Re: Certain Mobile Telephones and Wireless Communication ...amlawdaily.typepad.com/kodakitcapplebrief.pdfWashington, D.C. 20436 ... and mobile communications devices. Apple's personal

1300 Eye Street NW, Suite 900 Washington, DC 20005-3314 +1 202 682 7000 tel +1 202 682 0940 fax

Weil, Gotshal & Menges LLP

Edward S. Jou +1 202 682 7039 [email protected]

February 18, 2011

The Honorable Marilyn R. Abbott Secretary U.S. International Trade Commission 500 E Street, S.W., Room 112-A Washington, D.C. 20436

VIA EDIS

Re: Certain Mobile Telephones and Wireless Communication Devices Featuring Digital Cameras, and Components Thereof: ITC Inv. No. 337-TA-703

Dear Secretary Abbott:

Pursuant to 19 C.F.R. § 210.4(f)(3)(ii), please find attached Respondent Apple Inc.'s non-confidential version of the following:

• Apple Inc.'s Contingent Petition for Review

Should you have any questions, please let me know.

Respectfully submitted,

Edward S. Jou

cc: Counsel of Record

Enclosure

Redacted Public Version

THE UNITED STATES INTERNATIONAL TRADE COMMISSION WASHINGTON, D.C. 20436

Before The International Trade Commission

Investigation No. 337-TA-703

In the Matter of

CERTAIN MOBILE TELEPHONES AND WIRELESS COMMUNICATION DEVICES FEATURING DIGITAL CAMERAS, AND COMPONENTS THEREOF

APPLE INC.'S CONTINGENT PETITION FOR REVIEW

Counsel for Respondent Apple:

Matthew D. Powers Steven S. Cherensky Anne M. Cappella Jill J. Ho Alexandra O. Fellowes WEIL, GOTSHAL & MANGES LLP 201 Redwood Shores Parkway Redwood Shores, CA 94065 Telephone: (650) 802-3000 Facsimile: (650) 802-3100

Mark G. Davis Robert T. Vlasis Edward S. Jou Annaka Nava WEIL, GOTSHAL & MANGES LLP 1300 Eye St., N.W., Suite 900 Telephone: (202) 682-7000 Facsimile: (202) 682-0940

Served on behalf of Respondent:

Apple Inc. 1 Infinite Loop Cupertino, CA 95014 Tel: (408) 996-1010

Apple, Inc.'s Petition for Review Case No, 337-TA-703


TABLE OF CONTENTS I. INTRODUCTION 1

II. BACKGROUND 2

A. The Parties 2

1. Kodak 2

2. Apple 3 3. RIM 3

B. Procedural History 4 C. The '218 Patent at Issue and Claim 15 6

1. '218 Patent Specification 7 2. Overview of the '218 Patent Prosecution History 8 3. Claim 15 11

4. Claim Construction 12 III. LEGAL STANDARDS FOR COMMISSION REVIEW 15 IV. SHOULD THE COMMISSION DETERMINE TO REVIEW THE FINAL ID

AND TO ADOPT KODAK'S PROPOSED CONSTRUCTIONS, APPLE'S ADAM PROJECT RENDERS CLAIM 15 INVALID 16 A. Apple's Disclosure of Its Adam Project To Kodak 16 B. Detailed Descriptions of Apple's Adam Architecture 22

1. 22

2. 26

3. 30 C. Adam Renders Claim 15 Obvious Under Kodak's and the Staff's Proposed

Constructions 36 1. Element (a) 36 2. Element (b) 36 3. Element (c) 38 4. Element 38 5. Element (e) 39 6. Element (f) 41

V. CONCLUSION 41

Apple, Inc.'s Petition for Review I Case No. 337-TA-703


TABLE OF AUTHORITIES STATUTES

35 U.S.C. §103 6 REGULATIONS

19 C.F.R. § 210.43 2, 15

Apple Inc.'s Contingent Petition for Review Case No. 337-TA-703.


TABLE OF ABBREVIATIONS

CDX-XXX Complainant's Demonstrative Exhibit

CX-XXX Complainant's Exhibit

CPostl Complainant's Initial Post-Hearing Brief

CPost2 Complainant's Responsive Post-Hearing Brief

CPre Complainant's Pre-Hearing Brief

JX-XX Joint Exhibit

RAPost 1 Respondent Apple's Initial Post-Hearing Brief

RAPost2 Respondent Apple's Responsive Post-Hearing Brief

RAPre Respondent Apple's Pre-Hearing Brief

RDX-XXX Respondents' Demonstrative Exhibit

RX-XXX Respondents' Exhibit

SPre Staffs Pre-Hearing Brief

SPost I Staffs Initial Post-Hearing Brief

SPost2 Staffs Responsive Post-Hearing Brief

SX Staffs Exhibit

Tr Transcript of Markman Hearing, Pre-Hearing Conference, and

Hearing

Apple Inc.'s Contingent Petition for Review iii Case No. 337-TA-703.


INTRODUCTION

In his Final Initial and Recommended Determination ("Final ID") dated January 24,

2011, 1 Chief Administrative Law Judge Luckern ("the Chief ALF) set forth his constructions

for the disputed claim terms identified by the parties and found no violation by Respondent

Apple Inc. ("Apple") under those constructions on three different non-infringement grounds and

three different invalidity grounds. Apple submits that the Chief ALJ correctly interpreted the

disputed claim terms and under those constructions correctly determined that claim 15 of U.S.

Patent No. 6,292,218 ("the '218 Patent") (JX-1), the only asserted claim, is invalid and not

infringed by Apple and therefore that there is no violation of Section 337 by Apple and no

exclusion order should issue. Apple therefore submits that the Commission need not review the

Final ID.

With respect to claim construction, the Final ID largely adopted the constructions

proposed by Apple and by co-respondents Research In Motion Ltd. and Research in Motion

Corp. (collectively, "RIM"), which were based upon the intrinsic evidence in the specification

and prosecution history of the '218 Patent and confirmed by extrinsic evidence including expert

testimony. The Final ID largely rejected Kodak's (and the Staff s) broader, unsupported

proposed constructions. As stated above, Apple submits that Chief ALJ Luckern's construction

are correct as a whole, and should stand, but if the Commission is to review those constructions,

and modify them by adopting narrower constructions (for example, Apple's proposed

construction for "button"2), that would only reinforce the Final ID's non-infringement findings.

The Final ID is attached to the Appendix of Exhibits filed herewith as Exhibit A. 2 The Chief ALJ held a two-day Markman hearing on May 24 and May 25, 2010 and based on the evidence presented at that Markman hearing, issued an Initial Determination regarding claim

Apple, Inc.'s Petition for Review 1 Case No. 337-TA-703


Similarly, if the Commission is to review the Chief ALJ's constructions and adopt Kodak's (or

other constructions broader than those adopted in the Final ID), that would only reinforce the

Final ID's invalidity findings.

However, if the Commission determines to review the ID, and in particular, if the

Commission determines to review the claim constructions adopted in the Final ID and should the

Commission determine to adopt one or more of Kodak's and the Staff's broader proposed

constructions, then Apple requests review under 19 C.F.R. § 210.43 of the Final ID's

determination that Apple's Adam project does not anticipate or make obvious claim 15. The

Chief ALJ did not make findings regarding Adam under Kodak's proposed constructions, but the

unrebutted evidence presented at the hearing compel a finding that under Kodak's proposed

constructions, claim 15 is anticipated or made obvious by Adam.

II.

BACKGROUND

A. The Parties

1. Kodak

Eastman Kodak Co. ("Kodak") is a New Jersey corporation with its primary place

of business in Rochester, New York. (CPre8r. at 4; Compl. at 6). Kodak markets, distributes,

construction on June 22, 2010. All parties submitted petitions for review (a contingent petition for review in the case of RIM) of portions of that Markman ID. Apple petitioned the Commission to review the Markman ID's construction of "button." On October 20, 2010, the Commission issued a notice that the Markman ID was to be treated as an order rather than an Initial Determination. Accordingly, the June 22, 2010 Initial Determination regarding claim construction is referred to herein as the "Markman Order." The Markman Order is attached to the Appendix of Exhibits filed herewith as Exhibit B. Although Apple disagreed with the Markman Order's (and the Final ID's) construction of "button," review of that proposed construction ("a mechanical element that must be pressed or depressed") is unnecessary for purposes of non-infringement (due to the three other grounds of non-infringement by Apple found in the Final ID) and irrelevant for purposes of invalidity (because a mechanical element that must be pressed or depressed is found or would be obvious in all three of the invalidity combinations adopted in the Final ID). Accordingly, Apple does not here petition for review of that construction.

Apple Inc.'s Contingent Petition for Review 2 Case No. 337-TA-703.


and sells film and related technologies such as photo processing equipment and materials,

specialty chemicals, digital cameras and accessories, printers and copiers.

2. Apple

Apple is a California Corporation headquartered at 1 Infinite Loop, Cupertino,

California 95014. (Compl. at 16). Apple is a leading designer and manufacturer of personal

computers, portable digital media players, and mobile communications devices. Apple's

personal digital media and communications products, such as the iPhone, the iPod line of digital

media players, and the iPad, are groundbreaking products that revolutionized their respective

industries, enjoy enormous commercial success and popular acclaim, and continue to lead their

fields in innovation, performance, and ease of use.

Apple's history of launching products that are technically innovative and

commercially successful stems from its ongoing commitment to research and development

("R&D"). Throughout its history, Apple has made substantial investments in R&D in a wide

variety of technical fields, including computer hardware and software, graphical and touch-based

user interfaces, digital media players, digital imaging, and personal communications. This R&D

has been conducted by employees located at the company headquarters in Cupertino, California.

Apple's commitment to R&D has led to pioneering innovations that have laid the groundwork

for, and are used extensively in, each of Apple's product lines, including the iPhone, iPod, iPad,

Macintosh computers, and Mac OS X software.

3. RIM

Research In Motion, Ltd. ("RIM Ltd.") is a corporation organized under the law

of Ontario, Canada, with its principal place of business at 295 Phillip Street, Waterloo, Ontario,

Canada N2L 3W8. RIM Ltd. is a designer, manufacturer, and marketer of wireless solutions for

the worldwide mobile communications market. (Compl. at 11).

Research In Motion Corporation ("RIM Corp.") is a corporation organized under

the law of Delaware with its principal of business at 122 W. John Carpenter Parkway, Irving,

Texas 75039. RIM Corp. is a wholly owned subsidiary of RIM Ltd. (Compl. at 12).



B. Procedural History

Complainant filed its complaint with the ITC on January 14, 2010, alleging that

RIM and Apple infringe one or more of claims 15, 23, 24, 25, 26, and 27 of the '218 Patent. A

letter supplementing the complaint was filed on February 4, 2010. The Commission initiated this

investigation on February 17, 2010. The Apple products accused in the original complaint of

infringing the asserted claims were the iPhone 3G and iPhone 3GS. The iPhone 4 was later

added as a third accused Apple product (collectively, the iPhone 3G, 3GS, and 4 are referred to

herein as "the Accused Apple iPhone Products"). Apple and RIM both filed answers to the

Complaint on March 16, 2010.

The Chief ALJ granted Apple's Motion for Leave to Amend Its Response to the

Complaint on April 27, 2010, based on discovery of new information material to Apple's

invalidity and inequitable conduct defenses. (Order No. 13). On May 12, 2010, the Chief AU

granted RIM's Motion for Leave to Amend RIM's Response to the Complaint, based on the new

information discovered by Apple, as well as the U.S. Patent and Trademark Office's granting of

a request for reexamination of the '218 Patent, both of which were material to RIM's invalidity

and inequitable conduct defenses. (Order No. 17).

On April 19, 2010, the Chief ALJ issued an order granting-in-part a joint motion

by Respondents requesting a claim construction ("Markman") hearing to resolve disputed claim

language in the asserted independent and dependent claims of the '218 Patent. (Order No. 11).

The Chief ALJ's order directed the parties to submit motions for summary determination of their

proposed claim constructions and scheduled a Markman hearing on those motions to commence

on May 24, 2010. Pursuant to Order No. 11, each of the parties to the Investigation moved for

summary determination on claim construction. (Mot. Docket Nos. 703-11, 703-012, 703-013,

and 703-014), and the Chief ALJ conducted the Markman hearing on May 24-25, 2010.

The Chief ALJ issued an Initial Determination on June 22, 2010, granting-in-part

and denying-in-part the parties' motions for summary determination on claim construction and

providing constructions of the disputed claim terms of the '218 Patent.



Kodak, Apple, and the Commission Investigative Staff each filed a petition for

review of the Initial Determination; and RIM filed a contingent petition for review.

On July 22, 2010, the Commission determined to review the Chief ALJ's claim

construction ID in its entirety and requested additional briefing directed to whether claim

construction is an issue or element appropriate for ruling by summary determination pursuant to

Commission rule 210.8(a).

On August 31, 2010, Kodak filed an Unopposed Motion for Partial Termination

of the Investigation as to dependent claims 23-27 of the '218 Patent. (Hr'g Tr. at 1143:16-

1144:9). The Motion was granted on September 8, 2010 (Order No. 28). Furthermore, Kodak

informed the Chief ALJ and all parties to the Investigation on September 1, 2010 that it was

withdrawing its argument under the technical prong of domestic industry requirement and that it

was proceeding only on evidence of its licensing program as proof of Kodak's alleged domestic

industry with respect to the '218 Patent. (Hr'g Tr. at 1139:13-25 ("[W]e're going forward on the

licensing presentation and not on the technical prong for the domestic industry requirement.")).

On September 15, 2010, the Chief ALJ issued Order No. 29, which documented the letter sent by

Kodak to the Chief ALJ on August 31, 2010 regarding Kodak's intent to only present

information regarding its licensing program at the evidentiary hearing.

The investigative hearing in this Investigation occurred on September 1, 2, 3, 7, 8,

and 9, 2010 and the record was officially closed on Tuesday, September 14, 2010.

The Commission issued a notice that the Markman ID was to be treated as an

order rather than an Initial Determination on October 20, 2010.

The Chief ALJ issued the Final Initial and Recommended Determination on

January 24, 2011. The Final ID found that there is no violation of section 337 of the Tariff Act

of 1930, as amended, by Apple or RIM.

With respect to invalidity the Final ID found that it was established at the hearing

that:



• Claim 15 is invalid as obvious under 35 U.S.C. §103 in view of Mori in combination

with Parulski (Conclusion of Law 3).

• Claim 15 is invalid as obvious under 35 U.S.C. § 103 in view of Sasaki in

combination with Tredwell and Parulski (Conclusion of Law 4).

• Claim 15 is invalid as obvious under 35 U.S.C. § 103 in view of Sasaki in

combination with Mori and Parulski. (Conclusion of Law 5).

The Final ID also found that it was not established at the hearing that claim 15 is invalid in view

of Apple's Adam Project. (Conclusion of Law 6).

With respect to non-infringement by Apple, the Final ID found that Kodak failed

to show that claim 15 of the '218 Patent in issue is infringed, literally or under the doctrine of

equivalents, by any of the Accused Apple iPhone Products. (Conclusion of Law 7).

Specifically, the Final ID found that none of the Accused Apple iPhone products practice

elements (b) or (e) of Claim 15 and that the iPhone 3GS and iPhone 4 (the only accused Apple

products still being imported as of the date of the hearing), further do not practice element (d) of

claim 15. (Final ID at 41).

C. The '218 Patent at Issue and Claim 15

The '218 Patent is entitled "Electronic Camera for Initiating Capture of Still

Images while Previewing Motion Images." (JX-1 ['218 Patent]). The '218 Patent issued on

September 18, 2001, is assigned to Eastman Kodak Company, and names Kenneth A. Parulski

and Timothy J. Tredwell as inventors. (Id). The Abstract of the '218 Patent describes an

electronic camera with a motion mode where preview images are shown on a color LCD display

and a still mode for capturing still images. (Id). The Abstract further describes particular

processors and circuits for implementing the electronic still camera. (Id). The '218 Patent

specification provides a general background of digital camera technology at the time of the

invention, which establishes that image sensors, digital processors, color displays, capture

buttons, and digital memories were known by those of ordinary skill in the art, a point confirmed

by other prior art references.



1. '218 Patent Specification

The Background of the Invention of the '218 Patent acknowledges that a number

of companies had developed "[c]onsumer camcorders which include the capability of recording

analog motion and/or still images." (JX-1 ['218 Patent] at 1:16-18). These cameras included a

"sensor having a color filter array," and a "still capture button" that the user pushes to record a

still image. (Id. at 1:20-24). These cameras also stored images in a digital memory and recorded

them on videotape. (Id. at 1:24-27). Some of these cameras included "color liquid crystal

displays (LCD)," used instead of normal viewfinder "to allow the user to properly frame the

subject and view the images as they are being recorded." (Id. at 1:27-33).

The Background of the Invention of the '218 Patent also describes LCD screens

in further detail with Figure 1A, which represents a "typical LCD display such as the Epson LB

2F-BC00." (Id. at 1:49-50). The display is described as "having about 240 lines of pixels and

about 300 pixels per line, with an image aspect ratio of 4:3," which corresponds to the NTSC

format. (Id. at 1:51-61). Furthermore, "[t]he LCD pixels are overlaid with a diagonal RGB

stripe pattern as shown in FIG. 1B." (Id. at 1:66-67). Named inventor Kenneth Parulski

confirmed that a red, green, and blue color pattern with equal numbers of each color was the

most common pattern for an LCD display at the time. (Parulski, Tr. at 2232:3-18; JX-22C.32-

.33 [Parulski Dep. at 67:12-68:7]).

The Background of the Invention of the '218 Patent criticizes the processing of

images in the prior art, where "the processing for both still images and the motion images is

identical." (JX-1 [`218 Patent] at 2:1-5; see also Parulski, Tr. at 2345:3-13). This processing is

"normally implemented by hardwired analog integrated circuits, although camcorders which use

digital image processing integrated circuits have been produced." (JX-1 at 2:2-5).

Mr. Parulski's testimony confirms that digital image processing was known prior to the '218

Patent. (Parulski, Tr. at 2345:22-2346:12). The prior art camcorders described in the '218

Patent generate "an NTSC composite or component format signal," and "[t]he color LCD display

includes circuitry to decode the NTSC composite or component signal back into spatially



sub-sampled RGB signals to drive the individual RGB pixels on the LCD." (JX-1 ['218 Patent]

at 2:5-12).

The '218 specification goes on to describe a particular implementation of an

electronic still camera with a motion mode and a still mode. (Id. at 2:24-54). The Detailed

Description of the Preferred Embodiment of the '218 Patent describes one preferred

embodiment, which is embodied in Figure 2. (Id. at 3:23-5:36). The '218 specification also

describes several possible variations on the preferred embodiment, including different sensors

and processing methods. (Id. at 5:37-10:20).

The '218 specification describes a "preferred image sensor:" "the Kodak model

CCD KAI-04000M image sensor, which has approximately 512 active lines with approximately

768 active pixels per line and an image aspect ratio of 3:2." (Id. at 5:49-52). This sensor uses a

color filter array pattern known as the "Bayer checkerboard" pattern, described in U.S. Pat. No.

3,971,065. (Id. at 5:62-66). Mr. Parulski testified at his deposition that the Bayer color pattern

was a preferred pattern for an image sensor by the 1994 time frame and the advantages were

known before 1994. (JX-22C.28, .30 [Parulski Dep. at 63:7-25, 65:8-21]). He testified at the

hearing that this is different from the patterns used for displays because the Bayer pattern is not

suitable for a display. (Parulski, Tr. at 2232:3-18).

2. Overview of the '218 Patent Prosecution History

The '218 Patent issued from U.S. Pat. App. 08/895,094, which was filed on

July 16, 1997. (JX-2.3 ['218 File History]). The '218 Patent was a divisional application of U.S.

Pat. App. 08/367,399, which was originally filed on December 30, 1994, which issued as U.S.

Pat. No. 5,828,406 on October 27, 1998. (JX-2.5 ['218 File History]).

On September 15, 1999, the Patent Office issued its first Office Action rejecting

all of the claims in the application. (JX-2.62). This Office Action rejected some claims as

indefinite and all of the claims as anticipated or obvious in view of U.S. Pat. No. 5,440,343 to

Parulski et al. (JX-5 ['343 Patent]; JX-2.64 ['218 File History]). The '218 Examiner explained

that '343 Parulski disclosed a still image mode and a motion preview mode and "the ability to



preview motion pictures before the initiation of the still mode is an inherent feature of Parulski et

al.'s image sensing apparatus." (JX-2.64 ['218 File History]). Also, "[i]t would have been

obvious to [a] person of ordinary skill in the art at the time of the invention that if the NTSC

image is obtained by discarding pixels, and the invention is applicable to camcorders, which

typically have viewfinders, then less pixels would be displayed than would be sensed." (JX-

2.70-.71 ['218 File History]).

On March 15, 2000, Kodak responded to this Office Action by canceling all of the

pending claims, changing the title of the invention, and writing new claims that "more clearly set

forth the present invention." (JX-2.114 ['218 File History]). The new title for the invention was

"Electronic Camera for Initiating Capture of Still Images While Previewing Motion Images."

(JX-2.109). The new claims included two independent claims, claim 32 and claim 42, which

claimed an electronic camera with "first" and "second" processors. (JX-2.110-13 ['218 File

History]). Independent claim 42 identified six distinct elements: (a) an image sensor, (b) a first

processor, (c) a display, (d) a capture button, (e) a second processor, and (f) a digital memory.

(JX-2.1 12 ['218 File History]).

The '218 Examiner rejected these new claims on June 8, 2000, finding them

obvious in light of U.S. Patent No. 4,819,059 to Pape (JX-8) in combination with U.S. Patent No.

5,923,816 to Ueda (JX-6). (JX-2.142 [`218 File History]). The '218 Examiner explained that

Pape is a "color video recorder comprising an image sensor (CCD; 12) which outputs all pixel

signals which are amplified, pre-processed (18) and then fed to two processing routes in one

embodiment." (Id). Pape also disclosed "further processing to provide a separate lower

resolution motion and higher resolution still." (JX-2.143 ['218 File History]). Ueda disclosed a

camera system for recording motion and still images "where upon imitation [sic] of a button (14)

a still image is recorded while the motion images are being displayed." (Id). In rejecting a

dependent claim, the '218 Examiner took "official notice that it is notoriously well known in the

art to compress still images using a JPEG compression algorithm." (JX-2.144 ['218 File

History]).



Kodak amended its claims on August 30, 2000 in response to this rejection to,

inter alia, specify that the "first processor" was a "motion processor," and the "second

processor" was a "still processor." (JX-2.189-192 ['218 File History]). The amended claims

also described "color pixel values" and "color patterns," and specified "the second number of

color pixel values being less than the first number of color pixels values, and the second color

pattern being different from the first color pattern." (JX-2.189 ['218 File History]).

The '218 Examiner again rejected the claims over Pape in view of Ueda, further

in view of U.S. Patent No. 4,876,590 to Parulski (JX-7) on November 7, 2000. (JX-2.199 ['218

File History]). The '218 Examiner stated that '590 Parulski disclosed the "color pixel value" and

"color pattern" limitations in "a video camera with a low resolution display for displaying NTSC

video images where the motion signals are generated from a portion (luminance only, second

number and second color pattern) [of] the high resolution image output." (JX-2.200 ['218 File

History]). In rejecting a dependent claim, the '218 Examiner wrote that although "Pape discloses

processing the image signal after storing the signal, it would have been an obvious matter of

design choice to process the image[] signals before storing, as it appears the system would work

equally as well with storing before processing." (JX-2.201 ['218 File History]). The '218

Examiner further noted that Pape displays digital images and Ueda discloses analog images, and

therefore, "display[ing] an analog or digital signal would depend on your type of output monitor

and would have been [an] obvious matter of design choice." (Id).

Kodak responded to this rejection on February 7, 2001 by adding the "at least

three different colors" limitation to the (a) image sensor, (b) motion processor, (c) color display,

and (e) still processor limitations of the pending independent claims. (JX-2.206-.207 ['218 File

History]). Kodak's amendment explained that "the Parulski ['590] apparatus converts a red,

green and blue color mosaic pattern into a green only pattern in order to provide a luminance

signal. The Parulski apparatus thus does not modify the color pattern of all three colors of the

color pixel values as set forth in amended claims 32 and 42 [issued claim 15]." (JX-2.211-.212

['218 File History] (emphasis in original)).

Apple Inc.'s Contingent Petition for Review 10 Case No. 337-TA-703,


The Patent Office then allowed the claims over the prior art on May 18, 2001, but

issued a double patenting rejection based on U.S. Patent No. 5,828,406 ("the '406 patent," JX-3),

which had issued from the parent application. (JX-2.217-.223 ['218 File History]). Although the

pending claims did not describe the processing method of the '406 patent, the '218 Examiner

wrote that "it would have been obvious to one of ordinary skill in the art to use a color

processing method, such as averaging pixel values, as such techniques are well known in color

image manipulation in camera systems, the Examiner takes Official Notice to this fact." (JX-

2.219 ['218 File History]). Also, the '218 Examiner stated that although the '406 patent does not

disclose the display of motion images, "it would have been obvious to display at least some of

the motion images corresponding to captured images on the color display" because "previewing

selected portions of the input image signal is a well known function of digital cameras — Official

Notice is taken to this fact." (JX-2.220 ['218 File History]). Lastly, the '218 Examiner stated

that although the pending claims did not describe an analog to digital converter, the "digital

memory" limitation implies that the camera "must inherently include a means for converting the

image signal into digital image data, such as an A/D converter." (JX-2.221 ['218 File History]).

Kodak submitted a terminal disclaimer on June 1, 2001, disclaiming any patent

protection that would extend beyond the term of the '406 patent. (JX-2.245-.49 ['218 File

History]). On June 13, 2001, the Patent Office issued a Notice of Allowability. (JX-2.250-.53

['218 File History]). The '218 Patent issued on September 18, 2001.

3. Claim 15

Claim 15 is reproduced below for ease of reference:

15. An electronic still camera for initiating capture of a still image while previewing motion images on a display, comprising:

(a) an image sensor having a two-dimensional array of photosites covered by a mosaic pattern of color filters including at least three different colors for capturing images of a scene, each captured image having a first number of color pixel values provided in a first color pattern;

(b) a motion processor for generating from the captured images, a second number of color pixel values provided in a second color pattern having at least three different colors and representative of a series of motion images to be previewed, the second number of color pixel values being less than the first

Apple Inc.'s Contingent Petition for Review 11

Case No, 337-TA-703.


number of color pixel values, and the second color pattern being different from the first color pattern;

(c) a color display for presenting at least some of the motion images of the series of motion images corresponding to the captured images of the scene, the color display having an arrangement of color display pixels including at least three different colors in a pattern different from the first color pattern;

(d) a capture button for initiating capture of a still image while previewing the motion images presented on the color display;

(e) a still processor for generating a third number of color pixel values including at least three different colors representative of a captured still image; and

(0 a digital memory for storing the processed captured still image.

4. Claim Construction

The Chief ALJ's constructions of the disputed terms in Claim 15, as well as the

parties' proposed constructions, are summarized in the table below. As noted above, Apple

believes that these constructions are consistent with the intrinsic and extrinsic evidence

(including expert testimony presented in declarations, at the Markman hearing, and at the full

evidentiary hearing), need not be reviewed by the Commission, and, if reviewed, should not be

disturbed. '218 Patent

Claim LanguageInitial Determination Construction

Claim 15 Preamble An electronic still camera for initiating capture of a still image while previewing motion images on a display, comprising: Claim 15 (a) an image sensor having a two- dimensional array of photosites covered by a mosaic pattern of color filters including at least three different colors for capturing images of a scene, each

"at least three different colors": referring to three or more distinct colors, for example red, blue and green, where each color is a phenomenon of light or visual perception that enables one to differentiate otherwise identical objects.' "each captured image having a first number of color pixel values provided in a first color pattern": each image of -a scene received by the image sensor having a first number of color pixel values generated by the image sensor, provided in

3 Kodak's proposed construction for "at least three different colors" was "plain and ordinary meaning, which does not include any restriction on the data format used to represent colors." (Markman Order at 47). The Staffs proposed construction for "at least three different colors" was " plain and ordinary meaning, which does not include a restriction on the type of data format used to represent colors." (Id.). Apple's and RIM's proposed construction for "at least three different colors" was "at least three different color components." (Id.).



'218 Patent Claim Language

Initial Determination Construction

captured image having a first number of color pixel values provided in a first color pattern;

an arrangement of the color pixel values generated by the image sensor, where a color pixel value is a measurement of the intensity of one color of light.4 "captured image": an image of a scene received by the image sensor.5 "first number of color pixel values": the number of color pixel values generated by the image sensor, where a color pixel value is a measure of the intensity of one color.6 "first color pattern": the arrangement of the color pixel values generated by the image sensor.'

Claim 15 (b) a motion processor for generating from the captured images, a second number of color pixel values provided in a second color pattern having

"motion processor": a processor that processes a series of motion images using digital image processing that is different and distinct in circuitry from the digital image processing of the still processor.° "at least three different colors": referring to three or more distinct colors, for example red, blue and green, where each

4 Kodak's proposed construction for this phrase was "the phrase should not be construed; the terms 'captured image,' 'first number of color pixel values,' and 'first color pattern' are properly construed individually." (Markman Order at 73). The Staff's proposed construction for this phrase was "each image of a scene captured by the photosites on the image sensor having the number of color pixel values generated by the photosites on the image sensor provided in the color pattern of the image as generated by the photosites on the image sensor." (Id.). Apple's and RIM's proposed construction for this term was " every image output by the sensor has the same number of pixels arranged in the same color pattern." (Id.). 5 Kodak's proposed construction for "captured image" was "an image of a scene captured by the electronic still camera." (Markman Order at 74). The Staff's proposed construction for "captured image" was "an image of a scene captured by the photosites on the image sensor." Apple's and RIM's proposed construction for "captured image" was "the image output by the image sensor." (Id.). 6 Kodak's and the Staff's proposed construction for "first number of color pixel values" was "the number of color pixel values generated by the photocites on the image sensor." (Markman Order at 74). Apple's and RIM's proposed construction for "first number of color pixel values" was "the number of photosites on the image sensor used to generate the color image signal." (Id.). 7 Kodak's and the Staff's proposed construction for "first color pattern" was "the color pattern of the image as generated by the photosites on the image sensor." (Markman Order at 74). Apple's and RIM's proposed construction for "first color pattern" was "the mosaic of color filters in the image sensor." (Id.). 8 Kodak's proposed construction for "motion processor" was "a digital processor that processes a series of motion images." (Markman Order at 18). The Staff's proposed construction for "motion processor" was "processor that processes a series of motion images using digital image processing that is different from the digital image processing of the still processor" (Id.). RIM's proposed construction for "motion processor" was "a first processor unit, separate from the second processor unit, for motion image processing." (Id.). Apple's proposed construction for "motion processor" was "a processor that processes motion images by using circuitry distinct from that of the still processor and a simpler processing technique than that of the still processor." (Id.).





at least three different colors and representative of a series of motion images to be previewed, the second number of color pixel values being less than the first number of color pixel values, and the second color pattern being different from the first color pattern;

color is a phenomenon of light or visual perception that enables one to differentiate otherwise identical objects.9 "representative of a series of motion images to be previewed": not construed

Claim 15 (c) a color display for presenting at least some of the motion images of the series of motion images corresponding to the captured images of the scene, the color display having an arrangement of color display pixels including at least three different colors in a pattern different from the first color pattern;

"at least three different colors": referring to three or more distinct colors, for example red, blue and green, where each color is a phenomenon of light or visual perceptipon that enables one to differentiate otherwise identical objects.'

Claim 15 (d) a capture button for initiating capture of a still image while previewing the motion images presented on the color display;

"capture button": a user control physically located on the camera, though it need not be a mechanical element." "initiating capture of a still image while previewing the motion images": sending a signal from the capture button to the timing and controls section, said signal starting the still image capture process and being sent during the display of motion images:2

Claim 15 (e) "still processor": a processor that processes a captured still

9 See note 3, supra. 1 ° See note 3, supra. 11 Kodak's proposed construction for "capture button" was "a user control that initiates capture" (Markman Order at 62). The Staff's proposed construction for "capture button" was "user control for initiating capture of a still image." (Id). Apple's and RIM's proposed construction for "capture button" was "a mechanical element pressed to take a still picture." (Id.). 12 Kodak's proposed construction for "initiating capture of a still image while previewing the motion images" was "plain and ordinary meaning, which does not require a "without interrupting" limitation as suggested by respondent(s)." (Markman Order at 68). The Staff's proposed construction for "initiating capture . . . " was "plain and ordinary meaning, which does not include a requirement that initiating capture of a still image occur without any interruption of previewing the motion images." (Id.). RIM's proposed construction for "initiating capture . . . " was "starting the output of a still image by the image sensor without interrupting the display of motion images." (Id.). Apple's proposed construction for "initiating capture . . ." was "starting the capture of a still image by the image sensor without interrupting the display of motion images." (Id.).





a still processor for generating a third number of color pixel values including at least three different colors representative of a captured still image; and

image using digital image processing that is different and distinct in circuitry from the digital image processing of the motion processor.1' "at least three different colors": referring to three or more distinct colors, for example red, blue and green, where each color is a phenomenon of light or visual perception that enables one to differentiate otherwise identical objects.14

Claim 15 (f) a digital memory for storing the processed captured still image.

LEGAL STANDARDS FOR COMMISSION REVIEW

A petition for review must "specify one or more of the following grounds upon

which review is sought: (i) That a finding or conclusion of material fact is clearly erroneous;

(ii) that a legal conclusion is erroneous, without governing precedent, rule or law, or constitutes

an abuse of discretion; or (iii) That the determination is one affecting Commission policy." 19

C.F.R. § 210.43(b)(1). Apple maintains that none of these grounds are present here, and

therefore that the Final ID should not be reviewed by the Commission.

13 Kodak's proposed construction for "still processor" was "a digital processor that processes a captured still image." (Markman Order at 18). The Staffs proposed construction for "still processor" was "processor that processes a captured still image using digital image processing that is different from the digital image processing of the motion processor." (Id.). RIM's proposed construction for "still processor was "a second processor unit, separate from the first processor unit, for still image processing that operates on the motion images. The still processor performs image processing at the same time as the motion processor." (Id.). Apple's proposed construction for "still processor was "a processor that processes still images by using circuitry distinct from that of the motion processor and a processing technique more complex than that of the motion processor." (Id.). 14 See note 3, supra.



IV.

SHOULD THE COMMISSION DETERMINE TO REVIEW THE FINAL ID AND TO ADOPT KODAK'S PROPOSED CONSTRUCTIONS, APPLE'S ADAM PROJECT

RENDERS CLAIM 15 INVALID

Apple presented substantial evidence regarding the invalidity of claim 15. The

Chief ALJ's Final ID found that three obviousness combinations rendered claim 15 obvious:

(1) Mori combined with Parulski; (2) Sasaki combined with Tredwell and Parulski; and

(3) Sasaki combined with Mori and Parulski. Apple also presented substantial evidence at the

hearing that its own prior art Adam digital camera architecture, which was disclosed to Kodak

prior to Kodak's claimed conception date, invalidated claim 15 under 35 U.S.C. sections 102(f)

and 102(g). The Final ID did not find that Adam invalidated claim 15 under the Final ID claim

constructions. If the Commission determines to review the Final ID constructions and adopt

Kodak's proposed, broader constructions, then the Commission should also review the Final ID's

findings with respect to Adam and find that Adam also invalidates claim 15.

A. Apple's Disclosure of Its Adam Project To Kodak

Apple Inc.'s Contingent Petition for Review 16 Case No. 337-TA-703


Apple Inc.'s Contingent Petition for Review 17 Case No, 337-TA-703.


Apple Inc.'s Contingent Petition for Review 18 Case No 337-TA-703.


Apple Inc.'s Contingent Petition for Review 19 Case No 337-TA-703






B. Detailed Descriptions of Apple's Adam Architecture"











Apple Inc.'s Contingent Petition for Review 27 Case No, 337-TA-703.




Apple Inc.'s Contingent Petition for Review 29 Case No 337-TA-703



Case No. 337-TA-703.







Case No. 337-TA-703






C. Adam Renders Claim 15 Obvious Under Kodak's and the Staffs Proposed Constructions

1. Element (a)

Element (a) of Claim 15 recites: (a) an image sensor having a two-dimensional array of photosites covered

by a mosaic pattern of color filters including at least three different colors for capturing images of a scene, each captured image having a first number of color pixel values provided in a first color pattern;

2. Element (b)

Element (b) of Claim 15 recites:

(b) a motion processor for generating from the captured images, a second number of color pixel values provided in a second color pattern having at least three different colors and representative of a series of motion images to be previewed, the second number of color pixel values being less than the first number of color pixel values, and the second color pattern being different from the first color pattern;





3. Element (c)

Element (c) of Claim 15 recites:

(c) a color display for presenting at least some of the motion images of the series of motion images corresponding to the captured images of the scene, the color display having an arrangement of color display pixels including at least three different colors in a pattern different from the first color pattern.

4. Element (d)

Element (d) of Claim 15 recites:

(d) a capture button for initiating capture of a still image while previewing the motion images presented on the color display;



5. Element (e)

Element (e) of Claim 15 recites:

(e) a still processor for generating a third number of color pixel values including at least three different colors representative of a captured still image;





6. Element (I)

Element (f) of Claim 15 recites:

(f) a digital memory for storing the processed captured still image.

V.

CONCLUSION

For all the reasons stated above, Apple submits that the Commission need not and

should not review the Chief ALJ's Final ID.

However, should the Commission review that ID and in particular, should the

Commission review the claim constructions adopted in the Final ID, and adopt Kodak's

proposed constructions for elements (b), (d), and (e), then Apple respectfully submits that the

Commission should also review the Final ID's findings with respect to whether claim 15 is

invalid in light of Apple's prior art Adam architecture.



Dated: February 7, 2011

Respectfully submitted,

Matthew D. Powers Steven S. Cherensky Anne M. Cappella Jill J. Ho Alexandra 0. Fellowes WEIL, GOTSHAL & MANGES LLP 201 Redwood Shores Parkway Redwood Shores, CA 94065 Telephone: (650) 802-3000

Mark G. Davis Robert T. Vlasis Edward S. Jou Annaka Nava WEIL, GOTSHAL & MANGES LLP 1300 Eye St., N.W., Suite 900 Telephone: (202) 682-7000 Facsimile: (202) 682-0940

Counsel for Respondent Apple Inc.


CERTIFICATE OF SERVICE

I hereby certify that a copy of the foregoing APPLE INC.'S CONTINGENT PETITION FOR REVIEW has been served on February 7, 2011 as indicated, on the following:

Via Hand Deliver y (Ori,iinal & 14 copies) Via Hand Delivery (2 copies) The Honorable Marilyn R. Abbott Secretary U.S. International Trade Commission 500 E Street SW, Room 112 Washington, D.C. 20436

The Honorable Paul J. Luckern Office of the Administrative Law Judge U.S. International Trade Commission 500 E Street SW, Room 317-H Washington, D.C. 20436

Via Email and Hand Delivery Via Email and Hand Delivery Vu Q. Bui Office of Unfair Import Investigations U.S. International Trade Commission 500 E Street SW, Room 401 Washington, D.C. 20436 [email protected]

Eric Rusnak K&L Gates, LLP 1601 K Street NW Washington, DC 20006 [email protected]

Counsel for Complainant Eastman Kodak Company.

Via Email and Hand Delivery Thomas J. Jarvis Finnegan, Henderson, Farabow, Garrett & Dunner, LLP 901 New York Avenue NW Washington, DC 20001 [email protected]

Counsel for Respondents Research in Motion, Ltd. and Research in Motion Corporation

Timothy Ander en Paralegal

CERTIFICATE OF SERVICE

I hereby certify that a copy of the foregoing NON-CONFIDENTIAL VERSION OF APPLE INC.'S CONTINGENT PETITION FOR REVIEW has been served on February 18, 2011, as indicated, on the following:

Via EDIS Via Hand Delivery The Honorable Marilyn R. Abbott Secretary U.S. International Trade Commission 500 E Street, S.W., Room 112-A Washington, D.C. 20436

The Honorable Paul J. Luckern Office of the Chief Administrative Law Judge U.S. International Trade Commission 500 E Street, S.W., Room 317-H Washington, D.C. 20436

Two Copies

Via E-Mail and Hand Delivery Via E-mail and Hand Delivery Vu Bui Office of Unfair Import Investigations U.S. International Trade Commission 500 E Street, S.W., Room 401 Washington, D.C. 20436

Eric Rusnak K&L Gates, LLP 1601 K Street NW Washington DC 20006-1600

Counsel for Complainant Eastman Kodak Company

Via E-mail and Hand Delivery Thomas L. Jarvis J. Michael Jakes Paul C. Goulet Anthony D. Del Monaco Finnegan , Henderson, Farabow, Garrett & Dunner, LLP 901 New York Avenue, N.W. Washington, DC 20001-4413 [email protected]

Alv. o R. Parrado Paralegal

Documents

Re: Certain Mobile Telephones and Wireless Communication ...amlawdaily.typepad.com/kodakitcapplebrief.pdfWashington, D.C. 20436 ... and mobile communications devices. Apple's personal