Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 17
`Entered: September 8, 2016
`
`
`
`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 BENJAMIN D. M. WOOD, BRIAN J. MCNAMARA, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`WOOD, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 17
`Entered: September 8, 2016
`
`
`
`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 BENJAMIN D. M. WOOD, BRIAN J. MCNAMARA, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`WOOD, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`IPR2016-00718
`Patent 8,874,677 B2
`
`
`A.
`
`Background
`
`I.
`
`INTRODUCTION
`
`WhatsApp Inc. (“Petitioner”) filed a Petition requesting inter partes
`
`review of claims 6–10 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 (“Prelim. Resp.”).
`
`We have jurisdiction under 35 U.S.C. § 314, which provides that an
`
`inter partes review may not be instituted “unless . . . there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
`
`claims challenged in the petition.” 35 U.S.C. § 314(a). Upon considering
`
`the Petition and the Preliminary Response, we determine that Petitioner has
`
`shown a reasonable likelihood that it would prevail in showing the
`
`unpatentability of at least one of the challenged claims. Accordingly, we
`
`grant the Petition.
`
`B.
`
`Related Proceedings
`
`The parties state that the ’677 patent is the subject of pending
`
`litigation captioned TriPlay, Inc. v. WhatsApp Inc., Case No. 1:13-cv-1703-
`
`LPS (D. Del.). Pet. 1; Paper 5, 2. Petitioner further states that the parent to
`
`the ’677 patent, U.S. Patent No. 8,332,475, is the subject of IPR2015-00740.
`
`Pet. 1.
`
`C.
`
`The ’677 Patent
`
`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
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`IPR2016-00718
`Patent 8,874,677 B2
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`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.
`
`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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` 3
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`IPR2016-00718
`Patent 8,874,677 B2
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`
`
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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 16:46–49. Messaging system 16 receives the
`
`message and analyzes 61 originating and destination addresses comprised in
`
`the message. Id. at 16:51–53. If the destination device is assigned to a
`
`subscriber, the system analyzes the destination device 62 and takes a
`
`delivery decision 63 accordingly. Id. at 16:53–58. The delivery decision
`
`comprises deciding, e.g., the content, format and/or layout of the message to
`
`be delivered. Id. at 16:63–17:4. In accordance with the delivery decision,
`
`the system provides transcoding of the message format 64 and/or adapting
`
`message layout 65 and appropriate repackaging 66 if necessary (for
`
`example, if limitations of the communication media or destination device
`
`require deleting or replacing some of the media items in the message). Id. at
`
`17:6–12. The converted message and/or notification thereof are delivered 67
`
`to the destination device, and the transaction is registered 68 in the system.
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`IPR2016-00718
`Patent 8,874,677 B2
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`Id. at 17:13–15. The described process may be provided in a similar manner
`
`for several destination devices. Id. at 17:16–20.
`
`The ’677 patent further describes facilitating composing messages
`
`using “pre-defined templates.” Id. at 19:40–41. The ’677 patent describes
`
`different template “types,” each having different “Content Structures.” Id. at
`
`19:50–66 (Table 1). “Each type of template and/or each template is
`
`provided with [a] unique identifier [that can be] recognized by the message
`
`system and/or client and stored in the message metadata. 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. Claim 6 is
`
`illustrative, and is reproduced below:
`
`A messaging system comprising an access block
`1.
`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
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`IPR2016-00718
`Patent 8,874,677 B2
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`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
`the access block is further configured to enable transmitting the
`adapted message to the destination communication device associated
`with the at least one receiver.
`
`
`E.
`
`Asserted Grounds of Unpatentability
`
`Petitioner contends that the challenged claims are unpatentable based
`
`on the following specific grounds (Pet. 11–60):
`
`Reference[s]
`
`Basis
`
`Claim[s] Challenged
`
`Coulombe,1 Bellordre,2 and
`Friedman3
`
`Coulombe, Bellordre,
`Friedman, Meyer,4 and Ito5
`
`§ 103
`
`6, 7, and 15
`
`§ 103
`
`8 and 10
`
`
`1 US 2003/0236892 A1 (Dec. 25, 2003) (Ex. 1103).
`
`2 US2006/0176902 A1 (Aug. 10, 2006) (Ex. 1104).
`
`3 US 7,593,991 B2 (Sep. 22, 2009) (Ex. 1105).
`
`4 Eric A. Meyer, Cascading Style Sheets: The Definitive Guide (2nd ed. 2004)
`(Ex. 1108).
`
`5 US 2003/0084405 A1 (May 1, 2003) (Ex. 1107).
`
` 6
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`IPR2016-00718
`Patent 8,874,677 B2
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`
`Reference[s]
`
`Basis
`
`Claim[s] Challenged
`
`Coulombe, Bellordre,
`Friedman, Meyer, Ito, and
`Surana6
`
`Petitioner also relies on the testimony of David Klausner. Ex. 1102.
`
`§ 103
`
`9
`
`Patent Owner relies on, inter alia, the testimony of Rajeev Surati, Ph.D. Ex.
`
`2102.
`
`II. ANALYSIS
`
`A.
`
`Claim Construction
`
`We determine that no claim terms require express construction on this
`
`record and for purposes of this decision.
`
`B.
`
`Claims 6, 7, and 15—Obviousness over Coulombe, Bellordre,
`and Friedman
`
`Petitioner alleges that claims 6, 7, and 15 would have been obvious
`
`over Coulombe, Bellordre, and Friedman. Pet. 13–38. Patent Owner
`
`opposes. Prelim. Resp. 10–39.
`
`1.
`
`Coulombe
`
`Coulombe, titled, “System for Adaptation of SIP Messages Based on
`
`Recipient’s Terminal Capabilities and Preferences,” published December 25,
`
`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. at Abstract. Coulombe discloses that the described
`
`
`6 US 2006/0069790 A1 (Mar. 30, 2006) (Ex. 1106).
`
` 7
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`IPR2016-00718
`Patent 8,874,677 B2
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`invention “tries to overcome the problem of interoperability between
`
`terminals and to improve the end user experience by providing a framework
`
`for making SIP messages conform to the recipient’s terminal capability and
`
`characteristics.” Id. ¶ 7. For example, Coulombe describes message size
`
`reduction and format adaptation for delivery to the destination terminal. Id.
`
`Figure 1 is reproduced below.
`
`
`
`Figure 1 shows a message flow for SIP message adaptation using system 10.
`
`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
`
` 8
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`IPR2016-00718
`Patent 8,874,677 B2
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`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
`
`modification of the message content based on the terminal capabilities, user
`
`preferences, network conditions, or any characteristics of the user, his
`
`terminal or his environment.” Id. ¶ 63.
`
`2.
`
`Bellordre
`
`Bellordre relates to “a method of processing a multimedia message
`
`and a corresponding processing system.” Ex. 1104 ¶ 1. Multimedia
`
`messages may contain text, picture, audio, and/or video objects. Id. at ¶ 4.
`
`Bellordre’s message-processing system receives a multimedia message from
`
`a receiver, extracts any audio or video object from the message, “adapt[s]
`
`the format, sound and size of the audio and video objects to the technical
`
`features of the destination module,” and stores the adapted message. Id. at
`
`¶¶ 17–19, 57, 47, 69. Adapting a video object may entail “modifying its size
`
`(number of pixels) to adapt it to the size of the screen of the [receiving
`
`terminal], or reducing its size (number of bytes) to take account of the object
`
`reception characteristics.” Id. at ¶ 62. The system then sends to the
`
`intended recipient a “substitute message.” Figures 3 and 4, reproduced
`
`below, compare the initial message and substitute message:
`
` 9
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`IPR2016-00718
`Patent 8,874,677 B2
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`
`Fig. 3 Fig. 4
`
`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.
`
`3.
`
`Friedman
`
`Friedman discloses a system for processing attachments in electronic
`
`messages. Ex. 1105, 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 8:1–11.
`
`Friedman’s attachment processing system (1) automatically detaches and
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`
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`10
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`IPR2016-00718
`Patent 8,874,677 B2
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`saves the contents of the object; (2) generates a “thumbnail graphic” for a
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`portion of the object; and (3) displays the thumbnail graphic in a display area
`
`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:
`
`
`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.
`
`4.
`
`Analysis
`
`a.
`
`Independent Claim 6
`
`Petitioner relies on Coulombe to teach a messaging system
`
`comprising an access block coupled to a media block and wherein (1) the
`
`access block is configured to receive the initial message from an originating
`
`
`
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`11
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`IPR2016-00718
`Patent 8,874,677 B2
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`communication device to a destination communication device, the initial
`
`message characterized, at least, by message format, an initial layout, and
`
`data indicative of at least one receiver associated with the initial message;
`
`(2) the media block configured to obtain data indicative of the destination
`
`device’s displaying capabilities, and to enable conversion of the initial
`
`message into an adapted message based on criterion related to the
`
`destination device’s display capabilities, wherein the conversion comprises
`
`determining an adapted message layout; and (3) the access block is further
`
`configured to enable transmitting the adapted message to the destination
`
`communication device. Pet. 16–27, 32–35. These contentions are supported
`
`by specific citations to the record, and by Dr. Klausner’s testimony.
`
`Petitioner acknowledges that Coulombe “does not appear to expressly
`
`disclose that the message received . . . includes a video.” Id. at 21.
`
`Therefore, Petitioner relies on Bellordre for this limitation, noting that
`
`Bellordre teaches a message that contains “at least one audio or video
`
`multimedia object.” Id. Petitioner argues that it would have been obvious to
`
`a person of ordinary skill to combine Coulombe and Bellordre such that
`
`Coulombe’s initial message includes a video because “people have long
`
`understood that video information (such as television and motion pictures)
`
`can provide a more powerful message than text or still photos.” Id. at 21–22
`
`(citing Ex. 1102 ¶ 65).
`
`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
`
`
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`Patent 8,874,677 B2
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`account of the object reception characteristics, for example.’” Pet. 29–30
`
`(quoting Ex. 1104 ¶ 62) (emphasis and bracketing added by Petitioner).
`
`Petitioner contends that because Bellordre and Coulombe are “analogous
`
`references in the same field of adapting messages according to the technical
`
`capabilities, and specifically, displaying capabilities, of mobile terminals,”
`
`one of ordinary skill would also have been motivated to apply Bellordre’s
`
`teachings on adapting video . . . to the messaging system disclosed in
`
`Coulombe.” Id. at 22 (citing Ex. 1104 ¶ 65).
`
`For the limitation requiring a “clickable icon based on the video from
`
`the initial message,” Petitioner relies on Friedman, and specifically its
`
`teaching of “thumbnail graphic 525.” Id. at 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. 1102
`
`¶ 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. 1102 ¶ 74).
`
`
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`We have reviewed the record and Petitioner’s analysis with respect to
`
`claim 6, and, on the current record, are persuaded that Petitioner has
`
`demonstrated a reasonable likelihood of prevailing at trial on its challenge of
`
`claim 6 as obvious over Coulombe, Bellordre, and Friedman. We have also
`
`considered Patent Owner’s arguments against institution on this proposed
`
`ground of unpatentability, and, on the present record, find them
`
`unpersuasive. First, Patent Owner argues that Friedman does not disclose
`
`“wherein the conversion [of the initial message into an adapted message]
`
`comprises: a) providing, by the messaging system, a clickable icon,” which
`
`Patent Owner refers to as the “providing” limitation. Prelim. Resp. 24.
`
`Patent Owner asserts that “the broadest reasonable construction [of the
`
`“providing” limitation] has to include the requirement that the clickable icon
`
`be ‘provided’ as part of the conversion of an initial message to an adapted
`
`message,” and that “it would not be reasonable to construe the term to cover
`
`conversion in which the adapted message contains a link to the video and the
`
`video itself.” Id. at 25, 29 (emphasis in original). Patent Owner further
`
`asserts that “Friedman does not disclose a messaging conversion that
`
`provides a clickable icon to an adapted message,” and that “neither
`
`Coulombe nor Friedman disclose[s] generating an icon as part of message
`
`conversion.” Id. at 29–30. Patent Owner supports this argument with the
`
`testimony of Dr. Surati.
`
`On the current record, this argument is not persuasive. Assuming
`
`arguendo that Patent Owner’s claim construction is correct, Patent Owner
`
`does not account for the fact that Petitioner relies not only on Friedman and
`
`Coulombe to teach this limitation, but also on Bellordre. See Pet. 29–30.
`
`Bellordre teaches converting an initial multimedia message into a “substitute
`
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`message” that contains a “sequence” representing a video associated with
`
`the initial message, as well as an SDP file containing a hyperlink that
`
`replaces the video. Ex. 1104 ¶¶ 48–49.
`
`Patent Owner next argues that Petitioner’s expert overlooked
`
`Coulombe’s passages teaching delivery of video. Prelim. Resp. 31–33.
`
`Patent Owner notes that although the Petitioner relies on its expert’s
`
`statement that “Coulombe does not appear to expressly disclose that the
`
`message received from the sending device (19) ‘includes a video,’ as recited
`
`in claim 1,” Patent Owner asserts that Coulombe does, in fact, “teach
`
`delivery of video content.” Id. at 31. In particular, Patent Owner asserts that
`
`“session-based SIP communications . . . provided the capability of
`
`establishing sessions between participants for a variety of video related
`
`communications.” Id. at 32 (citing Ex. 2102 ¶ 97; Ex. 2103, abstract).
`
`According to Patent Owner, this is significant because the analysis of the
`
`“motivation to combine aspects of Friedman and Bellordre with Coulombe
`
`is very different if the starting point (Coulombe) already encompassed
`
`known SIP hardware and processes for delivering messages including a
`
`video.” Id. at 33 (citing Ex. 2102 ¶ 100).
`
`We do not find this argument persuasive on the current record. As an
`
`initial matter, we do not read the Petition as asserting that Coulombe does
`
`not relate to video at all, but rather the narrower assertion that Coulombe
`
`does not “expressly disclose that the message received from the sending
`
`device (19) [as depicted in Figure 1] includes a video.” Pet. 21 (citing Ex.
`
`1103 ¶ 117). In any event, this argument, based on the testimony of Dr.
`
`Surati to counter the testimony of Dr. Klausner, requires us to give more
`
`weight to Patent Owner’s declaration testimony than Petitioner’s declaration
`
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`testimony. Because it would be premature for us to weigh the declarants’
`
`testimony before either declarant is deposed, we decline the request. See 37
`
`C.F.R. § 42.108(c) (The Board’s [institution] decision will take into account
`
`a patent owner preliminary response where such a response is filed,
`
`including any testimonial evidence, but a genuine issue of material fact
`
`created by such testimonial evidence will be viewed in the light most
`
`favorable to the petitioner solely for purposes of deciding whether to
`
`institute an inter partes review.”).
`
`Finally, Patent Owner argues that the Petitioner fails to offer sufficient
`
`motivation to combine Coulombe, Friedman, and Bellordre. Prelim. Resp.
`
`34–39. We have reviewed Petitioner’s assertions regarding the motivation
`
`of a person of ordinary skill in the art to combine these references, as well as
`
`Patent Owner’s arguments why Petitioner’s assertions are insufficient. On
`
`the present record, and with the understanding that neither declarant has
`
`been deposed, we determine that Petitioner has provided sufficient reason
`
`for its position that a person of ordinary skill would have been motivated to
`
`combine the teachings of Coulombe, Bellordre and Friedman.
`
`b.
`
`Claims 7 and 15
`
`Petitioner contends that claims 7 and 15 would have been obvious
`
`over Coulombe, Bellordre, and Friedman. Pet. 35–38. Petitioner supports
`
`its contentions with citations to the record and Mr. Klausner’s testimony.
`
`Patent Owner does not separately argue the patentability of these claims.
`
`We have reviewed the record and Petitioner’s analysis with respect to these
`
`claims, and are persuaded on the current record that Petitioner has
`
`demonstrated a reasonable likelihood of prevailing in showing that claims 7
`
`and 15 would have been obvious over Coulombe, Bellordre, and Friedman.
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`Patent 8,874,677 B2
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`C.
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`Claims 8 and 10—Obviousness over Coulombe, Bellordre,
`Friedman, Meyer, and Ito
`
`Petitioner contends that claims 8 and 10 would have been obvious
`
`over Coulombe, Bellordre, Friedman, Meyer, and Ito. Pet. 40–52. Patent
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`Owner opposes. Prelim. Resp. 41–52. Meyer, titled “Cascading Style
`
`Sheets: The Definitive Guide,” describes “external style sheets,” which “are
`
`not part of the HTML document but are still used by it.” Ex. 1108, cover
`
`page, 13, 18. A “link” (or “@import” directive) identifying an external style
`
`sheet is placed inside an HTML document, which causes “the web browser
`
`to locate and load the style sheet and use whatever styles it contains to
`
`render the HTML document” in accordance with those styles. Id. at 13. Ito
`
`“relates to a contents conversion system that dynamically selects a style
`
`sheet for an XML document.” Ex. 1107 ¶ 2. Style sheet selection is based
`
`on information acquired from the XML document, such as “the file URI.”
`
`Id. ¶ 48.
`
`1.
`
`Claim 8
`
`Claim 8 depends from claim 6 and additionally recites “wherein the
`
`initial message is characterized by the initial message layout based on a
`
`template, the template being characterized by, at least, a unique template
`
`identifier; and wherein the media block is further configured to provide the
`
`adapted message layout in accordance with the unique template identifier.”
`
`Petitioner asserts that “[i]t is well known to those of ordinary skill in the art
`
`that a message, such as email, can be communicated in HTML, a format also
`
`commonly used to author web documents exchanged between server and
`
`client devices.” Pet. 41 (citing Ex. 1102 ¶ 94). Petitioner further asserts that
`
`“Meyer describes a fundamental technique in which an HTML document
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`IPR2016-00718
`Patent 8,874,677 B2
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`can be characterized by a layout based on a template in the form of an
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`‘external style sheet.’” Id. at 42 (citing Ex. 1108, 13). Petitioner contends
`
`that “Mayer discloses that the external style sheet is characterized by a
`
`‘unique template identifier’ in the form of a URL,” which the “link” tag or
`
`“@import” directive uses to identify the external style sheet. Id. at 44–45.
`
`Therefore, according to Petitioner, Meyer discloses “wherein the initial
`
`message is characterized by the initial message layout based on a template,
`
`the template being characterized by, at least, an unique template identifier.”
`
`Id. at 45.
`
`Petitioner acknowledges that “Meyer does not disclose ‘the adapted
`
`message layout [being] provided in accordance with’ the URL,” but
`
`contends that “this would have been obvious in view of Ito.” Id. at 46.
`
`Petitioner contends that Ito discloses “a technique for selecting the
`
`appropriate style sheet to be applied [to an XML document] using various
`
`keys to query a style sheet information database,” one of the keys being the
`
`“file URI.” Id. (citing Ex. 1107, ¶¶ 48–50, 58, Figs. 1, 5). According to
`
`Petitioner, “one of ordinary skill in the art would have understood that a URI
`
`can serve as a URL in the context of style sheets.” Id. at 46 (citing Ex. 1108,
`
`91; Ex. 1102 ¶ 101). Therefore, Petitioner concludes, Ito “discloses that a
`
`style sheet can be ‘provided in accordance with’ a URL (‘unique template
`
`identifier’).” Id. at 47. Petitioner further contends that “[t]o the extent the
`
`returned style sheet in Ito is not expressly disclosed as providing the
`
`‘adapted message layout,’ this feature would have been obvious in view of
`
`Meyer [because] style sheets of the sort disclosed in Meyer ‘affect the
`
`presentation of a document.” Id. (citing Ex. 1108, 1).
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`As an initial matter, we note that Petitioner does not argue that either
`
`Meyer or Ito, individually, teaches “wherein the adapted message layout is
`
`provided in accordance with the unique template identifier.” Further, we
`
`agree with Patent Owner (Prelim. Resp. 47–49) that Petitioner has not
`
`adequately established why a person of ordinary skill would have combined
`
`Meyer with Ito to arrive at this limitation. Petitioner’s argument is premised
`
`on the URL of an external style sheet, as taught by Meyer, corresponding to
`
`the claimed “unique template identifier.” Pet. 44. But Petitioner does not
`
`allege that Ito uses the URL of an external style sheet as a “key” to select a
`
`style sheet to apply to an XML document. Instead, Petitioner asserts that Ito
`
`uses a “file URI,” among other information, to select a style sheet. Id. at 46
`
`(citing Ex. 1107 ¶¶ 48–49). Other than asserting that “a URI can serve as a
`
`URL in the context of style sheets” (Pet. 46 (emphasis added)), Petitioner
`
`does not adequately explain how Ito’s use of a file URI would lead a person
`
`of ordinary skill in the art to use the URL of an external style sheet to select
`
`a style sheet. As our reviewing court has explained, “obviousness concerns
`
`whether a skilled artisan not only could have made but would have been
`
`motivated to make the combinations or modifications of prior art to arrive at
`
`the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073
`
`(Fed. Cir. 2015) (emphasis in original). Because we are not persuaded that a
`
`person of ordinary skill would have combined Meyer and Ito to teach
`
`“wherein the adapted message layout is provided in accordance with the
`
`unique template identifier,” we are not persuaded that claim 8 would have
`
`been obvious over Coulombe, Bellordre, Friedman, Meyer, and Ito.
`
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`2.
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`Claim 10
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`Claim 10 depends from claim 8, and additionally recites “wherein the
`
`template comprises a set of items related to media objects, and wherein the
`
`items related to media objects are selected from the group consisting of
`
`media objects, thumbnails related to media objects, and controls related to
`
`media objects.” Because we are not persuaded that Petitioner has
`
`demonstrated a reasonable likelihood of prevailing with respect to claim 8,
`
`we are also not persuaded that Petitioner has demonstrated a reasonable
`
`likelihood of prevailing with respect to claim 10.
`
`D. Claim 9—Obviousness over Coulombe, Bellordre, Friedman,
`Meyer, Ito, and Surana
`
`Claim 9 depends from claim 8. Petitioner contends that claim 9
`
`would have been obvious over Coulombe, Bellordre, Friedman, Meyer, Ito,
`
`and Surana. Pet. 52–59. Because we are not persuaded that Petitioner has
`
`demonstrated a reasonable likelihood of prevailing in showing that claims 8
`
`and 10 would have been obvious over Coulombe, Bellordre, Friedman,
`
`Meyer, and Ito, we are also not persuaded that Petitioner had demonstrated a
`
`reasonable likelihood of prevailing in showing that claim 9 would have been
`
`obvious over Coulombe, Bellordre, Friedman, Meyer, Ito, and Surana.
`
`III. CONCLUSION
`
`For the foregoing reasons, we determine that Petitioner has shown that
`
`there is a reasonable likelihood that it would prevail with regard to at least
`
`one of the claims challenged in the Petition. In particular we are persuaded
`
`that Petitioner has shown a reasonable likelihood that it would prevail on its
`
`challenges that claims 6, 7, and 15 are unpatentable under 35 U.S.C. § 103
`
`as obvious over Coulombe, Bellordre, and Friedman. We are not persuaded
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`that Petition has shown a reasonable likelihood that it would prevail on its
`
`challenges to claims 8 and 10 as obvious over Coulombe, Bellordre,
`
`Friedman, Meyer, and Ito. We are also not persuaded that Petitioner has
`
`shown a reasonable likelihood of prevailing on its challenge of claim 9 as
`
`obvious over Coulombe, Bellordre, Friedman, Meyer, Ito, and Surana. At
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`this stage of the proceeding, the Board has not made a final determination as
`
`to the patentability of any challenged claim or as to any underlying factual or
`
`legal issue.
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`IV. ORDER
`
`For the reasons given, it is
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`ORDERED that pursuant to 35 U.S.C. § 314, inter partes review is
`
`instituted as to claims 6, 7, and 15 of the ’677 patent based on the following
`
`ground:
`
`Claims 6, 7, and 15, unpatentable under 35 U.S.C. § 103 as
`obvious over Coulombe, Bellordre, and Friedman.
`
`FURTHER ORDERED that inter partes review is commenced on the
`
`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`
`§ 42.4, notice is hereby given of the institution of a trial; and
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`FURTHER ORDERED that the trial is limited to the grounds of
`
`unpatentability listed above, and no other grounds of unpatentability are
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`authorized for inter partes review.
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`21
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`IPR2016-00718
`Patent 8,874,677 B2
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`PETITIONER:
`
`Heidi L. Keefe
`Andrew C. Mace
`COOLEY LLP
`hkeefe@cooley.com
`WhatsApp_PTAB_IPR@cooley.com
`
`PATENT OWNER:
`
`Barry Schindler
`Greenberg Traurig, LLP
`schindlerb@gtlaw.com
`
`Jeremy J. Monaldo
`Fish
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