Mitek Systems, Inc.v.Rothschild Mobile Imaging Innovations, LLC

Patent Trial and Appeal Board

Jul 27, 2015

12317727 (P.T.A.B. Jul. 27, 2015)

Trials@uspto.gov Paper No. 9
571-272-7822 Filed: July 27, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MITEK SYSTEMS, INC.,
Petitioner,

v.

ROTHSCHILD MOBILE IMAGING INNOVATIONS, LLC,
Patent Owner.
____________

Case IPR2015-00620
Patent 7,991,792 B2
____________

Before JAMESON LEE, DAVID C. McKONE, and
CHARLES J. BOUDREAU, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
A. Background
Mitek Systems, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) to
institute inter partes review of claims 1–11 of U.S. Patent No. 7,991,792 B2
(Ex. 1001, “the ’792 patent”). Rothschild Mobile Imaging Innovations, LLC
(“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”).
Upon consideration of the Petition and Preliminary Response, we are
not persuaded, under 35 U.S.C. § 314(a), that Petitioner has demonstrated a
reasonable likelihood that it would prevail in showing the unpatentability of
any of the challenged claims. Accordingly, we do not institute an inter
partes review of claims 1–11 of the ’792 patent.

B. Related Matters
The ’792 patent has been asserted in several lawsuits in the United
States District Court for the District of Delaware. Pet. 1–2; Paper 4, 2–3. It
also is the subject patent of a petition filed in IPR2015-00621.

C. References Relied Upon
Petitioner relies on the following references:
1

1
Petitioner also relies on the Declaration of Dr. Irfan Essa (Ex. 1010).
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Reference Date Exhibit
No.
Anderson US Pat. 7,287,088 B1 Issued:
Oct. 23, 2007
Filed:
Oct. 6, 2000
Ex. 1003
Mortimore US Pat. 5,950,207 Sept. 7, 1999 Ex. 1004
Miyawaki US Pub. App. 2004/0119831 A1 June 24, 2004 Ex. 1006
Alattar Adnan M. Alattar, “Smart
Images” Using Digimarc’s
Watermarking Technology, 25
IS&T/SPIE’s 12th Int’l Symp.
on Elec. Imaging, Vol. 3971, 1–
10 (Jan. 25, 2000)
Jan. 25, 2000 Ex. 1005

D. The Asserted Grounds
Petitioner contends that the challenged claims are unpatentable based
on the following asserted grounds:
Reference(s) Basis Claims Challenged
Anderson § 102(e) 1, 3, 4, 7–9, and 11
Anderson and Mortimore § 103(a) 1–4 and 7–11
Anderson and Alattar § 103(a) 5, 6, and 11
Anderson and Miyawaki § 103(a) 9 and 10
Anderson, Mortimore,
and Alattar
§ 103(a) 5, 6, and 11
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II. ANALYSIS
A. The ’792 Patent
The ’792 patent relates generally to digital image processing.
Ex. 1001, 1:25–27. It discloses a method that facilitates organizing and
processing of digital and printed images. Ex. 1001, Abstr.
The ’792 patent describes associating certain information with digital
images, and then transferring that associated information from digital
imaging devices to a local computer. Ex. 1001, 10:19–22. The local
computer stores the associated information of each image in separate fields
within a single record in a relational database. Id. at 10:22–27. With regard
to encoding an identifier for each image, the ’792 patent states:
Once transferred to the user’s local computer or storage
site, the identifier will be encoded by interacting with the
relational database. The local computer processing unit (CPU)
will extract the necessary information by parsing the associated
information from the database and encode an identifier for each
image (step 714) and, subsequently, store the identifier back in
the database.
Id. at 16:49–55.
Claim 1 is the only independent claim. It recites particular steps to
create an identifier for a digital image file,” and is reproduced below:
1. A method for managing a plurality of digital images over
a network comprising:
receiving, at an imaging web server coupled to the network, a
digital image file along with information associated to
the digital image file, wherein the digital image file
comprises data representing a digital image and the
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associated information includes at least one of a location
of the image web server, a customer identification
number, a date image was taken, a picture sequence
number, a name of the digital image, a time the digital
image was taken, location where the image was taken at,
author/publisher of the digital image, subject matter of
the digital image; keyword for the digital image file and a
name of the imaging web server;
parsing the associated information to extract multiple pieces of
information from the associated information;
coding the multiple pieces of extracted information of the
associated information to create an identifier for the
digital image file;
storing the digital image file and the identifier in a database
coupled to the imaging web server;
receiving a search request;
querying the database with the search request;
retrieving at least one requested digital image file matching the
search request; and
presenting at least one requested digital image corresponding to
the at least one requested digital image file to a user.
Ex. 1001, 18:6–33 (emphasis added).

B. Claim Construction
The Board interprets claims of an unexpired patent using the broadest
reasonable construction in light of the specification of the patent in which
they appear. See 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC,
No. 2014-1301, 2015 WL 4097949, at *6 (Fed. Cir. July 8, 2015). Claim
terms generally are given their ordinary and customary meaning, as would
be understood by one of ordinary skill in the art in the context of the entire
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disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257
(Fed. Cir. 2007).
Claims are not interpreted in a vacuum but are a part of and read in
light of the specification. See Slimfold Mfg. Co. v. Kinkead Indus., Inc.,
810 F.2d 1113, 1116 (Fed. Cir. 1987); United States v. Adams, 383 U.S. 39,
49 (1966). Indeed, although it is improper to read a limitation from the
specification into the claims, the claims still must be read in view of the
specification of which they are a part. See Microsoft Corp. v. Multi-Tech
Sys., Inc., 357 F.3d 1340, 1347 (Fed. Cir. 2004).
We provide a construction for the terms “parsing” and “extract”
because our analysis hinges on their meaning.
“parsing”
Claim 1 recites “parsing the associated information to extract multiple
pieces of information from the associated information” and “coding the
multiple pieces of extracted information of the associated information to
create an identifier for the digital image file.” No special definition is
provided in the Specification for the term “parsing,” and neither party
proposes an express construction for the term. The word “parse” or
“parsing” is used in two instances in the Specification of the ’792 patent.
The Specification (Ex. 1001) states:
Referring to FIG. 6A, once information is associated to at
least one digital image, the image and associated information is
transferred from device 100, 200 and received by local
computer 402 (step 502). The local computer 402 will parse
the associated information and store each piece of data as a
separate field in a single record in a relational database (step
504).
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Ex. 1001, 10:19–25 (emphasis added). The Specification also states:

Once transferred to the user’s local computer or storage
site, the identifier will be encoded by interacting with the
relational database. The local computer processing unit (CPU)
will extract the necessary information by parsing the associated
information from the database and encode an identifier for each
image (step 714) and, subsequently, store the identifier back in
the database.

Ex. 1001, 16:49–55 (emphasis added). We note further the following
dictionary definition of “parse”: “To break down into components.”
WEBSTER’S NEW WORLD & TRADE; COMPUTER DICTIONARY (2003),
available at
http://search.credoreference.com/content/entry/webstercom/parse/0.
In the first disclosure quoted above, the parsing is performed on
information previously gathered and transmitted to the local computer. In
the second disclosure quoted above, the parsing is performed on information
collected and organized in the database. On this record, the broadest
reasonable interpretation of “parsing” requires the information that is parsed
be previously gathered, collected, or organized in some tangible form, such
that it can be broken down from that state. Or else, parsing the associated
information to extract multiple pieces of information would require no actual
operation of any kind and the mere existence of different associated
information would satisfy “parsing.” That is unreasonably broad, as it
would read “parsing” out of the claim. No additional construction is
necessary. Only terms which are in controversy need to be construed, and
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then only to the extent necessary to resolve the controversy. See Vivid
Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
In summary, we reiterate that on this record, the broadest reasonable
interpretation of “parsing” requires the information that is parsed be
previously gathered, collected, or organized in some tangible form, such that
it can be broken down from that state.
“extract”
The term “extract” appears in claim 1 to refer to the result or objective
of “parsing the associated information.” Specifically, claim 1 recites
“parsing the associated information to extract multiple pieces of information
from the associated information” and “coding the multiple pieces of
extracted information of the associated information to create an identifier for
the digital image file.” No special definition is provided in the Specification
for the term “extract.” Neither party proposes a construction for the term.
The term “extract” is a common term in the English language and
requires no construction, given our construction of “parsing,” other than to
say that where information has been “parsed” from a larger set of
information, it has been “extracted” from the set.
C. Alleged Anticipation of Claims 1, 3, 4, 7–9, and 11 by Anderson
Petitioner contends that claims 1, 3, 4, 7–9, and 11 are anticipated by
Anderson. To establish anticipation of a claim, each and every claim
element, arranged as recited in the claim, must be found in a single prior art
reference. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369
(Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376,
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1383 (Fed. Cir. 2001). We focus on these limitations emphasized in claim 1
as reproduced above:
parsing the associated information to extract multiple
pieces of information from the associated information;
coding the multiple pieces of extracted information of the
associated information to create an identifier for the digital
image file;
The argument presented by Petitioner, directed to the feature of
“parsing the associated information to extract multiple pieces of information
from the associated information” is reproduced below:
Anderson discloses these limitations. For example,
Anderson discloses using parts of the associated information,
such as the image name and data identifying the camera that
captured the image (see supra Section X.B.1.c), to create an
image identifier 84 for a captured image. Ex. 1003, 6:26–31.
In particular, as explained above for claim element 1(c),
Anderson’s associated information includes header data, image
tags, audio tags, name of images, camera information, etc. See
supra Section X.B.1.c. Anderson discloses analyzing this
additional information in parts such that the name of the image
and camera information is extracted and considered apart from
the other information that is associated with a captured image to
create an image identifier 84 for the image. Ex. 1003, 4:63-
5:12, 6:20-35. The information associated with the image (e.g.,
header data, image tags, audio tags, name of images, camera
information, etc.) is thus parsed to extract the multiple pieces of
information including the image name and camera information
because Anderson discloses using this information to create the
image identifier 84, where other additional information is not
used. Id.; Ex. 1001, ¶ 31.
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Pet. 17. The argument is unpersuasive. It lacks explanation on how the
associated information, in order to be “parsed,” was gathered, collected, or
organized in some tangible form, such that it can be broken down.
Based on Petitioner’s analysis, as quoted above, so long as some
information that qualifies as associated information are used to put together
an identifier, it is enough to say that associated information had been parsed
to extract therefrom the actual pieces used to form the identifier. Such an
interpretation of “parsing” is unreasonably broad. As we explained earlier,
the larger collection of associated information has to have been gathered,
collected, or organized in some tangible form. Petitioner does not identify
any tangible gathering or collection of associated information that can be
parsed to yield the camera information and the image name.
We have reviewed the portions of Anderson (Ex. 1003) cited
specifically by Petitioner, i.e., column 4, line 63, to column 5, line 12, and
column 6, lines 20–35. Nothing in the cited disclosure indicates that the
name of the image and camera information, used to create an identifier, are
extracted from a larger set of associated information that had been gathered,
collected, or organized in some tangible manner.
We also have considered the declaration testimony of Dr. Essa in
connection with the “parsing” feature of the claims. The pertinent testimony
stems primarily from Paragraph 31 of the Declaration and largely parallels
Petitioner’s argument reproduced above. It suffers from essentially the same
deficiencies already discussed above in the context of Petitioner’s argument.

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Dr. Essa states:
31. In my opinion, Anderson discloses the parsing of
the associated information to extract multiple pieces of
information. As I explained for claim element 1(c), Anderson
discloses receiving a number of categories or types of
information associated to stored image files, including at least
header data, image tags, audio tags, name of images, camera
information, etc. Anderson discloses that the image file’s name
and data identifying the camera that captured the image is used
to create an image identifier 84 for the captured image.
Ex. 1003, 6:26-31. Anderson discloses using some, but not all,
of the associated information to create the image identifier, and
thus analyzes the associated information in parts to consider
and the image name and camera information apart from other
available information. Thus, in my opinion, Anderson discloses
that the information associated with the image (e.g., header
data, image tags, audio tags, image name, camera information,
etc.) is parsed to extract the multiple pieces of information (e.g.,
image name and camera information) used to create the image
identifier 84, where the other associated information is not
used. See also my discussion of Anderson above in Part
VI.A.1.

Ex. 1010 ¶ 31. As argued by Petitioner and rejected above, according to
Dr. Essa, so long as an identifier is assembled from some but not all
associated information, then the feature of “parsing the associated
information to extract multiple pieces of information from the associated
information” is met. That is incorrect, as discussed above.
Patent Owner asserts that the Petition and Dr. Essa

both regard
Anderson’s image file as a collection of associated information, including
the image name and camera identification information. Prelim. Resp. 9.
Dr. Essa does make that representation. Specifically, Dr. Essa states:
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30. In my opinion, Anderson discloses that the digital
image files received by the imaging web server include several
categories or types of associated information, including at least
one of the specific types required by the claim limitation. For
example, as illustrated below in Figure 3, Anderson discloses
that image file 80 includes image data 54 that contains the
captured image data and other information that is associated
with the captured image, such as header 52 (identifying and
describing content of image file 80), screennail data 56,
thumbnail data 58, image tags 60 (storing metadata associated
with the image data), the name of the digital image, audio tag
62 (storing sound recorded for the image), and data identifying
the camera that captured the image (e.g., serial number, make,
model, etc. of the camera).

Id., Fig. 3. See also id., 4:64-5:12, 6:28-35. Moreover,
Anderson discloses that the name of the digital image may
reflect a picture sequence number. See e.g., Id., 6:25-35
(explaining that images are named using an “incrementing
count of the total number of images captured so that each
captured image is provided with a unique name”).
Accordingly, Anderson discloses that the information
associated with the image file includes at least the image name
and picture sequence number. See also my discussion of
Anderson above in Part VI.A.1.

Ex. 1010 ¶ 30. The Petition, on page 16, citing the above testimony of
Dr. Essa, also makes the same representation about the content of the image
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file, i.e., that the image file includes the name of the digital image and data
identifying the camera that captured the image.
The above-quoted characterization of the image file, even if true, does
not cure the deficiencies with regard to “parsing the associated information
to extract multiple pieces of information from the associated information.”
That is because neither the Petitioner in its Petition, nor Dr. Essa in his
declaration testimony, asserts that the image file is broken down to extract
the image name and camera identification information, with which to create
the image identifier.
Moreover, the above-quoted characterization of the image file by
Dr. Essa is ambiguous. Dr. Essa first indicates that the “image file includes”
the plurality of items that are mentioned above, but ends with the very
different language that “the information associated with the image file
includes . . . .” The latter does not mean the image file itself includes the
various items identified by Dr. Essa.
In any event, we are persuaded by Patent Owner that Petitioner has
not shown that Anderson’s image file includes either the image name or
camera identification information. None of the specific portions of
Anderson cited by Dr. Essa indicates that an image file itself includes the
image name or camera identification information. Anderson describes that
“[i]mage file 80 preferably includes a header 52, image data 54, a screennail
56, a thumbnail 58, image tags 60, and an audio tag 62.” Ex. 1003, 4:64–66.
Image tags 60 are described as including various types of metadata that
correspond and relate to particular captured image data 54. Id. at 5:9–11.
Anderson describes the fully constructed image identifier itself, and not the
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image name or camera identification information components, as metadata
that may be stored in the image file. Id. at 6:31–35.
Anderson describes that the image identifier is created as a
combination of the image name and camera identification information
(Ex. 1003, 6:28–31), and that in a preferred embodiment the image identifier
is stored in the image file as metadata (Ex. 1003, 6:31–34). That, however,
does not mean the image name and camera identification information are
stored in the image file, and then extracted by parsing the image file.
As noted above, claim 1 further recites “coding the multiple pieces of
extracted information of the associated information to create an identifier for
the digital image file.” Thus, even assuming that storing the image identifier
in the image file equates to storing the image name and camera identification
information themselves in the image file, that would not be helpful to
Petitioner’s position. Because the image identifier already is created when
placed into the image file, the image file cannot be parsed to obtain the
image name and camera identification information with which to create the
image identifier.
For the foregoing reasons, Petitioner has not shown a reasonable
likelihood that it would prevail in establishing anticipation of any of claims
1, 3, 4, 7–9, and 11 by Anderson.

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D. Alleged Obviousness of Claims 1–4
and 7–11 over Anderson and Mortimore
In the alternative, Petitioner asserts that claims 1–4 and 7–11 are
unpatentable as obvious over Anderson and Mortimore. Petitioner states
that if the Board is unpersuaded that Anderson teaches the “parsing” and
“coding” limitations of claim 1, it would have been obvious to incorporate
those features into Anderson in light of the disclosure of Mortimore.
Pet. 31. According to Petitioner, Mortimore discloses parsing the associated
information to extract multiple pieces of that information, and then coding
that extracted information to create an identifier for the digital image file.
Id. at 33. We have considered the reasoning on pages 26–36 of the Petition,
and are no more persuaded by Petitioner’s assertions regarding Mortimore
than those discussed above regarding Anderson.
As with Anderson, discussed above, Petitioner takes the view that
because an identifier is formed including a plurality of fields that reflect
various information associated with an image, previously gathered or
collected information has been parsed to extract the fields therefrom with
which to create the identifier for the image file. Pet. 32–34. Also as is the
case with Anderson, discussed above, Petitioner does not point to anything
in Mortimore that constitutes a tangible gathering or collection of associated
information that is parsed to extract components with which to create the
identifier for the image file.
Petitioner cites to Mortimore from column 4, line 63, through column
5, line 31, as supporting the assertion that Mortimore’s image identifier is
coded from information extracted from associated information by parsing.
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Pet. 34. We have reviewed the cited portion of Mortimore and do not find
the assertion persuasive. The cited text discloses the structure and content of
an image identifier, but does not reveal that associated information is parsed
and that various fields within the image identifier are extracted from the
associated information and coded to create the identifier. In pertinent part,
the cited text is reproduced below:
The fields in the suffix in the above example illustrate a
method for an organization to assure the uniqueness of its
identifiers. The first digit (“3” in the example) in the suffix
defines the device type, and the next three digits (“152”)
contain the device serial number. Three more digits (“235”)
identify the study number, followed by another digit (“2”) to
identify the series number, and two more digits (“12”) to
identify the image number within this particular study and
series. Finally, the last nine digits (“187636473”) comprise an
encoded date and time stamp of image acquisition. The
respective identifier fields, when concatenated, uniquely
identify original sets of image objects and each individual
image within the set.
Ex. 1004, 4:63–5:8.
Accordingly, Petitioner’s reliance on Mortimore does not cure the
above-noted deficiencies of Anderson. Petitioner has not shown a
reasonable likelihood that it would prevail in establishing the unpatentability
of any of claims 1–4 and 7–11 as obvious over Anderson and Mortimore.
As explained above, on this record, the broadest reasonable interpretation of
“parsing” requires that the information that is parsed be previously gathered,
collected, or organized in some tangible form, such that it can be broken
down from that state. The feature of “parsing the associated information to
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extract multiple pieces of information from the associated information” is
not sufficiently accounted for by either Anderson or Mortimore.
E. Alleged Obviousness of Claims
5, 6, and 11 over Anderson and Alattar
Each of claims 5, 6, and 11 depends from independent claim 1.
Petitioner relies on Alattar to account for the respective features added by
these dependent claims to the subject matter of claim 1. Petitioner’s reliance
on Alattar does not cure the deficiencies discussed above with regard to the
disclosure of Anderson and what is required by claim 1.
Accordingly, Petitioner has not shown a reasonable likelihood that it
would prevail in establishing the unpatentability of any of claims 5, 6, and
11 as obvious over Anderson and Alattar.
F. Alleged Obviousness of Claims
9 and 10 over Anderson and Miyawaki
Each of claims 9 and 10 depends from independent claim 1.
Petitioner relies on Miyawaki to account for the respective features added by
these dependent claims to the subject matter of claim 1. Petitioner’s reliance
on Miyawaki does not cure the deficiencies discussed above with regard to
the disclosure of Anderson and what is required by claim 1.
Accordingly, Petitioner has not shown a reasonable likelihood that it
would prevail in establishing the unpatentability of any of claims 9 and 10 as
obvious over Anderson and Miyawaki.

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G. Alleged Obviousness of Claims 5, 6, and
11 over Anderson, Mortimore, and Alattar
Each of claims 5, 6, and 11 depends from independent claim 1.
Petitioner relies on Alattar to account for the respective features added by
these dependent claims to the subject matter of claim 1. Petitioner’s reliance
on Alattar does not cure the deficiencies discussed above with regard to the
disclosure of Anderson and Mortimore for the features of claim 1.
Accordingly, Petitioner has not shown a reasonable likelihood that it
would prevail in establishing the unpatentability of any of claims 5, 6, and
11 as obvious over Anderson, Mortimore, and Alattar.
III. CONCLUSION
Petitioner has not established a reasonable likelihood that it would
prevail in showing the unpatentability of any of claims 1–11 of the ’792
patent.
IV. ORDER
It is
ORDERED that the Petition is denied and no inter partes review is
instituted as to any claim of the ’792 patent.

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For PETITIONER:
Naveen Modi
Joseph Palys
PAUL HASTINGS LLP
naveenmodi@paulhastings.com
josephpalys@paulhastings.com

For PATENT OWNER:
Kevin Guynn
Alanu Das
GREER, BURNS & CRAIN, LTD.
kguynn@gbclaw.net
adas@gbclaw.com