Trials@uspto.gov
`571-272-7822
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`
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`Paper No. 17
`Filed: August 28, 2015
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`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
`____________
`
`
`
`Before JAMESON LEE, BART A. GERSTENBLITH, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822
`
`
`
`Paper No. 17
`Filed: August 28, 2015
`
`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
`____________
`
`
`
`Before JAMESON LEE, BART A. GERSTENBLITH, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
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`IPR2015-00778
`Patent 6,038,295
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`A. Background
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`I. INTRODUCTION
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`Facebook, Inc. and Instagram LLC (“Petitioner”) filed a Petition
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`(Paper 1, “Pet.”) to institute inter partes review of claims 17–24 of U.S.
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`Patent No. 6,038,295 (Ex. 1001, “the ’295 patent”). TLI Communications
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`LLC (“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim.
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`Resp.”).
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`Upon consideration of the Petition and Preliminary Response, we are
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`persuaded, under 35 U.S.C. § 314(a), that Petitioner has demonstrated a
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`reasonable likelihood that it would prevail in showing the unpatentability of
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`claims 17–24 of the ’295 patent. Accordingly, we institute an inter partes
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`review of claims 17–24 of the ’295 patent.
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`B. Related Matters
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`The ’295 patent has been asserted in multiple lawsuits in the United
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`States District Court for the Eastern District of Virginia, including TLI
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`Communications LLC v. AV Automotive, L.L.C. et al., No. 14-CV-00142
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`(E.D. Va.). Pet. 1. On February 6, 2015, the district court entered an order
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`finding all claims of the ’295 patent invalid under 35 U.S.C. § 101, and
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`claims 1–16, 25, and 26 of the ’295 patent invalid under 35 U.S.C. § 112(f).
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`Id. Patent Owner has appealed from that determination of the district court.
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`The ’295 patent also is the subject of inter partes reviews IPR2014-
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`00566 (petition denied on Sept. 15, 2014) and IPR2015-00283 (trial
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`instituted on June 1, 2015). Petitioner misidentified IPR2015-00283 as
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`IPR2015-00285. Pet. 2.
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`C. References Relied Upon
`Petitioner relies on the following references:1
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`Reference
`
`Date
`
`Exhibit
`
`Parulski
`
`U.S. Pat. No. 5,506,617
`
`Apr. 9, 1996
`
`Ex. 1004
`
`Sharma
`
`U.S. Pat. No. 5,452,289
`
`Sept. 19, 1995 Ex. 1006
`
`Goldhor
`
`U.S. Pat. No. 5,231,670
`
`July 27, 1993 Ex. 1007
`
`Lichty
`
`Coffin
`
`Sadler
`
`
`
`
`
`TOM LICHTY, THE OFFICIAL
`AMERICA ONLINE FOR
`MACINTOSH MEMBERSHIP KIT &
`TOUR GUIDE 1–48, 75–163, 479–
`92, 501–24 (2d ed. 1994)
`
`STEPHEN COFFIN, UNIX SYSTEM
`V RELEASE 4: THE COMPLETE
`REFERENCE 1–44, 411–40 (1990)
`
`1994
`
`Ex. 1003
`
`1990
`
`Ex. 1005
`
`WILL SADLER, USING INTERNET
`E-MAIL 9–44 (1995)
`
`1995
`
`Ex. 1008
`
`
`
`
`1 Petitioner also relies on the Declaration of David Klausner, dated
`February 19, 2015 (Ex. 1002).
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`D. The Asserted Grounds
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`Petitioner asserts the following grounds of unpatentability:
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`References
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`Basis
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`Claims Challenged
`
`Lichty, Sharma, Parulski,
`and Coffin
`
`Lichty, Sharma, Parulski,
`Coffin, and Goldhor
`
`Lichty, Sharma, Parulski,
`Coffin, and Sadler
`
`§ 103(a)
`
`17, 23, and 24
`
`§ 103(a)
`
`18, 19, and 20
`
`§ 103(a)
`
`21 and 22
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`
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`II. ANALYSIS
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`A. The ’295 Patent
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`The ’295 patent relates generally to recording, transmitting, and
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`storing digital images. Ex. 1001, Abstr. It discloses a communication
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`system including a telephone unit, a transmission system for communicating
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`from the telephone unit, and a server for receiving information from the
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`transmission system. Id. The telephone unit includes a digital pick up unit
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`by which the images are recorded. Id. The recorded images are transmitted
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`to a server for storage on the basis of classification information that are
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`associated with the images. Id. The ’295 patent states:
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`These problems [of the prior art] are solved by a
`communication system for recording and administering the
`digital images which includes at least one telephone unit that in
`addition to a telephone function has a digital image pick up unit
`for recording images, a telephone memory for storing the
`digital images, and a processor for processing the digital
`images. The telephone unit may associate classification
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`information with the digital images. A transmission system is
`coupled to the telephone unit and to a server for transmitting of
`the data which includes the digital images and potentially the
`classification information from the telephone unit to the server.
`
`Id. at 2:5–14.
`
`The ’295 patent describes a communication system that includes “an
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`arbitrary number of telephone units TE, a server S, and a transmission
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`system US that is coupled to the telephone units TE as well as to the server S
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`and that is used for transmitting data between the telephone units and the
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`server S.” Id. at 4:62–67. Figure 1 of the ’295 patent is reproduced below:
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`Figure 1 depicts a block diagram of an embodiment of the communication
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`system according to the ’295 patent.
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`The server “is a computer system which serves for organizing a
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`database which includes a large number of digital images as well as
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`classification information OM which may potentially be allocated to the
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`digital images.” Id. at 5:1–4. The server includes a number of components,
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`including receiving unit EE that receives data from telephone unit TE,
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`analysis unit AE that extracts classification information from the received
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`data, and memory SP for storing the data and digital images. Id. at 5:5–13.
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`Figure 2 of the ’295 patent is reproduced below:
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`Figure 2 depicts a plan view of telephone unit TE used in an embodiment of
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`the communication system of the ’295 patent. In addition to standard
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`features such as keypad TA, earphone HM, and microphone LS, “[t]he
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`telephone unit also includes a digital image pick up unit for recording
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`images.” Id. at 5:58–59. The ’295 patent states that “a means MZ is
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`provided in the telephone unit TE for allocating classification information
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`OM which are prescribed by the user to the digital images.” Id. at 6:42–45.
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`The ’295 patent further states that, “[i]n terms of its function, the allocation
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`means MZ may be integrated into the keypad TA, for example, by using key
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`combinations.” Id. at 6:45–47. Telephone unit TE may be operated via a
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`telephone line, or wirelessly as a mobile telephone. Id. at 6:36–39.
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`Claim 17 is independent. Each of claims 18–24 depends, directly or
`
`indirectly, from claim 17. Claim 17 is reproduced below:
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`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 pickup 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
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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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`Ex. 1001, 10:1–17 (emphasis added).
`
`
`B. Claim Construction
`
`The Board interprets claims of an unexpired patent using the broadest
`
`reasonable construction in light of the specification of the patent in which
`
`they appear. See 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC,
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`No. 2014-1301, 2015 WL 4097949, at *6 (Fed. Cir. July 8, 2015). Even
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`under the rule of broadest reasonable interpretation, claim terms are
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`generally given their ordinary and customary meaning, as would be
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`understood by one of ordinary skill in the art in the context of the entire
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`disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257
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`(Fed. Cir. 2007).
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` “classification information”
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`Petitioner argues that the term “classification information” should be
`
`interpreted to mean “information that characterizes or is otherwise
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`associated with a digital image.” Pet. 15. As support for this interpretation,
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`Petitioner states:
`
`The Specification “provides several examples of “classification
`information” such as “the address or the telephone number of
`the telephone unit TE which transmits the data” (id., 7:9-10),
`the “telephone number of the server S 404 which received the
`data” (id., 7:31-32), the “time of recording of the respective
`digital image and/or the time of transmission of the digital
`image to the server” (id., 7:10-12), and several other types of
`information (id., Fig. 4, 7:20-44).
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`Pet. 16.
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`Patent Owner agrees with Petitioner that “classification information”
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`need not have a particular relationship to the content of a digital image, and
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`that “it could fairly be construed” as Petitioner proposes. Prelim. Resp. 3.
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`Patent Owner notes, however, that claim 17 of the ’295 patent further
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`requires the “classification information” to be prescribable by a user and
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`used by the server to store the digital images. Id.
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`Based on the record before us, we are persuaded that Petitioner’s
`
`proposed interpretation is the broadest reasonable interpretation. Therefore,
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`we interpret “classification information” as “information that characterizes
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`or is otherwise associated with a digital image.”
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` “telephone unit”
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`
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`The Specification does not provide an express definition for the term
`
`“telephone unit.” The Specification also does not use the term “telephone
`
`unit” interchangeably with the word “telephone.” Rather, “unit” is appended
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`to “telephone” as an expander to indicate that something additional is
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`optionally combined with a telephone. For instance, the ’295 patent states:
`
`These problems are solved by a communication system
`
`for recording and administering the digital images which
`includes at least one telephone unit that in addition to a
`telephone function has a digital image pick up unit for
`recording images, a telephone memory for storing the digital
`images, and a processor for processing the digital images.
`
`Ex. 1001, 2:5–10. The ’295 patent further states:
`
`The telephone unit has a telephone portion and at least
`
`one digital image recorder which has the function of a digital
`camera, a telephone unit memory for storing the digital images
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`taken by a digital camera and a data processor for processing
`the digital image data.
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`Id. at 2:24–28. If “telephone unit” means a “telephone,” the description that
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`a telephone has a telephone portion would not be meaningful. We also do
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`not read the above-quoted text as providing an expressly limiting definition
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`for the term “telephone unit” that requires within a “telephone unit” a digital
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`image recorder, a memory, and a data processor.2 The language may just be
`
`describing what has been disclosed. In the absence of a clear definition
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`otherwise, it would be illogical and unreasonable not to regard a telephone
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`as a “telephone unit” unless the telephone further includes an image
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`recorder, a memory, and a data processor. In the context of the Specification
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`of the ’295 patent, we construe “telephone unit” as a device that includes a
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`telephone and one or more additional optional devices that are combined or
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`integrated with the telephone. We further provide a construction for
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`“telephone” below.
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`
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`The Specification does not indicate whether the telephone should
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`operate more or less frequently than the additional device or devices in the
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`telephone unit. Thus, no distinction can be made on that basis. The
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`Specification merely describes that the telephone unit can be used either as a
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`telephone or as the additional device, and that the operating mode can be
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`switched back and forth. Id. at 6:13–20.
`
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`2 In addition, neither party proposes that we construe “telephone unit” as
`requiring a digital image recorder, memory, and data processor.
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`Petitioner’s proposed construction of “telephone unit” is unpersuasive
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`because it is circular and also unreasonably broad. According to Petitioner,
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`“telephone unit” should be construed to mean “device capable of
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`transmitting digital information to another device through a wired or
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`wireless telephone connection.” Pet. 16. First, construing “telephone unit”
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`in terms of a “telephone connection” is circular and thus unhelpful, given
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`that Petitioner does not further construe “telephone connection.” Evidently,
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`a “telephone connection” would be a connection over which a “telephone
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`unit” communicates, and that puts the construction right back to where we
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`started, with no meaningful understanding of what constitutes a “telephone
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`unit.” Also, the proposed construction is unreasonably broad, because the
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`record does not support Petitioner’s contention that any device capable of
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`communicating over a telephone connection, such as a telephone line, must
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`be a telephone unit. A connection merely is a medium of transmission, and
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`Petitioner does not explain why a transmission medium such as an electrical
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`transmission line would be usable only by a telephone unit and no other
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`device such as a facsimile machine, modem, or pager.
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`Patent Owner’s proposed construction of “telephone unit” is “a
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`telephone (with additional features that allow for it to record and transmit
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`digital images with classification information) with the standard features of
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`any telephone, namely a microphone, earphone and keypad.” Prelim. Resp.
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`6. Patent Owner’s construction is overly narrow by requiring the features of
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`recording and transmitting digital images with classification information. A
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`“pick up unit” is just one example of an additional feature for combination
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`with a telephone to form a telephone unit. A “telephone unit” does not lose
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`its character of being a “telephone unit” simply because the additional unit
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`combined with a telephone is not a “pick up unit” but some other device.
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`Claim 17 does require a “pick up unit” in the “telephone unit,” but that is
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`because of the additional express recitation of a “pick up unit” within the
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`“telephone unit,” not because of the construction of “telephone unit” itself.
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`Likewise, a “telephone unit” does not lose its character as a “telephone unit”
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`if it includes nothing more than a telephone. Thus, under the rule of
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`broadest reasonable interpretation, the presence of an additional component
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`or device in combination with a telephone merely is optional for a
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`“telephone unit,” unless required by some other recitation in the claim. We
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`also are unpersuaded that a telephone necessarily must include a keypad.
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`Patent Owner does not explain why a telephone pre-configured to call a
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`fixed number requires a keypad, and why a telephone cannot simply provide
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`dialing by voice-command.
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`“telephone”
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`In the context of the ’295 patent, we construe “telephone” as an end
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`terminal in a system providing two-way audio communication, that includes
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`a microphone for converting input sound into signals for transmission, a
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`speaker or earphone for outputting sound based on received transmission
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`signals, a component that sends signals to a transmission medium, and a
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`component that receives signals from a transmission medium.” We note that
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`a dictionary definition of “telephone,” outside of the context of the
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`’295 patent, is broader: “an instrument for reproducing sounds at a
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`distance.” MERRIAM WEBSTER’S COLLEGIATE DICTIONARY, 1211 (Tenth Ed.
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`1993) (Ex. 3001).3 Such a definition is overly broad in light of the
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`Specification, which states that the standard features of a telephone unit
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`includes, for example, a microphone, an earphone, and a keypad. Ex. 1001,
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`5:54–58. The dictionary definition also is vague and deficient because it is
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`entirely functional. The broadest reasonable interpretation we can accord
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`“telephone,” in light of the Specification, is that as noted above and
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`italicized for emphasis.
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`“digital pick up unit”
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`Claim 17 recites “a digital pick up unit.” This phrase does not include
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`the word “means.” Thus, the phrase presumptively is not a means-plus-
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`function limitation under 35 U.S.C. § 112, paragraph 6.4 Williamson v.
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`Citrix Online, LLC, No. 2013-1130, 2015 WL 3687459, at *6 (Fed. Cir.
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`June 16, 2015) (en banc). However, that presumption can be overcome,
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`such as when the phrase does not recite sufficiently definite structure. Id. at
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`*7. That is the case here. A means-plus-function element under 35 U.S.C.
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`§ 112, paragraph 6 is construed to cover the corresponding structure,
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`material, or acts described in the specification and equivalents thereof. Id. at
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`*9.
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`3 The effective filing date of the application that issued as the ’295 patent is
`June 17, 1996.
`4 Paragraphs 1 through 6 of § 112 were replaced with §§ 112(a) through (f)
`when § 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 112–29,
`125 Stat. 284, 329 (2011) (“AIA”) took effect on September 16, 2012.
`Because the patent application resulting in the ’295 patent was filed before
`the effective date of the AIA, we refer to the pre-AIA version of 35 U.S.C.
`§ 112.
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`The term “unit” is so broad that it does not convey sufficiently
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`definite structure. As the U.S. Court of Appeals for the Federal Circuit
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`stated in Williamson, id. at *8, generic terms such as “mechanism,”
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`“element,” “device,” and other nonce words that reflect nothing more than
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`verbal constructs may be used in a claim in a manner that is tantamount to
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`using the word “means” because they typically do not connote sufficiently
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`definite structure. What comes before “unit” is “digital pick up,” and that
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`recitation is not structural but functional. Accordingly, we construe the
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`phrase “digital pick up unit” as a means-plus-function element under
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`35 U.S.C. § 112, paragraph 6. The function recited is “digital pick up”
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`which, in the context of the ’295 patent, means recording a digital image.
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`The corresponding structure described in the Specification is a digital
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`camera. Ex. 1001, 2:24–26; 6:1–2.
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`C. Alleged Obviousness of Claims 17, 23, and 24
`over Lichty, Sharma, Parulski, and Coffin
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`Claim 17 is independent and each of claims 23 and 24 depends from
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`claim 17. Petitioner relies on Lichty for its general teachings of the various
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`features of the online service America Online®, as implemented on a
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`standard desktop or laptop computer, in particular the email functionalities
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`of America Online®. Pet. 19–20. Figure 4-1 of Lichty is reproduced below:
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`Figure 4-1 of Lichty shows the screen for composing an email to send to a
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`recipient. Ex. 1003, 78. It includes an “Attach File” button for selecting
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`files that can be included with the email message. Id. Lichty states:
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`Also understand that we’re not talking in the abstract
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`here: Files are files. On the Mac, files can include text,
`graphics, data, sound, animation, even programs. Any of these
`files can be attached to a piece of email. When mail is received
`with an attached file, the file is then downloaded in its native
`format, which is astounding.
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`Id. at 111-12. Petitioner regards digital image files as files. Pet. 21.
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`Sharma discloses an integrated personal communication system that
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`includes software and hardware operating in conjunction with a personal
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`computer. Ex. 1006, Abstr. The major functions of the system are a
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`telephone function, a voice mail function, a fax manager function, a multi-
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`media mail function, a show and tell function, a terminal function, and an
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`address book function. Id. Sharma states:
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`The telephone function is more sophisticated than a standard
`telephone in that the present system converts the voice into
`digital signal which can be processed with echo cancellation,
`compressed, stored as digital data for later retrieval and
`transmitted as digital voice data concurrent with the transfer of
`digital information data.
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`Id. Sharma further states that “[t]he system allows the user to connect to
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`remote locations equipped with a similar system or with modems, facsimile
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`machines or standard telephones over a single analog telephone line.”
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`Id. at 6:36–39. It is stated that hardware components communicate over a
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`standard telephone line to one of a variety of remote sites. Id. at 5:62–64.
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`The software components are adaptable to run under any single or multi-
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`user, single or multi-window operating system. Id. at 6:29–33.
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`Figure 2 of Sharma is reproduced below:
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`Figure 2 illustrates an example of the Windows ®-based main menu icon
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`operating on a personal computer. Ex. 1006, 6:42–44. Icons are listed with
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`which to invoke the corresponding implemented functions. Id. at 6:45–46.
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`Reference numeral 115 identifies a telephone function. With regard to the
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`telephone function, Sharma states:
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`The telephone function 115 is implemented by the user
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`either selecting a telephone number to be dialed from the
`address book 127 or manually selecting the number through the
`telephone menu on the personal computer . . . . Main controller
`313 causes the data pump DSP circuit 311 to seize the
`telephone line and transmit the DTMF tones to dial a number.
`Main controller 313 configures the digital telephone CODEC
`circuit 305 to enable either the handset 301 operation, the
`microphone 303 and speaker 304 operation or the headset 302
`operation. A telephone connection is established through the
`telephone line interface circuit 309 and communication is
`enabled.
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`Id. at 9:25–39.
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`Petitioner asserts, relying on the testimony of Mr. Klausner (Ex. 1002
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`¶¶ 58, 59), that it would have been obvious to one with ordinary skill in the
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`art to implement within Lichty’s personal computer, which already includes
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`the America Online® application program, the telephone feature described in
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`Sharma. Pet. 29–30. Petitioner articulates multiple reasons, all rationally
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`based, for adding the telephone feature of Sharma to Lichty’s computer. Id.
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`In essence, the system disclosed by Sharma is for a personal computer, and
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`Lichty’s desktop or laptop computer is such a personal computer.
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`The combination of Lichty and Sharma still does not include a pick up
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`unit as recited in claim 17. Petitioner relies on Parulski to meet the
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`limitations concerning a pick up unit, which we have construed to be a
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`digital camera or an equivalent thereof. Parulski discloses a digital camera
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`17
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`that operates in conjunction with a portable computer. Ex. 1004, 2:13–15.
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`Parulski states that the camera can be designed as “an inexpensive ‘clip-on’
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`accessory that mates with a portable computer through its bus slot.” Id. at
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`2:28–30. Parulski further states that the camera also can be integrated into
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`the computer itself. Id. at 8:39–42. The camera is controlled through the
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`computer. Id. at 4:7–9. Parulski explains:
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`The user then opens a “camera” application program by using
`the general purpose user input 74 [of the computer] and selects
`capture parameters from a menu displayed on the LCD display
`8. . . . Therefore, depending on the capture parameters selected,
`the data is either stored directly from RAM 62 to the hard disk
`64 (or other non-volatile computer memory), compressed
`before storage using conventional methods, or converted before
`storage to a full resolution color image.
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`Id. at 7:30–44.
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`
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`According to Petitioner, it would have been obvious to one with
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`ordinary skill in the art, in light of the disclosure of Parulski, to attach a
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`digital camera to Lichty’s computer. Pet. 30–33. Whether Lichty’s
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`computer also includes a telephone feature is of no consequence to whether
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`one with ordinary skill would have known, in light of Parulski, to attach a
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`digital camera to the computer to be operated through the computer.
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`Petitioner explains that one with ordinary skill in the art would have been
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`motivated to add Parulski’s camera to Lichty’s computer because Lichty’s
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`computer would benefit from such an additional feature, as is taught by
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`Parulski. Id. at 32. Petitioner further notes that Parulski states that the
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`purpose of the camera module is to provide an inexpensive digital camera
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`accessory for a personal computer. Id. at 33 (citing Ex. 1004, 2:28–30,
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`18
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`3:15–18). We are persuaded, on this record, that Petitioner has provided
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`reasoning with rational underpinnings to support adding Parulski’s camera
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`as an accessory to a computer as disclosed by Lichty, modified to include a
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`telephone function as taught by Sharma.
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`
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`Petitioner relies on Coffin for its description of how the UNIX®
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`operating system, adapted to run on a large number of personal computers
`
`(including IBM PCs and Apple Macintosh computers), processes electronic
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`mail. Pet. 24. Mr. Klausner testifies that, by June 1996, UNIX® was often
`
`regarded by one with ordinary skill in the art as one of the most influential
`
`software programs in the history of computing. Ex. 1002 ¶ 85. Claim 17
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`requires the steps of extracting classification information from the data
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`received by the server, and storing the digital images while taking into
`
`consideration the classification information. Petitioner’s reliance on Coffin
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`is stated as follows:
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`Coffin discloses a technique in which an incoming email
`message is processed by the receiving computer and the
`recipient name specified by the sender (the “classification
`information”) is used to store the message in a specific mailbox
`file belonging to the recipient. (Id. at 419 (“All mail programs
`processing the incoming mail and store it in a special mailbox
`or inbox owned by the recipient . . . In most systems, incoming
`mail is stored in the directory /var/mail, with one file per user.
`This mail file is generally called your mailbox.” (italics and
`bold in original).)
`
`Pet. 25. Mr. Klausner testifies that one with ordinary skill in the art would
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`have found it natural to consult Coffin’s disclosure when attempting to
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`implement a system that processes incoming email messages to route them
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`
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`19
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`to the correct recipient. Ex. 1002 ¶ 85. Petitioner has articulated reasoning
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`with rational underpinnings to support using the technique of the UNIX®
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`operating system to route and distribute electronic mail to a recipient.
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`Pet. 44–45. We note in particular the following testimony of Mr. Klausner:
`
`The disclosures of Coffin were also within basic knowledge of
`a person of ordinary skill in the art. As I mentioned above, a
`person of ordinary skill in the art would have understood that in
`any email system in which each individual user has his or her
`own mailbox, the recipient name has to be extracted from an
`incoming message in order to identify its correct recipient(s).
`The ability to extract the recipient name from the incoming
`message, and store the message in the recipient’s mailbox file
`as disclosed in Coffin, was clearly one of a finite number of
`identified and predictable solutions to the problem of how to
`correctly route received email messages to the recipient’s
`mailbox.
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`Ex. 1002 ¶ 86. In any event, we also are persuaded by Petitioner (Pet. 41–
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`42, 45–47) that its reliance on Coffin as a prior art reference to combine with
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`Lichty, Sharma, and Parulski is unnecessary. Petitioner adequately explains
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`why it would have been obvious to one with ordinary skill in the art, even
`
`without Coffin as an applied reference, to extract the recipient’s screen name
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`from the email message, to ascertain where or to whom the email message
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`and any attachment thereto should be routed. Id. at 41–42. Petitioner also
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`adequately explains why it would have been obvious to one with ordinary
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`skill in the art, even without Coffin as an applied reference, to consider the
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`recipient name in the email message to identify in which mailbox the digital
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`image file attachments of a received email message would be stored. Id. at
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`20
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`45–47.
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`Petitioner’s explanation as to how the teachings of Lichty, Sharma,
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`Parulski, and Coffin combine to render obvious the subject matter of each of
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`claims 17, 23, and 24 adequately accounts for all the limitations of each
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`claim, and whether the references properly may be combined. Patent
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`Owner, however, argues that even when adapted to incorporate the
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`telephone feature described in Sharma, Lichty’s computer still is not a
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`“telephone unit.” For reasons discussed below, Patent Owner’s argument is
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`unpersuasive.
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`
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`Patent Owner argues:
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`[T]he specification expressly distinguishes systems that are
`“used to transmit spoken data in combination with image
`dat[a]” because they require “a high performance, expensive
`and bulky computer[s] with an external video camera . . . .”
`Thus, the Mattes [’295] patent recognizes that, regardless of
`whether a computer has software to “transmit spoken data,” that
`“expensive and bulky computer” would still be a “computer”
`and not a telephone unit.
`
`Prelim. Resp. 6. For several reasons, this argument is unpersuasive. With
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`regard to high performance, bulky, and expensive computers, the ’295 patent
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`is referring to video conferencing systems in the prior art. Specifically, the
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`’295 patent states in the Description of the Related Art section:
`
`Video conferencing systems are used to transmit spoken data in
`combination with image data and/or written character data.
`These systems share the operation of various applications.
`Video conferencing systems require a high performance,
`expensive and bulky computer with an external video camera at
`both the sender end as well as at the receiver end.
`
`
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`21
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`Ex. 1001, 1:20–26. The contrast is not drawn to a “telephone unit.” The
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`above-quoted text does not convey that a high performance, expensive and
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`bulky computer cannot be a “telephone unit.” The ’295 patent states:
`
`These problems are solved by a communication system
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`for recording and administering the digital images which
`includes at least one telephone unit that in addition to a
`telephone function has a digital image pick up unit for
`recording images, a telephone memory for storing the digital
`images, and a processor for processing the digital images.
`
`Id. at 2:5–10. By “[t]hese problems,” the above-quoted text is not referring
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`to bulkiness or expensiveness of a computer. Rather, it refers to “the
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`problem of a communicating and administering digital images by providing
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`for recording, administration and archiving of digital images simply, fast and
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`in such a way that the information therefor can be easily tracked.” Id. at
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`1:62–66. The alleged contrast between bulky and expensive computers and
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`a “telephone unit” simply is not supported by the record.
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`
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`Patent Owner further points out that the Specification consistently
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`uses the terms “servers” or “computer systems” when referring to devices
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`that store the digital images received from the telephone units, and
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`“telephone units” when referencing the devices that record the digital
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`images. Prelim. Resp. 6. This observation is misplaced because the servers
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`and computer systems that receive digital images from the telephone units
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`are not disclosed as including a microphone or a speaker for providing voice
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`communication. In that circum
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