PTAB

IPR2015-00610

Samsung Electronics Co Ltd v. E Watch Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Handheld Cellular Telephone and Electronic Camera Combination
  • Brief Description: The ’871 patent describes a handheld, self-contained device that integrates an electronic camera with a cellular telephone for image capture, processing, storage, and wireless transmission. Claim 9, the only independent claim challenged, recites a combination device including a housing, camera, display, processor, memory, cellular telephone, alphanumeric keys, power supply, wireless transmitter/receiver, and digital/analog circuits for controlling camera functions.

3. Grounds for Unpatentability

Ground 1: Claims 9-11 are obvious over Wilska in view of Yamagishi-114 and Kurashige.

  • Prior Art Relied Upon: Wilska (U.K. Patent Application Pub. No. GB 2289555), Yamagishi-114 (JP Patent Application Pub. No. H06-176114), and Kurashige (European Patent Application Pub. No. 0734156).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that the combination of these three references teaches or suggests every limitation of the challenged claims.
      • Wilska was argued to disclose the foundational device: a portable, handheld combination of a cellular phone and an electronic camera within a single housing. Petitioner mapped Wilska to the majority of claim 9’s elements, including the housing, integrated camera, processor, memory, cellular telephone with transmitter/receiver, alphanumeric keys, and a power supply.
      • Yamagishi-114 was introduced to teach using the device’s display as a viewfinder for "framing the image to be captured," a limitation Petitioner argued was not explicitly taught by Wilska. Yamagishi-114 describes a "through-mode" where the display continuously shows the image picked up by the camera, allowing an operator to establish the image boundaries prior to capture.
      • Kurashige and Yamagishi-114 were combined to teach the final key limitation of claim 9: "digital/analog circuits for converting digital commands to analog signals for controlling" a list of specific camera functions (e.g., gain, focus, white balance, lens iris, zoom). Petitioner argued Yamagishi-114 discloses a control system where digital user inputs actuate analog camera components like the lens array and shutter. Kurashige was asserted to supplement this by disclosing a system where a microcomputer uses stored setup data (digital commands) to automatically control a wide array of analog camera functions, including gain, white clip, white balance, and lens iris, through control circuits. Kurashige also discloses a camera control unit for adjusting "pedestal level."
      • For dependent claim 10, which adds a "removable memory module," Petitioner argued that both Wilska (disclosing a removable PCMCIA card) and Yamagishi-114 (disclosing detachable memory units) teach this feature.
      • For dependent claim 11, which requires the display to be "suitable also for viewing image data signals received by the receiver," Petitioner pointed to Wilska’s disclosure of displaying incoming images, such as bitmap fax messages, on its screen.
    • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine these references to achieve predictable improvements. A POSITA would modify Wilska’s device with Yamagishi-114’s viewfinder functionality to create a more compact, cost-effective, and user-friendly device by eliminating the need for a separate optical viewfinder. Further, a POSITA would be motivated to incorporate the advanced, automated camera controls taught by Yamagishi-114 and Kurashige into Wilska’s basic device to improve the quality of captured images, which was a well-known goal in the field. All three references are from the same technical field of portable digital imaging devices, making their combination straightforward.
    • Expectation of Success: The petition asserted that combining these known elements from the prior art would have been a "commonsense combination" with predictable results. Implementing a display-based viewfinder, removable memory, and digital control of analog camera functions were all well-understood technologies at the time, ensuring a POSITA would have a high expectation of success.

4. Key Claim Construction Positions

  • The petition focused on the claim 9 term "framing the image to be captured."
    • Petitioner adopted the construction used by the Patent Trial and Appeal Board in a related proceeding (IPR2014-00987): "establishing the boundaries of the image to be captured." This construction was critical to Petitioner's argument, as it allowed the "through-mode" viewfinder functionality described in Yamagishi-114 to be directly mapped onto this claim limitation.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 9-11 of the ’871 patent as unpatentable under 35 U.S.C. §103.