Petitioner’s Reply in Support of Petition
`IPR2016-00717
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`WhatsApp, Inc. and Facebook, Inc.
`Petitioner
`
`v.
`
`TriPlay, Inc.
`Patent Owner
`
`Inter Partes Review Nos. IPR2016-00717
`U.S. Patent No. 8,874,677
`
`
`
`PETITIONER’S REPLY
`
`
`
`
`
`
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`
`
`IPR2016-00717
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`WhatsApp, Inc. and Facebook, Inc.
`Petitioner
`
`v.
`
`TriPlay, Inc.
`Patent Owner
`
`Inter Partes Review Nos. IPR2016-00717
`U.S. Patent No. 8,874,677
`
`
`
`PETITIONER’S REPLY
`
`
`
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`Table of Contents
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`Page
`
`
`I.
`II.
`
`2.
`
`INTRODUCTION .......................................................................................... 1
`THE PATENT OWNER’S MERITLESS CHALLENGE TO THE
`COMBINATION OF COULOMBE AND BELLORDRE SHOULD
`BE REJECTED ............................................................................................... 2
`A.
`The Patent Owner’s Reliance on SIP Streaming Video Fails .............. 6
`1.
`SIP Streaming Video Transcoding Does Not Adapt
`Videos for Display Characteristics ............................................ 7
`SIP Streaming Video Is Also Fundamentally Different
`From Coulombe’s Messaging System ..................................... 11
`The Petition Provided Sufficient Explanation for the Proposed
`Combination and Was Not Obligated to Affirmatively Rebut
`the Patent Owner’s Meritless Arguments About Use of SIP
`Streaming Video Transcoding in Coulombe ...................................... 15
`The Patent Owner’s Attack on Mr. Klausner’s Credibility is
`Unwarranted and Baseless ................................................................. 18
`III. THE PATENT OWNER’S MERITLESS CHALLENGE TO THE
`COMBINATION OF COULOMBE, BELLORDRE AND
`FRIEDMAN SHOULD BE REJECTED ..................................................... 21
`IV. CONCLUSION ............................................................................................. 25
`
`B.
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`C.
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`
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`-i-
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`Petitioner’s Reply in Support of Petition
`IPR2016-00717
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`List of Exhibits
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`Currently Filed
`
`Exhibit No.
`1028
`1029
`
`Title of Document
`Reply Declaration of David Klausner (“Klausner Reply”)
`
`Transcript of the Deposition of Rajeev Surati, Ph.D. (taken on
`March 10, 2017) (“Surati Depo.”)
`
`1030
`1031
`1032
`
`1033
`
`1034
`
`1035
`
`Microsoft Computer Dictionary (3rd ed. 1997)
`
`Microsoft Computer Dictionary (5th ed. 2002)
`
`WayBackMachine capture of “Wireless Services Articles” dated
`June 29, 2005
`
`Lih, The Role of Wireless Telecommunications in the Age of Digital
`Media: USA (Dec. 2003)
`
`Design & Reuse, T-Mobile offers video messaging service based on
`Hantro video technology (Sept. 26, 2002)
`
`Korea Times, Samsung Launches Marketing Campaign for “Matrix
`Reloaded” (May 1, 2003)
`
`1036
`
`Master Visually HTML 4 and XHTML 1 (2000)
`
`Previously Filed
`
`Exhibit No.
`1001
`
`Title of Document
`U.S. Patent No. 8,874,677 to Gil Rosen et al. (“’677” or “the ’677
`patent”)
`
`1002
`1003
`
`Declaration of David Klausner (“Opening Declaration”)
`
`U.S. Patent App. Pub. No. 2003/0236892 to Stephane Coulombe
`(“Coulombe”)
`
`ii
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`Petitioner’s Reply in Support of Petition
`IPR2016-00717
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`List of Exhibits
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`
`
`
`
`Exhibit No.
`1004
`
`Title of Document
`U.S. Patent App. Pub. No. 2006/0176902 to Bellordre et al.
`(“Bellordre”)
`
`1005
`1006
`1007
`1008
`
`1009
`
`1010
`1011
`1012
`
`1013
`1014
`1015
`
`1016
`
`1017
`
`1018
`1019
`
`U.S. Patent App. No. 7,593,991 to Friedman et al. (“Friedman”)
`
`U.S. Patent App. Pub. No. 2006/0069790 to Surana (“Surana”)
`
`U.S. Patent App. Pub. No. 2003/0084405 to Ito et al. (“Ito”)
`
`Meyer, Cascading Style Sheets: The Definitive Guide (2nd ed. 2004)
`(“Meyer”), pp. 1-22, 88-89, 91, 361-84
`
`John F. Meech et al., A Multi-Agent System for Personal Messaging
`(2000) (“Meech”)
`
`U.S. Patent No. 6,167,441 to Maria Azua Himmel (“Himmel”)
`
`5/18/12 Reply to Office Action
`
`Library of Congress Online Catalog – Item Information for Meyer,
`Cascading Style Sheets: The Definitive Guide (2nd ed. 2004)
`(“Meyer LoC Record”), retrieved February 24, 2016
`
`U.S. Patent App. Pub. No. 2003/0208547 to Branimir (“Branimir”)
`
`U.S. Patent No. 6,728,757 to Friend (“Friend”)
`
`Tittel et al., More HTML for Dummies (2nd ed. 1997) (“Tittel”), pp.
`1, 4, 17, 57-84, 262, 362
`
`Random House Concise Dictionary of Science & Computers (2004)
`(“Random House Dictionary”), pp. 646-47
`
`Newton’s Telecom Dictionary (22nd ed. 2006) (“Newton
`Dictionary”), p. 911
`
`U.S. Patent No. 8,181,104 to Helfand et al. (“Helfand”)
`
`Bodic, Multimedia Messaging Service: an Engineering Approach to
`
`iii
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`Petitioner’s Reply in Support of Petition
`IPR2016-00717
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`List of Exhibits
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`Exhibit No.
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`Title of Document
`MMS (2003) (“Bodic”), p. 106
`
`1020
`
`1021
`
`1022
`1023
`
`1024
`1025
`1026
`1027
`
`Oxford: A Dictionary of Computing (5th ed. 2004) (“Oxford
`Dictionary”), pp. 306-07, 524-45
`
`The Authoritative Dictionary of IEEE Standards Terms (7th ed.
`2000) (“IEEE Dictionary”), p. 640
`
`Mark Weinstein Biography
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`Mark Weinstein Declaration ISO Motion for Pro Hac Vice
`Admission
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`Reuben Chen Biography
`
`Reuben Chen Declaration ISO Motion for Pro Hac Vice Admission
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`Biography of Yuan Liang
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`Declaration of Yuan Liang ISO Motion for Pro Hac Vice Admission
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`iv
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`Petitioner’s Reply in Support of Petition
`IPR2016-00717
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`I.
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`INTRODUCTION
`The patent owner does not dispute that the prior art references cited in the
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`Petition, i.e. Coulombe, Bellordre, and Friedman, disclose each element of each
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`instituted claim. The patent owner instead asserts that one of ordinary skill in the
`
`art would not have been motivated to combine those references. The patent owner
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`is wrong.
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`The patent owner’s primary argument is that one of ordinary skill in the art
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`would have had no reason to adapt Bellordre’s video delivery and adaptation
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`techniques to the messaging system of Coulombe. The patent owner claims that
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`Bellordre would have been unnecessary because Coulombe already discloses the
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`existence of SIP streaming video techniques for adapting and delivering video
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`content. But as explained in detail below, Coulombe expressly teaches away from
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`using those existing techniques because they (a) do not operate in the context of
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`non-session-based messaging applications, and (b) do not adapt video content
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`based on the recipient’s display characteristics. Bellordre, on the other hand,
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`specifically discloses a video delivery system that does not suffer from either of
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`these shortcomings. Because the existing SIP streaming video techniques alluded
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`to in Coulombe would not have been applicable to Coulombe’s messaging
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`application, they would not have discouraged a person of ordinary skill in the art
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`from adapting the video delivery and adaptation techniques in Coulombe.
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`The patent owner’s remaining arguments against combinability rely on
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`distraction and obfuscation. The patent owner and its expert repeatedly attempt to
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`characterize the combination of Coulombe, Bellordre, and Friedman in a
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`convoluted fashion, and then, argue that the Petitioner did not provide a sufficient
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`motivation to combine under the patent owner’s false characterization. But as
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`shown below, the combination was straightforward, both conceptually and
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`technologically.
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`II. THE PATENT OWNER’S MERITLESS CHALLENGE TO THE COMBINATION OF
`COULOMBE AND BELLORDRE SHOULD BE REJECTED
`It is hard to imagine a clearer case of obviousness than enhancing the
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`messaging system in Coulombe based on the video object teachings in Bellordre.
`
`Coulombe itself makes clear that messages can contain text and still graphical
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`images. (Coulombe, ¶¶0094-0103 (describing Figure 2 showing a message
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`containing text, two JPEG images, and one GIF image).) It would have required
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`no leap of inventiveness to understand that adding video to Coulombe’s messages
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`would have made them more compelling and impactful. The Petition explained
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`that “[t]he motivation to add video capability is self-evident—people have long
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`understood that video information (such as television and motion pictures) can
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`provide a more powerful message than text or still photos.” (Petition, at 17 (citing
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`Ex. 1002, ¶64).) The patent owner’s expert does not dispute this. (Ex. 1029,
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`Surati Depo., 48:13-25.) It does not take a person of ordinary skill in the art to
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`understand this motivation. If a picture is worth a thousand words, then a video is
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`worth at least a million.
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`The patent owner attempts to undermine this combination through a
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`misleading “deep dive” into the technology behind the Session Initiation Protocol
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`(SIP), the protocol used in Coulombe to deliver messages. But the evidence
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`provided by the patent owner, including testimony of its expert, confirms the
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`propriety of the combination of Coulombe with Bellordre.
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`For example, the patent owner’s expert provided a copy of the industry
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`standard specifically referenced in Coulombe that explains how to use SIP to send
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`and receive instant messages. (Ex. 2004; Coulombe, ¶0069 (referring to Ex.
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`2004); Surati Depo., 14:15-15:4.) That standard is known as the Session Initiation
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`Protocol for Instant Messaging, or “SIMPLE” for short. (Ex. 2007, Surati Decl.,
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`¶33.) Although Coulombe is not limited to “instant” messaging, the SIMPLE
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`standard provides insight into the knowledge of persons of ordinary skill in the art
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`regarding how to use SIP in a messaging system. (Ex. 1028, Klausner Reply, ¶5.)
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`The SIMPLE standard confirms that it would have been technologically
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`trivial for a message sent using SIP (such as a message in Coulombe) to include a
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`video. This would have involved nothing more than use of the same well-known
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`technology for attaching files to email messages, a technology familiar to just
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`about anyone who has ever used email. (Klausner Reply, ¶¶5-8.)
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`In particular, the SIMPLE standard states that the content of a SIP message
`
`to be delivered “can be of any MIME type.” (Ex. 2004, at 0004, § 6).1 “MIME,”
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`which stands for Multipurpose Internet Mail Extensions, is an industry standard
`
`dating back to the 1990s that specifies how to attach files to email messages.
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`(Surati Depo., 19:12-20:3; Klausner Reply, ¶¶6-7.) As the patent owner’s expert
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`explained in deposition, MIME allows a message to be divided into parts, each part
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`capable of carrying a different type of information. (Surati Depo., 15:17-17:6;
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`Klausner Reply, ¶6.) Accordingly, a single MIME message can carry a variety of
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`different types of data, including text, graphic images and, yes, video. (Surati
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`Depo., 17:8-13, 19:2-9 (“Q. So obviously the body of a message sent via the SIP
`
`extension for instant messaging could include, for example, a video file, right? A.
`
`It could.”); Klausner Reply, ¶7.)
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`The patent owner’s own evidence thus confirms how technologically
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`straightforward the combination of Coulombe and Bellordre would have been. Far
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`from being “hindsight driven,” as the patent owner repeatedly asserts, the
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`combination would have simply involved attaching a video to a message using
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`longstanding and well-known MIME message encoding techniques.
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`
` 1
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` All underlining has been added for emphasis.
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`The patent owner’s expert flailed at his deposition to find fault with this
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`straightforward combination. He acknowledged that “it is possible to probably put
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`a video into a message,” but speculated that a limit on the size of a message may
`
`exist, making attachment of video infeasible as a practical matter. (Surati Depo.,
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`26:12-16.) But when pressed, the patent owner’s expert admitted that he was not
`
`sure if SIMPLE itself actually imposed any limit on message size, and later,
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`admitted that he was not sure if such a limit even existed. (Id., 25:18-27:25, 44:6-
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`45:9.) This is because no such limit exists. (Klausner Reply, ¶¶9-11.)
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`In fact, Coulombe itself teaches away from any limit on the size of incoming
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`messages. Coulombe discloses a “[m]essage size adaptation” technique that can be
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`used to “reduc[e] the overall message size” to ensure that a message is “able to
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`reach the recipient.” (Coulombe, ¶¶0090, 0007; see also id. ¶¶0002, 0063, 0114.)
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`A limit on the size of an incoming message would therefore have been entirely
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`unnecessary; if the incoming message was too large, the messaging system in
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`Coulombe could use its message size adaptation technique to reduce the image to
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`an appropriate size. (Klausner Reply, ¶10.) The SIMPLE standard similarly
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`refutes any suggestion of such a limit by stating while a server may elect to reject
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`SIP messages “that are too long,” what qualifies as “too long” is “a matter of local
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`configuration.” (Id., ¶11 (citing Ex. 2004, at 0008, § 7.5).) Nothing in Coulombe
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`or the SIMPLE standard suggests any limit that would preclude a message from
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`including a video object as described in Bellordre.
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`Moreover, claim 1 (which the patent owner treats as representative) merely
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`requires that “the initial message includes a video,” and does not require that the
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`video be lengthy – it could just be a clip. (’677, 19:54-57 (“…multimedia message
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`comprising one or more media items (e.g., …video clips).”).) As the patent
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`owner’s expert admitted, the size of a video file depends on its length and
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`resolution, and could be just a few frames in length. (Surati Depo., 20:23-21:19.)
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`Moreover, by the 2005 priority date of the ’677 patent, sending videos with
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`messages was commonplace. (Klausner Reply, ¶14 (citing Exs. 1032-1035).) This
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`is confirmed by Bellordre, which states in its “Background” that MMS messages
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`(commonly sent using mobile phones) can include video objects. (Bellordre,
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`¶0004; see also Surati Depo., 47:25-49:17, 49:21-24.) The patent owner has no
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`legitimate basis to challenge this combination. (See Klausner Reply, ¶¶13-16.)
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`A. The Patent Owner’s Reliance on SIP Streaming Video Fails
`The patent owner nevertheless argues that a person of ordinary skill in the
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`art would not have been motivated to combine Coulombe with Bellordre’s
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`teachings that a message could include a video object. The patent owner argues
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`that Request for Comments (RFC) 2543, another industry standard mentioned in
`
`Coulombe relating to SIP, already provides a technique for processing and sending
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`streaming video data. This capability, according to the patent owner, would have
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`IPR2016-00717
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`made it unnecessary to rely on Bellordre to provide video delivery capabilities.
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`But one of ordinary skill in the art would have had to look no further than
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`Coulombe itself to understand the fatal flaws in the patent owner’s argument. The
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`sole reference to video content in Coulombe appears in Paragraph 69, which
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`mentions use of existing SIP proxies to transcode video content, but actively
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`discourages their use:
`
`It is said in SIP that proxies may transcode content.
`However, the scope of this claim was mainly for
`multimedia sessions (audio or video calls) where codecs
`or the bandwidths between users don’t match. In that
`case, the proxy can use the information in SDP to “fill
`the gap” between the two terminals. There is no mention
`that such adaptation could take place for messaging
`applications and no mention that it should be based on
`recipient’s terminal characteristics.
`
`(Coulombe, ¶0069.) The underlined sentence above identifies at least two clear
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`reasons why one of ordinary skill in the art would not have used existing SIP
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`steaming video techniques to transcode video content for Coulombe’s messaging
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`system. Those two reasons are discussed below.
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`1.
`
`SIP Streaming Video Transcoding Does Not Adapt Videos
`for Display Characteristics
`Coulombe discloses a message adaptation technique that can adapt a
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`message to conform to the display capabilities of the recipient’s terminal.
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`(Coulombe, ¶¶0007, 0086, 0088, 0089.) For example, message adaptation can
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`include “any modification of the media characteristics, including resolution
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`reduction of images for small displays, reducing the quality of JPEG images or the
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`number of colors in GIF images.” (Id., ¶0088.) Because Coulombe discloses
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`adaptation of image content, but not video content, the Petition cited to Bellordre.
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`(Petition, at 16-17.) Bellordre teaches a technique for processing a video object
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`that “entails the format[ing] of its sequence, modifying its size (number of pixels)
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`to adapt it to the size of the screen of the terminal 10…” (Bellordre, ¶0062.)
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`The block-quoted passage from Paragraph 69 of Coulombe above makes
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`clear that existing SIP techniques did not adapt video based on the display
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`capabilities of the recipient’s terminal. The paragraph flat out says, in fact, that
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`SIP provides no ability to adapt streaming video “based on the recipient’s terminal
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`characteristics.” (Coulombe, ¶0069.) As the patent owner’s expert admitted, the
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`“terminal characteristics” referenced in this paragraph would have included the
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`size of the device’s display. (Surati Depo., at 65:19-22 (“Q. So an example of the
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`recipient’s terminal characteristics [in Coulombe ¶0069] would be the size of the
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`display, correct? A. That’s fair.”).)
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`And therein lies the problem. Claim 1 requires a conversion that generates
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`“an adapted version of the video [that] is adapted to the displaying capabilities of
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`the destination communication device.” (’677, 23:44-46 (Claim 1).) Paragraph 69
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`of Coulombe confirms that existing transcoding techniques used with SIP simply
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`did not do this. Those techniques therefore could not have provided the solution
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`taught by Bellordre – adaptation of video based on the characteristics of the
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`recipient’s display. (Bellordre, ¶0062.)
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`In fact, Paragraph 69 of Coulombe makes clear that existing transcoding
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`techniques used in the context of SIP streaming video only addressed the situation
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`in which “codecs or the bandwidths between users don’t match.” (Coulombe,
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`¶0069.) Neither the “codec” nor the “bandwidth” of a client device has anything to
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`do with the characteristics of its display, such as screen size. The term “codec”
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`simply refers to software for encoding or decoding a data stream, such as
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`compressed audio and/or video data. (Klausner Reply, ¶¶23-24.) The scenario in
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`which “codecs… between users don’t match” occurs when the sender’s terminal
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`seeks to encode video into a format (e.g. MPEG) that the recipient’s terminal
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`cannot decode. (Surati Depo., 32:9-33:5.) The other scenario identified in
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`Coulombe, in which “bandwidths between users don’t match” (Coulombe, ¶0069),
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`simply means that the sender and recipient have network connections of different
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`speeds. (Surati Depo., 33:6-22.) A “transcoding” proxy can deal with these
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`differences by adapting streaming video based on the recipient’s codec and
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`bandwidth. (Id., 33:23-34:15.)
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`But a recipient device’s “codec” and “bandwidth” have nothing to do with
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`its display characteristics. For example, knowing that the recipient’s device
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`supports the MPEG video codec tells the server nothing about the characteristics of
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`the recipient’s display. The server could not determine, for example, if the
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`recipient’s device was a desktop computer with a full size monitor, or a handheld
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`computer with a small display. Similarly, bandwidth relates only to the quality and
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`speed of the device’s network connection, not the size or other characteristics of its
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`display. (Klausner Reply, ¶24.) The patent owner’s expert acknowledged both of
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`these points at his deposition:
`
`Q. Okay. So because obviously the bandwidth and the
`codec, those factors that are independent of, you know, what
`the device is that you are using to receive the content, correct?
`A.
`I think so.
`Q.
`I mean, so you can’t tell from the STP [sic; SDP] data
`that’s provided pursuant to RFC 2543 whether the device is a
`handheld device or a computer, correct?
`A.
`I think that would be difficult.
`Q. Okay. Because they could both support the same
`protocols and the same bandwidth, correct?
`A.
`Sure.
`Q. And the same codecs?
`A. Yes.
`
`(Surati Depo., 42:3-19.)
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`RFC 2543 does not specify that SIP proxies know anything about the
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`characteristics of the recipient’s display terminal. This is why Coulombe says that
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`“[t]here is no mention [in SIP] that such adaptation… should be based on
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`recipient’s terminal characteristics.” (Coulombe, ¶0069.) In fact, one of ordinary
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`skill in the art would have read that statement in Coulombe as affirmatively
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`discouraging the application of existing transcoding techniques used for SIP
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`streaming video because they do not address a problem Coulombe’s Message
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`Adaptation Engine seeks to solve. (Klausner Reply, ¶25.) Because SIP stream
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`transcoding techniques that existed would not have provided the functionality of
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`Bellordre, those techniques would have presented no barrier to Bellordre’s
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`combination with Coulombe. (Id., ¶¶19-25.)
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`2.
`
`SIP Streaming Video Is Also Fundamentally Different
`From Coulombe’s Messaging System
`Paragraph 69 of Coulombe expressly discloses a second compelling reason
`
`to not use existing SIP streaming video transcoding – “[t]here is no mention that
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`such adaptation could take place for messaging applications…” (Coulombe,
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`¶0069.) This statement from Coulombe relates to a fundamental distinction
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`acknowledged (but not adequately addressed) by the patent owner – the difference
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`between “session-based” and “non-session-based” communications in SIP.
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`Session-based communications in SIP are used for streaming media
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`delivery. As explained by the patent owner’s expert, in a session-based
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`communication, “you establish a session and there is a constant stream of data
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`going at least one way.” (Surati Depo., 10:7-13.) For example, a SIP session
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`could be created to perform real-time audio or video calls, which is the example
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`mentioned in Coulombe. (Id., 10:14-11:2; Coulombe, ¶0069 (“multimedia
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`sessions (audio or video calls)”).) As the patent owner’s expert acknowledged,
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`transcoding of streaming video, as mentioned in Coulombe, occurs in the context
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`of session-based SIP. (Surati Depo., at 31:8-25.)
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`But the SIP messaging technique in Coulombe cited by Petitioners is non-
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`session-based. (Ex. 2007, Surati Decl., ¶33; Surati Depo., at 12:3-14:4.) As the
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`patent owner’s expert explains, “SIP instant messages ‘do not create any implied
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`session’ or have ‘any concept of call state.’” (Surati Decl., ¶33 (quoting Ex. 2004,
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`at 5).) The reason is straightforward. In a messaging (and not streaming) context,
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`“your job is to get a message from point A to point B and that’s it. It is more
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`similar to kind of a discrete transaction as opposed to a continuous transaction that
`
`might last for a while.” (Surati Depo., 13:10-15.) A SIP “session” is unnecessary
`
`in this context because the timing of messages is neither steady nor predictable.
`
`For example, a sender could send a first message to a recipient, and then wait a few
`
`days before sending a second message, or may never send a second message. (Id.,
`
`at 13:16-14:4; id., at 12:19-25.)
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`12
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`Petitioner’s Reply in Support of Petition
`IPR2016-00717
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`The fundamental distinction between session-based and non-session-based
`
`techniques is yet another reason why the patent owner’s reliance on existing SIP
`
`streaming video transcoding techniques is without basis. Although Coulombe
`
`mentions existing SIP streaming video transcoding techniques, it actively
`
`discourages their use by explaining that “[t]here is no mention that such adaptation
`
`could take place for messaging applications…” (Coulombe, ¶0069.) This is
`
`because transcoding of streaming video requires a session, which does not exist
`
`when SIP is being used for the non-session-based messaging application taught by
`
`Coulombe. (Surati Decl., ¶33; Klausner Reply, ¶29.) As the patent owner’s expert
`
`acknowledged, “existing SIP functionality for adapting content for ‘session’
`
`communications could not be used for non-sessions communications.” (Surati
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`Decl., ¶34.)
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`The patent owner identifies absolutely nothing in Coulombe suggesting that
`
`its messaging system was designed to rely on existing transcoding techniques, used
`
`for streaming video, to adapt message objects for Coulombe’s messaging
`
`application. Video streams are not video objects. (Surati Decl., ¶80.) And in fact,
`
`all incoming messages in Coulombe that can be adapted are routed through
`
`Coulombe’s own Message Adaptation Engine 20, which adapts the message for the
`
`receiving terminal. (Coulombe, ¶¶0058, 0063.) Coulombe makes clear that its
`
`message adaptation engine is an extension to, rather than a use of, preexisting SIP
`13
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`Petitioner’s Reply in Support of Petition
`IPR2016-00717
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`proxy capabilities. (Coulombe, ¶0081 (“The proxy 12, in addition to the
`
`operations of a SIP proxy spelled out in RFC 2453 [sic], is responsible for
`
`performing
`
`transformation of SIP messages.”), ¶0093 (“So basically
`
`the
`
`implementation is an extension of existing SIP proxy/registrar servers with a
`
`Capability Negotiation Manager and Message Adaptation Engine software.”).)
`
`Coulombe does not suggest that video objects would somehow be exempt from
`
`Coulombe’s own message adaptation techniques.
`
`In the final analysis, the patent owner’s arguments against the combination
`
`of Coulombe and Bellordre urge the Board to interpret Coulombe as suggesting a
`
`Frankenstein-like system in which a message containing video content must be
`
`delivered through some unspecified combination of session-based and non-session-
`
`based techniques. This would have required some mechanism by which the proxy
`
`(12) in Coulombe could detect video content associated within an incoming
`
`message, and route that content to a pre-existing streaming video transcoder.
`
`(Klausner Reply, ¶31.) There is absolutely no suggestion of any such mechanism
`
`in Coulombe, let alone a description of how it would work. (Id.) Nor would any
`
`such mechanism make any sense given Coulombe’s express discouragement of
`
`using existing streaming video transcoding techniques.
`
`The far more straightforward way to have sent a video with a message in
`
`Coulombe is simply to follow the guidance in the SIMPLE standard by including
`14
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`Petitioner’s Reply in Support of Petition
`IPR2016-00717
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`the video as part of a MIME message using the same technique long used to attach
`
`files to email messages. (Id., ¶32.) This is confirmed by Figure 2 in Coulombe
`
`itself, which shows an “attach” button within a messaging interface that looks
`
`remarkably similar to email. (Petition, at 24-25.) The patent owner’s convoluted
`
`challenge to the combination of Coulombe and Bellordre should thus be rejected.
`
`B.
`
`The Petition Provided Sufficient Explanation for the Proposed
`Combination and Was Not Obligated to Affirmatively Rebut the
`Patent Owner’s Meritless Arguments About Use of SIP Streaming
`Video Transcoding in Coulombe.
`The patent owner repeatedly argues that the Petition did not offer a sufficient
`
`motivation to combine, and its arguments can generally be divided into two
`
`groups. First, the patent owner generally asserts that the Petition provided only
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`“conclusory” explanation of the rationale for combining Coulombe with Bellordre.
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`But as noted above, the Petition specifically relied on at least two rationale under
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) – combination of known
`
`methods to yield predictable results, and an actual articulated reason for the
`
`combination. (Petition, at 17; Ex. 1002, ¶64.)
`
`The patent owner’s arguments ignore the fact that, in any § 103 analysis, the
`
`amount of explanation and expert testimony required depends on the complexity of
`
`the combination. See Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324,
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`1330 (Fed. Cir. 2009) (“If the relevant technology were complex, the court might
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`15
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`Petitioner’s Reply in Support of Petition
`IPR2016-00717
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`require expert opinions.”). Here, like in Perfect Web, “the limitation in question
`
`[is] unusually simple and the technology particularly straightforward.” Arendi
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`S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016) (discussing Perfect
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`Web). And the benefits of using videos instead of still photos was “self-evident,”
`
`as the Petition explained. (Petition, at 17; Ex. 1002, ¶64; see also Klausner Reply,
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`¶¶33-36.) The patent owner does not argue that the relevant computer and
`
`communication field is an unpredictable art. Under these circumstances, to find
`
`merit in the patent owner’s characterization of the proffered motivations as
`
`“conclusory” would “r[u]n afoul of [KSR’s] basic mandate” to consider “common
`
`sense.” Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013); see also
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`Arendi, 832 F.3d at 1361-62 (discussing Randall and the role of “common sense”
`
`in evaluating a motivation to combine).2
`
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` 2
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` The patent owner’s response also contains side-by-side charts showing
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`similarity in the language in the IPR petition and the declaration of Mr. Klausner.
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`(Response, at 31 & 41.) The correspondence between the petition and declaration
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`simply reflects the fact that the petition derives its analysis from the opinions of a
`
`qualified technical expert, rather than attorney argument. The patent owner
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`apparently followed the same practice, as its response is replete with statements
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`that are substantially the same or identical to those in its expert’s declaration.
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`16
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`Petitioner’s Reply in Support of Petition
`IPR2016-00717
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`Second, the patent owner faults the Petition for not affirmatively addressing
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`and refuting potential use of existing SIP streaming video delivery and transcoding
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`techniques. (Response, 32-34.) But the patent owner cites no authority for its
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`suggestion that an IPR petitioner must preemptively rebut every specious argument
`
`a patent owner may make to challenge a finding of obviousness.
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`The fact that the Petition did not specifically address SIP video streaming
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`capabilities should not have been be surprising to the patent owner. Coulombe
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`itself makes clear that SIP streaming video transcoding does not operate in a non-
`
`session-based messaging context and does not adapt the message based on the
`
`display characteristics of the recipient’s terminal. (Coulombe, ¶0069.) This is
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`simply not a case in which a primary reference clearly and indisputably discloses
`
`the element for which the secondary reference is cited. The patent owner’s
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`response does not explain why, in the face of express statements in Coulombe that
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`SIP streaming video transcoding is inapplicable and inadequate, one of ordinary
`
`skill in the art would nevertheless have found those techniques applicable, let alone
`
`been discouraged from referring to the video delivery and adaptation techniques in
`
`Bellordre. There is simply no basis in the rules to fault the Petitioners for not
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`preemptively addressing a specious argument the patent owner should never
`
`rightfully have made.
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`17
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`Petitioner’s Reply in Support of Petition
`IPR2016-00717
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`C. The Patent Owner’s Attack on Mr. Klausner’s Credibility is
`Unwarranted and Baseless
`The patent owner’s attack on
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`the credibility of Mr. Klausner
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`is
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`unsubstantiated. The attack is so strained and convoluted, in fact, that it takes the
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`patent owner almost three pages just to explain the supposed inconsistency in Mr.
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`Klausner’s testimony. (Response, at 35-38.)
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`To the best the Petitioners can determine, the argument is this: During his
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`deposition in this proceeding, Mr. Klausner opined that SIP streaming video
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`mentioned in Coulombe did not qualify as a “message” under the ’677 patent. (Id.,
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`at 33-34 (citing
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