Filed on behalf of Google Inc.
`
`By: Andrew V. Trask
`
`Williams & Connolly LLP
`
`725 Twelfth Street, NW
`
`Washington, DC 20005
`
`Telephone: 202-434-5098
`
`Facsimile: 202-434-5029
`
`Email:
`atrask@wc.com
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`GOOGLE INC.
`Petitioner
`
`v.
`
`TLI COMMUNICATIONS LLC
`Patent Owner
`__________________
`
`Patent No. 6,038,295
`__________________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,038,295 (CLAIMS 17-24)
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`

`
`TABLE OF CONTENTS
`
`
`
`I.
`II.
`
`
`Introduction ...................................................................................................... 1
`Requirements of Petition and Mandatory Notices .......................................... 1
`A. Grounds for Standing (37 C.F.R. § 42.104(a)) .................................... 1
`B.
`Real Party-in-Interest (37 C.F.R. § 42.8(b)(1)) ..................................... 1
`C.
`Related Matters (37 C.F.R. § 42.8(b)(2)) .............................................. 1
`D.
`Counsel and Service Information (37 C.F.R. § 42.8(b)(3)-(4)) ............ 2
`E.
`Power of Attorney (37 C.F.R. § 42.10(b)) ............................................ 2
`Inter Partes Review Fee (37 C.F.R. § 42.103) ..................................... 3
`F.
`Identification of Challenge and Relief Requested ........................................... 3
`III.
`IV. Background ...................................................................................................... 5
`A.
`The State of the Art ............................................................................... 5
`B.
`The ’295 Patent ..................................................................................... 7
`C.
`Summary of the Prosecution of the ’295 Patent ................................. 11
`Summary of the Facebook Inter Partes Review Proceeding .............. 15
`D.
`Construction of the Challenged Claims ......................................................... 16
`V.
`VI. Detailed Explanation of Grounds for Invalidity ............................................ 17
`A. Ground 1: Claims 17 and 19-24 Are Obvious over Satoh in
`View of Wolverton .............................................................................. 18
`Satoh/Wolverton Renders Independent Claim 17 Obvious ...... 18
`1.
`Satoh/Wolverton Addresses the Board’s Prior Concerns ......... 29
`2.
`Satoh/Wolverton Renders Dependent Claims 19 Through
`3.
`24 Obvious ................................................................................ 31
`Satoh/Wolverton Claim Charts ................................................. 33
`4.
`Ground 2: Claim 18 Is Obvious over Satoh in View of
`Wolverton and in Further View of Bernardi ....................................... 41
`
`B.
`
`
`
`i
`
`

`
`
`
`C.
`
`Ground 3: Claims 17, 19-21, 23, and 24 Are Obvious over
`Wilska in View of Morikawa .............................................................. 44
`D. Ground 4: Claim 18 Is Obvious over Wilska in View of
`Morikawa and in Further View of Burstein ........................................ 54
`Ground 5: Claim 22 Is Obvious over Wilska in View of
`Morikawa and in Further View of Partridge ...................................... 57
`VII. Conclusion ..................................................................................................... 60
`
`E.
`
`
`
`ii
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`

`
`
`
`TABLE OF CASES
`
`In re TLI Commc’ns LLC Patent Litig., MDL No. 2534, D.I. 2534
`(J.P.M.L. June 12, 2014) ................................................................................. 2
`
`In re Trans Tex. Holdings Corp., 498 F.3d 1290 (Fed. Cir. 2007) .......................... 17
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ......................................... 17
`
`TLI Communications LLC v. AV Automotive, L.L.C. et al., Case No.
`1:14-cv-00139-TSE-JFA (E.D. Va. filed Feb. 10, 2014) ................................ 1
`
`
`
`
`
`iii
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`

`
`
`
`
`
`EXHIBIT LIST
`
`EXHIBIT LIST
`
`Ex. 1001 U.S. Patent No. 6,038,295, Apparatus and Method for Recording,
`U.S. Patent No. 6,038,295, Apparatus andMethodfor Recording,
`Communicating and Administering Digital Images (“the ’295
`Communicating and Administering Digital Images (“the ’295
`patent”)
`patent”)
`Ex. 1002 Declaration of Kenneth A. Parulski (“Parulski Decl.”)
`Ex. 1002 Declaration of Kenneth A. Parulski (“Parulski Decl.”)
`Ex. 1003 U.S. Patent No. 5,717,496, Electronic Imaging Apparatus (“Satoh”)
`EX. 1003
`U.S. Patent No. 5,717,496, Electronic Imaging Apparatus (“Satoh”)
`Ex. 1004 Wolverton, V., RUNNING MS-DOS VERSION 6.2 (Microsoft Press,
`Ex. 1004 Wolverton, V., RUNNING MS-DOS VERSION 6.2 (Microsoft Press,
`6th ed. 1994) (“Wolverton”)
`6th ed. 1994) (“Wolverton”)
`Ex. 1005 U.S. Patent No. 5,546,145, Camera On-Board Voice Recognition
`Ex. 1005 U.S. Patent No. 5,546,145, Camera 0n—Board Voice Recognition
`(“Bernardi”)
`(“Bernardi”)
`Ex. 1006 U.S. Patent No. 6,427,078, Device for Personal Communications,
`EX. 1006 U.S. Patent No. 6,427,078, Device for Personal Communications,
`Data Collection and Data Processing, and a Circuit Card
`Data Collection and Data Processing, and a Circuit Card
`(“Wilska”)
`(“Wilska”)
`Ex. 1007 U.S. Patent No. 5,613,108, Electronic Mail Processing System and
`U.S. Patent No. 5,613,108, Electronic Mail Processing System and
`Electronic Mail Processing Method (“Morikawa”)
`Electronic Mail Processing Method (“lllorikawa”)
`Ex. 1008 Burstein, A., et al., Using Speech Recognition in a Personal
`Burstein, A., et al., Using Speech Recognition in a Personal
`Communications System, IEEE SuperComm International
`Communications System, IEEE SuperComm International
`Conference on Communications 1717-21 (June 1992) (“Burstein”)
`Conference on Communications 1717-21 (June 1992) (“Burstein”)
`Ex. 1009 U.S. Statutory Invention Registration No. H1714, Automatic Still
`Ex. 1009 U.S. Statutory Invention Registration No. H1714, Automatic Still
`Image Transmission Upon Call Connection (“Partridge”)
`Image Transmission Upon Call Connection (“Partridge”)
`Ex. 1010 USER’S MANUAL, KODAK PROFESSIONAL DIGITAL CAMERA SYSTEM
`Ex. 1010
`UsER’s MANUAL, KODAK PROFESSIONAL DIGITAL CAMERA SYSTEM
`(Eastman Kodak Company 1991-1992)
`(Eastman Kodak Company 1991-1992)
`Ex. 1011 Andy Williams, Electronic Picture Desks, IFRA Special Report 2.9
`Andy Williams, Electronic Picture Desks, IFRA Special Report 2.9
`(1992)
`(1992)
`Ex. 1012 U.S. Patent No. 6,038,295 Applicant Response (Sept. 8, 1998)
`Ex. 1012 U.S. Patent No. 6,038,295 Applicant Response (Sept. 8, 1998)
`Ex. 1013 Patent Owner’s Preliminary Response, Facebook, Inc. v. TLI
`Patent Owner’s Preliminary Response, Facebook, Inc. v. TLI
`Commc’ns LLC, IPR2014-00566 (PTAB July 9, 2014)
`Commc ’ns LLC, IPR2014-00566 (PTAB July 9, 2014)
`Ex. 1014 U.S. Patent No. 6,038,295 Office Action (June 5, 1998)
`U.S. Patent No. 6,038,295 Office Action (June 5, 1998)
`Ex. 1015 U.S. Patent No. 6,038,295 Applicant Response (Mar. 1, 1999)
`U.S. Patent No. 6,038,295 Applicant Response (Mar. 1, 1999)
`
`Ex. 1011
`
`Ex. 1013
`
`EX. 1014
`
`EX. 1015
`
`iv
`
`iv
`
`

`
`
`
`
`
`Ex. 1016 U.S. Patent No. 6,038,295 Applicant Response (Aug. 26, 1999)
`Ex. 1017 U.S. Patent No. 6,038,295 Notice of Allowability, Examiner’s
`Amendment, and Statement of Reasons for Allowance (Oct. 18,
`1999)
`Ex. 1018 Petition for Inter Partes Review, Facebook, Inc. v. TLI Commc’ns
`LLC, IPR2014-00566 (PTAB Apr. 1, 2014)
`Ex. 1019 Decision, Facebook, Inc. v. TLI Commc’ns LLC, IPR2014-00566
`(PTAB Sept. 15, 2014)
`Ex. 1020 U.S. Patent No. 4,131,919, Electronic Still Camera
`Ex. 1021 Kihara, N., et al., The Electronic Still Camera A New Concept in
`Photography, CE-28(3) IEEE Transactions on Consumer
`Electronics, 325-331 (1982)
`Ex. 1022 Canon, History Hall – Canon Camera Story 1976-1986, available
`at http://www.canon.com/camera-
`museum/history/canon_story/1976_1986/1976_1986.html (last
`visited Sept. 26, 2014)
`Ex. 1023 Kriss, M.. et al., Critical technologies for electronic still imaging
`systems, SPIE Vo. 1082 Applications of Electronic Imaging 157-
`184 (1989)
`IPTC – NAA, Information Interchange Model and Digital
`Newsphoto Parameter Record (Comité International des
`Télécommunications de Presse, Version 2, Apr. 14, 1993)
`Ex. 1025 Electronic Still Camera with Cellular Phone Function, Japanese
`Patent App. Pub. No. H06-133081
`Information Transmission Device, Japanese Patent App. Pub. No.
`Hei 6[1994]-268582
`Ex. 1027 U.S. Patent No. 5,666,159, Electronic Camera System with
`Programmable Transmission Capability (“Parulski ‘159”)
`Ex. 1028 Press Release, Toshiba, Toshiba’s New Digital Still Camera Is
`World’s First With Modem, (Aug. 7, 1995), available at
`http://www.toshiba.co.jp/about/press/1995_08/pr0701.htm (last
`visited Sept. 26, 2014)
`
`Ex. 1024
`
`Ex. 1026
`
`v
`
`

`
`
`
`
`
`Ex. 1029 Bodil Jönsson & Arne Svensk, Isaac – A Personal Digital Assistant
`Bodil Jonsson & Arne Svensk, Isaac — A Personal Digital Assistant
`for the Differently Abled, in The European Context for Assistive
`for the Diflerently Abled, in The European Context for Assistive
`Technology: Proceedings of the 2nd Tide Congress 356-361 (I.
`Technology: Proceedings of the 2nd Tide Congress 356-361 (I.
`Placencia Porrero & R. Puig de la Bellacasa eds., 1995)
`Placencia Porrero & R. Puig de la Bellacasa eds., 1995)
`Ex. 1030 U.S. Patent No. 5,796,428, Electronic Photography System
`EX. 1030 U.S. Patent No. 5,796,428, Electronic Photography System
`(“Hitachi”)
`(“Hitachi”)
`Ex. 1031 U.S. Patent No. 5,633,678, Electronic Still Camera for Capturing
`EX. 1031
`U.S. Patent No. 5,633,678, Electronic Still Camerafor Capturing
`and Categorizing Images (“Parulski ’678”)
`and Categorizing Images (“Parulski ’678”)
`Ex. 1032 U.S. Patent No. 5,594,736, Image-Information Storage
`Ex. 1032 U.S. Patent No. 5,594,736, Image—Information Storage
`Regenerating Device (“Tatsumi”)
`Regenerating Device (“Tatsumi”)
`Ex. 1033 The Canon Still Video System is One of a Kind, Journal of The
`Ex. 1033
`The Canon Still Video System is One of a Kind, Journal of The
`Electronics Industry, 58-59 (Aug. 1986)
`Electronics Industry, 58-59 (Aug. 1986)
`
`
`
`vi
`
`Vi
`
`

`
`Petition for Inter Partes Review
`U.S. Patent No. 6,038,295
`
`
`Introduction
`Google Inc. (“Google”) respectfully requests inter partes review (“IPR”) of
`
`I.
`
`claims 17 through 24 of U.S. Patent 6,038,295 (“the ’295 patent”), Exhibit 1001,
`
`under 35 U.S.C. §§ 311-319 and 37 C.F.R. §§ 42.1-.80 & 42.100-.123. Prior art
`
`not considered by the Examiner demonstrates that the methods claimed in the ’295
`
`patent were widely known and used as of the purported priority date and that,
`
`accordingly, claims 17-24 should not have issued. Petitioner therefore respectfully
`
`requests that claims 17-24 of the ’295 patent be found unpatentable and canceled.
`
`II. Requirements of Petition and Mandatory Notices
`A. Grounds for Standing (37 C.F.R. § 42.104(a))
`Google certifies that the ’295 patent is available for IPR, and that Google is
`
`not barred or estopped from requesting this IPR on the grounds identified herein.
`
`B. Real Party-in-Interest (37 C.F.R. § 42.8(b)(1))
`The Petitioner, Google, is the real party-in-interest.
`
`C. Related Matters (37 C.F.R. § 42.8(b)(2))
`The ’295 patent is asserted against Google in TLI Communications LLC v.
`
`AV Automotive, L.L.C. et al., Case No. 1:14-cv-00139-TSE-JFA (E.D. Va. filed
`
`Feb. 10, 2014). The ’295 patent is also asserted in seven other pending actions in
`
`the U.S. District Court for the Eastern District of Virginia, as well as ten pending
`
`actions in the U.S. District Court for the District of Delaware. On June 12, 2014,
`
`
`
`1
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`

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`Petition for Inter Partes Review
`U.S. Patent No. 6,038,295
`
`
`those actions were consolidated for coordinated pretrial proceedings by the U.S.
`
`Judicial Panel on Multidistrict Litigation; the consolidated cases are pending in the
`
`U.S. District Court for the Eastern District of Virginia. In re TLI Commc’ns LLC
`
`Patent Litig., MDL No. 2534, D.I. 2534 (J.P.M.L. June 12, 2014).
`
`On April 1, 2014, Facebook, Inc. (a defendant in one of the consolidated
`
`cases) filed a petition for IPR challenging certain claims of the ’295 patent based
`
`on prior art pertaining to facsimile (fax) machines. See Facebook, Inc. v. TLI
`
`Commc’ns, LLC, IPR2014-00566 (P.T.A.B. Sept. 15, 2014). The Patent Owner
`
`filed a response to Facebook’s petition on July 9, 2014. On September 15, 2014,
`
`the Patent Trial and Appeal Board (“Board”) denied Facebook’s petition.
`
`D. Counsel and Service Information (37 C.F.R. § 42.8(b)(3)-(4))
`The designations of counsel and addresses for service are:
`
`LEAD COUNSEL
`Andrew V. Trask (Reg. No. 59,239)
`Williams & Connolly LLP
`725 Twelfth Street, N.W.
`Washington, DC 20005
`Phone: 202-434-5098
`Fax: 202-434-5029
`atrask@wc.com
`
`BACKUP COUNSEL
`David M. Krinsky (Reg. No. 72,339)
`Williams & Connolly LLP
`725 Twelfth Street, N.W.
`Washington, DC 20005
`Phone: 202-434-5338
`Fax: 202-434-5029
`dkrinsky@wc.com
`
`
`Petitioner consents to service at atrask@wc.com and GoogleTLIservice@wc.com.
`
`Power of Attorney (37 C.F.R. § 42.10(b))
`
`E.
`Filed herewith is a Power of Attorney under 37 C.F.R. § 42.10(b).
`
`
`
`2
`
`

`
`
`
`
`
`Petition for Inter Partes Review
`U.S. Patent No. 6,038,295
`
`Inter Partes Review Fee (37 C.F.R. § 42.103)
`
`F.
`This Petition requests review of eight claims of the ’295 patent; accordingly,
`
`pursuant to 37 C.F.R. § 42.15(a), a payment of $23,000 is submitted herewith. The
`
`Director is authorized to charge any fees required of Petitioner for purposes of this
`
`IPR to Deposit Account No. 506403.
`
`III.
`
`Identification of Challenge and Relief Requested
`
`Petitioner requests that the Board initiate IPR of claims 17 through 24 of the
`
`’295 patent and find those claims unpatentable. This Petition should be granted,
`
`and trial instituted, because there is a reasonable likelihood that Petitioner will
`
`prevail with respect to at least one challenged claim. 35 U.S.C. § 314(a).
`
`Petitioner’s challenge is based on the following references:
`
`• Ex. 1003: U.S. Patent No. 5,717,496 to Satoh et al., Electronic Imaging
`
`Apparatus (filed Sept. 14, 1994) (“Satoh”)
`
`• Ex. 1004: Van Wolverton, RUNNING MS-DOS VERSION 6.2 (Microsoft
`
`Press, 6th ed. 1994) (“Wolverton”)
`
`• Ex. 1005: U.S. Patent No. 5,546,145 to Bernardi et al., Camera On-Board
`
`Voice Recognition (filed Aug. 30, 1994) (“Bernardi”)
`
`• Ex. 1006: U.S. Patent No. 6,427,078 to Wilska et al., Device for Personal
`
`Communications, Data Collection and Data Processing, and a Circuit Card
`
`(priority application filed May 18, 1995) (“Wilska”)
`
`
`
`3
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`Petition for Inter Partes Review
`U.S. Patent No. 6,038,295
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`• Ex. 1007: U.S. Patent No. 5,613,108 to Morikawa, Electronic Mail
`
`Processing System and Electronic Mail Processing Method (filed Feb. 18,
`
`1994) (“Morikawa”)
`
`• Ex. 1008: Andrew Burstein et al., Using Speech Recognition in a Personal
`
`Communications System, IEEE SuperComm International Conference on
`
`Communications 1717-21 (June 1992) (“Burstein”)
`
`• Ex. 1009: U.S. Statutory Invention Registration No. H1714 to Partridge,
`
`Automatic Still Image Transmission Upon Call Connection (filed May 3,
`
`1995) (“Partridge”)
`
`Each of these references qualifies as prior art to the ’295 patent under 35 U.S.C.
`
`§ 102.1 Satoh, Bernardi, Wilska, and Morikawa are prior art under at least
`
`§ 102(e). In view of § 157(c), Partridge is also prior art under at least § 102(e).
`
`Wolverton and Burstein are prior art under at least § 102(b).
`
`Petitioner asserts the following specific grounds of rejection:
`
`Ground Claims
`
`1
`
`17, 19-24
`
`Basis for Challenge
`Unpatentable over Satoh in view of Wolverton
`under 35 U.S.C. § 103(a)
`
`
`1
`The statutory provisions relevant to this Petition are the pre-America Invents
`
`Act versions of 35 U.S.C. §§ 102 and 103. See Pub. L. 112-19 § 3(n)(1).
`
`
`
`4
`
`

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`
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`Petition for Inter Partes Review
`U.S. Patent No. 6,038,295
`
`
`
`2
`
`3
`
`4
`
`5
`
`18
`
`17, 19-21,
`23, 24
`
`18
`
`22
`
`Unpatentable over Satoh in view of Wolverton and
`Bernardi under 35 U.S.C. § 103(a)
`Unpatentable over Wilska in view of Morikawa
`under 35 U.S.C. § 103(a)
`Unpatentable over Wilska in view of Morikawa and
`Burstein under 35 U.S.C. § 103(a)
`Unpatentable over Wilska in view of Morikawa and
`Partridge under 35 U.S.C. § 103(a)
`
`
`An explanation of how claims 17 through 24 of the ’295 patent are
`
`unpatentable based on these grounds, including the identification of where each
`
`element of the claim is found in the prior art, is provided in Part VI, infra.
`
`In support of these grounds, this Petition is accompanied by the Declaration
`
`of Kenneth A. Parulski (“Parulski Decl.”) (Ex. 1002).
`
`IV. Background
`A. The State of the Art
`As of June 1996—the claimed priority date of the ’295 patent—the skilled
`
`artisan was well aware of the ability to record, communicate, and classify digital
`
`images. Ex. 1002 (Parulski Decl.) Part V. Digital camera technology had been
`
`known for decades, and many commercially available digital cameras included the
`
`ability to transmit digital images. Id. ¶ 23-28 (discussing, for example, the Sony
`
`Mavica, the Canon RC-701, the Kodak DCS-100, and the Toshiba PDR-100).
`
`The skilled artisan was also familiar with the benefits of organizing digital
`
`images by storing them using various types of classification information, including
`5
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`Petition for Inter Partes Review
`U.S. Patent No. 6,038,295
`
`
`information provided by the camera user at the time the image was captured. For
`
`example, the Kodak Professional Digital Camera System permitted users to take
`
`digital images, prescribe specific classification information, such as “a caption,” “a
`
`title,” or “the location – city, state, and country – where the image was made,” and
`
`then transmit and store the images and classification information to external device
`
`for storage. Id. ¶ 27 (quoting USER’S MANUAL, KODAK PROFESSIONAL DIGITAL
`
`CAMERA SYSTEM 42 (Eastman Kodak Company 1991-1992) (Ex. 1010)). It was
`
`also known at the time that photojournalists transmitted digital images from the
`
`field together with “classification” information, from which it was “possible to
`
`automatically identify and group colour picture separations, route the picture to
`
`one or several different editorial desks like politics, sport, art & entertainment, and
`
`later to simplify the storage and retrieval and archiving of pictures.” Id. ¶ 29-30
`
`(quoting Williams, IFRA Special Report 17 (1992) (Ex. 1011)).
`
`Devices combining a telephone with a digital camera were also well known
`
`as of June 1996. Id. ¶ 31-33 (citing a number of prior art disclosures). Indeed,
`
`during prosecution, the ’295 patent applicant conceded that the prior art Parulski
`
`’159 patent “discloses a telephone with a digital camera” and “describes the
`
`transmission of the digital images via a radio telephone network.” Ex. 1012 (U.S.
`
`Patent No. 6,038,295 Applicant Response (Sept. 8, 1998)) at 2; see also infra p. 12
`
`(discussing the Parulski ’159 patent).
`
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`6
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`Petition for Inter Partes Review
`U.S. Patent No. 6,038,295
`
`A more detailed summary of the state of the art is provided in the
`
`
`
`accompanying declaration of Kenneth A. Parulski (Ex. 1002), an expert with over
`
`three decades of experience in the field of digital photography.
`
`The ’295 Patent
`
`B.
`The ’295 patent claims priority to German Patent Application No. DE 196
`
`24 128, filed on June 17, 1996. The ’295 patent was filed on June 17, 1997, issued
`
`on March 14, 2000, and will expire not later than June 17, 2017.
`
`Independent claim 17 of the ’295 patent recites:
`
`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
`
`
`
`7
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`storing the digital images in the server, said step of
`storing taking into consideration the classification
`information.
`As reflected in claim 17, the ’295 patent relates to the transmission of digital
`
`images from a camera-telephone system via a transmission system to a server,
`
`where the images are stored using “classification information from data received
`
`by the server.” Ex. 1001 at 4:61-5:13. As the specification explains, the claimed
`
`“telephone unit” may have an “integrated image pick up unit” or “the image pick
`
`up unit may be spatially separated from the telephone unit but connected to one
`
`another via a connection such as a line connection.” Id. at 5:54-67. The image
`
`pick-up unit is a standard “digital photo camera.” Id. at 6:1-2. The transmission of
`
`data from the phone to the server is accomplished “via a telephone line” or
`
`“wirelessly.” Id. at 6:36-39. The server for receiving the information “is a
`
`computer system” that includes a “receiving unit [] for receiving the data,” an
`
`“analysis unit” for “extract[ing] the classification information,” and a “memory []
`
`for storing the data.” Id. 5:1-13. Those components are used to perform the steps
`
`of the claimed invention, as Figure 3 illustrates:
`
`
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`Petition for Inter Partes Review
`U.S. Patent No. 6,038,295
`
`
`
`Ex. 1001 (’295 patent), Fig. 3.
`
`
`As the ’295 patent itself acknowledges, most of the limitations of the
`
`
`
`claimed methods were known as of the filing date. For example, the specification
`
`states that “cellular phones” capable of “image transmission” were well-known in
`
`the prior art, id. at 1:31-34, as were other “image and audio communication
`
`system[s] . . . in which voice, data and image communications are used in
`
`telephone systems,” id. at 1:52-59.2 The specification also notes that the digital
`
`2
`As Patent Owner informed the Board in Facebook, “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-known to any
`
`person of ordinary skill in the art.” Ex. 1013 at 8.
`
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`Petition for Inter Partes Review
`U.S. Patent No. 6,038,295
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`pick-up unit it discloses “operates as a digital photo camera of the type which is
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`known,” id. at 6:1-2 (emphasis added), and the phone “includes the standard
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`features of a telephone unit,” id. at 5:54-55 (emphasis added). The disclosed
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`“transmission system” merely comprises a “telephone line” or an “antenna.” Id. at
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`6:36-38. And the disclosed “server” is simply a “computer system which serves
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`for organizing a database” and is capable of storing images taking into
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`consideration the received classification information. Id. at 5:1-13.
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`The patent nevertheless asserts that the prior art suffered from a
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`“problem”—namely, an inability to organize image data “archived in a central
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`computer unit.” Id. at 1:43-48. The patent purports to have “solved” this problem
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`by describing a method whereby classification information is allocated by the
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`camera user to the digital images, the classification information and images are
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`transmitted to the server, and then the images are stored in the server by “taking
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`into consideration the classification information.” Id. at 2:5-20. According to the
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`’295 patent, classification information consists of the following:
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`• “audio data” spoken into the telephone unit;
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`• the “time of day and/or the date” of recording or transmitting the image;
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`• the “telephone number” of the telephone unit or the server;
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`• “information about the location in the memory at which the digital image
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`should be stored,” e.g., “the location in memory or in the directory
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`structure” where the digital image should be stored in the server; or
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`• “other alphanumeric data.”
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`Id. at 7:20-44; see also id. at Fig. 4 & 4:55-57. Moreover, the classification
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`information described by the ’295 patent includes two varieties—that which is
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`“prescribed by a user of the telephone unit,” id. at 8:6-7, and that which is
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`“implicitly contained in the digital image itself,” id. at 6:62.
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`The invention claimed in the ’295 patent thus purports to advance the state
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`of the art by using “classification information” to facilitate storage of digital
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`images. As the specification explains: “Since the storing step depends upon the
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`extracted classification information that characterize the individual digital images,
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`a simple, fast and surveyable archiving of the digital images is automatically
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`carried out.” Id. at 2:46-65.
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`Summary of the Prosecution of the ’295 Patent
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`C.
`Throughout the prosecution of the application that issued as the ’295 patent,
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`the Applicant argued that the key limitation rendering the claims patentable was
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`the use of classification information in order to store images on a server.
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`On June 5, 1998, the Examiner issued a first office action. Ex. 1014. The
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`Examiner rejected the pending claims under 35 U.S.C. § 103 over Parulski ’159
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`(U.S. Patent No. 5,666,159, titled “Electronic Camera System with Programmable
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`Transmission Capability” (Ex. 1027)) in view of Kawamura (U.S. Patent No.
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`5,576,759, titled “Image Processing System for Classifying Reduced Image Data”)
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`and other secondary references, including Ishii (U.S. Patent No. 5,182,765, titled
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`“Speech Recognition System with an Accurate Recognition Function”).
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`The Applicant filed a response in September 1998 acknowledging that
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`Parulski ’159 “discloses a telephone with a digital camera” and “describes the
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`transmission of the digital images via a radio telephone network” to one or more
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`“output devices.” Ex. 1012 at 2. The Applicant argued, however, that “Parulski
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`does not once suggest that other data [i.e., classification information] could be
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`added to the image information” and that Parulski ’159 “does not involve an
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`administering of digital images” using classification information. Id. at 2-3.
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`Regarding Parulski ’159 in combination with Kawamura, the Applicant argued that
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`this combination contains “no indication” of an “intelligent server” and thus does
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`not disclose “automatic archiving in the server of the image data.” Id. at 3-4. With
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`respect to Ishii, the Applicant similarly argued that “[t]his reference has nothing to
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`do with registering digital images or with classifying the images on a server
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`according to a classification system.” Id. at 4.
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`On November 27, 1998, the Examiner issued a second office action rejecting
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`the claims as obvious over prior art including Tatsumi (U.S. Patent 5,594,736,
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`titled “Image-Information Storage Regenerating Device” (Ex. 1032)) and Parulski
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`’678 (U.S. Patent 5,633,678, titled “Electronic Still Camera for Capturing and
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`Categorizing Images” (Ex. 1031)).
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`In a response filed in March 1999, the Applicant again argued that its use of
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`classification information was the key to the invention’s patentability. Ex. 1015.
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`The Applicant distinguished Tatsumi from the claims under consideration, in part
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`because Tatsumi “does not contain any references to an addition of classifying
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`information to individual images” for the purpose of archiving images in the
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`server. Id. at 3-4. Similarly, the Applicant argued that Parulski ’678 did not
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`disclose direct communication of images to a server, “where they are then
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`automatically archived with the aid of the ordering features [i.e., classification
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`information].” 3 Id. at 5.
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`On May 26, 1999, the Examiner issued another office action, rejecting
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`claims as obvious over Tatsumi in view of Makiyama (U.S. Patent 5,640,198;
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`“Image-Information Format Control Device for Controlling Transmission of
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`Varied Formats of Image Data Stored in a Single Format”) and other references.
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`3
`The specification of the ’295 patent explains that “classification information
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`[is] also referred to as order features.” Ex. 1001 at 2:30-31.
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`The Applicant responded in September 1999, again arguing that, unlike the
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`claimed invention, Tatsumi fails to teach “ordering features [i.e., classification
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`information] with respect to individual images” as well as “automatic archiving of
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`image data . . . depending on said ordering features in a server.” Ex. 1016 at 6.
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`The Applicant distinguished Makiyama on the same basis, arguing that it contains
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`“no teaching regarding an automatic archiving of the image data in reference to the
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`ordering features.” Id. at 7. Even assuming one combined Tatsumi and
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`Makiyama, the Applicant argued, the combination did not disclose that “storage
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`ensues depending on extracted classifying information, which characterize[s] the
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`individual digital images.” Id. at 8.
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`In response to the Applicant’s arguments, the examiner entered an
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`Examiner’s Amendment adding a limitation to independent claim 17 pertaining to
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`the allocation and transmission of classification information. Ex. 1017 at 2-3.
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`With this amendment, the Examiner allowed the claims. Id. In his Statement of
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`Reasons for Allowance, the Examiner described the claimed methods as including
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`the step of “storing the digital images in the server, said step of storing taking into
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`consideration the classification information.” Id. at 4. This step, the Examiner
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`explained, is “neither taught nor suggested by the prior art.” Id. at 5. The
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`Examiner allowed the claims “for these reasons and for the reasons recited by the
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`Applicant” in the three office action responses. Id.
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`Although the Examiner expressly invited the Applicant to comment on the
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`stated reasons for allowance, the Applicant declined to do so. Id. at 6. The ’295
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`patent issued on March 14, 2000.
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`D.
`Summary of the Facebook Inter Partes Review Proceeding
`Facebook filed an IPR petition on April 1, 2014. Ex. 1018 (Petition for Inter
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`Partes Review, Facebook, Inc. v. TLI Commc’ns LLC, IPR2014-00566). The
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`petition challenged claims 1, 2, 6-11, 14-17, and 21-24 of the ’295 patent based on
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`several references in the field of fax transmission technology. The Patent Owner
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`filed a response on July 9, 2014. Ex. 1013.
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`On September 15, 2014, the Board denied Facebook’s IPR petition. Ex.
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`1019 (Facebook, Inc. v. TLI Commc’ns LLC, IPR2014-00566 (PTAB Sept. 15,
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`2014)). With regard to independent system claim 1 and claims dependent thereon,
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`the Board held that the limitation “means for allocating classification information”
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`is a means-plus-function limitation under 35 U.S.C. § 112, ¶ 6. Id. at 9. The
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`Board further found that “the ’295 patent does not describe an algorithm for
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`‘allocating classification information’ as recited in claim 1,” and because the
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`specification lacks corresponding structure for this means-plus-function limitation,
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`these claims “are not amenable to construction.” Id. at 12-13. With regard to
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`method claim 17 and claims 21-24 depending from claim 17, the only deficiency
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`the Board found was that the fax-based prior art cited by Facebook did not teach
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`the final limitation of the claim, namely, storing digital images “taking into
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`consideration the classification information.” Id. at 17-18. As explained below,
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`the prior art disclosures relied on in this petition do not involve fax technology and
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`do not suffer from the deficiency identified by the Board in Facebook; accordingly,
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`this petition is not redundant with Facebook’s. See infra Part VI.A.2 & p. 47, n.4.
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`V. Construction of the Challenged Claims
`T