Apple Inc v. E Watch Inc

1. Case Identification

• Case #: IPR2015-00411
• Patent #: 7,365,871
• Filed: December 11, 2014
• Petitioner(s): Apple Inc.
• Patent Owner(s): E-Watch, Inc.
• Challenged Claims: 1-15

2. Patent Overview

• Title: Handheld Cellular Telephone with Integrated Image Processing System
• Brief Description: The ’871 patent describes an integrated, handheld system combining a cellular telephone with an image capture device. The system is designed to capture, compress, and transmit visual images over wireless or landline networks using standard communication techniques.

3. Grounds for Unpatentability

Ground 1: Anticipation over the '818 Publication - Claims 1-15 are anticipated by the ’818 publication under 35 U.S.C. §102(b).

• Prior Art Relied Upon: Monroe (WO 1999/035818) (“the ’818 publication”).
• Core Argument for this Ground:
  • Priority Date Challenge: Petitioner’s argument hinged on establishing that the ’871 patent was not entitled to its claimed priority date of January 12, 1998, from U.S. Application No. 09/006,073 (the ’073 application). Petitioner argued the ’073 application was deliberately abandoned on March 1, 2001, when its prosecuting attorneys filed a divisional application (’381 application) in its place and allowed the ’073 application to go abandoned by not filing a substantive response to a final office action. Nearly two years later, after the ’381 application’s priority claim failed due to a filing error, the patent owner filed a petition to revive the ’073 application, claiming the abandonment was "unintentional." Petitioner contended this revival was improper because the original abandonment was a deliberate strategic decision. Consequently, Petitioner argued the correct effective filing date for the ’871 patent is its actual filing date of January 3, 2003.
  • Prior Art Status: Because the ’818 publication was published on July 15, 1999, it predates the ’871 patent’s effective filing date (January 3, 2003) by more than one year, making it a statutory bar under §102(b).
  • Prior Art Mapping: Petitioner asserted that the ’818 publication and the ’871 patent share a substantially identical specification, meaning the ’818 publication explicitly or inherently discloses every limitation of the challenged claims.
    • Independent Claim 1: This claim recites a handheld cellular telephone with an integrated image processing system. Petitioner mapped limitations to the ’818 publication’s disclosure of an "integral cellular phone" incorporated in a camera housing for sending and receiving audio and visual image data. The publication allegedly disclosed a portable housing, an integral electronic camera, a display (viewfinder or LCD unit), a processor for generating image data signals, and memory for storing images for later recall and transmission.
    • Independent Claim 6: This claim recites a handheld cellular telephone with an integrated electronic camera. Petitioner argued the ’818 publication disclosed this through its description of a handheld camera body with an "integral cellular phone," a keypad for alphanumeric input, and a user interface for selectively displaying and transmitting captured images.
    • Independent Claim 9: This claim recites a combination of a handheld cellular telephone and electronic camera. Petitioner again pointed to disclosures in the ’818 publication of a camera housing with an integral camera, a display for framing and viewing images, a processor for generating a digitized image, memory for storage, and an integrated cellular telephone for accepting, digitizing, and transmitting audio and image signals.
    • Independent Claim 12: This claim recites a combination of a handheld wireless telephone and a digital camera. Petitioner’s mapping was similar to the other independent claims, highlighting the ’818 publication's disclosure of a handheld housing supporting both devices, a display for framing images, a processor, memory, and operable keys for user input.
    • Dependent Claims: Petitioner argued that the ’818 publication also disclosed the additional features of the dependent claims, including a removable memory module (claims 4, 8, 10, 13), a display capable of showing incoming image data (claims 5, 11, 14), and a display for viewing alphanumeric messages (claim 3).

4. Key Claim Construction Positions

• Petitioner proposed a construction for the term "Framing an image" and its variants, which appear in claims 1, 2, 6, 7, and 12.
  • Proposed Construction: "obtaining data representing an image as shown on a display."
  • Rationale: Petitioner argued that while the ’871 patent does not explicitly define the term, the specification’s references to capturing single-frame images, displaying the status of a selected frame, and manipulating data representing each frame image support this construction under the broadest reasonable interpretation standard. This construction was central to mapping the claim limitations to the prior art’s disclosure of viewfinders and LCD displays.

7. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-15 of Patent 7,365,871 as unpatentable.