PTAB

IPR2014-00987

HTC Corp v. E Watch Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Handheld Self-Contained Cellular Telephone and Integrated Image Processing System
  • Brief Description: The ’871 patent describes a handheld device that integrates an image capture system (e.g., a digital camera) with a cellular telephone system. The invention allows for capturing, storing, processing, and transmitting images over a wireless telephone network.

3. Grounds for Unpatentability

Ground 1: Claims 1-8 and 12-15 are obvious over Wilska in view of Yamagishi-114.

  • Prior Art Relied Upon: Wilska (U.K. Application No. GB 2,289,555) and Yamagishi-114 (JP Publication No. H06-176114).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Wilska disclosed the core invention of the ’871 patent: a portable, handheld device integrating a cellular phone, a camera, a display, a processor, memory, and a user interface for personal communication and image transmission. Petitioner contended Wilska taught nearly all limitations of independent claims 1, 6, and 12. For limitations not explicitly detailed in Wilska, such as using the display as a live viewfinder or providing specific camera controls, Petitioner asserted Yamagishi-114 supplied the missing elements. Yamagishi-114 described a portable wireless phone with an integrated camera that could operate in a "through-mode," where the display functions as a viewfinder to show images being picked up by the camera in real-time. It also disclosed camera controls for functions like gain, iris, and focus.
    • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine Wilska and Yamagishi-114 because both references addressed the same technical problem of integrating camera and phone functionalities in a portable device. A POSITA would have been motivated to incorporate Yamagishi-114’s advanced display (viewfinder) and camera control features into Wilska’s complete system to create a more commercially desirable and user-friendly product. For example, adding a viewfinder function would allow users to frame shots more effectively.
    • Expectation of Success: Petitioner asserted that combining these known features would have been straightforward and yielded predictable results, as it involved the integration of well-understood components (a camera phone and a viewfinder display mode) for their intended purposes.

Ground 2: Claims 1-8 and 12-15 are obvious over McNelley in view of Yamagishi-992.

  • Prior Art Relied Upon: McNelley (Patent 5,550,754) and Yamagishi-992 (EP Application No. 0594992).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that McNelley disclosed a handheld "telecamcorder" that functions as a camcorder, a videoconferencing device, and an audio-only phone over a wireless network. This device included a camera, display, housing, processor, and memory, thus teaching the fundamental combination of the ’871 patent. To supplement McNelley, Petitioner relied on Yamagishi-992, which described a portable telephone with an electronic camera featuring detailed operational modes. Yamagishi-992 was cited for its teachings on providing a user interface with switches for selecting modes (e.g., recording, reproduction, transmission), allowing a user to selectively access memory to display or transmit a specific stored image. It also taught the input of alphanumeric data associated with an image.
    • Motivation to Combine: Petitioner argued a POSITA would combine McNelley and Yamagishi-992 to improve the functionality and user experience of McNelley’s device. McNelley’s telecamcorder could record video messages, and a POSITA would have found it advantageous to incorporate the selective access and transmission modes from Yamagishi-992. This combination would provide a more flexible and convenient way for a user to manage, retrieve, and transmit specific stored video or image files, which was a known objective in the art.
    • Expectation of Success: The proposed combination involved implementing known user interface and data management techniques (from Yamagishi-992) into a known hardware platform (McNelley's telecamcorder), which Petitioner contended would have been a predictable and successful endeavor for a POSITA.

4. Key Claim Construction Positions

  • "Framing an image" (and its variations like "visually framing a visual image"): Petitioner argued that because the ’871 patent did not explicitly define this term, it should be given its broadest reasonable interpretation. Petitioner proposed the construction: "obtaining an image of an object using a viewfinder, or providing data representing an image of an object on a display." This construction was central to Petitioner’s arguments, as it allowed prior art references describing viewfinder functionalities (like Yamagishi-114's "through-mode") to be mapped directly onto this claim limitation.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-8 and 12-15 of the ’871 patent as unpatentable.