PTAB

IPR2015-00407

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 ’168 patent relates to a system for capturing, converting, storing, compressing, and transmitting visual images. The system comprises a camera and a transmission interface for sending image data to another device via cellular, radio, satellite, or telephonic transmission.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-31 by the PCT Publication

  • Prior Art Relied Upon: The PCT Publication (WO/1999/35818).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the ’168 patent is not entitled to its asserted priority date of January 12, 1998. The argument centered on the prosecution history of the grandparent application (the ’073 application), which was abandoned for 673 days after a final Office Action. Petitioner contended that the subsequent petition to revive was improper because the abandonment was intentional, not unintentional as required. Consequently, the correct priority date for the ’168 patent should be the filing date of a later continuation, January 3, 2003. This later priority date makes the PCT Publication, published on July 15, 1999, prior art under 35 U.S.C. §102(b). Petitioner asserted that the specification and drawings of the PCT Publication are nearly identical to those of the ’168 patent, and therefore the PCT Publication anticipates every limitation of claims 1-31.

Ground 2: Claims 1-15 and 19-31 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 argued that Toshiba taught a mobile videophone device capable of capturing, displaying, and wirelessly transmitting images. It disclosed a portable housing, a camera, a display with a user-image area, memory, input controls, and a mobile phone for transmission. Hitachi taught a cell phone-enabled digital camera that could capture still images, store them with metadata (e.g., user ID, date, time), and transmit them wirelessly. Petitioner contended that Toshiba disclosed the core elements of independent claim 1, and Hitachi provided teachings for any remaining features, such as enhanced still picture management or a touch-screen display.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine the teachings because both references are in the same field of digital image capture and transmission. They share the common goal of wirelessly transmitting image data. A POSITA would combine Hitachi's features for capturing, browsing, and transmitting still pictures with metadata into Toshiba's videophone to enhance its functionality. Conversely, a POSITA would add Toshiba's video conferencing features to Hitachi's still-image-focused camera to better utilize its cellular and video capture capabilities.
    • Expectation of Success: The combination of these known elements from analogous devices would have yielded predictable results.

Ground 3: Claims 1, 10, 11, 13-15, 21-26, 28, 29, and 31 are obvious over Kyocera ’081 in view of Hitachi

  • Prior Art Relied Upon: Kyocera ’081 (Japanese Application Publication No. JP H06-133081A) and Hitachi (Japanese Patent No. Hei8(1996)-315106).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that Kyocera ’081 disclosed an early camera phone system that captured, stored, processed, and wirelessly transmitted pictures. It included a portable housing, camera, display for previewing images, memory, and circuitry for transmission over a telephone network. Hitachi, as described in Ground 2, disclosed a similar device with additional features like metadata attachment, image browsing from memory, and a touch-screen interface. Petitioner argued that the combination of Kyocera ’081’s foundational camera phone technology with the known, complementary features from Hitachi would render the challenged claims obvious.
    • Motivation to Combine: A POSITA would combine the references to improve upon the basic design of Kyocera ’081. Specifically, one would be motivated to incorporate Hitachi’s capabilities—such as adding metadata to images, browsing stored pictures, and using a touch screen—into the Kyocera ’081 system to create a more feature-rich and user-friendly device.
    • Expectation of Success: Combining these known features from the same technical field would have been a straightforward design choice with a high expectation of success.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including grounds that combined Toshiba and Hitachi with Longginou (WO 95/23485) to teach the use of multiple communication protocols. Further grounds combined Kyocera ’081, Hitachi, and Toshiba.

4. Key Claim Construction Positions

  • "Media being suitable to embody ... algorithm": This phrase appears in various forms across the claims (e.g., "media being suitable to embody at least one compression algorithm"). Petitioner argued that because the ’168 patent does not explicitly define this term, it should be given its broadest reasonable interpretation in light of the specification. The specification describes a processor executing software programs stored in memory (ROM, Flash RAM, etc.) and various other circuits performing functions. Based on these disclosures, Petitioner proposed the construction: “media that can embody an algorithm, in hardware form, software form or a combination of hardware and software forms.” This construction was critical to the obviousness arguments, as the prior art references disclose processors executing algorithms stored in memory like ROM.

5. Relief Requested

  • Petitioner requests institution of an IPR trial and cancellation of claims 1-31 of Patent 7,643,168 as unpatentable.