PTAB

IPR2015-00406

Kyocera Communications Inc v. E Watch Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Apparatus for Capturing, Converting and Transmitting a Visual Image Signal via a Digital Transmission System
  • Brief Description: The ’871 patent describes a self-contained, handheld system for image capture, conversion, compression, storage, and transmission. The system integrates a camera with a transmission interface to send captured images to another device via cellular, radio, or other transmission methods.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-15 under 35 U.S.C. §102(b)

  • Prior Art Relied Upon: PCT Publication (WO/1999/35818).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the ’871 patent is not entitled to its claimed priority date of January 12, 1998. The argument centered on the assertion that the parent ’073 application was intentionally abandoned for 673 days, and its subsequent revival was improper. Consequently, the effective filing date of the ’871 patent should be its actual filing date of January 3, 2003. This would make the PCT Publication, published on July 15, 1999, prior art under §102(b). Petitioner contended that the specification and drawings of the PCT Publication are nearly identical to those of the ’871 patent, and therefore wholly disclose and anticipate all limitations of claims 1-15.

Ground 2: Claims 1-8 and 12-15 are obvious over Toshiba in view of Hitachi

  • Prior Art Relied Upon: Toshiba (Japanese Application Publication No. JP H8-65647A) and Hitachi (Japanese Patent No. Hei8(1996)-315106).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Toshiba disclosed a mobile videophone device with a camera, display, processor, memory, and wireless transmission capabilities for video conferencing. It taught ergonomic features like showing the user’s own image in a corner of the screen. Hitachi disclosed a cell phone-enabled digital camera that could capture still images, store them with metadata (e.g., photographer ID, location, time), and transmit them over a wireless network. Petitioner argued that the combination of Toshiba and Hitachi taught all elements of the challenged independent claims (1, 6, 12), including the handheld housing, integrated camera, display, processor, memory, user interface, and telephonic system. For instance, Toshiba’s videophone provided the core handheld communication system, while Hitachi provided the functionality for capturing, storing, and transmitting still images with associated data, as recited in the claims.
    • Motivation to Combine: A POSITA would combine the references to add the still-image capture, browsing, and transmission capabilities of Hitachi to Toshiba’s videophone system, thereby creating a more versatile device. Alternatively, a POSITA would add the video conferencing features of Toshiba to Hitachi’s digital camera to more fully utilize its cellular and video capture capabilities.
    • Expectation of Success: The combination involved applying known technologies in the same field (digital imaging and cellular communication) to achieve predictable results, leading to a high expectation of success.

Ground 3: Claims 1-4 and 6-8 are obvious over Kyocera ’081 in view of Hitachi

  • Prior Art Relied Upon: Kyocera ’081 (Japanese Application Publication No. H06-133081A) and Hitachi (Japanese Patent No. Hei8(1996)-315106).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Kyocera ’081, a 1994 publication, disclosed a foundational camera phone system that could capture, store, process, and wirelessly transmit pictures. It included a handheld body, camera lens, display, internal memory, and cellular transmission circuitry. This reference provided the basic architecture of the claimed invention. Hitachi was argued to supply additional features not explicitly detailed in Kyocera ’081, such as a more advanced user interface for browsing stored images, adding metadata to photos, and utilizing a touch screen display. The combination provided, for example, the removable memory module of claim 4 and the ability to display alphanumeric messages from user input as required by claim 3, both taught by Hitachi.
    • Motivation to Combine: A POSITA would be motivated to incorporate Hitachi’s advanced features into the earlier Kyocera ’081 system to improve its functionality. Specifically, adding the ability to browse and transmit stored pictures (rather than just the most recently captured one), add useful metadata, and implement a more modern touch screen interface were all logical and desirable improvements.
    • Expectation of Success: Combining these known features from the same technical field would have been a straightforward integration for a POSITA, yielding a predictable and more capable camera phone.
  • Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations of Kyocera ’081, Hitachi, and Toshiba for claims 5 and 12-15, and further combinations including Kurashige (Patent 6,414,714) for claims 9-11, which taught automated setup of camera parameters.

4. Key Claim Construction Positions

  • "Framing an image": This term, appearing in various forms in claims 1, 2, 6, 7, 9, and 12, was not explicitly defined in the ’871 patent. Petitioner proposed that under the broadest reasonable interpretation, the term should be construed as "obtaining an image of an object using a viewfinder and making that image available, such as for display to a user." This construction was central to mapping the prior art's viewfinder and live display functionalities to the claim limitations.

5. Relief Requested

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