UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`WHATSAPP, INC. AND FACEBOOK, INC.
`Petitioners
`
`v.
`
`TRIPLAY, INC.
`Patent Owner
`
`Inter Partes Review No. 2015-00740
`U.S. Patent No. 8,332,475
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`
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`PETITIONERS’ RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATIONS
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`WHATSAPP, INC. AND FACEBOOK, INC.
`Petitioners
`
`v.
`
`TRIPLAY, INC.
`Patent Owner
`
`Inter Partes Review No. 2015-00740
`U.S. Patent No. 8,332,475
`
`
`
`PETITIONERS’ RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATIONS
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`
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`Petitioners’ Response to Patent Owner’s Motion for Observations
`IPR2015-00740
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`Petitioners WhatsApp, Inc. and Facebook, Inc. (“Petitioners”) hereby submit
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`this Response to the Patent Owner’s Motion for Observations. Petitioners respond
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`to each of Patent Owner’s observations in the order they appear in the Motion for
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`Observations filed by Patent Owner on April 20, 2016. But first, as Petitioners will
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`explain below, the Motion for Observations should be disregarded as improper.
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`Patent Owner’s “Motion for Observations” is Improper
`
`On April 5, 2016, the Petitioners timely filed their reply in support of the
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`petition (“Petitioner’s Reply” or “Reply”) and a supporting reply declaration of
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`Mr. Klausner (“Reply Declaration”) (Ex. 1013). See Paper 39; Ex. 1013. The
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`Patent Owner subsequently took a deposition of Mr. Klausner on April 13, 2016.
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`See Ex. 2010. The Patent Owner devoted the deposition to asking whether
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`statements and citations in the Reply Declaration were contained in Mr. Klausner’s
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`original declaration in support of the Petition (“Original Declaration”) (Ex. 1002).
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`See Ex. 2010. The Patent Owner did not seek testimony about the substance of
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`Mr. Klausner’s analysis or question him about any other subject that would be
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`proper for cross-examination.
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`Whether or not content from Mr. Klausner’s reply declaration was contained
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`in his original declaration can be determined by simply comparing the two
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`documents. But the Patent Owner needed to take Mr. Klausner’s deposition on
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`April 13 to provide a pretext for the present Motion for Observations, which is
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`
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`1
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`
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`Petitioners’ Response to Patent Owner’s Motion for Observations
`IPR2015-00740
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`essentially a disguised motion to exclude statements in Mr. Klausner’s reply
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`declaration as allegedly being outside the scope of reply. See Trial Practice Guide,
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`77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012) (“An observation . . . is not an
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`opportunity to raise new issues, re-argue issues, or pursue objections”) (emphasis
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`added). Petitioners’ counsel objected to these questions at the April 13 deposition.
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`See, e.g., Ex. 2010, 24:5-6.
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`The Board should also disregard the Motion for Observations because it
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`seeks to evade the page limits set forth by the Board’s order of April 19. See Paper
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`42. More specifically, on April 18, 2016, the Patent Owner sent an email to the
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`Board indicating that it believes that Petitioner’s Reply and the Reply Declaration
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`exceed the scope of a proper reply. Id., at 1. The next day, the Board issued an
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`Order authorizing the Patent Owner to “file a two-page submission that identifies
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`arguments and evidence in the Reply and in Petitioner’s Exhibits, filed
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`contemporaneously therewith, that Patent Owner contends exceeds the proper
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`scope of a reply” (hereafter “Two-Page Submission”). Id. The Patent Owner filed
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`its Two-Page Submission on April 26, 2016. Paper 49. The Petitioner’s response
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`is due on May 3, 2016.
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`On April 20, after the Board had already authorized the “two-page
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`submission” for the purpose of addressing the issue of scope, the Patent Owner
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`filed its Motion for Observations. Paper 45. Reminiscent of its purported cross-
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`2
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`Petitioners’ Response to Patent Owner’s Motion for Observations
`IPR2015-00740
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`examination of Mr. Klausner on April 13, the Patent Owner’s Motion for
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`Observations attempts to argue that certain paragraphs from Mr. Klausner’s reply
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`declaration (Ex. 1013) are beyond the proper scope of a reply and does not address
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`the testimony substantively. See id. Notably, the Patent Owner does not quote, but
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`rather paraphrases in its own words statements from the Reply Declaration it
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`contends to be outside the proper scope. See id. The Motion for Observations is
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`thus simply an attempt to inject lengthy substantive arguments about scope that
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`were not authorized by the April 19 Order authorizing the “two-page submission,”
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`and thus, should be disregarded.
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`Nevertheless, in the event the Board intends to consider the improper
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`Motion for Observations, the Petitioners respond below.
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`Responses to Observations
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`Response to Observation #1:
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`Patent Owner’s observation is an improper attempt to expand on point 1 of
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`its Two-Page Submission (Paper 49), and should therefore be disregarded. Trial
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`Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012) (“An observation . . .
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`is not an opportunity to raise new issues, re-argue issues, or pursue objections”)
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`(emphasis added). Further, the cited cross-examination testimony is irrelevant
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`because the issue of proper scope is a procedural issue that is not the proper subject
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`of expert testimony.
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`
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`3
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`Petitioners’ Response to Patent Owner’s Motion for Observations
`IPR2015-00740
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`In any event, the statement made in ¶ 29 of the Reply Declaration (Ex. 1013)
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`did not exceed the proper scope of a reply declaration. The cited statement was
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`responsive to the following statement from the Declaration of Rajeev Surati, Ph.D.
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`(“Surati Declaration”) (Ex. 2002), at ¶ 113:
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`[T]he CSS style sheets disclosed in Tittel are not “a predefined user
`interface,” and are therefore not a “template” as that term is
`construed by Mr. Klausner. . . . CSS style sheets neither create the
`elements being displayed nor enable the ability to change any of the
`elements in an HTML file. In fact, CSS cannot display anything
`without an HTML document input. A POSITA would understand that
`a “predefined user interface,” . . . has to include a visually displayed
`interface consisting of actual data elements of interest and not just the
`fonts or colors to apply to the elements in an HTML document.
`(Emphasis added.)
`
`Response to Observation #2:
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`Patent Owner’s observation is an improper attempt to expand on point 3 of
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`its Two-Page Submission (Paper 49), and should therefore be disregarded. Trial
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`Practice Guide at 48,768. Further, the cited cross-examination testimony is
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`irrelevant because the issue of proper scope is a procedural issue that is not the
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`proper subject of expert testimony. In any event, the statement made in ¶ 30 of the
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`Reply Declaration (Ex. 1013) was responsive to the following statement from the
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`Surati Declaration (Ex. 2002), at ¶ 113:
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`
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`4
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`Petitioners’ Response to Patent Owner’s Motion for Observations
`IPR2015-00740
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`
`[T]he CSS style sheets disclosed in Tittel are not “a predefined user
`interface,” and are therefore not a “template” as that term is
`construed by Mr. Klausner. . . . CSS style sheets neither create the
`elements being displayed nor enable the ability to change any of the
`elements in an HTML file. In fact, CSS cannot display anything
`without an HTML document input. A POSITA would understand that
`a “predefined user interface,” . . . has to include a visually displayed
`interface consisting of actual data elements of interest and not just the
`fonts or colors to apply to the elements in an HTML document.
`(Emphasis added.)
`
`The statement made in ¶ 30 of the Reply Declaration (Ex. 1013) was also directly
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`supported by the deposition testimony of patent owner’s own expert, Dr. Surati.
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`(Ex. 1014, at 83:6-84:7.)
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`Response to Observation #3:
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`Patent Owner’s observation is an improper attempt to expand on point 5 of
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`its Two-Page Submission (Paper 49), and should therefore be disregarded. Trial
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`Practice Guide at 48,768. Further, the cited cross-examination testimony is
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`irrelevant because the issue of proper scope is a procedural issue that is not the
`
`proper subject of expert testimony. In any event, the statement made in ¶ 38 of the
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`Reply Declaration (Ex. 1013) supported the following statements from the
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`Original Declaration (Ex. 1002), at ¶¶ 118, 119:
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`
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`5
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`Petitioners’ Response to Patent Owner’s Motion for Observations
`IPR2015-00740
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`
`This derivative style sheet file is a “predefined” layout because
`it was created prior to its use in generating an appropriate display of
`the HTML document, as I explain below. Also, it would have been
`obvious to one of ordinary skill in the art that the derivative style
`sheet files could have been created at any time prior to the receipt of
`the initial message. . . .
`
`In addition, just as the messaging system in Coulombe “pre‐
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`registers” information about the capabilities of the destination device
`prior to receiving an incoming message, it would have been obvious
`to one of ordinary skill in the art to create the derivative style sheets
`of Druyan at any time prior to receiving the incoming message.
`(Emphasis added.)
`
`The statement made in ¶ 38 of the Reply Declaration (Ex. 1013) was also
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`responsive to the following statements from the Surati Declaration (Ex. 2002), at
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`¶¶ 89, 90, 95, 116:
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`The term “predefined layout” should be construed to mean “a
`layout that is defined prior to the receipt of message for delivery to a
`destination communication device.”
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`. . . It is my opinion that a POSITA would understand the term
`“predefined,” as used in the ‘475 patent, to mean that the layout exists
`prior to the message being received by the messaging system and thus
`cannot be generated “on the fly” by the messaging system after receipt
`of the message and prior to delivery to the destination device. A
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`
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`6
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`Petitioners’ Response to Patent Owner’s Motion for Observations
`IPR2015-00740
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`layout generated “on the fly” would not be understood by a POSITA
`to be a “predefined layout” or the word predefined is of no import.
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`. . .
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`The scope of “predefined” is important to the validity analysis
`because Druyan does not disclose that the derivative style sheet
`(which is argued to be the “predefined layout”) are predefined prior to
`receipt of the message for delivery.
`
`. . .
`
`. . . In Druyan, there would be no need to create the derivative
`style sheets in advance because the elements for segmenting (which
`are used to generate the full screen version of the web page) are
`already known by the system. Thus, it would be inefficient and
`inconsistent with general practice to generate the derivative style in
`advance of a user’s need to display the content on a smaller screen
`device. . . . (Emphasis added.)
`
`The statement made in ¶ 38 of the Reply Declaration (Ex. 1013) was also
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`supported by the deposition testimony of patent owner’s own expert, who
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`volunteered that a derivative style sheet could reside in cache and could be reused.
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`(Ex. 1014, at 102:2-13.)
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`Response to Observation #4:
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`Patent Owner’s observation is an improper attempt to expand on point 7 of
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`its Two-Page Submission (Paper 49), and should therefore be disregarded. Trial
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`Practice Guide at 48,768. Further, the cited cross-examination testimony is
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`
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`7
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`Petitioners’ Response to Patent Owner’s Motion for Observations
`IPR2015-00740
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`irrelevant because the issue of proper scope is a procedural issue that is not the
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`proper subject of expert testimony. In any event, the statement made in ¶ 47 of the
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`Reply Declaration (Ex. 1013) supported the following statements from the
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`Original Declaration (Ex. 1002), at ¶¶ 90, 108:
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`Externally‐linked style sheets provided a clear advantage over
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`simply embedding the style information in the HTML document itself.
`They allowed the web developer to apply the same style sheet file to a
`large collection of web pages, allowing the web developer to more
`easily maintain a consistent user interface across the entire website.
`
`. . .
`
`Tittel confirms that style sheet techniques, including the style
`sheets in Druyan, were already known long before the application for
`the ’475 patent was filed. Tittel also provides express motivations to
`use style sheets to specify the layout of messages. For example, Tittel
`explains that by using “external style sheets” (style sheet information
`contained in a separate file identified by a <LINK> tag in the HTML
`document) provides various advantages, including allowing the
`sender the flexibility to reuse the same style sheet across multiple
`Web documents. One of ordinary skill in the art would have
`appreciated
`these benefits of sending HTML messages
`that
`reference external style sheets. (Internal citations omitted; emphasis
`added.)
`
`
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`8
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`Petitioners’ Response to Patent Owner’s Motion for Observations
`IPR2015-00740
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`The statement made in ¶ 47 of the Reply Declaration (Ex. 1013) was also
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`responsive to the following statements from the Surati Declaration (Ex. 2002), at
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`¶¶ 124, 127, 128, 148:
`
`A POSITA would have had no reason or motivation to
`combine Coulombe with Druyan. . . .
`
`. . .
`
`[T]he systems of Druyan and Coulombe are fundamentally
`different in almost every respect. A POSITA would have no reason to
`combine Druyan with Coulombe, and Mr. Klausner has offered none.
`I understand that the mere technical capability of combining the two
`systems is not enough and that a motivation to combine requires a
`showing of some benefit associated with the combination. Mr.
`Klausner has provided no indication as to how this combination
`would have improved the function in any respect. . . .
`
`. . . I do not see anything in Mr. Klausner’s declaration
`purporting to identify how the functioning of Coulombe would be
`improved by incorporating the teachings of Druyan. . . .
`
`. . .
`
`. . . The presence of Tittel would not make a POSITA any more
`motivated to combine Coulombe and Druyan. (Emphasis added.)
`
`Response to Observation #5:
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`Patent Owner’s observation is an improper attempt to expand on point 9 of
`
`its Two-Page Submission (Paper 49), and should therefore be disregarded. Trial
`
`
`
`9
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`
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`Petitioners’ Response to Patent Owner’s Motion for Observations
`IPR2015-00740
`
`Practice Guide at 48,768. Further, the cited cross-examination testimony is
`
`irrelevant because the issue of proper scope is a procedural issue that is not the
`
`proper subject of expert testimony. In any event, the statement made in ¶ 30 of the
`
`Reply Declaration (Ex. 1013) was responsive to the following statements from the
`
`Surati Declaration (Ex. 2002), at ¶¶ 69, 70, 125, 129, 131:
`
`Mr. Klausner’s obviousness analysis suffers from the fact that
`he repeatedly misstates the scope of Druyan to a POSITA and
`appears not to recognize the differences between the XSLT style sheet
`teachings of Druyan and the CSS style sheet teachings. . . .
`
`Accordingly, to help illustrate the scope of Druyan and the
`appreciation a POSITA would have with respect to the differences
`between XSLT style sheets and CSS style sheets, I have prepared
`below example files for generating the HTML output for Figure 5A
`(depicted above) but without the navigation.
`
`. . .
`
`. . . Druyan requires a structured XML document as an input
`to an XSLT processing engine, which uses a master style sheet file to
`specify the programming for generating the html output for the full
`screen web page display. . . .
`
`. . .
`
`. . . Druyan teaches that the incoming document has to be XML
`
`. . . .
`
`. . .
`
`
`
`10
`
`
`
`Petitioners’ Response to Patent Owner’s Motion for Observations
`IPR2015-00740
`
`
`Finally, Druyan contains no discussion or suggestion that the
`disclosed XSLT style and derivative XSLT style sheets provide “a
`uniform look and feel.” The XSLT style sheets in Druyan are very
`different than the CSS style sheets in Tittel. XSLT style sheets can
`change the actual structure of the document, and Druyan relies on that
`aspect of the XSLT style sheets to perform the segmentation into
`multiple pages so that the entire content contained in an html
`document can be viewed on a smaller screen. Accordingly, the
`motivation in Tittel about using CSS style sheets for consistent look
`and feel is not a basis that would motivate a POSITA to combine
`Druyan’s XSLT style sheets with Coulombe. (Emphasis added.)
`
`The statement made in ¶ 47 of the Reply Declaration (Ex. 1013) was also directly
`
`supported by the testimony of patent owner’s expert, who described similar
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`advantages of CSS. (Ex. 2002, ¶ 52 (quoted in Ex. 1013, ¶ 48).)
`
`Response to Observation #6:
`
`Patent Owner’s observation is an improper attempt to expand on point 11 of
`
`its Two-Page Submission (Paper 49), and should therefore be disregarded. Trial
`
`Practice Guide at 48,768. Further, the cited cross-examination testimony is
`
`irrelevant because the issue of proper scope is a procedural issue that is not the
`
`proper subject of expert testimony. In any event, the statement made in ¶ 52 of the
`
`Reply Declaration (Ex. 1013) supported the following statements from the
`
`Original Declaration (Ex. 1002), at ¶ 113:
`
`
`
`11
`
`
`
`Petitioners’ Response to Patent Owner’s Motion for Observations
`IPR2015-00740
`
`
`One of ordinary skill in the art would have understood that the style
`sheet teachings of Druyan and Tittel are applicable to any system
`that exchanges documents using HTML (or any variant of it),
`regardless of whether the document is transported using HTTP, SIP,
`or any other communications protocol. In other words, the teachings
`from Druyan and Tittel that I have applied in this Declaration are
`concerned with the content and layout of an HTML document or
`message, and are agnostic to the mechanics of how the document or
`message is transported over a network from sender to recipient.
`(Emphasis added.)
`
`The statement made in ¶ 52 of the Reply Declaration (Ex. 1013) was also
`
`responsive to the following statements from the Surati Declaration (Ex. 2002), at
`
`¶¶ 69, 70, 125, 129, 131:
`
`Mr. Klausner’s obviousness analysis suffers from the fact that
`he repeatedly misstates the scope of Druyan to a POSITA and
`appears not to recognize the differences between the XSLT style sheet
`teachings of Druyan and the CSS style sheet teachings. . . .
`
`Accordingly, to help illustrate the scope of Druyan and the
`appreciation a POSITA would have with respect to the differences
`between XSLT style sheets and CSS style sheets, I have prepared
`below example files for generating the HTML output for Figure 5A
`(depicted above) but without the navigation.
`
`. . .
`
`
`
`12
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`
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`Petitioners’ Response to Patent Owner’s Motion for Observations
`IPR2015-00740
`
`
`. . . Druyan requires a structured XML document as an input
`to an XSLT processing engine, which uses a master style sheet file to
`specify the programming for generating the html output for the full
`screen web page display. . . .
`
`. . .
`
`. . . Druyan teaches that the incoming document has to be XML
`
`. . . .
`
`. . .
`
`Finally, Druyan contains no discussion or suggestion that the
`disclosed XSLT style and derivative XSLT style sheets provide “a
`uniform look and feel.” The XSLT style sheets in Druyan are very
`different than the CSS style sheets in Tittel. XSLT style sheets can
`change the actual structure of the document, and Druyan relies on that
`aspect of the XSLT style sheets to perform the segmentation into
`multiple pages so that the entire content contained in an html
`document can be viewed on a smaller screen. Accordingly, the
`motivation in Tittel about using CSS style sheets for consistent look
`and feel is not a basis that would motivate a POSITA to combine
`Druyan’s XSLT style sheets with Coulombe. (Emphasis added.)
`
`Dated: May 2, 2016
`
`COOLEY LLP
`Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
`
`
`13
`
`Respectfully submitted,
`
`
`
`/ Heidi L. Keefe/
`By:
`Heidi L. Keefe
`
`Reg. No. 40,673
`
` Counsel for Petitioners
`
` WhatsApp, Inc. and
` Facebook, Inc.
`
`
`
`Petitioners’ Response to Patent Owner’s Motion for Observations
`IPR2015-00740
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify, pursuant to 37 C.F.R. Section 42.6, that a complete copy of
`
`the attached PETITIONERS’ RESPONSE TO PATENT OWNER’S MOTION
`
`FOR OBSERVATIONS is being served via electronic mail on the 2nd day of
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`May, 2016, the same day as the filing of the above-identified document in the
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`United States Patent and Trademark Office/Patent Trial and Appeal Board, upon
`
`the Patent Owner by serving counsel of record as follows:
`
`Jeremy J. Monaldo
`Fish & Richardson P.C.
`monaldo@fr.com
`
`/ Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
`
`
`
`
`Barry Schindler
`SchindlerB@gtlaw.com
`Greenberg Traurig, LLP
`njdocket@gtlaw.com
`
`DATED: May 2, 2016
`
`COOLEY LLP
`Patent Docketing
`1299 Pennsylvania Ave. NW, Suite 700
`Washington, D.C. 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
`
`
`
`
`
`
`
`14
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