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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`GOOGLE, INC.
`Petitioner
`v.
`TLI COMMUNICATIONS LLC
`Patent Owner
`
`Case IPR2015-00283
`Patent 6,038,295
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 6,038,295 (CLAIMS 17-24)
`
`
`
`

`

`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES ................................................................................................ iii
`
`EXHIBIT LIST ........................................................................................................................ iv
`
`I. INTRODUCTION ............................................................................................................ 1
`
`II. OVERVIEW OF U.S. PATENT 6,038,295 ................................................................. 1
`
`III. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3) ............................. 3
`
`A. “Classification Information is Prescribable by a User . . . Which
`Characterizes the Digital Images” (independent claim 17) ......................... 3
`
`B. “Telephone Unit” (independent claim 17) ......................................................... 4
`
`C. “Digital Pick Up Unit” (independent claim 17) ................................................ 5
`
`IV. ARGUMENT ................................................................................................................... 6
`
`A. Petitioner’s Proposed Combination of Satoh and Wolverton Fails to
`Suggest Recording Images Using a Digital Pick Up Unit in a
`Telephone Unit, as Required by Claim 17 ..................................................... 7
`
`B. Petitioner’s Proposed Combination of Satoh and Wolverton Fails to
`Suggest Transmitting a Digital Image that was Initially Stored in a
`Telephone Unit, as Required by Claim 17 ................................................... 10
`
`C. Petitioner’s Proposed Combination of Satoh and Wolverton Lacks
`Classification Information that is Prescribable by a User of the
`Telephone Unit for Allocation of Digital Images, as Required by
`Claim 17 ............................................................................................................. 12
`
`D. Petitioner’s Proposed Combination of Satoh and Wolverton Lacks
`Extracting Classification Information which Characterizes the
`Digital Images from the Received Data, as Required by Claim 17 .......... 14
`
`E. Petitioner’s Proposed Combination of Wolverton and Satoh Fails to
`Teach or Fairly Suggest All of the Features Required by Claim 17 ......... 17
`
`F. Petitioner’s Proposed Combination of Satoh, Wolverton and Bernardi
`Fails to Obviate Dependent Claim 18 .......................................................... 19
`
`
`
`i
`
`

`

`G. Petitioner’s Proposed Combination of Wilska and Morikawa Fails to
`Sugggest Transmitting a Digital Image that was Initially Stored in
`the Claimed Digital Pick Up Unit, as Required by Claim 17 .................... 20
`
`H. Petitioner’s Proposed Combination of Wilska and Morikawa Lacks
`Classification Information that is Prescribable by a User of the
`Telephone Unit for Allocation to the Digital Images, as Required
`by Claim 17 ....................................................................................................... 25
`
`I. Petitioner’s Proposed Combination of Wilska and Morikawa Lacks a
`Server that Stores the Digital Image that was Initially Stored in the
`Claimed Telephone Unit, as Required by Claim 17 .................................... 29
`
`J. Petitioner’s Proposed Combination of Wilska, Morikawa, and Burstein
`Fails to Obviate Dependent Claim 18 .......................................................... 31
`
`K. Petitioner’s Proposed Combination of Wilska, Morikawa and Partridge
`Fails to Obviate Dependent Claim 22 .......................................................... 32
`
`V. CONCLUSION ............................................................................................................... 33
`
`
`
`
`
`
`
`
`
`ii
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`

`

`TABLE OF AUTHORITIES
`
`CASES
`Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286 (Fed. Cir. 2006) ........................................... 6
`
`CFMT, Inc. v. Yieldup Int’l. Corp., 349 F.3d 1333 (Fed. Cir. 2003) ......................... 7, 18, 30
`
`In re Fine, 837 F.2d 1071 (Fed. Cir. 1988) ............................................................... 18, 31, 33
`
`In re Wilson, 424 F.2d 1382 (CCPA 1970) .............................................................................. 7
`
`Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352 (Fed. Cir. 2011) ....................................... 6
`
`
`
`REGULATIONS
`37 C.F.R. § 42.108(c) ................................................................................................................. 1
`
`
`
`OTHER AUTHORITIES
`MPEP 2143.03 ........................................................................................................................... 7
`
`    
`
`
`
`
`
`
`
`
`iii
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`

`

`EXHIBIT LIST
`EXHIBIT LIST
`
`
`
`
`
`Ex. 2001
`EX. 2001
`
`Sharp J-SH04, Wikipedia (July 7, 2014, 11:15 AM), (retrieved from:
`Sharp J—SH04, Wikipedia Ouly 7, 2014, 11:15 AND, (retrieved from:
`
`http://en.wikipedia.org/wiki/J-SH04).
`http: / /en.wikipedia.org/wiki/J—SHO4).
`
`
`
`iv
`iV
`
`

`

`I.
`
`INTRODUCTION
`
`Pursuant to 37 C.F.R. § 42.107(a) Patent Owner, TLI Communications LLC,
`
`submits the following preliminary response to the Petition, setting forth reasons why
`
`no inter partes review should be instituted under 35 U.S.C. § 314. The Board should
`
`not institute inter partes review because Petitioner has failed to demonstrate a
`
`reasonable likelihood that at least one of the claims challenged in the Petition is
`
`unpatentable.1
`
`
`
`II. OVERVIEW OF U.S. PATENT 6,038,295
`
`U.S. Patent No. 6,038,295 (the “’295 patent” or the “Mattes patent”) was first-
`
`filed in June 1996 (as German patent application 196 24 128). The Mattes patent
`
`addressed the problem of transmitting, storing and classifying the proliferation of
`
`digital images that would issue from mobile phones.2 To put this 1996 date in
`
`perspective, the first two commercially available mobile phones having cameras are
`
`generally considered to be the Samsung SCH-V200 (announced June 2000) and the
`
`Sharp J-SH04 (released in November 2000).3
`
`
`1 37 C.F.R. § 42.108(c).
`
`2 Ex. 1001 at 1:62 – 2:4; Figs. 1 and 2.
`
`3 Ex. 2001.
`
`
`
`1
`
`

`

`Recognizing that mobile phones with integrated cameras would result in the
`
`proliferation of digital images, the Mattes patent further modified existing mobile
`
`phones to allow mobile phone users to prescribe and/or allocate classification
`
`information data to the digital images, for example, by using the phone’s keypad.4 The
`
`mobile phone then transmits the digital images and classification information data to a
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`server. The server extracts the classification information data and uses it to
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`automatically and intelligently store the digital images so that a multitude of
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`transmitted images may be “surveyable” and “easily relocated.”5
`
`In 1996, the Internet, cellular telephony and digital cameras were all in their
`
`infancy. This was the age of dial-up Internet and AMPS (analog) cellular telephones.
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`A very few consumer digital cameras were just being released, and those devices
`
`(which cost upwards of $1000 in 1996 dollars) could take only a few low-quality
`
`pictures before filling-up their memory cards. In this environment, the Mattes patent
`
`represented an important advancement of the state of the art.
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`
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`
`
`4 Id. at 6:42-58, 7:16-19.
`
`5 Id. at 1:62-2:4, 2:55-65, 7:45-55.
`
`
`
`2
`
`

`

`III. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3)
`
`A.
`
`“CLASSIFICATION INFORMATION IS PRESCRIBABLE BY A
`USER . . . WHICH CHARACTERIZES THE DIGITAL IMAGES”
`(INDEPENDENT CLAIM 17)
`
`Patent Owner generally agrees with Petitioner that the claimed “classification
`
`information” need not have a particular relationship to the content of a digital image
`
`and that it could fairly be construed as “information that characterizes or is otherwise
`
`associated with a digital image,” as Petitioner suggests. However, independent claim
`
`17 further recites that the classification information: (i) must be “prescribable by a
`
`user” and (ii) it must be used by the server to intelligently store the images (“storing
`
`the digital images in the server [ ] taking into consideration the classification
`
`information”).6
`
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`
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`6 Id. at 10:8-16; see also id. at 2:61-65 (“Since the storing step depends upon the
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`extracted classification information that characterize the individual digital images, a
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`simple, fast and surveyable archiving of the digital images is automatically carried
`
`out.”)
`
`
`
`3
`
`

`

`B.
`
`“TELEPHONE UNIT” (INDEPENDENT CLAIM 17)
`
`The ’295 Patent states that “a telephone unit to be used in the communication
`
`system of the present invention” is depicted in Figure 2 (reproduced here).7 The
`
`specification explains that the telephone unit “includes [in addition to inventive
`
`features] the standard features of a telephone
`
`unit including, for example, an earphone HM,
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`a keypad TL which serves as an operating field
`
`for the telephone unit TE, as well as a
`
`microphone LS.”8 The telephone unit “also
`
`includes a digital image pick up unit being
`
`integrated into the telephone unit TE.”9 In
`
`addition, the telephone unit has “a mode key
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`MT by which the operating mode of the of
`
`the telephone unit TE is switched such as
`
`between operation as a normal telephone or as an image pick up and transmitting unit
`
`according to the present communication system.”10
`
`
`7 Id. at 4:51-52, Fig. 2.
`
`8 Id. at 5:54-58.
`
`9 Id. at 5:58-60.
`
`10 Id. at 6:15-19.
`
`
`
`4
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`

`

`A person of ordinary skill in the art would thus understand that the claimed
`
`telephone unit includes at least the standard features of any telephone, namely a
`
`microphone, earphone and keypad. In addition, and as depicted in Figure 2, claim 17
`
`expressly requires “a digital pick up unit [e.g., image sensor] in a telephone unit.”11
`
`
`
`C.
`
`“DIGITAL PICK UP UNIT” (INDEPENDENT CLAIM 17)
`
`A digital pick up unit is not a digital camera but is the portion of a digital
`
`camera that captures light and converts it to electronic signals, for example, a solid
`
`state image sensor, such as a CCD. As the Mattes patent explains, for example, in
`
`claim 25, a “digital still camera [has] a lens, a shutter and a digital still image pickup.”12
`
`Since many images sensors, including many CCDs, are analog, the images they pick-
`
`up must subsequently be converted to digital form.13 Consequently, the claimed digital
`
`
`11 Id. at 10:3-4 (emphasis added).
`
`12 Id. at 10:53-55.
`
`13 See id. at 2:35-39 (“[R]ecording the images by a digital image pick up unit…
`
`converting the images to digital form as digital images and possibly stored. . . .”); Ex.
`
`1031 (U.S. Patent No. 5,633,678) at 3:51-4:8 (“Analog image signals” from “image
`
`sensor 12” are converted into “digital image data.”).
`
`
`
`5
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`

`

`pick up unit may operate like a digital camera,14 but it is not a digital camera and is
`
`instead an image sensor -- the image sensing portion of a digital camera.
`
`
`
`IV. ARGUMENT
`
`Petitioner puts forth two combinations of references in an attempt to obviate
`
`independent claim 17 (the only independent claim of this proceeding) and the claims
`
`dependent therefrom under 35 U.S.C. § 103(a). The first combination of references
`
`proposed by Petitioner is that of Satoh and Wolverton; the second is that of Wilska and
`
`Morikawa.
`
`Obviousness under 35 U.S.C. § 103(a) is a legal question based on underlying
`
`factual determinations.15 An obviousness analysis measures the difference between the
`
`claimed invention and the prior art to determine whether “the subject matter as a
`
`whole would have been obvious at the time the invention was made” to a person
`
`having ordinary skill in the art.16 Further, although KSR may have loosened the
`
`required reasoning that may be employed for combining prior art references in an
`
`
`14 Ex. 1001 at 6:1-2.
`
`15 Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011), cert. denied, 132
`
`S. Ct. 1755 (2012).
`
`16 Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1289 (Fed. Cir. 2006) (citations
`
`omitted).
`
`
`
`6
`
`

`

`obviousness rejection, a prima facie case of obviousness must still provide a factual
`
`basis for finding each of the claimed features of a rejected claim suggested in the prior
`
`art.17 Stated differently, “all words in a claim must be considered in judging the
`
`patentability of that claim against the prior art.”18
`
`For at least the reasons provided below, both combinations of references
`
`proposed by Petitioner fail this test.
`
`
`
`A.
`
`PETITIONER’S PROPOSED COMBINATION OF SATOH AND
`WOLVERTON FAILS TO SUGGEST RECORDING IMAGES
`USING A DIGITAL PICK UP UNIT IN A TELEPHONE UNIT, AS
`REQUIRED BY CLAIM 17
`
`Claim 17 recites: recording images using a digital pick up unit in a telephone
`
`unit.19 Petitioner relies solely on Satoh for teaching this feature of claim 17.20
`
`
`
` Satoh describes an electronic imaging apparatus that includes communication
`
`means for transmitting image information generated by the apparatus to externally
`
`connected devices.21 More specifically, Satoh describes a DSC (camera body) 153 that
`
`17 CFMT, Inc. v. Yieldup Int’l. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003).
`
`18 In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970); MPEP 2143.03.
`
`19 Ex. 1001 at 10:3-4.
`
`20 Petition at 19-20, 33-34.
`
`21 Ex. 1003 at Abstract; 2:9-25.
`
`
`
`7
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`

`

`is externally connected to an image communication adaptor 150, a modem 154, and a
`
`telephone set 155 as shown in FIG. 102, provided below.22 As can be clearly seen in
`
`FIG. 102, as well as FIG. 103 (reproduced below), image communication adaptor 150,
`
`modem 154, and telephone set 155 are physically separate from and externally
`
`connected to DSC (camera body) 153.23 At no point does Satoh provide for, or even
`
`suggest, that the image communication adaptor 150, a modem 154, or DSC (camera
`
`body) 153 are resident in the telephone set 155 as required by claim 17. In fact, quite
`
`the opposite is true as these components are clearly external to telephone set 155.
`
`Petitioner attempts to gloss over this readily apparent deficiency of Satoh by
`
`stating, by way of Mr. Parulski’s declaration, “[i]t would have been obvious to the
`
`POSA based on Satoh’s disclosure and the level of skill in the art to combine a
`
`telephone and a digital still camera in one housing … [because] the POSA was
`
`
`22 Id. at 41:59-62.
`
`23 Id. at 41:62-64.
`
`
`
`8
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`

`

`familiar with many devices that combined a camera and telephone in one housing.”24
`
`However, the purported obviousness of this combination, even if it were correct, is
`
`irrelevant because Satoh explicitly teaches that the telephone is external to the camera.
`
`Furthermore, Satoh stresses the importance of having the camera (among other
`
`devices) external to the telephone so that the camera is “compact in shape in view of
`
`its portability.”25 Mr. Parulski fails to explain why, given this objective, a POSA would
`
`readily abandon it and undertake to incorporate additional components, presumably
`
`necessitating a larger housing. Hence, Petitioner’s allegation that it would have been
`
`obvious to modify Satoh’s disclosure to combine a telephone and a digital still camera
`
`is inapposite to Satoh’s explicit disclosure that the camera is intentionally external to
`
`telephone and, consequently, is without merit.
`
`Petitioner further alleges that Satoh suggests the “telephone unit could also be
`
`located within the digital pick-up unit.” Petition, p. 33, emphasis added. Petitioner’s
`
`argument is irrelevant because claim 17 requires a “digital pick up unit in a telephone
`
`unit.” Moreover, Satoh does not support Petitioner’s allegation because, for the
`
`reasons pointed out above, the telephone unit of Satoh is clearly not located within the
`
`digital pick up unit. Furthermore, Petitioner’s reliance upon Satoh’s teaching “the
`
`
`24 Ex. 1002 at ¶ 107.
`
`25 Ex. 1003 at 46:50-51.
`
`
`
`9
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`

`

`adapter 150 may of course be integral with the modem 154”26 to support its allegation
`
`that the digital pick-up unit could be located within the telephone unit is misplaced as
`
`this disclosure only suggests the adapter 150 may be included within the modem 154.
`
`In no way does such incorporation suggest the camera of Satoh is (or even could be)
`
`resident in the telephone unit, and even if it did (which it does not), there certainly is
`
`nothing in Satoh suggesting the claimed requirement that a digital pick up unit be
`
`located in a telephone unit.
`
`For at least these reasons, Petitioner’s proposed combination of Satoh and
`
`Wolverton fails to suggest recording images using a digital pick up unit in a telephone
`
`unit, as required by claim 17. Accordingly, no inter partes review should be instituted on
`
`this ground.
`
`
`
`B.
`
`PETITIONER’S PROPOSED COMBINATION OF SATOH AND
`WOLVERTON FAILS TO SUGGEST TRANSMITTING A
`DIGITAL IMAGE THAT WAS INITIALLY STORED IN A
`TELEPHONE UNIT, AS REQUIRED BY CLAIM 17
`
`Claim 17 recites,
`
`recording images using a digital pick up unit in a
`telephone unit; storing the images recorded by the digital
`pick up unit in a digital form as digital images;
`
`
`26 Petition at 33-34.
`
`
`
`10
`
`

`

`transmitting data including at least the digital images
`and classification information to a server…[and] storing
`the digital images in the server.27
`
`Petitioner relies solely on Satoh for disclosing these features of claim 17.28
`
`As noted above, Satoh teaches a digital camera that may be connected to an
`
`external telephone set. However, Satoh provides no indication that any data, images or
`
`otherwise, is stored in the telephone set 155. Instead, telephone set 155 is used for the
`
`sole purpose of facilitating communication between partners during a communication
`
`session, without storing any information.29
`
`Thus, Petitioner’s argument must fail because Satoh fails to teach both storing
`
`images in a telephone unit and transmitting the images that are stored in digital form
`
`as digital images in the telephone unit to a server. Additionally, it logically follows that
`
`because Satoh fails to teach both storing images in a telephone unit and transmitting
`
`the images that are stored in digital form as digital images in the telephone unit to a
`
`server, Satoh further fails to teach a server that stores digital images that were initially
`
`stored in the claimed telephone unit as required by claim 17.
`
`For at least these reasons, Petitioner’s proposed combination of Satoh and
`
`Wolverton fails to suggest transmitting a digital image that was initially stored in the
`
`27 Ex. 1001 at 10:3-16.
`
`28 Petition at 33-34, 36.
`
`29 Ex. 1003 at 42:14-21.
`
`
`
`11
`
`

`

`claimed telephone unit, as required by claim 17. Accordingly, no inter partes review
`
`should be instituted on this ground.
`
`
`
`C.
`
`PETITIONER’S PROPOSED COMBINATION OF SATOH AND
`WOLVERTON LACKS CLASSIFICATION INFORMATION THAT
`IS PRESCRIBABLE BY A USER OF THE TELEPHONE UNIT
`FOR ALLOCATION OF DIGITAL IMAGES, AS REQUIRED BY
`CLAIM 17
`
`Claim 17 recites:
`
`transmitting data including at least the digital images and
`classification information to a server, wherein said
`classification information is prescribable by a user of the
`telephone unit for allocation to the digital images.30
`
`Thus, claim 17 explicitly requires the classification information for allocation of the
`
`digital images is prescribable by a user of the telephone unit.
`
`
`
`Petitioner relies solely on Satoh for allegedly teaching this feature of claim 17.31
`
`Satoh provides a user with a series of operation switches, 311a-311f, located on a
`
`digital camera as shown in FIG 117, provided below.
`
`
`30 Ex. 1001 at 10:8-11 (emphasis added).
`
`31 Petition at 21-25, 34-35.
`
`
`
`12
`
`

`

`
`
`Satoh explains that a user may register a file to be recorded on a sub-directory by using
`
`a hierarchal directory produced by operating the MD switch 311f.32 Thus, Satoh
`
`enables a user of a camera to set directory information via a physical switch (i.e., MD
`
`switch 311f) provided on the camera.
`
`However, Satoh is distinguished from the invention of claim 17 at least because
`
`the mechanism for registering a file for recording in a particular directory is positioned
`
`explicitly and exclusively on the camera, which is (as demonstrated above) physically
`
`separate from the telephone of Satoh. As such, it is a user of Satoh’s camera, and not
`
`the telephone, that assigns a file to particular directory. Thus, Satoh cannot be relied
`
`upon for teaching classification information that is prescribable by a user of the
`
`telephone unit for allocation to the digital images as recited in claim 17.
`
`Hence, for at least these reasons, Petitioner’s proposed combination of Satoh
`
`lacks classification information that is prescribable by a user of the telephone unit for
`
`allocation to the digital images, as required by claim 17, and no inter partes review
`
`32 Ex. 1003 at 48:15-28.
`
`
`
`13
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`

`

`should be instituted on this ground.
`
`
`
`D.
`
`PETITIONER’S PROPOSED COMBINATION OF SATOH AND
`WOLVERTON LACKS EXTRACTING CLASSIFICATION
`INFORMATION WHICH CHARACTERIZES THE DIGITAL
`IMAGES FROM THE RECEIVED DATA, AS REQUIRED BY
`CLAIM 17
`
`Claim 17 recites:
`
`Transmitting data including at least the digital images and
`classification information to a server…[and] extracting
`classification information which characterizes the digital
`images from the received data.33
`
`Petitioner relies on Satoh’s disclosure that “directory data is transmitted” by the
`
`DSC to a PC, as allegedly teaching this feature of claim 17.34 Even if Petitioner is
`
`correct in this characterization, it remains the case that Satoh never suggests that the
`
`PC to which the directory data is transmitted extracts that directory data. Indeed,
`
`Satoh is completely silent as to what the PC does with directory data that it receives.
`
`Recognizing this failing of the reference, Petitioner relies on a statement by its
`
`expert that “The POSA would have understood that, prior to using such directory
`
`data for storing the digital images on the server, the directory data must be extracted
`
`33 Ex. 1001 at 10:8-15.
`
`34 Petition at 35-36.
`
`
`
`14
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`

`

`from the transmitted digital data sent by the modem. [Ex. 1003] at 53:59-61 (‘directory
`
`information in the memory card used with the DSC . . . may be input to a personal
`
`computer for hierarchical directory process thereon’).”35 To reach this conclusion, Mr.
`
`Parulksi relies on a single statement from Satoh – which statement is directed to an
`
`entirely different embodiment than otherwise cited by Petitioner – stating that
`
`“directory information in the memory card used with the DSC…may be input to a
`
`personal computer for hierarchical directory process thereon.”36 In this embodiment
`
`Satoh is not contemplating a computer extracting directory data from data transmitted
`
`by the modem attached to the DSC. Instead, Satoh is discussing the input of the
`
`directory data to the PC directly from a memory card. In no way does this suggest a
`
`PC extracting classification information (whether from a memory card or other source).
`
`Because Satoh does not include any teaching about a PC receiving data from a
`
`telephone unit and then extracting classification information from the transmitted
`
`data, as required by claim 17, Petitioner attempts to combine Satoh with the teachings
`
`of Wolverton to fill in the missing limitation. In particular, Petitioner alleges that
`
`Wolverton discloses “DOS routines that could be used to search a transmitted file for
`
`specific information, such as the directory structure information sent by the Satoh
`
`
`35 Ex. 1002 at ¶120.
`
`36 Ex. 1003 at 53:59-61 (emphasis added).
`
`
`
`15
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`

`

`camera, and extract that information.”37
`
`Notwithstanding Petitioner’s comments, Wolverton says nothing about
`
`extracting classification information from data received from a telephone unit by a PC
`
`running DOS, and nowhere teaches a server that can extract classification information
`
`from received data transmitted by a modem (or anything else). The cited Wolverton
`
`excerpt demonstrates only that a search command, manually entered by a PC user,
`
`will allow the PC user to find certain information amongst files already located on the
`
`PC.38 While such a disclosure may fairly suggest that a PC user can create a DOS
`
`command that will allow for a search through files stored on a PC, it has nothing to
`
`do with extracting classification information transmitted from a telephone unit, and
`
`nothing to do with storing images taking into consideration that classification
`
`information, as required by claim 17. Put simply, Petitioner points to no disclosure in
`
`Wolverton suggesting that a PC extracts classification information from received data
`
`because none exists.
`
`Hence, for at least these reasons, Petitioner’s proposed combination of Satoh
`
`
`37 Petition at 36 (citing Ex. 1004 at 354-56).
`
`38 See, e.g., Ex. 1004 at 356 (“You could call this command Showxcpt; create
`
`SHOWXCPT.BAT by typing the following”) (emphasis added); id. (“These three
`
`batch files-SHOW, SHOWAND, and SHOWXCPT-let you search a file quickly in
`
`several ways.”) (emphasis added).
`
`
`
`16
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`

`and Wolverton fails to suggest extracting classification information which characterizes
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`the digital images from the received data, as required by claim 17. Accordingly, no inter
`
`partes review should be instituted on this ground.
`
`
`
`E.
`
`PETITIONER’S PROPOSED COMBINATION OF WOLVERTON
`AND SATOH FAILS TO TEACH OR FAIRLY SUGGEST ALL OF
`THE FEATURES REQUIRED BY CLAIM 17
`
`In the foregoing sections, various deficiencies of Satoh have been highlighted
`
`because Petitioner relies on Satoh for teaching these features. Wolverton likewise fails to
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`teach or fairly suggest the following features of claim 17: (i) recording images using a
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`digital pick up unit in a telephone unit; (ii) storing the images recorded by the digital
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`pick up unit in a digital form as digital images; (iii) transmitting data including at least
`
`the digital images and classification information to a server, wherein said classification
`
`information is prescribable by a user of the telephone unit for allocation to the digital
`
`images; (iv) extracting classification information which characterizes the digital images
`
`from the received data; and (v) storing the digital images in the server. Indeed,
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`Petitioner makes no allegation that Wolverton can be read as disclosing such items.
`
`
`
`Wolverton provides instructions regarding the use of Microsoft DOS on a
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`computer and is cited by Petitioner for allegedly teaching (i) “data can be transmitted
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`to and from a personal computer running DOS, thereby allowing such computer to
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`function as a remote server;” (ii) creating “a DOS directory structure;” (iii)
`
`
`
`17
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`

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`“Commands for Searching Through a File”, and (iv) “several ways in which the skilled
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`artisan could automate the replication of a directory structure.”39 However, even if
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`true, combining such teachings with Satoh would still fail to provide for the above-
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`indicated features of claim 17 missing from Satoh. Stated differently, even if Petitioner
`
`correctly characterizes the teachings of Wolverton, combining those teachings with
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`Satoh still fails to demonstrate that all of the features of claim 17 were known in the
`
`art at the time of the invention. Thus, Petitioner has failed to demonstrate a prima facie
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`case of obviousness for claim 17.40
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`Claims 18-24 depend from claim 17 and Petitioner has also failed to
`
`demonstrate a prima facie case of obviousness for these claims, at least by virtue of
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`their dependency on claim 17.41
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`Thus, Petitioner has failed to demonstrate a reasonable likelihood that it would
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`prevail with respect to at least one of the claims challenged in the petition and so no
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`inter partes review should be instituted on these grounds.
`
`
`
`
`39 Petition, pp. 26-37.
`
`40 CFMT, 349 F.3d at 1342.
`
`41 In re Fine, 837 F.2d 1071 (Fed. Cir. 1988) (If an independent claim is nonobvious
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`under 35 U.S.C. § 103, then any claim depending therefrom is nonobvious.).
`
`
`
`18
`
`

`

`F.
`
`PETITIONER’S PROPOSED COMBINATION OF SATOH,
`WOLVERTON AND BERNARDI FAILS TO OBVIATE
`DEPENDENT CLAIM 18
`
`
`
`As discussed above, Petitioner has failed to demonstrate a prima facie case of
`
`obviousness for claim 18 with regard to Satoh and Wolverton at least by virtue of claim
`
`18’s dependency on claim 17.42
`
`Petitioner alleges the combination of Satoh, Wolverton, and Bernardi provides the
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`recognition of speech spoken into the telephone unit and storage of compressed
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`recognized speech required by claim 18.43 However, even if true, the teachings Bernardi
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`still fail to cure the above noted deficiencies of the Satoh/Wolverton combination.
`
`Thus, Petitioner has failed to demonstrate a prima facie case of obviousness for claim
`
`18, and, likewise, has failed to demonstrate a reasonable likelihood that it would
`
`prevail with respect to the claim challenged in the Petition. Accordingly, no inter partes
`
`review should be instituted on this ground with regard to claim 18.
`
`
`42 Id.
`
`43 Petition at 40-43.
`
`
`
`19
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`

`

`
`
`G.
`
`PETITIONER’S PROPOSED COMBINATION OF WILSKA AND
`MORIKAWA FAILS TO SUGGEST TRANSMITTING A DIGITAL
`IMAGE THAT WAS INITIALLY STORED IN THE CLAIMED
`DIGITAL PICK UP UNIT, AS REQUIRED BY CLAIM 17
`
`As noted above, claim 17 requires a “telephone unit” that transmits data
`
`including “classification information [that] is prescribable by a user of the telephone
`
`unit for allocation to the digital images.”44 Petitioner relies on Wilska for teaching this
`
`feature of claim 17,45 but Wilska fails to describe or suggest any such classification
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`information. Claim 17 also requires a server that “stor[es] the digital images in the
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`server . . . taking into consideration the classification information” that was
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`transmitted by the telephone unit.46 Petitioner relies on Morikawa for teaching this
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`feature of claim 17.47 Morikawa, however, involves a purportedly inventive email
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`system that requires specially designed and specially programmed computer systems
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`capable of sending email messages containing proprietary fields that include serial
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`numbers, file attributes and directory data. There is no suggestion that the devices
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`described by Wilska was, should be, or even could be so specially designed and
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`44 Ex. 1001 at 10:3-4, 7-10.
`
`45 Petition at 48-49.
`
`46 Ex. 1001 at 10:15-16.
`
`47 Petition at 50-51.
`
`
`
`20
`
`

`

`programmed such that it could communicate with Morikawa or that it would have
`
`been obvious for a person of ordinary skill in the art to modify it so as to provide for
`
`such communication.
`
`Wilska describes a “data collection” device intended to replace paper-fed
`
`mechanical scanners, for the purpose of inputting “information included in business
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`cards” into the device’s memory.48 However, Wilska never describes or suggests
`
`transmitting a digital image that was recorded and stored in a telephone unit (as
`
`required by claim 17 of the Mattes patent), and Wilska never describes or suggests
`
`user-prescribed image classification information allocated to digital images (as also
`
`required by claim 17). To the contrary, the output of Wilska’s camera (e.g., a picture of
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`a business card) is fed to a “data processing unit 2” where the user can select key
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`fields (e.g., information from the business card), such that textual “business card”
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`information can be stored as an address director