
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`The Board has not made a final determination on the patentability of
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`any challenged claim.
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`Accordingly, it is
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`IV. ORDER
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`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
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`hereby instituted for each of claims 1–8 and 12–14 of the ’871 patent, under
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`35 U.S.C. § 103, as obvious over McNelley and Umezawa;
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(d) and
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`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial on the
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`grounds of unpatentability authorized above, and that the trial commences
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`on the entry date of this Decision;
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`FURTHER ORDERED that ZTE’s unopposed Motion for Joinder
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`(Paper 3) which seeks to have this proceeding joined with IPR2015-00412,
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`is granted, subject to the limitations agreed to by ZTE, e-Watch, and Apple
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`as summarized in Paper 8 of this proceeding and Paper 23 of IPR2015-
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`00412; and
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`FURTHER ORDERED that this proceeding is joined with IPR2015-
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`00412, that the currently effective due dates in IPR2015-00412 control the
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`joined proceeding, and that all future papers shall be filed only in the joined
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`proceeding.
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`FOR PETITIONER:
`
`Steve Moore
`Richard Thill
`Barry Shelton
`Brian Nash
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`steve.moore@pillsburylaw.com
`richard.thill@pillsburylaw.com
`barry.shelton@pillsburylaw.com
`brian.nash@pillsburylaw.com
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`
`
`FOR PATENT OWNER:
`
`Robert C. Curfiss
`bob@curfiss.com
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`
`
`David O. Simmons
`IVC Patent Agency
`dsimmons1@sbcglobal.net
`
`
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