Decision Denying Institution IPR2015-00413

Apple Inc. v. E-Watch, Inc.

Takeaway: The Board is not bound by a decision by an Examiner on whether a declaration presented in prosecution sufficiently established that an invention predated a prior art reference.

In its Decision, the Board denied institution of inter partes review of the ’871 Patent because Petitioner did not demonstrate a reasonable likelihood of prevailing in showing the unpatentability of any of the challenged claims, claims 1-3, 5-7, 12, and 14. The ’871 Patent generally relates to “image capture and transmission systems and is specifically directed to an image capture, compression, and transmission system for use in connection with land line and wireless telephone systems.”

Petitioner relied on a single ground of unpatentability of obviousness over Parulski and Umezawa. The Board began its analysis by reviewing the status of Parulski as prior art against the ’871 Patent. Parulski has an effective filing date of April 24, 1995, which was earlier than the effective filing date of the ’871 Patent of January 12, 1998. A declaration was submitted during prosecution of the ’871 Patent to antedate the reference. The Board noted that it is not bound by the decision by the Examiner on the declaration, and that it found that the declaration was insufficient to antedate Parulski.

Specifically, the Board determined that the declaration did not adequately establish conception of the subject matter of any challenged claim prior to the effective filing date of Parulski, because it did not correlate the elements of the challenged claims to that which purportedly was conceived. The Board also determined that the declaration did not make a sufficient showing of continuous exercise of reasonable diligence from just prior to the effective filing date of Parulski to the effective filing date of the ’871 Patent. For example, the declaration did not adequately explain a lack of activity between 1992 and November 1995 or between November 1995 and mid-1997.

In assessing the obviousness ground, the Board determined that although Parulski qualified as prior art, Petitioner failed to show a reasonable likelihood that it would prevail in establishing claims 1-3, 5-7, 12, and 14 are unpatentable as obvious over Parulski and Umezawa. For example, the Board determined that the Petition lacked a sufficient showing of “a user interface for enabling a user to select the image data signal for reviewing transmission,” recited in claim 1. Petitioner argued that Parulski taught the feature, but the Petition did not explain where Parulski disclosed an already generated image data signal that must be selected via a user interface. Petitioner also did not present any argument based on the disclosure of Umezawa. Accordingly, the proposed combination of references failed to teach each and every element of the claims.

Apple Inc. v. E-Watch, Inc., IPR2015-00413
Paper 13: Decision Denying Institution of Inter Partes Review
Dated: May 18, 2015
Patent 7,365,871 B2
Before: Jameson Lee, Gregg I. Anderson, and Matthew R. Clements
Written by: Lee
Related Proceedings: e-Watch, Inc. v. Apple Inc., No. 2:13-cv-1061, 1062, 1063, 1064, 1070, 1071, 1072, 1073, 1074, 1075, 1077, and 1078 (E.D. Tex.); IRP2014-00439; IPR2014-00987; IPR2015-00411; IPR2015-00412; IPR2014-00402; IPR2014-00404; IPR2014-00406; IPR2015-00541; IPR2015-00610; IPR2015-00612; e-Watch, Inc. v. Huawei Technologies Co., Ltd., No. 2:13-cv-1076 (E.D. Tex.)