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 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 CONTENTS
`
`INTRODUCTION .............................................................................. .. 1
`
`THE CLASSIFICATION INFORI\/IATION RECITED IN
`
`INTRODUCTION ................................................................................ 1
`OVERVIEW OF U.S. PATENT 6,038,295 ......................................... 2
`OVERVIEW OF U.S. PATENT 6,038,295 ....................................... .. 2
`CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3) ......... 5
`CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3) ....... .. 5
`THE CLASSIFICATION INFORMATION RECITED IN
`CLAIM 17 IS PRESCRIBABLE BY A USER, IS FOR
`CLAIM 17 IS PRESCRIBABLE BY A USER, IS FOR
`ALLOCATION TO THE DIGITAL IMAGES, AND
`ALLOCATION TO THE DIGITAL IMAGES, AND
`CHARACTERIZES THE DIGITAL IMAGES. .................................. 5
`CHARACTERIZES THE DIGITAL IMAGES. ................................ .. 5
`THE “TELEPHONE UNIT” INCLUDES A TELEPHONE,
`THE “TELEPHONE UNIT” INCLUDES A TELEPHONE,
`AND CLAIM 17 STATES THAT A DIGITAL PICK UP UNIT
`AND CLAIM 17 STATES THAT A DIGITAL PICK UP UNIT
`IS “IN” THE TELEPHONE UNIT. ..................................................... 6
`THE “DIGITAL PICK UP UNIT” OPERATES AS A
`DIGITAL PHOTO CAMERA. .......................................................... 11
`ARGUMENT ..................................................................................... 12
`PETITIONER’S PROPOSED COMBINATION OF
`REFERENCES FAILS TO SUGGEST A “DIGITAL PICK UP
`UNIT IN A TELEPHONE UNIT,” AS REQUIRED BY
`UNIT IN A TELEPHONE UNIT,” AS REQUIRED BY
`CLAIM 17. ......................................................................................... 13
`CLAIM 17. ....................................................................................... .. 13
`PETITIONER’S PROPOSED COMBINATION OF
`REFERENCES FAILS TO SUGGEST CLASSIFICATION
`INFORMATION ALLOCATED TO DIGITAL IMAGES, AS
`INFORI\/IATION ALLOCATED TO DIGITAL IMAGES, AS
`REQUIRED BY THE CLAIMS. ....................................................... 23
`REQUIRED BY THE CLAIMS. ..................................................... .. 23
`PETITIONER’S OWN ARGUMENTS DEMONSTRATE
`THAT CLAIMS 21 AND 22 ARE NOT OBVIOUS IN VIEW
`OF THE CITED REFERENCES. ...................................................... 30
`CONCLUSION .................................................................................. 33
`
`IS “IN” THE TELEPHONE UNIT. ................................................... .. 6
`
`THE “DIGITAL PICK UP UNIT” OPERATES AS A
`
`DIGITAL PHOTO CAIVIERA. ........................................................ .. 11
`
`ARGU1\/[ENT ................................................................................... .. 12
`
`PETITIONER’S PROPOSED COMBINATION OF
`
`REFERENCES FAILS TO SUGGEST A “DIGITAL PICK UP
`
`PETITIONER’S PROPOSED COMBINATION OF
`
`REFERENCES FAILS TO SUGGEST CLASSIFICATION
`
`PETITIONER’S OWN ARGUMENTS DEMONSTRATE
`
`THAT CLAIMS 21 AND 22 ARE NOT OBVIOUS IN VIEW
`
`OF THE CITED REFERENCES. .................................................... .. 30
`
`CONCLUSION ................................................................................ .. 33
`
`i
`
`A.
`
`B.
`
`C.
`
`A.
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`B.
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`C.
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`
`
`I.
`II.
`III.
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`III.
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`IV.
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`IV.
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`V.
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`
`
`
`
`

`
`
`
`
`
`TABLE OF AUTHORITIES
`
`CASES
`Alza Corp. v. Mylan Labs., Inc.,
`464 F.3d 1286 (Fed. Cir. 2006) ........................................................................... 28
`
`
`CFMT, Inc. v. Yieldup Int’l. Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) ........................................................................... 28
`
`
`Hartness Int’l. Inc. v. Simplimatic Engineering Co.,
`819 F.2d 1100 (Fed. Cir. 1987) ........................................................................... 29
`
`
`In re Abbott Diabetes Care Inc.,
`696 F.3d 1142 (Fed. Cir. 2012) ..................................................................... 19, 22
`
`
`In re Fine,
`837 F.2d 1071 (Fed. Cir. 1988) ........................................................................... 22
`
`
`In re Skvorecz,
`580 F.3d 1262 (Fed. Cir. 2009) ........................................................................... 21
`
`
`In re Wilson,
`424 F.2d 1382 (CCPA 1970) ............................................................................... 28
`
`
`Unigene Labs., Inc. v. Apotex, Inc.,
`655 F.3d 1352 (Fed. Cir. 2011) ........................................................................... 28
`
`
`
`
`
`
`
`
`ii
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`

`
`EXHIBIT LIST
`
`EXHIBIT LIST
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`
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`
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`Ex. 2001
`
`.2001
`
`Ex
`
`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).
`
`
`
`iii
`iii
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`

`
`
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`
`
`Ex. 2007
`
`EX. 2007
`
`Transcript of Deposition of David Klausner Oct. 28, 2015.
`Transcript of Deposition of David Klausner Oct. 28, 2015.
`
`
`
`Ex. 2008
`
`Ex. 2008
`
`Prosecution history of US Pat. 6,038,295.
`Prosecution history of US Pat. 6,038,295.
`
`
`
`Ex. 2009 Declaration of Prasant Mohapatra.
`Declaration of Prasant Mohapatra.
`
`Ex. 2009
`
`
`
`Ex. 2010 Curriculum Vitae of Prasant Mohapatra.
`Curriculum Vitae of Prasant Mohapatra.
`
`Ex. 2010
`
`
`
`iv
`iv
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`

`
`I.
`
`INTRODUCTION
`
`Trial was instituted as to claims 17 and 19-24 of U.S. Patent 6,038,295 (the
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`“’295 patent” or the “Mattes patent”) (Ex. 1001) to consider whether:
`
`(a) claims 17, 23, and 24 are unpatentable, under 35 U.S.C. § 103(a), over
`
`Lichty,1 Sharma,2 Parulski,3 and Coffin;4
`
`(b) claims 19 and 20 are unpatentable, under 35 U.S.C. § 103(a), over
`
`Lichty, Sharma, Parulski, Coffin, and Goldhor;5 and
`
`(c) claims 21 and 22 are unpatentable, under 35 U.S.C. § 103(a), over
`
`Lichty, Sharma, Parulski, Coffin, and Sadler.6,7
`
`
`1 Tom Lichty, THE OFFICIAL AMERICA ONLINE FOR MACINTOSH
`
`MEMBERSHIP KIT & TOUR GUIDE 1–48, 75–163, 479–92, 501–24 (2d ed.
`
`1994) (Ex. 1003).
`
`2 U.S. Pat. No. 5,452,289 (Ex.1006).
`
`3 U.S. Pat. No. 5,506,617 (Ex. 1004).
`
`4 Stephen Coffin, UNIX SYSTEM V RELEASE 4: THE COMPLETE
`
`REFERENCE 1–44, 411–40 (1990) (Ex. 1005).
`
`5 U.S. Pat. No. 5,231,670 (Ex. 1007)
`
`6 Will Sadler, USING INTERNET E-MAIL 9–44 (1995) (Ex. 1008).
`
`7 Decision – Institution of Inter Partes Review, Paper 17 at 27-28.
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`
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`1
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`

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`
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`The Board should resolve all of these issues Patent Owner’s favor because the
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`proposed combination of the cited references fails to teach or suggest the subject
`
`matter recited in the challenged claims.
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`
`
`II. OVERVIEW OF U.S. PATENT 6,038,295
`
`The Mattes patent was first-filed in June 1996 (as German patent application
`
`196 24 128) and addresses the problem of
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`transmitting, storing and classifying digital
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`images that are captured by and issue from
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`mobile phones.8 To put this 1996 date in
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`perspective, the first two commercially available
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`mobile phones having cameras are generally
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`considered to be the Samsung SCH-V200
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`(announced June 2000) and the Sharp J-SH04
`
`(released in November 2000).9
`
`
`8 Ex. 1001 at 1:62 – 2:4; Figs. 1 and 2.
`
`9 Ex. 2001.
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`
`
`2
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`

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`
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`Recognizing that mobile phones with integrated cameras would result in the
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`proliferation of digital images, the Mattes patent further modified existing mobile
`
`phones to not only include an integrated digital
`
`pick up unit to capture digital images, but to also
`
`allow mobile phone users to prescribe
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`classification information for allocation to the
`
`digital images, for example, by using the
`
`phone’s keypad.10 The mobile phone then
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`transmits the digital images and classification
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`information data to a server. The server extracts
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`the classification information that characterizes
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`the digital images and uses it to automatically and intelligently store the digital
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`images so that a multitude of transmitted images may be “surveyable” and “easily
`
`relocated.”11
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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 few consumer digital cameras were just being released, and those
`
`
`10 Ex. 1001 at 6:42-58, 7:16-19.
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`11 Id. at 1:62-2:4, 2:55-65, 7:45-55; and see Fig. 3 (reproduced above).
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`
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`3
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`

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`
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`devices (which cost upwards of $1000 in 1996 dollars) could take only a few low-
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`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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`Claim 17, the only independent claims subject to review in this proceeding,
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`reads as follows:
`
`A method for recording and administering digital images,
`comprising the steps of:
`recording images using a digital pick up unit in a telephone
`unit,
`storing the images recorded by the digital pick up unit in a
`digital form as digital images,
`transmitting data including at least the digital images and
`classification information to a server, wherein said
`classification information is prescribable by a user of the
`telephone unit for allocation to the digital images,
`receiving the data by the server,
`extracting classification information which characterizes the
`digital images from the received data, and
`storing the digital images in the server, said step of storing
`taking into consideration the classification information.
`
`4
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`
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`

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`
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`III. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3)
`
`A.
`
`THE CLASSIFICATION INFORMATION RECITED IN CLAIM 17
`IS PRESCRIBABLE BY A USER, IS FOR ALLOCATION TO THE
`DIGITAL IMAGES, AND CHARACTERIZES THE DIGITAL
`IMAGES.
`
`Patent Owner generally agrees with the Board’s initial determination that the
`
`recited “classification information” in claim 17 may be fairly understood as
`
`“information that characterizes or is otherwise associated with a digital image.”12
`
`However, independent claim 17 further recites that the classification information:
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`(i) must be “prescribable by a user of the telephone unit for allocation to the digital
`
`images;” and (ii) it must be used by the server to intelligently store the images
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`(“storing the digital images in the server [ ] taking into consideration the
`
`classification information”).13
`
`
`12 Decision – Institution of Inter Partes Review, Paper 17 at 8-9.
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`13 Ex. 1001 at 10:8-16; see also id. at 2:61-65 (“Since the storing step depends
`
`upon the extracted classification information that characterize the individual digital
`
`images, a simple, fast and surveyable archiving of the digital images is
`
`automatically carried out.”), and 6:53-58 (“The classification information OM
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`which are [sic] unambiguously allocated to the digital images serve to characterize
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`the digital images so that a surveyable, unambiguous storage of the digital images
`
`
`
`
`
`5
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`

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`
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`B.
`
`THE “TELEPHONE UNIT” INCLUDES A TELEPHONE, AND
`CLAIM 17 STATES THAT A DIGITAL PICK UP UNIT IS “IN”
`THE TELEPHONE UNIT.
`
`The Board has construed “telephone unit” as “a device that includes a
`
`telephone and one or more additional optional devices that are combined or
`
`integrated with the telephone.”14 In reaching this conclusion, the Board found that
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`the term “telephone unit” is “broader” than “telephone” because the term “‘unit’ is
`
`appended to ‘telephone’ as an expander to indicate something additional is
`
`
`in the server S may be carried out in such a way that the digital images can be
`
`quickly relocated in their stored locations.”); and see Ex. 2007 at 27:12 – 28:20,
`
`29:13 – 30:6 (Petitioner’s declarant indicating that a person of ordinary skill in the
`
`art would consider the classification information that is taken into consideration
`
`when storing the digital images in claim 17 is the classification that is prescribable
`
`by the user of the telephone unit, transmitted to the server, and is extracted), and
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`Id. at 29:7-12 (Petitioner’s declarant testifying that a person of ordinary skill in the
`
`art would understand that the classification information recited in claim 17 is for
`
`allocation to the digital images).
`
`14 Decision – Institution of Inter Partes Review, Paper 17 at 10.
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`
`
`6
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`

`
`
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`optionally combined with a telephone.”15 But that finding is inconsistent with (i)
`
`the Board’s further finding that the term “unit” is merely a “nonce word,”16 (ii)
`
`claim 17, (iii) the specification of the Mattes patent, and (iv) its prosecution
`
`history.
`
`There is no dispute that a person of ordinary skill in the art would
`
`understand that the claimed telephone unit is, at a minimum, a telephone.17
`
`However, the Board’s construction of “telephone unit” neglects the fact that the
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`additional “unit” limitation, as with all limitations, further narrows the meaning of
`
`“telephone.” A telephone “unit” is necessarily unitary; one piece; integrated.18 And
`
`this is exactly what the claims, specification and prosecution history of the Mattes
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`patent recite.
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`For example, the specification repeatedly states that the telephone unit is a
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`regular telephone (having, e.g., a microphone, earphone, and keypad):
`
`
`15 Id. at 9.
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`16 Id. at 14.
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`17 Id. at 12; and see, e.g., Ex. 1001 at 5:54-58 (explaining that the telephone unit
`
`has standard features such as a microphone, earphone and keypad).
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`18 Ex. 2009 at ¶ 14 (explaining that a person of ordinary skill in the art would
`
`consider a telephone unit to be an individual thing, single and complete).
`
`
`
`7
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`

`
`
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`In a development of the present invention, the telephone unit is
`a wireless telephone which wirelessly transmits the data over
`the transmission system. In other words, the telephone is a
`mobile telephone unit, which makes it possible to immediately
`register the image and voice information and to have this
`information available at any arbitrary location.19
`
`
`Thus, the telephone unit TE is fashioned as a mobile telephone
`(a so called cellular phone) or as a cordless telephone.20
`
`Moreover, claim 17 further expressly requires “a digital pick up unit in [the]
`
`telephone unit.”21 This integrated structure is also depicted in Figure 2 (shown
`
`above) and emphasized in the specification: “The telephone unit also includes a
`
`digital image pick up unit for recording images, the digital image pick up unit
`
`being integrated into the telephone unit 60 TE.”22
`
`Notably, the specification does disclose an unclaimed embodiment, in which
`
`a “telephone unit” is coupled (e.g., via a wire) to a separate image pick up unit:
`
`19 Ex. 1001 at 3:7-15.
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`20 Id. at 6:39-41.
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`21 Id. at 10:3-4 (emphasis added).
`
`22 Id. at 5:58-61(emphasis added).
`
`
`
`
`
`8
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`

`
`
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`As an alternative to an integrated image pick up unit and
`telephone unit, the image pick up unit may be spatially
`separated from the telephone unit but connected to one another
`via a connection such as a line connection, a plug-type
`connection or a radio link.23
`
`In this unclaimed embodiment, the telephone unit remains a single, unitary,
`
`“telephone unit,” but the image pick up unit is a separate, distinct structure,
`
`spatially separate from the “telephone unit.” In other words, not only does the
`
`specification make it clear that when the telephone unit is spatially separated from
`
`an image pick up unit, the image pick up unit is not considered a part of the
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`telephone unit (i.e., it is not “in” the telephone unit), the description of the
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`telephone unit and separate digital pick up unit enhances the understanding that a
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`“unit” is a singular device.
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`When describing the claimed embodiment, the specification states:
`
`The telephone unit includes the standard features of a telephone
`unit including, for example, an earphone HM, a keypad TA
`which serves as an operating field for the telephone unit TE, as
`well as a microphone LS. The telephone unit also includes a
`digital image pick up unit for recording images, the digital
`
`
`23 Id. at 5:63-67.
`
`
`
`
`
`9
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`

`
`
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`image pick up unit being integrated into the telephone unit 60
`TE.24
`
`Simply put, only when the digital image pick unit is “integrated” into the telephone
`
`does the specification consider the structure to be in a “telephone unit.”
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`Consequently, the claimed “telephone unit,” especially the claimed telephone unit
`
`that also includes a digital image pick up unit “in” the telephone unit, is necessarily
`
`more narrow than if the claim had simply recited a “telephone.”
`
`Under the Board’s construction, however, a camera connected by wire to
`
`(i.e., “combined with”) a separate telephone would be considered a “telephone
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`unit.” But such a system cannot be the claimed “telephone unit” because it
`
`contradicts the claim (which requires a digital pick up unit to be integrated into the
`
`telephone unit), and also contradicts the prosecution history:
`
`Parulski ’159 requires the intervention of a computer between
`the camera and the transmitter. The present invention avoids
`this and even provides the transceiver and camera as a single
`unit. 25
`
`Even if someone skilled in the art combined the teachings of
`
`24 Id. at 5:54-61 (emphasis added).
`
`25 Ex. 2008 at 112 (emphasis added).
`
`
`
`
`
`10
`
`

`
`
`
`Makiyama with the teachings of Tatsumi, they would not arrive
`at the invention. . . . Neither mentions a telephone and digital
`still camera in combination.26
`
`As a result, claim 17’s “telephone unit” should be construed as a telephone that is
`
`an integrated “unit.” This is what claim 17, the specification and the prosecution
`
`history all expressly state.
`
`
`
`C.
`
`THE “DIGITAL PICK UP UNIT” OPERATES AS A DIGITAL
`PHOTO CAMERA.
`
`The Board has construed the term “digital pick up unit” under 35 U.S.C. §
`
`112, paragraph 6 (now subsection (f)), and determined that the recited function of
`
`this unit is to record digital images and its corresponding structure is a digital
`
`camera.27 However, the phrase “digital pick up unit” is not a means-plus-function
`
`claim element. Indeed, the “digital pick up unit” is a noun, and not mere functional
`
`language.28
`
`26 Id. at 131.
`
`27 Decision – Institution of Inter Partes Review, Paper 17 at 14.
`
`28 The requirements of 35 U.S.C. § 112, paragraph 6, only apply when a term is
`
`written as a “means or step for performing a specified function.” Patent Owner is
`
`not aware of any Federal Circuit, or other court’s, holding in which the mere recital
`
`
`
`
`
`11
`
`

`
`
`
`Moreover, a person of ordinary skill in the art would not conclude that the
`
`digital pick up unit is required to be an entire digital camera, as the Board has
`
`determined. Indeed, the Mattes patent explains, for example in claim 25, a “digital
`
`still camera [has] a lens, a shutter and a digital still image pickup.”29 Thus, rather
`
`than an entire digital camera (which has many constituent components), the person
`
`of ordinary skill in the art would conclude that the digital pick up unit is the digital
`
`image pickup or the image sensing portion of a digital camera. That is, while the
`
`claimed digital pick up unit may operate like a digital camera,30 it is not an entire
`
`digital camera.
`
`
`
`IV. ARGUMENT
`
`All of the instituted grounds challenging the patentability of claims 17 and
`
`19-24 of the Mattes patent rely on alleged obviousness under 35 U.S.C. § 103(a) in
`
`
`of a noun without concomitant recital of a specified function resulted in the
`
`application of 35 U.S.C. § 112, paragraph 6.
`
`29 Ex. 1001 at 10:53-55.
`
`30 Id. at 6:1-2; see also 2:24-26 (“The telephone unit has a telephone portion and at
`
`least one digital image recorder which has the function of a digital camera.”).
`
`
`
`12
`
`

`
`
`
`view of the combined teachings of Lichty, Sharma, Parulski, and Coffin.31 All of
`
`these challenges should be resolved in favor of Patent Owner because the
`
`combined teachings of these references fail to suggest the subject matter recited in
`
`the challenged claims. In particular, the references fail to suggest classification
`
`information that is allocated to digital images that serves to characterize the digital
`
`images, and further fail to suggest the telephone unit required by the claims.
`
`
`
`A.
`
`PETITIONER’S PROPOSED COMBINATION OF REFERENCES
`FAILS TO SUGGEST A “DIGITAL PICK UP UNIT IN A
`TELEPHONE UNIT,” AS REQUIRED BY CLAIM 17.
`
`As noted, all of the grounds for which trial was instituted rely on alleged
`
`obviousness under 35 U.S.C. § 103(a) in view of the combined teachings of Lichty,
`
`Sharma, Parulski, and Coffin.32 To that end, Petitioner alleges that Lichty, Sharma
`
`and Parulski disclose “recording images using a digital pickup in a telephone unit,”
`
`as required by claim 17.33 However, the computer system disclosed by this
`
`combination of prior art references is not a telephone unit as recited in claim 17.
`
`Hence, the Board should confirm the patentability of claim17 over these
`
`31 Decision – Institution of Inter Partes Review, Paper 17 at 27-28.
`
`32 Id.
`
`33 Pet. at 26 et seq.
`
`
`
`13
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`

`
`
`
`references.
`
`In relying on the disclosed computer system of Lichty, Petitioner would have
`
`the Board read out the fact that the claims require (i) a telephone unit, and (ii) a
`
`digital pick up unit “in” the telephone unit. But the Board has determined that the
`
`telephone unit must, at a minimum, include a telephone.34 The computers described
`
`in Lichty, Sharma, and Coffin (and relied upon by Petitioner) cannot be considered
`
`a telephone under any reasonable construction of the term.
`
`First, computers (irrespective of whatever software they are running) are not
`
`telephones. At no point is the word “telephone” used in the Mattes patent
`
`differently from its ordinary meaning of “telephone.” Indeed, while Petitioner’s
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`expert opines that a computer would meet Petitioner’s proposed construction of
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`“telephone,”35 Petitioner’s expert never states that a person of ordinary skill in the
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`art would have considered a computer a “telephone.” A telephone at the time of the
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`invention, and today, was, and is, a telephone. A computer then, and today, is a
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`computer. Providing a claim construction for the word “telephone” that includes a
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`computer distorts its ordinary meaning and results in devices that no one would
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`ever consider to be a telephone.
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`Second, computers are not the claimed “telephone units” under its proper
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`34 Decision – Institution of Inter Partes Review, Paper 17 at 10.
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`35 Ex. 1002 at 30-31.
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`14
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`construction, which requires a unitary telephone structure. In contrast to the
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`claimed telephones, the disclosed computers are all disparate structures with
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`disparate devices such as separate keyboards, modems, displays, etc. Thus, not
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`only are these devices not “telephones,” even if they were, they are certainly not
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`“telephone units.” Such an understanding of a telephone unit is consistent with the
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`specification of the Mattes patent, which explains that the claimed telephone unit
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`includes at least the microphone-earphone-keyboard features of a standard
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`telephone.36 The specification further states that “the telephone unit TE is
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`fashioned as a mobile telephone (a so called cellular phone) or as a cordless
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`telephone.”37
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`Indeed, in a prior litigation an expert retained by Petitioner Facebook
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`advocated the very position that the recited telephone unit is a telephone.38 During
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`litigation with Summit 6 LLC, Petitioner Facebook retained Dr. Thomas Rhyne to
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`render an opinion concerning the validity of certain Summit 6 patents-in-suit.39
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`36 Ex. 1001 at 5:54-58.
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`37 Id. at 6:39-41.
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`38 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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`39 Ex. 2004 at 145 (“I was retained originally by the attorneys representing
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`15
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`Although Facebook settled its part of the Summit 6 litigation, Dr. Rhyne testified at
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`trial on behalf of a co-defendant.40 In that testimony, Dr. Rhyne relied on the
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`Mattes patent as prior art to the asserted Summit 6 patents, stating that, “Mattes is
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`an example of a system in which cellular telephones were used for transmitting
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`images.”41 Dr. Rhyne also testified that, unlike the patents being asserted in the
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`Summit 6 litigation, and unlike the other prior art reference involved in that
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`litigation – which were not “really about cellular or mobile phones” – the Mattes
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`patent was really about cellular phones.42 Dr. Rhyne even testified that the phone
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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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`40 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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`41 Ex. 2003 at ¶ 69 (emphasis added).
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`42 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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`16
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`depicted in Mattes Figure 2 was an “old brick cell phone[].”43
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`In alleging the obviousness of the claims in this proceeding, Petitioner asks
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`the Board to ignore all of its prior expert’s previous characterizations of the Mattes
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`patent and consider a “a desktop or laptop computer . . . that includes a ‘modem’
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`for communicating with the America Online system over a telephone line”44 to be
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`a telephone unit. Such a position divorces the term from its very underpinnings.
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`Petitioner has further failed to demonstrate that the cited prior art references
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`teach or suggest “recording images using a digital pick up unit in a telephone unit,”
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`as recited in claim 17. Petitioner’s own analysis demonstrates, at best, the
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`combination of Lichty and Sharma, or Lichty, Sharma and Parulski describes a
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`desktop or laptop computer with an attached or integrated camera, communicating
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`with AOL servers over a telephone circuit via a modem.45 Such an arrangement
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`does not suggest the recited telephone unit inasmuch as no person of ordinary skill
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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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`43 Ex. 2005 at 57:19-21 (exhibit p. 7).
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`44 Pet. at 27 (citing Ex. 1003 at 26-27, 8-9, 489).
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`45 Id. at 26-33.
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`17
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`would have understood the recited telephone unit to be a desktop or laptop
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`computer (with or without the specialized software described by Sharma). Indeed,
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`the specification expressly criticizes such devices as “expensive and bulky
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`computer[s],”46 i.e., not telephone units. The specification further criticized these
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`devices as requiring an “external video camera at both the sender end as well as the
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`receiver end.” Simply put, the specification recognizes that computers, and
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`computers with external cameras, are not telephones and certainly not telephone
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`units.
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`The prosecution history also made it clear that a person of ordinary skill
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`would understand that laptops connected to digital cameras were different than a
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`telephone unit having a digital pick up unit:
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`Parulski ’159 requires the intervention of a computer between
`the camera and the transmitter. The present invention avoids
`this and even provides the transceiver and camera as a single
`unit. 47
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`Even if someone skilled in the art combined the teachings of
`Makiyama with the teachings of Tatsumi, they would not arrive
`at the invention. . . . Neither mentions a telephone and digital
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`46 Ex. 1001 at 1:24.
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`47 Ex. 2008 at 112 (emphasis added).
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`18
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`still camera in combination.48
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`Although the Board “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.”49 The Mattes patent makes clear that
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`the claimed “telephone unit” must, at a minimum, be or include a telephone. A
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`telephone is not a computer (with or without a modem), that (by virtue of installed
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`software) merely shares some functionality with a telephone.
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`The specification states that “a telephone
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`unit to be used in the communication system of
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`the present invention” is depicted in Figure 2
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`(reproduced here).50 The specification explains
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`that the telephone unit “includes [in addition to
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`inventive features] the standard features of a
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`telephone unit including, for example, an
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`earphone HM, a keypad TL which serves as an
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`48 Id. at 131.
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`49 In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1148-50 (Fed. Cir. 2012).
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`50 Ex. 1001 at 4:51-52; Fig. 2.
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`19
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`operating field for the telephone unit TE, as well as a microphone LS.”51 The
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`telephone unit “also includes a digital image pick up unit being integrated into the
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`telephone unit TE.”52 In addition, the telephone unit is able to “operat[e] as a
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`normal telephone or as an image pick up and transmitting unit according to the
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`present communication system.”53
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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 data” because they require “a high
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`performance, expensive and bulky computer[s] with an external video camera . . .
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`.”5