PTAB

IPR2015-00404

LG Electronics Inc v. E Watch Inc

Key Events

Petition

petition

Title: Apparatus for Capturing, Converting and Transmitting a Visual Image Signal Via a Digital Transmission System
Brief Description: The ’871 patent discloses an integrated system comprising an image capturing device (camera) and a communication device (e.g., cellular telephone) in a single portable housing. The system is designed to capture, store, selectively display, and transmit digitized images over a wireless network.

Prior Art Relied Upon: Nagai (JP Application Publication H09-037129) and Lemelson (Patent 4,485,400).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Nagai, which discloses a cellular phone integrated with a digital camera, meets most limitations of the challenged claims. Nagai teaches a portable housing, an image capture device, a processor, a display, and memory for storing images. Crucially, Nagai’s system allows a user to selectively access stored images for display and transmission over a cellular network via a user interface. Petitioner contended that any features not explicitly taught by Nagai, such as a physical keyboard (claim 1h) or an internal power supply (claim 1j), were well-known, conventional components disclosed by Lemelson.
- Motivation to Combine: A POSITA would combine Lemelson's teachings with Nagai to achieve predictable results and enhance functionality. For instance, incorporating a physical keyboard from Lemelson would provide greater tactile feedback than Nagai's touch panel, and adding a power supply would achieve the desired portability that was a primary goal of devices like Nagai's.
- Expectation of Success: A POSITA would have had a high expectation of success as the combination involved integrating conventional and well-understood components (e.g., a battery, a physical keypad) into a known device architecture to improve its usability and portability.

Prior Art Relied Upon: Lemelson (Patent 4,485,400) and Ohnsorge (Patent 5,485,504).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that Lemelson discloses a portable, self-powered video telephone system capable of capturing, storing, and reviewing image data on a display. Lemelson teaches the core components: a portable housing, camera, processor, memory, display, and a user interface for selecting images for review and wireless transmission. However, Lemelson predates modern cellular networks. Ohnsorge remedies this by disclosing a handheld radiotelephone that integrates a camera and telephonic system for transmitting audio and video data over a wireless telephone network.
- Motivation to Combine: A POSITA would have been motivated to update Lemelson’s portable video communication device with the modern cellular communication technology taught by Ohnsorge. This combination would directly advance Lemelson’s stated goals of portability and stand-alone functionality by leveraging the widespread availability of cellular networks, a natural and predictable evolution of the technology.
- Expectation of Success: The integration was straightforward, as it involved replacing an older wireless communication module in Lemelson with the more advanced, widely adopted cellular technology taught by Ohnsorge.

Prior Art Relied Upon: Nagamine (Patent 6,564,070).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Nagamine, standing alone, renders the claims obvious. Nagamine discloses a single, portable "image input apparatus" that functions as a personal handy phone system. The device includes an integrated camera, a display for framing and viewing images, a processor, flash memory for storing images, and a user interface (buttons and keys) for controlling operations. The system is explicitly described as capturing, storing, viewing, and transmitting both audio signals and image data over a wireless network. Nagamine was asserted to teach every limitation, including the ability to selectively display stored images via a "VIEW mode" and transmit them upon user command.
Additional Grounds: Petitioner asserted additional obviousness challenges by adding Sasaki (Patent 5,018,017) to the primary combinations. Ground 3 (Lemelson, Ohnsorge, and Sasaki) and Ground 5 (Nagamine and Sasaki) argued that Sasaki’s teaching of a removable semiconductor memory card would have been an obvious addition to provide increased storage capacity and easier data transfer, thus rendering claims 4, 8, and 13 obvious.

Petitioner argued that two key terms should be given their broadest reasonable interpretation:
- "selectively displaying" (claims 1, 6, 9, 12): Proposed construction is "choosing from one or more for display."
- "selectively transmitting" (claims 1, 6, 9, 12): Proposed construction is "choosing from one or more for transmission."
Petitioner contended that neither the claim language nor the specification requires the selection to occur from a plurality of images. This construction is important because it broadens the scope of the claims to cover devices that may only handle one image at a time for display or transmission.

Disputed Invention Date: Petitioner dedicated significant argument to challenging the patent's priority date. During prosecution, the applicant filed an affidavit to claim an invention date of March 18, 1993. Petitioner argued this affidavit fails for two reasons:
- It lacks sufficient corroborating evidence to prove conception of the complete claimed invention—specifically a portable device with both phone and camera functions and an image display monitor.
- It fails to show the "continuous exercise of reasonable diligence" required to perfect an earlier invention date, citing large, unaccounted-for gaps in activity between 1992 and 1995.
Based on these failures, Petitioner argued the ’871 patent is not entitled to the 1993 date and its earliest priority date should be the parent application's filing date of January 12, 1998.

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