Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 44
`Entered: August 28, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`WHATSAPP INC.,
`Petitioner,
`
`v.
`
`TRIPLAY, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-00718
`Patent 8,874,677 B2
`_______________
`
`
`Before JOSIAH C. COCKS, BRIAN J. MCNAMARA, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 44
`Entered: August 28, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`WHATSAPP INC.,
`Petitioner,
`
`v.
`
`TRIPLAY, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-00718
`Patent 8,874,677 B2
`_______________
`
`
`Before JOSIAH C. COCKS, BRIAN J. MCNAMARA, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`IPR2016-00718
`Patent 8,874,677 B2
`
`
`I. INTRODUCTION
`A. Background
`WhatsApp Inc. (“Petitioner”) filed a Petition requesting inter partes
`review of claims 6, 7, and 15 of U.S. Patent No. 8,874,677 B2 (Ex. 1101,
`“the ’677 patent”). Paper 1 (“Pet.”). TriPlay, Inc. (“Patent Owner”) filed a
`Preliminary Response. Paper 14.
`Based on these submissions, we instituted an inter partes review of
`claims 6, 7, and 15 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 17 (“Dec. on Inst.”).
`After institution, Patent Owner filed its Patent Owner Response on
`December 16, 2016 (Paper 23, “PO Resp.”) and Petitioner filed a Reply
`(Paper 28, “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 6, 7, and 15 of the
`’677 patent are unpatentable.
`
`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-
`
`
`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).
`
` 2
`
`
`
`
`
`
`
`IPR2016-00718
`Patent 8,874,677 B2
`
`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 IPR2016-00717.4
`
`C. The ’677 Patent
`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. 1101, 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.
`
`
`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.
`
`
`
`
`4 A Final Written Decision in IPR2016-00717 has been issued concurrently
`with the present Decision.
`
` 3
`
`
`
`
`
`
`
`IPR2016-00718
`Patent 8,874,677 B2
`
`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.
`
`
`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
`
` 4
`
`
`
`
`
`
`
`IPR2016-00718
`Patent 8,874,677 B2
`
`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.
`at16:64–17:3. 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.
`
`D. The Challenged Claims
`Of the challenged claims, claim 6 is independent and is reproduced
`
`below:
`
` 5
`
`
`
`
`
`
`
`IPR2016-00718
`Patent 8,874,677 B2
`
`
`6. A messaging system comprising an access block operatively
`coupled to a media block, wherein:
`the access block 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;
`the media block is configured to obtain data indicative of
`displaying capabilities of the destination communication device
`and enable 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
`to enable
`the access block
`is further configured
`transmitting
`the adapted message
`to
`the destination
`communication device associated with the at least one receiver.
`
`
`
`
`II. ANALYSIS
`A. Claim Construction
`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
`ordinary and customary meaning as understood by a person of ordinary skill
`
` 6
`
`
`
`
`
`
`
`IPR2016-00718
`Patent 8,874,677 B2
`
`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.”).
`
`B. Ground Under 35 U.S.C. § 103
`1. Principles of Law
`A claim is unpatentable under § 103(a) 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.
`
` 7
`
`
`
`
`
`
`
`IPR2016-00718
`Patent 8,874,677 B2
`
`
`2. Level of Skill in the Art
`
`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. 1102 ¶ 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. 2102 ¶ 31.
`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. 1102
`¶ 16; Ex. 2102 ¶ 31. Based on the complete record, including our review of
`the ’677 patent and the types of problems and solutions described in the ’677
`
` 8
`
`
`
`
`
`
`
`IPR2016-00718
`Patent 8,874,677 B2
`
`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).
`3. Claims 6, 7, and 15—Obviousness over Coulombe, Bellordre, and
`Friedman
`We instituted trial on the ground that the subject matter of claims 6, 7,
`and 15 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.
`
`a. Coulombe
`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. 1103, 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.”
`
` 9
`
`
`
`
`
`
`
`IPR2016-00718
`Patent 8,874,677 B2
`
`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. 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
`
`
`
`
`10
`
`
`
`IPR2016-00718
`Patent 8,874,677 B2
`
`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.
`
`b. Bellordre
`Bellordre relates to “a method of processing a multimedia message
`and a corresponding processing system.” Ex. 1104 ¶ 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:
`
`Fig. 3 Fig. 4
`
`
`
`
`
`
`11
`
`
`
`IPR2016-00718
`Patent 8,874,677 B2
`
`
`
`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
`a.
`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:
`
`
`
`
`12
`
`
`
`IPR2016-00718
`Patent 8,874,677 B2
`
`
`
`
`
`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.
`
`c. Independent Claim 6
`For claim 6, 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 (5) facilitates delivery of the
`adapted message to the destination communication device. Pet. 16–30.
`
`
`
`
`13
`
`
`
`IPR2016-00718
`Patent 8,874,677 B2
`
`
`Petitioner argues that Coulombe “does not appear to expressly
`disclose that the message received . . . includes a video.” Pet. 21. In
`particular, claim 6 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 22 (emphasis omitted).
`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. 29–30
`(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 the
`following:
`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
`messaging system of Coulombe. In addition, Bellordre and
`Coulombe are analogous references in the same field of adapting
`
`
`
`
`14
`
`
`
`IPR2016-00718
`Patent 8,874,677 B2
`
`
`technical capabilities, and
`the
`to
`messages according
`specifically, displaying capabilities, of mobile terminals.
`Ex. 1102 ¶ 64 (emphasis added).
`Additionally, claim 6 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 27 (citing
`Ex. 1105, 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. 27–28
`(citing Ex. 1105, 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 31 (citing Ex. 1002 ¶ 76). 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 29–30 (citing Ex. 1002 ¶ 74).
`In its Response, Patent Owner presents several arguments, among
`which is that Petitioner’s reasoning for the combination of Coulombe and
`Bellordre is unsupported and conclusory. In particular, Patent Owner asserts
`that the reasoning for the combination of the Coulombe and Bellordre
`
`
`
`
`15
`
`
`
`IPR2016-00718
`Patent 8,874,677 B2
`
`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, 33.
`Based on the complete record before us, we determine that Petitioner
`has not explained sufficiently its reasoning for the combination of Coulombe
`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. 21–22
`(citing Ex. 1102 ¶ 65) (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. 1102 ¶ 65; Ex. 1128 ¶¶ 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.
`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
`
`
`
`
`16
`
`
`
`IPR2016-00718
`Patent 8,874,677 B2
`
`television and motion pictures) can provide a more powerful message than
`text or still photos.” Ex. 1102 ¶ 65. In his rebuttal declaration, Mr. Klausner
`adds the following:
`[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. 1128 ¶ 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
`delivery by Coulombe’s system would have been “common sense.” Neither
`the Petition nor Mr. Klausner’s declaration testimony explains how the
`asserted combination of Bellordre and Coulombe would be “self-evident,”
`
`
`
`
`17
`
`
`
`IPR2016-00718
`Patent 8,874,677 B2
`
`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. In particular, 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. That, however, 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).
`
`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
`
`
`
`
`18
`
`
`
`IPR2016-00718
`Patent 8,874,677 B2
`
`conclusion that the asserted combination of Bellordre and Coulombe would
`be “self-evident.” Ex. 1102 ¶ 66. Turning to his rebuttal declaration, Mr.
`Klausner states the following:
`[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. 1128 ¶ 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 “ignore common sense.” See Ex. 1102 ¶ 34.
`Although “common sense of those skilled in the art demonstrates why some
`combinations would have been obvious where others would not,” Leapfrog
`Enters., Inc. v. Fisher–Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007), the
`determination is made not after observing what the inventor actually did, but
`
`
`
`
`19
`
`
`
`IPR2016-00718
`Patent 8,874,677 B2
`
`in light of the state of the art before the invention was made, see Outside the
`Box Innovations, LLC v. Travel Caddy, Inc., 695 F.3d 1285, 1298 (Fed. Cir.
`2012). Here, on this record, Mr. Klausner does not address why it would
`have been “self-evident,” or, more importantly, common sense for a skilled
`artisan to modify Coulombe’s message adaptation system with Bellordre’s
`video content. Further, Mr. Klausner’s appeal to the “layperson” is also
`unavailing as Mr. Klausner does not direct us to any support in the record
`that a layperson would have this understanding of messaging systems. See
`Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360–61 (Fed.Cir.2011)
`(providing that the inquiry under § 103 is not whether the claimed invention
`is “sufficiently simple to appear obvious to judges after the discovery is
`finally made”). We recognize that the Board has subject matter expertise,
`but the Board cannot accept general conclusions about what is “self-evident”
`or “common sense” as a replacement for documentary evidence for core
`factual findings in a determination of patentability. See K/S Himpp v. Hear-
`Wear Technologies, LLC, 751 F.3d 1362, 1366 (Fed. Cir. 2014); In re
`Zurko, 258 F.3d 1379, 1385–86 (Fed. Cir. 2001).
`Additionally, we observe that Petitioner asserts that Coulombe
`discourages the use of SIP proxies to transcode video content. In particular,
`Petitioner argues 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” because the SIP streaming
`video transcoding does not adapt videos for display characteristics and SIP
`streaming video is “fundamentally different from Coulombe’s messaging
`system.” Reply 7–15. Thus, according to Petitioner’s own reading of
`Coulombe, the notion of adding streaming video to Coulombe’s system is
`
`
`
`
`20
`
`
`
`IPR2016-00718
`Patent 8,874,677 B2
`
`not necessarily “self-evident” without considering, as Petitioner does with
`paragraph 69, the design of the Coulombe system and the consequences of
`modifying the Coulombe’s system. See Reply 1 (Petitioner asserting “the
`existing SIP streaming video techniques alluded to in Coulomb
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
