UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`WHATSAPP, INC. and FACEBOOK, INC.
`
`Petitioner
`
`v.
`
`TRIPLAY, INC.
`
`Patent Owner
`
`____________
`
`IPR2015(cid:486)00740
`
`Patent 8,332,475 B2
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`WHATSAPP, INC. and FACEBOOK, INC.
`
`Petitioner
`
`v.
`
`TRIPLAY, INC.
`
`Patent Owner
`
`____________
`
`IPR2015(cid:486)00740
`
`Patent 8,332,475 B2
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`TABLE OF CONTENTS ..................................................................................... ii
`TABLE OF AUTHORITIES .............................................................................. iii
`I.
`INTRODUCTION .................................................................................... 1
`II.
`CLAIM CONSTRUCTION ..................................................................... 4
`III.
`STANDARD FOR INSTITUTION OF INTER PARTES REVIEW ...... 4
`IV. ARGUMENT ........................................................................................... 5
`A.(cid:3) Trial Should Not Be Instituted With Respect To Any Of The
`Challenges Raised Against Claims 6, 9, 17-18, 28, 40, and 42 Of
`The ‘475 Patent......................................................................................... 5(cid:3)
`1.(cid:3) Overview Of The Prior Art ...................................................................... 6(cid:3)
`2.(cid:3) The Petition Fails To Offer Any Explanation As How It Proposes
`Combining The References, Consistent With Their Ordinary
`Functions, To Arrive At An Operable System. ...................................... 10(cid:3)
`3.(cid:3) None Of The References Teach Sending SIP Messages That Include
`A Style Sheet File Identified By Its URL. ............................................. 16(cid:3)
`B.(cid:3) The Petition Fails To Provide Any Analysis Explaining Why
`Claims 40-42 Are Purportedly Unpatentable. ........................................ 19(cid:3)
`1.(cid:3) Claim 40 ................................................................................................. 19(cid:3)
`2.(cid:3) Claim 41 ................................................................................................. 22(cid:3)
`3.(cid:3) Claim 42 ................................................................................................. 25(cid:3)
`V.
`CONCLUSION ...................................................................................... 28
`
`ii
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) ..................................................................... 11
`
`Apple Inc. v. Rensselaer Polytechnic Inst.,
`IPR2014-00077 (PTAB June 13, 2014)....................................... 15, 21, 24, 27
`
`Cisco Sys., Inc. v. C-Cation Techs., LLC,
`Case IPR2014-00454 (PTAB Aug. 29, 2014) ............................................... 15
`
`Conopco, Inc. v. Proctor & Gamble Co.,
`IPR2013-00505 (PTAB Feb. 10, 2015) ................................................... 22, 26
`
`Daifuku Co., Ltd. v. Murata Machinery, Ltd.,
`IPR2015-00085 (PTAB May 4, 2015) ........................................................... 14
`
`DeSilva v. DiLeonardi,
`181 F.3d 865 (7th Cir. 1999) ......................................................................... 22
`
`Fid. Nat’l Info. Servs., Inc., v. DataTreasury Corp.,
`IPR2014-00490 (PTAB Aug. 13, 2014) ........................................................ 15
`
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ....................................................................................... 10
`
`Plas-Pak Indus., Inc. v. Sulzer Mixpac AG,
`No. 2014-1447, 2015 WL 328222 (Fed. Cir. Jan. 27, 2015) ......................... 18
`
`S.S. Steiner, Inc., v. John I. Haas, Inc.,
`IPR2014-01491 (PTAB Mar. 16, 2015) ........................................................ 15
`
`SAS Inst., Inc. v. Complementsoft, LLC,
`IPR2013-00581 (PTAB Dec. 30, 2013) ........................................................ 10
`
`TriPlay, Inc. v. WhatsApp Inc.,
`No. 13-cv-1703-LPS (D. Del. Apr. 28, 2015) ................................................. 3
`
`TRW Auto. US LLC, v. Magna Elecs., Inc.,
`IPR2014-00869 (PTAB Dec. 1, 2014) .................................................... 11, 13
`
`Unigene Labs., Inc. v. Apotex, Inc.,
`655 F.3d 1352 (Fed. Cir. 2011) ..................................................................... 11
`
`iii
`
`
`
`Veeam Software Corp. v. Symantec Corp.,
`IPR2013-00145 (PTAB Aug. 7, 2013) .......................................................... 14
`
`Statutes
`
`35 U.S.C. § 103 ..................................................................................................... 5
`
`35 U.S.C. § 312 ..................................................................................................... 4
`
`35.U.S.C. § 314 ..................................................................................................... 5
`
`Other Authorities
`
`37 C.F.R. § 42.6 .............................................................................................. 2, 15
`
`37 C.F.R. § 42.22 .................................................................................................. 4
`
`37 C.F.R. § 42.104 ...................................................................................... 2, 4, 19
`
`37 C.F.R. § 42.108 ............................................................................................ 1, 5
`
`77 Fed. Reg. 48,612, 48,617 (Aug. 14, 2012) .................................................... 22
`
`MPEP § 2143.01 ................................................................................................. 18
`
`
`
`iv
`
`
`
`I.
`
`INTRODUCTION
`
`Patent Owner TriPlay Inc. submits the following preliminary response to
`
`the Petition filed by WhatsApp, Inc. (“Petitioner”) as Paper No. 1 in this
`
`proceeding (“Petition” or “Pet.”), requesting inter partes review of claims 1, 6,
`
`9, 12, 17, 18, 21, 28, 37, and 39-42 of U.S. Patent No. 8,332,475 (“the ‘475
`
`patent”). This response is timely pursuant to the Board’s Notice in Paper No. 3.
`
`The Petition’s allegation against claims 6, 9, 17-18, 28, 40, and 42 suffers
`
`from at least two fatal flaws.1 First, the Petition fails to offer any explanation
`
`regarding how the references’ teachings would be combined, with no change in
`
`their respective functions, to result in an operable system. Instead, the Petition
`
`simply cites to the Declaration of Petitioner’s Expert David Klausner
`
`(Petitioner’s Ex. 1002, hereinafter “Klausner Declaration”), which Petitioner
`
`apparently relies upon to explain how the modified system would work.
`
`
`1
`It is Patent Owner’s position that all claims 1, 6, 9, 12, 17, 18, 21, 28, 37,
`
`and 39-42 of the ‘475 patent are valid. Because of 37 C.F.R. § 42.108(c)
`
`requirement, “Inter partes review shall not be instituted for a ground of
`
`unpatentability unless the Board decides that the petition supporting the ground
`
`would demonstrate that there is a reasonable likelihood that at least one of the
`
`claims challenged in the petition is unpatentable,” for purposes of judicial
`
`efficiency, Patent Owner limits its preliminary response to claims discussed
`
`herein.
`
`1
`
`
`
`Petition at 48 (citing to paragraphs 107-113 of the Klausner Declaration); id. at
`
`49 (citing to paragraphs 109-113 of the Klausner Declaration). But as discussed
`
`below, the Petition’s reliance on paragraphs 110-113 of the Klausner
`
`Declaration, which are not discussed in the Petition itself, amounts to an
`
`improper incorporation by reference in violation of 37 C.F.R. § 42.6(a)(3).
`
`Second, none of the prior art references relied upon by Petitioner teach
`
`that the sending devices of the Coulombe system were capable of sending SIP
`
`messages (HTML or otherwise) that included a style sheet file identified by its
`
`URL. Absent a sending device to send SIP messages including style sheets, a
`
`skilled artisan would not have been motivated to modify Coulombe to receive
`
`such messages. In view of the foregoing deficiencies, Patent Owner
`
`respectfully requests that the Board decline to institute trial as to claims 6, 9, 17-
`
`18, 28, 40, and 42 of the ‘475 patent.
`
`Patent Owner also respectfully requests that the Board decline to institute
`
`inter partes review as to claims 40-42 because Petitioner has not satisfied 37
`
`C.F.R. § 42.104 insofar as the Petition does not explain how the prior art
`
`renders these claims unpatentable. Instead, the Petition dispatches independent
`
`claims 40-42 in a mere two sentences each by referring back to arguments
`
`raised with respect to other claims the Petitioner contends are “materially the
`
`same” or “substantially similar” to claims 40-42. But, as with claims 6, 9, 17-
`
`2
`
`
`
`18, 28, 40, and 42 of the ‘475 patent, Petitioner’s “one-size-fits-all” approach2
`
`as to claims 40-42 suffers from two fatal flaws.
`
`First, a comparison of claims 40-42 with the claims they are allegedly
`
`“materially the same” or “substantially similar” to, shows several notable
`
`differences between the claims. Second, the Petitioner once again attempts to
`
`fill in the gaps in its arguments by improperly incorporating by reference
`
`lengthy sections of the Klausner Declaration that are not discussed in the
`
`
`2
`In the related litigation between Petitioner and Patent Owner, Petitioner
`
`was recently criticized for a similar broad brush approach to analyzing the
`
`patent subject matter eligibility of the claims of the ‘475 patent. Report and
`
`Recommendation, TriPlay, Inc. v. WhatsApp Inc., No. 13-cv-1703-LPS (D. Del.
`
`Apr. 28, 2015), ECF No. 52 at 12 (“[I]n its briefing, Defendant barely touched
`
`upon the 40 remaining claims, addressing the subject matter eligibility of some
`
`of them in little more than half a sentence . . . [T]he Court declines to address
`
`claims other than claims 1 and 12. Defendant provided little analysis as to
`
`whether claims 1 and 12 are, in fact, representative of the remaining claims-and,
`
`as described above, there are real differences among those claims. And from a
`
`procedural and practical perspective, a process in which a defendant seeks to
`
`have large groups of claims ruled subject matter ineligible after giving
`
`negligible attention to them strike the Court as unfair and fraught with the
`
`potential for problematic decisionmaking.”) [Exhibit 2001].
`
`3
`
`
`
`Petition itself. By failing to articulate its arguments in the Petition, Petitioner
`
`essentially asks the Board “to play archaeologist with the record” and take on
`
`the burden of proving unpatentability.
`
`Patent Owner has limited its identification of deficiencies in Petitioner’s
`
`argument in this Preliminary Response; Patent Owner does not intend to waive
`
`any arguments by not addressing them in this Preliminary Response.
`
`II. CLAIM CONSTRUCTION
`The discussion throughout this response with respect to all claim
`
`elements is based on the constructions proposed in the Petition. In utilizing
`
`these proposals, the Patent Owner does not necessarily agree that such
`
`constructions are proper or should be adopted, and reserves the right to present
`
`alternate constructions at the appropriate time in this and/or other proceedings.
`
`III. STANDARD FOR INSTITUTION OF INTER PARTES REVIEW
`A petition “may be considered only if . . . the petition identifies, in
`
`writing and with particularity, each claim challenged, the grounds on which the
`
`challenge to each claim is based, and the evidence that supports the grounds for
`
`the challenge to each claim[.]” 35 U.S.C. § 312(a)(3) (emphasis added). A
`
`petition “must specify where each element of the claim is found in the prior art
`
`patents or printed publications relied upon;” and it “must include . . . a detailed
`
`explanation of the significance of the evidence including material facts[.]” 37
`
`C.F.R. § 42.104(b)(4); 37 C.F.R. § 42.22(a)(2). In accordance with 37 C.F.R. §
`
`42.104(b)(5), the relevance of the evidence supporting the challenge must be
`
`4
`
`
`
`provided in the petition, including identification of specific portions of the
`
`evidence that support the challenge.
`
`In determining whether to institute an inter partes review, the Board may
`
`“deny some or all grounds for unpatentability for some or all of the challenged
`
`claims.” 37 C.F.R. § 42.108(b); see also 35.U.S.C. § 314(a).
`
`IV. ARGUMENT
`A. Trial Should Not Be Instituted With Respect To Any Of The
`Challenges Raised Against Claims 6, 9, 17-18, 28, 40, and 42 Of
`The ‘475 Patent.
`
`In the Petition, Petitioner contends that claims 6, 9, 17-18, 28, 40 and 42
`
`of the ‘475 patent are obvious over U.S. Patent App. Pub. No. 2003/0236892 to
`
`Stephanie Coulombe (Petitioner’s Ex. 1003, hereinafter “Coulombe”) in view of
`
`U.S. Patent No. 6,928,617 to Alexander Druyan et al. (Petitioner’s Ex. 1004,
`
`hereinafter “Druyan”) and Ed Tittel et al., More HTML for Dummies (2d ed.
`
`1997) (Petitioner’s Ex. 1005, hereinafter “Tittel”) under 35 U.S.C. § 103(a). In
`
`arriving at this combination of references, Petitioner concedes (Pet. 44) that
`
`“Coulombe does not appear to expressly disclose that the message received
`
`from the sending device (19) has a “layout based on a template, said template
`
`characterized by at least a unique identifier, wherein the system is further
`
`configured to recognize the unique identifier of the template,” but argues (Pet.
`
`45-47) that Druyan and Tittel collectively teach this limitation through their
`
`disclosure of HTML documents having external style sheets identified by their
`
`URL. Petitioner contends “[i]t would have been obvious to one of ordinary skill
`
`5
`
`
`
`in the art to adapt the teachings of Druyan and Tittel to Coulombe, with no
`
`change in their respective functions, predictably resulting in the messaging
`
`system of Coulombe in which messages received by the SIP Proxy/Registrar
`
`(12) included HTML messages that included a style sheet file (‘template’)
`
`identified by its URL (‘unique identifier’). Petition at 47-48 (citing Klausner
`
`Decl., ¶¶ 107(cid:486)113) (emphasis added).
`
`Before discussing the two fatal flaws with this argument, Patent Owner
`
`will provide a brief summary of the three prior art references relied upon by
`
`Petitioner against claims 6, 9, 17-18, 28, 40, and 42 of the ‘475 patent:
`
`Coulombe, Druyan, and Tittel.
`
`1. Overview Of The Prior Art
`Coulombe teaches a messaging system for adapting multimedia content
`
`to facilitate interoperability between communications devices using session
`
`initiation protocol (SIP) messages. Coulombe, ¶ 0001; see also Petition at 16.
`
`As Petitioner notes, “Coulombe recognized that ‘[i]nteroperability is of
`
`paramount importance in messaging’ and that ‘emerging mobile terminals have
`
`made this requirement more challenging, due to the wide diversity of terminal
`
`characteristics: display size and resolution, available memory, formats
`
`supported, etc.’” Petition at 16-17 (quoting Coulombe, ¶ 0002).
`
`Coulombe explained that, although solutions for content adaption had
`
`been developed for browsing, these solutions could not be applied to SIP
`
`messaging due to the differences in how SIP messages and web pages are
`
`6
`
`
`
`delivered. Coulombe, ¶ 0006. Specifically, Coulombe explained that “in
`
`browsing, the destination terminal type is known since such information is
`
`provided in the request for content (e.g., User-Agent header in HTTP).” Id.
`
`Coulombe contrasted this framework with that of SIP messaging where “the
`
`recipient doesn’t ‘make a request’ to receive a message; it arrives without
`
`advance warning.” Id. As such, Coulombe explained that SIP messaging
`
`“requires a solution different from the well-known problem of information
`
`browsing.” Id. at ¶ 0010.
`
`Figure 1 of Coulombe, reproduced below, “shows a typical message flow
`
`of SIP message adaption” according to the system described therein:
`
`
`
`Id., Fig. 1, ¶ 0050. In the illustrated embodiment, sending terminal 19 and
`
`recipient terminal 15 take the form of mobile telephones. Figure 2 of
`
`Coulombe, reproduced below, “shows examples of message adaption performed
`
`according to” the system disclosed therein:
`
`7
`
`
`
`
`
`Id., Fig. 2, ¶ 0051. In this embodiment, the original SIP message is comprised
`
`of a text message, a GIF image, and two JPEG images. Id., ¶¶ 0094-0097. As
`
`such, the only data input by the sender is text and in-line images. Coulombe
`
`does not teach use of style sheets. Petition at 44 (noting that “Coulombe does
`
`not appear to expressly disclose” use of “templates,” and relying instead on
`
`Druyan and Tittel for their disclosure of style sheets that Petitioner contends
`
`read on this feature).
`
`While Coulombe was focused on a solution for delivering SIP messages,
`
`Druyan and Tittel, on the other hand, generally teach delivery of web pages that
`
`include style sheets. As Tittel explains, “[s]tyle sheets are essentially
`
`collections of rules that tell a browser how a document should appear.” Tittel at
`
`59. “As with all other things HTML, these rules have a specific syntax.” Id.
`
`8
`
`
`
`After a web developer creates a style sheet file, the web developer can
`
`reference the sheet from any HTML document using a “<LINK> tag”. Id. at 68.
`
`This type of style sheet is known as an external style sheet. Id. As Petitioner’s
`
`expert explains, “[e]xternally(cid:486)linked style sheets . . . 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.”). As Petitioner notes, when a web browser receives an HTML
`
`document with a link to an external style sheet, the browser must “download[]
`
`the style sheet file specified in the URL in the <LINK> tag” from an external
`
`location. Petition at 46-47 (citing Klausner Decl., ¶¶ 104-105).
`
`Druyan “relates to displaying information on a display screen, and more
`
`particularly to a web-browsing navigational tool for handheld computerized
`
`devices.” Druyan at 1:8-10; see also Klausner Decl., ¶ 90. As Druyan
`
`explained, “[w]ith the advent of the Internet, it was increasingly common to
`
`display information, particularly Internet web pages, with connected, limited
`
`devices (‘CLD’s’) that are highly portable, and therefore limited in size and
`
`computational power.” Druyan at 1:13-16; see also Klausner Decl., ¶ 90. To
`
`address this problem, the Druyan technique “takes an initial HTML document
`
`and its corresponding [XSLT style sheet], also referred to as a ‘master style
`
`sheet,’ that specifies the styling and/or layout of the HTML document optimized
`
`for display [by a web browser] on a desktop computer, and then creates one or
`
`more ‘derivative [XSLT] style sheets.’” Klausner Decl., ¶ 92 (citing Druyan at
`
`9
`
`
`
`3:32-37 & 3:48-52); Druyan at 3:48-52 (“In one aspect, master XSLT style sheet
`
`file 230 specifies the styling and/or the layout of the HTML document 240
`
`(FIG. 2), including information 100, optimized for display by a web browser on
`
`the display screen 105 (FIG. 1) of a desktop computer.”) (emphasis added); id.
`
`at 3:32-36 (“In this embodiment, a first derivative XSLT style sheet file 310, a
`
`second derivative XSLT style sheet file 320 and an optional additional derivative
`
`XSLT style sheet 330 are derived from a master (also known as a “parent”)
`
`XSLT style sheet file 230 (FIG. 2) describing information 100.”) (emphasis
`
`added).
`
`Notably, Tittel and Druyan are focused on development and delivery of
`
`web pages. Neither Tittel nor Druyan discloses the use of style sheets in the
`
`context of SIP messaging, or any type of messaging for that matter.
`
`2.
`
`The Petition Fails To Offer Any Explanation As How It
`Proposes Combining The References, Consistent With
`Their Ordinary Functions, To Arrive At An Operable
`System.
`
`A petition that asserts that a combination of prior art renders a claim
`
`unpatentable must “set forth sufficient articulated reasoning with rational
`
`underpinning to support its proposed obviousness ground.” SAS Inst., Inc. v.
`
`Complementsoft, LLC, IPR2013-00581, Paper 15 at 12 (PTAB Dec. 30, 2013)
`
`(citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)). As the
`
`Federal Circuit has explained:
`
`Obviousness requires more than a mere showing that the prior art
`includes separate references covering each separate limitation in a
`
`10
`
`
`
`the
`claim under examination. Rather, obviousness requires
`additional showing that a person of ordinary skill at the time of the
`invention would have selected and combined those prior art
`elements in the normal course of research and development to yield
`the claimed invention.
`
`Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011)
`
`(internal citations omitted). Put differently, a party asserting obviousness must
`
`“explain why a person of ordinary skill in the art would have combined
`
`elements from specific references in the way the claimed invention does.”
`
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328
`
`(Fed. Cir. 2012).
`
`Here, the Petition does not offer any explanation regarding how it
`
`proposes combining the teachings of Coulombe, Druyan, and Tittel to arrive at
`
`an operable system that reads on the challenged “template” claims. Instead, the
`
`Petition merely provides that “[i]t would have been obvious to one of ordinary
`
`skill in the art to adapt the teachings of Druyan and Tittel to Coulombe, with no
`
`change in their respective functions, predictably resulting in the messaging
`
`system of Coulombe in which messages received by the SIP Proxy/Registrar
`
`(12) included HTML messages that included a style sheet file (‘template’)
`
`identified by its URL (‘unique identifier’).” Petition at 47-48 (citing Klausner
`
`Decl., ¶¶ 107(cid:486)113). But this type of argumentative conclusion cannot
`
`“substitute for a fact-based analysis of the proposed combination of references
`
`necessary to support the conclusion[].” TRW Auto. US LLC, v. Magna Elecs.,
`
`11
`
`
`
`Inc., IPR2014-00869, Paper 8 at 24-25 (PTAB Dec. 1, 2014) (“Petitioner’s
`
`statements of general principles from the case law that a proposed combination
`
`is ‘nothing more than the combination of old and familiar elements according to
`
`known configurations and methods, each performing the same function it had
`
`been known to perform, yielding predictable results’ . . . are argumentative
`
`conclusions.”).
`
`Among other flaws, the Petition does not specifically identify which
`
`teachings of Druyan and Tittel it is relying upon (aside from their general
`
`disclosure of HTML documents with style sheets), how those features are being
`
`utilized with no change in their respective functions, and how the proposed
`
`combination would yield a predictable result. For instance, as Petitioner’s
`
`expert explains, Druyan teaches a “technique for viewing web pages on [] a
`
`smaller screen . . . [that] takes an initial HTML document and its corresponding
`
`style sheet, also referred to as a ‘master style sheet,’ . . . and then creates one or
`
`more ‘derivative style sheets.’” Klausner Decl., ¶ 92 (citing Druyan at 3:48-52
`
`& 3:32-37). It is unclear from the Petition if the Petitioner is relying upon
`
`Druyan for its disclosure of creation of “derivative style sheets,” and, if so, how
`
`that functionality would interact with the message adaptation engine (20) of
`
`Coulombe’s SIP messaging system.
`
`As another example, the Petition apparently relies on Tittel for its
`
`disclosure of HTML documents (namely, web pages) that include external style
`
`sheets. The Petition goes on to explain that the way external style sheets
`
`12
`
`
`
`typically work is that “when [a] web browser encounters [a] <LINK> tag in [an]
`
`HTML document, it downloads the style sheet file specified in the URL in the
`
`<LINK> tag, and uses the downloaded style sheet to provide a correct layout for
`
`the display of the HTML document.” Petition at 46-47 (emphasis added). In
`
`other words, by Petitioner’s own characterization of how external style sheets
`
`work, conversion of HTML document layout is performed by the web browser
`
`(i.e., the client device). Nowhere does the Petition explain how, “with no
`
`change in respective function,” external style sheets would be incorporated into
`
`Coulombe such that the layout of the message would be converted by
`
`Coulombe’s SIP Proxy/Registrar (12) (rather than at the client device, which is
`
`how external style sheets function).
`
`The Petition further provides that “[o]ne of ordinary skill in the art would
`
`have found no technological obstacle to, and no teaching away from, adapting
`
`the style sheet teachings of Druyan and Tittel to the SIP messaging system of
`
`Coulombe.” Petition at 49 (citing Klausner Decl., ¶¶ 109(cid:486)113). But this
`
`conclusory statement, like the one discussed above, does not explain how
`
`Petitioner proposes combining the various teachings of the asserted prior art
`
`references to arrive at a workable modified version of Coulombe.
`
`In situations such as the present, where Petitioner has not explained how
`
`it is combining the asserted prior art references to arrive at a workable device,
`
`the Board has declined to initiate a trial on the ground in question. See, e.g.,
`
`TRW Auto, IPR2014-00869, Paper 8 at 24 (declining to initiate trial on ground
`
`13
`
`
`
`at issue where the “Petitioner [did] not explain how or why the teachings of the
`
`specific references would have been combined by a skilled artisan, which
`
`combination(s) of elements in specific references would yield a predictable
`
`result, or how any specific combination would operate or read on the asserted
`
`claims and render those claims obvious”); Daifuku Co., Ltd. v. Murata
`
`Machinery, Ltd., IPR2015-00085, Paper 9 at 15 (PTAB May 4, 2015) (declining
`
`to institute IPR on obviousness ground where “[n]either Petitioner nor [its
`
`expert] provides any explanation of precisely how the proposed combination
`
`would work in practice”); Veeam Software Corp. v. Symantec Corp., IPR2013-
`
`00145, Paper 12 at 11-12 (PTAB Aug. 7, 2013) (“Petitioner’s arguments and
`
`declaration evidence amount to little more than unsubstantiated assertions about
`
`the combinability of Veritas Database and APA, the manner of their
`
`combination, and the results thereby obtained. Even if we accept as true all of
`
`Petitioner's arguments and evidence, the petition still fails to show how the
`
`block-based Veritas Database system could have been combined with the file-
`
`based APA.”).
`
`Petitioner’s apparent reliance on paragraphs 110-113 of the Klausner
`
`Declaration to explain how it proposes combining the asserted references does
`
`not cure the defects discussed above. See Petition at 48 & 49 (citing to
`
`paragraphs 107(cid:486)113 and 109-113, respectively,
`
`to support Petitioner’s
`
`conclusory statements, discussed above, as to why a skilled artisan would have
`
`been motivated to combine the references). As the Board has made clear, the
`
`14
`
`
`
`“practice of citing [a] Declaration to support conclusory statements that are not
`
`otherwise supported in the Petition [] amounts to incorporation by reference.”
`
`Cisco Sys., Inc. v. C-Cation Techs., LLC, Case IPR2014-00454, Paper 12 at 9
`
`(PTAB Aug. 29, 2014) (instructive); accord S.S. Steiner, Inc., v. John I. Haas,
`
`Inc., IPR2014-01491, Paper 7 at 15 (PTAB Mar. 16, 2015) (“The practice of
`
`citing Dr. Leedle’s Declaration to support conclusory statements, otherwise
`
`unsupported in the Petition, amounts to incorporation by reference.”). In inter
`
`partes review proceedings, it is “improper to incorporate by reference
`
`arguments from one document into another document.” Cisco Sys., IPR2014-
`
`00454, Paper 12 at 10 (citing this practice as a violation of 37 C.F.R. §
`
`42.6(a)(3)). Because paragraphs 110-113 of the Klausner Declaration, which
`
`total nearly three pages, are not discussed at all in the Petition itself, the Board
`
`should decline to consider them. Apple Inc. v. Rensselaer Polytechnic Inst.,
`
`IPR2014-00077, Paper 14 at 5 (PTAB June 13, 2014) (“We decline to consider
`
`information presented in a supporting declaration, but not discussed in a
`
`petition, because . . . doing so would encourage the use of declarations to
`
`circumvent the page limits that apply to petitions.”); Fid. Nat’l Info. Servs., Inc.,
`
`v. DataTreasury Corp., IPR2014-00490, Paper 9 at 10 (PTAB Aug. 13, 2014)
`
`(same). 3
`
`
`3
`Because, as detailed above, Patent Owner’s position is that Petitioner has
`
`improperly incorporated by reference paragraphs 110-113 of the Klausner
`
`15
`
`
`
`3.
`
`None Of The References Teach Sending SIP Messages
`That Include A Style Sheet File Identified By Its URL.
`
`Petitioner argues that “[i]t would have been obvious to one of ordinary
`
`skill in the art to adapt the teachings of Druyan and Tittel to Coulombe, with no
`
`change in their respective functions, predictably resulting in the messaging
`
`system of Coulombe in which messages received by the SIP Proxy/Registrar
`
`(12) included HTML messages that included a style sheet file (‘template’)
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`identified by its URL (‘unique identifier’).” Petition at 47-48 (emphasis added).
`
`Setting aside that the Petition fails to explain how it proposes combining these
`
`references, with no change in their respective functions, to arrive at an operable
`
`system, none of the cited prior art references teach sending SIP messages (either
`
`HTML or otherwise) “that included a style sheet file . . .identified by its URL.”
`
`Absent any prior teaching that senders in Coulombe’s SIP messaging system
`
`were capable of sending SIP messages with a URL link to an external style
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`sheet programmed into the coding of the message, there would be no reason to
`
`modify the messaging system of Coulombe to receive such messages.
`
`Petitioner directs the Board’s attention to Coulombe Figure 1, reproduced
`
`below, as being illustrative of Coulombe’s “overall system”:
`
`
`Declaration, the actual content of paragraphs 110-113 of the Klausner
`
`Declaration is not relevant.
`
`16
`
`
`
`
`
`Petition at 19. Petitioner notes that in the Coulombe system, “an originating
`
`communication device of a sender (19) on the left . . . “communicate[s] via
`
`signal line [18] with a central proxy/registrar (12).” Id. at 20. Petitioner has
`
`thus identified an “originating communication device” as being one of the three
`
`primary components of the Coulombe system (along with the proxy/registrar
`
`and receiving device).
`
`The Petition, however,
`
`focuses solely on modifying
`
`the SIP
`
`Proxy/Registrar (12) of Coulombe to receive “HTML messages that include a
`
`style sheet identified by its URL.” Petition at 47-48. Neither the Petition nor
`
`the Klausner Declaration explain whether, and -- if so how, -- the sending
`
`devices of the Coulombe system would be capable of sending SIP messages that
`
`include a style sheet identified by its URL.
`
`Absent a teaching that the sending devices of the Coulombe were capable
`
`of sending SIP messages that included a style sheet identified by its URL,
`
`Petitioner’s proposed modification of the Coulombe SIP Proxy/Registrar to
`
`17
`
`
`
`receive such messaging amounts to added functionality that would have no use.
`
`Specifically, in Background, Coulombe goes on at length to distinguish its SIP
`
`messaging from using web browsing. See Coulombe, ¶ 0004-0011. As detailed
`
`above in section IV.A.2, Druyan and Tittel utilize style sheets for web
`
`browsing. Consequently, in alleging its combination, Petitioner (1) has ignored
`
`Coulombe’s expressly taught difference between Coulombe’s SIP messaging
`
`and the web browsing, and (2) has failed to explain why a person of ordinary
`
`skill in the art at the time of the filing would ignore such express difference to
`
`utilize style sheets in Coulombe’s SIP messaging. Thus, a person of ordinary
`
`skill in the art at the time of the filing would not have been motivated to modify
`
`Coulombe to add a useless capability. See Plas-Pak Indus., Inc. v. Sulzer
`
`Mixpac AG, No. 2014-1447, 2015 WL 328222, at *2 (Fed. Cir. Jan. 27, 2015)
`
`(“[C]ombinations that change the ‘basic principles under which the [prior art]
`
`was designed to operate,’ or that render the prior art ‘inoperable for its intended
`
`purpose,’ may fail to support a conclusion of obviousness.”) (int
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