trials@uspto.gov
`571-272-7822
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`IPR2015-00412, Paper No. 49
`May 6, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., ZTE CORPORATION
`and ZTE (USA) INC.,
`Petitioner,
`
`v.
`
`E-WATCH, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00412
`Patent 7,365,871 B2
`____________
`
`Held: January 8, 2016
`____________
`
`
`BEFORE: JAMESON LEE, GREGG I. ANDERSON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Friday, January
`8, 2016, commencing at 1:00 p.m., at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`571-272-7822
`
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`
`
`IPR2015-00412, Paper No. 49
`May 6, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., ZTE CORPORATION
`and ZTE (USA) INC.,
`Petitioner,
`
`v.
`
`E-WATCH, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00412
`Patent 7,365,871 B2
`____________
`
`Held: January 8, 2016
`____________
`
`
`BEFORE: JAMESON LEE, GREGG I. ANDERSON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Friday, January
`8, 2016, commencing at 1:00 p.m., at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`Case IPR2015-00412
`Patent 7,365,871 B2
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER (APPLE):
`
`
`BRIAN M. BUROKER, ESQ.
`
`
`BLAIR A. SILVER, ESQ.
`
`
`Gibson Dunn & Crutcher LLP
`
`
`1050 Connecticut Avenue, N.W.
`
`
`Washington, DC 20036-5306
`
`
`
`and
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`
`
`
`
`
`KIM MOORE, ESQ.
`Apple
`1 Infinite Loop MS 169-2NYJ
`Cupertino, California 95014
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`ON BEHALF OF PETITIONER (ZTE):
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`BRIAN C. NASH, ESQ.
`BARRY K. SHELTON, ESQ.
`Pillsbury Winthrop Shaw Pittman LLP
`401 Congress Avenue, Suite 400
`Austin, Texas 78701
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`Case IPR2015-00412
`Patent 7,365,871 B2
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`ON BEHALF OF PATENT OWNER:
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`GREGORY DONAHUE, ESQ.
`ANDREW G. DiNOVO, ESQ.
`ADAM G. PRICE, ESQ.
`CHRISTOPHER V. GOODPASTOR, ESQ.
`DiNovo Price Ellwanger & Hardy LLP
`7000 North MoPac Expressway, Suite 350
`Austin, Texas 78731
`
`and
`
`DAVID A. MONROE, CEO
`e-Watch Corporation
`23011 IH-10 West
`San Antonio, Texas 78257
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`Case IPR2015-00412
`Patent 7,365,871 B2
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE LEE: Good afternoon. Welcome to the Board.
`This is the final hearing for IPR2015-00412, and we have a
`second IPR that's been joined to this case, that second case is
`IPR2015-01366. Am I correct?
`MR. BUROKER: Yes, Your Honor.
`MR. DONAHUE: Yes, Your Honor.
`JUDGE LEE: So, we have two judges today who are
`attending remotely, Judge Clements from California and Judge
`Anderson also from California. Let me remind counsel that if
`you step away from the podium at all, our remote judges wouldn't
`be able to see you.
`Has either party brought paper copies of the
`demonstratives? If you have, I would like to have them now.
`MR. DiNOVO: We have, Your Honor.
`MR. BUROKER: Yes, we have, Your Honor. May we
`approach?
`JUDGE LEE: Please.
`MR. DiNOVO: Thank you.
`JUDGE LEE: Thank you so much. And each side has
`45 minutes of total argument time, and the Petitioner will begin,
`followed by Patent Owner and ending with Petitioner. There is
`also some materials that are subject to a motion to seal, so let me
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`Case IPR2015-00412
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`remind counsel not to disclose any confidential information in the
`course of this hearing.
`Let's start by Petitioner introducing themselves and
`Patent Owner's counsel introducing themselves.
`MR. BUROKER: Your Honor, Brian Buroker, Gibson
`Dunn on behalf of Apple, the Petitioner. With me today is my
`colleague, Blair Silver, Thomas Lee from Impact will be working
`the computer, and in-house counsel Kim Moore from Apple is
`also present, Your Honor.
`JUDGE LEE: Thank you so much.
`MR. BUROKER: And also there are two counsel
`present for the Petitioner ZTE and I will let them introduce
`themselves.
`MR. SHELTON: Good afternoon, Your Honor, Barry
`Shelton, Pillsbury Winthrop Shaw Pittman for the Petitioner ZTE,
`and my colleague, Brian Nash. Thank you.
`JUDGE LEE: Welcome.
`MR. DONAHUE: Hi, this is Greg Donahue, lead
`counsel for e-Watch, the Patent Owner, and with me is Drew
`DiNovo. Also in the audience we have two other lawyers from
`our firm, Chris Goodpastor and Adam Price, and the founder and
`president of e-Watch is also in attendance, David Monroe.
`JUDGE LEE: Thank you very much.
`Any time you're ready, Mr. Buroker, you may begin.
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`Case IPR2015-00412
`Patent 7,365,871 B2
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`
`MR. BUROKER: May it please the Board, my name is
`Brian Buroker on behalf of the Petitioner Apple.
`In this IPR, Your Honor, the Board should find that
`each of claims 1 through 8 and 12 through 14 of the '871 patent
`are invalid based on the instituted ground of McNelley in view of
`Umezawa, and that's Exhibits 1006 and 1007 for the record.
`The '871 patent, Your Honor, relates to the idea of
`having a telephone and a camera integrated together and making
`them portable. And it uses conventional technologies to do so.
`And as we will see, it discloses no more than what was already
`known in the art, particularly in the McNelley and Umezawa
`patents. Umezawa and McNelley are both directed to the idea of
`transmission of video and images over telephone and together
`show each and every element in the claims that we will go
`through.
`Now, Patent Owner raises six arguments why the
`combination should fail, and as we will discuss, each of those
`arguments is flawed. Five of the arguments relate to elements of
`the claims that they say are not present in the combination of
`McNelley and Umezawa, but those arguments are flawed because
`they are based on an incorrect reading of the claims, and incorrect
`claim constructions.
`The final argument is that they argue -- e-Watch argues
`that there should not be a proper combination of McNelley and
`Umezawa, and that argument is also flawed.
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`Case IPR2015-00412
`Patent 7,365,871 B2
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`So, I thought, Your Honor, if we could, let's start with a
`brief summary of the claims. So, let's look at slide 8, Mr. Lee.
`On slide 8, we have put on the left-hand side some of the figures
`from the McNelley reference, and on the right-hand side claim 1.
`And I'm just using claim 1 as representative of the other three,
`obviously there are slight differences between claims 1, 6 and 12,
`which are the independent claims here, but this shows us claim 1.
`What you have is a handheld device, according to the
`preamble, I guess one of the issues we'll get into quickly is
`whether the preamble is limiting, but I'm just reading it now for
`purposes of the record. You have a manually portable housing,
`an image -- an integral image capture device, a display, a
`processor, memory for storing the images that you take, a user
`interface for selecting images, telephonic system for sending and
`receiving audio messages and also sending the image, input keys
`that are alphanumeric, a wireless communication device and a
`power supply.
`JUDGE LEE: If you don't mind, I would like you to
`start with the -- to talk about the housing feature of these claims.
`I'm a little confused by your Reply, because on page 1 you seem
`to indicate that the integrated housing feature is only in claim 1
`but not in independent claims 6 and 12, but as I read on, the
`Reply, say on page 8, appears to indicate that none of the claims
`require an integrated housing. So, can you clarify exactly what
`you mean?
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`MR. BUROKER: Yeah, Your Honor. Our position is
`that claim 1, which is shown here in slide 8, for the Board's
`members who are remote, that the preamble is not a limitation.
`So, if you eliminate preamble, the only recitation that has
`anything to do with the housing is the language of being a
`manually portable housing and that does not require anything to
`be integrated into it. It just requires the housing and then other
`elements of the claim recite what has to be in the housing and
`which ones don't, but -- do you have a question, Your Honor?
`JUDGE LEE: Well, I'm not sure that that's what the
`Patent Owner is arguing. They do use the word "integral"
`housing, but don't they really just mean the same housing has to
`contain both the telephone and the camera? I mean, that's the
`way I read it. You seem to read the argument as something else.
`Why don't we just -- because I do see in each of the three
`independent claims the requirement that the same housing has to
`contain both the telephone system and the camera.
`MR. BUROKER: Well, even if that's true, Your Honor,
`
`the --
`
`JUDGE LEE: Well, let's -- don't say even. I see the
`words expressly in each of these three claims. Tell me why they
`are not there.
`MR. BUROKER: Well, the telephone and the camera
`have to be in the housing, that's true.
`JUDGE LEE: In the same housing?
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`Case IPR2015-00412
`Patent 7,365,871 B2
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`MR. BUROKER: In a housing.
`JUDGE LEE: In the same housing?
`MR. BUROKER: In a housing. It says, "the housing,"
`and that can be one or more housings, but it does say, "a manually
`portable housing," so that the combination of housings, one or
`more, have to be manually portable.
`The user interface element --
`JUDGE LEE: Well, let's just go with claim 1.
`MR. BUROKER: Okay.
`JUDGE LEE: It starts by defining a portable housing,
`and then it goes on to say, "an electronic camera contained within
`the portable housing," so we have the camera that's in that
`portable housing.
`MR. BUROKER: Right.
`JUDGE LEE: And later on it says, "a telephone system
`in the housing." So, it's referring to the same housing, isn't it?
`MR. BUROKER: Right, it's referring back to "the
`housing," and according to this Board and the Federal Circuit's
`case law, that can mean one or more. I agree with you that one
`reading of the claims is to say that they have to be in the same
`housing; even if that's true, the McNelley reference --
`JUDGE LEE: Well, let's not skip ahead, tell me why it
`isn't true. I mean, to me, the claim requires both the camera and
`the telephone be contained in one and the same housing. Tell me
`why that isn't true.
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`Patent 7,365,871 B2
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`MR. BUROKER: Well, Your Honor, I'm just saying
`that under the ordinary reading of the word "a," this Court -- this
`Board's case law and the Federal Circuit case law is "a" means
`one or more. An ordinary meaning of "a" means one or more.
`So, you could have one or more housings that are
`manually portable and you could have the camera and the
`telephone in that one or more housings.
`JUDGE LEE: Right, so whichever way you read it --
`MR. BUROKER: The integral language is different.
`JUDGE LEE: -- they end up in the same housing,
`whether "the" means one or more, it's got to be whatever you
`point to as containing the camera; it also has to contain the other
`part.
`
`MR. BUROKER: And that's true in the McNelley
`reference, Your Honor.
`JUDGE LEE: Well, you're not answering my question.
`I'm talking about claim construction. Do you agree or disagree
`that each of claims 1, 6 and 12 requires some housing, whatever it
`is, and that that housing has to contain both the camera and the
`phone?
`
`MR. BUROKER: Well, it wasn't briefed this way, Your
`Honor. I understand you read the briefing differently. We did
`not understand their argument to be based on that specific
`argument, but we believe that you can read "a manually portable
`housing" to be one or more, that one or more housings would
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`Case IPR2015-00412
`Patent 7,365,871 B2
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`have to contain the telephone and camera. If -- Your Honor, if
`the Board interprets --
`JUDGE LEE: Well, if you don't want to answer the
`question, just say you don't want to answer the question and we
`can skip the time.
`MR. BUROKER: Well, Your Honor, I thought I did.
`Let me try it one more time. I believe, Your Honor, that the one
`or more housings would have to contain the telephone and the
`camera.
`
`JUDGE LEE: Whatever the housing happens to be, it
`has to contain both the camera and the phone.
`MR. BUROKER: Right, and the housing does not have
`to be integrated.
`JUDGE LEE: The housing could be two parts.
`MR. BUROKER: Correct.
`JUDGE LEE: It doesn't have to be one thing.
`Whatever you point to as the housing that happens to contain the
`camera, it must also contain the phone.
`MR. BUROKER: That -- Your Honor, I apologize for
`my disconnect with you on that point, yes, I agree with that
`totally. Whatever the housing is that we point to has to have the
`telephone and the camera.
`JUDGE LEE: Yeah. We're not saying whether the
`housing has to be one piece.
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`Case IPR2015-00412
`Patent 7,365,871 B2
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`MR. BUROKER: Right, Your Honor, and that's our
`view of this claim is that the housing doesn't have to be one piece.
`JUDGE LEE: But you do agree the same housing has
`to contain both the camera and the phone?
`MR. BUROKER: Correct.
`JUDGE LEE: And that's true for all three claims?
`MR. BUROKER: Yes, Your Honor. I have to double
`check with 6 and 12, but I believe that's correct, Your Honor.
`JUDGE LEE: If I may interrupt you, this is important,
`because we don't want the parties to argue past each other. Okay,
`can I take a moment and just ask Mr. Donahue there whether --
`MR. BUROKER: Sure, Your Honor.
`JUDGE LEE: -- they're actually making an argument
`that the housing has to be one integral structure or it's just as we
`have read it that whatever the housing is, it has to contain both
`systems.
`MR. BUROKER: Okay.
`JUDGE LEE: All right. Mr. Donahue, can you
`enlighten us on that?
`MR. DONAHUE: Sure. And when it's my turn, I will
`certainly show you in the slides.
`JUDGE LEE: Just a quick answer.
`MR. DONAHUE: Our position is that it's a housing,
`there's a single housing that contains both the cell phone and the
`camera.
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`Case IPR2015-00412
`Patent 7,365,871 B2
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`JUDGE LEE: Right. Whatever the housing is, it has to
`contain both parts.
`MR. DONAHUE: Yes.
`JUDGE LEE: You're not saying that the housing has to
`be constructed in one integral piece?
`MR. DONAHUE: Well, there can't be a modular
`configuration. There's a housing and then when you apply the
`antecedent basis rules, that same housing contains both the
`camera and the phone.
`JUDGE LEE: So, you're arguing both, then, that the
`housing has to contain both and also the housing has to be one
`unitary piece?
`MR. DONAHUE: Well, I don't see how it would work
`otherwise. The same housing, and when you look at McNelley,
`you'll see there's one for the phone and there's one for the camera.
`There's a housing 174 for the phone and there's a housing 148 for
`the camera. And that's not the same housing that has the phone
`and the camera.
`JUDGE LEE: So, your answer is you're arguing both?
`That this housing has to contain both and also the housing has to
`be a single unitary piece?
`MR. DONAHUE: Yes, if that's -- based on what I just
`said, that's our argument that McNelley does not work because it
`has two separate housings, one that has the phone in it and one
`that has the camera in it.
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`Case IPR2015-00412
`Patent 7,365,871 B2
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`JUDGE LEE: All right. Thank you.
`MR. BUROKER: Your Honor, and picking up from
`that point, then, that is -- our point is that figure 8 is just one of
`the examples. Figure 9 clearly shows the user interface, the key
`button pad integrated into the rest of the housing that holds the
`camera and the phone, and actually the phone capabilities, the
`part that makes the dialing and so forth is inside what's shown in
`the right-hand side of figure 8. The specification of McNelley
`goes on -- specifically says that it's got a speaker phone capability
`built into that component. So, the phone --
`JUDGE LEE: Can you explain that a little more?
`Because even though the text says it's built in, but we see all the
`dials as being on the handset. So, I'm a little confused by that
`disclosure. Even though the text says it's built in, but all the
`control knobs are on the handset, even though the handset is kind
`of attached to the main base.
`MR. BUROKER: Well, actually, if you're looking at
`figure 9, what the text about figure 9 says is that that is -- the
`controls are integrated into the housing, so it makes it one single
`unitary piece. So, it's not -- it's not just taking the handset that
`you see in figure 8 and attaching it to figure 9, the teaching in
`McNelley is that figure 9 discloses an embodiment in which those
`controls are integrated into.
`JUDGE LEE: Oh, I see. So, you would read figure 9 as
`not -- they're not being a removable handset, but just one base
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`Case IPR2015-00412
`Patent 7,365,871 B2
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`station and all the control knobs are right there. So, in other
`words, that handset, what we perceive as the handset in figure 9 is
`really not a detachable handset?
`MR. BUROKER: That's right. Look at -- if I could
`have you go to slide 44, Thomas, please, for the judges. So, the
`second box on the right-hand side has a quotation from
`McNelley. The first sentence is what Patent Owner cites to,
`which says that figure 9 is just a left side view of the
`telecamcorder, but the second sentence clarifies, and perhaps
`there's some disagreement between these two sentences, but the
`second sentence clearly is a teaching that says that this figure,
`figure 9, shows the dialing controls 186 and the telecamcorder
`controls 188 built into the main housing 148.
`So, it's not saying that you attach the handset to the
`main housing, it's saying you take those controls and you build
`them into the housing.
`JUDGE LEE: I see. Thank you.
`MR. BUROKER: And another -- you know, we also
`look, top right-hand side of this same slide, you see figure 12.
`That's just, it's another embodiment shown in the patent that this
`is probably what it would look like from a different angle with
`the components 186 and 188 built into the housing 148. So, it's
`one single solitary component, not two separate ones.
`JUDGE LEE: So, with that in mind, the housing
`limitation, then, would not be met by the figure 8 embodiment,
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`but would appear to be met by the figure 9 embodiment? Is that
`your position?
`MR. BUROKER: To the extent that the Board agrees
`that you can't have two separate housings, then figure 9 and 12
`still disclose an embodiment in which there is a single unitary
`housing, but to the extent, as we discussed a moment ago, you
`could view the housing of the handset in figure 8 -- go back,
`Thomas, to show -- just go to the next slide, 45 has figure 8 in it.
`You could interpret the plastic around the controls of
`180 -- of the handset -- that's on the left, 174 I guess is the
`reference for the total handset, plus the housing around the entire
`unit 148 as the housing. If you viewed that as the housing --
`JUDGE LEE: I see. So, if we view that as the housing,
`it still contains both systems?
`MR. BUROKER: It still contains both. If you're
`looking for something that has a unitary contiguous housing, then
`you can look at figure 9 and 12 and see a unitary housing. So,
`that's our argument with regard to the integrated housing.
`JUDGE LEE: Thank you. What about the Patent
`Owner's argument that the figure 8 or the figure 9 embodiment,
`there's really not a telephone in the handset, that this is really just
`a landline phone? We have no cellular phone in either figure 8 or
`figure 9.
`MR. BUROKER: Well, there's a teaching in McNelley
`that you can use -- if you go to figure 30 -- well, let me just have
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`you pull up a slide that's got figure 30 in it. Slide 8 has figure 30.
`So, this is the internal componentry in McNelley. Figure 30
`shows that there's an element 402 that's a network access and
`receiving component, and then there's within the text of
`McNelley, there is a discussion that that network access receiving
`unit could be a telephone, but it also could be cellular or other
`wireless technologies.
`So, and that's what would dial the phone, which would
`be -- so, if we go to slide 62, and on the left-hand side, the top
`quotation there, this is from line -- column 14, lines 16 to 19 of
`McNelley, it teaches that the video-phone networks will use a
`combination of phone lines, telephone cables and wireless
`networks, e.g. cellular phone systems. So that it teaches that you
`can take the telephone dialing capability of McNelley 402 and
`use cellular as the mechanism for transmitting the --
`JUDGE LEE: Yes, I understand all of that.
`MR. BUROKER: Okay.
`JUDGE LEE: I can see it, but none of that tells us
`whether the handset that we see in figure 8 is itself a
`self-contained cellular phone. That's my question. Is that handset
`174 itself an entire phone?
`MR. BUROKER: Just the handset in figure 8?
`JUDGE LEE: Yes.
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`MR. BUROKER: You're asking about. Well, it would
`be if the -- if it had the network access and receiving component
`of figure 30 being a cell phone.
`JUDGE LEE: Yes, but we don't know if it does, at least
`I don't know if it does, so can you -- what's your view?
`MR. BUROKER: Well, it does based upon the teaching
`in McNelley column 14, lines 16 to 19, which says that you
`would use -- I mean, all a cellular phone is is a set of buttons for
`making a dialing, and then you have some internal componentry
`for taking that information and connecting to a cellular network.
`And, so, figure 30, box 402, it shows that you would
`have some network accessing componentry in that handset, and
`that -- the teaching in the patent is that you could have that be
`cellular.
`JUDGE LEE: But figure 30, that's not showing the
`components of the handset itself, is it?
`MR. BUROKER: It's showing the internal -- it's a
`block diagram of the components that would be used to process
`all of the different things that the device does.
`JUDGE LEE: Right, so why does it have to all go into
`the handset? Why couldn't part of it be included in the base?
`MR. BUROKER: I think, Your Honor, the teaching
`would be either one. A person of skill in the art could know that
`you could take these components and you could put some of them
`in the handset and some of them in the base, all of them in the
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`base, all of them in the handset. That's a design choice as to
`where you place those components.
`JUDGE LEE: Well, you don't seem to answer -- I want
`to know what's your position, does McNelley tell us that the
`handset itself is an entire phone? I'm not asking whether it would
`be obvious to one with ordinary skill in the art to put some of that
`circuitry in the handset and the others in the thing. I would like to
`know what McNelley discloses.
`MR. BUROKER: I'm not sure that there is an explicit
`disclosure. When the break is -- when I have a break, I'll double
`check and confirm that for you, Your Honor. I believe that the
`way we read the reference was that you had a handset which
`could be used for making dialing instructions, and that you would
`have these internal components which are shown in figure 30, and
`it didn't matter where they were located. I'm not sure that the
`claims dictate that you have a handset that has all of the
`components of a cellular phone.
`JUDGE LEE: No, but it matters in the analysis of the
`housing.
`MR. BUROKER: If their -- if their information is
`correct -- let's look at claim 1 again. For example, slide 8. Slide
`8 requires a telephone -- telephonic system in the housing, and if
`their interpretation of housing is adopted, you still would have a
`telephonic system in the sense that you would have clearly shown
`in the picture the keypads for entering and making a dial.
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`So, would it have all of the components of a telephone?
`No, but at least based on figure 8 it would have some, and we
`believe a person -- you know, explicitly, and then we would rely
`on the teachings of one of ordinary skill in the art to say that
`some of the components, the dialing components, could be inside
`that handset as well.
`JUDGE LEE: How did you account for this in your
`petition? Did you say, well, we're not exactly sure what part of
`the phone is in the handset and what part of the phone is in the
`base, but that doesn't matter because one with ordinary skill in the
`art would have known to either put some of the circuitry in the
`handset and the rest in the base, or to put all of it in the handset?
`Did you have something along that line, or it was like you
`ignored a specific discussion on this topic?
`MR. BUROKER: We didn't ignore it, Your Honor. I
`think that the way the petition was framed was based on the fact
`that there was no unitary housing requirement. We didn't read the
`claims that way, we didn't expect that they would read the claims
`that way. We read the claims as we discussed earlier, that you
`would have a housing and it could be in multiple parts. So, when
`this first came up in their Patent Owner's response, we pointed to,
`in the reply, our position that, you know, figure 9 does have a
`unitary housing, and that's what we relied on in the reply, Your
`Honor.
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`JUDGE LEE: And even if you go back to the combined
`housing, it would be your view that it doesn't matter if the
`combined housing would include both the phone and the camera?
`So, it didn't matter from that perspective what part of the phone is
`where?
`
`MR. BUROKER: That's right, Your Honor.
`JUDGE LEE: All right.
`MR. BUROKER: And that's -- right.
`JUDGE LEE: Thank you.
`MR. BUROKER: And there's the teaching that in
`addition, the figure 8, there's a disclosure that the -- what's shown
`is 148 as a speaker phone, so there's the capability of, you know,
`talking and initiating phones through that speaker phone in the
`148 body.
`So, Your Honor, the other issue that was briefed
`extensively was this selectively displaying and transmitting issue,
`and I wanted to go to that, unless Your Honor had a question
`about any of the other -- I'm happy to address whichever points
`you want us to address, because it's -- our time is here for you.
`JUDGE LEE: This would be a good time to move to
`that selective display and transmission.
`MR. BUROKER: All right. So, the way the petition
`was presented was that McNelley, we thought, showed a user
`interface for selecting image data for viewing and transmission.
`In the institution decision, this panel found that -- that the
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`evidence was not as clear, and so therefore the institution decision
`relied on our argument that Umezawa teaches a user interface.
`Now, in the Patent Owner's response -- let's go to slide
`15. In the Patent Owner response, the Patent Owner is now
`arguing that this selecting language that's in -- well, there's two
`pieces to the selecting language. There's a selecting piece in the
`memory element of these claims and there's a selecting piece in
`the user interface element of these claims. But their reading of
`those two elements is that you have to be able to select from
`among a plurality of digitized framed images, and we, Your
`Honor, submit that that's just an overly narrow and not the
`broadest reasonable interpretation of these claims.
`If you could look at slide 16, please. So, the question is,
`what do you have to select? Was it from one from among many,
`each of the times that the image is discussed in the claims, and
`we've highlighted them here, on slide 16, you see "an" image or
`"the" image. There's never a mention that the image has to be
`selected from among a plurality of stored images. So, we just
`don't think that the claims themselves provide any support.
`If you can look at slide 17. We know this is not binding
`on this panel, but the same issue was raised in the District Court
`case, and this came out, this ruling came out after the petition was
`filed, but before the Patent Owner's response came in, was the
`District Court agreed that the selectively transmitting and
`selectively displaying for claim elements do not require selection
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`Case IPR2015-00412
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`from among a plurality. They interpreted that phrase as requiring
`that you select at least one digitized frame image retained in
`memory and displaying that selection. So, it's just selection of
`one, you don't have to select among many.
`But under either interpretation -- let's go to slide 17 -- or
`excuse me, 21. Under either interpretation, McNelley in view of
`Umezawa teach this feature. So, if you look at -- let's go back to
`the next slide, 22, please.
`So, one of the embodiments in McNelley is an
`answering machine embodiment, and in this embodiment, a
`person who is the user of this portable telecamcorder can create a
`video message, and that video message can be the outgoing
`message if they are not available to answer a call. And what they
`do is they record the video message, it's stored in memory, and
`then they can select that video message to be played as the
`outgoing message when a phone call is received. But it doesn't
`just teach a single video message being recorded. And, of course,
`a video message would have an image, but it teaches multiple
`greetings.
`So, if you look at the second box here on slide 22,
`column 13, lines 49 to 53 in McNelley says you have multiple
`greetings that can be accessed through a menu system with
`multiple message boxes designated for receiving incoming
`messages, and then access codes may be used to provide privacy
`for multiple users with each user having their own box.
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`So, there's an idea that the user can create multiple
`greetings, and choose which greeting will be the outbound
`message, and when they do that choosing, Mr. Sasson, our expert,
`testified that is a selection of an image for display, it's a selection
`of an image for transmission. That image will be transmitted
`when a phone call comes in and the person is not there to answer
`the call, and it will also be displayed according to the teaching
`which is that under one embodiment you can have the -- while the
`outgoing message is being played for the caller, the owner of the
`device could have it being played as well, sort of, you know, like
`we all do when we don't want to answer a message at home, you
`can listen to your own message and you can see your own
`message going out.
`Now, what isn't shown in McNelley, according to the
`institution decision, is
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