WhatsApp, Inc. and Facebook, Inc., Petitioner v. TriPlay,Inc.,
`Patent Owner, IPR2016-00717 & IPR2016-00718
`
`Patent Owner’s Oral
`Argument Presentation
`On U.S. Patent No.
`8,874,677 B2
`
`June 12, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`PATENT TRIAL AND APPEAL BOARD
`
`1
`
`Triplay Ex. 2011
`
`
`Patent Owner, IPR2016-00717 & IPR2016-00718
`
`Patent Owner’s Oral
`Argument Presentation
`On U.S. Patent No.
`8,874,677 B2
`
`June 12, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`PATENT TRIAL AND APPEAL BOARD
`
`1
`
`Triplay Ex. 2011
`
`
`
`Institution Decision: Resolution
`Required Further Factual Development
`• Board considered Patent Owner’s contention that the Petition failed
`to consider Coulombe’s video delivery teachings but did not find
`the argument persuasive “on the current record.” Decision at 15 (emphasis
`added).
`
`• The argument “requires us to give more weight to Patent Owner’s
`declaration testimony than Petitioner’s declaration testimony.
`Because it would be premature for us to weigh the declarants’
`testimony before either declarant
`is deposed, we decline the
`request.” Id. at 15-16 (emphasis added).
`
`• “[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.” Id. at 15-16.
`
`2
`
`
`
`Institution Decision: Resolution
`Required Further Factual Development
`
`• “We have reviewed Petitioner’s assertions regarding the motivations of a
`person of ordinary skill in the art to combine these references, as well as
`the Patent Owner’s
`arguments why Petitioner’s
`assertions
`are
`insufficient.” Decision at 16.
`
`• “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.” Id. at 16.
`
`• See TriVascular, Inc. v. Samuels, 812 F. 3d 1056, 1068 (Fed. Cir. 2016)
`(“The Board is free to change its view of the merits after further
`development of the record ….” and “is not bound by any findings made
`in its Institution Decision.”)
`
`3
`
`
`
`Petition: Four Disputed Limitations (Claim 1)
`
`1a
`
`1b
`
`1e
`
`1c
`1d
`
`A method comprising: 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 … of the initial message into an
`adapted message
`1f-1 wherein the conversion comprises: providing, by the messaging system, a clickable icon:
`i) based on the video from the initial message and
`ii) [a clickable icon] 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
`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
`
`1f-2
`
`1g
`
`1h
`
`4
`
`
`
`Petition: Four Disputed Limitations (Claim 6)
`
`6a
`
`6b
`
`6c
`
`6d
`
`A messaging system comprising an access block operatively coupled to a media block wherein,
`
`the access bock is configured to receive 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,
`
`6e
`
`6f-2
`
`the media block is configured to obtain data indicative of displaying capabilities of the destination
`communication device and enable conversion … of the initial message into an adapted message,
`6f-1 wherein the conversion comprises: providing, by the media block, a clickable icon:
`i) based on the video from the initial message and
`ii) [a clickable icon] 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
`determining, by the media block, an adapted message layout, comprising the clickable icon;
`and
`the access block is further configured to enable transmitting the adapted message to the destination
`device associated with the at least one receiver.
`
`6g
`
`6h
`
`5
`
`
`
`Petition Relies On Four Obviousness Combinations
`
`LIMITATION
`6d: “wherein the initial message
`includes a video”
`6f-1: “wherein the conversion
`comprises: providing, by the
`messaging system, a clickable icon:
`
`i) based on the video from the initial
`message and”
`
`6f-2: “ii) [a clickable icon] 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
`
`6g: “b) determining, by the messaging
`system, an adapted message layout,
`comprising the clickable icon; and
`
`PETITION
`Coulombe in view of Bellordre
`
`Coulombe in view of Friedman
`
`Coulombe in view of Friedman and Bellordre
`
`Coulombe in view of Friedman and Bellordre
`
`6
`
`
`
`Petition Relies On Bellordre’s Video And Video Adapatation For
`Claim Limitation 6d And A Portion Of 6f-2
`LIMITATION
`PETITION
`•“Coulombe does not appear to expressly disclose that the
`6d: “wherein the initial
`message includes a
`message received from the sending device (19) ‘includes a
`video”
`video’ as recited in claim 6.” Pet. at 21.
`
`6f-2: “ii) [a clickable
`icon] 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
`
`• “The message in Bellordre expressly ‘contain[s] … at least
`one audio or video multimedia object.’” Pet. at 21 (emphasis in
`original).
`
`• “Friedman does not appear to expressly disclose that
`the
`thumbnail graphic is 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” Pet. at 29.
`
`• A POSITA would have been motivated to apply … Friedman ..
`with the adapted video of Bellordre such that the thumbnail
`graphic is clickable ‘into an adapted version of the video,
`wherein adapted version is adapted to displaying capabilities
`of the destination device.” Pet. at 30.
`
`7
`
`
`
`No Basis Offered To Modify Coulombe In Accordance With
`Bellordre’s Video Delivery And Adaptation
`• “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.”
`
`• “no technological obstacle to, and no teaching away from, adding videos”
`
`• “analogous references in the same field of adapting messages ….”
`
`• “A [POSITA] would also have been motivated to apply Bellordre’s
`teachings on adapting video (to the displaying capabilities of
`the
`recipient’s device) to the messaging system disclosed in Coulombe.” Pet. at
`21-22.
`
`8
`
`
`
`Petition’s Offered Motivation To Modify Coulombe In Accordance
`With Bellordre To Arrive At Limitation 6d Is Meritless
`“self-evident” video capability and the ability to adapt video cannot
`be a motivation to combine with Bellordre: Petitioner admits that
`Coulombe had “video capability” and adapted video to the display
`capabilities of the recipient’s device. POR at 33-34.
`
`Petitioner’s expert Mr. Klausner:
`
`in session-based SIP
`transcoding proxies
`Q. You agree that
`communications were capable of transcoding media to make it
`suitable to the receiving terminal's capabilities?
`A. What type of video are you referring to in your question?
`
`Streaming video.
`Q.
`A.· · Yes.· Coulombe says that his proxy can do that.
`Ex. 2110 [Klausner Dep.] at 24:4-14 (objections omitted)(emphasis added).
`
`9
`
`
`
`Coulombe Incorporates Two Methods Of Communication
`
`“SIP proxy/registrar 12: this element performs the operations required
`by a SIP proxy and registrar specified in RFC 2543 …” Ex. 1103 [Coulombe]
`¶56 (emphasis added). RFC 2543 describes session-based method of
`at
`communication which supports streaming video. POR at 13 (citing to Ex. 2103
`[RFC 2543] at abstract & § 1.1) See also POR at 13-14.
`
`10
`
`
`
`Coulombe Incorporates Two Methods Of Communication
`
`•
`
`•
`
`•
`
`Session Based
`Protocol is described in RFC 2543. Patent Owner Response (“POR”) at 13
`(citing to Ex. 2103 and Ex. 2107 [Surati] at ¶ 31).
`
`Participants negotiate capabilities in advance of communication.
`POR at 13 (citing to Ex. 2107 [Surati] at ¶ 31, Ex. 2103 [RFC 2543] at §1.1 and Ex. 1103
`[Coulombe] at ¶ 67)
`
`and media
`communications
`Supported multimedia
`included video. POR at 13 (citing to Ex. 2103 [RFC 2543] at abstract & § 1.1)
`
`types
`
`11
`
`
`
`Coulombe’s Session-Based Method Supported Video Delivery and
`Adaptation Based on Terminal Capabilities
`
`• A POSITA would understand that SIP proxy/registrar 12:
`o “include[s] all the function set out in RFC 2543” including “configuring
`media streams.” POR at 17 (citing to Ex. 2108 [Klausner Dep. ] at 21:14-24)
`o Enabled adaptation of content between devices of different capabilities:
`proxy server 12 can use exchanged capability information to transcode
`content into a format the recipient’s device was capable of decoding. POR
`at 13 (citing to Ex. 1103 [Coulombe] at ¶ 69 and Ex. 2108 [Klausner Dep. Tr.] at 25:19-25)
`
`12
`
`
`
`Coulombe Describes Two Methods Of Communication
`
`•
`
`•
`
`NonSession Based
`• Only protocol: “SIP Extensions for Instant Mesaging” (SIMPLE) [Ex.
`2104] is cited at ¶ 69 of Coulombe. POR at 14 (citing to Ex. 2107[Surati] at ¶ 33)
`“This document defines an extension to SIP (RFC 2543 [2]) to
`support Instant Messaging.” Ex. 2104 [SIMPLE] at 0002
`“IM differs from email in common usage in that instant messages are
`usually grouped together in brief live conversations, consisting of
`numerous small messages sent back and forth.” Ex. 2104 [SIMPLE] at 0002
`(emphasis added).
`SIP instant messages “do not create any implied” session or have “any
`concept of call state.” POR at 14-15 (citing to Ex. 2104 at 5.)
`“Without a session … there [is] no means of knowing the capabilities
`or user preferences of the destination terminal.” POR at 14-15 (citing to Ex.
`1103[Coulombe] at ¶ 67)
`
`•
`
`•
`
`13
`
`
`
`Petition’s Failure To Consider Coulombe’s Session-Based Method
`Supporting Video Delivery And Adaptation Is Fatal
`
`• Petition does not even discuss the session-based video
`streaming capabilities of Coulombe’s Registrar 12. POR at 33.
`
`• See Runway Safe, IPR2015-01932, Paper 9 at 7 (refusing
`to institute where petitioner’s proposed rationale,
`“improvement
`in the water absorption resistance,”
`ignored the fact
`that
`the base reference already
`“addresse[d] the problem of water intrusion”).
`
`14
`
`
`
`Petitioner’s Expert Offers New Reasons At Deposition To Modify
`Coulombe In Accordance With Bellordre To Arrive At Limitation 6d
`Q. “… why would a person of ordinary skill in the art look to Bellordre … for the
`delivery of video when Coulombe already had these various elements in it with
`respect to the delivery of video?
`
`A. Coulombe doesn't deal with video objects. They're not message objects, and so
`these are not deliverable without combining in light of – with Bellordre, which
`does deal with encapsulated or video objects. Think of a TV broadcast, receiving a
`TV broadcast that never ends or that may never end.
`
`Q. So, in your opinion, it's not relevant to your combination analysis that Coulombe
`may have already built
`into it aspects related to video delivery,
`including
`transcoding capabilities?
`
`A. It is relevant. I took that into account. The video is not capable of being a
`message object in Coulombe.” POR at 34-35 (cition Ex. 2108 [Klausner Dep.] at 113:11-114:8)
`
`15
`
`
`
`Petitioner’s Expert Offers New Reasons At Deposition To Modify
`Coulombe In Accordance With Bellordre To Arrive At Limitation 6d
`• Coulombe’s video was not a message because “[i]t’s a
`streaming video.
`It’s a multimedia communication, as
`SIP describes, inside a session.” POR at 35 (citing to Ex. 2108 [Klausner
`Dep.] at 113:11-114:8)
`
`• Coulombe’s video did not meet Petitioner’s construction
`of a message (“any kind of communication object
`capable of being exchanged between communication
`devices”) because its “a stream” and does not become an
`object until “after it’s stored.” POR at 35 (citing to Ex. 2108 [Klausner Dep.]
`at 34:24-35:12)
`
`16
`
`
`
`Petitioner’s Expert’s New Reasons Are Not A Basis To Modify
`Coulombe In Accordance With Bellordre Even If Considered
`• Streaming video is a message (“any kind of communication object capable
`of being exchanged between communication devices”) POR at 39 (citing to Ex.
`2107 [Surati] at ¶68)
`
`• Mr. Klausner testified that streaming audio in Bellordre qualified as a
`message in the IPR of the ‘574 Patent. POR at 37-39.
`
`•
`
`“the streaming server 8 of the messaging system transmits or delivers an
`adapted version of the audio object 24 to the recipient’s terminal 10 based on
`the streaming request it receives from terminal 10” POR at 38 (citing to Ex. 2109
`[Klausner Decl. re: 574 Petitions] at ¶ 108
`
`• Claim requires the “download of a ‘message’ POR at 38 (citing to Ex. 2109
`[Klausner Decl. re: 574 Petitions] at ¶ 79
`
`•
`
`“the audio file therefore qualifies as a separate message” because it meets
`the definition – “any kind of communication objects capable [of being]
`exchanged between communication devices. Id.
`
`17
`
`
`
`Petitioner’s Reply Offers New Reasons To Modify Coulombe In
`Accordance With Bellordre To Arrive At Limitation 6d
`Petitioner’s Argument that Coulombe discourages SIP video streaming:
`
`• “The sole reference to video content in Coulombe appears in Paragraph 69, which
`mentions use of existing SIP proxies to transcode video content, but actively
`discourages their use” Reply at 7.
`
`• “It is said in SIP that proxies may transcode content. However, the scope of this
`claim was mainly for multimedia sessions (audio or video calls) where codecs or
`the bandwidths between users don’t match. In that case, the proxy can use the
`information in SDP to “fill the gap” between the two terminals. There is no
`mention that such adaptation could take place for messaging applications and no
`mention that it should be based on recipient’s terminal characteristics.” Reply at 7
`(citing to Coulombe, ¶ 69) (emphasis in orginal).
`
`• Paragraph 69 “flat out says, in fact, that SIP provides no ability to adapt streaming
`video ‘based on recipient’s terminal characteristics.” Reply at 8.
`
`18
`
`
`
`New Reasons Offered In Reply Are Not A Basis To Modify
`Coulombe In Accordance With Bellordre To Arrive At Limitation 6d
`Mr. Klausner’s testimony contradicts that ¶ 69 “says, in fact, that SIP provides no
`ability to adapt streaming video ‘based on recipient’s terminal characteristics.’”
`
`Patent Owner Observation 1:
`
`Q. And [Coulombe’s] Proxy Registrar 12 is capable of transcoding video in
`situations in which the codecs don’t match between terminals?
`A. In your question, what type of video are you referring to?
`
`Q. Streaming video.
`A. Proxy 12 can transcode that streaming video between the two users with their
`terminals, yes.
`
`Q. In a situation in which the codecs don't match?
`A. Yes.
`
`19
`
`
`
`New Reasons Offered In Reply Are Not A Basis To Modify
`Coulombe In Accordance with Bellordre To Arrive At Limitation 6d
`Mr. Klausner’s testimony contradicts that ¶ 69 “says, in fact, that SIP provides no
`ability to adapt streaming video ‘based on recipient’s terminal characteristics.”
`
`Patent Owner Observation 1 (continued):
`
`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.
`
`.· You agree that transcoding proxies in session-based SIP communications were capable
`of transcoding media to make it suitable to the receiving terminal's capabilities?
`A. What type of video are you referring to in your question?
`
`…Q
`
`Q.· · Streaming video.
`A.· · Yes.· Coulombe says that his proxy can do that.
`Ex. 2110 [Klausner Dep.] at 22:18 to 24:14 (objections omitted) (emphasis added).
`
`20
`
`
`
`New Reasons Offered In Reply Are Not A Basis To Modify
`Coulombe In Accordance With Bellordre To Arrive At Limitation 6d
`Mr. Klausner’s testimony contradicts that ¶ 69 “says, in fact, that “SIP provides no
`ability to adapt streaming video ‘based on recipient’s terminal characteristics.”
`
`Patent Owner Observation 3:
`
`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 characteristics:· Display size and
`resolution, available memory, format supported, et cetera.”
`
`.· ·So Coulombe defines terminal characteristics to include the format supported?
`A. ·What you've read is correct.
`…
`
`…Q
`
`21
`
`
`
`New Reasons Offered In Reply Are Not A Basis To Modify
`Coulombe In Accordance With Bellordre To Arrive At Limitation 6d
`Mr. Klausner’s testimony contradicts that ¶ 69 “says, in fact, that “SIP provides no
`ability to adapt streaming video ‘based on recipient’s terminal characteristics.’”
`
`Patent Owner Observation 3 (continued):
`
`the second
`Q. And as we talked about before when we talked about
`paragraph of Coulombe, Coulombe does list format supported as a terminal
`characteristic, correct?
`
`A.·Yes.· And as I've said many times today, Coulombe, I think the person
`of ordinary skill would understand Coulombe to mean the entire recipient
`side that includes the physical display as well as the -- particularly, the
`programs and the hardware that are sensitive to formats that are
`supported
`
`Ex. 2110 [Klausner Dep.] at 10:16-26 & 36:2-11 (objections omitted) (emphasis added)
`
`22
`
`
`
`New Reasons Offered In Reply Are Not A Basis To Modify
`Coulombe In Accordance With Bellordre To Arrive At Limitation 6d
`
`Petitioner’s response to Observations 1: “It is clear that the term
`“recipient’s terminal characteristics” used in the context of
`Coulombe ¶ 69 … refers to characteristics other than “codecs.”
`Response to Observations at pg. 3 (emphasis added).
`
`Petitioner’s response to Observation 3:
`“The Patent Owner
`the term “terminal
`asked Mr. Klaunser about
`the use of
`characteristics” in ¶ 2 of Coulombe and did not ask him about the
`use of the term “recipient’s terminal characteristics” in ¶ 69. As
`discussed in Response to Observation #1, it is clear that the term
`“recipient’s terminal characteristics,” as used in the context of
`Coulombe ¶ 69, refers to characteristics other than “codecs.”
`Response to Observations at pg. 3 (emphasis added)
`
`23
`
`
`
`New Reasons Offered In Reply Are Not A Basis To Modify
`Coulombe In Accordance With Bellordre To Arrive At Limitation 6d
`Mr. Klausner was asked about “recipient’s terminal characteristics” in
`¶ 69.
`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.
`Ex. 2110 [Klausner Dep.] at 36:13-37:1 (objections omitted) (emphasis added)
`
`24
`
`
`
`Coulombe “Invention”: Novelty Over Existing Methods Is Adding
`Capability Negotiation To Non-Session Method
`
`•
`
`SIP instant messaging method did not provide for capability
`negotiation. POR at 15.
`
`• Coulombe novelty: provides “a method for capability negotiation
`regardless if the application is session-based or not.” POR at 14 (citing to
`Ex. 1103[Coulombe] at ¶ 68)
`
`•
`
`“three elements in combination: SIP proxy/registrar 12, Capability
`Negotiation Manager 15 and Message Adaption Engine 20.” POR at 16
`(citing to Ex. 1103 [Coulombe] at ¶ 59)
`
`• Capability Negotiation Manager 16 adds missing piece so non-session
`based communications can resolve capability differences. POR at 16
`(citing to Ex. 1103[Coulombe] at ¶ 59 & Ex. 2107 [Surati] at ¶36)
`
`25
`
`
`
`New Reasons Offered In Reply Are Not A Basis To Modify
`Coulombe In Accordance with Bellordre To Arrive At Limitation 6d
`¶69: no discouragement of SIP video streaming; listing elements that are novel
`
`“[0064] The following elements are novel compared to the present SIP-related
`specifications:
`….
`[0069] 2) Proxy adapting message based on recipient terminal capabilities or
`user preferences: It is said in SIP that proxies may transcode content. However,
`the scope of this claim was mainly for multimedia sessions (audio or video
`calls) where codecs or the bandwidths between users don’t match. In that case,
`the proxy can use the information in SDP to “fill the gap” between the two
`terminals. There is no mention that such adaptation could take place for
`messaging applications and no mention that it should be based on recipient’s
`terminal characteristics. In [SIMPLE], which describes SIP extensions for
`instant messaging, there is no mention of adaptation functionality. It says
`that if a recipient doesn’t support a certain format, it should return an
`error message (415=Unsupported Media Type) containing an Accept header
`listing the supported formats. This would tell the sender the valid formats to
`send.”
`
`26
`
`
`
`Petition Relies On Coulmobe In View Of Friedman For
`Claim Limitation 6f-1
`PETITION
`Coulombe in view of Bellordre
`
`Coulombe in view of Friedman
`
`Coulombe in view of Friedman and Bellordre
`
`Coulombe in view of Friedman and Bellordre
`
`27
`
`LIMITATION
`6d: “wherein the initial message
`includes a video”
`6f-1: “wherein the conversion
`comprises: providing, by the
`messaging system, a clickable icon:
`
`i) based on the video from the initial
`message and”
`
`6f-2: “ii) [a clickable icon] 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
`
`6g: “b) determining, by the messaging
`system, an adapted message layout,
`comprising the clickable icon; and
`
`
`
`Petition Relies On Coulombe In View Of Friedman
`For Claim Limitation 6f-1
`
`• “Coulombe and Bellordre do not appear
`to expressly disclose a
`“clickable icon” but this limitation is supplied by Friedman, which
`dislcoses a “clickable icon” in the form of “[t]humbnail graphic 525.”
`Pet. at 27.
`
`•
`
`It would have been obvious to one of ordinary skill in the art in view of
`Coulombe and Friedman for the thumbnail graphic to be “provid[ed], by
`the media block.” In operation, “the [Friedman] processing system …
`automatically detaches and saves the contents of the [attachment/]object,
`partially or wholly, without any manual intervention on the part of the
`message recipient.” Pet. at 21 (emphasis in original).
`
`28
`
`
`
`Petition Relies On Coulombe In View Of Friedman
`For Claim Limitation 6f-1
`
`29
`
`
`
`Petition Requires Coulombe To Be Modified In Accordance With
`Bellordre For Friedman Combination To Be Beneficial
`• Friedman processing system generates clickable icons but it only does so based
`on receiving video attachments. POR at 46.
`
`• Couombe discloses a system in which video streams are received, processed and
`delivered, and such streams are not video attachments.
`POR at 46 (citing to Ex.
`2107[Surati] at ¶ 80.)
`
`• Only way to arrive at a functional combination was to work backwards from
`claim:
`
`•
`
`Friedman discloses a clickable icon requiring an attachment; Coulombe’s
`streaming video – not attachments. POR at 46 (citing to Ex. 2107 [Surati] at ¶ 81.)
`
`• Petitioner proposes Bellordre’s “video object” disclosure to bridge the gap.
`
`• But no basis to bring in Bellordre to bridge the gap. POR at 46 (citing to Ex. 2107
`[Surati] at ¶ 81.)
`
`30
`
`
`
`Petitioner’s Motivation To Combine Coulombe and Friedman To
`Arrive At Claim Limitation 6f-1 Is Based On Conclusory Leaps
`• Alleged motivation to make combination is because Coulombe
`“expressly discloses that an initial message is configured to include
`attachments.” Pet. at 30-31.
`• Fig. 2: Three images on screen and not attachments. POR at 48 (citing Ex. 2107
`[Surati] at ¶ 85.
`
`31
`
`
`
`Petitioner’s Motivation To Combine Coulombe and Friedman To
`Arrive At Claim Limitation 6f-1 Is Based On Conclusory Leaps
`• Alleged motivation to make combination is because Coulombe
`“expressly discloses that an initial message is configured to include
`attachments.” Pet. at 30-31.
`
`• Purported motivation is nothing more than “attach” appears on Fig. 2 screen.
`Not called out in specification. A POSITA would have no reason to understand
`that as relating to the described invention. POR at 49 (citing Ex. 2107 [Surati] at ¶ 86).
`
`• Mr. Klausner admitted at his deposition that he had no information other than
`that:
`
`“Q. Do you have any other basis, other than the fact that the word “attach”
`appears on the screen, to support that Coulombe contemplated sending media
`items by attachments?
`
`A. That is all I can think of at the moment.” POR at 49 (citing Ex. 2108 [Klausner
`Dep. Tr.] at 104:7-11)
`
`32
`
`
`
`Petitioner’s Motivation To Combine Coulombe and Friedman To
`Arrive At Claim Limitation 6f-1 Is Based On Conclusory Leaps
`“Mr. Klausner acknowledges that SIMPLE is a real time system and not an
`email system ….” Patent Owner Observation 6 at pgs. 9-10
`
`Patent Owner Observation 6:
`
`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 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.
`
`33
`
`
`
`Petitioner’s Motivation To Combine Coulombe and Friedman To
`Arrive At Claim Limitation 6f-1 Is Based On Conclusory Leaps
`“Mr. Klausner acknowledges that SIMPLE is a real time system and not an
`email system ….” Patent Owner Observation 6 at pgs. 9-10
`
`Patent Owner Observation 6 (continued):
`
`So what's being described in the instant messaging protocol is not an
`Q.
`email 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.
`In the sentence that you read or refer to, that sentence is a clarification
`A.
`of the opening sentence that defines instant messaging as an exchange of
`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.
`
`Ex. 2110 [Klausner Dep.] at 43:12 to 45:7 (objections omitted) (emphasis added).
`
`34
`
`
`
`Petition Relies On Coulmobe In View Of Friedman and
`Bellordre For Claim Limitation 6f-2
`LIMITATION
`PETITION
`Coulombe in view of Bellordre
`6d: “wherein the initial message
`includes a video”
`6f-1: “wherein the conversion
`comprises: providing, by the
`messaging system, a clickable icon:
`
`Coulombe in view of Friedman
`
`i) based on the video from the initial
`message and”
`
`6f-2: “ii) [a clickable icon] 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
`
`6g: “b) determining, by the messaging
`system, an adapted message layout,
`comprising the clickable icon; and
`
`Coulombe in view of Friedman and Bellordre
`
`Coulombe in view of Friedman and Bellordre
`
`35
`
`
`
`Petition Relies On Coulmobe In View Of Friedman and
`Bellordre For Full Scope Of Claim Limitation 6f
`To meet full claim scope of claim limitation 6f, the Petitioner combines Coulombe,
`Bellordre and Friedman and contends that:
`
`“[the combination] would have predictably resulted in the messaging system of Coulombe
`in which messages received by the SIP Proxy/Registrar (12) encompassed messages that
`include a video, and in which the Message Adaptation Engine (20) provided a thumbnail
`graphic (“clickable icon”) (i) based on the video and (ii) clickable into an adapted version
`of the video.” Pet. at 30 (emphasis added)
`
`6f-1 portion depicted below:
`
`36
`
`
`
`Petition Relies On Coulmobe In View Of Friedman and
`Bellordre For Full Scope Of Claim Limitation 6f
`
`• 6f-2 further requires generating “an adapted version of the
`video of the video, wherein the adapted version of the
`video is adapted to the displaying capabilities of the
`destination device”
`o 6f-2 combination fails because Petition does not
`explain why a POSITA would ignore video adaptation
`capabilities within Coulombe. POR at 53.
`o 6f-2 also fails to offer any rationale for combining all
`three references. POR at 53-54.
`
`37
`
`
`
`•
`
`Petition Relies On Coulmobe In View Of Friedman and
`Bellordre For Full Scope Of Claim Limitation 6f
`Per Petition – “one of ordinary skill in the art would have been
`motivated to apply the teachings of Friedman to “uniquely
`associate[]” the generated thumbnail graphic within the adapted
`video of Bellordre, such that the thumbnail graphic is clickable
`“into an adapted version of the video ….” (Pet. at 30)
`
`• No explanation of “why”
`
`• Friedman describes a client-side email program that would
`allow message recipients to manage their email boxes. POR at 54-
`55 (citing Ex. 2107 [Surati] at ¶ 95).
`
`• Petitioner points to nothing in Friedman that would suggest that
`Problems Friedman was trying to solve in creating icons had
`anything to do with converting the formats of attachments. Id.
`
`38
`
`
`
`Petition Relies On Coulmobe In View Of Friedman and
`Bellordre For Claim Limitation 6g
`LIMITATION
`PETITION
`Coulombe in view of Bellordre
`6d: “wherein the initial message
`includes a video”
`6f-1: “wherein the conversion
`comprises: providing, by the
`messaging system, a clickable icon:
`
`Coulombe in view of Friedman
`
`i) based on the video from the initial
`message and”
`
`6f-2: “ii) [a clickable icon] 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
`
`6g: “b) determining, by the messaging
`system, an adapted message layout,
`comprising the clickable icon; and
`
`Coulombe in view of Friedman and Bellordre
`
`Coulombe in view of Friedman and Bellordre
`
`39
`
`
`
`Petition Relies On Coulmobe In View Of Friedman and
`Bellordre For Claim Limitation 6g
`• Petition acknowledges that Coulombe does not disclose the full scope of
`the limitation g (“determining, by the media block, an adapted message
`layout, comprising the clickable icon”). Pet at 32.
`
`• For full scope, Petition relies on:
`
`o Friedman -- discloses a “clickable icon” (Pet. at 33) and
`
`o Bellordre – “discloses a technique in which a ‘representative image’ of a video
`… can be interested into an adapted message layout.” (Pet. at 32)
`
`40
`
`
`
`Petition Offers No Motivations To Combine Coulmobe In
`View Of Friedman and Bellordre For Claim Limitation 6g
`• Motivations for this limitation do nothing other than say the word
`“obvious” – saying its obvious is not a motivation. POR at 58.
`
`• The word “obvious” appears three times in the Petition section addressing
`the combination. Pet. at 32-34
`
`• The limitation “would have been obvious over Coulombe in view of
`Bellordre and Friedman.” Pet. at 32.
`
`• Then, after describing the add/extraction module of Bellordre, the
`Petition states:
`“Thus, it would have been obvious to insert the
`clickable thumbnail graphic (“clickable icon”) taught by Friedman
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