Apple Inc.v.e-Watch, Inc.

Patent Trial and Appeal Board

May 6, 2016

10336470 (P.T.A.B. May. 6, 2016)

Trials@uspto.gov Paper 50
Tel: 571-272-7822 Entered: May 6, 2016
UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
___________

APPLE INC.,
ZTE CORPORATION and ZTE (USA) INC.,
Petitioners,

v.

e-WATCH, INC.,
Patent Owner.
___________

Case IPR2015-00412
Case IPR2015-013661
Patent 7,365,871 B2
____________

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

LEE, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

1 IPR2015-01366 has been joined with IPR2015-00412. There are two
petitioners: (1) Apple Inc. and (2) ZTE Corporation and ZTE (USA) Inc.
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I. BACKGROUND
A. Introduction
In IPR2015-00412, Apple Inc. (“Apple”) filed a petition (Paper 2,
“Pet.”) to institute an inter partes review of claims 1–8 and 12–14 of U.S.
Patent No. 7,365,871 B2 (Ex. 1001, “the ’871 patent”). eWatch, Inc. (“e-
Watch”) filed a Preliminary Response (Paper 11). On May 11, 2015, we
issued a Decision (Paper 12 “Inst. Dec.”) instituting trial on claims 1–8 and
12–14 of the ’871 patent. e-Watch filed a Patent Owner Response (Paper 19,
“PO Resp.”), and Apple filed a Reply (Paper 30, “Reply”).
After institution of trial in IPR2015-00412, ZTE Corporation and
ZTE (USA) Inc. (“ZTE”) filed a petition in IPR2015-01366 to institute an
inter partes review of claims 1–8 and 12–14 of the ’871 patent on the same
ground for which we instituted trial in IPR2015-00412, and also a Motion
for Joinder to join IPR2015-01366 with IPR2015-00412. On September 16,
2015, we instituted trial in IPR2015-01366 and granted the Motion for
Joinder, on the conditions that (1) Apple Inc. will not rely on ZTE’s petition
or ZTE’s witness Tim A. Williams, (2) ZTE has no participation in the joined
proceeding except for the opportunity to continue as sole petitioner if Apple
settles with e-Watch, and (3) ZTE withdraws reliance on its technical
witness as well as all arguments submitted in its own petition, and relies,
instead, solely on Apple’s petition and technical witness. IPR2015-01366,
Papers 8, 9; IPR2015-00412, Paper 23.
Apple and ZTE collectively will be referred to as “Petitioners.” e-
Watch will be referred to as Patent Owner. Hereinafter, all paper numbers
refer to entries in IPR2015-00412.
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Oral Hearing was held on January 8, 2016. A transcript of the Oral
Hearing is included in the record. Paper 49 (“Tr.”).
Petitioners have shown by a preponderance of the evidence that each
of claims 12–14 of the ’871 patent is unpatentable. Petitioners, however,
have not shown by a preponderance of the evidence that any one of claims
1–8 is unpatentable.
B. Related Proceedings
Apple identifies these related cases involving the ’871 patent: (1) E-
Watch, Inc. and E-Watch Corporation 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) IPR2015-00411 (PTAB); (5) IPR2015-
00413 (PTAB); (6) IPR2015-00402 (PTAB); (7) IPR2015-00404 (PTAB);
(8) IPR2015-00406 (PTAB); (9) IPR2015-00541 (PTAB); (10) IPR2015-
00610 (PTAB); and (11) IPR2015-00612 (PTAB). Paper 2, 50–51; Paper 9,
1. Patent Owner e-Watch identifies an additional civil action involving the
’871 patent: e-Watch, Inc. and e-Watch Corporation v. Huawei Technologies
Co., Ltd. and Huawei Technologies USA, Inc., No. 2:13-CV-01076 (E.D.
Tex.). Paper 4, 3. ZTE did not identify any additional related proceeding.
C. 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
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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.

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.
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Of the challenged claims, claims 1, 6, and 12 are independent.
Representative claims 1, 6, and 12 are 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;
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.
Id. at 14:49−15:13.
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6. A handheld cellular telephone having an integrated
electronic camera for both sending and receiving telephonic
audio signals and for capturing a visual image, converting the
visual image to a digitized image data signal and transmitting
digitized image data signal via a cellular telephone network, the
cellular telephone comprising:
a manually portable housing supporting the cellular telephone
and the integrated electronic camera, the cellular telephone
and the integrated electronic camera being movable in
common with the housing;
a cellular telephone in the housing, the cellular telephone further
including a transmitter/receiver for transmitting and receiving
audio telephone messages over a cellular telephone network,
a keypad for entering manually input alphanumeric signals to
be transmitted over the cellular telephone network, and a
display window for viewing the manually input alphanumeric
signals[;]
an integral electronic camera in the housing, the camera for
visually framing a visual image to be captured;
a processor associated with the electronic camera for capturing
and digitizing the framed image in a format for transmission
over the cellular telephone network via the cellular telephone;
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 cellular telephone network
the digitized framed image;
a user interface for enabling a user to selectively display the
digitized framed image in the display window and
subsequently transmit the digitized framed image over the
cellular telephone network; and
an integrated power supply for powering both the cellular
telephone and the camera.
Id. at 15:33–67.
12. A combination of handheld wireless telephone and digital
camera comprising:
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a handheld housing which supports both the wireless telephone
and the digital camera, the wireless telephone and the
electronic camera being commonly movable with the
housing;
a display supported in the housing for framing an image to be
captured and for viewing the image, whereby an operator can
view and frame the image prior to capture;
a processor for processing the image framed by the camera for
generating a digitized frame image as displayed in the
display;
a memory associated with the processor for receiving and storing
the digitized framed image, for selectively displaying in the
display window and for selectively transmitting over a
wireless telephone network the digitized framed image;
the wireless telephone being selectively operable to accept and
digitize audio signals to be transmitted, the wireless telephone
being selectively operable to convert received digitized audio
signals into acoustic audio, the wireless telephone being
selectively operable to transmit and receive non-audio digital
signals, the non-audio digital signals including a selected
digitized framed image;
a set of input keys supported by the housing to permit
alphanumeric signals to be manually input by an operator into
the wireless telephone, the alphanumeric signals being
presented in the in the display for viewing by the operator;
a power supply supported by the housing;
the wireless telephone including a wireless transmitter/receiver
for transmitting digital signals sent from and receiving digital
signals sent to the wireless telephone; and
at least one camera control circuit connected to an input device
for controlling at least one of the following functions: gain,
pedestal, setup, white clip, lens focus, white balance, lens iris,
lens zoom.
Id. at 16:51–18:2.

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D. Evidence Relied Upon by Petitioners
Petitioners rely on the following prior art:
Reference Date Exhibit
No.
McNelley US Pat. No. 5,550,754 08/27/1996 Ex. 1006
Umezawa US Pat. No. 5,491,507 02/13/1996 Ex. 1007
Petitioners also rely on the Declarations of Mr. Steven Sasson.2
Exs. 1008, 1014 (Ex. 1014 was filed in support of Petitioners’ Reply).
E. The Asserted Ground of Unpatentability
Basis Reference(s) Claim(s)
§ 103(a) McNelley and Umezawa 1–8 and 12–14

II. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b); In re
Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278 (Fed. Cir. 2015), cert.
granted sub nom. Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 890 (mem.)
(2016). Consistent with the rule of broadest reasonable interpretation, claim
terms also are given their ordinary and customary meaning, as would be
understood by one of ordinary skill in the art in the context of the entire

2 Patent Owner, in its Patent Owner Response, relies on the Declaration of
Dr. Jose Luis Melendez (Ex. 2003).
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disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007); In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Although understanding the claim language may be aided by
explanations contained in the written description, it is important not to
import claim limitations that are not a part of the claim. SuperGuide Corp.
v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). For example, a
particular embodiment appearing in the written description may not be read
into a claim when the claim language is broader than the embodiment. Id.;
see also In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).3 That is no
different even if the patent specification describes only a single embodiment.
See Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1372–73 (Fed.
Cir. 2014); In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed.
Cir. 2004); Liebel-Flarsheim Co. v. Medrad Inc., 358 F.3d 898, 906 (Fed.
Cir. 2004).
If a feature is not necessary to give meaning to what the inventor
means by a claim term, it would be “extraneous” and should not be read into
the claim. Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 950 (Fed. Cir.
1993); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d
1430, 1433 (Fed. Cir. 1988).
If a patentee desires to be his or her own lexicographer, the purported
definition must be set forth in either the specification or prosecution history.
CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).

3 A patent applicant is not required to describe explicitly in the specification
every embodiment of the invention. See LizardTech, Inc. v. Earth Res.
Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005).

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Such a definition must be set forth with reasonable clarity, deliberateness,
and precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d
1243, 1249 (Fed. Cir. 1998); In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
1994). “Absent claim language carrying a narrow meaning, the [Patent and
Trademark Office] should only limit the claim based on the specification or
prosecution history when those sources expressly disclaim the broader
definition.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); see also
Liebel-Flarsheim, 358 F.3d at 906–09.
Only terms that are in controversy need to be construed, and only to
the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman
Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid Techs., Inc. v. Am.
Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
1. “an image framed by the camera” (claim 1) /
“framing the image to be captured” (claims 2, 9, 12) /
“visually framing a visual image to be captured” (claim
6) / “framing the visual image” (claim 7)
Claim 1 recites “an image framed by the camera.” Claims 2, 6, 7, 9,
and 12 recite similar limitations. Petitioners propose that these terms be
construed to mean “obtaining data representing an image as shown on a
display.” Pet. 9–10. In our Decision to Institute Trial in IPR2015-00412
(Paper 12), we determined:
[T]he broadest reasonable interpretation of “an image
framed by the camera” is “an image having boundaries
established by the camera”; the broadest reasonable
interpretation of “framing [a/the] image to be captured” (claims
2, 9, 12) is “visually establishing the boundaries of an image to
be captured” (claim 6); and the broadest reasonable interpretation
of “framing the visual image” (claim 7) is “establishing the
boundaries of an image.”
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Subsequent to institution of trial in IPR2015-00412 and IPR2015-01366,
none of the parties disagreed with our construction. Accordingly, we adopt
these same constructions based on the full record for the reasons stated in
our Decision to Institute Trial in IPR2015-00412. Inst. Dec. 7 (Paper 12).
2. “selectively displaying” / “selectively transmitting”
and “selected digitized framed image”
Patent Owner urges that each of the terms “selectively displaying,”
“selectively transmitting,” and “selected digitized framed image” should also
be construed. PO Resp. 5. Each of the terms “selectively displaying” and
“selectively transmitting” is recited in each of independent claims 1, 6, and
12. The term “selected digitized framed image” is recited in independent
claim 12. Because Patent Owner makes of record certain portions of the
prosecution history of the ’871 patent as shedding light on the meaning of
these terms, for clarification purposes we also construe these terms.
Patent Owner contends that during prosecution of the ’871 patent,
after certain independent claims were rejected as obvious over a
combination of JP 06-268582 (“Kawazu”) and U.S. Patent No. 5,191,601
(“Ida”), Applicant argued that the invention provides “the ability for the user
to selectively transmit and display images from memory” and that “Ida
teaches transmitting a stored image from memory 24, but it is clearly shown
in the same Fig. 4 and Fig. 5 to clearly lack the ability to display stored
images on the device display of the apparatus which collects the image.” PO
Resp. 6 (quoting Ex. 2005, 60:11–16). Patent Owner further notes that the
Applicant further asserted with respect to Ida that “there is no teaching that
the ‘prescribed picture’ stored in memory is selectively displayed by the
local user so that he can determine whether to transmit it to the remote
station” and that “. . . the Ida reference, properly understood, does not
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disclose selectively displaying or transmitting a framed image that has been
stored in memory . . . .” Id. at 6–7 (quoting Ex. 2005, 61:9–11 and 61:18–
20).
Patent Owner explains that in response to the above-noted arguments
of the Applicant, a personal interview was conducted between the
Applicant’s representative and the Examiner, in response to which the
Examiner, via an Examiner’s Amendment, added the following underlined
language to independent application claims 43 and 51, respectively, which
issued as patent claims 1 and 6:
“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” [patent claim 1]; and
“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 cellular telephone network the digitized
framed image.” [patent claim 6]
PO Resp. 7–8 (citing Ex. 2006, 9–11). Patent Owner asserts that the above-
noted amendment “was specifically added to reflect the patentably
distinguishing functionality of providing the ability for the user to
selectively transmit and display images from memory.” Id. at 8.
With specific regard to “selectively transmitting,” Patent Owner
additionally refers to the following disclosures in the Specification of the
’871 patent:
Two generic configurations are shown and described, the first,
where each image is transmitted as it is captured, and the second,
which permits capture, storage, storage, and selective recall
of captured images for transmission.
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PO Resp. 8–9 (citing Ex. 1001, 5:6–10 (emphasis added)), and
The memory [can] selectively capture images, as indicated by the
operator interface/capture interface 52, or may be programmed
to selectively capture periodic images or all images. In the
embodiment shown in FIG. 2, an optional viewer device 48 is
provided. This permits the operator to recall and view all or
selective images before transmission, as indicated by the
operator interface/recall interface 54. This permits the operator
to review all images retained in the memory 46 and transmit
selective images, as desired [to the Group-III transmission
system].
Id. at 9 (citing Ex. 1001, 6:34–43 (emphasis added)).
With regard to the term “selected digitized framed image,” Patent
owner relies on the same disclosures quoted above in connection with the term
“selectively transmitting.” Id. at 9–10.
Based on the above-noted contentions, Patent Owner asserts:
“selectively displaying” refers to displaying a digitized
framed image that has been selected from among a plurality of
digitized framed images that are within memory.
“selectively transmitting” refers to transmitting a digitized
framed image that has been selected from a plurality of digitized
framed images that are within memory.
“selected digitized framed image” refers to a digitized
framed image that has been selected from among a plurality of
digitized framed images that are within the memory.
Id. at 8–10. Despite the representations made by Patent Owner regarding the
exchanges between the Applicant and the Examiner during prosecution, we
agree with Petitioners that Patent Owner’s proposed constructions for these
terms are excessively narrow under the rule of broadest reasonable
interpretation.
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The prosecution history recounted by Patent Owner above indicates
that the articulated distinction from the Ida reference centers on Ida’s failure
to describe displaying an image selected from within the memory. Whether
Ida’s memory stores one image or a plurality of images was not of
significance. Under this circumstance, it is not justifiable, under the rule of
broadest reasonable interpretation, to require a selection from among a
plurality of images stored in memory. The claims are broad enough to
encompass storing just one image in memory and having that image selected
for displaying and for transmission. The fact that the Specification of the
’871 patent discloses embodiments in which more than one images is stored
in memory does not justify importing limitations from the Specification into
the claims. See SuperGuide Corp., 358 F.3d at 875.
We find no express definition in the Specification of the ’871 patent
or in any of the prosecution history identified by Patent Owner, for the terms
at issue here, much less one set forth with reasonable clarity, deliberateness,
and precision. If a patentee desires to be his or her own lexicographer, the
purported definition must be set forth in the specification or prosecution
history. CCS Fitness, Inc., 288 F.3d at 1366. Such a definition must be set
forth with reasonable clarity, deliberateness, and precision. Renishaw PLC,
158 F.3d at 1249; Paulsen, 30 F.3d at 1480. Patent Owner also identifies
nothing in the Specification or prosecution history of the ’871 patent that
constitutes a disclaimer or disavowal with regard to these terms that is
sufficiently specific so as to require the storage of more than one image in
the memory.
In patent law, “the name of the game is the claim.” In re Hiniker Co.,
150 F.3d 1362, 1369 (Fed. Cir. 1998). Section 112 of the 1952 Patent Act
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requires that the claims themselves set forth the limits of the patent grant.
Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc).
It is well settled that a particular embodiment appearing in the written
description may not be read into a claim when the claim language is broader
than the embodiment. SuperGuide Corp., 358 F.3d at 875; In re Van Geuns,
988 F.2d at 1184. That is no different even if the patent specification
describes only a single embodiment. See Hill-Rom Servs., Inc., 755 F.3d at
1372–73 (“[e]ven when the specification describes only a single
embodiment, the claims of the patent will not be read restrictively unless the
patentee has demonstrated a clear intention to limit the claim scope using
‘words or expressions of manifest exclusion or restriction’”); In re Am.
Acad. of Sci. Tech. Ctr., 367 F.3d at 1369 (“We have cautioned against
reading limitations into a claim from the preferred embodiment described in
the specification, even if it is the only embodiment described, absent clear
disclaimer in the specification.”); Liebel-Flarsheim Co., 358 F.3d at 906. As
the U.S. Court of Appeals for the Federal Circuit stated, “[a]bsent claim
language carrying a narrow meaning, the PTO should only limit the claim
based on the specification or prosecution history when those sources
expressly disclaim the broader definition.” In re Bigio, 381 F.3d at 1325.
No disclaimer or disavowal, sufficient to limit the claims to storing more
than one image in memory, has been identified by Patent Owner.
For the foregoing reasons, we construe these terms as follows:
“selectively displaying” means displaying a digitized
framed image that has been selected from at least one image
stored within memory.
“selectively transmitting” means transmitting a digitized
framed image that has been selected from at least one image
stored within memory.
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“selected digitized framed image” means a digitized
framed image that has been selected from at least one image
stored within memory.
B. Obviousness of Claims 1–8
and 12–14 over McNelley and Umezawa
A patent 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 said
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 ordinary skill in the art; and (4) objective evidence of
nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
With regard to the level of ordinary skill in the art, the Petition itself
does not expressly set forth a definition. Patent Owner asserts:
The technical art associated with the ’871 Patent relates to the
field of integrating a camera together with a mobile phone to
create a device capable of both audio and image communications
on cellular networks. A person of ordinary skill in the relevant
art (“POSITA”) of the ’871 Patent would have had at least a
bachelor’s degree and/or relevant professional experience in
electrical engineering, computer science, or a related field, and
at least one year of experience related to the design of both
cellular communications devices and digital imaging products.
PO Resp. 3–4. We are not persuaded that one with ordinary skill in the art
necessarily would have had experience in designing cellular
communications devices. Based on the Specification of the ’871 patent, we
determine that the invention is not about achieving improvements in cellular
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communication technology. Rather, it is necessary for one with ordinary
skill in the art only to be familiar with what a cellular communication
network required as an input source and what the expected format and/or
protocol would be for sending and receiving information to and from the
cellular network. It is noted that even Patent Owner’s stated definition does
not require any actual experience in designing cellular communication
devices, but just experience “related to” the design of cellular
communication devices. Other than the foregoing, we determine that no
express finding is necessary, on this record, and that the level of ordinary
skill in the art is reflected by the prior art of record. See Okajima v.
Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d
1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
1. McNelley (Exhibit 1006)
McNelley discloses a combination portable recording video camera
and video-conferencing terminal. Ex. 1006, Abstr. McNelley describes its
device as a “telecamcorder configured for use as a self-contained
teleconferencing terminal as well as a camcorder.” Id. at 6:35–37. The
device includes an integrated phone, camera, microphone, speaker, display,
and antenna for transmission/reception of images and sound. Id. at Fig. 8,
6:35–58, 7:24–38.
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Figures 6–8 of McNelley are reproduced below:

Figure 6 illustrates a preferred placement of the camcorder camera in
relation to the teleconferencing display. Id. at 3:14–15. Figure 7 illustrates
a preferred captured image of a conferee. Id. at 3:16–17. Figure 8 illustrates
a configuration of a complete telecamcorder terminal. Id. at 3:18–19.
Speaker 112 and microphone 114 together serve as a built-in speaker phone.
Id. at 7:31–32. The provision of handset 174 in addition to or in lieu of
built-in speaker phone is optional. Id. at 7:39–41. Figure 8 shows the
telecamcorder in teleconferencing mode where camera 102 is pointed in the
same direction as the viewing side of display 100. Id. at 6:37–39. Camera
102 is placed above display 100 along center axis 150, thus permitting
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straight-on face-to-face conversation. Id. at 43–45. Microphone 114, light
152, and camera 102 are contained in rotatable camera boom 156. Id. at 45–
48. Optional handset 174, including microphone 176 and speaker 178,
functions like a traditional phone and can be connected directly to main
housing 148 by line 184 via common phone jacks. Id. at 7:41–44. Handset
174 also includes network access controls 186, telecamcorder controls 188,
and latch 190 that mates with latch 92 on main housing 148. Id. at 7:58–61.
2. Umezawa (Exhibit 1007)
Umezawa discloses a video telephone in a casing for holding in one
hand, which permits a user to transmit and receive pictures and speech.
Ex. 1007, Abstr. The video telephone includes a microphone, a speaker, a
display panel, a control panel, and a camera. Id. Figure 1 of Umezawa is
reproduced below:

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Figure 1 shows a perspective external view of an embodiment of a video
telephone according to Umezawa. Id. at 4:24–26.
As shown in Figure 1, Umezawa’s video telephone 1 has body 2.
Ex. 1007, 5:31–34. Mounted on body 2 are camera 3, speaker 6 within ear
pad 4, display panel 11, transmission/reception key 12, termination key 13,
control panel 14, functional keys 15, and microphone 16. Id. at 5:35–49.
Umezawa’s Figure 3 is reproduced blow.

Figure 3 is an exploded view of Umezawa’s video telephone, illustrating
various components within the video telephone. Id. at 4:30–31. The video
telephone includes circuit board 17 containing a processor and a memory,
communication device 18, speaker 6, liquid crystal display panel 11, control
circuit board 20, microphone 16, battery 90, antenna 21, and camera 3.
Id. at 5:53–62.
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3. Claims 1, 6, and 12
With respect to claims 1 and 6, as explained below, Petitioner has not
established the unpatentability of either claim by a preponderance of the
evidence. With respect to claim 12, notwithstanding the arguments and
evidence presented by Patent Owner, which are discussed below, we are
persuaded by the arguments and evidence presented by Petitioners. Claim
12 has been shown as unpatentable by a preponderance of the evidence.
We specifically discuss only a representative sample of Petitioners’
positions with regard to claim 12, because Patent Owner is deemed to have
admitted those aspects of the ground of unpatentability that are uncontested
by Patent Owner and are material facts. See 37 C.F.R. § 42.23(a); see also
Paper 13, 3 (“The patent owner is cautioned that any arguments for
patentability not raised in the response will be deemed waived.”).
Preamble Recitations
Claim 1, in its preamble, recites: “[a] handheld self-contained cellular
telephone and integrated image processing system.” Ex. 1001, 14:49–50.
Claim 6, in its preamble, recites: “[a] handheld cellular telephone having an
integrated electronic camera.” Id. at 15:33–34. Claim 12, in its preamble,
recites: “[a] combination of handheld wireless telephone and digital
camera.” Id. at 16:51–52. As discussed above, McNelley describes its
device as a “telecamcorder configured for use as a self-contained
teleconferencing terminal as well as a camcorder.” Ex. 1006, 6:35–37. The
device includes an integrated phone, camera, microphone, speaker, display,
and antenna for transmission/reception of images and sound. Id. at Fig. 8,
6:35–58, 7:24–38. Speaker 112 and microphone 114 together serve as a
built-in speaker phone. Id. at 7:31–32. McNelley describes: “A camcorder
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(telecamcorder) of the present invention contains an integral video-phone
capable of receiving and sending teleconferencing signals . . . .” Id. at 5:1–
3. The provision of handset 174, as shown in Figure 8 of McNelley, either
additional to or in lieu of built-in speaker phone, is optional. Id. at 7:39–41.
With regard to the requirement of claims 1 and 6 that the phone is a
cellular phone, and the requirement of claim 12 that the phone is a wireless
telephone, McNelley describes: “In the near future, video-phone networks
will use one or a combination of phone lines, television cables and wireless
networks (i.e., cellular phone systems).” Id. at 14: 16-18 (emphasis added).
McNelley further states: “With a wireless network the telecamcorder can
serve as a portable wireless teleconferencing terminal much like a portable
cellular telephone.” Id. at 14:28–31.
Patent Owner argues that McNelley’s handset 174 is not a cellular
phone but operates merely as the handset component of a cordless phone
which is in part located in the main housing that is connected to a landline.
PO Resp. 25. The argument is unpersuasive. As explained above, McNelley
discloses many options for implementing the telephone. Both a traditional
phone operating through a landline and a wireless cellular phone are
disclosed as suitable implementations. Ex. 1006, 14:16–18. Furthermore, as
discussed below in the section pertaining to housing limitations, Petitioners
are not relying on McNelley’s embodiment of Figure 8 which shows handset
174 as an attached unit communicating with the remainder of telephone
components in the main housing, but on an embodiment that includes a
complete built-in telephone within the main housing.

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Patent Owner argues:
A POSITA would recognize that due to the inherent limitations
of cellular phone technology at the time of McNelley, the
telecamcorder of McNelley would not be suitable for use over a
cellular network and would understand the disclosure of
McNelley to relate only to wired connections such as a landline.
See also [EXH. 2003] at 31–34.
PO Resp. 25. The argument is unpersuasive. McNelley expressly describes
“cellular telephone systems” as an implementation alternative for its
telephone, as noted above, and the evidence cited by Patent Owner in the
above-quoted argument does not sufficiently demonstrate that cellular
telephone technology at the time of invention of the ’871 patent were
technically incapable of sending and receiving an image. Patent Owner’s
witness, Dr. Melendez, testifies on page 34 of his Declaration (cited to by
Patent Owner in the above-quoted text): “It would have been known by a
POSITA that cellular networks at the time of Umezawa were not capable of
transmitting video as would be required to use Umezawa’s invention.” Ex.
2003 ¶ 74. Umezawa, however, has an effective filing date of October 22,
1992 (Ex. 1007 [22], [30]), many years prior to the earliest possible effective
filing date to which the ’871 patent is entitled, i.e., January 12, 1998
(Ex. 1001 [62]).
Furthermore, Patent Owner itself states that “at the time of McNelley
(1994),” image transmission and reception were done “using conventional
cellular technology.” PO Resp. 15:1–3. The 1994 date of McNelley
precedes the earliest effective filing date of the ’871 patent by more than 43
months. In support of the statement that at the time of McNelley, image
transmission and reception were done using conventional cellular
technology, Patent Owner cites to Hanzo et al., Adaptive Low-Rate Wireless
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Videophone Schemes, 5(4) IEEE Transactions on Circuits and Systems for
Video Technology 305, 317 (Aug. 1995) (Ex. 2010). The article states:
Overall, using schemes similar to the proposed ones mobile
videotelephony is becoming realistic over existing mobile
speech links, such as the Pan-European GSM system [59], the
Japanese PDC [19], and the American IS-54 [20] as well as IS-
95 systems [21] at bit rates between 6.7 and 13 kbps.
Ex. 2010, 317 (emphasis added). We find that conventional cellular
technology in 1994 was available and effective to send and receive an
image. Because it was possible to transmit and receive an image over
“conventional cellular technology” in 1994 (PO Resp. 15) and even
“videotelephony [was] becoming realistic over existing mobile speech links”
in August 1995 (Ex. 2010, 317), we are not persuaded that a person of
ordinary skill in the art would have understood, as of January 12, 1998 (the
earliest possible effective filing date to which the ’871 patent is entitled),
that McNelley’s telecamcorder was unsuitable for use with a cellular
network. Even assuming that it was unsuitable for use to conduct live
teleconferencing in January 1998 over a cellular network, it still would have
been operative to send and receive an image over a cellular network. The
claims at issue do not require teleconferencing.
For the foregoing reasons, we determine that Petitioners have shown
by a preponderance of the evidence that McNelley discloses the above-
quoted elements from the preambles of claims 1, 6, and 12.
Housing Limitations
Claim 1 recites “a manually portable housing,” “an integral image
capture device comprising an electronic camera contained within the
portable housing,” a display “supported by the housing,” where “the display
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and the electronic camera being commonly movable in the housing when the
housing is moved by hand,” and “a telephone system in the housing for
sending and receiving digitized audio signals and for sending the image data
signal.” Ex. 1001, 14:54–15:5. Claim 6 recites “a manually portable
housing supporting the cellular telephone and the integrated electronic
camera, the cellular telephone and the integrated electronic camera being
movable in common with the housing,” “a cellular telephone in the
housing,” and “an integral electronic camera in the housing.” Id. at 15:39–
50. Claim 12 recites “a handheld housing which supports both the wireless
telephone and the digital camera, the wireless telephone and electronic
camera being commonly movable within the housing,” and “a display
supported in the housing for framing an image to be captured and for
viewing the image, whereby an operator can view and frame the image prior
to capture.” Id. at 16:53–59. Notwithstanding Patent Owner’s arguments,
which are discussed below, we are persuaded by Petitioners that McNelley
discloses these limitations pertaining to the housing.
Figure 8 of McNelley, reproduced above, with the built-in phone
without detachable or coupled handset 174, which is optional, shows such a
portable housing. As is stated by Petitioners, “McNelley’s telecamcorder is
both handheld and manually portable, as shown in Figs. 8 and 9 (housing
148). The operator can hold the entire unit in front of him. Ex. 1006,
McNelley, 6:35–37, 10:16–18; Ex. 1008, Sasson Decl., ¶ 37.” Pet. 16 (citing
Ex. 1006). Also as stated by Petitioners, “[t]he telecamcorder includes an
electronic video camera 102 within portable housing 148 (Figs. 8 and 9)
. . . . Ex. 1006, McNelley, 6:37–39.” Id. Further as stated by Petitioners,
“McNelley’s telecamcorder includes a display 100 for viewing an image,
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which is also operable as a view finder for framing an image. Ex. 1006,
McNelley, 6:41–43, 7:14–16.” Id. at 17. As shown in Figure 8, housing 148
supports display100, and the display and the camera are commonly movable
when housing 148 is moved. Petitioners persuasively note further that
McNelley’s camcorder contains an integral video-phone capable of receiving
and sending teleconferencing signals. Id. at 28 (citing Ex. 1006, 5:1–3).
Thus, the phone and the camera are commonly movable with the housing.
We already discussed McNelley’s disclosure that its phone can be a cellular
phone.
Patent Owner argues that each of claims 1, 6, and 12, “contemplates a
singular, “integrated housing” that holds both the cellular telephone and
image capture device, referring primarily to the preamble of claim 1. PO
Resp. 21–22. Patent Owner, however, has not identified any such
“integrated housing” limitation in any of claims 1, 6, and 12. We must be
careful not to deviate from the claim language, because, in patent law, “the
name of the game is the claim.” In re Hiniker Co., 150 F.3d at 1369. Any
rewording of the claim language may lead to different results and should be
avoided.
Nevertheless, as discussed above, all three claims 1, 6, and 12 require
a housing that contains or supports both the telephone and the image capture
device (e.g., camera). The housing that contains or supports the telephone
must also contain or support the image capture device. Also, as discussed
above, Petitioners have provided persuasive accounting for that limitation in
all three claims 1, 6, and 12, by identifying the disclosure in McNelley that
in the Figure 9 embodiment, dialing controls 186 and telecamcorder controls
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188 are built into the main housing 148 and may serve in lieu of controls on
handset 174. Ex. 1006, 8:10–14.
Patent Owner argues:
However, FIG. 9 is depicted and described as a view of FIG. 8
from another angle. “FIG. 9 shows a left side view of the
telecamcorder illustrated in FIG. 8.” Id. at 8:10–11. FIG. 8
clearly illustrates a telephone handset with a housing and
controls separate and apart from the camcorder housing 148. It
appears that FIG. 9 merely depicts the separate phone handset
174 attached to the camcorder body 148. See also [EXH. 2003]
at 31–34.
PO Resp. 24–25. The argument is unpersuasive. Although McNelley does
state that Figure 9 shows a left side view of the telecamcorder illustrated in
Figure 8 (showing an embodiment with a detached handset having a separate
housing), the statement must be read, in context, together with these two
sentences which immediately follow the statement:
This figure [Figure 9] shows the dialing controls 186 and the
telecamcorder controls 188 built into the main housing 148.
Built-in controls may serve in lieu of controls on the handset 174,
or both sets of controls may be employed on a single
telecamcorder.
Ex. 1006, 8:11–15. Reading the above-noted disclosures about Figure 9 as a
whole, it is evident that McNelley discloses a number of alternative
embodiments, one of which has the telephone, inclusive of the handset
controls, and the image capture device supported by and located within the
same housing 148. Patent Owner’s reading of McNelley fails to account for
all of McNelley’s pertinent disclosure. The left-side view of the device in
the embodiment with the built-in telephone would be similar to that of the
device in the embodiment shown in Figure 8, albeit the handset would not be
detachable or coupled by wire.
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We find that McNelley discloses the above-quoted limitations from
claims 1, 6, and 12 relating to the housing.
Processor Limitations
Claim 1 recites: “a processor in the housing for generating an image
data signal representing the image framed by the camera.” Ex. 1001, 14:61–
62. Claim 6 recites: “a processor associated with the electronic camera for
capturing and digitizing the framed image in a format for transmission over
the cellular telephone network via the cellular telephone. Id. at 15:53–56.
Claim 12 recites: “a processor for processing the image framed by the
camera for generating a digitized framed image as displayed in the display.”
Id. at 16:60–62.
Petitioners note: (1) that McNelley discloses video camera electronics
404 shown in Figure 30 which processes the output of the camera 406 into a
final video signal to be fed to the controller 400 and which are contained in
the housing, (2) that McNelley discloses the use of ASIC chips for digital
compression, (3) that McNelley discloses digital recording, and (4) that
McNelley discloses use of microprocessors for operational functions. Pet.
17. Petitioners further explain:
McNelley’s telecamcorder with integrated video-phone receives
and sends teleconferencing signals and “includes a built in
display to view an incoming teleconferencing signal and a video
pickup device that can produce an image of the operator for
transmissions during teleconferencing.” Id. at 5:1–7. The unit
includes a controller 400 that routes the teleconferencing signal
to a network access or communication electronics package 402,
which establishes contact with a network and sends and receives
audio and video signals to/from the wireless cellular network. Id.
at 21:30–36; 14:16–18. Thus, McNelley’s processing puts the
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digitized framed image data in a format for transmission over the
cellular telephone network. Ex. 1008, Sasson Decl., ¶ 85.
Pet. 33. We are persuaded that McNelley discloses the above-quoted
limitations of claims 1, 6, and 12 relating to the processor.
Memory Limitations
Claim 1 recites:
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;
Ex. 1001, 14:63–67. Claim 6 recites the same except that “over the wireless
telephone network” is changed to “over the cellular telephone network.” Id.
at 15:57–61. Claim 12 recites the same, except that “accessible for
selectively displaying” is changed to “for selectively displaying,”
“accessible for selectively transmitting” is changed to “for selectively
transmitting,” and “over the wireless telephone network” is changed to “over
a wireless telephone network.” Id. at 16:63–67. These recitations are
essentially the same.
Petitioners explain: “McNelley discloses that, for the telecamcorder
with video phone, ‘digital recording’ can be used, and that ‘digital storage
may be used.” Pet. 19 (citing Ex. 1006, 12:36–39; 20:54–66). Petitioners
note: “McNelley discloses that the ‘recording electronics processes the
signals for storage in memory 422. The memory 422 actually comprises any
type of data recording medium ranging from tape and disks to solid state
microelectronic memory.’” Id. (citing Ex. 1006, 21:23–26; Ex. 1008 ¶ 44).
Petitioners further explain, in more detail:
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McNelley also discloses the telecamcorder is applicable to any
type of network such as a wireless, cellular telephone network.
Ex. 1006, McNelley, 14:16–18; 28–31. McNelley discloses that
when “the telecamcorder is being used to make a recording, the
controller 400 conditions the audio and video signals, if
necessary, and . . . the recording electronics 420 processes the
signals for storage in memory 422,” and that later “the message
can be played back through the speaker and display 416.” Id.
at 21:19–23; 22:1–3. Also, the logic can order “the recording
electronics 420 to play the outgoing message [which was
stored in memory] which is sent out [over] connection 104 to
a remote terminal.” Id. at 21:64–67. Also, “[m]ultiple
greetings may be accessed through a menu system with multiple
message ‘boxes’ designated for receiving incoming messages.”
Id. at 13:49–52. Thus, McNelley discloses the memory being
accessible for selectively displaying and transmitting framed
images over a wireless telephone network. Ex. 1008, Sasson
Decl., ¶ 45.
Pet. 19–20 (emphases added). The description in the above-quoted text with
regard to “incoming messages” and “outgoing message” refers to images
and voice when the telecamcorder is used as a video answering machine.
Ex. 1006, 21:41–44. It is understood that the pre-stored greetings in
memory are the outgoing messages. Mr. Sasson also testifies: “Because the
digital video (audio and visual) message can be recorded and played back,
and the memory stores the messages, the memory is accessible for
transmitting and displaying selected messages.” Ex. 1008 ¶ 45.
We are persuaded that McNelley discloses the above-quoted
limitations of claims 1, 6, and 12 relating to the memory.
Alphanumeric Input Limitations
Claim 1 recites: “alphanumeric input keys in the housing for
permitting manually input digitized alphanumeric signals to be input to the
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processor, the telephone system further used for sending the digitized
alphanumeric signals.” Ex. 1001, 15:6–9. Claim 6 recites: “a keypad for
entering manually input alphanumeric signals to be transmitted over the
cellular telephone network.” Id. at 15:46–48. Claim 12 recites: “a set of
input keys supported by the housing to permit alphanumeric signals to be
manually input by an operator into the wireless telephone.” Id. at 17:9–12.
Petitioners explain:
McNelley discloses (e.g., Figs. 8 and 9) dialing controls 186 and
telecamcorder controls 188. McNelley also describes
transmission over a wireless cellular telephone network as
described above for elements [in the preamble of claim 6]. See
Ex. 1006, McNelley, 5:1–3, 6:35–37, 10:16–18, 14:28–31,
Abstract. The dialing controls 186, also referred to as network
access controls 186 (Id. at 7:58–[59], 8:11–12), are conventional
alphanumeric keypad buttons with which a POSA would have
been well familiar at the time the ’871 patent was filed, and in
the context of McNelley’s wireless cellular network, a POSA
would have understood these digitized alphanumeric signals to
be sent across the wireless network, e.g., for network access. Ex.
1008, Sasson Decl., ¶ 75.
Pet. 29–30. Petitioners further note: “Figure 9 of McNelley shows dialing
controls 186 (also called network access controls) and the telecamcorder
controls 188 built into the main housing . . . . Ex. 1006, McNelley, 8:10–13,
6:41–43, 7:58–59, 8:11–12.” Pet. 42. We are persuaded by Petitioners’
explanations.
Claim 6 recites: “a display window for viewing the manually input
alphanumeric signals.” Ex. 1001, 15:48–49. Claim 12 recites: “the
alphanumeric signals being presented in the display for viewing by the
operator.” Id. at 17:11–13. In that regard, Petitioners state:
McNelley discloses “Multiple greetings may be accessed
through a menu system with multiple message “boxes”
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designated for receiving incoming messages.” Ex. 1006,
McNelley, 13:49–52. Thus, McNelley’s display is operable to
display for viewing alphanumeric messages, e.g., the messages
navigated via the menu system. Ex. 1008, Sasson Decl., ¶ 79.
Pet. 31; see also Pet. 42–43 (making similar statement). However, we find
such explanation inadequate to meet the recited claim limitations about
presenting the alphanumeric signals in a display for viewing. Specifically,
Petitioners do not adequately explain why the fact that multiple recorded
greetings may be accessed via a menu system via alphanumeric inputs
means the alphanumeric inputs are displayed. Petitioners have identified no
such disclosure and no such assumption can or should be made.
Nevertheless, Petitioners present two alternative contentions with
regard to the limitation requiring that the manually input alphanumeric
signals be shown on the display: (1) that it was conventional in the art for
control input to be displayed when it is entered (Pet. 31 (citing Ex. 1008 ¶ 79
– Sasson Declaration)), and (2) that Umezawa discloses entering telephone
numbers, which are alphanumeric, on a user interface for its video
telephone, whereby the entered telephone numbers are displayed on display
control panel 14 (Pet. 32). Petitioners further explain that in light of
Umezawa’s teaching of displaying the manually inputted telephone numbers,
it would have been obvious to one of ordinary skill in the art to have
displayed, in McNelley’s telecamcorder, inputs manually entered through the
user interface, to confirm that the inputs are entered correctly. Pet. 32 (citing
Ex. 1008 ¶¶ 80–83).
On page 14 of the Petition, additional reasoning for combining the
teachings of McNelley and Umezawa is set forth. For instance, Petitioners
explain that it would have been obvious for one with ordinary skill in the art
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to incorporate Umezawa’s teachings about its LCD touch control panel, used
as a user interface, into McNelley’s device, to provide a more convenient
means of user control via the LCD touch control panel as a user interface.
Pet. 14. That assertion is supported by the testimony of Mr. Sasson.
Ex. 1008 ¶ 83.
We are persuaded by each of Petitioners’ two obviousness rationales,
one based on McNelley alone and the other based on the combined teachings
of McNelley and Umezawa, because both are supported by articulated
rational underpinnings. We are persuaded that it would have been obvious
to one with ordinary skill in the art to have shown on McNelley’s display the
manually inputted alphanumeric inputs. Thus, on the basis of obviousness to
one with ordinary skill in the art, and notwithstanding the Patent Owner’s
arguments, which we discuss below, this limitation of claims 6 and 12
relating to displaying the alphanumeric input is met by either McNelley
alone or by the combined teachings of McNelley and Umezawa.
Patent Owner makes a number of contentions with regard to these
limitations. PO Resp. 26–30. We address each, in turn.
Patent Owner argues that “alphanumeric” means “consisting of both
letters and numbers and often other symbols,” citing a dictionary definition
(Ex. 2009). Id. at 26. The Specification of the ’871 patent does not contain
any definition for the term “alphanumeric.” Dictionaries are a relevant
source of information, but they are not controlling. We also are cognizant
that there are numerous dictionaries and their entries for the same term are
not necessarily the same. For example, in this instance, Petitioner has
submitted two dictionary definitions for “alphanumeric” that are broader
than that offered by Patent Owner: (1) “Consisting of letters or digits, or
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both, and sometimes including control characters, space characters, and
other special characters” (Ex. 1015, 3); and (2) “[a]ny letter of the English
alphabet, upper or lower case, or any of the decimal digits, 0 to 9”
(Ex. 1016, 3). Reply 5. As discussed above, in this proceeding, we apply
the broadest reasonable interpretation, to construe the meaning of claim
terms. We note further that, as pointed out by Petitioner (Reply 5), even the
definition offered by Patent Owner indicates that an alphanumeric character
is a character in an alphanumeric system. Ex. 2009. That would mean
although a character cannot be both a letter and a numeral, it still can be an
alphanumeric character. Applying the rule of broadest reasonable
interpretation, we agree with Petitioner that “alphanumeric” is sufficiently
broad to encompass each of these three cases: all numerals, all letters, or a
combination of numerals and letters. Patent Owner’s argument to the
contrary is unpersuasive, and rejected.
Patent Owner argues that the claims require transmission of the
alphanumeric input signals to another end user’s device to be displayed on
that device for viewing by that other end user. PO Resp. 29:10–19. The
argument is unpersuasive. Patent Owner has not identified any such
limitation in any one of claims 1, 6, and 12. None of claims 1, 6, and 12
requires transmission of the alphanumeric input signals all the way to
another end user, much less the display of the transmitted alphanumeric
inputs on another end user’s device. The closest any claim limitation comes
to Petitioners’ assertion, though still falling short of Petitioners’ assertion, is
the recitation in claim 1 of: “a wireless communications device adapted for
transmitting any of the digitized signals to the compatible remote receiving
station.” Ex. 1001, 15:10–12. Even that recitation, however, does not
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mention anything about displaying of alphanumeric inputs on another device
or viewing of the alphanumeric inputs by another end user.
Patent Owner argues that the claims require transmission of the
alphanumeric input signals to the compatible remote receiving station. PO
Resp. 27:2–4, 12–13, 28:7–8, 15–18. We disagree. The closest any claim
limitation comes to Petitioners’ assertion, though still falling short of
Petitioners’ assertion, still is the recitation in claim 1 of: “a wireless
communications device adapted for transmitting any of the digitized signals
to the compatible remote receiving station.” Ex. 1001, 15:10–12. The
recitation does not require the alphanumeric input signals to be transmitted
to the remote receiving station. For this argument, the key word in the
recitation is “any,” which does not mean “each” or “all.” Under the rule of
broadest reasonable interpretation which is applicable to this proceeding, the
recitation can be met merely by transmission by the wireless communication
device of digitized image data to the compatible receiving station, and the
alphanumeric inputs need not be transmitted to the remote receiving station.
Also, Petitioners correctly note that even if claim 1’s recitation requires
transmission of alphanumeric input signals to a compatible remote receiving
station, which it does not, the remote receiving station does not have to be
another end user but can be a server on the network. Reply 7–8.
Patent Owner argues that Petitioners failed to explain how Umezawa
discloses sending messages “that include alphanumeric signals,” and notes
that the only messages discussed in the prior art are video and audio
messages as opposed to alphanumeric messages that are inputted at a device.
PO Resp. 29:5–9. The argument is not persuasive. Patent Owner has not
identified any claim limitation that requires a transmitted message to include
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in itself both the digitized image data signal and the alphanumeric inputs.
The closest claim limitations are: (1) “the telephonic system further used for
sending the digitized alphanumeric signals” (claim 1); and “a keypad for
entering manually input alphanumeric signals to be transmitted over the
cellular telephone network” (claim 6). Patent Owner does not dispute that
McNelley discloses inputting, via manual dialing controls, a telephone
number which is then sent across the wireless network to gain network
access, as we have already discussed above. The argument about sending a
message that includes both the image data signal and the alphanumeric input
signal is not based on any limitation actually present in a claim.
Patent Owner argues that McNelley “does not disclose alphanumeric
signals being sent along with digital image and/or audio signals.” PO Resp.
28:15–18. This argument essentially is the same as that alleging that a
transmitted message must include both the image data signal and the
alphanumeric input signals, which is already discussed above. The argument
is unpersuasive and rejected, because Patent Owner has not identified any
claim limitation that requires sending the alphanumeric input signals “along
with” the image data signal.
For the foregoing reasons, we determine that the combined teachings
of McNelley and Umezawa satisfy the above-quoted limitations of claims 1,
6, and 12 relating to inputting and display of alphanumeric signals.
User Interface Limitations
Claim 1 recites: “a user interface for enabling a user to select the
image data signal for viewing and transmission.” Ex. 1001, 15:1–2. Claim
6 recites: “a user interface for enabling a user to selectively display the
digitized framed image in the display window and subsequently transmit the
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digitized framed image over the cellular telephone network.” Id. at 15:62–
65. Claim 12 does not recite a “user interface.”
With respect to these limitations, Petitioners make two contentions:
(1) that McNelley itself discloses each of these limitations, and (2)
Umezawa discloses this limitation and it would have been obvious to one
with ordinary skill in the art to adopt this feature from Umezawa and
implement it in McNelley. Pet. 21–23, 35–37. Neither of these contentions
is persuasive. We discuss each below, in turn.
With regard to McNelley alone, Petitioners state:
McNelley discloses a user interface of dialing controls 186 and
the telecamcorder controls 188 built into the main housing 148
of the telecamcorder. Ex. 1006, McNelley, 8:10–15, Figs. 8 and
9. McNelley’s display 100 can be used as both a
teleconferencing display and viewfinder in both a camcorder
mode and a teleconferencing mode. Id. at 7:14–23. McNelley
discloses the ability to select the image signal for viewing and
transmission for reasons explained immediately above in claim
element claim 1(i) [i.e., the memory that is accessible for
selectively displaying and for selectively transmitting].
Id. at 21–22 (emphasis removed). With regard to McNelley alone, Petitioners
further state:
McNelley discloses both the user interface (Ex. 1006, McNelley,
8:10–15, 7:14–23, Figs. 8, 9) and the selective displaying and
selective/subsequent transmitting. Id. at 11:13–28, 14:16–18,
28–31, 21:19–23, 22:1–3, 21:64–67, 13:49–52. McNelley’s
functionality disclosed in these sections, for instance, permits a
user to display on the display viewfinder a digitized framed
image of himself, and then subsequently transmit that digitized
framed image as part of the normal teleconferencing mode.
Ex. 1008, Sasson Decl., ¶¶ 95–96.
Id. at 36. We are unpersuaded that McNelley discloses the limitations at
issue. As discussed above, “selectively displaying” means displaying a
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digitized framed image that has been selected from at least one image stored
within memory, and “selectively transmitting” means transmitting a digitized
framed image that has been selected from at least one image stored within
memory. In the context of the ’871 patent, “to select the image data signal
for viewing and transmission” does not mean something different. It also
requires selecting image data that has been stored in memory. Simply taking
a picture whereby that picture is automatically displayed when taken does
not amount to selecting an image stored in memory either for viewing or for
transmission.
None of McNelley’s disclosure identified by Petitioners conveys using
the dialing controls 186 or telecamcorder controls 188 as a user interface to
cause transmission of an image that has been selected from at least one
image stored in memory, and Petitioners have not adequately explained why
there is such disclosure in McNelley. For instance, when the video-phone is
used as an answering machine, a recorded greeting is played and transmitted
not in response to user manipulation of dialing controls 186 or
telecamcorder controls 188, but “automatically” when a ring has been
detected. Ex. 1006, 21:61–67.
Petitioners’ witness, Mr. Sasson, testifies:
Also, because the digital video (audio and visual) message of
McNelley can be recorded and played back (Id. at 11:23–28), and
the memory stores the message, the user interface is enabled for
selectively displaying and then selectively and subsequently
transmitting and selected messages, which in McNelley’s
teleconferencing context include images as well as audio.
Ex. 1008 ¶ 96. The testimony is unpersuasive because the cited portion of
McNelley does not refer to anything about transmitting an image which has
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been selected from at least one image stored in memory. The cited portion
of McNelley merely states:
Also, the recorder may record or play back a separate signal
while the audio and video-phone is in use. Both incoming and
outgoing signals may be recorded simultaneously by mixing
audio signals and screen splitting or having a picture in a picture,
so that the recorded signal will contain both images.
Ex. 1006, 11:23–28. The disclosure is about recording and playback, not
selective transmission of a recording.
Mr. Sasson further testifies to the following about McNelley:
A user can selectively choose teleconferencing mode, in which
case McNelley’s user interface thereby permits the user to
selectively display a framed digitized image, e.g., his own image,
on the display as a viewfinder and then subsequently transmit
that digitized framed image as part of the normal
teleconferencing mode.
Ex. 1008 ¶ 95. The testimony is not persuasive because Mr. Sasson does not
identify any disclosure in McNelley that during normal teleconferencing
mode, the image transmitted was stored earlier in memory and, thus, has
been selected from at least one image stored in memory. In that regard,
Mr. Sasson has not provided adequate explanation.
Mr. Sasson additionally testifies:
Also “Other answering machine features may be easily adapted
to the telecamcorder by those skilled in the art. Multiple greeting
may be accessed through a menu system with multiple message
“boxes” designated for receiving incoming messages”
[Ex. 1006,] 13:48–51.
Id. The testimony is misplaced because, at most, it would support only
selectively displaying a recorded greeting through telecamcorder controls,
not transmitting a recorded greeting in response to user manipulation of
dialing controls 186 or telecamcorder controls 188. As discussed above,
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McNelley discloses “automatically” transmitting a recorded greeting when a
ring has been detected. Ex. 1006, 21:61–64.
The deficiencies relating to the limitation at issue are persuasively
noted by Patent Owner. PO Resp. 17–19. For instance, Patent Owner states:
In the first mode, camcorder mode, videos can be taken, stored
and presumably retrieved for viewing and playback, but there is
no disclosure of transmission of the selected and
recalled/displayed video in video camera mode. Id. at 11:13–15.
In the second mode, teleconferencing mode, the captured images
are streamed in real time and no selective display or transmission
occurs. Id. at 6:35–58.
PO Resp. 17–18. Patent Owner also notes that the video answering machine
operation of McNelley involves sending a specially recorded video message
upon detection of a ring and that upon detection of a ring, the video
answering machine “automatically” transmits the video message from
memory. Id. at 18. Petitioners note that McNelley discloses that in the
answering machine mode the device can display the recorded message while
transmitting it. Reply 14. That, however, does not cure the above-noted
deficiencies, because the incoming call still is automatically answered and
the recorded message still is automatically transmitted independent of
whether the message is caused to be displayed as well by the user.
During oral argument, counsel for Petitioners provided additional
purported reasoning, i.e., that a user creating a video message recording for
McNelley’s device used as an answering machine obviously would have
selected the recorded video greeting for viewing to check if it is satisfactory
for actual use, and thus any transmission of the recorded message upon
actual use would have been a “subsequent” transmission as is required by
claim 6. Tr. 73–75. The argument is inappropriate because it is a new
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argument raised for the first time at oral argument.4 It would be unjust to
Patent Owner to consider it at this late stage, without Patent Owner having
had a fair opportunity to respond. See Dell Inc. v. Acceleron, LLC, Nos.
2015-1513, -1514, 2016 WL 1019075, at *6–7 (Fed. Cir. March 15, 2016);
CBS Interactive Inc. v. Helferich Patent Licensing, LLC, Case IPR2013-
00033, slip op. at 2–3 (PTAB October 23, 2013) (Paper 118) (discussing new
argument and demonstrative exhibits at oral hearing). Thus, the argument is
not considered. Moreover, the argument does not cure the deficiency that in
the answering machine mode, neither dialing controls 186 nor telecamcorder
controls 188 is used to cause transmission of the recorded message. During
oral argument, counsel for Petitioners presents still another new reasoning,
i.e., that if the answering machine answers two calls, then the second
transmission would be subsequent to a first display. Tr. 75:16–23. The
argument also is belatedly presented, for the first time at oral argument, and
thus it is not considered. In any event, like the first new argument
mentioned above, this new argument also does not cure the deficiency that in
the answering machine mode, neither dialing controls 186 nor telecamcorder
controls 188 is used to cause transmission of the recorded message.
With regard to its alternative contention based on the combination of
McNelley and Umezawa, Petitioners argue:

4 At oral argument, counsel for Petitioners argue that this argument was
presented in the Petition at the bottom of page 19. Tr. 74:18–75:11. We
disagree. The material at the bottom of page 19 of the Petition only explains
that the recorded message can be played back but does not carry the
contention that the recorded message would be played back to be viewed by
the user prior to its being actually transmitted over the network when the
device answers a call.
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Umezawa discloses that the video phone equipment has a
display panel 11, a transmission/reception key 12, a termination
key 13, a control panel 14, and function keys 15, and that the
control panel 14 can be a liquid-crystal panel with a touch panel,
and which displays ten-keys and several operation keys in a
rectangular compartment. Ex. 1007, Umezawa, 5:46–49; 8:23–
26. Umezawa’s user interface includes buttons for changing-
over picture frames, scrolling the picture frame, inputting
telephone numbers, and starting/stopping a video phone
transmission. Id. at Fig. 7, 8:30–35; 8:6–12; 10:3–22; 10:35–39.
Thus, Umezawa discloses the ability to select the image signal
for viewing and transmission. Ex. 1008, Sasson Decl., ¶ 52.
A POSA would have found it obvious to include in
McNelley’s device Umezawa’s processing functionality operable
with memory (as well as Umezawa’s user interface functionality)
for reasons of size reduction and convenience of operation as
explained previously above. Ex. 1008, Sasson Decl., ¶ 53. This
would have amounted to adding well known elements in
predictable ways with predictable results, and would allow the
combination to continue to operate according to the intended
purpose described in those disclosures. See, e.g., KSR, 550 U.S.
at 415–16; Ex. 1008, Sasson Decl., ¶¶ 50–53.
Pet. 22–23.
The above-quoted contention conveys that the references to
“changing-over picture frames” and “scrolling the picture frame” are
directed to changing the display to show a different stored image and
scrolling the display to show multiple stored images. However, we are not
persuaded that that is the case. As pointed out by Patent Owner (PO Resp.
19), the references refer, instead, to changing to a different user-interface
screen and scrolling through different user interface screens on the control
panel of the device. For instance, Umezawa states:
As best shown in FIG. 1, the function keys 15 consist of a
button 15a for changing-over the visual telephone function and
vocal telephone function of the equipment 1, a button 15b for
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changing-over the picture frames of the control panel, and
buttons 15c, 15d for scrolling the picture frame of the control
panel 14.
Ex. 1007, 8:30–35. The above-quoted text relates to the functionalities on
the displayed control panel and switching among different control panel
screens, rather than selective display and transmission of a stored image.
Petitioners have not adequately explained why the disclosure is about
switching among stored images and transmitting a stored image. The cited
portions of Umezawa does not support a finding that Umezawa discloses
displaying an image that has been selected from at least one image stored in
memory, or transmitting an image that has been selected from at least one
image stored within memory. Mr. Sasson testifies with respect to Umezawa:
“‘Therefore, the user can perform, not only a visual communication which is
based on the photographing of his/her face, but also a visual communication
during which the third party or a scene is being photographed.’” Ex. 1008
¶ 52 (quoting Ex. 1007, 10:35–39). That testimony is unhelpful to
Petitioners, because it does not explain, much less establish, that Umezawa
displays and transmits an image that has been selected from at least one
image stored within memory.
In their Reply, Petitioners switch gears and make two new contentions
with regard to Umezawa: (1) It would have been obvious to one with
ordinary skill in the art, in light of Umezawa’s disclosure of changing over
the screen of the control panel to a different look or scrolling through
multiple such display screens for the control panel, to scroll through and
select among multiple captured images stored in McNelley’s memory for
display; and (2) Umezawa discloses a pause button the activation of which
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by the user causes a specific picture, such as one “which is blue over the
whole area thereof,” to be transmitted (Ex. 1007, 8:15–19). Reply 14–15.
Both contentions, as pointed out by Patent Owner at oral argument
(Tr. 38–39, 70), constitute new argument belatedly presented. As such, they
are improper and we decline to consider them. The Petition did not mention
the pause button in Umezawa, and did not take the approach that changing
among different control screens renders obvious selecting for display a
captured image that has been stored in memory for display. See 37 C.F.R.
§ 42.23(b) (“A reply may only respond to arguments raised in the
corresponding opposition or patent owner response”); Rules of Practice for
Trials Before the Patent Trial and Appeal Board and Judicial Review of
Patent Trial and Appeal Board Decisions; Final Rule, 77 Fed. Reg. 48,612,
48,620 (Aug. 14, 2012) (“Oppositions and replies may rely upon appropriate
evidence to support the positions asserted. Reply evidence, however, must
be responsive and not merely new evidence that could have been presented
earlier to support the movant’s motion.”). “Respond,” in the context of
37 C.F.R. § 42.23(b), does not mean embark in a new direction with a new
approach as compared to the position originally taken in the Petition.
Accepting such belatedly presented new arguments would be unjust to the
Patent Owner and we decline to do so.
For reasons discussed above, we agree with Patent Owner that
Petitioners have failed to show that Umezawa discloses the claimed user
interface of claims 1 and 6, respectively. Because Umezawa has not been
shown to disclose the claimed user interface, adding Umezawa’s
implementation to that of McNelley would not result in a system having the
user interface recited in claims 1 and 6, respectively.
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This deficiency regarding the user interface limitations, however, does
not affect Petitioners’ position with regard to claim 12, which does not recite
a user interface. Claim 12 does require that the wireless telephone be
selectively operable to transmit non-audio digital signals, where the non-
audio digital signals include a selected digitized framed image. Ex. 1001,
17:5–8. As discussed above, and as presented by Petitioners, when
operating in answering machine mode, McNelley’s device transmits a stored
video message upon detection of a “ring.” Ex. 1006, 21:19–23, 61–67,
22:1–3. The selection of an image to transmit is made automatically.
McNelley discloses that there may be multiple stored greetings message
boxes designated for receiving incoming messages. Id. at 13:48–50.
Non-Audio Digital Signal Limitation
Claim 12 recites: “the wireless telephone being selectively operable
to transmit and receive non-audio digital signals, the non-audio digital
signals including a selected digitized framed image.” Ex. 1001, 17:5–8.
According to Patent Owner, this limitation “mandates that the wireless
telephone be capable of transmitting and receiving the selected digitized
framed image using non-audio digital signals.” PO Resp. 14. Patent
Owner’s characterization of the limitation adds a level of indirection that is
significant and not otherwise facially appearing in the claim, i.e., using a
certain type of signal, e.g., non-audio signal, to perform the transmission or
reception of the digitized framed image. That is different from the approach
taken by Petitioners, which classifies a signal as audio if the source of input
is audio, and as non-audio if the source of input is non-audio, e.g., images.
Under the rule of broadest reasonable interpretation, we agree with
Petitioners. Patent Owner’s adding another level of indirection is
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unnecessary. The claim is readily understandable without the additional
requirement and associated confusion of referring to images as audio signal
simply because they are transmitted over a traditional telephone line. Patent
Owner identifies no usage in the Specification of the ’871 patent of the term
“non-audio digital signals” that is in accordance with Patent Owner’s
position. The same is true with respect to the disclosures of McNelley and
Umezawa.
Moreover, a review of the Specification of the ’871 patent actually
indicates the contrary. In the Summary of the Invention portion of the ’871
patent, the Specification states that a telephone can be used to transmit and
receive “visual image signals” and that there is an embodiment including a
desk model that makes a connection to a “standard land line telephonic
system.” Ex. 1001, 1:64–2:2. Thus, even according to usage in the
Specification of the ’871 patent, image signals are transmitted and received
via a standard telephone land line. That usage reflects defining image
signals by content and not by the mode of transmission. It is also uncertain
what is disclosed in the Specification of the ’871 patent that corresponds to
Patent Owner’s characterization of “non-audio digital signals” if the
classification between audio and non-audio is not based on the content of the
input source.
Furthermore, claim 12 also recites: “the wireless telephone being
selectively operable to convert received digitized audio signals into acoustic
audio.” Ex. 1001, 17:2–5. The claim’s use of the phrase “digitized audio
signal” to refer to a signal whose content, upon reception, is converted to
“acoustic audio” undermines Patent Owner’s contentions, and, instead,
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supports an inference that whether a signal is audio or non-audio is
determined by content of the signal being transmitted.
Patent Owner provides no explanation in its Patent Owner Response
with regard to the position it has taken with respect to the term “non-audio
digital signal.” There are, however, two general citations to pages 17–23 of
the Declaration of Dr. Melendez (Ex. 2003), i.e., “See also [EXH. 2003] at
17–23,”5 in Patent Owner’s discussion of why McNelley and Umezawa
discloses only an audio means, but not a non-audio means, of transmitting
both voice and images. PO Resp. 15, 16. To the extent that those 7 pages of
Dr. Melendez’s Declaration contain the underlying basis for Patent Owner’s
position on the meaning of “non-audio digital signal,” we decline to consider
them. To be considered, such evidence has to be explained in the Patent
Owner Response. We cannot add to the Patent Owner Response
explanations not made by Patent Owner. Doing so would be unjust to
Petitioners. We consider what Patent Owner has explained in the Patent
Owner Response, but not beyond. Also, considering those 7 pages of
testimony as though they are explanations in the Patent Owner Response for
the meaning of “non-audio digital signal” would amount to incorporation of
material from one document by reference into another, which is prohibited
by 37 C.F.R. § 42.6(a)(3). Specifically, 37 C.F.R. § 42.6(a)(3) states:
“Incorporation by reference; combined documents. Arguments must not be
incorporated by reference from one document into another document.

5 The signal see also “is commonly used to cite an authority supporting a
proposition when authorities that state or directly support the proposition
already have been cited or discussed.” The Bluebook: A Uniform System
of Citation R. 1.2(a) at 59 (Harvard Law Review Ass’n, 20th ed. 2015)
(emphasis added).
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Combined motions, oppositions, replies, or other combined documents are
not permitted.” What Patent Owner has done is to incorporate arguments by
reference from Dr. Melendez’s Declaration, albeit without expressly stating
that it is doing so.
We agree with Petitioners that the meaning of “non-audio digital
signals” is sufficiently broad such that whether a transmitted digital signal is
deemed an audio signal or a non-audio signal can be determined by the
content being transmitted. In other words, a signal for which the input
source is speech is reasonably deemed an audio signal, and a signal for
which the input source is not audio, such as an image, is reasonably deemed
a non-audio signal. Based on the above discussions and our construction of
the term “non-audio digital signal,” McNelley discloses this limitation of
claim 12: “the wireless telephone being selectively operable to transmit and
receive non-audio digital signals, the non-audio digital signals including a
selected digitized framed image.” Also, McNelley discloses this limitation
of claim 12: “the wireless telephone being selectively operable to convert
received digitized audio signals into acoustic audio.” McNelley describes
that its device in teleconferencing mode permits straight-on, face-to-face
conversation. Ex. 1006, 6:43–45. McNelley’s device also includes speaker
112 which is provided for reproducing an audio signal from the distant
conferee while the device is in teleconferencing mode, as shown in Figure 8.
Id. at 7:24–30.
We note, in the alternative, that considering pages 17–23 of
Dr. Melendez’s Declaration would not lead to a different conclusion
regarding the scope of “non-audio signals.” The testimony of Dr. Melendez
does not address, much less resolve, any of the problems discussed above
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about Patent Owner’s position. Dr. Melendez does not identify any example
of usage of the term “non-audio signal” that is like what Patent Owner has
proposed—not in the ’871 patent itself, not in McNelley, not in Umezawa,
not anywhere. Dr. Melendez does not address the implication stemming
from the claim limitation that received audio signal is converted into
acoustic audio. More importantly, Dr. Melendez does not set forth clearly
what means of signal transmission is deemed “non-audio.”
Dr. Melendez testifies that, in his view, signals transmitted over a
telephone line are considered audio signals even if the content of the signals
is non-audio. Ex. 2003 ¶ 43. Dr. Melendez further testifies that an example
of non-audio transmission is by way of “an Ethernet connection to the
[I]nternet.” Id. But such testimony does not explain the fundamental basis
for the distinction drawn that can be applied to determine whether other
modes of communication are “audio” or “non-audio.” It is not explained
why—although both the telephone line and the Ethernet connection to the
Internet transmit content that is audio or video—the telephone line would be
regarded as “audio means” of transmission and the Ethernet connection
would be regarded as “non-audio means” of transmission. Even
Dr. Melendez, on cross-examination, had difficulty in making a distinction.
On cross-examination, he first indicated that the Ethernet and “4G systems
like LTE” are non-audio transmissions because they transmit packetized
data, but later retracted that answer and stated that he disagrees that a
packetized transmission is non-audio. Ex. 1013, 152:2–12, 19–25; 153:1–
154:7. On this record, it simply is unclear what Patent Owner has asserted
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as the basis of distinguishing an “audio digital signal” from a “non-audio
digital signal.”
Reason to Combine Teachings
Patent Owner argues: “Patent Owner deserves to know specifically
which limitations petitioner alleges are lacking in McNelley and must be
found in Umezawa to assess whether a POSITA would combine Umezawa
with McNelley to cure these specific deficiencies of McNelley and whether
the missing disclosure is actually found in Umezawa.” PO Resp. 34. We
agree, but Petitioners have made known, clearly, which limitations are at
issue insofar as differences between the claimed invention and McNelley are
concerned. The dispute arises only because Petitioners argue first that a
limitation is disclosed by McNelley, and then in the alternative, assuming
that Patent Owner disagrees that McNelley discloses the limitation, that
Umezawa discloses the limitation and it would have been obvious to one
with ordinary skill in the art to implement Umezawa’s feature in McNelley.
For certain claim elements, Petitioners have made two arguments:
(1) that McNelley discloses the claim element, and (2) assuming that
McNelley does not disclose the claim element, Umezawa discloses the
element and it would have been obvious to incorporate Umezawa’s feature
into McNelley’s device. Pet. 17, 20–25, 30–37, 39–44, 46. Patent Owner
evidently contends that such an approach is improper. We disagree.
Nothing precludes Petitioners from making a second argument in the
alternative in that manner, so long as what is conveyed is clear and
unambiguous. That is the case here. Accordingly, we reject Patent Owner’s
argument that it has not been apprised of differences between the claimed
invention and McNelley.
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Patent Owner further argues that Petitioners’ reasoning to combine
teachings is mere boilerplate language and conclusory. Specifically, Patent
owner states:
In all instances in which Petitioner suggests Umezawa
might be combined with McNelley to disclose certain limitation,
Petitioner inserts boilerplate language stating, for example, “[a]
POSA would have found it obvious to include Umezawa’s []
functionality in McNelley as this would amount to adding well
known elements in predictable ways with predictable results, and
would allow the combination to continue to operate according to
the intended purposes described in those disclosures.” Petition
at 18, 21–23, 25, 30–31, 34–35, 37, 39–40, 42–44 and 46. This
stock argument does little to clarify why a POSITA would
combine the references.
PO Resp. 34 (emphasis added). We see no reason to disparage the above-
referenced reasoning of Petitioners as “boilerplate language” that “does
little” to clarify why prior art teachings may be combined. To the contrary,
the language conveys substantial meaning. The fact that Petitioners use the
same reasoning multiple times does not, somehow, diminish its significance.
Furthermore, Patent Owner appears not to have recognized that
Petitioners articulated more than the above-referenced reasoning for
combining teachings. For instance, the Petition states:
For example, a POSA would have found it obvious to incorporate
teachings from Umezawa into the system of McNelley, including
inclusion of Umezawa’s processor functionality and LCD touch
control panel (user interface), at least for the purposes of
providing a smaller and more convenient handheld
videoconferencing device that could be held in one hand, for
providing a more convenient means of user control via the LCD
touch control panel as a user interface, and for providing an
ability to view alphanumeric messages on the display, e.g., to
confirm the accuracy of the phone number of the other party.
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See, e.g., Ex. 1006, McNelley, FIGS. 8, 10–12 and Ex. 1007,
Umezawa, FIG. 7, 1:36–40, 8:23–29, 10:3–22.
Pet. 14. The above-quoted basis for combining teachings is neither
boilerplate nor merely conclusory. When specifically discussing each
limitation, and when relying on McNelley in combination with Umezawa,
Petitioners further specifically identify at least one of the above-noted
reasons to combine teachings. Accordingly, we find nothing deficient about
Petitioners’ articulated reasoning to combine teachings, which are based on
rational underpinnings.
4. Dependent Claims 2–5, 7, 8, 13, and 14
Each of claims 2–5 depends directly from claim 1. Each of claims 7
and 8 depends directly from claim 6. Each of claims 13 and 14 depends
from claim 12. Petitioners’ submissions with respect to claims 2–5, 7, and 8
do not make up for the deficiency of its analysis, as discussed above, for
claims 1 and 6. Thus, there is no need to address further claims 2–5, 7, and
8, including Patent Owner’s specific argument directed to the limitation
added by claim 7 relative to claim 1. With regard to claims 13 and 14, we
are persuaded by Petitioners’ arguments, similarly, as we are with respect to
claim 12. Patent Owner does not advance any argument for claims 13 and
14 that it has not presented for claim 12. We consider Patent Owner to have
admitted those aspects of the ground of unpatentability that are uncontested
by Patent Owner and are material facts. See 37 C.F.R. § 42.23(a); see also
Paper 13, 3 (“The patent owner is cautioned that any arguments for
patentability not raised in the response will be deemed waived.”).

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III. THE PARTIES’ ADDITIONAL ARGUMENTS
Petitioners assert: “PO’s expert [Dr. Melendez] and his wife have a
history of profiting from patent lawsuits against Petitioners—rendering his
testimony biased and entitled to little weight.” Reply 24. Petitioners explain
the underlying circumstances and then state:
In short, Patent Owner has relied upon the expert testimony from
someone who, along with his wife, has made a living being
adverse to Petitioners. This repeated and sustained adversity to
Petitioners clouds both his objectivity and the reliability of his
opinions in this matter.
Reply 24–25. The underlying facts explained by Petitioners with regard to
the activities engaged in by Dr. Melendez and his wife, relative to
Petitioners, have not been disputed by Patent Owner. We have taken them
into account when considering the testimony of Dr. Melendez and the weight
that is accorded to his testimony. It is significant to note that the facts
presented by Petitioners are insufficient to establish that Dr. Melendez or his
wife targeted either one of the two petitioners in this proceeding, to the
exclusion of essentially all other entities, in his or her business, as the above-
quoted arguments from Petitioners appear to suggest.
Patent Owner notes that 37 C.F.R. § 42.104(b) requires a petitioner to
“[p]rovide a statement of the precise relief requested for each claim
challenged.” PO Resp. 35. Patent Owner further notes that 37 C.F.R.
§ 42.104(b)(2) requires that the statement must identify “[t]he specific
statutory grounds under 35 U.S.C. 102 or 103 on which the challenge to the
claim is based and the patents or printed publications relied upon for each
ground.” Id. Patent Owner additionally observes that under 37 C.F.R.
§ 42.104(b)(4), a petitioner must also indicate “[h]ow the construed claim is
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unpatentable under the statutory grounds identified in paragraph (b)(2) of
this section.” Id. Based on the foregoing, Patent Owner argues:
Petitioner has failed to adhere to these 37 CFR § 42.104
guidelines in preparing its Petition. Petitioner conflates two
separate grounds of rejection (a 35 U.S.C. § 102 rejection based
on McNelley with a 35 U.S.C. § 103 rejection based on
McNelley in view of Umezawa) into a single obviousness
rejection under 35 U.S.C. § 103. Petitioner’s imprecision is non-
trivial and creates substantial problems for both the Patent Owner
and the PTAB.
PO Resp. 35–36. Patent Owner then summarizes its contention as follows:
Patent Owner respectfully submits that Petitioner’s attempt to
combine an anticipatory ground of rejection with an obviousness
ground of rejection is more than confusing. It is manifestly
unjust for a Petitioner to force the Patent Owner and PTAB to
guess which ground of rejection is being put forward in preparing
a response and written opinion to the proposed ground of
rejection. This is precisely why the provisions of 35 U.S.C.
§ 42.104 were enacted. Petitioner’s failure to clearly and
precisely present its proposed ground of rejection is fatal
pursuant to 37 CFR § 42.104.
Id. at 38.
Rule 42.104 should not be read so stringently that a petition is
doomed, by application of rule, whenever there is another way in which the
petition can be presented that would be more easily understandable to the
patent owner or to the Board. The rule should not require a catastrophic
result simply for the less than perfect case.
It is true that the Petition would be more easily understandable if it
separated from the obviousness ground those claims for which Petitioners
regard all of the elements as met by McNelley alone, and presented a
separate anticipation ground against those claims under 35 U.S.C. § 102.
But, at least in this case, Petitioners’ failure to do that does not make the
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Petition so confusing that Rule 42.104 requires its rejection or dismissal.
Within the obviousness ground explained by Petitioners, it is readily
discernable which element of which claim Petitioners believe is met by
McNelley and why that is so. Also, that explanation, on an element by
element basis, essentially leads Petitioners’ discussion for each claim
element. Patent Owner does not allege that the Petition failed to address or
omitted a certain element of any claim.
Petitioners’ obviousness contentions, based on differences between
the claimed invention and the prior art, are alternative contentions in case the
Board disagrees with Petitioners’ assertion that certain claim elements are
disclosed by McNelley. The Petition is clear in identifying a presumed
difference and then argues, in the alternative, obviousness despite that
difference, and does that for each element with respect to which Petitioners
have a specific accounting based on obviousness.
As for Petitioners’ including what is essentially an anticipation
argument within a ground of unpatentability stated as obviousness over
McNelley and Umezawa, that is not a fatal defect. If we determine that
Petitioners have shown that McNelley alone discloses all elements of a
challenged claim, that claim can be deemed unpatentable as obvious over
McNelley and Umezawa. “Though it is never necessary to so hold, a
disclosure that anticipates under § 102 also renders the claim invalid under
§ 103, for ‘anticipation is the epitome of obviousness.’ In re Fracalossi,
681 F.2d 792, 215 USPQ 569 (CCPA 1982).” Connell v. Sears, Roebuck &
Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983); see also In re Paulsen, 30 F.3d
1475, 1481 (Fed. Cir. 1994); In re Baxter Travenol Labs, 952 F.2d 388, 391
(Fed. Cir. 1991); Structural Rubber Prods. Co. v. Park Rubber Co., 749 F.2d
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707, 716 (Fed. Cir. 1984). In any event, the issue is inconsequential here.
We have not found that McNelley discloses every element of any claim.
IV. UNOPPOSED MOTION TO SEAL
Patent Owner filed an Unopposed Motion to Seal. Paper 32.
There is a strong public policy in favor of making information filed in
an inter partes review open to the public, especially because the proceeding
determines the patentability of claims in an issued patent and, therefore,
affects the rights of the public. See Garmin Int’l v. Garmin Speed Tech’s,
LLC, Case IPR2012-00001 (PTAB Mar. 14, 2013) (Paper 34). Under
35 U.S.C. § 316(a)(1) and 37 C.F.R. § 42.14, the default rule is that all
papers filed in an inter partes review are open and available for access by
the public. A party, however, may file a concurrent motion to seal, and the
information at issue is sealed pending the outcome of the motion.
It is only “confidential information” that may be protected from
disclosure, 35 U.S.C. § 316(a)(7), and, even then, there is a public interest in
“maintaining a complete and understandable file history” of the proceeding.
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14,
2012). The standard for granting a motion to seal is “for good
cause.” 37 C.F.R. § 42.54(a). The party moving to seal bears the burden of
proof in showing entitlement to the requested relief. 37 C.F.R. § 42.20(c).
Patent Owner seeks to place under seal various portions of the cross-
examination testimony of Dr. Melendez, appearing on these pages of the
transcript of the cross-examination (Ex. 1013): 231–235, 237, 238, 243–
245, 247–253, and 254. Patent Owner has filed two versions of the cross-
examination transcript as Exhibit 1013, a redacted public version, and a
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confidential version. The material sought to be sealed has been redacted
from the public version of Exhibit 1013.
The motion explains that the information sought to be sealed
comprises two types of information: (1) Confidential Commercial
Information Related to Clients of Dr. Melendez, e.g., identity of former,
current, and potential clients, and (2) Confidential Personal Financial
Information of Dr. Melendez and/or his wife, e.g., information relating to the
tax filing status of Dr. Melendez and his wife and their potential
maintenance of funds in a joint account. Paper 32, 3–7. We have had no
need to rely on such material in our substantive analysis on the issue of
patentability of claims and have not referred to or discussed such material.
We have balanced Patent Owner’s assertion of confidentiality with the
public’s interest in a sufficiently understandable record with respect to the
substantive decisions made regarding patentability. We find that the
potential harm to Patent Owner outweighs the minimal public interest, if
any, for access to the information at issue. Accordingly, Patent Owner’s
Unopposed Motion to Seal (Paper 32) is granted.
V. ORDER
For the reasons given, it is:
ORDERED that claims 12–14 of U.S. Patent No. 7,365,871 B2 have
been shown by a preponderance of the evidence to be unpatentable, under
35 U.S.C. § 103(a), as obvious over McNelley and Umezawa;
FURTHER ORDERED that claims 1–8 of U.S. Patent No. 7,365,871
B2 have not been shown by a preponderance of the evidence to be
unpatentable under any ground;
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FURTHER ORDERED that Patent Owner’s Unopposed Motion to
Seal is granted; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

For Petitioner Apple Inc.:
Brian Buroker
Blair Silver
Gibson, Dunn & Crutcher LLP
bburoker@gibsondunn.com
bsilver@gibsondunn.com

For Petitioner ZTE Corporation and ZTE (USA) Inc.:
Steven Moore
Richard Thill
Barry Shelton
Brian Nash
Pillsbury Law LLP
steve.moore@pillsburylaw.com
richard.thill@pillsburylaw.com
barry.shelton@pillsburylaw.com
brian.nash@pillsburylaw.com

For Patent Owner:
Gregory S. Donahue
DiNovo Price Ellwanger & Hardy LLP
gdonahue@dpelaw.com

Robert C. Curfiss
bob@curfiss.com

David O. Simmons
IVC Patent Agency
dsimmons1@sbcglobal.net