Trials@uspto.gov
`571.272.7822
`
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`
`
`Paper No. 61
`Filed: August 17, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WHATSAPP INC. and FACEBOOK, INC.,
`Petitioner,
`
`v.
`
`TRIPLAY, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00740
`Patent 8,332,475 B2
`____________
`
`Before BENJAMIN D. M. WOOD, BRIAN J. McNAMARA, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`IPPOLITO, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`

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`IPR2015-00740
`Patent 8,332,475 B2
`
`I. INTRODUCTION
`
`WhatsApp Inc. and Facebook, Inc. (collectively “Petitioner”) filed a
`
`Petition on February 14, 2015, requesting an inter partes review of claims 1,
`
`6, 9, 12, 17, 18, 23, 28, 37, and 39–42 of U.S. Patent No. 8,332,475 B2 (Ex.
`
`1001, “the ’475 patent”). Paper 1 (“Pet.”). Patent Owner, TriPlay Inc., filed
`
`a Preliminary Response to the Petition on May 26, 2015 (Paper 12, “Prelim.
`
`Resp.”).
`
`Based on these submissions, we instituted trial as to claims 1, 6, 9, 12,
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`17, 18, 23, 28, 37, and 39–42 of the ’475 patent on the following grounds:
`
`Reference(s)
`
`Coulombe1
`
`Basis
`
`§ 103
`
`Coulombe, Druyan,2 and Tittel3
`
`§ 103
`
`Claim(s)
`Challenged
`1, 12, 23, 37,
`39, and 41
`6, 9, 17, 18,
`28, 40, and 42
`
`
`
`Paper 13 (“Dec. on Inst.”). In our Decision on Institution, we observed that
`
`after the filing of the Petition and the Preliminary Response, the United
`
`States Court of Appeals for the Federal Circuit issued an opinion in
`
`Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2016) (en banc
`
`in relevant part), “which modified the law regarding when to treat a claim
`
`recitation as a means-plus-function element under 35 U.S.C. § 112, ¶ 6.”
`
`Dec. on Inst. 8 n.4. Additionally, we instructed the parties that
`
`[a]t the initial conference call scheduled on the date indicated in
`the accompanying Scheduling Order, the parties should be
`
`
`1 U.S. Patent App. Pub. No. 2003/0236892 A1, published. Dec. 25, 2003
`(Ex. 1003, “Coulombe”).
`2 US Patent No. 6,928,617 B2, issued Aug. 9, 2005 (Ex. 1004, “Druyan”).
`3 Ed Tittel et al., More HTML for Dummies (2d ed. 1997)
`(Ex. 1005, “Tittel”).
`
`
`
`2
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`IPR2015-00740
`Patent 8,332,475 B2
`
`impact of Williamson on
`this
`the
`to discuss
`prepared
`proceeding, including whether the terms “media block” and
`“access block” of claims 1 and 39, and “block” of claims 9 and
`40 of the ‘475 patent should be interpreted as means-plus-
`function limitations pursuant to 35 U.S.C. 112, sixth paragraph.
`See Williamson at *6–7. The parties also should be prepared to
`discuss whether additional briefing on the matter is warranted,
`and, if so, an appropriate briefing schedule.
`
`Id. After the initial conference call on September 24, 2015, our Order
`
`summarizing the call noted that
`
`[t]he Scheduling Order requested that the parties come to
`
`the initial conference prepared to discuss whether certain terms,
`such as “media block” and “access block” should be treated as
`means-plus-function limitations in view of Williamson v. Citrix
`Online, LLC, No. 2013-1130, 2015 WL 3687459 (Fed. Cir.
`June 16, 2015) (en banc in relevant part). Paper 14, 2–3. During
`the conference, the parties advised us that they had conferred
`and were prepared to stipulate that the claims do not recite
`means-plus-function limitations. Noting that we may not
`agree with their conclusion, we asked the parties to address
`the constructions and the impact of Williamson in the Patent
`Owner Response and the Petitioner Reply.
`
`Paper 23, 5 (emphasis added). After institution, Patent Owner filed a Patent
`
`Owner’s Response (Paper 33, “PO Resp.”), and Petitioner filed a Reply
`
`(Paper 39, “Pet. Reply”).
`
`An oral hearing was conducted on May 19, 2016. A transcript of the
`
`oral hearing is included in the record. Paper 60 (“Tr.”).
`
`This decision is a Final Written Decision under 35 U.S.C. § 318(a)
`
`and 37 C.F.R. § 42.73 as to the patentability of claims 1, 6, 9, 12, 17, 18, 23,
`
`28, 37, and 39–42. For the reasons discussed below, Petitioner has
`
`demonstrated by a preponderance of the evidence that claims 1, 6, 9, 12, 17,
`
`18, 23, 28, 37, and 39–42 of the ’475 patent are unpatentable.
`
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`IPR2015-00740
`Patent 8,332,475 B2
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`A. Related Proceedings
`
`Petitioner indicates that the ’475 patent is the subject of a pending
`
`United States District Court proceeding captioned TriPlay, Inc. et al. v.
`
`WhatsApp Inc., Case No. 1:13‐cv‐1703‐LPS (D. Del. Oct. 15, 2013). Pet. 1.
`
`Further, related patent U.S. Patent No. 8,874,677 B2 is the subject of
`
`Petitions in IPR2016-00717 and IPR2016-00718.
`
`B. The ’475 Patent
`
`The ’475 patent is directed generally to electronic messaging between
`
`communication devices. Ex. 1001, Abstract. More specifically, the ’475
`
`patent describes converting and or adapting formats/layouts of messages to
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`be sent between an origination device and a destination device. Id.
`
`Referring to Figures 1 and 5, the ’475 patent describes messaging system 16
`
`as including access block 21 and media block 23. Id. at 12:62–65; 16:18–
`
`27. Access block 21 may include users’ gateway 211 and third-party
`
`applications’ gateway 214 that support communication with communication
`
`devices and third party applications via corresponding networks. Id. at
`
`13:4–7; Fig. 2. For sending a message from an originating device to a
`
`destination device, the ’475 patent describes media block 23 “configured to
`
`select the format and message layout fitting to the destination device and to
`
`convert the message accordingly before facilitating its delivery to the
`
`destination device.” Id. at 16:24–27. Converting includes transcoding the
`
`message format and/or adapting the message layout. Id. at 16:28–30.
`
`Message manager 231 is configured to provide layout adaptation and/or
`
`repackaging. Id. at 34–37.
`
`As an example of operation, Figure 6 is reproduced below.
`
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`4
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`Patent 8,332,475 B2
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`
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`Figure 6 shows a generalized flow diagram of operating messaging system
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`16. Id. at 16:17–19. Messaging system 16 is connected with networks 13,
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`14 and/or 15 illustrated in Figure 1 in a manner that the message
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`communication originated by the subscriber and/or designated to the
`
`subscriber shall pass through messaging system 16. Id. at 16:41–46. As
`
`shown in Figure 6, Subscriber A composes a message at one of the
`
`communication devices assigned and sends the message to Subscriber B and
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`Non-subscriber C. Id. at 16:46–49. As the message is originated by the
`
`subscriber, it will be re-addressed to messaging system 16. Id. at 16:49–51.
`
`Messaging system 16 receives the message and analyzes 61 originating and
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`destination addresses comprised in the message. Id. at 16:51–53.
`
`If it is found that the destination device is assigned to a subscriber
`
`(e.g., per domain name assigned to the subscribers, IP address or other
`
`device attribute stored in the database, etc.), the system decides 62 on the
`
`destination device, and takes a delivery decision 63 accordingly. Ex. 1001,
`
`16:53–58. The delivery decision comprises delivery instructions with regard
`
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`IPR2015-00740
`Patent 8,332,475 B2
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`to destination device(s) and/or content and/or format and/or layout of the
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`message to be delivered. Id. at 16:63–17:4. In accordance with the delivery
`
`decision, the system provides transcoding of the message format 64 and/or
`
`adapting layout 65 and appropriate repackaging 66 if necessary (for
`
`example, if limitations by communication media and/or destination device,
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`and/or DRM-related instructions or other reasons require deleting or
`
`replacing some of the media items comprised in the message). Id. at 17:6–
`
`12. The converted message and/or notification thereof are delivered 67 to
`
`the destination device, and the transaction is registered 68 in the system. Id.
`
`at 17:13–15. The described process may be provided in a similar manner for
`
`several destination devices. Id. at 17:16–20.
`
`As another example, Figure 9 is reproduced below.
`
`
`
`Figure 9 shows a generalized flow diagram of messaging between two
`
`subscribers wherein originating device 91 is a PC supporting synchronized
`
`multimedia messages and destination device 94 is a PC supporting plain
`
`messages only. Ex. 1001, 19:4–8. Subscriber A composes 911 a
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`synchronized multimedia message at originating device 91 to be sent to
`
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`6
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`subscriber B. Id. at 19:8–10. A client at the originating device may be
`
`configured to obtain availability information from the messaging system
`
`and/or other platform(s), and request the messaging system for information
`
`with regard to Subscriber B preferences and/or results of preferred
`
`destination device calculations; the messaging system may be configured to
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`provide such information to the client. Id. at 19:16–23.
`
`After the client obtains information with regard to the destination
`
`device, it takes delivery decision 912 and provides the appropriate
`
`transcoding 913, matching (fully or partly) the message to the capabilities of
`
`destination device 94 and the communication media. Id. at 19:24–28. The
`
`converted message is uploaded 914 to messaging system 16 and received via
`
`user’s gateway 211. Id. at 19:28–29.
`
`The ’475 patent further describes the use of
`
`a template-based message, said template characterized by at
`least [a] unique identifier and an initial layout, wherein the
`system [is] further configured to recognize the unique identifier
`of the template, and . . . is further configured to adapt, before
`transmitting, the initial layout of the message in accordance
`with the recognized unique identifier and displaying capabilities
`of the destination communication device.
`
`Ex. 1001, 6:5–12.
`
`C. Illustrative Claim
`
`Of the challenged claims, claims 1, 9, 12, 17, 23, 28, 37, 39, 40, 41,
`
`and 42 are independent. Claims 1 and 42, reproduced below, are illustrative
`
`of the subject matter of the ’475 patent:
`
`1. A system for message communication via a communication
`media between one or more originating communication devices
`assigned
`to a
`sender and one or more destination
`communication devices assigned to a receiver, the system
`comprising:
`
`
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`7
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`IPR2015-00740
`Patent 8,332,475 B2
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`a) an access block configured to receive, directly or
`indirectly, from at least one originating communication device a
`message having initial characteristics comprising, at least
`message format and an initial message layout, and to transmit
`the message to at least one destination communication device;
`b) a media block operatively coupled to said access block
`and configured to select, before transmitting, at least one
`message format and a message layout for each of the at least
`one message formats fitting to each of said at least one
`destination device, and to then convert at least said initial
`message layout to the selected message layouts, said selection
`and conversion being done in accordance with at least one
`criterion selected from a group comprising:
`i) criterion related to message communication
`capabilities of the destination communication device with
`regard to message communication capabilities of the
`originating communication device;
`ii) criterion
`related
`to message displaying
`capabilities of the destination communication device with
`regard to message communication capabilities of the
`originating communication device; and
`iii) criterion related to the communication media.
`
`
`42. A method of message communication via a messaging
`system between one or more originating communication
`devices and one or more destination communication devices,
`the method comprising:
`a) before delivery to a destination communication device,
`obtaining by the messaging system, a message characterized, at
`least, by a message format and an initial message layout in the
`form of a template, said template characterized by at least
`unique identifier;
`b) obtaining information related to said unique identifier;
`
`and
`
`c) before delivery to the destination communication
`device, selecting at least one message format and a message
`layout for at least one message formats fitting to each of said at
`least one destination device, and converting the initial layout of
`the message to the selected message layout, said selection and
`conversion being done in accordance with at least one
`
`
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`IPR2015-00740
`Patent 8,332,475 B2
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`predefined layout corresponding to said unique identifier and to
`displaying capabilities of
`the destination communication
`device.
`
`
`
`A. Claim Construction
`
`II. ANALYSIS
`
`In an inter partes review, claim terms in an unexpired patent are given
`
`their broadest reasonable construction in light of the Specification of the
`
`patent in which they appear. See 37 C.F.R. § 42.100(b); Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); Cuozzo Speed
`
`Techs., LLC v. Lee, 136 S. Ct. 2131 (2016) (concluding the broadest
`
`reasonable construction “regulation represents a reasonable exercise of the
`
`rulemaking authority that Congress delegated to the Patent Office.”).
`
`1. Block Terms (claims 1, 6, 9, 39, and 40)
`
`By way of background, several of the challenged claims recite the
`
`term “block,” “access block,” and/or “media block,” which we refer to
`
`collectively as “block terms.” For example, claim 9 provides in its entirety
`
`[a] block configured to obtain a message having a layout based
`on a template, said message characterized, at least, by a
`message format and an initial message layout and to be
`communicated between one or more originating communication
`devices assigned to a sender and one or more destination
`communication devices assigned to a receiver, said template
`characterized by at least a unique identifier, wherein said block
`is further configured to obtain information related to said
`unique identifier, and to select a message layout and convert the
`initial layout of the message to the selected message layout in
`accordance with at least one predefined layout corresponding to
`said unique identifier and displaying capabilities of the
`destination communication device before the message is
`transmitted.
`
`
`
`
`
`9
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`IPR2015-00740
`Patent 8,332,475 B2
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`Emphasis added. In the Petition, Petitioner provides constructions for
`
`“access block,” “media block,” and “block,” but does not argue these terms
`
`are means-plus-function limitations. Pet. 13–15. Nonetheless, in the
`
`Petition, Petitioner reserves the right to argue that the “block” terms are
`
`“governed by 35 U.S.C. § 112(f) using the different claim construction
`
`standards applicable in litigation.” Id. at 13–14 n. 3.
`
`Given that the Williamson decision issued after the Petition and
`
`Preliminary Response were filed, we instructed the parties to address the
`
`impact of the Williamson decision on the claim construction of the “block”
`
`terms recited in the challenged claims. Dec. on Inst. 8 n. 4; see Paper 14, 2–
`
`3. At the initial conference, the parties proposed to stipulate that the “block”
`
`terms are not means-plus-function limitations. Paper 23, 5. At that same
`
`conference, we reminded the parties that we may not agree with their
`
`proposed construction and, further, instructed the parties to “address the
`
`constructions [of the “block” terms] and the impact of Williamson in the
`
`Patent Owner Response and the Petitioner Reply.” Paper 23, 5; Tr. 14:2–15.
`
`Contrary to our express instructions, neither party has meaningfully
`
`addressed the Williamson decision or the construction of the “block” terms
`
`in the Patent Owner’s Response or Petitioner’s Reply. The Petitioner’s
`
`Reply is entirely silent on this issue. See Pet. Reply; Tr. 14:16–19. While
`
`the Patent Owner’s Response offers more, in the form of a single footnote
`
`citing several paragraphs of Dr. Surati’s testimony, the Patent Owner’s
`
`Response also relies on the parties’ stipulation that the “block” terms are not
`
`means-plus-function limitations. See PO Resp. 25 n.1; See Tr. 27:18–28:14.
`
`
`
`Based on the complete record, we consider the parties’ “stipulation”
`
`to be nonresponsive to the instructions provided in our Order to “address the
`
`constructions [of the “block” terms] and the impact of Williamson in the
`
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`Patent Owner Response and the Petitioner Reply.” Paper 23, 5. At the oral
`
`hearing, Petitioner stated
`
`for the purposes of this proceeding, the parties stipulated that,
`in fact, could be read as its broadest reasonable interpretation to
`include that hardware and software. Again, it’s for efficiency as
`well to make sure that these claims can be determined together,
`rising and falling based on the prior art that’s at issue here
`because otherwise we would have a situation where some
`claims, because they didn’t use the word “block,” would be
`before the Court here and other claims would not and would
`have to simply be sent back down to the District Court.
`
`Tr. 10:13–20 (emphasis added). Although “efficiency” is certainly a
`
`consideration in an inter partes review, we do not agree with the parties that
`
`a “stipulation” in our circumstances complied with the instructions in our
`
`Order. See Paper 23, 5. Moreover, we note that, in general, a party’s refusal
`
`(in this case repeated refusal) to comply with our instructions not only
`
`hampers our ability to develop a clear record, but demonstrates an abject
`
`disregard for the rules by which the Board seeks to conduct a just, speedy,
`
`inexpensive, and fair review.
`
`Nonetheless, having considered the entire record, we determine that
`
`the terms “access block,” “media block,” and “block” (recited in claims 1, 6,
`
`9, 39, and 40) do not require our express determination of whether these
`
`terms are means-plus-function limitations for the purposes of this Decision.
`
`The Williamson decision overruled cases that previously stated the absence
`
`of the word “means” in a claim term established a heightened “strong”
`
`presumption that § 112 ¶ 6 did not apply. Williamson, 792 F.3d at 1348–49.
`
`Nevertheless, a presumption still applies to non-means terms and the Federal
`
`Circuit has instructed that it “will apply the presumption as we have done
`
`prior to Lighting World, without requiring any heightened evidentiary
`
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`Patent 8,332,475 B2
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`showing and expressly overrule[s] the characterization of that presumption
`
`as ‘strong.’” Id. at 1349. On the facts before us, neither party has attempted
`
`to rebut this presumption with regard to the “block” terms recited in claims
`
`1, 6, 9, and 40. Moreover, to the extent that either party has addressed the
`
`construction of these terms, Patent Owner, at least, included the following
`
`single footnote in its Patent Owner’s Response:
`
`The Board did ask the parties to be prepared to address during
`the initial conference call “whether the terms ‘media block’ and
`‘access block’ of claims 1 and 39, and ‘block’ of claims 9 and
`40 of the ‘475 patent should be interpreted as means-plus-
`function
`limitations pursuant
`to 35 U.S.C. 112, sixth
`paragraph.” Prior to the initial conference call, the parties
`stipulated that, under the broadest reasonable interpretation,
`these terms should not be construed as means-plus-function
`limitations, but rather they should be defined consistent with
`the constructions proposed by Petitioner in the Petition. Indeed,
`as set forth in the accompanying Declaration of Dr. Surati, a
`POSITA would understand that the terms “media block” and
`“access block” are structural elements. (Dr. Surati Decl. ¶¶ 96-
`104).
`
`PO Resp. 25 n.1. With regard to Dr. Surati’s declaration, we observe that he
`
`testifies that a person having ordinary skill in the art would understand
`
`“block” to refer to “specially constructed hardware or selectively activated
`
`or reconfigured general purpose computers.” Ex. 2002 ¶ 99. Dr. Surati
`
`further testifies that the Specification of the ’475 patent describes the
`
`“component descriptions and relationships of ‘access block and ‘media
`
`block.’” Id. ¶ 102 (citing Ex. 1001, 13:4–7, 13:17–18, 14:45–55, 14:59–62,
`
`16:21–39, Figs. 3, 6–10). Dr. Surati additionally testifies that Figure 8 of the
`
`’475 patent describes the manner in which the components perform claimed
`
`functions. Id. ¶ 103. Additionally, in addressing claim construction at the
`
`oral hearing, Patent Owner referred to the passages quoted and cited in Dr.
`
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`Surati’s declaration. Tr. 25:1–26:10. Thus, based on the entire record in this
`
`proceeding, neither party has argued or otherwise provided evidence to rebut
`
`the presumption that “block” is not a means-plus-function limitation.
`
`
`
`Further, we determine that the structures of these “block” terms are
`
`not in dispute among the parties. With regard to its unpatentability
`
`challenges, Petitioner points to the software and hardware disclosed in
`
`Coulombe, Druyan, and Tittel as teaching or suggesting the “access block,”
`
`“media block,” and “block” limitations recited in the challenged claims. See
`
`Pet. 21 (“The ‘access block’ in Coulombe corresponds to the ‘SIP
`
`Proxy/Registrar’ (12) shown in Figure 1, above. The SIP Proxy/Registrar
`
`(12) is a combination of hardware (one or more servers) and software.
`
`(Coulombe, ¶ 0092 (‘The software is written in C and runs under Linux
`
`OS.’), ¶ 0093 (‘SIP proxy/registrar servers’)); see id. at 23–33 (relying on
`
`Coulombe’s disclosure of a Message Adaptation Engine as teaching a
`
`“media block.”). In its response, Patent Owner does not argue that the cited
`
`references fail to teach the structure required by the “block” terms, but,
`
`instead contends that the identified components in the references (e.g.,
`
`Coulombe’s Message Adaptation Engine) lack the functionality required by
`
`claims 1, 6, 9, and 40. See PO Resp. 33–35 (arguing that Coulombe’s
`
`Message Adaptation Engine does not “select” a format and layout).
`
`
`
`Additionally, we observe that while the structures of the “block”
`
`terms are not in controversy in our proceeding, the opposite is true in the
`
`related district court matter. After the oral hearing in this proceeding took
`
`place on May 19, 2016, Patent Owner requested the opportunity to “formally
`
`inform” the Board of a “Report and Recommendation” (Ex. 3001) issued in
`
`the related district court proceeding currently pending in the United States
`
`District Court for the District of Delaware. Patent Owner’s request is
`
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`unnecessary because we are aware of the related district court matter, as
`
`indicated by Patent Owner’s Mandatory Notices and our discussion at the
`
`oral hearing. Paper 7, 2; Tr. 24–26; see Ex. 3001. Nonetheless, our review
`
`of the Report and Recommendation does not change our determination
`
`based on the record in our proceeding. In particular, Judge Burke noted that
`
`in the district court
`
`[b]oth parties devoted substantial portions of their briefing to
`the question of whether means-plus-function claiming has
`been invoked here; WhatsApp argues that Section 112,
`paragraph 6 applies to both “block” terms (“access block”
`and “media block”), and TriPlay argues that it does not. In
`light of the fact that Section 112, paragraph 6 was addressed
`so substantially by both sides, and because the legal analysis
`regarding that issue helps to demonstrate why the relevant
`claim terms are not indefinite, the Court will undertake the
`Section 112, paragraph 6 analysis first here. See Intellectual
`Ventures I, LLC v. Canon Inc., Civ. No. 13-473-SLR, 2015 WL
`307868, at *2 (D. Del. Jan. 23, 2015) (analyzing a claim term to
`determine whether Section 112, paragraph 6 had been invoked,
`finding that the patent described sufficient structure such that
`the paragraph did not apply, and then explaining that the
`Court’s analysis of that issue also demonstrated why the
`“description provided by the claims and specification [was] also
`sufficient” to not be indefinite pursuant to Section 112,
`paragraph 2).
`
`Ex. 3001, 9 n.6 (emphases added). In contrast to the record in the district
`
`court, our record in this inter partes review does not contain a “substantial”
`
`discussion of Section 112, paragraph 6 by either party, particularly in
`
`relation to the patentability challenges before us. Moreover, our proceeding
`
`does not include the challenges based on 35 U.S.C. §§101, 112
`
`(indefiniteness) that are central to the dispute in the district court. Ex. 3001,
`
`2–4, 18–19, 25. Further, the parties have had ample notice of claim
`
`construction issues from the start of this inter partes review. Dec. on Inst. 8
`
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`n.4; Paper 23, 5. Each party has had several opportunities to present its
`
`position on claim construction in this proceeding, including the opportunity
`
`to present arguments here that may have been provided in the district court
`
`litigation. Our record in this proceeding is not the record in the district
`
`court, which there includes “substantial” briefing of a claim construction
`
`dispute that does not exist here. Accordingly, for the purposes of this
`
`Decision, we need not construe these “block” terms expressly as means-
`
`plus-function limitations or otherwise. See Vivid Techs., Inc. v. Am. Sci. &
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`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only those
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`terms that are in controversy need to be construed, and only to the extent
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`necessary to resolve the controversy).
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`2. Template (claims 6, 9, 17, 18, 28, 40, and 42)
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`Our Decision on Institution did not construe the claim term
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`“template.” Pet. 15. In the Petition, Petitioner proposes that the claim term
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`“template” means “any kind of predefined user interface related to content
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`and/or layout of transmitted and/or received message.” Pet. 15 (emphasis
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`omitted). In response, Patent Owner argues that the predefined user
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`interface of a “template” includes visually displayed interface consisting of
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`actual data elements of interest and not just the fonts or colors to apply to the
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`elements in an HTML document. PO Resp. 36–37. Patent Owner further
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`argues that the ’475 patent teaches that a template comprises pre-existing
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`text, and/or spaces to be filled and/or media items and/or menu elements. Id.
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`at 37. In its Reply, Petitioner asserts that Patent Owner’s construction is too
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`narrow and the ’475 patent does not require a visual display or actual
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`content. Pet. Reply 12–13.
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`Upon review of the complete record, Petitioner’s arguments are
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`persuasive. The ’475 patent teaches that the term “‘message template’ used
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`in this patent specification should be expansively construed to include any
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`kind of predefined user interface related to content and/or layout of
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`transmitted and/or received message.” Ex. 1001, 11:8–11 (emphasis added).
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`Referring to Tables 1 and 2, the ’475 patent provides non-exhaustive
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`examples of templates, which include templates containing pre-defined
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`content or pre-defined layouts. Id. at 19:49–20:14, 21:21–22:12 (Tables 1–
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`2). Further, the ’475 patent indicates that “typically” the template may
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`include “pre-existing text, and/or spaces to be filled and/or media items
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`and/or menu elements and/or buttons and/or checkboxes to be
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`filled/selected,” but does not limit the term “template” to a visually
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`displayed interface having actual data elements of interest. Thus, under the
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`broadest reasonable construction, we determine that “template” means “any
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`kind of predefined user interface related to content and/or layout of
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`transmitted and/or received message.”
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`3. “selecting” a message layout (claim 12, 17, 37, 41, and 42);
`“select” message format and a message layout”(claim 1, 9, 28, 39,
`and 40)
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`We did not construe this term for the purposes of the Decision on
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`Institution. See generally Dec. on Inst. After institution, Patent Owner
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`proposes in its Patent Owner Response that the term “select” should be
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`construed to mean “to pick out as a choice among several.” PO Resp. 26.
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`Patent Owner adds that in the context of the media block, “selecting”
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`requires “picking a format and layout from a fixed set of choices.” Id. at 28.
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`At the oral hearing, Patent Owner further clarified that the “construction
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`could just as easily be making a selection from a set of choices.” Tr. 33:11–
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`12. In its Reply, Petitioner argues that “select” should be construed to mean
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`“decide” or “determine” and does not require selection from a fixed set of
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`choices. Pet. Reply 4. Our discussion below refers to claim 12 as
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`illustrative of the same term used in the other challenged claims.
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`Based on the complete record, we determine that the term “select”
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`when applied to the selection of a message layout/format means
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`“determine.” Petitioner argues persuasively that the ’475 patent describes
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`the selection of a message layout or format by determining the layout or
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`format using information received in the incoming message. Specifically,
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`the ’475 patent discloses that the message system receives a message and
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`makes a delivery decision based on information, such as metadata, received
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`with the message. Ex. 1001, 16:51–17:1. The delivery decision includes
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`“delivery instructions with regard to destination device(s) and/or content
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`and/or format and/or layout of the message to be to be delivered.” Id. at
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`16:63–65. The delivery instructions may be received with and extracted
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`from the message. Similarly, with regard to Figure 8, the ’475 patent
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`teaches that the message manager receives a message, and queries the
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`originating and destination devices to obtain delivery instructions that
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`provide the message format and layout, which match the destination device
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`or client. Id. at 18:31–45. In this manner, the described system does not
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`select a layout/format from a fixed set of layout/format choices, but
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`determines the format/layout based on information provided in delivery
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`instructions.
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`Additionally, we agree with Petitioner that the term does not require
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`fixed choices. Pet. Reply 5–6. Patent Owner relies on a particular
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`embodiment of the ’475 patent where delivery instructions issued by the
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`messaging system are based “on pre-defined rules and parameters (e.g., in a
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`form of a look-up table).” PO Resp. 27 (citing Ex. 1001, 21:8–12).
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`However, as Petitioner points out, the ’475 patent teaches that a “pre-defined
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`layout” may be “further pre-defined in accordance with information to be
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`obtained with regard to certain filled field, format of selected media items,
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`etc.” Ex. 1001, 21:5–8. Even in the context of a “pre-defined layout,” the
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`layout is not fixed or static, and further allows for the determination of a
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`layout based on information contained in the message.
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`Furthermore, our construction is consistent with the ’475 patent’s use
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`of the term in the written description and claims. For example, Petitioner
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`observes that the term “select” can be used to mean making a choice from a
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`limited set of options when applied to a “group” of options. Pet. Reply 8.
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`Specifically, Petitioner argues that
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`a subsequent limitation in claim 1 recites conversion of the
`message “in accordance with at least one criterion selected from
`a group comprising,” followed by three identified criteria.
`(’475, 23:23-34 (emphasis added).) This language would have
`indicated to a person of ordinary skill in the art that the
`applicant knew how to use the verb “select” in the narrower
`context of choosing from a limited set of options. (Klausner
`Reply Decl., ¶ 17.)
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`Id. In other words, the use of “select” in connection with a limited set of
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`options includes the options for selection from the “group.” However, in
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`contrast, no such set of options is recited in the claim language when a
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`message layout/format is selected. This distinction in the use of the term
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`“select” is further supported by other occurrences of the term in the written
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`description, which provides, for example, that subscribers may “select”
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`between options such as “Yes/No” buttons and media items.