Trials@uspto.gov
`571-272-7822
`
`
`
`Paper No. 8
`
`
` 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 IPR2017-02059
`Patent 8,581,991 B1
`____________
`
`
`
`Before DANIEL N. FISHMAN, MINN CHUNG, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`571-272-7822
`
`
`
`Paper No. 8
`
`
` 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 IPR2017-02059
`Patent 8,581,991 B1
`____________
`
`
`
`Before DANIEL N. FISHMAN, MINN CHUNG, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`
`IPR2017-02059
`Patent 8,581,991 B1
`
`
`I. INTRODUCTION
`Google LLC (“Petitioner”) filed a Petition (Paper 1, “Pet.”)1
`requesting an inter partes review of claims 22, 23, 25, 27–29, 32, 33, and
`35–38 (the “challenged claims”) of U.S. Patent No. 8,581,991 B1 (Ex. 1001,
`“the ’991 patent”). Alex Is The Best, LLC (“Patent Owner”) filed a
`Preliminary Response (Paper 7, “Prelim. Resp.”).
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition . . . and any response . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a);
`see 37 C.F.R. §§ 42.4, 42.108. Taking into account the arguments presented
`in Patent Owner’s Preliminary Response, we determine that the information
`presented in the Petition establishes that there is a reasonable likelihood that
`Petitioner would prevail in showing the unpatentability of at least one
`challenged claim. Accordingly, we institute an inter partes review of claims
`22, 23, 25, 27–29, 32, 33, and 35–38 of the ’991 patent.
`
`
`II. BACKGROUND
`A. Real Parties-in-Interest and Related Matters
`Petitioner identifies Lenovo Holding Company, Inc., Lenovo (United
`States) Inc., Motorola Mobility, LLC, Huawei Devices USA Inc., and
`Huawei Technologies USA Inc. as additional real parties-in-interest for
`Petitioner. Pet. 2.
`
`
`1 The Petition, as filed, named “Google Inc.” as Petitioner. In a later filing,
`Petitioner notified the Board and Patent Owner of a change of name to
`“Google LLC.” Paper 6, 2.
`
`2
`
`
`
`IPR2017-02059
`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
`
`
`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
`
`
`
`IPR2017-02059
`Patent 8,581,991 B1
`
`Pet. 2–3; Paper 5, 2–3.3
`The ’991 patent is also the subject of a co-pending petition for inter
`partes review filed by Petitioner in Case IPR2017-02058. In addition,
`according to the parties, Petitioner also filed petitions seeking inter partes
`review of claims of various Patent Owner’s patents as follows.
`
`Case No.
`IPR2017-02052
`IPR2017-02053
`IPR2017-02054
`IPR2017-02055
`IPR2017-02056
`IPR2017-02057
`
`Challenged Patent No.
`7,907,172
`8,477,197
`7,633,524
`8,947,542
`8,134,600
`9,197,806
`
`Paper 4, 1; Paper 5, 2.
`
`B. The ’991 Patent
`The ’991 patent generally relates to “an integrated Internet camera . . .
`that seamlessly and automatically transmits, receives, stores and/or archives
`still images, video and/or audio to and from a web site service/monitor
`center over the Internet.” Ex. 1001, 1:21–25. According to the ’991 patent,
`conventional cameras are incapable of directly connecting to the Internet or
`the World Wide Web (“Web”) without coupling through a separate network
`device such as a personal computer (“PC”). Id. at 1:42–46.
`
`
`3 Paper 5, as filed, does not include page numbering as required by our rules.
`For purposes of this decision, we number the first page (the caption page) as
`page number 1. Although the error here is harmless, the parties are
`reminded to format all papers and exhibits in accordance with 37 C.F.R.
`§§ 42.6 and 42.63.
`
`4
`
`
`
`IPR2017-02059
`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
`
`
`
`IPR2017-02059
`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
`
`
`
`IPR2017-02059
`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 22 and 32 are independent claims.
`Claim 22 is illustrative of the challenged claims and is reproduced below:
`22. A method for transmitting and receiving still or video
`images by an Internet direct device associated with a user over a
`communications network, comprising the steps of:
`automatically connecting the Internet direct device to said
`communications network on power-up using one of a
`plurality of available modes of connection, which is
`designated as a primary mode of connection;
`capturing still or video images by an image capture system of the
`Internet direct device;
`transmitting the captured still or video images to another Internet
`direct device over said communications network upon
`image capture by a microprocessor of the Internet direct
`device;
`receiving still or video images from said other Internet direct
`device over said communications network by the Internet
`direct device; and
`automatically switching to another available mode of connection
`
`7
`
`
`
`IPR2017-02059
`Patent 8,581,991 B1
`
`
`by the microprocessor when the Internet direct device
`detects that said primary mode of connection to the
`communications network is unavailable.
`Ex. 1001, 10:1–20.
`
`
`D. Asserted Prior Art and Grounds of Unpatentability
`Petitioner cites the following references in its challenges to
`patentability.
`
`Designation
`
`Exhibit No.
`
`Nicholas
`
`Ex. 1006
`
`Nair4
`
`Inoue
`
`Ex. 1007
`
`Ex. 1008
`
`Ex. 1009
`
`Reference and Relevant Date
`U.S. Patent Application Pub. No.
`2004/0133668 Al (published July 8, 2004)
`U.S. Patent Application Pub. No.
`2004/0127208 Al (published July 1, 2004)
`U.S. Patent Application Pub. No.
`2004/0109066 Al (published June 10, 2004)
`U.S. Patent Application Pub. No.
`2002/0150228 A1 (published Oct. 17, 2002) Umeda
`Chandra Narayanaswami, et al., Expanding
`the Digital Camera’s Reach, IEEE
`COMPUTER, Vol. 37, Issue 12 (Dec. 2004)
`
`Petitioner also relies on the Declaration of Vijay K. Madisetti, Ph.D.
`(Ex. 1011).
`
`
`Narayanaswami Ex. 1010
`
`
`4 For clarity and ease of reference, we only list the first named inventor.
`
`8
`
`
`
`IPR2017-02059
`Patent 8,581,991 B1
`
`
`Petitioner asserts the following grounds of unpatentability:
`
`Claims Challenged
`
`Statutory Basis
`
`Reference(s)
`
`22, 23, 25, 27–29, 32,
`33, and 35–38
`22, 23, 25, 27–29, 32,
`33, and 35–38
`25, 27, 28, and 35–37
`22, 23, 25, 27–29, 32,
`33, and 35–38
`
`
`Pet. 7.
`
`§ 102(b)
`
`Nicholas
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`Inoue and Nair
`
`Inoue, Nair, and Narayanaswami
`
`Umeda and Inoue
`
`III. ANALYSIS
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of
`the broadest reasonable interpretation standard in inter partes reviews).
`Under the broadest reasonable interpretation standard, and absent any
`special definitions, claim terms generally are given their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art, in view of the specification. In re Translogic Tech. Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007). Any special definitions for claim terms or phrases
`must be set forth with reasonable clarity, deliberateness, and precision. In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). A particular embodiment
`appearing in the written description generally is not incorporated into a
`
`9
`
`
`
`IPR2017-02059
`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 22 and 32. Pet.
`11–13. Although Petitioner does not propose an express construction of the
`term, Petitioner contends that the term “Internet direct device” should be
`interpreted to “include[] at least a device that is capable of connecting to the
`Internet without the necessity of connecting to another device, such as a
`PC.” Id. at 12 (citing Ex. 1011 ¶¶ 37–40).
`Although Petitioner does not provide any citation to the ’991 patent in
`support of its proposed interpretation, we note that the ’991 patent
`distinguishes the invention from known prior art devices (e.g., cameras) that
`required coupling to another device (e.g., a PC) to allow communications
`over the Internet. Ex. 1001, 1:42–46, Fig. 1. The Specification of the ’991
`patent further explains that “it is desirable to have an integrated Internet
`camera system that can seamlessly upload and download video and/or audio
`files to and from the Internet . . . without the necessity of connecting to
`another device, such as a PC 200.” Id. at 1:62–2:3 (emphasis added).
`Furthermore, although Patent Owner does not challenge Petitioner’s
`proposed interpretation of the term “Internet direct device” or proffer its own
`interpretation, Patent Owner also notes the above distinction over prior art
`cameras that required coupling with a PC to provide Internet
`communications. See Prelim. Resp. 12 (“The claimed invention is directed
`to a system and method that ‘seamlessly and automatically transmits,
`receives, stores and/or archives still images, video and/or audio’ without the
`
`10
`
`
`
`IPR2017-02059
`Patent 8,581,991 B1
`
`necessity of connecting to another device, such as a personal computer
`(PC).”) (citing Ex. 1001, 1:62–2:3). Hence, on the current record, the
`Specification of the ’991 patent supports an interpretation in which an
`Internet direct device is one that does not require another device (e.g., a PC)
`to communicate with the Internet.
`In view of the above discussion, based on the current record, and for
`purposes of this Decision, we interpret “Internet direct device” to mean a
`device that is capable of connecting to the Internet without the necessity of
`connecting to another device, such as a PC.
`Neither party proposes any further claim constructions. Hence, based
`on the current record, and for purposes of this Decision, we do not find it
`necessary to make formal claim constructions for any other claim terms.
`See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868
`F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are
`in controversy, and only to the extent necessary to resolve the controversy.’”
`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999))).
`
`B. Priority Date of the ’991 Patent
`Petitioner contends that the challenged claims are not entitled to the
`benefit of the July 26, 2005 filing date of the provisional patent application
`(“the ’470 application”) listed on the face of the ’991 patent. Pet. 8–10.
`Patent Owner asserts that the ’991 patent claims are sufficiently supported
`by the disclosure of the ’470 application, and, therefore, are entitled to the
`benefit of the filing date of the ’470 application. Prelim. Resp. 3–4.
`Based on the present record, there is no dispute that the prior art
`references relied upon in the instant Petition pre-date the ’991 patent’s
`
`11
`
`
`
`IPR2017-02059
`Patent 8,581,991 B1
`
`earliest possible priority date. Thus, at this stage of the proceeding, we do
`not need to address any issues relating to the proper priority date for the ’991
`patent.
`
`C. Anticipation by Nicholas
`Petitioner contends claims 22, 23, 25, 27–29, 32, 33, and 35–38 are
`unpatentable under 35 U.S.C. § 102(b) as anticipated by Nicholas. Pet. 13–
`32. Petitioner provides detailed explanations and specific citations to
`Nicholas indicating where in the reference the claimed features are
`disclosed. Id. In addition, Petitioner relies upon the Declaration of Vijay K.
`Madisetti, Ph.D. (Ex. 1011) to support its position. Id.
`
`1. Relevant Principles of Law
`A claim is unpatentable under 35 U.S.C. § 102 only if a single prior
`art reference expressly or inherently describes each and every limitation set
`forth in the claim. See Perricone v. Medicis Pharm. Corp., 432 F.3d 1368,
`1375 (Fed. Cir. 2005); Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628,
`631 (Fed. Cir. 1987). Further, a reference cannot anticipate “unless [it]
`discloses within the four corners of the document not only all of the
`limitations claimed[,] but also all of the limitations arranged or combined in
`the same way as recited in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc.,
`545 F.3d 1359, 1371 (Fed. Cir. 2008). Although the elements must be
`arranged in the same way as in the claim, “the reference need not satisfy an
`ipsissimis verbis test,” i.e., identity of terminology is not required. In re
`Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831,
`832 (Fed. Cir. 1990). Moreover, the prior art reference is read from the
`perspective of one with ordinary skill in the art. In re Graves, 69 F.3d 1147,
`
`12
`
`
`
`IPR2017-02059
`Patent 8,581,991 B1
`
`1152 (Fed. Cir. 1995) (“A reference anticipates a claim if it discloses the
`claimed invention such that a skilled artisan could take its teachings in
`combination with his own knowledge of the particular art and be in
`possession of the invention.” (citation and quotation marks omitted)); In re
`Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]n considering the disclosure of
`a reference, it is proper to take into account not only specific teachings of the
`reference but also the inferences which one skilled in the art would
`reasonably be expected to draw therefrom.”). We analyze this asserted
`ground based on anticipation with the principles identified above in mind.
`
`2. Overview of Nicholas (Ex. 1006)
`Nicholas relates generally to an end user device that is capable of
`communication through multiple communication networks. Ex. 1006 ¶ 3.
`Figure 1 of Nicholas is reproduced below.
`
`
`
`13
`
`
`
`IPR2017-02059
`Patent 8,581,991 B1
`
`Figure 1 is a high-level diagram of an exemplary end user device of
`Nicholas. Id. ¶ 14.
`As shown in Figure 1 of Nicholas, end user device 100 may
`communicate over any of a variety of types of networks (102, 104, 108).
`Id. ¶¶ 19, 20, 22, 41. Device 100 may be, for example, a notebook or tablet
`computing device (i.e., a PC). Id. ¶ 20. The device includes microprocessor
`302 for performing various functions of the device. Id. ¶ 37. Device 100
`also includes video camera and microphone 120 to enable videoconferencing
`and video calls. Id. ¶¶ 21, 32–34. The device selects an initial
`communication mode by determining the best communication path.
`See id. ¶¶ 49–55. The device also switches between communication modes
`to provide uninterrupted service for calls. Id. ¶ 28.
`
`3. Independent Claims 22 and 32
`Regarding independent claim 22, Petitioner identifies each element in
`the disclosures of Nicholas. Pet. 14–21. In particular, Petitioner identifies
`end user device 100 as the claimed “Internet direct device” recited in claim
`22. Id. at 14–15. Petitioner argues device 100 of Nicholas comports with its
`proffered interpretation as a “device capable of communicating data to or
`from a data communication network in accordance with one or more wired
`and/or wireless communication protocols.” Id. at 14 (quoting Ex. 1006
`¶ 19). Petitioner further asserts that the data communication network of
`Nicholas includes an “Internet connection.” Id. (citing Ex. 1006 ¶¶ 19, 20,
`Fig. 1). In addition, Petitioner argues that Nicholas’s end user device has an
`imaging system that can capture at least video images and practices a
`method of transmitting and receiving audio or video images by, e.g.,
`video-calling and videoconferencing. Id. at 14–15 (citing Ex. 1006 ¶¶ 20,
`
`14
`
`
`
`IPR2017-02059
`Patent 8,581,991 B1
`
`24, 32–34, Fig. 1; Ex. 1011 ¶¶ 85–88, 627–630, 712–723). Petitioner further
`asserts that Nicholas discloses the recited automatic connection on power-up
`to a primary mode of connection by initially determining which of the
`multiple communication networks provides the most optimal communication
`channel. Id. at 15–16 (citing Ex. 1006, Abstract, ¶¶ 8, 20). Petitioner
`contends such initial connection in Nicholas is performed as an aspect of
`power-up of the device. Id. at 16 (quoting Ex. 1006 ¶ 46 (“The network
`detection function is preferably performed automatically by the end user
`device . . . as part of the power-up sequence of the end user device to
`determine which network(s) are initially available to the end user device.”).
`Lastly, Petitioner argues Nicholas discloses the recited automatic switching
`to another mode of connection by providing seamless transition between
`different data communication networks to permit uninterrupted data
`communication. Id. at 19–21 (citing Ex. 1006 ¶¶ 9, 20, 28, 30–36, 49–56;
`Ex. 1011 ¶¶ 720–723).
`Independent claim 32 is directed to a storage medium comprising a
`program that causes an Internet direct device to perform method steps
`essentially identical to those of claim 22. See Ex. 1001, 10:1–20, 10:57–
`11:11. Petitioner identifies essentially the same teachings of Nicholas as
`relied upon for claim 22 as also disclosing the steps recited in claim 32.
`Id. at 25–30.
`Patent Owner argues Nicholas discloses a notebook or tablet (i.e., a
`PC) and contends the ’991 patent expressly teaches away from such a
`configuration that uses a PC to couple to the Internet. Prelim. Resp. 12.
`More specifically, Patent Owner contends the ’991 patent is directed to a
`system and method that seamlessly and automatically transmits, receives,
`
`15
`
`
`
`IPR2017-02059
`Patent 8,581,991 B1
`
`stores and/or archives still images, video and/or audio “without the necessity
`of connecting to another device, such as a personal computer (PC).”
`Id. (citing Ex. 1001, 1:62–2:3). Patent Owner then argues, “[n]evertheless,
`the Petitioner relies on a reference that is directed to a personal computer
`(PC), which was explicitly excluded and taught against by the Patent
`Owner.” Id. (citing Ex. 1006 ¶¶ 21, 26). In particular, Patent Owner quotes
`a portion of paragraph 26 of Nicholas as stating that the end user device
`operates as an access point or repeater and argues that Nicholas, therefore,
`teaches away from the claimed invention of the ’991 patent. Id.
`At this stage of the proceeding, we are persuaded by Petitioner’s
`arguments and find Patent Owner’s arguments unpersuasive. In essence,
`Patent Owner argues that any system that includes a PC is differentiated
`from its claim recitation of an “Internet direct device.” We disagree. Our
`interpretation of “Internet direct device” (a device that is capable of
`connecting to the Internet without the necessity of connecting to another
`device, such as a PC) does not exclude the end user device of Nicholas. The
`end user device of Nicholas is not connected to another device (such as a
`PC) to provide Internet connectivity of a camera. Instead, the notebook or
`tablet PC of Nicholas is the Internet direct device as recited in the claims.
`We agree with Petitioner that the notebook or tablet PC (end user device) of
`Nicholas is capable of “communicating data to or from a data
`communication network in accordance with one or more wired and/or
`wireless communication protocols” and that such a data communication
`network includes an “Internet connection.” Pet. 14 (citing Ex. 1006 ¶¶ 19,
`20, Fig. 1). We also agree with Petitioner’s assertion that Nicholas’s end
`user device can connect to various networks, including wired Ethernet, a
`
`16
`
`
`
`IPR2017-02059
`Patent 8,581,991 B1
`
`wireless Local Area Network (WLAN) or a wireless Wide Area Network
`(WWAN). Id. at 16 (citing Ex. 1006 ¶ 20). Hence, we are persuaded that
`the end user device (notebook or tablet PC) of Nicholas does not require
`connection to another device (such as another PC) in order to connect to the
`Internet.
`Patent Owner’s argument that the end user device of Nicholas acts as
`a communication base station, access point, or repeater mischaracterizes the
`disclosure of paragraph 26 of Nicholas. Paragraph 26 of Nicholas is
`referring to one exemplary mode of operation depicted in Figure 2 in which
`the end user device serves as a base station or access point for other devices
`coupled with the end user device to access the network—e.g., VoIP handset
`118 coupled to the Internet through dock 114 and end user device 100.
`See Ex. 1006, Fig. 2. In this exemplary, optional, mode of operation, the end
`user device may serve as an access point or repeater for a VoIP phone
`handset coupled to the end user device. Id. ¶ 26. However, it is evident in
`Nicholas that this is merely one possible mode of operation because
`Nicholas expressly states that Figure 2 illustrates various embodiments of
`the disclosed invention. Id. ¶ 25 (“FIG. 2 illustrates functions of an end user
`device in accordance with embodiments of the present invention.” (emphasis
`added)). The end user device of Nicholas is also capable of operating as a
`VoIP phone in other modes of operation such that it captures audio and
`video and couples directly to the Internet for storage and retrieval of such
`images. See, e.g., id. ¶¶ 20, 22–24, 27–29, 32, 34.
`Furthermore, it is well-settled that “where a disclosure was written to
`provide an optional ingredient, structure, or step, . . . the optional component
`still anticipates.” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 959 (Fed. Cir.
`
`17
`
`
`
`IPR2017-02059
`Patent 8,581,991 B1
`
`2014). Indeed, “the question whether a reference ‘teaches away’ from the
`invention is inapplicable to an anticipation analysis” because “a reference is
`no less anticipatory if, after disclosing the invention, the reference then
`disparages it.” Upsher-Smith Labs., Inc. v. Pamlab, LLC, 412 F.3d 1319,
`1323 (Fed. Cir. 2005) (citing Bristol-Myers Squibb Co. v. Ben Venue Labs.,
`Inc., 246 F.3d 1368, 1378 (Fed. Cir. 2001)). Therefore, Patent Owner’s
`“teaching away” argument based on the optional disclosures of Nicholas is
`not persuasive.
`For the above reasons, based on the current record and for purposes of
`this Decision, we are persuaded Petitioner has demonstrated a reasonable
`likelihood that it would prevail on its assertion that independent claims 22
`and 32 are unpatentable under 35 U.S.C. § 102(b) as anticipated by
`Nicholas.
`
`4. Dependent Claims 23, 25, 27–29, 33, and 35–38
`At this stage of the proceeding, Patent Owner does not address
`separately Petitioner’s explanations and supporting evidence as to how the
`disclosures of Nicholas account for the limitations of dependent claims 23,
`25, 27–29, 33, and 35–38. See Prelim. Resp. 12. We have reviewed
`Petitioner’s explanations and supporting evidence regarding these dependent
`claims, and, on the current record, we find them persuasive. See Pet. 21–24,
`30–32. Petitioner, therefore, has demonstrated a reasonable likelihood that it
`would prevail on its assertion that dependent claims 23, 25, 27–29, 33, and
`35–38 are unpatentable as anticipated by Nicholas.
`
`18
`
`
`
`IPR2017-02059
`Patent 8,581,991 B1
`
`
`D. Obviousness Over the Combination of Inoue and Nair
`Petitioner contends claims 22, 23, 25, 27–29, 32, 33, and 35–38 are
`unpatentable as obvious under 35 U.S.C. § 103(a) over the combined
`teachings of Inoue and Nair. Pet. 32–54. Petitioner explains how this
`proffered combination teaches or suggests the subject matter of each
`challenged claim, and provides reasoning as to why one of ordinary skill in
`the art would have been prompted to modify or combine the teachings of
`these references. Id. Petitioner also relies on the Declaration of Dr.
`Madisetti to support its positions. Id. For the reasons discussed below, we
`are persuaded that Petitioner has demonstrated a reasonable likelihood that it
`will prevail in challenging claims 22, 23, 25, 27–29, 32, 33, and 35–38 as
`obvious over the combination of Inoue and Nair.
`
`
`1. Relevant Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which the subject matter
`pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The
`question of obviousness is resolved on the basis of underlying factual
`determinations, including: (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of skill in the art;5 and (4) where in evidence, so-called secondary
`
`
`5 Relying on the testimony of Dr. Madisetti, Petitioner offers an assessment
`as to the level of skill in the art at the time of the invention of the ’991
`
`19
`
`
`
`IPR2017-02059
`Patent 8,581,991 B1
`
`considerations.6 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We
`analyze this asserted ground based on obviousness with the principles
`identified above in mind.
`
`2. Overview of Inoue (Ex. 1008)
`Inoue describes a digital camera connected to a file server over a
`network. Ex. 1008, Abstract. According to Inoue, when the digital camera
`is powered on, it automatically establishes a network connection with the
`file server in an activation process. Id. When the digital camera captures an
`image, the image is transmitted automatically to the file server upon
`completion of the encoding and compression of the image. Id. The digital
`camera may also download an image from the file sever over the network
`and display the image on the digital camera. Id.
`
`
`patent. Pet. 11 (citing Ex. 1011 ¶¶ 56–59). At this time, Patent Owner does
`not propose an alternative assessment. To the extent necessary, and for
`purposes of this Decision, we accept the assessment offered by Petitioner as
`it is consistent with the ’991 patent and the asserted prior art.
`6 Patent Owner does not present arguments or evidence of such secondary
`considerations in its Preliminary Response.
`20
`
`
`
`IPR2017-02059
`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.
`In another embodiment, digital camera 10 includes card slot 20 for
`loading option card 68, which may be a communication card or a memory
`card. Id. ¶¶ 49, 56. If a communication card is loaded in card slot 20,
`communication control unit 72 of digital camera 10 and the communication
`card operate in conjunction with each other to establish a network
`connection with file server 100 for transmitting or downloading images to or
`from file server 100. Id. ¶¶ 56, 62, 66. If, on the other hand, option card 68
`loaded in card slot 20 is a memory card, communication with file server 100
`
`21
`
`
`
`IPR2017-02059
`Patent 8,581,991 B1
`
`is not feasible, and digital camera 10 stores the captured images to the
`memory card. Id. ¶¶ 63, 69.
`
`3. Overview of Nair (Ex. 1007)
`Nair describes a system and a method for seamless roaming between
`wireless networks, such as seamless switching of a wireless device between
`wireless wide area networks (“WWANs”) and wireless local area networks
`(“WLANs”). Ex. 1007 ¶ 3, Abstract. According to Nair, WWANs are used
`by traditional cellular companies to provide high-mobility access (e.g., for
`users moving in cars) over a broad coverage area. Id. ¶ 5.
`The disclosed method includes automatically detecting the available
`WWANs and WLANs, selecting one of the available networks for use by the
`wireless device, and connecting the wireless device to the selected network.
`Id., Abstract. Nair also describes maintaining the network connection by
`monitoring the connection and, upon determining that the connection has
`been lost, selecting another available network for use and connecting the
`wireless device to the other network. Id.,
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
