UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`SAMSUNG ELECTRONICS CO., LTD.
`Petitioner
`
`v.
`
`SUMMIT 6 LLC,
`Patent Owner
`
`_____________________
`
`Case:
`Patent 7,765,482
`
`_____________________
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
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`Table of Contents
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`Page
`
`
`I.
`II.
`
`INTRODUCTION .......................................................................................... 1
`FORMALITIES .............................................................................................. 1
`A.
`Real Party in Interest. ........................................................................... 1
`B.
`Related Matters. .................................................................................... 3
`C.
`Fee. ....................................................................................................... 4
`D. Designation of Lead Counsel and Back-up Counsel. .......................... 4
`E.
`Service Information. ............................................................................. 4
`F.
`Power of Attorney. ............................................................................... 5
`G.
`Standing. ............................................................................................... 5
`III. STATEMENT OF RELIEF REQUESTED ................................................... 5
`IV. SUMMARY OF THE PRIOR ART ............................................................... 6
`A.
`Background of Relevant Technology ................................................... 6
`B.
`Summary of Creamer ........................................................................... 6
`C.
`Summary of Aihara .............................................................................. 8
`D.
`Summary of Mayle ............................................................................... 9
`E.
`Summary of Narayen ......................................................................... 10
`V. MOTIVATIONS TO COMBINE ................................................................. 10
`A. Motivation to Combine Creamer with Aihara ................................... 11
`B. Motivation to Combine Mayle with Narayen .................................... 14
`C.
`Summary of the ’482 Patent. .............................................................. 16
`VI. FACTUAL BACKGROUND ....................................................................... 17
`A. Declaration Evidence. ........................................................................ 17
`B.
`Person of Ordinary Skill in the Art. ................................................... 17
`VII. CLAIM CONSTRUCTION ......................................................................... 17
`A.
`Proposed Constructions. ..................................................................... 18
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`Table of Contents
`(continued)
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`Page
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`1.
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`2.
`
`3.
`
`The broadest reasonable construction of the terms “an
`amount of media data” and “an amount of digital
`content” is at least “quantity or size of digital content, as
`defined by one or more of physical dimensions, pixel
`count, or kilobytes.” ................................................................. 18
`The broadest reasonable construction of the terms
`“publication,” “distribution,” “distributing,” and
`“publishing” is at least “making available to at least one
`person other than the user” ...................................................... 19
`The broadest reasonable construction of the term “said
`identification” is at least “said identification of digital
`content” .................................................................................... 21
`Similar / Related Claim Terms. .......................................................... 21
`B.
`VIII. FULL STATEMENT OF THE REASONS FOR THE RELIEF
`REQUESTED ............................................................................................... 23
`A.
`Claims 12, 13, 16, 18, 19, 21, 22, 23, 24, 25, 35, 36, 37, 38, 40,
`41, 42, 44, 45, 46, and 49 should be cancelled as obvious under
`35 U.S.C. § 103 in view of Creamer and Aihara. .............................. 23
`1.
`Claim 12 should be cancelled as obvious in view of
`Creamer and Aihara. ................................................................ 24
`Claims 13, 24, and 25 should be cancelled as obvious in
`view of Creamer and Aihara. ................................................... 28
`Claims 35 and 38 should be cancelled as obvious in view
`of Creamer and Aihara. ............................................................ 32
`Claims 36 and 37 should be cancelled as obvious in view
`of Creamer and Aihara. ............................................................ 36
`Dependent claims 16, 18, 19, 21, 22, 23, 40, 41, 42, 44,
`45, 46, and 49 should be cancelled in view of Creamer
`and Aihara. ............................................................................... 37
`Claims 12, 13, 16, 18, 19, 21, 22, 23, 24, 25, 35, 36, 37, 38, 40,
`41, 42, 44, 45, 46, and 49 should be cancelled as obvious under
`35 U.S.C. § 103 in view of Mayle and Narayen. ............................... 41
`
`2.
`
`3.
`
`4.
`
`5.
`
`B.
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`Table of Contents
`(continued)
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`Page
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`1.
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`Claim 12 should be cancelled as obvious in view of
`Mayle and Narayen. ................................................................. 41
`Claims 13, 24, and 25 should be cancelled as obvious in
`view of Mayle and Narayen. .................................................... 48
`Claims 35 and 38 should be cancelled as obvious in view
`of Mayle and Narayen. ............................................................. 51
`Claims 36 and 37 should be cancelled as obvious in view
`of Mayle and Narayen. ............................................................. 53
`Dependent claims 16, 18, 19, 21, 22, 23, 40, 41, 42, 44,
`45, 46, and 49 should be cancelled in view of Mayle and
`Narayen. ................................................................................... 55
`IX. CONCLUSION ............................................................................................. 60
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`2.
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`3.
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`4.
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`5.
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`TABLE OF AUTHORITIES
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`Cases
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`In re Cuozzo Speed Techs., LLC, No. 2014-1301, 2015
` WL 448667 (Fed. Cir. Feb. 4, 2015) ……………………….…...........................16
`
`KSR Int’l Co. v. Teleflex Inc.,
` 550 U.S. 398 (2007) .......................................................................... 10, 11, 13, 15
`
`Summit 6 LLC v. Apple Inc.,
` Case No. 7:14-cv-00106 (N.D. Tex. Feb. 18, 2014) ............................................. 2
`
`Summit 6 LLC v. HTC Corp., et al.,
` No. 7:14-cv-00014 (N.D. Tex. Feb. 18, 2014) ...................................................... 2
`
`Summit 6 LLC v. Samsung Elecs. Co., et al.,
` No. 2013-1648 (Fed. Cir. Sept. 13, 2013) ............................................................. 2
`
`Statutes
`
`35 U.S.C. § 102 ............................................................................................... 4, 5, 7
`
`35 U.S.C. § 103 ........................................................................................... 4, 22, 39
`
`35 U.S.C. § 311 ....................................................................................................... 4
`
`35 U.S.C. § 312 ....................................................................................................... 3
`
`Regulations
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`37 C.F.R. § 1.42.104 ...............................................................................................16
`
`37 C.F.R. § 42.1 ....................................................................................................... 4
`
`37 C.F.R. § 42.100 ..................................................................................................16
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`37 C.F.R. § 42.15 ..................................................................................................... 3
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`37 C.F.R. § 42.8 ....................................................................................................... 1
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`77 Fed. Reg. 48699 (2012) .....................................................................................16
`77 Fed. Reg. 48699 (2012) ................................................................................... ..16
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`Exhibit 1001 U.S. 7,765,482 (“the ’482 patent”)
`Exhibit 1002 Complaint in Summit 6 LLC v. HTC Corp., et al., No. 7:14-cv-
`00014-O (N.D. Tex. Feb. 18, 2014) (ECF No. 1).
`Exhibit 1003 Declaration of Dr. Paul Clark
`Exhibit 1004 U.S. 6,930,709 to Creamer et al. (“Creamer”)
`Exhibit 1005 U.S. 6,223,190 to Aihara et al. (“Aihara”)
`Exhibit 1006 U.S. 6,018,774 to Mayle et al. (“Mayle”)
`Exhibit 1007 U.S. 6,035,323 to Narayen et al. (“Narayen”)
`Exhibit 1008 Provisional Application No. 60/085,585, filed on May 15, 1998
`(“Creamer ’98”)
`Exhibit 1009 Provisional Application No. 60/067,310, filed Dec. 4, 1997
`(“Creamer ’97”)
`Exhibit 1010 Ex-parte Reexamination No. 90/012,987, Applicant Arguments
`& Remarks Made in an Amendment, March 31, 2014
`Exhibit 1011 Plaintiff’s Opening Claim Construction Brief in Summit 6 LLC
`v. HTC Corp., et al., No. 7:14-cv-00014-O (N.D. Tex. Feb. 18,
`2014) (ECF No. 217)
`Exhibit 1012 Civil Summons and Proof of Service for Real Parties in Interest
`in Summit 6 LLC v. HTC Corp., et al., No. 7:14-cv-00014-O
`(N.D. Tex. Feb. 18, 2014) (ECF Nos. 11, 13, 14)
`Joint Claim Construction and Prehearing Statement in Summit
`6 LLC v. HTC Corp., et al., No. 7:14-cv-00014-O (N.D. Tex.
`Feb. 18, 2014) (ECF No. 149)
`Joint Notice of Settlement in Summit 6 LLC v. HTC Corp., et
`al., No. 7:14-cv-00014-O (N.D. Tex. Feb. 18, 2014) (ECF No.
`238)
`
`Exhibit 1013
`
`Exhibit 1014
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`I.
`
`INTRODUCTION
`
`Through counsel, Samsung Electronics Co., Ltd. (“Petitioner”) hereby
`
`petitions for institution of inter partes review of U.S. Patent No. 7,765,482 (“the
`
`’482 patent”) (attached as Exhibit 1001), for which an assignment was recorded to
`
`Summit 6 LLC on December 19, 2008. The ’482 patent issued on July 27, 2010,
`
`more than nine months prior to the filing of this petition. A motion for joinder
`
`with inter partes review 2015-00806 is being filed concurrently herewith, within
`
`one month of the institution of that inter partes review. Thus, the ’482 patent is
`
`eligible for inter partes review and Petitioner is not barred, so long as the motion
`
`for joinder is granted.
`
`
`
`II.
`
`FORMALITIES
`A. Real Party in Interest.
`Pursuant to 37 C.F.R. § 42.8(b)(1), the real parties in interest are Petitioner
`
`Samsung Electronics Co., Ltd. and its wholly owned subsidiary, Samsung
`
`Electronics America, Inc.
`
`
`
`B. Related Matters.
`The ’482 patent is the subject of inter partes review 2015-00806, which was
`
`instituted on September 9, 2015, based on a petition substantively identical to this
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`petition. Petitioner is submitting a motion to join inter partes review 2015-00806
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`concurrently with this petition.
`
`The ’482 patent is asserted against Petitioner in Summit 6 LLC v. Research
`
`in Motion et al., 3:11-cv-00367. Petitioner was served with a Complaint alleging
`
`infringement of the ’482 patent in that litigation more than one year ago. Petitioner
`
`is not barred from filing this petition so long as the motion for joinder is granted.
`
`An appeal of a judgment of infringement and validity of the ’482 patent in that
`
`litigation is pending before the Federal Circuit. See Summit 6 LLC v. Samsung
`
`Elecs. Co., et al., No. 2013-1648 (Fed. Cir. Sept. 13, 2013). The Federal Circuit
`
`recently issued an order affirming the judgment, but the mandate has not yet
`
`issued.
`
`The ’482 patent is also the subject of ex parte reexamination 90/012,987,
`
`which was requested by Petitioner. The final rejection of all claims at issue in the
`
`reexamination is on appeal before the Board as appeal no. 2015-006,201. On
`
`October 7, 2015, the Board granted Patent Owner’s motion to stay that
`
`reexamination in light of inter partes review 2015-00806.
`
`The ’482 patent had previously been challenged in four additional inter
`
`partes reviews. (IPR2015-00685, -00686, -00687, -00688). Those four additional
`
`inter partes reviews were dismissed based on settlement. The ’482 patent was
`
`asserted in Summit 6 LLC v. HTC Corp., et al., No. 7:14-cv00014, Summit 6 LLC
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`v. Apple Inc., Case No. 7:14-cv-00106, and Summit 6 LLC v. Twitter, Case No.
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`7:15-cv-00062, which cases have all been dismissed.
`
`
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`Fee.
`
`C.
`This petition is accompanied by a payment of $25,600 and requests review
`
`of 21 claims of the ’482 patent. See 37 C.F.R. § 42.15. Thus, this petition meets the
`
`fee requirements under 35 U.S.C. § 312(a)(1).
`
`
`
`D. Designation of Lead Counsel and Back-up Counsel.
`Lead Counsel for Petitioner is Brian K. Erickson, Registration No. 48,895.
`
`Back-up counsel for Petitioner is James M. Heintz, Registration No. 41,828.
`
`
`
`Service Information.
`
`E.
`As shown in the Certificate of Service, a copy of the present petition and
`
`exhibits are being served to the address of the attorney of record. Petitioner may be
`
`served via email to its lead and backup counsel.
`
`
`
`Power of Attorney.
`
`F.
`A power of attorney is being filed with the designation of counsel in
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`accordance with 37 C.F.R. § 42.10(b).
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`G.
`Standing.
`Petitioner certifies that the ’482 patent is available for inter partes review
`
`and that Petitioner is not barred or estopped from requesting inter partes
`
`review on the grounds identified in this petition, so long as the motion for
`
`joinder is granted.
`
`III. STATEMENT OF RELIEF REQUESTED
`Pursuant to 35 U.S.C. § 311, this petition requests cancellation of claims 12,
`
`13, 16, 18, 19, 21, 22, 23, 24, 25, 35, 36, 37, 38, 40, 41, 42, 44, 45, 46, and 49 as
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`rendered obvious under 35 U.S.C. § 103 by the following combinations:
`
` Exhibit 1004, U.S. 6,930,709 to Creamer et al. (“Creamer”)1 in view
`
`of Exhibit 1005, U.S. 6,223,190 to Aihara et al. (“Aihara”);2 and
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` Exhibit 1006, U.S. 6,018,774 to Mayle et al. (“Mayle”)3 in view of
`
`Exhibit 1007, U.S. 6,035,323 to Narayen et al. (“Narayen”).4
`
`
`
`The ’482 patent claims priority to Application No. 09/357,386, filed on July
`
`21, 1999. Creamer and Aihara are publications that disclose Internet-integrated
`
`digital cameras capable of transmitting preprocessed images to remote devices.
`
`
`1 Claims priority to Provisional App. Nos. 60/085,585 filed May 15, 1998 and
`60/067,310 filed Dec. 4, 1997, and is prior art under at least 35 U.S.C. § 102(e).
`2 Filed on April 13, 1998 and thus is prior art under at least 35 U.S.C. § 102(e).
`3 Filed on Jul. 3, 1997 and thus is prior art under at least 35 U.S.C. § 102(e).
`4 Filed on Oct. 24, 1997 and thus is prior art under at least 35 U.S.C. § 102(e).
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`Mayle and Narayen are publications that disclose client-based digital image
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`processing and distribution systems that operate on a personal computer.
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`IV. SUMMARY OF THE PRIOR ART
`A. Background of Relevant Technology
`The field of art generally relates to client devices capable of selecting,
`
`modifying, and transmitting digital multimedia content, such as images, videos,
`
`and audio files, via the Internet. (Exhibit 1003 ¶¶ 11, 12.) The alleged invention
`
`described in the ’482 patent is a “web-based media submission tool.”
`
`Representative claim 12 of the ’482 patent recites a method for “pre-processing
`
`media objects in a local device” consisting of well-known actions such as receiving
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`parameters from a remote device, preprocessing digital content according to those
`
`parameters, and transmitting the digital content. As further described below, client
`
`devices practicing these steps, alone and in combination, were well-known in the
`
`art before the priority date of the ’482 patent.
`
`Summary of Creamer
`
`B.
`Creamer claims priority to provisional application nos. 60/085,585, filed on
`
`May 15, 1998 (Exhibit 1008), and 60/067,310, filed on December 4, 1997
`
`(“Creamer ’97,” Exhibit 1009). Creamer ’97 contains sufficient disclosure to
`
`render obvious Claims 12, 13, 16, 18, 19, 21, 22, 23, 24, 25, 35, 36, 37, 38, 40, 41,
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`42, 44, 45, 46, and 49 in view of Aihara. (Exhibit 1003 ¶¶ 32-35.) Creamer ’97
`
`discloses “an integrated Internet camera for transmitting digital images to an
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`Internet address” having a network interface “for transmission of the digital image
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`files to the Internet.” (Creamer ’97, 3:28-32; compare Creamer, 2:60-66.) The
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`transmitted images are sent to a “destination shell account at a predetermined
`
`Internet address.” (Creamer ’97, 3:33 – 4:1; compare Creamer, 2:67 – 3:4.) In
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`addition, the camera has a “configuration device” which “retrieves configuration
`
`information from the destination shell account” and “sets operational parameters”
`
`of the components of the camera “according to the configuration
`
`information.”(Creamer ’97, 6:14-20; compare Creamer, 4:32-42.) A component of
`
`the camera is a “compression circuit that generates compressed digital image files
`
`from the captured digital images, so that the file transfer device transfers the
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`compressed digital image files to the destination shell account and the transport
`
`control device packetizes the compressed digital image files according to the
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`predetermined Internet transport control protocol.” (Creamer ’97, 7:3-7; compare
`
`Creamer, 4:54-60.) The relevant substance of this disclosure was carried over to
`
`the non-provisional application that eventually issued as Creamer. (Exhibit 1003 ¶
`
`32.) Therefore, Creamer is prior art under at least 35 U.S.C. § 102(e). In the related
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`ex-parte reexamination of the ’482 patent, Patent Owner did not challenge
`
`Creamer as prior art under 35 U.S.C. § 102(e). (Exhibit 1010, at 4.)
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`Creamer discloses an “integrated Internet camera for transmitting digital
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`images” over a wireless network to a server. (Creamer, Title, 2:60-66; 10:24-26.5)
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`The images are then stored on a server, which has a “local shell account [that]
`
`provides access to a user directory, in which the user may store ... the compressed
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`image files.” (Creamer, 11:61-67; 12:5-25) The “user may place a setup or
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`configuration file in his destination directory [on the server] ... and the camera may
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`download a new or modified full or partial set of operational parameters.”
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`(Creamer, 24:10-14.) One operational parameter, “AUTOCONFIGURE,”
`
`configures the camera “retrieve a setup/configuration file via the file transfer
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`application.” (Creamer, 23:67 – 24:2.) A user may operate the camera to capture an
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`image, and the camera will “adjust the image (increase, decrease, or maintain a
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`property) according to the parameters and settings stored” in the setup file.
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`(Creamer, 18:64-67.) For example, the parameters may specify the scale,
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`resolution, and/or compression of stored images. (Creamer, Figure 5; 8:19-51.)
`
`Summary of Aihara
`
`C.
`Aihara discloses a digital camera with an Internet connection. (Aihara,
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`13:42-60.) The camera comprises an LCD screen that allows the “user to review
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`previously captured images either individually or in arrays of four, nine, or sixteen
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`images.” (Aihara, 1:34-36.) Aihara further discloses using a script to provide
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`5 For brevity, citations are made only to Creamer.
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`configuration and setup information to the camera. (Aihara, 3:4-15.) The camera is
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`further configured to process images and convert them into a single HTML file that
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`may be uploaded to the Internet, “wherein the HTML file is formatted in
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`accordance with the script’s predefined model.” (Aihara, 3:16-25.)
`
`Summary of Mayle
`
`D.
`Mayle discloses a “system for processing electronic image data.” (Mayle,
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`2:48-49.) “The system comprises at least one server computer connected to a
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`network ... adapted to receive electronic image data from a second computer
`
`connected to the network.” (Mayle, 2:49-52.) The user is able to create an
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`“electronic postcard composed of the user’s digital photograph.” (Mayle, 2:33-34.)
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`The digital photograph undergoes processing that includes “formatting, storing,
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`transmitting, centering, cropping, flipping, anti-aliasing, scaling, compressing,
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`[and] filtering,” which may be performed on the client device. (Mayle, 2:65 – 3:4.)
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`“When a photo, sender, recipient and message have been specified the card is
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`complete and can be sent. When the user clicks on the ‘Send’ button the server
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`creates a card key, saves the card into the Permanent Database and sends an email
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`message to the recipient.” (Mayle, 12:37-41.) The recipient consequently receives
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`an “email message that is automatically sent to the recipient [which] states that
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`there is a card available on the web site for the recipient and that it can be viewed
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`by opening the specified URL.” (Mayle, 12:51-54.)
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`Summary of Narayen
`
`E.
`Narayen discloses a system for “publishing a collection of digital media on
`
`a network.” (Narayen, Abstract.) “[T]he user of the computer system may create a
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`picture album or another type of media container using a media authoring
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`program.” (Narayen, 6:67 – 7:2.) Narayen thus allows “a user on a client computer
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`system to create a media container which contains digital media and publish this
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`media container with its digital media onto the Internet for other client computer
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`systems to be able to view the media container with its digital media.” (Narayen,
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`7:29-34.) Prior to uploading images to the Internet, the client device creates “a
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`lower resolution version of a digital image, such as a ‘thumbnail’ version [that] is
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`stored in the database along with a link to the original image stored on the file
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`storage device.” (Narayen, 6:56-59.) In addition, “the album authoring software
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`scales each picture if necessary to cause it to fit into the corresponding slot on the
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`album page.” (Narayen, 9:45-47.) “After the user has created a picture album with
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`associated pictures, the user may then decide to publish or otherwise distribute the
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`picture album by making it available for viewing to web browsers over the
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`Internet.” (Narayen, 9:65 – 10:1.)
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`V. MOTIVATIONS TO COMBINE
`A person of ordinary skill in the art would have been motivated to combine
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`Creamer and Aihara, and Mayle and Narayen. (Exhibit 1003 ¶¶ 30-31, 51-52.) A
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`combination of familiar elements according to known methods which yields no
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`more than predictable results is likely obvious to one of skill in the art. KSR Int’l
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`Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). One rationale to support a
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`conclusion of obviousness is the use of a known technique to improve similar
`
`devices (methods, or products) in the same way. See KSR Int’l, 550 U.S. at 417-
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`18; see also MPEP 2143(C). To establish that a modification is the use of a known
`
`technique to improve similar devices and methods in the same way, it is necessary
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`to establish (1) that the prior art contained a “base” device/method upon which the
`
`claimed invention can be seen as an “improvement,” (2) a finding that the prior art
`
`contained a “comparable” device/method that is not the same as the base
`
`device/method and that has been improved in the same way as the claimed
`
`invention, and (3) that the skilled artisan could have applied the known
`
`“improvement” technique in the same way to the base device/method with
`
`predictable results. See MPEP 2143(C); KSR Int’l, 550 U.S. at 415-421.
`
`A. Motivation to Combine Creamer with Aihara
`It would have been obvious to one of skill in the art to combine the teachings
`
`of Creamer with those of Aihara. (Exhibit 1003 ¶ 30.) Such a combination is
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`nothing more than the use of a known technique to improve similar devices and
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`methods in the same way. (Exhibit 1003 ¶ 31.) The combination provides an
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`Internet-integrated camera comprising a display capable of showing an array of
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`preview images prior to transmission because it would have been nothing more
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`than the use of a known technique to improve similar devices and methods in the
`
`same way. See MPEP § 2143(C); (Exhibit 1003 ¶ 31.)
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`Here, Creamer discloses the “base” system. Aihara is the “comparable”
`
`system because Aihara discloses a digital camera with a LCD screen that could be
`
`used with the Internet-integrated digital camera described in Creamer. (Aihara,
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`1:28-36.) For example, Creamer describes a camera comprising a “full video
`
`(LCD) display” which allows for “more accurate preview of the image that will be
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`captured.” (Creamer, 29:43-53.) The LCD allows the user to cycle between stored
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`images and review information about the images in the graphical interface.
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`(Creamer, 26:43-57; 27:1-54.)
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`Aihara provides a means to display stored images on a digital camera
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`through a setting called “play mode.” (Aihara, 1:28-36.) In this particular mode,
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`the camera display can present previously captured images in arrays of four, nine,
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`or sixteen smaller preview images. (Aihara, 1:28-36.)
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`The skilled artisan could have applied the improvement of Aihara to the
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`camera system in Creamer to achieve the predictable result of displaying an
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`array of preview images representing the digital images stored on the camera.
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`(Exhibit 1003 ¶¶ 30-31.) Both references describe Internet-connected digital
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`cameras that process captured images prior to transmitting those images over a
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`network connection. (Exhibit 1003 ¶ 30.) Both references describe the benefits
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`associated with processing digital images on a network connected camera,
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`including, faster transmission speeds for compressed digital images and the ease
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`of uploading images onto a server so they may be viewed by other users. (Exhibit
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`1003 ¶ 30.) Both references describe digital cameras having display screens for
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`previewing and reviewing images captured by the camera. (Exhibit 1003 ¶ 30.)
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`Creamer discloses the use of an LCD display that is capable of displaying a
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`“preview of the image.” (Creamer, 29:43-53.) A person of ordinary skill in the art
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`would recognize that an LCD display on a handheld camera is likely to be
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`relatively small. (Exhibit 1003 ¶¶ 30-31.) A person of skill in the art would
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`therefore look to Aihara’s use of thumbnail images to improve the ability of a
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`relatively small LCD display to display multiple images. (Exhibit 1003 ¶¶ 30-31.)
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`For example, a person of ordinary skill in the art would be motivated to make this
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`modification to provide the user with the benefit of faster and more accurate
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`review of captured images. (Exhibit 1003 ¶ 31.) One of skill in the art would
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`know how to combine Creamer and Aihara by, for example, writing code
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`executed by the microcontroller disclosed in Creamer to enable it to display arrays
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`of preview images on the display screen like the processor and LCD screen
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`disclosed in Aihara. (Exhibit 1003 ¶ 31.) Thus, based on the rationale set forth in
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`MPEP § 2143(C), it would have been obvious to one of skill in the art to combine
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`the teachings of Creamer with those of Aihara to modify Creamer according to the
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`teachings of Aihara to display thumbnail preview images on the camera LCD
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`screen. (Exhibit 1003 ¶¶ 30- 31.) See MPEP § 2143 (C), KSR Int’l, 550 U.S. at
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`415-21.
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`B. Motivation to Combine Mayle with Narayen
`It would have been obvious to one of skill in the art to combine the teachings
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`of Mayle with those of Narayen. (Exhibit 1003 ¶ 51.) Mayle expressly teaches that
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`its “invention can be modified to create...an album...holding a variety of images in
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`a structured album.” (Mayle, 13:6-43) Narayen discloses a system that produces
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`digital photo albums. (Narayen, 6:66 – 7:13) One of skill in the art would clearly
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`be motivated to combine Mayle and Narayen because Mayle expressly teaches this
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`explicit combination. (Mayle, 13:6-43; Exhibit 1003 ¶ 51.) A person of skill in the
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`art would be able to code and implement the improved features of Narayen into
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`Mayle’s client system so that a user of that system would have access to those
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`features. (Exhibit 1003 ¶ 52.) Mayle discloses that its browser may be augmented
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`to support programs written in the Java programming language. (See, e.g., Mayle,
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`6:62-65.) One of skill in the art would be able to write a Java program accessible
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`by Mayle’s browser-based system that would implement Narayen’s digital album
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`authoring tools. (Exhibit 1003 ¶ 52.)
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`In addition, such a combination is nothing more than the use of a known
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`technique to improve similar devices and methods in the same way. (Exhibit 1003
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`¶ 52.) Mayle describes the “base” system. Narayen is the “comparable” system
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`because Narayen could be used with the client-device digital image processing
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`system described in Mayle. Mayle discloses a digital image processing system
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`where one or more of the processing functions, such as compressing, cropping, re-
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`sizing, or re-formatting images, can be performed on the client device. (Mayle,
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`13:47 – 14:7) The system can be adapted for a number of different uses, including
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`the creation and display of digital photo albums via the Internet. (Mayle, 13:29-46)
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`Narayen provides a system that produces digital photo albums comprised of
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`digital images stored on the client computer. (Narayen, 6:66 – 7:13) The system
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`allows the user to build a digital photo album and subsequently publish the album
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`to the Internet where other users may view the album through a standard web
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`browser. (Narayen, 7:49-56)
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`The skilled artisan could have applied the improvement of Narayen to the
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`system of Mayle to achieve the predictable result of publishing processed digital
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`images to the Internet in a photo album. (Exhibit 1003 ¶ 52.) Such an improvement
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`would have provided, for example, additional image processing tools to the album
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`publishing system. (Exhibit 1003 ¶ 52.) A person of ordinary skill in the art would
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`have been motivated to make this combination in order to share the processed
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`digital images to a larger audience available on the Internet. (Exhibit 1003 ¶ 52.) A
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`person of ordinary skill in the art would recognize that this modification would
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`provide the user with the benefit of digital album tools that are conveniently
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`accessible over the Internet through a standard web browser. (Exhibit 1003 ¶ 52.)
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`Thus, it would have been obvious to one of skill in the art to combine the teachings
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`of Mayle with those of Narayen to modify Mayle’s system according to the
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`teachings of Narayen to provide a system for processing and publishing digital
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`images to the Internet. (Exhibit 1003 ¶¶ 51-52.) See MPEP § 2143 (C), KSR Int’l,
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`550 U.S. at 415-21.
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`Summary of the ’482 Patent.
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`C.
`Generally, the ’482 patent relates to a “web-based media submission tool.”
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`(’482 patent, Abstract.) A user may identify one or more media objects (which
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`include digital pictures, audio, videos, etc.) stored at a first location (e.g. a “local
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`device”) for submission to a second location or server (e.g. a “server device” or
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`“remote device”). (’482 patent, 2:44-48.) Prior to transmission, the media object(s)
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`can be pre-processed in a number of ways including resizing the object,
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`compressing the object using a compression algorithm like the JPEG standard,
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`changing the file format, and cropping, scaling, or changing the aspect ratio of the
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`images. (See ’482 patent, 4:46-67.) Parameters received by the local device from
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`either a server or remote device define the processing that occurs at the local
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`device. (See ’482 patent, 4:67 – 5:4; 10:40-45.) Following processing at the local
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`device, the media object(s) can be transmitted from the local device to a remote
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`server or other device. (’482 patent, 6:27-32.)
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`VI. FACTUAL BACKGROUND
`A. Declaration Evidence.
`This petition is supported by the declaration of Dr. Paul Clark. Dr. Clark
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`earned a B.S. in Mathematics from University of California Irvine in 1986, a M.S.
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`in Elect