Trials@uspto.gov
`571-272-7822
`
`Paper 21
`Entered: June 1, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE |
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE,INC.,
`Petitioner,
`
`v.
`
`TLI COMMUNICATIONSLLC,
`Patent Owner.
`
`Case IPR2015-00283
`Patent 6,038,295
`
`Before TRENTON A. WARD, BART A. GERSTENBLITH,and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 CFR. § 42.108
`
`
`571-272-7822
`
`Paper 21
`Entered: June 1, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE |
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE,INC.,
`Petitioner,
`
`v.
`
`TLI COMMUNICATIONSLLC,
`Patent Owner.
`
`Case IPR2015-00283
`Patent 6,038,295
`
`Before TRENTON A. WARD, BART A. GERSTENBLITH,and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 CFR. § 42.108
`
`
`
`IPR2015-00283
`Patent 6,038,295
`
`.
`
`I. INTRODUCTION
`
`Google, Inc. (“Petitioner”) filed a Corrected Petition (“Pet.”’) to
`
`institute an inter partes review of claims 17—24 of U.S. Patent No. 6,038,295
`(“the ’295 patent,” Ex. 1001). Paper6. TLI Communications LLC (“Patent
`Owner”) filed a Preliminary Response (“Prelim. Resp.”). Paper 15. We
`
`have jurisdiction under 35 U.S.C. § 314.
`
`Upon consideration of the Petition and Preliminary Responseandthe
`evidence of record, we determinethat Petitioner has established a reasonable
`
`likelihood of prevailing with respect to the unpatentability of claims 17-24
`
`of the ’295 patent. Accordingly, weinstitute an inter partes review of those
`
`claims.
`
`A.
`
`Related Proceedings
`
`Petitioner indicates that the ’295 patent is involved in a district court
`infringement action, in whichit is a party, captioned TL] Communications
`
`LLC y. AV Automotive, L.L.C., No. 14-cv-0142 TSE (E.D. Va.). Pet. 1.
`Petitioneralso indicatesthat there are seventeenother pending district court
`cases involving the ’295 patent. Id. The ’295 patent wasalso the subject of
`a petition for inter partes review in IPR2014-00566, a proceeding in which
`institution was denied on September15, 2014. See Facebook, Inc. v. TLI
`Commc’ns. LLC, Case IPR2014-00566 (“Facebook, Inc.”), slip op. at 18
`
`(PTAB Sept. 15, 2014) (Paper 14).
`
`B.
`
`The ’295 Patent (Ex. 1001)
`
`The ’295 patent, titled “Apparatus and Method for Recording,
`
`Communicating and Administering Digital Images,”is directed to an:
`
`apparatus and methodthat “simplifly] transmission of digital images which
`
`have been recorded, optimize[] the communication of the image data[,] and
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`2
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`IPR2015-00283
`Patent 6,038,295
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`provide[] a method for administering the storage of the digital images, which
`is simple, fast and surveyable so that the digital images may be archived.”
`
`Ex. 1001, 1:66—2:4.
`The ’295 patent describes a communication system that includes “an
`arbitrary number oftelephoneunits TE, a serverS, and a transmission
`system USthat is coupled to the telephone units TE as well as to the server S
`
`and that is used for transmitting data between the telephone units and the
`
`server S.” Id. at 4:62-67. Figure | of the ’295 patent is reproduced below:
`
`FIG.1TELEPHONE
`UNITS
`
`
`‘TE
`U
`SERVER
`|
`
`
`
`i TRANSMISSION
`i
`SYSTEM
`
`RECEPTION
`UNIT
`
`Figure 1 depicts a block diagram of an embodimentof the ?295 patent’s
`
`|
`communication system.
`_
`Server S “is a computer system whichservesfor organizing a
`database which includes a large numberofdigital images as well as
`
`3
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`
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`IPR2015-00283
`Patent 6,038,295
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`classification information OM which maypotentially be allocated to the
`
`digital images.” Jd. at 5:1-4. Server S includes a number of components,
`
`for example receiving unit EE that receives data sent from telephone unit
`
`TE, analysis unit AE that is coupled to receiving unit EE and extracts the
`
`classification information from the data, and memory SP forstoring the data
`
`and digital images. Id. at 5:5—13.
`Figure 2 of the ’295 patentis reproduced below: |
`
`ANTENNA
`
`a
`
`FIG. 2
`
`P
`
`HM
`
`su
`
`EARPHONE
`
`VIEW
`FINDER
`
`MEMORY
`.
`
`LENS
`
`:
`TELEPHONE
`UNIT
`MEMORY
`PROCESSOR
`
`CLASSIFICATION
`INFORMATION
`ALLOCATOR
`
`MT
`
`BE
`
`MODE
`KEY
`
`OPERATING
`FIELD
`
`AL
`
`Ls
`to
`
`MICROPHONE|
`
`'
`
`VOICE
`RECOGNITION
`
`TRIGGER
`
`Figure 2 depicts a plan view of telephone unit TE used in an.
`
`embodimentof the ’295 patent’s communication system. In addition to
`
`standard features such as keypad TA, earphone HM,and microphone LS,
`“(t]he telephone unit also includes a digital image pick up unit for recording
`images.” Jd. at 5:58-59. Telephone unit TE may be operated via a
`
`
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`IPR2015-00283
`Patent 6,038,295
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`telephoneline, or wirelessly as a mobile telephone. Jd. at 6:36-39. The
`
`’295 patent states that “classification information OM maybe prescribed by
`a userofthe telephone unit TE, for example, by simply speaking the
`information into the microphoneLSofthe telephone unit TE or by inputting
`a character sequence into the key pad TA.” Jd. at 8:6—10.
`|
`Figure 3 of the ’295 patentis set forth below:
`
`FIG. 3
`
`RECORD AN
`IMAGE
`
`
`
`STORE IMAGE
`
`
`AS DIGITAL
`
`FORM
`
`
`
`
`
`TRANSMIT DATA CONTAINING DIGITAL
`IMAGE TO SERVER VIA TRANSMITSSION
`UNIT
`
`
`
`
`
`RECEIVE DATA
`
`
`
`EXTRACT CLASSIFICATION
`-
`INFORMATION FROM RECEIVED DATA
`
`
`
`
`
`STORE DIGITAL IMAGE TAKING INTO
`CONSIDERATION THE CLASSIFICATION
`INFORMATION
`
`Figure 3 is a flow chart illustrating the method steps described in the
`295 patent. In step 301, imagesare recorded using a digital pick up unit
`integrated into telephone unit TE. Id. at 7:56-59. In step 302, the images
`are stored in digital form,as digital images, in telephone unit memory TS.
`
`Id. at 7:59-61. In step 303, the images are transmitted from telephone unit
`
`TE to server S, and in step 304, server S receives the transmitted data. Jd. at
`
`
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`IPR2015-00283
`Patent 6,038,295
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`7:61-65. Server S extracts classification information OM from the received
`
`data in step 305, and the digital imagesare stored in server S in step 306,
`
`taking classification information OM into consideration. ‘Jd. at 7:65—8:5.
`
`C.
`
`Illustrative Claim
`
`Petitioner challenges claims 17—24 of the ’295 patent. Claim 17 is the
`
`only independent claim challenged, and recites as follows:
`
`.
`
`17. A method for recording and administering digital images,
`comprising the stepsof:
`recording images using a digital pick up unit
`telephone unit,
`
`in a
`
`storing the images recorded bythe 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
`telephoneunit 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.
`
`Dz.
`
`The Prior Art
`
`Petitioner relies on the following prior art references:
`Bernardiet al., U.S. Patent No. 5,546,145, issued Aug. 13, 1996
`(“Bernardi,” Ex. 1005).
`Morikawa, U.S. Patent No. 5,613,108, issued Mar. 18, 1997 (““Morikawa,”
`Ex. 1007).
`
`Satoh et al., U.S. Patent No. 5,717,496, issued Feb. 10, 1998 (“Satoh,”
`Ex. 1003).
`
`
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`IPR2015-00283
`Patent 6,038,295
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`Partridge, III, U.S. Statutory Invention Reg. No. H1714, published Mar.3,
`1998 (“‘Partridge,” Ex. 1009).
`Wilskaet al., U.S. Patent No. 6,427,078 B1, issued July 30, 2002 (“Wilska,”
`Ex. 1006).
`Burstein et al., Using Speech Recognition in a Personal Communications
`System, IEEE SUPERCOMM INT’L CONFERENCE OF COMMUNICATIONS 1717—
`21 (June 1992) (“Burstein,” Ex. 1008).”
`Van Wolverton, Running MS-DOSVersion 6.2 (6th ed. 1994) (“Wolverton,”
`Ex. 1004).
`
`E.
`
`- The Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 17—24 of the
`°295 patent on the following grounds:
`
`‘References
`fea.#hB z is eS ‘Clai
`y .
`
`
`
`
`
`
`
`
`
`
`
`
`
`and Bernardi
`
`and Burstein
`
`and Partridge
`
`ene
`
`
`
`
`
`A.
`
`Claim Interpretation
`
`Il. ANALYSIS
`
`Weinterpret claims of an unexpired patent using the “broadest
`
`reasonable construction in light of the specification of the patent in which
`[the claims] appear[].” 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed
`Techs., LLC, 778 F.3d 1271, 1279-80 (Fed. Cir. 2015) (“We concludethat
`
`
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`IPR2015-00283
`Patent 6,038,295
`Congress implicitly adopted the broadest reasonable interpretation standard
`in enacting the AIA.”).
`
`Asnoted by Petitioner (Pet. 17), the Board construed “classification
`
`information”as “information that characterizes or is otherwise associated
`
`with a digital image” in its Decision Denying Institution of Inter Partes
`
`Review ofthe ’295 patent in IPR2014-00566. See Facebook, Inc., Paper 14,
`
`slip op. at 8. For purposesof the Petition, Petitioner asserts that this is the
`
`broadest reasonable interpretation of “classification information.” Pet. 17.
`
`Patent Owneragrees“that the claimed ‘classification information’ need not
`
`have a particular relationship to the content of a digital image” and “it could
`
`fairly be construed” as Petitioner proposes. Prelim. Resp. 3. Patent Owner
`
`notes, however, that claim 17 of the ’295 patentalso recites that the
`
`classification information be prescribable by a user, and be used by the
`
`serverto store the digital images. Jd. Based on the record beforeus, we see
`no reasonto deviate from the Board’s previous construction of
`“classification information” for purposes of this Decision.
`
`B.
`
`- Obviousness over Wilska and Morikawa
`
`Petitioner contends that claims 17, 19-21, 23, and 24 would have been
`obvious under 35 U.S.C. § 103(a) over the combination of Wilska and
`
`Morikawa. Pet. 43-53. Petitioner provides claim charts, and relies on the
`Declaration of Kenneth A. Parulski, dated November 20, 2014 (“Parulski
`Declaration,” Ex. 1002). Id.
`1.
`Overview of Wilska (Ex. 1006)
`
`Wilskais directed to a small, portable, hand-held device for personal
`communication and data collection and processing. Ex. 1006, Abs. Figure 3
`of Wilska is reproduced below:
`
`
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`IPR2015-00283
`Patent 6,038,295
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`V2
`
`DISPLAY
`|CONTROLLER
`4
`CENTRAL
`6
`PROCESSOR
`MEMORY
`|CONTROLLER
`
`8
`
`
`
`ne
`
`
`
`
`
`MEMORIES
`OREMCIA
`[cco |
`’
`EEPROOM,
`
`
`EXTENSIONS
`CONTROL.
`FLASH
`
`
`
`15.16
`
`CELLULAR
`
`MOBILE
`TELEPHONE
`
`AND MODEM
`FIG.S
`
`PCMCIA. CAMERA
`
`
`
`Figure 3 is a block diagram of the personal communication device
`
`described in Wilska. Id. at 2:78. Data processing unit 2 comprises
`
`processor4, input/output controller 5, display controller 6, memory
`
`controller 7, and cellular mobile phone controller 8. Jd. at 2:40-44. The
`
`device also comprises display 9, keyboard 10, and mouse/trackball 11 as a
`
`user interface, and one or more memory units 13. Jd. at 2:57—60, 66-67.
`Camera unit 14 is stationary part ofthe device, and is connected via
`input/output controller 5 to data processing unit 2. Jd. at 3:8-13. Cellular
`
`mobile phone unit 17 is an integrated part of the device, and is connected to
`
`cellular mobile phone controller 8 of data processing unit 2. Id. at 3:37-40.
`
`A miniature speaker and microphonecan be arranged on the housing of the
`
`device, and the device can be used as a conventional, hand-held telephone.
`
`Id. at 3:49-53.
`.
`Wilska states that a user controls the functions ofthe device using
`software recorded in memory unit 13. Jd. at 3:54-57. According to Wilska,
`
`these functions include telephoneservices, facsimile services, electronic
`
`mail, and camera functions to record images. Jd. at 3:57—-65.
`
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`IPR2015-00283
`Patent 6,038,295
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`2.
`
`Overview ofMorikawa (Ex. 1007)
`
`Morikawais directed to an electronic mail processing system and
`
`method. Ex. 1007, 1:9-10. Morikawastates that the system comprises a
`‘receiving device for receiving “electronic mail from a host processor which
`undertakes the management of mailboxes,” folders for storing electronic
`mail, “a management device for classifying a data file written in the received
`electronic mail in accordance with specific data included in the electronic
`
`mail,” and selecting a folder for storing the data file “in accordance with a
`
`result of the classification.” Jd. at 2:31—37.
`
`Figure 1 of Morikawais reproduced below:
`Fig. 1
`
`/
`
` BLECTRONIC MAIL SYSTEM
`> HosT — .
`(MAILBOX
`a4}-- MB
`ag
`mB
`MANAGER
`Pa — MB
`ed
`C—O
`
`BLECTRONIC
`MAIL TERMINAL
`Lior
`
`|
`
`Ss
`
`|BLECTRONYI
`MAIL TERMINAL
`uUnLinry
`
`s
`
`nae
`
`Figure 1 is a block diagram schematically showingthe structure of an
`
`electronic mail system according to Morikawa. Jd. at 5:34-36. Electronic
`mail system 1 comprises host 2 (a general-purpose, large-sizecomputer
`system), and data processing systems 3 and 4 for transmitting data to each
`
`other through host 2. Jd. at 5:60-67. Mail M, addressed from data
`
`10
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`IPR201 5-00283
`Patent 6,038,295
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`processing system 3 to data processing system 4,is stored by host 2 in
`
`mailbox MB for data-processing system 4 until host 2 receives a request for
`
`transferring from data processing system 4,or until a predeterminedtime.
`Id. at 6:16. Host 2 then delivers mail M to data processing system 4. Jd. at
`6:6-7.
`|
`
`In data processing units 3 and 4 is electronic mailutility 5, which
`
`performs processing on mail services provided by host 2. Ex. 1007, 6:12—
`15. Electronic mail utility 5 maintains user mail server 6, whichisa
`database containing folders for storing data associated with electronic mail,
`and folder table 7, whichlists types of data in relation to folder name. Jd. at
`
`_
`
`6:16—20. Whenelectronic mail utility 5 receives mail M from host2,it
`
`performs receiving processing whereby the heading file of mail M is stored
`in a message folder, and the attachmentfile is stored in a shared folder. Id.
`at 8:2-6. Electronic mail utility 5 then performs attachmentfile analysis
`
`processing to determine the folder in which the attachmentfile will be
`stored, and transfers the attachmentfile from the shared folder to the
`
`designated folder. Id. at 8:7-11. Morikawadescribes this process as
`
`classifying and storing the attachmentfile. /d. at 8:11—13.
`According to Morikawa, mail M is composedof a content part
`containing information to be conveyedto the recipient, and an “envelop
`
`part” containing control information used to transmit mail M and properly
`managethe content part at the receiving end. Jd. at 6:32-37. The content
`
`part comprises at least one headingfile that corresponds to message
`
`information, and at least one attachmentfile. /d. at 6:38-42. The format of
`
`the envelop part is fixed, and contains 13 items of directory data including
`
`the attributes of the attachmentfile, the name of the specified folder for
`
`1]
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`IPR2015-00283
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`storage, and the presenceor absenceof a request for creating a folder.
`6:49-51, 54-64.
`
`/d. at
`
`3.
`
`Analysis
`
`Petitioner contends that Wilskadescribes a notebook computerthat
`
`can record, store, and transmit digital images, and also work as a cellular
`
`telephone. Pet. 43. Petitioner asserts that the apparatus described in Wilska
`
`contains a digital pick up unit for capturing imagesthat are stored in a
`
`memory unit, and also has a built-in keyboard and cellular data transmission
`
`capabilities that can be used to compose andsendelectronic mail. Id. at 44—
`45. Petitioner further contends that Morikawa “discloses systems and
`
`methods for processing electronic mail, including for storing attachments to
`
`e-mails based on classification information—inparticular, directory
`
`information—provided by the e-mail author.” Jd. at 45. According to
`
`Petitioner, Morikawa describes steps for receiving, on a server, files
`containing classification information, extracting the classification
`information, and taking the classification information into consideration
`
`whenstoring the files, as is required by claim 17 of the ’295 patent. Id.
`
`Petitioner contends that a person having ordinary skill in the art would have
`been motivated to combine Wilska and Morikawa “‘in light of Wilska’s .
`ability to send e-mail containing digital images as attachments and the
`
`capability of Morikawa to address the problem of organizing those e-mail
`attachments.” Jd. at 47 (citing Ex. 1007,2:13—22, Abs.; Ex. 1002 § 90).
`Weare persuaded,based onthe current record, that Petitioner’s claim
`
`charts and substantive arguments (Pet. 43-51), and the Parulski Declaration
`are sufficient to establish a reasonable likelihood that Petitioner would
`
`prevail in showing that independent claim 17 is unpatentable over the
`
`12
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`IPR2015-00283
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`combination of Wilska and Morikawa. For example, claim 17 recites
`
`“receiving the data by the server” and “extracting the classification
`
`information which characterizes the digital images from the received data.”
`AsPetitioner alleges, Morikawa discloses electronic mail terminal utility 5
`(which maintains user mail server 6), that receives an e-mail with an
`attachmentfile and processes the attachmentto extract the folder name
`
`associated with the file, as specified by the sender of the e-mail. Jd. at 45—
`
`46, 50.
`
`Wefurther are persuaded byPetitioner’s argument that a person
`having ordinary skill in the art would have been motivated to combine the
`Wilska device with the method described in Morikawa, as explained in the
`Parulski Declaration:
`
`[T]he POSA [person having ordinary skill in the art] understood
`that Wilska disclosed recording digital images and sending
`them to a remote computeras e-mail attachments. The POSA
`also recognized the need to store and organize incoming e-mail
`attachments on a server. See Ex. 1007 at 2:13—22 (noting the
`“burden” of manually “sorting [] attachmentfiles” on an e-mail
`server); id. at abstract (noting the benefit of “reduc[ing] the
`complexity and labour of handling transmitted information,”
`i.e., e-mail attachments). Because Morikawaprovided a
`process of storing and organizing e-mail attachments,.such as
`images, based on user-prescribed classification information, the
`POSA would havenaturally combine[d] Wilska with Morikawa
`' to achieve a process of e-mailing digital images as attachments,
`and then storing those attachments on a server by taking into
`account user-prescribedclassification information.
`Ex. 1002 990. On this record, we are not convinced by Patent Owner’s
`argumentthat the Wilska device is not capable of sending attachments with
`an email, or that the Wilska device could not communicate with the
`
`Morikawa e-mail system. See Prelim. Resp. 20-21, 24, 27. For example,
`
`13
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`IPR2015-00283
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`Wilska discloses that its device can perform functions such as a “cellular
`92 66
`
`mobile phone,”
`
`“electronic mail,” “short message service/SMS,” and
`
`“camera functions to record images and paper documents,as well as
`
`computeri.e., PC interface functions for transferring information to PC
`
`applications.” Ex. 1006, 3:57—64.
`
`Accordingly, we determinethat, on this record, Petitioner has
`
`demonstrated a reasonable likelihood of prevailing in showing that claim 17
`
`would have been obvious based on the combination of Wilska and
`
`Morikawa. Wehavealso considered Petitioner’s and Patent Owner’s
`
`arguments and evidence as to dependent claims 19-21, 23, and 24, and are
`likewise persuaded that Petitioner has demonstrated a reasonable likelihood
`
`that it would prevail as to those claims as well.
`
`C.
`
`Obviousness over Wilska, Morikawa, and Burstein
`
`Petitioner contends that claim 18 would have been obvious under
`
`35 U.S.C. § 103(a) over the combination of Wilska, Morikawa, and
`Burstein. Pet. 53-56. Petitioner provides a claim chart, and relies on the
`Parulski Declaration. Id.
`
`- Overview ofBurstein (Ex. 1008)
`I.
`Burstein describes the use of speech recognitioncapabilities in
`personal communication systems (“PCS”). Ex. 1008, 1717. Burstein states
`that speech recognition “would be performed both onthe portable
`communicators andterminals, and by the centralized service providers.” Id.
`Burstein furtherstates that “if the speech recognizeris well integrated with
`
`the PCS, a much smaller amount of hardware could equal the performance
`
`of the larger system, by having specific grammars and vocabularies for each
`
`application that can run on the PCS.” /d. at 1720. According to Burstein,
`
`14
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`IPR2015-00283
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`the benefits of including speech recognition capabilities in a PCS include
`
`(1) reducing the size of the hardware, as a keyboard would no longer be
`
`needed,(2) ease of use of the PCS by new oruntrainedusers, and (3) ability
`
`to use the PCS whendriving or walking, when use of a keyboardis not
`
`practical. Jd. at 1717.
`
`2.
`Claim 18
`Claim 18 depends from independentclaim 17, and furtherrecites
`“recognizing speech spoken into the telephone unit and storing the
`compressed recognized speech.” Petitioner contends that Burstein describes
`a system in which a variety of mobile devices connect wirelessly to a server
`
`and provide speech recognition to an end user. Pet. 54. Petitioner further
`
`contendsthat Burstein discloses storing data received from a PCS,“and
`
`suggests that such storage could include recognized speech.” Id. at 55.
`
`According to Petitioner, a person having ordinary skill in the art would have
`
`combined the Wilska device with Burstein’s speech recognition
`
`functionality “given that both disclosuresrelate to the use of personal
`communicators for wireless transmission of speech anddata.” Id. at 54.
`Patent Owner responds that Burstein does not “describe, or even suggest”
`storing compressed recognizedspeechas required by claim 18. Prelim.
`Resp.32.
`Based onthe current record, we are persuaded that Petitioner has
`
`established a reasonablelikelihood of prevailing in showing that claim 18 is
`obvious over the combination of Wilska, Morikawa, and Burstein. In
`
`support of Petitioner’s contentions, the Parulski Declaration explains:
`
`The POSA would understand that recognized speech stored as
`text is, by its very nature, compressed as comparedto a full
`audio recording becausethe text can be stored using less
`
`15
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`’
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`IPR2015-00283
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`memory than the original audio recording. In addition, the
`_POSA would have knowna variety of tools that could be used
`to further compress the recognized speechif desired.
`Ex. 1002 9 201. We further are persuaded that a person having ordinary
`skill in the art would have been motivated to use Burstein’s speech
`recognition capability in the Wilska device at least because “the Wilska
`device is a multifunctional communication tool designed for running a
`variety of different application software,” and Burstein’s speech recognition
`process“was a natural complement”to the functionality of the Wilska
`
`device. Pet. 55; Ex. 1002 4 93.
`
`,
`
`D.
`
`Obviousness over Wilska, Morikawa, and Partridge .
`Petitioner contends that claim 22 would have been obvious under
`35 U.S.C. § 103(a) over the combination of Wilska, Morikawa, and
`Partridge. Pet. 56-59. Petitioner providesa claim chart, and relies on the
`Parulski Declaration. Id.
`1.
`Overview ofPartridge (Ex. 1009)
`Partridge is directed to the transmission ofastill image upon
`placementofa call to a video telephone or terminal. Ex. 1009, 1:5-8.
`Partridge describes an image transmission system comprising an image
`processor coupled with an image storage unit that stores a database of
`
`images, preselected by the customers, for association with each customer’s
`
`telephone number. Jd. at 2:47-58. Partridge states that the image processor
`can be located “almost anywhere”in a telephone network, “either as a stand-
`alone unit or within one ofthe central offices.” Jd. at 2:39-46. Partridge
`states that an electronic imagefile can, for example, be a digitized image
`taken by an electronic camera. /d. at 3:14—-16. Partridge explains that “any
`
`conventional facsimile or electronic mail format can be employed to
`
`16
`
`
`
`IPR2015-00283
`Patent 6,038,295
`
`transmit the image data to the image transmission system,” and the image
`
`data can be stored in the image storage unit “either in the transmitted format
`or in someother preselected format.” Id. at 3:17-21. Partridge further
`explains that the image data in the image storage unit can be associated with
`
`identifying information, such as the name ofthe person pictured in the
`
`image, the telephone numberassociated with the image, or a visual or voice
`
`greeting. Jd. at 3:32-36.
`
`2.
`Claim 22
`Claim 22 depends from independentclaim 17, and furtherrecites
`“providing a telephone numberofthe at least one telephone unit and/or of
`
`the server as part of the classification information.” Petitioner contendsthat
`
`Partridge discloses transmitting an image, along with identifying data such
`as a telephone number, to a remote server, where the image is stored taking
`“into account the telephone numberand otherassociated identifying
`
`information.” Pet. 56. Petitioner further contends that a person having
`
`ordinary skill in the art would have been motivated to combine Partridge
`with Wilska and Morikawa“in light ofthe fact that both Wilska and
`Partridge disclose methods of using telephone numbersin transmitting
`
`digital images by e-mail.” Jd. at.57. Patent Ownerarguesthat, even if
`Partridge does disclose “certain features of claim 22,” Partridge fails “to
`cure the deficiencies of the Wilska/Morikawa combination.” Prelim.
`
`Resp. 33. As discussed above, Petitioner has shownsufficiently that the
`
`combination of Wilska and Morikawadisclosesall of the limitations of
`
`independent claim 17, and we are unpersuadedthat Petitioner’s combination
`
`of Wilska, Morikawa, and Partridge is deficient with respect to claim 22.
`
`_17
`
`
`
`IPR2015-00283
`Patent 6,038,295
`
`Wehave considered the arguments and evidence presented by
`
`Petitioner and Patent Owner, and are persuaded on the present record that
`_ Petitioner has demonstrated a reasonable likelihood that claim 22 would
`have been obvious based on the combination of Wilska, Morikawa, and
`Partridge.
`|
`E.
`Other Grounds
`Petitioner contends that claims 17 and 19-24 would have been
`obvious under 35 U.S.C. § 103(a) over the combination of Satoh and
`Wolverton (Pet. 18—40), and that claim 18 would have been obvious under
`35 U.S.C. § 103(a) over the combination of Satoh, Wolverton, and Bernardi
`
`(id. at 40-43). Petitioner provides claim charts, andrelies on the Parulski
`
`Declaration. Jd. at 18-43.
`
`Weare not persuaded that Petitioner has established that the
`combination of Satoh and Wolverton teachesthe “extracting classification
`information which characterizes the digital images from the received data”
`limitation recited in claim 17. 24—28, 35-36. Petitioner does notdirect us,
`
`with any specificity, to evidence demonstrating sufficiently that Satoh
`
`teaches that the personal computer that receives data from the Satoh device
`
`extracts classification information from that data. Rather, Satoh describes
`
`that directory data that is transmitted with the digital image “can be input to
`
`a personal computer.” Ex. 1003, 53:59-61. Petitioner does not explain
`
`adequately how inputting directory data into a personal computer teaches
`that the personal computerextracts that information as required by
`
`independent claim 17.
`
`.
`
`;
`
`Wealso are unpersuaded that Wolverton cures the deficiencies in
`
`Satoh. Petitioner cites to disclosures in Wolverton that describe commands
`
`18
`
`
`
`IPR2015-00283
`Patent 6,038,295
`
`that can be used to create DOSdirectory structures, but does not identify a
`
`server extracting a DOSdirectory structure from received data or explain in
`
`any detail why Wolverton performsthe recited limitation. Pet. 26—28.
`Mr. Parulski, for instance, asserts that “Ti]t would have beenclear to” a
`person having ordinary skill in the art that the “commands used to replicate a
`paper organization structure on the PC [described in Wolverton] could just
`as easily have beenusedto replicate the directory structure” describedin
`
`Satoh on the personal computer that receives the data from the Satoh device.
`
`Ex. 1002
`
`75. Mr. Parulski provides no explanation andcites no evidence,
`
`—
`
`however, how manually extracting the directory information (as described
`by Wolverton) meets the requirement in claim 17 that the server extracts
`
`classification information.
`
`Accordingly, we determinethat the record before us does not establish
`
`a reasonable likelihood that Petitioner would prevail in showing that claim
`| 17, and claims 19-24 that depend therefrom, would have been obvious over
`the combination of Satoh and Wolverton. Further, because Petitioner does
`not rely on Bernardi as teaching any limitation of claim 17, we determine
`that Petitioner has not established a reasonable likelihood that claim 18
`
`would have been obvious over the combination of Satoh, Wolverton, and
`Bernardi.
`
`lil. CONCLUSION
`
`For the foregoing reasons, we concludethat Petitioner has
`demonstrated a reasonable likelihood that it would prevail on its challenge
`that claims 17—24 of the ’295 patent are unpatentable.
`
`At this stage of the proceeding, the Board has not madeafinal
`
`determinationasto the patentability of claims 17~24.
`
`.
`
`19
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`IPR2015-00283
`Patent 6,038,295
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`IV. ORDER
`
`In consideration of the foregoing,it is hereby:
`
`ORDEREDthatinter partes review is granted as to claims 17-24 of
`the ’295 patent with respect to the following grounds:
`Whether claims 17, 19—21, 23, and 24 are unpatentable under
`
`35 U.S.C. § 103(a) as obvious over the combination of Wilska and
`
`Morikawa;
`
`Whether claim 18 is unpatentable under 35 U.S.C. § 103(a) as obvious
`
`over the combination of Wilska, Morikawa, and Burstein; and
`
`Whether claim 22 is unpatentable under 35 U.S.C. § 103(a) as obvious
`over the combination of Wilska, Morikawa, and Partridge;
`
`FURTHER ORDEREDthat, pursuant to 35 U.S.C. § 314(a), inter
`
`partes review of the ’295 patent is hereby instituted commencing on the
`entry date of this Order, and, pursuant to 35 U.S.C.§ 314(c) and 37 C.E.R.
`
`§ 42.4, notice is hereby given ofthe institution ofa trial; and
`
`FURTHER ORDEREDthat no groundother than those specifically
`
`granted aboveis authorized for inter partes review as to claims 17—24.
`
`20
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`IPR2015-00283
`Patent 6,038,295
`
`PETITIONER:
`
`Andrew V. Trask
`David M.Krinsky
`WILLIAMS & CONNOLLY LLP
`atrask@we.com
`dkrinsky@we.com
`
`PATENT OWNER:
`
`Tarek N. Fahmi —
`ASCENDA LAW GROUP, PC
`tarek.fahmi@ascendalaw.com
`
`21
`
`
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