Apple Inc.v.e-Watch, Inc.

Patent Trial and Appeal Board

May 7, 2015

10336470 (P.T.A.B. May. 7, 2015)

Trials@uspto.gov Paper 12
Tel: 571-272-7822 Entered: May 7, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

APPLE INC.,
Petitioner,

v.

E-WATCH, INC.,
Patent Owner.
____________

Case IPR2015-00411
Patent 7,365,871 B2
____________

Before JAMESON LEE, GREGG I. ANDERSON, and
MATTHEW R. CLEMENTS, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
On December 11, 2014, Petitioner (“Apple”) filed a Petition
requesting an inter partes review of claims 1–15 of U.S. Patent
No. 7,365,871 B2 (Ex. 1001, “the ’871 patent”). On April 9, 2015, Patent
Owner, e-Watch, Inc. (“e-Watch”), filed a Preliminary Response (Paper 11,
“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314.
The standard for instituting an inter partes review is set forth in
35 U.S.C. § 314(a) which provides:
THRESHOLD.—The Director may not authorize an inter
partes review to be instituted unless the Director determines
that the information presented in the petition filed under section
311 and any response filed under section 313 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.

Upon consideration of the Petition and the Preliminary Response, we
determine that Apple has not demonstrated a reasonable likelihood of
prevailing in showing the unpatentability of any of claims 1–15 of the ’871
patent. Accordingly, we do not institute an inter partes review for any of
these challenged claims.
A. Related Proceedings
Apple identifies these related cases involving the ’871 patent: (1) e-
Watch, Inc. v. Apple Inc., No. 2:13-CV-1061 (JRG/RSP) (E.D. Tex.), to
which the following case numbers in the same tribunal are consolidated:
CV-1062, 1063, 1064, 1069, 1070, 1071, 1072, 1073, 1074, 1075, 1077, and
1078; (2) IPR2014-00439 (PTAB); (3) IPR2014-00987 (PTAB); (4)
IPR2015-00412 (PTAB); (5) IPR2015-00413 (PTAB); (6) IPR2014-00402
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(PTAB); (7) IPR2014-00404 (PTAB); (8) IPR2014-00406 (PTAB); (9)
IPR2015-00541 (PTAB); (10) IPR2015-00610 (PTAB); and (11) IPR2015-
00612 (PTAB). Paper 2, 51; Paper 9, 1. e-Watch identifies an additional
civil action involving the ’871 patent: e-Watch, Inc. v. Huawei Technologies
Co., Ltd., No. 2:13-CV-01076 (E.D. Tex.). Paper 4, 3.
B. The ’871 Patent
The ’871 patent relates generally to “image capture and transmission
systems and is specifically directed to an image capture, compression, and
transmission system for use in connection with land line and wireless
telephone systems.” Ex. 1001, 1:17–20. According to the ’871 patent, the
system “is particularly well suited for sending and/or receiving images via a
standard Group III facsimile transmission system and permits capture of the
image at a remote location using an analog or digital camera.” Id. at 5:3–6.
Figure 1 of the ’871 patent is reproduced below.

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Figure 1 is a block diagram of a basic facsimile camera configuration for
capturing an image via a camera and transmitting it via Group III facsimile
transmission to a standard hard copy medium. Id. at 4:27–30.
Figure 7A of the ’871 patent is reproduced below.

Figure 7A depicts “a hand[-]held device for capturing, storing, and
transmitting an image in accordance with the invention.” Id. at 4:46–48,
11:3–20.
C. Illustrative Claim
Of the challenged claims, claims 1, 6, 9, and 12 are independent.
Claim 1 is reproduced below:
1. A handheld self-contained cellular telephone and
integrated image processing system for both sending and
receiving telephonic audio signals and for capturing a visual
image and transmitting it to a compatible remote receiving
station of a wireless telephone network, the system comprising:
a manually portable housing;
an integral image capture device comprising an electronic
camera contained within the portable housing;
a display for displaying an image framed by the camera,
the display being supported by the housing, the display and the
electronic camera being commonly movable in the housing
when the housing is moved by hand;
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a processor in the housing for generating an image data
signal representing the image framed by the camera;
a memory associated with the processor for receiving and
storing the digitized framed image, accessible for selectively
displaying in the display window and accessible for selectively
transmitting over the wireless telephone network the digitized
framed image;
a user interface for enabling a user to select the image
data signal for viewing and transmission;
a telephonic system in the housing for sending and
receiving digitized audio signals and for sending the image data
signal;
alphanumeric input keys in the housing for permitting
manually input digitized alphanumeric signals to be input to the
processor, the telephonic system further used for sending the
digitized alphanumeric signals;
a wireless communications device adapted for
transmitting any of the digitized signals to the compatible
remote receiving station; and
a power supply for powering the system.
Ex. 1001, 14:4915:13.
D. Prior Art Relied Upon
Apple relies on Int. Pub. Pat. App. WO 99/035818 (Ex. 1002,
“Monroe”). Pet. 7.
E. The Asserted Ground of Unpatentability
Apple asserts that claims 1–15 of the ’871 patent are
unpatentable under 35 U.S.C. § 102(b) as anticipated by Monroe.
Pet. 7.

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II. ANALYSIS
First, we review the status of Monroe as prior art against the ’871
patent. Monroe was published on July 15, 1999. Ex. 1002 [43]. The ’871
patent issued from Application 10/336,470, filed on January 3, 2003 (“the
child ’470 application”), and is a divisional application of Application
09/006,073 (“the parent ’073 application”), filed on January 12, 1998.
Ex. 1001 [21], [22], [62]. If Monroe is not prior art with respect to the
claims of the ’871 patent, then we would not institute an inter partes review
in this proceeding because the only ground of unpatentability asserted by
Apple is based on Monroe.
Apple contends that the claims of the ’871 patent are not entitled to
the earlier filing date of the parent ’073 application under 35 U.S.C. § 120,
not because any claim is without written description support or enabling
disclosure in the parent ’073 application, but because of lack of co-pendency
between the child ’470 application and the parent ’073 application. Pet. 4–5,
10–21. According to Apple, because the ’871 patent is not entitled to the
1998 filing date of the parent ’073 application, Monroe, with its publication
date in 1999, constitutes prior art under 35 U.S.C. § 102(b) to the claims of
the ’871 patent, filed on January 3, 2003. Pet. 5.
Had Apple’s argument been that the parent ’073 application does not
support the subject matter of the challenged claims, and had Apple identified
specific claim limitations in that regard, e-Watch would have to show that
the challenged claims are entitled to the earlier effective filing date of the
parent ’073 application. Here, however, Apple asserts only lack of co-
pendency between the parent ’073 application and the child ’470 application.
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Moreover, Apple asserts lack of co-pendency in a manner that amounts to a
collateral attack on a petition decision, in 2003, of an official of the Patent
and Trademark Office regarding the status of the parent ’073 application.
Specifically, the parent ’073 application was abandoned for failure of
the Applicant to file a timely response to an Office Action mailed August
29, 2000, and a Notice of Abandonment, notifying the Applicant of that
circumstance, was mailed on April 10, 2001. Ex. 1003, 595–597. The child
’470 application was filed on January 3, 2003, together with a petition to
revive the parent ’073 application (“Petition to Revive Parent ’073
Application”) on the basis of “unintentional abandonment.” Ex. 1003, 598–
599, 602. The Petition to Revive Parent ’073 Application was granted on
March 11, 2003. Ex. 1003, 603–604. Revival of the parent ’073 application
thus provided the co-pendency between the parent ’073 application and the
child ’470 application to permit the ’871 patent to have the benefit of the
earlier filing date of the parent ’073 application, i.e., January 12, 1998.
1

According to Apple, the parent ’073 application was “purposefully”
abandoned on March 1, 2001, and thus the parent ’073 application should
not have been revived, by way of the Petition to Revive, as “unintentionally”
abandoned. Pet. 10, 17. Apple asserts that the granting, on March 11, 2003,
of the Petition to Revive Parent ’073 Application was incorrect. Pet. 13.
Apple has not identified proper jurisdiction or authority of the Board
either (1) to review and overturn the March 11, 2003, decision of the Patent

1
Under 35 U.S.C. § 120, “An application for patent for an invention
disclosed . . . in an application previously filed in the United States . . . shall
have the same effect . . . as though filed on the date of the prior application,
if filed before the patenting or abandonment of . . . the first application. . . .”
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and Trademark Office on the Petition to Revive Parent ’073 Application, or
(2) to ignore that decision and make our own determination on whether the
parent ’073 application should have been revived on the basis of
“unintentional” abandonment. In that connection, Apple states:
Petitioner respectfully submits that the Board has the
authority to evaluate evidence and render decisions on factual
and legal issues involving priority claims and the status of a
reference as prior art in instituting the instant Petition. See,
e.g., IPR2014-00439, Paper 16, pp. 5–8 (where the Board
rendered a decision on the insufficiency of an inventor affidavit
as to diligence in reduction to practice during prosecution
(which impacted the alleged invention date) and made an
associated determination as to the availability of a reference as
prior art).
Pet. 5. The contention is misplaced.
Not all issues having an impact on determination of
patentability are the same. Where the issue is the status of an applied
reference as prior art, viewed in light of a patent owner’s effort to
antedate the date of the reference, as in the case of IPR2014-00439,
we can review the evidence submitted to show a date of invention
prior to the date of the reference. That issue is substantive and central
to the merit of the patentability determination. On the other hand,
where the issue is the status of an application as abandoned or
revived, the matter is procedural and not central to the substantive
merit of a patentability determination. We have jurisdiction to review
and determine the former, not the latter. Furthermore, we note also
that “PTO revival actions are not subject to third party challenge
under the APA.” Exela Pharma Sciences, LLC v. Lee, 781 F.3d 1349,
1353 (Fed. Cir. 2015).
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Apple does not dispute that the parent ’073 application was
revived from abandonment to pending status on March 11, 2003.
That fact may not be changed or undone by any decision of the Board
in this proceeding. Consequently, Apple has not identified any matter
that needs to be addressed or otherwise accounted for by e-Watch, in
this proceeding, with regard to according the challenged claims of the
’871 patent the earlier filing date of the parent ’073 application.
The unchangeable fact is that the child ’470 application was
filed on January 3, 2003, and that the parent ’073 application was, on
March 11, 2003, revived from abandonment, and thus, there was the
necessary co-pendency between the parent ’073 application and the
child ’470 application to accord the latter the filing date of the former.
Because Monroe was published on July 15, 1999, and because
Apple asserts only a lack of co-pendency between the parent ’073
application and the child ’470 application as the basis for not
according the challenged claims a priority date of January 12, 1998,
Apple has not shown sufficiently that Monroe constitutes prior art to
any challenged claim of the ’871 patent.
III. CONCLUSION
For the foregoing reasons, Apple has not shown a reasonable
likelihood that it would prevail in establishing the unpatentability of any of
claims 1–15 of the ’871 patent on any alleged ground of unpatentability.
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IV. ORDER
Accordingly, it is
ORDERED that the Petition is denied as to all challenged claims of
the ’871 patent; and
FURTHER ORDERED that no inter partes review is instituted.

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FOR PETITIONER:
Brian Buroker
Blair Silver
bburoker@gibsondunn.com
bsilver@gibsondunn.com

FOR PATENT OWNER:
Robert C. Curfiss
David O. Simmons
bob@curfiss.com
dsimmons@sbcglobal.net