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`Ex. GOOG 1013
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`EX. GOOG 1013
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`

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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`FACEBOOK, INC.
`Petitioner
`v.
`
`TLI COMMUNICATIONS LLC
`Patent Owner
`
`
`
`Case IPR2014-00566
`Patent 6,038,295
`
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 6,038,295
`
`
`
`Ex. GOOG 1013
`
`

`

`  
`
`I.  
`
`II.  
`
`
`III.  
`
`IV.  
`
`TABLE OF CONTENTS
`
`INTRODUCTION ..............................................................................................................1  
`
`PRIOR PROCEEDINGS INVOLVING THE MATTES PATENT (AND
`PETITIONER FACEBOOK) ..............................................................................................8  
`
`INVENTOR DR. HEINZ MATTES .................................................................................13  
`
`CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3) .........................................15  
`
`A.  
`
`B.  
`
`C.  
`
`D.  
`
`E.  
`
`
`
`“Digital Images” (Every Claim) ............................................................................15  
`
`“Classification Information Prescribed By A User . . . To Characterize
`Digital Images” (Independent Claim 1) “Classification Information Is
`Prescribable By A User . . . Which Characterizes The Digital Images”
`(Independent Claim 17) .........................................................................................19  
`
`“Means For Allocating Classification Information Prescribed By A User”
`(Claim 1) ................................................................................................................22  
`
`“Means For Incorporating Time Information” (Dependent Claim 6) ....................26  
`
`“A Server Including…A Memory In Which At Least The Digital Images
`Are Archived, The Archiving Taken [Sic] Into Consideration The
`Classifying Information” (claim 1)    
`“Storing The Digital Images In A Server, Said Step Of Storing Taking
`Into Consideration The Classification Information” (Claim 17) ...........................27  
`
`F.  
`
`“Data Bank System” (Claim 9) ..............................................................................30  
`
`V.  
`
`ARGUMENT .....................................................................................................................32  
`
`A.  
`
`B.  
`
`C.  
`
`Petitioner’s Proposed Combination Of Hassan And Witek Fails To
`Transmit A Digital Image That Was Initially Stored In The Claimed
`Telephone Unit, As Required By Claims 1 and 17. ...............................................32  
`
`Petitioner’s Proposed Combination Of Hassan And Witek Lacks A Server
`That Stores The Digital Image That Was Initially Stored In The Claimed
`Telephone Unit, As Required By Claims 1 and 17. ...............................................35  
`
`The Alleged Witek Server (“Computer 12”) Does Not Store The Digital
`Images Taking Into Consideration The Classification Information, As
`Required By Claims 1 And 17. ..............................................................................39  
`
`
`
`i
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`Ex. GOOG 1013
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`D.  
`
`The Alleged Witek Server (“Computer 12”) Does Not Store The Digital
`Images Taking Into Consideration Classification Information As
`Prescribed By A User, As Required By Claims 1 And 17. ....................................45  
`
`VI.  
`
`CONCLUSION ..................................................................................................................48  
`
`
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`
`ii
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`Ex. GOOG 1013
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`TABLE OF AUTHORITIES
`
`Cases
`
`Page(s)
`
`Alza Corp. v. Mylan Labs., Inc.,
`464 F.3d 1286 (Fed. Cir. 2006) ........................................................................................ 37
`
`CFMT, Inc. v. Yieldup Int’l. Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) ................................................................................. 37, 39
`
`Unigene Labs., Inc. v. Apotex, Inc.,
`655 F.3d 1352 (Fed. Cir. 2011) ........................................................................................ 37
`
`In re Wilson,
`424 F.2d 1382 (CCPA 1970) ............................................................................................ 37
`
`Other Authorities
`
`MPEP 2143.03. ........................................................................................................................ 37
`
`
`
`
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`iii
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`Ex. GOOG 1013
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`2001
`
`2002
`
`2003
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`2004
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`2005
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`2006
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`2007
`
`2008
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`2009
`
`2010
`
`2011
`
`
`
`
`
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`
`
`
`
`EXHIBIT LIST
`
`Sharp J-SH04, Wikipedia (July 7, 2014, 11:15 AM),
`http://en.wikipedia.org/wiki/J-SH04.
`
`Newton’s Telecom Dictionary, 11th Edition, 1996.
`
`Supplemental Expert Report of Dr. V. Thomas Rhyne Regarding
`the Invalidity of the Asserted Claims of U.S. Patent Nos.
`6,895,557 and 7,765,482, dated September 14, 2012 (From
`Summit 6 Litigation).
`
`April 2, 2014 Trial Transcript From the Summit 6 Litigation
`(Direct and Cross Examination of Dr. Rhyne).
`
`April 3, 2014 Trial Transcript From the Summit 6 Litigation
`(Cross Examination of Dr. Rhyne).
`
`Zvonar et al., GSM – Evolution Towards 3rd Generation Systems,
`Kluwer Academic Publishers, 1999.
`
`Expert Report of Dr. V. Thomas Rhyne Regarding the Invalidity
`of the Asserted Claims of U.S. Patent Nos. 6,895,557 and
`7,765,482, dated August 1, 2012 (From Summit 6 Litigation).
`
`Transcript of October 5, 2012 Deposition of Vernon Thomas
`Rhyne IV (From Summit 6 Litigation).
`
`Wegener et al., Utilizing On-chip Resources for Testing
`Embedded Mixed-signal Cores, Springer Science + Business
`Media, 2009.
`
`Microsoft Press Computer Dictionary, 2d Edition, 1994.
`
`Newton’s Telecom Dictionary, 20th Edition, 2004.
`
`iv
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`Ex. GOOG 1013
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`

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`I.
`
`INTRODUCTION
`U.S. Patent No. 6,038,295 (the “’295 patent” or the “Mattes patent”) claims the
`
`transmission and receipt of a digital image. See, e.g., Ex. 1001 at 8:57, 9:5, 9:11-12
`
`(claim 1); 10:5-8, 15-16 (claim 17). Specifically, a mobile phone captures a digital
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`image (e.g., a JPEG image) (id. at 5:21-28), stores that digital image, and then transmits
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`that digital image to a server. The server then stores that digital image. In addition, a
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`mobile phone user prescribes classification information associated with that digital
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`image (e.g., via the mobile phone’s keypad) and that information is transmitted as
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`digital data to the server. Id. at 6:42-58. The server uses that digital data to
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`intelligently store the digital image in a database so that it can be readily retrieved. Id.
`
`The Mattes patent was first-filed in June 1996 (in Germany as a German patent
`
`application). The Mattes patent addressed the problem of transmitting, storing and
`
`classifying the proliferation of digital images that would issue from cellular phones.1
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`Id. at 1:62-2:4.
`
`Despite Mattes’ focus on the management of digital images issuing from
`
`mobile phones, Petitioner is attempting to read facsimile technology onto the Mattes
`
`
`1 To put this 1996 date in perspective, the first two commercially available mobile
`
`phones having cameras are generally considered to be the Samsung SCH-V200
`
`(announced June 2000) and the Sharp J-SH04 (released in November 2000). Ex.
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`2001.
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`
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`1
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`Ex. GOOG 1013
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`

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`patent. Since analog facsimile technology is irrelevant to the Mattes patent, Petitioner
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`must either ignore Mattes’ teachings and claims, or mischaracterize Mattes’ teachings
`
`and claims. Here, Petitioner does both. For example, Petitioner spends dozens of
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`pages discussing facsimile machines and facsimile modems (the Mattes patent, on the
`
`other hand, never mentions a modem, let alone a facsimile machine or facsimile
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`modem). Petitioner also alleges that the Mattes patent is directed to the transmission
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`and storage of any type of image, when in fact it is directed to (and claims) the
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`transmission and storage of digital images, namely the digital image captured by the
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`cell phone.
`
`More particularly, in the references cited by Petitioner, a first facsimile machine
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`(described by Hassan) “converts” a digital image by subjecting it to a Group III
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`facsimile scan for transmission over analog telephone lines as audial tones. Ex. 1003
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`at 5:60-65 (“Modem 240 converts the image to standard facsimile format. . . .”); 5:38-
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`43 (“When a particular stored image is identified by one or more entries on keypad
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`211 in step 305, the designated image is retrieved from RAM 207 and converted by
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`microcontroller 205, in step 307, illustratively from compressed storage format to
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`group III fax format…”) Hassan then transmits that black-and-white Group III
`
`facsimile scan (not the digital image) over analog telephone lines as analog audio
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`(tonal) signals. Id. at 5:50-65; Ex. 1008 at 12 (explaining that a fax machine converts
`
`digital information to analog form for transmission over phone lines); 15 (explaining
`
`the audio nature of the communication signals). The receiving facsimile machine
`
`
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`2
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`Ex. GOOG 1013
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`(described by Witek) converts the received black-and-white Group III facsimile scan
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`into a black-and-white pict graphics file. Ex. 1004 at 2:17-18 (“[Fax receipt software
`
`p]rogram 14 is generally used to receive data from the serial computer interface and
`
`store it into a pict fax file 15.”) The pict file (far removed from the digital image
`
`captured by the mobile phone) is then stored by the purported Witek “server,” but it
`
`is stored unintelligently, without any reference to classification information (as
`
`required by every Mattes claim). Id. at 6:44-46.
`
`In marked contrast to the Hassan-Witek combination proposed by Petitioner,
`
`every claim of the Mattes patent requires a digital image (e.g., JPEG) to be captured by
`
`a digital camera in a phone and stored in the phone, and that digital image to be
`
`transmitted to a server and stored at the server intelligently, according to classification
`
`information, so that it can be easily retrieved at a later time. Ex. 1001 at 8:57, 9:3-5,
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`9:8-13 (claim 1); 10:5-10, 12-16 (claim 17); 2:55-65 (“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.”) According to Petitioner’s own cited references, a Group III facsimile
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`scan of a digital image is: (i) not a digital image, (ii) not the claimed “digital image”
`
`that was captured by the claimed “digital pick up unit” of a mobile phone, (iii) never
`
`stored in the phone, (iv) never stored in a server, and (v) never stored in a server
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`according to classification information.
`
`
`
`3
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`Ex. GOOG 1013
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`

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`Think of a fax machine as a device that can replicate a
`document or graphic by scanning the document and
`sending the scanned image to the other fax machine. . . .
`When you receive a fax document, even if you receive it via
`your PC fax modem and it is stored on your computer, you
`have a series of dots that make up a scanned image. You
`do not have text; you have a picture of text.
`. . .
`The fax modem software is responsible for converting your
`document or graphic image into a series of scanned lines
`made up of dots and spaces. In a stand-alone fax, a
`scanning head actually views the page and detects dark and
`light areas on a scanned line. In a PC fax modem, the
`software performs an equivalent function. Note: This is
`not the same as reading your text. The PC fax modem
`software takes your document regardless of its type, and
`reads it as a series of a [sic] narrow lines, called scan lines.
`Ex. 1012 at 48 (emphasis added).
`
`Indeed, Hassan readily concedes that its facsimile scan conversion of a digital
`
`image is not the digital image, but is, at best, something that retains the “character of
`
`the original image.” Ex. 1003 at 1:54-60. And Witek readily concedes that its
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`purported server stores a pict graphics file of the facsimile scan, but that it does so
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`unintelligently, without reference to any classification information. Ex. 1004 at 2:17-
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`23, 6:42-46. Hassan’s digital image is never transmitted (as required by every Mattes
`
`claim), and nothing is stored on a server intelligently, according to classification
`
`
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`4
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`Ex. GOOG 1013
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`

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`information, so that it can be easily retrieved (as also required by every Mattes claim).
`
`As a result, Petitioner has failed to demonstrate a reasonable likelihood that it would
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`prevail with respect to at least one of the claims challenged in the petition.
`
`Accordingly, no inter partes review should be instituted.
`
`Put simply, anyone interested in the storage of digital images for later retrieval
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`would not look to facsimile art. There is not and never was a need to facsimile-scan a
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`digital image prior to its storage because doing so would ruin the digital image. A
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`facsimile scan would convert a perfectly fine, color JPEG (digital image) into a black-
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`and-white, smeared, pixelated representation of the digital image, intended to be
`
`printed out (poorly) on thermal paper. Ex. 1008 at 15. The Mattes patent teaches and
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`claims the capture, transmission and storage of digital images for a reason. Any
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`company that focuses on the upload and storage of digital images (such as Facebook)
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`would likely be out of business in short order if it ceased the upload of digital images
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`and instead required its users to upload Group III facsimile scans of digital images.
`
`The Mattes patent itself is explicit that its preferred embodiment is a cellular
`
`telephone. Ex. 1001 at 6:39-41 (“Thus, the telephone unit TE [of Figure 2] is
`
`fashioned as a mobile telephone (a so called cellular phone). . . .”) The Mattes patent
`
`uses the term “mobile telephone” in its common vernacular, interchangeably with
`
`“cellular telephone.” Id. at 3:9-15 (“In other words, the telephone is a mobile
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`telephone unit, which makes it possible to immediately register the image and voice
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`information and to have this information available at any arbitrary location. It is, thus,
`
`
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`5
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`Ex. GOOG 1013
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`possible to distribute image and voice information over the mobile telephone quickly
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`and possibly to distribute it to multiplied locations.”); see also Ex. 2002 at 385
`
`(“Mobile Phone. One term for a cellular phone.”)
`
`And Petitioner agrees. Before Petitioner Facebook was accused of infringing
`
`the Mattes patent, Petitioner relied upon the Mattes patent in a prior patent litigation
`
`as a key prior art reference. Petitioner retained a different expert (Dr. Rhyne) for that
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`litigation. In that prior litigation, Dr. Rhyne testified that, “Mattes is an example of a
`
`system in which cellular telephones were used for transmitting images.” Ex. 2003 at ¶
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`69. Dr. Rhyne also testified that, unlike the patents being asserted in that litigation,
`
`and unlike the other prior art reference involved in that litigation – which were not
`
`“really about cellular or mobile phones” – the Mattes patent was really about cellular
`
`phones. Ex. 2004 at 115-116. (“Q: [] Is the Summit 6 patent really about cellular or
`
`mobile phones? A: . . .[I]t never says anything about phones at all. . . . Q: Have you
`
`found any other prior art [other than the Point2 reference which also was not directed
`
`to cellular phones] that is specific to mobile phones? A: Yes. I have. Q: What is
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`that? A: That’s the Mattes patent that deals specifically with a phone and
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`photographic preprocessing on that phone.”)
`
`
`
`6
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`Ex. GOOG 1013
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`Dr. Rhyne even testified that the phone depicted in Mattes Figure 2 was an “old brick
`
`cell phone[].” Ex. 2005 at 57.2
`
`Moreover, by 1996, Europe had already rolled out its second-generation, all-
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`digital, “GSM” cellular network that supported the transmission of digital data (in
`
`addition to voice).3 See, e.g., Ex. 2002 at 282 (“GSM has gained widespread acceptance
`
`in several parts of the world, most notably Europe. . . .”); Ex. 2006 at 4-5. Siemens
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`AG, the original assignee of the Mattes patent, was an early and large player in the
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`GSM industry, including the manufacture of GSM mobile telephones and equipment.
`
`Id. at 5.
`
`
`2 Even if the Mattes patent was considered to be applicable to a non-cellular
`
`telephone, it would nevertheless be applicable to a digital telephone capable of
`
`transmitting digital information, as the specification and claims state. By 1996, such
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`“DECT” telephones were already popular in Europe, and they were capable of
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`transmitting digital data. See, e.g., Ex. 2006 at 283-284, 304.
`
`3
`
`A Siemens model S4 GSM Digital Phone, circa December
`
`1995, and capable of transmitting digital data and digital
`
`voice, is depicted here. (See
`
`http://www.imei.info/phonedatabase/3295-siemens-s4/)
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`
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`7
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`Ex. GOOG 1013
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`
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`Thus, by 1996, the transmission of digital data, digital voice and SMS texting, to
`
`and from digital cellular telephones, was fully operational, well-published and well-
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`known to any person of ordinary skill in the art. No person of ordinary skill the art
`
`considering the transmission of digital images would look to irrelevant facsimile
`
`technology, facsimile machines, facsimile modems or facsimile scans of digital images,
`
`and no person of ordinary skill in the art would be motivated to combine two (or
`
`more) irrelevant facsimile references. Facebook itself confirmed as much in the prior
`
`litigation.
`
`II.
`
`INVOLVING THE MATTES
`PRIOR PROCEEDINGS
`PATENT (AND PETITIONER FACEBOOK)
`The present proceeding is not the first time that Petitioner Facebook has had
`
`occasion to comment on the Mattes patent. In connection with a recent litigation
`
`involving Summit 6, LLC (“Summit 6 litigation”), Facebook and its expert relied
`
`heavily upon the Mattes patent and touted its teachings, identifying Mattes as the key
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`reference in the field of cellular phone transmission of digital images. As Patent
`
`Owner would eventually find out (the Petition fails to mention the Summit 6
`
`litigation), Petitioner took a very different view of the Mattes patent in the Summit 6
`
`litigation than it does today. Petitioner should not now be permitted to distance itself
`
`from its prior commentary regarding the Mattes patent simply because it finds it
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`convenient to do so.
`
`
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`8
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`Ex. GOOG 1013
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`

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`On February 23, 2011, Summit 6 filed a patent infringement suit against
`
`Petitioner Facebook, Samsung, RIM, Multiply and Photobucket. (Summit 6 LLC v.
`
`Research in Motion Corp., et al., Civil Action No. 3:11-cv-00367-O, Northern District
`
`of Texas (Dallas), Judge Reed C. O’Connor presiding.) Summit 6 asserted two
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`patents related to the texting and uploading of digital images: U.S. Patent Nos.
`
`7,765,482 (“Web-Based Media Submission Tool”) and 6,895,557 (“Web-Based Media
`
`Submission Tool”). Petitioner’s counsel, Heidi Keefe of Cooley LLP, represented
`
`Facebook in the Summit 6 litigation for about the first half of the proceedings.
`
`Kirkland & Ellis represented Facebook for about the last half of the proceedings.
`
`During the Summit 6 litigation, Facebook retained Dr. Thomas Rhyne as its
`
`invalidity expert. Ex. 2004 at 145 (“I was retained originally by the attorneys
`
`representing Facebook and I dealt with them much more so than I did -- I also
`
`represented Samsung . . . .”) After Facebook retained Dr. Rhyne, co-defendant
`
`Samsung also retained Dr. Rhyne and thus Facebook and Samsung collectively shared
`
`Dr. Rhyne as their joint, invalidity expert in the Summit 6 litigation. See, e.g., id.; Ex.
`
`2007 at ¶¶ 2-4 (“I have been retained as an independent technical expert by
`
`Defendants Facebook and Samsung in this litigation. . . . This expert report describes
`
`the testimony that I am likely to present regarding the technical subject matter
`
`described in the [Summit 6] ’557 and ’482 patents. . . . I have prepared this expert
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`report based on my independent evaluation and analysis.”) Dr. Rhyne communicated
`
`primarily with Facebook’s attorneys and he sent his invoices to Facebook’s attorneys.
`
`
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`9
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`Ex. GOOG 1013
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`Ex. 2004 at 145-146 (“I sent the bills, my invoices to the attorneys, what was it --
`
`whoever the people that were representing Facebook --.”)
`
`During the Summit 6 litigation, Dr. Rhyne prepared and served four invalidity
`
`expert reports (an original report and three supplemental reports), he was deposed by
`
`Summit 6’s counsel, and he testified at trial. Facebook identified the four Rhyne
`
`expert reports as exhibits that it intended to use at trial, which was scheduled to begin
`
`on February 19, 2013. Less than two weeks prior to that date, however, Facebook
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`settled with Summit 6. Samsung, the other defendant that relied on Dr. Rhyne’s
`
`testimony (that is, the same four expert reports and deposition testimony that had
`
`been produced while Facebook was in the case), did not settle and proceeded to trial
`
`on March 29, 2013. Dr. Rhyne testified at the Samsung trial based on the expert
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`reports that he had prepared for Facebook. See Fed. R. Civ. P. 26(a)(2)(B)(i) (“[The
`
`expert’s report must contain:] a complete statement of all opinions the witness will
`
`express and the basis and reasons for them.”) Dr. Rhyne relied on two prior art
`
`references in an attempt to invalidate Summit 6’s patent: the Mattes patent and a
`
`reference called “Point2”. The Point2 reference apparently involved inequitable
`
`conduct allegations. As a result, Facebook and Samsung took the opportunity to label
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`as confidential virtually everything in the case having to do with invalidity. Thus, the
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`Summit 6 invalidity case, including Facebook’s reliance on the Mattes patent, virtually
`
`disappeared from the public record.
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`Ex. GOOG 1013
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`For its present Petition, however, Facebook presents a new declarant, Dr.
`
`Beckmann, and makes no mention of the Summit 6 litigation or of any of the glowing
`
`remarks concerning the Mattes patent made by its prior expert, Dr. Rhyne.4
`
`The belatedly-produced Summit 6 information reveals that, before Facebook
`
`was asked to pay a license fee for its unauthorized use of the Mattes inventions,
`
`before it petitioned for inter partes review, and before it replaced Dr. Rhyne with Dr.
`
`Beckmann, Facebook described and characterized the Mattes patent in great detail.
`
`For example, Facebook and its original expert stated:
`
`Using cellular telephones for image transmission, and even
`processing those images before transmission, was also known before
`the alleged invention of the [Summit 6] ’557 and ’482 patents. Mattes
`is an example of a system in which cellular telephones were used for
`transmitting images. (See, for example, Mattes 1:31-35; Opening
`
`
`4 It was only after Patent Owner independently learned of the Summit 6 litigation
`
`(through certain filings made in Reexamination No. 90/012,987) and was forced to
`
`seek the Board’s assistance in having Facebook provide materials from that matter
`
`that the full extent of these remarks became known. Even then, it was not until the
`
`evening of June 27, 2014, that Petitioner produced materials from the Summit 6
`
`litigation (including heavily redacted expert reports and deposition testimony), while
`
`continuing to allege that it had no obligation to do so. IPR2014-00566, Paper 12
`
`(June 27, 2014).
`
`
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`11
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`Ex. GOOG 1013
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`

`

`Expert Report ¶¶ 106-109.) Mattes discloses a telephone system that
`‘makes it possible to digitize, compress and transmit individual still
`pictures, such as photographs’ via the telephone. (See, for example,
`Mattes 1:35-41; Opening Expert Report ¶ 107.)
`Ex. 2003 at ¶ 69.
`
`Mattes describes a ‘communications system for recording and
`administering’ data using a ‘telephone unit’ consisting of a ‘digital
`image pick up unit,’ a ‘telephone memory,’ and a ‘processor.’ (Mattes
`2:5-10). The Mattes digital image pick up unit, which is essentially a
`digital camera, captures digital images and stores them in the
`telephone memory. (Mattes 6:1-5). Using the processor, the
`telephone unit then reduces the size of the stored images using the
`JPEG image compression algorithm. (Mattes 6:5-9). The compressed
`images are subsequently transmitted from the telephone unit to a
`server. (Mattes 7:61-64). After receiving the compressed image,
`Mattes discloses that the server could subsequently make the
`uploaded image available on a web page. (Mattes 8:28-35). . . . In
`addition to pre-processing the captured photos before uploading
`them, the Mattes telephone unit collects and transmits ‘classification
`information’ associated with each uploaded photo. (Mattes 7:6-19).
`That classification information helps the server organize and later
`quickly retrieve uploaded photos. (Mattes 3:52-65; 8:41-45).
`Ex. 2007 at ¶¶ 107, 109.
`
`The [Mattes] patent describes a communication system for recording
`and administering data using a telephone unit that consists of at least
`what they call a digital image pickup unit, you could think of that as a
`digital camera in a sense, telephone memory and processor in this
`
`
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`12
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`Ex. GOOG 1013
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`

`telephone unit. The image pickup unit would capture a digital image
`and then store them in the telephone memory, and as disclosed in
`Mattes, the processor in the telephone unit would then reduce the
`size of the stored image by applying the JPEG image compression
`algorithm and subsequently transmitting the images in JPEG
`compressed form from the telephone unit to a server.
`Ex. 2008 at 170-171.
`
`In the Summit 6 litigation, Facebook and its original expert recognized and
`
`proffered testimony (repeatedly) that Mattes is directed to cell phones that take and
`
`transmit digital images to a server, which then stores those digital images using
`
`classification information so that the images can be readily retrieved. This is
`
`inconsistent with its position today, wherein Facebook alleges that Mattes applies to
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`the transmission and storage of any image, whether or not digital and whether or not
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`it is the image that was captured and stored on the telephone unit. As explained
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`further below, throughout this response, there are many additional examples where
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`Facebook’s positions and testimony from the Summit 6 litigation are inconsistent with
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`the positions and statements made in its Petition.
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`III.
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`INVENTOR DR. HEINZ MATTES
`Facebook’s original expert Dr. Rhyne was asked who invented the Mattes
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`patent. Dr. Rhyne did not reply that it was a combination of facsimile companies;
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`instead, he testified: “a gentlemen from Munich Germany who has filed an American
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`patent named [Dr. Heinz] Mattes. He works for [Siemens] in Munich and he filed the
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`application for his patent on June the 17th of 1997 in the United States.” Ex. 2004 at
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`116. That application claimed priority to a German patent application that was filed
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`on June 17, 1996.
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`Regarding the inventor, Dr. Mattes received in 1973 a Bachelor of Science
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`Degree in Electrical Engineering from the University of Applied Sciences Wiesbaden,
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`Rüsselsheim, Germany. In 1979 and 1984, he received a Graduate Degree and a
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`Doctorate in Electrical Engineering, respectively, from the Darmstadt University of
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`Technology in Darmstadt, Germany. Ex. 2009 at 307.
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`In 1984, Siemens AG of Munich, Germany hired Dr. Mattes to design
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`semiconductor chips. Id. In 1989, Dr. Mattes became a Research Scientist at Siemens
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`AG and was responsible for software development for microelectronic products. In
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`1993, Dr. Mattes was a Visiting Researcher at Berkeley University in California, where
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`he researched complex transmission line networks. Id. Dr. Mattes returned to
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`Siemens AG in late 1993 and became a Principle Research Scientist where he
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`researched image compression and image telecommunication. Id. It was while he was
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`working for Siemens in this capacity that Dr. Mattes invented the systems and
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`methods claimed in the Mattes patent. The Mattes patent was originally assigned to
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`Siemens AG.
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`In 1996, Dr. Mattes submitted his new idea to a Siemens idea competition. Dr.
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`Mattes’ invention was among the winners of the competition, leading to Siemens
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`initiating a project to develop a cellular phone with an integrated camera.
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`IV. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3)
`A.
`“DIGITAL IMAGES” (EVERY CLAIM)
`
`Mattes’ independent claim 17 states:
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`17. 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,
`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.
`Ex. 1001 at 10:1-17 (emphasis added).
`
`Mattes’ independent claim 1 similarly states:
`
`1. A communication system for recording and
`administering digital images, comprising:
`at least one telephone unit including:
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`
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`15
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`

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`a telephone portion for making telephone call,
`a digital pick up unit for recording images,
`a memory for storing digital images recorded by
`the digital image pick up unit,
`means for allocating classification information
`prescribed by a user of said at least one telephone unit
`to characterize digital images obtained by said
`digital pick up unit,
`a processor for processing the digital images
`recorded by the digital image pick up unit;
`a server including the following components:
`a receiving unit for receiving data sent from said at
`least one telephone unit,
`an analysis unit for analyzing the data received by the
`receiving unit from the telephone unit,
`the data including classification information to
`characterize the digital images,
`a memory in which at least the digital images are
`archived, the archiving taken into consideration the
`classifying information; and
`a transmission system coupled to said at least one
`telephone unit and to the said server to provide for
`transmission of data from said at least one telephone unit
`and to the said server, the data including at least the
`digital images recorded by the digital image pick up
`unit and classification information.
`Id. at 8:52-9:13 (emphasis added).
`
`
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`16
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`Ex. GOOG 1013
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`

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`The Mattes patent claims expressly recite that (i) a digital image is created at the
`
`mobile telephone, (ii) that digital image is stored at the mobile telephone, (iii) that
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`digital image is transmitted to a server, and (iv) the server stores that digital image,
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`intelligently, according to classification information. In a preferred embodiment, the
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`digital images may be JPEGs. Id. at 5:24-29, 6:5-6.
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`In the Summit 6 litigation, Petitioner plainly understood Mattes’ concept of
`
`capturing and transferring digital images:
`
`Mattes is an example of a system in which cellular
`telephones were used for transmitting images. (See, for
`example, Mattes 1:31-35; Opening Expert Report ¶¶ 106-
`109.) Mattes discloses a telephone system that ‘makes it
`possible to digitize, compress and transmit individual still
`pictures, such as photographs’ via the telephone. (See, for
`example, Mattes 1:35-41; Opening Expert Report ¶ 107.)
`Ex. 2003 at ¶ 69.
`
`Mattes meets this [Summit 6 patent] limitation [of
`compressing digital content] because it discloses a
`telephone unit that uses the JPEG standard to compress
`image content on a client before sending the image to a
`server. See, e.g.,[Mattes,] 5:20-29, 6:2-8, Fig. 2.
`Ex. 2007 at Ex. D, p. 18.
`
`The Mattes digital image pick up unit, which is essentially a
`digital camera, captures digital images and stores them in
`the telephone memory. (Mattes 6:1-5). Using the
`
`
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`17
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`Ex. GOOG 1013
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`

`

`processor, the telephone unit then reduces the size of the
`stored images using the JPEG image compression
`algorithm. (Mattes 6:5-9). The compressed images are
`subsequently transmitted from the telephone unit to a
`server. (Mattes 7:61-64). After receiving the compre