Apple Inc v. E Watch Inc

1. Case Identification

• Case #: IPR2015-00412
• Patent #: 7,365,871
• Filed: December 11, 2014
• Petitioner(s): Apple Inc.
• Patent Owner(s): E-Watch, Inc.
• Challenged Claims: 1-8 and 12-14

2. Patent Overview

• Title: Handheld Cellular Telephone with Integrated Image Processing System
• Brief Description: The ’871 patent discloses a handheld, self-contained device that integrates a cellular telephone with an image processing system. The invention is directed to a portable system capable of capturing, processing, storing, and transmitting digital images and audio over a wireless telephone network.

3. Grounds for Unpatentability

Ground 1: Claims 1-8 and 12-14 are obvious over McNelley in view of Umezawa.

• Prior Art Relied Upon: McNelley (Patent 5,550,754) and Umezawa (Patent 5,491,507).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that the combination of McNelley and Umezawa teaches every limitation of the challenged claims. McNelley was asserted to disclose the foundational system: a handheld "telecamcorder" that operates as a portable teleconferencing terminal with an integrated camera, display, memory, power supply, and wireless cell phone functionality. Petitioner mapped most limitations of independent claims 1, 6, and 12 to McNelley's disclosures of a handheld housing containing the core components.

  For any claim features arguably not explicitly taught by McNelley, Petitioner contended that Umezawa provided the missing disclosure. Umezawa, which describes a handheld video telephone, was cited for explicitly teaching features such as a processor and memory on a main circuit board, an LCD touch control panel for user input, and the ability to display keyed-in alphanumeric data. For example, for claim 1(g)’s “processor,” Petitioner argued that if McNelley’s "camera electronics" were deemed insufficient, Umezawa explicitly discloses the required processor. This pattern of using Umezawa to supplement McNelley was applied to limitations across all independent claims concerning the processor, memory access, user interface, and alphanumeric input/display functions. Dependent claims, adding features like a removable memory module (claims 4, 8, 13) or display functionalities (claims 2, 3, 5, 7, 14), were argued to be obvious for similar reasons, with McNelley disclosing the features or the combination rendering them obvious enhancements.

  • Motivation to Combine (for §103 grounds): Petitioner asserted a person of ordinary skill in the art (POSA) would have been motivated to combine the teachings of McNelley and Umezawa because both references address the same technical problem of creating a portable, handheld videoconferencing device. A POSA would combine Umezawa’s well-known user interface (e.g., LCD touch panel) and processor functionality into McNelley’s system to create a smaller, more convenient, and more user-friendly device, and to enable features like confirming a phone number on-screen.

  • Expectation of Success (for §103 grounds): A POSA would have had a reasonable expectation of success because the combination involved integrating known components (like a processor or touch screen) according to known methods to perform their respective, predictable functions without changing their fundamental operation.

4. Key Claim Construction Positions

• "Framing an image": The petition argued that for the purposes of the IPR, this term (and its variations in claims 1, 2, 6, 7, and 12) should be construed under the broadest reasonable interpretation standard as "obtaining data representing an image as shown on a display." This construction was presented to clarify the scope of the claims in light of the prior art's disclosure of displaying images on a screen for capture.

5. Arguments Regarding Discretionary Denial

• The petition was filed concurrently with two other petitions by Apple Inc. against the same ’871 patent (IPR2015-00411 and IPR2015-00413). Petitioner argued that the petitions were not redundant and should not be denied on that basis. It was asserted that each petition presented an independent and distinct basis for unpatentability: this petition relies on an obviousness combination of McNelley and Umezawa, another relies on an obviousness combination of Parulski and Umezawa, and the third asserts anticipation based on a disputed priority claim.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-8 and 12-14 of Patent 7,365,871 as unpatentable.