Trials@uspto.gov
`571-272-7822
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`Paper No. 8
`Entered: March 9, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,1
`Petitioner,
`
`v.
`
`ALEX IS THE BEST, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-02056
`Patent 8,134,600 B2
`____________
`
`
`
`Before DANIEL N. FISHMAN, MINN CHUNG, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`1 The Petition, as filed, named “Google Inc.” as Petitioner. In a later filing,
`Petitioner notified the Board and Patent Owner of a change of name to
`“Google LLC.” Paper 6, 2.
`
`
`571-272-7822
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`
`
`
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`
`Paper No. 8
`Entered: March 9, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,1
`Petitioner,
`
`v.
`
`ALEX IS THE BEST, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-02056
`Patent 8,134,600 B2
`____________
`
`
`
`Before DANIEL N. FISHMAN, MINN CHUNG, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`1 The Petition, as filed, named “Google Inc.” as Petitioner. In a later filing,
`Petitioner notified the Board and Patent Owner of a change of name to
`“Google LLC.” Paper 6, 2.
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`INTRODUCTION
`I.
`Google LLC (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting
`inter partes review of claims 1–5, 8–10, 12, and 13 (the “challenged
`claims”) of U.S. Patent No. 8,134,600 B2 (Ex. 1001, “the ’600 patent”)
`pursuant to 35 U.S.C. §§ 311–319. Alex Is The Best, LLC (“Patent Owner”)
`filed a Patent Owner Preliminary Response (Paper 7, “Prelim. Resp.”). We
`have authority to determine whether to institute review under 35 U.S.C.
`§ 314 and 37 C.F.R. § 42.4(a). An inter partes review may be instituted
`only if “the information presented in the petition . . . and any response . . .
`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.” 35 U.S.C.
`§ 314(a).
`Upon consideration of the Petition, the Preliminary Response, and the
`evidence of record, we conclude Petitioner has established a reasonable
`likelihood of prevailing in showing that at least one of the challenged claims
`is unpatentable. In particular, as discussed below, we institute inter partes
`review of claims 1–5, 8–10, 12, and 13 of the ’600 patent.
`
`Real Parties-in-Interest and Related Matters
`A.
`Petitioner identifies Lenovo Holding Company, Inc.; Lenovo (United
`States) Inc.; Motorola Mobility, LLC; Huawei Devices USA Inc.; and
`Huawei Technologies USA Inc. as additional real parties-in-interest for
`Petitioner. Pet. 1–2.
`Both Petitioner and Patent Owner identify the following related
`Petitions:
`
`
`
`2
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`IPR2017‐02056
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`Patent 8,134,600 B2
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`Challenged Patent No.
`7,907,172
`8,477,197
`7,633,524
`8,947,542
`9,197,806
`8,581,991
`8,581,991
`
`Inter Partes Review No.
`IPR2017-02052
`IPR2017-02053
`IPR2017-02054
`IPR2017-02055
`IPR2017-02057
`IPR2017-02058
`IPR2017-02059
`Paper 4, 1; Paper 5, 2.2
`Both Petitioner and Patent Owner identify the following related
`litigation matters, each with Patent Owner as Plaintiff and each filed in the
`United States District Court for the District of Delaware:
`Defendant
`Docket No.
`BLU Products, Inc.
`1:16-cv-00769
`Huawei Device (Dongguan) Co., Ltd., et al.
`1:16-cv-00770
`Lenovo Holding Company, Inc., et al.
`1:16-cv-00771-RGA
`TCT Mobile, Inc., et al.
`1:16-cv-00772
`Boost Mobile, LLC
`1:13-cv-01782
`Kyocera Corporation, et al.
`1:13-cv-01783
`Sprint Corporation
`1:13-cv-01784
`T-Mobile USA, Inc., et al.
`1:13-cv-01785
`Cellco Partnership3
`1:13-cv-01786
`Samsung Electronics Co., Ltd., et al.
`1:13-cv-01787
`Amazon.com Inc., et al.
`1:13-cv-01722
`ASUS Computer International
`1:13-cv-01723
`Blackberry Limited f/k/a Research in Motion 1:13-cv-01724
`
`2 Paper 5, as filed, does not include page numbering as required by our rules.
`For purposes of this decision, we number the first page (the caption page) as
`page number 1. Although the error here is harmless, the parties are
`reminded to format all papers and exhibits in accordance with 37 C.F.R.
`§§ 42.6 and 42.63.
`3 Petitioner identifies the Defendant in this litigation as “Verizon
`Communications, Inc., et al.” Patent Owner identifies the defendant in this
`litigation as “Cellco Partnership.” We believe Petitioner is in error, but we
`deem any error to be harmless.
`
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`3
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`Limited, et al.
`HTC Corporation, et al.
`LG Electronics Inc., et al.
`Sony Corporation, et al.
`ZTE Corporation, et al.
`Pet 2–3; Paper 5, 2–3.
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`1:13-cv-01725
`1:13-cv-01726
`1:13-cv-01727
`1:13-cv-01728
`
`The ’600 Patent
`B.
`The ’600 patent generally relates to “an integrated Internet camera . . .
`that seamlessly and automatically transmits, receives, stores and/or archives
`still images, video and/or audio. . . .” Ex. 1001, 1:15–21. According to the
`’600 patent, cameras are known to acquire still and video images and/or
`audio but such cameras are incapable of directly coupling to Internet without
`coupling through a separate network device such as a personal computer
`(“PC”). Id. at 1:39–48.
`Figure 1 of the ’600 patent is reproduced below.
`
`
`Figure 1, above, depicts camera 100 that captures and transmits images to
`the Internet via intermediate PC 200.
`Figure 1 of the ’600 patent shows a prior system in which camera 100
`cannot connect directly to the Internet but, instead, must couple to the
`Internet via intermediate PC 200. Id. at 1:45–48.
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`According to the ’600 patent, some prior cameras attempt to alleviate
`this restriction by providing a network card plugged into the camera to
`enable direct connection to the Internet. Id. at 1:49–52. However, the ’600
`patent states that such cameras with plugin network interfaces, which do not
`require a separate network device such as a PC, do not permit two-way
`communications to both transmit images to a storage system and to receive
`images from a storage system over the Internet. Id. at 1:52–58.
`The ’600 patent purports to resolve these problems by disclosing an
`Internet direct camera (“IDC”)4 that seamlessly links, via the Internet, to a
`website archive and review center (“WSARC”) for storage and retrieval of
`images. Id. at 2:9–15. According to the ’600 patent, the IDC automatically
`connects at power-up to a designated primary mode of connection to the
`Internet and automatically switches to another mode of connection when the
`IDC determines that the primary mode of connection is unavailable. Id. at
`Abstract.
`Figure 2 of the ’600 patent is reproduced below.
`
`
`4 The claims, title, and abstract of the ’600 patent refer to an “Internet direct
`device,” which we consider a synonym for “Internet direct camera” for
`purposes of this decision.
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`Figure 2 depicts an integrated Internet camera system.
`Figure 2 of the ’600 patent depicts a system comprising a plurality of
`IDCs 2000 coupled to WSARC 3000 via Internet 4000. Id. at 3:18–23.
`Each IDC comprises camera body 2100 that houses, inter alia, processor
`2200, display 2300, image-forming optical system 2500 for capturing an
`image, and storage device 2400 for storing captured images. Id. at 3:50–4:8.
`IDC 2000 is configured to use Wi-Fi, for example, as a primary mode of
`communication to Internet 4000 and can switch to cellular communications
`using SIM card 2610 when Wi-Fi is unavailable. Id. at 3:36–49.
`
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`Illustrative Claim
`C.
`Claim 1 is the only independent claim of the ’600 patent. Independent
`claim 1, reproduced below with formatting changes for readability, is
`illustrative of the challenged claims:
`1. An Internet direct device comprising
`an imaging system to capture still or video images;
`a microprocessor to transmit said captured still or video
`images to another Internet direct device upon image capture,
`and receive still or video images from said other Internet direct
`device over a communications network; and
`wherein the Internet direct device automatically connects
`to said communications network on power-up using one of a
`plurality of available modes of connection, which is designated
`as a primary mode of connection, and
`wherein the Internet direct device automatically switches
`to another available mode of connection when the Internet
`direct device detects that said primary mode of connection to
`the communications network is unavailable.
`
`
`Alleged Grounds of Unpatentability
`D.
`The Petition sets forth the following asserted grounds of
`unpatentability:
`Reference(s)
`Nicholas5
`
`Basis Challenged Claims
`102(a)
`1–5, 8, and 9
`or
`102(b)
`103(a) 10, 12, and 13
`
`Nicholas and Nair6
`
`
`5 U.S. Patent Publication No. 2004/0133668 A1. Ex. 1006 (“Nicholas”).
`6 U.S. Patent Publication No. 2004/0127208 A1. Ex. 1007 (“Nair”).
`
`7
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`A.
`
`
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`
`
`Basis Challenged Claims
`Reference(s)
`103(a) 10, 12, and 13
`Nicholas and Kusaka7
`103(a) 10
`Nicholas and Khedouri8
`103(a) 12 and 13
`Nicholas and Morris9
`103(a) 1–5, 8–10, 12, and 13
`Inoue10 and Nair
`103(a) 2
`Inoue, Nair, and Narayanaswami11
`103(a) 1–5, 8, and 9
`Umeda12 and Inoue
`103(a) 10, 12, and 13
`Umeda, Inoue, and Kusaka
`103(a) 10
`Umeda, Inoue, and Khedouri
`103(a) 12 and 13
`Umeda, Inoue, and Morris
`Pet. 7. Petitioner relies on the Declaration of Vijay K. Madisetti, Ph.D.
`(Ex. 1014) in support of its contentions.
`
`II. ANALYSIS
`General Principles
`Anticipation
`1.
`To establish anticipation, each and every element in a claim, arranged
`as recited in the claim, must be found in a single prior art reference. Net
`MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008);
`Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
`2001). Each element of the challenged claim must be found, either
`expressly or inherently, in the single prior art reference. Verdegaal Bros.,
`Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). While the
`
`
`7 U.S. Patent Publication No. 2004/0109063 A1. Ex. 1008 (“Kusaka”).
`8 U.S. Patent Publication No. 2006/0008256 A1. Ex. 1009 (“Khedouri”).
`9 U.S. Patent Publication No. 2006/0143684 A1. Ex. 1010 (“Morris”).
`10 U.S. Patent Publication No. 2004/0109066 A1. Ex. 1011 (“Inoue”).
`11 EXPANDING THE DIGITAL CAMERA’S REACH, IEEE Computer Dec. 2004.
`Ex. 1013 (“Narayanaswami”).
`12 U.S. Patent Publication No. 2002/0150228 A1. Ex. 1012 (“Umeda”).
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`elements must be arranged or combined in the same way as in the claim,
`“the reference need not satisfy an ipsissimis verbis test,” i.e., identity of
`terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir.
`2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
`
`
`
`
`Obviousness
`2.
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter 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 (2007). The question of obviousness is resolved based on 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. Graham v. John Deere Co., 383 U.S. 1, 17–
`18 (1966).
`
`
`Claim Construction
`B.
`As a step in our analysis for determining whether to institute review,
`we determine the meaning of the claims for purposes of this decision. In an
`inter partes review, a claim in an unexpired patent shall be given its broadest
`reasonable construction in light of the specification of the patent in which it
`appears. 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131, 2142–46 (2016) (upholding the use of the broadest
`reasonable interpretation standard). Under the broadest reasonable
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`interpretation standard, claim terms generally are given their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art in the context of the entire disclosure. In re Translogic Tech., Inc., 504
`F.3d 1249, 1257 (Fed. Cir. 2007). “[A] claim construction analysis must
`begin and remain centered on the claim language itself . . . .” Innova/Pure
`Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed.
`Cir. 2004). “Though understanding the claim language may be aided by the
`explanations contained in the written description, it is important not to
`import into a claim limitations that are not a part of the claim.” SuperGuide
`Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Only
`terms that are in controversy need to be construed and only to the extent
`necessary to resolve the controversy. See Wellman, Inc. v. Eastman Chem.
`Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid Techs., Inc. v. Am. Sci.
`& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`
`“Internet Direct Device”
`1.
`All challenged claims relate to an “Internet direct device” for
`capturing images and for transmitting images to, and receiving images from,
`other Internet direct devices. Petitioner argues, “[t]he term ‘Internet direct
`device’ (‘IDD’) includes at least a device that is capable of connecting to the
`Internet without the necessity of connecting to another device, such as a
`PC.” Pet. 13 (citing Ex. 1014 ¶¶ 37–40). Patent Owner neither challenges
`Petitioner’s proposed interpretation nor proffers its own interpretation.
`The claims define the structural elements and functional aspects of an
`“Internet direct device.” For example, claim 1 specifies that an “Internet
`direct device” comprises an imaging system and a microprocessor and
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`further defines the functions performed by the microprocessor of the Internet
`direct device. However, the claim language fails to make clear in what
`manner the device is an Internet direct device. The Specification of the ’600
`patent distinguishes the invention from known prior art devices (e.g.,
`cameras) that required coupling to another device (e.g., a PC) to allow
`communications over the Internet. Ex. 1001, 1:40–43, Fig. 1. The
`Specification further clarifies that “it is desirable to have an integrated
`Internet camera system that can seamlessly upload and download video
`and/or audio files to and from the Internet . . . without the necessity of
`connecting to another device, such as a PC 200.” Id. at 1:59–67.
`Furthermore, as discussed infra, Patent Owner notes the above
`distinction over prior art cameras that required coupling with a PC to
`provide Internet communications. Prelim. Resp. 2 (“Petitioner relies on a
`personal computer (PC) reference which was taught against by the Patent
`Owner.”). In other words, on the current record, we determine the
`Specification of the ’600 patent supports an interpretation in which an
`Internet direct device is one that does not require another device (e.g., a PC)
`to communicate with the Internet.
`In view of the above discussion, on the record before us, and for
`purposes of this decision, we interpret “Internet direct device” to mean a
`device that is capable of connecting to the Internet without the necessity of
`connecting to another device, such as a PC.
`
`
`Other Terms
`2.
`On this record and for purposes of this decision, we determine that it
`is unnecessary to provide an express construction for any other claim terms.
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`Priority Date of The ’600 Patent
`C.
`On its face, the ’600 patent claims priority to earlier applications as
`follows:
`Continuation of application No. 12/637,277, filed on Dec. 14,
`2009, now Pat. No. 7,907,172, which is a continuation of
`application No. 11/484,373, filed on Jul. 11, 2006, now Pat. No.
`7,633,524.
`Provisional application No. 60/702,470, filed on Jul. 26, 2005.
`Ex. 1001, (63); see also id. at 1:5–11.
`Petitioner argues the challenged claims are not entitled to the earliest
`priority dates in the claimed priority chain—specifically, the July 26, 2005
`date of the provisional patent application (“the ’470 application”). Pet. 8–
`11. Patent Owner argues the ’600 patent claims are sufficiently supported
`by the disclosure of the ’470 application and, thus, the priority claim to the
`’470 application is proper. Prelim. Resp. 4–5.
`On the record before us, there is no dispute that the prior art
`references relied upon in this Petition pre-date the ’600 patent’s earliest
`priority date. Therefore, we do not address any issues relating to proper
`priority date for the ’600 patent.
`
`
`Anticipation by Nicholas
`D.
`The Petition asserts claims 1–5, 8, and 9 of the challenged claims are
`anticipated by Nicholas. Pet. 14–26.
`
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`Nicholas (Ex. 1006)
`1.
`Nicholas relates generally to an end user device that is capable of
`communication through multiple communication networks. Ex. 1006 ¶ 3.
`Figure 1 of Nicholas is reproduced below.
`
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`
`
`Figure 1 above is a high-level diagram of end user device 100 in an
`embodiment of Nicholas. Id. ¶ 14.
`As shown in Figure 1 of Nicholas, end user device 100 may
`communicate over any of a variety of types of networks (102, 104, 108). Id.
`¶¶ 19, 20, 22, 41. Device 100 may be, for example, a notebook or tablet
`computing device (i.e., a PC). Id. ¶ 20. The device includes microprocessor
`302 for performing various functions of the device. Id. ¶ 37. Device 100
`also includes video camera and microphone 120 to enable videoconferencing
`and video calls. Id. ¶¶ 21, 32–34. The device selects an initial
`communication mode by determining the best communication path. See id.
`¶¶ 49–55. The device also switches between communication modes to
`provide uninterrupted service for calls. Id. ¶ 28.
`
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`Independent Claim 1
`2.
`Regarding independent claim 1, Petitioner identifies each element in
`the disclosures of Nicholas. Pet. 15–22. In particular, Petitioner identifies
`end user device 100 as the claimed “Internet direct device” of the claim’s
`preamble. Id. at 15–16. Petitioner argues device 100 of Nicholas comports
`with its proffered interpretation as a “device capable of communicating data
`to or from a data communication network in accordance with one or more
`wired and/or wireless communication protocols.” Id. at 15 (quoting Ex.
`1006 ¶ 19). Petitioner further argues device 100 includes a camera and a
`microphone, and connects to the Internet via a variety of protocols. Id.
`(citing Ex. 1006 ¶¶ 20, 24, 32, 33; Ex. 1014 ¶ 652). Therefore, Petitioner
`contends Nicholas discloses the recited “imaging system to capture audio or
`video images” as the built-in video camera and microphone. Id. at 16 (citing
`Ex. 1006, Fig. 1, ¶¶ 24, 32–34; Ex. 1014 ¶ 653). Petitioner argues device
`100 of Nicholas discloses the recited microprocessor as processor 302 of
`Figure 3, which controls communication interfaces 324a–324n to provide
`voice over Internet protocol (“VoIP”) calling, video calls, and video
`conferencing. Id. at 16–17 (citing Ex. 1006, Fig. 3, ¶¶ 19, 24, 32–34, 37, 41;
`Ex. 1014 ¶ 654). Still further, Petitioner argues Nicholas discloses the
`recited automatic connection at power-up to a primary mode of connection
`by initially determining which of the multiple communication networks
`provides the best channel. Id. at 17–18 (citing Ex. 1006, Abstract, ¶¶ 8, 19;
`Ex. 1014 ¶ 656). Petitioner contends such initial connection in Nicholas is
`performed as an aspect of power-up of the device. Id. at 19 (citing Ex. 1006
`¶ 46 (“The network detection function is preferably performed automatically
`by the end user device . . . as part of the power-up sequence of the end user
`
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`device to determine which network(s) are initially available to the end user
`device.”). Lastly, Petitioner argues Nicholas discloses the recited automatic
`switching to another mode of connection by providing seamless transition
`between different data communication networks to permit uninterrupted data
`communication. Id. at 20–22 (citing Ex. 1006 ¶¶ 9, 20, 26, 28–34, 49–56,
`81–88; Ex. 1014 ¶¶ 627–630, 659–661).
`Patent Owner argues Nicholas discloses a notebook or tablet (i.e., a
`PC) and contends the ’600 patent expressly teaches away from such a
`configuration that uses a PC to couple to the Internet. Prelim. Resp. 24.
`More specifically, Patent Owner contends the ’600 patent is directed to an
`“Internet direct device” that provides for its Internet connection “without the
`necessity of connecting to another device, such as a personal computer
`(PC).” Id. (citing Ex. 1001, 1:59–67). Patent Owner then argues,
`“[n]evertheless, the Petitioner relies on a reference that is directed to a
`personal computer (PC), which was explicitly excluded and taught against
`by the Patent Owner.” Id. (citing Ex. 1006 ¶¶ 21, 26). In particular, Patent
`Owner quotes a portion of paragraph 26 of Nicholas as stating that the end
`user device operates as an access point or repeater—i.e., acting as a device
`to which a VoIP phone is coupled to access the network. Id.
`At this stage of the proceeding, we are persuaded by Petitioner’s
`arguments and find Patent Owner’s arguments unpersuasive. In essence,
`Patent Owner argues that any system that includes a PC is differentiated
`from its claim recitation of an “Internet direct device.” We disagree. Our
`interpretation of “Internet direct device” (a device that is capable of
`connecting to the Internet without the necessity of connecting to another
`device, such as a PC) does not exclude the end user device of Nicholas. The
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`end user device of Nicholas is not connected to another device (such as a
`PC) to provide Internet connectivity of a camera. Instead, the notebook or
`tablet PC of Nicholas is the Internet direct device as recited in the claims.
`We agree with Petitioner that the notebook or tablet PC (end user device) of
`Nicholas provides the recited structural elements of claim 1 in that it
`integrates a camera for image capture and a microprocessor for controlling a
`plurality of modes of connection to send or receive images through the
`Internet. Pet. 15–17; Ex. 1006 ¶¶ 19 (“The end user device may comprise
`any device capable of communicating data to or from a data communication
`network in accordance with one or more wired and/or wireless
`communication protocols.”), 24 (“end user device 100 further comprises . . .
`an optional built-in video camera and microphone 120 for enabling video
`teleconferencing and the like”). The end user device (notebook or tablet PC)
`of Nicholas does not require connection to another device (such as another
`PC) to provide the recited connection to the Internet.
`Patent Owner’s argument that the end user device of Nicholas acts as
`a communication base station, access point, or repeater mischaracterizes the
`disclosure of paragraph 26 of Nicholas. Paragraph 26 of Nicholas is
`referring to one exemplary mode of operation in which the end user device
`serves as a base or access point for other devices coupled with the end user
`device to access the network—e.g., VoIP handset 118 coupled to the Internet
`through dock 114 and end user device 100. See Ex. 1006, Fig. 1. In this
`exemplary, optional, mode of operation, the end user device may serve as an
`access point or repeater for a VoIP phone handset coupled to the end user
`device. Ex. 1006 ¶ 26. However, it is clear in Nicholas that this is merely
`one possible mode of operation. The end user device of Nicholas is also
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`capable of operating as a VoIP phone in other modes of operation such that
`it captures audio and video and couples directly to the Internet for storage
`and retrieval of such images. See, e.g., id. ¶¶ 20, 22–24, 27–29, 32, 34.
`For the above reasons, on the record before us, and for purposes of
`this decision, we are persuaded Petitioner has shown a reasonable likelihood
`of prevailing in establishing independent claim 1 is anticipated by Nicholas.
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`Dependent Claims 2–5, 8, and 9
`3.
`Dependent claims 2–5, 8, and 9 depend from claim 1. Claims 2, 3,
`and 5 generally specify that the Internet direct device of claim 1
`communicates with other Internet direct devices over its communication
`path. Claim 4 generally lists the types of communication networks and
`protocols that may be utilized by the device. Claim 8 specifies that the
`Internet direct device is a camera or is a cell phone with a camera, and claim
`9 specifies that the device includes a display.
`Petitioner argues the limitations of these dependent claims are taught
`in Nicholas. Pet. 22–26. Patent Owner does not respond to Petitioner’s
`arguments regarding these dependent claims.
`At this stage of the proceeding, we are persuaded by Petitioner’s
`arguments. Specifically, Petitioner argues Nicholas discloses its device
`connects to, and exchanges audio and/or video data with such other devices
`as in claims 2, 3, and 5. Pet. 22–23 (citing Ex. 1006 ¶¶ 24, 32–34, 37, 42,
`Figs. 1, 3; Ex. 1014 ¶¶ 662, 663, 664). Petitioner further argues Nicholas
`discloses its device utilizes a variety of protocols including at least one
`recited in the group of protocols of claim 4. Id. at 23–25 (citing Ex. 1006
`¶¶ 19, 20; Ex. 1014 ¶¶ 629, 664). Petitioner contends Nicholas discloses
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`that its device may be a camera or cell phone with camera as recited in claim
`8 and may include a display as in claim 9. Id. at 25–26 (citing Ex. 1006
`¶¶ 8, 19, 24, 40; Ex. 1014 ¶¶ 666, 667).
`On this record and for purposes of this decision, we are persuaded
`Petitioner has shown a reasonable likelihood of prevailing in establishing
`dependent claims 2–5, 8, and 9 are anticipated by Nicholas.
`
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`Obviousness over Nicholas and Nair
`E.
`The Petition asserts dependent claims 10, 12, and 13 are obvious over
`the combination of Nair and Umeda. Pet. 26–30.
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`Nair (Ex. 1007)
`1.
`Nair relates to wireless communications and, more specifically, relates
`to seamless roaming of a device between wireless networks. Ex. 1007 ¶ 3.
`Nair discloses a wireless device that switches between wireless wide area
`networks (“WWANs”) and wireless local area networks (“WLANs”). Id. at
`Abstract. Nair discloses the wireless device “monitoring the connection and,
`upon determining that the connection has been lost, selecting [] another
`available network for use and connecting the wireless device [to] the other
`network.” Id.
`Figure 2 of Nair is reproduced below.
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`Figure 2 depicts an exemplary wireless device in accordance with Nair’s
`invention.
`Wireless device 12 of Figure 2 may be a PC, a personal digital
`assistant (“PDA”), a cell phone, etc. Id. ¶ 31. Within device 12, WLAN
`hardware 26 supports WLAN communications, WWAN hardware 28
`supports WWAN communications, and combo hardware 30 supports both
`WLAN and WWAN communications. Id. ¶ 32. A processor (CPU) of
`device 12 (not shown) performs processing for control device 12. See id.
`¶ 17. Operating system 20 provides a software platform for applications 22
`including connectivity application 24. Id. ¶¶ 34–35. Connectivity
`application 24 coordinates connection of device 12 to wireless networks
`through core and interface modules 38–44. Id. ¶ 35.
`Device 12 includes user interface (“I/F”) 34 to enable human
`interaction with device 12. Id. ¶ 33.
`The functionality of the user interface 34 can be performed by
`one or more suitable input devices (e.g., keypad, touch screen,
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`input port, pointing device, microphone, and/or other device that
`can accept user input information) and one or more suitable
`output devices (e.g., video display, output port, speaker, or other
`device, for conveying information, including digital data, visual
`information, or audio information).
`Id. Connectivity application 24, via its user interface module 36, enables a
`user to view information regarding networks attached to device 12 and
`allows a user to configure device 12 for use of or switching among the
`various available networks. Id. ¶ 37.
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`2. Motivation to Combine Nicholas and Nair
`In general, Petitioner argues Nicholas and Nair both disclose wireless
`devices that connect to a primary network and automatically switch to
`another network when the primary network is unavailable. Pet. 26. Thus,
`Petitioner generally argues Nicholas and Nair are in the same field of
`endeavor and an ordinarily skilled artisan would have been motivated to
`combine their teachings. Id. at 27 (citing Ex. 1014 ¶¶ 631–636, 668).
`More specifically, regarding dependent claim 10, Petitioner argues
`“Nicholas does not expressly state that its end user devices incorporate a
`touch pad or screen, but Nair describes a ‘touch screen’ as one such user
`interface that can be used on a mobile communication device.” Id.
`Petitioner further argues use of a touch screen “is simply the substitution of
`one known input device for another to achieve no more than predictable
`results.” Id. at 27–28. Petitioner contends the ordinarily skilled artisan
`would have been motivated to combine Nair’s touch screen with Nicholas to
`decrease size of the device and as an advantageous interface for control of a
`camera (e.g., pan, zoom, focus) in videoconferencing applications. Id. at 28
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`(citing Ex. 1014 ¶¶ 633, 634). In addition, Petitioner argues (regarding
`claims 12 and 13) that an ordinarily skilled artisan would have been
`motivated to combine Nair’s web browser with Nicholas because such web
`browsers were commonly known to have built-in capabilities to download
`and view video data and, thus, it would have been advantageous to utilize
`such standardized technology rather than custom designed solutions. Id. at
`30 (citing Ex. 1014 ¶ 635). Furthermore, Petitioner contends utilizing a web
`browser for videoconferencing would help manage restrictions of firewalls
`and other security measures. Id. (citing Ex. 1014 ¶ 636).
`Regarding the above reasons to combine, Patent Owner contends
`Petitioner’s reasoning is conclusory without a factual basis. Prelim. Resp. 8.
`Patent Owner further argues Nicholas discloses a PC and asserts that a PC is
`specifically excluded from the claims by the ’600 patent Specification. Id.
`Furthermore, Patent Owner contends Nair’s mobile device only discloses
`automatic switching through cellular telephony handoff processes in which
`both networks must be available—hence, Patent Owner asserts Nair does not
`disclose switching when a primary network becomes unavailable. Id. at 9.
`However, Patent Owner’s Preliminary Response does not address
`Petitioner’s more detailed reasoning for combining Nicholas and Nair from
`pages 27, 28, and 30 of the Petition.
`We agree with Patent Owner that Petitioner’s generalized statement
`that the references would have been combined to achieve the claimed
`features, standing alone, would be conclusory and inadequate. However, as
`discussed supra, Petitioner also provides more detailed reasoning for
`combining the references when discussing claims 10, 12, and 13. See Pet.
`26–30. Specifically, as noted above, Petitioner contends the ordinarily
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`skilled artisan would have combined the references for claim 10 to provide
`an advantageous touch screen user interface of Nair for camera control in a
`videoconference application and would have combined the reference for
`claim 13 to utilize standardized web browser capabilities of Nair for video
`display in such applications. Id. We find these reasons, based on rational
`underpinnings, are sufficiently persuasive. Petitioner’s reasoning amounts
`to substituting known techniques and structures to achieve predictable
`results. See KSR, 550 U.S. at 416.
`Patent Owner’s arguments are not persuasive because they do not
`address these reasons provided in the Petition. Furthermore, as discussed
`supra, we disagree with
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