Mitek Systems, Inc.v.Rothschild Trust Holdings, LLC

Patent Trial and Appeal Board

Jun 17, 2016

12290066 (P.T.A.B. Jun. 17, 2016)

Trials@uspto.gov Paper No. 36
571.272.7822 Filed: June 17, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MITEK SYSTEMS, INC.,
Petitioner,

v.

ROTHSCHILD MOBILE IMAGING INNOVATIONS, LLC,
Patent Owner.
____________

Case IPR2015-00623
Patent 7,995,118 B2
____________

Before JAMESON LEE, DAVID C. MCKONE, and
CHARLES J. BOUDREAU, Administrative Patent Judges.

MCKONE, Administrative Patent Judge.

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

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I. INTRODUCTION
A. Background
Mitek Systems, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) to
institute inter partes review of claims 1–21 of U.S. Patent No. 7,995,118 B2
(Ex. 1001, “the ’118 patent”). Rothschild Mobile Imaging Innovations, LLC
(“Patent Owner”) filed a Preliminary Response (Paper 7, “Prelim. Resp.”).
Pursuant to 35 U.S.C. § 314, in our Decision to Institute (Paper 8, “Dec.”),
we instituted this proceeding as to each of the challenged claims.
After institution of trial, Patent Owner filed a Patent Owner’s
Response (Paper 20, “PO Resp.”), and Petitioner filed a Reply to the Patent
Owner’s Response (Paper 23, “Reply”). An oral argument was held on
April 19, 2016. Paper 35 (“Tr.”).
Petitioner relies on the testimony of Irfan Essa, Ph.D. Ex. 1013
(“Essa Decl.”). Patent Owner did not submit testimony in support of its
Response.
We have jurisdiction under 35 U.S.C. § 6(c). This Decision is a final
written decision under 35 U.S.C. § 318(a) as to the patentability of the
challenged claims. Based on the record before us, Petitioner has
demonstrated, by a preponderance of the evidence, that each of the
challenged claims is unpatentable.

B. Related Matters
The ’118 patent has been asserted in several lawsuits in the United
States District Court for the District of Delaware. Pet. 1–2; Paper 4, 2–3.
IPR2015-00621 and IPR2015-00622 involve patents related to the ’118
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patent. The oral argument for IPR2015-00622 was consolidated with the
oral argument for this proceeding.

C. References Relied Upon
Petitioner relies on the following references:
Ex. 1003 Safai US 6,167,469 Dec. 26, 2000
Ex. 1004 Terp WO 01/31546 A2 May 3, 2001
Ex. 1005 Cazier US 6,657,661 B1 Dec. 2, 2003
Ex. 1006 Arai US 6,642,959 B1 Nov. 4, 2003
Ex. 1007 Lin US 8,271,489 B2 Sept. 18, 2012
Ex. 1008 Mattes US 6,038,295 Mar. 14, 2000
Ex. 1009 Knowles US 7,173,651 B1 Feb. 6, 2007
Ex. 1010 Steinberg US 6,750,902 B1 June 15, 2004
Ex. 1011 Shih US 7,123,782 B2 Oct. 17, 2006
Ex. 1012 Mortimore US 5,950,207 Sept. 7, 1999

D. The Asserted Grounds
We instituted a trial on the following grounds (Dec. 23–24):
References Basis Claim(s)
Safai and Terp § 103(a) 1, 2, 4–7, 9, 10, and 19–21
Safai, Terp, and
Mortimore § 103(a) 3
Safai, Terp, and Cazier § 103(a) 8
Safai, Terp, and Arai § 103(a) 11
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References Basis Claim(s)
Safai, Terp, and Lin § 103(a) 12
Safai, Terp, and Mattes § 103(a) 13 and 14
Safai, Terp, Mattes, and
Knowles § 103(a) 15
Safai, Terp, and Steinberg § 103(a) 16 and 18
Safai, Terp, and Shih § 103(a) 17

II. ANALYSIS
A. The ’118 Patent
The ’118 patent describes a digital imaging device, such as a digital
camera, personal digital assistant (PDA), or mobile telephone, that allows
embedding information into and retrieving information from digital images.
Ex. 1001, Abstract. Figures 1A and 1B, reproduced below, illustrate an
example:

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Figures 1A and 1B are front and back views, respectively, of a device for
capturing digital images and embedding information in the captured images.
Id. at 3:3–6.
As shown in Figure 1A, the front side of device 100 includes lens 102
for capturing an image and microphone 106 for capturing audio information.
Id. at 3:33–39. As shown in Figure 1B, the rear side of device 100 includes
display module 108 (e.g., a touch screen display) for displaying captured
images, storage module 110 (e.g., random access memory (“RAM”) or a
removable memory stick) for storing captured images, transmission module
112 (e.g., Bluetooth, Wi-Fi, or parallel or serial cables) for transmitting
digital images to another device, and scanning module 114 for scanning and
inputting information to be associated with an image and for reading
information from printed images. Id. at 3:40–51, 4:32–37, 5:49–61.
The ’118 patent describes the functions of the device in terms of
modules, depicted in Figure 2, reproduced below:
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Figure 2 is a block diagram of the modules of a device for capturing digital
images and embedding information in the captured images. Id. at 3:7–9.
Display module 108, storage module 110, and transmission module
112 correspond to those depicted in Figures 1A and 1B, above. Capture
module 122 works in conjunction with lens 102 to create a digital image,
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which is stored in storage module 110. Id. at 4:15–32. User input module
124 receives text input, for example from a standard keyboard or a touch
screen that overlays display module 108. Id. at 4:56–63. Auxiliary input
module 126 collects data from other devices, such as a Global Positioning
System (“GPS”) chip (to determine the location where an image was taken),
a date chip (to determine the date and time an image was taken), and a voice
capture device. Id. at 5:24–44.
Using input module 124, a user inputs data that will be associated
with the digital image. Id. at 5:4–7. The data can be stored in a separate file
or in the header of the image file. Id. at 5:7–23. The data can include a file
location on a local computer or server on the Internet at which to store the
image file. Id. at 7:54–60. Audio information (e.g., collected using
auxiliary input module 126) also can be associated with the digital image.
Id. at 7:61–8:4. After the digital image is captured and data is associated
with it, the digital image file, along with any associated files, is transmitted
(using transmission module 112) to the local computer or a server on the
Internet, where it is stored in a relational database according to the location
information. Id. at 5:45–6:6, 8:27–34.
When the digital image is printed out, it prints with symbology (e.g., a
bar code) that encodes the file name of the image or other information that
provides access to the file name and file location. Id. at 6:7–25. This
symbology can be scanned by integrated scanning module 130 (e.g., a light-
emitting diode (“LED”) light source and photocell) of the device to extract
the name and location of the digital image and pull up the image file and any
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associated files (assuming the device is connected through transmission
module 112 to the local computer or Internet server). Id. at 6:26–55.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A digital imaging device comprising:
a first capture module for capturing an image and creating a
digital image file, the digital image file comprising data
representing the captured image;
a display module disposed on the digital imaging device for
displaying the captured image and configured to prompt a
user to input information regarding the captured image;
an input module disposed on the digital imaging device for
enabling the user to input subject information related to a
subject of each captured image and to input storage
location information indicative of a storage location on a
separate external computing device for storing each digital
image file after transfer from the digital imaging device;
a second capture module configured to scan coded information
to be associated with the captured image;
a processing module for associating the subject information,
storage location information, and the coded information to
the digital image file; and
a transmission module for transmitting the digital image file and
the associated information to the external computing
device for storage or data lookup.

B. Claim Construction
We interpret claims of an unexpired patent using the broadest
reasonable construction in light of the specification of the patent in which
they appear. See 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC,
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793 F.3d 1268, 1278 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo Speed
Techs. LLC v. Lee, 136 S. Ct. 890 (mem.) (2016). In applying a broadest
reasonable construction, claim terms generally 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 disclosure. See In re Translogic Tech., Inc.,
504 F.3d 1249, 1257 (Fed. Cir. 2007).

1. Terms Construed in the Decision to Institute
In the Decision to Institute, we gave the following constructions:
Term Construction
“symbology information”
(claim 21)
“a machine-readable symbol encoding
information about a digital image”
“storage location”
(claims 1, 19, 20)
“a location where data may be stored”
“storage location information”
(claims 1, 19, 20)
“information identifying where data
may be stored”

The parties do not challenge these constructions in the Response or
Reply. We maintain these constructions on the full record.

2. “prompt” (claim 1)/“prompting” (claim 19)
Claim 1 recites “a display module . . . configured to prompt a user to
input information regarding the captured image” (emphasis added).
Similarly, claim 19 recites “prompting a user of the digital imaging mobile
device for information regarding the captured image” (emphasis added).
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Patent Owner contends that “prompt” or “prompting” means “inciting
or providing a cue, to input or for information regarding a captured image.”
PO Resp. 13. As an initial matter, claim 1 already recites “to input
information regarding the captured image” and claim 19 recites “for
information regarding the captured image.” Accordingly, we will not read
those phrases into the construction of “prompt.”
As to whether “prompt” means to incite or provide a cue, Patent
Owner argues that its proposed construction is consistent with certain
dictionary definitions. PO Resp. 14 (citing MERRIAM-WEBSTER ONLINE
DICTIONARY, 2015, available at, http://www.merriam-
webster.com/dictionary/prompt).
Petitioner contends that “prompt” refers to “a visual or audible
indication that [a] device is ready to receive input.” Reply 2. Petitioner
argues that we should discount Patent Owner’s dictionary, as its 2015 date is
not contemporaneous with the 2004 priority date of the ’118 patent. Id. The
definition of “prompt,” however, has not changed meaningfully during that
time. See AMERICAN HERITAGE COLLEGE DICTIONARY 1115 (4th ed. 2004)
(Ex. 3001). In any case, we are unable to discern a meaningful difference
between the parties’ respective proposals. Indeed, at the oral argument,
Petitioner was unable to identify a difference. Tr. 17:6–18:11.
We conclude that “incite or provide a cue” is consistent with the
Specification. For example, the Specification states that the “prompting step
includes displaying information regarding the captured image.” Ex. 1001,
2:45–48. In another example, “the display module may include an audio
output device for audibly prompting a user to input information regarding
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the captured image.” Id. at 2:12–14. Thus, “prompt” means “to incite or
provide a cue,” and “prompting” means “inciting or providing a cue.”
We note, however, that the parties’ respective proposals do not
capture the actual dispute as to the meaning of “prompt.” Rather, Patent
Owner, in distinguishing Safai (discussed below), argues that Safai describes
a user navigating through multiple menus before arriving at the display that
Petitioner contends prompts the user to input information. PO Resp. 16–18.
At the oral argument, although Patent Owner would not commit to precise
language it would use to make this distinction, Patent Owner essentially
argued that the prompting must be automatic, or without any action on the
part of the user between capturing an image and prompting the user to input
information. Tr. 36:4–37:25.
We find no such requirement in the ordinary meaning of “prompt,” as
evidenced by Patent Owner’s dictionary definition. Patent Owner also does
not point to evidence in the Specification that would support its position. In
its most detailed example, describing a user taking pictures of his wife and
child during a trip to Las Vegas, the Specification explains that
[a]t end of taking pictures or alternatively, immediately after
taking each individual picture, the user goes back to the device
100, 200 and using either keystroke input via input module 124
or voice recognition software via a microphone, or any other
input means the user is prompted to provide . . . information
regarding the pictures, i.e., the images taken (step 304)[,]
including a file location to store the pictures. Ex. 1001, 7:46–53. This
suggests that, in one embodiment, the user is not prompted to input storage
location information until he returns to the device after taking several
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pictures. After inputting location information, “[t]he user is then asked via
the speaker, or prompted on the display module 108, 208, if he wants to
attach any audio or video to the images.” Id. at 7:61–63. The Specification
does not require such prompting to be automatic or without any intervening
action on the part of the user to elicit the “prompt,” and, indeed, it is
described as occurring in response to the user inputting other information.
In sum, on the complete record and under the rule of broadest
reasonable interpretation, “prompt” means “to incite or provide a cue.”
Similarly, “prompting” means “inciting or providing a cue.” We note that
this evidence, the dictionary definitions and consistent description in the
Specification evidencing ordinary meaning, also would support the same
constructions under the different standard set forth in Phillips v. AWH Corp.,
415 F.3d 1303 (Fed. Cir. 2005) (en banc).

3. “a second capture module configured to scan coded
information to be associated with the captured image”
(claim 1)/“scanning coded information to be associated with
the captured image” (claim 19)/“receiving coded
information to be associated with the captured image”
(claim 20)
Claim 1 recites “a first capture module for capturing an image and
creating a digital image file” and “a second capture module configured to
scan coded information to be associated with the captured image.” Claims
19 and 20 include similar recitations. Patent Owner argues that the claims
each specify an order as to the functions performed by the first and second
capture modules of claim 1, the functions performed by the capture module
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and input module of claim 20, and the capturing and scanning steps of claim
19. Specifically, regarding claim 1, Patent Owner argues that “the claim
requires an image to be captured by a first capture module and then a second
capture module scans coded information to be associated with ‘the’ captured
image.” PO Resp. 19 n.1. Patent Owner argues that the claim language
itself requires this order because “the captured image” refers to an image
that already has been captured. Id.
In response, Petitioner argues that the “second capture module” of
claim 1 (or the scanning coded information step of claim 19) does not
perform an association between the captured image and the coded
information. Reply 7–8. Rather, the second capture module scans
information “to be associated with” the image by the “processing module for
associating . . . the coded information to the digital image file.” Id. Thus,
Petitioner argues, it is not logically necessary that the coded information is
scanned after the image is captured so long as both the image and the coded
information are available when the processing module performs its function
(or available at the time of claim 19’s “associating the . . . coded information
to the digital image file” step). Id. at 8–9. Petitioner further argues that the
use of “first” and “second” in claim 1 is to distinguish repeated instances of
“capture module” rather than to specify an order. Id. at 10.
“[A]lthough a method claim necessarily recites the steps of the
method in a particular order, as a general rule the claim is not limited to
performance of the steps in the order recited, unless the claim explicitly or
implicitly requires a specific order.” Baldwin Graphic Sys., Inc. v. Siebert,
Inc., 512 F.3d 1338, 1345 (Fed. Cir. 2008). We agree with Petitioner that,
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logically, coded information “to be associated” with an image need not be
scanned subsequent to the capture of the image, so long as the image has
been captured and the coded information has been scanned prior to the
association of those two pieces of information.
“The specification or prosecution history may also require a narrower,
order-specific construction of a method claim in some cases.” Baldwin
Graphic Sys., 512 F.3d at 1345. Here, however, the intrinsic evidence does
not suggest that the functions or steps must occur in a specific order.
According to Petitioner, the Specification does not discuss in detail the
scanning of coded information to be associated with an image. Reply 9.
Patent Owner does not cite to evidence of any ordering in the Specification
or prosecution history and, at the oral argument, was unable to identify any
description in the Specification of scanning coded information to be
associated with an image. Tr. 42:24–44:12.
On the complete record and under the rule of broadest reasonable
interpretation, we are not persuaded that claims 1, 19, and 20 should be
construed to include an order in which an image must be captured prior to
scanning or receiving coded information to be associated with that image.
We note that this evidence—the claim language itself and the description in
the Specification—also would support the same constructions under the
different standard set forth in Phillips.

C. Obviousness over Safai and Terp
Petitioner contends that claims 1, 2, 4–7, 9, 10, and 19–21 would have
been obvious over Safai and Terp. Pet. 8–37.
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A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
between the claimed subject matter and the prior art are “such that the
subject matter as a whole would have been obvious at the time the invention
was made to a person having ordinary skill in the art to which said subject
matter pertains.” We resolve the question of obviousness on the basis of
underlying factual determinations, including: (1) the scope and content of
the prior art; (2) any differences between the claimed subject matter and the
prior art; (3) the level of skill in the art; and (4) objective evidence of
nonobviousness, i.e., secondary considerations.1 See Graham v. John Deere
Co., 383 U.S. 1, 17–18 (1966).
In an obviousness analysis, some reason must be shown as to why a
person of ordinary skill would have combined or modified the prior art to
achieve the patented invention. See Innogenetics, N.V. v. Abbott Labs., 512
F.3d 1363, 1374 (Fed. Cir. 2008). A reason to combine or modify the prior
art may be found explicitly or implicitly in market forces, design incentives,
the “interrelated teachings of multiple patents,” “any need or problem known
in the field of endeavor at the time of invention and addressed by the
patent,” or the background knowledge, creativity, and common sense of the
person of ordinary skill. Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d
1324, 1328–29 (Fed. Cir. 2009) (quoting KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418–21 (2007)).

1 The record does not contain any evidence of secondary considerations.
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1. Scope and Content of the Prior Art
a. Overview of Safai
Safai describes a digital camera that associates additional information
(e.g., text describing a subject) to a digital image and transports the image
and information (e.g., by email) to a destination. Ex. 1003, Abstract.
Figure 1, reproduced below, illustrates an example:

Figure 1 is a rear view of a personal handheld digital camera. Id. at 4:33–34.
Camera 100 includes display device 108 (e.g., a touchscreen LCD
display) for displaying stored digital images. Id. at 5:17–21, 6:37–50.
Through a series of software menus, a user can use the display device to
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enter text describing a subject of a digital image and an email address to
which to transmit the image and subject text (or, alternatively, a URL of a
designated server or web site to which to upload the photos). Id. at 8:48–
9:5, 14:59–64. Examples of successive menus for entering address and
subject information are shown in Figures 3, 4A, and 4B. Specifically, a user
(through the touch screen), selects “Mail” button 302 from the Photo Access
menu shown in Figure 3; the user is presented with the Photo Mail menu
shown in Figure 4A; the user selects “Address” button 402 from the Photo
Mail menu; and the user then is presented with an address entry display 412,
shown in Figure 4B (reproduced below). Id. at 7:66–8:12, 8:21–52.

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Figure 4B is a block diagram of a display generated during an
addressing step of an image transport application. Id. at 4:44–45. Display
412 includes address entry field 414 and virtual keyboard 416, through
which the user enters address 420, such as an email address. Id. at 8:52–65.
Display 412 also can include a subject data entry field (not shown) next to
address entry field 414, into which the user may enter text for a subject.
Id. at 9:1–8. The subject text is stored in a variable associated with the
address. Id. at 9:10–13.
The user then selects one or more stored images to be sent to the
address. Id. at 10:24–59. The selected images are associated with the
address and stored in a data structure maintained in a storage device of the
camera. Id. at 11:21–26.
Camera 100 also can include a microphone for receiving voice
commands or recording sound to be associated with the digital images.
Id. at 6:19–36. For example, digitized voice information can be stored in a
file and associated with the selected digital images, address information, and
subject information. Id. at 11:49–54.
The camera also includes input/output devices, such as a
communications port for transmitting data to and receiving data from
another computer via, for example, modems and an Ethernet interface. Id. at
6:5–18. The user initiates transmission of the email by pressing a send
button. Id. at 13:10–12. The camera transmits the digital images and
associated information to a server, which parses the email address and
forwards the images using electronic mail. Id. at 13:54–14:24.
Alternatively, if the user specified a web site to which to upload the photos,
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the server creates a HyperText Markup Language (“HTML”) file with the
images and transmits it using a protocol, such as File Transfer Protocol
(“FTP”), to the identified web server. Id. at 14:61–15:11.

b. Overview of Terp
Terp describes a portable device, such as a pen tablet, including a
processor, an image scanner, a digital camera, and memory, for gathering
inventory profile information. Ex. 1004, 4:11–17, 6:27–35. A user uses the
device’s image scanner to capture an image of an inventory item identifier
(e.g., a bar code or vehicle identification number (“VIN”)), which is
processed to generate an alphanumeric representation. Id. at 4:18–20, 4:32–
34, 6:15–26. With the representation, the device retrieves an inventory item
profile file from the portable device’s memory and displays it on a screen.
Id. at 4:35–38.
To create an inventory file, a user captures the bar code or VIN using
the image scanner. If the VIN is not on record, a vehicle record is created on
the device’s memory. Id. at 8:33–38. The device then prompts the user for
information about the vehicle to include in the inventory file, such as
features and asking price, which can be entered using the pen tablet. Id. at
9:3–18. The device then prompts the user to take a picture of the vehicle
using the digital camera. Id. at 9:29–33. The device then generates and
stores a profile for the vehicle, the profile including the information, pricing,
and pictures. Id. at 9:34–36.
The user also can update the inventory item profile file, for example
by capturing a digital image of the inventory item with the device’s camera
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and attaching the image to the file. Id. at 5:1–7. The inventory item profile
file can be transmitted to a server of a web site when the portable device is
docked in a docking station. Id. at 5:11–13.

2. Level of Ordinary Skill in the Art
The Petition does not take a position on the level of ordinary skill in
the art, although Dr. Essa states his opinion in his Declaration. See Ex. 1013
¶ 11. Patent Owner does not take a position on the level of ordinary skill.
With regard to the level of ordinary skill in the art, 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).

3. Differences Between the Prior Art and Claims 1, 2, 4–7, 9,
10, and 19–21; Reasons to Combine
a. Uncontested claim limitations
The features of Safai are summarized above. Regarding claim 1, we
have considered Petitioner’s evidence, including Dr. Essa’s testimony
(Ex. 1013 ¶¶ 31–33, 36–39, 46, 50), presented at pages 8–9, 11–12, 16, and
18–19 of the Petition, and make the following findings:
Safai’s digital camera 100 is a “digital imaging device”;
The structure described by Safai as acquiring digital images (e.g., a
lens, shutter, charge-coupled device (CCD)), Ex. 1003, 5:21–
27, teaches “a first capture module for capturing an image and
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creating a digital image file, the digital image file comprising
data representing the captured image”;
Safai’s display device 108, id. at 6:17–21, 6:38–50, is “a display
module disposed on the digital imaging device for displaying
the captured image”;
Safai’s touch screen 412, used to enter text describing a subject of a
digital image and for entry of an email address or a URL, id. at
6:45–50, 9:1–8, teaches “an input module disposed on the
digital imaging device for enabling the user to input subject
information related to a subject of each captured image and to
input storage location information indicative of a storage
location on a separate external computing device for storing
each digital image file after transfer from the digital imaging
device.” Consistent with the constructions in Section II.B.1
above, we find that email addresses (id. at 8:48–67) and URLs
(id. at 14:59–15:11) are examples of information indicative of
storage locations and that information entered in a “subject data
entry field” (id. at 9:1–8) is subject information related to a
subject of a captured image;
Safai’s CPU 210 executing software modules (id. at 5:63–6:1, 6:66–
7:56), which associates images with addresses and stores them
in a data structure that conceptually serves as an “out-box”
(id. at 11:21–26), teaches “a processing module for associating
the subject information, [and] storage location information . . .
to the digital image file”; and
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Safai’s communications port 214 and CPU 210 executing a transport
application 230 (id. at 6:5–18) teach “a transmission module for
transmitting the digital image file and the associated
information to the external computing device for storage or data
lookup.” We find that the designated server or web site
(indicated by email address or URL) is an external computing
device.
Patent Owner does not dispute that Safai teaches each of these
limitations or offer evidence to the contrary.

b. “prompt a user to input information regarding the
captured image”
The parties dispute whether Safai teaches “a display module . . .
configured to prompt a user to input information regarding the captured
image,” as recited in claim 1 (emphasis added). As explained above, after
capturing an image, a user of Safai’s device has the option of navigating
menus (e.g., shown in Figs. 3, 4A) using touch screen display 108 to reach
address entry screen 412 (shown in Fig. 4B). Ex. 1003, 7:60–8:7, 8:21–52.
Figure 4B shows an address entered into address entry field 414. Although
not shown in Figure 4B, Safai states that “display 412 further includes a
subject data entry field next to the address entry field 414,” that “[a] user
may select the subject data entry field by tapping on it with a finger or
stylus,” and that “[t]he user may enter text for the subject line using the
virtual keyboard 416.” Id. at 9:3–8. Safai also describes a feature in which,
if the user has entered an email address that is not valid, “the transport
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application generates a prompt to the user that asks whether the user wishes
to correct the address or discard it.” Id. at 10:12–16. Petitioner contends
that these two examples, a display of a subject data entry field and a prompt
to the user to correct an invalid address, both prompt the user to input
information regarding the captured image. Pet. 10.
Patent Owner responds that Safai does not teach prompting a user for
information regarding a captured image because the user must first select a
transport application (shown in Fig. 4A), and then select the address button
402 among five options to reach the display that includes the address and
subject data entry fields. PO Resp. 16–18. According to Patent Owner,
“[t]hese selections are made by the user without any prompt by the device
described in Safai.” Id. at 18; see also id. at 5 (“[I]n Safai, the user reaches
the display that includes the address entry field and subject data entry field
by selecting the Address button 402 among four other options 404–410
displayed in the menu 400, without any prompt. In fact the transport
application that provides the menu is also launched by the user without any
prompting.”), 10 (“Safai cannot prompt a user to input information regarding
the captured image by merely providing the address entry screen or the
subject data entry field after those screens are actually launched based on a
decision by the user.”).
Petitioner replies that the visual and audio indicators to provide
information described by Safai are similar to the indicators shown in the
’118 patent as prompting a user for input. Reply 5–6. According to
Petitioner, “[t]hat a user must first select Address button 402 or Voice
Message button 406 before any of the above prompting steps occur is
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irrelevant” because “[t]he claims only require a prompt to enter information
regarding an image.” Id. at 6.
We agree with Petitioner. As explained in Section II.B.2 above,
“prompt” means “to incite or provide a cue,” and need not be automatic or
without any action on the part of the user between capturing an image and
prompting the user to input information. We find that in both examples
described in Safai, the subject entry field and the prompt to the user to
correct an invalid address are cues, provided by Safai’s system, to incite the
user to enter information about a captured image. A subject, for example, is
information regarding the captured image because it may explain the subject
matter of the image. Likewise, an email address is information regarding the
captured image because it identifies a destination for that image. Thus, we
find that Safai teaches “a display module . . . configured to prompt a user to
input information regarding the captured image,” as recited in claim 1.

c. “a second capture module configured to scan coded
information to be associated with the captured
image”
Petitioner concedes that Safai does not teach “a second capture
module configured to scan coded information to be associated with the
captured image,” as recited in claim 1. Pet. 13. Nevertheless, Petitioner
contends that Terp’s disclosure of an image scanner, digital camera,
receiver, and processor for scanning coded information (e.g., bar codes and
VINs) and associating the coded information, along with digital images,
with inventory item profile files, teaches this feature. Id. at 13–14.
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According to Petitioner, in reliance on Dr. Essa’s testimony, a skilled artisan
would have added a second capture module to Safai’s digital camera to
achieve the advantage of gathering and retrieving information associated
with a digital image more easily, quickly, and accurately. Id. at 14–15
(citing Ex. 1013 ¶¶ 43–44). Petitioner cites, in particular, Terp’s disclosure
that manual entry of information can be cumbersome, inefficient, and prone
to error. Id. (citing Ex. 1004, 1:33–37).
Regarding “a processing module for associating . . . the coded
information to the digital image file,” Petitioner argues that Terp describes a
CPU that associates coded information (e.g., a bar code or VIN) with digital
images. Pet. 17. According to Petitioner, in reliance on Dr. Essa’s
testimony, it would have been predictable to associate such coded
information with Safai’s digital images given that Safai teaches associating
various other data with the digital images. Id. at 17–18 (citing Ex. 1013
¶¶ 47–49).
Patent Owner makes two arguments as to why Terp does not teach “a
second capture module configured to scan coded information to be
associated with the captured image.” First, Patent Owner argues that “in
Terp, [the] captured image does not even exist when the VIN is scanned to
create a vehicle record.” PO Resp. 10. According to Patent Owner, claim 1
requires a specific order such that an image is captured by the first capture
module prior to coded information being scanned by the second capture
module. Id. at 19 n.1. Because Terp describes scanning a VIN number and
creating a vehicle record before an image of the vehicle is captured, Patent
Owner argues, “Terp’s capture is out of order” with claim 1 and “therefore
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teaches away from the claimed invention.” Id. at 18–19. As explained in
Section II.B.3 above, however, the claim language imposes no such order on
the functions performed by the components of claim 1’s device.
Accordingly, we are not persuaded by Patent Owner’s argument.
Second, Patent Owner argues that the coded information, e.g., the
VIN, described in Terp is associated with a vehicle record rather than a
captured image. PO Resp. 8 (“[T]he VIN is associated with the vehicle
record. . . . It shall be noted that, even though the image in the vehicle
record is changed, the VIN for the vehicle record remains the same, thereby
proving that the VIN is associated with the vehicle record and not image.”),
10 (“VIN is associated with a vehicle record and not with a captured
image.”).
In the Petition (at 16), Petitioner cites to Safai’s description that
“selected images are associated with the addresses entered by the user and
stored in a data structure, conceptually serving as an ‘out-box’ or output
queue, that is maintained in the storage device.” Ex. 1003, 11:23–27;
see also id. at 11:50–55 (“[T]he name of [a digitized voice information] file
is stored in an object that associates the name, the names of the selected
photos, and the address.”), 9:10–13 (“[T]he transport application stores the
characters that were entered, for example, in a subject string variable
associated with the address.”). According to Petitioner and Dr. Essa,
because the addresses are associated with the images, the subject
information associated with the addresses also is associated with the images.
Pet. 16 (citing Ex. 1013 ¶ 46). Petitioner argues that coded information, per
the teachings of Terp, would have been associated with Safai’s addresses
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and, hence, the images, in the same manner as the other information
described in Safai. Id. at 17–18.
We are persuaded by Petitioner’s argument. Patent Owner does not
present any evidence or explanation to support its contention that two pieces
of information (e.g., a photo and a VIN number) associated with the same
record are nevertheless not associated with one another. If the association
were so limited, it would exclude a preferred embodiment of the ’118 patent.
See Ex. 1001, 5:7–16 (“[B]y example, if the digital image is recorded by the
hardware device as jpg101 or tif101 or bmp101 where these descriptions
indicate the name of the captured digital image, then another file will be
created for each captured digital image. This file would be the information
associated file. In the above example, the image jpg101 would now have an
additional file called info101 (or any other name that the hardware device
selects). This digital file would receive and contain the user inputted
information.”), 5:67–6:6 (“The file name of each digital image file and/or
associated file will be recorded in a relational database either on the user’s
local computer or the Global computer network. This database will contain
information on any file(s) related to each digital image including audio and
video files, or other associated image files.”). In these examples,
information about a digital image file and the digital image file itself are
associated with one another by storing the association in a separate file or
database record.
Both Safai and Terp store associations similarly to the devices and
methods described in the ’118 patent. Safai teaches associating various
pieces of information with each other and storing those associations in an
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object or file, such that the pieces of information can be used together (e.g.,
emailing a photo to an address and including in the message subject
information). Ex. 1003, 11:21–26, 11:49–54; see also Ex. 1001, 5:7–16,
5:67–6:6. Similarly, as Petitioner points out (Pet. 17), Terp teaches storing
various pieces of information (e.g., images, VIN number, and vehicle price)
together such that the information can be retrieved together. Ex. 1004, 4:11–
17, 4:25–30, 5:1–7, 8:14–34; see also Ex. 1001, 5:7–16, 5:67–6:6. We find
that it would have been predictable to associate coded information, as taught
in Terp, to Safai’s image files in the same manner Safai describes
associating other information such as addresses and subjects.

d. “a transmission module for transmitting the digital
image file and the associated information to the
external computing device for storage or data
lookup”
Regarding “a transmission module for transmitting the digital image
file and the associated information to the external computing device for
storage or data lookup,” as recited in claim 1, as that language applies to the
coded information as associated information, Petitioner contends that Terp
teaches transmitting an image, together with coded information, to an
external computing device. Pet. 19–20. According to Petitioner, Terp’s
coded information, when associated with Safai’s digital images, subject
information, and storage location information, would have been transmitted
to the external computing device for storage and lookup along with the other
information described in Safai. Id. at 20–21. Citing Dr. Essa’s testimony,
Petitioner argues that this is a predictable combination of features that a
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skilled artisan would have made to ensure that identifier data relating to
digital images can be used for accessing and retrieving the associated image
files. Id. at 20–21 (citing Ex. 1013 ¶ 52). Upon consideration of this
evidence, we find that it would have been predictable to transmit coded
information, as taught by Terp, along with the digital image file and any
other associated information, to an external computing device for storage or
data lookup.

e. The references do not teach away from the claimed
invention
Patent Owner contends that Safai teaches away from a combination
with Terp. Patent Owner argues that “Safai . . . indicates that one of the
types of subjects being photographed as part of the ‘enjoy[able]
photography’ that is distributed to ‘friends, relatives, and neighbours’ is
people,” as well as “pets, sceneries, mountains, rivers, treks and gatherings.”
PO Resp. 6. According to Patent Owner, in such instances of “enjoy[able]
photography,” using a second capture module to scan coded information and
associate it with images would be impractical and contrary to common
sense, and would teach away from the claims. Id.; see also id. at 21
(“Requiring the use of a second capture module to code to scan and associate
the photograph with additional information is impractical as it relates to
Safai and actually teaches away from the purposes of Safai. Using the
example provided in Safai, in which photos of grandchildren are being sent
to the grandparent, it is hard to imagine any practical value of including a
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second capture module to scan coded information about the captured image
to send to friends and relatives.”).
Petitioner replies that Patent Owner is improperly attempting to limit
Safai’s teachings to its examples. Reply 12–13.
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant” or “if it suggests that the line of
development flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant.” In re Gurley, 27 F.3d 551,
553 (Fed. Cir. 1994).
Aside from attorney argument, Patent Owner has not presented any
evidence that Safai’s description of using a digital camera for “enjoyable
photography” (as opposed to commercial photography) would have
discouraged the incorporation of coded information or that it would not have
been productive of the applicant’s desired result. We note that the ’118
patent states that, in the prior art, photographs were taken for both personal
and business reasons and that manual entry and organization of information
was problematic in either situation. Ex. 1001, 1:21–37. The Specification
then describes the invention in terms of what Patent Owner presumably
would characterize as enjoyable photography. See id. at 7:43–8:4 (use of the
invention in photography of a user’s wife and child during a trip to Las
Vegas). Using Patent Owner’s logic, it would have been impractical to use
the invention for the type of photography specifically described in the
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preferred embodiment of the ’118 patent. We are not persuaded by Patent
Owner’s argument.
Both Safai and Terp describe techniques for associating data with
captured digital images. As Petitioner argues, Terp’s associated bar code
information and techniques for accessing such digital images using the bar
code information made it quicker and easier to gather digital images while
reducing potential inaccuracy caused by manual entry of information.
Pet. 14. We find that these features of Terp would have improved Safai’s
device in the same manner and, thus, the combination would have been the
predictable use of prior art elements according to their established functions.
See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.”).

f. Patent Owner’s remaining challenges to Petitioner’s
reasons to combine Safai and Terp
Patent Owner argues that Dr. Essa did not, in his Declaration, analyze
the underlying factual determinations outlined in Graham v. John Deere and
did not articulate reasons, with rational underpinning, for combining Safai
and Terp. PO Resp. 24. According to Patent Owner, “Dr. Essa, in his
deposition, was unable to articulate any factors one would need to consider
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in making an obviousness determination.” Id. (citing Ex. 2002, 106–07).2
Dr. Essa, however, was offered as a technical expert, rather than a legal
expert. Graham v. John Deere outlines “factual inquiries” that we, as the
trier of fact, must make. 383 U.S. at 17–18; accord In re Kahn, 441 F.3d
977, 986 (Fed. Cir. 2006) (“[T]o establish a prima facie case of obviousness
based on a combination of elements disclosed in the prior art, the Board
must articulate the basis on which it concludes that it would have been
obvious to make the claimed invention. In practice, this requires that the
Board explain the reasons one of ordinary skill in the art would have been
motivated to select the references and to combine them to render the claimed
invention obvious.”) (emphasis added, internal citation and quotation marks
omitted). A technical expert need not articulate the Graham factors to offer
testimony on obviousness so long as our findings are guided by those
factors. As we explain above, we have considered the evidence, including
Dr. Essa’s testimony, and make our findings in the context of the Graham
factors.
Patent Owner, citing the Board decision in Ariosa Diagnostics v.
Verinata Health, Inc., argues that the Petition and Dr. Essa’s Declaration are
missing an analysis of the differences between the claimed subject matter
and the prior art beyond singular statements that one reference is missing a

2 The deposition testimony Patent Owner cites does not appear to be
addressing the ’118 patent or the prior art combination at issue in this case.
Nor does Dr. Essa appear to be asked to articulate factors to consider in an
obviousness determination. Patent Owner may have intended to cite
testimony beginning at page 88 of Exhibit 2002.
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particular element of the claims. PO Resp. 25 (citing Ariosa Diagnostics v.
Verinata Health, Inc., Case IPR2013-00276, 2014 WL 5454541, at *7
(PTAB Oct. 23, 2014) (Paper 43), vacated and remanded, 805 F.3d 1359
(Fed. Cir. 2015)). As explained above, Petitioner presents detailed argument
and evidence as to how Safai differs from the claimed invention, what
features from Terp would have remedied those deficiencies, and why a
skilled artisan would have looked to Terp to combine with Safai. Thus, we
are not persuaded by Patent Owner’s argument.
Patent Owner, further citing Ariosa Diagnostics, argues that the
Petition and Dr. Essa’s Declaration do not explain how a skilled artisan
would have combined disparate elements of Safai and Terp or explain what
modifications would have been necessary to do so. PO Resp. 26. We detail
above the reasons Petitioner gives for combining Safai and Terp, as well as
the testimony from Dr. Essa on which Petitioner relies. For the reasons
given above, we agree with Petitioner’s arguments and evidence and find
that a skilled artisan would have had reason to combine Safai and Terp.
Accordingly, Patent Owner’s argument is unpersuasive.
Finally, Patent Owner argues that Dr. Essa, in his Declaration and
deposition testimony, engaged in hindsight, using the ’118 patent’s
disclosure to guide reconstruction of the invention from Safai and Terp. PO
Resp. 26–27 (citing Ex. 1013 ¶ 43; Ex. 2002, 216–17). We agree with
Petitioner (Reply 16–18), however, that Dr. Essa referenced the ’118 patent
only as context explaining the purpose of his testimony regarding the
combination of Safai and Terp rather than as a guide to combine Safai and
Terp. Accordingly, we are not persuaded by Patent Owner’s argument.
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In sum, we find that Safai and Terp teach each limitation of claim 1.
We also find that a skilled artisan would have had reason to combine Safai
and Terp.

4. Conclusion of Obviousness
a. Claim 1
As explained above, we find, based on Petitioner’s evidence, that
Safai and Terp teach each limitation of claim 1. We also find, based on
Petitioner’s evidence, that a skilled artisan would have had reasons, with
rational underpinning, to combine these teachings to arrive at the invention
of claim 1. We have considered Patent Owner’s arguments to the contrary
and find them unpersuasive. The parties do not introduce or rely on
objective indicia of nonobviousness. After weighing the evidence, we
conclude that Petitioner has shown, by a preponderance of the evidence, that
claim 1 would have been obvious over Safai and Terp.

b. Claims 19 and 20
Independent claim 19 is a method claim in which the steps essentially
track the functions of the modules recited in claim 1. Petitioner contends
that claim 19 would have been obvious for the same reasons given for
claim 1. Pet. 29–31. Claim 20 is similar to claim 1, except that where claim
1 recites “a second capture module configured to scan coded information to
be associated with the captured image,” claim 20 recites the input module as
“receiving coded information to be associated with the captured image.”
Petitioner contends that this limitation of claim 20 would have been obvious
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for essentially the same reason as the similar limitation of claim 1. Pet. 32–
33. Patent Owner does not present separate arguments for claims 19 and 20.
Rather, Patent Owner refers to its arguments regarding claim 1. PO Resp.
28–29.
For the reasons given for claim 1, on the complete record, we
conclude that Petitioner has shown, by a preponderance of the evidence, that
claims 19 and 20 would have been obvious over Safai and Terp.

c. Claims 2, 4–7, 9, 10, and 21
Claims 2, 4–7, 9, and 10 depend from claim 1. Claim 21 depends
from claim 20. Petitioner introduces evidence and argument as to the
obviousness of each of these claims. Pet. 21–29, 34–37. Patent Owner does
not present separate arguments for claims 2, 4–7, 9, 10, and 21. Rather,
Patent Owner argues that these claims are patentable for the reasons given
for claim 1. PO Resp. 27–28. As explained above, these reasons are not
persuasive. By not raising them in its Response, Patent Owner has waived
any additional arguments regarding claims 2, 4–7, 9, 10, and 21. Paper 9, 3
(“The patent owner is cautioned that any arguments for patentability not
raised in the response will be deemed waived.”). Patent Owner confirmed at
the oral argument that it is Patent Owner’s position that the dependent
claims stand or fall with independent claims 1 and 20. Tr. 27:23–28:3. In
any case, we have considered the evidence in the Petition and are persuaded
that Petitioner has shown, by a preponderance of the evidence, that claims 2,
4–7, 9, 10, and 21 would have been obvious over Safai and Terp.

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D. Remaining Obviousness Grounds
Claims 3, 8, and 11–18 depend from claim 1. Petitioner has
introduced evidence and argument to show the following:
claim 3 would have been obvious over Safai, Terp, and Mortimore.
Pet. 37–39;
claim 8 would have been obvious over Safai, Terp, and Cazier. Id. at
39–42;
claim 11 would have been obvious over Safai, Terp, and Arai. Id. at
42–44;
claim 12 would have been obvious over Safai, Terp, and Lin. Id. at
44–46;
claims 13 and 14 would have been obvious over Safai, Terp, and
Mattes. Id. at 46–50;
claim 15 would have been obvious over Safai, Terp, Mattes, and
Knowles. Id. at 50–52;
claims 16 and 18 would have been obvious over Safai, Terp, and
Steinberg. Id. at 52–56; and
claim 17 would have been obvious over Safai, Terp, and Shih. Id. at
56–60.
Patent Owner does not present separate arguments for claims 3, 8, and
11–18. Rather, Patent Owner argues that these claims are patentable for the
reasons given for claim 1. PO Resp. 27. As explained above, these reasons
are not persuasive. By not raising them in its Response, Patent Owner has
waived any additional arguments regarding claims 3, 8, and 11–18. Paper 9,
3. Patent Owner confirmed at the oral argument that it is Patent Owner’s
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position that the dependent claims stand or fall with independent claim 1.
Tr. 27:23–28:3. In any case, we have considered the evidence in the Petition
and are persuaded that Petitioner has shown, by a preponderance of the
evidence, that claims 3, 8, and 11–18 are unpatentable on the respective
obviousness grounds of unpatentability asserted by Petitioner for those
claims.

III. CONCLUSION
Petitioner has demonstrated by a preponderance of the evidence that
claims 1–21 would have been obvious.

IV. ORDER
For the reasons given, it is
ORDERED, based on a preponderance of the evidence, that claims 1–
21 of U.S. Patent No. 7,995,118 B2 are held unpatentable; and
FURTHER ORDERED, because this is a final written decision, the
parties to this proceeding seeking judicial review of our Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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PETITIONER:
Naveen Modi
Joseph E. Palys
Phillip Citroen
PAUL HASTINGS LLP
naveenmodi@paulhastings.com
josephpalys@paulhastings.com
phillipcitroen@paulhastings.com

PATENT OWNER:
Thomas C. Wright
Matthew P. Harper
CUNNINGHAM SWAIM, LLP
twight@cunninghamswaim.com
mharper@cunninghamswaim.com

Scott C. Sample
BOOTH ALBANESI SCHROEDER LLC
ssample@ipoflexas.com

Kevin W. Guynn
Atanu Das
GREER, BURNS & CRAIN, LTD.
adas@gbclaw.net
adas@gbclaw.net

Steven E. Ross
Christopher P. O’Hagan
ROSS IP GROUP PLLC
cpohagan@rossipg.com
sross@rossipg.com