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`DECLARATION
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`Declaration of Michael Ian Shamos, Ph.D., J.D.
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`Concerning Invalidity of US Patent No. 6,020,980
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION ........................................................................................................ 3
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`II. PROFESSIONAL BACKGROUND .......................................................................... 5
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`III. LEGAL STANDARDS ............................................................................................. 7
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`A. Standard of Review ................................................................................................. 7
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`B. Claim Construction Principles ................................................................................ 7
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`C. Obviousness ............................................................................................................ 8
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`IV. PERSON OF ORDINARY SKILL IN THE ART .................................................... 9
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`V. CLAIM CONSTRUCTION ...................................................................................... 11
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`A. Subscriber, Subscribers, Subscriber’s and Subscribers’ ....................................... 11
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`B. Subscriber Selected File Translation Format(s)/Specification ............................. 12
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`C. Means For Converting ........................................................................................... 14
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`D. Means For Transmitting a Converted Facsimile Transmission ............................ 15
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`E. A Subscriber Directory … For Storing Subscriber Information, For Generating
`Record Formats … And For Providing The Record Formats To Said Facsimile Server
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`16
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`F. Means For Translating ........................................................................................... 17
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`G. Means For Changing a Destination ....................................................................... 18
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`H. Means For Changing Subscriber File Translation Specifications ......................... 19
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`VI. TEACHINGS OF THE ASSERTED PRIOR ART REFERENCES ....................... 19
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`I, Michael Ian Shamos, declare as follows:
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`I.
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`INTRODUCTION
`1.
`I have been engaged as a consultant by counsel for EC Data
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`Systems, Inc. (“EC”) to opine on certain matters regarding US Patent No.
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`6,020,980 (the “‘980 Patent”). Specifically, this declaration addresses the
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`obviousness of the claims of the ‘980 Patent in light of various combinations
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`of the prior art referenced herein.
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`2. My involvement in this case to date has included examining the
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`‘980 Patent and its prosecution history, as well as relevant prior art. I have
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`reviewed the material set forth below in preparing this declaration. In
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`addition to my own expertise in this field, I have relied on these materials for
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`the opinions expressed herein:
`
`a.
`
`b.
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`The ‘980 Patent
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`RightFAX Installation & Administration Guide, Version
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`3.51, 1994 (“RightFAX Admin Guide”)
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`c.
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`RightFAX E-mail Gateway Guide, Version 3.51, 1994
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`(“RightFAX Gateway Guide”)
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`d.
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`US Patent No. 5,740,231 (“Cohn”)
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`e.
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`f.
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`US Patent No. 6,396,597 (“Marshall”)
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`Borenstein, N., and N. Freed, “MIME (Multipurpose
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`Internet Mail Extensions): Part One: Mechanisms for Specifying and
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`Describing the Format of Internet Message Bodies,” Request for
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`Comments 1521, September 1993 (“RFC 1521”)
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`g.
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`The prosecution history of the ‘980 Patent
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`h.
`The prosecution history of the ex parte reexamination of
`the ‘980 Patent (“Ex Parte Reexam File History”).
`
`i.
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`The petitions for Inter Partes Review, to which this
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`declaration is attached.
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`j.
`The materials cited as exhibits to the petitions for Inter
`Partes Review to which this declaration is attached.
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`3.
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`I am being compensated at my usual and customary hourly rate
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`through Expert Engagements LLC, a company owned by me and my wife.
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`4.
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`I currently reside at 605 Devonshire Street, Pittsburgh, PA
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`15213 and can be reached by mail at that address..
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`II. PROFESSIONAL BACKGROUND
`5. My qualifications as an expert are summarized in my
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`curriculum vitae, which is attached as Appendix A.
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`6.
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`Among other academic degrees, I have a Master of Science in
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`Computer Science, a Master of Philosophy in Computer Science and a
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`Doctor of Philosophy in Computer Science, all from Yale University. I
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`earned a J.D. from Duquesne University and am admitted to the bar of the
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`Supreme Court of Pennsylvania, the Supreme Court of the United States and
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`the United States Patent and Trademark Office.
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`7.
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`I am a Distinguished Career Professor in the Institute for
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`Software Research and the Language Technologies Institute, both of which
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`are divisions of the School of Computer Science at Carnegie Mellon
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`University.
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`8.
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`I have served as the co-director for the Carnegie Mellon
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`Institute for eCommerce since 1998 and have served as the director of the
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`eBusiness Technology graduate degree program since 2003.
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`9.
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`I have taught graduate courses at Carnegie Mellon in Electronic
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`Commerce, including eCommerce Technology, Electronic Payment
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`Systems, Electronic Voting and eCommerce Law and Regulation, as well as
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`Analysis of Algorithms. Since 2007 I have taught an annual course in Law
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`of Computer Technology. I currently also teach Ubiquitous Computing and
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`Electronic Payment Systems, which includes Computer Security. In the
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`Carnegie Mellon Executive Education Program I teach computer
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`networking, enterprise resource planning system, Web 3.0 and the Internet
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`of Things.
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`10.
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`I am the author of a set of video presentations on networking,
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`including the following topics: network security, network protocols,
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`firewalls, proxy servers, network attacks, and cryptographic security.
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`11.
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`I am a named co-inventor on the following five issued patents
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`relating to electronic commerce: U.S. Patent Nos. 7,330,839, 7,421,278,
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`7,747,465, 8,195,197 and 8,280,773.
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`12.
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`I have founded four computer software and services companies:
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`Unilogic, Ltd., which marketed document production and typesetting
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`software, Lexeme Corporation, which provided software tools for translating
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`source code from one computer language to another, Insurance Technology
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`Corporation, which developed methods for detecting fraud in insurance
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`claims, and Notifax Corporation, which offered an automated subscription
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`service that notified subscribers of scheduled events by computer-generated
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`faxes.
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`13.
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`In light of my background and experience, I would be regarded
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`as expert in the art of computer software, networking, Internet business
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`models and electronic commerce (“My Areas of Expertise”), and have so
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`been recognized as an expert by various courts.
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`III. LEGAL STANDARDS
`A.
`Standard of Review
`14.
`I have been advised that the Patent Trial and Appeal Board
`(“PTAB”) applies US law in conducting an inter partes review. 35 U.S.C.
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`§§ 311-319. Unpatentability is proven by a preponderance of the evidence.
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`35 U.S.C. § 316.
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`B. Claim Construction Principles
`15.
`I have been advised that, when construing claim terms, a claim
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`subject to inter partes review receives the “broadest reasonable construction
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`in light of the specification of the patent in which it appears.” I have also
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`been informed that the broadest reasonable construction is the broadest
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`reasonable interpretation of the claim language, and that any term that lacks
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`a definition in the specification is also given a broad interpretation.
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`16.
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`I have been advised that a claim limitation is presumed to
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`invoke 35 U.S.C. § 112, sixth paragraph1 when it explicitly uses the phrase
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`“means for” or “step for” and includes functional language; however, the
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`presumption is overcome when the limitation further includes the structure
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`necessary to perform the recited function.
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`17.
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`I have been advised that claim limitations lacking the word
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`“means” may nonetheless be subject to 35 U.S.C. § 112, sixth paragraph
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`when they merely claim functions without recitation of sufficient underlying
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`structure for performing those functions.
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`C. Obviousness
`18.
`I understand that in order to assess whether a claim is obvious
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`in light of the prior art, I must step backward in time and into the shoes worn
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`by the hypothetical “person of ordinary skill in the art” when the alleged
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`invention was unknown and just before it was made. This hypothetical
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`person is presumed to be familiar with all relevant prior art. In view of the
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`art available at that time, I must then make a determination whether the
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`claimed alleged invention “as a whole” would have been obvious at that
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`time to such a person. Material in the patent applicant’s disclosure must be
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`1 I understand that 35 U.S.C. § 112, ¶ 6 was renamed 35 U.S.C. § 112(f) after enactment of the Leahy-
`Smith America Invents Act (PL 112-29) in September 2011, and the wording of the prior statute is
`applicable to this proceeding.
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`put aside in reaching this determination, yet kept in mind in order to
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`determine the “differences,” and evaluate the “subject matter as a whole” of
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`the alleged invention. Impermissible hindsight must be avoided and the
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`obviousness issue must be determined on the basis of the prior art.
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`IV. PERSON OF ORDINARY SKILL IN THE ART
`19.
`It is my understanding that the claims and specification of a
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`patent must be read and construed through the eyes of a person of ordinary
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`skill in the art at the time of the priority date of the claims at issue. Counsel
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`has also advised me that to determine the appropriate level of one or
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`ordinary skill in the art, the following factors may be considered: (i) the
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`types of problems encountered by those working in the field and prior art
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`solutions thereto; (ii) the sophistication of the technology in question, and
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`the rapidity with which innovations occur in the field; (iii) the educational
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`level of active workers in the field; and (iv) the educational level of the
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`inventor.
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`20. The ‘980 patent states that “The present invention relates
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`generally to facsimile transmissions to electronic mail systems.” 1:6-8. The
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`relevant technology field for the ‘980 Patent, therefore, is transmission of
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`information across communications networks using facsimile machines and
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`electronic mail systems. Workers in this field possess a wide variety of
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`educational backgrounds and professional experiences; many of them are
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`involved in day-to-day engineering activities, for example, writing portions
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`of a product’s software or designing some aspects of a product’s hardware.
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`The technical problems encountered by the majority of these workers would
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`be amenable to straight-forward engineering solutions, for example, how to
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`develop a user interface, how to use databases to keep track of information,
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`how to convert among various file formats, or how to incorporate existing
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`integrated circuits into a board design. The educational level would
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`typically be a Bachelor’s degree in computer science or electrical
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`engineering, although others would have acquired equivalent knowledge
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`through informal education and/or on-the-job learning from working in the
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`field for an appropriate number of years. Software, in particular, is readily
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`approachable by people with diverse, even non-technical backgrounds, and
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`the majority of technical work related to new product development in this
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`field is software-related.
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`21. Based on the above considerations and the factors used to
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`determine the level of one or ordinary skill in the art, my opinion is that a
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`person of ordinary skill in the art in the field of the ‘980 Patent would have
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`been someone with at least a BS degree in electrical engineering, computer
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`science or an equivalent level of knowledge and ability concerning
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`transmission of information across communications networks using
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`facsimile machines and electronic mail systems from working with such
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`systems for at least one year.
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`V. CLAIM CONSTRUCTION
`A.
`Subscriber, Subscribers, Subscriber’s and Subscribers’
`22. The terms “subscriber,” “subscribers,” “subscriber’s” and/or
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`“subscribers’” appear in claims 1-5, 7-22, 25-32 and 35 of the ‘980 Patent.
`In the context of the ex parte reexamination of the ‘980 Patent, the patent
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`owner asserted that a “subscriber” is “customer of the service provider that
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`operates or manages the system providing the facsimile-to-e-mail service.”
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`This is not by any means the “broadest reasonable interpretation” of
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`“subscriber” but in fact is very narrowly tailored, It assumes that a single
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`service provider must operate or control the recited methods and systems
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`and further that there must be a customer relationship between the subscriber
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`and that service provider. The patent owner attempted to justify this
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`construction by asserting that privacy and security would be important
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`features of such methods and systems, but failed to explain how that
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`assumption, even if correct, would necessarily imply a single point of
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`control. In my review of the disclosure of the ‘980 Patent, however, I note
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`no requirement that the methods and systems be operated or controlled by a
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`single service provider and no mention at all of security or privacy.
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`Furthermore, I do not find any explicit definition for the term “subscriber”
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`in the specification of the ‘980 Patent, which uses the terms “subscriber” and
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`“user” interchangeably. As such, a proper broadest reasonable construction
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`of the claim term “subscriber” (without improperly importing limitations
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`from the specification) is “a user of the claimed method or system.”
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`B.
`Subscriber Selected File Translation
`Format(s)/Specification
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`23. The phrases “subscriber selected file translation format[s]” or
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`“subscriber selected file translation specification” (the “Subscriber Selected
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`Format”) appear in claims 1, 13, 21, 22, 25, 26, 31, 35 and 36 of the ‘980
`Patent. In the context of the ex parte reexamination of the ‘980 Patent, the
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`patent owner argued for a rather narrow construction of the Subscriber
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`Selected Format limitations effectively requiring the “file translation
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`format[s]/specification” be received from a subscriber. Based on my review
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`of the independent claims of the ‘980 Patent, only independent claims 35
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`and 36 expressly require the subscriber-selected format to be received “from
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`the subscriber.” As such, construing the Subscriber Selected Format
`limitations narrowly as argued by the patent owner in the ex parte
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`reexamination improperly imports limitations from claims 35 and 36 into the
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`other independent claims. The ‘980 Patent uses the phrase “subscriber
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`selected” to broadly describe a selection, decision or choice made by a
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`subscriber from among various formats supported by his/her computer
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`system, for example, that can be communicated to the service provider or
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`otherwise stored in the facsimile-to-email system. See ‘980 Patent at col. 9,
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`ll. 60-66. There is no requirement in the context of independent claims 1,
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`13, 21, 22, 25, 26 and 31 that the Subscriber Selected Format be received
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`from the subscriber. Imposing such a requirement on the Subscriber
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`Selected Format not only imports limitations from claims 35 and 36 but
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`impermissibly reads limitations from the specification of the ‘980 Patent
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`(relating to embodiments in which an interactive voice response unit (IVR)
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`or voice recognition unit (VRU) can be used by a subscriber to establish a
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`file format in which facsimiles are to be delivered to the subscriber) into the
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`claims. Based on my reading of the specification of the ‘980 Patent, the
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`phrase “subscriber selected” is used broadly to describe a selection, decision
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`or choice made by a subscriber from among various formats supported by
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`his/her computer system, for example, that can be communicated to the
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`service provider or otherwise stored in the facsimile-to-email system. The
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`ordinary and customary meaning of “subscriber selected” is “chosen by the
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`subscriber.” As such, a proper broadest reasonable construction of the
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`Subscriber Selected Format limitations encompasses any file translation
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`format/specification so long as it is a result of a decision-making process
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`(i.e., a selection, decision or choice) made by a user or even user software –
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`regardless of how or from whom the facsimile-to-electronic mail system
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`receives information regarding that selection, decision or choice.
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`C. Means For Converting
`24. Claims 1, 21, 22, 26, 31 and 35 of the ‘980 Patent recite a
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`“means for converting a facsimile transmission [from a native facsimile
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`object file] to a [plurality of] subscriber selected format[s], including a
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`facsimile server … including file translation software for converting the
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`facsimile transmission to the subscriber-selected format.” Because this
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`limitation includes the recitation of structure (e.g., a facsimile server and file
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`translation software) necessary to perform the converting, it does not
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`implicate 35 U.S.C. § 112, sixth paragraph.
`25. With respect to independent claim 26, the means is indicated to
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`be “for converting a facsimile transmission to a plurality of subscriber
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`selected formats.” While the specification of the ‘980 Patent teaches
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`conversion of a received facsimile in accordance with a single subscriber-
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`selected format, I find no written description support for converting the same
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`facsimile transmission into multiple formats and no evidence that such a
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`function was contemplated by the inventor. See, e.g., ‘980 Patent at col., 6,
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`ll. 9-17. Because the ‘980 Patent contemplates multiple concurrent users of
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`the facsimile-to-email system, one of ordinary skill in the art would
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`understand the limitations at issue in claim 26 to refer to the fact that a
`received facsimile message is capable of being converted into one of many
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`possible formats depending upon the selected format associated with the
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`recipient.
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`D. Means For Transmitting a Converted Facsimile
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`Transmission
`26. Claims 1, 21, 22, 26, 31 and 35 of the ‘980 Patent recite a
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`“means for transmitting a converted facsimile transmission to a subscriber
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`electronic mail address.” Because this limitation uses the phrase “means
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`for” and does not recite structure necessary to perform the recited function
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`of transmitting, it must be construed in accordance with 35 U.S.C. § 112,
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`sixth paragraph to “cover the corresponding structure … described in the
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`specification and equivalents thereof.” The specification of the ‘980 Patent
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`describes executing a “message-transmit function” of “an e-mail system with
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`which” the facsimile server has an account “to send the message” to the
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`subscriber. See ‘980 Patent at FIG. 3B (step 318), col. 9, ll. 19-53 and col.
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`12, ll. 25-27. Therefore, the structure for the “means for transmitting”
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`should be construed as an email system or equivalents thereof.
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`E. A Subscriber Directory … For Storing Subscriber
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`Information, For Generating Record Formats … And For
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`Providing The Record Formats To Said Facsimile Server
`27. Claims 1, 21, 22, 26, 31 and 35 of the ‘980 Patent recite a “a
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`subscriber directory coupled to said facsimile server for storing subscriber
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`information, for generating record formats comprising the subscriber
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`information and for providing the record formats to said facsimile server.”
`
`While this limitation does not use the word “means,” because it merely
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`claims the functions performed by the subscriber directory (e.g., storing,
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`generating and providing) without reciting sufficient structure for
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`performing those functions, it must be construed in accordance with 35
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`U.S.C. § 112, sixth paragraph to “cover the corresponding structure …
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`described in the specification and equivalents thereof.” The specification of
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`the ‘980 Patent describes corresponding structure for the recited functions in
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`terms of storing subscriber selections “in a memory associated with
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`facsimile server 122, such as subscriber directory 126.” The ‘980 Patent
`
`describes the “record format” as including “an e-mail address associated
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`with the dialed telephone number and a subscriber-selected file translation
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`specification.” See ‘980 Patent at col. 6, ll. 13-15. The ‘980 Patent also
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`describes retrieving such record formats by querying “a database, such as
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`subscriber directory 126.” See ‘980 Patent at FIG. 1, FIG. 2, col. 8, ll. 25-26
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`and col. 8, ll. 32-34. FIG. 3B (step 318), col. 9, ll. 19-53 and col. 12, ll. 25-
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`27. Therefore, the structure for the “subscriber directory” should be
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`construed as “a database or other memory associated with a facsimile
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`server.”
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`F. Means For Translating
`28. Claim 3 of the ‘980 Patent recites a “means for translating
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`subscriber-specific facsimile receiving telephone numbers into subscriber
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`electronic mail addresses.” Because this limitation uses the phrase “means
`
`for” and does not recite any structure for performing the recited function of
`
`transmitting, it must be construed in accordance with 35 U.S.C. § 112, sixth
`
`paragraph to “cover the corresponding structure…described in the
`
`specification and equivalents thereof.” The specification of the ‘980 Patent
`
`describes corresponding structure for the translating function in terms of
`
`querying “a database, such as subscriber directory 126, for a record format
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`containing … a subscriber e-mail address” associated with the dialed
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`facsimile number. See ‘980 Patent at FIG. 3B (step 312), col. 8, ll. 29-35,
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`col. 8, ll. 52-63 and col. 11, ll. 60-67. Therefore, the structure for the
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`“means for translating” should be construed to encompass a table, a database
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`or equivalent data structure for mapping a telephone number to a
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`corresponding email address.
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`G. Means For Changing a Destination
`29. Claim 7 of the ‘980 Patent recites a “means for changing a
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`destination to which facsimile transmissions are to be forwarded to.”
`
`Because this limitation uses the phrase “means for” and does not recite
`
`structure necessary to perform the recited function of transmitting, it must be
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`construed in accordance with 35 U.S.C. § 112, sixth paragraph to “cover the
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`corresponding structure…described in the specification and equivalents
`
`thereof.” The specification of the ‘980 Patent describes structure
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`corresponding to this changing function as an “interactive voice response
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`unit (IVR) or voice recognition unit (VRU)” that “may be included in
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`facsimile server device 120 for permitting subscribers to re-route a facsimile
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`file to another destination.” See ‘980 Patent at col. 10, ll. 38-41. Therefore,
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`the structure for the “means for changing a destination” should be construed
`
`to encompass an IVR, a VRU or equivalents for changing a destination to
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`which a facsimile transmission is to be forwarded.
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`H. Means For Changing Subscriber File Translation
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`Specifications
`30. Claim 10 of the ‘980 Patent recites a “means for changing
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`subscriber file translation specifications.” Because this limitation uses the
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`phrase “means for” and does not recite structure necessary to perform the
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`recited function of transmitting, it must be construed in accordance with 35
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`U.S.C. § 112, sixth paragraph to “cover the corresponding
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`structure…described in the specification and equivalents thereof.” With
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`respect to corresponding structure for this changing function, the
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`specification of the ‘980 Patent indicates subscribers may use an IVR or
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`VRU to change file translation specifications. See ‘980 Patent at col. 10, ll.
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`55-66. Therefore, the structure for the “means for changing subscriber file
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`translation specifications” should be construed to encompass an IVR, a VRU
`
`or equivalents for changing file translation specifications.
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`VI. TEACHINGS OF THE ASSERTED PRIOR ART
`
`REFERENCES
`31.
`I have reviewed relevant portions of various prior art references
`
`asserted by EC in the petition for Inter Partes Review, to which this
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`declaration is attached, including: (i) the RightFAX Admin Guide, (ii) the
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`RightFAX Gateway Guide, (iii) Cohn, (iv) Marshall and (v) RFC 1521.
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`32. During the ex parte reexamination of the ‘980 Patent, the
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`Examiner found that every limitation of the independent claims of the ‘980
`
`Patent was met by the combination of the RightFAX Admin Guide and the
`
`RightFAX Gateway Guide (collectively, the “RightFAX References”)
`
`except for the Subscriber Selected Format limitations of claims 1, 21, 22, 26,
`
`31 and 35 and the retrieving and converting steps of claims 13, 25 and 36.
`See Ex Parte Reexam File History, Notice of Intent to Issue Ex Parte
`Reexamination Certificate at p. 4. As such, it is apparent from the Ex Parte
`
`Reexamination File History that independent claims 1, 13, 22 and 26 were
`
`found to be allowable over the RightFAX References as a result of the
`
`narrow claim term constructions for “subscriber” and the Subscriber
`
`Selected Format limitations asserted by the patent owner and adopted by the
`
`Examiner.
`33.
`
`I agree with the analysis of common base limitation [C], [C’’]
`
`and [E] of the independent system claims and common base limitations [V]
`
`and [W] of the independent method claims as presented in the petitions for
`Inter Partes Review, to which this declaration is attached, that illustrate the
`
`RightFAX References disclose the Subscriber Selected Format limitations of
`
`claims 1, 22 and 26 and the retrieving and converting steps of claim 13 using
`
`the proper broadest reasonable constructions of “subscriber” and the
`
`
`
`- 20 -
`
`Ex. 1003 - 20
`
`Integrated Global Concepts, Inc. - Ex. 1003
`
`
`
`Subscriber Selected Format limitations as proffered herein. Therefore, it is
`
`my opinion that had the proper broadest reasonable constructions for
`
`“subscriber” and the Subscriber Selected Format limitations been adopted
`during the ex parte reexamination consistent with those noted above,
`
`independent claims 1, 13, 22 and 26 would not have been allowed.
`34. The RightFAX References disclose a fax administrator can
`
`specify a file format to convert received facsimiles for a particular user. See
`
`RightFAX Admin Guide at pp. 88, 90 and 93. The fax administrator, uses
`
`the “File Format” drop-down list on the “Receive Fax Routing” dialog
`
`(reproduced below) of the FaxAdmin client program to select from among a
`
`list of available file format conversions. See, e.g., RightFAX Gateway
`
`Guide at pp. 17, 27 and 34 and RightFAX Admin Guide at p. 93.
`
`
`
`
`
`- 21 -
`
`Ex. 1003 - 21
`
`Integrated Global Concepts, Inc. - Ex. 1003
`
`
`
`
`
`35. As the RightFAX References contemplate the use of different
`
`file formats for particular users based on their computer platform, their e-
`
`mail system and the presence or absence of appropriate viewing software on
`
`the user’s computer platform, users of the RightFAX system would be
`
`actively involved in the decision-making process relating to the file format
`
`selection designating the file format in which their faxes are delivered.
`36. Because the Subscriber Selected Format limitations as properly
`
`construed merely require a selection, decision or choice to be made by a user
`
`concerning a file format, when a RightFAX fax administrator selects the file
`
`format on behalf of the user via the “Receive Fax Routing” dialog depicted
`
`
`
`- 22 -
`
`Ex. 1003 - 22
`
`Integrated Global Concepts, Inc. - Ex. 1003
`
`
`
`above and the RightFAX system subsequently converts a received facsimile
`
`in accordance with that file format selection, the RightFAX system meets
`
`the stated function of “converting a facsimile transmission” in accordance
`
`with the Subscriber Selected Format limitations.
`
`37. The “Edit User” dialog (reproduced below) of the FaxAdmin
`
`program of the RightFAX system allows the “Administrative Access” option
`
`to be enabled for any RightFAX user, which allows such user(s) to, among
`
`other things, run FaxAdmin and specify a file format for a user via the
`
`“Receive Fax Routing” dialog in which received faxes are to be provided to
`
`the user. It is clear in the context of the RightFAX system, that a fax
`
`administrator can also be a recipient of facsimile transmissions.
`
`
`
`
`
`- 23 -
`
`Ex. 1003 - 23
`
`Integrated Global Concepts, Inc. - Ex. 1003
`
`
`
`38. When a fax administrator specifies a file format via the
`
`FaxAdmin client program for him/herself and RightFAX subsequently
`
`converts a received facsimile in accordance with that file format, RightFAX
`
`meets the stated function of “converting a facsimile transmission” even
`
`assuming the narrow construction of the Subscriber Selected Format
`limitations previously asserted by the patent owner in the ex parte
`
`reexamination as the file format specification has been received by the
`
`facsimile-to-email system directly from the user (recipient).
`39. The RightFAX References disclose the availability of an
`
`optional RightFAX Optical Character Recognition (OCR) Module, which
`
`allows users to convert inbound faxes to a text file format using OCR. In
`
`view of the availability of an OCR module, it would have been a routine
`
`matter for one of ordinary skill in the art to modify the RightFAX system to
`
`include a text file conversion option as one of the “File Format” options on
`
`the “Receive Fax Routing” dialog (shown above).
`40. Cohn discloses the use of an interactive voice response (IVR)
`
`system 169 to update the master database 151 and user profile information
`
`contained therein. See Cohn at FIG. 13, FIG. 14, Abstract, col. 24, ll. 1-18,
`
`cols. 23, ll. 53-55, col. 23, l. 66 – col. 24, l. 18. and col. 26 ll. 39-46 (“As
`
`shown in FIG. 13, users … can also directly affect the information in the
`
`
`
`- 24 -
`
`Ex. 1003 - 24
`
`Integrated Global Concepts, Inc. - Ex. 1003
`
`
`
`master database 151 by using the interactive voice response system 169 …
`
`to alter the user profiles associated with their addresses and, as such, alter
`
`the routing and filtering of messages passing within the communications
`
`system”). Cohn also discloses accessing user profiles utilizing DTMF
`
`signaling. See Cohn at col. 8, ll. 7-13.
`41. Since Cohn teaches the use of an IVR system by users of the
`
`communication system to modify their user profile information, it would
`
`have been an obvious design choice at the time the ‘980 Patent application
`
`was filed to have Cohn’s IVR system functionality be integrated within or
`
`otherwise coupled in communication with whatever device (e.g., a facsimile
`
`server device) that stored the user profile information.
`42.
`
`In view of Cohn’s teachings regarding the use of IVR to allow a
`
`user to directly manipulate user profile information, contrary to the patent
`owner’s assertions during the ex parte reexamination of the ‘980 Patent, it
`
`should be clear that that providing users with the ability to select or change
`
`the file format in which a received fax is transmitted to them is not a security
`
`issue. As such, it would have been obvious at the time the ‘980 Patent was
`
`filed to modify the RightFAX facsimile-to-email system to offer similar
`
`di
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