Case IPR2015-00283
`Patent 6,038,295
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GOOGLE INC.
`Petitioner
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`v.
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`TLI COMMUNICATIONS LLC
`Patent Owner
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`
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`Case IPR2015-00283
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`Patent 6,038,295
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`
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`PETITIONER GOOGLE INC.’S REPLY
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`David M. Krinsky, Reg. No. 72,339
`Aaron P. Maurer, Reg. No. 44,911
`Kevin Hardy, admitted pro hac vice
`Samuel Bryant Davidoff, admitted pro hac vice
`Williams & Connolly LLP
`725 Twelfth Street, N.W.
`Washington, DC 20005
`Telephone: 202-434-5000
`Fax:
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`202-434-5029
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`
`
`
`
`
`Patent 6,038,295
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`GOOGLE INC.
`Petitioner
`
`v.
`
`TLI COMMUNICATIONS LLC
`Patent Owner
`
`
`
`Case IPR2015-00283
`
`Patent 6,038,295
`
`
`
`PETITIONER GOOGLE INC.’S REPLY
`
`David M. Krinsky, Reg. No. 72,339
`Aaron P. Maurer, Reg. No. 44,911
`Kevin Hardy, admitted pro hac vice
`Samuel Bryant Davidoff, admitted pro hac vice
`Williams & Connolly LLP
`725 Twelfth Street, N.W.
`Washington, DC 20005
`Telephone: 202-434-5000
`Fax:
`
`202-434-5029
`
`
`
`
`
`
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`
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`TABLE OF CONTENTS
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`Page
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`I. The Person of Ordinary Skill in the Art ............................................................. 4
`II. Patent Owner’s Arguments Regarding Claim 17 Are Contradicted by Its Own
`Expert ................................................................................................................. 4
`A. Wilska Discloses Transmitting Digital Images by Email ........................... 5
`1. A POSA Would Understand Wilska To Disclose the Use of Email
`Attachments ................................................................................................ 6
`2. Wilska Explicitly Teaches Using Email To Send Digital Images .............. 9
`B. A POSA Would Have Combined Wilska with Morikawa ....................... 13
`C. Morikawa Discloses the Extraction of User Prescribable Information .... 18
`1. Folder Specification Information Is Extracted ......................................... 19
`2. File Attribute Information Is User Prescribable ....................................... 22
`III. Patent Owner Has Offered No Evidence Rebutting the Board’s Preliminary
`Finding of Obviousness with Respect to Claims 18-24 ................................... 24
`A. Patent Owner Fails To Rebut Petitioner’s Expert’s Testimony on the
`Obviousness of Claims 19 and 20’s Use of Audio as Classification
`Information ............................................................................................... 25
`B. Patent Owner Fails To Rebut Petitioner’s Expert Testimony on the
`Obviousness of Claim 18 in View of Wilska, Morikawa, and Burstein .. 26
`C. Patent Owner Fails To Rebut Petitioner’s Expert’s Testimony on the
`Obviousness of Claim 22 in view of Wilska, Morikawa, and Partridge .28
`D. Patent Owner Offers No Response at All on Claims 21, 23, and 24 ....... 29
`IV. Claim 18 Is Also Indefinite .............................................................................. 29
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`i
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`TABLE OF AUTHORITIES
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`FEDERAL CASES
`In re GPAC Inc., 57 F.3d 1573 (Fed. Cir. 1995) ....................................................... 9
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`In re Sheckler, 438 F.2d 999 (C.C.P.A. 1971) ........................................................... 9
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`OTHER AUTHORITIES
`Butamax Advanced Biofuels LLC v. Gevo Inc., IPR2014-00250 (P.T.A.B. Mar.
`13, 2015)……………………………………………………….........................29
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`Ex Parte Andersen, No. 2009-3238, 2009 WL 982098 (B.P.A.I. Apr.
`10, 2009) ............................................................................................................... 9
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`Qualtrics LLC v. OpinionLab, IPR2014-00356 (P.T.A.B. July 30,
`2015)………………………………………………………………...................29
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`ii
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`In response to Petitioner’s argument that U.S. Patent No. 6,038,295 (the
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`“’295 patent”) is obvious in view of Wilska and Morikawa, Patent Owner argues:
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`(1) that Wilska does not disclose sending digital images as attachments to email,
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`see Paper 24 (Patent Owner’s Response) at 10; (2) that because Morikawa’s
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`system is “proprietary” a person of ordinary skill in the art (“POSA”) could not
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`have combined the email functionality disclosed in Wilska with Morikawa’s email
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`system, see id. at 27; and (3) that in any event, Morikawa does not disclose
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`“extracting” user prescribable classification information, i.e., “folder specification
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`information,” see id. at 16. These arguments are not supported by the evidence.
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`Indeed, when Patent Owner’s own expert, Dr. Prasant Mohapatra, was asked about
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`them in his deposition, he disagreed with each of Patent Owner’s positions.
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`First, Dr. Mohapatra agreed that, contrary to what Patent Owner argued, a
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`POSA would understand Wilska to disclose the transmission of digital images as
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`attachments to email:
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`Consequently, a person of ordinary skill in the art
`Q.
`would understand that a -- the Wilska device was
`disclosing the possibility of sending binary attachments
`over e-mail?
`A. Yes.
`Q.
`Including digital images?
`A. Yes.
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`1
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`Ex. 1047 (Mohapatra Dep.) at 79:18-24.
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`Second, Dr. Mohapatra acknowledged that the Morikawa email system is
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`not proprietary and could in fact be implemented using standard protocols:
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`So what the Morikawa patent is disclosing here is
`Q.
`describing is that you might have attachment files
`attached to a message.
`Correct?
`A.
`Right.
`Q. And that is something that a person of ordinary
`skill in that art would have been familiar with?
`A. Yes.
`Q. That was possible using standard Internet protocols
`at the time?
`A. Yes.
`Q.
`Specifically SMTP and MIME?
`A. Yes.
`Ex. 1047 at 60:4-16. Dr. Mohapatra further acknowledged that these protocols are
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`the same ones a POSA would have understood to be used by Wilska to send email:
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`Q. A person of ordinary skill in the art would
`understand that the Wilska device was disclosing
`electronic mail that could be compliant with RFCs 821
`and 822 [i.e., the SMTP standard].
`Correct?
`A. Yes.
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`2
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`Q. A person of ordinary skill in the art would
`understand that the Wilska device was disclosing
`electronic mail that might support the MIME standard?
`A. Yes.
`Ex. 1047 at 79:8-17.
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`Third, Dr. Mohapatra acknowledged that Morikawa discloses extracting the
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`user-prescribable “folder specification information” from an email:
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`Q. A person of ordinary skill in the art reading
`column 3, lines 5 through 9 [of Morikawa] would
`understand that one way to obtain the folder specification
`information from the envelope part was to extract it?
`A. Yes.
`Ex. 1047 at 65:9-13.
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`Indeed, notwithstanding that Dr. Mohapatra submitted a declaration in
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`support of Patent Owner’s response, in his deposition he agreed with Petitioner on
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`nearly every disputed point with respect to Wilska, Morikawa, and their
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`combination, thus confirming the obviousness of claim 17 of the ’295 patent.
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`Patent Owner’s arguments with respect to dependent claims 18 through 24
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`fare no better. With respect to these claims, Patent Owner has offered no evidence
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`to contradict Petitioner’s showing that the subject matter described by these claims
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`would have been obvious to a POSA. Instead, Patent Owner’s response is little
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`more than an ipse dixit assertion that there is no evidence to support a finding of
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`3
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`obviousness, notwithstanding the (unrebutted) testimony of Petitioner’s expert,
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`Kenneth Parulski, regarding the obviousness of those claims.
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`Finally, with respect to claim 18, not only is it obvious, but, for the reasons
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`set forth by the Board in IPR2015-00778 (instituting IPR on the same patent), the
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`claim is indefinite and should therefore be dismissed from the petition.
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`I. The Person of Ordinary Skill in the Art
`Petitioner and Patent Owner generally agree on the education and experience
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`of a POSA. Compare Ex. 1002 (Parulski Decl.) ¶ 20, with Ex. 2008 (Mohapatra
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`Decl.) ¶ 11. Patent Owner notionally disagrees with Petitioner’s contention that a
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`POSA would have experience in the field of digital imaging, with a specific focus
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`on image capture, transmission, and storage. Ex. 2008 ¶ 11. However, this
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`disagreement appears largely academic, because Dr. Mohapatra conceded on
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`examination that even under his view, a POSA would be familiar with image
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`capture, transmission, and storage. See Ex. 1047 at 12:23-13:1; 19:24-20:2; 20:10-
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`14. Moreover, Patent Owner has not identified any issue as to which any arguable
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`differences in the definition of a POSA are material.
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`II. Patent Owner’s Arguments Regarding Claim 17 Are Contradicted by
`Its Own Expert
`The bulk of Patent Owner’s response is an effort to rebut Petitioner’s
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`arguments about claim 17. Even there, much is undisputed. Patent Owner does
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`not dispute that Wilska discloses a telephone unit capable of recording, storing, and
`4
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`transmitting digital images and user-prescribable classification information, as
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`claim 17 of the ’295 patent requires. Nor does it dispute that Morikawa discloses a
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`server system capable of storing attachments, including digital images, taking into
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`consideration classification information, as claim 17 also requires. Rather, Patent
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`Owner, as noted above, makes three narrow arguments: (1) that Wilska does not
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`disclose the transmission of digital images via email, making it impossible to
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`combine Wilska with Morikawa; (2) that a POSA would not have thought to
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`combine Wilska and Morikawa because the email server described in Morikawa
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`was proprietary and difficult to implement in June of 1996; and (3) that Morikawa
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`does not disclose the “extracting” of classification information “prescribable by a
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`user” required by claim 17. These arguments are contradicted by Wilska and
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`Morikawa themselves and also by Patent Owner’s expert, Dr. Mohapatra.
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`A. Wilska Discloses Transmitting Digital Images by Email
`As Petitioner has explained, Wilska discloses a device capable of capturing
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`images and transmitting them via email, and a POSA would have understood this
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`to be accomplished by attaching the images to the emails sent by the Wilska
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`device. Paper 6 (Corrected Petition) at 45. Patent Owner claims that this
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`statement is: (1) “unsupported” by the evidence and (2) contrary to the text of
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`Wilska, which, according to Patent Owner, does not “teach or suggest transmitting
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`digital images as email attachments.” Paper 24 at 18 (emphasis added). Neither
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`5
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`point has merit.
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`1. A POSA Would Understand Wilska To Disclose the
`Use of Email Attachments
`Far from being “unsupported,” Petitioner’s expert, Mr. Parulski, specifically
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`opined that Wilska’s disclosure of a device capable of capturing digital images and
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`sending emails would have suggested to a POSA the transmission of such images
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`as email attachments. Ex. 1002 ¶¶ 181-183. And when asked about this very issue
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`at his deposition, Dr. Mohapatra agreed. Specifically, he acknowledged that a
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`POSA reading Wilska would understand Wilska’s disclosure of electronic mail to
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`include the capability of sending attachments, including digital images. Ex. 1047
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`at 78:23-79:24 (“Q. We already discussed I think that a [POSA] would understand
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`what electronic mail was. A. Yes. . . . Q. Consequently, a [POSA] would
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`understand that a -- the Wilska device was disclosing the possibility of sending
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`binary attachments over e-mail? A. Yes. Q. Including digital images? A. Yes.”);
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`81:6-10 (“Q. . . . My point is, a [POSA] reading Wilska’s disclosure of e-mail
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`would understand that e-mail was capable of sending attachments? A. Yes.”).
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`Dr. Mohapatra further revealed why a POSA would have understood that
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`Wilska’s disclosure of electronic mail encompassed the ability to send digital
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`images as attachments. It is because, by June 1996, not only did that capability
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`exist, but it had in fact been standardized for at least four years in an Internet
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`6
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`protocol known as “MIME.” See Ex. 1047 at 28:8-30:5, 36:18-37:13, 86:18-87:23
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`(acknowledging the POSA’s familiarity with the MIME standard for sending
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`attachments to email, including digital images); 30:2-5 (“Q. So by June of 1996,
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`the MIME standard had been standardized in some form for four years. Correct?
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`A. Yes.”). Dr. Mohapatra further acknowledged that this standard was supported
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`by “a number of possible e-mail programs that one could use in connection with a
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`device like Wilska”. See id. at 79:25-80:14. And Dr. Mohapatra agreed that not
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`only would a POSA have been familiar with this email attachment standard but
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`that it was discussed in a “common and well known reference text” with which a
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`POSA would also have been familiar. Id. at 24:11-26:7 (referring to Ex. 1045
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`(Douglas E. Comer, Internetworking With TCP/IP (3d ed. 1995))); Ex. 1045 at
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`443-45 (explaining the MIME standard).
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`Indeed, the only piece of evidence anywhere in the record that even arguably
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`suggests that the email disclosed in Wilska might not support attachments is a
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`single statement in a user manual for the AOL service that “[t]he Internet simply
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`doesn’t accommodate attachments.” Ex. 2004 (Lichty) at 110 (cited by Patent
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`Owner, Paper 24 at 14). The PTAB should give no weight to this statement for
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`several reasons. First, no witness in this case (including Dr. Mohapatra) has cited
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`this statement in the AOL reference, let alone endorsed that statement. In fact, the
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`only citation to the AOL reference at all is in attorney argument in Patent Owner’s
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`response. See, e.g., Paper 24 at 14. Second, a careful reading of the AOL
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`reference makes clear that, in context, it does not stand for the proposition for
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`which Patent Owner cites it. Rather, the manual’s statement means only that
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`AOL’s mechanism for connecting its proprietary system to the Internet did not
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`accommodate the sending of attachments between the two platforms (i.e., from
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`AOL user to Internet user), even though AOL’s proprietary system itself did
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`support the sending of images as attachments to emails within its own system (i.e.,
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`from AOL user to AOL user). Ex. 2004 at 104-08 (discussing attaching files to
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`email). No one, including Patent Owner, has argued that the Wilska device ran
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`AOL’s proprietary email system. Third, even if the AOL reference could be read
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`as Patent Owner suggests, it is clear from the testimony of Patent Owner’s own
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`expert that the statement would then simply be wrong; Internet e-mail did
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`accommodate sending attachments in June 1996. Ex. 1047 at 37:9-13 (“Q. A
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`[POSA] in June of 1996 would have understood that Internet e-mail
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`accommodated the sending of digital images. Correct? A. Yes.”); 86:18-21 (“Q.
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`And as we discussed, in June of 1996, a [POSA] would understand that e-mail
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`could be used to send multimedia attachments? A. Yes.”). Indeed, the Morikawa
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`reference—which Patent Owner does not dispute is prior art—discusses the use of
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`email attachments in great detail. See Ex. 1007 (Morikawa) at 1:39-40 (discussing
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`“attachment files” as part of the related art in “Background of the Invention”); see
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`also Ex. 1046 at 37 (Paul McFedries, The Complete Idiot’s Guide to Internet E-
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`Mail (1995)) (in 1995, process of sending email attachments using MIME was “a
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`veritable walk in the park”).
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`In sum, there is no serious dispute that Wilska disclosed a device capable of
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`sending email and that a POSA would have understood that capability to include
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`sending digital images attached to that email.
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`2. Wilska Explicitly Teaches Using Email To Send
`Digital Images
`Patent Owner also argues that, whether or not the Wilska device supported
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`email attachments, a POSA reading Wilska would not have thought to use that
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`capability to send digital images because such a use was not explicitly disclosed.
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`As an initial matter, this argument is irrelevant. Whether or not Wilska
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`explicitly discusses the transmission of digital images as attachments to email
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`messages, both experts in this proceeding have testified that a POSA, as of June
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`1996, would have understood the device disclosed in Wilska to have that
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`capability, as explained above. See supra Section II.A.1; see also Ex Parte
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`Andersen, No. 2009-3238, 2009 WL 982098, at *3 (B.P.A.I. Apr. 10, 2009) (citing
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`In re Sheckler, 438 F.2d 999, 1001 (C.C.P.A. 1971)) (“The suggestion of all
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`limitations however need not be literally expressed in the prior art.” ); In re GPAC
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`Inc., 57 F.3d 1573, 1581 (Fed. Cir. 1995) (“In determining whether obviousness is
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`9
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`established by combining the teachings of the prior art, the test is what the
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`combined teachings of the references would have suggested to those of ordinary
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`skill in the art.” (internal quotation marks omitted)).
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`But even more fundamentally, Patent Owner’s argument is simply wrong.
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`In column 7, lines 37 to 41, Wilska explicitly discloses that “bitmap images or
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`converted ASCII texts/graphics” can be “forwarded via telefax or electronic mail
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`services.” See Paper 6 at 49. Patent Owner does not dispute, and its expert
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`expressly agrees, that bitmap images are a kind of digital image. See Ex. 1047 at
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`13:2-5. Instead, Patent Owner tries to parse this sentence in Wilska to mean only
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`that: (a) bitmap images can be forwarded via telefax and (b) ASCII texts/graphics
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`can be forwarded via email. Paper 24 at 10. Not only is such a reading strained,
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`but it is contrary to the conclusion reached by both Patent Owner’s own expert and
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`the Patent Office examiner who conducted a reexamination of the Wilska patent.
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` In his initial expert declaration, Dr. Mohapatra appeared to endorse Patent
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`Owner’s narrow reading of this sentence in Wilska. However, when asked about
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`the issue at his deposition, it became clear that he in fact agreed with Petitioner that
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`Wilska does disclose transmitting digital images by email using an attachment
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`standard such as MIME:
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`. . . . So the way I’m interpreting [Wilska, col. 7
`A.
`lines 36-40] is that you can send the bitmap images
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`10
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`through telefax and you have to convert it to ASCII in
`order to send an e-mail . . . .
`Q. A [POSA] reading column 7, lines 36 through 40,
`would understand that a bitmap image could be sent via
`the electronic -- the electronic mail disclosed in Wilska,
`but it would first have to be converted to ASCII text?
`A. Yes.
`Q. And a [POSA] would know there are multiple
`ways to do that, including using the MIME standard?
`A. Yes.
`Ex. 1047 at 82:3-22.1 Mr. Parulski, Petitioner’s expert, similarly read this sentence
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`as disclosing the transmission of digital images via email. Ex. 1002 ¶ 181.
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`The two experts in this case are not the only ones who understood this
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`sentence in Wilska to disclose transmitting digital images by email. In 2012, the
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`Patent Office, as part of a reexamination proceeding, allowed a new claim in the
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`Wilska patent to issue (claim 77), which expressly claims a “means for
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`transmitting” digital images over the Wilska device’s cellular connection “wherein
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`the means for transmitting image information transmits the image information
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`1 Dr. Mohapatra explained elsewhere that the way the MIME standard
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`provides for “attaching” files to an email is by first encoding them as text and then
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`putting that encoded file in the body of the email. See Ex. 1047 at 86:5-8; 86:18-
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`24; 87:13-23; 93:5-8; see also Ex. 1045 (Comer) at 443.
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`11
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`processed by said microprocessor to another location by transmitting an electronic
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`mail message.” Ex. 1006 (Reexamination Certificate) at 2:39-43 (emphases
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`added). The disclosure supporting this claim identified to the examiner by the
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`Wilska patent owner was precisely the same sentence from column 7 of Wilska
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`discussed above. See Ex. 1048 (Amendment After Final Rejection) at 8-9.
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`In a final effort to avoid the teachings of Wilska, Patent Owner tries to
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`suggest that, even if Wilska discloses the transmission of digital images by email, it
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`does not disclose transmitting such images as email attachments. Specifically,
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`Patent Owner claims that a POSA might have understood Wilska to contemplate
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`transmitting digital images in the header of the email rather than as an attachment
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`(which is part of the body of the email). Paper 24 at 14. Patent Owner does not
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`cite anything in support of this interpretation, and the reason is clear: As its own
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`expert explained in deposition, a POSA would not have been familiar with any
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`way to send images in the header of an email. Ex. 1047 at 87:24-88:2 (“Q. I’m
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`just asking, are you aware in June of 1996 if there was any form of e-mail that
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`would put the image information into the header of the e-mail? A. No.”); 88:25-
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`89:2 (“Q. [A POSA] would not think to put the digital image itself in the header?
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`A. Yes.”); see also id. at 87:17-23 (MIME standard puts attachments in the body
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`of the message). To a POSA, the disclosure of transmitting digital images by
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`email would mean that the images are transmitted as attachments in the body of the
`12
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`email, because that was the standard way for making such a transmission.
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`B. A POSA Would Have Combined Wilska with Morikawa
`Petitioner’s expert has explained that because of the recognized desire to
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`efficiently classify and store digital images, a POSA would have been motivated to
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`combine Wilska’s device for capturing and transmitting digital images with
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`Morikawa’s method for organizing such attachments. See Ex. 1002 ¶¶ 22-37, 90
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`(discussing well known need for and solutions to the problem of organizing digital
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`images in June 1996). The patent office relied on this testimony in instituting this
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`IPR. Paper 21 at 12-13. By failing to argue otherwise, Patent Owner effectively
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`concedes that a POSA would have been motivated to find a way to organize the
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`digital images sent by the Wilska device. And plainly Morikawa discloses such a
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`solution—Patent Owner never argues otherwise. Rather, Patent Owner contends
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`that, Wilska could not be “modified” to use the Morikawa system’s solution. Id. at
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`26. Patent Owner’s arguments in support of this contention have no merit.
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`First, Patent Owner repeats its argument that Wilska does not disclose or
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`suggest transmitting digital images or attachments via email. Paper 24 at 26-27.
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`As discussed above, this argument is unsupported.
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`Second, Patent Owner argues that the Morikawa reference describes a
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`“decidedly proprietary email system” with which the Wilska device could not be
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`made to interoperate. Id. at 27. Patent Owner cites nothing in support of this
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`13
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`argument, and the testimony of its own expert contradicts it. As Dr. Mohapatra
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`acknowledged, the inventors of the Morikawa patent did not purport to have
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`invented email or email attachments; those were both concepts with which the
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`POSA would have been familiar prior to reading Morikawa. Ex. 1047 at 56:2-
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`60:19. Dr. Mohapatra also explained that the email system disclosed by Morikawa
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`could have been implemented by a POSA using standard Internet protocols that
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`were well known at the time, namely, SMTP and related standards set out in RFCs
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`821 and 822.2 Ex. 1047 at 27:17-28:7; 60:12-19; 61:14-16 (email message format
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`disclosed in Morikawa is “just talking about the header and header file information
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`in a standard Internet e-mail” (emphasis added)). And as to the unique headers
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`that Morikawa disclosed for use in classifying attachments and subsequently
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`storing them in folders, Dr. Mohapatra explained that a POSA would have known
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`how to implement those using standard Internet protocols as well:
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`Then, though, the Morikawa patent goes on to say
`Q.
`“The specific data may be folder specification
`information written in the envelope part.”
`Do you see that?
`A. Yes.
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`2 RFCs are public documents that standardize certain Internet protocols. See
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`Ex. 1047 at 22:22-23:10.
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`14
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`Q. And that’s something new that Morikawa
`purported to invent anyway, putting folder information in
`the envelope part of the e-mail.
`Correct?
`A. Yes.
`* * *
`Q. And so a [POSA] would understand that one could
`actually implement this particular portion of Morikawa
`by simply adding an optional header to an otherwise
`Internet standard e-mail?
`A. Yes.
`Q. And an e-mail that had such an optional header
`would still be standard Internet e-mail.
`Correct?
`A. Yes.
`Ex. 1047 at 61:19-63:16. In other words, Patent Owner’s own expert has testified
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`that a POSA would have understood the Wilska device to be capable of sending
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`standard Internet emails and a Morikawa server to be capable of receiving such
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`emails. That is what Petitioner’s expert has said as well. See Ex. 1002 ¶ 183.
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`Third, Patent Owner argues that the Wilska device could not be modified to
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`work with a server as described in Morikawa because the Wilska device is a
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`“personal communicator-type device[]” and not a “general purpose computer[].”
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`Paper 24 at 27. This assertion too is unsupported and is contrary to the record
`
`
`
`15
`
`
`
`
`
`evidence. Wilska discloses a “notebook computer” containing the functionality of
`
`a “work station” in addition to other functions, i.e., it is a general purpose
`
`computer with added functionality and portability. Ex. 1006 at 2:31. Dr.
`
`Mohapatra agreed that this was an apt description. Ex. 1047 at 76:19-25 (“Q. So
`
`this is a portable device that is meant to have the functionality of a general purpose
`
`computer. Correct? A. Yes. Q. But also cellular communications, digital camera
`
`functionality, and it fits in your pocket? A. Yeah.”).
`
`Finally, Patent Owner argues that even if the Wilska device could interface
`
`with a Morikawa server, a POSA would not think to combine Wilska and
`
`Morikawa in this way because systems that were used at the time to send images
`
`via email were “experimental prototypes,” which, because of “restrictions on email
`
`traffic,” could not include “multimedia data” as part of the email itself. Paper 24 at
`
`28-29. This entire argument is based on a misreading of a single reference—the
`
`Thimm reference—cited in Dr. Mohapatra’s declaration, a reading that Dr.
`
`Mohapatra himself disclaimed during his deposition.
`
`The “experimental” prototype disclosed in the Thimm reference is a
`
`prototype “multimedia archiving teleservice” system for allowing multiple users to
`
`store, modify, and retrieve a whole host of multimedia content. Ex. 2007 at 1-2. It
`
`is not an experimental email system, but rather uses a then-existing multimedia
`
`email system as one of its components. Id. at 3. In fact, Thimm specifically
`16
`
`
`
`
`
`
`
`acknowledges that multimedia email had been researched for “almost 10 years”
`
`and had been standardized. Id. at 3; Ex. 1047 at 98:10-99:9 (acknowledging that
`
`by the time of the Thimm paper multimedia email “had been standardized and it
`
`was in use”). Moreover, the email “restrictions” disclosed by Thimm and the
`
`workarounds it disclosed for sending certain multimedia files are restrictions that
`
`would apply only to very large files such as video. Ex. 1047 at 104:2-8 (“Q. So
`
`what Thimm is saying is that for some multimedia like images and audio you can
`
`use standard e-mail and attachments? A. Yes. Q. And for high volume
`
`multimedia such as video you want to use this reference object model? A. Yes.”).
`
`Indeed, the figure from Thimm on which Patent Owner relies in support of its
`
`argument actually discloses that “Graphics” and “Still Image” are transmitted in
`
`the body of the email; it is only “Moving Images” that are transmitted by use of a
`
`“reference model,” i.e., a “pointer” to the video. Paper 24 at 29 (referencing Ex.
`
`2007 at Fig. 2); Ex. 1047 at 102:7-103:2 (acknowledging that Fig. 2 of Thimm
`
`shows still images in the body of the email, and “reference model” is used only for
`
`videos).3 Thus, understood correctly, Thimm supports the proposition advanced by
`
`
`3 In his declaration, Dr. Mohapatra also cited another reference—Schill—for
`
`the proposition that bandwidth constraints might have limited multimedia email
`
`capabilities. Ex. 2008 ¶ 24. In his deposition, however, Dr. Mohapatra conceded
`
`
`
`17
`
`
`
`
`
`Petitioner that, in June of 1996, a POSA would have understood that email could
`
`transmit still images notwithstanding any bandwidth constraints. Dr. Mohapatra
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`agreed. See Ex. 1047 at 106:3-6 (size restrictions on email nodes in June 1996
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`“certainly would have allowed the sending of garden variety image[s]”).
`
`C. Morikawa Discloses the Extraction of User Prescribable
`Information
`Patent Owner’s remaining argument on claim 17 is that, even were one to
`
`combine Wilska and Morikawa, the combination would not render claim 17
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`obvious because Morikawa does not teach the “extracting” of “classification
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`information [ ] prescribable by a user” from emails. Paper 24 at 14-15.
`
`Petitioner has explained that Morikawa discloses that a user may add “folder
`
`specification” information to the envelope of an email, which information is
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`subsequently extracted and used to determine the folder in which to store the
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`email’s attachments (or the name for a new folder to be created if one does not
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`already exist). Paper 6 at 46, 50. Patent Owner concedes that this “folder
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`specification” information is “classification information” that is “prescribable by a
`
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`that, at least as to digital images, those bandwidth constraints would have been
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`addressed by the use of compression techniques known to a POSA as of June 1996,
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`such as JPEG. Ex. 1047 at 96:17-20 (even prior to Schill, POSA “would know you
`
`could use JPEG compression to send images over cellular”).
`
`
`
`18
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`
`
`
`
`user.” Patent Owner also concedes that this classification information is taken into
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`consideration by Morikawa when storing attachments to emails. What Patent
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`Owner disputes is whether a POSA, reading Morikawa, would understand that the
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`folder specification information would need to be “extracted” from the email
`
`envelope prior to being used to determine where to store the attachment. Paper 24
`
`at 14-16. Patent Owner claims a POSA would not read Morikawa to disclose such
`
`extraction of folder specification information, and that the only classification
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`information that Morikawa “extracts” is “file attribute” information, which—
`
`according to Patent Owner—is not prescribable by a user. Patent Owner is wrong
`
`on both counts: folder specification information is extracted, and file attribute
`
`information is user prescribable.
`
`1. Folder Specification Information Is Extracted
`In his deposition, Patent Owner’s expert, Dr. Mohapatra, initially agreed
`
`with Petitioner that in order for the folder specification information to be used by a
`
`Morikawa server to categorize and store attachments, it must necessarily be
`
`“extracted”:
`
`Q. [A POSA] would understand that to get that specified
`folder name out of the envelope part in Figure 2 in the
`preferred embodiment, one would have to extract it.
`Correct?
`A.
`In order to use it, use that information one would
`
`
`
`19
`
`
`
`
`
`have to extract it.
`Q.
`. . . In order to use the information in D12 [folder
`specification information] to determine where to store the
`file, a [POSA] would understand one would have to first
`extract it from the envelope?
`A.
`Right.
`Ex. 1047 at 70:10-23. This reading makes perfect sense, in light of the fact that
`
`Morikawa uses the folder specification information either to locate a folder with
`
`that name or, if no such folder exists, to create a folder with that name. Both of
`
`those actions would clearly require first extracting that particular information from
`
`the email envelope. Ex. 1007 at 3:31-33; 4:65-66; 8:25-31.
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`Later in his deposition, after being re-directed by Patent Owner’s counsel,
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`Dr. Mohapatra attempted to retreat from his earlier testimony, claiming that the
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`server in Morikawa somehow accessed and used the information from the email
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`envelope without extracting it. Ex. 1047 at 117:1-118:24. After further
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`questioning by Petitioner’s counsel, however, it became clear that Dr. Mohapatra
`
`reached this revised opinion regarding “extraction” only by placing additional
`
`limitations on the word “extract,” including that it would involve the use of a
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`“temporary register.” Ex. 1047 at 126:16-127:5; 131:18-24. That understanding
`
`of “extraction”—which had never before been proposed by Patent Owner or Dr.
`
`Mohapatra—finds no support in the ’295 patent. The ’295 patent itself does not
`
`
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`20
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`
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`
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`once refer to a “temporary register” or specify any particular means by which
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`“extraction” must be accomplished. Ex. 1001 at 2:55-57 (“Classification
`
`inf
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