UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD MITEK SYSTEMS, INC. Petitioner

Transcription

1 Paper No. Filed: January 26, 2015 Filed on behalf of: Mitek Systems, Inc. By: Naveen Modi Joseph E. Palys Paul Hastings LLP th Street NW Washington, DC Telephone: (202) Facsimile: (202) 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. IPR Patent No. 7,456,872 PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,456,872

2 Petition for Inter Partes Review Patent No. 7,456,872 TABLE OF CONTENTS I. Introduction... 1 II. Mandatory Notices Under 37 C.F.R 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 (a) and 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 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 Claim Claim Claim Claim Claim i

3 Petition for Inter Partes Review Patent No. 7,456, Claim Claim Claim Claim Claim Claim Claim Claim Claim Claim Claim Claim Claim Claim Claim Claim Claim Claim Claim Claim B. Ground 2: Davis, Steinberg, and Steinberg 902 Render Claims 7, 13, 25, 26, and 29 Obvious Claim ii

4 Petition for Inter Partes Review Patent No. 7,456, Claim Claim Claim Claim C. Ground 3: Davis, Steinberg, and Terp Render Claim 14 Obvious Claim D. Ground 4: Davis, Steinberg, and Fukunaga Render Claims 15, 19, 20, and 32 Obvious Claim Claim Claim Claim E. Ground 5: Davis, Steinberg, and Knowles Render Claims 8, 17, and 33 Obvious Claim Claim Claim F. Ground 6: Davis, Steinberg, and Dodge Render Claim 37 Obvious Claim X. Conclusion iii

5 Petition for Inter Partes Review Patent No. 7,456,872 TABLE OF AUTHORITIES Page(s) FEDERAL CASES KSR Int l Co. v. Teleflex, Inc, 550 U.S. 398, 417 (2007)...passim Lizardtech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336 (Fed. Cir. 2005)... 9 Lockwood v. Am. Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997)... 8 FEDERAL STATUTES 35 U.S.C , 4 35 U.S.C FEDERAL REGULATIONS 37 C.F.R C.F.R (a) C.F.R C.F.R (a) C.F.R (b)... 6 iv

6 Petition for Inter Partes Review Patent No. 7,456,872 LIST OF EXHIBITS U.S. Patent No. 7,456,872 ( the 872 Patent ) 1002 File History of the 872 Patent 1003 U.S. Patent Application Pub. No. 2002/ to Davis et al. ( Davis ) 1004 U.S. Patent No. 6,433,818 to Steinberg et al. ( Steinberg ) 1005 U.S. Patent No. 6,750,902 to Steinberg et al. ( Steinberg 902 ) 1006 Int l Pub. No. WO/2001/31546 to Terp et al. ( Terp ) 1007 U.S. Patent No. 7,502,133 to Fukunaga et al. ( Fukunaga ) 1008 U.S. Patent No. 7,173,651 to Knowles ( Knowles ) 1009 U.S. Patent No. 7,266,544 to Dodge et al. ( Dodge ) 1010 U.S. Patent Application Pub. No. 2006/ to Leigh Rothschild 1011 U.S. Patent No. 7,450,163 ( the 163 Patent ) 1012 Declaration of Dr. Irfan Essa 1 Citations to non-patent publications are to the page numbers of the publication and citations to patent publications are to column:line number of the patents. v

7 I. Introduction Mitek Systems, Inc. ( Petitioner ) requests inter partes review of claims 1-39 of U.S. Patent No. 7,456,872 ( the 872 Patent ) (Ex. 1001). This Petition shows, by a preponderance of the evidence, that there is a reasonable likelihood that Petitioner will prevail on claims 1-39 of the 872 Patent based on prior art that the U.S. Patent Office ( PTO ) did not have before it during prosecution, and that renders obvious the claims of the 872 Patent. Claims 1-39 of the 872 Patent should be found unpatentable and canceled. II. Mandatory Notices Under 37 C.F.R A. Real Party-in-Interest Pursuant to 37 C.F.R. 42.8(b)(1), Petitioner identifies Mitek Systems, Inc. as the real party-in-interest. B. Related Matters In accordance with 37 C.F.R. 42.8(b)(2), Petitioner identifies the following related matters. The Patent Owner asserted the 872 Patent against Mitek Systems, Inc., JPMorgan Chase & Co, and JPMorgan Chase Bank, N.A. in a patent litigation filed on May 16, 2014, in the District of Delaware (case no. 1:14-cv-00617). On September 8, 2014, the Patent Owner initiated three additional patent litigation actions in the District of Delaware, asserting the 872 Patent against the following parties: (1) Mitek Systems, Inc., Bank of America Corporation, and Bank of America, N.A. (case no. 1:14-cv-01142); (2) Mitek Systems, Inc., Citigroup Inc., 1

8 and Citibank, N.A. (case no. 1:14-cv-01143); and (3) Mitek Systems, Inc., Wells Fargo & Company, and Wells Fargo Bank, N.A. (case no. 1:14-cv-01144). These four actions are currently pending. Petitioner is also filing concurrently herewith petitions for inter partes review of related U.S. Patent Nos. 7,450,163, 7,991,792, and 7,995,118. C. Lead and Back-Up Counsel Lead counsel is Naveen Modi (Reg. No. 46,224), Paul Hastings LLP, th St. N.W., Washington, D.C., 20005, Telephone: , Fax: , and Backup counsel is Joseph E. Palys (Reg. No. 46,508), Paul Hastings LLP, th St. N.W., Washington, D.C., 20005, Telephone: , Fax: , III. Payment of Fees Under 37 C.F.R (a) and The required fees are submitted herewith. The PTO is authorized to charge any additional fees due at any time during this proceeding to Deposit Account No IV. Grounds for Standing Petitioner certifies that, under 37 C.F.R (a), the 872 Patent is available for inter partes review, and that Petitioner is not barred or estopped from requesting inter partes review of the 872 Patent on the grounds identified. 2

9 V. Precise Relief Requested for Each Claim Challenged Petitioner challenges claims 1-39 of the 872 Patent and requests that these claims be found unpatentable and canceled in view of the following prior art: U.S. Patent Application Pub. No. 2002/ to Davis et al. ( Davis ) (Ex. 1003); U.S. Patent No. 6,433,818 to Steinberg et al. ( Steinberg ) (Ex. 1004); U.S. Patent No. 6,750,902 to Steinberg et al. ( Steinberg 902 ) (Ex. 1005); Int l Pub. No. WO/2001/31546 to Terp et al. ( Terp ) (Ex. 1006); U.S. Patent No. 7,502,133 to Fukunaga et al. ( Fukunaga ) (Ex. 1007); U.S. Patent No. 7,173,651 to Knowles ( Knowles ) (Ex. 1008); U.S. Patent No. 7,266,544 to Dodge et al. ( Dodge ) (Ex. 1009). Petitioner requests cancellation of claims 1-39 on the following grounds: Ground 1: Claims 1-6, 9-12, 16, 18, 21-24, 27, 28, 30, 31, 34-36, 38, and 39 are obvious under pre-aia 35 U.S.C. 103(a) over Davis and Steinberg; Ground 2: Claims 7, 13, 25, 26, and 29 are obvious under pre-aia 35 U.S.C. 103(a) over Davis, Steinberg, and Steinberg 902; Ground 3: Claim 14 is obvious under pre-aia 35 U.S.C. 103(a) over Davis, Steinberg, and Terp; Ground 4: Claims 15, 19, 20, and 32 are obvious under pre-aia 35 U.S.C. 103(a) over Davis, Steinberg, and Fukunaga; Ground 5: Claims 8, 17, and 33 are obvious under pre-aia 35 U.S.C. 103(a) over Davis, Steinberg, and Knowles; and Ground 6: Claim 37 is obvious under pre-aia 35 U.S.C. 103(a) over Davis, Steinberg, and Dodge. 3

10 As explained below in Section VIII, for purposes of this proceeding, the effective filing date of claims 1-39 of the 872 Patent is February 4, Davis, Steinberg, and Terp published more than one year prior to the effective filing date of the 872 Patent and thus are prior art under pre-aia 35 U.S.C. 102(b). Steinberg 902 published prior to the effective filing date of the 872 Patent and is prior art to the patent under pre-aia 35 U.S.C. 102(a). Steinberg 902, Fukunaga, Knowles, and Dodge were filed prior to the effective filing date of the 872 Patent and are prior art under pre-aia 35 U.S.C. 102(e). VI. The 872 Patent A. Overview of the 872 Patent The 872 Patent, entitled Device and Method for Embedding and Retrieving Information in Digital Images, issued on November 25, 2008, from U.S. Application No. 11/051,069 (filed February 4, 2005). Ex The 872 Patent is a continuation-in-part of U.S. Application No. 11/020,459 ( the 459 Application ), filed on December 22, 2004, and published as U.S. Patent Application Pub. No. 2006/ Ex The 459 Application is a continuation-in-part of U.S. Application No. 10/998,691, filed on November 29, 2004, and issued as U.S. Patent No. 7,450,163 ( the 163 Patent ). Ex The 872 Patent purportedly introduces a locational image verification device ( LIVD ) that receives an assignment to be completed by the user of the 4

11 LIVD. Ex. 1001, 13:49-14:29. According to the patent, an assignment may be one that instructs a user to visit specific locations with tasks associated with each location. Id., 13: When the user arrives at his specific assignment, he may use the [LIVD] to verify and capture information [related to the task]. Id., 14: Accordingly, the LIVD captures images, as well as other information, such as location, time, and date, related to the task. See, e.g., id., 14: Once the information is acquired, the LIVD will associate the acquired information with the assignment (see id., 14:46-49), encrypt the image and information (see id., 14:50-64), and transmit the encrypted image and information to a remote location (see id., 14:65-15:26). However, as explained below, the techniques and processes disclosed in the specification and recited in claims 1-39 of the 872 Patent describe nothing more than conventional features for capturing images relating to assignments. See also Ex. 1012, 8, 10, B. Prosecution History of 872 Patent During prosecution, all of the claims of U.S. Application No. 11/051,069 that eventually issued as the 872 Patent were initially rejected as unpatentable over the prior art. See Ex. 1002, pp In response, claim 30 of the application (which presently corresponds to claim 1 of the 872 Patent) was amended to recite a combination of well-known features relating to user verification, date and time, assignment, user identity, and encryption. Id., p

12 According to the Applicant, the claims were patentable because they were directed to information associated with the images [that] can be used to verify the images as genuine and that the images have not been tampered with by the user of the device. Id., p In response to the Applicant s representations, the PTO subsequently indicated that the pending claims were allowable. Id., pp. 132, 165. However, prior art identified in this petition disclose precisely the same features as those highlighted by the Applicant as being critical to the 872 Patent and was never made of record, and thus not considered by the PTO. See, e.g., Ex. 1003, [0103], [0201]-[0205] (verifying that images are genuine and not tampered with ); see also Ex VII. Claim Construction A claim of an unexpired patent subject to inter partes review receives the broadest reasonable construction in light of the specification of the patent in which it appears. 42 C.F.R (b). The 872 Patent has not expired. Thus, for purposes of this proceeding, the claims of the 872 Patent should be given their broadest reasonable construction. Petitioner presents below proposed 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 6

13 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, 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: 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: See also id., 5:44-51, 13:49-57, 14:8-13, 14: 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 While Petitioner cannot address the merits of this issue in this 7

14 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., IPR , Paper No. 11 at (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., See 35 U.S.C. 311(b). 8

15 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 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 at least because these claims depend from claims 1 or 27. 9

16 Accordingly, the earliest possible priority date for the 872 Patent s dependent claims is also February 4, 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, 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 10

17 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 11

18 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 programmability.. See Ex. 1004, 4:12-33, 5:60-62, 7:6-9, Fig. 8; Ex. 1012, 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 12

19 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: 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]; 13

20 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 14

21 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 15

22 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 events. See, e.g., id., Figs. 7, 10; Ex. 1012, 41. 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 16

23 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 17

24 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 18

25 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,

26 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, 20

27 [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, 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. 21

28 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, 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 22

29 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, 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 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 23

30 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 thereaftersnapped. 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, 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 24

31 allow for the entering of information regarding the captured images. See, e.g., id., [0060]-[0063]; Ex. 1012, 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, 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 25

32 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, 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, 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 26

33 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, 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, 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, 27

34 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 28

35 enable wireless communications like that disclosed by Davis. See KSR Int l Co., 550 U.S. at 417 (2007); Ex. 1012, 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, 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. 29

36 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, 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 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. 30

37 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, 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, 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., 31

38 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, 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; 32