LG Electronics Inc v. E Watch Inc

1. Case Identification

• Case #: IPR2015-00408
• Patent #: 7,643,168
• Filed: December 10, 2014
• Petitioner(s): LG Electronics, Inc.; Microsoft Mobile OY
• Patent Owner(s): Monroe
• Challenged Claims: 1-31

2. Patent Overview

• Title: Apparatus For Capturing, Converting And Transmitting A Visual Image Signal Via A Digital Transmission System
• Brief Description: The ’168 patent describes an integrated image capturing system capable of transmitting captured image data over wired and wireless communication networks. The system integrates a camera and a communication device, such as a cellular telephone, into a single portable unit.

3. Grounds for Unpatentability

Ground 1: Obviousness over McNelley - Claims 1-31 are obvious over McNelley.

• Prior Art Relied Upon: McNelley (Patent 5,550,754).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that McNelley discloses an integrated, portable, and wireless video conferencing system ("telecamcorder") that teaches every element of the challenged claims. McNelley's system allegedly includes a portable housing, an image collection device (camera), a display that can function as a viewfinder, memory for storing digital image data, user input controls, and a mobile phone for wireless transmission. Petitioner asserted that McNelley explicitly teaches a "telecamcorder" that can serve as a "portable wireless teleconferencing terminal much like a portable cellular phone." McNelley’s disclosure of using ASIC chips for compression was argued to teach the claimed media embodying a compression algorithm.
  • Motivation to Combine (for §103 grounds): This ground relied on a single reference. Petitioner argued that McNelley teaches a modular system architecture with multiple design choices, and a POSITA would find it obvious to implement the various disclosed features (e.g., camera, display, wireless communication) into a single integrated device as claimed. The motivation was to create a more integrated and versatile system, a goal explicitly stated in McNelley.
  • Expectation of Success (for §103 grounds): Petitioner contended success was expected because McNelley provides a detailed blueprint for combining known components like cameras, processors, and cellular transceivers into a single portable device.

Ground 2: Obviousness over Nagai - Claims 1-18 and 21-31 are obvious over Nagai.

• Prior Art Relied Upon: Nagai (Japanese Patent No. H9-37129).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Nagai discloses a portable cellular phone integrated with an "electronic still camera" that meets all limitations of the asserted claims. Nagai's device allegedly includes a portable wireless housing, a CCD camera, a liquid crystal monitor for displaying images, memory (both internal and removable), and a touch panel interface for user control. The reference further discloses a compression/decompression circuit for processing image data and a TDMA processing circuit for transmitting the compressed data over a cellular network, thereby teaching the claimed mobile phone and compression algorithm elements.
  • Motivation to Combine (for §103 grounds): This ground relied on a single reference. Petitioner argued Nagai itself teaches the complete claimed combination. A POSITA would have understood that the disclosed compression circuit would inherently contain a compression algorithm stored on suitable media and be controlled by the disclosed microcomputer, rendering the full apparatus obvious.
  • Expectation of Success (for §103 grounds): Petitioner asserted a high expectation of success, as Nagai describes a functioning, integrated device that already combines camera and mobile phone technology for the purpose of capturing and transmitting images.

Ground 3: Obviousness over Nagai and Sakata - Claims 19 and 20 are obvious over Nagai in view of Sakata.

• Prior Art Relied Upon: Nagai (Japanese Patent No. H9-37129) and Sakata (Japanese Patent No. H8-191435).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground specifically addressed the physical housing limitations of claims 19 and 20, which recite a housing with first and second sections movable relative to each other. Petitioner argued that Nagai’s portable phone provides the base device, while Sakata discloses a "flip phone" configuration with a camera device in one housing section and a panel display in a second, pivotally connected housing section.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Nagai's camera phone with Sakata's hinged housing design to achieve a more compact and portable device. Petitioner argued that by the time of Nagai's publication, mobile phones with hinged, two-part housings (i.e., "flip phones") were widely available and a well-known design choice for reducing a device's dimensions.
  • Expectation of Success (for §103 grounds): Success was expected because combining functional electronics into a hinged housing was a routine and predictable design modification in the art of portable electronics at the time.

• Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 16-18 over McNelley in view of Nagai. This combination was proposed to explicitly add Nagai's teachings of a TDMA transmission protocol to McNelley's system to ensure compatibility with contemporary cellular networks.

4. Key Claim Construction Positions

• "Transmission Protocol" (claims 16-18): Petitioner argued this term should be construed broadly as "one or more rules governing transmission." This construction was based on the patent's specification stating that "transmission protocols are virtually endless," indicating the patentee did not intend a narrow definition.
• "Media being suitable to embody ... algorithm" (claims 1, 22, 24, 26, 27): Petitioner proposed this term be construed as "media having an algorithm in the form of hardware, software or a combination of hardware and software." This construction was argued to be consistent with the specification's disclosure of storing algorithms on portable media like PCMCIA cards or in memory for use by a processor.

5. Key Technical Contentions (Beyond Claim Construction)

• Invalidity of Early Invention Date: A central contention was that the ’168 patent was not entitled to its claimed priority date of March 18, 1993, which the patentee asserted during prosecution via a 37 C.F.R. 1.131 affidavit. Petitioner argued the affidavit failed because it lacked corroborating evidence for a portable device with all claimed features (especially the display) and failed to show continuous reasonable diligence between 1992 and 1995. Therefore, Petitioner contended the effective priority date is no earlier than the application filing date of January 12, 1998, making McNelley, Nagai, and Sakata valid prior art.

7. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-31 of the ’168 patent as unpatentable.