Facebook, Inc. v. TLI Communications LLC: Decision Denying Institution IPR2014-00566
Thursday, September 18, 2014

Takeaway: A lack of sufficient disclosure of structure under 35 U.S.C. § 112, ¶ 6 renders a claim indefinite, and thus not amenable to construction.

In its Decision, the Board denied institution of inter partes review of all of the challenged claims of the ’295 patent with respect to all of the alleged grounds of unpatentability.  It was the Board’s position that Petitioner had not shown a reasonable likelihood that at least one of the challenged claims was unpatentable based on the asserted grounds.

Petitioner had requested institution of inter partes review of claims 1, 2, 6-11, 14-17, and 21-24 of the ’295 patent, which relates to a communication system designed to optimize the transmission and storage of digital images.  All of the challenges to these claims were based on obviousness grounds, and were supported by a declaration of Petitioner’s expert Dr. Beckmann.  The Board initially addressed claim interpretation, focusing on several claim terms.

The Board construed the claim term “classification information” to mean “information that characterizes or is otherwise associated with a digital image.” This was the interpretation proposed by Petitioner for this term, and the Board found this interpretation to be consistent with the ’295 specification.

The Board’s construction of the claim term “means for allocating classification information” turned out to be more complex. The Board and both parties agreed that the recited “means for allocating classification information” is a means-plus-function limitation under 35 U.S.C. § 112, ¶ 6 (now 35 U.S.C. § 112(f)).  However, the Board found that the ’295 patent did not adequately disclose an algorithm that corresponds to the function of the claimed “means for allocating.”  In particular, the Board indicated that it was “unable to arrive at an interpretation of the requirements of claim 1 due to the lack of disclosed structure corresponding to the ‘means for allocating classification information’ limitation” and that “[a] lack of sufficient disclosure of structure under 35 U.S.C. § 112, ¶ 6 renders a claim indefinite, and thus not amendable to construction.”  Thus, the Board concluded that “[i]n the circumstances of this case, because the claims are not amenable to construction, [the Board was] unable to conclude that there is a reasonable likelihood that Petitioner would prevail in its challenge of claim 1, and claims 2, 6–11, and 14–16 that depend therefrom.”

As for Petitioner’s argument that claims 17, 21, and 24 would have been obvious under 35 U.S.C. § 103(a) in view of Hassan taken in combination with Witek, the Board agreed with Patent Owner that Petitioner had not established that Witek taught the storing limitation recited in claim 17.  In particular, the Board said that “Petitioner does not direct us, with any specificity, to evidence demonstrating sufficiently that Witek teaches storing digital images in computer 12after the classification information is extracted from pict fax file 15.”  In view of this and other reasons, the Board was not persuaded that a reasonable likelihood existed that independent claim 17 and its dependent claims 21 and 24 would have been obvious over the combination of Hassan and Witek.  The Board also found that Petitioner had not established a reasonable likelihood that claims 22 and 23 would have been obvious under 35 U.S.C. § 103(a), noting that these claims depend from above-discussed claim 17 for which a reasonable likelihood of success had also not been shown.

Facebook, Inc. v. TLI Communications LLC, IPR2014-00566
Paper 14: Decision Denying Institution of Inter Partes Review 
Dated: September 15, 2014 
Patent: 6,038,295
Before: Jameson Lee, Bart A. Gerstenblith, and Jo-Anne M. Kokoski 
Written by: Kokoski
Related Proceedings: TLI Communications LLC v. AV Automotive, L.L.C., Case No. 14-cv-0142 TSE (E.D. Va.); there are also sixteen other pending cases involving the ’295 patent, according to Petitioner.

 

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