`571-272-7822
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`Paper No. 8
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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 IPR2017-02059
`Patent 8,581,991 B1
`____________
`
`
`
`Before DANIEL N. FISHMAN, MINN CHUNG, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
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`IPR2017-02059
`Patent 8,581,991 B1
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`I. INTRODUCTION
`Google LLC (“Petitioner”) filed a Petition (Paper 1, “Pet.”)1
`requesting an inter partes review of claims 22, 23, 25, 27–29, 32, 33, and
`35–38 (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. Taking into account the arguments presented
`in Patent Owner’s Preliminary Response, we determine that the information
`presented in the Petition establishes that there is a reasonable likelihood that
`Petitioner would prevail in showing the unpatentability of at least one
`challenged claim. Accordingly, we institute an inter partes review of claims
`22, 23, 25, 27–29, 32, 33, and 35–38 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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`IPR2017-02059
`Patent 8,581,991 B1
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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
`
`
`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.
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`Pet. 2–3; Paper 5, 2–3.3
`The ’991 patent is also the subject of a co-pending petition for inter
`partes review filed by Petitioner in Case IPR2017-02058. 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.
`
`
`3 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.
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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 22 and 32 are independent claims.
`Claim 22 is illustrative of the challenged claims and is reproduced below:
`22. 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 another Internet
`direct device over said communications network upon
`image capture by a microprocessor of the Internet direct
`device;
`receiving still or video images from said other Internet direct
`device over said communications network by the Internet
`direct device; and
`automatically switching to another available mode of connection
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`by the microprocessor when the Internet direct device
`detects that said primary mode of connection to the
`communications network is unavailable.
`Ex. 1001, 10:1–20.
`
`
`D. Asserted Prior Art and Grounds of Unpatentability
`Petitioner cites the following references in its challenges to
`patentability.
`
`Designation
`
`Exhibit No.
`
`Nicholas
`
`Ex. 1006
`
`Nair4
`
`Inoue
`
`Ex. 1007
`
`Ex. 1008
`
`Ex. 1009
`
`Reference and Relevant Date
`U.S. Patent Application Pub. No.
`2004/0133668 Al (published July 8, 2004)
`U.S. Patent Application Pub. No.
`2004/0127208 Al (published July 1, 2004)
`U.S. Patent Application Pub. No.
`2004/0109066 Al (published June 10, 2004)
`U.S. Patent Application Pub. No.
`2002/0150228 A1 (published Oct. 17, 2002) Umeda
`Chandra Narayanaswami, et al., Expanding
`the Digital Camera’s Reach, IEEE
`COMPUTER, Vol. 37, Issue 12 (Dec. 2004)
`
`Petitioner also relies on the Declaration of Vijay K. Madisetti, Ph.D.
`(Ex. 1011).
`
`
`Narayanaswami Ex. 1010
`
`
`4 For clarity and ease of reference, we only list the first named inventor.
`
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`Petitioner asserts the following grounds of unpatentability:
`
`Claims Challenged
`
`Statutory Basis
`
`Reference(s)
`
`22, 23, 25, 27–29, 32,
`33, and 35–38
`22, 23, 25, 27–29, 32,
`33, and 35–38
`25, 27, 28, and 35–37
`22, 23, 25, 27–29, 32,
`33, and 35–38
`
`
`Pet. 7.
`
`§ 102(b)
`
`Nicholas
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`Inoue and Nair
`
`Inoue, Nair, and Narayanaswami
`
`Umeda and Inoue
`
`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 22 and 32. Pet.
`11–13. 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 12 (citing Ex. 1011 ¶¶ 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. 12 (“The claimed invention is directed
`to a system and method that ‘seamlessly and automatically transmits,
`receives, stores and/or archives still images, video and/or audio’ without the
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`necessity of connecting to another device, such as a personal computer
`(PC).”) (citing 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
`(“the ’470 application”) listed on the face of the ’991 patent. Pet. 8–10.
`Patent Owner asserts that the ’991 patent claims are sufficiently supported
`by the disclosure of the ’470 application, and, therefore, are entitled to the
`benefit of the filing date of the ’470 application. Prelim. Resp. 3–4.
`Based on the present record, there is no dispute that the prior art
`references relied upon in the instant Petition pre-date the ’991 patent’s
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`earliest possible priority date. Thus, at this stage of the proceeding, we do
`not need to address any issues relating to the proper priority date for the ’991
`patent.
`
`C. Anticipation by Nicholas
`Petitioner contends claims 22, 23, 25, 27–29, 32, 33, and 35–38 are
`unpatentable under 35 U.S.C. § 102(b) as anticipated by Nicholas. Pet. 13–
`32. Petitioner provides detailed explanations and specific citations to
`Nicholas indicating where in the reference the claimed features are
`disclosed. Id. In addition, Petitioner relies upon the Declaration of Vijay K.
`Madisetti, Ph.D. (Ex. 1011) to support its position. Id.
`
`1. Relevant Principles of Law
`A claim is unpatentable under 35 U.S.C. § 102 only if a single prior
`art reference expressly or inherently describes each and every limitation set
`forth in the claim. See Perricone v. Medicis Pharm. Corp., 432 F.3d 1368,
`1375 (Fed. Cir. 2005); Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628,
`631 (Fed. Cir. 1987). Further, a reference cannot anticipate “unless [it]
`discloses within the four corners of the document not only all of the
`limitations claimed[,] but also all of the limitations arranged or combined in
`the same way as recited in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc.,
`545 F.3d 1359, 1371 (Fed. Cir. 2008). Although the elements must be
`arranged 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). Moreover, the prior art reference is read from the
`perspective of one with ordinary skill in the art. In re Graves, 69 F.3d 1147,
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`1152 (Fed. Cir. 1995) (“A reference anticipates a claim if it discloses the
`claimed invention such that a skilled artisan could take its teachings in
`combination with his own knowledge of the particular art and be in
`possession of the invention.” (citation and quotation marks omitted)); In re
`Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]n considering the disclosure of
`a reference, it is proper to take into account not only specific teachings of the
`reference but also the inferences which one skilled in the art would
`reasonably be expected to draw therefrom.”). We analyze this asserted
`ground based on anticipation with the principles identified above in mind.
`
`2. Overview of Nicholas (Ex. 1006)
`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 is a high-level diagram of an exemplary end user device 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.
`
`3. Independent Claims 22 and 32
`Regarding independent claim 22, Petitioner identifies each element in
`the disclosures of Nicholas. Pet. 14–21. In particular, Petitioner identifies
`end user device 100 as the claimed “Internet direct device” recited in claim
`22. Id. at 14–15. 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 14 (quoting Ex. 1006
`¶ 19). Petitioner further asserts that the data communication network of
`Nicholas includes an “Internet connection.” Id. (citing Ex. 1006 ¶¶ 19, 20,
`Fig. 1). In addition, Petitioner argues that Nicholas’s end user device has an
`imaging system that can capture at least video images and practices a
`method of transmitting and receiving audio or video images by, e.g.,
`video-calling and videoconferencing. Id. at 14–15 (citing Ex. 1006 ¶¶ 20,
`
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`24, 32–34, Fig. 1; Ex. 1011 ¶¶ 85–88, 627–630, 712–723). Petitioner further
`asserts that Nicholas discloses the recited automatic connection on power-up
`to a primary mode of connection by initially determining which of the
`multiple communication networks provides the most optimal communication
`channel. Id. at 15–16 (citing Ex. 1006, Abstract, ¶¶ 8, 20). Petitioner
`contends such initial connection in Nicholas is performed as an aspect of
`power-up of the device. Id. at 16 (quoting 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 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 19–21 (citing Ex. 1006 ¶¶ 9, 20, 28, 30–36, 49–56;
`Ex. 1011 ¶¶ 720–723).
`Independent claim 32 is directed to a storage medium comprising a
`program that causes an Internet direct device to perform method steps
`essentially identical to those of claim 22. See Ex. 1001, 10:1–20, 10:57–
`11:11. Petitioner identifies essentially the same teachings of Nicholas as
`relied upon for claim 22 as also disclosing the steps recited in claim 32.
`Id. at 25–30.
`Patent Owner argues Nicholas discloses a notebook or tablet (i.e., a
`PC) and contends the ’991 patent expressly teaches away from such a
`configuration that uses a PC to couple to the Internet. Prelim. Resp. 12.
`More specifically, Patent Owner contends the ’991 patent is directed to a
`system and method that seamlessly and automatically transmits, receives,
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`stores and/or archives still images, video and/or audio “without the necessity
`of connecting to another device, such as a personal computer (PC).”
`Id. (citing Ex. 1001, 1:62–2:3). 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 and argues that Nicholas, therefore,
`teaches away from the claimed invention of the ’991 patent. 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
`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 is capable of “communicating data to or from a data
`communication network in accordance with one or more wired and/or
`wireless communication protocols” and that such a data communication
`network includes an “Internet connection.” Pet. 14 (citing Ex. 1006 ¶¶ 19,
`20, Fig. 1). We also agree with Petitioner’s assertion that Nicholas’s end
`user device can connect to various networks, including wired Ethernet, a
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`wireless Local Area Network (WLAN) or a wireless Wide Area Network
`(WWAN). Id. at 16 (citing Ex. 1006 ¶ 20). Hence, we are persuaded that
`the end user device (notebook or tablet PC) of Nicholas does not require
`connection to another device (such as another PC) in order to connect 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 depicted in Figure 2 in which
`the end user device serves as a base station 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. 2. 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. Id. ¶ 26. However, it is evident in
`Nicholas that this is merely one possible mode of operation because
`Nicholas expressly states that Figure 2 illustrates various embodiments of
`the disclosed invention. Id. ¶ 25 (“FIG. 2 illustrates functions of an end user
`device in accordance with embodiments of the present invention.” (emphasis
`added)). The end user device of Nicholas is also 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.
`Furthermore, it is well-settled that “where a disclosure was written to
`provide an optional ingredient, structure, or step, . . . the optional component
`still anticipates.” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 959 (Fed. Cir.
`
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`2014). Indeed, “the question whether a reference ‘teaches away’ from the
`invention is inapplicable to an anticipation analysis” because “a reference is
`no less anticipatory if, after disclosing the invention, the reference then
`disparages it.” Upsher-Smith Labs., Inc. v. Pamlab, LLC, 412 F.3d 1319,
`1323 (Fed. Cir. 2005) (citing Bristol-Myers Squibb Co. v. Ben Venue Labs.,
`Inc., 246 F.3d 1368, 1378 (Fed. Cir. 2001)). Therefore, Patent Owner’s
`“teaching away” argument based on the optional disclosures of Nicholas is
`not persuasive.
`For the above reasons, based on the current record and for purposes of
`this Decision, we are persuaded Petitioner has demonstrated a reasonable
`likelihood that it would prevail on its assertion that independent claims 22
`and 32 are unpatentable under 35 U.S.C. § 102(b) as anticipated by
`Nicholas.
`
`4. Dependent Claims 23, 25, 27–29, 33, and 35–38
`At this stage of the proceeding, Patent Owner does not address
`separately Petitioner’s explanations and supporting evidence as to how the
`disclosures of Nicholas account for the limitations of dependent claims 23,
`25, 27–29, 33, and 35–38. See Prelim. Resp. 12. We have reviewed
`Petitioner’s explanations and supporting evidence regarding these dependent
`claims, and, on the current record, we find them persuasive. See Pet. 21–24,
`30–32. Petitioner, therefore, has demonstrated a reasonable likelihood that it
`would prevail on its assertion that dependent claims 23, 25, 27–29, 33, and
`35–38 are unpatentable as anticipated by Nicholas.
`
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`D. Obviousness Over the Combination of Inoue and Nair
`Petitioner contends claims 22, 23, 25, 27–29, 32, 33, and 35–38 are
`unpatentable as obvious under 35 U.S.C. § 103(a) over the combined
`teachings of Inoue and Nair. Pet. 32–54. Petitioner explains how this
`proffered combination teaches or suggests the subject matter of each
`challenged claim, and provides reasoning as to why one of ordinary skill in
`the art would have been prompted to modify or combine the teachings of
`these references. Id. Petitioner also relies on the Declaration of Dr.
`Madisetti to support its positions. Id. For the reasons discussed below, we
`are persuaded that Petitioner has demonstrated a reasonable likelihood that it
`will prevail in challenging claims 22, 23, 25, 27–29, 32, 33, and 35–38 as
`obvious over the combination of Inoue and Nair.
`
`
`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
`of skill in the art;5 and (4) where in evidence, so-called secondary
`
`
`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
`
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`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. 1008)
`Inoue describes a digital camera connected to a file server over a
`network. Ex. 1008, 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 sever over the network
`and display the image on the digital camera. Id.
`
`
`patent. Pet. 11 (citing Ex. 1011 ¶¶ 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.
`In another embodiment, digital camera 10 includes card slot 20 for
`loading option card 68, which may be a communication card or a memory
`card. Id. ¶¶ 49, 56. If a communication card is loaded in card slot 20,
`communication control unit 72 of digital camera 10 and the communication
`card operate in conjunction with each other to establish a network
`connection with file server 100 for transmitting or downloading images to or
`from file server 100. Id. ¶¶ 56, 62, 66. If, on the other hand, option card 68
`loaded in card slot 20 is a memory card, communication with file server 100
`
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`is not feasible, and digital camera 10 stores the captured images to the
`memory card. Id. ¶¶ 63, 69.
`
`3. Overview of Nair (Ex. 1007)
`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. 1007 ¶ 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.
`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.,