UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`WHATSAPP INC. and FACEBOOK, INC.
`
`Petitioner
`
`v.
`
`TRIPLAY, INC.
`
`Patent Owner
`
`IPR2016‐00718
`
`____________
`
`Patent 8,874,677 B2
`
`
`
`PATENT OWNER’S MOTION FOR OBSERVATIONS ON THE APRIL 14,
`2017 CROSS-EXAMINATION OF MR. KLAUSNER
`
`
`
`
`
`
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`WHATSAPP INC. and FACEBOOK, INC.
`
`Petitioner
`
`v.
`
`TRIPLAY, INC.
`
`Patent Owner
`
`IPR2016‐00718
`
`____________
`
`Patent 8,874,677 B2
`
`
`
`PATENT OWNER’S MOTION FOR OBSERVATIONS ON THE APRIL 14,
`2017 CROSS-EXAMINATION OF MR. KLAUSNER
`
`
`
`
`
`
`
`
`
`
`
`
`
`Observations
`
`The following are the Patent Owner’s observations on the April 14, 2017
`
`cross-examination of Petitioner’s expert, Mr. Klausner, contained in his deposition
`
`transcripts (Ex. 2110)
`
`1.
`
`In exhibit 2110, on page 22, line 18 to page 24, line 14, Mr. Klaunser
`
`testified as follows (objections omitted):
`
`Q. And [Coulombe’s] Proxy Registrar 12 is capable of transcoding video
`in situations in which the codecs don’t match between terminals?
`In your question, what type of video are you referring to?
`A.
`Q.
`Streaming video.
`Proxy 12 can transcode that streaming video between the two users
`A.
`with their terminals, yes.
`Q. In a situation in which the codecs don't match?
`A. Yes.
`Q.· · Okay.· And codecs not matching can occur in circumstances in which
`the sending and receiving terminals have different characteristics with
`respect to format support?
`A.
`It can occur where the two computers or FPGAs or equivalent, as I
`described earlier, do not accept the formats of each other. And so in order
`for those computers and those users to display on their terminals, on their
`displays, there would have to be some adaptation of the codecs.
`…
`session-based SIP
`in
`transcoding proxies
`that
`Q.· You agree
`communications were capable of transcoding media to make it suitable to
`the receiving terminal's capabilities?
`
`
`
`2
`
`
`
`
`
`A. What type of video are you referring to in your question?
`Q.· · Streaming video.
`A.· · Yes.· Coulombe says that his proxy can do that.
`
`This testimony is relevant to Petitioner’s argument at pages 7 to 9 of the Reply
`
`Petition in which Petitioner contends Coulombe actively discourages the use of
`
`existing SIP proxies to transcode video content when it states at ¶ 69: “There is no
`
`mention that such adaptation could take place for messaging applications and no
`
`mention that it should be based on recipient’s characteristics.” This argument is
`
`hereinafter referred to as “the active discouragement argument.” And the
`
`testimony is particularly relevant to the portion of that argument at page 8 of the
`
`Reply asserting that Coulombe “flat out says, in fact, that SIP provides no ability to
`
`adapt streaming video ‘based on the recipient’s terminal characteristics.’” The
`
`testimony is relevant to this argument because it contradicts the statement that SIP
`
`provides no ability to adapt streaming video based on terminal characteristics.
`
`2.
`
`In exhibit 2110, on page 31, line 19 to page 33, line 11, Mr. Klausner
`
`testified as follows (objections omitted):
`
`Q. So the SIP instant messaging protocol didn't have the capability of
`adaption a format to make it suitable to recipient, correct?
`A. I think I've answered this question before, and it was a response to
`Paragraph 7.5·of Exhibit 2104.
`
`
`
`3
`
`
`
`
`
`Q. And that paragraph indicates that if a message is received with an
`unsupported format type, it should return an error message, correct?
`A. That's a re-characterization of 7.5, which actually says, "As specified in
`RFC 2543, if a UAS receives a request with a body of type it does not
`understand, it must respond with a 415 unsupported media type containing
`an Accept header listing those types which are acceptable," and then it goes
`on from there.
`…
`Q. If the sender sent a format that was not supported by the recipient, the
`instant messaging protocol put the onus on the recipient to advise the sender
`of what formats the recipient did actually support?
`A. The SIMPLE protocol of Exhibit 2104, SIMPLE being the capitalized
`word, says that the recipient should respond with an Accept header,
`including those types which are acceptable to the recipient to go back to the
`sender, in the case when a body is not acceptable.· In other words, a body
`that the recipient does not understand.
`Q.· ·And nothing in the SIP instant messaging protocol provided for
`transcoding media formats to make them suitable to the format supported by
`recipient, correct?
`A. I've not seen the word "transcoding" in my brief read of the Exhibit
`2104.
`
`This testimony is relevant to Petitioner’s active discouragement argument at pages
`
`7 to 9 of the Reply Petition. The testimony is relevant to the active
`
`discouragement argument because it supports the Patent Owner’s position that,
`
`when read in proper context, the reference to “messaging applications” in the
`
`
`
`4
`
`
`
`
`
`sentence from ¶ 69 of Coulombe cited by Petitioner (i.e., “There is no mention that
`
`such adaptation could take place for messaging applications and no mention that it
`
`should be based on recipient’s terminal characteristics.”) refers to non-session
`
`based SIP instant messaging--not session-based SIP video streaming.
`
`3.
`
`In exhibit 2110, on page 10, lines 16 to 25 and on page 36, line 2 to
`
`11, Mr. Klaunser testified as follows (objections omitted):
`
`Q.· ·And I would like you to turn your attention to Paragraph 2 of
`Coulombe.
`A.· ·I have it.
`Q.· ·I'm going to read the, I guess it's the third sentence in that paragraph
`which says, "But emerging mobile terminals have made this requirement
`more challenging due to the wide diversity of terminal characteristic:·
`Display size and resolution, available memory, format supported, et cetera."
`…
`Q.· ·So Coulombe defines terminal characteristics to include the format
`supported?
`A. ·What you've read is correct.
`…
`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?
`·· · · vA.· ·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
`
`
`
`5
`
`
`
`
`
`programs and the hardware that are sensitive to formats that are supported
`….·
`This testimony is relevant to Petitioner’s active discouragement argument and, in
`
`particular, the statement at page 8 of the Reply asserting that Coulombe “flat out
`
`says, in fact, that SIP provides no ability to adapt streaming video ‘based on the
`
`recipient’s terminal characteristics.’” The above testimony is relevant because “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.
`
`4.
`
`In exhibit 2110, on page 9, line 19 to 25 and on page 23, line 4 to 10,
`
`Mr. Klausner testified as follows (objections omitted):
`
`Q.· ·Sure.· Without a codec to decode the MPEG formatted video
`received, would a device be capable of displaying the video?
`· · · A.· ·Generally not.· In other words, it's not reasonable to expect it
`would be able to display the video, but the results are unpredictable, even
`though they are reproducible.
`…
`
`
`
`6
`
`
`
`
`
`Q.· ·Okay.· And codecs not matching can occur in circumstances in
`which the sending and receiving terminals have different characteristics with
`respect to format support?
`· · · A.· ·It can occur where the two computers or FPGAs or equivalent, as
`I described earlier, do not accept the formats of each other.· And so in order
`for those computers and those users to display on their terminals, on their
`displays, there would have to be some adaptation of the codecs.
`
`This testimony is relevant to Petitioner’s active discouragement argument and, in
`
`particular, the statement at pages 8 and 9 of the Reply asserting that Coulombe’s
`
`“existing transcoding techniques” did not adapt video to the display capabilities of
`
`the receiving device. The above testimony is relevant to the argument because Mr.
`
`Klausner admits that video will not display if format not supported and, thus,
`
`Coulombe discloses that SIP adapts video based on display capabilities (in view of
`
`its disclosure discussed above of adapting video where formats supported do not
`
`match).
`
`5.
`
`In exhibit 2110, on page 35, line 16 to page 37, line 1, Mr. Klausner
`
`testified as follows (objections omitted):
`
`Q.· · Now, focus on the other part of that sentence that says -- I'll read the
`whole sentence.· "There's no mention that such adaptation could take place
`for messaging applications and no mention that it should be based on
`recipient's terminal characteristics." The part of the sentence that says no
`
`
`
`7
`
`
`
`
`
`mention that should be based on recipient's terminal characteristics, that's
`referring to the fact that there's no mention in the SIP instant messaging
`protocol to do adaption based on terminal characteristics, correct?
`A. Certainly, it's true that the phrase doesn't appear in the SIMPLE
`protocol.·Exhibit 2104.
`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?
`·· · · vA.· ·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
`….·
`Q. So the entire sentence which reads, "There's no mention that such
`adaptation could take place for message applications, and no mention that it
`should be based on recipient's terminal characteristics," that entire sentence
`can't be a criticism of SIP video streaming, can it, because in SIP video
`streaming, as we have discussed, enables video to be transcoded based upon
`the formats supported by the recipients?
`A.
` I don't see that this is a criticism at all.· It's a statement of
`Coulombe's understanding based on Paragraph 64, where he is listing the
`elements that are novel compared to the present SIP related specifications.·
`·
`
`
`
`
`8
`
`
`
`
`
`This testimony is relevant to Petitioner’s active discouragement argument at pages
`
`7 to 9 of the Reply Petition. It is relevant to this argument because Mr. Klausner
`
`admits that the cited sentence is not a criticism of SIP video streaming.
`
`6.
`
`In exhibit 2110, on page 43, line 12 to page 45, line 7, Mr. Klausner
`
`testified as follows (objections omitted):
`
`Q.· ·Well, no.· Let me rephrase that differently. So I'm asking you if you're
`aware of any SIP protocols governing messaging other than the instant
`messaging protocol?
`A. Not at the moment.
`Q.· ·So let's look at Section 1 of the instant messaging protocol.· That's on
`Pages 002 and 003.· And I'm going to refer to the sentence that's in the
`carryover paragraph that's on the top of Page 3.· The last sentence in that
`carryover paragraph, which says, "IM differs from e-mail in common usage
`in that instant messages are usually grouped together into brief live
`conversations consisting of numerous small messages sent back and forth."
`Do you see that?
`A.· ·Yes.
`Q.· ·So what's being described in the instant messaging protocol is not an e-
`mail system, correct?
`A.· ·When you say in your sentence of your question, "the instant messaging
`protocol," to what are you referring?
`Q.· ·Patent Owner's Exhibit 2104 that we have been looking.
`A.· ·In the sentence that you read or refer to, that sentence is a clarification
`of the opening sentence that defines instant messaging as an exchange of
`
`
`
`9
`
`
`
`
`
`content between a set of participants in real time. An e-mail is not intended
`to be real time.· And I understand that is the distinction.
`Q.· ·And what's your understanding of the phrase "brief live conversations"
`in that sentence?
`A.· ·I don't have words to describe something as fundamental as that.· They
`are what they say, brief live conversations, such as what we are having
`now.
`Q.· ·Text conversations of 200 characters or less would qualify as brief life
`conversations?
`A.· ·It depends.· If they are instant messages, then as SIMPLE tells us, then
`yes.
`Q.· ·And the portion of that sentence which says "small messages."· Do you
`see that?
`A.· ·Yes.
`Q.· ·And "small" in that context would refer to the size of the message?
`A.· ·Yes, as understood as of July 2001 at the time of the SIMPLE protocol.
`
`·
`This testimony is relevant to Petitioner’s argument at page 3 of Petitioner’s Reply
`
`that using SIP instant messaging to attach a video “would have involved nothing
`
`more than use of the same well-known technology for attaching files to email
`
`messages” and to Petitioner’s argument at page 5 of Petitioner’s Reply that the
`
`“SIMPLE standard similarly refutes any suggestion of such [i.e., a size] limit ….”
`
`The testimony is relevant to the argument because Mr. Klausner acknowledges that
`
`SIMPLE is a real time system and not an email system and that the contents are
`
`intended to be small in size.
`
`
`
`10
`
`
`
`
`
`7.
`
`In exhibit 2110, on page 65, line 2 to page 66, line 21, Mr. Klausner
`
`testified as follows (objections omitted):
`
`Is there anything in the SIMPLE protocol to show it was intended to
`Q.
`be used as an e-mail system with attachments?
`A.· · Is there some place in the Exhibit 2104 to which you're referring?
`Q.· · Well, I can point you to one place.· But you're free to see if you find
`anything else.· I would point you to the part that we actually looked at
`before in Section 1, first paragraph, where it says, "IM," referring to instant
`messaging, "differs from e-mail in common usage in that instant messages
`are usually grouped together into brief life conversations consisting of
`numerous small messages sent back and forth."
`A.· · Is this on Page 3 of 22?
`Q.· · Correct.
`A.· · Well, I agree with that sentence.· And what is your question?
`Q.· · Is there anything in the SIMPLE protocol to show it was intended to
`be used as an e-mail system with attachments?
`A.· · This doesn't talk about intention.· It talks about common usage.· I
`don't see a limitation here for -- with respect to intention or usage.
`Q. But is there any discussion in the protocol with respect to the usage of
`the protocol as an e-mail system with attachments?
`A.· · And you said you had further places to cite to me within 2104?
`Q.· · No.· That's the only place I'm aware of where e-mail is referenced.
`A.· · I don't see why IM is incapable of acting like e-mail.· The point is that
`IM attempts to reduce the time interval between receipt and delivery to as
`close as zero as possible.· But there's no guarantee that an IM would be
`faster in any event than an e-mail message that's composed, and sent from a
`
`
`
`11
`
`
`
`
`
`recipient to a sender -- to a -- to a sender to recipient.· But that ends my
`answer.
`Q.· Back to my question, which is:· Is there any -- are you aware of any
`discussion in the protocol with respect to the usage of the protocol as an e-
`mail system of attachments?
`A.· · My quick read doesn't show that, but I can't guarantee that it's
`absent.
`
`
`This testimony is relevant to Petitioner’s argument at page 3 of Petitioner’s Reply
`
`that using SIP instant messaging to attach a video “would have involved nothing
`
`more than use of the same well-known technology for attaching files to email
`
`messages.” The testimony is relevant to the argument because Mr. Klausner
`
`admits that email is not the common usage of an instant messaging system and that
`
`that the SIMPLE protocol does not have any discussion of the usage of the
`
`protocol as an email system with attachments.
`
`Respectfully submitted,
`
` By
`/Barry J. Schindler/
`Barry J. Schindler (Reg. No. 32,938)
`Douglas Weider
`Lennie A. Bersh (Reg. No. 55,000)
`Greenberg Traurig, LLP
`500 Campus Drive, Suite # 400
`Florham Park, NJ 07932
`Telephone: 973-360-7900
`Facsimile: 973-301-8410
`SchindlerB@gtlaw.com
`njdocket@gtlaw.com
`
`12
`
`
`
`
`
`
`
`
`
`
`
`
`Dated: April 28, 2017
`
`
`
`
`
`
`Counsel for Patent Owner TriPlay Inc.
`Counselfor Patent Owner TriPlay Inc.
`
`
`
`13
`
`13
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`It
`
`is certified
`
`that a copy of PATENT OWNER’S MOTION FOR
`
`OBSERVATIONS ON THE APRIL 14, 2017 CROSS-EXAMINATION OF MR.
`
`KLAUSNER has been served on Petitioner as provided in 37 C.F.R. § 42.6(e) via
`
`electronic mail transmission addressed to the lead counsel and persons at the
`
`addresses below:
`
`hkeefe@cooley.com
`amace@cooley.com
`mweinstein@cooley.com
`rchen@cooley.com
`WhatApp_PTAB_IPR@cooley.com
`Heidi L. Keefe
`COOLEY LLP
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`Dated: April 28, 2017
`
`
`
`
`
`
`Respectfully submitted,
`
`
`/Barry J. Schindler/
` By
`Barry J. Schindler (Reg. No. 32,938)
`Greenberg Traurig, LLP
`500 Campus Drive, Suite # 400
`Florham Park, NJ 07932
`Telephone: 973-360-7900
`Facsimile: 973-301-8410
`SchindlerB@gtlaw.com
`njdocket@gtlaw.com
`
`
`
`Counsel for Patent Owner TriPlay Inc.
`
`
`
`14
`
`
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