`571-272-7822
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` Paper 10
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` Entered: March 9, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`ALEX IS THE BEST, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-02058
`Patent 8,581,991 B1
`____________
`
`
`
`Before DANIEL N. FISHMAN, MINN CHUNG, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
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`IPR2017-02058
`Patent 8,581,991 B1
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`
`I. INTRODUCTION
`Google LLC (“Petitioner”) filed a Petition (Paper 2, “Pet.”)1
`requesting an inter partes review of claims 1–3, 10–14, and 21 (the
`“challenged claims”) of U.S. Patent No. 8,581,991 B1 (Ex. 1001, “the ’991
`patent”). Alex Is The Best, LLC (“Patent Owner”) filed a Preliminary
`Response (Paper 7, “Prelim. Resp.”).
`Institution of an inter partes review is authorized by statute when “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);
`see 37 C.F.R. §§ 42.4, 42.108. Upon consideration of the Petition and the
`Preliminary Response, we conclude that the information presented in the
`Petition does not establish a reasonable likelihood that Petitioner would
`prevail in showing the unpatentability of any of the challenged claims on the
`grounds set forth in the Petition. Accordingly, we deny Petitioner’s request
`to institute an inter partes review of claims 1–3, 10–14, and 21 of the ’991
`patent.
`
`II. BACKGROUND
`A. Real Parties-in-Interest and Related Matters
`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. 2.
`
`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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`2
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`
`The parties identify the following related litigation matters in the
`United States District Court for the District of Delaware.
`Defendant(s)
`Case 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 Partnership2
`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
`Limited, et al.
`HTC Corporation, et al.
`LG Electronics Inc., et al.
`Sony Corporation, et al.
`ZTE Corporation, et al.
`
`1:13-cv-01725
`1:13-cv-01726
`1:13-cv-01727
`1:13-cv-01728
`
`Pet. 2–3; Paper 5, 2–3.3
`
`2 Petitioner identifies the defendant in this litigation as “Verizon
`Communications, Inc., et al.,” whereas Patent Owner identifies the
`defendant as “Cellco Partnership.” We believe Petitioner is in error, but we
`deem any error to be harmless.
`3 Paper 5, as filed, does not include page numbering as required by our rules.
`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
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`
`The ’991 patent is also the subject of a co-pending petition for inter
`partes review filed by Petitioner in Case IPR2017-02059. In addition,
`according to the parties, Petitioner also filed petitions seeking inter partes
`review of claims of various Patent Owner’s patents as follows.
`
`Case No.
`IPR2017-02052
`IPR2017-02053
`IPR2017-02054
`IPR2017-02055
`IPR2017-02056
`IPR2017-02057
`
`Challenged Patent No.
`7,907,172
`8,477,197
`7,633,524
`8,947,542
`8,134,600
`9,197,806
`
`Paper 4, 1; Paper 5, 2.
`
`B. The ’991 Patent
`The ’991 patent generally relates to “an integrated Internet camera . . .
`that seamlessly and automatically transmits, receives, stores and/or archives
`still images, video and/or audio to and from a web site service/monitor
`center over the Internet.” Ex. 1001, 1:21–25. According to the ’991 patent,
`conventional cameras are incapable of directly connecting to the Internet or
`the World Wide Web (“Web”) without coupling through a separate network
`device such as a personal computer (“PC”). Id. at 1:42–46.
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`
`Figure 1 of the ’991 patent is reproduced below.
`
`
`Figure 1 depicts a conventional camera that captures and transmits images to
`the Internet using a local PC. Id. at 3:13–14. As shown in Figure 1, in a
`prior art camera system, camera 100 cannot connect directly to the internet
`but, instead, must couple to the Internet via intermediate PC 200. Id. at
`1:42–51.
`According to the ’991 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 without requiring a separate network
`device such as a PC. Id. at 1:52–55. However, the ’991 patent states that
`such cameras with plugin network interfaces 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 1:55–58.
`The ’991 patent purports to resolve these problems by disclosing an
`Internet direct camera (“IDC”) that seamlessly links, via the Internet, to a
`website archive and review center (“WSARC”) for storage and retrieval of
`images. Id. at 2:13–19. In an exemplary embodiment, an integrated Internet
`camera system comprises a WSARC for storing, archiving, and managing
`images; and an IDC for capturing an image, automatically transmitting the
`image to an account associated with the IDC on the WSARC upon image
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`capture, and receiving stored/archived image from the WSARC. Id. at 2:61–
`3:1. The IDC comprises a display for displaying the captured image and the
`received image. Id. at 3:1–2. The IDC can automatically and seamlessly
`connect to the WSARC by simply powering on the IDC. Id. at 2:27–30.
`That is, the IDC automatically connects to the WSARC over an Internet
`connection on power-up. Id. at 3:2–4.
`Figure 2 of the ’991 patent is reproduced below.
`
`
`Figure 2 illustrates an exemplary embodiment of an Integrated Internet
`camera system of the ’991 patent. Id. at 3:16–18. As shown in Figure 2, an
`integrated Internet camera system 1000 comprises a plurality of IDCs 2000
`connected to WSARC 3000 over Internet 4000. Id. at 3:23–28. Each IDC
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`comprises microprocessor 2200, display 2300, image-forming optical system
`2500 for capturing an image, and storage device 2400 for storing and
`archiving captured images. Id. at 3:56–60.
`In an exemplary embodiment, the IDC automatically connects to the
`Internet via a designated primary mode of communication and automatically
`switches to another mode of communication when the IDC detects a failure
`in the primary mode of communication. Id. at 3:37–41. For example, IDC
`2000 may be configured to use Wi-Fi as a primary mode of communication
`to Internet 4000 and can switch to cellular communications using SIM card
`2610 when the Wi-Fi communication is lost or unavailable. Id. at 3:41–44.
`
`C. Illustrative Claim
`Of the challenged claims, claims 1 and 13 are independent claims.
`Claim 1 is illustrative of the challenged claims and is reproduced below:
`1.
`A method for transmitting and receiving still or video
`images by an Internet direct device associated with a user over a
`communications network, comprising the steps of:
`automatically connecting the Internet direct device 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;
`capturing still or video images by an image capture system of the
`Internet direct device;
`transmitting the captured still or video images to an account
`associated with the Internet direct device on a website
`archive and review (WSARC) upon image capture by a
`microprocessor of the Internet direct device;
`receiving still or video images from said WSARC over the
`communications network by the Internet direct device; and
`automatically switching to another available mode of connection
`by the microprocessor when the Internet direct device
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`detects that said primary mode of connection to the
`communications network is unavailable.
`Ex. 1001, 8:16–35.
`
`
`D. Asserted Prior Art and Grounds of Unpatentability
`Petitioner cites the following references in its challenges to
`patentability.
`
`Designation Exhibit No.
`
`Inoue4
`
`Ex. 1005
`
`Nair
`
`Ex. 1006
`
`Reference and Relevant Date
`U.S. Patent Application Pub. No. 2004/0109066
`Al (published June 10, 2004)
`U.S. Patent Application Pub. No. 2004/0127208
`Al (published July 1, 2004)
`U.S. Patent Application Pub. No. 2004/0105008
`Al (published June 3, 2004)
`U.S. Patent Application Pub. No. 2004/0133668
`Al (published July 8, 2004)
`U.S. Patent Application Pub. No. 2004/0109063
`Al (published June 10, 2004)
`
`Petitioner also relies on the Declaration of Vijay K. Madisetti, Ph.D.
`(Ex. 1010).
`
`
`
`Yamazaki
`
`Ex. 1007
`
`Nicholas
`
`Ex. 1008
`
`Kusaka
`
`Ex. 1009
`
`
`4 For clarity and ease of reference, we only list the first named inventor.
`
`8
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`Petitioner asserts the following grounds of unpatentability:
`
`Claims Challenged
`
`Statutory Basis
`
`References
`
`1–3, 10–14, and 21
`1–3, 12–14, and 21
`1–3, 12–14, and 21
`10 and 11
`1–3, 12–14, and 21
`10 and 11
`
`
`Pet. 7.
`
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`Inoue and Nair
`Yamazaki and Nicholas
`Yamazaki and Nair
`Yamazaki, Nicholas, and Nair
`Kusaka and Nicholas
`Kusaka, Nicholas, and Nair
`
`III. ANALYSIS
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of
`the broadest reasonable interpretation standard in inter partes reviews).
`Under the broadest reasonable interpretation standard, and absent any
`special definitions, claim terms generally are given their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art, in view of the specification. In re Translogic Tech. Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007). Any special definitions for claim terms or phrases
`must be set forth with reasonable clarity, deliberateness, and precision. In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). A particular embodiment
`appearing in the written description generally is not incorporated into a
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`claim if the claim language is broader than the embodiment. In re Van
`Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`
`“Internet Direct Device”
`Petitioner discusses claim construction for only one term, namely, the
`term “Internet direct device” recited in independent claims 1 and 13.
`Pet. 10–11. Although Petitioner does not propose an express construction of
`the term, Petitioner contends that the term “Internet direct device” should be
`interpreted to “include[] at least a device that is capable of connecting to the
`Internet without the necessity of connecting to another device, such as a
`PC.” Id. at 10 (citing Ex. 1010 ¶¶ 37–40).
`Although Petitioner does not provide any citation to the ’991 patent in
`support of its proposed interpretation, we note that the ’991 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, 1:42–46, Fig. 1. The Specification of the ’991
`patent further explains 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 1:62–2:3 (emphasis added).
`Furthermore, although Patent Owner does not challenge Petitioner’s
`proposed interpretation of the term “Internet direct device” or proffer its own
`interpretation, Patent Owner also notes the above distinction over prior art
`cameras that required coupling with a PC to provide Internet
`communications. See Prelim. Resp. 10 (“The Petitioner clearly recognized
`that the claimed invention is directed to a system and method that
`‘seamlessly and automatically transmits, receives, stores and/or archives still
`
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`images, video and/or audio’ without the necessity of connecting to another
`device, such as a personal computer (PC).”) (citing Pet. 5–6; Ex. 1001, 1:62–
`2:3). Hence, on the current record, the Specification of the ’991 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, based on the current record, 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.
`Neither party proposes any further claim constructions. Hence, based
`on the current record, and for purposes of this Decision, we do not find it
`necessary to make formal claim constructions for any other claim terms.
`See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868
`F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are
`in controversy, and only to the extent necessary to resolve the controversy.’”
`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999))).
`
`B. Priority Date of the ’991 Patent
`Petitioner contends that the challenged claims are not entitled to the
`benefit of the July 26, 2005 filing date of the provisional patent application
`listed on the face of the ’991 patent. Pet. 7–8. Petitioner, however, asserts
`that this issue need not be addressed at this time because all references relied
`upon in the Petition pre-date the provisional filing date. Id. at 8.
`Patent Owner asserts that the ’991 patent is entitled to the earlier filing
`date of the provisional application, but does not dispute Petitioner’s assertion
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`that all references relied upon in the Petition pre-date the provisional filing
`date. Prelim. Resp. 5.
`On this record, because there is no dispute that the prior art references
`relied upon in the instant Petition pre-date the ’991 patent’s earliest possible
`priority date, for purposes of this Decision, we do not need to address any
`issues relating to the proper priority date for the ’991 patent.
`
`C. Obviousness Over the Combination of Inoue and Nair
`Petitioner contends claims 1–3, 10–14, and 21 are unpatentable as
`obvious under 35 U.S.C. § 103(a) over the combined teachings of Inoue and
`Nair. Pet. 11–27. In support of its contentions, Petitioner submits the
`Declaration of Vijay K. Madisetti, Ph.D. (Ex. 1010). Id. Given the evidence
`of record, we are not persuaded that Petitioner has established a reasonable
`likelihood of prevailing on this asserted ground as to any of these challenged
`claims for the reasons explained below.
`
`1. Relevant Principles of Law
`A 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 the subject matter
`pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The
`question of obviousness is resolved on the basis of underlying factual
`determinations, including: (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
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`of skill in the art;5 and (4) where in evidence, so-called secondary
`considerations.6 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We
`analyze this asserted ground based on obviousness with the principles
`identified above in mind.
`
`2. Overview of Inoue (Ex. 1005)
`Inoue describes a digital camera connected to a file server over a
`network. Ex. 1005, Abstract. According to Inoue, when the digital camera
`is powered on, it automatically establishes a network connection with the
`file server in an activation process. Id. When the digital camera captures an
`image, the image is transmitted automatically to the file server upon
`completion of the encoding and compression of the image. Id. The digital
`camera may also download an image from the file server over the network
`and display the image on the digital camera. Id.
`
`
`5 Relying on the testimony of Dr. Madisetti, Petitioner offers an assessment
`as to the level of skill in the art at the time of the invention of the ’991
`patent. Pet. 9–10 (citing Ex. 1010 ¶¶ 56–59). At this time, Patent Owner
`does not propose an alternative assessment. To the extent necessary, and for
`purposes of this Decision, we accept the assessment offered by Petitioner as
`it is consistent with the ’991 patent and the asserted prior art.
`6 Patent Owner does not present arguments or evidence of such secondary
`considerations in its Preliminary Response.
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`Figure 3 of Inoue is reproduced below.
`
`
`
`Figure 3 is a block diagram of an exemplary file management system
`comprising a digital camera and a file server. Id. ¶ 38. As shown in Figure
`3 above, file management system 120 comprises digital camera 10 and file
`server 100. Id. ¶ 60. Digital camera 10 communicates wirelessly with
`access point 122, which is connected to file server 100 over Internet 126. Id.
`In this embodiment, images taken by the user with digital camera 10 are
`transmitted to file server 100 for storage via access point 122 and Internet
`126. Id.
`
`3. Overview of Nair (Ex. 1006)
`Nair describes a system and a method for seamless roaming between
`wireless networks, such as seamless switching of a wireless device between
`wireless wide area networks (“WWANs”) and wireless local area networks
`(“WLANs”). Ex. 1006 ¶ 3, Abstract. According to Nair, WWANs are used
`by traditional cellular companies to provide high-mobility access (e.g., for
`users moving in cars) over a broad coverage area. Id. ¶ 5.
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`The disclosed method includes automatically detecting the available
`WWANs and WLANs, selecting one of the available networks for use by the
`wireless device, and connecting the wireless device to the selected network.
`Id., Abstract. Nair also describes maintaining the network connection by
`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., Abstract.
`According to Nair, conventional techniques exist to provide mobile
`devices connections to both a WLAN and a WWAN. Id. ¶ 7. The
`conventional techniques, however, are not capable of automatically
`switching connections when there is a loss of connection as a mobile device
`moves out of a coverage area of one type of wireless network and travels
`into another type of wireless network. Id. Nair purports to address this
`problem by disclosing systems and methods to provide uninterrupted and
`ubiquitous wireless access, with seamless hand-off between different kinds
`of networks. Id. ¶ 9. According to Nair, the invention of Nair provides
`systems and methods so that WLANs and WWANs are able to automatically
`and seamlessly hand-off communications with a wireless device as the
`wireless device roams between or among the networks. Id. ¶ 29.
`
`4. Independent Claims 1 and 13
`Claim 1 recites the steps of “capturing still or video images by an
`image capture system of the Internet direct device,” “transmitting the
`captured still or video images to an account associated with the Internet
`direct device on a website archive and review (WSARC) upon image capture
`by a microprocessor of the Internet direct device,” and “receiving still or
`video images from said WSARC over the communications network by the
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`Internet direct device.” Ex. 1001, 8:23–30. Independent claim 13 also
`recites the same steps performed by the Internet direct device. Id. at 9:24–
`31. In other words, both independent claims 1 and 13 recite transmitting
`images captured on an Internet direct device to “an account associated with
`the Internet direct device” existing on a “website archive and review” center
`(WSARC) and receiving images from the WSARC over the communications
`network by the Internet direct device.
`Petitioner contends that Inoue teaches each of these limitations. Pet.
`14–18. Our discussion focuses on Petitioner’s contention that Inoue teaches
`transmitting images to “an account associated with the Internet direct
`device” existing on a “website archive and review [center].” See id. at 15–
`18.
`
`As discussed above in Section III.A (Claim Construction), Petitioner
`addresses the meaning or the scope of the term “Internet direct device.”
`See id. at 10. Petitioner asserts that Inoue’s digital camera teaches the
`claimed “Internet direct device” because Inoue’s digital camera “when
`‘powered on . . . automatically establishes a network connection with [a] file
`server’” for the purposes of transmitting and receiving images over a
`communications network, such as the Internet. Id. at 12–13 (citing
`Ex. 1005, Abstract, ¶ 60, Fig. 3).
`Petitioner further asserts that Inoue teaches “its digital cameras
`(IDDs) transmit images ‘upon obtainment of the image’ to a server.”
`Id. at 16 (citing Ex. 1005 ¶¶ 15, 18, 48, 56, 60). Petitioner also argues that
`Inoue describes folders existing on the server which are associated with a
`particular camera and user. Id. at 17 (citing Ex. 1005 ¶¶ 59, 79–80, Fig. 12).
`Petitioner contends that Inoue’s folders constitute “accounts associated
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`[with] each of the IDDs (Inoue’s camera) on a WSARC (Inoue’s file server).”
`Id. (emphasis added) (citing Ex. 1005 ¶¶ 59, 79–80, Fig. 12; Ex. 1010
`¶ 431).
`Hence, Petitioner maps Inoue’s file server to the “website archive and
`review [center] (WSARC)” recited in claims 1 and 13, as indicated by
`Petitioner’s sentence quoted above (i.e., the sentence that states “a WSARC
`(Inoue’s file server)”). Pet. 17. However, beyond the sentence quoted
`above, Petitioner does not discuss the term “WSARC” or “website archive
`and review center” and does not explain why Inoue’s file server teaches or
`suggests the “WSARC” recited in the claims. Petitioner’s declarant,
`Dr. Madisetti, does not provide any elaboration or explanation, either,
`because paragraph 431 of the Declaration of Dr. Madisetti cited by
`Petitioner is essentially a verbatim copy of Petitioner’s contentions set forth
`in the last paragraph of page 17 of the Petition, including the sentence that
`states “a WSARC (Inoue’s file server).” Compare Ex. 1010 ¶ 431, with
`Pet. 17. Although “the [prior art] reference need not satisfy an ipsissimis
`verbis test,” i.e., identity of terminology is not required to teach a claim
`limitation, In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009), neither
`Petitioner nor Dr. Madisetti explains why a person of ordinary skill in the art
`would understand the disclosures relating to the file server in the cited
`portion of Inoue as teaching or suggesting the claimed “website archive and
`review [center] (WSARC)” recited in claims 1 and 13.
`Furthermore, unlike Petitioner’s discussion of the meaning of the term
`“Internet direct device” recited in the claims, Petitioner does not address the
`meaning or import of the claim term “website archive and review center
`(WSARC)” in the context of the ’991 patent, although Petitioner
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`acknowledges that the ’991 patent discloses “[t]he WSARC comprises a
`‘web server and one or more databases’ that are accessible via the Internet”
`(Pet. 5 (citing Ex. 1001, 3:23–30)).
`Regarding the import of the claim term, we note that the claims of the
`’991 patent fall into two distinct groups based on whether the claims include
`the claim term “website archive and review center (WSARC).” For
`example, independent claims 1 and 22 recite essentially identical limitations
`except that claim 1 recites “transmitting . . . images to an account associated
`with the Internet direct device on a website archive and review [center]
`(WSARC)” and “receiving . . . images from said WSARC,” whereas claim
`22 instead recites “transmitting . . . images to another Internet direct device”
`and “receiving . . . images from said other Internet direct device.” Compare
`Ex. 1001, 8:16–35 (claim 1), with id. at 10:1–20 (claim 22). Similarly,
`independent claims 13 and 32 are essentially identical except for the
`recitation of “an account associated with the Internet direct device on a
`website archive and review [center] (WSARC)” and “WSARC” in claim 13
`and the recitation in their places in claim 32 of “another Internet direct
`device” and “other Internet direct device.” Compare id. at 9:14–35 (claim
`13), with id. at 10:57–11:11 (claim 32). Claims 1 and 22 (or claims 13 and
`32) are presumed to have different meanings because they recite different
`limitations. See SimpleAir, Inc. v. Sony Ericsson Mobile Commc’ns AB, 820
`F.3d 419, 431 (Fed. Cir. 2016) (“Different claim terms are presumed to have
`different meanings.”) (quoting Bd. of Regents of the Univ. of Tex. Sys. v.
`BENQ Am. Corp., 533 F.3d 1362, 1371 (Fed. Cir. 2008)). Hence, the
`differences in the scope of independent claims 1 and 22 (or independent
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`claims 13 and 32) hinge largely upon the presence or absence of the term
`“WSARC” in the claims.
`Claims 1 and 13 reciting “WSARC” are challenged in the instant
`Petition. See Pet. 7. Claims 22 and 32 reciting “another Internet direct
`device” or “other Internet direct device” instead are not challenged in this
`Petition, but are challenged in the co-pending petition in Case IPR2017-
`02059. See Paper 1 in Case IPR2017-02059, 7.
`In view of our discussion above, we determine that the term “website
`archive and review [center] (WSARC)” is a sufficiently significant
`limitation in the context of the ’991 patent to require Petitioner address the
`limitation in sufficient detail in the Petition in order to demonstrate a
`reasonable likelihood of prevailing with respect to the challenged claims in
`this case. However, as discussed above, neither Petitioner nor Dr. Madisetti
`explains sufficiently why Inoue’s file server teaches or suggests the “website
`archive and review [center] (WSARC)” recited in claims 1 and 13.
`Nor do we discern any express teaching of a “website archive and
`review center (WSARC)” in the portion of Inoue cited by Petitioner.
`Indeed, Petitioner does not identify, nor do we discern, any description of a
`“website” or web-related function in connection with Inoue’s file server in
`the portion of Inoue relied upon by Petitioner. See Pet. 15–18 (citing
`Ex. 1005 ¶¶ 9–13, 15, 18, 48, 49, 53, 56, 59, 60, 79–80, 82–83, Figs. 1, 12,
`13).
`
`Based on the present record, we conclude that simply stating “a
`WSARC (Inoue’s file server)” without any elaboration does not satisfy
`Petitioner’s burden required for institution of a review under the particular
`facts and circumstances of this case. See 35 U.S.C. § 312(a)(3) (any petition
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`for inter partes review must “identif[y] . . . with particularity . . . the
`evidence that supports the grounds for the challenge to each claim”);
`Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In
`an IPR, the petitioner has the burden from the onset to show with
`particularity why the patent it challenges is unpatentable.”) (citing 35 U.S.C.
`§ 312(a)(3)); Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d
`1359, 1369 (Fed. Cir. 2016) (“[T]he expedited nature of IPRs bring with it
`an obligation for petitioners to make their case in their petition to institute.”
`(emphasis added)). Cf. Harmonic, 815 F.3d at 1363–64 (simply stating that
`a prior art reference discloses “predetermined system timing” without any
`elaboration did not satisfy the petitioner’s burden at the trial stage of an IPR
`proceeding).
`Petitioner’s citation to Nair does not remedy the deficiencies in
`Petitioner’s analysis discussed above because Petitioner relies upon Nair
`only to teach the “automatic switching” limitation, i.e., the limitation
`reciting “automatically switching to another available mode of connection
`by the microprocessor when the Internet direct device detects that said
`primary mode of connection to the communications network is unavailable.”
`See Pet. 18–21.
`Accordingly, on this record, we conclude that the information
`presented in the Petition does not demonstrate a reasonable likelihood of
`Petitioner prevailing in its challenge to independent claims 1 and 13 under
`35 U.S.C. § 103(a) as obvious over the combination of Inoue and Nair.
`
`5. Dependent Claims 2, 3, 10–12, 14, and 21
`Claims 2, 3, and 10–12 each depend directly or indirectly from claim
`1, and claims 14 and 21 each depend directly from independent claim 13.
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`Petitioner’s arguments and evidence presented with respect to these
`dependent claims do not cure the deficiencies in Petitioner’s analysis of the
`challenged independent claims discussed above. See Pet. 21–24, 26–27.
`Therefore, Petitioner does not demonstrate a reasonable likelihood of
`prevailing in its challenge to dependent claims 2, 3, 10–12, 14, and 21 under
`35 U.S.C. § 103(a) as obvious over the combination of Inoue and Nair.
`
`D. Obviousness Over the Combination of Yamazaki and Nicholas or
`the Combination of Yamazaki and Nair
`Petitioner contends claims 1–3, 12–14, and 21 are unpatentable under
`35 U.S.C. § 103(a) as obvious over Yamazaki combined with Nicholas or
`Nair. Pet. 27–52. We have reviewed the parties’ contentions and supporting
`evidence. Given the evidence of record, we are not persuaded that Petitioner
`has established a reasonable likelihood of prevailing on these asserted
`grounds as to any of these challenged claim for the reasons explained below.
`
`1. Overview of Yamazaki (Ex. 1007)
`Yamazaki describes an image display apparatus and a camera that are
`capable of communicating with a server through a network to transmit and
`receive image data to and from the server. Ex. 1007 ¶ 3.
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`Figure 4 of Yamazaki is reproduced below.
`
`
`Figure 4 is a block diagram illustrating the structure of an exemplary image
`communication system of Yamazaki. Id. ¶ 60. As depicted in Figure 4,
`camera 10 has access to servers 52A, 52B, . . . , 52n through network 50.
`Id. ¶ 61. Servers 52A, 52B, . . . , 52n have corresponding databases 53A,
`53B, . . . , 53n, respectively, that store image data. Id. ¶ 62. For example, a
`user can record image data in database 53A via server 52A or retrieve the
`image data recorded in database 53A through server 52A to reproduce the
`image on image display 24 of camera 10. Id. ¶ 63.
`
`2. Overview of Nicholas (Ex. 1008)
`Nicholas relates generally to an end user device that is capable of
`communication through mu