Trials@uspto.gov
`571-272-7822
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`Paper 21
`Entered: June 1, 2015
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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
`____________
`
`
`
`Before TRENTON A. WARD, BART A. GERSTENBLITH, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 21
`Entered: June 1, 2015
`
`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
`____________
`
`
`
`Before TRENTON A. WARD, BART A. GERSTENBLITH, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2015-00283
`Patent 6,038,295
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`I. INTRODUCTION
`
`Google, Inc. (“Petitioner”) filed a Corrected Petition (“Pet.”) to
`
`institute an inter partes review of claims 17–24 of U.S. Patent No. 6,038,295
`
`(“the ’295 patent,” Ex. 1001). Paper 6. TLI Communications LLC (“Patent
`
`Owner”) filed a Preliminary Response (“Prelim. Resp.”). Paper 15. We
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`have jurisdiction under 35 U.S.C. § 314.
`
`Upon consideration of the Petition and Preliminary Response and the
`
`evidence of record, we determine that Petitioner has established a reasonable
`
`likelihood of prevailing with respect to the unpatentability of claims 17–24
`
`of the ’295 patent. Accordingly, we institute an inter partes review of those
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`claims.
`
`A.
`
`Related Proceedings
`
`Petitioner indicates that the ’295 patent is involved in a district court
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`infringement action, in which it is a party, captioned TLI Communications
`
`LLC v. AV Automotive, L.L.C., No. 14-cv-0142 TSE (E.D. Va.). Pet. 1.
`
`Petitioner also indicates that there are seventeen other pending district court
`
`cases involving the ’295 patent. Id. The ’295 patent was also the subject of
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`a petition for inter partes review in IPR2014-00566, a proceeding in which
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`institution was denied on September 15, 2014. See Facebook, Inc. v. TLI
`
`Commc’ns. LLC, Case IPR2014-00566 (“Facebook, Inc.”), slip op. at 18
`
`(PTAB Sept. 15, 2014) (Paper 14).
`
`B.
`
`The ’295 Patent (Ex. 1001)
`
`The ’295 patent, titled “Apparatus and Method for Recording,
`
`Communicating and Administering Digital Images,” is directed to an
`
`apparatus and method that “simplif[y] transmission of digital images which
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`have been recorded, optimize[] the communication of the image data[,] and
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`provide[] a method for administering the storage of the digital images, which
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`is simple, fast and surveyable so that the digital images may be archived.”
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`Ex. 1001, 1:66–2:4.
`
`The ’295 patent describes a communication system that includes “an
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`arbitrary number of telephone units TE, a server S, and a transmission
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`system US that is coupled to the telephone units TE as well as to the server S
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`and that is used for transmitting data between the telephone units and the
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`server S.” Id. at 4:62–67. Figure 1 of the ’295 patent is reproduced below:
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`Figure 1 depicts a block diagram of an embodiment of the ’295 patent’s
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`communication system.
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`Server S “is a computer system which serves for organizing a
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`database which includes a large number of digital images as well as
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`classification information OM which may potentially be allocated to the
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`digital images.” Id. at 5:1–4. Server S includes a number of components,
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`for example receiving unit EE that receives data sent from telephone unit
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`TE, analysis unit AE that is coupled to receiving unit EE and extracts the
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`classification information from the data, and memory SP for storing the data
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`and digital images. Id. at 5:5–13.
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`Figure 2 of the ’295 patent is reproduced below:
`
`
`
`Figure 2 depicts a plan view of telephone unit TE used in an
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`embodiment of the ’295 patent’s communication system. In addition to
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`standard features such as keypad TA, earphone HM, and microphone LS,
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`“[t]he telephone unit also includes a digital image pick up unit for recording
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`images.” Id. at 5:58–59. Telephone unit TE may be operated via a
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`telephone line, or wirelessly as a mobile telephone. Id. at 6:36–39. The
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`’295 patent states that “classification information OM may be prescribed by
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`a user of the telephone unit TE, for example, by simply speaking the
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`information into the microphone LS of the telephone unit TE or by inputting
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`a character sequence into the key pad TA.” Id. at 8:6–10.
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`Figure 3 of the ’295 patent is set forth below:
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`
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`Figure 3 is a flow chart illustrating the method steps described in the
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`’295 patent. In step 301, images are recorded using a digital pick up unit
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`integrated into telephone unit TE. Id. at 7:56–59. In step 302, the images
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`are stored in digital form, as digital images, in telephone unit memory TS.
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`Id. at 7:59–61. In step 303, the images are transmitted from telephone unit
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`TE to server S, and in step 304, server S receives the transmitted data. Id. at
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`7:61–65. Server S extracts classification information OM from the received
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`data in step 305, and the digital images are stored in server S in step 306,
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`taking classification information OM into consideration. Id. at 7:65–8:5.
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`C.
`
`Illustrative Claim
`
`Petitioner challenges claims 17–24 of the ’295 patent. Claim 17 is the
`
`only independent claim challenged, and recites as follows:
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`17. A method for recording and administering digital images,
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`comprising the steps of:
`
`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,
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`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,
`
`receiving the data by the server,
`
`extracting classification information which characterizes
`the digital images from the received data, and
`
`storing the digital images in the server, said step of
`storing
`taking
`into consideration
`the classification
`information.
`
`D.
`
`The Prior Art
`
`Petitioner relies on the following prior art references:
`
`Bernardi et al., U.S. Patent No. 5,546,145, issued Aug. 13, 1996
`(“Bernardi,” Ex. 1005).
`
`Morikawa, U.S. Patent No. 5,613,108, issued Mar. 18, 1997 (“Morikawa,”
`Ex. 1007).
`
`Satoh et al., U.S. Patent No. 5,717,496, issued Feb. 10, 1998 (“Satoh,”
`Ex. 1003).
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`Partridge, III, U.S. Statutory Invention Reg. No. H1714, published Mar. 3,
`1998 (“Partridge,” Ex. 1009).
`
`Wilska et al., U.S. Patent No. 6,427,078 B1, issued July 30, 2002 (“Wilska,”
`Ex. 1006).
`
`Burstein et al., Using Speech Recognition in a Personal Communications
`System, IEEE SUPERCOMM INT’L CONFERENCE OF COMMUNICATIONS 1717–
`21 (June 1992) (“Burstein,” Ex. 1008).
`
`Van Wolverton, Running MS-DOS Version 6.2 (6th ed. 1994) (“Wolverton,”
`Ex. 1004).
`
`E.
`
`The Asserted Grounds of Unpatentability
`
`Petitioner challenges the patentability of claims 17–24 of the
`
`’295 patent on the following grounds:
`
`References
`
`Basis
`
`Satoh and Wolverton
`
`§ 103(a)
`
`Satoh, Wolverton,
`and Bernardi
`Wilska and Morikawa § 103(a)
`
`§ 103(a)
`
`Claim(s)
`Challenged
`17, 19–24
`
`18
`
`17, 19–21, 23, 24
`
`Wilska, Morikawa,
`and Burstein
`Wilska, Morikawa,
`and Partridge
`
`§ 103(a)
`
`18
`
`§ 103(a)
`
`22
`
`
`
`II. ANALYSIS
`
`A.
`
`Claim Interpretation
`
`We interpret claims of an unexpired patent using the “broadest
`
`reasonable construction in light of the specification of the patent in which
`
`[the claims] appear[].” 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed
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`Techs., LLC, 778 F.3d 1271, 1279–80 (Fed. Cir. 2015) (“We conclude that
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`Congress implicitly adopted the broadest reasonable interpretation standard
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`in enacting the AIA.”).
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`As noted by Petitioner (Pet. 17), the Board construed “classification
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`information” as “information that characterizes or is otherwise associated
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`with a digital image” in its Decision Denying Institution of Inter Partes
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`Review of the ’295 patent in IPR2014-00566. See Facebook, Inc., Paper 14,
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`slip op. at 8. For purposes of the Petition, Petitioner asserts that this is the
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`broadest reasonable interpretation of “classification information.” Pet. 17.
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`Patent Owner agrees “that the claimed ‘classification information’ need not
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`have a particular relationship to the content of a digital image” and “it could
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`fairly be construed” as Petitioner proposes. Prelim. Resp. 3. Patent Owner
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`notes, however, that claim 17 of the ’295 patent also recites that the
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`classification information be prescribable by a user, and be used by the
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`server to store the digital images. Id. Based on the record before us, we see
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`no reason to deviate from the Board’s previous construction of
`
`“classification information” for purposes of this Decision.
`
`B.
`
`Obviousness over Wilska and Morikawa
`
`Petitioner contends that claims 17, 19–21, 23, and 24 would have been
`
`obvious under 35 U.S.C. § 103(a) over the combination of Wilska and
`
`Morikawa. Pet. 43–53. Petitioner provides claim charts, and relies on the
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`Declaration of Kenneth A. Parulski, dated November 20, 2014 (“Parulski
`
`Declaration,” Ex. 1002). Id.
`
`1.
`
`Overview of Wilska (Ex. 1006)
`
`Wilska is directed to a small, portable, hand-held device for personal
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`communication and data collection and processing. Ex. 1006, Abs. Figure 3
`
`of Wilska is reproduced below:
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`Figure 3 is a block diagram of the personal communication device
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`described in Wilska. Id. at 2:7–8. Data processing unit 2 comprises
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`processor 4, input/output controller 5, display controller 6, memory
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`controller 7, and cellular mobile phone controller 8. Id. at 2:40–44. The
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`device also comprises display 9, keyboard 10, and mouse/trackball 11 as a
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`user interface, and one or more memory units 13. Id. at 2:57–60, 66–67.
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`Camera unit 14 is stationary part of the device, and is connected via
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`input/output controller 5 to data processing unit 2. Id. at 3:8–13. Cellular
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`mobile phone unit 17 is an integrated part of the device, and is connected to
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`cellular mobile phone controller 8 of data processing unit 2. Id. at 3:37–40.
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`A miniature speaker and microphone can be arranged on the housing of the
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`device, and the device can be used as a conventional, hand-held telephone.
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`Id. at 3:49–53.
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`Wilska states that a user controls the functions of the device using
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`software recorded in memory unit 13. Id. at 3:54–57. According to Wilska,
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`these functions include telephone services, facsimile services, electronic
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`mail, and camera functions to record images. Id. at 3:57–65.
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`2.
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`Overview of Morikawa (Ex. 1007)
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`Morikawa is directed to an electronic mail processing system and
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`method. Ex. 1007, 1:9–10. Morikawa states that the system comprises a
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`receiving device for receiving “electronic mail from a host processor which
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`undertakes the management of mailboxes,” folders for storing electronic
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`mail, “a management device for classifying a data file written in the received
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`electronic mail in accordance with specific data included in the electronic
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`mail,” and selecting a folder for storing the data file “in accordance with a
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`result of the classification.” Id. at 2:31–37.
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`Figure 1 of Morikawa is reproduced below:
`
`
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`Figure 1 is a block diagram schematically showing the structure of an
`
`electronic mail system according to Morikawa. Id. at 5:34–36. Electronic
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`mail system 1 comprises host 2 (a general-purpose, large-size computer
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`system), and data processing systems 3 and 4 for transmitting data to each
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`other through host 2. Id. at 5:60–67. Mail M, addressed from data
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`processing system 3 to data processing system 4, is stored by host 2 in
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`mailbox MB for data processing system 4 until host 2 receives a request for
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`transferring from data processing system 4, or until a predetermined time.
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`Id. at 6:1–6. Host 2 then delivers mail M to data processing system 4. Id. at
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`6:6–7.
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`In data processing units 3 and 4 is electronic mail utility 5, which
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`performs processing on mail services provided by host 2. Ex. 1007, 6:12–
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`15. Electronic mail utility 5 maintains user mail server 6, which is a
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`database containing folders for storing data associated with electronic mail,
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`and folder table 7, which lists types of data in relation to folder name. Id. at
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`6:16–20. When electronic mail utility 5 receives mail M from host 2, it
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`performs receiving processing whereby the heading file of mail M is stored
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`in a message folder, and the attachment file is stored in a shared folder. Id.
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`at 8:2–6. Electronic mail utility 5 then performs attachment file analysis
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`processing to determine the folder in which the attachment file will be
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`stored, and transfers the attachment file from the shared folder to the
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`designated folder. Id. at 8:7–11. Morikawa describes this process as
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`classifying and storing the attachment file. Id. at 8:11–13.
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`According to Morikawa, mail M is composed of a content part
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`containing information to be conveyed to the recipient, and an “envelop
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`part” containing control information used to transmit mail M and properly
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`manage the content part at the receiving end. Id. at 6:32–37. The content
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`part comprises at least one heading file that corresponds to message
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`information, and at least one attachment file. Id. at 6:38–42. The format of
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`the envelop part is fixed, and contains 13 items of directory data including
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`the attributes of the attachment file, the name of the specified folder for
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`storage, and the presence or absence of a request for creating a folder. Id. at
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`6:49–51, 54–64.
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`3.
`
`Analysis
`
`Petitioner contends that Wilska describes a notebook computer that
`
`can record, store, and transmit digital images, and also work as a cellular
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`telephone. Pet. 43. Petitioner asserts that the apparatus described in Wilska
`
`contains a digital pick up unit for capturing images that are stored in a
`
`memory unit, and also has a built-in keyboard and cellular data transmission
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`capabilities that can be used to compose and send electronic mail. Id. at 44–
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`45. Petitioner further contends that Morikawa “discloses systems and
`
`methods for processing electronic mail, including for storing attachments to
`
`e-mails based on classification information—in particular, directory
`
`information—provided by the e-mail author.” Id. at 45. According to
`
`Petitioner, Morikawa describes steps for receiving, on a server, files
`
`containing classification information, extracting the classification
`
`information, and taking the classification information into consideration
`
`when storing the files, as is required by claim 17 of the ’295 patent. Id.
`
`Petitioner contends that a person having ordinary skill in the art would have
`
`been motivated to combine Wilska and Morikawa “in light of Wilska’s
`
`ability to send e-mail containing digital images as attachments and the
`
`capability of Morikawa to address the problem of organizing those e-mail
`
`attachments.” Id. at 47 (citing Ex. 1007, 2:13–22, Abs.; Ex. 1002 ¶ 90).
`
`We are persuaded, based on the current record, that Petitioner’s claim
`
`charts and substantive arguments (Pet. 43–51), and the Parulski Declaration
`
`are sufficient to establish a reasonable likelihood that Petitioner would
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`prevail in showing that independent claim 17 is unpatentable over the
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`combination of Wilska and Morikawa. For example, claim 17 recites
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`“receiving the data by the server” and “extracting the classification
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`information which characterizes the digital images from the received data.”
`
`As Petitioner alleges, Morikawa discloses electronic mail terminal utility 5
`
`(which maintains user mail server 6), that receives an e-mail with an
`
`attachment file and processes the attachment to extract the folder name
`
`associated with the file, as specified by the sender of the e-mail. Id. at 45–
`
`46, 50.
`
`We further are persuaded by Petitioner’s argument that a person
`
`having ordinary skill in the art would have been motivated to combine the
`
`Wilska device with the method described in Morikawa, as explained in the
`
`Parulski Declaration:
`
`[T]he POSA [person having ordinary skill in the art] understood
`that Wilska disclosed recording digital images and sending
`them to a remote computer as e-mail attachments. The POSA
`also recognized the need to store and organize incoming e-mail
`attachments on a server. See Ex. 1007 at 2:13–22 (noting the
`“burden” of manually “sorting [] attachment files” on an e-mail
`server); id. at abstract (noting the benefit of “reduc[ing] the
`complexity and labour of handling transmitted information,”
`i.e., e-mail attachments). Because Morikawa provided a
`process of storing and organizing e-mail attachments, such as
`images, based on user-prescribed classification information, the
`POSA would have naturally combine[d] Wilska with Morikawa
`to achieve a process of e-mailing digital images as attachments,
`and then storing those attachments on a server by taking into
`account user-prescribed classification information.
`
`Ex. 1002 ¶ 90. On this record, we are not convinced by Patent Owner’s
`
`argument that the Wilska device is not capable of sending attachments with
`
`an email, or that the Wilska device could not communicate with the
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`Morikawa e-mail system. See Prelim. Resp. 20–21, 24, 27. For example,
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`Wilska discloses that its device can perform functions such as a “cellular
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`mobile phone,” “electronic mail,” “short message service/SMS,” and
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`“camera functions to record images and paper documents, as well as
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`computer i.e., PC interface functions for transferring information to PC
`
`applications.” Ex. 1006, 3:57–64.
`
`Accordingly, we determine that, on this record, Petitioner has
`
`demonstrated a reasonable likelihood of prevailing in showing that claim 17
`
`would have been obvious based on the combination of Wilska and
`
`Morikawa. We have also considered Petitioner’s and Patent Owner’s
`
`arguments and evidence as to dependent claims 19–21, 23, and 24, and are
`
`likewise persuaded that Petitioner has demonstrated a reasonable likelihood
`
`that it would prevail as to those claims as well.
`
`C. Obviousness over Wilska, Morikawa, and Burstein
`
`Petitioner contends that claim 18 would have been obvious under
`
`35 U.S.C. § 103(a) over the combination of Wilska, Morikawa, and
`
`Burstein. Pet. 53–56. Petitioner provides a claim chart, and relies on the
`
`Parulski Declaration. Id.
`
`1.
`
`Overview of Burstein (Ex. 1008)
`
`Burstein describes the use of speech recognition capabilities in
`
`personal communication systems (“PCS”). Ex. 1008, 1717. Burstein states
`
`that speech recognition “would be performed both on the portable
`
`communicators and terminals, and by the centralized service providers.” Id.
`
`Burstein further states that “if the speech recognizer is well integrated with
`
`the PCS, a much smaller amount of hardware could equal the performance
`
`of the larger system, by having specific grammars and vocabularies for each
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`application that can run on the PCS.” Id. at 1720. According to Burstein,
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`the benefits of including speech recognition capabilities in a PCS include
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`(1) reducing the size of the hardware, as a keyboard would no longer be
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`needed, (2) ease of use of the PCS by new or untrained users, and (3) ability
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`to use the PCS when driving or walking, when use of a keyboard is not
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`practical. Id. at 1717.
`
`2.
`
`Claim 18
`
`Claim 18 depends from independent claim 17, and further recites
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`“recognizing speech spoken into the telephone unit and storing the
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`compressed recognized speech.” Petitioner contends that Burstein describes
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`a system in which a variety of mobile devices connect wirelessly to a server
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`and provide speech recognition to an end user. Pet. 54. Petitioner further
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`contends that Burstein discloses storing data received from a PCS, “and
`
`suggests that such storage could include recognized speech.” Id. at 55.
`
`According to Petitioner, a person having ordinary skill in the art would have
`
`combined the Wilska device with Burstein’s speech recognition
`
`functionality “given that both disclosures relate to the use of personal
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`communicators for wireless transmission of speech and data.” Id. at 54.
`
`Patent Owner responds that Burstein does not “describe, or even suggest”
`
`storing compressed recognized speech as required by claim 18. Prelim.
`
`Resp. 32.
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`Based on the current record, we are persuaded that Petitioner has
`
`established a reasonable likelihood of prevailing in showing that claim 18 is
`
`obvious over the combination of Wilska, Morikawa, and Burstein. In
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`support of Petitioner’s contentions, the Parulski Declaration explains:
`
`The POSA would understand that recognized speech stored as
`text is, by its very nature, compressed as compared to a full
`audio recording because the text can be stored using less
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`memory than the original audio recording. In addition, the
`POSA would have known a variety of tools that could be used
`to further compress the recognized speech if desired.
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`Ex. 1002 ¶ 201. We further are persuaded that a person having ordinary
`
`skill in the art would have been motivated to use Burstein’s speech
`
`recognition capability in the Wilska device at least because “the Wilska
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`device is a multifunctional communication tool designed for running a
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`variety of different application software,” and Burstein’s speech recognition
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`process “was a natural complement” to the functionality of the Wilska
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`device. Pet. 55; Ex. 1002 ¶ 93.
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`D. Obviousness over Wilska, Morikawa, and Partridge
`
`Petitioner contends that claim 22 would have been obvious under
`
`35 U.S.C. § 103(a) over the combination of Wilska, Morikawa, and
`
`Partridge. Pet. 56–59. Petitioner provides a claim chart, and relies on the
`
`Parulski Declaration. Id.
`
`1.
`
`Overview of Partridge (Ex. 1009)
`
`Partridge is directed to the transmission of a still image upon
`
`placement of a call to a video telephone or terminal. Ex. 1009, 1:5–8.
`
`Partridge describes an image transmission system comprising an image
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`processor coupled with an image storage unit that stores a database of
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`images, preselected by the customers, for association with each customer’s
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`telephone number. Id. at 2:47–58. Partridge states that the image processor
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`can be located “almost anywhere” in a telephone network, “either as a stand-
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`alone unit or within one of the central offices.” Id. at 2:39–46. Partridge
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`states that an electronic image file can, for example, be a digitized image
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`taken by an electronic camera. Id. at 3:14–16. Partridge explains that “any
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`conventional facsimile or electronic mail format can be employed to
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`transmit the image data to the image transmission system,” and the image
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`data can be stored in the image storage unit “either in the transmitted format
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`or in some other preselected format.” Id. at 3:17–21. Partridge further
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`explains that the image data in the image storage unit can be associated with
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`identifying information, such as the name of the person pictured in the
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`image, the telephone number associated with the image, or a visual or voice
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`greeting. Id. at 3:32–36.
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`2.
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`Claim 22
`
`Claim 22 depends from independent claim 17, and further recites
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`“providing a telephone number of the at least one telephone unit and/or of
`
`the server as part of the classification information.” Petitioner contends that
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`Partridge discloses transmitting an image, along with identifying data such
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`as a telephone number, to a remote server, where the image is stored taking
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`“into account the telephone number and other associated identifying
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`information.” Pet. 56. Petitioner further contends that a person having
`
`ordinary skill in the art would have been motivated to combine Partridge
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`with Wilska and Morikawa “in light of the fact that both Wilska and
`
`Partridge disclose methods of using telephone numbers in transmitting
`
`digital images by e-mail.” Id. at 57. Patent Owner argues that, even if
`
`Partridge does disclose “certain features of claim 22,” Partridge fails “to
`
`cure the deficiencies of the Wilska/Morikawa combination.” Prelim.
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`Resp. 33. As discussed above, Petitioner has shown sufficiently that the
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`combination of Wilska and Morikawa discloses all of the limitations of
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`independent claim 17, and we are unpersuaded that Petitioner’s combination
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`of Wilska, Morikawa, and Partridge is deficient with respect to claim 22.
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`
`
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`17
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`IPR2015-00283
`Patent 6,038,295
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`
`We have considered the arguments and evidence presented by
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`Petitioner and Patent Owner, and are persuaded on the present record that
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`Petitioner has demonstrated a reasonable likelihood that claim 22 would
`
`have been obvious based on the combination of Wilska, Morikawa, and
`
`Partridge.
`
`E.
`
`Other Grounds
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`Petitioner contends that claims 17 and 19–24 would have been
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`obvious under 35 U.S.C. § 103(a) over the combination of Satoh and
`
`Wolverton (Pet. 18–40), and that claim 18 would have been obvious under
`
`35 U.S.C. § 103(a) over the combination of Satoh, Wolverton, and Bernardi
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`(id. at 40–43). Petitioner provides claim charts, and relies on the Parulski
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`Declaration. Id. at 18–43.
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`We are not persuaded that Petitioner has established that the
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`combination of Satoh and Wolverton teaches the “extracting classification
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`information which characterizes the digital images from the received data”
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`limitation recited in claim 17. 24–28, 35–36. Petitioner does not direct us,
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`with any specificity, to evidence demonstrating sufficiently that Satoh
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`teaches that the personal computer that receives data from the Satoh device
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`extracts classification information from that data. Rather, Satoh describes
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`that directory data that is transmitted with the digital image “can be input to
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`a personal computer.” Ex. 1003, 53:59–61. Petitioner does not explain
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`adequately how inputting directory data into a personal computer teaches
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`that the personal computer extracts that information as required by
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`independent claim 17.
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`We also are unpersuaded that Wolverton cures the deficiencies in
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`Satoh. Petitioner cites to disclosures in Wolverton that describe commands
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`
`
`
`18
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`IPR2015-00283
`Patent 6,038,295
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`that can be used to create DOS directory structures, but does not identify a
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`server extracting a DOS directory structure from received data or explain in
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`any detail why Wolverton performs the recited limitation. Pet. 26–28.
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`Mr. Parulski, for instance, asserts that “[i]t would have been clear to” a
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`person having ordinary skill in the art that the “commands used to replicate a
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`paper organization structure on the PC [described in Wolverton] could just
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`as easily have been used to replicate the directory structure” described in
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`Satoh on the personal computer that receives the data from the Satoh device.
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`Ex. 1002 ¶ 75. Mr. Parulski provides no explanation and cites no evidence,
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`however, how manually extracting the directory information (as described
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`by Wolverton) meets the requirement in claim 17 that the server extracts
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`classification information.
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`Accordingly, we determine that the record before us does not establish
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`a reasonable likelihood that Petitioner would prevail in showing that claim
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`17, and claims 19–24 that depend therefrom, would have been obvious over
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`the combination of Satoh and Wolverton. Further, because Petitioner does
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`not rely on Bernardi as teaching any limitation of claim 17, we determine
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`that Petitioner has not established a reasonable likelihood that claim 18
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`would have been obvious over the combination of Satoh, Wolverton, and
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`Bernardi.
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`III. CONCLUSION
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`For the foregoing reasons, we conclude that Petitioner has
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`demonstrated a reasonable likelihood that it would prevail on its challenge
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`that claims 17–24 of the ’295 patent are unpatentable.
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`At this stage of the proceeding, the Board has not made a final
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`determination as to the patentability of claims 17–24.
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`
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`19
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`IPR2015-00283
`Patent 6,038,295
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`
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`In consideration of the foregoing, it is hereby:
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`IV. ORDER
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`ORDERED that inter partes review is granted as to claims 17–24 of
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`the ’295 patent with respect to the following grounds:
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`Whether claims 17, 19–21, 23, and 24 are unpatentable under
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`35 U.S.C. § 103(a) as obvious over the combination of Wilska and
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`Morikawa;
`
`Whether claim 18 is unpatentable under 35 U.S.C. § 103(a) as obvious
`
`over the combination of Wilska, Morikawa, and Burstein; and
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`Whether claim 22 is unpatentable under 35 U.S.C. § 103(a) as obvious
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`over the combination of Wilska, Morikawa, and Partridge;
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`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(a), inter
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`partes review of the ’295 patent is hereby instituted commencing on the
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`entry date of this Order, and, pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
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`§ 42.4, notice is hereby given of the institution of a trial; and
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`FURTHER ORDERED that no ground other than those specifically
`
`granted above is authorized for inter partes review as to claims 17–24.
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`
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`20
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`IPR2015-00283
`Patent 6,038,295
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`PETITIONER:
`
`Andrew V. Trask
`David M. Krinsky
`WILLIAMS & CONNOLLY LLP
`atrask@wc.com
`dkrinsky@wc.com
`
`
`
`PATENT OWNER:
`
`Tarek N. Fahmi
`ASCENDA LAW GROUP, PC
`tarek.fahmi@ascendalaw.com
`
`
`
`
`
`
`
`
`21
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