`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`INTEGRATED GLOBAL CONCEPTS, INC.,
`
`Petitioner
`
`v.
`
`J2 GLOBAL, INC.,
`
`Patent Owner
`
`____________________
`
`CASE IPR2014-01027
`
`Patent 6,020,980
`
`____________________
`
`
`
`AMENDED PETITION FOR INTER PARTES REVIEW
`OF US PATENT NO. 6,020,980
`
`Claims 13-20, 25 and 36
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`TABLE OF CONTENTS
`
`I. INTRODUCTION ............................................................................................... 1
`
`II. COMPLIANCE WITH REQUIREMENTS OF AN INTER PARTES REVIEW
`PETITION ................................................................................................................. 1
`
`A. Grounds for Standing: Certification That Patent May be Contested .............. 1
`
`B. Fee for Inter Partes Review (37 C.F.R. § 42.15(a)) ....................................... 2
`
`C. Mandatory Notices (37 C.F.R. § 42.8(b)) ....................................................... 2
`
`1. Real Party-in-Interest (37 C.F.R. § 42.8(b)(1)) ............................................ 2
`
`2. Related Matters (37 C.F.R. § 42.8(b)(2)) ..................................................... 2
`
`3. Lead and Backup Counsel (37 C.F.R. § 42.8(b)(3)) .................................... 2
`
`4. Service Information (37 C.F.R. § 42.8(b)(4)) .............................................. 4
`
`5. Power of Attorney (37 C.F.R. § 42.10(b)) ................................................... 4
`
`III. IDENTIFICATION OF CLAIMS BEING CHALLENGED ........................... 4
`
`A. Identification of Prior Art and Challenged Claims ......................................... 4
`
`B. Supporting Evidence Relied Upon For the Challenge .................................... 5
`
`IV. OVERVIEW OF THE ‘980 PATENT .............................................................. 5
`
`A. Effective Filing Date of the ‘980 Patent ......................................................... 5
`
`B. Person of Ordinary Skill in the Art ................................................................. 5
`
`C. Brief Description of the ‘980 Patent ............................................................... 6
`
`D. Summary of the ‘980 Patent’s File History .................................................... 6
`
`1. Original Prosecution History ....................................................................... 6
`
`2. Ex Parte Reexamination Prosecution History ............................................. 8
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`E. Proposed Claim Constructions ...................................................................... 10
`
`1. Subscriber, Subscribers, Subscriber’s and Subscribers’ ............................ 11
`
`2. Subscriber Selected File Translation Format(s)/Specification ................... 13
`
`F. Petition Organization: Common Base Limitations ....................................... 15
`
`V. OVERVIEW OF THE ASSERTED PRIOR ART REFERENCES ................ 15
`
`A. The RightFAX References ........................................................................... 15
`
`B. Cohn .............................................................................................................. 18
`
`C. Marshall ........................................................................................................ 19
`
`D. RFC 1521 ...................................................................................................... 20
`
`E. General Motivation to Combine .................................................................... 20
`
`VI. DETAILED EXPLANATION OF GROUNDS FOR OBVIOUSNESS OF
`THE CHALLENGED CLAIMS OF THE ‘980 PATENT ..................................... 21
`
`A. Ground 1: Claim 13 is unpatentable under 35 U.S.C. §103(a) as being
`unpatentable over RightFAX Admin Guide in view of RightFAX Gateway
`Guide ................................................................................................................... 23
`
`1. Common Base Limitations Found in All Independent Method Claims .... 24
`
`2. Independent Claim 13 – The Record Format Specifies a Single Email
`Destination [V’] and [X’] ................................................................................. 34
`
`B. Ground 2: Claims 14-15, 17-20, 25 and 36 are unpatentable under 35 U.S.C.
`§103(a) as being unpatentable over RightFAX Admin Guide in view of
`RightFAX Gateway Guide in further view of Cohn .......................................... 37
`
`1. Claim Chart for Dependent Claims 14-15 and 17-20 ................................ 37
`
`2. Independent Claim 25 – The Record Format Specifies an Email
`Distribution List [V’’], [X’’] and [Z’] ............................................................. 41
`
`3. Independent Claim 36 – Subscriber-Selected Format Received from
`Subscriber and Stored [S] ................................................................................ 45
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`C. Ground 3: Claim 16 is unpatentable under 35 U.S.C. §103(a) as being
`unpatentable over RightFAX Admin Guide in view of RightFAX Gateway
`Guide in further view of Cohn and Marshall ....................................................... 46
`
`1. Claim Chart for Dependent Claim 16 ........................................................ 47
`
`VII. CONCLUSION .............................................................................................. 49
`
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`EXHIBIT LIST
`
`Ex. 1001 US Patent No. 6,020,980 (“the ‘980 Patent”)
`
`Ex. 1002
`
`Ex Parte Reexamination Certificate No. US 6,020,980 C1
`
`(“Reexamination Certificate”)
`
`Ex. 1003 Declaration of Dr. Michael Shamos (“Shamos Declaration”)
`
`Ex. 1004 RightFAX Installation & Administration Guide, Version 3.51, 1994
`
`(“RightFAX Admin Guide”)
`
`Ex. 1005 RightFAX E-mail Gateway Guide, Version 3.51, 1994 (“RightFAX
`
`Gateway Guide”)
`
`Ex. 1006 US Patent No. 5,740,231 (“Cohn”)
`
`Ex. 1007 US Patent No. 6,396,597 (“Marshall”)
`
`Ex. 1008 Borenstein, N., and N. Freed, “MIME (Multipurpose Internet Mail
`
`Extensions): Part One: Mechanisms for Specifying and Describing the
`
`Format of Internet Message Bodies,” Request for Comments 1521,
`
`September 1993 (“RFC 1521”)
`
`Ex. 1009 US Patent No. 6,020,980 File History (“Original Prosecution File
`
`History”)
`
`Ex. 1010 Ex Parte Reexamination Control No. 90/012,650 File History (“Ex
`
`Parte Reexam File History”)
`
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`I.
`
`
`INTRODUCTION
`Pursuant to 35 U.S.C. § 311 and 37 C.F.R. § 42.100, Integrated Global
`
`Concepts, Inc. (“Petitioner”), petitions for inter partes review of claims 13-20, 25
`
`and 36 of US Patent No. 6,020,980 (“the ‘980 Patent,” Exhibit 1001). The ‘980
`
`Patent was originally assigned to MCI Communications Corporation and was
`
`subsequently assigned to j2 Global, Inc. after passing through Verizon Patent and
`
`Licensing Inc. j2 Global, Inc. is hereafter referred to as “Patent Owner” in this
`
`Petition.
`
`
`
`This Petition demonstrates that there is a reasonable likelihood that
`
`Petitioner will prevail with respect to at least one of the claims challenged in this
`
`Petition and thus a trial for inter partes review must be instituted. Evidence in this
`
`Petition demonstrates that claims 13-20, 25 and 36 of the ‘980 Patent are
`
`unpatentable under 35 U.S.C. § 103. Petitioner respectfully requests claims 13-20,
`
`25 and 36 of the ‘980 Patent be rejected and cancelled.
`
`II. COMPLIANCE WITH REQUIREMENTS OF AN INTER
`
`PARTES REVIEW PETITION
`A. Grounds for Standing: Certification That Patent May be
`
`Contested
`
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner hereby certifies that the ‘980
`
`Patent is available for inter partes review and that the Petitioner is not barred or
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`estopped from requesting inter partes review challenging the claims of the ‘980
`
`Patent on the grounds identified herein.
`
`B.
`
`Fee for Inter Partes Review (37 C.F.R. § 42.15(a))
`
`Petitioner has previously submitted the required fees specified by 37 C.F.R.
`
`§ 42.15(a) concurrently with the Original Petition filed June 23, 2014.
`
`C. Mandatory Notices (37 C.F.R. § 42.8(b))
`1.
`
`Real Party-in-Interest (37 C.F.R. § 42.8(b)(1))
`
`The real party in interest for this Petition is Integrated Global Concepts, Inc.
`
`(“IGC”) having offices at 1501 N. Cleveland Ave., Chicago IL, 60610.
`
`2.
`
`Related Matters (37 C.F.R. § 42.8(b)(2))
`
`This Petition requests review of method claims 13-20, 25 and 36. A second
`
`Petition for inter partes review of the ‘980 Patent was filed contemporaneously
`
`with the Original Petition and requests review of system claims 1-12, 21-24 and
`
`26-35.
`
`The ‘980 Patent is presently asserted against IGC in an on-going patent
`
`infringement lawsuit brought by Patent Owner in j2 Global, Inc. v. Integrated
`
`Global Concepts, Inc., Case No. 13-02971, filed in the United States District Court
`
`for the Northern District of California on June 27, 2013. Patent Owner asserts that
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`IGC infringes “one or more claims of the ‘980 Patent, including but not limited to
`
`Claims 1,” and others may be asserted at a later date.
`
`3.
`
`Lead and Backup Counsel (37 C.F.R. § 42.8(b)(3))
`
`  
`
`LEAD COUNSEL
`Michael DeSanctis
`USPTO Reg. No. 39,957
`Hamilton, DeSanctis & Cha LLP
`225 Union Blvd., Suite 150
`Lakewood, Colorado 80228
`Phone: (303) 856-7155
`Fax: (303) 856-7264
`mdesanctis@hdciplaw.com
`
`BACK-UP COUNSEL
`Robert J. Schneider
`USPTO Reg. No. 27,383
`Taft, Stettinius & Hollister LLP
`111 E. Wacker Dr., Suite 2800
`Chicago, IL, 60601
`Phone: (312) 836-4154
`Fax: (312) 527-4011
`rschneider@taftlaw.com
`
`BACK-UP COUNSEL
`James M. Heiser
`Pro Hac Vice to be requested upon grant
`of authorization
`Chapman and Cutler LLP
`111 W. Monroe St.
`Chicago, IL 60603
`Phone: (312) 845-3877
`Fax: (312) 701-2361
`heiser@chapman.com
`
`Petitioner hereby requests authorization to file a motion for James Heiser to
`
`appear pro hac vice, as Mr. Heiser is an experienced litigating attorney, and is lead
`
`counsel for IGC, respectively, in the above-referenced litigation matter, and as
`
`such has an established familiarity with the subject matter at issue in this
`
`proceeding. Petitioner intends to file such motion once authorization is granted.
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`4.
`
`Service Information (37 C.F.R. § 42.8(b)(4))
`
`The email and mailing addresses provided above can be used for service and
`
`all communications with all counsel.
`
`5.
`
`Power of Attorney (37 C.F.R. § 42.10(b))
`
`A Power of Attorney was filed contemporaneously with the Original
`
`Petition.
`
`III. IDENTIFICATION OF CLAIMS BEING CHALLENGED
`Pursuant to 37 C.F.R. §§ 42.22(a)(1) and 42.104(b), the Petitioner requests a
`
`judgment by the Patent Trial and Appeal Board (“Board”) cancelling claims 13-20,
`
`25 and 36 of the ‘980 Patent as being unpatentable for one or more of the
`
`following reasons.
`
`A.
`
`1.
`
`Identification of Prior Art and Challenged Claims
`
`Ground 1: Claim 13 is unpatentable under 35 U.S.C. §103(a) as being
`
`unpatentable over RightFAX Admin Guide in view of RightFAX Gateway Guide.
`
`2.
`
`Ground 2: Claims 14-15, 17-20, 25 and 36 are unpatentable under 35
`
`U.S.C. §103(a) as being unpatentable over RightFAX Admin Guide in view of
`
`RightFAX Gateway Guide in further view of Cohn.
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`4. Ground 3: Claim 16 is unpatentable under 35 U.S.C. §103(a) as being
`
`unpatentable over RightFAX Admin Guide in view of RightFAX Gateway Guide
`
`in further view of Cohn and Marshall.
`
`B.
`
`Supporting Evidence Relied Upon For the Challenge
`
`The evidence to support the above challenges and the identification of where
`
`each claim limitation is found in the prior art references is provided below.
`
`Attached to this Petition as Exhibit 1003 is the declaration of Michael
`
`Shamos (Ex. 1003, Shamos Declaration). Dr. Shamos’ declaration in combination
`
`with the arguments presented herein demonstrate the lack of patentability of the
`
`challenged claims. Dr. Shamos’ Curriculum Vitae is included as an appendix to
`
`the Shamos Declaration.
`
`IV. OVERVIEW OF THE ‘980 PATENT
`A. Effective Filing Date of the ‘980 Patent
`
`The ‘980 Patent issued from US Patent Application No. 08/723,750 filed on
`
`September 30, 1996. Based on the record, there is no reason to believe that the
`
`priority date of any claims of the ‘980 Patent is earlier than September 30, 1996.
`
`B.
`
`Person of Ordinary Skill in the Art
`
`A person of ordinary skill in the art in the field of the ‘980 Patent in 1996
`
`would have been someone with at least a bachelor’s degree in computer science,
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`electrical engineering or an equivalent level of knowledge and ability concerning
`
`transmission of information across communications networks using facsimile
`
`machines and electronic mail systems from working in the communications
`
`industry for at least one year. See Shamos Declaration at ¶ 21.
`
`C. Brief Description of the ‘980 Patent
`
`The ‘980 Patent generally relates to systems and methods for delivering
`
`facsimile messages to recipients via email. Received facsimile messages are
`
`converted into a predetermined format selected by the recipient. See ‘980 Patent at
`
`Abstract.
`
`D.
`
`Summary of the ‘980 Patent’s File History
`1. Original Prosecution History
`
`The patent application that ultimately issued as the ‘980 Patent was filed on
`
`September 30, 1996 and was assigned US Application No. 08/723,750 (“the ‘750
`
`Application”). A copy of the ‘750 Application file history is attached as Exhibit
`
`1009.
`
`A first Office Action was issued on May 6, 1998, rejecting claims 1-12 and
`
`26 based on US Patent No. 5,913,110 of Jones et al. and US Patent No. 4,941,170
`
`of Herbst, and indicating claims 13-25 contained allowable subject matter.
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`The Applicant filed an Amendment and Response on June 29, 1998 to place
`
`the claims into the condition indicated to be allowable by cancelling claims 1-12
`
`and 26, amending claim 13 and adding new claims 27-34.
`
`A second Office Action was issued on September 28, 1998, rejecting claims
`
`13 and 27-34 based on US Patent No. 5,675,507 of Bobo II, Jones and Herbst, and
`
`indicating claims 14-25 contained allowable subject matter.
`
`The Applicant filed an Amendment and Response on December 18, 1998 to
`
`place the claims into the condition indicated to be allowable by amending claims
`
`13 and 27.
`
`A Notice of Allowance was issued on January 4, 1999 allowing claims 13,
`
`15-25 and 27-34, indicating claim 13 (which corresponds to claim 1 of the ‘980
`
`Patent) and claims 15-25 were allowed because the prior art of record did not show
`
`the recited subscriber directory and indicating claim 27 (which corresponds to
`
`claim 13 of the ‘980 Patent) and claims 28-34 were allowed because the prior art of
`
`record did not show “… retrieving a record format associated with the telephone
`
`number, the record format including a subscriber’s electronic mail address and
`
`selected file translation specification to determine the subscriber’s selected file
`
`translation specification… and converting the stored object file into a preselected
`
`file format based upon the subscriber selected file translation specification.”
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`2.
`
`Ex Parte Reexamination Prosecution History
`
`On September 14, 2012, the Patent Owner filed a petition requesting ex
`
`parte reexamination of claims 1 and 13 of the ‘980 Patent based on the RightFAX
`
`references relied upon herein and a 1996 version of the RightFAX E-mail Gateway
`
`Guide (not relied upon herein) (collectively, the “Applied References”). The ex
`
`parte reexamination was assigned control no. 90/012,650. A copy of the Ex Parte
`
`Reexam File History is attached as Exhibit 1010.
`
`A non-final Office Action was issued on January 31, 2013, rejecting claims
`
`1 and 13 as obvious over the Applied References. The Patent Owner filed an
`
`Amendment and Response on April 1, 2013, amending claims 5, 7-9 11-12 , 15-20
`
`and adding new claims 21-36, and concurrently submitted a declaration by Justin
`
`Douglas Tygar (“Tygar Declaration”) to support the Patent Owner’s asserted
`
`narrow constructions of the claim term “subscriber” and claim phrases “subscriber
`
`selected file translation format[s]” and “subscriber selected file translation
`
`specification” (the “Subscriber Selected Format”). See Ex Parte Reexam File
`
`History at pp. Ex. 1010 – 79 – Ex. 1010 – 87 and Ex. 1010 – 94 – Ex. 1010 – 103.
`
`Notably, the claim constructions of “subscriber” and the Subscriber Selected
`
`Format limitations offered by the Tygar Declaration were based on flawed logic,
`
`read limitations from the specification into the claims and included what appear to
`
`be purposefully misleading statements. For example, despite the fact that the
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`independent claims lack any indication of operation or control of the recited
`
`methods and systems by a “service provider” and fail to recite either “privacy” or
`
`“security,” the Tygar Declaration concludes “privacy and security is [sic] an
`
`important feature [sic] of the system” and therefore “a person of ordinary skill in
`
`the art would understand that the service provider would be expected to maintain
`
`the security of the facsimile-to-email system that the service provider operates, to
`
`at least protect the privacy of its subscribers.” See Tygar Declaration at ¶¶ 28 and
`
`30. Layered on top of this flawed logic, Tygar concludes that forms of the word
`
`“subscriber” must be narrowly construed as “a customer of the facsimile-to-email
`
`service provider” that “does not have administrative access or privileges for
`
`operating the facsimile-to-email system.” See Tygar Declaration at ¶ 32.
`
`Emphasis added. Similarly, despite the lack of any requirement by the context of
`
`the claims or otherwise, Tygar concludes the Subscriber Selected Format
`
`limitations “refer to a file format that is selected by a subscriber based on the type
`
`of file that the subscriber can view using his or her own computer.” See Tygar
`
`Declaration at ¶ 32. Emphasis added.
`
`In the Amendment and Response of April 1, 2013, the Patent Owner took
`
`the narrow construction of the Subscriber Selected Format limitations even further,
`
`inferring such limitations required the selection to be received directly from or set
`
`directly by a subscriber. See Ex Parte Reexam File History at p. Ex. 1010 – 83
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`(contrasting the Subscriber Selected Format limitations with use of the RightFAX
`
`FaxAdmin program in which “RightFAX administrators … set file formats for
`
`facsimile messages routed to e-mail.” Emphasis added.)
`
`Ultimately, the Examiner accepted the narrow claim constructions asserted
`
`by the Patent Owner and allowed the reexamined claims by issuing a Notice of
`
`Intent to Issue Ex Parte Reexamination Certificate on May 3, 2013, indicating with
`
`reference to claims 1, 21, 22, 26, 31 and 34, for example, “[t]here is not taught or
`
`disclosed in the prior art including [sic] a facsimile-to-electronic mail system,
`
`which includes a subscriber selected format, a subscriber selected file translation
`
`format and/or a subscriber selected file translation specification.” See Ex Parte
`
`Reexam File History at p. Ex. 1010 – 8. Emphasis in original.
`
`As such, it is clear from the Ex Parte Reexam File History that the claims
`
`were allowed over the Applied References only as a result of the unduly narrow
`
`constructions of the claim term “subscriber” and the Subscriber Selected Format
`
`limitations and that all other claim limitations are disclosed by the Applied
`
`References.
`
`E.
`
`Proposed Claim Constructions
`
`Petitioner’s proposed constructions and supporting evidence for construed
`
`claim terms are set forth below pursuant to the broadest reasonable interpretation
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`standard under 37 C.F.R. §§ 42.100(b) and 42.104(b)(3). Even in the situation
`
`where the patent claims have been previously construed by a district court using a
`
`different standard, the PTO is nevertheless required to apply the broadest
`
`reasonable interpretation standard. In re NTP, Inc., 654 F.3d 1268, 1274 (Fed. Cir.
`
`2001). The proposed claim constructions below are not binding upon Petitioner
`
`beyond this inter partes review. Petitioner’s proposed claim constructions are
`
`offered only to comply with 37 C.F.R. § 42.100(b) and for the sole purpose of this
`
`Petition, and thus do not necessarily reflect the claim constructions proposed by
`
`Petitioner or adopted by the Court in the above-referenced litigation matter where a
`
`different claim construction applies.
`
`1.
`
`Subscriber, Subscribers, Subscriber’s and Subscribers’
`
`The terms “subscriber,” “subscribers,” “subscriber’s” and/or “subscribers’”
`
`appear in claims 1-5, 7-22, 25-32 and 35. In the context of the Ex Parte
`
`Reexamination, the Patent Owner convinced the Examiner that forms of the word
`
`“subscriber” must be interpreted as “a customer of the facsimile-to-email service
`
`provider” that “does not have administrative access or privileges for operating
`
`the facsimile-to-email system.” See Tygar Declaration at ¶ 32. Emphasis added.
`
`While the Petitioner agrees such a customer is one of many possible constructions
`
`of the term “subscriber,” it is certainly not the broadest reasonable interpretation.
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`The Patent Owner’s rationale for construing a subscriber narrowly as a customer
`
`with limited access/privileges relies on multiple, layered assumptions and the
`
`reading of various limitations from the specification into the claims. For example,
`
`the Patent Owner assumes it must be the case that a “service provider” is operating
`
`the facsimile-to-email system, that “privacy and security of the system” are
`
`important features and the service provider would thus be “expected to maintain
`
`the security of the facsimile-to-email system” by not allowing administrative
`
`access to the subscriber. See Tygar Declaration at ¶¶ 20-31. Importantly, none of
`
`the claims mention either privacy or security. Furthermore, none of the
`
`independent claims of the ‘980 Patent recite or otherwise require involvement of a
`
`“service provider.”1 As the independent claims are not expressly limited to a
`
`private, secure system run by a service provider, it should be clear the Patent
`
`Owner’s previously asserted justification for a narrow construction is unsound.
`
`The Petitioner respectfully asserts equating a “subscriber” with a “user” is
`
`more fitting given the broad applicability of the claims both within and outside of a
`
`service provider context. Notably, the ‘980 Patent uses the terms “subscriber” and
`
`                                                                                                                
`
`1 The only claims that include the term “service provider” are dependent claims 28-30; and even in the case of these
`
`claims, they include no language that requires the system to be operated or managed by the service provider. The
`
`only requirement is that a service provider (which could be a telephone company) assign a phone number to the
`
`subscriber.
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`“user” interchangeably. See, e.g., ‘980 Patent at col. 23-30, col. 6, ll. 29-34, col. 7,
`
`ll. 54-56, col. 10, ll. 41-54 and col. 11, ll. 19-21. See also Shamos Declaration at ¶
`
`22. In view of the foregoing, one of ordinary skill in the art would understand a
`
`“subscriber” in the context of the methods and systems as claimed by the ‘980
`
`Patent to encompass any “user” of such methods and systems. See Shamos
`
`Declaration at ¶ 22.
`
`2.
`
`
`Subscriber Selected File Translation
`Format(s)/Specification
`
`The phrases “subscriber selected file translation format[s]” or “subscriber
`
`selected file translation specification” appear in claims 1, 13, 21, 22, 25, 26, 31, 35
`
`and 36 (the “Subscriber Selected Format”). Notably, the ‘980 Patent uses the
`
`phrase “subscriber selected” to broadly describe a selection, decision or choice
`
`made by a subscriber from among various formats supported by his/her computer
`
`system, for example, that can be communicated to the service provider or
`
`otherwise stored in the system. See ‘980 Patent at col. 9, ll. 60-66. While the
`
`specification of the ‘980 Patent describes embodiments in which an interactive
`
`voice response unit (IVR) or voice recognition unit (VRU) are possible
`
`mechanisms for directly receiving a subscriber selected format from the subscriber
`
`to establish a file format in which the subscriber’s facsimiles are to be delivered,
`
`there is no requirement in any of independent claims 1, 13, 21, 22, 25, 26 and 31
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`that the “file translation format[s]/specification” be received from or set by a
`
`subscriber. The plain language of all of the independent claims (with the exception
`
`of independent claims 35 and 36) merely requires the file translation
`
`format[s]/specification to represent a selection, decision or a choice made by one
`
`or more subscribers. As noted above, contrary to the Patent Owner’s
`
`mischaracterization of these limitations during the ex parte Reexamination as
`
`requiring the file translation not be “set” by an administrator, the modifier
`
`“subscriber selected” should be interpreted consistent with its ordinary and
`
`customary meaning as “chosen by the subscriber” - regardless of from whom (e.g.,
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`a system administrator or a subscriber of the service provider) information
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`regarding the selection, decision or choice is “received” and regardless of who
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`(e.g., a system administrator or a subscriber of the service provider) ultimately
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`causes corresponding specification codes to be “set” or “stored” within the
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`subscriber directory of the facsimile-to-electronic mail system. See Shamos
`
`Declaration at ¶ 23. Based on the above, one of ordinary skill in the art would
`
`understand that the Subscriber Selected Format limitations are met so long as the
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`file translation format/specification is a result of a cognitive decision-making
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`process (i.e., a selection, decision or choice) made by a user and it is of no
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`consequence how or from whom the facsimile-to-electronic mail system receives
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`information regarding that selection, decision or choice. See Shamos Declaration
`
`at ¶ 23.  
`
`F.
`
`Petition Organization: Common Base Limitations
`
`All independent method claims in the ‘980 Patent (i.e., claims 13, 25 and 36)
`
`include seven substantially identical common base limitations and one or more
`
`additional limitations. Method claims 13-20, 25 and 36 are addressed in this
`
`Petition while system claims 1-12, 21-24 and 26-35 are addressed in a concurrently
`
`filed Petition for inter partes review. The chart presented below in Section VI
`
`illustrates the arrangement of arguments in this Petition.
`
`The seven common base limitations [T]-[Z] of independent claims 13, 25
`
`and 36 are addressed first, followed by an analysis of each of the additional
`
`limitations.
`
`V. OVERVIEW OF THE ASSERTED PRIOR ART
`
`REFERENCES
`A. The RightFAX References
`
`RightFAX Admin Guide qualifies as prior art under 35 U.S.C. §102(b) with
`
`respect to the ‘980 Patent because it is a printed publication dated October 19,
`
`1994 – nearly two years prior to the September 30, 1996 effective filing date of the
`
`‘980 Patent. RightFAX Gateway Guide is a printed publication dated August 30,
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`1994 and therefore also qualifies as prior art against the ‘980 Patent under 35
`
`U.S.C. § 102(b). Collectively, the RightFAX Admin Guide and the RightFAX
`
`Gateway Guide are referred to as the RightFAX references.
`
`The RightFAX references in Exhibits 1004 and 1005 describe features of a
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`fax server and an optional email gateway collectively referred to as RightFAX.
`
`See RightFAX Admin Guide at pp. 8, 10, 68 and 90 and RightFAX Gateway
`
`Guide at p. 5. RightFAX is intended to serve as “a complete network fax solution
`
`that provides” a company “with the ability to create, send, receive, and distribute
`
`fax documents throughout” the company’s network. See RightFAX Admin Guide
`
`at p. 7.
`
`The RightFAX Admin Guide describes components of RightFAX as
`
`including a fax database and images, fax server programs and client programs,
`
`including “FaxUtil, which allows users to view, print and manage their faxes, and
`
`FaxAdmin,” which allows users provided with administrative access to, among
`
`other things, configure and manage users’ privileges, routing options and file
`
`format options. See RightFAX Admin Guide at pp. 8-9, 88 and 90. As discussed
`
`in further detail below, the RightFAX references in combination explicitly teach
`
`each and every limitation of claim 13.
`
`When the optional RightFAX E-mail Gateway is installed, the RightFAX
`
`system can be integrated with certain email applications (Lotus cc:Mail, Microsoft
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`Mail and GroupWise) and configured to deliver received fax messages to users’
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`email addresses. See, e.g., RightFAX Admin Guide at pp. 68 and 93 and
`
`RightFAX Gateway Guide at pp. 5, 17 and 34.
`
`The diagram below shows the structure and interactions among various
`
`components of the RightFAX facsimile-to-electronic mail system. FaxServ
`
`processes incoming faxes based on user information stored in the database. The
`
`processing may include converting a fax to PCX, DCX or TIFF-G3 format and/or
`
`transmitting the converted fax to the recipient’s email account. See RightFAX
`
`Gateway Guide at pp. 5, 6, 17 and 34 and RightFAX Admin Guide at pp. 8, 9 and
`
`93.
`
`The RightFAX facsimile-to-electronic mail system includes a fax server
`
`
`
`with several programs (e.g., FaxServ, FaxDB and a board server module) that,
`
`among other things, control the conversion of faxes, provide client programs with
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`information from the fax database and route incoming faxes. See RightFAX
`
`Admin Guide at p. 8.
`
`Two possible configurations for the RightFAX system are illustrated below
`
`in FIG. 1 and FIG. 2. See RightFAX Admin Guide at p. 10. In one configuration
`
`(FIG. 1), the fax server and file server functionality are provided by the same
`
`device; and in the other (FIG. 2) the fax server and file server functionality are
`
`distributed between two devices.
`
`
`
`B. Cohn
`
`Cohn is a US patent filed on September 16, 1994 and issued on April 14,
`
`1998 and therefore qualifies as prior art against the ‘980 Patent under 35 U.S.C. §
`
`102(e). Cohn generally relates to an integrated communications system including
`
`multiple hubs interconnected through a communications network to support
`
`communications including electronic mail, facsimile transmissions and voice
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`transmissions. See Cohn at FIG. 1, FIG. 13, Abstract and col. 2, ll. 29-34. Cohn
`
`discloses hubs that include computer systems that are capable of sending and
`
`receiving fax messages. See Cohn at FIG. 2, FIG. 3, FIG. 4 and col. 13, ll. 46-49
`
`and ll. 57-62. As described further below, Cohn also teaches conversion of
`
`facsimile messages to a subscriber selected format, such as text or text images,
`
`which may be received directly from the subscriber and stored in a user’s
`
`communication profile, the use of an email distribution list and switching and
`
`address translation functions to route facsimile transmissions to appropriate
`
`facsimile server devices based on the recipient’s telephone number. See Cohn at
`
`FIG. 2, FIG. 3, FIG. 8, FIG. 10, FIG. 12, FIG. 14, col. 3, ll. 19-25, col. 4, ll. 2-7,
`
`col. 7, ll. 62-66, col. 22, l. 54 – col. 23, l. 26 and col. 25, l. 47 – col. 26, l. 18.
`
`C. Marshall
`
`Marshall is a US patent filed on February 10, 1993 and issued on May 28,
`
`2002 and therefore qualifies as prior art against the ‘980 Patent under 35 U.S.C. §
`
`102(e). Marshall generally relates to the field of communication systems and in
`
`particular to facsimile and data communication systems. See Marshall at col. 1, ll.
`
`5-7. Marshall describes a computer-network based store-and-forward facsimile
`
`reception system in which facsimile transmissions are taught to be converted to a
`
`format specified by the recipient. See Marshall at FIG. 1, FIG. 3A and Abstract
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`and col. 7, ll. 34-44. The format conversion options taug