Filed on behalf of:
`Google Inc.
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` Paper No. 1
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`Date: September 7, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`GOOGLE INC.,
`
`Petitioner,
`
`v.
`
`ALEX IS THE BEST, LLC
`
`Patent Owner.
`
`_________________
`
`U.S. Patent No. 8,581,991
`
`IPR2017-02058
`_________________
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,581,991
`
`
`

`

`U.S. Patent No. 8,581,991
`Petition for Inter Partes Review
`
`
`
`TABLE OF CONTENTS
`
`
`
`EXHIBIT LIST ..................................................................................................... iv
`
`Page
`
`I.
`
`PAYMENT AUTHORIZATION AND MANDATORY NOTICES UNDER
`37 C.F.R § 42.8(A)(1) ................................................................................... 1
`GROUNDS FOR STANDING UNDER § 42.104(A) ................................... 4
`II.
`III. THE ‘991 PATENT AND THE FIELD OF ART ......................................... 5
`IDENTIFICATION OF CHALLENGES UNDER § 42.104(B) .................... 6
`IV.
`A. Overview Of The Grounds For This Petition ...................................... 7
`
`The Earliest Effective Filing Date Of The Claims Subject To This
`B.
`Petition ........................................................................................................ 7
`
`C.
`
`D.
`
`Prior Art Status Of The References .................................................... 8
`
`Level of Ordinary Skill in the Art ....................................................... 9
`
`CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3) ................. 10
`V.
`VI. GROUND 1: OBVIOUSNESS IN VIEW OF INOUE AND NAIR ....... 11
`A. Claim 1 ............................................................................................. 12
`
`B. Claim 2 ............................................................................................. 21
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`C. Claim 3 ............................................................................................. 22
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`D. Claim 10 ........................................................................................... 22
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`E.
`
`F.
`
`Claim 11 ........................................................................................... 23
`
`Claim 12 ........................................................................................... 24
`
`G. Claim 13 ........................................................................................... 24
`
`i
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`

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`U.S. Patent No. 8,581,991
`Petition for Inter Partes Review
`
`
`
`TABLE OF CONTENTS
`
`
`
`H. Claim 14 ........................................................................................... 26
`
`I.
`
`Claim 21 ........................................................................................... 27
`
`VII. GROUND 2: OBVIOUSNESS IN VIEW OF YAMAZAKI AND
`NICHOLAS ............................................................................................... 27
`A. Claim 1 ............................................................................................. 29
`
`Page
`
`B. Claim 2 ............................................................................................. 39
`
`C. Claim 3 ............................................................................................. 40
`
`D. Claim 12 ........................................................................................... 42
`
`E.
`
`F.
`
`Claim 13 ........................................................................................... 43
`
`Claim 14 ........................................................................................... 45
`
`G. Claim 21 ........................................................................................... 45
`
`VIII. GROUND 3: OBVIOUSNESS IN VIEW OF YAMAZAKI AND NAIR ... 46
`A. Claim 1 ............................................................................................. 46
`
`B. Claim 2 ............................................................................................. 48
`
`C. Claim 3 ............................................................................................. 49
`
`D. Claim 12 ........................................................................................... 50
`
`E.
`
`F.
`
`Claim 13 ........................................................................................... 50
`
`Claim 14 ........................................................................................... 51
`
`G. Claim 21 ........................................................................................... 52
`
`ii
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`

`

`U.S. Patent No. 8,581,991
`Petition for Inter Partes Review
`
`
`
`TABLE OF CONTENTS
`
`
`IX. GROUND 4: OBVIOUSNESS IN VIEW OF YAMAZAKI, NICHOLAS
`AND NAIR ................................................................................................. 52
`A. Claim 10 ........................................................................................... 53
`
`Page
`
`B. Claim 11 ........................................................................................... 53
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`X. GROUND 5: OBVIOUSNESS IN VIEW OF KUSAKA AND NICHOLAS54
`A. Claim 1 ............................................................................................. 55
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`B. Claim 2 ............................................................................................. 61
`
`C. Claim 3 ............................................................................................. 62
`
`D. Claim 12 ........................................................................................... 62
`
`E.
`
`F.
`
`Claim 13 ........................................................................................... 63
`
`Claim 14 ........................................................................................... 65
`
`G. Claim 21 ........................................................................................... 65
`
`XI. GROUND 6 –KUSAKA IN VIEW OF NICHOLAS AND NAIR .............. 66
`XII. CONCLUSION AND RELIEF REQUESTED ........................................... 68
`
`
`
`
`
`iii
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`

`

`U.S. Patent No. 8,581,991
`Petition for Inter Partes Review
`
`
`Ex. No. Brief Description
`
`
`
`EXHIBIT LIST
`
`1001 U.S. Patent No. 8,581,991 to Clemente (“the ‘991 Patent”)
`
`1002
`
`1003
`
`1004
`
`1005
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`1006
`
`1007
`
`1008
`
`Alleged Priority Document: U.S. Provisional Application Serial No.
`60/702,470
`
`Alleged Priority Document: Prosecution History of U.S. Application
`Serial No. 11/484,373, now Pat. No. 7,633,524
`
`Prosecution History of the ‘991 Patent, U.S. Application Serial No.
`13/925,498
`
`U.S. Patent Application Publication No. 2004/0109066 to Inoue, et al.,
`filed December 3, 2003 and published June 10, 2004 (“Inoue”)
`
`U.S. Patent Application Publication No. 2004/0127208 to Nair, et al.,
`filed August 4, 2003 and published July 1, 2004 (“Nair”)
`
`U.S. Patent Application Publication No. 2004/0105008 to Yamazaki,
`application filed November 25, 1998, divisional application filed
`November 14, 2003, and published June 3, 2004 (“Yamazaki”)
`U.S. Patent Application Publication No. 2004/0133668 to Nicholas, III,
`provisional application file September 12, 2002, utility application filed
`September 12, 2003, and published July 8, 2004 (“Nicholas”)
`
`1009
`
`U.S. Patent Application Publication No. 2004/0109063 to Kusaka, et al.,
`filed May 27, 2003 and published June 10, 2004 (“Kusaka”)
`
`1010 Declaration of Vijay Madisetti, Ph.D.
`
`iv
`
`

`

`U.S. Patent No. 8,581,991
`Petition for Inter Partes Review
`
`
`Google Inc. (hereinafter “Petitioner”), in accordance with 35 U.S.C. § 311-
`
`319 and 37 C.F.R. § 42.100 et seq., hereby petitions for inter partes review of
`
`Claims 1-3, 10-14 and 21 of U.S. Patent No. 8,581,991 to Clemente et al. (Ex.
`
`1001, “the ‘991 Patent”). The ‘991 Patent issued on November 12, 2013 from U.S.
`
`Patent Application No. 13/925,498, filed June 24, 2013, entitled “Integrated
`
`Internet Camera System and Method” (Ex. 1001) (cover); (Ex. 1004) (prosecution
`
`history). The ‘991 Patent’s application is a continuation of U.S. Application Serial
`
`No. 13/415,346, now Pat. No. 8,477,197, which is a continuation of U.S.
`
`Application Serial No. 13/037,303, now Pat. No. 8,134,600, which is a
`
`continuation of U.S. Application Serial No. 12/637,277, now Pat. No. 7,907,172,
`
`which is a continuation of U.S. Application Serial No. 11/484,373, now Pat. No.
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`7,633,524 (Ex. 1003), and asserts that it is entitled to the effective filing date of
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`U.S. Provisional Application Serial No. 60/702,470 (Ex. 1002). See Ex. 1001
`
`(cover). According to USPTO-PAIR records, the ‘991 Patent is assigned to Alex Is
`
`The Best, LLC (“Patent Owner”).
`
`I.
`
`PAYMENT AUTHORIZATION AND MANDATORY NOTICES
`UNDER 37 C.F.R § 42.8(a)(1)
`
`The Patent and Trademark Office is authorized to charge the fee set out in
`
`37 C.F.R. § 42.15(a), and any additional fees due, to Deposit Account No. 10-
`
`0435, with reference to file number 51783-259742.
`
`1
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`

`

`U.S. Patent No. 8,581,991
`Petition for Inter Partes Review
`
`
`Google Inc.
`
`is
`
`the Petitioner and a real party-in-interest
`
`in
`
`this
`
`proceeding. This petition is also being filed by Lenovo Holding Company, Inc.
`
`and Lenovo (United States) Inc., which are real parties in interest in this
`
`proceeding. Motorola Mobility, LLC, Huawei Devices USA Inc., and Huawei
`
`Technologies USA Inc. are additional real parties in interest.
`
`To Petitioner’s knowledge, Patent Owner has asserted the ’991 Patent in past
`
`or ongoing litigation captioned Alex is the Best, LLC v. BLU Products, Inc., Case
`
`No. 1:16-cv-00769 (DED); Alex is the Best, LLC v. Huawei Device (Dongguan)
`
`Co. Ltd., et al., Case No. 1:16-cv-00770 (DED); Alex is the Best, LLC v. Lenovo
`
`Holding Company, Inc., et al., Case No. 1:16-cv-00771-RGA (DED); Alex is the
`
`Best, LLC v. TCT Mobile, Inc., et al., 1:16-Cv-00772 (DED); Alex is the Best, LLC
`
`v. Boost Mobile, LLC, Case No. 1:13-cv-01782 (DED); Alex is the Best, LLC v.
`
`Kyocera Corporation, et al., Case No. 1:13-cv-01783 (DED); Alex is the Best, LLC
`
`v. Sprint Corporation, Case No. 1:13-cv-01784 (DED); Alex is the Best, LLC v. T-
`
`Mobile USA, Inc., et al., Case No. 1:13-cv-01785 (DED); Alex is the Best, LLC v.
`
`Verizon Communications, Inc., et al., Case No. 1:13-cv-01786 (DED); Alex is the
`
`Best, LLC v. Samsung Electronics Co., Ltd., et al., Case No. 1:13-cv-01787 (DED);
`
`Alex is the Best, LLC v. Amazon.com Inc., et al., Case No. 1:13-cv-01722 (DED);
`
`Alex is the Best, LLC v. ASUS Computer International, Case No. 1:13-cv-01723
`
`(DED); Alex is the Best, LLC v. Blackberry Limited f/k/a Research in Motion
`
`2
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`

`

`U.S. Patent No. 8,581,991
`Petition for Inter Partes Review
`
`Limited, et al., Case No. 1:13-cv-01724 (DED); Alex is the Best, LLC v. HTC
`
`Corporation, et al., Case No. 1:13-cv-01725 (DED); Alex is the Best, LLC v. LG
`
`Electronics Inc., et al., Case No. 1:13-cv-01726 (DED); Alex is the Best, LLC v.
`
`Sony Corporation, et al., Case No. 1:13-cv-01727 (DED; and Alex is the Best, LLC
`
`v. ZTE Corporation, et al., Case No. 1;13-cv-01728 (DED) (the “Litigations”).
`
`Additionally, Petitioner is aware of the following issued, expired, abandoned
`
`or pending applications and cases that have been alleged by Patent Owner to be
`
`related to the ‘991 Patent: Provisional Application Serial No. 60/702,470 filed on
`
`07-26-2005, which is expired; U.S. Application Serial No. 11/484,373 filed on 07-
`
`11-2006, which is patented; U.S. Application Serial No. 12/637,277 filed on 12-
`
`14-2009, which is patented; U.S. Application Serial No. 13/037,303 filed on 02-
`
`28-2011, which is patented; U.S. Application Serial No. 13/415,346 filed on 03-
`
`08-2012, which is patented; U.S. Application Serial No. 13/925,498 filed on 06-
`
`24-2013, which is patented; U.S. Application Serial No. 14/053,600 filed on 10-
`
`15-2013, which is patented; U.S. Application Serial No. 14/578,403 filed on 12-
`
`20-2014, which is patented; U.S. Application Serial No. 14/948,486 filed on 11-
`
`23-2015, which is patented; and U.S. Application Serial No. 15/295,940 filed on
`
`10-17-2016, which is pending.
`
`Petitioner identifies the following lead and back-up counsel for this
`
`proceeding:
`
`3
`
`

`

`U.S. Patent No. 8,581,991
`Petition for Inter Partes Review
`
`
`Lead Counsel
`
`Joshua P. Larsen (Reg. No. 62,761)
`Barnes &Thornburg LLP
`11 S Meridian Street
`Indianapolis, IN 46204
`joshua.larsen@btlaw.com
`(317) 236-1313
`
`
`
`
`
`
`
`Back-Up Counsel
`
`Jeffrey C. Morgan (pro hac vice
`application forthcoming)
`Barnes &Thornburg LLP
`3475 Piedmont Rd. NE
`Suite 1700
`Atlanta, GA 30305
`jeff.morgan@btlaw.com
`(404) 264-4015
`
`
`Back-Up Counsel
`Steven D. Shipe (Reg. No. 71,944)
`Barnes &Thornburg LLP
`1717 Pennsylvania Avenue, N.W.,
`Suite 500
`Washington, D.C. 20006
`steven.shipe@btlaw.com
`(202) 289-1313
`
`
`Petitioner agrees to service by electronic mail to the e-mail addresses of each
`
`of its designated counsel (joshua.larsen@btlaw.com, jeff.morgan@btlaw.com and
`
`steven.shipe@btlaw.com).
`
`II. GROUNDS FOR STANDING UNDER § 42.104(a)
`
`Petitioner certifies that the ‘991 Patent is eligible for inter partes review and
`
`that Petitioner is not barred or estopped from requesting an inter partes review on
`
`the grounds identified in this Petition.
`
`4
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`

`

`U.S. Patent No. 8,581,991
`Petition for Inter Partes Review
`
`III. THE ‘991 PATENT AND THE FIELD OF ART
`
`The ‘991 Patent, entitled “INTEGRATED INTERNET CAMERA SYSTEM
`
`AND METHOD,” “relates to an integrated Internet camera and/or system that is
`
`simple to install, operate and maintain[].” Ex. 1001, 1:19-21; see also Ex. 1010,
`
`Decl. of Madisetti, Ph.D., ¶¶34-48 (“Madisetti”). The system “seamlessly and
`
`automatically transmits, stores and/or archives still images, video and/or audio to
`
`and from a web site serve/monitor center over the Internet using one or more
`
`integrated Internet cameras.” Id., 1:22-25. Although the ‘991 Patent acknowledges
`
`that Internet cameras which can transmit images to and from the Internet are not
`
`new, the applicants asserted that prior art cameras needed additional devices to
`
`connect to the Internet (e.g., a personal computer), required a “network” card that
`
`did not provide “two-way access to the image file,” and did not have the capability
`
`to “seamlessly upload and download” images via the Internet. Id., 1:52–2:3.
`
`The ‘991 Patent’s disclosure primarily concerns the use of a camera to
`
`upload or download images to and from a “website archive and review center
`
`(‘WSARC’).” Id., 2:13-3:4, Fig. 2. The WSARC comprises a “web server and one
`
`or more databases” that are accessible via the Internet. Id., 3:23-30. In some
`
`embodiments, the ‘991 Patent describes its camera as connecting to the WSARC
`
`via one of a variety of different modes of communication, including “land line,
`
`DSL, cable, satellite, wireless network, cellular, Wi-Fi, Wi-Max and the like.” Id.,
`
`5
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`

`

`U.S. Patent No. 8,581,991
`Petition for Inter Partes Review
`
`3:35-37. “Preferably, the IDC 2000 [Internet direct camera] connects to the
`
`Internet via a primary mode of communication and switches over to a secondary
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`mode of communication if the IDC 2000 detects a failure in the primary mode of
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`communication.” Id., 3:37-41. This automatic switching need not occur
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`immediately; indeed, the ‘991 Patent describes scenarios where the network
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`connection is lost and images are stored for later transmission. Id., 4:43-63.
`
`The challenged claims (1-3, 10-14 and 21) generally concern the function of
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`transmitting images to the Internet using an “Internet direct device” and using a
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`different Internet direct device to review images. See id., 6:14-23, 7: 8-28, 43-54.
`
`An Internet direct device (“IDD”) includes at least a device that is capable of
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`connecting to the Internet “without the necessity of connecting to another device,
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`such as a PC.” Ex. 1001, 1:6–2:3; see id., Abstract, claims 1-3, 10-14 and 21. The
`
`‘991 Patent’s specification describes using a WSARC as part of the claimed
`
`function of sending and receiving images. See id., 6:14-23, 7:8-28, 43-54. Thus,
`
`the challenged claims include cameras and other devices that perform their recited
`
`elements in connection with the use of a WSARC.
`
`IV.
`
`IDENTIFICATION OF CHALLENGES UNDER § 42.104(b)
`
`Petitioner requests institution of inter partes review of Claims 1-3, 10-14
`
`and 21 of the ‘991 Patent on the grounds below, and requests that each of the
`
`6
`
`

`

`U.S. Patent No. 8,581,991
`Petition for Inter Partes Review
`
`challenged claims be found unpatentable. Included below is an explanation of
`
`unpatentability under the identified grounds, indicating where each claim element
`
`is found in the prior art.
`
`A. Overview Of The Grounds For This Petition
`
`Ground Challenged Claims
`
`Statutory Ground and Prior Art
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`1-3, 10-14, 21
`
`Obviousness under 35 U.S.C. § 103(a) over
`Inoue and Nair
`
`1-3, 12-14 and 21
`
`Obviousness under 35 U.S.C. § 103(a) over
`Yamazaki and Nicholas
`
`1-3, 12-14 and 21
`
`Obviousness under 35 U.S.C. § 103(a) over
`Yamazaki and Nair
`
`10 and 11
`
`Obviousness under 35 U.S.C. § 103(a) over
`Yamazaki, Nicholas and Nair
`
`1-3, 12-14 and 21
`
`Obviousness under 35 U.S.C. § 103(a) over
`Kusaka and Nicholas
`
`10 and 11
`
`Obviousness under 35 U.S.C. § 103(a) over
`Kusaka, Nicholas, and Nair
`
`
`As set forth below, each of the foregoing references constitutes prior art to
`
`the ‘991 Patent under at least pre-AIA 35 U.S.C. § 102(a), (b) or (e).
`
`B.
`
`The Earliest Effective Filing Date Of The Claims Subject To This
`Petition
`
`Petitioner contends that the challenged claims of the ‘991 Patent are entitled
`
`to an effective filing date of no earlier than July 11, 2006, which is the filing date
`
`of the earliest related utility application, U.S. Application Serial No. 11/484,373,
`
`7
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`

`

`U.S. Patent No. 8,581,991
`Petition for Inter Partes Review
`
`now U.S. Patent No. 7,633,524 (“the ‘373 Application”). Ex. 1001 (cover,
`
`“Related U.S. Application Data”). None of the challenged claims is entitled to the
`
`benefit of the earlier filing date of U.S. Provisional Application Serial No.
`
`60/702,470 (the “Provisional”), which is also identified as a related application on
`
`the cover of the ‘991 Patent.1 Id. As the prior art status of the references cited in
`
`this Petition do not depend on depriving the ‘197 Patent of the Provisional’s
`
`effective filing date, however, Petitioner will not further address this issue at the
`
`present time. Petitioner reserves the right to raise this issue as it may be or become
`
`relevant to other proceedings, including other Petitions filed in this Office and
`
`proceedings in the Litigations.
`
`C.
`
`Prior Art Status Of The References
`
`Inoue (Ex. 1005) was published on June 10, 2004. It is prior art under pre-
`
`AIA 35 U.S.C. 102(b).
`
`
`1 Each claim requires the step or act of “automatically connecting the
`Internet direct device to said communications network on power-up using one of a
`
`plurality of available modes of connection” using a “primary mode of connection”
`
`and “automatically switching to another available mode of connection when …
`said primary mode of connection to said communications network is unavailable.”
`The Provisional does not disclose at least these limitations. Madisetti, ¶¶49-55.
`
`
`
`8
`
`

`

`U.S. Patent No. 8,581,991
`Petition for Inter Partes Review
`
`
`Nair (Ex. 1006) published on July 1, 2004. It is prior art under pre-AIA 35
`
`U.S.C. 102(b).
`
`Yamazaki (Ex. 1007) published on June 3, 2004. It is prior art under pre-
`
`AIA 35 U.S.C. 102(b).
`
`Nicholas (Ex. 1008) published on July 8, 2004. It is prior art under pre-AIA
`
`35 U.S.C. 102(b).
`
`Kusaka (Ex. 1009) published on June 10, 2004. It is prior art under pre-AIA
`
`35 U.S.C. 102(b).
`
`D. Level of Ordinary Skill in the Art
`
`At the time of the alleged invention,2 one of ordinary skill in the art in the
`
`field with which the ‘991 patent pertains would have had at least a Bachelor’s
`
`Degree in Electrical Engineering, Computer Science, or Computer Engineering, or
`
`equivalent experience, and 1-2 years of experience in the field of computer
`
`networking and/or telecommunications. Alternatively, an individual without a
`
`bachelor’s degree, but with additional years of experience developing and
`
`
`2 The level of ordinary skill in the art would not vary if the time of the alleged
`invention is assumed to be within one year of the filing of the Provisional July 26,
`2005, including the date of the utility application filing (July 11, 2006). Madisetti,
`
`¶57.
`
`9
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`

`

`U.S. Patent No. 8,581,991
`Petition for Inter Partes Review
`
`deploying voice, video, and call processing applications would also be a person of
`
`ordinary skill in the art. Madisetti, ¶¶56-59.
`
`V. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(b)(3)
`
`Each term of an unexpired patent claim in inter partes review is given its
`
`“broadest reasonable construction in light of the specification of the patent in
`
`which it appears.” 37 C.F.R. § 42.100(b). For purposes of this Petition and under
`
`the broadest reasonable interpretation (“BRI”), Petitioner provides the following
`
`claim constructions: 3
`
`The 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. Madisetti, ¶¶37-40.
`
`At this time Petitioner believes that none of its unpatentability positions
`
`requires a construction of any other claim term, and that such terms should take
`
`their plain meaning. Petitioner also takes the position that the preambles of the
`
`challenged claims are not limiting as they are not necessary to give life to the claim
`
`
`3 Petitioner reserves all rights to challenge the basis of patentability of the claims of
`the ‘197 Patent on grounds which are not available for consideration under inter
`
`partes review at this time, for example but without limitation, standards for
`
`claiming under 35 U.S.C. § 112.
`
`10
`
`

`

`U.S. Patent No. 8,581,991
`Petition for Inter Partes Review
`
`and merely state intended purpose. Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d
`
`1354, 1358-59 (Fed. Cir. 2010); Boehringer Ingelheim Vetmedica, Inc. v.
`
`Schering–Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003).
`
`Petitioner may explain the scope of the plain meaning of any claim term to
`
`the extent that Patent Owner takes a position on claim scope that appears
`
`materially different from its plain meaning. Petitioner also reserves the right to
`
`assert additional or alternate claim construction positions under the differing
`
`standards for claim interpretation that apply to, e.g., proceedings in the Litigations.
`
`VI. GROUND 1: OBVIOUSNESS IN VIEW OF INOUE AND NAIR
`
`Claims 1-3, 10-14 and 21 are unpatentable as obvious under 35 U.S.C. §
`
`103(a) by Inoue (Ex. 1005) in view of Nair (Ex. 1006). Neither Inoue nor Nair was
`
`before the Office during the prosecution of the ‘991 Patent.4 Inoue describes a
`
`digital camera that automatically establishes a primary connection to a network
`
`when the camera is powered-up for transmission of images to a server on the
`
`Internet and subsequent retrieval of images from the server for review on a display
`
`on the camera. Nair describes system applicable to any wireless device, including
`
`
`4 An unrelated prior art reference by “Inoue” was before the Examiner during the
`prosecution of the ‘197 Patent. Ex. 1001 (cover, identifying U.S. Pat. No.
`
`5,027,150 to Inoue, et al., as among the References Cited).
`
`11
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`

`

`U.S. Patent No. 8,581,991
`Petition for Inter Partes Review
`
`Inoue’s camera, for automatically switching among networks when a primary
`
`network becomes unavailable in order to maintain a seamless connection to the
`
`communication network for data transmission. A person of ordinary skill in the art
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`would have found it obvious to combine Inoue and Nair to arrive at the alleged
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`invention in claims 1-3, 10-14 and 21 of the ‘991 Patent. Madisetti, ¶¶108-114,
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`A. Claim 1
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`Inoue’s mobile camera discloses all of the elements of claim 1 except the
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`automatic switching function. Nair describes an automatic switching system that it
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`states can be used with a variety of wireless devices, which include wireless digital
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`cameras like those discussed in Inoue. Madisetti, ¶¶108-114. As discussed below,
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`a skilled artisan would have been motivated to combine Inoue to achieve the
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`advantages of seamlessly roaming among multiple networks when Inoue’s primary
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`network is unavailable. Id.
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`A method for transmitting and receiving still or video images by an
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`Internet direct device associated with a user over a communications
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`network, comprising the steps of:
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`The preamble to claim 1 is not limiting, nonetheless, this method is
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`disclosed by Inoue. Inoue describes a digital camera for transmitting and receiving
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`images that, when “powered on … automatically establishes a network connection
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`with [a] file server” for the purposes of transmitting and receiving images over a
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`U.S. Patent No. 8,581,991
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`communications network. Ex. 1005, Abstract. Inoue’s network connection can
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`include a connection to the Internet (126). See, e.g., id., ¶0060, Fig. 3:
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`Id., Fig. 3.
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`
`
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`Automatically connecting
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`the
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`Internet direct device
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`to said
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`communications network on power-up using one of a plurality of
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`available modes of connection, which is designated as a primary
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`mode of connection;
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`Inoue explains that “[w]hen the digital camera is powered on, it
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`automatically establishes a network connection with the file server in an activation
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`process.” Ex. 1005, Abstract. “The power button 38 is one for switching on/off the
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`power of the entire digital camera 10. When the digital camera 10 is off, pressing
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`the power button 38 is detected by event detecting unit 50 as an activation request,
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`which is followed by an activation process.” Ex. 1005, ¶0058. Inoue’s digital
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`camera “detects an activation request” and “establish[es] a network connection
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`U.S. Patent No. 8,581,991
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`between the digital camera and a file server upon detection of the activation
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`request.” Id., ¶0017; see also id., ¶0066, Fig. 6. The communications network can
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`be via any one of a plurality of modes of connection: “The ‘network’ may be either
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`wireless or wired. Nor does it matter whether the network uses such facilities as an
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`access point if on a wireless LAN in infrastructure mode, or is of so-called peer-to-
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`peer as if in ad-hoc mode.” Id., ¶0015. The particular network that is selected for
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`use is the “primary mode of connection” for Inoue’s camera for connection to a
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`“communication network,” such as the Internet. Id., ¶0060. In one embodiment,
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`Inoue identifies “a wireless LAN” as the primary mode of communication to reach
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`the Internet. Id. ¶0060, Fig. 3.
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`Capturing still or video images by an image capture system of the
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`Internet direct device;
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`Inoue describes “a digital camera” with an “image pickup block” to capture
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`images. Ex. 1005, ¶0009; see also id., ¶¶0002, 0010-0013, Fig. 1(12).
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`U.S. Patent No. 8,581,991
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`
`IMAGE PICKUP BLOCK
`
`4 .
`
`CCD
`
`_ ^
`
`A/D
`CONVER-
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`l
`
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`
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`
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`
`EVENT
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`
`50
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`56-
`
`INTERNAL BUFFER AREA
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`58'
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`60
`
`NETWORK
`CONFIGURATION AREA
`FLASH MEMORY
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`SHUTTER
`BUTTON
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`REPRODUCTION
`INSTRUCTION
`BUTTON
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`34
`
`3 8 —
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`POWER
`BUTTON
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`36
`
`OPERATION BLOCK
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`18
`
`Id., Fig. 1.
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`BUFFER
`PROCESSING
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`
`PROCESSING BLOCK
`
`52
`
`10
`
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`
`68
`
`
`
`Transmitting the captured still or video images to an account
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`associated with the Internet direct device on a website archive and
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`review (WSARC) upon image capture by a microprocessor of the
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`Internet direct device,
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`Inoue describes this element, including the claimed microprocessor. Inoue
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`describes a “processing block 16” that includes an “image processing unit 44,” a
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`“transmission processing unit 52,” a “reproduction processing unit 48,” memory
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`units, and various other elements. Ex. 1005, ¶0053, Fig. 1. The transmission unit
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`contains a “communication control unit 72” which controls an internal “option card
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`U.S. Patent No. 8,581,991
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`68” able to access various communication networks. Id., ¶0049 (“The card slot 20
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`[in the camera] retains an option card 68 detachably”). “The communication
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`control unit 72 exercises control necessary to communicate with the file server….”
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`Id., ¶¶0056, 0060 (“The digital camera 10 and the access point 122 communicate
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`with each other over a wireless LAN”). Inoue teaches that its digital cameras
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`(IDDs) transmit images “upon obtainment of the image” to a server. Id., ¶0018.
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`“Upon obtainment of the image” includes image capture. Id., ¶0015 (“The ‘image
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`obtained by image pickup,’ shall cover both an intact image just picked up and an
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`image obtained through compression or the like after picked up.”), ¶0048 (“The
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`image pickup block 12 shoots a subject under user instructions.”).
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`receiving still or video
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`images
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`from said WSARC over
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`the
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`communications network by the Internet direct device; and
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`Inoue further explains that its microprocessor not only controls image
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`capture and transmittal to the file server, but also operates to retrieve images from
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`the file server. Inoue states:
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`For example, the processing block includes any one of the following
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`configurations:
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`(1) A detecting unit which detects an activation request for the digital
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`camera, and a communication control unit which performs processing
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`for establishing a network connection with a file server upon detection
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`of the activation request;
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`U.S. Patent No. 8,581,991
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`(2) A detecting unit which detects an image pickup request, and a
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`communication control unit which performs processing
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`for
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`transmitting an image obtained by image pickup to a file server over a
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`network upon obtainment of the image;
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`(3) A detecting unit which detects an image reproduction request, and
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`a communication control unit which performs processing for receiving
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`an image to be reproduced from a file server over a network when the
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`image reproduction request is detected; and
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`(4) Any two or more of the configurations (1) to (3) in combination.
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`Ex. 1005, ¶¶0009-0013.
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`Inoue further describes that its file server is configured with “user-specific
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`folders … so that images are classified and stored in the folders” based upon the
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`camera that captures and uploads the image. Id., ¶0059. Inoue discloses that these
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`folders are created for storing and retrieving images associated with a particular
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`digital camera and user. Id., ¶¶0079-0080, Fig. 12. The folders comprise accounts
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`associated each of the IDDs (Inoue’s camera) on a WSARC (Inoue’s file server).
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`Id.; Madisetti, ¶431. Inoue also depicts how its folder-based image management
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`system manages images shot by different cameras and transmitted to the file
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`server. Id., ¶¶0082-83, Fig. 13. For example:
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`U.S. Patent No. 8,581,991
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`
`
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`Ex. 1005, Fig. 13.
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`Automatically switching to another available mode of connection by
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`the microprocessor when the Internet direct device detects that said
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`primary mode of connection to the communications network is
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`unavailable.
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`As noted, one of Inoue’s embodiments identifies “a wireless LAN” as a
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`primary mode of connection to reach the Internet among a plurality of available
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`modes. Ex. 1005, ¶0060; Madisetti, ¶432. Inoue does not disclose that its digital
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`cameras automatically switch from a wireless LAN to another available mode of
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`U.S. Patent No. 8,581,991
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`connection when the wireless LAN is unavailable. Nair, however, provides this
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`teaching.
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`Nair relates “generally to the field of wireless technology and, more
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`particularly, to seamless routing between wireless networks.” Ex. 1006, ¶0003. Its
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`teachings apply to any wireless device with capability for communicating by
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`wireless technology—e.g., “wireless device 12 can be, for example, a wireless
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`personal digital assistant (PDA), a cellular phone, or any other wireless-capable
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`electronic device.” Id. Nair explains that connecting and transmitting data over a