Apple Inc v. E Watch Inc

1. Case Identification

• Case #: IPR2015-00414
• Patent #: 7,643,168
• Filed: December 11, 2014
• Petitioner(s): Apple Inc.
• Patent Owner(s): E-Watch, Inc.
• 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 capture, compression, and transmission system. The system incorporates a camera and signal converter into a single unit designed for reliable visual image transmission over landline or wireless networks, with options for real-time transmission or storage for later recall.

3. Grounds for Unpatentability

Ground 1: Anticipation based on Broken Priority Chain - Claims 1-31 are anticipated under 35 U.S.C. §102(b) by the ’818 publication.

• Prior Art Relied Upon: WO 1999/035818 (’818 publication).
• Core Argument for this Ground:
  • The petition’s central argument is not based on a technical difference between the prior art and the claims, but on a legal argument regarding the patent’s effective filing date. Petitioner asserted that the Patent Owner deliberately broke the priority chain to an earlier-filed application during prosecution.
  • Specifically, Petitioner argued that the ’168 patent’s earliest valid priority date is January 3, 2003, the date explicitly chosen by the Applicant in the Application Data Sheet and a preliminary amendment. Petitioner contended that language in the specification attempting to claim priority to a 1998 application is defective on its face because it misidentifies the relationship between the applications and lacks the required co-pendency.
  • The ’818 publication, which is the published version of a PCT application from the same family tree, was published on July 15, 1999. This date is more than one year prior to the ’168 patent’s effective filing date of January 3, 2003, making the ’818 publication qualifying prior art under §102(b).
  • The core of the anticipation argument is that the ’168 patent and the ’818 publication share a substantially identical specification. Therefore, by breaking the priority chain, the Patent Owner allowed its own earlier, published application to become anticipatory prior art to all claims of the ’168 patent.
  • Prior Art Mapping: Petitioner argued that because the disclosure of the ’818 publication is identical to the specification of the ’168 patent, every limitation of challenged claims 1-31 is explicitly or inherently disclosed in the ’818 publication. The petition provided a detailed, element-by-element mapping for each of the 31 challenged claims, citing specific pages and figures in the ’818 publication that correspond to each claimed feature, including the wireless portable housing, image collection device, memory, display, processing platform, and integrated mobile phone functionalities.

4. Key Claim Construction Positions

• Viewfinder: This term appears in claims 10-13, 23, 25, 28, and 31.
  • Proposed Construction: "a device for depicting a view."
  • Rationale: Petitioner argued this construction is appropriate under the broadest reasonable interpretation standard because it is broad enough to cover both electrical and non-electrical viewfinders. This aligns with the patent’s disclosure, which describes embodiments where a display screen (like an LCD) is located apart from the viewfinder, meaning the viewfinder itself may not be an electronic display.