`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________
`GOOGLE INC.,
`Petitioner,
`v.
`ALEX IS THE BEST, LLC
`Patent Owner
`______________________________
`Case IPR2017-02058
`U.S. Patent No. 8,581,991
`______________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
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`IPR2017-02058 – Patent Owner’s Preliminary Response
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`
`
`TABLE OF CONTENTS
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`TABLE OF CONTENTS
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`Page No.
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`I.
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`INTRODUCTION AND SUMMARY OF ARGUMENT ............................................................................ 1
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`II.
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`INTER PARTES REVIEW IS UNCONSTITUTIONAL ............................................................................. 4
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`III. PATENT OWNER IS ENTITLED TO EFFECTIVE FILING DATE OF JULY 26, 2005 ........................... 5
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`IV. THE PETITION FAILS TO ESTABLISH A REASONABLE LIKELIHOOD AT LEAST ONE OF THE
`CHALLENGED CLAIMS IS UNPATENTABLE ....................................................................................... 5
`
`A. The Petition Fails to Establish a Motivation to Combine for Obvious Grounds ..................................... 6
`
`1. The Petition fails to provide a satisfactory motivation to combine Inoue and Nair (Ground 1) .......... 7
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`2. The Petition fails to provide a satisfactory motivation to combine Yamazaki and Nicholas (Ground
`2) .......................................................................................................................................................... 9
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`3. The Petition fails to provide a satisfactory motivation to combine Yamazaki and Nair (Ground 3) .. 11
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`4. The Petition fails to provide a satisfactory motivation to combine Yamazaki, Nicholas and Nair
`(Ground 4) ......................................................................................................................................... 12
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`5. The Petition fails to provide a satisfactory motivation to combine Kusaka and Nicholas (Ground 5)14
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`6. The Petition fails to provide a satisfactory motivation to combine Kusaka, Nicholas and Nair
`(Ground 6) ......................................................................................................................................... 15
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`B. Ground 1: The Petition Fails to Establish a Reasonable Likelihood That Claims 1-3, 10-14 and 21 are
`Rendered Obvious in view of Inoue and Nair ....................................................................................... 16
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`C. Ground 2: The Petition Fails to Establish a Reasonable Likelihood That Claims 1-3, 12-14 and 21 are
`Rendered Obvious by Yamazaki in view of Nicholas ........................................................................... 17
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`D. Ground 3: The Petition Fails to Establish a Reasonable Likelihood That Claims 1-3, 12-14 and 21 are
`Rendered Obvious in view of Yamazaki and Nair ................................................................................ 18
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`E. Ground 4: The Petition Fails to Establish a Reasonable Likelihood That Claims 10 and 11 are
`Rendered Obvious in view Yamazaki, Nicholas and Nair ..................................................................... 20
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`F. Ground 5: The Petition Fails to Establish a Reasonable Likelihood That Claims 1-3, 12-14 and 21 are
`Rendered Obvious in view Kusaka and Nicholas ................................................................................. 21
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`G. Ground 6: The Petition Fails to Establish a Reasonable Likelihood That Claims 10 and 11 are
`Rendered Obvious in view Kusaka, Nicholas and Nair ........................................................................ 22
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`V. CONCLUSION .......................................................................................................................................... 24
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`i
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`IPR2017-02058 – Patent Owner’s Preliminary Response
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`TABLE OF AUTHORITIES
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`Page No.
`
`Cases
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`Ex Parte Ahlfeld, APPEAL 2014-009272, 2016 WL 4775709
`(P.T.A.B. Sept. 9, 2016) ........................................................................................................... 7
`
`
`In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364 (Fed. Cir. 2016) ............................................ 7
`
`Jacobs Corp. v. Generis III, Inc., IP2014-01267, Paper 12
`(P.T.A.B. Jan. 22, 2015) .......................................................................................................... 6
`
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342 (Fed. Cir. 2012) ........................ 7
`
`KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) ...................................................................... 6
`
`McCormick Harvesting Mach. Co. v. Aultman & Co., 169 U.S. 606 (1898) …...………………. 4
`
`Moses Lake Indus., Inc. v. Enthone, Inc., IPR2014-00243, Paper 6
`(P.T.A.B. June 18, 2014) ......................................................................................................... 7
`
`
`Oil States Energy Services LLC v. Greene’s Energy Group, LLC. ……..………………………... 4
`
`Purdue Pharma L.P. v. Depomed, Inc., 643 F. App’x 960 (Fed. Cir. 2016) ................................. 7
`
`Other Authorities
`
`37 C.F.R. §42.108(c) ...................................................................................................................... 6
`
`
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`ii
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`IPR2017-02058 – Patent Owner’s Preliminary Response
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`I.
`
`INTRODUCTION AND SUMMARY OF ARGUMENT
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`Petitioner has requested initiation of inter partes review (the “Petition”) of claims 1-3,
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`10-14 and 21 (the “Challenged Claims”) of U.S. Patent 8,581,991 (hereinafter the ‘991 patent or
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`AITB patent)1 issued to Alex Is The Best, LLC (“Patent Owner” or “AITB”). AITB respectfully
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`requests that the Board deny the Petition for at least the following reasons:
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`First, inter partes review is unconstitutional.
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`Second, Petitioner fails to establish why a person of ordinary skill in the art would have
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`combined Inoue with Nair (Ground 1), and therefore fails to establish a reasonable likelihood
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`that Petitioner would prevail on any obviousness ground. Petitioner’s proffered obviousness
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`combinations involving Inoue must fail because such combinations will not lead a person of
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`ordinary skill in the art to the claimed invention because Inoue’s camera establishes a network
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`connection on power-up only when a communication card is installed in the card slot. Inoue’s
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`card slot can (a) be empty, (b) have a communication card, or (c) have a memory card.
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`Third, Petitioner fails to establish why a person of ordinary skill in the art would have
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`combined Yamazaki with either (a) Nicholas, (b) Nair or (c) Nicholas and Nair (Grounds 2-4),
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`and therefore fails to establish a reasonable likelihood that Petitioner would prevail on any
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`obviousness ground. Petitioner’s proffered obviousness combinations involving Yamazaki must
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`fail because such combinations will not lead a person of ordinary skill in the art to the claimed
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`invention because Yamazaki does not or suggest an electronic camera that automatically connects
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`to the communications network on power-up. Additionally, Nicholas teaches away from the
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`claimed invention. Further, Nair merely describes providing seamless routing between wireless
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`network while the cell phone user is roaming, i.e., when both wireless networks are
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`1 The Petitioner requested initiation of another inter partes review of the same U.S. Patent 8,581,991 in IPR2017-
`02059. This Petition and the instant Petition relies on same three references.
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`
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`1
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`

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`IPR2017-02058 – Patent Owner’s Preliminary Response
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`simultaneously present and available when “handoff” or switch is made from one wireless
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`network to another wireless network. Whereas, the claimed invention automatically switches to
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`another available mode of connection when the primary mode of connection to the
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`communications network is unavailable.
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`Fourth, Petitioner fails to establish why a person of ordinary skill in the art would have
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`combined Kusaka with either (a) Nicholas or (c) Nicholas and Nair (Grounds 5-6), and therefore
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`fails to establish a reasonable likelihood that Petitioner would prevail on any obviousness
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`ground. Petitioner’s proffered obviousness combinations involving Kusaka must fail because
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`such combinations will not lead a person of ordinary skill in the art to the claimed invention
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`because Kusaka does not teach (a) automatically connecting the Internet direct device to the
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`communications network on power-up using one of a plurality of available modes of connection,
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`which is designated as a primary mode of connection; and (b) automatically switching to another
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`available mode of connection when the Internet direct device detects that said primary mode of
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`connection to the communications network is unavailable. Additionally, Nicholas teaches away
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`from the claimed invention. Further, Nair merely describes providing seamless routing between
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`wireless network while the cell phone user is roaming, i.e., when both wireless networks are
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`simultaneously present and available when “handoff” or switch is made from one wireless
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`network to another wireless network. Whereas, the claimed invention automatically switches to
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`another available mode of connection when the primary mode of connection to the
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`communications network is unavailable.
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`Fifth, Petitioner fails to establish a reasonable likelihood of success that Claims 1-3, 10-
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`14 and 21 are obvious in view of Inoue and Nair (Ground 1). This combination fails to teach or
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`suggest that “the Internet direct device automatically switches to another available mode of
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`2
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`IPR2017-02058 – Patent Owner’s Preliminary Response
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`connection when the Internet direct device detects that the primary mode of connection to the
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`communications network is unavailable.” Nair merely describes providing seamless routing
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`between wireless network while the cell phone user is roaming, i.e., when both wireless
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`networks are simultaneously present and available when “handoff” or switch is made from one
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`wireless network to another wireless network, and Inoue’s camera establishes a network
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`connection on power-up only when a communication card is installed in the card slot. Inoue’s
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`card slot can (a) be empty, (b) have a communication card, or (c) have a memory card. Whereas,
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`the claimed invention automatically switches to another available mode of connection when the
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`primary mode of connection to the communications network is unavailable.
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`Sixth, Petitioner fails to establish a reasonable likelihood of success that Claims 1-3, 12-
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`14 and 21 are obvious in view of Yamazaki and Nicholas (Ground 2), Claims 1-3, 12-14 and 21
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`are obvious in view of Kusaka and Nicholas (Ground 5), Claims 10-11 are obvious in view of
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`Yamazaki, Nicholas and Nair (Ground 4) and Claims 10-11 are obvious in view of Kusaka,
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`Nicholas and Nair (Ground 6). Petitioner relies on a personal computer (PC) reference
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`(Nicholas) which was explicitly excluded and taught against by the Patent Owner. Additionally,
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`contrary to the Petitioner’s assertion, Yamazaki fails to teach or suggest an electronic camera that
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`automatically connects to communications network on power-up. Further, Kusaka fails to teach
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`or suggest automatically connecting on power-up and automatically switching to another
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`available mode of connection when the primary mode connection is unavailable. Furthermore,
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`Nair merely describes providing seamless routing between wireless network while the cell phone
`
`user is roaming, i.e., when both wireless networks are simultaneously present and available
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`when “handoff” or switch is made from one wireless network to another wireless network.
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`Whereas, the claimed invention automatically switches to another available mode of connection
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`
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`3
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`IPR2017-02058 – Patent Owner’s Preliminary Response
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`when the primary mode of connection to the communications network is unavailable.
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`Seventh, Petitioner fails to establish a reasonable likelihood of success that Claims 1-3,
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`12-14 and 21 are obvious in view of Yamazaki and Nair (Ground 3). The combination of
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`Yamazaki and Nair fails to teach or suggest that an electronic camera that automatically connects
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`to the communications network on power-up. Nair merely describes providing seamless routing
`
`between wireless network while the cell phone user is roaming, i.e., when both wireless
`
`networks are simultaneously present and available when “handoff” or switch is made from one
`
`wireless network to another wireless network. Whereas, the claimed invention automatically
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`switches to another available mode of connection when the primary mode of connection to the
`
`communications network is unavailable.
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`II.
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`INTER PARTES REVIEW IS UNCONSTITUTIONAL
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`Patent Owner believes any attempt to retract Patent Owner’s intellectual property rights
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`through invalidation of any claims of the AITB patent at the United States Patent and Trademark
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`Office is unconstitutional. In particular, the IPR process at least violates the Constitution by
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`extinguishing private property rights through a non-Article III forum without a jury. Once a
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`patent is granted, it “is not subject to be revoked or canceled by the president, or any other
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`officer of the Government” because “[i]t has become the property of the patentee, and as such is
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`entitled to the same legal protection as other property.” McCormick Harvesting Mach. Co. v.
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`Aultman & Co., 169 U.S. 606 (1898). The Supreme Court has recently granted certiorari on this
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`issue in Oil States Energy Services LLC v. Greene’s Energy Group, LLC. Patent Owner reserves
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`all rights in the event the PTAB invalidates any claims of the subject Patent in this proceeding.
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`4
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`IPR2017-02058 – Patent Owner’s Preliminary Response
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`III.
`
`PATENT OWNER IS ENTITLED TO EFFECTIVE FILING DATE OF JULY 26,
`2005
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`The Petitioner asserted that the Patent Owner is not entitled to the benefit of the earlier
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`filing date U.S. Provisional Application Serial No. 60/702,470 (Ex. 1002, the “Provisional”)
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`without providing any factual evidence as to why the Patent Owner is not entitled to the filing
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`date of the Provisional. Petition at 7-8.
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`Since the Petitioner has not identified any claimed element allegedly not supported by the
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`Provisional, the Petition fails establish a reasonable likelihood that Petitioner would prevail on
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`this issue. Accordingly, Patent Owner is entitled to the benefit of the earlier filing date of the
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`Provisional.
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`IV.
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`THE PETITION FAILS TO ESTABLISH A REASONABLE LIKELIHOOD AT
`LEAST ONE OF THE CHALLENGED CLAIMS IS UNPATENTABLE
`
`Petitioner alleges that the Challenged Claims are unpatentable on the grounds2:
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`• Ground 1: Claims 1-3, 10-14 and 2 are rendered obvious in view of U.S.
`
`Publication 2004/0109066 to Inoue et al. (hereinafter “Inoue”) and U.S. Patent
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`Publication 2004/0127208 to Nair et al. (hereinafter “Nair”).
`
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`2 In seven (7) other related proceedings involving related AITB patents: (I) IPR2017-02052, Petitioner cites Nair,
`Inoue, Narayanaswami (“Expanding the Digital Camera’s Reach”, Kusaka (U.S. Patent Publication 2004/0109063),
`Nicholas, and Yamazaki (U.S. Patent Publication 2004/0105008) in asserting nine (9) obvious grounds for
`cancellation; (II) IPR2017-02053, Petitioner cites Inoue, Nair, Narayanaswami, Yamazaki, Nicholas and Kusaka in
`asserting six (6) obvious grounds for cancellation; (III) IPR2017-02054, Petitioner cites Nair, Lavelle (U.S. Patent
`7,333,785) – this reference was already considered by the Examiner, Nicholas, Kusaka, and Yamazaki in asserting
`eight (8) obvious grounds for cancellation; (IV) IPR2017-02055, Petitioner cites Nicholas, Nair, Umeda and Inoue
`in asserting three (3) anticipation and obvious grounds for cancellation; (V) IPR2017-02056, Petitioner cites
`Nicholas, Nair, Kusaka, Khedouri (U.S. Patent Publication 2006/0008256, Morris (U.S. Publication 2006/0143684),
`Inoue, Narayanswami and Umeda in asserting eleven (11) anticipation and obvious grounds for cancellation; (VI)
`IPR2017-02057, Petitioner cites Inoue, Nair, Narayanaswami, Yamazaki, Nicholas, and Kusaka in asserting six (6)
`obvious grounds for cancellation; and (VII) IPR2017-02059, Petitioner cites Nicholas, Inoue, Nair, Narayanaswami,
`Umeda in asserting six (4) anticipation and obvious grounds for cancellation.
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`5
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`IPR2017-02058 – Patent Owner’s Preliminary Response
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`• Ground 2: Claims 1-3, 12-14 and 21 are rendered obvious in view U.S. Patent
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`Publication 2004/0105008 to Yamazaki (hereinafter “Yamazaki”) and U.S. Patent
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`Publication 2004/0133668 to Nicholas, III (hereinafter “Nicholas”).
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`• Ground 3: Claims 1-3, 12-14 and 21 are rendered obvious in view of Yamazaki
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`and Nair.
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`• Ground 4: Claims 10 and 11 are rendered obvious in view of Yamazaki, Nicholas
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`and Nair.
`
`•
`
` Ground 5: Claims 1-3, 12-17 and 21 are rendered obvious in view of U.S. Patent
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`Publication 2004/0109063 to Kusaka et al. (hereinafter “Kusaka”) and Nicholas.
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`• Ground 6: Claims 10 and 11 are rendered obvious in view of Kusaka, Nicholas
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`and Nair.
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`Petition at 7.
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`A.
`
`The Petition Fails to Establish a Motivation to Combine for Obvious
`Grounds
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`With respect to the obvious grounds, Petitioner must demonstrate a reasonable likelihood
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`that at least one of Challenged Claims would have been obvious in view of the art cited in the
`
`Petition. See 37 C.F.R. § 42.108(c). “An obviousness analysis requires more than simply
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`showing that each limitation is found in the prior art.” Jacobs Corp. v. Generis III, Inc., IP2014-
`
`01267, Paper 12, slip op. at 8 (P.T.A.B. Jan. 22, 2015) (citing KSR Int’l Co. v. Teleflex, Inc., 550
`
`U.S. 398, 418 (2007). “Petitioner must also show ‘whether there was an apparent reason to
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`combine the known elements in the fashion claimed by the patent at issue.’” Id. (quoting KSR,
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`550 U.S. at 418).
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`
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`6
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`IPR2017-02058 – Patent Owner’s Preliminary Response
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`A combination of references cannot be used to establish unpatentability unless “a skilled
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`artisan would have been motivated to combine the teachings of the prior art references to achieve
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`the claimed invention ….” Ex Parte Ahlfeld, APPEAL 2014-009272, 2016 WL 4775709, at *3
`
`(P.T.A.B. Sept. 9, 2016) (citing Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342,
`
`1360 (Fed. Cir. 2012)). “To satisfy its burden of proving obviousness, a petitioner cannot employ
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`mere conclusory statements. The petitioner must instead articulate specific reasoning, based on
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`evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools
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`Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016); accord Moses Lake Indus., Inc. v. Enthone,
`
`Inc., IPR2014-00243, Paper 6, slip op. at 20 (P.T.A.B. June 18, 2014) (“MLI must provide more
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`than conclusory expert testimony, … and conclusory rationales to combine the teachings, to
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`present a prima facie case of obviousness.”). The petitioner must establish an adequate reason
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`why a person of ordinary skill in the art would have been prompted to combine prior art elements
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`“in the way the claimed invention does,” and show there was a “reasonable expectation of
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`success form doing so.” Purdue Pharma L.P. v. Depomed, Inc., 643 F. App’x 960, 965 (Fed. Cir.
`
`2016).
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`1.
`
`The Petition fails to provide a satisfactory motivation to combine
`Inoue and Nair (Ground 1)
`
`In support of modifying Inoue with teachings from Nair, Petitioner alleges:
`
`Inoue describes a digital camera that automatically establishes a primary
`connection to a network when the camera is powered-up for transmission of
`images to a server on the Internet and subsequent retrieval of images from the
`server for review on a display on the camera. Nair describes system applicable to
`any wireless device, including Inoue’s camera, for automatically switching among
`networks when a primary network becomes unavailable in order to maintain a
`seamless connection to the communication network for data transmission. A
`person of ordinary skill in the art would have found it obvious to combine Inoue
`and Nair to arrive at the alleged invention in claims 1-3, 10-14 and 21 of the ‘991
`Patent. Madisetti, ¶¶108-114.
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`
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`7
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`IPR2017-02058 – Patent Owner’s Preliminary Response
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`Petition at 11-12. This conclusory statement fails to provide any factual basis to deduce that a
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`person of ordinary skill in the art would have been motivated to modify Inoue’s digital camera to
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`incorporate the cell phone roaming system in Nair.
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`Although Inoue describes a digital camera, contrary to the Petitioner’s assertion, Inoue
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`does not teach that when the digital camera is “‘powered on … automatically establishes a
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`network connection with [a] file server’” Petition at 12.
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`Inoue clearly states that the digital camera establishes a network connection with the file
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`server if and only if “the card slot 20 is loaded with a communication card (C at S30), the
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`communication control unit 72 and the communication card cooperate to establish a network
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`connection with the file server 100 (S32) … If the identification of the card type at S30
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`determines that the card slot 20 is loaded with a memory card (M at S30), the processing of S32
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`is skipped since the network connection with the file server 100 is impossible.” (emphasis added)
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`(Inoue at ¶¶ [0066], [0067]).
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`However, contrary to the Petitioner’s assertions, Nair is directed to providing “seamless
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`routing between wireless networks” as cell phone user “roams” between the wireless networks
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`(Nair at ¶ [0029]). That is, in Nair, both wireless networks are simultaneously present and
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`available when “handoff” or switch is made from one wireless network to the other wireless
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`network. Hence, Nair fails to teach “seamless routing between wireless networks” when the cell
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`phone user is “not roaming,” i.e., when a wireless network becomes unavailable, as required in
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`the claimed invention.
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`Petitioner’s proffered obviousness combination of Inoue and Nair must fail because such
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`combination will change the principles of the reference by eliminating Inoue’s storing process
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`which transfers the image from the buffer 56 to the memory card. (Inoue at ¶ [0069]).
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`8
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`IPR2017-02058 – Patent Owner’s Preliminary Response
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`Moreover, even assuming arguendo that the combination is proper, it still will not lead
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`one of ordinary skill in the art to the claimed invention because “seamless routing between
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`wireless networks” as taught by Nair is achieved only when both wireless networks are
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`simultaneously present and available, contrary to the claimed invention.
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`In short, the Petition fails to set forth why a person of ordinary skill in the art would have
`
`combined Inoue with Nair, and therefore does not establish a reasonable likelihood that
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`Petitioner would prevail on Ground 1, which rely upon this obviousness combination.
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`2.
`
`The Petition fails to provide a satisfactory motivation to combine
`Yamazaki and Nicholas (Ground 2)
`
`In support of modifying Yamazaki with teachings from Nicholas, Petitioner alleges:
`
`Yamazaki discloses an Internet direct camera that automatically uploads images
`when they are captured to an image gallery associated with the camera on image
`server for storage, review and retrieval (i.e., the claimed “website archive and
`retrieval center (WSARC)”) via a primary mode of connection. See Ex. 1007.
`Yamazaki also describes a system in which its device can automatically connect
`at power up; however, Yamazaki does not discuss automatically switching to
`another mode of connection when the primary mode of connection is unavailable.
`Nicholas is in the same field of mobile communications devices as Yamazaki, and
`also was not before the Examiner. Nicholas supports implementing an automatic
`connection at power up as part of Yamazaki’s camera and independently discloses
`the automatic switching element that is absent from Yamazaki. See Ex. 1008.
`
` A
`
` person of ordinary skill in the art would have been motivated to combine
`Nicholas’s arrangements for automatic switching to another mode of connection
`with Yamazaki’s Internet camera in order to achieve the advantages described in
`Nicholas. Madisetti, ¶¶115-124. A person of ordinary skill in the art would have
`modified Yamazaki to have Nicholas’s automatic-switching to achieve the
`advantages of low cost transmission, speed, reliability, versatility, signal strength,
`power conservation, and/or performance. Id.
`
`Petition at 28. This conclusory statement fails to provide any factual basis to deduce that a
`
`person of ordinary skill in the art would have been motivated to modify Inoue’s digital camera to
`
`incorporate the cell phone roaming system in Nair.
`
`
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`9
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`IPR2017-02058 – Patent Owner’s Preliminary Response
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`The Petitioner cites various irrelevant paragraphs in Yamazaki that allegedly teaches
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`“IDD (electronic camera) [that] automatically connects to communications network on power-
`
`up.” Petition at 29-20. But, these paragraphs merely state that the image display device, i.e., a
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`camera, communicates with the server through the network (Yamazaki at ¶ [0027]) and that “the
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`camera 10 may also connect to the server 52 just after the setting of the user’s identification
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`information so as to evaluate the communicational condition” (Yamazaki at ¶ [0072]). Contrary
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`to the Petitioner’s assertions, a person of ordinary skill in the art reading the passages set forth in
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`these paragraphs would not conclude that Yamazaki teaches an electronic camera that
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`automatically connects to the communications network on power-up.
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`Realizing that their position is a total mischaracterization of Yamazaki, the Petitioner
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`alleges, in the alternative, that “Nicholas also describes connecting to its primary mode of
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`communication automatically on power up.” Petition at 31. But, as noted herein, Nicholas is not
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`a relevant reference to the claimed invention.
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`The Petitioner clearly recognized that the claimed invention is directed to a system and
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`method that “seamlessly and automatically transmits, receives, stores and/or archives still
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`images, video and/or audio” without the necessity of connecting to another device, such as a
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`personal computer (PC) (Petition at 5-6; Ex. 1001 (AITB patent) from col. 1, lines 62 to col. 2,
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`line 3), but the Petitioner nevertheless relies on a reference that is directed to a personal
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`computer (PC), which was explicitly excluded and taught against by the Patent Owner (Ex. 1006
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`(Nicholas) at ¶ [0021] (“As shown in Fig. 1, exemplary end user device 100 comprises a mobile
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`client device, such as a notebook or tablet PC, operating under the Microsoft Windows™ XP
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`operating system.”); Ex. 1006 (Nicholas) at ¶ [0026] (the notebook or tablet PC “operates as a
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`
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`10
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`IPR2017-02058 – Patent Owner’s Preliminary Response
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`communications base station”; Ex. 1006 (Nicholas) at ¶ (the notebook or table PC “operating as
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`an access point or a repeater”).
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`Accordingly, Nicholas teaches away from the claimed invention.
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`Therefore, the Petitioner has failed establish a reasonable likelihood that Petitioner would
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`prevail on Ground 2.
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`3.
`
`The Petition fails to provide a satisfactory motivation to combine
`Yamazaki and Nair (Ground 3)
`
`In support of modifying Yamazaki with teachings from Nair, Petitioner alleges that
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`Yamazaki teaches “[a]utomatically connecting the Internet direct device to said communications
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`network on power-up using one of a plurality of available modes of connection, which is
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`designated as a primary mode of connection; see Section VII.A (pp. 29-20)” of the Petition.
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`As noted herein, in Section VII.A of the Petition, the Petitioner cites various irrelevant
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`paragraphs in Yamazaki that allegedly teaches “IDD (electronic camera) [that] automatically
`
`connects to communications network on power-up.” Petition at 29-20. But, these paragraphs
`
`merely state that the image display device, i.e., a camera, communicates with the server through
`
`the network (Yamazaki at ¶ [0027]) and that “the camera 10 may also connect to the server 52
`
`just after the setting of the user’s identification information so as to evaluate the
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`communicational condition” (Yamazaki at ¶ [0072]). Contrary to the Petitioner’s assertions, a
`
`person of ordinary skill in the art reading the passages set forth in these paragraphs would not
`
`conclude that Yamazaki teaches an electronic camera that automatically connects to the
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`communications network on power-up.
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`In addition, the Petitioner admitted that “Yamazaki does not teach: automatically
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`switching to another available mode of connection by the microprocessor when the Internet
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`direct detects that said primary mode of connection to the communications network is
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`IPR2017-02058 – Patent Owner’s Preliminary Response
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`unavailable.” Petition at 47. To cure this deficiency with Yamazaki, the Petitioner turns to Nair.
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`However, contrary to the Petitioner’s assertions, Nair is directed to providing “seamless
`
`routing between wireless networks” as cell phone user “roams” between the wireless networks
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`(Nair at ¶ [0029]). That is, in Nair, both wireless networks are simultaneously present and
`
`available when “handoff” or switch is made from one wireless network to the other wireless
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`network. Hence, Nair fails to teach “seamless routing between wireless networks” when the cell
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`phone user is “not roaming,” i.e., when a wireless network becomes unavailable, as required in
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`the claimed invention.
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`Therefore, the Petitioner has failed establish a reasonable likelihood that Petitioner would
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`prevail on Ground 3.
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`4.
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`The Petition fails to provide a satisfactory motivation to combine
`Yamazaki, Nicholas and Nair (Ground 4)
`
`In support of modifying Yamazaki with teachings from Nicholas and Nair, Petitioner
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`alleges that “[a]s discussed in Section VII.A [of the Petition], Yamazaki discloses an IDD
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`(electronic camera). Nicholas discloses an end-user device that provides for automatic switching
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`between networks. Nair also discloses an end-user device that provides for automatic switching
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`between networks.” Petition at 52.
`
`As noted herein, in Section VII.A of the Petition, the Petitioner cites various irrelevant
`
`paragraphs in Yamazaki that allegedly teaches “IDD (electronic camera) [that] automatically
`
`connects to communications network on power-up.” Petition at 29-20. But, these paragraphs
`
`merely state that the image display device, i.e., a camera, communicates with the server through
`
`the network (Yamazaki at ¶ [0027]) and that “the camera 10 may also connect to the server 52
`
`just after the setting of the user’s identification information so as to evaluate the
`
`communicational condition” (Yamazaki at ¶ [0072]). Contrary to the Petitioner’s assertions, a
`
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`12
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`IPR2017-02058 – Patent Owner’s Preliminary Response
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`person of ordinary skill in the art reading the passages set forth in these paragraphs would not
`
`conclude that Yamazaki teaches an electronic camera that automatically connects to the
`
`communications network on power-up.
`
`As noted herein, the claimed invention is directed to a system and method that
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`“seamlessly and automatically transmits, receives, stores and/or archives still images, video
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`and/or audio” without the necessity of connecting to another device, such as a personal computer
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`(PC) (Petition at 5-6; Ex. 1001 (AITB patent) from col. 1, lines 62 to col. 2, line 3). Even
`
`acknowledging this teaching of the claimed invention, the Petitioner nevertheless relies on a
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`reference that is directed to a personal computer (PC), which was explicitly excluded and taught
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`against by the Patent Owner (Ex. 1006 (Nicholas) at ¶ [0021] (“As shown in Fig. 1, exemplary
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`end user device 100 comprises a mobile client device, such as a notebook or tablet PC, operating
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`under the Microsoft Windows™ XP operating system.”); Ex. 1006 (Nicholas) at ¶ [0026] (the
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`notebook or tablet PC “operates as a communications base station”; Ex. 1006 (Nicholas) at ¶ (the
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`notebook or table PC “operating as an access point or a repeater”).
`
`As noted herein, contrary to the Petitioner’s assertions, Nair is directed to providing
`
`“seamless routing between wireless networks” as cell phone user “roams” between the wireless
`
`networks (Nair at ¶ [0029]). That is, in Nair, both wireless networks are simultaneously present
`
`and avail