Paper No. __ Filed: January 26, 2015 Filed on behalf of: Mitek Systems, Inc. By: Naveen Modi Joseph E. Palys Paul Hastings LLP 875 15th Street NW Washington, DC 20005 Telephone: (202) 551-1990 Facsimile: (202) 551-0490 E-mail: [email protected][email protected]UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ MITEK SYSTEMS, INC. Petitioner v. ROTHSCHILD MOBILE IMAGING INNOVATIONS, LLC Patent Owner ____________________ Case No. IPR2015-00624 Patent No. 7,456,872 ____________________ PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,456,872
Transcript
Paper No. __ Filed: January 26, 2015
Filed on behalf of: Mitek Systems, Inc. By: Naveen Modi Joseph E. Palys Paul Hastings LLP 875 15th Street NW Washington, DC 20005 Telephone: (202) 551-1990 Facsimile: (202) 551-0490 E-mail: [email protected][email protected]
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
MITEK SYSTEMS, INC.
Petitioner
v.
ROTHSCHILD MOBILE IMAGING INNOVATIONS, LLC
Patent Owner
____________________
Case No. IPR2015-00624 Patent No. 7,456,872
____________________
PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,456,872
Petition for Inter Partes Review – Patent No. 7,456,872
i
TABLE OF CONTENTS I. Introduction ...................................................................................................... 1
II. Mandatory Notices Under 37 C.F.R. § 42.8 .................................................... 1
A. Real Party-in-Interest ............................................................................ 1
B. Related Matters ...................................................................................... 1
C. Lead and Back-Up Counsel ................................................................... 2
III. Payment of Fees Under 37 C.F.R. §§ 42.15(a) and 42.103 ............................ 2
IV. Grounds for Standing ....................................................................................... 2
V. Precise Relief Requested for Each Claim Challenged .................................... 3
VI. The ’872 Patent ................................................................................................ 4
A. Overview of the ’872 Patent .................................................................. 4
B. Prosecution History of ’872 Patent ....................................................... 5
VII. Claim Construction .......................................................................................... 6
A. “user verification module” (Claim 1) .................................................... 7
VIII. The Effective Priority Date of Claims 1-39 of the ’872 Patent ....................... 8
IX. Detailed Explanation of Grounds for Unpatentability .................................. 10
A. Ground 1: Davis and Steinberg Render Claims 1-6, 9-12, 16, 18, 21-24, 27, 28, 30, 31, 34-36, 38, and 39 Obvious ......................... 10
C. Ground 3: Davis, Steinberg, and Terp Render Claim 14 Obvious ............................................................................................... 46
constructions for certain claim terms. Any term not construed herein should be
interpreted in accordance with its plain and ordinary meaning under the broadest
reasonable construction. Petitioner applies this understanding in the analysis of
claims 1-39 and the prior art below. Given the different claim construction
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
7
standards used by the PTO and district courts, Petitioner expressly reserves the
right to argue a different construction for any term during litigation. See also Ex.
1012, ¶¶ 10-12.
A. “user verification module” (Claim 1)
Claim 1 recites a “user verification module for verifying an identity of a user
of the device, wherein upon verification . . . enables operation of the device and
provides an assignment to the user.” Ex. 1001, 16:58-61. The specification of the
’872 Patent describes a user verification module (“UVM” 132) that will “verify the
identity of the user of the device 100 at the time of image capture.” Id., 5:26-28.
See also id., 5:44-51, 13:49-57, 14:8-13, 14:30-32. However, the specification
does not provide any disclosure of a user verification module that provides an
assignment to the user. In all instances regarding an assignment, the specification
refers to other features of device 100. See e.g., id., 13:58-62 (referring to
transmission module 112), 13:66-14:1 (referring to user input module 124), 14:14-
15 (referring to locational informational module 134), 14:15-17 (referring to
storage module 110), 15:11-26 (describing how record 630 include information for
verifying an assignment, and not providing the assignment to a user). Moreover,
this feature of the “user verification module” recited in claim 1 was added during
prosecution, and thus was not part of the application as originally filed. See, e.g.,
Ex. 1002, p. 117. While Petitioner cannot address the merits of this issue in this
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
8
inter partes review proceeding,2 for purposes of applying the prior art, and given
the language of claim 1, the term “user verification module” in claim 1 should be
interpreted in this proceeding so as not to limit the module to one that only
performs verification of a user and enables operation of the device upon
verification, like that described in the specification, but one that can also perform
other features, such as providing an assignment to a user like that recited in claim
1. Thus, a prior art disclosure of one or more devices, components, modules,
systems, or the like that can perform user verification features like those recited in
claim 1, and perform other features, including providing an assignment to a user,
would meet the “user verification module” limitations of claim 1. Petitioner
applies this understanding in applying the prior art to this limitation. Ex. 1012, ¶
12.
VIII. The Effective Priority Date of Claims 1-39 of the ’872 Patent
The Board may consider priority in inter partes review proceedings. See,
e.g., SAP Am., Inc. v. Pi-Net Int’l, Inc., IPR2014-00414, Paper No. 11 at 11-16
(Aug. 18, 2014). Under 35 U.S.C. § 120, a claim in a U.S. application is entitled to
the benefit of the filing date of an earlier filed U.S. application if the subject matter
of the claim is disclosed in the earlier filed application in accordance with the
written description requirement. See, e.g., id.; Lockwood v. Am. Airlines, Inc., 107
2 See 35 U.S.C. § 311(b).
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
9
F.3d 1565, 1571 (Fed. Cir. 1997). To comply with the requirement of 35 U.S.C. §
112, first paragraph, the specification “must describe the invention sufficiently to
convey to a person of skill in the art that the patentee had possession of the claimed
invention at the time of the application, i.e., that the patentee invented what is
claimed.” Lizardtech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1345
(Fed Cir. 2005).
The ’872 Patent claims priority to several earlier filed applications. See Ex.
1001, 1:8-17; see also supra Section VI.A. The earlier applications and the ’163
Patent that issued from the earliest of these applications do not disclose the
“assignment” limitation of claims 1 and 27 of the ’872 Patent. See Exs. 1010,
1011 (which respectively show the specifications filed for application nos.
11/020,459 and 10/998,691) . Rather, this limitation was at best first disclosed in
the application that issued into the ’872 Patent. Compare Ex. 1002, pp. 16, 40-46,
Fig. 8, with Exs. 1010 and 1011 (wherein Figure 8 and the associated text of the
’872 Patent, describing the “assignment” limitation, are not present in the earlier
filed applications). Ex. 1012, ¶ 9. Because the earlier filed applications lack
written description support for claims 1 and 27, the earliest possible priority date
for these claims is the February 4, 2005 filing date of the ’872 Patent. In addition,
the earlier filed applications lack written description support for dependent claims
2-26 and 28-39 at least because these claims depend from claims 1 or 27.
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
10
Accordingly, the earliest possible priority date for the ’872 Patent’s dependent
claims is also February 4, 2005.
IX. Detailed Explanation of Grounds for Unpatentability
A. Ground 1: Davis and Steinberg Render Claims 1-6, 9-12, 16, 18, 21-24, 27, 28, 30, 31, 34-36, 38, and 39 Obvious
With respect to all of the claimed modules in the claims of the ’872 patent,
including the “user verification module,” Davis discloses that the functions of its
digital camera may be implemented using one or more components (which alone
or collectively form a module depending on their disclosed contribution to the
disclosed functions), such as application programs executed on a processing unit
such as a microprocessor or DSP. See, e.g., Ex. 1003, ¶¶ [0035]-[0037], [0082]-
[0083]. Thus, all of the functions of Davis’s camera are performed using
respective modules. For example, one function of Davis’s digital camera that
would thus be implemented using an application program executed by a processing
unit obtains the identity of a user of the camera. See id., ¶¶ [0060]-[0061], [0108];
see also Ex. 1012, ¶¶ 18, 33.
1. Claim 1
a) “A locational image verification device for verifying an assignment of a user comprising:”
Davis discloses a “locational image verification device for verifying an
assignment of a user,” such as a digital camera that may be used by a photographer
whose supervisor provides operating parameters that define a session (e.g., an
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
11
assignment). See Ex. 1003, ¶¶ [0032]-[0043], [0065]-[0066], Fig. 1. As one
example, a session (e.g., an assignment) for capturing an image may be defined
“for selected GPS locations within a defined range,” and the user may be
disallowed from capturing images when the camera travels outside a particular
geographic location specified in the session parameters. See id., ¶¶ [0068]-[0069].
Similarly, the session parameters can also selectively allow certain actions within a
given area. Id., ¶ [0069]. See also citations and analysis below for claim elements
1(b)-(g). Ex. 1012, ¶ 30.
b) “a user verification module for verifying an identity of a user of the device, wherein upon verification, the user verification module enables operation of the device and provides an assignment to the user;”
Davis and Steinberg disclose these limitations. For example, one function of
Davis’s digital camera that would be implemented using an application program
executed by a processing unit obtains the identity of a user of the camera. See id.,
¶¶ [0060]-[0061], [0108]. In addition, Davis discloses a user verification function
that may be performed at a server to enable an editing operation. See, e.g., Ex.
1003, ¶ [0157]. See also Ex. 1012, ¶¶ 33, 34. As described above, such functions
are performed by one or more components that form a module to perform such
functions. See also id., ¶¶ 18, 33. Davis does not explicitly disclose “a user
verification module for verifying an identity of a user of the device, wherein upon
verification, the user verification module enables operation of the device and
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
12
provides an assignment to the user.” However, it would have been obvious to a
person of skill in the art at the time of the alleged invention of the ’872 Patent to
include this feature in the digital camera described in Davis based on the
knowledge of a person of ordinary skill in the art and the disclosure of Steinberg.
Ex. 1004; Ex. 1012, ¶ 34.
Steinberg discloses a digital camera that obtains and verifies the identity of a
user of the camera. See Ex. 1004, 5:35-52, 7:5-51, Fig. 8; Ex. 1012, ¶ 35. For
example, in Steinberg, an “authorized user” will initially “present[] a
password/key,” which enables a biometric data storing operation of the camera, as
well as other operations of the camera such as “access [to] the camera
35, 36 (discussing Demonstrative A). As shown in Figure 8, after a password/key
associated with an authorized user is entered, the user places his eye through the
camera view finder, and/or places his finger on the shutter/activate button and the
camera in response takes the biometric data, and processes and stores it as
signature data. See id., 6:5-10; Ex. 1012, ¶ 36. The password/key check of
Steinberg represents a first user verification operation. See Ex. 1012, ¶ 37. The
digital camera in Steinberg performs another user verification operation at a time
of image capture, comparing the biometric data (e.g., iris or fingerprint data)
acquired when the password/key was provided by the user to biometric data
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
13
captured when the user “presses the activation/shutter button.” See Ex. 1004, 5:43-
52, 7:19-51, Fig. 7; see also Ex. 1012, ¶ 37. As shown in Figure 7, after a user
initiates taking a picture, biometric data will be collected and compared to stored
biometric data, and a picture will be taken if there is a match between the two sets
of biometric data. Ex. 1004, 5:50-52, 7:42-43; Ex. 1012, ¶ 37. The “camera does
not take a picture” if there is no match with the biometric data comparison. Ex.
1004, 5:48-50, 7:49-51.
It would have been obvious to one of ordinary skill in the art at the time of
the alleged invention of the ’872 Patent to modify the camera disclosed in Davis to
include, in one of its applications executed on a processing unit, a user verification
module that verifies an identity of a user of the device, e.g., with a password or
biometric check, as disclosed in Steinberg. See Ex. 1012, ¶ 38. Moreover, as also
disclosed in Steinberg, one of ordinary skill in the art would have recognized that
such a user verification check could easily be used to enable operation of a device
and enable providing of data, such as an assignment, to the user. Id. Steinberg,
which implements such user verification functionality to “eliminate[e]
unauthorized use of a camera,” directly supports Davis’s stated goal of
“intentionally preclud[ing]” photographers “from controlling the data associated
with pictures” where “there is concern that the photographer might tamper with the
metadata associated with an image.” See Ex. 1004, 1:12-16; Ex. 1003, ¶ [0065];
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
14
Id. Thus, one of ordinary skill in the art at the time of the alleged invention would
have turned to the teachings of Steinberg to improve Davis’s camera. Moreover, it
would have been common sense to one of ordinary skill to utilize such user
verification prior to initiating a session (e.g., providing an assignment to capture
images of “selected GPS locations”) and prior to capturing the images. Id.; see
also Ex. 1003, ¶¶ [0065]-[0069]. Given that Davis and Steinberg disclose image
capture systems and processes, it would have been trivial to add the user
verification functionality of Steinberg to Davis, and given that Steinberg and Davis
both attempt to solve a similar problem, one of ordinary skill in the art would have
found implementing such a modification to be common sense, predictable, and
within the realm of knowledge of one skilled in the art at the time of the alleged
invention. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007); Ex. 1012,
¶ 38.
c) “a capture module for capturing an image relating to the assignment and creating a digital image file, wherein the user verification module verifies the identity of the user of the device at a time of the image capture”
Davis and Steinberg disclose these limitations. Davis’s camera includes a
capture module comprising “an optical system 14, an image sensor 16, and an
image formatter 18.” See Ex. 1003, ¶ [0034]. The optical system 14 “control[s]
the transfer of light to the camera’s sensor 16.” Id. The image formatter 18
“transforms the image signal into a form suitable for further processing and storage
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
15
and stores it in the camera’s memory subsystem.” Id. Digital image files that are
created by the camera include two components. In particular, a given image file
will include both an “image” portion containing the image itself (and, as discussed
in more detail below, a watermark embedded into the image) and a metadata
contained, for example, in the “file header.” Id., ¶¶ [0026], [0101]. The capture
module is used in Davis, for example, to capture images defined by the operating
parameters of the session (e.g., the assignment). Id., ¶ [0068]; Ex. 1012, ¶ 39. For
example, images of “selected GPS locations” defined by the session’s operating
parameters may be captured by the capture module. Ex. 1003, ¶ [0068].
Therefore, the components of Davis’s camera include a capture module for
capturing an image relating to the assignment and creating a digital image file.
While Davis does not explicitly disclose that “the user verification module verifies
the identity of the user of the device at a time of the image capture,” it would have
been obvious to a person of skill in the art at the time of the alleged invention of
the ’872 Patent to include this feature based on the knowledge of a person of
ordinary skill in the art and the disclosure of Steinberg. Ex. 1004; Ex. 1012, ¶ 40.
For example, as discussed above for claim element 1(b), the digital camera
in Steinberg performs a user verification operation at a time of image capture,
comparing biometric data (e.g., iris or fingerprint data) previously provided by a
user to biometric data captured when the user “presses the activation/shutter
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
16
button” of the camera. See Ex. 1004, 5:43-52, 7:19-51, Fig. 7; Ex. 1012, ¶ 41
(discussing Demonstrative C). The “camera does not take a picture” if there is no
match with the biometric data comparison. Id.; see also analysis and citations
above for claim element 1(b). The user verification (i.e., the biometric data
comparison) occurs during the time of image capture. Ex. 1004, Fig. 7. The time
of image capture begins when the user “initiate[s] taking a picture” and ends when
the “camera proceeds to take a picture,” with the biometric data comparison (e.g.,
“is prospective user data a match with signature?”) occurring in between both
It would have been obvious to one of ordinary skill in the art at the time of
the alleged invention of the ’872 Patent to modify the camera disclosed in Davis to
include, in one of its modules executed on a processing unit, a user verification
module that verifies an identity of a user of the device at a time of the image
capture, as disclosed in Steinberg to ensure only authorized users operate the
camera device. Ex. 1012, ¶ 42. Steinberg, which implements such user
verification functionality to “eliminate[e] unauthorized use of a camera,” directly
supports Davis’s stated goal of “intentionally preclud[ing]” photographers “from
controlling the data associated with pictures” where “there is concern that the
photographer might tamper with the metadata associated with an image.” See Ex.
1004, 1:12-16; Ex. 1003, ¶ [0065]; Ex. 1012, ¶ 42. Thus, one of ordinary skill in
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
17
the art at the time of the alleged invention would have turned to the teachings of
Steinberg to enhance the features of Davis’s camera. Ex. 1012, ¶ 42. Moreover, it
would have been common sense to one of ordinary skill in the art to utilize such
user verification prior to capturing images. Id.; Ex. 1003, ¶¶ [0065]-[0069]. Given
that Davis and Steinberg disclose image capture systems and processes, it would
have been trivial to add the user verification functionality of Steinberg to Davis,
and given that Steinberg and Davis both attempt to solve a similar problem, one of
ordinary skill in the art would have found implementing such a modification to be
common sense, predictable, and within the realm of knowledge of one skilled in
the art at the time of the alleged invention. See KSR Int’l Co., 550 U.S. at 417
(2007); Ex. 1012, ¶ 42.
d) “a locational information module for determining a location of the device when capturing the image;”
Davis discloses these limitations. For example, Davis’s digital camera
includes a GPS to determine the location of the camera. See, e.g., Ex. 1003, ¶
[0060]. One of the functions performed by the camera is to record a location of the
camera, “as determined by the GPS unit within the device,” when capturing an
image. See id., ¶¶ [0067]-[0070]; see also id., ¶¶ [0107], [0110] (one type of data
that can be associated with a captured image includes “where was the picture taken
. . . provided by [the] GPS device”). The components that perform the above
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
18
described functions reflect a locational information module as recited in this claim.
Ex. 1012, ¶ 43.
e) “a date and time module for determining a date and time of the image capture;”
Davis discloses these limitations. See Ex. 1012, ¶ 44. For example, one of
the functions performed by the camera is to record a “time” and “date” of an image
capture using, for example, a clock. See Ex. 1003, ¶¶ [0060] (disclosing that the
digital camera includes a “clock”), [0067]-[0070] (capturing “time, date”
information), [0107], [0111] (one type of data that can be associated with a
captured image includes “when was the picture taken (e.g., date and time of
date)”). The components of the camera that perform the above described functions
reflect a date and time module as recited in this claim. Ex. 1012, ¶ 44.
f) “a processing module for associating the assignment, the user identity, location information and the time and date to the digital image file; and”
Davis discloses these limitations. See Ex. 1012, ¶ __. For example, the
digital camera of Davis includes a “steganographic embedder . . . implemented as
an application program that executes on the processing unit.” See Ex. 1003, ¶¶
[0037], [0095]. The steganographic embedder is used to associate a time, date, and
place, to a digital image file. See id., ¶¶ [0067]-[0070], [0107], [0110]-[0111].
The steganographic embedder is also used to associate a user identity to the digital
image file. See id., ¶¶ [0060], [0107]-[0108]. Moreover, Davis discloses that the
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
19
session (i.e., the assignment) may be tracked and associated with the other session
related metadata (e.g., time, date, place, and user identity) “by a session identifier
encoded in the image, the image file, or its metadata.” Id., ¶ [0071]. The session
identifier may be, for example, “a number or message embedded
steganographically in the image or metadata associated with the image.” Id.; see
also id., ¶¶ [0114] (recording “why was the picture taken”), [0120] (recording
“picture identifiers”), [0121] (recording “collection data, including collection ID”).
Ex. 1012, ¶ 45.
The steganographic embedder implements the association by, for example,
“convert[ing] [the] auxiliary data to be embedded in the image,” such as the
assignment, the user identity, location information and the time and date, “into [a]
watermark signal and combin[ing] the watermark signal with the image.” Id., ¶¶
[0095]-[0096]. For example, when an image is being encoded, one option is for
“the encoder [to] retrieve[] data designated for embedding in the image, [to]
convert it into a watermark signal and [to] combine[] it with the associated image.”
Id., ¶ [0097]. Therefore, the components that perform the above described
functions, such as the steganographic embedder that associates the assignment, the
user identity, location information and the time and date to the digital image file,
reflect the processing module recited in this claim. See Ex. 1012, ¶ 45.
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
20
The association of the assignment, the user identity, location information
and the time and date to the digital image file, is also implemented in additional
ways. For example, “[t]he camera . . . may also embed auxiliary data in the image
file, but outside the image,” by storing metadata in “the file header.” See Ex. 1003,
¶ [0101]. “[A] reference embedded in the image can be used to correlate the image
with the correct metadata.” Id., ¶ [0102]. As another example, “the auxiliary data
associated with the image can be maintained separately from the image,” with “[a]
reference to this external, auxiliary data . . . embedded in the image (e.g., in a
watermark), in the image file metadata, or both.” Id., ¶ [0105]. These additional
association functions of Davis would be implemented using an application
program executed on a processing unit such as a microprocessor or DSP of the
digital camera, and thus would be implemented by a processing module. See, e.g.,
id., ¶¶ [0035]-[0037], [0082]-[0083]; Ex. 1012, ¶ 46. Thus, the components that
perform these additional functions may also reflect the processing module recited
in this claim. Ex. 1012, ¶ 46.
g) “an encryption module for encrypting the digital image file and associated information upon image capture.”
Davis discloses these limitations. For example, Davis discloses that after its
digital camera generates a digital image file and associated information (e.g., time,
date, place, user identity, and session identifier), one function of the camera will
encrypt both the digital image and the associated information. See Ex. 1003, ¶
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
21
[0103]. In particular, Davis discloses that a number that is a “digital signature
derived from the image, such as by performing a hash function on the image
sample values,” can be encrypted, and that the watermark constructed to contain
the associated information can also be encrypted. See id., ¶ [0103]; see also id., ¶¶
[0133] (describing that both “the image, and the image data,” can be encrypted),
[0169] (“One way to secure the metadata is to encrypt it”), [0194] (“the metadata
may be encrypted and inserted into a watermark in the media signal”), [0200]-
[0203]. Ex. 1013, ¶ 47. Davis discloses that this encryption can occur “at or
shortly after image capture in the camera.” See id., ¶ [0169]; see also Ex. 1012, ¶
47. This encryption function would be implemented using an application program
executed on a processing unit such as a microprocessor or DSP of the digital
camera, and thus would be implemented by an encryption module. See, e.g., Ex.
1003, ¶¶ [0035]-[0037], [0082]-[0083]. Thus, the components that perform the
above described functions reflect an encryption module as recited in this claim.
Ex. 1012, ¶ 47.
2. Claim 2
a) “The device as in claim 1, further comprising a microphone for acquiring audio to be associated to the digital image file.”
Davis discloses these limitations. For example, Davis discloses that its
digital camera “may also be configured to receive voice input through a
microphone, voice codec, and voice recognition hardware and software.” Ex.
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
22
1003, ¶ [0058]. The voice input is associated to the digital image file in the same
manner as the other types of data described above with respect to claim 1. See,
e.g., id., ¶¶ [0125] (“Sound annotation” is associated to the image file), [0198]
(“As part of the embedding process, a sound (such as a voice instruction or
comment) can be compressed and embedded into the image’s watermark”). See
also Ex. 1012, ¶ 49.
3. Claim 3
a) “The device as in claim 1, further comprising a display module for displaying the captured image.”
Davis and Steinberg disclose these limitations. For example, the digital
camera of Davis has a module that includes display 24 and display screen 36. Ex.
1003, ¶ [0039], Fig. 1; see also id., ¶ [0059] (“the camera may have a display
screen, with . . . support for video output”). While Davis’s display module “may
produce visual . . . output,” (see id., ¶ [0059]), Davis does not explicitly disclose
that the display module is used to display the captured image. However, one of
ordinary skill in the art would have found it obvious to configure the display
module to perform this intended use given the knowledge of a person of ordinary
skill in the art and the disclosure of Davis and Steinberg. Ex. 1012, ¶50.
Davis already discloses that its display module is capable of producing
visual output, including video output, and thus is capable of displaying a captured
image. See Ex. 1003, ¶¶ [0039], [0059]; Ex. 1012, ¶ 51. As such, it would have
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
23
been a predictable and commonsense implementation and a simple design choice
for the digital camera of Davis to display a captured image so that a user can view
captured and retrieved images. See, e.g., Ex. 1004, 3:64-64 (the “specific items
displayed [on a display] are a matter of design choice”). Indeed, the device of
Davis may be a conventional digital camera, which is widely known to display
captured images, particularly when already including a display. See Ex. 1012, ¶
51. Therefore, one of ordinary skill in the art would have found that displaying a
captured image on the display module of Davis’s camera to be a commonsense and
predictable design choice, within the realm of knowledge of one skilled in the art at
the time of the alleged invention. See KSR Int’l Co., 550 U.S. at 417 (2007); Ex.
1012, ¶ 51.
4. Claim 4
a) “The device as in claim 3, wherein the display module is adapted to prompt a user to input information regarding the captured image.”
Davis discloses these limitations. For example, Davis discloses that “the
user may [] specify actual data items to be associated with images . . . through the
user interface of the image capture device.” Ex. 1003, ¶¶ [0029], [0060]. “Using
known UI techniques, the user can use the scroll buttons 38-44 to scroll through a
list of selections displayed on display screen 36 until a desired selection is
presented.” Id., ¶ [0061]. “Once the list has been scrolled to the desired entry, the
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
24
user can actuate a second button (e.g., 32-34) to effect that selection,” wherein the
“data types associated with an image or set of images can be of various classes”
such as “the subject” of an image. Id.; see also id., ¶ [0063] (“The class of subjects
can . . . include a default list (e.g., Birthday, Vacation, Anniversary, Wedding,
House, Car, Pet, etc.) and/or a customized list (Uncle Harry, Yellowstone,
Mushrooms, Seascapes, etc.)”). “A descriptor selected by the user can be used to
encode the picture just-snapped, or can be used to encode pictures thereafter-
snapped.” Id., ¶ [0063]. Therefore, by presenting a “list of selections” for the user
to scroll through, input, and associate with an image, the display module of Davis’s
digital camera prompts the user to input information regarding the captured image.
See also Ex. 1012, ¶ 52.
5. Claim 5
a) “The device as in claim 4, further comprising a character recognition capture device coupled to the input module for entering information regarding the capture images.”
Davis discloses these limitations. For example, Davis discloses that the
input devices used to enter the information regarding the captured images can
include “touch screens, soft buttons, scroll bars, and check boxes displayed on a
display device.” Ex. 1003, ¶ [0058]. The camera may also “support one or more
plug-in user interface peripherals, such as a keyboard.” Id., ¶ [0064]. One skilled
in the art would have realized based on the disclosure of Davis that these devices
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
25
allow for the entering of information regarding the captured images. See, e.g., id.,
¶¶ [0060]-[0063]; Ex. 1012, ¶ 53.
6. Claim 6
a) “The device as in claim 5, wherein the character recognition device is a touch screen overlaid upon the display module.”
Davis discloses these limitations. For example, as discussed above with
respect to claim 5, Davis discloses that the input components used to enter the
information regarding the captured images can include “touch screens, soft
buttons, scroll bars, and check boxes displayed on a display device.” Ex. 1003, ¶
[0058]. Such touchscreen components were known to overlay on a display
component, such as the display module described above in connection with claim
3. See Part IX.A.3. Ex. 1012, ¶ 54. As such, Davis necessarily discloses a touch
screen that is overlaid upon the display module because without such a
configuration, the touch screen features disclosed by Davis would not be
performed. Thus, such a component and arrangement must be present. Ex. 1012, ¶
54.
7. Claim 9
a) “The device as in claim 1, further comprising a storage module for storing at least one digital image file and the information associated to the digital image file.”
Davis discloses these limitations. For example, Davis discloses that the
digital camera includes a “memory subsystem 20 [that] includes a combination of
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
26
ROM, RAM, and removable storage devices such as a flash memory card.” Ex.
1003, ¶ [0038]. The memory subsystem 20 of Davis is used to store the digital
image files and associated information described above in connection with claim 1.
Id., ¶¶ [0034], [0087], [0096]-[0097]; see also analysis and citations regarding
these limitations for claim 1 in Parts IX.A.1; Ex. 1012, ¶ 55.
8. Claim 10
a) “The device as in claim 9, wherein the storage module is internal storage memory or removable storage memory.”
Davis discloses these limitations. For example, Davis discloses that the
digital camera includes a “memory subsystem 20 [that] includes a combination of
ROM, RAM, and removable storage devices such as a flash memory card.” Ex.
1003, ¶ [0038], analysis and citations above for claim 9, Ex. 1012, ¶ 56.
9. Claim 11
a) “The device as in claim 1, further comprising a transmission module for transmitting at least one digital image file and its associated information to a computing device.”
Davis discloses these limitations. For example, Davis discloses that its
digital camera “is equipped with one or more external interfaces to transfer images,
image related data, and operating parameters to and from external devices.” Ex.
1003, ¶ [0040]; see also id., ¶¶ [0041] (disclosing “ports 50”), [0042] (disclosing
“transceivers and receivers 52 for wireless connections”), [0043] (disclosing
“cellular or conventional modem 54 for transferring data to and from a telephone
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
27
network”), [0053]-[0054] (describing how data is uploaded from the camera), Fig.
2. The components in the camera device that performs the above described
functions reflect a transmission module as recited in this claim. Ex. 1012, ¶ 57.
10. Claim 12
a) “The device as in claim 11, wherein the transmission module is a hardwired connection, a wireless connection or a removable memory card slot for receiving removable memory.”
Davis discloses these limitations. For example, Davis discloses that the
external interface discussed above with respect to claim 11 may include “ports 50
for wire connections to external devices such as serial ports, USB ports, parallel
ports, PCI, Firewire or Ilink ports,” “transceivers and receivers 52 for wireless
connections such as an infrared transceiver, RF transceivers (Bluetooth
transmitter/receivers), FM receivers,” and “cellular or conventional modem 54 for
transferring data to and from a telephone network.” Ex. 1003, ¶¶ [0040]-[0043],
Fig. 2. Moreover, “[i]n addition to transferring images and data via connections to
external devices, the camera can also receive and send data via a removable
memory device.” Id., ¶ [0043]. See also Ex. 1012, ¶ 58.
11. Claim 16
a) “The device as in claim 1, further comprising a communication module coupled to an antenna for wirelessly receiving and transmitting communication messages.”
Davis discloses these limitations. For example, Davis discloses that its
digital camera “is equipped with one or more external interfaces to transfer images,
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
28
image related data, and operating parameters to and from external devices,”
including “transceivers and receivers 52 for wireless connections such as an
infrared transceiver, RF transceivers (Bluetooth transmitter/receivers), FM
receivers,” and “cellular or conventional modem 54 for transferring data to and
from a telephone network.” Ex. 1003, ¶¶ [0040]-[0043]; see also id., ¶¶ [0049]-
[0052] (disclosing how communication messages can be wirelessly received by the
camera), [0053]-[0054] (describing how communication messages can be
wirelessly transmitted from the camera), Fig. 2. One of ordinary skill in the art
would have understood that cellular, RF, and FM transceivers, as disclosed in
Davis, would necessarily include an antenna given that without such a component,
such communication functions could not be performed. See Ex. 1012, ¶ 59.
Moreover, even if an antenna was not necessarily present in Davis’s
communication module, its inclusion would have been obvious given the
disclosure of Steinberg that antennas are used to transmit and receive data when
using wireless communication such as radio frequency (RF) communication, and
would not have affected the functionality of Davis in any way. See, e.g., Ex. 1004,
3:41-43; Ex. 1012, ¶ 60. One of ordinary skill in the art would have found
implementing such a modification to be common sense, predictable, and within the
realm of knowledge of one skilled in the art at the time of the alleged invention to
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
29
enable wireless communications like that disclosed by Davis. See KSR Int’l Co.,
550 U.S. at 417 (2007); Ex. 1012, ¶ 60.
12. Claim 18
a) “The device as in claim 16, further comprising a transmission module coupled to the antenna for transmitting at least one digital image file and its associated information to a computing device.”
Davis discloses these limitations. For example, Davis discloses that the
external interface discussed above with respect to claim 16 can “transfer images,
image related data, and operating parameters to and from external devices,” and
may include “transceivers and receivers 52 for wireless connections such as an
infrared transceiver, RF transceivers (Bluetooth transmitter/receivers), FM
receivers,” and “cellular or conventional modem 54 for transferring data to and
from a telephone network.” Ex. 1003, ¶¶ [0040]-[0043]; see also id., ¶¶ [0049]-
[0052] (disclosing how communication messages can be wirelessly received by the
camera), [0053]-[0054] (describing how communication messages can be
wirelessly transmitted from the camera), Fig. 2. The components that perform the
transmission functions described above correspond to a transmission module as
recited in this claim. See also Ex. 1012, ¶ 61.
13. Claim 21
a) “The device as in claim 1, wherein the encryption module is further adapted for encrypting the digital image file and associated information immediately upon image capture.”
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
30
Davis discloses these limitations for at least the same reasons as discussed
above with respect to claim element 1(g). See Ex. 1012, ¶ 62; analysis and
citations above for claim element 1(g). For example, as discussed above, Davis
discloses that the encryption of the digital image file and associated information
can occur “at or shortly after image capture in the camera.” See Ex. 1003, ¶
[0169]. Specifically, Davis discloses that “an image may be secured and
authenticated at various stages of processing” including “at or shortly after image
capture in the camera,” and that encryption provides one way to implement such
security. Id. One of ordinary skill in the art at the time of the alleged invention of
the ’872 Patent would thus understand Davis’s disclosure of how encryption occurs
for it to be done “immediately upon image capture.” See Ex. 1012, ¶ 62.
14. Claim 22
a) “The device as in claim 1, further comprising an input module for inputting information regarding the captured image, wherein the processing module associates the inputted information to the digital image file.”
Davis discloses these limitations. For example, Davis discloses that its
camera includes a “camera UI” with “input devices.” See Ex. 1003, ¶ [0058]. The
“user interface accepts user input via the buttons 30-34.” Id., ¶ [0061]. The UI
provides “[o]ne source of data” that is “associated with images in the camera.” See
id., ¶ [0077]; see also analysis and citations above for claims 4-6, describing
components for receiving input from a user, such as touchscreen components.
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
31
Davis also discloses that the components that reflect a processing module disclosed
above for claim element 1(f) associate inputted information to a digital image file.
See above citations and analysis regarding claim element 1(f) above in Part
IX.A.1.f; Ex. 1012, ¶ 63.
15. Claim 23
a) “The device as in claim 22, wherein the processing module is adapted to create a separate information file including the location and inputted information that is linked to the digital image file.”
Davis discloses these limitations. For example, Davis discloses that its
camera is adapted such that “the auxiliary data associated with the image,” which
would include the location and inputted information, “can be maintained separately
from the image.” Ex. 1003, ¶¶ [0104]-[0105]. More specifically, Davis discloses
that “[o]ne way to associate data with an image . . . is to store the data in a location
external to the image file, and create an association between the image file and the
external data.” Id., ¶ [0026]. The “image may be associated with the external data
via a reference encoded in the image itself or in the image file that refers to the
external data.” Id. See also Ex. 1012, ¶ 64.
16. Claim 24
a) “The device as in claim 22, wherein the processing module is adapted to append the location and inputted information to the digital image file.”
Davis discloses these limitations. For example, Davis discloses that “[o]ne
way to associate data with an image is to store the data in the image container (e.g.,
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
32
a file), but outside the image.” Ex. 1003, ¶ [0026]. For example, the image may
be stored in a file format that allows metadata, which would include the location
and inputted information, “to be stored in the file header.” See id., ¶ [0101]. See
also Ex. 1012, ¶ 65.
17. Claim 27
a) “A method for verifying an assignment of a user, the method comprising the steps of:”
Davis discloses these limitations for at least the same reasons as discussed
above with respect to claim 1, which describes the functions and operations
performed by the components disclosed by Davis. See Ex. 1012, ¶ 66; analysis
and citations above for claim elements 1(a)-1(g); analysis and citations below for
the remaining limitations of claim 27.
b) “verifying a user of the device to enable use of the device;
Davis and Steinberg disclose these limitations for at least the same reasons
as discussed above with respect to claim element 1(b). See Ex. 1012, ¶ 67;
analysis and citations above for claim element 1(b) in Part IX.A.1.b. The functions
performed by the components described above regarding Davis and Steinberg for
claim element 1(b) reflect processes that disclose this limitation.
c) “upon verification, receiving assignment information for the user;”
Davis and Steinberg disclose these limitations for at least the same reasons
as discussed above with respect to claim element 1(b). See Ex. 1012, ¶ 68;
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
33
analysis and citations above for claim element 1(b) in Part IX.A.1.b. The functions
performed by the components described above regarding Davis and Steinberg for
claim element 1(b) reflect processes that disclose this limitation.
d) “capturing an image with an imaging device relating to the assignment and creating a digital image file;”
Davis and Steinberg discloses these limitations for at least the same reasons
as discussed above with respect to claim element 1(c). See Ex. 1012, ¶ 69;
analysis and citations above for claim element 1(c) in Part IX.A.1.c. The functions
performed by the components described above regarding Davis and Steinberg for
claim element 1(c) reflect processes that disclose this limitation..
e) “determining an identity of the user at a time of the image capture;”
Davis and Steinberg discloses these limitations for at least the same reasons
as discussed above with respect to claim element 1(c). See Ex. 1012, ¶ 70;
analysis and citations above for claim element 1(c) in Part IX.A.1.c. The functions
performed by the components described above regarding Davis and Steinberg for
claim element 1(c) reflect processes that disclose this limitation.
f) “determining a location of the device upon image capture;”
Davis discloses these limitations for at least the same reasons as discussed
above with respect to claim element 1(d). See Ex. 1012, ¶ 71; analysis and
citations above for claim element 1(d) in Part IX.A.1.d. The functions performed
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
34
by the components described above regarding Davis for claim element 1(d) reflect
processes that disclose this limitation.
g) “determining a date and time of the image capture;”
Davis discloses these limitations for at least the same reasons as discussed
above with respect to claim element 1(e). See Ex. 1012, ¶ 72; analysis and
citations above for claim element 1(e) in Part IX.A.1.e. The functions performed
by the components described above regarding Davis for claim element 1(e) reflect
processes that disclose this limitation.
h) “associating the assignment information, the user identity, location information and the date and time to the digital image file; and”
Davis discloses these limitations for at least the same reasons as discussed
above with respect to claim element 1(f). See Ex. 1012, ¶ 73; analysis and
citations above for claim element 1(f) in Part IX.A.1.f. The functions performed
by the components described above regarding Davis for claim element 1(f) reflect
processes that disclose this limitation.
i) “encrypting the associated information and digital image file upon image capture.”
Davis discloses these limitations for at least the same reasons as discussed
above with respect to claim element 1(g). See Ex. 1012, ¶ 74; analysis and
citations above for claim element 1(g) in Part IX.A.1.g. The functions performed
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
35
by the components described above regarding Davis for claim element 1(g) reflect
processes that disclose this limitation.
18. Claim 28
a) “The method as in claim 27, further comprising the step of transmitting the encrypted information and digital image file to a computing device.”
Davis discloses these limitations. For example, Davis discloses that its
digital camera “is equipped with one or more external interfaces to transfer images,
image related data, and operating parameters to and from external devices.” Ex.
1003, ¶ [0040]; see also id., ¶¶ [0041]-[0043], [0053]-[0054]. Davis explains that
the encryption may occur “at or shortly after image capture in the camera,” and
thus would occur before the stage of “uploading the image from the camera.” Id.,
¶ [0169]; see also Ex. 1012, ¶ 75. In other words, because encryption occurs
before transmission, “the encrypted information and digital image file” in Davis
would be transmitted to the external computing device. See Ex. 1012, ¶ 75. This
understanding is confirmed by the fact that the external device to which an image
with associated information is sent must decrypt the encrypted information. See
Ex. 1003, ¶¶ [0201]-[0203]; see also Ex. 1012, ¶ 75.
19. Claim 30
a) “The method as in claim 29 further comprising the step of prompting the user for information regarding at least one assignment.”
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
36
Davis discloses these limitations for at least the same reasons as discussed
above with respect to claim 4 in Part IX.A.4. The functions performed by the
components described above regarding Davis for claim 4 reflect processes that
disclose this limitation. See Ex. 1012, ¶ 76; analysis and citations above for claim
4. By prompting a user for information regarding a captured image that relates to a
session, as discussed with respect to claim 4, the information would also relate to
the session (e.g., assignment). See Ex. 1012, ¶ 76; Ex. 1003, ¶¶ [0066]-[0071].
20. Claim 31
a) “The method as in claim 30, wherein the prompting step includes displaying at least one question to the user.”
Davis discloses these limitations for at least the same reasons as discussed
above with respect to claim 4 in Part IX.A.4. The functions performed by the
components described above regarding Davis for claim 4 reflect processes that
disclose this limitation. See Ex. 1012, ¶ 77; analysis and citations above for claim
4. Moreover, one of ordinary skill in the art would have understood that the
disclosure by Davis regarding providing the list of possible selections for a user, as
discussed with respect to claim 4, was presenting the user with a question as to
which selection to make. See Ex. 1012, ¶ 77.
21. Claim 34
a) “The method as in claim 30, further comprising the steps of: receiving text input via a character recognition capture device regarding the capture image;”
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
37
Davis discloses these limitations for at least the same reasons as discussed
above with respect to claim 5 in Part IX.A.5. In addition, Davis explains that the
metadata, which a user inputs into the device that is associated with a captured
image, is commonly text data. Ex. 1003, ¶¶ [0154], [0026], [0027], [0097]. The
functions performed by the components described by Davis reflect processes that
disclose this limitation. See Ex. 1012, ¶ 78; analysis and citations above for claim
5.
b) “translating the text input into alphanumeric characters; and”
Davis discloses these limitations for at least the same reasons as discussed
above with respect to claim 5 in Part IX.A.5. The functions performed by the
components described above regarding Davis for claim 5 reflect processes that
disclose this limitation. See Ex. 1012, ¶ 79; analysis and citations above for claim
5. One of ordinary skill in the art would have understood given the disclosure of
Davis that by the input via keyboard or other input mechanisms disclosed by Davis
would necessarily result in the translation of such input into alphanumeric
characters. See, e.g., Ex. 1003, ¶ [0183] (explaining that the metadata descriptors
are “alphanumeric”); Ex. 1012, ¶ 79. Specifically, the text input described in
Davis that is used for metadata entry (see id., ¶¶ [0058], [0063]) must be translated
into alphanumeric characters because alphanumeric characters are produced. Ex.
1012, ¶ 79; see also Ex. 1001, 4:55-59 (broadly describing alphanumeric character
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
38
translation). For example, the user in Davis may provide a text input associated
with the descriptor “Child1”. See Ex. 1003, ¶ [0062]. In order for the “descriptor
selected by the user” to then be “embedded in the image . . . in the form of text,”
the selection would necessarily need to be translated into alphanumeric characters
(e.g., “Child1”) associated with the user’s selection.
c) “associating the inputted text to the digital image file.”
Davis discloses this limitation for at least the same reasons as discussed
above with respect to claim 22 and claim element 27(h) in Parts IX.A.14 and
IX.A.17.h. The functions performed by the components described above regarding
Davis for claim 22 and claim element 27(h) reflect processes that disclose this
limitation. Ex. 1012, ¶ 80; analysis and citations above for claim 22 and claim
element 27(h).
22. Claim 35
a) “The method as in claim 30, further comprising the steps of: receiving spoken input via a microphone; and associating the spoken input to the digital image file.”
Davis discloses these limitations for at least the same reasons as discussed
above with respect to claim 2 in Part IX.A.2. The functions performed by the
components described above regarding Davis for claim 2 reflect processes that
disclose this limitation. See Ex. 1012, ¶ 81; analysis and citations above for claim
2.
23. Claim 36
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
39
a) “The method as in claim 30, further comprising the steps of: transmitting the encrypted information and digital image file to a computing device;”
Davis discloses these limitations for at least the same reasons as discussed
above with respect to claim 28 in Part IX.A.18. The functions performed by the
components described above regarding Davis for claim 28 reflect processes that
disclose this limitation. See Ex. 1012, ¶ 82; analysis and citations above for claim
28.
b) “unencrypting the information and digital image file at the computing device; and verifying the location and date and time of the image capture.”
Davis discloses these limitations. For example Davis discloses that, “to
check authenticity of the metadata,” which would include location, date, and time,
“a device or application with the key decrypts the metadata from the watermark
and from an external source.” Ex. 1003, ¶¶ [0067], [0201]. “Then the decrypted
metadata from both sources is compared to check for differences in the metadata
that evince tampering.” Id. See also citations and analysis regarding the
encryption functions of Davis above for claim element 1(g) in Part. IX.A.1.g.
Thus, Davis necessarily discloses unencrypting the information and digital image
file and verifying the location and data and time of the image capture given that
Davis discloses this type of information is part of the metadata that is encrypted
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
40
and sent to the external device for comparison and authentication checking. See
also Ex. 1012, ¶ 83.
24. Claim 38
a) “The method as in claim 27, wherein the associating step includes creating a separate information file including the associated information that is linked to the digital image file.”
Davis discloses these limitations for at least the same reasons as discussed
above with respect to claim 23 in Part IX.A.15. The functions performed by the
components described above regarding Davis for claim 23 reflect processes that
disclose this limitation. See Ex. 1012, ¶ 84; analysis and citations above for claim
23.
25. Claim 39
a) “The method as in claim 27, wherein the associating step includes appending the associated information to the digital image file.”
Davis discloses these limitations for at least the same reasons as discussed
above with respect to claim 24 in Part IX.A.16. The functions performed by the
components described above regarding Davis for claim 24 reflect processes that
disclose this limitation. See Ex. 1012, ¶ 85; analysis and citations above for claim
24.
B. Ground 2: Davis, Steinberg, and Steinberg ’902 Render Claims 7, 13, 25, 26, and 29 Obvious
1. Claim 7
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
41
a) “The device as in claim 3, wherein the display module displays geographic directions to the user from at least one location to a location of the assignment.”
As discussed in more detail above with respect to claim 1, Davis discloses a
camera that receives operating parameters relating “selected GPS locations.” Ex.
1003, ¶ [0068]; analysis and citations above for claim element 1(a) and claim 3.
Davis and Steinberg do not explicitly disclose that “the display module displays
geographic directions to the user from at least one location to a location of the
assignment.” Ex. 1012, ¶ 86. However, it would have been obvious to a person of
skill in the art at the time of the alleged invention of the ’872 Patent to modify the
combination of Davis and Steinberg to include this feature based on the knowledge
of a person of ordinary skill in the art and the disclosure of Steinberg ’902. Ex.
1005; Ex. 1012, ¶ 86.
Steinberg ’902 discloses a digital camera that can receive data from an
external source. Ex. 1005, 12:12-15; Ex. 1012, ¶ 87. For example, similarly to the
“selected GPS locations” sent to the camera of Davis, Steinberg ’902 discloses that
“[o]perational data can be sent to inform the user when and where to take a
picture.” Ex. 1005, 12:18-19. Moreover, a “map showing where to take a picture
can be sent” to the camera, “which can be displayed by the user on a camera visual
display.” Id., 12:19-21. The map in Steinberg ’902 would thus provide directions
for at least one location (e.g., a location on the map other than a location at which a
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
42
picture should be taken) to a location at which a picture should be taken. See Ex.
1012, ¶ 87.
It would have been obvious to one of ordinary skill in the art at the time of
the alleged invention of the ’872 Patent to modify the camera disclosed in Davis
such that its display module displays a map showing where to take a picture (e.g.,
“selected GPS locations”), as disclosed in Steinberg ’902. See Ex. 1012, ¶ 88. In
particular, since the camera of Davis already includes a display, and already
receives GPS coordinates governing where to take a picture (see, e.g., analysis and
citations above for claim element 1(a)), one skilled in the art would have
recognized that it would have been a simple and common sense combination of
prior art elements to add the map functionality of Steinberg ’902 to Davis’s
camera. See Ex. 1012, ¶ 88. The map in Steinberg ’902 merely represents one
type of data that Davis already is capable of displaying. See, e.g., Ex. 1003, ¶
[0039], [0059] (the display module “may produce visual . . . output . . . [and] may
have a display screen, with . . . support for video output”). One of ordinary skill in
the art would have thus realized that the combination would have been common
sense, predictable, and within the realm of knowledge of one skilled in the art at
the time of the alleged invention. Id. See KSR Int’l Co., 550 U.S. at 417 (2007);
Ex. 1012, ¶ 88.
2. Claim 13
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
43
a) “The device as in claim 1, further comprising an auxiliary input module for generating auxiliary information related to the captured image, wherein the auxiliary information is date, time, sequence number of the capture image and user information.”
As discussed for claim element 1(f), Davis discloses that its digital camera
includes a module that generates auxiliary information relating to the captured
image that is associated to the image and that includes a time, date, and user
and citations above for claim element 1(f) in Part IX.A.1.f. Moreover, Davis also
suggests that a sequence number of the captured image is generated by the camera.
See Ex. 1003, ¶¶ [0068], [0199]. Davis and Steinberg do not explicitly disclose to
generate a “sequence number” of the captured image. Ex. 1012, ¶ 89. However, it
would have been obvious to a person of skill in the art at the time of the alleged
invention of the ’872 Patent to modify the combination of Davis and Steinberg to
include this feature based on the knowledge of a person of ordinary skill in the art
and the disclosure of Steinberg ’902. Ex. 1005; Ex. 1012, ¶ 89.
Steinberg ’902 discloses a digital camera that records sequence numbers of
captured image through the use of “permanent programming to read and increment
a counter and assign a unique number to each image received.” Ex. 1005, 5:59-61.
“In this way each image has associated with it a unique number” that would make
it uniquely identifiable, which users often find convenient. See id., 5:61-63, 8:10-
13; see also Ex. 1012, ¶ 90.
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
44
It would have been obvious to one of ordinary skill in the art at the time of
the alleged invention of the ’872 Patent to modify the camera disclosed in Davis to
generate a “sequence number” of the captured image, as disclosed in Steinberg
’902. See Ex. 1012, ¶ 91. For example, one of ordinary skill in the art would have
recognized that such a modification would have been a simple and common place
application of a known technique (the technique in Steinberg ’902 of generating a
unique sequence number for each image so that each image is uniquely
identifiable) to a known device (the camera of Davis) to yield the predictable result
of the camera in Davis including the sequence number in the metadata. Id.
Indeed, Davis already suggests a number of similar types of metadata to include
when capturing an image (see, e.g., Ex. 1003, ¶¶ [0107]-[0135] (disclosing, for
example, “picture identifiers, e.g., industry or application specific identifiers”)) and
it would have been simple and common sense to supplement or replace this data
with a sequence number without affecting the predictable operation of Davis’s
camera. See Ex. 1012, ¶ 91. Thus, one of ordinary skill would have understood
that implementing such a modification would have been a common sense and
predictable modification that was within the realm of knowledge of one skilled in
the art at the time of the alleged invention. See KSR, 550 U.S. at 401, 417; Ex.
1012, ¶ 91.
3. Claim 25
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
45
a) “The device as in claim 1, further comprising a display module for displaying to a user geographic directions to the location.”
Davis, Steinberg, and Steinberg ’902 disclose these limitations for at least
the same reasons as discussed above with respect to claims 3 and 7 in Parts IX.A.3,
IX.B.1. See Ex. 1012, ¶ 92; analysis and citations above for claims 3 and 7.
4. Claim 26
a) “The device as in claim 1, further comprising a picture sequence module for recording a sequence number of the captured image, wherein the processor module associates the sequence number to the captured image.”
Davis, Steinberg, and Steinberg ’902 disclose a picture sequence module for
recording a sequence number of the captured image at least the same reasons as
discussed above with respect to claim 13 in Part.IX.B.2. See Ex. 1012, ¶ 93;
analysis and citations above for claim 13. Also, it would have been obvious to one
skilled in the art at the time of the alleged invention to configure the processor
module discussed above regarding claim element 1(f) for Davis to associate the
sequence number recorded by the combined system of Davis, Steinberg, and
Steinberg ’902 to the captured image. Such a person would have been motivated
to make such a modification because it would have provided additional metadata
that would have been linked to a captured image and used for verification purposes
regarding a session. See e.g., discussion regarding claim elements 1(f) and claims
13, 36. Such a person would have been so motivated given that Davis discloses
associating information relating to a captured image for subsequent use, such as
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
46
verification purposes. The combined system of Davis, Steinberg, and Steinberg
’902 would have been configured to include the additional information of image
sequence numbers, which are also linked to a captured image. Ex. 1012, ¶ 93.
Given the disclosures of these references, and the associating features that
addressed above regarding Davis, such a skilled person would have found
configuring the processing module of the combined system to associate the
sequence numbers to an image (like that disclosed by Steinberg ’902) to be a
predictable and common sense implementation that would have been within the
realm of knowledge of such a person at the time of the alleged invention. See KSR,
550 U.S. at 401, 417; Ex. 1012, ¶ 93.
5. Claim 29
a) “The method as in claim 27, wherein upon verification of the user, receiving geographic directions from at least one location to a location of the assignment and displaying the directions to the user.”
Davis, Steinberg, and Steinberg ’902 disclose these limitations for at least
the same reasons as discussed above with respect to claim 7 in Part IX.B.1. The
functions performed by the components described above regarding Davis,
Steinberg, and Steinberg ’902 for claim 7 reflect processes that disclose this
limitation. See Ex. 1012, ¶ 94; analysis and citations above for claim 7.
C. Ground 3: Davis, Steinberg, and Terp Render Claim 14 Obvious
1. Claim 14
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
47
a) “The device as in claim 1, further comprising a scanning module for scanning information to be associated with the digital image file.”
Davis and Steinberg disclose all of the features of claim 1, but do not
explicitly disclose “a scanning module for scanning information to be associated
with the digital image file,” as recited in claim 14. However, it would have been
obvious to a person of ordinary skill in the art at the time of the alleged invention
of the ’872 Patent, however, to modify the combination of Davis and Steinberg to
implement this feature based on the disclosure of Terp. Ex. 1006; Ex. 1012, ¶ 95.
Terp discloses a portable inventory device that “includes at least an image
scanner, a digital camera, and a receiver that is configured to receive a plurality of
data files that represent standard inventory profiles for a plurality of inventory
items.” Ex. 1006, 2:17-24; see also id., 4:11-17, 6:15-26. The device also includes
a processor “configured to process an image of an inventory item’s identifier that is
captured by the image scanner to determine a representation for the identifier that
may be processed by a computer.” Id., 4:13-24; see also id., 2:29-3:4. “[T]he
identifier may be bar codes, actual numbers and letter and any other form of an
identifier that can be imaged and processed by a computer.” Id., 4:22-24; see also
id., 2:30-33. Ex. 1012, ¶ 96. Further, Terp describes a process in which a user of a
portable device scans a VIN associated with an automobile. Ex. 1006, 8:14-34.
“If the VIN is on record, then step 524 retrieves the record from the storage device
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
48
204.” Id., 8:31-38. If the VIN is not on record, Terp explains that “a vehicle
record [is created] by creating a bin on the storage device 204 and record[ing] the
VIN in the bin.” Id. Next, the process “prompts the user to take a photograph of
the vehicle and receives input from the digital camera.” Id., 9:29-33. The
photographs are stored in the vehicle record. Id., 9:19-36. Because the record
includes a VIN of an automobile obtained using an image scanner and pictures of
the automobile, Terp discloses an image capture device that includes “a scanning
module for scanning information to be associated with the digital image file,” as
recited in claim 14. Ex. 1012, ¶ 97.
It would have been obvious to a person of ordinary skill in the art at the time
of the alleged invention to modify the device of Davis to include the ability to scan
information to be associated with a digital image, similar to as recited in Terp, to
provide another mechanism for associating information with the digital image. Ex.
1012, ¶ 98. One skilled in the art would have been motivated to look to Terp to
compliment the system and processes of Davis given that the references disclose
devices for capturing images and associating information with the captured image
for later access. See e.g., citations and analysis above regarding Davis and Terp.
Moreover, as explained in Terp, manual entry of information may be cumbersome,
inefficient, and result in human error. Ex. 1006, 1:33-7. The disclosure of Terp
would have informed one of ordinary skill that including the ability to scan
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
49
information to be associated with a digital image, would have permitted
information to be associated with an image to be gathered easily, quickly, and
accurately. Ex. 1006, 1:33-7; Ex. 1012, ¶ 98. Thus, one of ordinary skill would
have understood that implementing such a modification would have been a
common sense and predictable modification that was within the realm of
knowledge of one skilled in the art at the time of the alleged invention. See KSR,
550 U.S. at 401, 417; Ex. 1012, ¶ 98.
D. Ground 4: Davis, Steinberg, and Fukunaga Render Claims 15, 19, 20, and 32 Obvious
1. Claim 15
a) “The device as in claim 1, further comprising a scanning module for reading a symbology associated with a printed digital image and wherein the processing module is adapted to use the symbology to retrieve the associated information of the digital image file.”
Davis and Steinberg disclose all of the features of claim 1, but do not
explicitly disclose “a scanning module for reading a symbology associated with a
printed digital image and wherein the processing module is adapted to use the
symbology to retrieve the associated information of the digital image file,” as
recited in claim 15. However, it would have been obvious to a person of ordinary
skill in the art at the time of the alleged invention of the ’872 Patent, however, to
modify the combination of Davis and Steinberg to implement this feature based on
the disclosure of Fukunaga. Ex. 1007; Ex. 1012, ¶ 99.
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
50
Fukunaga describes “a user terminal such as a camera-equipped cellular
phone, . . . a personal digital assistance (PDA) and the like” that captures a digital
image, (Ex. 1007, 1:15-20; see also id., Abstract, 6:21-24, 6:48-49, Figs. 1, 3),
which may have “additional information,” such as GPS information, voice
information, text information, and music information, associated with it (see, e.g.,
id., 2:61-64, 6:49-66). The image and additional information is uploaded to a
server for storage, which the server receives as one unit referred to as
“image+information.” Id., 7:26-35. The server produces a “URL for accessing the
image+information,” which may be encoded as a “code (for example, a two-
dimensional code such as a QR code).” See, e.g., id., 5:34-46, 7:42-48. Next, “a
photo print having the image and the QR code printed on a print paper is
produced.” See, e.g., id., Abstract, 2:24-27, 7:49-54, 9:13-32, Fig. 4; see also id.,
9:59-62 (instead of a QR code, any “other two-dimensional code, a bar code or the
URL string may be printed”). A user terminal (e.g., camera-equipped cellular
phone) “has a function of identifying the QR code printed on the photo print and
decrypting the identified QR code to acquire the URL.” See, e.g., id., 6:36-38,
7:55-60. As shown in Figure 3, “the image+information is accessed by using the
above described acquired URL.” See, e.g., id., 5:51-60, 7:61-64. For example, “if
the image+information is accessed by using the URL (http://abcdejp/1/1), the
service server 10 sends the additional information . . . attached to the image 23 to
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
51
the cellular phone 35, and provides a service for reproducing the voice on the
cellular phone 35, or a service for displaying the position information for shooting
the image, on a monitor on the cellular phone 35.” Id., 7:61 - 8:4. See also Ex.
1012, ¶¶ 100-101.
It would have been obvious to a person of ordinary skill in the art at the time
of the alleged invention to modify the device of Davis to include a scanning
module for reading a symbology associated with a printed digital image and a
processing module adapted to use the symbology to retrieve the associated
information of the digital image file, similar to as recited in Fukunaga, to provide
another means for retrieving images and associated information that is convenient
and easy to use. Ex. 1012, ¶ 102. The addition of Fukunaga’s symbology
functionality to Davis would have been a common sense and predictable approach
to enabling sharing of information associated with images, which would not have
hindered any of Davis’s or Steinberg’s existing functionality. Id. The combination
would have resulted in the camera’s processing components described above in
connection with claim 1 to use the symbology to retrieve the associated
information of the digital image file. Id. Thus, one of ordinary skill would have
understood that implementing such a modification would have been a common
sense and predictable modification that was within the realm of knowledge of one
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
52
skilled in the art at the time of the alleged invention. See KSR, 550 U.S. at 401,
417; Ex. 1012, ¶ 102.
2. Claim 19
a) “The device as in claim 16, wherein the capture module is coupled to a scanning module for decoding a symbology captured as a digital image by the capture module.”
Davis, Steinberg, and Fukunaga disclose these limitations for at least the
same reasons as discussed above with respect to claim 15 in Part IX.D.1. See Ex.
1012, ¶ 103; analysis and citations above for claim 15. Moreover, Fukunaga
explains that the scanning component identifies and decrypts the QR code (or other
type of symbology) and is thus decoded (Ex. 1007, 6:36-38; see also id., Abstract,
3:41-46, 7:55-60), which is used “for accessing the image+information” (id., 7:42-
45; see also id., Abstract, 5:41-43, 5:51-60, 7:61-8:4). The combined system of
Davis, Steinberg, and Fukunaga would thus decode the symbology. Ex. 1012, ¶
103. Moreover, one of ordinary skill in the art would have found it obvious to
modify the combined system such that the capture components described above for
claim element 1(c) would be coupled to the scanning components described above
for claim 19 in order to allow these components to interact to allow symbology to
be captured as an image and provided to the scanning components for decoding,
which is consistent to the operation of such features in the combination of
Fukunaga and Davis. Such a person would have been motivated to configure the
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
53
combined system of Davis, Steinberg, and Fukunaga given the disclosure of the
functions of the image capture devices in these references and found the
modification a predictable and common sense implementation to achieve the result
of obtaining the symbology information for decoding through interconnections
between the components that perform such functions. See KSR, 550 U.S. at 401,
417; Ex. 1012, ¶ 104.
3. Claim 20
a) “The device as in claim 19, wherein the processing module is adapted to use the symbology to retrieve the associated information of the digital image file.”
Davis, Steinberg, and Fukunaga disclose these limitations for at least the
same reasons as discussed above with respect to claims 15 and 19 in Parts IX.D.1
and IX.D.2. See Ex. 1012, ¶ 105; analysis and citations above for claims 15 and
19. As disclosed by Fukunaga and discussed above for claim 15, a QR code is
used to retrieve an image and associated information. See, e.g., id., 5:51-60, 7:61-
64, Fig. 3. Ex. 1012, ¶ 105. One of ordinary skill in the art at the time of the
alleged invention would have found it obvious to modify the combined system
such that the processing components described above for claim element 1(f) would
perform the symbology-based retrieval described for claim 20. Ex. 1012, ¶ 105.
Doing so would have allowed the components that associate information to an
image to participate in the retrieval of that information based on identifier
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
54
information, such as the QR code or other symbols. Id. Such a person would have
thus found such a modification a predictable and common sense implementation
based on the technologies disclosed by Davis and Fukunaga, which would have
been within the realm of knowledge of such a person. See KSR, 550 U.S. at 401,
417; Ex. 1012, ¶ 105.
4. Claim 32
a) “The method as in claim 31, further comprising the step of retrieving the associated information by scanning a symbology printed with the captured digital image.”
Davis, Steinberg, and Fukunaga disclose these limitations for at least the
same reasons as discussed above with respect to claim 15 in Part IX.D.1. The
functions performed by the components described above regarding Davis,
Steinberg, and Fukunaga for claim 15 reflect processes that disclose this limitation.
See Ex. 1012, ¶ 106; analysis and citations above for claim 15.
E. Ground 5: Davis, Steinberg, and Knowles Render Claims 8, 17, and 33 Obvious
1. Claim 8
a) “The device as in claim 3, wherein the display module further includes an audio output device for audibly prompting a user to input information regarding the captured image.”
Davis discloses that the digital camera includes “output devices” for “audio
output.” Ex. 1003, ¶ [0059]. The audio output device of Davis is used to “allow
for playback of voice instructions, and [provide] output of a text to speech
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
55
synthesis system.” Id. Davis does not explicitly recite that its audio output device
is used “for audibly prompting a user to input information regarding the captured
image,” as recited in claim 8. However, it would have been obvious to a person of
ordinary skill in the art at the time of the alleged invention of the ’872 Patent to
modify the combination of Davis and Steinberg to implement this feature based on
the disclosure of Knowles. Ex. 1008; Ex. 1012, ¶ 107.
Knowles describes a wireless camera apparatus for capturing and delivering
digital image “messages” to a remote destination. Ex. 1008, Abstract. According
to Knowles, information associated with an image may include an audio message
(id. at 8:13-28, 11:27-42), an address (id. at 12:16-31), or classification (id. at
12:16-20, 12:31-35). The audio message in Knowles is similar to the audio
message that may be recorded and associated with an image in Davis. See, e.g.,
Ex. 1003, ¶¶ [0058] (the digital camera “may also be configured to receive voice
input through a microphone, voice codec, and voice recognition hardware and
software”), [0125] (“Sound annotation” is associated to the image file), [0198]
(“As part of the embedding process, a sound (such as a voice instruction or
comment) can be compressed and embedded into the image’s watermark”).
Regarding the audio message, Knowles describes an “audio recording process” in
which the first step “plays . . . [an] audible prompt asking the wireless device user
to record a voice message.” Ex. 1008, 11:27-30. According to Knowles, “the user
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
56
is prompted . . . by audio prompt to enter the recipient’s e-mail address” or
classification. Id., 12:16-35. Ex. 1012, ¶ 108.
It would have been obvious to a person of ordinary skill in the art at the time
of the alleged invention to modify the display module components of the camera of
Davis (see e.g., Parts IX.A.3, IX.A.4) to audibly prompt a user to input audio
information regarding a captured image, such as disclosed in Knowles, to inform a
user that the user terminal is waiting for input. Ex. 1012, ¶ 109. One of ordinary
skill in the art would have been motivated to make such a modification because
Davis already discloses user-inputted information, such as audio information,
regarding an image (see, e.g., Ex. 1003, ¶¶ [0058], [0125], [0198]) and Knowles
discloses audibly prompting a user to input information regarding an image (see,
e.g., Ex. 1008, 11:27-30, 12:16-35). One of ordinary skill in the art would have
recognized that the audible prompting in Knowles would have provided a simple
and easy-to-implement way to improve Davis’s camera’s input functionality,
particularly since Davis’s camera is already structured to include an audio output
device capable of providing such prompting. Ex. 1003, ¶ [0059]; Ex. 1012, ¶ 109.
Moreover, one of ordinary skill would have known that prompting a user for input
was a common user interface feature, and therefore would have been a simple
design choice that resulted in an improved user interface experience. Ex. 1012, ¶
109. Thus, one of ordinary skill would have understood that implementing such a
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
57
modification would have been a common sense and predictable modification that
was within the realm of knowledge of one skilled in the art at the time of the
alleged invention. See KSR, 550 U.S. at 401, 417; Ex. 1012, ¶ 109.
2. Claim 17
a) “The device as in claim 16, further comprising an audio output device for audibly prompting a user to input information regarding the captured image and for audibly producing the received communication messages.”
Davis, Steinberg, and Knowles disclose these limitations for at least the same
reasons as discussed above with respect to claim 8 in Part IX.E.1. See Ex. 1012, ¶
110; analysis and citations above for claim 8. Also, the combined system and
processes of Davis, Steinberg, and Knowles also discloses audibly producing the
received communication messages” given that the audio output device of Davis is
configured to produce “audio output, and allow for playback of voice instructions,
and output of a text to speech synthesis system.” Ex. 1003, ¶ [0059]; Ex. 1012, ¶
110. Such voice instructions are included in received communication messages,
such as within metadata embedded with a watermark, and are extracted and played
as audio output. See, e.g., id., ¶ [0198]. See also Ex. 1012, ¶ 110. It would have
been obvious to one of ordinary skill in the art to modify the disclosed combined
features of Davis, Steinberg, and Knowles to include an output device for audibly
prompting a user to input information regarding the captured image and for audibly
producing the received communication messages for reasons similar to those
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
58
discussed above for claim 8. See analysis and reasons to combine these references
above in Part IX.E.1; Ex. 1012, ¶ 110.
3. Claim 33
a) “The method as in claim 30, wherein the prompting step includes audibly producing at least one question to the user.”
Davis, Steinberg, and Knowles disclose these limitations for at least the same
reasons as discussed above with respect to claim 8. See Ex. 1012, ¶ 111; analysis
and citations above for claim 8. The functions performed by the components
described above regarding Davis, Steinberg, and Knowles for claim 8 reflect
processes that disclose this limitation. See Ex. 1012, ¶ 111; analysis and citations
above for claim 8. One of ordinary skill in the art would have understood that the
disclosure by Knowles concerning audibly instructing the wireless device user to
record a voice message,” (Ex. 1008, 11:27-30), and asking “the user . . . by audio
prompt to enter the recipient’s e-mail address,” (id., 12:16-35), to be a disclosure
of presenting the user with a question as to which selection to make. See Ex. 1012,
¶ 111.
F. Ground 6: Davis, Steinberg, and Dodge Render Claim 37 Obvious
1. Claim 37
a) “The method as in claim 36, further comprising the step of verifying at least one task of the assignment information has been completed.”
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
59
Davis discloses the assignment of tasks to a user of a digital camera. See Ex.
1003, ¶¶ [0065]-[0071]. While Davis does not explicitly disclose “the step of
verifying at least one task of the assignment information has been completed,” as
recited in claim 37, it would have been obvious to a person of ordinary skill in the
art at the time of the alleged invention of the ’872 Patent to modify the
combination of Davis and Steinberg to implement this feature based on the
disclosure of Dodge. Ex. 1009; Ex. 1012, ¶ 112.
Dodge describes to a system where a user assigns “criteria for [a]
photograph” to “selected photographers.” Ex. 1009, Abstract; see also id., 12:9-
51, 15:56 - 16:13. Dodge discloses that, after receiving a project assignment, a
photographer will upload images and comments regarding the project. See id.,
Abstract, 28:5-15, 29:50-67. If “no images [are] uploaded,” an “error message” is
displayed. Id., 29:40-42. After the uploaded images are saved, the stage of the
project is updated and a notification of the update is sent to the customer. Id.,
30:1-27. The user may either approve the submission or request a change. Id.,
2:59 - 3:3, 18:46-51, 29:38-40. The system in Dodge continually keeps track of
which projects are finished and which projects are open and still need input from
the customer. See, e.g., id., 16:59 - 17:12. Thus, in Dodge, both the system and
the customer verify that a photographic assignment has been completed. Ex. 1012,
¶ 113.
Petition for Inter Partes Review of U.S. Patent No. 7,456,872
60
It would have been obvious to a person of ordinary skill in the art at the time
of the alleged invention to modify the process disclosed in Davis to include a step
of verifying at least one task of the assignment information has been completed,
such as disclosed in Dodge. Ex. 1012, ¶ 114. Such a person would have been so
motivated to make such a modification to improve the interaction between the
photographer and the assignment provider (e.g., the employer or supervisor
disclosed in Davis), and to streamline the ability to handle change or preview
requests by the assignment provider. Ex. 1009, 1:31-35, 1:65-67, 2:1-9; Ex. 1012,
¶ 114. Such a person would have recognized that the verification step could easily
be performed mentally by a user, and even if performed by a machine, would have
only required a simple modification of Davis’s camera or external device receiving
an image from the camera, and thus realized the modification as a common sense
and predictable one. Ex. 1012, ¶ 114. See KSR, 550 U.S. at 401, 417; Ex. 1012, ¶
114.
X. Conclusion
For the reasons given above, Petitioner requests inter partes review of the
’872 Patent and cancellation of claims 1-39 of the ’872 Patent.
Respectfully submitted,
Dated: January 26, 2015 By: /Joseph E. Palys/ Joseph E. Palys, Back-up Counsel Registration No. 46,508 Counsel for Petitioner
Petition for Inter Partes Review – Patent No. 7,456,872
CERTIFICATE OF SERVICE
I hereby certify that on this 26th day of January, 2015, a copy of the
foregoing Petition for Inter Partes Review of U.S. Patent No. 7,456,872 under
35 U.S.C §§ 311-319 and 37 C.F.R. §§ 42.1-.80 & 42.100-.123 and supporting
materials were served by express mail upon the following:
Hespos & Porco LLP 110 West 40th Street Suite 2501 New York, NY 10018
Dated: January 26, 2015 Respectfully submitted,
/Joseph E. Palys/ Joseph E. Palys Paul Hastings LLP
