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
`
`
`
`
`
`
`
`
`
`
`

`

`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 .................. 11
`
`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 ....................... 12
`
`B.
`
`Claim Terms To Be Construed ............................................................ 13
`
`1.
`
`“At Different Locations” ........................................................... 13
`
`VII. DETAILED EXPLANATION OF UNPATENTABILITY .......................... 19
`
`A. Overview of the IETF and IESG ......................................................... 19
`
`B.
`
`C.
`
`D.
`
`E.
`
`RFCs and Internet Drafts ..................................................................... 20
`
`The IETF Standardization Process ...................................................... 21
`
`The MIME RFCs ................................................................................. 22
`
`The MIME RFCs Are Each Prior Art to the ’034 Patent .................... 26
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`RFCs Are Often Used As Prior Art By This Board and Federal
`Courts ........................................................................................ 26
`
`RFC 1344 .................................................................................. 27
`
`RFC 1521 .................................................................................. 27
`
`RFC 1820 .................................................................................. 28
`
`RFC 1894 .................................................................................. 29
`
`References In Other Publications And Patents ......................... 30
`
`The MIME RFCs’ Mechanisms For Specifying and Describing the
`F.
`Format of Internet Messages ......................................................................... 31
`
`G. Message Generation, Delivery, Conversion, and Notification Defined
`by the MIME RFCs ....................................................................................... 32
`
`H.
`
`I.
`
`Reasons to Combine the MIME RFCs ................................................ 34
`
`The MIME RFCs Render Obvious The Challenged Claims .............. 37
`
`1.
`
`2.
`
`Claim 23 .................................................................................... 37
`
`Claim 24 .................................................................................... 47
`ii
`
`
`
`

`

`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`Claim 31 .................................................................................... 48
`
`Claim 34 .................................................................................... 52
`
`Claim 35 .................................................................................... 55
`
`Claim 36 .................................................................................... 57
`
`Claim 37 .................................................................................... 59
`
`VIII. SECONDARY CONSIDERATIONS ........................................................... 59
`
`IX. STATEMENT REGARDING OTHER PETITION ..................................... 59
`
`X.
`
`CONCLUSION .............................................................................................. 60
`
`
`
`
`
`iii
`
`

`

`TABLE OF AUTHORITIES
`
`Cases 
`Broadcom Corp. v. Emulex Corp., 732 F.3d 1325 (Fed. Cir. 2013) ....................... 35
`
`In re Rambus, Inc., 694 F.3d 42 (Fed. Cir. 2012) .................................................... 19
`
`In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007) ................................. 11
`
`In re Yamamoto, 740 F.2d 1569 (Fed. Cir. 1984) .................................................... 11
`
`Innova Patent Licensing, LLC v. Alcatel-Lucent Holdings, Case No. 2:10-CV-251-
`DF-CE, 2011 U.S. Dist. LEXIS 155522 (E.D. Tex. Sept. 22, 2011) ................... 26
`
`KSR Int’l, Inc. v. Teleflex Co., 550 U.S. 398 (2007) ............................................... 34
`
`MobileMedia Ideas LLC v. Apple Inc., 780 F.3d 1159 (Fed. Cir. 2015) ................. 37
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) .................................. 11, 19
`
`Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325 (Fed. Cir. 2010) ... 26
`
`
`
`Other Authorities
`
`International Business Machines Corporation v. Intellectual Ventures II LLC,
`IPR2014-00660, Paper 19 (October 20, 2014) ..................................................... 26
`
`
`Juniper Networks, Inc. v. Brixham Solutions, Ltd., IPR2014-00425, Paper 16
`(August 1, 2014) ................................................................................................... 26
`
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,764 ........................................ 11
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756 ........................................ 11
`
`Silver Peak Systems, Inc. v. Riverbed Technology, Inc., IPR2014-00128, Paper 11
`(May 2, 2014) ....................................................................................................... 26
`
`
`
`
`
`
`iv
`
`

`

`LIST OF EXHIBITS
`
`US. Patent No. 5,826,034 File History
`
`1008
`
`1009
`
`1016
`
`1017
`
`1018
`
`v
`
`RFC 1521, “MIME (Multipurpose Internet Mail Extensions)
`Part One: Mechanisms for Specifying and Describing the
`Format of Internet Message Bodies,” by Nathaniel Borenstein
`and Ned Freed.
`
`The Parties’ Proposed Claim Constructions in the Related
`Matters
`
`Briefing for Petitioners’ Motion for Judgment on the
`Pleadings
`
`RFC 1602, “The Internet Standards Process -— Revision 2,” by
`the Internet Architecture Board and Internet Engineering
`Steering Group (March 1994)
`
`RFC 1344, “Implications of MIME for Internet Mail
`Gateways,” by Nathaniel Borenstein.
`
`1019
`
`RFC 1894, “An Extensible Message Forrnat for Message
`Status Notifications,” by K. Moore
`
`1020
`
`RFC 1820, “Multimedia E—mail (MIME) User Agent
`
`
`
`

`

`Checklist,” by E. Huizer.
`RFC 1341, “MIME (Multipurpose Internet Mail Extensions):
`Mechanisms for Specifying and Describing the Format of
`Internet Message Bodies,” by Nathaniel Borenstein and Ned
`Freed.
`RFC 1343, “A User Agent Configuration Mechanism For
`Multimedia Mail Format Information,” by Nathaniel
`Borenstein
`RFC 1437, “The Extension of MIME Content-Types to a New
`Medium,” by Nathaniel Borenstein and M. Linimon
`RFC 1523, “The Text/Enriched MIME Content-Type,” by
`Nathaniel Borenstein
`RFC 1524, “A User Agent Configuration Mechanism For
`Multimedia Mail Format Information,” by Nathaniel
`Borenstein
`RFC 1563, “The Text/Enriched MIME Content-type,” by
`Nathaniel Borenstein
`RFC 2045, “Multipurpose Internet Mail Extensions (MIME)
`Part One: Format of Internet Message Bodies” by Nathaniel
`Borenstein and Ned Freed
`RFC 2046, “Multipurpose Internet Mail Extensions (MIME)
`Part Two: Media Types” by Nathaniel Borenstein and Ned
`Freed
`RFC 2049, “Multipurpose Internet Mail Extensions (MIME)
`Part Five: Conformance Criteria and Examples” by Nathaniel
`Borenstein and Ned Freed
`RFC 1590, “Media Type Registration Procedure,” by J. Postel
`RFC 1894 (draft v.06): Internet-Draft version of RFC 1894,
`“draft-ietf-notary-mime-delivery-06.txt.” by K. Moore and G.
`Vaudreuil
`History of RFC 1894, reproduction of
`https://datatracker.ietf.org/doc/rfc1894/history/, printed on
`May 14, 2015.
`RFC Index, reproduction of http://www.rfc-editor.org/rfc-
`
`vi
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`1031
`
`1032
`
`1033
`
`
`
`

`

`1034
`
`1035
`
`1036
`
`1037
`
`1038
`1039
`1040
`1041
`1042
`
`1043
`
`index.html, printed on May 5, 2015
`
`Comparison of RFC 1894 with RFC 1894 (draft v.06),
`reproduction of https://tools.ietf.org/wg/notary/draft-ietf-
`notary-mime-delivery/rfc1894-from-06.diff.html, printed on
`May 14, 2015
`MIME: A Portable and Robust Multimedia Format for
`Internet Mail, Nathaniel Borenstein, Multimedia Systems,
`Vol. 1, Issue 1, pp. 29-36 (April 10, 1993)
`Internet Multimedia Mail: Emerging Standards for
`Interoperability, Nathaniel Borenstein, ULPAA, pp. 183-192
`(1992)
`MIME Overview, Mark Grand (October 26, 1993),
`reproduction of http://www.nada.kth se/sunet-
`mime/ftp/mime-overview-Mark-Grand.txt, printed on March
`6, 2015
`U.S. Patent No. 5,710,883 to Hong et al.
`U.S. Patent No. 5,855,007 to Jovicic
`U.S. Patent No. 6,182,224 to Phillips et al.
`U.S. Patent No. 6,854,007 to Hammond
`RFC Editor, reproduction of http://www.rfc-editor.org,
`printed on May 5, 2015
`IETF RFC Page, reproduction of http://www.ietf.org/rfc.html,
`printed on May 1, 2015
`
`
`
`vii
`
`

`

`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. § 103(a) 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 obvious under 35
`
`U.S.C. § 103 based on the combined teachings of the “MIME RFCs” – RFCs 1344
`
`(Ex. 1017), 1521 (Ex. 1018), 1820 (Ex. 1020), and 1894 (Ex. 1019).
`
`A detailed explanation of: (i) the disclosures and teachings of the identified
`
`prior art references; 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 and the Declaration of
`
`
`
`3
`
`

`

`Nathaniel Borenstein (Ex. 1014; “Borenstein Declaration”) on the authenticity,
`
`dates of publication and public availability of the MIME RFCs.
`
`V. BACKGROUND
`A. The ’034 Patent
`Field of Invention
`
`1.
`
`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
`
`
`
`5
`
`

`

`delivery 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
`
`
`
`6
`
`

`

`also provided.” Id. at col. 8:53-55. This 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.
`
`While the 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
`
`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.
`9
`
`
`
`

`

`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.
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`Thus, the sole basis for patentability of Claims 23 and 36 in view of Inniss
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`(Ex. 1007) and Cohen (Ex. 1005) relates to Applicant’s argument that the prior art
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`does not teach or suggest automatically notifying the sender of a successful
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`message delivery to the recipient. Ex. 1003 at ¶ 63.
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`But, such notification was well known by 1995 in the related art. For
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`example, such notification was described in messaging standards such as those
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`relied on in this Petition. Ex. 1003 at ¶ 64. Indeed, the underlying concept of
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`notification was also recognized as prior art by the ’034 Patent’s discussion of
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`registered mail – which it identifies as the “equivalent” of its purported invention.
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`Ex. 1003 at ¶ 65.
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`VI. CLAIM CONSTRUCTION
`In inter partes review, the Board applies the broadest reasonable
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`interpretation (“BRI”) standard to construe claim terms.1 Under the BRI standard,
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`claim terms are given their “broadest reasonable interpretation, consistent with the
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`specification.” In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984); Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48,756 48,764 (Aug. 14, 2012). Claim
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`terms are “generally given their ordinary and customary meaning,” which is the
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`meaning that the term would have to a person of ordinary skill in the art. See In re
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`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (quoting Phillips v.
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`AWH Corp., 415 F.3d 1303, 1312, 1313 (Fed. Cir. 2005) (en banc)).
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`Filings Informative to the BRI of the Challenged Claims
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`A.
`Before considering the proper BRI of certain terms of the Challenged
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`Claims, Petitioners identify three sets of documents that, in whole or in part, may
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`1 Because the standards applied in litigation differ from PTO proceedings, any
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`interpretation of claim terms herein is not binding upon Petitioners in any related
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`litigation. See In re Zletz, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). Petitioners
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`reserve their rights to make all arguments in the district court with respect to claim
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`construction and on other grounds (e.g., 35 U.S.C. § 112).
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`inform the BRI analysis.
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`Proposed Constructions in the Related Actions
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`1.
`The Parties in the related matters identified in Section II(B) have identified
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`proposed terms for construction in those related matters and have exchanged
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`proposed constructions therefore. These terms and constructions are attached as
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`Exhibit 1008. Claim construction briefing in the related matters is set to occur in
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`June-August, 2015.
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`2.
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`Briefing Challenging The Patentability of the Claims Under
`35 U.S.C. § 101
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`On March 17, 2015, the defendants in the related matters filed a Motion for
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`Judgment on the Pleadings showing how the Challenged Claims are directed to
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`unpatentable subject matter under 35 U.S.C. § 101. The complete briefing for that
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`Motion is attached as Ex. 1009, and oral argument is scheduled for June 18, 2015.
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`On May 5, 2015, in view of the Motion, the court issued an order requesting
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`Novo “to submit any proposed claim construction it wants the Court to accept for
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`purposes of deciding the Motion.” Ex. 1010 at 8, D.I. 47. On May 14, Novo filed
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`its proposed constructions with the Court, which are included here as Ex. 1011.
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`Claim Construction Briefing in Novo v. AWCC
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`3.
`Novo previously asserted the ’034 Patent against Allied Wireless
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`Communications Corporation (“AWCC”). Although that action settled, Novo and
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`AWCC filed claim construction briefs, attached here as Ex. 1012.
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`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,
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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 Patent’s description of its preferred embodiments indicates
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`that the payload delivery system: (i) “is a platform independent application with a
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`versatility of being able to be located in one or more locations within the
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`communication network 12” (id. at col. 5:54-58); (ii) “[i]n accordance with an
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`important feature in the
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`present invention, …
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`does not have to be
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`located at any one
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`particular location in the
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`communication network 12” of FIG. 1 (id. at col. 6:33-38); and (iii) can “reside in
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`a variety of different locations including at least any one or more of the following:
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`the workstation 46, the computer workstations 30, 36, the LAN server 42, the local
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`server 31 associated with the LAN 38, the local servers 28 associated with local
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`switches 24, 26, or the long distance servers 22 associated with long distances
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`switches 16, 18” (id. at col. 6:36-43). See also FIG. 8, illustrating a conversion at
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`far-end server 28. 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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`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 (asserting
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`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
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`
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`15
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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 “at
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`different locations” has a far different meaning in its proposed claim constructions
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`in the related actions identified in Section II(B). Specifically, that it also requires
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`an extra affirmative step of “controlling the location of conversion.” Exs. 1008 at
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`10; 1011 at 2. To the extent Novo asserts that such a construction of “at different
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`locations” is also the proper BRI here, it would be incorrect for at least three
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`reasons. See also. Ex. 1003 at ¶ 82.
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`First, the language “at different locations” is a simple passive statement
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`specifying where the claimed “converting …” limitation may occur. Novo’s
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`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
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`the conversion location is at all important. Rather, as discussed above, the
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`emphasis of the ’034 Patent (to the extent there is any emphasis at all as to this
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`element) is simply performing the conversion anywhere in the network based on
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`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
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`wherever the “payload delivery system 62” is provided. No other “control” is
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`16
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`discussed. Ex. 1003 at ¶ 84.
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`Third, such a construction is inconsistent with Novo’s infringement
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`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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`
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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
`
`locations.” Such an argument would make this language into something more than
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`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.
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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 sens