UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`GOOGLE INC.,
`Petitioner
`v.
`TLI COMMUNICATIONS LLC,
`Patent Owner
`
`Case IPR2015-00283
`Patent 6,038,295
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`PATENT OWNER’S SUBMISSION RE:
`SEPTEMBER 4, 2015 ORDER (PAPER NO. 25)
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`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 SUBMISSION RE:
`SEPTEMBER 4, 2015 ORDER (PAPER NO. 25)
`
`
`
`
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`
`
`I.
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`CLAIM 18 IS SUFFICIENTLY DEFINITE UNDER 35 U.S.C.
`112 ¶ 2.
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`The Board sought additional briefing from the Patent Owner regarding “the
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`ambiguity in claim 18 of the ’295 patent identified in the [IR2015-00778]
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`Institution Decision.” Paper 25 at 2. As described below, viewed against the
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`language of the claim, the specification, and the prosecution history, claim 18
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`readily informs one of skill in the art regarding the scope of the invention such that
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`even if an antecedent basis error existed, such an error would not render claim 18
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`unclear or indefinite under the standard set forth in Nautilus, Inc. v. Biosig
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`Instruments, Inc., 134 S. Ct. 2120 (2014).
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`Claim 18 of the ’295 patent recites:
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`A method as claimed in claim 17, further comprising:
`recognizing speech spoken into the telephone unit and
`storing the compressed recognized speech.
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`A person of ordinary skill in the art would readily realize from the language of
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`claim 18 itself that the term at issue refers to the “recognized speech” in
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`compressed form. The speech recognized in the first part of claim 18 is the same
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`recognized speech being stored in the second part of the claim, with the storage
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`occurring as a compressed version of the recognized speech. The specification
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`describes recognizing speech spoken into the telephone unit and storing the
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`recognized speech in a compressed form. Ex. 1001 at 8:6-13 (“The classification
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`1
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`information OM may be prescribed by a user of the telephone unit TE, for
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`example, by simply speaking the information into the microphone LS of the
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`telephone unit TE . . . . [T]he spoken language by the user may be recognized and
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`stored in a compressed form, for example, as text.”). Thus the specification teaches
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`that the “recognized speech” that is stored is compressed, resulting in compressed
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`recognized speech.
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`Additionally, the prosecution history is consistent with the language found in
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`claim 18 as issued—that is, compression of the recognized speech is introduced in
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`claim 18. Indeed, claim 18 was filed reciting identical language (although with a
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`different dependency due to claim amendments and renumbering):
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`18. A method as claimed in claim 16, further comprising:
`recognizing speech spoken into the telephone unit and
`storing the compressed recognized speech.
`
`Ex. 2010 at 25.
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`The Supreme Court clarified the standard for definiteness in Nautilus: For a
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`claim to be valid under 35 U.S.C. § 112 ¶ 2, all that is required is that the “patent’s
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`claims, viewed in light of the specification and prosecution history, inform those
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`skilled in the art about the scope of the invention with reasonable certainty. The
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`definiteness requirement, so understood, mandates clarity, while recognizing that
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`absolute precision is unattainable.” 134 S. Ct. at 2129. Accordingly, even if claim
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`18 was found to lack sufficient antecedent basis for “the compressed recognized
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`
`
`2
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`
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`speech,” claim 18 would not be indefinite because (together with the specification
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`and prosecution history) it sufficiently informs those skilled in the art about the
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`scope of the invention with reasonable certainty. Energizer Holdings, Inc. v. Int’l
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`Trade Com'n, 435 F.3d 1366, 1370-71 (Fed. Cir. 2006) (reversing Commission’s
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`ruling that claims were invalid for indefinite based on a lack of antecedent basis
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`and stating, “When the meaning of the claim would reasonably be understood by
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`persons of ordinary skill when read in light of the specification, the claim is not
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`subject to invalidity upon departure from the protocol of ‘antecedent basis.’”). In
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`particular, given the clear directive in the specification that, “The classification
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`information OM may be prescribed by a user of the telephone unit TE, . . . [and]
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`the spoken language by the user may be recognized and stored in a compressed
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`form,” Ex. 1001 at 8:6-13, one of ordinary skill in the art would have little
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`difficulty recognizing what the “compressed recognized speech” in claim 18 refers
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`to.
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`Thus claim 18 is not indefinite.
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`Date: 9/11/2015
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`
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`
`
`by:
`
`
`ASCENDA LAW GROUP, PC
`333 W San Carlos St., Suite 200
`San Jose, CA 95110
`1 866 877 4883
`Email: tarek.fahmi@ascendalaw.com
`
`
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`3
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`Respectfully submitted,
`
`/Tarek N. Fahmi/
`
`
`
`Tarek N. Fahmi, Reg. No. 41,402
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`
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`EXHIBIT LIST
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`
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`Ex. 2001
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`In re TLI Communications LLC Patent Litigation, Case No. 1:14-md-
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`02534 (EDVA), Memorandum Opinion, Feb. 6, 2015.
`
`
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`Ex. 2002
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`Sharp J-SH04, Wikipedia (July 7, 2014, 11:15 AM), (retrieved from:
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`http://en.wikipedia.org/wiki/J-SH04).
`
`
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`Ex. 2003 Deposition of Kenneth Alan Parlulski, July 28, 2015.
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`
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`Ex. 2004 Excerpts from Tom Lichty, The Official America Online for
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`Macintosh Membership Kit & Tour Guide (2d ed. 1994), pp. 1-‐48, 75-‐
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`163, 479-‐492, 501-‐524.
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`
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`Ex. 2005
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`Facebook, Inc. et al. v. TLI Communications, LLC, IPR2015-00778,
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`Decision – Institution of Inter Partes Review, Paper 17 (P.T.A.B.
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`Aug. 28, 2015).
`
`
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`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
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`Ex. 2006
`
`Sample Application Based on a Support Platform for Distributed
`Sample Application Based on a Support Platform for Distributed
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`Mobile Computing,” Proceedings of IMC 96 Workshop on
`Mobile Computing,” Proceedings of IMC 96 Workshop on
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`Information Visualization and Mobile Computing, Zentrum für
`Information Visualization and Mobile Computing, Zentrum f1"1r
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`graphische Datenverarbeitung (Feb. 1996).
`graphische Datenverarbeitung (Feb. 1996).
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`
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`Ex. 2007 Heiko Thimm et al., “A Mail-Based Teleservice Architecture for
`Heiko Thimm et al., “A Mail-Based Teleservice Architecture for
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`EX. 2007
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`Archiving and Retrieving Dynamically Composable Multimedia
`Archiving and Retrieving Dynamically Composable Multimedia
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`Documents,” Proceedings of the Conference on Multimedia Transport
`Documents,” Proceedings of the Conference on Multimedia Transport
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`and Teleservices, MMTT94 (1994).
`and Teleservices, MMTT94 (1994).
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`
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`Ex. 2008 Declaration of Prasant Mohapatra.
`Declaration of Prasant Mohapatra.
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`Ex. 2008
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`Ex. 2009
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`Ex. 2009
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`Prasant Mohapatra curriculum vitae.
`Prasant Mohapatra curriculum vitae.
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`Ex. 2010
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`Ex. 2010
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`Excerpt from File History of Application No. 08/877,488
`Excerpt from File History of Application No. 08/877,488
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`(Application as originally filed).
`(Application as originally filed).
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`CERTIFICATE OF SERVICE
`
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`The undersigned hereby certifies that a copy of the foregoing
`
`PATENT OWNER’S SUBMISSION RE:
`
`SEPTEMBER 4, 2015 ORDER (PAPER NO. 25)
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`were served on September 11, 2015, by filing these document though the Patent
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`Review Processing System as well as delivering a copy via email directed to the
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`attorneys of record for the Petitioner at the following address:
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`David M. Krinsky
`Aaron P. Maurer
`Kevin Hardy
`Williams & Connolly LLP
`725 Twelfth Street, NW
`Washington, DC 20005
`
`dkrinsky@wc.com
`amaurer@wc.com
`khardy@wc.com
`
`
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`Date: September 11, 2015
`
`
`
`by:
`
`/Tarek N. Fahmi/
`
`
`
`Tarek N. Fahmi, Reg. No. 41,402
`
`
`ASCENDA LAW GROUP, PC
`333 W San Carlos St., Suite 200
`San Jose, CA 95110
`1 866 877 4883
`Email: tarek.fahmi@ascendalaw.com
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