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 RESPONSE
`TO PETITON FOR INTER PARTES REVIEW
`OF U.S. PATENT 6,038,295
`
`
`
`
`
`
`
`
`
`
`
`

`
`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS
`
`  
`
`
`
`
`
`I.  
`
`II.  
`
`INTRODUCTION ...................................................................................................1  
`INTRODUCTION ................................................................................................. ..1
`
`OVERVIEW OF U.S. PATENT 6,038,295 .............................................................3  
`OVERVIEW OF U.S. PATENT 6,038,295 ........................................................... ..3
`
`III.  
`III.
`
`CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3) ............................6  
`CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3) .......................... ..6
`
`A.  
`A.
`
`CLASSIFICATION INFORMATION MUST BE
`CLASSIFICATION INFORMATION MUST BE
`PRESCRIBABLE BY A USER AND CHARACTERIZE THE
`PRESCRIBABLE BY A USER AND CHARACTERIZE THE
`DIGITAL IMAGES. ....................................................................................6  
`DIGITAL IMAGES. .................................................................................. ..6
`
`IV.  
`IV.
`
`ARGUMENT ...........................................................................................................7  
`ARGUMENT ......................................................................................................... ..7
`
`A.  
`A.
`
`B.  
`B.
`
`C.  
`C.
`
`D.  
`D.
`
`E.  
`E.
`
`F.  
`F.
`
`G.  
`G.
`
`THE COMBINATION OF WILSKA AND MORIKAWA LACKS
`THE COMBINATION OF WILSKA AND MORIKA WA LACKS
`EXTRACTED CLASSIFICATION INFORMATION THAT
`EXTRACTED CLASSIFICATION INFORMATION THAT
`CHARACTERIZES THE DIGITAL IMAGES AND IS
`CHARACTERIZES THE DIGITAL IMAGES AND IS
`PRESCRIBABLE BY A USER OF THE TELEPHONE UNIT, AS
`PRESCRIBABLE BY A USER OF THE TELEPHONE UNIT, AS
`REQUIRED BY CLAIM 17. .......................................................................8  
`REQUIRED BY CLAIM 17. ..................................................................... ..8
`
`WILSKA DOES NOT TEACH OR SUGGET TRANSMITTING
`WILSKA DOES NOT TEACH OR SUGGET TRANSMITTING
`DIGITAL IMAGES AS EMAIL ATTACHMENTS. ...............................18  
`DIGITAL IMAGES AS EMAIL ATTACHMENTS. ............................. .. 18
`
`MORIKAWA DOES NOT PROVIDE ANY SUGGETION FOR
`MORIKA WA DOES NOT PROVIDE ANY SUGGETION FOR
`MODIFYING WILSKA. .............................................................................26  
`MODIFYING WILSKA ............................................................................ ..26
`
`WILSKA AND MORIKAWA FAIL TO SUGGEST
`WILSKA AND MORIKA WA FAIL TO SUGGEST
`INCORPORATING AUDIO DATA AS THE CLASSIFICATION
`INCORPORATING AUDIO DATA AS THE CLASSIFICATION
`INFORMATION, AS REQUIRED BY CLAIM 19. .................................30  
`INFORMATION, AS REQUIRED BY CLAIM 19 ................................ ..3o
`
`WILSKA AND MORIKAWA FAIL TO SUGGEST
`WILSKA AND MORIKA WA FAIL TO SUGGEST
`INCORPORATING AUDIO DATA AS THE CLASSIFICATION
`INCORPORATING AUDIO DATA AS THE CLASSIFICATION
`INFORMATION, WHERE THE AUDIO DATA INCLUDES
`INFORMATION, WHERE THE AUDIO DATA INCLUDES
`LANGUAGE, AS REQUIRED BY CLAIM 20. .......................................33  
`LANGUAGE, AS REQUIRED BY CLAIM 20 ...................................... ..33
`
`CLAIM 18 IS PATENTABLE OVER WILSKA, MORIKAWA,
`CLAIM 18 IS PATENTABLE OVER WILSKA, MORIKA WA,
`AND BURSTEIN. ......................................................................................33  
`AND BURSTEIN. .................................................................................... ..33
`
`CLAIM 22 IS PATENTABLE OVER THE COMBINATION OF
`CLAIM 22 IS PATENTABLE OVER THE COMBINATION OF
`WILSKA, MORIKAWA AND PARTRIDGE. .............................................37  
`WILSKA, MORIKA WA AND PAR TRIDGE. ........................................... ..3 7
`
`V.  
`
`CONCLUSION ......................................................................................................39  
`CONCLUSION .................................................................................................... ..39
`
`ii
`
`

`
`TABLE OF AUTHORITIES
`
`
`
`CASES
`Alza Corp. v. Mylan Labs., Inc.,
`464 F.3d 1286 (Fed. Cir. 2006) ............................................................................. 7
`
`
`CFMT, Inc. v. Yieldup Int’l. Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) ............................................................. 8, 9, 17, 29
`
`
`Grain Processing Corp. v. American Maize-Prods. Co.,
`840 F.2d 902 (Fed. Cir. 1988) ............................................................................. 36
`
`
`In re Fine,
`837 F.2d 1071 (Fed. Cir. 1988) ............................................................... 17, 33, 37
`
`
`In re Translogic Tech., Inc.,
`504 F.3d 1249 (Fed. Cir. 2007) ........................................................................... 32
`
`
`In re Wilson,
`424 F.2d 1382 (CCPA 1970) ........................................................................... 8, 17
`
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 32
`
`
`Unigene Labs., Inc. v. Apotex, Inc.,
`655 F.3d 1352 (Fed. Cir. 2011) ............................................................................. 7
`
`
`
`iii
`
`
`
`
`
`
`
`

`
`EXHIBIT LIST
`
`
`
`Ex. 2001
`
`In re TLI Communications LLC Patent Litigation, Case No. 1:14-md-
`
`02534 (EDVA), Memorandum Opinion, Feb. 6, 2015.
`
`
`
`Ex. 2002
`
`Sharp J-SH04, Wikipedia (July 7, 2014, 11:15 AM), (retrieved from:
`
`http://en.wikipedia.org/wiki/J-SH04).
`
`
`
`Ex. 2003 Deposition of Kenneth Alan Parlulski, July 28, 2015.
`
`
`
`Ex. 2004 Excerpts from Tom Lichty, The Official America Online for
`
`Macintosh Membership Kit & Tour Guide (2d ed. 1994), pp. 1-­‐48, 75-­‐
`
`163, 479-­‐492, 501-­‐524.
`
`
`
`Ex. 2005
`
`Facebook, Inc. et al. v. TLI Communications, LLC, IPR2015-00778,
`
`Decision – Institution of Inter Partes Review, Paper 17 (P.T.A.B.
`
`Aug. 28, 2015).
`
`iv
`
`
`
`
`
`

`
`Ex. 2006 Alexander Schill et al., “Mobility aware Multimedia X.400 e-mail: A
`Alexander Schill et al., “Mobility aware Multimedia X.400 e-mail: A
`
`Ex. 2006
`
`Sample Application Based on a Support Platform for Distributed
`Sample Application Based on a Support Platform for Distributed
`
`Mobile Computing,” Proceedings of IMC 96 Workshop on
`Mobile Computing,” Proceedings of IMC 96 Workshop on
`
`Information Visualization and Mobile Computing, Zentrum für
`Information Visualization and Mobile Computing, Zentrum f1"1r
`
`graphische Datenverarbeitung (Feb. 1996).
`graphische Datenverarbeitung (Feb. 1996).
`
`
`
`Ex. 2007 Heiko Thimm et al., “A Mail-Based Teleservice Architecture for
`Heiko Thimm et al., “A Mail-Based Teleservice Architecture for
`
`EX. 2007
`
`Archiving and Retrieving Dynamically Composable Multimedia
`Archiving and Retrieving Dynamically Composable Multimedia
`
`Documents,” Proceedings of the Conference on Multimedia Transport
`Documents,” Proceedings of the Conference on Multimedia Transport
`
`and Teleservices, MMTT94 (1994).
`and Teleservices, MMTT94 (1994).
`
`
`
`Ex. 2008 Declaration of Prasant Mohapatra.
`Declaration of Prasant Mohapatra.
`
`Ex. 2008
`
`
`
`
`
`Ex. 2009
`
`Ex. 2009
`
`Prasant Mohapatra curriculum vitae.
`Prasant Mohapatra curriculum vitae.
`
`
`
`v
`
`

`
`I.
`
`INTRODUCTION
`
`Trial was instituted as to claims 17-24 of U.S. Patent 6,038,295 (the “‘295
`
`patent” or the “Mattes patent”) (Ex. 1001) to consider whether:
`
`(a)  claims 17, 19–21, 23, and 24 are unpatentable under 35 U.S.C. §
`
`103(a) as obvious over the combination of Wilska1 and Morikawa;2
`
`(b)  claim 18 is unpatentable under 35 U.S.C. § 103(a) as obvious over the
`
`combination of Wilska, Morikawa, and Burstein;3 and
`
`(c)  claim 22 is unpatentable under 35 U.S.C. § 103(a) as obvious over the
`
`combination of Wilska, Morikawa, and Partridge?4, 5
`
`The Board should resolve all of these issues in favor of Patent Owner
`
`because none of the cited references, whether considered alone or in the proposed
`
`combinations, teach or suggest the subject matter recited in the challenged claims.
`
`The proposed combination of Wilska and Morikawa is not one that a person of
`
`1 U.S. Patent 5,613,108, Ex. 1006.
`
`2 U.S. Patent 6,427,078, Ex. 1007.
`
`3 Burstein, A., et al., Using Speech Recognition in a Personal Communications
`
`System, IEEE SuperComm International Conference on Communications 1717-21
`
`(June 1992), Ex. 1008.
`
`4 U.S. SIR H1714, Ex. 1009.
`
`5 Decision – Institution of Inter Partes Review, Paper 21 at 20.
`
`
`
`

`
`ordinary skill in the art would make. As late as 1994, researchers reported that,
`
`despite nearly a decade’s worth of investigation, the integration of a multimedia
`
`database system with multimedia electronic mail for the realization of a
`
`multimedia archiving teleservice had not been described. Furthermore, because of
`
`restrictions on the size of emails that could be accommodated by network nodes
`
`located between a sender and a recipient, multimedia data could not be included as
`
`part of an email message itself, but rather had to be stored in a remotely accessible
`
`databases and designated by pointer. Accordingly, the proposed combination of
`
`Wilska and Morikawa would have been something that was much more than just
`
`the combination of existing prior art methods to yield predictable results, or a
`
`solution that was obvious to try. Instead, it represents a result that even after years
`
`of research into multimedia email that was beyond the limits of then-existing
`
`infrastructure.
`
`Moreover, even if a person of ordinary skill in the art were to make the
`
`combination of teachings proposed by Petitioner, the result would not yield the
`
`subject matter recited in the challenged claims of the Mattes patent. In the
`
`combination proposed by Petitioner, the bitmap images transmitted by Wilska’s
`
`hand-held device must be included as attachments to emails, but this is never
`
`suggested or described by Wilska. If Wilska’s bitmaps are not transmitted as email
`
`
`
`2
`
`

`
`attachments, then none of Morikawa’s teachings regarding handling of email
`
`attachments apply.
`
`Even if one assumes that Wilska’s bitmaps are included as attachments to
`
`emails, then one would expect those attachments to be processed as provided for
`
`by Morikawa. However, according to Morikawa, the only information that is
`
`“extracted” during such processing is file attribute information that is not
`
`“classification information [ ] prescribable by a user of the telephone unit for
`
`allocation to the digital images,” as required by claim 17. Instead, the file attribute
`
`information is created by or in accordance with the application software that is
`
`used to generate the file itself.
`
`Thus, the combination of Wilska and Morikawa does not suggest the
`
`limitations required by claim 17, and so claim 17 and its dependent claims are not
`
`obvious in view of the combination of Wilska and Morikawa.
`
`
`
`II. OVERVIEW OF U.S. PATENT 6,038,295
`
`The Mattes patent was first-filed in June 1996 (as German patent application
`
`196 24 128) and addresses the problem of transmitting, storing and classifying
`
`digital images that are captured by and issue from mobile phones.6 To put this
`
`6 Ex. 1001 at 1:62 – 2:4; Figs. 1 and 2.
`
`
`
`3
`
`

`
`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).7
`
`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.8 The
`
`mobile phone then transmits the digital images
`
`and classification information data to a server.
`
`The server extracts the classification information
`
`data and uses it to automatically and intelligently
`
`
`7 Ex. 2001.
`
`8 Id. at 6:42-58, 7:16-19.
`
`
`
`4
`
`

`
`store the digital images so that a multitude of transmitted images may be
`
`“surveyable” and “easily relocated.”9
`
`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. 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.
`
`Claim 17, the only independent claims subject to review in this proceeding,
`
`reads as follows:
`
`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
`classification information is prescribable by a user of the
`telephone unit for allocation to the digital images,
`receiving the data by the server,
`
`
`9 Id. at 1:62-2:4, 2:55-65, 7:45-55; and see Fig. 3.
`
`
`
`5
`
`

`
`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.
`
`
`
`III. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3)
`
`A.
`
`CLASSIFICATION INFORMATION MUST BE PRESCRIBABLE
`BY A USER AND CHARACTERIZE THE DIGITAL IMAGES.
`
`Patent Owner generally agrees with the Board’s initial determination that the
`
`recited “classification information” in claim 17 may be fairly understood as
`
`“information that characterizes or is otherwise associated with a digital image.”10
`
`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”).11
`
`10 Decision – Institution of Inter Partes Review, Paper 21 at 8.
`
`11 Ex. 1001 at 10:8-16; see also id. at 2:61-65 (“Since the storing step depends
`
`upon the extracted classification information that characterize the individual digital
`
`images, a simple, fast and surveyable archiving of the digital images is
`
`automatically carried out.”); and see Ex. 2003 at 24:20 – 25:2 (“I believe that the
`
`
`
`6
`
`

`
`IV. ARGUMENT
`
`Obviousness under 35 U.S.C. § 103(a) is a legal question based on
`
`underlying factual determinations.12 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.13 Further, although KSR
`
`may have loosened the required reasoning that may be employed for combining
`
`prior art references in an obviousness rejection, a prima facie case of obviousness
`
`must still provide a factual basis for finding each of the claimed features of a
`
`classification information, which is taken into consideration when storing the
`
`digital images in the server, is the classification which has been extracted, if that
`
`was your question.”), and 26:3-9 (“Again, I think a person of ordinary skill in the
`
`art who also had some understanding of patents and patent claims would generally
`
`understand that the classification information that's transmitted to a server also
`
`must be prescribable by a user, for example, but is extracted and then it's taken into
`
`consideration when storing the digital images.”).
`
`12 Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011), cert.
`
`denied, 132 S. Ct. 1755 (2012).
`
`13 Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1289 (Fed. Cir. 2006) (citations
`
`omitted).
`
`
`
`7
`
`

`
`rejected claim suggested in the prior art.14 Stated differently, “all words in a claim
`
`must be considered in judging the patentability of that claim against the prior
`
`art.”15
`
`For at least the reasons provided below, none of the combinations of Wilska
`
`and Morikawa; Wilska, Morikawa, and Burstein; and Wilska, Morikawa, and
`
`Partridge relied upon by Petitioner meet these requirements.
`
`
`A.
`
`THE COMBINATION OF WILSKA AND MORIKAWA LACKS
`EXTRACTED CLASSIFICATION INFORMATION THAT
`CHARACTERIZES THE DIGITAL IMAGES AND IS
`PRESCRIBABLE BY A USER OF THE TELEPHONE UNIT, AS
`REQUIRED BY CLAIM 17.
`
`Claim 17, the sole independent claim being reviewed in this proceeding,
`
`explicitly requires classification information that characterizes the digital images
`
`and is prescribable by a user of the telephone unit for allocation to the digital
`
`images.16 The combination of Wilska and Morikawa fails to suggest such
`
`14 CFMT, Inc. v. Yieldup Int’l. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003).
`
`15 In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).
`
`16 Ex. 1001 at 10:8-11; Ex. 2003 at 24:20 – 25:2 (“I believe that the classification
`
`information, which is taken into consideration when storing the digital images in
`
`the server, is the classification which has been extracted, if that was your
`
`
`
`8
`
`

`
`classification information. Accordingly, claim 17 is patentable over this
`
`combination of references.17
`
`Wilska describes a hand-held device for personal communication and data
`
`collection and processing.18 The data collection is facilitated, in one embodiment,
`
`by an integral camera, or, alternatively, by a camera included in an associated
`
`PCMCIA card.19 The device also includes a cellular mobile telephone control unit
`
`and modem, allowing for the transmission of voice and data.20 Among the
`
`applications available to a user of the hand-held device are those providing email
`
`
`question.”), and 26:3-9 (“Again, I think a person of ordinary skill in the art who
`
`also had some understanding of patents and patent claims would generally
`
`understand that the classification information that's transmitted to a server also
`
`must be prescribable by a user, for example, but is extracted and then it's taken into
`
`consideration when storing the digital images.”).
`
`17 CFMT, Inc., 349 F.3d at 1342 (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).
`
`18 Ex. 1006 at Abstract.
`
`19 Id. at 3:6-8, 22-24.
`
`20 Id. at 3:36-38, 45-46.
`
`
`
`9
`
`

`
`and fax functions.21
`
`Wilska further indicates that a “bitmap”—a type of image information used
`
`in telefax transmissions—can be transmitted as a “telefax message from the mobile
`
`organiser’s memory unit via cellular mobile unit 17 comprising a telefax
`
`modem.”22 Wilska does not, however, state or suggest that an image (bitmap or
`
`otherwise) is or can be transmitted via email or as an email attachment.23 At 7:36-
`
`40, Wilska states that “bitmap images or converted ASCII texts/graphics . . . can be
`
`later forwarded [e.g., to a recipient selected from a phone list] via telefax or
`
`electronic mail services, as described above in the description of the invention,”
`
`(emphasis added) but does not further describe the format or other arrangement of
`
`any particular email message. Moreover, the only description of bitmap
`
`transmission in the “above description of the invention” (or anywhere else in the
`
`patent) is via telefax, not email. In contrast, Wilska describes ASCII text
`
`transmission as occurring via email.24
`
`Morikawa describes an electronic mail processing system (shown in Fig 1,
`
`21 Id. at 3:57-65.
`
`22 Id. at 6:3-6; 5:59-62.
`
`23 Ex. 2008 at ¶ 23.
`
`24 See, e.g., id. at 8:5-17 (describing email as being a “longer” SMS (Short
`
`Message Service) message).
`
`
`
`10
`
`

`
`reproduced beow) in which a mail message M is stored to a mailbox MB and then
`
`later transferred to a user mail server.25 At the user mail server, a heading file HF
`
`of the mail M is stored to a message folder FM while an attachment file AF is
`
`stored in a shared folder F0.26 Once the attachment file AF has been stored in the
`
`shared folder F0, a file analysis process is run and a “folder suited for the
`
`attachment file AF is set.”27 Thereafter, the attachment file AF is transferred from
`
`the shared folder F0 to the set folder (F1, F2, F3, or a new folder).28
`
`
`
`
`25 Ex. 1007 at 6:1-7.
`
`26 Id. at 8:3-6.
`
`27 Id. at 8:7-9.
`
`28 Id. at 8:9-11.
`
`
`
`11
`
`

`
`Morikawa describes different ways that the file analysis process may
`
`establish the set folder into which the attachment file AF is transferred. If a specific
`
`folder is identified in a data directory D12 of mail M’s so-called envelope part
`
`(illustrated in Fig. 2, reproduced below), then the attachment file AF will be
`
`transferred to that folder if it exists.29 If the
`
`specified folder does not exist, but a request
`
`for creating a new folder is included in mail
`
`M’s envelope part, then the new folder will
`
`be created and the attachment file AF
`
`transferred thereto.30 If no specific folder is
`
`identified in mail M’s envelope part, then
`
`file attribute information is extracted from
`
`the attachment file AF, and used to
`
`determine which folder the attachment file is
`
`transferred to. 31 The file attribute information is made up of ASCII characters or
`
`specific extensions specified by application software at the transmitting side of the
`
`
`29 Id. at 8:18-25.
`
`30 Id. at 8:26-30.
`
`31 Id. at 2:56-60; 3:34-36; 4:1-7; 4:66 – 5:3; 8:37-52.
`
`
`
`12
`
`

`
`mail exchange.32
`
`Assuming, solely for sake of argument, that a person of ordinary skill in the
`
`art were to combine the teachings of Wilska and Morikawa, the result of that
`
`combination would be something other than the subject matter recited in claim 17.
`
`“For example, the resulting combination would include Wilska’s hand-held device
`
`in which a camera is used to collect data in the form of bitmap images that are
`
`transmitted via telefax, not email.”33
`
`Even assuming arguendo that Wilska describes transmitting bitmap images
`
`via email services, Wilska fails to describe the format or arrangement of such email
`
`messages. According to Morikawa, the email message would include an envelope
`
`part and a content part.34 The envelope part would include various control
`
`information, as identified in Fig. 2, above,35 and the content part, which consists of
`
`a heading file HF (the message) and attachment files AF, would include the
`
`information to be transmitted,36 which, according to Petitioner (but not Wilska or
`
`Morikawa), would be the bitmap.
`
`32 Id. at 7:3-6; 8:53-60.
`
`33 Ex. 2008 at ¶ 29 citing Ex. 1006 at 7:37-41, 54-57.
`
`34 Ex. 1007 at 2:39-43.
`
`35 Id.
`
`36 Id.
`
`
`
`13
`
`

`
`Petitioner’s argument in this regard is wrong. It is by no means taught or
`
`suggested that any bitmap image transmitted from the device of Wilska would be
`
`included as an attachment file in any email message.37 Indeed, Wilska makes no
`
`mention of (or provision for) such an arrangement. Moreover, in 1994, shortly
`
`before the filing of the application that gave rise to the Mattes patent, other
`
`commentators noted that Internet email “simply doesn’t accommodate
`
`attachments.”38
`
`Thus, even if the combination of Wilska and Morikawa can be read as
`
`providing for transmitting bitmaps derived from images captured by the camera of
`
`Wilska’s hand-held device using electronic mail services (which, as detailed below,
`
`it does not), the combination does not suggest including the bitmaps as attachments
`
`to those emails.39 Instead, the bitmaps could simply be included in the heading file
`
`part of the of the email message described by Morikawa; in which case none of
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`Morikawa’s description concerning the processing of attachments would apply,
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`and none of the “extracting,” or “storing” elements of claim 17 would be present.
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`Even assuming the bitmaps 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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`37 Ex. 2008 at ¶ 23.
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`38 Ex. 2004 at 110.
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`39 Ex. 2008 at ¶¶ 23-25, 28, 30.
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`14
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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.40 “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.”41
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`This file attribute information is not “classification information [ ]
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`prescribable by a user of the telephone unit for allocation to the digital images,”42
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`as required by claim 17. Instead, it is type-of-file information, classified in
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`accordance with the application software used to create the file, or ASCII code
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`representing the first character of that document.43 In either instance, rather than
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`being specified by a user of the Wilska hand-held device, the file attribute
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`information would be created by or in accordance with the application software
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`that is used to generate the file itself and this system-specified file attribute is the
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`only information that Morikawa describes as being “extracted” during processing
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`of an attachment file, AF.44
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`40 Ex. 1007 at 2:56-60; 3:34-36; 4:1-7; 4:66 – 5:3; 8:37-52.
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`41 Ex. 2008 at ¶ 32.
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`42 Ex. 1001 at 10:10-11.
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`43 Ex. 1007 at 7:3-6; 8:53-60.
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`44 Ex. 1007 at 2:56-60; 3:34-36; 4:1-7; 4:66 – 5:3; 8:37-52; Ex. 2008 at ¶ 34.
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`Petitioner’s declarant contends that Morikawa describes “extracting” and
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`analyzing “folder specification” information that may be included in the envelope
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`part of an email message,45 however no such “extraction” of the folder information
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`is actually taught. Instead, Morikawa indicates that, “the [server] may include a
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`folder selection unit for classifying the data file based upon folder specification
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`information written in the envelope part and selecting a folder for storing the data
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`file in accordance with a result of the classification.”46 While the attachment file
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`may be “extracted” from the content part of the email message,47 and the envelope
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`part may be “searched” for the folder specification information,48 it is only the file
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`attribute information that is “extracted” for purposes of selecting a folder used to
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`store the attachment file.49 Petitioner’s declarant admits that Morikawa only
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`specifies searching for folder specification information,50 and never explains how
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`or why “searching” is equivalent to “extracting.”
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`Thus, the combination of Wilska and Morikawa does not suggest
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`45 Ex. 1002 at ¶ 89, citing Ex. 1007 at 2:66-3:39.
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`46 Ex. 1007 at 3:5-9.
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`47 Id. at 3:18
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`48 Id. at 3:25-28
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`49 Id. at 3:33-38.
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`50 Ex. 1002 at ¶ 191.
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`16
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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 17.51
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`Accordingly, claim 17 is not obvious in view of the combination of Wilska and
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`Morikawa.52 Claims 18-24 depend from claim 17, thus these claims are also
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`patentable over the combination of Wilska and Morikawa, at least by virtue of their
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`dependency on claim 17.53
`
`
`
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`51 Ex. 1001 at 10:10-17; Ex. 2003 at 24:20 – 25:2 (“I believe that the classification
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`information, which is taken into consideration when storing the digital images in
`
`the server, is the classification which has been extracted, if that was your
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`question.”), and 26:3-9 (“Again, I think a person of ordinary skill in the art who
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`also had some understanding of patents and patent claims would generally
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`understand that the classification information that's transmitted to a server also
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`must be prescribable by a user, for example, but is extracted and then it's taken into
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`consideration when storing the digital images.”).
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`52 In re Wilson, 424 F.2d at 1385; CFMT, Inc., 349 F.3d at 1342; Ex. 2008 at ¶ 34.
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`53 In re Fine, 837 F.2d 1071 (Fed. Cir. 1988).
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`17
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`B. WILSKA DOES NOT TEACH OR SUGGET TRANSMITTING
`DIGITAL IMAGES AS EMAIL ATTACHMENTS.
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`According to Petitioner, “The device in Wilska [ ] discloses the ability to
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`compose and send electronic mail using its built-in keyboard and its cellular data
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`transmission capabilities . . . [and t]he Morikawa patent . . . discloses systems and
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`methods for processing electronic mail, including for storing attachments to emails
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`based on classification information.”54 On this basis, Petitioner concludes, “A
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`skilled artisan would have been motivated to combine Wilska with the email
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`processing system of Morikawa in light of Wilska’s ability to send e-mail
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`containing digital images as attachments and the capability of Morikawa to address
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`the problem of organizing those e-mail attachments.”55 At the core of this
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`contention is Petitioner’s unsupported allegation that, “The skilled artisan [ ] would
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`have understood that the e-mail functionality disclosed in Wilska involved sending
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`images captured via the camera in the Wilska device to a remote location, such as a
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`personal computer, by attaching those images to e-mail messages.”56 Because
`
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`54 Pet. at 44, citing Ex. 1006 at 8:8-18 and Fig. 7, and at 45, citing Ex. 1007 and Ex.
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`1002 at ¶¶ 87-89.
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`55 Id. at 47.
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`56 Id. at 45.
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`18
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`Wilska does not suggest any such functionality, however, Petitioner’s obviousness
`
`argument fails.
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`Petitioner’s sole basis for concluding that Wilska somehow discloses sending
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`digital images as email attachments is a single sentence by its declarant that,
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`“based on the disclosure in Wilska, the POSA would have understood that the
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`device was capable of recording a digital image using its built in digital camera,
`
`storing the capturing digital image in its internal memory, composing an e-mail
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`message using the built-in keyboard, and then transmitting the image to a remote
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`server, such as a personal computer, by attaching the image to the e-mail
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`message.”57 Notably, Petitioner’s declarant cites nothing in Wilska in support of
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`this statement and provides no additional rationale or foundation for it. The
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`preceding paragraphs in the declaration that purport to characterize the Wilska
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`disclosure say nothing about any email attachments,58 nor does the declarant
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`explain why having the capability to send emails (which functionality is ascribed
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`to the Wilska device) must necessarily include the ability to send attachments.
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`Wilska provides for sending emails composed using a keyboard or pen on a
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`digitizer pad, akin to SMS messages.59 However, this is ASCII information, not
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`57 Ex. 1002 at ¶ 86.
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`58 See Id. at ¶¶ 83-85.
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`59 Ex. 1006 at 8:8-18.
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`19
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`images. Wilska also suggests that a message could be read using the camera,60 b