ATTORNEY DOCKET NO. FABO‐033/00US
`(309101‐2085)
`
`
`
`IPR2014‐00566
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`FACEBOOK, INC.
`Petitioner
`
`v.
`
`TLI Communications, LLC
`Patent Owner
`
`
`
`Case IPR2014‐00566
`U.S. Patent No. 6,038,295
`
`
`
`PETITIONER REQUEST FOR RECONSIDERATION
`UNDER 37 C.F.R. § 42.71(c)
`
`
`
`
`
`
`
`
`
`
`(309101‐2085)
`
`
`
`IPR2014‐00566
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`FACEBOOK, INC.
`Petitioner
`
`v.
`
`TLI Communications, LLC
`Patent Owner
`
`
`
`Case IPR2014‐00566
`U.S. Patent No. 6,038,295
`
`
`
`PETITIONER REQUEST FOR RECONSIDERATION
`UNDER 37 C.F.R. § 42.71(c)
`
`
`
`
`
`
`
`
`
`
`
`ATTORNEY DOCKET NO. FABO‐033/00US
`(309101‐2085)
`
`
`TABLE OF CONTENTS
`
`
`
`IPR2014‐00566
`
`
`
`I.
`II.
`III.
`
`IV.
`
`
`
`Page
`
`
`INTRODUCTION ............................................................................................. 1
`LEGAL STANDARD ......................................................................................... 2
`ARGUMENT ................................................................................................... 3
`A.
`The Petition Established a Reasonable Likelihood of Showing
`that Claim 17 Is Obvious Over Hassan in View of Witek ..................... 3
`1.
`The Patent Owner Misrepresented, and the Board
`Misapprehended, the Petitioner’s Mapping of the
`“Server” .................................................................................... 4
`The Board’s Conclusion Also Misunderstood that
`“Server” Can Comprise A Group of Network‐Based
`Storage Devices ........................................................................ 7
`The Petition Established A Reasonable Likelihood of Showing
`That Claims 21‐24 Are Obvious ......................................................... 10
`CONCLUSION .............................................................................................. 10
`
`2.
`
`B.
`
`
`
`
`
`ATTORNEY DOCKET NO. FABO‐033/00US
`(309101‐2085)
`
`I.
`
`INTRODUCTION
`
`
`
`IPR2014‐00566
`
`
`
`On April 1, 2014, Facebook, Inc. (“the Petitioner”) filed a petition
`
`requesting inter partes review (“IPR”) of U.S. Patent No. 6,038,295. (Paper No. 1
`
`(“Petition”).) On September 15, 2014, the Board issued a decision declining to
`
`institute IPR. (Paper No. 14 (“Decision”).)1 The Petitioner respectfully seeks
`
`reconsideration of that decision only as to claims 17 and 21‐24. As explained in
`
`detail below, the Board’s decision not to institute IPR on the grounds presented
`
`was based on a misapprehension of the Petition’s mapping for the claimed
`
`
`
` 1
`
` The ’295 patent has been asserted in a related Multidistrict Litigation (MDL) in
`
`the Eastern District of Virginia against 30 defendants. In re TLI Comms. LLC Patent
`
`Litig., No. 1:14‐md‐02534‐TSE‐JFA (E.D. Va. 2014). The case had been stayed
`
`pending the outcome of the Petitioner’s IPR request. The district court lifted the
`
`stay following the Board’s decision and put a schedule in place. The ’295 patent
`
`was also recently sold to another patent licensing entity, Marathon Patent Group,
`
`who issued a press release discussing the Board’s September 15, 2014 decision.
`
`See http://ir.marathonpg.com/company‐news/detail/704/correction‐‐‐marathon‐
`
`patent‐group‐acquires‐tli‐communications‐llc.
`
`1
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`
`
`
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`ATTORNEY DOCKET NO. FABO‐033/00US
`(309101‐2085)
`
`“server,” possibly because of misrepresentations made by the patent owner in its
`
`IPR2014‐00566
`
`
`
`Preliminary Response regarding the Petition. Accordingly, the Petitioner
`
`respectfully requests that the Board find that the Petition established a
`
`reasonable likelihood that the Petitioner will prevail in showing that (1) claims 17,
`
`21 and 24 are unpatentable over Hassan in view of Witek, (2) claim 22 is
`
`unpatentable over Hassan in view of Witek and Quinn, and (3) claim 23 is
`
`unpatentable over Hassan in view of Witek, Burgess and RFC 937.
`
`
`
`This request
`
`is authorized under 37 C.F.R. § 42.71(c), and prior
`
`authorization of the Board is not required for filing of such a request. 37 C.F.R.
`
`§ 42.71(d). This request is timely because it was filed within 30 days of the Board’s
`
`September 15, 2014 decision. 37 C.F.R. § 42.71(d)(2).
`
`II.
`
`
`
`LEGAL STANDARD
`
`“When rehearing a decision on petition, a panel will review the decision for
`
`an abuse of discretion.” 37 C.F.R. §42.71(c). An abuse of discretion “occurs when
`
`a court misunderstands or misapplies the relevant law or makes clearly erroneous
`
`findings of fact.” Renda Marine, Inc. v. U.S., 509 F.3d 1372, 1379 (Fed. Cir. 2007)
`
`(quoting PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1572
`
`(Fed. Cir. 1988). “A finding is clearly erroneous when, despite some supporting
`
`2
`
`
`
`
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`ATTORNEY DOCKET NO. FABO‐033/00US
`(309101‐2085)
`
`evidence, ‘the reviewing court on the entire evidence is left with the definite and
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`IPR2014‐00566
`
`
`
`firm conviction that a mistake has been committed.’” Forest Labs., Inc. v. Abbott
`
`Labs., 339 F. 3d 1324, 1328 (Fed. Cir. 2003) (quoting United States v. United States
`
`Gypsum Co., 333 U.S. 364, 395 (1948)).
`
`III.
`
`ARGUMENT
`A.
`
`The Petition Established a Reasonable Likelihood of Showing that
`Claim 17 Is Obvious Over Hassan in View of Witek
`
`
`
`The sole basis for the Board’s decision not to institute IPR as to claim 17
`
`was its conclusion that Witek did not teach the claimed step of “storing the digital
`
`images
`
`in the server, said step of storing taking
`
`into consideration the
`
`classification information.” (Decision at 16 (underlining added); see also generally
`
`id. at 16‐17.) The Petitioner respectfully submits that the mapping set forth in the
`
`Petition demonstrated that Witek discloses this limitation.
`
`
`
`The Board correctly noted that the optical character recognition software
`
`(16) in Witek processes the stored PICT fax file (15), among other reasons, “to
`
`route the fax transmission to the proper destination.” (Decision at 15 (citing
`
`Witek, 2:55‐57, 2:65‐3:2).) As explained in the Petition:
`
`Once the computer (12) receives a fax transmission from a sending
`device, it stores it in a “pict fax file” (15) in memory (13). (Witek,
`2:17‐23, 6:42‐46.) The computer then performs optical character
`3
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`ATTORNEY DOCKET NO. FABO‐033/00US
`(309101‐2085)
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`IPR2014‐00566
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`recognition (OCR) on the “cover sheet” of the fax to identify
`information that would help identify the intended recipient or
`recipients. (Id., 3:3‐21, 6:46‐52.) If the computer can identify an
`intended recipient, it notifies that recipient by either routing the fax
`through e‐mail, or by informing the recipient where the fax is stored
`on the network. (Id., 6:62‐66.)
`
`(Petition at 20 (underlining added).)
`
`
`
`The routing of the fax transmission to the proper destination, based on the
`
`processing of the pict fax file (15), clearly discloses storing digital images “taking
`
`into consideration the classification information.” (Petition at 35.)
`
`1.
`
`the Board
`The Patent Owner Misrepresented, and
`Misapprehended, the Petitioner’s Mapping of the “Server”
`
`
`
`The Board’s conclusion that Witek did not disclose the “storing” step was
`
`apparently based on a misapprehension, fueled by the patent owner’s Preliminary
`
`Response, that the Petitioner asserted that the claimed “server” was limited
`
`solely to computer (12) of Witek and storage physically contained within only that
`
`computer instead of computer (12) and other destination storage devices as
`
`argued in the Petition. (See Decision at 16 (“Petitioner does not direct us, with
`
`any specificity, to evidence demonstrating sufficiently that Witek teaches storing
`
`digital images in computer 12 . . .” (underlining added)), 17 (“For instance,
`
`4
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`
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`ATTORNEY DOCKET NO. FABO‐033/00US
`(309101‐2085)
`
`Petitioner does not explain where the disk or like media resides in computer 12 . .
`
`IPR2014‐00566
`
`
`
`.” (underlining added)).) This misapprehension was no doubt encouraged in part
`
`by the July 9, 2014 Preliminary Response in which the patent owner repeatedly
`
`mischaracterized the Petition’s mapping in this manner. (E.g., Paper No. 13 at 42
`
`(“Petitioner failed to point to the storage of anything in the purported Witek
`
`server (computer 12) using classification information”), 44 (“Petitioner and Dr.
`
`Beckmann identify only computer 12 as the alleged server of Witek . . .”)
`
`(underlining added); see also id. at 40 (“Witek’s computer 12 (which Petitioner
`
`alleges is the claimed Mattes server . . .”).)
`
`
`
`But the Petition made clear that the server and its associated storage was
`
`not limited to computer 12 and storage devices physically contained within it. The
`
`Petition instead explained that the claimed “server” in Witek includes the
`
`memory 13 within computer (12) and other destination storage devices. (Petition
`
`at 33‐34, 40.) In the analysis for the “storing” limitation of claim 17, the Petition
`
`specifically referred back to the “memory” limitation of the “server” in claim 1,
`
`which recited substantially the same requirement. (See Petition at 40 (referring to
`
`analysis for claim 1[b][3], e.g., “[a]s explained for claim 1[b][3] above,” “as noted
`
`previously”), 38 (“The analysis of claim 1 above therefore applies to claim 17.”),
`
`5
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`
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`ATTORNEY DOCKET NO. FABO‐033/00US
`(309101‐2085)
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`40‐41 (“Hassan in view of Witek, therefore, discloses all limitations of claim 17 for
`
`IPR2014‐00566
`
`
`
`substantially the same reasons articulated for claim 1, above.”).)
`
`
`
`In that analysis, the Petition explained that “claim 1 recites ‘a server’ that
`
`includes three separately‐recited components: . . . (3) [b][3] ‘a memory in which
`
`at least the digital images are archived, the archiving taken [sic] into consideration
`
`the classifying information.’” (Petition at 30‐31.) In the analysis for the server
`
`“memory” of claim 1[b][3], the Petition explained:
`
`The memory in Witek that corresponds to this claim limitation
`least memory (13) of computer (12), and other
`includes at
`destination storage such as a specific folder, directory, disk drive or
`tape drive. (See Witek, 2:10‐15, 4:15‐19, 7:29‐30.) The memory (13)
`can include disk memory, tape storage, “and/or any like memory
`system or device.” (Id., 2:10‐15.) . . . The fax transmission may also be
`routed to another storage device coupled to the computer (12). . . .
`The destination storage may include an end user computer, or
`alternatively, “a specific folder,” a “directory,” a “disk drive/tape
`drive,” or the like. (Id., 4:15‐19; see also id., 7:29‐30 (“For example,
`an end‐user or destination 26 may simply be a disk drive.”).)
`
`(Petition at 33‐34 (underlining added).) The Petition therefore did not limit the
`
`claimed server storage solely to memory within the box labeled computer (12) of
`
`6
`
`Witek.
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`
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`
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`ATTORNEY DOCKET NO. FABO‐033/00US
`(309101‐2085)
`
`
`
`The Petition’s analysis of claim 17 did state that “Witek discloses a server in
`
`
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`IPR2014‐00566
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`the form of computer (12)” (id. at 39), but it went on to make clear that the server
`
`included more. The Petition explained that, after the initial storage of the image
`
`in the memory (13) of computer (12):
`
`Received fax transmissions may also be may be [sic] permanently
`stored by the computer on disk or other media. (Id. [Witek], 5:42‐44.)
`The storage takes into consideration the “classification information”
`(e.g., the information from the fax cover sheet) because the pattern
`recognition software (18) analyzes the cover sheet to ascertain the
`specific destination where the received fax should be routed and
`stored. (Id., 3:63‐65, 6:60‐62.) The destination may, as noted
`previously, comprise a folder, directory, disk area on a computer, a
`disk drive or other device. (Id., 4:10‐19, 7:29‐30.)
`
`(Petition at 40‐41 (underlining added).)
`
`
`
`The Petition therefore made clear, both in its incorporated analysis of claim
`
`1[b][3] and its separate analysis of claim 17, that the server was not limited solely
`
`to computer (12) and the storage devices physically residing within it. (Id. at 33‐
`
`7
`
`34, 40‐41.)
`
`
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`
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`ATTORNEY DOCKET NO. FABO‐033/00US
`(309101‐2085)
`
`
`
`
`IPR2014‐00566
`
`2.
`
`The Board’s Conclusion Also Misunderstood that “Server”
`Can Comprise A Group of Network‐Based Storage Devices
`
`
`
`The Petition’s mapping of the claimed “server” as including the storage
`
`within computer (12) and other destination storage devices is consistent with the
`
`disclosures of Witek and well‐settled claim construction principles.
`
`
`
`There is nothing in the ’295 patent specification that suggests that a
`
`“server,” under its broadest reasonable construction, is limited to a single physical
`
`enclosure and excludes other network‐attached storage. The ’295 patent, for
`
`example, discloses that the server includes memory (SP), and can also include a
`
`“data bank” system. (’295, Fig. 1 (SP), 5:45‐46 (“The server S is configured with an
`
`arbitrary data bank system in which the digital images may be administered.”);
`
`claims 1 and 9 (claim 1 reciting a “memory” component of server, claim 9
`
`separately reciting that “said server includes a data bank system”).) There is
`
`nothing suggesting that a “data bank” – or any other server component – must
`
`reside in a single enclosure. A “server” under its broadest reasonable construction
`
`could therefore include multiple storage devices that are coupled via a network or
`
`other means.
`
`
`
`This disclosure in the ’295 patent mirrors the disclosure of Witek which
`
`includes computer (12) and other destination storage coupled via a network
`
`8
`
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`
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`ATTORNEY DOCKET NO. FABO‐033/00US
`(309101‐2085)
`
`connection. Witek is clear that the destination storage can comprise network‐
`
`IPR2014‐00566
`
`
`
`accessible storage coupled to the computer (12) and is not simply disk space on a
`
`client computer. Witek shows this network‐based storage in at least two separate
`
`ways. First, as noted in the Petition, Witek teaches that the destination storage
`
`could simply be a disk drive accessible over a network by computer (12). (Petition
`
`at 40 (citing Witek, 7:29‐30 (“For example, an end‐user or destination 26 may
`
`simply be a disk drive.” (underlining added)), id. at 4:10‐19 (explaining that
`
`destinations are on the network)).)
`
`
`
`Second, as explained in the Petition, Witek discloses that the computer (12)
`
`can route the received images via e‐mail. (Petition at 34, 40.) It was well known by
`
`persons of ordinary skill in the art by the 1994 filing date of Witek that e‐mail
`
`systems comprised server‐based “mailboxes.” That Witek glossed over this
`
`server‐based aspect of e‐mail is not surprising given that, for example, the RFC
`
`defining version 2 of the Post Office Protocol discussed in the Petition was already
`
`nearly ten years old by that time. (See Ex. 1009 at p.1.) Failing to recognize this
`
`disclosure in Witek ignores the substantial knowledge that a person of ordinary
`
`skill in the art would have possessed and improperly overlooks how one of
`
`ordinary skill in the art would have understood Witek’s implied teachings. (MPEP
`
`9
`
`
`
`
`
`ATTORNEY DOCKET NO. FABO‐033/00US
`(309101‐2085)
`
`2144.01 (citing In re Preda, 401 F.2d 825, 826, (CCPA 1968) (“[I]n considering the
`
`IPR2014‐00566
`
`
`
`disclosure of a reference, it is proper to take into account not only specific
`
`teachings of the reference but also the inferences which one skilled in the art
`
`would reasonably be expected to draw therefrom.”)).)
`
`B.
`
`The Petition Established A Reasonable Likelihood of Showing That
`Claims 21‐24 Are Obvious
`
`
`
`The Board’s decision not to institute IPR as to claims 21‐24 was based
`
`entirely on its conclusions regarding claim 17. (Decision at 17, 18.) As explained
`
`above, the Board’s conclusions as to claim 17 were clearly erroneous. Therefore,
`
`the Petitioner respectfully requests that the Board find that the Petitioner has
`
`also established a reasonable likelihood of showing that claims 21‐24 are
`
`unpatentable based on the grounds presented in the Petition.
`
`IV.
`
`CONCLUSION
`
`
`
`For the foregoing reasons, the Petitioner respectfully requests that the
`
`Board find that it has established a reasonable likelihood of showing that that (1)
`
`claims 17, 21 and 24 are unpatentable over Hassan in view of Witek, (2) claim 22
`
`is unpatentable over Hassan in view of Witek and Quinn, and (3) claim 23 is
`
`unpatentable over Hassan in view of Witek, Burgess and RFC 937 and accordingly
`
`institute inter partes review of the ’295 patent.
`
`10
`
`
`
`
`
`IPR2014‐00566
`
`Respectfully submitted,
`
`/Heidi L. Keefe/
`Heidi L. Keefe
`Reg. No. 40,673
`Lead Counsel for Petitioner
`Facebook, Inc.
`
`
`By:
`
`
`
`
`
`
`
`
`
`11
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`ATTORNEY DOCKET NO. FABO‐033/00US
`(309101‐2085)
`
`Dated: September 29, 2014
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, D.C. 20004
`Tel: (650) 843‐5001
`Fax: (650) 849‐7400
`
`
`
`
`
`
`
`
`
`
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`
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`ATTORNEY DOCKET NO. FABO‐033/00US
`(309101‐2085)
`
`
`Certificate of Service
`
`
`
`IPR2014‐00566
`
`I hereby certify, pursuant to 37 C.F.R. Sections 42.6, that the attached
`
`Petitioner Request for Reconsideration is being served via electronic mail on the
`
`29th day of September, 2014, the same day as the filing of the above‐identified
`
`document in the United States Patent and Trademark Office/Patent Trial and
`
`Appeal Board, upon the following counsel of record in IPR2014‐00566:
`
`Tarek N. Fahmi (Reg. No. 41,402)
`ASCENDA LAW GROUP, PC
`84 W. Santa Clara St., Suite 550
`San Jose, CA 95113
`Phone: 866‐877‐4883
`Email: tarek.fahmi@ascendalaw.com, patents@ascendalaw.com
`
`Robert A. Whitman (Reg. No. 36,966)
`MISHCON DE REYA NEW YORK LLP
`750 7th Avenue, 26th Floor
`New York, NY 10019
`Phone: 212‐257‐4455
`Email: robert.whitman@mischon.com
`
`By: /Heidi Keefe/
`
`Heidi L. Keefe
`Reg. No. 40,673
`
`
`
`
`
`
`
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, D.C. 20004
`Tel: (650) 843‐5001
`Fax: (650) 849‐7400
`
`12
`
`
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