PTAB

IPR2015-00283

Google Inc v. TLI Communications LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Apparatus and Method for Recording, Communicating and Administering Digital Images
  • Brief Description: The ’295 patent relates to a method for transmitting digital images from a telephone unit with a digital camera to a server. The server then stores the images based on user-prescribed "classification information" that is transmitted along with the images.

3. Grounds for Unpatentability

Ground 1: Claims 17 and 19-24 are obvious over Satoh in view of Wolverton.

  • Prior Art Relied Upon: Satoh (Patent 5,717,496) and Wolverton (RUNNING MS-DOS VERSION 6.2, 6th ed. 1994).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Satoh disclosed the core elements of independent claim 17. Satoh teaches an electronic imaging apparatus (a digital camera) that can be connected to a telephone set, forming a camera-telephone device. This device records and stores digital images, which are then classified using user-defined hierarchical directories. Satoh further teaches transmitting both the image data and the corresponding directory data (as classification information) over a telephone line to a remote PC server for storage and retrieval.
    • Motivation to Combine: Petitioner asserted a POSITA would combine Satoh with Wolverton because Satoh explicitly states its hierarchical file structure is "supported by the personal computer DOS." This provides a direct reason to consult a standard, widely available guide like Wolverton to understand how to implement the server-side processing. Wolverton details how to use standard DOS commands to create directory structures and store files within them.
    • Expectation of Success: A POSITA would have had a high expectation of success because Wolverton provides a straightforward guide for using common DOS commands (e.g., md, copy, Xcopy) to receive the directory information from Satoh's device and automatically replicate the directory structure on the server, then store the corresponding image files in the correct folders.

Ground 2: Claims 17, 19-21, 23, and 24 are obvious over Wilska in view of Morikawa.

  • Prior Art Relied Upon: Wilska (Patent 6,427,078) and Morikawa (Patent 5,613,108).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner contended that Wilska disclosed an early camera phone—a portable computer with an integrated camera and cellular mobile phone unit—capable of capturing, storing, and transmitting digital images as email attachments. Morikawa was argued to disclose a complementary e-mail processing system. In Morikawa, a user mail server receives an e-mail, extracts classification information (specifically, a "Specified Folder Name" provided by the sender), and automatically stores the email's attached file in the corresponding folder on the server.
    • Motivation to Combine: A POSITA would combine these references to solve the known problem of manually organizing and sorting large numbers of e-mail attachments. It would have been obvious to use Morikawa's automated server-side filing system to handle the image-containing emails sent from a device like Wilska's, thereby improving efficiency.
    • Expectation of Success: Success was predictable, as the combination involved applying a known email attachment processing method (Morikawa) to a known type of email attachment (digital images sent from a mobile device like Wilska). The technologies were compatible and addressed a recognized need in the art.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including:

    • Claim 18 as obvious over Satoh/Wolverton in further view of Bernardi (Patent 5,546,145) for adding known speech recognition capabilities.
    • Claim 18 as obvious over Wilska/Morikawa in further view of Burstein (a 1992 IEEE article) for adding speech recognition to the camera phone email system.
    • Claim 22 as obvious over Wilska/Morikawa in further view of Partridge (Statutory Invention Registration H1714) for using a telephone number as a form of classification information.

4. Key Claim Construction Positions

  • Petitioner argued for adopting the Board's construction of "classification information" from a prior IPR involving the same patent: "information that characterizes or is otherwise associated with a digital image."
  • This construction was central to Petitioner's arguments, as it is broad enough to encompass both the directory structure data disclosed in Satoh and the "Specified Folder Name" data in an e-mail as disclosed by Morikawa.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that this petition was not redundant to a previously denied IPR petition filed by Facebook (IPR2014-00566).
  • Petitioner noted the Board denied the Facebook petition because its fax-based prior art failed to teach the claimed step of storing images "taking into consideration the classification information."
  • This petition, in contrast, relied on different prior art from the fields of digital photography (Satoh/Wolverton) and e-mail processing (Wilska/Morikawa), which Petitioner argued explicitly teaches and enables this allegedly missing limitation.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 17-24 of the ’295 patent as unpatentable.