Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 14
`Entered: September 15, 2014
`
`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
`____________
`
`
`
`Before JAMESON LEE, BART A. GERSTENBLITH, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`FACEBOOK v. TLI COMMUNICATIONS
`IPR2015-00778 TLI Ex. 2002
`
`

`

`IPR2014-00566
`Patent 6,038,295
`
`
`I. INTRODUCTION
`Facebook, Inc. (“Petitioner”) filed a Petition (“Pet.”) to institute an
`inter partes review of claims 1, 2, 6–11, 14–17, and 21–24 of U.S. Patent
`No. 6,038,295 (“the ’295 patent,” Ex. 1001). Paper 1. Patent Owner TLI
`Communications LLC (“Patent Owner”) filed a Preliminary Response on
`July 9, 2014. Paper 13 (“Prelim. Resp.”). We have jurisdiction under
`35 U.S.C. § 314.
`Upon consideration of the Petition and Preliminary Response, we
`determine that Petitioner has not established a reasonable likelihood of
`prevailing with respect to any of the challenged claims of the ’295 patent.
`Accordingly, we deny the Petition, and decline to institute inter partes
`review.
`A.
`Related Proceedings
`Petitioner indicates that the ’295 patent is involved in a district court
`infringement action, in which it is a party, titled TLI Communications LLC v.
`AV Automotive, L.L.C., Case No. 14-cv-0142 TSE (E.D. Va.). Pet. 1.
`Petitioner also indicates that there are sixteen other pending cases involving
`the ’295 patent. Id.
`B.
`The ’295 Patent (Ex. 1001)
`The ’295 patent, titled “Apparatus and Method for Recording,
`Communicating and Administering Digital Images,” is directed to an
`apparatus and method that “simplif[y] transmission of digital images which
`have been recorded, optimiz[e] the communication of the image data[,] and
`provid[e] a method for administering the storage of the digital images, which
`is simple, fast and surveyable so that the digital images may be archived.”
`Ex. 1001, 1:66–2:4.
`
`
`
`
`2
`
`FACEBOOK v. TLI COMMUNICATIONS
`IPR2015-00778 TLI Ex. 2002
`
`

`

`
`
`IPR22014-005666
`
`
`Patennt 6,038,2995
`
`
`
`
`
`
`
`
`The ’2955 patent deescribes a ccommunicaation systeem that inccludes “an
`
`
`
`
`
`ver S, and s TE, a servphone unitsber of teleparbittrary numb
`
`a transmisssion
`
`
`
`
`
`
`
`systeem US thatt is coupled to the tellephone unnits TE as wwell as to tthe server
`and the
`
`
`
`
`
`
`and tthat is usedd for transmmitting datta betweenn the telephhone units
`
`
`
`
`
`
`serveer S.” Id. aat 4:62–677. Figure 1 of the ’2995 patent iss reproduc
`ed below:
`
`S
`
`
`
`
`
`Figuure 1 depictts a block ddiagram off an emboddiment of tthe ’295 paatent’s
`
`
`
`
`
`
`
`
`
`commmunicationn system.
`
`
`
`
`
`
`
`The servver “is a coomputer syystem whicch serves foor organiziing a
`as
`
`
`
`
`databbase whichh includes a large nummber of di
`
`gital imagees as well
`
`
`
`
`
`
`
`classsification innformationn OM whicch may pottentially bee allocatedd to the
`
`
`
`
`
`
`
`digittal images.” Id. at 5:1–4. The server inclludes a nummber of coomponents,,
`
`
`
`
`
`
`
`
`incluuding receiiving unit EEE that recceives dataa sent fromm telephonee unit TE,
`the
`
`
`
`
`
`
`analyysis unit AAE that is ccoupled to rreceiving uunit EE annd extracts
`
`
`
`
`
`classsification innformationn from the data, and mmemory S
`
`
`
`
`and ddigital imaages. Id. att 5:5–13.
`
`
`a P for storinng the data
`
`
`
`
`3
`
`FACEBOOK v. TLI COMMUNICATIONS
`IPR2015-00778 TLI Ex. 2002
`
`

`

`
`
`IPR22014-005666
`
`
`Patennt 6,038,2995
`
`
`
`
`
`
`
`
`Figure 22 of the ’2995 patent iss reproduceed below:
`
`
`
`f in an emboodiment of
`
`
`
`
`t TE used ephone unitiew of telets a plan viFiguure 2 depict
`
`
`
`
`
`
`
`
`
`
`
`o standard the ’295 patentt’s commuunication syystem. In aaddition to
`features
`
`
`
`
`
`
`
`
`suchh as keypadd TA, earphhone HM, and microophone LS,, “[t]he teleephone uniit
`
`images.” IId. at 5:58–
`
`
`
`
`
`also includes aa digital immage pick uup unit for rrecording
`59.
`
`
`is provideed in the tellephone
`
`
`
`The ’295 ppatent statees that “a mmeans MZ
`
`
`
`
`
`
`
`TE for alloocating claassificationn informatiion OM whhich are prrescribed b
`unit
`
`the uuser to the digital imaages.” Id.
`
`
`
`
`
`
`at 6:42–455. The ’2995 patent fuurther statees
`
`
`
`
`
`
`
`that, “[i]n termms of its funnction, the allocationn means MZZ may be iintegrated
`
`
`the keypadd TA, for eexample, by using keey combinaations.” Idd. at 6:45–
`
`
`
`
`into
`
`
`
`
`
`
`Telephonee unit TE mmay be opeerated via aa telephonee line, or wwirelessly
`47.
`
`
`
`mobile telephone. Idd. at 6:36––39.
`as a
`
`– y
`
`
`
`
`4
`
`FACEBOOK v. TLI COMMUNICATIONS
`IPR2015-00778 TLI Ex. 2002
`
`

`

`IPR2014-00566
`Patent 6,038,295
`
`C.
`
`Illustrative Claims
`Petitioner challenges claims 1, 2, 6–11, 14–17, and 21–24 of the
`’295 patent. Claims 1 and 17 are independent claims, and read as follows:
`1.
`A
`communication
`system
`for
`recording
`and
`administering digital images, comprising:
`at least one telephone unit including:
`
`a telephone portion for making [a] 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.
`
`
`
`
`5
`
`FACEBOOK v. TLI COMMUNICATIONS
`IPR2015-00778 TLI Ex. 2002
`
`

`

`IPR2014-00566
`Patent 6,038,295
`
`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.
`
`D.
`
`The Prior Art
`
`Petitioner relies on the following prior art references:
`Burgess, et al., U.S. Patent No. 5,115,326, issued May 19, 1992 (“Burgess,”
`Ex. 1006).
`Witek, U.S. Patent No. 5,461,488, issued Oct. 24, 1995 (“Witek,” Ex. 1004).
`Hassan, et al., U.S. Patent No. 5,550,646, issued Aug. 27, 1996 (“Hassan,”
`Ex. 1003).
`Murphy, U.S. Patent No. 7,898,675 B1, issued Mar. 1, 2011 (“Murphy,”
`Ex. 1005).
`Butler et al., Network Working Group, Request for Comments (RFC) 937
`(Feb. 1985) (“RFC 937,” Ex. 1009).
`Gerald V. Quinn, The Fax Handbook 1–18, 61–69 (1989) (“Quinn,”
`Ex. 1008).
`Joe Campbell, C Programmer’s Guide to Serial Communications 135–180,
`335–404 (2nd ed. 1993) (“Campbell,” Ex. 1007).
`
`
`
`
`6
`
`FACEBOOK v. TLI COMMUNICATIONS
`IPR2015-00778 TLI Ex. 2002
`
`

`

`IPR2014-00566
`Patent 6,038,295
`
`E.
`
`The Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 1, 2, 6–11, 14–17, and
`21–24 of the ’295 patent on the following grounds:1
`References
`Basis
`Claim(s)
`Challenged
`1, 2, 6, 9, 17, 21, 24
`
`Hassan and Witek
`
`§ 103(a)
`
`Hassan, Witek, and
`Murphy
`Hassan, Witek, and
`Quinn
`Hassan, Witek, and
`Campbell
`Hassan, Witek,
`Burgess, and
`RFC 937
`
`
`
`§ 103(a)
`
`14
`
`§ 103(a)
`
`7, 22
`
`§ 103(a)
`
`10, 11, 15, 16
`
`§ 103(a)
`
`8, 23
`
`II. ANALYSIS
`
`A.
`
`Claim Interpretation
`The Board interprets claims of an unexpired patent using the
`“broadest reasonable construction in light of the specification of the patent in
`which [the claims] appear[].” 37 C.F.R. § 42.100(b); see Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2002). For purposes
`of this Decision, based on the record before us, we interpret the claim terms
`“classification information” (claims 1, 6–8, 17, and 21–24) and “means for
`allocating classification information” (claim 1).
`
`
`1 Petitioner supports its challenge with a declaration executed by William H.
`Beckmann, Ph.D. on March 27, 2014 (Ex. 1002).
`
`7
`
`
`FACEBOOK v. TLI COMMUNICATIONS
`IPR2015-00778 TLI Ex. 2002
`
`

`

`IPR2014-00566
`Patent 6,038,295
`
`
`“classification information”
`1.
`Petitioner argues that the term “classification information” should be
`interpreted to mean “information that characterizes or is otherwise
`associated with a digital image.” Pet. 13. As support for this interpretation,
`Petitioner states that the ’295 patent specification “uses the word
`‘characterize’ thirteen (13) times in describing classification information,”
`and “provides several examples of ‘classification information’ such as” the
`address or telephone number of the telephone unit transmitting the data, the
`telephone number of the server receiving the data, and the time the digital
`image was taken. Id. at 12–13. Patent Owner agrees that “the claimed
`‘classification information’ need not have a particular relationship to the
`content of a digital image” and “it could fairly be construed” as Petitioner
`proposes. Prelim. Resp. 19–20. Patent Owner notes, however, the claims of
`the ’295 patent also require that the “classification information” be
`prescribable by a user, and be used by the server to store the digital images.
`Id. at 20.
`Based on the record before us, we are persuaded that Petitioner’s
`proposed interpretation is the broadest reasonable interpretation. Further,
`Petitioner’s proposed interpretation is consistent with the ’295 patent
`specification, which states that the classification information “characterize[s]
`the digital images” and “identif[ies] the digital images.” Ex. 1001, 2:32–34,
`40–41, 3:18–19.
`Therefore, for purposes of this Decision, we interpret “classification
`information” as “information that characterizes or is otherwise associated
`with a digital image.”
`
`
`
`
`8
`
`FACEBOOK v. TLI COMMUNICATIONS
`IPR2015-00778 TLI Ex. 2002
`
`

`

`IPR2014-00566
`Patent 6,038,295
`
`
`“means for allocating classification information”
`2.
`We agree with Petitioner and Patent Owner that “means for allocating
`classification information” is a means-plus-function limitation invoking 35
`U.S.C. § 112, ¶ 6 (now re-codified as 35 U.S.C. § 112(f)) because (1) the
`limitation uses the phrase “means for”; (2) the term “means for” is modified
`by functional language; and (3) the term “means for” is not modified by any
`structure recited in the claim to perform the claimed function. Construing
`means-plus-function claim language is a two-step process: (1) “define the
`particular function of the claim limitation”; and (2) “look to the specification
`and identify the corresponding structure for that function” where the
`“structure disclosed in the specification is corresponding structure only if the
`specification or prosecution history clearly links or associates that structure
`to the function recited in the claim.” Golight, Inc. v. Wal-Mart Stores, Inc.,
`355 F.3d 1327, 1333–34 (Fed. Cir. 2004) (internal quotations and citations
`omitted).
`Except for a narrow exception concerning generic functions
`performed by a general-purpose computer, such as “processing,”
`“receiving,” and “storing,” a computer-implemented means-plus-function
`element is indefinite unless the specification discloses the specific algorithm
`used by the computer to perform the recited function. Function Media, LLC
`v. Google, Inc., 708 F.3d 1310, 1318 (Fed. Cir. 2013); Net MoneyIN, Inc. v.
`VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008); Aristocrat Techs.
`Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008).
`Therefore, the specification must disclose enough of a specific algorithm to
`provide the necessary structure under § 112, ¶ 6. “The point of the
`requirement that the patentee disclose particular structure in the specification
`
`
`
`
`9
`
`FACEBOOK v. TLI COMMUNICATIONS
`IPR2015-00778 TLI Ex. 2002
`
`

`

`IPR2014-00566
`Patent 6,038,295
`
`and that the scope of the patent claims be limited to that structure and its
`equivalents is to avoid pure functional claiming.” Aristocrat, 521 F.3d at
`1333.
`
`On this record, we determine that the function of the claim limitation
`is “allocating classification information.” Petitioner states that “the ’295
`specification does not appear to disclose any physical structure for
`performing” the function of allocating classification information. Pet. 13.
`Petitioner contends that, although “Figure 2 shows a telephone unit with a
`box ‘MZ’ labeled ‘classification information allocator,’” there is no
`explanation of its operation. Id. at 14. Petitioner further states that,
`“[b]ecause the specification does not disclose any algorithm for performing
`the allocating function,” Petitioner “has not proposed one for inclusion in the
`corresponding structure.” Id. (citing Ex. 1002 ¶ 84). Instead, Petitioner
`proposes that “the corresponding structure should be construed as ‘MZ,’
`e.g., hardware and/or software for performing the allocating function recited
`in the claim.” Id.
`Patent Owner argues that “the corresponding structure for ‘allocating
`classification information prescribed by a user’ is at least the phone’s
`keypad, controls, display, microphone and/or speech recognition unit.”
`Prelim. Resp. 24. Patent Owner further contends that the ’295 patent
`“explains that the phone’s functions may be controlled via the operating
`field BE depicted in Figure 2, that the operating field BE can also operate as
`the phone’s display, and that the operating field BE may be integrated into
`the phone’s keypad TA and/or be integrated with other phone controls.” Id.
`at 23 (citing Ex. 1001, 6:24–35).
`
`
`
`
`10
`
`FACEBOOK v. TLI COMMUNICATIONS
`IPR2015-00778 TLI Ex. 2002
`
`

`

`IPR2014-00566
`Patent 6,038,295
`
`
`Based on our review of the ’295 patent, the allocation of classification
`information is discussed with respect to Figure 2. The ’295 patent states:
`In the illustrated embodiment, a means MZ is provided in the
`telephone unit TE for allocating the classification information
`OM which are prescribed by the user to the digital images and
`thus characterizing the digital images. In terms of its function,
`the allocation means MZ may be integrated into the keypad TA,
`for example, by using key combinations. The telephone unit
`TE also includes a speech recognition unit which converts open
`speech into text. The text can then be allocated to the digital
`images and transferred with the digital image data.
`Ex. 1001, 6:42–51. Thus, the ’295 patent identifies “a means MZ” in
`Figure 2 that “allocates classification information” and “may be integrated
`into the keypad,” but does not describe how the classification information is
`allocated to the digital image.
`Other references to allocating classification information in the ’295
`patent also do not describe how the classification information is allocated to
`a digital image. For example, the ’295 patent describes the user prescribing
`the classification information using a telephone unit, but does not describe
`that information subsequently being allocated to the digital image:
`The classification information OM may be prescribed by a user
`of the telephone unit TE, for example, by simply speaking the
`information into the microphone LS of the telephone unit TE or
`by inputting a character sequence into the key pad TA.
`Ex. 1001, 8:6–10. Similarly, the ’295 patent describes that “classification
`information OM which are unambiguously allocated to the digital images
`serve to characterize the digital images” (id. at 6:53–55), and that “additional
`information about the recorded image may be attached at the time of the
`image acquisition directly by the individual implementing the recording of
`
`
`
`
`11
`
`FACEBOOK v. TLI COMMUNICATIONS
`IPR2015-00778 TLI Ex. 2002
`
`

`

`IPR2014-00566
`Patent 6,038,295
`
`the image” (id. at 3:22–25), but does not describe how the information is
`allocated or attached to the images.
`The remainder of the ’295 patent does not provide any further detail
`with respect to the “allocating” of classification information to the digital
`images. The patent merely uses the word “allocate,” which may correspond
`to the function of the claimed “means for allocating,” but does not serve to
`describe an algorithm by which the classification information are
`“allocated.” Although the ’295 patent describes the use of a keypad or
`speech recognition unit by a user to prescribe classification information, it
`does not go on to provide an algorithm that may correspond to the claimed
`function of “allocating classification information prescribed by a user . . . to
`characterize digital images.”
`We find that the ’295 patent does not describe an algorithm for
`“allocating classification information” as recited in claim 1. We are mindful
`that describing an algorithm to the satisfaction of one of ordinary skill in the
`art does not require, for example, detailed disclosure in a step-by-step
`flowchart. See, e.g., Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323,
`1340 (Fed. Cir. 2008) (“the patent must disclose . . . enough of an algorithm
`to provide the necessary structure under § 112, ¶ 6,” which can be expressed
`in any understandable terms (e.g., a mathematical formula, in prose, or as a
`flowchart)). The ’295 patent, however, does not describe, to any appreciable
`extent, an algorithm that corresponds to the function of the claimed “means
`for allocating.”
`B.
`Claims 1, 2, 6–11, and 14–16
`Petitioner applies various references against independent claim 1 and
`dependent claims 2, 6–11, and 14–16 in arguing that the claims are obvious
`
`
`
`
`12
`
`FACEBOOK v. TLI COMMUNICATIONS
`IPR2015-00778 TLI Ex. 2002
`
`

`

`IPR2014-00566
`Patent 6,038,295
`
`over the prior art. Pet. 24–38, 42–56. In doing so, Petitioner construes the
`“means for allocating classification information” limitation of claim 1 as
`“hardware and/or software for performing the allocating function recited in
`the claim.” Id. at 14. As indicated in the claim construction section, supra,
`we are unable to arrive at an interpretation of the requirements of claim 1
`due to the lack of disclosed structure corresponding to the “means for
`allocating classification information” limitation. A lack of sufficient
`disclosure of structure under 35 U.S.C. § 112, ¶ 6 renders a claim indefinite,
`and thus not amendable to construction. See In re Aoyama, 656 F.3d 1293,
`1298 (Fed. Cir. 2011) (quoting Enzo Biochem, Inc. v. Applera Corp., 599
`F.3d 1325, 1332 (Fed. Cir. 2010) (“If a claim is indefinite, the claim, by
`definition, cannot be construed.”)). In the circumstances of this case,
`because the claims are not amenable to construction, we are unable to
`conclude that there is a reasonable likelihood that Petitioner would prevail in
`its challenge of claim 1, and claims 2, 6–11, and 14–16 that depend
`therefrom.
`C.
`Claims 17, 21, and 24
`Petitioner contends that claims 17, 21, and 24 would have been
`obvious under 35 U.S.C. § 103(a) over the combination of Hassan and
`Witek. Pet. 16–41.
`Hassan is directed to transmitting image information to a facsimile
`machine. Ex. 1003, 1:6–8. Hassan describes an “image capture device”
`resembling “a small, portable, hand held camera,” that can take a picture and
`“store a digital representation (image) of the picture in an internal memory.”
`Id. at 2:43–49. Hassan further discloses that “the user of the system may be
`prompted to enter a supplemental ID number or other text information . . . so
`
`
`
`
`13
`
`FACEBOOK v. TLI COMMUNICATIONS
`IPR2015-00778 TLI Ex. 2002
`
`

`

`
`
`IPR22014-005666
`
`
`Patennt 6,038,2995
`
`
`
`
`
`
`
`a user could be reminnded of immportant faccts (such aas client naame, file
`that
`
`.” Id. at 4:
`51–60.
`
`
`
`
`ital image.ticular digiwith a partassociated nummber, etc.) a
`
`
`
`
`
`
`
`Accoording to HHassan, thee image cappture devicce also inccludes a faccsimile
`
`
`
`
`
`
`
`interrface “in orrder to preppare an enhhanced diggital imagee for transmmission to
`
`
`
`
`
`remoote facsimiile machine.” Id. at 44:66–67. HHassan alsoo disclosess that the
`
`
`
`
`
`
`
`
`
`
`e k anywherene networkhe telephonected to than be conneimagge capture device “ca
`
`
`
`
`an orrdinary telephone jacck is availaable, or, if
`
`
`provided wwith a celluular
`
`
`
`
`
`
`
`vailable.” ervice is ave cellular setelepphone capaability or coonnection, anywhere
`
`
`Id. aat 3:11–15.
`imile (‘faxomate facsised to autoa system usWitek diiscloses “a
`
`
`
`
`
`’) logging
`
`
`
`
`and rrouting viaa a computterized systtem.” Ex.
`
`
`1004, 1:499–50. Figuure 1 of
`
`
`
`Witeek is reprodduced beloow:
`
`a
`
`
`
`
`
`
`
`
`
`Figuure 1 depictts a block ddiagram off an emboddiment of WWitek’s faxx data
`
`
`proccessing systtem. Id. att 1:33–34.
`
`
` The fax pprocessing
`
`system inccludes
`
`
`
`
`14
`
`FACEBOOK v. TLI COMMUNICATIONS
`IPR2015-00778 TLI Ex. 2002
`
`

`

`IPR2014-00566
`Patent 6,038,295
`
`computer 12 with memory 13, and fax receipt software program 14 within
`memory 13. Id. at 1:67, 2:8–10, 16. Fax receipt software program 14 “is
`generally used to receive data from the serial computer interface and store it
`into a pict fax file 15.” Id. at 2:16–18. Witek further discloses that pict fax
`file 15 stores information received through the modem and is processed by
`fax receipt software program 14. Id. at 2:18–20. According to Witek,
`optical character recognition (“OCR”) software 16 processes pict fax file 15
`and translates pict fax file 15 “from a non-text format to a text format” in
`order to determine the information needed to electronically log or track the
`fax transmission, and to route the fax transmission to the proper destination.
`Id. at 2:55–57, 2:65–3:2.
`Independent claim 17 recites a method having the steps of “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.” Petitioner
`contends that disclosures in Witek meet the above-recited claim 17
`limitations. Petitioner contends that Witek discloses analyzing the received
`fax using OCR software 16 and pattern recognition software 18 to extract
`classification information, and also discloses storing the digital images in
`memory 13 of computer 12. Pet. 39–40. Petitioner further contends that
`Witek discloses that storing the digital image takes the classification
`information into account because the fax cover sheet is analyzed to
`determine where the fax should be routed and stored. Id. at 40.
`In response, Patent Owner argues that, in Witek, the received fax is
`stored on computer 12 in pict fax file 15 before it is scanned by OCR
`software 16 and the classification information is extracted. Prelim. Resp. 41.
`
`
`
`
`15
`
`FACEBOOK v. TLI COMMUNICATIONS
`IPR2015-00778 TLI Ex. 2002
`
`

`

`IPR2014-00566
`Patent 6,038,295
`
`According to Patent Owner, computer 12, therefore, does not store digital
`images by “taking into consideration the classification information” as claim
`17 requires. Id. at 42.
`We agree with Patent Owner that Petitioner has not established that
`Witek teaches the “storing the digital images in the server, said step of
`storing taking into consideration the classification information” limitation
`recited in claim 17. Petitioner does not direct us, with any specificity, to
`evidence demonstrating sufficiently that Witek teaches storing digital
`images in computer 12 after the classification information is extracted from
`pict fax file 15. Rather, as noted above, Witek describes that, after OCR
`software 16 and pattern recognition software 18 determine “one or more
`destinations of the fax received via the modem 10, the fax is routed via an
`electronic mail program 20 to the proper destination.” Ex. 1004, 3:63–65.
`Witek further describes the creation of a log file that
`will contain, per fax, information such as the time and date of
`receipt by the program 14, the time of the generation of file 15,
`any complications or information regarding the OCR software
`16, the time the text fax file 17 was generated, the destinations
`determined by
`the code 18,
`the
`time and destinations
`transmitted by the e-mail program 20, user information from
`computers 26 when logging onto or accessing the computer 12,
`number of pages received per faxed transmission, the sender of
`the fax, phone numbers, addresses, and any other information
`which could be regarded as useful to a facsimile user or sender.
`Id. at 4:45–56. Although the log file contains data that could be described as
`classification information, the log file does not contain digital images
`associated therewith.
`Petitioner also cites Witek’s disclosure that “[t]he system of FIG. 1
`prevents this loss [of fax transmissions] by storing the received fax
`
`
`
`
`16
`
`FACEBOOK v. TLI COMMUNICATIONS
`IPR2015-00778 TLI Ex. 2002
`
`

`

`IPR2014-00566
`Patent 6,038,295
`
`permanently on disk or a like media” in support of its contention that Witek
`discloses claim 17’s “storing the digital images in the server, said step of
`storing taking into consideration the classification information” limitation.
`Pet. 23, 40; Ex. 1002 ¶ 120. This statement, however, does not add anything
`meaningfully specific and sets forth only a stated advantage of the Witek
`system. Ex. 1004, 5:4–53. For instance, Petitioner does not explain where
`the disk or like media resides in computer 12, or when and how digital
`images are stored into such disk or like media while taking into
`consideration the classification information. That the Witek system can
`permanently store received faxes does not demonstrate that the Witek
`system stores digital images in the server, taking into consideration the
`classification information, as required by claim 17.
`Consequently, we are not persuaded that Petitioner has demonstrated a
`reasonable likelihood that independent claim 17, and claims 21 and 24 that
`depend therefrom, would have been obvious over the combination of Hassan
`and Witek.
`D.
`Claims 22 and 23
`Petitioner contends that claim 22 would have been obvious under
`35 U.S.C. § 103(a) over the combination of Hassan, Witek, and Quinn, and
`that claim 23 would have been obvious under 35 U.S.C. § 103(a) over the
`combination of Hassan, Witek, Burgess, and RFC 937. Pet. 44–46, 53–56.
`Claim 22 depends from claim 17, and further requires the step of “providing
`a telephone number of the at least one telephone unit and/or of the server as
`part of the classification information.” Claim 23 also depends from claim
`17, and further requires the step of “providing location information in
`
`
`
`
`17
`
`FACEBOOK v. TLI COMMUNICATIONS
`IPR2015-00778 TLI Ex. 2002
`
`

`

`IPR2014-00566
`Patent 6,038,295
`
`memory at which the digital images to be stored as a part of the
`classification information.”
`As set forth above, Petitioner has not established a reasonable
`likelihood that claim 17 would have been obvious over the combination of
`Hassan and Witek. Petitioner does not rely on Quinn, Burgess, or RFC 937
`as teaching any limitation of claim 17. Accordingly, we determine that the
`record before us does not establish a reasonable likelihood that Petitioner
`would prevail in establishing that claim 22 would have been obvious over
`the combination of Hassan, Witek, and Quinn, or that claim 23 would have
`been obvious over the combination of Hassan, Witek, Burgess, and
`RFC 937.
`
`III. CONCLUSION
`For the foregoing reasons, we conclude that Petitioner has not
`demonstrated a reasonable likelihood that at least one of the challenged
`claims of the ’295 patent is unpatentable based on the asserted grounds.
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied; and
`FURTHER ORDERED that no inter partes review will be instituted
`pursuant to 35 U.S.C. § 314(a) with respect to any claim of the ’295 patent
`on any of the grounds of unpatentability alleged in the Petition.
`
`
`
`
`18
`
`FACEBOOK v. TLI COMMUNICATIONS
`IPR2015-00778 TLI Ex. 2002
`
`

`

`IPR2014-00566
`Patent 6,038,295
`
`PETITIONER:
`
`Hedi L. Keefe
`Mark R. Weinstein
`Andrew C. Mace
`mkeefe@cooley.com
`mweinstein@cooley.com
`amace@cooley.com
`
`
`
`PATENT OWNER:
`
`Tarek N. Fahmi
`tarek.fahmi@ascendalaw.com
`
`Robert A. Whitman
`robert.whitman@mishcon.com
`
`
`
`
`
`
`
`19
`
`FACEBOOK v. TLI COMMUNICATIONS
`IPR2015-00778 TLI Ex. 2002
`
`