Apple Inc. v. Samsung Electronics Co. Ltd. et al

Filing 925

Administrative Motion to File Under Seal Apple's Motion for Summary Judgment of Non-Infringement of U.S. Patent Number 7,362,867 and Invalidity of U.S. Patent Numbers 7,456,893 and 7,577,460 filed by Apple Inc.(a California corporation). (Attachments: #1 Declaration of Erica Tierney in Support of Apple's Administrative Motion to File Documents Under Seal, #2 Declaration of Mark D. Selwyn in Support of Apple's Administrative Motion to File Documents Under Seal, #3 Proposed Order Granting Apple Inc.'s Administrative Motion to File Documents Under Seal, #4 Plaintiff and Counterclaim-Defendant Apple Inc.'s Notice of Motion and Motion for Summary Judgment of Non-Infringement of U.S. Patent Number 7,362,867 and Invalidity of U.S. Patent Numbers 7,456,893 and 7,577,460, #5 Declaration of Mark D. Selwyn in Support of Apple's Motion for Summary Judgment of Non-Infringement of U.S. Patent Number 7,362,867 and Invalidity of U.S. Patent Numbers 7,456,893 and 7,577,460, #6 Exhibit 1, #7 Exhibit 2, #8 Exhibit 3, #9 Exhibit 4, #10 Exhibit 5, #11 Exhibit 6, #12 Exhibit 7, #13 Exhibit 8, #14 Exhibit 9, #15 Exhibit 10, #16 Exhibit 11, #17 Exhibit 12, #18 Exhibit 13, #19 Exhibit 14, #20 Exhibit 15, #21 Exhibit 16, #22 Exhibit 17, #23 Exhibit 18, #24 Exhibit 19, #25 Exhibit 20, #26 Exhibit 21, #27 Exhibit 22, #28 Exhibit 23, #29 Exhibit 24, #30 Exhibit 25, #31 Exhibit 26, #32 [Proposed] Order Granting Apple Inc.'s Motion for Partial Summary Judgment)(Selwyn, Mark) (Filed on 5/17/2012) Modified on 5/21/2012 attachment #1 and 2 sealed pursuant to General Order No. 62 (dhm, COURT STAFF).

EXHIBIT 25

PATENT APPLICATION J J/I J"/~:-:-~

Attorney Docket No.: 678-430 (P8851)
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
APPLICANT(S):

Jae-Min KIM, et

GROUP ART UNIT: 2643

APPLICATION NO.: 09/540,830

EXAMINER: Eng, George

FILING DATE:

DATED: November 7, 2002

March 31, 2000

FOR: PORTABLE COMPOSITE COMMUNICATION TERMINAL FOR
TRANSMITTING/RECEIVING VOICE AND IMAGES, AND OPERATION
METHOD AND COMMUNICATION SYSTEM THEREOF

Assistant Commissioner for Patents
Washington, DC 20231
RESPONSE
Sir:
In response to the Office Action of the United States Patent and Trademark Office
dated August 8, 2002, please consider the following amendments and remarks.
AMENDMENTS

IN THE CLAIMS:
Pleas~X~cel Claim 12, without prejudice.
Please accept re.written Claims 1, 16, 17, 19 and 20, as follows:
1:~))/c%’~oa°- 1[ (Amende~)A~\ portable composite communication terminal for voice
Cmmunication and imag6~transmission/reception, comprising:

CERTIFICATE OF MAILING UNDER 37 C.F.R. § 1.8 (a)
I hereby certify that this correspondence is being deposited with the United States Postal Service
as first class mail, postpaid in an envelope, addressed to the: Assistant Commissioner of Patents,
Washington, DC 20231 on November 7, 2002.
Dated: November 7, 2002

g~/_~ ~/t’~i/{t.
Barbara Evers

APLNDC-WH-A 0000014245

C°rmnunication and image transmission and reception according to a selected
transmissionmode among predetermined modes, a display that displays external images
produced by the Camera unit images and characters produced by the portable phone unit
for an on screen display (OSD) Under the control of the
interface between the POrtable phone

portable phone unit, and an

unit and the display that displays images and
COmprising: the display Under the COntrol of the portable phone unit, the interface
characters on
an OSD Controller that COntrols the display of one of a downloaded
backgroUnd image and characters; and
a selector that selectively outputs an external image signal received from
One of the Camera unit and an OSD image signal received from the OSD controller under
the control of the OSD controller;

images
for transmlssion and reception of Voice and
a server reception service of image data OVer the mobile C°mmurdcation
transmission andconnected to. the mobile C°mmunication network, for providing
network.

17.
terminal, havir

functions as bo

~nended) A method °f Operating a portable COmposite communication
one controller, said portable COmposite C°mmunica~ tion terminal Which
a portable phone and a Camera, COmprising the steps o~

setting portable phone mode by turning on the POrtable COmposite
COmmunication
erminal, regulating voltage
.
mode, and perfo
zing a general portable pho~Ufp°rting COmponents of the POrtable phone
fUnction;
setting a
being input throu~ Unera mode upon User request for Camera Operation, said user request
vOltage SUpportin~ a camera mode switch and processed by the controller, regulating
COmponents of the Camera mode, and performing a Camera function;
capturing e image of an object Upon User request for a photograph in the camera
mode; and

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d~g a captured image stored in a camera memory of the portable composite
communication fi~a~nal on a display of the portable composite communication terminal
upon user request fo~isplaying the image.
19. (Amended) The method of claim 17, wherein a second power voltage is
supplied to a camera unit of portable composite communication terminal when the
camera mode is set.
20. (Amended) A data transmitting method for a portable composite
communication terminal which functions as both a portable phone and a camera,
comprising the steps of:
entering a first E-mail transmission sub-mode upon user request for E-mail
transmission while operating in a portable phone mode, the first e-mail transmission submode performing a portable phone function;
entering a second E-mail transmission sub-mode upon user request for E-mail
transmission while operating in a display sub-mode, the second e-mail transmission submode displaying an image most recently captured in a camera mode;
sequentially displaying other images stored in a memory through the use of scroll
keys;
transmitting the address of the other party and a message received through a user
interface in the first E-mail transmission sub-mode; and
transmitting the address of the other party and the message received through the
user interface and the image displayed on the display as an E-mail in the second E-mail
transmission sub-mode.
REMARKS
Claims 1-20 are pending in the application. The Examiner has rejected Claim 9
under 35 U.S.C. §112, second paragraph, as being indefinite for failing to point out and
distinctly claim the subject matter which the applicant regards as the invention. The
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APLNDC-WH-A 0000014248

¯
Examiner has rejected Claims 17-19 under 35 U.S.C. § 102(e) as being anticipated by
Irube et al. (U.S. Pat.ent 6,377,818). The Examiner has rejecte.d Claims 1-12, 15 and 16
under 35 U.S.C. §103(a) as being unpatentable over Hsieh et al. (U.S. Patent 5,969,750)
in view oflrube et al. The Examiner has rejected Claims 13 and 14 under 35 U.S.C.
§103(a) as being unpatentable over Hsieh et al. in view oflrube et al., and further in view
of Gerszberg et al. (U.S. Patent 6,044,403). The Examiner has rejected Claim 20 under 35
U.S.C. § 103(a) as being unpatentable over Wagner et al. 00.S. Patent 6,169,911) in view
of Suso et al. (U.S. Patent 6,069,648) and Dawson (U.S. Patent 6,252,588).
The Examiner rejected Claim 9 under 35 U.S.C. § 112, second paragraph. The
Examiner stated that the limitation "the portable phone controller" in line 2 lacks
antecedent basis. Although not addressed by the Examiner, Claim 10 also has a similar
recitation. Claim 1 has been amended to correct this form error, and not for purposes of
patentability.
Claims 16 and 19 have also been amended to correct errors in form and have not
been amended for purposes of patentability.
Turning now to the rejections of the claims, the Examiner rejects Claims 17-19
under 35 U.S.C. §102(e) as anticipated by Irube et al. Disclosed in Irube et al. is a
communication terminal apparatus separated into a housing that is capable of video/voice
communications, and a housing that is capable of only the voice communications.
Amended Claim 17 of the present invention recites a "composite communication terminal
which functions as both a portable phone and a camera", as opposed to the Irube et al.
apparatus which is two separate apparatus. Several additional distinctions between the
cited reference and amended Claim 17 of the present application are that Claim 17 recites
"having one controller", "said user request being input through a camera mode switch and
processed by the controller". Irube does not teach or disclose these elements. Based on
the foregoing, withdrawal of the rejection of Claims 17-19 is respectfully requested.
The Examiner rejected independent Claims 1 and 16 under 35 U.S.C. §103(a) as
being unpatentable over Hsieh et al. in view oflrube et al. Claims 1 and 16 have been
amended, and as amended are distinguishable over the cited references. Particularly,
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APLNDC-WH-A 0000014249

Claim 1 has been amended.to include "a display that displays external images produced
by the camera unit ir~ages and characters produced by the portable phone unit for an on
screen display (OSD) under the control of the portable phone unit; and an interface
between the portable phone unit and the display to display images and characters on the
display under the control of the portable phone unit, the interface comprising an OSD
controller that controls the display of characters and downloaded background images
received from the portable phone unit at a specific position of a currently-displayed
external images on the display in synchronization with one of an external color sync
signal received from the camera unit and an internal color sync signal; and a selector that
selectively outputs an external image signal received from the camera unit and an OSD
image signal received from the OSD controller to be composed of one image on the
display under the control of the OSD controller." Claim 16 has been amended to include
"a display that displays external images produced by the camera trait images and
characters produced by the portable phone unit for an on screen display (OSD) under the
control of the portable phone unit, and an interface between the portable phone unit and
the display that displays images and characters on the display under the control of the
portable phone unit, the interface comprising: an OSD controller that controls the display
of one of a downloaded background image and characters; and a selector that selectively
outputs an external image signal received from one of the camera unit and an OSD image
signal received from the OSD controller under the control of the OSD controller." Irube
and Hseih et al., either alone or in combination, do not disclose the elements recited in
these claims. Based on the foregoing, withdrawal of the rejection of Claims 1 and 16 is
respectfully requested.
Finally, the Examiner rejects independent Claim 20 under 35 U.S.C. § 103(a) as
being unpatentable over Wagner et al. in view of Suso et al. and Dawson. Claim 20
relates generally to the e-mail transmission of data in a portable composite
communication terminal. Wagner et al. teaches a graphical user interface for a portable
telephone that provides electronic e-mail. Suso et al. teaches an information
communication terminal device having a video camera. Finally, Dawson teaches a
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APLNDC-WH-A 0000014250

method and apparatus for goviding an audiovisual e-mail system for receiving and
transmitting audiovisual e-mail messages. Claim 20 has been amended, and as amended
is distinguishable over the cited references. Particularly, Claim 20 has been amended to
include "displaying an image most recently captured in a camera mode" and "sequentially
displaying other images stored in a memory through the use of scroll keys". Neither
Wagner et al., Suso et al. nor Dawson, alone or in combination, teach or disclose these
limitations. Based on the foregoing, withdrawal of the rejection of Claim 20 is
respectfully requested.
Independent Claims 1, 16, 17 and 20 are believed to be in condition for
allowance. Without conceding the patentability per se of dependent Claims 2-11, 13-15,
18 and 19, these are likewise believed to be allowable by virtue of their dependence on
their respective amended independent claims. Accordingly, reconsideration and
withdrawal of the rejections of dependent Claims 2-11, 13-15, 18 and 19 is respectfully
requested.
Accordingly, all of the claims pending in the Application, namely, Claims 1-11.
and 13-20, are believed to be in condition for allowance. Should the Examiner believe
that a telephone conference or personal interview would facilitate resolution of any
remaining matters, the Examiner may contact Applicants’ attorney at the number given
below.
Respectfully submitted,

Paul J.
Reg. ~. 33,494
Attorney for Applicant
DILWORTH & BARRESE
333 Earle Ovington Blvd.
Uniondale, New York 11553
Tel: [phone]
Fax: [phone]
PJF/MJM
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APLNDC-WH-A 0000014251

Requirements as per C.F.R. § 1.121 (c)(1)(ii)
Rewritten claim(s) marked up to show all the changes relative to the previous
version of claim(s):
1.

(Amended) A portable composite communication terminal for voice

communication and image transmission/reception, comprising:
a camera unit that digitally captures an [the] image of an object, constructs the
image in a predetermined format, compresses the formatted image, and stores the
compressed image in the camera memory under a predetermined camera control;
a portable phone unit having a controller that provides overall control to the
portable composite communication terminal and selectively performs voice
communication and image transmission/reception of at least one image included in an email according to a selected transmission mode among predetermined modes;
a display that displays external images produced by the camera unit images and
characters produced by the portable phone unit for an on screen display (OSD) under the
control of the portable phone unit; and
an interface between the portable phone unit and the display to display images and
characters on the display under the control of the portable phone unit, the interface
comprising:
an OSD controller that controls the display of characters and downloaded
background images received from the portable phone unit at a specific position of a
currently-displayed external images on the display in synchronization with one of an
external color sync signal received from the camera unit and an internal color sync signal;
and
a selector that selectively outputs an external image signal received from
the camera unit and an OSD image signal received from the OSD controller to be
composed of one image on the display under the control of the OSD controller.
16. (Amended) A communication system for transmission and reception of
voice and images, comprising:
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APLNDC-WH-A 0000014252

a portable composite communication terminal having a camera unit that digitally
captures an [the] image of an object, constructs the image in a predetermined format,
compresses the formatted image, and stores the compressed image in the camera memory
under a predetermined camera control, a portable phone unit that provides overall control
to the portable composite communication terminal [mobile visible phone] and selectively
performs voice communication and image transmission and reception according to a
selected transmission mode among predetermined modes, a display that displays external
images I~roduced by the camera unit images and characters produced by the portable
phone unit for an on screen display (OSD) under the control of the portable phone unit,
and an interface between the portable phone unit and the display that displays images and
characters on the display under the control of the portable phone unit, the interface
comprising:
an OSD controller that controls the display of one of a downloaded
background image and characters; and
a selector that selectively outputs an external image signal received from
one of the camera unit and an OSD image signal received from the OSD controller under
the control of the OSD controller;
a mobile communication network for transmission and reception of voice and
images to and from the portable composite communication terminal; and
a server connected to the mobile communication network, for providing
transmission and reception service of image data over the mobile communication
network.
17. (Amended) A method of operating a portable composite communication
terminal, having one controller, said portable composite communication terminal which
functions as both a portable phone and a camera, comprising the steps of:
setting a portable phone mode by turning on the portable composite
communication terminal, regulating voltage supporting components of the portable phone
mode, and performing a general portable phone function;
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APLNDC-WH-A 0000014253

O
setting a camera mode upon user request for camera operation, said user request
being input through a camera mode switch and processed by the controller, regulating
voltage supporting components of the camera mode, and performing a camera function;
capturing the image of an object upon user request for a photograph in the camera
mode; and
displaying a captured image stored in a camera memory of the portable composite
communication terminal on a display of the portable composite communication terminal
upon user request for displaying the image.
19. (Amended) The method of claim 17, wherein a second power voltage is
supplied to a camera unit of portable composite communication terminal when the
camera [portable phone] mode is set.
20. (Amended) A data transmitting method for a portable composite
communication terminal which functions as both a portable phone and a camera,
comprising the steps of:
entering a first E-mail transmission sub-mode upon user request for E-mail
transmission while operating in a portable phone mode, the fn’st e-mail transmission submode performing a portable phone function;
entering a second E-mail transmission sub-mode upon user request for E-mail
transmission while operating in a display sub-mode, the second e-mail transmission submode displaying an image most recently captured in a camera mode;
sequentially displaying other images stored in a memory through the use of scroll
transmitting the address of the other party and a message received through a user
interface in the first E-mail transmission sub-mode; and
transmitting the address of the other party and the message received through the
user interface and the image displayed on the display as an E-mail in the second E-mail
transmission sub-mode.
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APLNDC-WH-A 0000014254