Apple Inc v. E Watch Inc

1. Case Identification

• Case #: IPR2015-00413
• Patent #: 7,365,871
• Filed: December 11, 2014
• Petitioner(s): Apple Inc.
• Patent Owner(s): E-Watch, Inc.
• Challenged Claims: 1-3, 5-7, 12, and 14

2. Patent Overview

• Title: Handheld Cellular Telephone and Integrated Image Processing System
• Brief Description: The ’871 patent relates to an image capture, compression, and transmission system. The invention is a handheld device that integrates a cellular telephone with an electronic camera, allowing a user to capture, store, process, and transmit digital images over a wireless telephone network.

3. Grounds for Unpatentability

Ground 1: Claims 1-3, 5-7, 12, and 14 are obvious over Parulski in view of Umezawa.

• Prior Art Relied Upon: Parulski (Patent 5,666,159) and Umezawa (Patent 5,491,507).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the challenged claims are obvious over the combination of Parulski and Umezawa. Parulski was asserted to be the primary reference, disclosing a handheld device that combines a cellular telephone with an electronic camera for capturing and transmitting still images. Petitioner contended Parulski teaches most core elements of the independent claims (1, 6, 12), including a portable housing, an integrated camera, a processor for generating image data, memory for storage, a display, and a telephonic system for wireless transmission. For any claim elements arguably not explicit in Parulski, Petitioner relied on Umezawa. Umezawa discloses a handheld video telephone capable of teleconferencing, and was cited for features such as displaying incoming image data signals, using the display to frame an image prior to capture, and providing a self-contained power supply (battery). For example, regarding the limitation in claim 1 for a display "for displaying an image framed by the camera," Petitioner asserted that Parulski’s display functions as a viewfinder, but argued that even if it did not, Umezawa explicitly teaches this feature, rendering the combination obvious.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the teachings of Parulski and Umezawa because both references address the same technical problem: creating a portable, integrated wireless device for image capture and communication. Petitioner asserted a POSITA would be motivated to incorporate Umezawa’s functionalities, such as video conferencing and its associated user interface features, into Parulski’s device to improve its capabilities. This combination, uniting old elements with no change in their respective functions, would have been a predictable and desirable improvement.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the references. The integration of known, modular components from Parulski (a camera phone) and Umezawa (a video phone)—such as a camera, processor, display, and power supply—into a single handheld device was a matter of routine skill. The combination would yield the predictable result of a device with enhanced, user-friendly functionality.

4. Key Claim Construction Positions

• Term: “Framing an image” (appearing in variations across claims 1, 2, 6, 7, and 12, such as “an image framed by the camera” and “visually framing a visual image to be captured”).
• Proposed Construction: Petitioner proposed that this term should be construed under the Broadest Reasonable Interpretation (BRI) standard as "obtaining data representing an image as shown on a display."
• Relevance: This construction was central to Petitioner's obviousness argument. Petitioner contended that under this interpretation, the limitation is met by Parulski’s disclosure of a display that would be understood to function as a viewfinder. Furthermore, Petitioner argued that the limitation is explicitly taught by Umezawa, which describes a user viewing a scene on the display as it is being photographed. This mapping was critical to establishing that the combination of references taught this key feature of the independent claims.

5. Key Technical Contentions (Beyond Claim Construction)

• Insufficiency of the Monroe Rule 131 Affidavit: A central contention of the petition was that the Monroe affidavit (Ex. 1002), filed during the original prosecution of the ’871 patent to antedate the Parulski reference, was facially insufficient.
• Relevance: Petitioner argued that the affidavit failed to establish reasonable diligence throughout the entire critical period, which spanned approximately 22 months from Parulski’s filing date (April 24, 1995) to the alleged reduction to practice (“mid-1997”). According to Petitioner, the affidavit contained major gaps of unexplained inactivity and failed to provide specific, corroborated evidence of continuous work on the invention. This alleged failure meant the Examiner erred in allowing the applicant to "swear behind" Parulski, and therefore, Parulski is proper prior art that should have been applied against the claims.

6. Arguments Regarding Discretionary Denial

• Arguments Against §325(d) Denial: Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate because the petition did not present the "same or substantially the same prior art or arguments" previously considered by the USPTO. The basis for this assertion was twofold:
  • 1. The Examiner’s original review was substantively flawed due to the improper acceptance of the facially deficient Monroe affidavit, which prevented a full consideration of Parulski on its merits.
  • 2. The petition raised new arguments concerning the express teachings of Parulski, which Petitioner alleged the applicant misconstrued during prosecution. These new arguments and the challenge to the affidavit's validity provided the Board with a new basis to review the patentability of the claims.

7. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-3, 5-7, 12, and 14 of Patent 7,365,871 as unpatentable.