Paper No. ___
`
`
`
`Filed on behalf of: AT&T Mobility LLC and AT&T Services, Inc.
`
`By: Christopher W. Kennerly (chriskennerly@paulhastings.com)
` Naveen Modi (naveenmodi@paulhastings.com)
` Timothy P. Cremen (timothycremen@paulhastings.com)
` Paul Hastings LLP
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`AT&T MOBILITY LLC and AT&T SERVICES, INC.
`Petitioners
`
`v.
`
`NOVO TRANSFORMA TECHNOLOGIES LLC
`Patent Owner
`
`
`
`
`
`U.S. Patent No. 5,826,034
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 5,826,034
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Filed on behalf of: AT&T Mobility LLC and AT&T Services, Inc.
`
`By: Christopher W. Kennerly (chriskennerly@paulhastings.com)
` Naveen Modi (naveenmodi@paulhastings.com)
` Timothy P. Cremen (timothycremen@paulhastings.com)
` Paul Hastings LLP
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`AT&T MOBILITY LLC and AT&T SERVICES, INC.
`Petitioners
`
`v.
`
`NOVO TRANSFORMA TECHNOLOGIES LLC
`Patent Owner
`
`
`
`
`
`U.S. Patent No. 5,826,034
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 5,826,034
`
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ................................... 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`Real Party In Interest Under 37 C.F.R. § 42.8(b)(1) ............................. 1
`
`Related Matters Under 37 C.F.R. § 42.8(b)(2) ..................................... 1
`
`Lead and Backup Counsel Under 37 C.F.R. § 42.8(b)(3) ..................... 2
`
`Service Information Under 37 C.F.R. § 42.8(b)(4) ............................... 3
`
`III. PAYMENT OF FEES UNDER 37 C.F.R. §§ 42.15 AND 42.103 ................. 3
`
`IV. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ............................ 3
`
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a) ............................. 3
`
`B.
`
`Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested ............ 3
`
`V.
`
`BACKGROUND ............................................................................................. 4
`
`A.
`
`The ’034 Patent ..................................................................................... 4
`
`1.
`
`2.
`
`3.
`
`4.
`
`Field of Invention ........................................................................ 4
`
`Background of the Art ................................................................ 4
`
`Summary of the Purported Invention .......................................... 5
`
`Description of Embodiments ...................................................... 6
`
`B.
`
`Prosecution History of the ’034 Patent ................................................. 7
`
`VI. CLAIM CONSTRUCTION .......................................................................... 11
`
`A.
`
`Filings Informative to the BRI of the Challenged Claims .................. 12
`
`1.
`
`2.
`
`Proposed Constructions in the Related Actions ........................ 12
`
`Briefing Challenging The Patentability of the Claims Under 35
`U.S.C. § 101 .............................................................................. 12
`i
`
`
`
`
`
`3.
`
`Claim Construction Briefing in Novo v. AWCC ....................... 13
`Claim Terms To Be Construed ............................................................ 13
`
`B.
`
`1.
`
`“At Different Locations” ........................................................... 13
`
`VII. DETAILED EXPLANATION OF UNPATENTABILITY .......................... 20
`
`A.
`
`International Telecommunication Standards ....................................... 20
`
`B. X.400 and F.400 Recommendations ................................................... 21
`
`C. X.400 (1988) Is Prior Art .................................................................... 22
`
`D.
`
`Basic Functional Components of X.400 (1988) .................................. 24
`
`1. Message Generation, Delivery, Conversion and Notification .. 25
`
`2.
`
`Physical Delivery Service ......................................................... 28
`
`E.
`
`X.400 (1988) Anticipates The Challenged Claims ............................. 30
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`Claim 23 .................................................................................... 30
`
`Claim 24 .................................................................................... 40
`
`Claim 31 .................................................................................... 42
`
`Claim 34 .................................................................................... 44
`
`Claim 35 .................................................................................... 46
`
`Claim 36 .................................................................................... 47
`
`Claim 37 .................................................................................... 49
`
`VIII. STATEMENT REGARDING OTHER PETITION ..................................... 49
`
`IX. CONCLUSION .............................................................................................. 50
`
`
`
`
`
`
`
`ii
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`In re Rambus, Inc., 694 F.3d 42 (Fed. Cir. 2012) .................................................... 19
`In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007 ................................... 12
`In re Yamamoto, 740 F.2d 1569 (Fed. Cir. 1984) .................................................... 11
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) .................................. 12, 19
`
`
`Other Authorities
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,764 ........................................ 12
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756 ........................................ 12
`
`
`
`iii
`
`
`
`LIST OF EXHIBITS
`
`No.
`
`1001
`
`US. Patent No. 5,826,034
`
`Description
`
`1002
`
`1003
`
`1008
`
`1009
`
`Table of Novo Infringement Suits
`
`Declaration of Randall Snyder
`
`US. Patent No. 5,381,527 to Inniss et al.
`
`Parties’ Proposed Claimed Constructions in the Related
`Matters
`
`Briefing for Petitioners’ Motion for Judgment on the
`Pleadings
`
`
`
`1014
`
`ITU X.400 Page, reproduction of ht_tps://www.itu.int/rec/T-
`REC-X-400/en, printed on May 14, 2015
`
`1015
`
`1016
`
`1017
`
`1018
`
`“X.400 Standards Only Need Crowning Touch,” by Daniel
`Blum, Network World, June 12, 1989.
`
`“New Standard Advances Electronic Mail Systems;
`Telecommunications,” by Stewart Fist, Sydney Morning
`Herald, April 13, 1989.
`
`US. Patent No. 5,377,191 to Farrell et a].
`
`Excerpt from Implementing X.400 and X500: The PP and
`QUIPU Systems, Stephen E. Kille (1991)
`
`Excerpt from the CCITT “Blue Book”, Volume II — Fascicle
`11.6, “Message Handling and Directory Services, Operations
`and Definition of Service, Recommendations F.400-F.422,
`
`iv
`
`
`
`1020
`
`1021
`
`F.500,” IXth Plenary Assembly, Melbourne, 14-25 November
`1988
`Excerpt from the CCITT “Blue Book”, Volume VIII –
`Fascicle VIII.7, “Data Communication Networks Message
`Handling Systems, Recommendations X.400-X.420,” IXth
`Plenary Assembly, Melbourne, 14-25 November 1988
`ITU F.400 Page, reproduction of
`https://www.itu.int/rec/T REC F.400/en, printed on May 5,
`2015.
`
`
`
`v
`
`
`
`I.
`
`INTRODUCTION
`
`AT&T Mobility LLC and AT&T Services, Inc. (collectively, “Petitioners”)
`
`request inter partes review of Claims 23, 24, 31, 34, 35, 36, and 37 (“Challenged
`
`Claims”) of U.S. Patent No. 5,826,034 (“the ’034 Patent;” Ex. 1001), assigned to
`
`Novo Transforma Technologies LLC (“Novo” or “Patent Owner”).
`
`This Petition shows that there is a reasonable likelihood that Petitioners will
`
`prevail with respect to at least one of the Challenged Claims, and thus a trial for
`
`inter partes review should be instituted. This Petition also establishes by a
`
`preponderance of the evidence that the Challenged Claims are unpatentable under
`
`35 U.S.C. § 102(b) and should be canceled.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`A. Real Party In Interest Under 37 C.F.R. § 42.8(b)(1)
`AT&T Mobility LLC and AT&T Services, Inc. (collectively, “the
`
`Petitioners”) are the real parties-in-interest.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioners identify the following related
`
`matters: Novo has initiated several pending civil actions against AT&T Mobility
`
`LLC and the entities identified below for infringement of the ’034 Patent in the
`
`United States District Court for the District of Delaware: (i) Novo Transforma
`
`Technologies LLC v. AT&T Mobility LLC, Case No. 1:14-cv-00610-RGA; (ii)
`
`Novo Transforma Technologies LLC v. Cellco Partnership, Case No. 1:14-cv-
`1
`
`
`
`
`
`00616-RGA; (iii) Novo Transforma Technologies LLC v. TracFone Wireless Inc.,
`
`Case No. 1:14-cv-00614-RGA; (iv) Novo Transforma Technologies LLC v. T-
`
`Mobile US Inc, Case No. 1:14-cv-00613-RGA; and (v) Novo Transforma
`
`Technologies LLC v. Sprint Spectrum L.P. et al, Case No. 1:14-cv-00612-RGA.
`
`Novo also initiated a number of other infringement lawsuits based on the
`
`’034 Patent against other entities. These suits, which have each been resolved, are
`
`identified in the table attached as Exhibit 1002.
`
`Petitioners are concurrently filing a second petition for inter partes review
`
`also challenging Claims 23, 24, 31, 34, 35, 36, and 37.
`
`C. Lead and Backup Counsel Under 37 C.F.R. § 42.8(b)(3)
`Petitioners designate lead and backup counsel as noted below. A power of
`
`attorney pursuant to 37 C.F.R. § 42.10(b) accompanies this Petition.
`
`Lead Counsel: Christopher W. Kennerly (Reg. No. 40, 675),
`
`chriskennerly@paulhastings.com. Address: Paul Hastings LLP, 1117 S. California
`
`Avenue, Palo Alto, California 94304. Phone: 1.650.320.1800. Fax:
`
`1.650.320.1900
`
`Backup Counsel: Naveen Modi (Reg. No. 46,224),
`
`naveenmodi@paulhastings.com. Timothy P. Cremen (Reg. No. 50,855),
`
`timothycremen@paulhastings.com. Address: Paul Hastings LLP, 875 15th Street,
`
`N.W., Washington, DC 20005. Phone: 1.202.551.1700. Fax: 1.202.551.1705.
`
`
`
`2
`
`
`
`Service Information Under 37 C.F.R. § 42.8(b)(4)
`
`D.
`Service information is above, and Petitioners consent to electronic service.
`
`III. PAYMENT OF FEES UNDER 37 C.F.R. §§ 42.15 AND 42.103
`Petitioners submit the required fees herewith. Please charge any additional
`
`fees required for this proceeding to Deposit Account No. 50-2613.
`
`IV. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Petitioners certify that: (i) the ’034 Patent is available for inter partes
`
`review; and (ii) they are not barred or estopped from requesting such review on the
`
`grounds identified.
`
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested
`Petitioners request an inter partes review of the Challenged Claims on the
`
`following ground and request that each Challenged Claim be found unpatentable:
`
`Ground 1: Claims 23, 24, 31, 34, 35, 36 and 37 are each anticipated under
`
`35 U.S.C. § 102(b) by X.400 (1988) (Ex. 1020).
`
`A detailed explanation of: (i) the disclosures and teachings of the identified
`
`prior art reference; and (ii) the support for Ground 1 is provided in Section VII.
`
`Petitioners also submit the Declaration of Randall Snyder (Ex. 1003;
`
`“Snyder Declaration”) as additional support for Ground 1.
`
`
`
`3
`
`
`
`V. BACKGROUND
`A. The ’034 Patent
`1.
`Field of Invention
`The ’034 Patent is purportedly directed to “an end-to-end payload delivery
`
`system and method that effectuates delivery in a media independent manner
`
`following the parameters of the delivery that are defined by the sender.” Ex. 1001
`
`at col. 1:7-12; see also Ex. 1003 at ¶ 37. The specification describes the
`
`“invention” as:
`
`essentially the electronic equivalent to registered mail with the
`advantages of speed, configurability, convenience, resource
`conservation, timeliness, but without the drawbacks of the manual
`system used with registered mail, e.g., paperwork, delay, time
`utilization, and geographic limitation of applicability.
`
`Id. at col. 2:10-11 (emphasis added); see also Ex. 1003 at ¶ 38.
`
`Background of the Art
`
`2.
`The ’034 Patent first observes that “numerous media for transferring
`
`information” were known prior to its filing, including “telephone (voice-mail), e-
`
`mail, fax, etc.” (id. at col. 1:18-24) and identifies as a first “problem” the “inability
`
`to communicate between the different media” (id. at col. 1:37-40); see also Ex.
`
`1003 at ¶ 39.
`
`
`
`4
`
`
`
`It concedes that U.S. Patent No. 4,837,798 to Cohen et al. (“Cohen;” Ex.
`
`1005) provides a solution by its disclosed conversion of messages in its “mailbox
`
`into a single native media” (Ex. 1001 at col. 1:41-54); see also Ex. 1003 at ¶ 40.
`
`However, the ’034 Patent criticizes Cohen as providing only “post-delivery”
`
`conversion (which was and is not an element of the Challenged Claims) and for
`
`failing to send an “acknowledgment or notification to the sender of the success or
`
`failure of the message conversion.” Id. at col. 1:54-60 ; see also Ex. 1003 at ¶ 41.
`
`Summary of the Purported Invention
`
`3.
`The ’034 Patent describes its purportedly
`
`inventive method as “providing media independent,
`
`guaranteed delivery of a payload in accordance with
`
`delivery parameters defined by the sender.” Id. at col.
`
`4:25-28; see also Ex. 1003 at ¶ 43. As illustrated in
`
`FIG. 10 (added during prosecution): (i) “the sender
`
`generates a payload for delivery in a first media;” (ii)
`
`“the sender establishes the parameters of the delivery;”
`
`(iii) “[t]he payload is then passed on to the payload
`
`delivery system for delivery to the recipient,” which
`
`“performs the function of converting the entire payload (or, a portion thereof), if
`
`necessary, from the first media to an alternate media in order to complete delivery
`
`
`
`5
`
`
`
`of the payload to the recipient.” Id. at col. 4:28-43; see also Ex. 1003 at ¶ 44.
`
`Finally, the ’034 Patent states that notifications can be sent to the sender “so that
`
`the sender is guaranteed that the payload has been received by the recipient.” Id. at
`
`col. 4:55-64; see also Ex. 1003 at ¶ 45.
`
`Description of Embodiments
`
`4.
`Turning to the “preferred embodiment,” the ’034 Patent states that its
`
`“payload delivery system” can be located anywhere in the network of FIG. 1 (id. at
`
`col. 6:33-42) and can be implemented on the “typical” computer architecture of
`
`FIG. 2 that is “well known in the art” (id. at col. 6:58-60). FIG. 3 shows “payload
`
`delivery system 62” as a number of boxes. Id. at col. 7:21-8:26; see also Ex. 1003
`
`at ¶ 46. The ’034 Patent does not state that there is anything novel about FIG. 1’s
`
`network or FIG. 2’s computer. Ex. 1003 at ¶ 47. Nor does it describe any
`
`particular hardware or software for implementing the boxes of FIG. 3 or provide
`
`any further detail on their operation. Ex. 1003 at ¶ 48.
`
`The ’034 Patent explains that a
`
`user may select “delivery parameters”
`
`as shown in FIG. 4. Id. at col. 8:28-52.
`
`“In addition to the recipient specific
`
`information provided by the entry 102,
`
`payload delivery specific information is also provided.” Id. at col. 8:53-55. This
`
`
`
`6
`
`
`
`includes information such as what media types the payload should be, alternate
`
`media types if the first cannot be sent, the number of retries, etc. Id. at col. 8:55-
`
`9:7; see also Ex. 1003 at ¶ 49. The ’034 Patent specifies that the “capability of
`
`having the sender set the delivery parameters” is important because some media
`
`may not be suitable for conversion into other media types (e.g., a spreadsheet into
`
`voice data). Id. at col. 9:8-28; see also Ex. 1003 at ¶ 50. No particular hardware or
`
`software for implementing FIG. 4 is described. Ex. 1003 at ¶ 51.
`
`Finally, the ’034 Patent provides examples of acknowledgments in FIGS. 5-
`
`9, but again describes no hardware or software for implementing such methods.
`
`Ex. 1003 at ¶ 52.
`
`Prosecution History of the ’034 Patent
`
`B.
`The Application that resulted in the ’034 Patent (the ’033 Application) was
`
`filed on August 9, 1996. Originally filed Claims 1-35 of the ’033 Application
`
`correspond to issued Claims 1-35 in the ’034 Patent, although independent Claims
`
`1 and 23 were changed twice by the two Amendments during prosecution, as
`
`explained below. Independent Claim 36 and its dependent Claim 37 were added
`
`by the first Amendment and Claim 36 was changed by the second. Ex. 1003 at ¶
`
`53.
`
`
`
`
`
`
`
`7
`
`
`
`Originally-filed Claim 23 read as follows:
`
`
`
`Ex. 1006 at 50; see also Ex. 1003 at ¶ 54.
`
`On August 26, 1997, the Examiner rejected Claim 23 as being anticipated by
`
`U.S. Patent No. 5,381,527 to Inniss et al. (“Inniss;” Ex. 1007), taking the position
`
`that it discloses that “a user[] who wishes an e-mail message to be sent … can
`
`specify one or more alternative media such as a fax in the event the e-mail was
`
`unable to be delivered,” citing FIGS. 1 and 2
`
`(shown here) and Cols. 1 and 3. Id. at 81; see
`
`also Ex. 1003 at ¶ 55.
`
`Inniss’s disclosure is very similar to
`
`that of the ’034 Patent. It relates to
`
`“automatically selecting an alternate
`
`distribution media upon the failure of an
`
`attempted transmission via a particular
`
`distribution channel.” Ex. 1007 at col. 1:15-
`
`
`
`8
`
`
`
`20. Inniss’s FIG. 1 shows a networked system where media can be changed for
`
`delivery to a recipient (id. at col. 2:45-3:32), and its FIG. 2 shows a screen where
`
`the sender can choose and prioritize delivery and conversion methods. Id. at col.
`
`3:33-4:21; see also Ex. 1003 at ¶ 56.
`
`Applicant did not even attempt traversal based on the as-filed language of
`
`Claim 23. Rather, on October 27, 1997, Applicant amended Claim 23:
`
`Ex. 1006 at 90. Applicant also added Claims 36 and 37. See also Ex. 1003 at ¶¶
`
`
`
`57-58.
`
`While Applicant argued that Inniss fails to teach or suggest this added
`
`feature, he conceded that (similar to Cohen), Inniss “teaches the conversion of a
`
`payload into different medias.” Id. at 93; see also Ex. 1003 at ¶ 59.
`
`On March 12, 1998, the Examiner again rejected the claims as being
`
`anticipated by Inniss. In response to Applicant’s amendment, the Examiner stated
`
`that Inniss does disclose conversion “at different locations,” citing elements 14, 20,
`
`22, and 26 of FIG. 1. Ex. 1006 at 120. In other words, the Examiner took the
`
`
`
`9
`
`
`
`position that Inniss’s disclosure of conversion at any one of a plurality of network
`
`locations met the limitation added by Applicants. Ex. 1003 at ¶ 60.
`
`Again, Applicant did not attempt traversal by argument and, on June 15,
`
`1998, amended Claim 23 as follows (Claim 36 was similarly amended):
`
`
`
`Id. at 125; see also Ex. 1003 at ¶ 61.
`
`
`
`In conjunction with this change, Applicant argued that the only notification
`
`in Inniss “is an error report if the maximum number of transmission attempts have
`
`occurred,” citing element 78 of FIG. 3. Id. at 127. On June 23, 1998, the
`
`Examiner issued a Notice of Allowance, without comment. Id. at 130; see also Ex.
`
`1003 at ¶ 62.
`
`Thus, the sole basis for patentability of Claims 23 and 36 in view of Inniss
`
`(Ex. 1007) and Cohen (Ex. 1005) relates to Applicant’s argument that the prior art
`
`does not teach or suggest automatically notifying the sender of a successful
`
`message delivery to the recipient. Ex. 1003 at ¶ 63.
`
`
`
`10
`
`
`
`But, such notification was well known by 1995 in the related art. For
`
`example, such notification was described in messaging standards such as those
`
`relied on in this Petition. Ex. 1003 at ¶ 64. Indeed, the underlying concept of
`
`notification was also recognized as prior art by the ’034 Patent’s discussion of
`
`registered mail – which it identifies as the “equivalent” of its purported invention.
`
`Ex. 1003 at ¶ 65.
`
`VI. CLAIM CONSTRUCTION
`In inter partes review, the Board applies the broadest reasonable
`
`interpretation (“BRI”) standard to construe claim terms.1 Under the BRI standard,
`
`claim terms are given their “broadest reasonable interpretation, consistent with the
`
`specification.” In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984); Office
`
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,764 (Aug. 14, 2012). Claim
`
`terms are “generally given their ordinary and customary meaning,” which is the
`
`meaning that the term would have to a person of ordinary skill in the art. See In re
`
`
`1 Because the standards applied in litigation differ from PTO proceedings, any
`
`interpretation of claim terms herein is not binding upon Petitioners in any related
`
`litigation. See In re Zletz, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). Petitioners
`
`reserve their rights to make all arguments in the district court with respect to claim
`
`construction and on other grounds (e.g., 35 U.S.C. § 112).
`
`
`
`11
`
`
`
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (quoting Phillips v.
`
`AWH Corp., 415 F.3d 1303, 1312, 1313 (Fed. Cir. 2005) (en banc)).
`
`Filings Informative to the BRI of the Challenged Claims
`
`A.
`Before considering the proper BRI of certain terms of the Challenged
`
`Claims, Petitioners identify three sets of documents that, in whole or in part, may
`
`inform the BRI analysis.
`
`Proposed Constructions in the Related Actions
`
`1.
`The Parties in the related matters identified in Section II(B) have identified
`
`proposed terms for construction in those related matters and have exchanged
`
`proposed constructions therefore. These terms and constructions are attached as
`
`Exhibit 1008. Claim construction briefing in the related matters is set to occur in
`
`June-August, 2015.
`
`2.
`
`Briefing Challenging The Patentability of the Claims Under
`35 U.S.C. § 101
`
`On March 17, 2015, the defendants in the related matters filed a Motion for
`
`Judgment on the Pleadings showing how the Challenged Claims are directed to
`
`unpatentable subject matter under 35 U.S.C. § 101. The complete briefing related
`
`to that Motion is attached as Ex. 1009, and oral argument is scheduled for June 18,
`
`2015.
`
`On May 5, 2015, in view of the Motion, the court issued an order requesting
`
`Novo “to submit any proposed claim construction it wants the Court to accept for
`
`
`
`12
`
`
`
`purposes of deciding the Motion” by May 14, 2015. Ex. 1010 at 8, D.I. 47. On
`
`May 14, Novo filed its proposed constructions with the Court, which are included
`
`here as Ex. 1011.
`
`Claim Construction Briefing in Novo v. AWCC
`
`3.
`Novo previously asserted the ’034 Patent against Allied Wireless
`
`Communications Corporation (“AWCC”). Although that action settled, Novo and
`
`AWCC filed claim construction briefs, attached here as Ex. 1012.
`
`B. Claim Terms To Be Construed
`For purposes of this proceeding only, Petitioners propose BRI constructions
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`for the following terms. All remaining terms should be given their plain meaning.
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`“At Different Locations”
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`1.
`Proposed BRI Construction: “at one of a plurality of network locations.”
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`This phrase appears in challenged independent Claim 23 as part of the
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`element “converting said payload to an alternative media at different locations as
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`necessary for completion of delivery of said payload” (emphasis added). The
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`intrinsic record fully supports Petitioner’s proposed BRI. Ex. 1003 at ¶ 76.
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`First, the ’034 Patent’s Summary of the Invention states: (i) “media
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`conversions and payload copying can be performed at one or more locations where
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`the system resides in order to take advantage of tariffs, special offerings, etc., and
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`to provide guaranteed delivery in a media independent environment,” (Ex. 1001 at
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`col. 2:25-28); and (ii) “conversion is performed by the payload delivery system,
`13
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`
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`and therefore, can take place more than once and at one or more different locations
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`where the payload system resides” (id. at col. 2:54-58); see also Ex. 1003 at ¶ 77.
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`Second, the ’034
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`Patent’s description of its
`
`preferred embodiments
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`indicates that the payload
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`delivery system: (i) “is a
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`platform independent application with a versatility of being able to be located in
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`one or more locations within the communication network 12” (id. at col. 5:54-58);
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`(ii) “[i]n accordance with an important feature in the present invention, … does not
`
`have to be located at any one particular location in the communication network 12”
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`of FIG. 1 (id. at col. 6:33-38); and (iii) can “reside in a variety of different
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`locations including at least any one or more of the following: the workstation 46,
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`the computer workstations 30, 36, the LAN server 42, the local server 31
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`associated with the LAN 38, the local servers 28 associated with local switches 24,
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`26, or the long distance servers 22 associated with long distances switches 16, 18”
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`(id. at col. 6:36-43). See also FIG. 8, illustrating a conversion at far-end server 28.
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`Id. at col. 10:41-51; Ex. 1003 at ¶ 78.
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`Third, in the October 27, 1997 Amendment, Applicant discussed the support
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`for “at different locations” as follows:
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`14
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`
`
`
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`
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`Ex. 1006 at 93. The portions of the specification cited by Applicant overlap with
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`those identified above that explain the ’034 Patent’s instruction that conversion
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`takes place at one of a plurality of network locations. Ex. 1003 at ¶ 79.
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`In view of the intrinsic record’s clear and repeated instructions, Petitioners
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`respectfully submit that the BRI of “at different locations” must be “at one of a
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`plurality of network locations.” Ex. 1003 at ¶¶ 75-91.
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`This BRI is also consistent with, and informed by, Novo’s interpretation of
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`“at different locations” in its infringement contentions against Petitioners in the
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`related actions identified in Section II(B). See, e.g., Ex. 1013 at 14-15, which
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`asserts that “converting” broadly reads on MMS “content adaptation” and that such
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`“content adaptation takes place at the sender’s device, the recipient’s device, or at
`
`
`
`15
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`
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`MMSCs located at different locations depending on the location of the sender and
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`recipient and network conditions.” See also. Ex. 1003 at ¶ 80.
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`Despite this clear and consistent record, Novo has contradictorily asserted
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`“at different locations” has a far different meaning in its proposed claim
`
`constructions in the related actions identified in Section II(B). Specifically, that it
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`also requires an extra affirmative step of “controlling the location of conversion.”
`
`Exs. 1008 at 10; 1011 at 2. To the extent Novo asserts that such a construction of
`
`“at different locations” is also the proper BRI here, it would be incorrect for at
`
`least three reasons. See also. Ex. 1003 at ¶ 82.
`
`First, the language “at different locations” is a simple passive statement
`
`specifying where the claimed “converting …” limitation may occur. Novo’s
`
`construction improperly seeks to add an entirely new active step – “controlling” –
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`to the phrase. Ex. 1003 at ¶ 83.
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`Second, the intrinsic record does not mention that some specific “control” of
`
`the conversion location is at all important. Rather, as discussed above, the
`
`emphasis of the ’034 Patent (to the extent there is any emphasis at all as to this
`
`element) is simply performing the conversion anywhere in the network based on
`
`where the payload delivery system is provided. Any “control” of the location of
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`such conversion contemplated by the ’034 Patent is simply a byproduct of
`
`
`
`16
`
`
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`wherever the “payload delivery system 62” is provided. No other “control” is
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`discussed. Ex. 1003 at ¶ 84.
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`Third, such a construction is inconsistent with Novo’s infringement
`
`contentions, which do not identify or explain this alleged “control” of the
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`conversion process. See, e.g., Ex. 1013 at 14-15; see also Ex. 1003 at ¶ 85.
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`To Petitioners’ knowledge, the only identifiable source of Novo’s
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`“controlling the location of conversion” phraseology is the October 27, 1997
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`Amendment which, in addition to the explanation cited above, stated:
`
`
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`Ex. 1006 at 93; see also Ex. 1003 at ¶ 86.
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`It therefore appears that Novo will take the position, at least in the related
`
`actions, that this passage was definitional as to the meaning of “at different
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`locations.” Such an argument would make this language into something more than
`
`it actually is, as the passage does not provide any particular definition for “at
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`different locations,” let alone a definition sufficient to overcome the clear and
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`repeated intrinsic instruction that this phrase simply means “at one of a plurality of
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`network locations.” Ex. 1003 at ¶ 87.
`
`17
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`
`
`
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`Moreover, the argument set forth by Applicant relates to the alleged lack of
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`disclosure of Inniss in a broad sense – that it does not disclose controlling the
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`location of the conversion and, therefore, would not teach or suggest conversion at
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`different locations. Applicant in no way equated the claimed “at different
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`locations” to an active step of “control[ling] the location of conversion.” Ex. 1003
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`at ¶ 88.
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`In any event, the Examiner was unpersuaded by Applicant’s argument, and
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`pointed out in the March 12, 1998 Office Action that:
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`
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`Ex. 1006 at 120. Thus, the Examiner also interpreted “at different locations” in
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`accordance with Petitioners’ proposed BRI – i.e., at “one of a plurality of network
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`locations.” Applicant did not disagree at the time, and proceeded to amend the
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`claims to recite “automatic notification.” Ex. 1003 at ¶ 89.
`
`
`
`18
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`
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`Accordingly, taken as a whole, the prosecution history of the ’034 Patent
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`supports a BRI of “at different locations” as “at one of a plurality of network
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`locations,” and Novo’s proposed construction in the related actions cannot narrow
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`such a BRI. Ex. 1003 at ¶ 90.
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`In addition to the BRI analysis above, Petitioner recognizes that the ’034
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`Patent appears set to expire in August 2016, which will be subsequent to the
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`requested institution of trial in this proceeding, but may precede a final decision.
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`In such cases, the Board has held (citing In re Rambus, Inc., 694 F.3d 42, 46 (Fed.
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`Cir. 2012)), that it will construe expired patent claims according to the standard
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`applied by the district courts by applying the principles set forth in Phillips, 415
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`F.3d at 1312.
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`Petitioners respectfully submit that this change in standards would not have
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`an effect on Petitioner’s Petition and on Petitioner’s proposed construction herein,
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`especially in view of Patent Owner’s positions in litigation as “at one of a plurality
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`of network locations” is the meaning instructed by the intrinsic record for at least
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`the reasons discussed above.
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`
`
`19
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`
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`VII. DETAILED EXPLANATION OF UNPATENTABILITY
`A.
`International Telecommunication Standards
`A telecommunications standard is a document that establishes engineering
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`and technical requirements for processes, procedures and methods that have been
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`decreed by authority or adopted by consensus. Ex. 1003 at ¶ 91.
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`Among the largest of the international organizations that develop
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`international telecommunication standards are the: (i) International
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`Telecommunications Union Telecommunication Standardization Sector (ITU-T or
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`ITU), formerly known as the Consultative Committee for International Telephony
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`and Telegraphy (CCITT) and (ii) the International Organization for
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`Standardization (ISO). Ex. 1003 at ¶ 92.
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`The ITU is a treaty organization of the United Nations, whose activities
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`include standardizing telecommunications, regulating radio telecommunications
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`and managing frequency assignments that have international significance. The
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`ITU also plays a key role in the evolution of seamless global telecommunications
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`technology. The ITU membership consists of national delegations from more than
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`180 countries. Ex. 1003 at ¶ 93.
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`The ISO is a voluntary nongovernment organization mainly providing
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`standards for information technology. This group develops standards to facilitate
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`international trade in goods and services. ISO membership comprises primarily
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`20
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`
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`national standards-making bodies including the American National Standards
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`Institute (ANSI). More than 100 nations contribute to the ISO. The ISO and ITU
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`work closely together in areas of common interest. Ex. 1003 at ¶ 94.
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`The CCITT had a four-year standards-making period, after which proposed
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`standards were published into what it called recommendations. The covers of the
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`published documents were a different color for each four-year standards period.
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`For example, Blue Book refers to the 1988 recommendations, and Red Book refers
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`to the 1984 recommendations. Ex. 1003 at ¶ 95.
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`When the CCITT was rebranded as the ITU-T in 1992, the principle of a
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`four-year standards-making timeframe was abandoned. Instead, individual
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`standards-making groups within the ITU-T were allowed to approve their
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`recommendations themselves without having to wait for a full ITU-T meeting
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`every four years. The last issue of the CCITT colored books was the 1988 Blue
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`Book. From 1992 on, the recommendations were published in separate booklets.
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`Ex. 1003 at ¶ 96.
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`B. X.400 and F.400 Recommendations
`The X.400 and F.40
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