UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`WhatsApp Inc.,
`Petitioner,
`
`v.
`
`TriPlay Communications Ltd.,
`Patent Owner.
`
`______________
`
`Case IPR2016-0718
`U.S. Patent 8,874,677
`
`______________
`
`PATENT OWNER’S DEMONSTRATIVES FOR ORAL ARGUMENT
`
`
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`WhatsApp Inc.,
`Petitioner,
`
`v.
`
`TriPlay Communications Ltd.,
`Patent Owner.
`
`______________
`
`Case IPR2016-0718
`U.S. Patent 8,874,677
`
`______________
`
`PATENT OWNER’S DEMONSTRATIVES FOR ORAL ARGUMENT
`
`
`
`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
`
`March 5, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`PATENT TRIAL AND APPEAL BOARD
`
`1
`
`
`
`Petition: Three 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
`
`2
`
`
`
`Petition Relies On Coulmobe In View Of Friedman For
`Claim Limitation 6f-1
`
`LIMITATION
`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 Friedman
`
`Coulombe in view of Friedman and Bellordre
`
`Coulombe in view of Friedman and Bellordre
`
`3
`
`
`
`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
`discloses 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).
`
`4
`
`
`
`Petition Relies On Coulombe In View Of Friedman
`For Claim Limitation 6f-1
`
`5
`
`
`
`Petitioner’s Motivation To Combine Coulombe and Friedman To
`Arrive At Claim Limitation 6f-1 Is Based On Conclusory Leaps
`• Alleged motivation: Coulombe “expressly discloses that an initial
`message is configured to include attachments.” Pet. at 30-31.
`
`• Fig. 2: Three images on screen/not attachments. POR at 48 (citing Ex. 2107 [Surati] at
`¶ 85.
`
`6
`
`
`
`Petitioner’s Motivation To Combine Coulombe and Friedman To
`Arrive At Claim Limitation 6f-1 Is Based On Conclusory Leaps
`• Alleged motivation: Coulombe “expressly discloses that an initial
`message is configured to include attachments.” Pet. at 30-31.
`
`• Alleged support -- word “attach” appears on Fig. 2 screen. Not called out in
`specification. A POSITA would have no reason to understand word 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 other support:
`
`“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)
`
`7
`
`
`
`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.
`
`8
`
`
`
`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.
`A.
`In the sentence that you read or refer to, that sentence is a clarification
`of the opening sentence that defines instant messaging as an exchange of
`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).
`
`9
`
`
`
`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
`
`10
`
`
`
`•
`
`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.
`
`11
`
`
`
`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
`
`12
`
`
`
`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 inserted into an adapted message layout.” (Pet. at 32)
`
`13
`
`
`
`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
`within the adapted message layout according to the method disclosed
`in Bellordre, and, as such, the limitation .. is rendered obvious by
`Coulombe in view of Bellordre and Friedman. Pet at 34.
`
`14
`
`
`
`Petition Offers No Motivations To Combine Coulmobe In
`View Of Friedman and Bellordre For Claim Limitation 6g
`
`• Friedman describes using clickable icons as a way to give
`unsophisticated users easier access to received attachments. POR at 58
`(citing Ex. 2017 [Surati] at ¶ 100)
`
`• The Petition does not offer one motivation as to what would have
`prompted a POSITA to combine Friedman with Bellordre’s
`add/extraction module to insert the icons into the adapted message
`layout. Id.
`
`• Nor does the Petition offer even one motivation as to why or how a
`POSITA would incorporate the combined Friedman/Bellordre
`adapted message layout
`into the already modified Coulombe
`Adaption Engine (20) to arrive at limitation 6g. Id.
`
`15
`
`
`
`Petition Has Reconstructed Claims Using Hindsight
`
`• Petitioner has failed to provide plausible motivations or (in some cases)
`has offed no motivations at all. POR at 60.
`
`• No fact based analysis to show why a POSITA would have thought to put
`the pieces of Coulombe, Bellordre and Friedman together without using
`the challenged claims as a roadmap. Id.
`
`• Petitioner does not analyze Coulombe and identify any problems in the art
`that Coulombe sought to solve or describe any known problems suffered
`when using Coulombe’s disclosures. Id.
`
`• Petitioner does the opposite:
`ignores capabilities and techniques in
`Coulombe because those techniques do not fit the hindsight-driven choices
`that Petitioner needs to make to follow the Patent Owner’s path and arrive
`at the Challenged Claims. Id.
`
`16
`
`
`
`Board Is Not Bound By Its Institution Decision
`
`• 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.”)
`
`• 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).
`
`• With the experts deposed and the factual record developed, the
`board should find that Petitioner has failed to meet its burden of
`establishing by a preponderance of the evidence that the instituted
`claims are obvious.
`
`17
`
`
`
`IPR2016-0718
`Demonstratives for Oral Argument
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on February 26, 2019, I caused a true and correct copy of the
`
`foregoing to be served via electronic mail on the following attorneys of record:
`
`hkeefe@cooley.com
`amace@cooley.com
`mweinstein@cooley.com
`rchen@cooley.com
`WhatsApp_PTAB_IPR@cooley.com
`Heidi L. Keefe
`COOLEY LLP
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`Date: February 26, 2019
`
`Respectfully submitted,
`GREENBERG TRAURIG, LLP
`
`/s/ Barry J. Schindler
`Barry J. Schindler (Reg. No. 32,938)
`Counsel for Patent Owner TriPlay Inc.
`
`
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