PTAB

IPR2015-00543

Samsung Electronics Co Ltd v. E Watch Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Image Capture and Transmission System
  • Brief Description: The 7,643,168 patent describes a wireless, portable handheld apparatus that integrates an image collection device (camera), a display, a processing platform for data compression, memory, and a mobile phone for wireless transmission of compressed digital image data.

3. Grounds for Unpatentability

Ground 1: Claims 1-6, 8, 10, 11, 13-15, 21-29, and 31 are obvious over Morita in view of Sarbadhikari.

  • Prior Art Relied Upon: Morita (Japanese Patent Application Publication No. H06-133081) and Sarbadhikari (Patent 5,477,264).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Morita, which describes a portable mobile camera-phone, taught most limitations of independent claim 1. This included a wireless portable housing containing an image collection device, a display, memory, an input device, a processing platform, and a mobile phone for wireless transmission. Petitioner asserted that while Morita’s image processing circuit produced compressed data, it did not explicitly disclose storing the compression algorithm on a “media.” To supply this limitation, Petitioner relied on Sarbadhikari, which described an electronic camera with memory for storing upgradable compression algorithms (e.g., JPEG) that are retrieved and executed by a processor. The combination of Morita’s hardware and Sarbadhikari’s software-based compression allegedly rendered claim 1 obvious. Dependent claims were argued to be obvious based on additional disclosures in Morita or the combination.
    • Motivation to Combine: A POSITA would combine Sarbadhikari’s software-based compression with Morita’s device to reduce development costs, allow for upgradable algorithms, reduce storage space requirements, and decrease bandwidth needed for image transmission.
    • Expectation of Success: The combination was asserted to be predictable, as both references operated in the same technical field of portable digital imaging devices and addressed similar components and functions.

Ground 2: Claims 1-6, 8, 10, 11, 16-18, 21, 22, 24, 26, 27, and 29 are obvious over Wilska in view of Yamagishi-992.

  • Prior Art Relied Upon: Wilska (U.K. Patent Application GB 2,289,555) and Yamagishi-992 (European Patent Application No. 0594992).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that Wilska disclosed the primary apparatus of claim 1: a portable handheld device with an integrated camera, a display, a processing unit, memory, and a cellular phone for wireless data transmission. To teach the claim limitation of "media... suitable to embody at least one compression algorithm," Petitioner combined Wilska with Yamagishi-992. Yamagishi-992 described an electronic camera with a compression circuit that uses a selectable compression algorithm (e.g., ADCT) stored in memory. The combination of Wilska’s integrated handset and Yamagishi-992’s software-based, selectable compression was argued to render the independent claims obvious.
    • Motivation to Combine: A POSITA would combine Yamagishi-992’s compression capabilities with Wilska’s device to achieve the well-known benefits of reducing storage space and transmission bandwidth. Implementing compression in software stored in memory, as taught by Yamagishi-992, was a known, predictable design choice for flexibility and cost-effectiveness.
    • Expectation of Success: Success was expected because both references disclosed handheld digital cameras with similar components, making the integration of Yamagishi-992's software compression into Wilska’s hardware platform a predictable implementation of known technologies.

  • Additional Grounds: Petitioner asserted two additional obviousness grounds. The first combined Morita, Sarbadhikari, and Longginou (WO 95/23485) to teach the selectable transmission protocol limitations of claims 16-18. The second combined Wilska, Yamagishi-992, and McNelley (Patent 5,550,754) to teach limitations related to a display screen being defined apart from a viewfinder, as recited in claims 13-15, 23, 25, 28, and 31.

4. Key Claim Construction Positions

  • “Media” Terms: For terms like “media being suitable to embody at least one compression algorithm” (claim 1), Petitioner proposed adopting the construction from a related IPR: “a storage device for storing software to perform, among other functions, image compression and storage of transmission protocols.” This construction was argued to be supported by dictionary definitions and the patent specification, and to cover the software-based compression algorithms disclosed in Sarbadhikari and Yamagishi-992.
  • “Commonly moving”: For this term in claims 1, 22, and 24, Petitioner proposed the construction from the related IPR: “that the movement of the portable housing causes movement of the image collection device or display.” Petitioner argued this interpretation is consistent with the claims and is met by the prior art references (Morita and Wilska), which show the camera and display integrated into a single housing.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-6, 8, 10, 11, 13-18, 21-29, and 31 of the ’168 patent as unpatentable.