UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`FACEBOOK, INC. & INSTAGRAM, LLC
`Petitioner
`v.
`TLI COMMUNICATIONS LLC
`Patent Owner
`
`Case IPR2015-00778
`Patent 6,038,295
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 6,038,295
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`FACEBOOK, INC. & INSTAGRAM, LLC
`Petitioner
`v.
`TLI COMMUNICATIONS LLC
`Patent Owner
`
`Case IPR2015-00778
`Patent 6,038,295
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 6,038,295
`
`
`
`
`
`
`
`
`
`
`
`
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`
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`
`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES ................................................................................... iii
`EXHIBIT LIST ........................................................................................................ iv
`I.
`INTRODUCTION ................................................................................ 1
`II.
`OVERVIEW OF U.S. PATENT 6,038,295 ......................................... 1
`III.
`CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3) ......... 3
`
`IV.
`
`A.
`
`B.
`C.
`
`A.
`
`B.
`
`C.
`
`D.
`
`“Classification Information is Prescribable by a User . . . Which
`Characterizes the Digital Images” (independent claim 17) .................. 3
`“TELEPHONE UNIT” (independent claim 17) ................................... 4
`“DIGITAL PICK UP UNIT” (independent claim 17) ......................... 8
`ARGUMENT ....................................................................................... 9
`PETITIONER’S CHALLENGE SHOULD BE DENIED
`BECAUSE THE BOARD HAS ALREADY CONSIDERED,
`AND REJECTED, SUBSTANTIALLY THE SAME
`ARGUMENTS PRESENTED IN THE PETITON. ........................... 10
`PETITIONER’S CHALLENGE SHOULD BE DENIED
`BECAUSE IT REPRESENTS A PRACTICE THAT
`UNDERMINES THE AIA’S GOAL OF ENSURING JUST,
`SPEEDY, AND ECONOMICAL RESOLUTION OF
`DISPUTES. ........................................................................................ 12
`PETITIONER’S PROPOSED COMBINATION OF
`REFERENCES FAILS TO SUGGEST THE SUBJECT
`MATTER OF CLAIM 17, THEREFORE ALL OF THE
`PROPOSED GROUNDS FOR INSTITUTION SHOULD BE
`DENIED. ............................................................................................ 14
`PETITIONER’S OWN ARGUMENTS DEMONSTRATE
`THAT CLAIMS 21 AND 22 ARE NOT OBVIOUS IN VIEW
`OF THE CITED REFERENCES. ...................................................... 22
`
`
`
`i
`
`
`
`V.
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`
`
`V.V.
`
`CONCLUSION .................................................................................. 24
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`
`
`CONCLUSION ................................................................................ .. 24CONCLUSION ................................................................................ .. 24
`
`
`
`ii
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`
`
`TABLE OF AUTHORITIES
`
`CASES
`Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286 (Fed. Cir. 2006) .......................... 19
`
`CFMT, Inc. v. Yieldup Int’l. Corp., 349 F.3d 1333 (Fed. Cir. 2003) ...................... 20
`
`Heckler v. Chaney, 470 U.S. 821 (1985) ................................................................ 14
`
`In re Abbott Diabetes Care Inc., 696 F.3d 1142 (Fed. Cir. 2012) .............. 4, 7, 8, 19
`
`In re Acad. Of Sci. Tech. Ctr., 367 F.3d 1359 (Fed. Cir. 2004) .............................. 19
`
`In re Fine, 837 F.2d 1071 (Fed. Cir. 1988) ............................................................. 21
`
`In re Skvorecz, 580 F.3d 1262 (Fed. Cir. 2009) ........................................................ 7
`
`In re Wilson, 424 F.2d 1382 (CCPA 1970) ............................................................ 20
`
`Phillips v. AWH Corp., 415 F. 3d 1303 (Fed. Cir. 2005) ....................................... 18
`
`Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352 (Fed. Cir. 2011) ..................... 19
`
`
`STATUTES
`35 U.S.C. § 314(a) ............................................................................................ 10, 13
`
`35 U.S.C. § 325(d) .................................................................................................. 10
`
`
`OTHER AUTHORITIES
`77 Fed. Reg. 48680 (Aug. 14, 2012) ....................................................................... 13
`
`MPEP 2143.03 ........................................................................................................ 20
`
`
`REGULATIONS
`37 C.F.R. § 42.108(c).............................................................................. 1, 21, 23, 24
`
`
`
`
`
`iii
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`
`
`EXHIBIT LIST
`
`EXHIBIT LIST
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`
`
`Ex. 2001
`
`.2001
`
`Ex
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`Sharp J-SH04, Wikipedia (July 7, 2014, 11:15 AM), (retrieved from:
`Sharp J-SH04, Wikipedia (July 7, 2014, 11:15 AM), (retrieved from:
`
`http://en.wikipedia.org/wiki/J-SH04).
`http://en.wikipedia.org/wiki/J-SH04).
`
`Ex. 2002 Facebook, Inc. v. TLI Communications LLC, IPR2014-0056,
`Facebook, Inc. v. TLI Communications LLC, IPR2014-0056,
`
`. 2002
`
`Ex
`
`Ex. 2003
`
`. 2003
`
`Ex
`
`DECISION Denying Institution of Inter Partes Review, Paper 14
`DECISION Denying Institution of Inter Partes Review, Paper 14
`
`(P.T.A.B. Sep. 15, 2014).
`(P.T.A.B. Sep. 15, 2014).
`
`Supplemental Expert Report of Dr. V. Thomas Rhyne Regarding the
`Supplemental Expert Report of Dr. V. Thomas Rhyne Regarding the
`
`Invalidity of the Asserted Claims of U.S. Patent Nos. 6,895,557 and
`Invalidity of the Asserted Claims of U.S. Patent Nos. 6,895,557 and
`
`7,765,482, dated September 14, 2012 (From Summit 6 Litigation).
`7,765,482, dated September 14, 2012 (From Summit 6 Litigation).
`
`Ex. 2004 April 2, 2013 Trial Transcript From the Summit 6 Litigation (Direct
`April 2, 2013 Trial Transcript From the Summit 6 Litigation (Direct
`
`. 2004
`
`Ex
`
`and Cross Examination of Dr. Rhyne).
`and Cross Examination of Dr. Rhyne).
`
`Ex. 2005 April 3, 2013 Trial Transcript From the Summit 6 Litigation (Cross
`April 3, 2013 Trial Transcript From the Summit 6 Litigation (Cross
`
`. 2005
`
`Ex
`
`Examination of Dr. Rhyne).
`Examination of Dr. Rhyne).
`
`Ex. 2006 Expert Report of Dr. V. Thomas Rhyne Regarding the Invalidity of
`Expert Report of Dr. V. Thomas Rhyne Regarding the Invalidity of
`
`. 2006
`
`Ex
`
`the Asserted Claims of U.S. Patent Nos. 6,895,557 and 7,765,482,
`the Asserted Claims of U.S. Patent Nos. 6,895,557 and 7,765,482,
`
`dated August 1, 2012 (From Summit 6 Litigation).
`dated August 1, 2012 (From Summit 6 Litigation).
`
`
`
`iv
`iv
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`
`
`I.
`
`INTRODUCTION
`
`Pursuant to 37 C.F.R. § 42.107(a) Patent Owner, TLI Communications LLC,
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`submits the following preliminary response to the Petition, setting forth reasons
`
`why no inter partes review should be instituted under 35 U.S.C. § 314. The Board
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`should not institute inter partes review because Petitioner has failed to demonstrate
`
`a reasonable likelihood that at least one of the claims challenged in the Petition is
`
`unpatentable.1
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`
`
`II. OVERVIEW OF U.S. PATENT 6,038,295
`
`U.S. Patent No. 6,038,295 (the “’295 patent” or the “Mattes patent”) was
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`first-filed in June 1996 (as German patent application 196 24 128). The Mattes
`
`patent addressed the problem of the limited memory associated with digital
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`recording devices by providing a communication system that allowed for a
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`telephone to capture digital images, classify such images, and transmit such digital
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`images to a server device that stores the digital images taking into consideration
`
`the classification information.2 To put this 1996 date in perspective, the first two
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`commercially available mobile phones having cameras are generally considered to
`
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`1 37 C.F.R. § 42.108(c).
`
`2 Ex. 1001 at 1:42-47, 1:62 – 2:4; Figs. 1 and 2.
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`
`
`1
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`
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`be the Samsung SCH-V200 (announced June 2000) and the Sharp J-SH04
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`(released in November 2000).3
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`Recognizing that mobile phones with integrated cameras could result in the
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`proliferation of digital images, the Mattes patent further modified existing mobile
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`phones to allow mobile phone users to prescribe and/or allocate classification
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`information data to the digital images, for example, by using the phone’s keypad.4
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`The mobile phone then transmits the digital images and classification information
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`data to a server. The server extracts the classification information data and uses it
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`to automatically and intelligently store the digital images so that a multitude of
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`transmitted images may be “surveyable” and “easily relocated.”5
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`In 1996, the Internet, cellular telephony and digital cameras were all in their
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`infancy. This was the age of dial-up Internet and AMPS (analog) cellular
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`telephones. A very few consumer digital cameras were just being released, and
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`those devices (which cost upwards of $1000 in 1996 dollars) could take only a few
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`low-quality pictures before filling-up their memory cards. In this environment, the
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`Mattes patent represented an important advancement of the state of the art.
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`
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`3 Ex. 2001.
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`4 Ex. 1001 at 6:42-58, 7:16-19.
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`5 Id. at 1:62-2:4, 2:55-65, 7:45-55.
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`
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`2
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`
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`III. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3)
`
`A.
`
`“CLASSIFICATION INFORMATION IS PRESCRIBABLE BY A
`USER . . . WHICH CHARACTERIZES THE DIGITAL IMAGES”
`(INDEPENDENT CLAIM 17)
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`Patent Owner generally agrees with Petitioner that the claimed
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`“classification information” need not have a particular relationship to the content
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`of a digital image and that it could fairly be construed as “information that
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`characterizes or is otherwise associated with a digital image,” as Petitioner
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`suggests.6 However, independent claim 17 further recites that the classification
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`information: (i) must be “prescribable by a user” and (ii) must be used by the
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`server to intelligently store the images (“storing the digital images in the server [ ]
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`taking into consideration the classification information”).7
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`
`
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`6 Petition at 15.
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`7 Ex. 1001 at 10:8-16; see also id. at 2:61-65 (“Since the storing step depends upon
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`the extracted classification information that characterize the individual digital
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`images, a simple, fast and surveyable archiving of the digital images is
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`automatically carried out.”)
`
`
`
`3
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`
`
`B.
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`“TELEPHONE UNIT” (INDEPENDENT CLAIM 17)
`
`Petitioner attempts to read out the requirement that a telephone unit is
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`required to be, in fact, a telephone unit. Instead, Petitioner attempts to expand the
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`definition of a telephone unit to encompass any “device capable of transmitting
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`digital information … through a wired or wireless telephone connection.”8 Of
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`course, in 1996, a computer, a modem, a router and a beeper where all devices that
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`could be configured to transmit digital information through a telephone connection,
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`but they were not then and are not today considered “telephone units,” regardless
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`of their functionality.
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`Although the PTO “is required to give all claims their broadest reasonable
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`construction, … any such construction [must] be consistent with the specification,
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`and that claim language should be read in light of the specification as it would be
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`interpreted by one of ordinary skill in the art.”9 The ’295 patent makes clear that
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`the claimed “telephone unit” must be a telephone unit. A telephone unit is not a
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`computer or some other device, such as a modem or beeper, that merely shares
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`some functionality with a telephone unit.
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`
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`8 Petition at 16.
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`9 In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1148-50 (Fed. Cir. 2012).
`
`
`
`4
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`
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`The specification states that “a telephone unit to be used in the
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`communication system of the present invention” is depicted in Figure 2
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`(reproduced here).10 The specification explains that the telephone unit “includes [in
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`addition to inventive features] the standard
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`features of a telephone unit including, for
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`example, an earphone HM, a keypad TL
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`which serves as an operating field for the
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`telephone unit TE, as well as a microphone
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`LS.”11 The telephone unit “also includes a
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`digital image pick up unit being integrated
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`into the telephone unit TE.”12 In addition, the
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`telephone unit is able to “operat[e] as a
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`normal telephone or as an image pick up
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`and transmitting unit according to the present communication system.”13
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`A person of ordinary skill in the art would thus understand that the claimed
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`telephone unit is a telephone (with additional features that allow for it to record
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`10 Ex. 1001 at 4:51-52, Fig. 2.
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`11 Id. at 5:54-58.
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`12 Id. at 5:58-60.
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`13 Id. at 6:15-19 (emphasis added).
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`
`
`5
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`
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`and transmit digital images with classification information) with the standard
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`features of any telephone, namely a microphone, earphone and keypad. Further,
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`and as depicted in Figure 2, claim 17 expressly requires “a digital pick up unit
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`[e.g., image sensor] in a telephone unit.”14
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`In fact, the specification expressly distinguishes systems that are “used to
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`transmit spoken data in combination with image date” because they require “a high
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`performance, expensive and bulky computer[s] with an external video camera . . .
`
`.”15 Thus, the Mattes patent recognizes that, regardless of whether a computer has
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`software to “transmit spoken data,” that “expensive and bulky computer” would
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`still be a “computer” and not a telephone unit. In contrast to “telephone units,” the
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`specification consistently uses the terms “servers” or “computer systems” when
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`referring to the devices that store the digital images received from the telephone
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`units, and “telephone units” when referencing the devices that record the digital
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`images.16 Claim 17 refers “servers” as the devices that store or archive digital
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`14 Id. at 10:3-4 (emphasis added).
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`15 Id. at 1:20-25.
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`16 See, e.g., Id. at 2:7-9, 24-28 (describing a telephone unit) vs. id. at 2:28-32
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`(describing a server); and see claim 17 (distinguishing between the telephone unit
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`and the server), id. at 10:1-17.
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`
`
`6
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`
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`images and “telephone units” including “digital pick-up units” as recording
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`devices.
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`Petitioner’s declarant properly recognizes that the telephone unit “can be
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`‘either a wire transmitting telephone or a cordless phone and possibly in a cellular
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`phone which incorporates therein a digital camera . . . .”17 However, other than a
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`conclusory quote of Petitioner’s construction, Petitioner’s declarant provides no
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`opinions directed to the general question of whether one of ordinary skill in the art
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`in 1996 would believe that a computer or a modem is a telephone unit.
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`Giving “claims their broadest reasonable interpretation … does not include
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`giving claims a legally incorrect interpretation.”18 For purposes of this petition, it is
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`not necessary to construe the term “telephone unit.” Instead, all that is necessary is
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`a finding that the “computers,” such as the “expensive and bulky computers”
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`criticized in the specification, would not be “telephone units.” Such a finding is
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`consistent with the ordinary meaning of “telephone units,” the language of the
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`specification and common sense.19 In other words, Petitioner’s overly broad,
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`17 Ex. 1002 at ¶ 36.
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`18 In re Skvorecz, 580 F.3d 1262, 1267–68 (Fed. Cir. 2009).
`
`19 See In re Abbott Diabetes Care Inc., 696 F.3d at 1148-50 (reversing PTO
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`construction of “electrochemical sensor” and finding based on the use of the term
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`in the specification including “all disclosed embodiments,” disparaging remarks in
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`
`
`7
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`
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`proposed construction should be rejected because it is “unreasonable and
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`inconsistent with the language of the claims and the specification.”20
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`
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`C.
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`“DIGITAL PICK UP UNIT” (INDEPENDENT CLAIM 17)
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`A digital pick up unit is not a digital camera but is the portion of a digital
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`camera that receives light and converts it to electronic signals, for example, a solid
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`state image sensor, such as a CCD. As the Mattes patent explains, for example, in
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`claim 25, a “digital still camera [has] a lens, a shutter and a digital still image
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`pickup.”21 Since many images sensors, including many CCDs, are analog, the
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`images they pick-up must subsequently be converted to digital form.22
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`Consequently, the claimed digital pick up unit may operate like a digital camera,23
`
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`the specification regarding alternatives, and the specification failing to “suggest[]
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`or hint” that term should be construed more broadly that term required “a discrete
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`electrochemical sensor devoid of external connection cables …”).
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`20 Id.
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`21 Ex. 1001 at 10:53-55.
`
`22 See id. at 2:35-39 (“[R]ecording the images by a digital image pick up unit…
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`converting the images to digital form as digital images and possibly stored. . . .”).
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`23 Ex. 1001 at 6:1-2.
`
`
`
`8
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`
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`but it is not a digital camera and is instead an image sensor -- the image sensing
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`portion of a digital camera.
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`
`
`IV. ARGUMENT
`
`Petitioner asserts three ground for challenging claims 17-24 of the Mattes
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`patent. All of these grounds rely on alleged obviousness under 35 U.S.C. § 103(a)
`
`in view of the combined teachings of Lichty, Sharma, Parulski, and Coffin.24 All of
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`these proposed grounds for institution should be denied because they present no
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`new arguments that were not already considered, and rejected, by the Board in
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`IPR2014-00566 (brought by Petitioner, Facebook, Inc.). Furthermore, even if the
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`substance of the combined teachings of the references is considered on the merits,
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`those teachings fail to suggest the subject matter recited in the challenged claims.
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`Accordingly, no inter partes review should be instituted.
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`24 Petition at 9.
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`
`
`9
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`
`
`A.
`
`PETITIONER’S CHALLENGE SHOULD BE DENIED BECAUSE
`THE BOARD HAS ALREADY CONSIDERED, AND REJECTED,
`SUBSTANTIALLY THE SAME ARGUMENTS PRESENTED IN
`THE PETITON.
`
`In IPR2014-00566, Petitioner Facebook, Inc. challenged the patentability of
`
`claims 17 and 21-24 as obvious in view of certain references. The Board refused to
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`institute inter partes review as to these challenged claims because,
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`Petitioner has not established that [the cited reference] teaches
`the “storing the digital images in the server, said step of storing
`taking into consideration the classification information”
`limitation recited in claim 17.25
`Because the present petition makes the same arguments as the prior petition (and is
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`similarly deficient), the same result should ensue.
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`
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`The Board has discretion to decline institution of an inter partes review.26
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`One factor the Board may take into account when exercising its discretion is
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`whether “the same or substantially the same prior art or arguments were previously
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`presented to the Office.”27 Here, although Petitioner spends several pages in its
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`petition tying to distinguish the technical content of the references it relied upon in
`
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`25 Ex. 2002 at 16.
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`26 35 U.S.C. § 314(a).
`
`27 35 U.S.C. § 325(d).
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`
`
`10
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`
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`IPR2014-00566 from that contained in the references cited in the present
`
`proceeding,28 Petitioner fails to address the fact that it still relies upon the same
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`arguments as presented in its earlier petition.
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`
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`In IPR2014-00566, Petitioner argued that using an addressee’s name from a
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`message cover sheet to determine where to send the received message amounted to
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`storing a digital image taking into account classification information, as required
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`by claim 17.29 The Board disagreed,30 because Petitioner failed to point to any
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`specific evidence as to why this was so. Here, Petitioner again cites the inclusion
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`of an addressee’s name on a message to account for the recited storing,31 but again
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`fails to explain why and how that information is taken into account when storing
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`an attachment to that message (i.e., the purported digital image). Indeed, Petitioner
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`fails to point to any teachings of any cited reference that indicates that such an
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`attachment is even stored with a message.32 In short, the same arguments presented
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`28 Petition at 5-9.
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`29 Ex. 2002 at 15.
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`30 Id. at 16-17.
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`31 Petition at 47.
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`32 According to Petitioner, because an addressee name is used to identify a mailbox
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`to which a message is directed, “[t]his alone shows that the storing of the digital
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`images ‘takes into consideration’ the classification information” as required by
`
`
`
`11
`
`
`
`in IPR2014-00566 are again presented here and those arguments suffer from the
`
`same deficiencies as existed in IPR2014-00566. Accordingly, the Board should
`
`exercise its discretion under 35 U.S.C. § 314(a) and refuse to institute an inter
`
`partes review.
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`
`
`
`
`B.
`
`PETITIONER’S CHALLENGE SHOULD BE DENIED BECAUSE
`IT REPRESENTS A PRACTICE THAT UNDERMINES THE AIA’S
`GOAL OF ENSURING JUST, SPEEDY, AND ECONOMICAL
`RESOLUTION OF DISPUTES.
`
`As noted above, this is the second challenge to the Mattes patent brought by
`
`Petitioner Facebook, Inc. Nowhere in the current petition does Petitioner indicate
`
`why it did not cite the prior art references that form the basis of its current
`
`challenge in the earlier proceeding. For example, Petitioner has not indicated that
`
`these new references were unavailable or unknown to it at the time of the earlier
`
`proceeding, or that somehow the Board’s constructions of the claims in the earlier
`
`proceedings were such that they could not have been anticipated in a way that
`
`makes these newly cited references pertinent.
`
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`claim 17. Id. Petitioner’s arguments are unconvincing inasmuch as the cited
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`references say nothing about how attachments are stored and, hence, provide no
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`suggestion for such a conclusion.
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`
`
`12
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`
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`The Board has broad discretion to deny any petition for inter partes review.
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`Indeed, Congress did not mandate that inter partes reviews be instituted whenever
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`a petitioner establishes a reasonable likelihood of prevailing with respect to at least
`
`one challenged claim. Instead, Congress expressly provided that such reviews may
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`(not must) be instituted when that condition is met.33 Among the considerations to
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`be employed in such an analysis is the goal of achieving just, speedy, and
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`economical resolution of disputes between parties.34
`
`In this case, the interests of fairness, economy, and efficiency support
`
`declining review. Petitioner has, with this second request for review, simply
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`swapped in new references for those previously presented, but maintained the same
`
`underlying arguments for unpatentability as previously raised. These new
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`references were, apparently, available to Petitioner at the time of its prior filing,
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`but Petitioner chose not to assert them in connection with that proceeding.
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`33 35 U.S.C. § 314(a).
`
`34 77 Fed. Reg. 48680 (Aug. 14, 2012) (“The purpose of the AIA and this final rule
`
`is to establish a more efficient and streamlined patent system that will improve
`
`patent quality and limit unnecessary and counterproductive litigation costs. . . . The
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`USPTO is engaged in a transparent process to create a timely, cost-effective
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`alternative to litigation. Moreover, the rules are designed to ensure the integrity of
`
`the trial procedures.”)
`
`
`
`13
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`
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`Allowing a petitioner to proceed in this fashion—i.e., to hold back prior art
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`references for use in a successive attack which could be launched having had the
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`benefit of the Board’s prior commentary and analysis—would severely undermine
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`the very objectives underlying the America Invents Act and subject patent owners
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`to multifarious attacks on the same patent claims. Rather than permit such action,
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`the Board’s resources are better spent addressing matters other than this
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`Petitioner’s second attempt to raise duplicative arguments against the same patent
`
`claims.35 Accordingly, no inter partes review should be instituted.
`
`
`
`C.
`
`PETITIONER’S PROPOSED COMBINATION OF REFERENCES
`FAILS TO SUGGEST THE SUBJECT MATTER OF CLAIM 17,
`THEREFORE ALL OF THE PROPOSED GROUNDS FOR
`INSTITUTION SHOULD BE DENIED.
`
`All of Petitioner’s proposed grounds for institution of trial rely on alleged
`
`obviousness under 35 U.S.C. § 103(a) in view of the combined teachings of Lichty,
`
`Sharma, Parulski, and Coffin.36 In particular, Petitioner alleges that Lichty, Sharma
`
`
`35 See Heckler v. Chaney, 470 U.S. 821, 831 (1985) (when deciding whether to
`
`take action in a particular matter, an agency must determine whether its resources
`
`are best spent on one matter or another).
`
`36 Petition at 9.
`
`
`
`14
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`
`
`and Parulski disclose “recording images using a digital pickup in a telephone unit,”
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`as required by claim 17.37 Petitioner is wrong.
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`In effect, Petitioner would have the Board read out the requirement that the
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`claims require a telephone unit. According to Petitioner, this limitation is met by
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`any device that can communicate over a telephone connection.38 But this reading
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`ignores the teachings of the Mattes patent that the claimed telephone unit includes
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`at least the standard features of any telephone,39 and the preferred embodiment is a
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`cellular telephone.40 Petitioner’s reading is also inconsistent with the specification,
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`which distinguishes computers from telephone units, at least because computers
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`are “bulky and expensive.”41
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`Lest there be any doubt that the claimed telephone unit is, in fact, a
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`telephone (and not some specially configured computer system with an attached
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`modem and camera), Petitioner Facebook previously advocated this very position
`
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`37 Id. at 26 et seq.
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`38 Id. at 26-27.
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`39 Ex. 1001 at 5:54-58.
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`40 Id. at 6:39-41.
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`41 Id. at 1:20-26.
`
`
`
`
`
`15
`
`
`
`in a prior litigation.42 During that litigation, Petitioner Facebook retained Dr.
`
`Thomas Rhyne to render an opinion concerning the validity of the Summit 6
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`patents-in-suit.43 Although Facebook settled its part of the Summit 6 litigation, Dr.
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`Rhyne testified at trial on behalf of a co-defendant.44 In that testimony, Dr. Rhyne
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`relied on the Mattes patent as prior art to the asserted Summit 6 patents, stating
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`that, “Mattes is an example of a system in which cellular telephones were used for
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`transmitting images.”45 Dr. Rhyne also testified that, unlike the patents being
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`asserted in the Summit 6 litigation, and unlike the other prior art reference
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`involved in that litigation – which were not “really about cellular or mobile
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`42 Summit 6 LLC v. Research in Motion Corp., et al., Civil Action No. 3:11-cv-
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`00367-O (NDTX).
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`43 Ex. 2004 at 145 (“I was retained originally by the attorneys representing
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`Facebook and I dealt with them much more so than I did -- I also represented
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`Samsung . . . .”).
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`44 Ex. 2006 at ¶¶ 2-4 (“I have been retained as an independent technical expert by
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`Defendants Facebook and Samsung in this litigation. . . . This expert report
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`describes the testimony that I am likely to present regarding the technical subject
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`matter described in the [Summit 6] ’557 and ’482 patents. . . . I have prepared this
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`expert report based on my independent evaluation and analysis.”)
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`45 Ex. 2003 at ¶ 69.
`
`
`
`16
`
`
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`phones” – the Mattes patent was really about cellular phones.46 Dr. Rhyne even
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`testified that the phone depicted in Mattes Figure 2 was an “old brick cell
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`phone[].”47
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`In this proceeding, Petitioner asks the Board to ignore all of its prior expert’s
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`previous characterizations of the Mattes patent and adopt a construction for
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`“telephone unit” that divorces the term from its very underpinnings. According to
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`Petitioner, a “telephone unit” is now “a desktop or laptop computer . . . that
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`includes a ‘modem’ for communicating with the America Online system over a
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`telephone line.”48 In taking this position, it appears that Petitioner is especially
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`focused on the modem component which is purportedly responsible for converting
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`“computer data into audible tomes that the telephone system can transmit.”49
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`46 Ex. 2004 at 115:17-116:7. (“Q: [ ] Is the Summit 6 patent really about cellular or
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`mobile phones? A: . . .[I]t never says anything about phones at all. . . . Q: Have you
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`found any other prior art [other than the Point2 reference which also was not
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`directed to cellular phones] that is specific to mobile phones? A: Yes. I have. Q:
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`What is that? A: That’s the Mattes patent that deals specifically with a phone and
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`photographic preprocessing on that phone.”) (exhibit pp. 7-8).
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`47 Ex. 2005 at 57:19-21 (exhibit p. 7).
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`48 Petition at 27 (citing Ex. 1003 at 26-27, 8-9, 489).
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`49 Id.
`
`
`
`17
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`
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`Petitioner’s declarant states that such a modem would have used “off-the-shelf”
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`components,50 and further states that one would have included software on the
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`computer to make voice calls.51 However, neither Petitioner nor its declarant
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`specify why a person of ordinary skill in the art circa 1996 would have understood
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`a computer and modem to be a “telephone unit” at all, especially where, as here,
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`the specification distinguishes such devices.
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`The recited telephone unit is more than simply a device that communicates
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`over the telephone lines (otherwise the recited “server” would also be a “telephone
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`unit”). Petitioner’s previous expert witness expressly recognized that the Mattes
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`patent “deals specifically with a phone and photographic preprocessing on that
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`phone.”52 It is that understanding of the term “telephone unit” that the person of
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`ordinary skill in the art would have had, for that is the understanding that is
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`consistent with the entirety of the Mattes patent’s disclosure.53 If one expands this
`
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`50 Ex. 1002 at ¶ 59.
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`51 Id. at ¶ 58.
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`52 Ex. 2004 at 116:6-7 (exhibit p. 8).
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`53 Even under the broadest reasonable interpretation standard, claims must still be
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`interpreted consistent with the specification of the patent. Phillips v. AWH Corp.,
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`415 F. 3d 1303, 1316 (Fed. Cir. 2005). Such an interpretation must consider the
`
`
`
`18
`
`
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`definition to permit encompassing of any device that can communicate over
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`telephone circuits, the resulting construction will certainly be broad, but it will also
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`be unreasonable as inconsistent with the specification, and, as such,
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`impermissible.54
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`Obviousness under 35 U.S.C. § 103(a) is a legal question based on
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`underlying factual determinations.55 An obviousness analysis measures the
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`difference between the claimed invention and the prior art to determine whether
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`“the subject matter as a whole would have been obvious at the time the invention
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`was made” to a person having ordinary skill in the art.56 Although KSR may have
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`loosened the required reasoning that may be employed for combining prior art
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`references in an obviousness rejection, a prima facie case of obviousness must still
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`specification as it would be understood by a person of ordinary skill in the art. In re
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`Acad. Of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
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`54 See In re Abbott Diabetes Care Inc., 696 F.3d at 1148-50 (broadest reasonable
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`construction must still be reasonable and consistent with claim language and the
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`specification).
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`55 Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011), cert.
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`denied, 132 S. Ct. 1755 (2012).
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`56 Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1289 (Fed. Cir. 2006) (citations
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`omitted).
`
`
`
`19
`
`
`
`provide a factual basis for finding each of the claimed features of a rejected claim
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`suggested in the prior art.57 Stated differently, “all words in a claim must be
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`considered in judging the patentability of that claim against the prior art.”58
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`In this case, Petitioner has failed to demonstrate that the cited prior art
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`references teach or suggest “recording images using a digital pick up unit in a
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`telephone unit,” as recited in claim 17. Petitioner’s own analysis demonstrates, at
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`best, the combination of Lichty and Sharma, or Lichty, Sharma and Parulski
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`describing a desktop or laptop computer with an attached or integrated camera,
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`communicating with AO
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