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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`CANON U.S.A., INC.
`Petitioner
`
`v.
`
`
`
`
`
`
`
`CELLSPIN SOFT, INC.
`Patent Owner
`
`___________________
`
`U.S. Patent No. 9,258,698
`
`Inter Partes Review No. 2019-00127
`___________________
`
`DECLARATION OF DR. VIJAY MADISETTI, PH.D.
`
`
`
`
`
`
`Canon Exhibit 1003
`
`

`

`
`
`Madisetti Declaration
`U.S. Patent No. 9,258,698
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`
`I.
`
`II.
`
`BACKGROUND AND QUALIFICATIONS ................................................. 1
`
`III.
`
`SUMMARY OF OPINIONS ........................................................................... 9
`
`IV. LEGAL UNDERSTANDING .......................................................................10
`
`A.
`
`The Person of Ordinary Skill in the Art ..............................................10
`
`B.
`
`Anticipation .........................................................................................11
`
`C.
`
`Obviousness .........................................................................................11
`
`D.
`
`Claim Construction..............................................................................12
`
`V.
`
`TECHNOLOGY OVERVIEW......................................................................13
`
`A. Digital Camera Overview ....................................................................14
`
`B. Wireless Image Transfer Among Electronic Devices .........................17
`
`C.
`
`Uploading Image Data to Photo-sharing Websites .............................23
`
`VI. THE ’698 Patent ............................................................................................25
`
`A. Overview .............................................................................................25
`
`B.
`
`Specification ........................................................................................25
`
`C.
`
`Prosecution History .............................................................................28
`
`D.
`
`Claims ..................................................................................................30
`
`E.
`
`Level of Ordinary Skill in the Art .......................................................44
`
`VII. CLAIM CONSTRUCTION ..........................................................................44
`
`VIII. OVERVIEW OF THE PRIOR ART .............................................................45
`
`
`
`
`
`- i -
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`
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`Canon Exhibit 1003
`
`

`

`Madisetti Declaration
`U.S. Patent No. 9,258,698
`
`JP Patent Publication No. 2003-60953 (“Hiroishi”) ...........................45
`
`A.
`
`B.
`
`JP Patent Publication No. 2005-303511 (“Takahashi”) ......................47
`
`C.
`
`JP Patent Publication No. 2004-96166 (“Nozaki”) .............................48
`
`D. U.S. Patent No. 6,763,247 (“Hollstrom”) ...........................................49
`
`E.
`
`F.
`
`JP Patent Publication No. 2003-46841 (“Ando”) ...............................51
`
`Bluetooth Specification Version 1.1 ...................................................52
`
`G.
`
`Bisdikian, An Overview of Bluetooth Wireless Technology ...............53
`
`H. Narayanaswami, Expanding the Digital Camera’s Reach..................54
`
`IX. GROUNDS FOR INVALIDITY ...................................................................54
`
`A. Ground 1: Hiroishi and Takahashi Render Obvious Claims 1-20 ......55
`
`B.
`
`C.
`
`Ground 2: Hiroishi, Takahashi, and Ando Render Obvious Claims 21-
`22 .........................................................................................................93
`
`Ground 3: Hiroishi, Takahashi, and Nozaki Render Obvious Claims 1-
`22 .........................................................................................................95
`
`D. Ground 4: Hiroishi, Takahashi, Nozaki, and Ando Render Obvious
`Claims 21-22 .......................................................................................99
`
`E.
`
`F.
`
`Ground 5: Hollstrom and Takahashi Render Obvious Claims 1, 3-5, 7-
`8, 10-13, and 15-20............................................................................100
`
`Ground 6: Hollstrom, Takahashi, and Ando Render Obvious Claims 2,
`6, 9, 14, and 21-22 .............................................................................122
`
`G.
`
`Secondary Considerations .................................................................124
`
`X.
`
`CONCLUSION ............................................................................................125
`
`
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`- ii -
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`Canon Exhibit 1003
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`

`

`Madisetti Declaration
`U.S. Patent No. 9,258,698
`
`
`EXHIBIT LIST
`
`No.
`
`Short Name
`
`Exhibit
`
`1001
`
`’698 Patent
`
`U.S. Patent No. 9,258,698 to Singh et al.
`
`1002
`
`’698
`Prosecution
`History
`
`Prosecution history for U.S. Patent No. 9,258,698
`
`1003
`
`N/A
`
`N/A
`
`1004
`
`Hiroishi JP
`
`JP Patent Application Publication No. 2003-60953
`to Hiroishi
`
`1005
`
`Hiroishi
`
`1006
`
`Hiroishi
`Translation
`Affidavit
`
`Certified Translation of JP Patent Application
`Publication No. 2003-60953 to Hiroishi
`
`Affidavit of Translation for JP Patent Application
`Publication No. 2003-60953 to Hiroishi
`
`1007
`
`Takahashi JP
`
`JP Patent Application Publication No. 2005-303511
`to Takahashi
`
`1008
`
`Takahashi
`
`1009
`
`Takahashi
`Translation
`Affidavit
`
`Certified Translation of JP Patent Application
`Publication No. 2005-303511 to Takahashi
`
`Affidavit of Translation for JP Patent Application
`Publication No. 2005-303511 to Takahashi
`
`1010
`
`Nozaki JP
`
`JP Patent Application Publication No. 2004-96166
`to Nozaki
`
`1011
`
`Nozaki
`
`Certified Translation of JP Patent Application
`Publication No. 2004-96166 to Nozaki
`
`
`
`- iii -
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`Canon Exhibit 1003
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`

`

`Madisetti Declaration
`U.S. Patent No. 9,258,698
`
`
`No.
`
`Short Name
`
`Exhibit
`
`1012
`
`Nozaki
`Translation
`Affidavit
`
`Affidavit of Translation for JP Patent Application
`Publication No. 2004-96166 to Nozaki
`
`1013
`
`Hollstrom
`
`U.S. Patent No. 6,763,247 to Hollstrom et al.
`
`1014
`
`Ando JP
`
`JP Patent Application Publication No. 2003-46841
`to Ando
`
`1015
`
`Ando
`
`1016
`
`Ando
`Translation
`Affidavit
`
`1017
`
`IEEE 2001
`
`Certified Translation of JP Patent Application
`Publication No. 2003-46841 to Ando
`
`Affidavit of Translation for JP Patent Application
`Publication No. 2003-46841 to Ando
`
`Bisdikian, An Overview of the Bluetooth Wireless
`Technology, IEEE Communications Magazine
`(Dec. 2001)
`
`1018 Bluetooth v1.1
`
`Specification of the Bluetooth System,
`Version 1.1 (Feb. 2001)
`
`1019
`
`Margalit
`
`U.S. Patent Publication No. 2002/0141586
`to Margalit et al.
`
`1020
`
`Montulli
`
`U.S. Patent Publication No. 2006/0189349
`to Montulli et al.
`
`1021
`
`District Court
`Order
`
`Order Granting Canon’s Motion to Dismiss in
`Cellspin Soft, Inc. v. Canon USA, Inc.,
`No. 4:17-cv-05938 (N.D. Cal. 2018)
`
`1022 Madisetti CV
`
`Curriculum Vitae for Vijay Madisetti, Ph.D.
`
`1023
`
`Anderson
`
`U.S. Patent No. 6,636,259 to Anderson et al.
`
`
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`- iv -
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`Canon Exhibit 1003
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`

`

`Madisetti Declaration
`U.S. Patent No. 9,258,698
`
`
`No.
`
`Short Name
`
`Exhibit
`
`1024
`
`IEEE 2004
`
`Narayanaswami et al., Expanding the Digital Camera
`Reach, IEEE Computer Magazine (Dec. 2004)
`
`1025
`
`Hunter
`
`U.S. Patent Publication No. 2004/0005915 to Hunter
`
`1026
`
`Kagle
`
`U.S. Patent No. 6,148,149 to Kagle
`
`1027
`
`Jakobsson
`
`U.S. Patent No. 6,574,455 to Jakobsson
`
`1028
`
`Kalajan
`
`U.S. Patent No. 7,639,943 to Kalajan
`
`1029
`
`HTTP/1.1
`
`Hypertext Transfer Protocol -- HTTP/1.1,
`https://www.w3.org/Protocols/rfc2616/rfc2616.html
`(1999)
`
`1030
`
`Method
`Definitions
`
`HTTP/1.1 Method Definitions,
`https://www.w3.org/Protocols/rfc2616/rfc2616-
`sec9.html (1999)
`
`1031
`
`MobShare
`
`Sarvas et al., MobShare: Controlled and Immediate
`Sharing of Mobile Images (Oct. 2004)
`
`1032
`
`ACM
`
`ACM Multimedia 2004: Final Program,
`http://www.mm2004.org/acm_mm04_FinalProgram.htm
`(October 2004)
`
`
`
`
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`- v -
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`Canon Exhibit 1003
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`

`

`Madisetti Declaration
`U.S. Patent No. 9,258,698
`
`
`I.
`
`INTRODUCTION
`
`1. My name is Dr. Vijay Madisetti, Ph.D.
`
`2.
`
`I have been asked to provide this declaration to address the invalidity
`
`of U.S. Patent No. 9,258,698 (the “’698 Patent”) in connection with the Petition for
`
`Inter Partes Review submitted by Canon U.S.A., Inc. (“Canon” or “Petitioner”). I
`
`am being compensated for the work that I perform in this matter at my consulting
`
`rate of $550 per hour. My compensation does not depend on the outcome of the
`
`matter.
`
`3.
`
`The information contained in this declaration is true and accurate to
`
`the best of my knowledge and belief.
`
`II. BACKGROUND AND QUALIFICATIONS
`
`4.
`
`I am qualified by education and experience to testify as an expert in
`
`the field of telecommunications. Ex. 1022 is a copy of my curriculum vitae
`
`detailing my experience and education. Additionally, I provide the following
`
`overview of my background as it pertains to my qualifications for providing expert
`
`testimony in this matter.
`
`5.
`
`I obtained my Ph.D. in Electrical Engineering and Computer Science
`
`at the University of California, Berkeley, in 1989. I received the Demetri
`
`Angelakos Outstanding Graduate Student Award from the University of California,
`
`Berkeley and the IEEE/ACM Ira M. Kay Memorial Paper Prize in 1989.
`
`
`
`- 1 -
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`Canon Exhibit 1003
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`

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`Madisetti Declaration
`U.S. Patent No. 9,258,698
`
`I joined Georgia Tech in the Fall of 1989 and am now a Professor in
`
`6.
`
`Electrical and Computer Engineering. I have been active in the areas of wireless
`
`communications, digital signal processing, integrated circuit design (analog &
`
`digital), software engineering, system-level design methodologies and tools, and
`
`software systems. I have been the principal investigator (“PI”) or co-PI in several
`
`active research programs in these areas, including DARPA’s Rapid Prototyping of
`
`Application Specific Signal Processors, the State of Georgia’s Yamacraw
`
`Initiative, the United States Army’s Federated Sensors Laboratory Program, and
`
`the United States Air Force Electronics Parts Obsolescence Initiative. I have
`
`received an IBM Faculty Award and the NSF’s Research Initiation Award. I have
`
`been awarded the 2006 Frederick Emmons Terman Medal by the American
`
`Society of Engineering Education for contributions to Electrical Engineering,
`
`including authoring a widely-used textbook in the design of VLSI digital signal
`
`processors.
`
`7.
`
`I have developed and taught undergraduate and graduate courses in
`
`hardware and software design for signal processing and wireless communication
`
`circuits at Georgia Tech for the past twenty years. I graduated more than 20 Ph.D.
`
`students that now work as professors or in technical positions around the world.
`
`8.
`
`I have been an active consultant to industry and various research
`
`laboratories (including Massachusetts Institute of Technology (“MIT”) Lincoln
`
`
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`Canon Exhibit 1003
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`

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`Madisetti Declaration
`U.S. Patent No. 9,258,698
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`Labs and Johns Hopkins University Applied Physics Laboratory). I have founded
`
`three companies in the areas of embedded software, military chipsets involving
`
`imaging technology, and wireless communications. I have supervised the Ph.D.
`
`dissertations of over twenty engineers in the areas of computer engineering, signal
`
`processing, communications,
`
`rapid prototyping, and system-level design
`
`methodology, five of which have resulted in thesis prizes or paper awards.
`
`9. My consulting work for MIT Lincoln Labs involved high resolution
`
`imaging for defense applications, where I worked in the area of prototyping
`
`complex and specialized computing systems. My consulting work for Johns
`
`Hopkins Applied Physics Lab (“APL”) mainly involved localization of objects in
`
`image fields, where I worked on identifying targets in video and other sensor fields
`
`and identifying computer architectures and circuits for power and space-efficient
`
`designs.
`
`10.
`
`I have developed wireless baseband and protocol stack software and
`
`assembly code for a leading telecommunications handset vendor that focused on
`
`efficient realization of speech codecs and echo-cancellation.
`
`11. The first of the companies I founded, VP Technologies, offers
`
`products in the area of semiconductor integrated circuits, including building
`
`computing systems for helicopter imaging systems for the United States Air Force.
`
`I remain a director of VP Technologies. The second of these companies, Soft
`
`
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`- 3 -
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`Canon Exhibit 1003
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`

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`Madisetti Declaration
`U.S. Patent No. 9,258,698
`
`Networks, LLC, offers software for multimedia and wireless computing platforms,
`
`including the development of a set-top box for Intel that decodes MPEG-2 video
`
`streams and imaging codes for multimedia phones. The technology involved with
`
`the design, development, and implementation of the Intel set-top box included
`
`parsing the bit streams, decoding communications protocols, extracting image and
`
`video data, and then processing for subsequent display or storage. The third of
`
`these companies, Elastic Video, uses region-of-interest based video encoding or
`
`decoding for capturing high quality video at very low bit rates, with primary
`
`application for wireless video systems.
`
`12.
`
`I have been active in the area of 4G-related communications in several
`
`areas of technologies, including orthogonal frequency division multiplexing
`
`(OFDM)-multiple input multiple output (MIMO) communications systems for
`
`several years, and some of my publications in this area include “Frequency
`
`Dependent Space-Interleaving of MIMO OFDM Systems,” Proc. IEEE Radio and
`
`Wireless Conference (RAWCON ‘03), 2003; “Embedded Alamouti Space Time
`
`Codes for High Rate and Low Decoding Complexity”, Proc. Of IEEE Asilomar
`
`Conf. on Signals, Systems and Computers, 2008; and “Asymmetric Golden Codes
`
`for Fast Decoding in Time Varying Channels”, Wireless Personal Communications
`
`(2011).
`
`
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`- 4 -
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`Canon Exhibit 1003
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`

`

`Madisetti Declaration
`U.S. Patent No. 9,258,698
`
`I have authored or co-authored several books, including VLSI Digital
`
`13.
`
`Signal Processors (IEEE Press 1995) and the Digital Signal Processing Handbook
`
`(CRC Press, 1998). I am Editor of the three-volume DSP Handbook set (Volume 1:
`
`Digital Signal Processing Fundamentals; Volume 2: Video, Speech, and Audio
`
`Signal Processing and Associated Standards; and Volume 3: Wireless, Networking,
`
`Radar, Sensory Array Processing, and Nonlinear Signal Processing), which was
`
`published in 2010 by CRC Press in Boca Raton, Florida.
`
`14. Additional representative peer-reviewed publications in the area of
`
`wireless communications are the following: (i) Turkboylari, M. and Madisetti,
`
`V.K., “Effect of Handoff Delay on System Performance of TDMA Cellular
`
`Systems,” 4th International Workshop, Mobile & Wireless Communication
`
`Network, pp. 411-415, 2002;
`
`(ii)
`
`Jatunov, L. and Madisetti, V.K.,
`
`“Computationally-Efficient SNR Estimation for Bandlimited Wideband CDMA
`
`Systems,” IEEE Transactions on Wireless Communications, Issue 12, pp. 3480-
`
`3491, December 2006, and (iii) N. Radia, Y. Zhang, M. Tatipamula, V. Madisetti,
`
`“Next Generation Applications on Cellular Networks: Trends, Challenges, and
`
`Solutions,” Proceedings on IEEE, vol. 100, Issue 4, pp. 841-854, April 2012.
`
`15.
`
`I am knowledgeable and familiar with standards related to the wireless
`
`and telecommunications systems industry, and as shown in ERIC-1004, some of
`
`my papers describe the application of these standards in optimizing design and
`
`
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`- 5 -
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`Canon Exhibit 1003
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`

`

`Madisetti Declaration
`U.S. Patent No. 9,258,698
`
`these systems. I am also knowledgeable and familiar with
`
`testing of
`
`microprocessor architecture and associated software and firmware design for
`
`wireless and telecommunications terminals and base stations. In addition, since
`
`2017, I have been Georgia Tech’s official representative to the Third Generation
`
`Partnership Project (3GPP), a standards body responsible for the development of
`
`wireless standards. In this role, I represent European Telecommunications
`
`Standards Institute (ETSI) member Georgia Tech in several task forces for the
`
`development of 5G technology and will attend in-person meetings regarding the
`
`same later this year (2018).
`
`16.
`
`I have designed several specialized computer and communication
`
`systems over the past two decades at Georgia Tech for tasks including wireless
`
`audio and video processing and protocol processing for portable platforms, like
`
`cell phones and Person Digital Assistants. I have worked on designing systems that
`
`are efficient from a performance, size, weight, area, and thermal point of view. I
`
`have developed courses and classes for the industry on these topics, and many of
`
`my lectures in advanced computer system design, developed under the sponsorship
`
`of the United States Department of Defense in the late 1990s, are available for
`
`educational use at http://www.eda.org/rassp. These lectures have been used by
`
`several U.S. and international universities as part of their course work. Some of my
`
`
`
`- 6 -
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`Canon Exhibit 1003
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`

`

`Madisetti Declaration
`U.S. Patent No. 9,258,698
`
`recent publications in the area of design of wireless communications systems and
`
`associated protocols are listed in Ex. 1015 .
`
`17.
`
`In conjunction with a leading telecom vendor in Asia, through a joint
`
`venture called Soft Networks (“SN”), LLC in Atlanta in the late 1990s and early
`
`2000s, I collaborated with a team of engineers to support mobile and wireless
`
`services offerings in India. These involved the design and development of
`
`micropayment services for mobile phones, design of smartphones, soft switches,
`
`and telecom customer billing and fraud detection algorithms that included
`
`establishment of secure sessions and privileged access to customer account and
`
`billing data.
`
`18.
`
`I have proposed several draft proposals for standards to the Internet
`
`Engineering Task Force (“IETF”) in the area of VOIP and Voice/Video streaming
`
`over the internet, including, “A Transport Layer Technology for Improving QoS of
`
`Networked Multimedia Applications,”
`
`IETF Draft,
`
`July
`
`25,
`
`2002
`
`(http://tools.ietf.org/pdf/draft-madisettiargyriou-qos-sctp-00.pdf); “Voice & Video
`
`Over Mobile IP Networks,” IETF Draft, May 2002, (http://tools.ietf.org/html/draft-
`
`madisetti-argyriou-voice-video-mip-00); and “Enhancements to ECRTP with
`
`Applications to Robust Header Compression for Wireless,” January 2003, IETF
`
`Draft, (http://tools.ietf.org/html/draft-madisetti-rao-suresh-rohc-00).
`
`
`
`- 7 -
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`Canon Exhibit 1003
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`

`

`Madisetti Declaration
`U.S. Patent No. 9,258,698
`
`I have been elected a Fellow of the IEEE. The Fellow is the highest
`
`19.
`
`grade of membership of the IEEE, a world professional body consisting of over
`
`300,000 electrical and electronics engineers, with only one-tenth of one percent
`
`(0.1%) of the IEEE membership being elected to the Fellow grade each year.
`
`Election to Fellow is based upon votes cast by existing Fellows in IEEE.
`
`20.
`
`I have also been awarded the 2006 Frederick Emmons Terman Medal
`
`by the American Society of Engineering Education for contributions to Electrical
`
`Engineering, including authoring a widely used textbook in the design of VLSI
`
`digital signal processors. I was awarded the VHDL International Best PhD
`
`Dissertation Advisor Award in 1997 and the NSF Research Initiation Award in
`
`1990. I was Technical Program Chair for both the IEEE MASCOTS in 1994 and
`
`the IEEE Workshop on Parallel and Distributed Simulation in 1990. In 1989 I was
`
`recognized with the Ira Kay IEEE/ACM Best Paper Award for Best Paper
`
`presented at the IEEE Annual Simulation Symposium.
`
`21.
`
`In view of the above and my curriculum vitae in Ex. 1022, I had (i) a
`
`Ph.D. degree in electrical engineering; (ii) over ten years lecturing at the college
`
`level on
`
`the
`
`topic of electrical engineering,
`
`including digital wireless
`
`communications; and (iii) several years of experience in the design and
`
`development of digital wireless communication systems prior to the earliest
`
`priority date of the ’698 Patent. Thus, as of the earliest possible priority date of the
`
`
`
`- 8 -
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`Canon Exhibit 1003
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`

`

`Madisetti Declaration
`U.S. Patent No. 9,258,698
`
`’698 Patent (i.e., December 28, 2007), I was at least a person of ordinary skill in
`
`the art of the ’698 Patent (see Section VI.E below), and I had direct personal
`
`knowledge of the technologies involved in the ’698 Patent.
`
`III. SUMMARY OF OPINIONS
`
`22.
`
`I understand that Canon’s Petition challenges claims 1-22 of the ’698
`
`Patent. In my opinion these claims are invalid as obvious based on the following
`
`grounds:
`
`Ground 1: Hiroishi and Takahashi render obvious claims 1-20.
`
`Ground 2: Hiroishi, Takahashi, and Ando render obvious claims 21-22.
`
`
`
`Ground 3: Hiroishi, Takahashi, and Nozaki render obvious claims 1-22.
`
`Ground 4: Hiroishi, Takahashi, Nozaki, and Ando render obvious claims
`21-22.
`
`Ground 5: Hollstrom and Takahashi render obvious claims 1, 3-5, 7-8, 10-
`13, and 15-20.
`
`Ground 6: Hollstrom, Takahashi, and Ando render obvious claims 2, 6, 9,
`14, and 21-22.
`
`23. The remainder of this declaration sets forth my detailed opinions as to
`
`why the challenged claims are invalid. In Section IV, I provide my understanding
`
`of legal principles underlying issues of claim construction and invalidity. In
`
`Section V, I provide an overview of technological principles relevant to the subject
`
`matter of the challenged patents. In Section VI, I provide an overview of the
`
`challenged patent. In Section VII, I address claim construction. In Section VIII, I
`
`
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`- 9 -
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`Canon Exhibit 1003
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`

`

`Madisetti Declaration
`U.S. Patent No. 9,258,698
`
`describe the specific prior art references that I believe anticipate and render the
`
`challenged claims obvious. And in Section IX, I provide my analysis of how the
`
`prior art teaches the limitations of the challenged claims, and why a person of
`
`ordinary skill in the art at the time of the invention would have been motivated to
`
`combine the teachings of the prior art.
`
`IV. LEGAL UNDERSTANDING
`
`24.
`
`I am not a lawyer and do not intend to provide legal opinions in
`
`connection with this proceeding. However, I understand that issues such as
`
`invalidity and claim construction are analyzed based on certain legal standards.
`
`Counsel for Petitioner has provided me with an understanding of these principles,
`
`and I have applied them in my analysis of the ’698 Patent.
`
`A. The Person of Ordinary Skill in the Art
`
`25.
`
`I understand that a person of ordinary skill in the art is a hypothetical
`
`person who is presumed to be aware of all pertinent art, thinks along conventional
`
`wisdom in the art, and is a person of ordinary creativity—not an automaton. In
`
`deciding the level of ordinary skill, I understand that the following factors may be
`
`considered:
`
`
`
`
`
`
`
`the levels of education and experience of persons working in the field;
`
`the types of problems encountered in the field; and
`
`the sophistication of the technology.
`
`
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`Canon Exhibit 1003
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`Madisetti Declaration
`U.S. Patent No. 9,258,698
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`B. Anticipation
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`26.
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`I understand that, to anticipate a claim, a prior art reference must teach
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`each and every limitation of the claim either expressly or inherently. I understand
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`that extrinsic evidence may be considered to inform the understanding of a prior art
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`reference from the perspective of a person of ordinary skill in the art. However,
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`such extrinsic evidence must make clear that the limitation is “necessarily present”
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`in order to be relied upon for anticipation.
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`C. Obviousness
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`27.
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`I understand that a patent claim is invalid if the claimed invention
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`would have been obvious to a person of ordinary skill in the field at the time the
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`application was filed. This means that even if all of the requirements of the claim
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`cannot be found in a single prior art reference that would anticipate the claim, the
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`claim can still be invalid.
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`28. To obtain a patent, a claimed invention must have, as of the priority
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`date, been nonobvious in view of the prior art in the field. I understand that an
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`invention is obvious when the differences between the subject matter sought to be
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`patented and the prior art are such that the subject matter as a whole would have
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`been obvious at the time the invention was made to a person having ordinary skill
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`in the art.
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`Canon Exhibit 1003
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`Madisetti Declaration
`U.S. Patent No. 9,258,698
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`I understand that to prove that prior art, or a combination of prior art,
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`29.
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`renders a patent obvious, it is necessary to: (1) identify the particular references
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`that singly, or in combination, make the patent obvious; (2) specifically identify
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`which elements of the patent claim appear in each of the asserted references; and
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`(3) explain how the prior art references could have been combined to create the
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`inventions claimed in the asserted claim.
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`30.
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`I understand that certain objective indicia can be important evidence
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`regarding whether a patent is obvious or nonobvious. Such indicia include: (1)
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`commercial success of products covered by the patent claims; (2) a long-felt need
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`for the invention; (3) failed attempts by others to make the invention; (4) copying
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`of the invention by others in the field; (5) unexpected results achieved by the
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`invention as compared to the closest prior art; (6) praise of the invention by the
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`infringer or others in the field; (7) the taking of licenses under the patent by others;
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`(8) expressions of surprise by experts and those skilled in the art at the making of
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`the invention; and (9) the patentee proceeded contrary to the accepted wisdom of
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`the prior art.
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`D. Claim Construction
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`31.
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`I have been instructed by counsel on the law regarding claim
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`construction and patent claims, and understand that a patent may include two types
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`of claims––independent claims and dependent claims. An independent claim
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`Canon Exhibit 1003
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`Madisetti Declaration
`U.S. Patent No. 9,258,698
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`stands alone and includes only the features it recites. A dependent claim can
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`depend from an independent claim or another dependent claim. I understand that a
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`dependent claim includes all the features that it recites in addition to all of the
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`features recited in the claim from which it depends.
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`32.
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`I understand that in this inter partes review the claims must be given
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`their broadest reasonable interpretation, but that interpretation must be consistent
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`with the patent specification.
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`33.
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`In certain cases, I understand that the inventor may provide a special
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`meaning, or lexicography, for a claim limitation. I understand that if there are
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`specific statements in the specification that define the invention, those statements
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`are strong evidence of a definition for a term.
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`34.
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`In this Declaration, I have used the broadest reasonable interpretation
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`standard when interpreting the claim terms. I reserve my right to amend or alter
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`my analysis and opinions in view of the Patent Owner’s proposed claim
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`constructions, if any.
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`V. TECHNOLOGY OVERVIEW
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`35. This section provides an overview of the technology underlying the
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`’698 Patent as it existed before the priority date.
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`Canon Exhibit 1003
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`Madisetti Declaration
`U.S. Patent No. 9,258,698
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`A. Digital Camera Overview
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`36. Digital cameras operate on the principle of capturing image data with
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`an image sensor and storing the image data in digital memory. There are two types
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`of image sensors: charge-coupled devices (“CCD”) and complementary-metal-
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`oxide-semiconductor (“CMOS”). As compared to traditional film-based cameras
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`that use chemicals to capture light, CCD and CMOS image sensors convert light
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`into electric charge that can then be processed into a digital signal. An schematic
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`overview of digital cameras is shown below:
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`37. Starting at the top of the diagram, light is captured through a lens
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`system and transmitted to the image sensor through a mechanical shutter. The
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`image sensor converts the light into electric charge which passes into an analog-to-
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`Canon Exhibit 1003
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`Madisetti Declaration
`U.S. Patent No. 9,258,698
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`digital converter. The digital image data can then be stored in memory and
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`retrieved for a variety of purposes, including displaying the image on a built-in
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`LCD display, moving the image data to external storage, or sending the image data
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`over the internet.
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`38. Two broad categories of memory that are relevant to the ’698 Patent
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`are volatile and non-volatile. At a high level, volatile memory is temporary in the
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`sense that it is wiped every time a device is turned on or off. Non-volatile memory
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`allows data to be stored persistently as the device is turned on and off. Types of
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`volatile memory include random access memory (“RAM”), dynamic random
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`access memory (“DRAM”), and synchronous dynamic random access memory
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`(“SDRAM”). Different types of non-volatile memory include Flash memory and
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`electrically erasable programmable read-only memory (“EEPROM”) that can be
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`erased and reprogrammed in blocks instead of one byte at a time.
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`39. Non-volatile memory has some utility in digital cameras because it
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`allows image data to be stored temporarily while being processed or converted into
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`a file format. This is described in U.S. Patent No. 6,148,149 to Microsoft, which
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`was published in November 2000 and discusses the basic operation of a digital
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`camera. Ex. 1026 at 3:19-25 (“During or after capturing an image, the camera
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`transfers the pixel values from sensor array 15 to volatile memory 20 for
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`processing. This processing involves arranging or formatting the pixel values into
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`Madisetti Declaration
`U.S. Patent No. 9,258,698
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`an image object conforming to a pre-defined standard format, such as one of the
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`‘JPEG’ or ‘GIF’ standards mentioned above. The processing often includes data
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`compression.”). After the image data is converted to a file format, however, it is
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`most commonly transferred to non-volatile memory for persistent storage. Id. at
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`3:7-14 (“Digital images are usually stored as objects or files in some type of
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`nonvolatile memory, according to some predefined and standardized format such
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`as ‘JPEG,’ ‘GIF,’ etc. Within each file, pixels values are typically arranged in a
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`specific order, such as from left-to-right and from top-to-bottom. Thus, the
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`organization and order of pixel values within the image object defines the
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`orientation at which a computer or computer-like device will attempt to display the
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`image.”).
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`40. The December 2004 publication Expanding the Digital Camera Reach
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`describes specific non-volatile memory that was available for digital cameras at the
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`time, IBM’s MicroDrives, which were 340 megabyte flash memories. See Ex.
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`1024 at 67. The article explains that the MicroDrive helped launch a trend in
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`digital camera memory, where storage capacities were expected to double almost
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`every year. Id.
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`41. As noted in the preceding paragraphs, image data captured in a digital
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`camera is typically converted into a Joint Photographic Experts Group (“JPEG”)
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`image file format. JPEG allows for image data to be compressed, which refers to
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`Canon Exhibit 1003
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`Madisetti Declaration
`U.S. Patent No. 9,258,698
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`reducing the overall amount of data used to represent the image. Compression
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`allows for a tradeoff between storage requirements and image quality. The JPEG
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`format provides for difference ranges of compression. At certain compression
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`rates, such as 10:1, image data requirements can be reduced significantly without
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`affecting overall image quality.
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`B. Wireless Image Transfer Among Electronic Devices
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`42. With the rise of personal computers, cellular telephones, and other
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`mobile devices in the late 1990s and early 2000s, digital camera developers saw an
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`opportunity to allow users to share their image files with among devices. There
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`were different ways to transfer image data, including through removable storage
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`cards or USB connections, but wireless transfer was particularly attractive because
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`it allowed for direct transfer of images within removing a card or plu