Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 15
`Entered: September 7, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`WHATSAPP INC.,
`Petitioner,
`
`v.
`
`TRIPLAY, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-00717
`Patent 8,874,677 B2
`_______________
`
`
`Before BENJAMIN D. M. WOOD, BRIAN J. MCNAMARA, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`WOOD, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 15
`Entered: September 7, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`WHATSAPP INC.,
`Petitioner,
`
`v.
`
`TRIPLAY, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-00717
`Patent 8,874,677 B2
`_______________
`
`
`Before BENJAMIN D. M. WOOD, BRIAN J. MCNAMARA, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`WOOD, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`IPR2016-00717
`Patent 8,874,677 B2
`
`
`A.
`
`Background
`
`I.
`
`INTRODUCTION
`
`WhatsApp Inc. (“Petitioner”) filed a Petition requesting inter partes
`
`review of claims 1–5, 11–14, and 16–21 of U.S. Patent No. 8,874,677 B2
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`(Ex. 1001, “the ’677 patent”). Paper 1 (“Pet.”). TriPlay, Inc. (“Patent
`
`Owner”) filed a Preliminary Response. Paper 12 (“Prelim. Resp.”).
`
`We have jurisdiction under 35 U.S.C. § 314, which provides that an
`
`inter partes review may not be instituted “unless . . . there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
`
`claims challenged in the petition.” 35 U.S.C. § 314(a). Upon considering
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`the Petition and the Preliminary Response, we determine that Petitioner has
`
`shown a reasonable likelihood that it would prevail in showing the
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`unpatentability of at least one of the challenged claims. Accordingly, we
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`grant the Petition and institute inter partes review.
`
`B.
`
`Related Proceedings
`
`The parties state that the ’677 patent is the subject of pending
`
`litigation captioned TriPlay, Inc. v. WhatsApp Inc., Case No. 1:13-cv-1703-
`
`LPS (D. Del.). Pet. 1; Paper 5, 2. Petitioner further states that the parent to
`
`the ’677 patent, U.S. Patent No. 8,332,475, is the subject of IPR2015-00740.
`
`Pet. 1.
`
`C.
`
`The ’677 Patent
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`The ’677 patent issued October 28, 2014 from an application filed
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`November 16, 2012, and claims priority to a provisional application filed
`
`August 22, 2005. Ex. 1001, cover page. The ’677 patent is directed to
`
`“cross-platform messaging” and describes a messaging system that converts
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`IPR2016-00717
`Patent 8,874,677 B2
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`the formats and layouts of messages sent between communication devices
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`that may have different communication and display capabilities. Id.,
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`Abstract, 11:53–56. Figure 1, reproduced below, illustrates a network
`
`architecture in which the messaging system may be used.
`
`
`Figure 1 depicts various communication devices 11 (e.g., cell phone, PC)
`
`
`
`connected to at least one of Internet 12, Cellular Operator Network 13, etc.
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`Id. at 11:30–40. Messages from an originating device to a destination device
`
`pass through messaging system 16, where at least one of the devices is
`
`assigned to a user registered in the system. Id. at 12:12–13. Messaging
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`System 16 supports a variety of message formats such as text, video, and
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`image. Id. at 12:16–21.
`
`Figure 6, reproduced below, depicts an example of the messaging
`
`system’s operation.
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`IPR2016-00717
`Patent 8,874,677 B2
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`As shown in Figure 6, Subscriber A composes a message at one of the
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`communication devices assigned and sends the message to Subscriber B and
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`Non-subscriber C. Id. at 16:46–49. Messaging system 16 receives the
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`message and analyzes 61 originating and destination addresses comprised in
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`the message. Id. at 16:51–53. If the destination device is assigned to a
`
`subscriber, the system analyzes the destination device 62 and takes a
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`delivery decision 63 accordingly. Id. at 16:45–49. The delivery decision
`
`comprises deciding, e.g., the content, format and/or layout of the message to
`
`be delivered. Id. at 16:63–17:4. In accordance with the delivery decision,
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`the system provides transcoding of the message format 64 and/or adapting
`
`message layout 65 and appropriate repackaging 66 if necessary (for
`
`example, if limitations of the communication media or destination device
`
`require deleting or replacing some of the media items in the message). Id. at
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`17:6–12. The converted message and/or notification thereof are delivered 67
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`to the destination device, and the transaction is registered 68 in the system.
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`Patent 8,874,677 B2
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`Id. at 17:13–15. The described process may be provided in a similar manner
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`for several destination devices. Id. at 17:16–20.
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`The ’677 patent further describes facilitating composing messages
`
`using “pre-defined templates.” Id. at 19:40–41. The ’677 patent describes
`
`different template “types,” each having different “Content Structures.” Id. at
`
`19:50–66 (Table 1). “Each type of template and/or each template is
`
`provided with [a] unique identifier [that can be] recognized by the message
`
`system and/or client and stored in the message metadata.” Id. at 19:45–48.
`
`The template layout may depend on the capabilities of the destination
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`device. Id. at 20:50–52. For example, Table 2 of the ’677 patent describes a
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`“General” template type with different layouts for PC, Web, and cell-phone
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`display. For audio/video media, the cell phone layout contains a clickable
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`icon into the video. Id., Table 2. “Among advantages of certain aspects of
`
`the present invention is reduction in need of content analysis and ability to
`
`provide layout-related delivery instructions based on pre-defined rules and
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`parameters (e.g., in a form of a look-up table).” Id. at 20:63–67.
`
`D.
`
`The Challenged Claims
`
`
`
`Of the challenged claims, claims 1, 11, and 13 are independent.
`
`Claim 1 is illustrative, and is reproduced below:
`
`A method comprising:
`1.
`receiving, by a messaging system, an initial message sent by an
`originating communication device to a destination communication
`device, the initial message being characterized, at least, by message
`format, an initial message layout and data indicative of at least one
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`Patent 8,874,677 B2
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`receiver associated with the initial message, wherein the initial message
`includes a video;
`obtaining, by the messaging system, data indicative of displaying
`capabilities of the destination communication device;
`before delivery to the destination communication device
`associated with the at least one receiver, enabling, by the messaging
`system, conversion, in accordance with a criterion related to the
`displaying capabilities of the destination communication device, of the
`initial message into an adapted message, wherein the conversion
`comprises:
`
`a) providing, by the messaging system, a clickable icon:
`i)
`based on the video from the initial message and
`ii)
`clickable into an adapted version of the video,
`wherein the adapted version of the video is adapted
`to the displaying capabilities of the destination
`communication device, and
`b) determining, by the messaging system, an adapted
`message layout, comprising the clickable icon; and
`facilitating, by the messaging system, delivery of the adapted
`message to the destination communication device.
`
`
`E.
`
`Asserted Grounds of Unpatentability
`
`Petitioner contends that the challenged claims are unpatentable based
`
`on the following specific grounds (Pet. 11–60):
`
`Reference[s]
`
`Basis
`
`Claim[s] Challenged
`
`Coulombe,1 Bellordre,2 and
`Friedman3
`
`§ 103
`
`1, 2, 11, 13, 14, 16, 17, 20, and
`21
`
`
`1 US 2003/0236892 A1 (Dec. 25, 2003) (Ex. 1003).
`
`2 US2006/0176902 A1 (Aug. 10, 2006 (Ex. 1004).
`
`3 US 7,593,991 B2 (Sep. 22, 2009) (Ex. 1005).
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` 6
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`IPR2016-00717
`Patent 8,874,677 B2
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`Reference[s]
`
`Basis
`
`Claim[s] Challenged
`
`Coulombe, Bellordre,
`Friedman, Meyer,4 and Ito5
`
`§ 103
`
`3, 5, 12, and 19
`
`Coulombe, Bellordre,
`Friedman, Meyer, Ito, and
`Surana6
`
`Petitioner also relies on the testimony of David Klausner. Ex. 1002.
`
`4 and 18
`
`§ 103
`
`Patent Owner relies on, inter alia, the testimony of Rajeev Surati, Ph.D. Ex.
`
`2002.
`
`II. ANALYSIS
`
`A.
`
`Claim Construction
`
`We determine that no claim terms require express construction on this
`
`record and for purposes of this decision.
`
`B.
`
`Claims 1, 2, 11, 13, 14, 16, 17, 20, and 21—Obviousness over
`Coulombe, Bellordre, and Friedman
`
`Petitioner alleges that claims 1, 2, 11, 13, 14, 16, 17, 20, and 21 would
`
`have been obvious over Coulombe, Bellordre, and Friedman. Pet. 11–38.
`
`Patent Owner opposes. Prelim. Resp. 10–39.
`
`1.
`
`Coulombe
`
`Coulombe, titled, “System for Adaptation of SIP Messages Based on
`
`Recipient’s Terminal Capabilities and Preferences,” published December 25,
`
`
`4 Eric A. Meyer, Cascading Style Sheets: The Definitive Guide (2nd ed. 2004)
`(Ex. 1008).
`
`5 US 2003/0084405 A1 (May 1, 2003) (Ex. 1007).
`
`6 US 2006/0069790 A1 (Mar. 30, 2006) (Ex. 1006).
`
` 7
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`Patent 8,874,677 B2
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`2003 from an application filed May 31, 2002. Ex. 1003, cover page.
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`Coulombe describes a system for adaptation of session initiation protocol
`
`(SIP) messages based on the recipient’s terminal capabilities and
`
`preferences. Id., Abstract. Coulombe discloses that the described invention
`
`“tries to overcome the problem of interoperability between terminals and to
`
`improve the end user experience by providing a framework for making SIP
`
`messages conform to the recipient’s terminal capability and characteristics.”
`
`Id. ¶ 7. For example, Coulombe describes message size reduction and
`
`format adaptation for delivery to the destination terminal. Id.
`
`Figure 1 is reproduced below.
`
`
`
`Figure 1 shows a message flow for SIP message adaptation using system 10.
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`System 10 includes SIP proxy/registrar 12, Capability Negotiation Manager
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`16, and Message Adaptation Engine 20. Id. ¶ 54. Coulombe discloses that
`
`when new message 18 arrives at proxy/registrar 12 from another entity, such
`
`as sending terminal 19, proxy 12 obtains the terminal capabilities or user
`
`preferences of intended recipient’s terminal 15 already stored in the
`
`registrar, adapts the message (using Message Adaptation Engine 20), and
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` 8
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`sends adapted message 22 to recipient’s terminal 15. Id. ¶ 58. Capability
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`Negotiation Manager 16 is responsible for resolving terminal capability
`
`information. Id. ¶ 59. Message Adaptation Engine 20 is responsible for
`
`adapting the message for recipient terminal 15 by performing format
`
`conversion, presentation adaptation, media characteristics adaptation,
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`message size reduction, and encapsulation adaptation, as needed. Id. ¶¶ 63,
`
`85–91. Coulombe further teaches that “adaptation is any manipulation or
`
`modification of the message content based on the terminal capabilities, user
`
`preferences, network conditions, or any characteristics of the user, his
`
`terminal or his environment.” Id. ¶ 63.
`
`2.
`
`Bellordre
`
`Bellordre relates to “a method of processing a multimedia message
`
`and a corresponding processing system.” Ex. 1004 ¶ 1. Multimedia
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`messages may contain text, picture, audio, and/or video objects. Id. at ¶ 4.
`
`Bellordre’s message-processing system receives a multimedia message from
`
`a receiver, extracts any audio or video object from the message, “adapt[s]
`
`the format, sound and size of the audio and video objects to the technical
`
`features of the destination module,” and stores the adapted message. Id. at
`
`¶¶ 17–19, 57, 47, 69. Adapting a video object may entail “modifying its size
`
`(number of pixels) to adapt it to the size of the screen of the [receiving
`
`terminal], or reducing its size (number of bytes) to take account of the object
`
`reception characteristics.” Id. at ¶ 62. The system then sends to the
`
`intended recipient a “substitute message.” Figures 3 and 4, reproduced
`
`below, compare the initial message and substitute message:
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` 9
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`Patent 8,874,677 B2
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`Fig. 3 Fig. 4
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`Figure 3 depicts multimedia message 21 comprising, e.g.,
`
`
`
`identification element 23 identifying the terminal receiving the message,
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`audio or video object 24, and text object 25. Id. ¶ 46. Substitute message
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`26, depicted in Figure 4 retains identification element 23 and text object 25,
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`and further contains sequence 27 and “SDP definition file 28 replacing the
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`audio or video object 24.” Id. ¶ 47. Sequence 27 is an object comprising
`
`one or more representative extracts from the audio or video object, such as
`
`one or more pictures from a video (animated GIF) or a musical excerpt.
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`Id. ¶48. SDP definition file 28 contains URL hyperlink address 29 of the
`
`storage location of the object. Id. ¶ 49.
`
`3.
`
`Friedman
`
`Friedman discloses a system for processing attachments in electronic
`
`messages. Ex. 1005, 1:7–9, 2:40–42. Friedman defines “attachment” as any
`
`object—e.g., text file, image file, or video file—that is “transported inside,
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`outside, and/or along with, an electronic message.” Id. at 8:1–11.
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`Friedman’s attachment processing system (1) automatically detaches and
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`10
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`Patent 8,874,677 B2
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`saves the contents of the object; (2) generates a “thumbnail graphic” for a
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`portion of the object; and (3) displays the thumbnail graphic in a display area
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`of a graphical user interface. Id. at 8:30–34, 59–60, 9:5–7, Figs. 5A, 5B.
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`Figure 4, reproduced below, illustrates one embodiment of the system’s
`
`graphical user interface:
`
`
`Figure 4 depicts graphical user interface 500 having display area 510
`
`
`
`showing multiple thumbnail graphics representing email attachments. Id. at
`
`7:8–12, Fig. 4. In particular, thumbnail graphic 525, labeled “riddik.mov,”
`
`represents a video. Id. at 7:19–21, Fig. 4. To open the video, the user may
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`double-click on the thumbnail graphic. Id. at 9:21–25.
`
`4.
`
`Analysis
`
`a.
`
`Independent Claims 1, 11, and 13
`
`We follow the parties’ lead and treat claim 1 as representative of
`
`claims 11 and 13, which are the other independent claims challenged in
`
`Ground 1. Pet. 32, 34–35; Prelim. Resp. 10–11.
`
`
`
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`11
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`Patent 8,874,677 B2
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`
`Petitioner relies on Coulombe to teach a messaging system that (1)
`
`receives the initial message from an originating communication device
`
`characterized, at least, by message format, an initial layout, and data
`
`indicative of at least one receiver associated with the initial message; (2)
`
`obtains data indicative of the destination communication device; (3) enables
`
`conversion of the initial message into an adapted message based on the
`
`destination device’s display capabilities; (4) determines an adapted message
`
`layout; and (4) facilitates delivery of the adapted message to the destination
`
`communication device. Pet. 14–16, 18–21. These contentions are supported
`
`by specific citations to the record, and by Dr. Klausner’s testimony.
`
`Petitioner acknowledges that Coulombe “does not appear to expressly
`
`disclose that the message received . . . includes a video.” Id. at 16.
`
`Therefore, Petitioner relies on Bellordre for this limitation, noting that
`
`Bellordre teaches a message that contains “at least one audio or video
`
`multimedia object.” Id. at 17. Petitioner argues that it would have been
`
`obvious to a person of ordinary skill to combine Coulombe and Bellordre
`
`such that Coulombe’s initial message includes a video because “people have
`
`long understood that video information (such as television and motion
`
`pictures) can provide a more powerful message than text or still photos.” Id.
`
`(citing Ex. 1002 ¶ 64).
`
`Petitioner further asserts that Bellordre teaches adapting the video to
`
`the display capabilities of the destination device. According to Petitioner,
`
`“Bellordre teaches that ‘[p]rocessing a video object entails the format[ing] of
`
`its sequence, modifying its size (number of pixels) to adapt to the size of the
`
`screen of the terminal 10, or reducing its size (number of bytes) to take
`
`account of the object reception characteristics, for example.’” Pet. 23–24
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`12
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`(quoting Ex. 1004 ¶ 62) (emphasis and bracketing added by Petitioner).
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`Petitioner contends that because Bellordre and Coulombe are “analogous
`
`references in the same field of adapting messages according to the technical
`
`capabilities, and specifically, displaying capabilities, of mobile terminals,”
`
`one of ordinary skill in the art “would also have been motivated to apply
`
`Bellordre’s teachings on adapting video . . . to the messaging system
`
`disclosed in Coulombe.” Id. at 17 (citing Ex. 1004 ¶ 64).
`
`For the limitation requiring a “clickable icon based on the video from
`
`the initial message,” Petitioner relies on Friedman, and specifically its
`
`teaching of “thumbnail graphic 525.” Id. at 21 (citing Ex. 1005, 7:19).
`
`Petitioner asserts that Friedman’s thumbnail graphic 525 is based on a video
`
`attachment (“riddick.mov”) to an electronic message, and double-clicking on
`
`the thumbnail graphic opens the video. Pet. 22–23 (citing Ex. 1005,
`
`passim). Petitioner contends that “[o]ne of ordinary skill in the art would
`
`therefore have appreciated that generating a clickable thumbnail graphic
`
`would allow for straightforward access to a video attached to a message
`
`transported by the Coulombe messaging system.” Id. at 25 (citing Ex. 1002
`
`¶ 74). Petitioner notes that “Friedman does not appear to expressly disclose
`
`that the thumbnail graphic is clickable ‘into an adapted version of the
`
`video,” but that “one of ordinary skill in the art would have been motivated
`
`to apply the teachings of Friedman to ‘uniquely associate[]’ the generated
`
`thumbnail graphic with the adapted video of Bellordre” so that Friedman’s
`
`thumbnail graphic is clickable into Bellordre’s adapted video. Id. at 23–24
`
`(citing Ex. 1002 ¶ 72).
`
`We have reviewed the record and Petitioner’s analysis with respect to
`
`claim 1, and, on the current record, are persuaded that Petitioner has
`
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`demonstrated a reasonable likelihood of prevailing at trial on its challenge of
`
`claims 1, 11, and 13 as obvious over Coulombe, Bellordre, and Friedman.
`
`We have also considered Patent Owner’s arguments against institution on
`
`this proposed ground of unpatentability, and, on the present record, find
`
`them unpersuasive. First, Patent Owner argues that Friedman does not
`
`disclose “wherein the conversion [of the initial message into an adapted
`
`message] comprises: a) providing, by the messaging system, a clickable
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`icon,” which Patent Owner refers to as the “providing” limitation. Prelim.
`
`Resp. 24. Patent Owner asserts that “the broadest reasonable construction
`
`[of the “providing” limitation] has to include the requirement that the
`
`clickable icon be ‘provided’ as part of the conversion of an initial message to
`
`an adapted message,” and that “it would not be reasonable to construe the
`
`term to cover conversion in which the adapted message contains a link to the
`
`video and the video itself.” Id. at 25, 29 (emphasis in original). Patent
`
`Owner further asserts that “Friedman has no disclosure of a messaging
`
`conversion that provides a clickable icon to an adapted message,” and that
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`“[c]ombining Friedman’s attachment processing techniques with the
`
`messaging system in Coulombe does not yield the claimed invention
`
`because neither Coulombe nor Friedman disclose[s] generating an icon as
`
`part of message conversion.” Patent Owner supports this argument with the
`
`testimony of Dr. Surati.
`
`On the current record, this argument is not persuasive. Assuming
`
`arguendo that Patent Owner’s claim construction is correct, Patent Owner
`
`does not account for the fact that Petitioner relies not only on Friedman and
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`Coulombe to teach this limitation, but also on Bellordre. See Pet. 21–25.
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`Bellordre teaches converting an initial multimedia message into a “substitute
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`message” that contains a “sequence” representing a video associated with
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`the initial message, as well as an SDP file containing a hyperlink that
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`replaces the video. Ex. 1004 ¶¶ 48–49.
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`Patent Owner next argues that Petitioner’s expert overlooked
`
`Coulombe’s passages teaching delivery of video. Prelim. Resp. 31–34.
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`Patent Owner notes that although the Petitioner relies on its expert’s
`
`statement that “Coulombe does not appear to expressly disclose that the
`
`message received from the sending device (19) ‘includes a video,’ as recited
`
`in claim 1,” Patent Owner asserts that Coulombe does, in fact, “teach
`
`delivery of video content.” Id. at 31. In particular, Patent Owner asserts that
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`“session-based SIP communications . . . provided the capability of
`
`establishing sessions between participants for a variety of video related
`
`communications.” Id. at 32 (citing Ex. 2002 ¶ 87; Ex. 2003, abstract).
`
`According to Patent Owner, this is significant because the analysis of the
`
`“motivation to combine aspects of Friedman and Bellordre with Coulombe
`
`is very different if the starting point (Coulombe) already encompassed
`
`known SIP hardware and processes for delivering messages including a
`
`video.” Id. at 33 (citing Ex. 2002 ¶ 90).
`
`We do not find this argument persuasive on the current record. As an
`
`initial matter, we do not read the Petition as asserting that Coulombe does
`
`not relate to video at all, but rather the narrower assertion that Coulombe
`
`does not “expressly disclose that the message received from the sending
`
`device (19) [as depicted in Figure 1] includes a video.” Pet. 16 (citing Ex.
`
`1003 ¶ 117). In any event, this argument, based on the testimony of Dr.
`
`Surati to counter the testimony of Dr. Klausner, requires us to give more
`
`weight to Patent Owner’s declaration testimony than Petitioner’s declaration
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`testimony. Because it would be premature for us to weigh the declarants’
`
`testimony before either declarant is deposed, we decline the request. See 37
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`C.F.R. § 42.108(c) (The Board’s [institution] decision will take into account
`
`a patent owner preliminary response where such a response is filed,
`
`including any testimonial evidence, but a genuine issue of material fact
`
`created by such testimonial evidence will be viewed in the light most
`
`favorable to the petitioner solely for purposes of deciding whether to
`
`institute an inter partes review.”).
`
`Finally, Patent Owner argues that the Petitioner fails to offer sufficient
`
`motivation to combine Coulombe, Friedman, and Bellordre. Prelim. Resp.
`
`34–39. We have reviewed Petitioner’s assertions regarding the motivation
`
`of a person of ordinary skill in the art to combine these references, as well as
`
`Patent Owner’s arguments why Petitioner’s assertions are insufficient. On
`
`the present record, and with the understanding that neither declarant has
`
`been deposed, we determine that Petitioner has provided sufficient reason
`
`for its position that a person of ordinary skill would have been motivated to
`
`combine the teachings of Coulombe, Bellordre and Friedman.
`
`b.
`
`Claims 2, 14, 16, 17, 20, and 21
`
`Petitioner contends that claims 2, 14, 16, 17, 20, and 21 would have
`
`been obvious over Coulombe, Bellordre, and Friedman. Pet. 29–38.
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`Petitioner supports its contentions with citations to the record and Mr.
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`Klausner’s testimony. Patent Owner does not separately argue the
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`patentability of these claims. We have reviewed the record and Petitioner’s
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`analysis with respect to these claims, and are persuaded on the current record
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`that Petitioner has demonstrated a reasonable likelihood of prevailing in
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`
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`16
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`IPR2016-00717
`Patent 8,874,677 B2
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`showing that claims 2, 14, 16, 17, 20, and 21 would have been obvious over
`
`Coulombe, Bellordre, and Friedman.
`
`C.
`
`Claims 3, 5, 12, and 19—Obviousness over Coulombe,
`Bellordre, Friedman, Meyer, and Ito
`
`Petitioner contends that claims 3, 5, 12, and 19 would have been
`
`obvious over Coulombe, Bellordre, Friedman, Meyer, and Ito. Pet. 40–52.
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`Patent Owner opposes. Prelim. Resp. 39–50. Meyer, titled “Cascading
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`Style Sheets: The Definitive Guide,” describes “external style sheets,”
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`which “are not part of the HTML document but are still used by it.” Ex.
`
`1008, cover page, 13, 18. A “link” (or “@import” directive) identifying an
`
`external style sheet is placed inside an HTML document, which causes “the
`
`web browser to locate and load the style sheet and use whatever styles it
`
`contains to render the HTML document” in accordance with those styles.
`
`Id. at 13. Ito “relates to a contents conversion system that dynamically
`
`selects a style sheet for an XML document.” Ex. 1007 ¶ 2. Style sheet
`
`selection is based on information acquired from the XML document, such as
`
`“the file URI.” Id. ¶ 48.
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`1.
`
`Claim 3
`
`Claim 3 depends from claim 1 and additionally recites “wherein the
`
`initial message is characterized by the initial message layout based on a
`
`template, the template being characterized by, at least, a unique template
`
`identifier; and wherein the adapted message layout is provided in accordance
`
`with the unique template identifier.” Petitioner asserts that “[i]t is well
`
`known to those of ordinary skill in the art that a message, such as an email,
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`can be communicated in HTML, a format also commonly used to author
`
`web documents exchanged between server and client devices.” Pet. 40–41
`
`
`
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`17
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`IPR2016-00717
`Patent 8,874,677 B2
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`(citing Ex. 1002 ¶ 96). Petitioner further asserts that “Meyer describes a
`
`fundamental technique in which an HTML document can be characterized
`
`by a layout based on a template in the form of an ‘external style sheet.’” Id.
`
`at 41 (citing Ex. 1008, 13). Petitioner contends that “Meyer discloses that
`
`the external style sheet is characterized by a ‘unique template identifier’ in
`
`the form of a URL,” which the “link” tag or “@import” directive uses to
`
`identify the external style sheet. Id. at 44. Therefore, according to
`
`Petitioner, Meyer discloses “wherein the initial message is characterized by
`
`the initial message layout based on a template, the template being
`
`characterized by, at least, a unique template identifier.” Id. at 45.
`
`Petitioner acknowledges that “Meyer does not disclose ‘the adapted
`
`message layout [being] provided in accordance with’ the URL,” but
`
`contends that “this would have been obvious in view of Ito.” Petitioner
`
`contends that Ito discloses “a technique for selecting the appropriate style
`
`sheet to be applied [to an XML document] using various keys to query a
`
`style sheet information database,” one of the keys being the “file URI.” Id.
`
`at 45–46 (citing Ex. 1007, ¶¶ 48–50, 58, Figs. 1, 5). According to Petitioner,
`
`“one of ordinary skill in the art would have understood that a URI can serve
`
`as a URL in the context of style sheets.” Id. at 46 (citing Ex. 1008, 91; Ex.
`
`1002 ¶ 103). Therefore, Petitioner concludes, Ito “discloses that a style
`
`sheet can be ‘provided in accordance with’ a URL (‘unique template
`
`identifier’).” Id. at 47. Petitioner further contends that “[t]o the extent the
`
`returned style sheet in Ito is not expressly disclosed as providing the
`
`‘adapted message layout,’ this feature would have been obvious in view of
`
`Meyer [because] style sheets of the sort disclosed in Meyer ‘affect the
`
`presentation of a document.” Id. (citing Ex. 1008, 1).
`
`
`
`
`18
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`Patent 8,874,677 B2
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`As an initial matter, we note that Petitioner does not argue that either
`
`Meyer or Ito, individually, teaches “wherein the adapted message layout is
`
`provided in accordance with the unique template identifier.” Further, we
`
`agree with Patent Owner (Prelim. Resp. 47–49) that Petitioner has not
`
`adequately established why a person of ordinary skill would have combined
`
`Meyer with Ito to arrive at this limitation. Petitioner’s argument is premised
`
`on the URL of an external style sheet, as taught by Meyer, corresponding to
`
`the claimed “unique template identifier.” Pet. 44. But Petitioner does not
`
`allege that Ito uses the URL of an external style sheet as a “key” to select a
`
`style sheet to apply to an XML document. Instead, Petitioner asserts that Ito
`
`uses a “file URI,” among other information, to select a style sheet. Id. at 46.
`
`Other than asserting that “a URI can serve as a URL in the context of style
`
`sheets” (Id. (emphasis added)), Petitioner does not adequately explain how
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`Ito’s use of a file URI would lead a person of ordinary skill in the art to use
`
`the URL of an external style sheet to select a style sheet. As our reviewing
`
`court has explained, “obviousness concerns whether a skilled artisan not
`
`only could have made but would have been motivated to make the
`
`combinations or modifications of prior art to arrive at the claimed
`
`invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir.
`
`2015) (emphasis in original). Because we are not persuaded that a person of
`
`ordinary skill would have combined Meyer and Ito to teach “wherein the
`
`adapted message layout is provided in accordance with the unique template
`
`identifier,” we are not persuaded that claim 3 would have been obvious over
`
`Coulombe, Bellordre, Friedman, Meyer, and Ito.
`
`
`
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`19
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`IPR2016-00717
`Patent 8,874,677 B2
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`2.
`
`Claims 5, 12, and 19
`
`Claim 5 depends from claim 3, and additionally recites “wherein the
`
`template comprises a set of items related to media objects, and wherein the
`
`items related to media objects are selected from the group consisting of
`
`media objects, thumbnails related to media objects, and controls related to
`
`media objects.” Claim 12 depends from claim 11 and recites the same
`
`additional limitations as claim 3. Claim 19 depends from claim 12 and
`
`recites the same additional limitation as claim 5. Because we are not
`
`persuaded that Petitioner has demonstrated a reasonable likelihood of
`
`prevailing with respect to claim 3, we are also not persuaded that Petitioner
`
`has demonstrated a reasonable likelihood of prevailing with respect to
`
`claims 5, 12, and 19.
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`D. Claims 4 and 18—Obviousness over Coulombe, Bellordre,
`Friedman, Meyer, Ito, and Surana
`
`Petitioner contends that claims 4 and 18 would have been obvious
`
`over Coulombe, Bellordre, Friedman, Meyer, Ito, and Surana. Claims 4 and
`
`18 depend from claims 3 and 12, respectively. Because we are not
`
`persuaded that Petitioner has demonstrated a reasonable likelihood of
`
`prevailing in showing that claims 3 and 12 would have been obvious over
`
`Coulombe, Bellordre, Friedman, Meyer, and Ito, we also are not persuaded
`
`that Petitioner has demonstrated a reasonable likelihood of prevailing in
`
`showing that claims 4 and 18 would have been obvious over Coulombe,
`
`Bellordre, Friedman, Meyer, Ito, and Surana.
`
`III. CONCLUSION
`
`For the foregoing reasons, we determine that Petitioner has shown that
`
`there is a reasonable likelihood that it would prevail with regard to at least
`
`
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`20
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`IPR2016-00717
`Patent 8,874,677 B2
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`one of the claims challenged in the Petition. In particular we are persuaded
`
`that Petitioner has shown a reasonable likelihood that it would prevail on its
`
`challenges that claims 1, 2, 11, 13, 14, 16, 17, 20, and 21 are unpatentable
`
`under 35 U.S.C. § 103 as obvious over Coulombe, Bellordre, and Friedman.
`
`We are not persuaded that Petition has shown a reasonable likelihood that it
`
`would prevail on its challenges to claims 3, 5, 12, and 19 as obvious over
`
`Coulombe, Bellordre, Friedman, Meyer, and Ito. We are also not persuaded
`
`that Petitioner has shown a reasonable likelihood of prevailing on its
`
`challenge to claims 4 and 18 as obvious over Coulombe, Bellordre,
`
`Friedman, Meyer, Ito, and Surana. At this stage of the proceeding, the
`
`Board has not made a final determination as to the patentability of any
`
`challenged claim or as to any underlying factual or legal issue.
`
`IV. ORDER
`
`For the reasons given, it is
`
`ORDERED that pursuant to 35 U.S.C. § 314, inter partes review is
`
`instituted as to claims 1, 2, 11, 13, 14, 16, 17, 20, and 21of the ’677 patent
`
`based on the following ground:
`
`Claims 1, 2, 11, 13, 14, 16, 17, 20, and 21, unpatentable under
`35 U.S.C. § 103 as obvious over Coulombe, Bellordre, and
`Friedman.
`
`FURTHER ORDERED that inter partes review is commenced on the
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`entry date of this Order, and pursu
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