Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 10
`
`
` Entered: March 9, 2018
`
`
`
`
`
`
`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
`
`
`
`
`571-272-7822
`
`
`
` Paper 10
`
`
` Entered: March 9, 2018
`
`
`
`
`
`
`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
`
`
`
`
`
`IPR2017-02058
`Patent 8,581,991 B1
`
`
`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.
`
`2
`
`
`
`IPR2017-02058
`Patent 8,581,991 B1
`
`
`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
`
`
`
`IPR2017-02058
`Patent 8,581,991 B1
`
`
`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.
`
`4
`
`
`
`IPR2017-02058
`Patent 8,581,991 B1
`
`
`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
`
`5
`
`
`
`IPR2017-02058
`Patent 8,581,991 B1
`
`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
`
`6
`
`
`
`IPR2017-02058
`Patent 8,581,991 B1
`
`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
`
`7
`
`
`
`IPR2017-02058
`Patent 8,581,991 B1
`
`
`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
`
`
`
`IPR2017-02058
`Patent 8,581,991 B1
`
`
`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
`
`9
`
`
`
`IPR2017-02058
`Patent 8,581,991 B1
`
`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
`
`10
`
`
`
`IPR2017-02058
`Patent 8,581,991 B1
`
`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
`
`11
`
`
`
`IPR2017-02058
`Patent 8,581,991 B1
`
`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
`
`12
`
`
`
`IPR2017-02058
`Patent 8,581,991 B1
`
`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.
`13
`
`
`
`IPR2017-02058
`Patent 8,581,991 B1
`
`
`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.
`
`14
`
`
`
`IPR2017-02058
`Patent 8,581,991 B1
`
`
`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
`
`15
`
`
`
`IPR2017-02058
`Patent 8,581,991 B1
`
`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
`
`16
`
`
`
`IPR2017-02058
`Patent 8,581,991 B1
`
`[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
`
`17
`
`
`
`IPR2017-02058
`Patent 8,581,991 B1
`
`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
`
`18
`
`
`
`IPR2017-02058
`Patent 8,581,991 B1
`
`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
`
`19
`
`
`
`IPR2017-02058
`Patent 8,581,991 B1
`
`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.
`
`20
`
`
`
`IPR2017-02058
`Patent 8,581,991 B1
`
`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.
`
`21
`
`
`
`IPR2017-02058
`Patent 8,581,991 B1
`
`
`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
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
