UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`FACEBOOK, INC. and
`INSTAGRAM, LLC,
`Petitioners
`
`v.
`
`TLI COMMUNICATIONS, LLC,
`Patent Owner
`
`Case IPR2015-00778
`Patent 6,038,295
`
`
`
`PETITIONERS’ SUBMISSION
`RE JULY 23, 2015 ORDER (PAPER NO. 14)
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`FACEBOOK, INC. and
`INSTAGRAM, LLC,
`Petitioners
`
`v.
`
`TLI COMMUNICATIONS, LLC,
`Patent Owner
`
`Case IPR2015-00778
`Patent 6,038,295
`
`
`
`PETITIONERS’ SUBMISSION
`RE JULY 23, 2015 ORDER (PAPER NO. 14)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`In an order dated July 23, 2015, the Board requested additional briefing from
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`the parties regarding the following question:
`
`Should the term “telephone unit” in claim 17 of U.S. Patent No.
`6,038,295 be read as a means-plus-function element under 35
`U.S.C. § 112, sixth paragraph, in light of Williamson v. Citrix
`Online, LLC, No. 2013-1130, 2015 WL 3687459 (Fed. Cir.
`June 16, 2015)?
`
`(See Paper No. 14, at 2.) As the Petitioner will demonstrate below, the answer to
`
`the Board’s question is “no.” The term “telephone unit” in claim 17 under its
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`broadest reasonable interpretation is not subject to 35 U.S.C. § 112(f) (formerly
`
`§ 112, ¶ 6) because the claim does not recite a function for the claimed “telephone
`
`unit,” a prerequisite to “means-plus-function” treatment under § 112(f).
`
`Section 112(f) of the Patent Act makes clear that means-plus-function
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`treatment is invoked only when a claim limitation is expressed “as a means or step
`
`for performing a specified function.” 35 U.S.C. § 112(f) (underlining added). The
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`statute itself therefore applies only to claim limitations that recite “a specified
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`function.” Consistent with this statutory language the Federal Circuit has held that
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`“a claim element that uses the word ‘means’ but recites no function corresponding
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`to the means does not invoke § 112, ¶ 6.” Allen Eng’g Corp. v. Bartell Indus., Inc.,
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`299 F.3d 1336, 1347 (Fed. Cir. 2002) (quoting Rodime PLC v. Seagate Tech., Inc.,
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`174 F.3d 1294, 1302 (Fed. Cir. 1999)) (emphasis added). As the Petitioner will
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`show below, claim 17 recites no function for the claimed “telephone unit.”
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`
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`1
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`
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`Williamson did not change this aspect of the law governing means-plus-
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`function claim limitations. Williamson instead addressed the situation in which a
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`claim limitation that does not use the word “means,” but that is otherwise
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`expressed as a means for performing a specified function, may be subject to
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`§ 112(f). Williamson, 2015 WL 3687459 at *7. In fact, the Federal Circuit
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`emphasized that the term at issue in Williamson, “distributed learning control
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`module for receiving communications,” was recited “in a format consistent with
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`traditional means-plus-function claim limitations.” 2015 WL 3687459 at *8.
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`Williamson did not change existing law that claim limitations that do not recite a
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`function are not subject to § 112(f), even if they recite “means” or an equivalent
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`term.
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`Claim 17 recites “telephone unit” twice, as shown in underlining below.
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`Neither of those instances recites any function for the “telephone unit.”
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`17. A method for recording and administering digital images,
`comprising the steps of:
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`recording images using a digital pick up unit in a telephone
`unit,
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`storing the images recorded by the digital pick up unit in a
`digital form as digital images,
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`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,
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`
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`2
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`
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`receiving the data by the server,
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`extracting classification information which characterizes the
`digital images from the received data, and
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`storing the digital images in the server, said step of storing
`taking into consideration the classification information.
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`(’295, Ex. 1001, 10:1-17 (claim 17) (emphasis added).)
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`The first instance of “telephone unit” above recites the step of recording
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`images “using a digital pick up unit in a telephone unit.” The recitation of
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`“telephone unit” here merely specifies the location of the “digital pick up unit,”
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`and does not recite any specified function for the telephone unit itself.
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`The term “telephone unit” is next recited in the following clause of the
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`“transmitting” step: “wherein said classification information is prescribable by a
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`user of the telephone unit for allocation to the digital images.” This instance of
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`“telephone unit” merely identifies the user who can prescribe the classification
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`information (“a user of the telephone unit”), and similarly fails to recite any
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`specified function for the telephone unit. Because claim 17 does not recite any
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`specified function for the claimed “telephone unit,” it is not subject to § 112(f).
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`
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`The fact that “telephone unit” in claim 17 is not a “means-plus-function”
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`term is further confirmed by comparing it to other claim limitations in the ’295
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`patent that recite “unit.” Claim 1, for example, recites “a receiving unit for
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`receiving data sent from said at least one telephone unit,” and “an analysis unit for
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`3
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`analyzing the data received by the receiving unit from the telephone unit.” (’295
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`patent, claim 1, 8:66-9:2 (emphasis added).) The “receiving unit” and “analysis
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`unit” limitations in claim 1, unlike the telephone unit in claim 17, specify a
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`particular function for each respective unit and are written in a format consistent
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`with means-plus-function claiming. See Williamson, 2015 WL 3687459 at *8.
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`
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`Because Williamson did not change the law that § 112(f) is invoked only
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`when a claim is expressed “as a means or step for performing a specified
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`function”—which the “telephone unit” term in claim 17 of the ’295 patent is not—
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`that term should not be construed as a means-plus-function claim limitation under
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`Respectfully submitted,
`
`
`/Heidi L. Keefe/
`Heidi L. Keefe
`Reg. No. 40,673
`Counsel for Petitioners
`Facebook, Inc. and Instagram,
`LLC
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`
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`
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`By:
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`
`
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`its broadest reasonable interpretation.
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`
`Dated: July 31, 2015
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
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`4
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`I hereby certify, pursuant to 37 C.F.R. § 42.6, that a complete copy of the
`foregoing PETITIONERS’ SUBMISSION RE JULY 23, 2015 ORDER
`(PAPER NO. 14), is being served by electronic mail on the attorneys of record for
`the Patent Owner on July 31, 2015 the same day the document was filed through
`the Patent Review Processing System with the PTAB at the following address:
`
`
`CERTIFICATE OF SERVICE
`
`ASCENDA LAW GROUP, PC
`333 W. San Carlos St., Suite 200
`San Jose, CA 95110
`patents@ascendalaw.com
`
`
`
`/ Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
`
`
`DATED: JULY 31, 2015
`
`
`COOLEY LLP
`ATTN: Heidi L. Keefe
`Patent Docketing
`1299 Pennsylvania Ave. NW,
`Suite 700
`Washington, D.C. 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
`
`
`5
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