UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________________
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`GOOGLE, INC.,
`Petitioner,
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`v.
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`TLI COMMUNICATIONS LLC,
`Patent Owner.
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`_________________________
`
`Case IPR2015-00283
`Patent 6,038,295
`_________________________
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`DECLARATION OF PRASANT MOHAPATRA, PH.D.
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________________
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`GOOGLE, INC.,
`Petitioner,
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`v.
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`TLI COMMUNICATIONS LLC,
`Patent Owner.
`
`_________________________
`
`Case IPR2015-00283
`Patent 6,038,295
`_________________________
`
`
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`DECLARATION OF PRASANT MOHAPATRA, PH.D.
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`PRASANT MOHAPATRA, Ph.D. declares:
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`I. BACKGROUND.
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`1.
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` In 1987, I earned the B.S. degree in Electrical Engineering from the
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`National Institute of Technology in Rourkela, India. In 1989, I earned a M.S.
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`degree in Mathematics from The University of Rhode Island and in 1993, I earned
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`a Ph.D. degree in Computer Engineering from The Pennsylvania State University.
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`2.
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` From 2009 to 2013, I was the Tim Bucher Family Endowed Chair,
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`University of California, Davis, CA.
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`3.
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`From 2007 to 2013, I was the Chair of the Computer Science Department,
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`University of California, Davis, CA.
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`4.
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`From 2003 to present I have been a professor at the Computer Science
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`Department, University of California, Davis, CA.
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`5.
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`From 2013 to 2014, I served as the Interim Vice-Provost and the Chief
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`Information Officer (CIO) of UC Davis.
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`6.
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`7.
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`From 2014 to present I am serving as the Associate Chancellor of UC Davis.
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`I am a fellow of the American Association for the Advancement of Science
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`(AAAS) and Institution of Electrical and Electronics Engineers (IEEE).
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`8.
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`I have taught computer science classes at the undergraduate and graduate
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`levels, as well as supervised research at the undergraduate, graduate and post-
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`doctoral levels. A copy of my curriculum vitae, which details my experience that
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`is relevant to these proceedings, is included as Exhibit 2009.
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`9.
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`For my efforts in connection with the preparation of this declaration I have
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`been compensated at my regular hourly rate for this type of consulting activity. My
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`compensation is in no way dependent or contingent upon the outcome of these
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`proceedings or any other proceedings relating to the subject ’295 Patent and I have
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`no financial interest in Patent Owner.
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`II. MATERIALS AND INFORMATION PROVIDED TO ME AND
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`LEVEL OF ORDINARY SKILL IN THE ART.
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`10.
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`In connection with the preparation of this declaration I have read and
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`understood 6,038,295 (the “‘295 patent” or the “Mattes patent”) (Ex. 1001);
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`Google’s Petition for Inter Partes Review; the declaration of Kenneth A. Parulski
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`(Ex. 1002); Wilska, U.S. Patent 5,613,108 (Ex. 1006); Morikawa, U.S. Patent
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`6,427,078 (Ex. 1007); the Board’s Decision – Institution of Inter Partes Review,
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`Paper 21; and Patent Owner’s Response to the Petition.
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`11.
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`I have been informed that “a person of ordinary skill in the art” is a
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`hypothetical person to whom an expert in the relevant field could assign a routine
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`task with reasonable confidence that the task would be successfully carried out. I
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`have been informed that the level of skill in the art may be evidenced by references
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`published at or around the time of the filing of the patent under consideration.
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`Based on my experience, it is my opinion that the level of ordinary skill in the
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`relevant art at the time of the invention would be a person having a Bachelor of
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`Science degree in computer science, electrical engineering, or computer
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`engineering, with approximately 2 years of practical work experience or post-
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`graduate research in a field such as computer networking and/or distributed
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`systems. I do not believe the person of ordinary skill in the art would have required
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`advanced training in digital imaging, however, because the subject Mattes patent
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`and the cited references are not concerned with any imaging problems or
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`techniques per se, and instead focus on communicating, storing and administering
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`digital images transmitted over various communication networks. In June 1996, I
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`had at least the specified level of experience in the relevant field. Furthermore, at
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`least by virtue of my teaching computer science classes at the undergraduate and
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`post-graduate levels, I had and continue to have an understanding of the
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`capabilities of a person of ordinary skill in the relevant art at the time of the
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`invention of the ’295 Patent. I have supervised and directed many such persons
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`over the course of my career.
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`12.
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`I understand that trial has been instituted as to claims 17-24 of the “Mattes
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`patent, in part, to consider whether claims 17, 19–21, 23, and 24 are unpatentable
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`under 35 U.S.C. § 103(a) as obvious over the combination of Wilska and
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`Morikawa. I am advised that even if a claim of a patent may be found unpatentable
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`if, at the time of the invention, the claim as a whole would have been obvious to a
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`person of ordinary skill in the art. I understand that considerations of obviousness
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`involve determining the scope and content of the prior art; ascertaining the
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`differences between the prior art and the claims at issue; and resolving the level of
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`ordinary skill in the pertinent art. I further understand that considerations of so-
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`called secondary indicia of non-obviousness can be important to the obviousness
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`inquiry, however, I have not been asked to consider any such secondary indicia of
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`non-obviousness in connection with this declaration.
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`III. OVERVIEW OF U.S. PATENT 6,038,295
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`13. As I mentioned above, the Mattes patent addresses the problem of
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`transmitting, storing and classifying digital images that are captured by and issue
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`from mobile phones.1 The Mattes patent proposes allowing mobile phone users to
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`prescribe and/or allocate classification information data to such digital images, for
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`example, by using the phone’s keypad.2 The mobile phone then transmits the
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`digital images and classification information data to a server. The server extracts
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`the classification information data and takes it into account when storing the digital
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`images so that the transmitted images may be “surveyable” and “easily relocated.”3
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`14. Claim 17, reads as follows:
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`A method for recording and
`administering digital images,
`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,
`transmitting data including at least
`the digital images and classification
`information to a server, wherein said
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`1 Ex. 1001 at 1:62 – 2:4; Figs. 1 and 2.
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`2 Id. at 6:42-58, 7:16-19.
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`3 Id. at 1:62-2:4, 2:55-65, 7:45-55.
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`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.
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`IV. CLAIM CONSTRUCTION
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`15.
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`I understand that the Board has initially determined that the “classification
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`information” recited in claim 17 should be construed as “information that
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`characterizes or is otherwise associated with a digital image.”4 I have applied this
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`construction in my analysis below.
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`16.
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`I am advised that in proceedings before the USPTO, the Board accords the
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`claims of an unexpired patent their broadest reasonable interpretation in view of
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`the specification from the perspective of one of ordinary skill in the art. I have
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`been informed that the Mattes patent has not expired. Therefore, in considering the
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`matters discussed herein I have given the claims their broadest reasonable
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`4 Decision – Institution of Inter Partes Review, Paper 21 at 8.
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`interpretation in view of the specification from the perspective of one of ordinary
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`skill in the art.
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`V. COMPARISON OF WILSKA AND MORIKAWA WITH
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`CLAIM 17 OF THE MATTES PATENT
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`17.
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`I have been asked to consider whether, to a person of ordinary skill in the
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`art, claim 17 of the Mattes patent would be obvious in view of the combined
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`teachings of Wilska and Morikawa. In my opinion, claim 17 would not have been
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`obvious in view of these references. I provide the reasoning behind my opinion in
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`this regard below.
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`18. Wilska describes a “notebook computer” (illustrated schematically in Fig 3,
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`reproduced below) that includes “a radiotelephone, i.e., a cellular mobile phone
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`unit 17, . . . connected to [a] cellular mobile phone controller 8.”5 “Both data and
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`speech can be transmitted via integrated cellular mobile phone unit 17.”6 The
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`camera of the notebook computer “functions to record images and paper
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`documents.”7 According to Wilska, image information recorded by the camera is
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`5 Ex. 1006 at 3:36-39
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`6 Id. at 3:44-47.
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`7 Id. at 3:63.
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`“scanned in” to memory of the notebook computer,8 after which a user can process
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`the data according to his or her purposes using an application program.9
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`Thus, Wilska describes the camera as a “data collection” device,10 which is used to
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`input information into the notebook computer.
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`19.
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`In one example, Wilska describes inputting “information included in
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`business cards” into the notebook computer’s memory.11 Here, the output of the
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`camera (e.g., a picture of a business card) is transferred to the notebook computer,
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`where the user can use a business card handler application to select suitable fields
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`8 Id. at 4:65-66; 5:11-13.
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`9 Id. at 5:11-13.
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`10 Id. at 3:66.
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`11 Id. at 5:14 et seq.
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`from the business card, and drop the associated information from those fields into
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`an address directory.12
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`20.
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`In other examples, Wilska explains that graphical or character recognition
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`software can attempt to automatically collect information from pictures of hand
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`written notes.13 Or, the information scanned in from the camera can be stored in the
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`memory of the notebook computer as a bitmap.14 A bitmap is used because, “This
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`type of image information is used in facsimile/telefax transmission.”15
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`21. A separate embodiment discussed by Wilska concerns an optional digitizer
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`pad 29 that can be replaceably installed in the notebook computer.16
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`The digitizer pad 29 allows a user to write text or draw figures on the viewing
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`screen 29a using pen 33.17 The digitizer pad 29 recognizes the touch of pen 33 and
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`12 Id. at 5:21-35.
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`13 Id. at 5:37-58.
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`14 Id. at 5:59-61.
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`15 Id. at 5:61-62.
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`16 Id. at 6:24-26.
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`converts the perceived path of the pen 33, as it touches the digitizer pad 29, into a
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`bitmap.18
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`22.
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`In connection with the digitizer pad embodiment, Wilska states that, “[a] text
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`of figure written or drawn on digitizer pad 29 of notebook computer 27 can be
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`stored later as an image in memory unit 13 of the notebook computer or fed to the
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`character/object recognition software for further processing.”19 This allows
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`handwritten text to be converted to ASCII text in the same way as is done for the
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`camera, for example.20 “The bitmap images or converted ASCII text/graphics
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`transferred to the memory from digitizer pad 29 of notebook computer 27 can be
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`later forwarded via telefax or electronic email services . . . .”21 “When transmitting
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`electronic mail or telefax messages, the user can digitize the message on the
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`17 Id. at 7:6-10.
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`18 Id. at 7:9-14.
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`19 Id. at 27-30.
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`20 Id. at 7:31-35.
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`21 Id. at 7:36-40. Wilska states that “The bitmap images or converted ASCII
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`text/graphics . . . can be later forwarded via telefax or electronic email services, as
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`disclosed above in the description of the invention,” id. (emphasis added),
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`however, the only disclosure provided above in the patent is telefax transmission of
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`a bitmap at 6:3-6. There is no earlier discussion of emailing a bitmap.
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`display of the notebook computer and to [sic] simply select the recipient
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`information from the phone list.”22
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`23. Considering the explanation provided by Wilska as a whole, there is nothing
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`that teaches or suggests using email attachments of any kind, let alone attachments
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`that comprise digital images. Instead, Wilska contemplates the transmission of
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`bitmaps using telefax.23 Email services are reserved for converted ASCII
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`text/graphics, or digitized messages on the display of the notebook computer.24
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`24. This limitation concerning the use of email is not surprising. In or about
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`May 1995, which I understand to be the earliest filing date of Wilska, and
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`continuing to at or about the time of the invention of the Mattes patent,
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`experimental prototypes that facilitated the use of email with multimedia
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`extensions in a mobile computing environment were just in their initial stages of
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`development.25 The developers of such prototypes noted concerns with issues such
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`as available bandwidth, variable network communication quality, and costs of
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`transmission.26
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`22 Id. at 7:54-57.
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`23 Id. at 6:3-6; 7:36-40.
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`24 Id. at 7:36-40, 54-57.
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`25 See, e.g., Ex. 2006 at 1.
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`26 Id. at 1-2, 4.
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`25. Further, as late as 1994, researchers reported that despite nearly a decade’s
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`worth of investigation within the area of multimedia email, “To our knowledge, the
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`integration of a multimedia database system with multimedia electronic mail for
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`the realization of a multimedia archiving teleservice is a new approach not reported
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`in any previous work.”27 Solutions available at that time were said to be “very
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`restrictive.”28 A prototype system then under development was having to integrate
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`newly defined email extension mechanisms to accommodate “externally-defined
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`bodypart types.”29 Even then, however, because of restrictions on the size of emails
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`that could be accommodated by network nodes located between a sender and a
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`recipient, the multimedia data could not be included as part of an email message
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`itself, but rather had to be stored in a remotely accessible database and designated
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`by reference in the body of the email message, as shown in the following
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`illustration.30
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`27 Ex. 2007 at 2.
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`28 Id.
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`29 Id. at 3-4.
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`30 Id. at 4.
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`Thus, at the relevant time period the use of email for multimedia attachments such
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`as images was not a common practice and faced many challenges.
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`26. Morikawa, on the other hand, provides no teachings for organizing images
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`that are not email attachments. More specifically, Morikawa describes an
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`electronic mail processing system (shown in Fig 1, reproduced below) in which a
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`mail message M is stored to a mailbox MB and then later transferred to a user mail
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`server.31 At the user mail server, a heading file HF of the of the mail M is stored to
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`aa message folder FM while an attachment file AF is stored in a shared folder F0.32
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`Once the attachment file AF has been stored in the shared folder F0, a file analysis
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`process is run and a “folder suited for the attachment file AF is set.”33 Thereafter,
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`31 Ex. 1007 at 6:1-7.
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`32 Id. at 8:3-6.
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`33 Id. at 8:7-9.
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`the attachment file AF is transferred from the shared folder F0 to the set folder (F1,
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`F2, F3, or a new folder).34
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`27. Morikawa describes different ways that the file analysis process may
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`establish the set folder into which the attachment file AF is transferred. If a specific
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`folder is identified in a data directory D12 of mail M’s so-called envelope part
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`(illustrated in Fig. 2, reproduced below), then the attachment file AF will be
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`transferred to that folder if it exists.35 If the specified folder does not exist, but a
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`request for creating a new folder is included in mail M’s envelope part, then the
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`34 Id. at 8:9-11.
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`35 Id. at 8:18-25.
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`new folder will be created and the attachment file AF transferred thereto.36
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`If no specific folder is identified in mail M’s envelope part, then file attribute
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`information is extracted from the attachment file AF, and used to determine which
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`folder the attachment file is transferred to. 37 The file attribute information is made
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`up of ASCII characters or specific extensions specified by application software at
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`the transmitting side of the mail exchange.38
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`28.
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`In my opinion, a person of ordinary skill in the art would not combine
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`Morikawa’s email attachment organization approach with the teachings of Wilska.
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`36 Id. at 8:26-30.
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`37 Id. at 2:56-60; 3:34-36; 4:1-7; 4:66 – 5:3; 8:37-52.
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`38 Id. at 7:3-6; 8:53-60.
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`As I noted above, Wilska does not teach or suggest the use of email attachments.
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`Further, as late as 1994, and despite nearly a decade’s worth of research in the area
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`of multimedia email, Thimm et al. reported that their proposed integration of a
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`multimedia database system with multimedia electronic mail for the realization of
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`a multimedia archiving teleservice was the first of its kind,39 and even that solution
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`did not contemplate the use of multimedia attachments as Petitioner’s proposed
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`combination of Wilska and Morikawa would require. I note that Petitioner does not
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`discuss the difficulties that would be encountered by a person of ordinary skill in
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`the art seeking to implement a system such as is proposed, yet Thimm et al.
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`indicate that at the relevant time period nodes of a network that would be tasked
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`with handling such emails may have been incapable of doing so.40 Such
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`considerations, along with concerns regarding network communication quality and
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`costs of transmission, would suggest to the person of ordinary skill in the art that
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`other approaches be followed.
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`29. Further, even if a person of ordinary skill in the art did combine the
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`teachings of Wilska and Morikawa, the result of that combination would be
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`something different than the subject matter recited in claim 17. For example, the
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`39 Ex. 2007 at 2.
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`40 Id. at 4.
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`resulting combination would include Wilska’s hand-held device in which a camera
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`is used to collect data in the form of bitmap images that are transmitted via telefax,
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`not email.41
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`30. Alternatively, even if for sake of argument, Wilska describes transmitting
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`bitmap images via email services, Wilska fails to describe the format or
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`arrangement of the email messages. Morikawa describes email messages that
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`include an envelope part and a content part.42 The envelope part would include
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`various control information, as identified in Fig. 2, above,43 and the content part,
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`which consists of a heading file HF (the message) and attachment files AF, would
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`include the information to be transmitted,44 which, according to Petitioner (but not
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`Wilska or Morikawa), would be the bitmap image. As indicated above, the use of
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`such email attachments was only in an experimental stage at best, and researchers
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`reported that the network infrastructure required to support such use did not exist.
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`31.
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`It is therefore entirely reasonable to conclude that, even if the combination
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`of Wilska and Morikawa can be read as providing for transmitting bitmap images
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`41 Ex. 1006 at 7:37-41, 54-57.
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`42 Ex. 1007 at 2:39-43.
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`43 Id.
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`44 Id.
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`captured by the camera of Wilska’s hand-held device using electronic mail
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`services, the combination does not teach including the bitmap images as
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`attachments to those emails. Consequently, none of Morikawa’s description
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`concerning the processing of attachments would apply and, accordingly, none of
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`the “extracting,” or “storing” elements of claim 17 would be present in the
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`combined teachings of the references.
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`32. Finally, even if bitmap images were included as attachments to emails
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`transmitted by Wilska’s hand-held device, then one would expect those
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`attachments to be processed as provided for by Morikawa. According to
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`Morikawa, the only information that is “extracted” during such processing is the
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`file attribute information that describes the attachment file, AF.45 Therefore, in the
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`Wilska-Morikawa combination, at best, it is the file attribute information that is
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`extracted.
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`33. The file attribute information is not, however, “classification information [ ]
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`prescribable by a user of the telephone unit for allocation to the digital images,”46
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`as required by claim 17. Instead, the file attribute information is type-of-file
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`information, classified in accordance with the application software used to create
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`45 Id. at 2:56-60; 3:34-36; 4:1-7; 4:66 – 5:3; 8:37-52.
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`46 Ex. 1001 at 10:10-11.
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`the file, or, in the special case of a text document, the ASCII code representing the
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`first character of that document.47 In each case, rather than being specified by a
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`user of the Wilska hand-held device, the file attribute information would be created
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`by or in accordance with the application software that is used to generate the file
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`itself.
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`34. The system-specified file attribute is the only information that Morikawa
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`describes as being “extracted” during processing of an attachment file, AF.48 For
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`example, Morikawa indicates that, “the [server] may include a folder selection unit
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`for classifying the data file based upon folder specification information written in
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`the envelope part and selecting a folder for storing the data file in accordance with
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`a result of the classification.”49 While the attachment file may be “extracted” from
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`the content part of the email message,50 and the envelope part may be “searched”
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`for the folder specification information,51 it is only the file attribute information
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`that is “extracted” for purposes of selecting a folder used to store the attachment
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`47 Ex. 1007. at 7:3-6; 8:53-60.
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`48 Id. at 2:56-60; 3:34-36; 4:1-7; 4:66 – 5:3; 8:37-52.
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`49 Id. at 3:5-9.
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`50 Id. at 3:18
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`51 Id. at 3:25-28
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`f1le.52 Thus, the combination of Wilska and Morikawa does not suggest
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`“classification information [ ] prescribable by a user of the telephone unit for
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`allocation to the digital images,” which classification information also
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`characterizes the digital images and is “extracted,” and which is taken into
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`consideration while storing the digital images, as required by claim 17.53
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`Accordingly, it is my opinion that claim 17 is not obvious in View of the
`
`combination of Wilska and Morikawa.
`
`35.
`
`I hereby declare that all statements made of my own knowledge are true and
`
`all statements made on information are believed to be true and further that the
`
`statements were made with the knowledge that willful false statements and the like
`
`so made are punishable by fine or imprisonment or both under § 1001 of Title 18
`
`of the United States Code, and that such willful false statements may jeopardize
`
`the Validity of this patent.
`
`DATE: W/f/3”
`
`/l/lfiflr
`17??/P¢V*fl'
`PRASANT MOHAPATRA, PH.D.
`
`52 Id. at 3:33-38.
`
`53 Ex. 100] at 10:10-17.
`
`21
`
`Google v. TLI Communications
`IPR2014—00283 TLI Ex. 2008
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