`571.272.7822
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`Paper No. 10
`Filed: September 6, 2016
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`
`
`Before HOWARD B. BLANKENSHIP, GEORGIANNA W. BRADEN, and
`KERRY BEGLEY, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GOOGLE INC. and SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`SUMMIT 6 LLC,
`Patent Owner.
`_______________
`
`Case IPR2015-008061
`Patent 7,765,482 B2
`_______________
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318 and 37 C.F.R. § 42.73
`
`
`
`1 Samsung Electronics Co., Ltd., who filed a Petition in IPR2016-00029, has
`been joined as a petitioner in the instant proceeding.
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`IPR2015-00806
`Patent 7,765,482 B2
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`I.
`INTRODUCTION
`We have jurisdiction to hear this inter partes review under 35 U.S.C.
`§ 6(c), and this Final Written Decision is issued pursuant to 35 U.S.C.
`§ 318(a) and 37 C.F.R. § 42.73. For the reasons that follow, we determine
`that Petitioner has shown by a preponderance of the evidence that claims 12,
`13, 16, 18, 19, 21–25, 35–38, 40–42, 44–46, and 49 of U.S. Patent No.
`7,765,482 B2 (Ex. 1001, “the ’482 patent”) are unpatentable.
`A. Procedural History
`Google Inc., HTC Corporation, and HTC America, Inc.2 (collectively
`“Petitioner”) filed a Petition (Paper 1, “Pet.”) to institute an inter partes
`review of claims 12, 13, 16, 18, 19, 21–25, 35–38, 40–42, 44–46, and 49 of
`the ’482 patent. Summit 6 LLC (“Patent Owner”) filed a Preliminary
`Response (Paper 12, “PO Resp.”). Pursuant to 35 U.S.C. § 314(a), we
`instituted an inter partes review of claims 12, 13, 16, 18, 19, 21–25, 35–38,
`40–42, 44–46, and 49 as (1) unpatentable under 35 U.S.C. § 103 in view of
`Creamer3 and Aihara4 and (2) unpatentable under 35 U.S.C. § 103 in view of
`Mayle5 and Narayen6. See Paper 19 (“Dec. to Inst.”), 33.
`
`
`2 Subsequent to filing the Petition, HTC Corporation and HTC America, Inc.
`settled with Patent Owner and sought to terminate their participation in this
`proceeding. See Paper 9. The request was granted, and HTC Corporation
`and HTC America, Inc. are no longer a party. See Paper 11.
`3 U.S. Patent No. 6,930,709 B1 (issued Aug. 16, 2005, filed Dec. 3, 1998)
`(“Creamer,” Ex. 1004).
`4 U.S. Patent No. 6,223,190 B1 (issued April 24, 2001, filed Apr. 13, 1998)
`(“Aihara,” Ex. 1005).
`5 U.S. Patent No. 6,018,774 (issued Jan. 25, 2000, filed July 3, 1997)
`(“Mayle,” Ex. 1006).
`6 U.S. Patent No. 6,035,323 (issued Mar. 7, 2000, filed Oct. 24, 1997)
`(“Narayen,” Ex. 1007).
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`After institution of trial, Patent Owner filed a Patent Owner Response
`(Paper 28, “PO Resp.”), to which Petitioner filed a Corrected Reply
`(Paper 46, “Reply”). In addition, Patent Owner filed Observations on the
`Cross-Examination of Petitioner’s declarant (Paper 52), to which Petitioner
`filed a response (Paper 58). Petitioner filed a Motion to Exclude Evidence
`(Paper 51), to which Patent Owner filed an Opposition (Paper 57), and
`Petitioner filed a Reply in support of its motion (Paper 61).
`An oral argument was held on May 18, 2016. A transcript of the oral
`argument is included in the record. Paper 62 (“Tr.”).
`B. Related Proceedings
`Petitioner informs us that the ’482 patent and related U.S. Patent No.
`8,612,515 B2 (“’515 patent”) are the subject of district court case Summit 6
`LLC v. HTC Corp., Case No. 7:14-cv-00014-O (N.D. Tex.). Pet. 3. In
`addition, Petitioner informs us that the ’482 patent was the subject of a
`district court case, resulting in a verdict of infringement and validity, that
`was appealed to the U.S. Court of Appeals for the Federal Circuit, Summit 6
`LLC v. Samsung Electronics Co., No. 2013-1648 (Fed. Cir.). See id. The
`Federal Circuit affirmed the final judgment entered on the jury verdict on
`September 21, 2015. See Summit 6, LLC v. Samsung Elec. Co. Ltd., Nos.
`2013-1648, -1651 (Fed. Cir. Sept. 21, 2015). Petitioner also informs us that
`the ’482 patent is the subject of ex parte reexamination no. 90/012,987, and
`four other petitions for inter partes review (IPR2015-00685, IPR2015-
`00686, IPR2015-00687, and IPR2015-00688). Pet. 3–4.
`C. The ’482 Patent
`According to the ’482 patent, at the time of the disclosed invention,
`sharing digital images over the Internet was complex and required “a level
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`of sophistication . . . beyond that of the ordinary user.” Ex. 1001, 1:20–34.
`The patent purports to solve this problem with a “web-based media
`submission tool,” which “allows submission of media objects in a
`convenient, intuitive manner” that does not require the user to make any
`modifications to media objects before sending or uploading them. Id. at
`1:45–48, 2:60–67.
`The tool disclosed in the ’482 patent allows a user to select media
`objects stored at a first location (e.g., a client). Id. at [57], 2:3–6, 2:44–47,
`4:46–47. The media objects may be “pictures (images), movies, videos,
`graphics, sound clips.” Id. at 2:47–48. The user selects the media objects
`through either a “drag and drop” or a file browsing functionality. Id. at
`3:20–48. The tool then may allow the user to confirm the selected media
`objects with a visual representation, such as a thumbnail image. Id. at [57],
`2:9–11, 3:65–4:3.
`Next, the tool pre-processes the selected media objects, “automatically
`prepar[ing]” the objects “to meet the requirements of [a] second location”
`(e.g., a server or web site). Id. at [57], 2:14–17, 2:44–3:12, 5:1–4, 5:26–33.
`The media objects may be pre-processed in “any number of ways,” such as
`changing the file format or quality setting, cropping, adding text or
`annotations, and resizing, which includes “compression.” Id. at [57], 4:52–
`4:67. After this pre-processing is complete, the tool transmits or uploads the
`media objects to the second location. Id. at [57], 3:17–19.
`D. Illustrative Claims
`As noted above, an inter partes review was instituted as to claims 12,
`13, 16, 18, 19, 21–25, 35–38, 40–42, 44–46, and 49 of the ’482 patent, of
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`which claims 12, 13, 24, 25, and 35–38 are independent claims. Claim 12 is
`illustrative of the challenged claims and is reproduced below.
`12. A computer implemented method of pre-processing media objects
`in a local device for subsequent transmission to a remote device,
`comprising:
`a. receiving pre-processing parameters from a remote device, said
`pre-processing parameters including a specification of an
`amount of media data;
`b. receiving an identification of a group of one or more media
`objects for transmission, a collective media data of said group
`of one or more media objects being limited by said received
`pre-processing parameters;
`c. pre-processing said identified group of one or more media
`objects using said received pre-processing parameters, wherein
`said pre-processing comprises encoding or otherwise
`converting said media object; and
`d. transmitting said pre-processed group of one or more media
`objects to the remote device.
`
`Ex. 1001, 10:40–55.
`
`II. DISCUSSION
`
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (“We
`conclude that the regulation represents a reasonable exercise of the
`rulemaking authority that Congress delegated to the Patent Office.”). Under
`that standard, and absent any special definitions, we give claim terms their
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art at the time of the invention. In re Translogic Tech., Inc., 504
`F.3d 1249, 1257 (Fed. Cir. 2007).
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`Petitioner proposes construction for the claim terms “an amount of
`media data/an amount of digital content,” “publication/publishing,”
`“distributing/distribution,” and “said identification” which are recited in
`certain dependent claims. Pet. 17–20. Patent Owner disputes Petitioner’s
`proposed constructions for the above terms. PO Resp. 7–9. Patent Owner
`also proposes a construction for the term “pre-processing” recited in all the
`challenged independent claims. Id. at 9.
`In the Decision to Institute, we determined that the only term that
`required construction was “said identification” as recited in dependent
`claim 18. See Dec. to Inst. 5–8. During the course of the trial, neither party
`challenged our construction of this claim term. PO Resp. 8; see generally
`Reply. We see no reason to alter the construction of this claim term as set
`forth in the Decision to Institute, and we incorporate our previous analysis
`for purposes of this Decision. Therefore, for the reasons set forth in the
`Decision to Institute, we interpret that “said identification” as recited in
`dependent claim 18 refers to the “identification of digital content” recited in
`claim 13 of the ’482 patent. See Dec. to Inst. 8.
`After analyzing the claims and supporting specification of the
`’482 patent, we determine that we need not provide express constructions for
`any other claim terms.
`B. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
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`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) objective evidence of nonobviousness,
`i.e., secondary considerations. See Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966).
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)). This burden never shifts to
`Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800
`F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek,
`Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of
`proof in inter partes review). Furthermore, Petitioner cannot satisfy its
`burden of proving obviousness by employing “mere conclusory statements.”
`In re Magnum Oil Tools Int’l, Ltd., No. 2015-1300, slip op. at 25 (Fed. Cir.
`July 25, 2016).
`Thus, to prevail in an inter partes review, Petitioner must explain how
`the proposed combinations of prior art would have rendered the challenged
`claims unpatentable. At this final stage, we determine whether the evidence
`of record shows secondary considerations of non-obviousness, shows by a
`preponderance of the evidence that the challenged claims would have been
`obvious over the proposed combinations of prior art.
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`We analyze the instituted grounds of unpatentability in accordance
`with the above-stated principles.
`C. Level of Ordinary Skill in the Art
`According to Petitioner’s declarant, Paul Clark, D.Sc. (“Dr. Clark”), a
`person of ordinary skill in the art relevant to the ’482 patent would have
`been “someone with either an undergraduate, graduate, or doctoral degree in
`computer science (or similar field, e.g., electrical engineering, etc.), or three
`to five years’ industry experience in the general field of software
`engineering and web implementation.” Ex. 1003 ¶ 8.
`Patent Owner disputes Dr. Clark’s opinion regarding the level of skill
`in the art at the time of the ’482 patent, arguing that “requiring 3 to 5 years
`of industry experience in ‘web implementation’ by July 1999 is
`unreasonable” and “[i]t is unreasonable to suggest that a [person of ordinary
`skill in the art] would have an advanced degree in computer science.” PO
`Resp. 6–7. Patent Owner’s declarant, Martin Kaliski, Ph.D. (“Dr. Kaliski”),
`testifies that a person of ordinary skill in the art relevant to the ’482 patent
`would have been a person with “at least a Bachelor of Science degree in
`computer science or electrical engineering or with 2–3 years of experience in
`software engineering.” Ex. 2058 ¶ 15.
`Based on our review of the ’482 patent, the types of problems and
`solutions described in the ’482 patent and cited prior art, the testimony of
`Petitioner’s declarant, and the testimony of Patent Owner’s declarant, we
`find that a person of skill in the art relevant to the ’482 patent would have
`had (i) at least a Bachelor of Science degree in Computer Science or
`Electrical Engineering or a closely related field, or (ii) at least three years of
`experience in software engineering. We note that the applied prior art
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`reflects the appropriate level of skill at the time of the claimed invention.
`See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`D. Asserted Obviousness of Claims 12, 13, 16, 18, 19, 21–25, 35–38,
`40–42, 44–46, and 49 in View of Creamer and Aihara
`Petitioner contends claims 12, 13, 16, 18, 19, 21–25, 35–38, 40–42,
`44–46, and 49 of the ’482 patent are unpatentable under 35 U.S.C. § 103 in
`view of Creamer and Aihara. Pet. 23–41. Patent Owner disputes
`Petitioner’s contentions. PO Resp. 27–36. We have reviewed the Petition,
`Patent Owner’s Response, and Petitioner’s Reply, as well as the relevant
`evidence discussed in those papers. For the reasons that follow, we
`determine that Petitioner has shown by a preponderance of the evidence that
`the challenged claims of the ’482 patent would have been obvious in view of
`Creamer and Aihara. Additionally, as discussed below, we determine that
`Patent Owner’s evidence of secondary considerations of non-obviousness do
`not overcome Petitioner’s showing that the claims would have been obvious
`to one of ordinary skill in the art at the time of the invention.
`1. Overview of Creamer
`Creamer discloses a camera that can transmit real-time and stored
`digital images over a wireless network to a server without requiring the use
`of a personal computer. Ex. 1004, Title, 2:48–65; 10:24–26. One
`embodiment in Creamer discloses an integrated camera connected to the
`internet and is illustrated in Figure 4A, reproduced below.
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`Figure 4A shows camera 1 connected to ISP 304. Id. at 11:56. Once a user
`ID and password are supplied by camera 1, camera 1 is given access to shell
`account 306, where a user may store compressed image files. Id. at 11:56–
`67. Camera 1 may upload and store image files into local shell account 306
`according to controlling file attributes and destination information to the
`local user directory via a provided file transfer application. Id. at 12:9–25.
`Creamer discloses that once camera 1 is connected locally to the internet at a
`first location, it may store images at a second location anywhere in the
`world. Id. at 12:30–32. According to Creamer, camera 1 can store
`numerous variables and parameters that control the operation of the camera,
`and which may be adjusted by the user via a menu structure or via direct
`commands. Id. at 12:48–60. A “user may place a setup or configuration file
`in [a] destination directory . . . and the camera may download a new or
`modified full or partial set of operational parameters.” Id. at 24:10–14.
`Another embodiment in Creamer discloses a capture routine for
`capturing, compressing, and storing one or more images. Id. at 18:18–20.
`The capture routine disclosed by Creamer is illustrated in Figure 8,
`reproduced below.
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`Figure 8 shows a capture routine where: (i) the camera checks if the capture
`is based on an event (e.g., a trigger) or a timer at step S26, (ii) an empty
`image slot is identified in step S30, (iii) an image capture is initiated at
`step S32, (iv) the image is stored into image memory (at this point without
`compression) at step S34, (v) the image is adjusted at step S36 according to
`stored parameters and settings, and (vi) the image is compressed at step S38.
`Id. at 18:20–19:13, Fig. 8. Image slots may be designated for batch
`operations where all images in the identified slots are transmitted as a group
`(id. at 19:23–37) or an image slot may be designated for immediate upload
`so that the single image is uploaded to a designated shell account (id. at
`19:38–46, Fig. 9).
`2. Overview of Aihara
`Aihara discloses a method and system for capturing images using a
`digital camera with an internet connection and generating a formatted
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`electronic document that includes the images. Ex. 1005, 2:59–61. The
`camera preferably includes a LCD screen that provides for various modes,
`including a “play mode.” Id. at 6:39–59, Fig. 5A. In play mode, the user
`can review previously captured images on the LCD screen. Id. at 1:34–36,
`6:65–7:10. Aihara further discloses using a script to provide configuration
`and setup information to the camera. Id. at 3:4–15. The script also can
`provide instructions to a user to capture specific images (id. at 8:10–18) or
`can prompt a user to select pictures from a set stored in the memory of the
`camera or elsewhere (id. at 8:25–28). The camera can be configured to
`process images and convert them into a single HTML file that may be
`uploaded to the internet, “wherein the HTML file is formatted in accordance
`with the script’s predefined model.” Id. at 3:16–25.
`3. Analysis
`a. Independent Claim 12
`Claim 12 generally requires (i) receiving pre-processing parameters
`from a remote device, (ii) receiving an identification of a group of one or
`more media objects for transmission, (iii) pre-processing the identified group
`of one or more media objects, and (v) transmitting the pre-processed group
`of media objects. Ex. 1001, 10:40–55.
`(1) “receiving pre-processing parameters from a remote
`device, said pre-processing parameters including a
`specification of an amount of media data”
`Petitioner contends Creamer and Aihara teach “receiving
`pre-processing parameters from a remote device, said pre-processing
`parameters including a specification of an amount of media data,” as recited
`by challenged claim 12. Pet. 24–25 (citing Exhibit 1003 ¶¶ 34, 35, 37, 39).
`According to Petitioner, Creamer discloses camera downloading parameters,
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`such as compression level, that a user places in a setup or configuration file
`in the user’s destination directory. Id. at 24 (citing Ex. 1004, 24:10–15,
`Fig. 5). Petitioner explains that the setup/configuration file may specify an
`amount of media data through “settings for (e.g., JPEG) compression level,
`resolution, whether an image is stored as a greyscale or a color image, as
`well as any cropping of the image specified, e.g., coordinates of opposite
`corners of the region to be cropped.” Id. at 24–25 (citing Ex. 1004, 13:36–
`44). Petitioner then cites to Aihara for the disclosure of a “set of predefined
`instructions and formatting commands.” Id. at 25 (citing Ex. 1005, 3:10–
`12).
`
`Petitioner relies on the testimony of Dr. Clark to support its position.
`Id. at 24 (citing Exhibit 1003 ¶¶ 34, 35, 37, 39). Dr. Clark testifies that the
`combination of Creamer and Aihara renders a specification of an amount of
`digital content because Creamer discloses settings that specify how the
`camera will compress images, the desired resolution of images, whether an
`image will be cropped, and whether an image is stored in greyscale or in
`color. Exhibit 1003 ¶ 39 (citing Ex. 1004, 13:36–44). Dr. Clark further
`testified that “[o]ne of skill in the art would understand those settings to
`determine the size or quantity of digital content, as defined by the physical
`dimensions, pixel count, or kilobytes of the digital content.” Id.
`Patent Owner contests Petitioner’s position, contending Creamer and
`Aihara fail to teach the limitation “receiving pre-processing parameters from
`a remote device, pre-processing parameters including a specification of an
`amount of media data.” PO Resp. 29–31. According to Patent Owner,
`Creamer never specifies an amount of digital content; instead, it discusses
`the use of an optional parameter that changes the compression level of a
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`captured image based on the rate of data transmission. PO Resp. 30 (citing
`Ex. 1004, 19:9–22). Patent Owner further argues that Petitioner’s citations
`to parameters relating to JPEG are irrelevant because rather than specifying
`an amount of data, modifying the compression level merely changes the
`amount of data. Id. (citing Ex. 2058 ¶ 113). Patent Owner cites to
`testimony from Petitioner’s Declarant, Dr. Clark, who testified that JPEG
`compression does not specify an amount of data. Id. (citing Ex. 2057,
`66:20–67:4).
`We do not agree with Patent Owner. To the contrary, we agree with
`Petitioner’s position and we find that Creamer teaches or suggests “receiving
`pre-processing parameters from a remote device.” In Creamer, a user “may
`place a setup or configuration file,” with parameters specifying the desired
`resolution and compression level of images, in a destination directory on the
`Internet. Ex. 1004, [57], 3:50–56, 13:36–48, 24:1–15, Fig. 5. Creamer’s
`camera may “download” these operational parameters from the “defined
`directory.” Id. at 24:1–15.
`As to whether these “pre-processing parameters includ[e] a
`specification of an amount of media data,” Petitioner has shown sufficiently
`that setting a compression level—which is used to adjust images—specifies
`the amount of media data. We are satisfied that specifying a compression
`level constitutes a specification of an amount of media data, because
`compressing an image to meet a certain compression standard alters the
`amount of stored data. See Ex. 1003 ¶ 38 (opining that compression
`“reduces the overall size of a file of digital content, to limit the digital
`content”); Ex. 3001 (MICROSOFT COMPUTER DICTIONARY (5th ed. 2002)),
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`142 (defining “data compression” as “[a] means of reducing the amount of
`space or bandwidth needed to store or transmit a block of data”).
`(2) “receiving an identification of a group of one or more
`media objects for transmission, a collective media
`data of said group of one or more media objects being
`limited by said received preprocessing parameters”
`Petitioner contends Creamer and Aihara teach “receiving an
`identification of a group of one or more media objects for transmission, a
`collective media data of said group of one or more media objects being
`limited by said received preprocessing parameters” as recited by challenged
`claim 12. Pet. 25–26. Petitioner explains that Creamer discloses a means to
`identify media objects for transmission through an “image pickup . . . to
`store an image,” whereupon the image is converted into digital format and
`stored in “the image memory (at this point, without compression).” Id. at 25
`(citing Ex. 1004, 18:46–56). According to Petitioner, when “settings stored
`in the IMAGE FILES: UPLOAD variable group indicate that the image . . .
`is to be uploaded immediately (e.g., following capture),” the camera’s
`compression engine will limit the designated media data (i.e. the captured
`images), “according to settings stored in the IMAGE FILES: IMAGE
`ADJUST, . . . [and] compress the image in the image memory.” Id. (citing
`Ex. 1004, 19:9–15). Petitioner argues that the captured images (e.g. media
`objects) are limited by the received pre-processing parameters in that the
`parameters define a level of compression that will limit (e.g. reduce) the file
`sizes of those images when the preprocessing occurs. Id. at 25–26 (citing
`Ex.1003 ¶ 38). Petitioner then cites to Aihara for the disclosure of
`“select[ing] pictures from a set stored in the memory of the camera.” Id. at
`26 (citing Ex. 1005, 8:26–28).
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`Contrary to Petitioner’s arguments, Patent Owner contends that
`Creamer and Aihara fail to teach “receiving an identification of a group of
`one or more media objects for transmission.” PO Resp. 27–29. Patent
`Owner argues that Creamer does not teach this limitation because its system
`automatically transfers every picture taken either immediately or in a batch
`operation at a future time. Id. at 28. Moreover, according to Patent Owner,
`Creamer merely collects and then processes the collected raw image data in
`image memory to create and store an image in general purpose memory but
`does not identify an image for transmission. Id. (citing Ex. 2058 ¶ 110).
`Patent Owner argues that before the image data is stored as an addressable
`file in general purpose memory, the data is merely raw data indicative of
`photons captured by the CCD sensor, i.e., no digital image files exists until
`after the image pickup unit captures light photons and the raw data is
`processed and stored as an image file in S38 of the capture routine. Id.
`Therefore, Patent Owner concludes that the functions performed by the
`image pickup unit and the resultant storage of the digital image as a file
`cannot meet this claim limitation. Id. at 28–29. Patent Owner also argues
`that Aihara does not teach this limitation because selecting images for an
`HTML pages does not evidence “receiving an identification” of “media
`objects for transmission.” Id. at 29.
`We do not agree with Patent Owner. To the contrary, we agree with
`Petitioner’s position that Creamer’s teaching of identifying images in image
`files for transmission meets the disputed claim limitation. Additionally, we
`find that a user being prompted to select pictures from a set stored in the
`memory of the camera, as disclosed in Aihara, constitutes receiving an
`identification of a group of one or more media objects for transmission. See
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`Ex. 1005, 8:26–28. Aihara explains that this selection of pictures is made
`for purposes of incorporating the selected pictures into a HTML file, or web
`site. Id. Such “user selection” confirms the identification of an image for
`transmission.
`
`(3) “pre-processing said identified group of one or more
`media objects using said received pre-processing
`parameters”
`Petitioner contends the combination of Creamer and Aihara teaches or
`at least suggests “pre-processing said identified group of one or more media
`objects using said received pre-processing parameters,” as recited in
`challenged claim 12. Pet. 26–27. Petitioner explains that Creamer discloses
`a camera comprising a “compression engine” to pre-process media objects
`(i.e. images) through “image compression under a JPEG standard, but [the
`camera] may be alternatively arranged to output other image formats (e.g.,
`TIFF, GIF) and/or other compression schemes (e.g., Huffman, wavelet,
`fractal). Id. at 26. Petitioner specifically argues that in Creamer, captured
`images are stored in “image slots,” and when “settings stored in the IMAGE
`FILES: UPLOAD variable group indicate that the image in the image slot is
`to be uploaded immediately (e.g., following capture),” the camera’s
`compression engine will, “according to settings stored in the IMAGE
`FILES: IMAGE ADJUST, . . . [and] compress the image in the image
`memory to the appropriate slot.” Id. (citing Ex. 1004, 19:9–32; Fig. 5).
`Petitioner further argues that a person of skill in the art would have
`understood “encoding or otherwise converting a media object” to encompass
`the rendering of analog information into digital form and compressing
`digital information of Creamer, since compression changes the way in which
`a file is coded in the memory of a device. Id. at 27 (Ex. 1003 ¶ 41).
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`Petitioner also relies on Aihara for this claim element, because Aihara
`discloses “[a] script, comprised of computer readable instructions, is
`provided to the digital camera” and “images [that] are located and scaled . . .
`in accordance with the script’s predefined model.” Id. (citing Ex. 1005, 3:4–
`6, 13:19–23).
`Patent Owner disputes Petitioner’s position and contends Creamer and
`Aihara fail to teach “pre-processing said identified group of one or more
`media objects using said received pre-processing parameters,” as recited in
`challenged claim 12. PO Resp. 31–32. According to Patent Owner, the
`parameters in Creamer identified by Petitioner do not control processing of
`image files before transmission as required by the claim language, because
`Creamer’s parameters define how raw image data is manipulated before
`initially being saved in general purpose memory. Id. at 31 (citing Pet. 26–
`27; Ex. 2058 ¶ 116). Patent Owner argues that Figure 8 of Creamer defines
`the image capture routine as including the image adjustment (S36) and
`JPEG compression steps (S38), but Creamer does not teach further
`modifying these image files after they are created. Id (citing Ex. 1004,
`Fig. 8; Ex. 2058 ¶ 116). Patent Owner concludes that because the
`compression and adjustment steps are performed on raw image data, not on
`identified image files, Creamer does not teach or disclose the disputed claim
`limitation. Id. at 32.
`Patent Owner supports its position with the testimony of Dr. Kaliski.
`Dr. Kaliski testifies that Creamer’s parameters define how raw image data is
`manipulated before initially being saved in general purpose memory—the
`parameters tell the camera how to package the raw pixel data collected by a
`camera’s lens and sensor into a digital image file saved in general purpose
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`memory, but not how to process an existing image file prior to or in
`preparation for transfer. Ex. 2058 ¶ 116. Dr. Kaliski further testifies that
`Figure 8 of Creamer defines the image adjustment step (S36) and JPEG
`compression step (S38) as part of the image capture routine and the
`parameters are applicable only to a particular image slot, which does not
`identify any unique image. Id.
`Patent Owner further argues Aihara does not disclose this element
`because reference to how an image is placed in a web page does not describe
`how the image is pre-processed in accordance with received pre-processing
`parameters as recited by the claim language. PO Resp. 32.
`We do not agree with Patent Owner’s position. Specifically, we do
`not agree with Patent Owner that Creamer’s processing is performed only
`during an image capture process and merely controls how a digital image is
`saved (see PO Resp. 29–31), because Creamer teaches adjusting a saved
`image file, including compressing the image (see Ex. 1004, 18:61–19:13,
`Fig. 8). Creamer teaches that in step S34, the YCrCb (i.e., a luminance and
`two color difference signals) are converted to a digital image signal, which is
`passed by compression engine 224 and memory controller 226 to the image
`memory (at this point, without compression). Id. at 18:46–56. At that point,
`according to Creamer, microcontroller 200 controls compression engine 226
`to adjust the image per parameters and setting stored in the camera. Id. at
`18:61–19:13. Creamer goes on to teach that in step S38, compression
`engine 226 compresses the image in image memory 22 to the appropriate
`slot in general purpose (GP) memory. Id. at 19:9–13. Additionally,
`Creamer discloses changing the size of a stored image via cropping. Id. at
`8:43–48 (“a scaling module for interpolating or resampling the stored image
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`to increase or decrease the size of the stored image, including adjustment of
`an aspect ratio of the image and cropping