PTAB

IPR2014-00566

Facebook Inc v. TLI Communications LLC

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Petition
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1. Case Identification

2. Patent Overview

  • Title: Apparatus and Method for Recording, Communicating and Administering Digital Images
  • Brief Description: The ’295 patent discloses a system for capturing digital images and associated "classification information" using a "telephone unit," then transmitting this data to a remote "server" that archives the images based on the classification information for later retrieval.

3. Grounds for Unpatentability

Ground 1: Obviousness over Hassan and Witek - Claims 1, 2, 6, 9, 17, 21, and 24 are obvious over Hassan in view of Witek

  • Prior Art Relied Upon: Hassan (Patent 5,550,646) and Witek (Patent 5,461,488).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the claimed three-part system (telephone unit, server, transmission system) was disclosed by combining Hassan and Witek. Hassan allegedly disclosed the claimed "telephone unit" by teaching a portable image capture device with a built-in digital camera and fax modem. Hassan's device allowed a user to capture an image and enter "classification information" (e.g., supplemental ID, notes) that was incorporated into a fax cover sheet for transmission. Witek allegedly disclosed the claimed "server" by teaching a computer system that receives fax transmissions, uses optical character recognition (OCR) software to analyze the cover sheet for routing information, and archives the digital image in a specific folder or directory based on that information. The telephone network used for faxing in both references constituted the "transmission system."
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references by substituting the basic paper-printing fax machine in Hassan with the more advanced, computer-based server of Witek. Petitioner asserted this combination was predictable because both Hassan and Witek utilized the standard Group 3 Fax protocol, which was designed for interoperability between devices from different manufacturers. Witek provided express motivation by describing the advantages of its server system over traditional fax machines, such as improved security, permanent digital storage, and automated routing, all of which would have been desirable benefits for a user of Hassan’s device.
    • Expectation of Success: A POSITA would have had a high expectation of success due to the use of a common, standardized communication protocol (Group 3 Fax) in both references.

Ground 2: Obviousness over Hassan, Witek, and Murphy - Claim 14 is obvious over Hassan and Witek in further view of Murphy

  • Prior Art Relied Upon: Hassan (’646 patent), Witek (’488 patent), and Murphy (Patent 7,898,675).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed claim 14, which added the limitation that the telephone unit and server are connected "via the Internet." Petitioner argued that while the base combination of Hassan and Witek taught a connection via a standard telephone network, Murphy taught adapting such a system for internet-based communication. Murphy disclosed a system for transmitting fax images over the Internet using gateways that convert fax data into an email-compatible format, specifically to avoid long-distance telephone charges.
    • Motivation to Combine: A POSITA would have been motivated to incorporate Murphy's internet-based transmission system into the Hassan/Witek combination to achieve the significant cost savings associated with avoiding toll charges for long-distance faxes. Murphy expressly identified this benefit as an advantage of its invention.

Ground 3: Obviousness over Hassan, Witek, Burgess, and RFC 937 - Claims 8 and 23 are obvious over Hassan and Witek in further view of Burgess and RFC 937

  • Prior Art Relied Upon: Hassan (’646 patent), Witek (’488 patent), Burgess (Patent 5,115,326), and RFC 937 (a 1985 technical specification).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground addressed claims requiring the classification information to include "particular location information in memory" for storing the images. Petitioner asserted that Burgess taught this by disclosing a method of encoding an email address into a barcode on a fax cover sheet. A receiving server would scan the barcode to determine the recipient's email address and automatically route the fax. RFC 937, which defined the Post Office Protocol (POP), was cited to establish that an email address corresponds to a specific mailbox, which is a particular folder or storage location on a server.
    • Motivation to Combine: A POSITA would be motivated to integrate Burgess's barcode system into the Witek server to improve the accuracy of routing faxes. Petitioner argued that decoding a standardized barcode is more reliable than Witek’s method of using OCR on potentially variable text, a motivation stated in Burgess.

  • Additional Grounds: Petitioner asserted additional obviousness challenges over the Hassan and Witek combination, further in view of Quinn (a fax handbook) to teach including sender/receiver phone numbers on a cover sheet, and Campbell (a technical guide) to teach standard Group 3 Fax protocol features like quality, resolution, and transmission rate negotiation.

4. Key Claim Construction Positions

  • "classification information": Petitioner argued this term should be construed broadly as "information that characterizes or is otherwise associated with a digital image." This construction supported the argument that information like sender/receiver phone numbers or routing data, which do not describe the image content itself, meet the limitation.
  • "means for allocating classification information": For this means-plus-function term, Petitioner argued that the ’295 patent's specification failed to disclose an algorithm or sufficient corresponding structure. However, for the purposes of the IPR, Petitioner proposed the structure should be construed as the "hardware and/or software" corresponding to the "MZ" element shown in the patent's figures, which performs the allocating function.
  • "archived" and "archiving": Petitioner argued these terms should be construed as interchangeable with "stored" and "storing," based on their use in the specification.

5. Relief Requested

  • Petitioner requests institution of IPR and cancellation of claims 1, 2, 6-11, 14-17, and 21-24 as unpatentable.