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`Petitioners’ Response to Observations
`on Cross-Examination
`IPR2016-00717
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`WHATSAPP, INC. AND FACEBOOK, INC.
`Petitioner
`
`v.
`
`TRIPLAY, INC.
`Patent Owner
`
`Inter Partes Review Nos. IPR2016-00717
`U.S. Patent No. 8,874,677
`
`
`
`PETITIONERS’ RESPONSE TO PATENT OWNER’S
`OBSERVATIONS ON TESTIMONY OF MR. KLAUSNER
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`
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`Petitioners’ Response to Observations
`on Cross-Examination
`IPR2016-00717
`
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`Pursuant to the Board’s September 7, 2016 Scheduling Order (Paper 16),
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`Petitioners WhatsApp, Inc. and Facebook, Inc. (“Petitioners”) respond as follows
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`to TriPlay, Inc.’s (“Patent Owner”) Observations on Testimony of Mr. Klausner
`
`(Paper 29).
`
`
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`RESPONSES TO PATENT OWNER’S “OBSERVATIONS”
`The Patent Owner’s motion for observation improperly attempts to raise
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`substantive arguments about the merits of the underlying petition. See Scheduling
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`Order (Paper 16), at 6; see also Office Patent Trial Practice Guide, 77 Fed. Reg.
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`48,756, 48,768 (Aug. 14, 2012) (“An observation (or response) is not an
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`opportunity to raise new issues, re-argue issues, or pursue objections.”). As
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`demonstrated below, the Patent Owner’s proposed observations do not relate Mr.
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`Klausner’s testimony to any precisely identified argument but instead improperly
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`attempt to raise arguments and address substantive issues. See Medtronic, Inc. v.
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`Nuvasive Inc., IPR2013-00506, Paper 37 at 2-4 (finding that “the motions for
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`observations contain arguments and are excessively long, and, thus, improper”).
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`For the convenience of the Board, the Petitioners will adopt the Patent Owner’s
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`numbering.
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`Response to Observation #1
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`The Patent Owner argues that Mr. Klausner’s testimony “contradicts the
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`
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`1
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`
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`Petitioners’ Response to Observations
`on Cross-Examination
`IPR2016-00717
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`statement that SIP provides no ability to adapt streaming video based on terminal
`
`characteristics.” (Observations, at 3.) The Patent Owner mischaracterizes
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`Petitioners’ arguments. Petitioners did not argue that “SIP provides no ability to
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`adapt streaming video based on terminal characteristics.” Rather, as expressly
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`stated in the section header to Petitioner’s argument at pages 7 to 9 of the Reply
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`Petition, Petitioners more specifically argued
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`that “SIP Streaming Video
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`Transcoding Does Not Adapt Videos for Display Characteristics.” (Petitioners’
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`Reply, at 7 (underlining in original).)
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`To the extent “the statement that SIP provides no ability to adapt streaming
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`video based on terminal characteristics” refers to a “statement” in Coulombe ¶ 69
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`rather than an argument made by Petitioners, the patent owner improperly argues
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`for a strained interpretation of the term “recipient’s terminal characteristics,” as
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`used in Coulombe ¶ 69, to manufacture an inconsistency with Mr. Klausner’s
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`testimony. Coulombe ¶ 69 states:
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`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
`it should be based on recipient’s
`terminal
`mention
`that
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`
`
`2
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`
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`Petitioners’ Response to Observations
`on Cross-Examination
`IPR2016-00717
`
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`characteristics.
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`(Coulombe, Ex. 1003, ¶ 69 (underlining and bolding added).) It is clear that the
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`term “recipient’s terminal characteristics” used in the context of Coulombe ¶ 69
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`(emphasized in bold above) refers to characteristics other than “codecs.”
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`Response to Observation #2
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`The Patent Owner argues that “when read in proper context, the reference to
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`‘messaging applications’ in the sentence from ¶ 69 of Coulombe cited by Petitioner
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`(i.e., ‘There is no mention that such adaptation could take place for messaging
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`applications and no mention that it should be based on recipient’s terminal
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`characteristics.’) refers to non-session based SIP instant messaging--not session-
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`based SIP video streaming.” (Observations, at 4-5 (underlining in original).) To
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`the extent the Board chooses to consider this improper argument, it should be
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`rejected. The mere reference to the SIMPLE protocol in the next sentence in
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`Coulombe ¶ 69 does not indicate that Coulombe intended to limit the term
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`“messaging applications,” as used in that paragraph, to only “non-session based
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`SIP instant messaging.” The more straightforward interpretation is that the
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`SIMPLE protocol is discussed as an example of existing “messaging applications.”
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`It is also unclear how this (improper) argument is relevant to what the Patent
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`Owner refers to as “Petitioner’s active discouragement argument at pages 7 to 9 of
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`
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`3
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`Petitioners’ Response to Observations
`on Cross-Examination
`IPR2016-00717
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`the Reply Petition.” (Observations, at 4.) Those pages do not argue that the term
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`“messaging applications” in Coulombe ¶ 69 refers to “session-based SIP video
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`streaming.” (Petitioners’ Reply, at 7-9.) In fact, those pages do not contain any
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`references to the term “messaging application” other than in a block quote of
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`Coulombe ¶ 69 on page 7. (Id.)
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`Response to Observation #3
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`The Patent Owner argues:
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`“[A] person of ordinary skill would understand” [as Mr. Klausner
`testified] the “terminal characteristics” disclosed in Coulombe include
`formats supported and such testimony is contrary to Petitioner’s
`reading of Coulombe as teaching “SIP provides no ability to adapt
`streaming video ‘based on the recipient’s terminal characteristics,’”
`given Coulombe’s teachings (as discussed above) of adapting video
`where formats supported (a ‘terminal characteristic’) do not match.
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`(Observations, at 6 (second bracket in original).) To the extent the Board chooses
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`to consider this improper argument, it should be rejected. The Patent Owner asked
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`Mr. Klausner about the use of the term “terminal characteristics” in ¶ 2 of
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`Coulombe and did not ask him about the use of the term “recipient’s terminal
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`characteristics” in ¶ 69. As discussed above in Response to Observation #1, it is
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`clear that the term “recipient’s terminal characteristics,” as used in the context of
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`Coulombe ¶ 69, refers to characteristics other than “codecs.”
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`
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`4
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`Petitioners’ Response to Observations
`on Cross-Examination
`IPR2016-00717
`
`Response to Observation #4
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`The Patent Owner argues that “Mr. Klausner admits that video will not
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`display if format not supported and, thus, Coulombe discloses that SIP adapts
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`video based on display capabilities (in view of its disclosure discussed above of
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`adapting video where formats supported do not match).” (Observations, at 7.) The
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`Patent Owner’s argument and gloss about Mr. Klausner’s testimony is improper in
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`a motion for observations, for the reasons previously mentioned. The Patent
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`Owner has also omitted other testimony from Mr. Klausner at the deposition that
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`provides further context on this topic:
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`Q. We talked previously about codecs, and that refers to hardware
`and/or software that’s installed on a computer to enable
`decoding and displaying particular formats?
`
`A. No. A codec is not for displaying; a codec is for decoding what
`has been encoded.
`
`Q. Okay. So a codec would refer to hardware and/or software
`that’s installed on a computer to enable the encoding and
`decoding of particular formats?
`
`I would say a codec is intended for encoding and decoding a
`particular format.
`
`A.
`
`. . .
`
`Q. Okay. And a computer includes a terminal?
`
`
`
`5
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`Petitioners’ Response to Observations
`on Cross-Examination
`IPR2016-00717
`
`
`A. Depending on the purpose for which the computer is prepared,
`it may or may not include a display.
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`. . .
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`Q. And as we talked about before when we talked about the second
`paragraph of Coulombe, Coulombe does list format supported
`as a terminal characteristic, correct?
`
`A. Yes. And as I’ve said many times today, Coulombe, I think the
`person of ordinary skill would understand Coulombe to mean
`the entire recipient side that includes the physical display as
`well as the -- particularly, the programs and the hardware that
`are sensitive to formats that are supported. The display, of
`course, not sensitive to supported formats.
`
`(Ex. 2010, at 13:17-14:14, 36:2-12 (underlining added); see also id., 16:10-17:1.)
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`Response to Observation #5
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`This observation relies on mischaracterizations of Petitioners’ arguments
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`and Mr. Klausner’s testimony. The word “criticism,” or any form of it, appears
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`nowhere in “pages 7 to 9 of the Reply Petition.” (Observations, at 9.) Rather,
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`Petitioners argued that ¶ 69 of Coulombe “makes clear that existing SIP
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`techniques did not adapt video based on the display capabilities of the recipient’s
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`terminal.” (Petitioners’ Reply, at 8 (underlining in original) (bold italics added);
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`see also id. at 7 (section header titled “SIP Streaming Video Transcoding Does Not
`
`
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`6
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`
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`Petitioners’ Response to Observations
`on Cross-Examination
`IPR2016-00717
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`Adapt Videos for Display Characteristics”) (underlining in original).) This
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`argument is wholly consistent with Mr. Klausner’s testimony that the sentence in ¶
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`69 cited by the Patent Owner is not a “criticism,” but “a statement of Coulombe’s
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`understanding based on ¶ 64, where he is listing the elements that are novel
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`compared to the present SIP related specifications.” (Observations, at 8 (quoting
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`Ex. 2010, 36:22-37:1) (bold italics added); see also Ex. 2010, 29:15-30:1.)
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`Response to Observation #6
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`The purported relevance of Patent Owner’s (improper) argument that
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`“SIMPLE is a real time system and not an email system and that the contents are
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`intended to be small in size,” (Observations, at 10), relies on a mischaracterization
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`of Petitioners’ proposed combination. Petitioners never proposed “using SIP
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`instant messaging to attach a video,” as the Patent Owner contends. (Id.
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`(underlining added).) To the contrary, “Petitioner’s argument at page 3 of
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`Petitioner’s Reply,” (id.), expressly states that “Coulombe is not limited to ‘instant’
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`messaging,” and cites to the SIMPLE standard because it “provides insight into the
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`knowledge of persons of ordinary skill in the art regarding how to use SIP in a
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`messaging system.” (Petitioners’ Reply, at 3 (underlining added).) There is
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`simply no basis to (improperly) suggest that the Coulombe messaging system, on
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`which Petitioners’ proposed combination relies, must conform to all of the
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`
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`7
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`Petitioners’ Response to Observations
`on Cross-Examination
`IPR2016-00717
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`requirements of SIMPLE. (Klausner Reply, Ex. 1028, ¶ 5 n. 2.) The Patent Owner
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`has also omitted other testimony from Mr. Klausner at the deposition on the point
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`that Coulombe is not limited to instant messaging. (Ex. 2010, 42:14-24, 56:17-
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`57:5.) And even assuming that messages in Coulombe are “intended to be small in
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`size” (Observations, at 10), this poses no obstacle to Petitioners’ proposed
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`combination because, as Petitioners have explained, “the size of a video file
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`depends on its length and resolution, and could be just a few frames in length.”
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`(Petitioners’ Reply, at 6; see also Klausner Reply, Ex. 1028, ¶¶ 12-16.)
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`Response to Observation #7
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`The purported relevance of Patent Owner’s (improper) argument that “email
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`is not the common usage of an instant messaging system and that that [sic] the
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`SIMPLE protocol does not have any discussion of the usage of the protocol as an
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`system with attachments,”
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`(Observations, at 12),
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`relies on a
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`mischaracterization of Petitioners’ proposed combination. As explained above in
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`Response to Observation #6, Petitioners never proposed “using SIP instant
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`messaging to attach a video” (id.). (See Petitioners’ Reply, at 3; see also Ex. 2010,
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`42:14-24.) And there is simply no basis to (improperly) suggest that the Coulombe
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`messaging system, on which Petitioners’ proposed combination relies, must
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`conform to all of the requirements of SIMPLE. (Klausner Reply, Ex. 1028, ¶ 5 n.
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`
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`8
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`Petitioners’ Response to Observations
`on Cross-Examination
`IPR2016-00717
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`2; see also Ex. 2010, 56:17-57:5.) Rather, Petitioners cited to the SIMPLE
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`protocol because, as an example of a SIP messaging system that had used MIME to
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`transport message data, it “confirms that it would have been technologically trivial
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`for a message sent using SIP (such as a message in Coulombe) to include a video.”
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`
`
`By:
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`
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`
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`Respectfully submitted,
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`/ Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
`Counsel for Petitioners
`
`(Petitioners’ Reply, at 3-4.)
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`
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`Dated: May 12, 2017
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 949-7400
`
`
`
`
`
`
`9
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`
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`Petitioners’ Response to Observations
`on Cross-Examination
`IPR2016-00717
`
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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 PETITIONERS’ RESPONSE TO PATENT OWNER’S
`OBSERVATIONS ON TESTIMONY OF MR. KLAUSNER and related
`documents, are being served via electronic mail on the 12th day of May, 2017,
`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
`
`/ Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
`
`
`
`
`
`DATED: May 12, 2017
`
`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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