throbber
United States Patent and Trademark Office
`Patent Trial and Appeal Board
`
`WhatsApp Inc. and Facebook, Inc.
`v.
`TriPlay, Inc.
`
`IPR2016-00717
`IPR2016-00718
`Petitioners’ Demonstratives
`Supplemental Oral Hearing
`March 5, 2019
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`Claim 1
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`2
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`Claim 6
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`3
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`Observations from the Federal Circuit
`
`• “There is no dispute that Coulombe discloses a majority of
`the claim limitations, with the exception of two limitations:
`adaptation of video objects (a limitation petitioners find in
`Bellordre) and clickable icons (a limitation petitioners
`find in Friedman).”
`WhatsApp, Inc., et al. v. TriPlay, Inc.,
`Nos. 2017-2549, 2017-2551, 2018 WL 5962733, at *2 (Fed. Cir. Nov. 14, 2018) (emphasis added).
`
`• “Together, Coulombe, Bellordre, and Friedman disclose all
`the limitations of the ’677 patent.”
`
`Id. (emphasis added).
`
`• TriPlay also conceded this at the first oral hearing before
`the PTAB.
`
`(06/12/2017 Tr. at 65:17-66:8.)
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`What Remains to be Resolved by the Board
`
`• As explained by the Federal Circuit:
`
`• “Accordingly, we vacate the Board’s nonobviousness decision
`and remand for further consideration of the motivation to
`combine the clickable icons of Friedman with Coulombe
`and Bellordre.”
`
`WhatsApp, Inc., et al. v. TriPlay, Inc.,
`Nos. 2017-2549, 2017-2551, 2018 WL 5962733, at *4 (Fed. Cir. Nov. 14, 2018) (emphasis added).
`
`• As explained by the Board:
`
`• “[T]he Federal Circuit … remanded for further consideration
`the motivation to combine the clickable icons of Friedman with
`Coulombe and Bellordre.”
`
`Order, Paper 44, at 2.
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`Bellordre Discloses Generating a “Representative
`Image” Based on the Video
`
`(Bellordre, Fig. 4; see also 717 Petition (Paper 1) at 27-28; 718 Petition (Paper 1) at 33-34.)
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`Bellordre Discloses Generating a “Representative
`Image” Based on the Video (cont’d)
`
`(Bellordre, ¶¶63, 102, Fig. 4; see also 717 Petition (Paper 1) at 27-28; 718 Petition (Paper 1) at 33-34.)
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`7
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`Bellordre Discloses Generating a “Representative
`Image” Based on the Video (cont’d)
`
`• “Bellordre already discloses something akin to a
`graphical
`icon, i.e. a ‘representative image’ of a
`video that can be inserted into an adapted
`message layout.”
`
`(717 Reply (Paper 26) at 22 (citing 717 Petition, at 27-28);
`718 Reply (Paper 28) at 22 (citing 718 Petition, at 33-34).)
`
`• “Bellordre does not disclose that the representative
`image itself is ‘clickable,’ as required by the claim,
`but this is where Friedman comes in.”
`(717 Reply (Paper 26) at 22;
`718 Reply (Paper 28) at 22.)
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`8
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`Friedman Discloses a “Thumbnail Graphic
`Representation” that is Clickable
`
`(Friedman, Fig. 4, 7:19-21, 9:21-25, 4:31-35; see also 717 Petition (Paper 1) at 21-23, 27-28;
`718 Petition (Paper 1) at 27-29, 33-34.)
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`9
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`Motivation to Combine Friedman’s Clickable
`Icons with Coulombe and Bellordre
`
`• “[I]t would have been obvious to insert the clickable thumbnail
`graphic (‘clickable icon’) taught by Friedman within the adapted
`message layout according to the method disclosed in Bellordre.”
`(717 Petition (Paper 1) at 28; 718 Petition (Paper 1) at 34.)
`
`in the art would have appreciated that
`• “One of ordinary skill
`generating a clickable thumbnail graphic would allow for
`straightforward access to a video attached to a message
`transported by the Coulombe messaging system.”
`(Klausner Opening (Ex. 1002), ¶74; 717 Petition (Paper 1) at 25;
`718 Petition (Paper 1) at 31.)
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`10
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`Motivation to Combine Friedman’s Clickable
`Icons with Coulombe and Bellordre (cont’d)
`
`in the art would have been motivated to
`• “[O]ne of ordinary skill
`apply the teachings of Friedman on associating a thumbnail
`graphic with a video to the adapted video of Bellordre, such that
`the video adapted to the displaying capabilities to the recipient’s
`device can be opened at the recipient’s device upon clicking.”
`(Klausner Opening (Ex. 1002), ¶75; 717 Petition (Paper 1) at 25;
`718 Petition (Paper 1) at 31.)
`
`• The advantage of Friedman’s clickable thumbnail graphic is self-
`explanatory – it makes it possible to view a video object by
`clicking on an icon.
`
`(717 Reply (Paper 26) at 23; 718 Reply (Paper 28) at 23;
`Klausner Reply (Ex. 1028/1128), ¶45;
`Klausner Depo. (Ex. 2008/2108), 106:21-107:5, 106:2-6.)
`
`11
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`Motivation to Combine Friedman’s Clickable
`Icons with Coulombe and Bellordre (cont’d)
`
`• Patent Owner’s expert admits:
`
`• “Friedman describes using clickable icons as a way to
`give unsophisticated users easier access to the
`received attachments.”
`(Surati (Ex. 2107), ¶100; 718 Patent Owner Response (Paper 23) at 58.)
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`Motivation to Combine Friedman’s Clickable
`Icons with Coulombe and Bellordre (cont’d)
`
`in the art would have appreciated that
`• “[O]ne of ordinary skill
`pictorial icons would have been particularly advantageous in the
`messaging context of Coulombe and Bellordre. This is because
`they allow a message recipient to make a more informed
`decision of whether he or she wants to download the video
`from the messaging server,
`thereby conserving device and
`network resources.”
`
`(Klausner Reply (Ex. 1028/1128), ¶48.)
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`Motivation to Combine Friedman’s Clickable
`Icons with Coulombe and Bellordre (cont’d)
`
`fundamental
`icons was
`clickable graphical
`• The use of
`knowledge to persons of ordinary skill, as reflected in their
`prevalence on user computer desktops and on the Web.
`(717 Petitioner Reply (Paper 26) at 23; 718 Petitioner Reply (Paper 28) at 23; Klausner Reply (Ex.
`1028/1128), ¶¶46-47.)
`
`• As with the addition of a video object to a message, this was an
`exceedingly simple combination, and it would not have required
`the experience of a skilled artisan to appreciate the clear benefits
`of this combination.
`(717 Petitioner Reply (Paper 26) at 23; 718 Petitioner Reply (Paper 28) at 23; Klausner Reply (Ex.
`1028/1128), ¶45.)
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`Observations by the Federal Circuit
`
`•
`
`•
`
`•
`
`“[P]etitioners presented expert testimony from Mr. Klausner that the advantage
`of Friedman’s clickable thumbnail graphic is self-explanatory – it makes it
`possible to view a video object by clicking on an icon.”
`
`“He explained that this was a simple combination that would not have required
`even the experience of a skilled artisan to appreciate the clear benefits of this
`combination.”
`
`“Mr. Klausner further testified that combining the clickable icons of Friedman
`with Coulombe and Bellordre would have been viewed as particularly
`advantageous because one of ordinary skill in the art would have appreciated
`that pictorial icons allow a message recipient to make a more informed
`decision of whether he or she wants to download the video from the
`messaging server, thereby conserving device and network resources.”
`
`•
`
`“The Board has not addressed this testimony.”
`
`WhatsApp, Inc., et al. v. TriPlay, Inc., Nos. 2017-2549, 2017-2551, 2018 WL 5962733, at *4 (Fed.
`Cir. Nov. 14, 2018) (internal citations, quotation marks, and ellipses omitted) (emphasis added).
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`Patent Owner’s Arguments
`
`•
`
`“The motivations Petitioner offers for combining Coulombe with Friedman are conclusory
`and inadequate. … [T]he Friedman processing system generates clickable icons, but it
`only does so based on receiving video attachments. … Coulombe discloses a system in
`which video streams are received, processed and delivered, and such streams are not
`video attachments. Having failed to consider Coulombe’s existing video streaming
`capabilities, Petitioner has also failed to explain how Coulombe would be combined with
`Friedman to generate a ‘clickable icon’ for a video stream.” (718 Patent Owner Response
`(Paper 23) at 46 (underlining in original) (internal citations omitted).)
`
`• This mischaracterizes Petitioner’s proposed combination.
`(Paper 26) at 23-24; 718 Petitioner Reply (Paper 28) at 23-24.)
`
`(717 Petitioner Reply
`
`• As the Federal Circuit acknowledged, the petitioners’ theory was that one skilled in
`the art would have been motivated to combine the video objects of Bellordre with
`the method of Coulombe ….” WhatsApp, Inc., et al. v. TriPlay, Inc., Nos. 2017-2549,
`2017-2551, 2018 WL 5962733, at *2 (Fed. Cir. Nov. 14, 2018) (emphasis added).
`
`16
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`Patent Owner’s Arguments (Cont’d)
`
`•
`
`•
`
`in which messages from various sources are
`“Friedman discloses an email client
`displayed. Coulombe is not a messaging client. Coulombe does not relate to a user’s
`inbox in connection to an email system.”
`(718 Patent Owner Response (Paper 23) at 51
`(internal citations omitted).)
`
`“Petitioner articulates no rationale for modifying Coulombe's Message Adaptation Engine
`20 in a way that
`incorporates Friedman's attachment processing system as well as
`Bellordre's audiovisual processing module and streaming server module, nor does
`Petitioner explain how a combination of these elements would predictably result in a
`relevant disclosure.”
`(718 Patent Owner Response (Paper 23) at 56 (internal quotation
`marks omitted).)
`
`• The test for obviousness is not whether the features of a secondary reference may
`be bodily incorporated into the structure of
`the primary reference, but rather,
`whether a skilled artisan would have been motivated to combine the teachings of the
`prior art references to achieve the claimed invention. Allied Erecting & Dismantling
`Co., Inc. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016); In re
`Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012).
`(See also 717 Petitioner Reply
`(Paper 26) at 24; 718 Petitioner Reply (Paper 28) at 24.)
`
`17
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`Patent Owner’s Arguments (cont’d)
`
`•
`
`“Friedman describes a client-side email program that would allow message recipients to
`better manage their email boxes. The Petition points to nothing in Friedman (and, indeed,
`there is nothing) that would suggest that the problems Friedman was trying to solve in
`creating icons had anything to do with converting the formats of attachments. Nor does
`Friedman suggest any need for such a capability.”
`(718 Patent Owner Response (Paper
`23) at 54-55 (internal citations omitted).)
`
`• Petitioner never cited Friedman for format conversion features. Petitioner cites
`Bellordre, not Friedman, for format conversion of the video.
`(717 Petitioner Reply
`(Paper 26) at 24-25; 718 Petitioner Reply (Paper 28) at 24-25.)
`
`• See also In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-
`obviousness cannot be established by attacking references individually where the
`rejection is based upon the teachings of a combination of references.”).
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`The End
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`CERTIFICATE OF SERVICE
`
`
`I hereby certify, pursuant to 37 C.F.R. Section 42.6, that a complete copy of
`
`the attached DEMONSTRATIVE EXHIBIT and related documents, are being
`served via electronic mail on the 26th day of February, 2019, upon the counsel of
`record for the patent owner as follows:
`
`Barry Schindler
`SchindlerB@gtlaw.com
`Greenberg Traurig LLP
`njdocket@gtlaw.com
`
`Jeremy J. Monaldo
`Fish & Richardson PC
`monaldo@fr.com
`
`
`
`DATED: February 26, 2019
`
`/ Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
`
`
`
`COOLEY LLP
`Patent Docketing
`1299 Pennsylvania Ave. NW, Suite 700
`Washington, D.C. 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
`  
`
`
`
`1
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