Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 13
`Entered: December 22, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTEGRATED GLOBAL CONCEPTS, INC.,
`Petitioner,
`
`v.
`
`ADVANCED MESSAGING TECHNOLOGIES, INC.,
`Patent Owner.
`
`Case IPR2014-01028
`Patent 6,020,980
`
`
`
`
`
`
`
`
`
`Before JENNIFER S. BISK, KEVIN W. CHERRY and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`INTRODUCTION
`
`A. Background
`Petitioner, Integrated Global Concepts, Inc., filed a Corrected Petition
`(Paper 5, “Pet.”) requesting an inter partes review of claims 1–12, 21–24,
`26–35 (the “challenged claims”) of U.S. Patent No. 6,020,980 (Ex. 1001,
`“the ’980 patent”). Patent Owner, Advanced Messaging Technologies Inc.,
`filed a Preliminary Response. Paper 12 (“Prelim. Resp.”).
`
`
`Tel: 571-272-7822
`
`Paper 13
`Entered: December 22, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTEGRATED GLOBAL CONCEPTS, INC.,
`Petitioner,
`
`v.
`
`ADVANCED MESSAGING TECHNOLOGIES, INC.,
`Patent Owner.
`
`Case IPR2014-01028
`Patent 6,020,980
`
`
`
`
`
`
`
`
`
`Before JENNIFER S. BISK, KEVIN W. CHERRY and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`INTRODUCTION
`
`A. Background
`Petitioner, Integrated Global Concepts, Inc., filed a Corrected Petition
`(Paper 5, “Pet.”) requesting an inter partes review of claims 1–12, 21–24,
`26–35 (the “challenged claims”) of U.S. Patent No. 6,020,980 (Ex. 1001,
`“the ’980 patent”). Patent Owner, Advanced Messaging Technologies Inc.,
`filed a Preliminary Response. Paper 12 (“Prelim. Resp.”).
`
`
`
`IPR2014-01028
`Patent 6,020,980
`
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). The standard for
`instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which
`provides that an inter partes review may not be instituted “unless the
`Director determines . . . there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.”
`After considering the Petition and Preliminary Response, we
`determine that Petitioner has not established a reasonable likelihood of
`prevailing in showing the unpatentability of claims 2–12, 21, 23, 24, and 27–
`35 challenged in the Petition. Further, based on the record before us, and
`exercising our discretion under 35 U.S.C. § 325(d) we decline to institute
`review of claims 1, 22, and 26. Petitioner’s challenge of claims 1, 22, and
`26 is based upon substantially the same prior art and arguments that were
`before the Office in the ex parte reexamination of the ’980 patent—Control
`No. 90/012,650—that resulted in Ex Parte Reexamination Certificate
`(9670th) issued May 20, 2013 (Ex. 1002). Accordingly, we decline to
`institute inter partes review.
`
`B. Related Matters
`Along with this Petition, Petitioner has filed another Petition
`challenging claims 13–20, 25, and 36 of the ’980 patent. In addition,
`Petitioner indicates that the ’980 patent is the subject of a concurrent
`proceeding in the United States District Court for the Northern District of
`California, j2 Global, Inc. v. Integrated Global Concepts, Inc., No. 13-02971
`(filed June 27, 2013). Pet. 2.
`
`2
`
`
`
`IPR2014-01028
`Patent 6,020,980
`
`C. The ’980 Patent
`The ’980 patent relates to delivering fax messages as email. Ex. 1001,
`Abs. At the time of the invention, faxes were typically transmitted over the
`telephone system between two fax machines. Id. at 1:37–41. Either fax
`machine could be replaced with a personal computer “PC” outfitted with a
`fax compatible modem and translation software for converting to and from
`fax transmission format. Id. at 47–51. At that time, email (communication
`between two or more computer terminals containing software for sending
`and receiving email messages) was typically controlled by a central
`computing system that received and stored the email messages. Id. at 1:13–
`26. Because of this centralized storage, email communication could be
`accessed by a user from any properly configured computer terminal
`independent of physical location. Id. at 1:27–36. Fax transmissions, on the
`other hand, were tied to the receiving user’s telephone number and receiving
`location. Id. at 1:52–56. Another benefit of email systems not available to
`conventional fax systems is the ability to reply and forward email messages
`to other users. Id. at 1:20–22.
`One purpose of the invention described in the ’980 patent is a system
`combining the capabilities of both email and fax systems. Id. at 2:4–7.
`Specifically, the ’980 patent describes delivering a fax transmission to an
`email system pre-converted into a format readable by the receiver’s
`computer. Id. at 3:23–26. In a preferred embodiment, fax transmissions are
`routed to a fax server device, which stores the transmission in the native fax
`format. Id. at 4:15–20. In this embodiment, a subscriber database maps
`phone numbers to email addresses and “subscriber selected file format[s]”
`for translation. Id. at 4:20–24. The fax server device queries the database
`
`3
`
`
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`IPR2014-01028
`Patent 6,020,980
`
`using the receiving phone number, creates an email message addressed to
`the corresponding email address, translates the stored fax transmission into
`the chosen file format, attaches the translated file to the email message, and
`finally sends the email message to the “subscriber.” Id. at 4:20–30.
`
`D. Illustrative Claim
`Of the challenged claims in the ’980 patent, claims 1, 22, and 26 are
`independent. Claim 1 is illustrative and recites:
`
`1. A facsimile-to-electronic mail system, comprising:
`a facsimile server device including:
`a facsimile receiving device;
`means for converting a facsimile transmission to a subscriber
`selected format, including a facsimile server coupled to said
`facsimile receiving device, said facsimile server including
`file translation software for converting the facsimile
`transmission to the subscriber-selected format;
`means for transmitting a converted facsimile transmission to a
`subscriber electronic mail address; and
`a subscriber directory coupled to said facsimile server for storing
`subscriber information, for generating record formats
`comprising the subscriber information and for providing the
`record formats to said facsimile server, the subscriber
`information including subscriber electronic mail addresses and
`subscriber selected file translation formats.
`
`4
`
`
`
`IPR2014-01028
`Patent 6,020,980
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`RightFAX Admin Guide and RightFAX
`Gateway Guide
`RightFAX Admin Guide, RightFAX
`Gateway Guide, and Cohn
`RightFAX Admin Guide, RightFAX
`Gateway Guide, and Marshall
`RightFAX Admin Guide, RightFAX
`Gateway Guide, Cohn, and Marshall
`RightFAX Admin Guide, RightFAX
`Gateway Guide, Cohn, and RFC 1521
`
`E. The Evidence of Record
`Petitioner relies upon the following prior art references as its basis for
`challenging claims 1–12, 21–24, and 26–35 of the ’980 patent.1
`Reference
`Patents/Printed Publications
`Exhibit
`RightFAX
`RightFAX Installation & Administration
`Ex. 1004
`Admin Guide
`Guide, Version 3.51, 1994
`RightFAX
`RightFAX E-mail Gateway Guide,
`Gateway Guide
`Version 3.51, 1994
`Cohn
`U.S. Patent No. 5,740,231
`Marshall
`U.S. Patent No. 6,396,597
`RFC 1521
`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.
`F. The Asserted Grounds of Unpatentability
`Petitioner contends that the challenged claims are unpatentable under
`35 U.S.C. § 103 based on the following grounds (Pet. 4–5):
`Statutory
`Basis
`Challenged Claims
`Ground
`§ 103
`
`Ex. 1005
`
`Ex. 1006
`Ex. 1007
`Ex. 1008
`
`1, 22, and 26
`
`2, 3, 6–12, 22, 26–
`28, 30, and 35
`21 and 31–34
`
`
`
`4, 5, 23, and 24
`
`
`1 Petitioner also proffers the Declaration of Dr. Michael Ian Shamos. See
`Ex. 1003.
`
`5
`
`
`
`IPR2014-01028
`Patent 6,020,980
`
`G. The Ex Parte Reexamination
`The ’980 patent issued February 1, 2000, with claims 1–20. On
`September 14, 2012, Patent Owner filed a request for ex parte reexamination
`of independent claims 1 and 13 based on several references, including two of
`the references asserted in this Petition: the RightFAX Admin Guide and the
`RightFAX Gateway Guide (collectively, “the Asserted RightFAX
`Documents”). Ex. 1010, 791–808. In addition, the request named an
`additional reference, the RightFAX E-mail Gateway Guide 1996 (“the 1996
`RightFAX Gateway Guide”). Id.
`On January 13, 2013, the Office issued an action finding claims 1 and
`13 unpatentable under 35 U.S.C. § 103(a) as being obvious over a
`combination of the Asserted RightFAX Documents and the 1996 RightFAX
`Gateway Guide (collectively, “the Three RightFAX Documents”). Id. at
`121–124. In response to this rejection, Patent Owner submitted a Patent
`Owner Response and the Declaration of Dr. Justin Douglas Tygar. Id. at
`62–87; 94–103. At the same time, Patent Owner amended claims 5, 7–9,
`11–12, and 15–20 and added claims 21–36. Id. at 62–87.
`Based on Dr. Tygar’s testimony, the Examiner confirmed claims 1
`and 13. Id. at 8–9. Specifically, the Examiner agreed “with the discussion
`articulated in [the] Declaration of Justin Douglas Tygar, Ph.D.” regarding
`the understanding a person of skill in the art would have of the disclosure in
`the Three RightFAX Documents. Id. Thus, the Examiner concluded that “a
`person of ordinary skill in the art would conclude that the RightFAX
`system . . . does not teach subscriber selected format, subscriber selected file
`translation format or subscriber selected file translation specification as
`claimed in the ’980 patent.” Id. at 9. The Examiner also entered Patent
`
`6
`
`
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`IPR2014-01028
`Patent 6,020,980
`
`Owner’s requested amendments of claims 5, 7–9, 11–12, and 15–20, and
`added new claims 21–36. Id. at 6.
`
`ANALYSIS
`Patent Owner argues that we should decline to institute inter partes
`review under 35 U.S.C. § 325(d) because this Petition raises substantially
`the same issues, based on the same prior art that the Office already
`considered and rejected in the ex parte reexamination of the ’980 patent.
`Prelim. Resp. 22–27.
`Petitioner acknowledges the ex parte reexamination, but asserts that
`the Declaration relied upon by the Examiner proffered claim interpretations
`“based on flawed logic, read limitations from the specification into the
`claims and included what appear to be purposefully misleading statements.”
`Pet. 8. According to Petitioner, the claims were allowed “only as a result of
`the unduly narrow constructions” of certain claim terms. Id. at 10.
`Patent Owner also argues that Petitioner has not shown a reasonable
`likelihood of prevailing on the merits of any of the challenged claims.
`Prelim. Resp. 33–38.
`
`A. Claims 1, 22, and 26
`Under 35 U.S.C. § 325(d),
`In determining whether to institute or order a proceeding
`under . . . chapter 31, the Director may take into account
`whether, and reject the petition or request because, the same or
`substantially the same prior art or arguments previously were
`presented to the Office.
`
`Petitioner asserts that independent claims 1, 22, and 26 would have
`been obvious over the combination of the Asserted RightFAX Documents.
`Pet. 4–5. As noted above, during the ex parte reexamination of the ’980
`
`7
`
`
`
`IPR2014-01028
`Patent 6,020,980
`
`patent, the Examiner explicitly considered the same argument that the
`claimed subject matter would have been obvious over that same prior art.
`Petitioner disagrees with the Examiner’s conclusion regarding that argument
`and that prior art, but does not present any persuasive evidence to
`supplement the record that was in front of the Office during the
`reexamination.
`The only evidence presented by Petitioner that was not before the
`Office during reexamination is the Declaration of Dr. Michael Ian Shamos.
`See Ex. 1003. However, in general, his testimony is conclusory and does not
`provide any explanation to support his conclusions. For example, Dr.
`Shamos concludes that “I do not find any explicit definition for the term
`‘subscriber’ in the specification of the ’980 Patent, which uses the terms
`‘subscriber’ and ‘user’ interchangeably.” Id. at ¶ 22. Dr. Shamos then
`concludes, without further explanation, that “a proper broadest reasonable
`construction of the claim term ‘subscriber’ (without improperly importing
`limitations from the specification) is ‘a user of the claimed method or
`system.’” Id.
`Similarly, Dr. Shamos also opines on the disclosure of the Asserted
`RightFAX Documents, stating that “[a]s the [Asserted RightFAX
`Documents] contemplate the use of different file formats for particular users
`. . . , 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.” Id. at ¶ 35. Again, this
`assertion is conclusory, with no persuasive explanation or citation to
`supporting evidence.
`
`8
`
`
`
`IPR2014-01028
`Patent 6,020,980
`
`In sum, we agree with Patent Owner that the Petition does not present
`any persuasive evidence to supplement the record that was before the Office
`during the reexamination. Based on these facts, we conclude that the same
`prior art and substantially the same arguments were presented to the Office
`previously. We exercise our discretion and decline to institute an inter
`partes review of claims 22 and 26 based on obviousness over the Asserted
`RightFAX Documents under 35 U.S.C. § 325(d). Because Petitioner has not
`raised any other challenges to claim 1, we decline to institute an inter partes
`review of claim 1. We address below the remaining grounds asserted
`against claims 22 and 26.
`
`B. Claims 2–12, 21, 23, 24, and 27–35
`Petitioner challenges claims 2–12, 21, 23, 24, and 27–35 as obvious
`over various combinations of the Asserted RightFAX references with Cohn,
`Marshall, and RFC 1521. Pet. 38–58. Petitioner asserts that “the [Asserted]
`RightFAX references, Cohn, Marshall and RFC 1521 are clearly properly
`combinable and are representative of the obvious body of knowledge well
`within the grasp of the person of ordinary skill in the art in the field of the
`’980 Patent.” Id. at 22 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398
`(2007)). This statement, by itself, does not provide any rationale for
`combining the cited teachings and certainly does not provide a sufficiently
`“articulated reasoning with some rational underpinning to support the legal
`conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441
`F.3d 977, 988 (Fed. Cir. 2006)). Petitioner does not explain persuasively
`how or why a person of ordinary skill would have combined the cited
`teachings. See KSR, 550 U.S. at 418 (“Often, it will be necessary for a court
`
`9
`
`
`
`IPR2014-01028
`Patent 6,020,980
`
`to . . . determine whether there was an apparent reason to combine the
`known elements in the fashion claimed by the patent at issue.”).
`We recognize that Petitioner supplements the generic, conclusory
`language quoted above with statements by Dr. Shamos. For example, Dr.
`Shamos testifies that it would have been obvious to modify the RightFAX
`system to (1) offer interactions similar to those disclosed by Cohn (Ex. 1003
`¶ 42); (2) accommodate an email distribution list as taught by Cohn (id. at
`¶ 45); and (3) offer a file format conversion option to a Microsoft Paintbrush
`graphics format as disclosed by Marshall (id. at ¶ 48). Finally, Dr. Shamos
`testifies that “it would have been an obvious design choice . . . 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.” Id. at ¶ 41. But, like Petitioner, Dr.
`Shamos only offers conclusions that it would have been obvious to combine
`certain teachings from each of the references. Dr. Shamos does not provide
`any support for his conclusions with persuasive explanation or citation to
`objective evidence. These conclusory statements do not persuade us that
`Petitioner has shown that the claimed subject matter involved “a simple
`substitution of one known element for another or the mere application of a
`known technique to a piece of prior art ready for the improvement.” KSR,
`550 U.S. at 417.
`Accordingly, we are not persuaded that Petitioner has demonstrated a
`reasonable likelihood that it would prevail on any of the grounds including
`combinations of these references, including: (1) claims 2, 3, 6–12, 22, 26–
`28, 30, and 35 are unpatentable as obvious over the Asserted RightFAX
`Documents and Cohn; (2) claims 21 and 31–34 are unpatentable as obvious
`
`10
`
`
`
`IPR2014-01028
`Patent 6,020,980
`
`over the Asserted RightFAX Documents and Marshall; (3) claim 29 is
`obvious over the Asserted RightFAX Documents, Cohn, and Marshall; and
`(4) claims 4, 5, 23, and 24 are obvious over the Asserted RightFAX
`Documents, Cohn, and RFC 1521.
`
`CONCLUSION
`Upon consideration of the Petition and Preliminary Response, we are
`not persuaded that there is a reasonable likelihood that Petitioner will prevail
`on at least one alleged ground of unpatentability with respect to the ’980
`patent that has not already been fully considered by the Office. We,
`therefore, decline to institute inter partes review on any of the asserted
`grounds as to any of the challenged claims. 37 C.F.R. § 42.108.
`
`ORDER
`It is ordered that the Petition is denied as to all challenged claims, and
`
`no trial is instituted.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`11
`
`
`
`IPR2014-01028
`Patent 6,020,980
`
`PETITIONER:
`Lead Counsel
`
`Michael DeSanctis
`Hamilton, DeSanctis & Cha LLP
`225 Union Blvd., Suite 150
`Lakewood, CO 80228
`Phone: (303) 856-7155
`Fax: (303) 856-7264
`mdesanctis@hdciplaw.com
`
`Back-up Counsel
`
`Robert J. Schneider
`Taft, Stettinius & Hollister LLP
`111 E. Wacker Dr., Suite 2800
`Chicago, IL 60601
`Phone: (312) 836-4154
`Fax: (312) 527-4011
`rschneider@taftlaw.com
`
`
`James M. Heiser
`Chapman and Cutler LLP
`111 W. Monroe St.
`Chicago, IL 60603
`Phone: (312) 845-3877
`Fax: (312) 701-2361
`heiser@chapman.com
`
`
`
`
`12
`
`
`
`IPR2014-01028
`Patent 6,020,980
`
`PATENT OWNER:
`
`Lead Counsel
`
`Brian S. Mudge
`Kenyon & Kenyon LLP
`1500 K Street, NW
`Washington, DC 20005-1257
`Phone: (202) 220-4214
`Fax: (202) 220-4201
`bmudge@kenyon.com
`
`Back-up Counsel
`
`Adeel Haroon
`Kenyon & Kenyon LLP
`1500 K Street, NW
`Washington, DC 20005-1257
`Phone: (202) 220-4326
`Fax: (202) 220-4201
`aharron@kenyon.com
`
`Michelle Carniaux
`Kenyon & Kenyon, LLP
`One Broadway
`New York, NY 10004-1007
`Phone: (212) 908-6036
`Fax: (2120) 425-5288
`mcarniaux@kenyon.com
`
`
`
`
`13
`
`
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