Ex Parte 7020132 et al

Patent Trial and Appeal Board

Dec 15, 2014

95002002 (P.T.A.B. Dec. 15, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/002,002 06/01/2012 7020132 12566/77 9137
23838 7590 12/15/2014
KENYON & KENYON LLP
1500 K STREET N.W.
SUITE 700
WASHINGTON, DC 20005
EXAMINER
CORSARO, NICK
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/15/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

EC DATA SYSTEMS, INC.
Requester

v.

j2 GLOBAL, INC.
Patent Owner
____________

Appeal 2014-008203
Reexamination Control No. 95/002,002
Patent 7,020,132 B1
Technology Center 3900
____________

Before JOHN A. JEFFERY, STEPHEN C. SIU, and
DAVID M. KOHUT, Administrative Patent Judges.

KOHUT, Administrative Patent Judge

DECISION ON APPEAL
Appeal 2014-008203
Reexamination Control No. 95/002,002
Patent 7,020,132 B1

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Patent Owner, j2 Global, Inc., appeals under U.S.C. §§ 134 and 315
(2002) the Examiner’s decision to adopt Requester’s proposed rejections of
claims 14-18 and 21-341 under certain grounds, as discussed below. An oral
hearing was conducted with the Patent Owner on December 3, 2014. We
have jurisdiction under 35 U.S.C. §§ 134 and 315 (2002).
We AFFIRM.

STATEMENT OF THE CASE
This proceeding arose from a request by EC Data Systems, Inc. for an
inter partes reexamination of U.S. Patent 7,020,132 B1, titled “Scalable
Architecture For Transmission Of Messages Over A Network,” and issued to
Narasimhan et al. on March, 28, 2006 (the “’132 patent”).
The ’132 patent describes an article of manufacture and methods for
converting an email message into a fax format.
Claim 17, on appeal, was not amended during reexamination and
reads as follows:
17. A method comprising:
receiving an email message from an external packet
data network;
performing a database lookup in an internal packet
data network to correlate the email message with a user
account;
verifying within the internal network the email
message is associated with a valid user account;
performing within the internal network one of a least
cost routing calculation, a billing calculation, a
prioritization calculation, and a message filtering
operation;

1 Claims 1-13, 19, and 20 are not subject to reexamination.
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converting within the internal network the email
message into a fax format for transmission to a machine;
and
transmitting the converted email message into a
public switched telephone network to a destination
telephone number.

STATEMENT OF THE REJECTIONS
Requester proposes rejections of the claims over the following prior
art references:

Kaufeld et al. US 5,859,967 Jan. 12, 1999
(Hereinafter “Kaufeld”)

Henderson et al. US 6,185,603 B1 Feb. 6, 2001
(Hereinafter “Henderson”)

David D. Clark et al., , An Introduction to Local Area Networks, Proceedings
of the IEEE, Vol. 66, No. 11 (November 1978). (Hereinafter “Clark”).

FaxSav, Inc., How FaxMailer Works,
http://web.archive.org/web/19970611191211/http://www.faxsav.com/faxsav
internet/html/howmailer.html (last accessed May 3, 2012). (Hereinafter
“FaxSav-1”).

FaxSav, Inc., FaxSav for Internet,
http://web.archive.org/web/19970611191134/http://www.faxsav.com/faxsav
internet/html/faqstart.html (last accessed May 3, 2012). (Hereinafter
“FaxSav-2”).

FaxSav, Inc., The FaxSav Technology Edge: A White Paper,
http://web.archive.org/web/19970611183408/http://www.faxsav.com/
/html/whitepaper.html (last accessed May 4, 2012). (Hereinafter “FaxSav-
3”).

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FaxSav, Inc., FaxSav for Internet Details – Internet Faxing,
http://web.archive.org/web/19970611183458/http://www.faxsav.com/prodan
dserv/html/fsi_detail.html (last accessed May 3, 2012). (Hereinafter
“FaxSav-4”).

FaxSav, Inc., FaxSav – Internet Faxing,
http://web.archive.org/web/19970611190505/http://www.faxsav.com/faxsav
internet/html/faxmailer.html (last accessed May 3, 2012). (Hereinafter
“Fax-Sav-5”).

FaxSav, Inc., The State of Faxing from the Internet Today,
http://web.archive.org/web/19970611191024/http://www.faxsav.com/
html/faxstate.html (last accessed May 4, 2012). (Hereinafter “FaxSav-6”).

RightFAX, Inc., RightFAX Introduces New Fax Server Designed for the
Enterprise,
http://web.archive.org/web/19970618122450/http://www.rightfax.com/prent
er50.htm (last accessed May 4, 2012). (Hereinafter “RightFAX”).

Patent Owner appeals the Examiner’s adopting the following
rejections:
Claims 17 and 18 under 35 U.S.C. § 102(e) as anticipated by Kaufeld.
Claim 17 under 35 U.S.C. § 103(a) as obvious over the combination
of Kaufeld and RightFAX.
Claims 14 and 15 under 35 U.S.C. § 103(a) as obvious over the
combination of Kaufeld and FaxSav-3.
Claims 17 and 18 under 35 U.S.C. § 103(a) as obvious over the
combination of Kaufeld and FaxSav-6.
Claims 16 and 17 under 35 U.S.C. § 103(a) as obvious over the
combination of Kaufeld, FaxSav-3, and RightFAX.
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Claim 17 under 35 U.S.C. § 103(a) as obvious over the combination
of Kaufeld, FaxSav-6, and RightFAX.
Claim 18 under 35 U.S.C. § 103(a) as obvious over the combination
of Kaufeld and Henderson.
Claim 18 under 35 U.S.C. § 103(a) as obvious over the combination
of Kaufeld, Henderson, and FaxSav-6.
Claim 21 under 35 U.S.C. § 103(a) as obvious over the combination
of Kaufeld and FaxSav-3.
Claim 21 under 35 U.S.C. § 103(a) as obvious over the combination
of Kaufeld, FaxSav-3, and Clark.
Claim 22 under 35 U.S.C. § 103(a) as obvious over the combination
of Kaufeld, FaxSav-3 and/or Clark, and RightFAX.
Claim 23 under 35 U.S.C. § 103(a) as obvious over the combination
of Kaufeld, FaxSav-3, RightFAX, and Clark.
Claim 24 under 35 U.S.C. § 103(a) as obvious over the combination
of Kaufeld and Clark.
Claim 24 under 35 U.S.C. § 103(a) as obvious over the combination
of Kaufeld, Clark, and RightFAX.
Claim 24 under 35 U.S.C. § 103(a) as obvious over the combination
of Kaufeld, Clark, and FaxSav-6.
Claim 24 under 35 U.S.C. § 103(a) as obvious over the combination
of Kaufeld, Clark, FaxSav-6, and RightFAX.
Claim 24 under 35 U.S.C. § 103(a) as obvious over the combination
of Kaufeld, Clark, FaxSav-6, RightFAX, and Clark.
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Claims 25 and 26 under 35 U.S.C. § 103(a) as obvious over the
combination of Kaufeld, Clark, FaxSav-6, and RightFAX.
Claims 27-29 under 35 U.S.C. § 103(a) as obvious over the
combination of Kaufeld, Clark and/or FaxSav-6 and/or RightFAX.
Claim 30 under 35 U.S.C. § 102(e) as anticipated by Kaufeld.
Claim 30 under 35 U.S.C. § 103(a) as obvious over the combination
of Kaufeld and Clark.
Claim 30 under 35 U.S.C. § 103(a) as obvious over the combination
of Kaufeld and FaxSav-6.
Claim 30 under 35 U.S.C. § 103(a) as obvious over the combination
of Kaufeld, FaxSav-6, and Clark.
Claim 30 under 35 U.S.C. § 103(a) as obvious over the combination
of Kaufeld and Henderson.
Claim 30 under 35 U.S.C. § 103(a) as obvious over the combination
of Kaufeld, Henderson, and Clark.
Claim 30 under 35 U.S.C. § 103(a) as obvious over the combination
of Kaufeld, Henderson, and FaxSav-6.
Claim 30 under 35 U.S.C. § 103(a) as obvious over the combination
of Kaufeld, Henderson, FaxSav-6, and Clark.
Claim 31 under 35 U.S.C. § 103(a) as obvious over the combination
of Kaufeld, FaxSav, Clark, and Henderson.
Claims 32-34 under 35 U.S.C. § 102(e) as anticipated by Kaufeld.
Claims 32-34 under 35 U.S.C. § 103(a) as obvious over the
combination of Kaufeld, FaxSav-6, and RightFAX.
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ISSUES
Did the Examiner err in finding that Kaufeld discloses an “internal
packet data network,” as required by all of the independent claims?
Did the Examiner err in finding that the combination of Kaufeld and
Clark teaches or suggests a “message queue,” as required by claims 23 and
24?

ANALYSIS

Internal Packet Data Network2
Patent Owner’s main argument with respect to all of the claims on
appeal deals with whether the Examiner properly interpreted the limitation
“internal packet data network.” App. Br. 7-20; Reb. Br. 2-8. Patent Owner
contends that all of the evidence provided requires that “internal packet data
network” be interpreted to mean:
a network operated by a provider of a message delivery service,
where the internal network is connected to but isolated from an
external data network by a firewall or other secure mediating
gateway, and is used to connect components of the message
delivery system.
App. Br. 10 and 15 (citing Tygar Decl., ¶ 51). We disagree with Patent
Owner that this is the broadest reasonable interpretation of the term “internal
packet data network.”

2 At the outset, we note that the Examiner, Patent Owner, and Requester do
not dispute that the term “internal data network” is synonymous with a
“private data network,” at least for purposes of this Appeal. RAN 10; App.
Br. 8; 3PR Resp. Br. 3.
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Patent Owner reiterates portions of a declaration submitted from Dr.
Justin Douglas Tygar in order to show that one of ordinary skill in the art at
the time of the invention would interpret the disputed term in the manner
presented by Patent Owner. App. Br. 10-20; Reb. Br. 3-8. Patent Owner’s
expert cites to two additional references other than the ’132 patent that is at
issue to support his opinions: RFC 19183 and Firewalls.4 Id. However,
while all of the information presented (Id.) is used as evidence of what one
of ordinary skill in the art would understand the term to mean at the time of
the invention, we do not find that the evidence supports a finding that one of
ordinary skill in the art must interpret the term as indicated by Patent
Owner.
In assessing the probative value of an expert opinion, we must
consider three factors: 1) the interest of the expert in the outcome of the
case, 2) the presence or absence of factual support for the expert’s opinion,
and 3) the strength of any opposing evidence. Ashland Oil, Inc. v. Delta
Resins & Refractories, Inc., 776, F.2d 281 (Fed. Cir. 1985).
Regarding the first factor, Dr. Tygar was employed by Patent Owner
when he provided the expert opinion and, therefore, has a substantial interest
in the outcome of the case. See Tygar Decl. ¶ 14.

3 Rekhter et al., Address Allocation for Private Internets,
https://tools.ietf.org/html/rfc1918 (last accessed May 20, 2013).
(Hereinafter “RFC 1918”).

4 Sean Boran, IT Security Cookbook - Firewalls: Securing external Network
Connections, http://www.boran.com/security/it12-firewall.html (last updated
June 10, 2002). (Hereinafter “Firewalls”).
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Regarding the second factor, there is little or no factual support for Dr.
Tygar’s expert opinion that requires we accept the Patent Owner’s definition
of the disputed term. For instance, Dr. Tygar indicated that RFC 1918
describes a standard for public and private networks. App. Br. 12; Reb. Br.
3 (citing Tygar Decl. ¶¶ 39-46). However, Dr. Tygar also indicated that the
technical community voluntarily uses these standards. App. Br. 12
(emphasis added) (citing Tygar Decl. ¶ 37). Additionally, Dr. Tygar
indicated that private networks are either category 1 or category 2 type hosts,
and that public or external networks fall within category 3 type hosts. App.
Br. 12-13. Dr. Tygar contends that the internal data network of the ‘132
Patent falls within category 2 because it is a private network that connects to
an external network. Id (citing Tygar Decl. ¶ 40). In order to connect with
the external network, Dr. Tygar states that the network uses mediating
gateways or firewalls. App. Br. 13-14 (citing Tygar Dec. ¶ 43). As a result,
Dr. Tygar contends that two characteristics required by private, i.e., category
1 or 2 hosts, is security and isolation. App. Br. 13 (citing Tygar Decl. ¶ 41).
We note that page 2 of RFC 1918 indicates that category 2 hosts can be
connected to outside services using mediating gateways. Also, there is
nothing in RFC 1918 or Firewalls that requires security and isolation for
category 1 and 2 hosts.
Regarding the third factor, the Examiner indicates that the ’132 Patent
does not provide a specific definition for the term “internal packet data
network.” RAN 64. Additionally, Requester has provided an expert
declaration by Dr. Michael I. Shamos and an additional reference, RFC 1631
to refute Patent Owner’s arguments. Resp. Br. 5-7. Specifically, Dr.
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Shamos indicates that there is nothing in the ’132 Patent that contemplates
the use of a firewall or other mediating gateway and there is nothing in RFC
1918 that requires security and isolation to be characteristics of a private
network. Resp. Br. 5-6 (citing Shamos Decl. ¶¶ 16, 17, 22, and 23. Instead,
Requester argues that Dr. Shamos’ interpretation that a common sense
approach to the definition of the term makes more sense. Resp. Br. 7. As
such, an internal network of a message delivery system, or corporate
network, is one which is confined to the message delivery system or the
corporation. Resp. Br. 7. Requester contends that this is supported by RFC
1631 which specifically states that an example of a private network is a
corporate network. Resp. Br. 7; see also RFC 1631, pg. 5. In response,
Patent Owner argues that RFC 1631 is not a standard, that the document was
rendered obsolete by RFC 1918, and that RFC 1631 states that a corporate
network is spread across different locations in contrast to the Examiner’s
position that a local area network (LAN) is an internal network. Reb. Br. 4-
5. We do not find Patent Owner’s response to be persuasive because RFC
1631 does not need to be a standard to be considered what one of ordinary
skill in the art would understand, and Patent Owner does not indicate which
parts, or if all, of RFC 1631 was rendered obsolete by RFC 1918. Also, the
Examiner found that Curry5 discusses a corporate site as different than a
wide area network (WAN); Benash6 discusses corporate networks as

5 Curry et al., US 5,923,659, issued Jul. 13, 1999 (Hereinafter “Curry”) .
6 Benash et al., US 6,084,892, issued Jul. 4, 2000 (Hereinafter “Benash”).
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Ethernet LAN’s; and Arango7 discusses LANs as private networks that are
located on a campus or serve only one “enterprise.” RAN 76.
Based on our above analysis, we agree with the Examiner and
Requester’s broad but reasonable interpretation, consistent with the ’132
Patent Specification, of the term “internal packet data network” to mean “a
network internal to a business or campus such as an Ethernet Local Area
Network, i.e., LAN.” .
Rejections over Kaufeld
Patent Owner argues that Kaufeld does not disclose an internal or
private data packet network as required by all of the claims for several
reasons. App. Br. 22-24. We disagree.
First, Patent Owner argues that Kaufeld does not disclose a network
that is isolated by a firewall or other secure mediating gateway. App. Br. 22.
However, as indicated above, we do not find that the interpretation of the
disputed term requires security or isolation. As such, we do not find this
argument persuasive.
Second, Patent Owner argues that the Examiner’s interpretation of the
disputed term is incorrect. Id. Again, we do not find this argument
persuasive for the reasons indicated above.
Third, Patent Owner argues that Kaufeld does not disclose the
ownership of the LAN that is connected to a computer. Id. However, the

7 Arango, US 5,732,078, issued Mar. 24, 1998.
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Examiner finds that Kaufeld discloses that “the computer (26) is purchased
and maintained by a commercial provider of email to facsimile
conversions.” RAN 85 (citing Kaufeld, col. 3, ll. 43-44). As such, the
Examiner finds that the commercial provider has a system that is internal to
a defined area and is thus and internal data packet network. RAN 85.
Additionally, the Examiner finds that Kaufeld discloses using a LAN to
connect multiple modems or network interfaces. RAN 86. We agree and
find that this discloses an internal data network.
Fourth, Patent Owner argues that even if it determined that Kaufeld’s
network is privately owned, the network is not a private or internal network,
as claimed. App. Br. 22. We disagree for the reasons discussed above.
Fifth, Patent Owner argues that Kaufeld’s process only uses one
computer to carry out all the steps and not a LAN. App. Br. 22-23.
However, as indicated above, Kaufeld discloses using multiple modems or
network interfaces in a LAN. RAN 86. As such, we agree with the
Examiner.
Sixth, Patent Owner argues Kaufeld does not disclose a network
because Kaufeld only contemplates one computer and not a group of
computers. App. Br. 23. For the reasons discussed above, we agree with the
Examiner.
Therefore, for all the reasons discussed supra, we agree with the
Examiner’s adoption of Requester’s proposed rejections of claims 14-18, 21,
22, and 30-34.
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Message Queue
Patent Owner’s main argument with respect to claims 23-29 deals
with whether the Examiner properly interpreted the limitation “message
queue.” App. Br. 26-27; Reb. Br. 9-11. Patent Owner contends that the
“message queue” should be interpreted as follows:
[a] multi-element data structure configured to hold multiple
message, from which messages can be removed only in the
same order in which they were inserted.
App. Br. 26. Additionally, Patent Owner provides a construction that was
used in a corresponding District Court case which defined the term as “a
storage area for storing messages for retrieval using a first-in, first-out
policy.” Reb. Br. 9. Requester and the Examiner interpret the term
“message queue” to mean a
“multi-element data structure from which (by strict definition)
elements can be removed only in the same order in which they
were inserted; that is, it follows a first-in-first-out (FIFO)
constraint.”
RAN 9; Resp. Br. 14. Thus, the main difference between Patent Owner and
the Examiner’s interpretation of the term is that Patent Owner contends that
a message queue must be able to store multiple messages. App. Br. 26; Reb.
Br. 9. We disagree with Patent Owner, as this interpretation is narrower
than required by the ’132 patent.
In support of Patent Owner’s contention, Patent Owner cites to the
’132 Specification that states that the “router/filter 23 ‘obtains messages
[plural] from the message queue and handles least call
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routing/billing/prioritization/filtering of messages.’” App. Br. 26. Patent
Owner also cites to the language of claim 23 that requires storing request
messages in a message queue. App. Br. 17; Reb. Br. 10. Additionally,
Patent Owner argues that the Examiner fails to consider the modifier
“message” in construing the term “message queue.” App. Br. 26. As such,
Patent Owner argues that the queue must contain entire messages. App. Br.
26.
We do not find Patent Owner’s arguments persuasive. We agree with
Requester that the label associated with the queue does not necessarily
indicate the contents of the queue. Resp. Br. 14. That being said, we find
that a queue that holds even parts of a message is considered a message
queue. Also, we do not find Patent Owner’s arguments directed to the queue
holding multiple messages at the same time to be persuasive. The broadest
reasonable construction of a message queue includes inputting one message,
outputting one message, and then inputting the next message, etc. In this
situation, the message queue would still be handling multiple messages.
As a result, for the reasons stated supra, we agree with the Examiner’s
and Requester’s interpretation of the term “message queue” as it is
reasonable and consistent with the ’132 patent.
Rejections over Kaufeld or the combination of Kaufeld and Clark
Patent Owner first argues that Kaufeld does not disclose a “message
queue” because Kaufeld does not disclose storing multiple messages at the
same time. App. Br. 27; Reb. Br. 11. Additionally, Patent Owner argues
that Clark does not teach storing multiple messages either. App. Br. 27-29;
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Reb. Br. 11. As indicated above, we do not find that the interpretation of
“message queue” requires storing multiple messages. Therefore, we agree
with the Examiner that Clark teaches a message queue because Clark teaches
a first-in, first-out (FIFO) buffer for receiving messages. RAN 34 (citing
Clark, pg. 1507).
For the reasons stated supra, we agree with the Examiner’s adoption
of the Requester’s proposed rejections of claims 23-29.

CONCLUSION
The Examiner did not err in finding that Kaufeld discloses an
“internal packet data network,” as required by all of the independent claims.
The Examiner did not err in finding that the combination of Kaufeld
and Clark teaches or suggests a “message queue,” as required by claims 23
and 24.

DECISION
We affirm the Examiner’s decision to adopt all of the rejections listed
above.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.

Appeal 2014-008203
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AFFIRMED

Patent Owner:

J2Global Inc.
Kenyon & Kenyon LLP
1500 K Street, NW, Suite 700
Washington, DC 20005-1257

Third Party Requester:

EC Data Systems, Inc.
Hamilton, DeSanctis & Cha LLP
Financial Plaza at Union Square
225 Union Blvd., Ste. 150
Lakewood, CO 80228