PTAB

IPR2015-00607

Samsung Electronics Co Ltd v. E Watch Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Image Capture and Transmission System
  • Brief Description: The ’168 patent describes a portable, wireless apparatus for image capture, conversion, compression, storage, and transmission. The system integrates a camera, display, processing platform, memory, and mobile phone functionality into a single portable housing.

3. Grounds for Unpatentability

Ground 1: Claims 19 and 20 are obvious over McNelley in view of Sarbadhikari.

  • Prior Art Relied Upon: McNelley (Patent 5,550,754) and Sarbadhikari (Patent 5,477,264).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that McNelley discloses a portable, wireless “telecamcorder” that serves as the basis for the apparatus in independent claim 1. McNelley’s device includes a portable housing, an image collection device (camera), a display, memory for storing digital image data, and integrated mobile phone functionality for wireless transmission. To meet the claim limitation of a "media... suitable to embody at least one compression algorithm," Petitioner pointed to Sarbadhikari, which discloses an electronic camera with memory storing updatable compression algorithms (e.g., JPEG) that are executed by a processor.
    • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA) would combine Sarbadhikari’s software-based, updatable compression with McNelley’s telecamcorder to improve teleconferencing capabilities by reducing required bandwidth. This modification would also reduce development costs compared to a hardware-only (ASIC) solution and allow for future algorithm updates, as taught by Sarbadhikari.
    • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success as both references operate in the same technical field of portable imaging devices and address similar problems of image processing and storage.
    • Key Aspects: This ground asserted that McNelley alone teaches the specific mechanical housing limitations of dependent claims 19 and 20, which require a first housing section (e.g., a camera boom) movable relative to a second housing section (the main body) that supports the display. Claim 20’s requirement for pivotal movement is met by McNelley’s disclosure of pivots connecting the camera boom to the main housing.

Ground 2: Claims 19 and 20 are obvious over Morita and Sarbadhikari in view of McNelley.

  • Prior Art Relied Upon: Morita (JP Application Pub. No. H06-133081), Sarbadhikari (Patent 5,477,264), and McNelley (Patent 5,550,754).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground is based on an argument previously instituted by the Board in a related inter partes review (IPR). Petitioner asserted that Morita, which discloses a portable camera-phone with a housing, camera, display, and memory, provides the primary system of claim 1. As in Ground 1, Sarbadhikari was cited to teach using a memory to store a software-based, updatable compression algorithm executed by a processor. The combination of Morita and Sarbadhikari was argued to meet all limitations of claim 1. McNelley was then added to this combination to provide the specific multi-part, movable housing features recited in dependent claims 19 and 20.
    • Motivation to Combine (for §103 grounds): A POSITA would first combine Morita and Sarbadhikari for the benefits of software-based compression (cost, updatability, efficiency). A POSITA would then be motivated to incorporate the movable housing features of McNelley into the Morita/Sarbadhikari device to add functionality, such as allowing the user to capture images of their surroundings while using the display as a viewfinder or to conduct more natural face-to-face teleconferencing.
    • Expectation of Success (for §103 grounds): Success was expected because all three references relate to portable electronic imaging devices, and integrating a known pivoting camera mechanism (from McNelley) into a camera-phone (from Morita/Sarbadhikari) is a predictable combination of known elements.

Ground 3: Claims 19 and 20 are obvious over Wilska and Yamagishi-992 in view of McNelley.

  • Prior Art Relied Upon: Wilska (U.K. Application Pub. No. GB 2289555), Yamagishi-992 (European Application Pub. No. 0594992), and McNelley (Patent 5,550,754).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground also builds upon a combination previously instituted by the Board. Wilska discloses a handheld device for personal communication and picture taking, including a wireless housing, camera, and cellular phone modem. Yamagishi-992, an information signal processing apparatus, was cited to teach a more advanced system with user-selectable compression algorithms, multiple operational modes (recording, playback, transmission), and a display that can function as a viewfinder. The combination of Wilska and Yamagishi-992 was argued to meet the limitations of claim 1. McNelley was again relied upon to supply the specific movable and pivoting housing structures required by dependent claims 19 and 20.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Wilska and Yamagishi-992 to create a more robust device that merges Wilska's handheld form factor with Yamagishi-992's superior image processing and compression features. A POSITA would then incorporate McNelley’s mechanical design to provide the well-known benefit of a movable camera, enhancing the device’s utility for both photography and teleconferencing.
    • Expectation of Success (for §103 grounds): Combining these known features from the field of portable electronics was argued to be a predictable design choice that would yield expected results, with no technical barriers to implementation.

4. Key Claim Construction Positions

  • "media being suitable to embody at least one compression algorithm" (claim 1): Petitioner proposed adopting the construction from a related IPR (IPR2014-00989): "a storage device for storing software to perform, among other functions, image compression and storage of transmission protocols." This construction is critical because it allows prior art disclosing software-based compression (like Sarbadhikari) to meet the claim limitation, rather than requiring a dedicated hardware implementation.
  • "commonly moving" (claim 1): Petitioner also adopted the Board's construction from the related IPR: "that the movement of the portable housing causes movement of the image collection device or display." This straightforward interpretation supports the argument that any device with a camera and display fixed within a single housing meets this limitation.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should institute review and not exercise discretionary denial. It noted that the Board had already instituted IPR on other claims of the same ’168 patent based on combinations including the same prior art references (specifically in IPR2014-00989, brought by HTC). Petitioner contended that its grounds for claims 19 and 20 were logical extensions of those already-instituted grounds, merely adding limitations taught by well-known art (McNelley). Therefore, institution would promote a just, speedy, and inexpensive resolution without being duplicative.

6. Relief Requested

  • Petitioner requests institution of IPR and cancellation of claims 19 and 20 of the ’168 patent as unpatentable.