Samsung Electronics Co Ltd v. E Watch Inc

1. Case Identification

• Case #: IPR2015-00611
• Patent #: 7,643,168
• Filed: January 23, 2015
• Petitioner(s): Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
• Patent Owner(s): E-WATCH, INC.
• Challenged Claims: 1-31

2. Patent Overview

• Title: Image Capture and Transmission System
• Brief Description: The ’168 patent describes an image capture, compression, and transmission system designed for reliable visual image transmission over wired or wireless networks, using standard facsimile techniques. The system is embodied in a portable device that integrates camera functions with a mobile phone for transmission.

3. Grounds for Unpatentability

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

• Prior Art Relied Upon: ’818 publication (International Publication No. WO 1999/035818).
• Core Argument for this Ground:
  • Priority Date Challenge: Petitioner’s anticipation argument hinges on establishing an effective filing date for the ’168 patent no earlier than January 3, 2003. This would make the ’818 publication, published on July 15, 1999, a valid prior art reference under 35 U.S.C. §102(b). Petitioner asserted two primary defects in the patent’s claim to an earlier 1998 priority date from the ’073 application:
    • Improper Priority Claim: The application for the ’168 patent properly claimed priority only to the ’470 application (filed January 3, 2003), which matured into the parent ’871 patent. Petitioner argued that language in the specification attempting to claim priority to the earlier ’073 application was merely a copy-and-paste error from the parent patent’s specification and was facially incorrect, as the ’168 patent application was a continuation of the ’470 application, not a divisional of the ’073 application.
    • Broken Chain of Priority: Even if the claim were proper, Petitioner argued the chain of priority was broken. The ’073 application was intentionally abandoned on March 1, 2001, and was therefore not co-pending when the ’470 application was filed in January 2003. Petitioner contended that the subsequent revival of the ’073 application, based on a claim of "unintentional" abandonment, was legally improper because the record showed the abandonment was a deliberate strategic decision.
  • Prior Art Mapping: Petitioner argued that with the 2003 effective filing date established, the ’818 publication anticipates every limitation of claims 1-31. This is because the ’818 publication stems from a PCT application that claims priority to the same ’073 application and possesses a substantially identical specification to the ’168 patent. Petitioner asserted that the Patent Owner could not contest the ’818 publication’s disclosures without simultaneously admitting that the challenged claims lack written description support in the ’168 patent itself.
    • For independent claim 1, Petitioner mapped key elements to the ’818 publication, including a portable, wireless housing (Fig. 6B, 7A); an image collection device such as a digital or analog camera; a display such as a viewfinder (Fig. 7A); memory for storing image data (RAM, Flash RAM, PCMCIA card); a processing platform executing a compression algorithm; and an integrated mobile phone for wireless transmission of compressed image data.
    • Petitioner provided similar element-by-element mappings for the remaining independent claims (22, 24, 26, 27, 29) and their dependents, arguing that every claimed feature was explicitly or inherently disclosed in the ’818 publication due to the near-identical specifications.

4. Key Claim Construction Positions

• “media being suitable to embody at least one compression algorithm”: Petitioner proposed adopting the Board’s construction from a related IPR (IPR2014-00989), defining this phrase as “a storage device for storing software to perform, among other functions, image compression and storage of transmission protocols.” This construction relies on dictionary definitions and the patent’s disclosure of components like ROM, Flash RAM, and PROM for storing software executed by a processor.
• “commonly moving”: This term appears in limitations such as “movement by the user of the portable housing commonly moving the image collection device.” As the specification does not use this phrase, Petitioner proposed adopting the Board’s construction from the same related IPR, which interpreted the term to mean “that the movement of the portable housing causes movement of the image collection device or display.”

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-31 of the ’168 patent as unpatentable.