PTAB

IPR2014-00989

HTC Corp v. E Watch Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Image Capture, Compression, and Wireless Transmission System
  • Brief Description: The ’168 patent describes a portable, wireless apparatus for capturing, compressing, storing, and transmitting digital images. The claimed device integrates an image collection device (camera), a display, a processor for data compression, memory, and a mobile phone into a single portable housing.

3. Grounds for Unpatentability

Ground 1: Obviousness over Morita and Sarbadhikari - Claims 1-6, 8, 10-11, 13-15, 21-29, and 31 are obvious over Morita in view of Sarbadhikari.

  • Prior Art Relied Upon: Morita (Japanese Application Publication No. H06-133081) and Sarbadhikari (Patent 5,477,264).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Morita disclosed a portable wireless mobile phone with nearly all the claimed structural elements, including a housing, camera, display, memory, input device, and mobile phone for wireless transmission. However, Morita’s compression was performed by a dedicated "image processing circuit." Sarbadhikari was cited to teach the implementation of image compression via a software algorithm (e.g., JPEG) stored in memory and executed by a processor. Petitioner contended this combination satisfied the "media...suitable to embody" and "processing platform...operable to execute" limitations of the independent claims.
    • Motivation to Combine: A POSITA would combine Morita and Sarbadhikari as both references address portable digital imaging. Petitioner asserted that implementing software-based compression from Sarbadhikari was a known and advantageous alternative to a hardware-only solution, as it would reduce development costs, lower required storage space and transmission bandwidth, and allow for future algorithm updates.
    • Expectation of Success: A POSITA would have had a high expectation of success in integrating a known software-based compression module from a digital camera (Sarbadhikari) into a camera phone (Morita), as it involved combining known technologies for their intended purposes.

Ground 2: Obviousness over Wilska and Yamagishi-992 - Claims 1-6, 8, 10-11, 16-18, 21-22, 24, 26-27, and 29 are obvious over Wilska in view of Yamagishi-992.

  • Prior Art Relied Upon: Wilska (U.K. Application GB 2,289,555) and Yamagishi-992 (European Application No. 0594992).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Wilska disclosed a handheld, all-in-one device combining a cellular phone, camera, display, and processing unit for capturing and transmitting digital images. To meet the compression algorithm limitations, Petitioner relied on Yamagishi-992, which described an electronic camera (implementable in a portable telephone) that used a compression circuit with an adaptive discrete cosine transform (ADCT) algorithm. Yamagishi-992 further taught that compression methods could be user-selectable and that the operating programs could be stored in and executed from memory.
    • Motivation to Combine: A POSITA would combine these references, as both relate to handheld imaging and communication devices. The motivation was to incorporate the more advanced, software-controllable compression taught by Yamagishi-992 into Wilska’s integrated device to reduce the storage space and transmission bandwidth needed for images, a well-understood engineering goal at the time.
    • Expectation of Success: A POSITA would have reasonably expected to succeed in implementing the compression techniques from Yamagishi-992 in the device of Wilska, as it represented a straightforward application of known compression technology to an imaging device.

  • Additional Grounds: Petitioner asserted further obviousness grounds, including a challenge to claims 16-18 by adding Longginou (WO 95/23485) to the Morita/Sarbadhikari combination to teach selectable wireless transmission protocols. A challenge to claims 13-15, 23, 25, 28, and 31 was asserted by adding McNelley (Patent 5,550,754) to the Wilska/Yamagishi-992 combination to teach a display screen defined apart from a viewfinder.

4. Key Claim Construction Positions

  • "Media being suitable to embody ... algorithm": Petitioner argued this phrase, which appears in various forms across the challenged claims, was added during prosecution and lacks explicit descriptive support in the specification. To provide meaning under the broadest reasonable interpretation standard, Petitioner proposed the construction: “media that can embody an algorithm, in hardware form, software form or a combination of hardware and software forms.” This broad construction was critical to Petitioner's arguments, as it allowed them to argue that the limitation could be met by prior art disclosing either dedicated hardware circuits for compression (as in Morita) or software-based algorithms stored in memory and executed by a processor (as in Sarbadhikari and Yamagishi-992).

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-6, 8, 10-11, 13-18, 21-29, and 31 of the ’168 patent as unpatentable under 35 U.S.C. §103.