UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`WhatsApp, Inc. and Facebook, Inc.
`Petitioners
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`v.
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`TriPlay, Inc.
`Patent Owner
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`Inter Partes Review No. IPR2016-00717
`U.S. Patent No. 8,874,677
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`PETITIONERS’ NOTICE OF APPEAL
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`WhatsApp, Inc. and Facebook, Inc.
`Petitioners
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`v.
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`TriPlay, Inc.
`Patent Owner
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`Inter Partes Review No. IPR2016-00717
`U.S. Patent No. 8,874,677
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`PETITIONERS’ NOTICE OF APPEAL
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`Petitioners’ Notice of Appeal
`IPR2016-00717
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`Pursuant to 37 C.F.R. § 90.2(a) and 35 U.S.C. § 142, Petitioners WhatsApp,
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`Inc. and Facebook, Inc. (“Petitioners”) hereby appeal to the United States Court of
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`Appeals for the Federal Circuit from the Patent Trial and Appeal Board’s
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`(“Board’s”) Final Written Decision entered August 28, 2017 (Paper 42), and from
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`all underlying and related findings, orders, decisions, rulings and opinions. A copy
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`of the Board’s Final Written Decision is attached hereto.
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`For the limited purpose of providing the Director with the information
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`requested in 37 C.F.R. § 90.2(a)(3)(ii), Petitioners further indicate that the issues
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`on appeal may include, but are not limited to: the Board’s determination that
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`claims 1, 2, 11, 13, 14, 16, 17, 20, and 21 have not been shown to be unpatentable
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`under 35 U.S.C. § 103, the findings, rulings and conclusions supporting or relating
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`to those determinations, and any other issues decided adversely to Petitioners in
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`any orders, decisions, ruling, or opinions.
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`Simultaneous with this submission, three (3) copies of this Notice of Appeal
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`are being filed with the Clerk of the United States Court of Appeals for the Federal
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`Circuit, together with the requisite fee in the amount of $500. In addition, a copy
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`of this Notice of Appeal is being filed with the Patent Trial and Appeal Board and
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`served upon counsel of record for TriPlay, Inc.
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`A Notice of Appeal is also being filed concurrently in the related inter partes
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`review proceeding IPR2016-00718.
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`1
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`Respectfully submitted,
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`By:
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`/ Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
`Counsel for Petitioners
` WhatsApp, Inc. and
` Facebook, Inc.
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`Petitioners’ Notice of Appeal
`IPR2016-00717
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`Dated: September 14, 2017
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`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 949-7400
`Email: hkeefe@cooley.com
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`2
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`Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 42
`Entered: August 28, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
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`WHATSAPP INC.,
`Petitioner,
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`v.
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`TRIPLAY, INC.,
`Patent Owner.
`_______________
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`Case IPR2016-00717
`Patent 8,874,677 B2
`_______________
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`Before JOSIAH C. COCKS, BRIAN J. MCNAMARA, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
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`IPPOLITO, Administrative Patent Judge.
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`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`I.
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`INTRODUCTION
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`Background
`A.
`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
`(Ex. 1001, “the ’677 patent”). Paper 1 (“Pet.”). TriPlay, Inc. (“Patent
`Owner”) filed a Preliminary Response. Paper 12 (“Prelim. Resp.”).
`Based on these submissions, we instituted an inter partes review of
`claims 1, 2, 11, 13, 14, 16, 17, 20, and 21 of the ’677 patent based on
`Petitioner’s asserted challenge that these claims are unpatentable under 35
`U.S.C. 103 as obvious over Coulombe,1 Bellordre,2 and Friedman3. Paper
`15 (“Dec. on Inst.”).
`After institution, Patent Owner filed its Patent Owner Response on
`December 16, 2016 (Paper 21, “PO Resp.”) and Petitioner filed a Reply
`(Paper 26, “Reply”).
`We have jurisdiction under 35 U.S.C. § 6. This Decision is a final
`written decision under 35 U.S.C. § 318(a) as to the patentability of the
`challenged claims. For the reasons that follow, we determine Petitioner has
`not shown by a preponderance of the evidence that claims 1, 2, 11, 13, 14,
`16, 17, 20, and 21 of the ’677 patent are unpatentable.
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`Related Proceedings
`B.
`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-
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`1 US 2003/0236892 A1 (Dec. 25, 2003) (Ex. 1003).
`2 US 2006/0176902 A1 (Aug. 10, 2006) (Ex. 1004).
`3 US 7,593,991 B2 (Sept. 22, 2009) (Ex. 1005).
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`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. The ’677 patent is also involved in IPR2016-00718.4
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`The ’677 Patent
`C.
`The ’677 patent issued October 28, 2014 from an application filed
`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
`the formats and layouts of messages sent between communication devices
`that may have different communication and display capabilities. Id.,
`Abstract, 11:53–56. Figure 1, reproduced below, illustrates a network
`architecture in which the messaging system may be used.
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`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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`4 A Final Written Decision in IPR2016-00718 has been issued concurrently
`with the present Decision.
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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
`System 16 supports a variety of message formats such as text, video, and
`image. Id. at 12:16–21.
`Figure 6, reproduced below, depicts an example of the messaging
`system’s operation.
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`As shown in Figure 6, Subscriber A composes a message at one of the
`communication devices assigned and sends the message to Subscriber B and
`Non-subscriber C. Id. at 16:40–42. Messaging system 16 receives the
`message and analyzes 61 originating and destination addresses comprised in
`the message. Id. at 16:44–46. If the destination device is assigned to a
`subscriber, the system analyzes the destination device 62 and makes a
`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 16:45–57. In accordance with the delivery decision, the
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`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
`16:64–17:3. The converted message and/or notification thereof are
`delivered 67 to the destination device, and the transaction is registered 68 in
`the system. Id. at 17:4–6. The described process may be provided in a
`similar manner for several destination devices. Id. at 17:6–9.
`The ’677 patent further describes facilitating composing messages
`using “pre-defined templates.” Id. at 19:40–42. 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
`device. Id. at 20:50–52. For example, Table 2 of the ’677 patent describes a
`“General” template type with different layouts for PC, Web, and cell-phone
`display. For audio/video media, the cell phone layout contains a clickable
`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
`parameters (e.g., in a form of a look-up table).” Id. at 20:63–67.
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`The Challenged Claims
`D.
`Of the challenged claims, claims 1, 11, and 13 are independent.
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`Claim 1 is illustrative, and is reproduced below:
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`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 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:
`based on the video from the initial message
`i)
`and
`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.
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`ii)
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`II. ANALYSIS
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`Claim Construction
`A.
`In an inter partes review, a claim in an unexpired patent shall be given
`its broadest reasonable construction in light of the specification of the patent
`in which it appears. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs. LLC v.
`Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`reasonable interpretation standard in inter partes review). Consistent with
`the broadest reasonable construction, claim terms are presumed to have their
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`ordinary and customary meaning as understood by a person of ordinary skill
`in the art in the context of the entire patent disclosure. In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`We determine that no claim terms require express construction on this
`record and for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci.
`& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need
`be construed that are in controversy, and only to the extent necessary to
`resolve the controversy.”).
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`B. Ground Under 35 U.S.C. § 103
`Principles of Law
`1.
`A claim is unpatentable under § 103 if the differences between the
`claimed subject matter and the prior art are such that the subject matter, as a
`whole, would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007); 35 U.S.C. § 103.
`The ultimate determination of obviousness under § 103 is a question of law
`based on underlying factual findings. In re Baxter Int’l, Inc., 678 F.3d 1357,
`1362 (Fed. Cir. 2012) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966)). These underlying factual considerations consist of: (1) the “level of
`ordinary skill in the pertinent art,” (2) the “scope and content of the prior
`art,” (3) the “differences between the prior art and the claims at issue,” and
`(4) “secondary considerations” of non-obviousness such as “commercial
`success, long-felt but unsolved needs, failure of others, etc.” KSR, 550 U.S.
`at 406 (quoting Graham, 383 U.S. at 17–18).
`We analyze the asserted grounds based on obviousness with the
`principles identified above in mind.
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`Level of Skill in the Art
`2.
`Petitioner’s declarant, Mr. David Klausner, testifies that a person of
`ordinary skill in the art at the time of the invention would have had at least a
`bachelor’s degree in electrical engineering or computer science (or
`equivalent degree or experience) with at least two years of experience in the
`design and implementation of systems for sending and receiving messages
`over a communications network, such as the Internet. Ex. 1002 ¶ 16.
`Mr. Klausner adds that this “experience would include an understanding of
`(a) network communications protocols used to exchange messages over a
`network (such as the Hypertext Transport Protocol (HTTP), Simple Mail
`Transfer Protocol (SMTP) or Session Initiated Protocol (SIP)), and (b)
`formats that can be used to encode the messages exchanged over the
`network.” Id.
`Patent Owner’s declarant, Dr. Rajeev Surati, testifies a person of
`ordinary skill in the art at the time of the invention is a person with a
`bachelor’s degree in either electrical engineering or computer science, at
`least two years of experience designing and implementing messaging
`systems between user devices, and at least one year of experience working
`with format encoding and layout of images or video. Ex. 2002 ¶ 32.
`We do not perceive any meaningful difference between the parties’
`definitions of the technical field of the required experience. For example,
`both experts testify that the level of ordinary skill entails a bachelor’s degree
`in electrical engineering or computer science, and at least two years of
`experience in designing and implementing messaging systems. Ex. 1002
`¶ 16; Ex. 2002 ¶ 32. Based on the complete record, including our review of
`the ’677 patent and the types of problems and solutions described in the ’677
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`patent and cited prior art, we agree with both parties’ assessments of the
`level of ordinary skill in the art and our analysis would be the same using
`either definition. As noted, we have also considered the cited references as
`representative of the level of ordinary skill in the art. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the level of ordinary skill
`in the art may be evidenced by the cited references themselves).
`Claims 1, 2, 11, 13, 14, 16, 17, 20, and 21—Obviousness
`3.
`over Coulombe, Bellordre, and Friedman
`We instituted trial on the ground that the subject matter of claims 1, 2,
`11, 13, 14, 16, 17, 20, and 21 would have been obvious over Coulombe,
`Bellordre, and Friedman. Dec. on Inst. 7–17, 21; see Pet. 11–38. Having
`now considered the evidence in the complete record established during trial,
`we are persuaded that, based on this record, Petitioner has not demonstrated
`by a preponderance of the evidence that the claims would have been obvious
`over those references in combination.
`Coulombe
`a.
`Coulombe, titled “System for Adaptation of SIP Messages Based on
`Recipient’s Terminal Capabilities and Preferences,” published December 25,
`2003 from an application filed May 31, 2002. Ex. 1003, cover page.
`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.”
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`Id. ¶ 7. For example, Coulombe describes message size reduction and
`format adaptation for delivery to the destination terminal. Id.
`Figure 1 is reproduced below.
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`Figure 1 shows a message flow for SIP message adaptation using system 10.
`System 10 includes SIP proxy/registrar 12, Capability Negotiation Manager
`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
`sends adapted message 22 to recipient’s terminal 15. Id. ¶ 58. Capability
`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,
`message size reduction, and encapsulation adaptation, as needed. Id. ¶¶ 63,
`85–91. Coulombe further teaches that “adaptation is any manipulation or
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`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.
`Bellordre
`b.
`Bellordre relates to “a method of processing a multimedia message
`and a corresponding processing system.” Ex. 1004 ¶ 1. Multimedia
`messages may contain text, picture, audio, and/or video objects. Id. ¶ 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 terminal,” and stores the adapted message. Id.
`¶¶ 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. ¶ 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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`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,
`audio or video object 24, and text object 25. Id. ¶ 46. Substitute message
`26, depicted in Figure 4 retains identification element 23 and text object 25,
`and further contains sequence 27 and “SDP definition file 28 replacing the
`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.
`Id. ¶48. SDP definition file 28 contains URL hyperlink address 29 of the
`storage location of the object. Id. ¶ 49.
`Friedman
`c.
`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,
`outside, and/or along with, an electronic message.” Id. at 8:1–9. Friedman’s
`attachment processing system: (1) automatically detaches and saves the
`contents of the object; (2) generates a “thumbnail graphic” for a portion of
`the object; and (3) displays the thumbnail graphic in a display area of a
`graphical user interface. Id. at 8:30–34, 59–60, 9:5–7, Figs. 5A, 5B. Figure
`4, reproduced below, illustrates one embodiment of the system’s graphical
`user interface:
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`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
`double-click on the thumbnail graphic. Id. at 9:21–25.
`Independent Claims 1, 11, and 13
`d.
`We follow the parties’ lead and treat claim 1 as representative of
`claims 11 and 13, which are the other independent claims challenged in this
`ground. Pet. 32, 34–35.
`For claim 1, 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)
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`determines an adapted message layout; and (5) facilitates delivery of the
`adapted message to the destination communication device. Pet. 14–16, 18–
`21.
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`Petitioner argues that Coulombe “does not appear to expressly
`disclose that the message received . . . includes a video.” Pet. 16. In
`particular, claim 1 recites that “the initial message” sent from an originating
`communication device “includes a video.” 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 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 (quoting Ex.
`1004 ¶ 62) (emphasis and bracketing added by Petitioner).
`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. In support of this combination, Petitioner
`relies on the testimony of its declarant, Mr. Klausner, who asserts that
`It would have been obvious to a person of ordinary skill in the
`art to combine Coulombe with Bellordre, predictably resulting in
`the messaging system of Coulombe in which the initial message
`also includes a video. The motivation to add video capability is
`self-evident—people have
`long understood
`that video
`information (such as television and motion pictures) can provide
`a more powerful message than text or still photos. One of
`ordinary skill in the art would also have found no technological
`obstacle to, and no teaching away from, adding videos to the
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`messaging system of Coulombe. In addition, 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.
`Ex. 1002 ¶ 64 (emphasis added).
`Additionally, claim 1 requires the “conversion” to provide a
`“clickable icon” that is “based on the video from the initial message and
`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.” For this limitation, 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).
`In its Response, Patent Owner presents several arguments, among
`which is that Petitioner’s reasoning for the combination of Coulombe and
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`Bellordre is unsupported and conclusory. In particular, Patent Owner asserts
`that the reasoning for the combination of the Coulombe and Bellordre
`provided in the Petition and by Petitioner’s declarant, Mr. Klausner, “are not
`well founded and fail to establish a case of obviousness” and that these
`purported motivations (presented in paragraph 64 of Mr. Klausner’s
`declaration) are “nothing more than general factually-unsupported platitudes
`that are repeated nearly verbatim in both the Petition and Mr. Klausner’s
`declaration.” PO Resp. 3, 32.
`Based on the complete record before us, we determine that Petitioner
`has not explained sufficiently its reasoning for the combination of
`Coulombe’s message adaptation system with Bellordre’s video adaptation
`and delivery processes. Specifically, Petitioner’s reasoning is incomplete.
`To start, Petitioner asserts that Coulombe does not expressly disclose a
`message that includes a video, but relies on Bellordre for its teaching of a
`message with a video object. Pet. 16–17. In doing so, Petitioner asserts that
`“[t]he motivation to add video capability is self-evident—people have long
`understood that video information (such as television and motion pictures)
`can provide a more powerful message than text or still photos.” Pet. 17
`(citing Ex. 1002 ¶ 64) (emphases added). In its Reply, Petitioner adds that
`the limitation in question is unusually simple and the technology particularly
`straightforward and that the “benefits of using videos instead of still photos
`was ‘self-evident.’” Reply 16 (citing Ex. 1002 ¶ 64; Ex. 1028 ¶¶ 33–36).
`Petitioner adds that Patent Owner’s position ignores the fact that in any
`obviousness analysis, the amount of explanation and expert testimony
`required depends on the complexity of the combination.
`
`
`
`
`16
`
`
`
`IPR2016-00717
`Patent 8,874,677 B2
`
`
`Mr. Klausner’s testimony mirrors Petitioner’s reasoning in the
`Petition, and states that the motivation to add video capability is “self-
`evident” and “people have long understood that video information (such as
`television and motion pictures) can provide a more powerful message than
`text or still photos.” Ex. 1002 ¶ 64. In his rebuttal declaration, Mr. Klausner
`adds that:
`[t]he motivation to add video capability, as taught by Bellordre,
`is so self-evident that even laypersons would have appreciated
`the value of being able to communicate using video in a
`messaging system. To require more explanation of why video
`capability is beneficial to a messaging system is to ignore
`common sense. And because the motivation to add video
`capability to a messaging system would have been apparent to
`laypersons, it cannot be said to be the product of hindsight.
`Ex. 1028 ¶ 34.
`With regard to common sense, we note that in KSR, the Supreme
`
`Court criticized a rigid approach to determining obviousness based on the
`disclosures of individual prior art references that were already on the record,
`with little recourse to the knowledge, creativity, and common sense that an
`ordinarily skilled artisan would have brought to bear when considering
`combinations or modifications. KSR, at 415–22. However, in relying upon
`common sense, our reviewing court has cautioned “that references to
`‘common sense’—whether to supply a motivation to combine or a missing
`limitation—cannot be used as a wholesale substitute for reasoned analysis
`and evidentiary support.” Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355,
`1362 (2016) (emphasis added).
`
`Based on the complete record before us, we determine that Petitioner
`has not provided the necessary reasoned analysis and evidentiary support for
`the assertion that the incorporation of a video object for adaptation and
`
`
`
`
`17
`
`
`
`IPR2016-00717
`Patent 8,874,677 B2
`
`delivery by Coulombe’s system would have been “common sense.” Neither
`the Petition nor Mr. Klausner declaration testimony explains how the
`asserted combination of Bellordre and Coulombe would be “self-evident,”
`either to a person of ordinary skill in the art or, alternatively, to a “lay
`person” as Mr. Klausner asserts. Further, Petitioner has not explained with
`reasoning or supporting evidence why a person of ordinary skill in the art, or
`a layperson, would consider video to be “more powerful” than text or still
`photos. Rather, Petitioner (and Mr. Klausner) concludes this to be true
`without providing any explanation as to why video is “more powerful,” or at
`a minimum, what “more powerful” means in the context of the field of
`technology and art at issue.
`Additionally, even assuming Petitioner’s general proposition to be
`true—that it is “self-evident” television is more powerful than text or photos,
`it bears mentioning that Petitioner has not explained how this sentiment
`demonstrates the “common sense” or “common knowledge” that a skilled
`artisan would have considered because Petitioner’s assertions are too general
`and fail to take into consideration the specific references, field of
`technology, and art at issue, which are directed to the design and
`implementation of systems for sending and receiving messages over a
`communications network, such as the Internet. In this context, Petitioner
`provides no reasoning beyond the bare statement that the asserted
`combination is “self-evident.” Moreover, Petitioner presumes that which is
`“self-evident” need not be explained. However, this is not the standard by
`which obviousness is shown. Indeed, “assumptions about common sense
`cannot substitute for evidence thereof.” DyStar Textilfarben GmbH & Co.
`Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006).
`
`
`
`
`18
`
`
`
`IPR2016-00717
`Patent 8,874,677 B2
`
`Mr. Klausner’s testimony does not help in this regard. The statements
`
`in Mr. Klausner’s declaration (Ex. 1002) mirror those provided in the
`Petition, and do not point to any evidence in the record to support his
`conclusion that the asserted combination of Bellordre and Coulombe would
`be “self-evident.” Ex. 1002 ¶ 64. Turning to his rebuttal declaration, Mr.
`Klausner states that:
`[t]he motivation to add video capability, as taught by Bellordre,
`is so self-evident that even laypersons would have appreciated
`the value of being able to communicate using video in a
`messaging system. To require more explanation of why video
`capability is beneficial to a messaging system is to ignore
`common sense. And because the motivation to add video
`capability to a messaging system would have been apparent to
`laypersons, it cannot be said to be the product of hindsight.
`Ex. 1028 ¶ 34.
`While Mr. Klausner makes broad statements that it would be “self-
`evident” to a skilled artisan or layperson to add Bellordre’s video messaging
`to Coulombe’s message adaptation system, we, nonetheless, observe that
`Mr. Klausner’s conclusion does not rest upon any reasoning or explanation
`in his declaration to support this position. Thus, we weigh Mr. Klausner’s
`testimony accordingly. See In re Acad. of Sci. Tech Ctr., 367 F.3d 1359,
`1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and
`conclude that the lack of factual corroboration warrants discounting the
`opinions expressed in the declarations.”); see also 37 C.F.R. § 42.65(a)
`(“Expert testimony that does not disclose the underlying facts or data on
`which the opinion is based is entitled to little or no weight.”).
`Moreover, we disagree with Mr. Klausner’s testimony that requiring
`additional explanation would “igno
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