Petition for Inter Partes Review of
`U.S. Patent No. 8,279,173 B2
`
`
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`
`FACEBOOK, INC., INSTAGRAM, LLC, and WHATSAPP INC.,
`Petitioners
`
`v.
`
`BLACKBERRY LIMITED,
`Patent Owner
`
`
`
`
`U.S. Patent No. 8,279,173 B2
`Issue Date: October 2, 2012
`
`Title: User Interface for Selecting a Photo Tag
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,279,173 B2
`
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`
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`

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`Table of Contents
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`
`Page
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`
` 
`
`Introduction ..................................................................................................... 1 
`I. 
`II.  Mandatory Notices under §42.8(A)(1) ........................................................... 1 
`A. 
`Real Party-In-Interest under §42.8.(b)(1) ............................................. 1 
`B. 
`Related Matters under §42.8(b)(2) ....................................................... 2 
`C. 
`Lead and Back-Up Counsel under §42.8(b)(3) .................................... 2 
`D. 
`Service Information .............................................................................. 3 
`Fee Payment .................................................................................................... 4 
`III. 
`IV.  Requirements under §§42.104 and 42.108 and Considerations under
`§§325(d) and 314(a) ....................................................................................... 4 
`A.  Grounds for Standing ........................................................................... 4 
`B. 
`Identification of Challenge and Statement of Precise Relief
`Requested ............................................................................................. 4 
`Considerations under §325(d) .............................................................. 5 
`C. 
`Considerations under §314(a) .............................................................. 6 
`D. 
`V.  Overview of the ’173 Patent ........................................................................... 9 
`A. 
`Level of Ordinary Skill in the Art ........................................................ 9 
`B. 
`Specification Overview ........................................................................ 9 
`C. 
`The Challenged Claims ...................................................................... 12 
`VI.  Claim Construction ....................................................................................... 12 
`VII.  The Challenged Claims are Obvious ............................................................ 13 
`A.  Overview of Grounds ......................................................................... 13 
`B. 
`Summary and Date Qualification of the Prior Art ............................. 14 
`  MacLaurin [Ex. 1006] .............................................................. 14 
`Rothmuller [Exs. 1004, 1005] .................................................. 18 
` 
`Plotkin [Ex. 1008] .................................................................... 22 
`Ortega [Ex. 1007] ..................................................................... 23 
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`Table of Contents
`(continued)
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`Page
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`
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`C. 
`
`(b) 
`
`(c) 
`
`Ground 1: Obviousness of Claims 1, 2, 4, 6-8, 10, 12-14, 16,
`and 18 Based on MacLaurin ............................................................... 24 
`Claim 1 ..................................................................................... 24 
` 
`(a) 
`“A method of selecting a photo tag for a tagged
`photo, comprising:” (Claim 1, Preamble) ...................... 24 
`“displaying a tag list including tags from one or
`more tag sources matching a search string;” (Claim
`1[a]) ................................................................................ 28 
`“displaying a tag type indicator for each tag
`appearing in the tag list, said tag type being
`indicative of a tag source associated with the tag;”
`(Claim 1[b]) ................................................................... 35 
`Claim 2: “The method of claim 1, further comprising
`providing a tag entry field for entering the search string.” ...... 40 
`Claim 4: “The method of claim 1, further comprising
`providing a graphical user interface to select a tag in the
`tag list.” .................................................................................... 42 
`Claim 6: “The method of claim 1, further comprising
`selecting as a tag source one or more of an online
`network profile, an address book, browser bookmarks,
`landmark tags, and free-form text.” ......................................... 42 
`Claim 7 ..................................................................................... 46 
`Claim 8 ..................................................................................... 46 
`Claim 10: “The system of claim 7, further comprising an
`apparatus operable to allow selection of a tag in the tag
`list to complete the tag entry field.” ......................................... 47 
`Claim 12 ................................................................................... 48 
`Claim 13 ................................................................................... 49 
`  Claim 14 ................................................................................... 49 
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`Table of Contents
`(continued)
`
`Page
`
`
`
`E. 
`
`F. 
`
`  Claim 16: “The computer medium of claim 13, further
`comprising code for providing a graphical user interface
`to select a tag in the tag list to complete the tag entry
`field.” ........................................................................................ 49 
`  Claim 18 ................................................................................... 50 
`D.  Ground 2: Obviousness of Claims 2, 8, 10, 14, and 16 Based
`on MacLaurin in Further View of Ortega .......................................... 50 
`Ground 3: Obviousness of Claims 1, 2, 4, 6-8, 10, 12-14, 16,
`and 18 Based on MacLaurin in View of Rothmuller ......................... 55 
`Ground 4: Obviousness of Claims 2, 8, 10, 14, and 16 Based on
`MacLaurin in View of Rothmuller, in Further View of Ortega ......... 61 
`G.  Ground 5: Obviousness of Claims 1, 2, 4, 6-8, 10, 12-14, 16,
`and 18 Based on MacLaurin in View of Plotkin ................................ 61 
`H.  Ground 6: Obviousness of Claims 2, 8, 10, 14, and 16 Based on
`MacLaurin in View of Plotkin, in Further View of Ortega ............... 67 
`VIII.  Conclusion .................................................................................................... 67 
`CERTIFICATE OF SERVICE ............................................................................... 70 
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,279,173 B2
`
`List of Exhibits
`
`
`
` 
`
`
`
`Exhibit
`Description of Document
`No.
`1001 U.S. Patent No. 8,279,173 B2 to Michael S. Brown et al. (filed May 9,
`2007, issued Oct. 2, 2012) (“’173” or “’173 patent”)
`1002 Declaration of Sandeep Chatterjee, Ph.D. (“Chatterjee”)
`1003
`[not used]
`1004 U.S. Patent No. 7,415,662 B2 to Kenneth Rothmuller et al. (filed July
`17, 2002, issued Aug. 19, 2008) (“Rothmuller”)
`1005 U.S. Provisional Application No. 60/334,516 to Kenneth Rothmuller
`et al. (filed Oct. 31, 2001) (“Rothmuller Provisional”)
`1006 U.S. Patent No. 7,831,913 B2 to Matthew B. MacLaurin (filed July 29,
`2005, issued Nov. 9, 2010) (“MacLaurin”)
`1007 U.S. Patent No. 6,564,213 B1 to Ruben E. Ortega et al. (filed Apr. 18,
`2000, issued May 13, 2003) (“Ortega”)
`1008 Excerpts from David Plotkin, How to Do Everything with Photoshop
`Elements 4.0 (“Plotkin”)
`
`1009
`[not used]
`1010 Excerpts from Theo Mandel, Elements of User Interface Design
`(1997)
`1011 Excerpts from New Oxford American Dictionary (2nd ed. 2005)
`1012 Excerpts from Random House Webster’s Unabridged Dictionary
`(2001)
`1013 Excerpts from Photoshop Elements 4 One-on-One (2005)
`1014 Certificates of Service from BlackBerry Limited v. Facebook, Inc. et
`al., No. 2:18-cv-01844-GW (C.D. Cal.), ECF Nos. 20-23, showing
`that service on Petitioners was effected on April 6, 2018
`
`‐i‐ 
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`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 8,279,173 B2
`
`List of Exhibits
`
`
`
`
`
`
` 
`
`
`
`Exhibit
`No.
`1015
`
`Description of Document
`First Amended Complaint for Patent Infringement from BlackBerry
`Limited v. Facebook, Inc. et al., No. 2:18-cv-01844-GW (C.D. Cal.),
`ECF No. 15, filed on April 4, 2018
`
`1016
`
`Information Disclosure Statement (IDS) by Applicant filed in U.S.
`Patent App. Ser No. 13/252,807, April 16, 2012
`1017 Notice of References Cited filed in U.S. Patent App. Ser No.
`11/746,285, December 10, 2010
`1018 Declaration of Sylvia Hall-Ellis, Ph.D. (“Hall-Ellis)
`
`
`‐ii‐ 
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,279,173 B2
`
`I.
`INTRODUCTION
`U.S. Patent No. 8,279,173 (Ex. 1001) purports to describe techniques for
`
`attaching tags to digital photographs. By the time Patent Owner, BlackBerry, filed
`
`its patent application, photo tagging was already a crowded field. For example, U.S.
`
`Patent No. 7,831,913 to Matthew B. MacLaurin and assigned to Microsoft, discloses
`
`a tagging system that renders obvious each limitation of each challenged claim. The
`
`Board should institute IPR with respect to each challenged claim, and find them
`
`unpatentable under §103(a).
`
`II. MANDATORY NOTICES UNDER §42.8(A)(1)
`A. Real Party-In-Interest under §42.8.(b)(1)
`Facebook, Inc. and two of its subsidiaries Instagram, LLC, and WhatsApp
`
`Inc., are the real parties-in-interest to this IPR petition. For ease of reference, this
`
`Petition will refer to Facebook, Instagram and WhatsApp collectively as the
`
`“Petitioner” (singular).1
`
`
`1 As explained in Part II.B, WhatsApp was not accused of infringement of the ’173
`
`patent in the district court litigation, but was named as a defendant in that litigation
`
`with respect to other asserted patents. This Petition nevertheless, in an abundance
`
`of caution, identifies WhatsApp as an additional real party-in-interest.
`
` 
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`-1-
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,279,173 B2
`
`B. Related Matters under §42.8(b)(2)
`On December 31, 2018, the Petitioner filed an IPR petition (IPR2019-00516)
`
`challenging claims 1, 2, 4, 6, 7, 8, 10, 12, 13, 14, 16, and 18 based on different
`
`grounds from the ones presented here. Petitioner is aware of no other IPR petitions
`
`with respect to the ’173 patent.
`
`The ’173 patent is the subject of pending litigation involving the Petitioner:
`
`BlackBerry Ltd. v. Facebook, Inc. et al., Case No. 2:18-cv-01844-GW-KS (C.D.
`
`Cal.). Petitioner was first served on April 6, 2018. (Ex. 1014.)2 The First Amended
`
`Complaint in that action alleges that Facebook and Instagram infringe the ’173
`
`patent through features relating to photo tagging. (Ex. 1015, ¶¶173-175.)
`
`As of the filing of this Petition, the district court has not issued any claim
`
`construction rulings. A claim construction hearing is currently scheduled for April
`
`1, 2019. No trial date has been set.
`
`C. Lead and Back-Up Counsel under §42.8(b)(3)
`Petitioners provide the following designation of counsel.
`
`
`2 The initial Complaint in that action was filed on March 6, 2018, and a First
`
`Amended Complaint on April 4, 2018. Service on the Petitioner first took place on
`
`April 6, 2018, after the filing of the First Amended Complaint. (Ex. 1014.)
`
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`-2-
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,279,173 B2
`
`
`LEAD COUNSEL
`
`BACK-UP COUNSEL
`
`Heidi L. Keefe (Reg. No. 40,673)
`hkeefe@cooley.com
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave. NW, Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
`Andrew C. Mace (Reg. No. 63,342)
`amace@cooley.com
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave. NW, Suite 700
`Washington D.C. 20004
`Tel: (650) 843-5287
`Fax: (650) 849-7400
`Mark R. Weinstein (Admission pro hac
`vice to be requested)
`mweinstein@cooley.com
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington D.C. 20004
`Tel: (650) 843-5007
`Fax: (650) 849-7400
`Yuan Liang (Admission pro hac vice to
`be requested)
`yliang@cooley.com
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington D.C. 20004
`Tel: (202) 728-7132
`Fax: (202) 842-7899
`
`
`
`
`
`D.
`Service Information
`This Petition is being served by Federal Express to the attorney of record for
`
`the ’173 patent, BLACKBERRY LIMITED (NOVAK DRUCE), 2200 UNIVERSITY AVENUE
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`-3-
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`

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`Petition for Inter Partes Review of
`U.S. Patent No. 8,279,173 B2
`
`EAST, WATERLOO ON N2K 0A7. Petitioner consents to electronic service at the
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`addresses provided above for lead and back-up counsel.
`
`III. FEE PAYMENT
`Petitioner requests review of 12 claims, with a $30,500 payment.
`
`IV. REQUIREMENTS UNDER §§42.104 AND 42.108 AND CONSIDERATIONS UNDER
`§§325(D) AND 314(A)
`A. Grounds for Standing
`Petitioner certifies that the ’173 patent is available for IPR and that Petitioner
`
`is not barred or otherwise estopped.
`
`B.
`
`Identification of Challenge and Statement of Precise Relief
`Requested
`Petitioners request the Board institute IPR of claims 1, 2, 4, 6, 7, 8, 10, 12, 13,
`
`14, 16, and 18 based on:
`
`Ground
`1
`
`Claims
`1, 2, 4, 6-8, 10,
`12-14, 16, 18
`
`Basis for Challenge under §103(a)
`MacLaurin (Ex. 1006) (single reference obviousness)
`
`2
`
`3
`
`4
`
`5
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`
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`2, 8, 10, 14, 16 MacLaurin, in view of Ortega (Ex. 1007)
`
`
`1, 2, 4, 6-8, 10,
`MacLaurin, in view of Rothmuller (Exs. 1004, 1005)
`12-14, 16, 18
`
`2, 8, 10, 14, 16 MacLaurin, in view of Rothmuller and Ortega
`
`
`1, 2, 4, 6-8, 10,
`MacLaurin, in view of Plotkin (Ex. 1008)
`12-14, 16, 18
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`-4-
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,279,173 B2
`
`
`Ground
`6
`
`Basis for Challenge under §103(a)
`Claims
`2, 8, 10, 14, 16 MacLaurin, in view of Plotkin and Ortega
`
`Submitted with this Petition is a Declaration of Sandeep Chatterjee, Ph.D. (Ex.
`
`1002) (“Chatterjee”), a qualified technical expert. (Chatterjee, ¶¶1-8, Ex. A.)
`
`C. Considerations under §325(d)
`This Petition does not present a scenario in which “the same or substantially
`
`the same prior art or arguments previously were presented to the Office.” §325(d).
`
`MacLaurin, Plotkin, and Ortega were not cited during prosecution of the ’173 patent
`
`(or its parent patent) and are thus new art.
`
`A published patent application for Rothmuller (US 2008/0306921), was listed
`
`on an Information Disclosure Statement (IDS) filed on April 16, 2012 alongside
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`more than two dozen other references. (Ex. 1016 (Page 2, Cite No. 7).) But
`
`Rothmuller was never substantively discussed by the Examiner or Applicants, and
`
`was never the subject of any Office Action. See, e.g., Digital Check Corp. v. E-
`
`Imagedata Corp., IPR2017-00178, Paper 6 at 12-13 (P.T.A.B. April 25, 2017)
`
`(rejecting §325(d) argument because “there is no indication in the record that the
`
`Examiner rejected any claims based on either reference or that the Examiner or
`
`applicant substantively discussed either reference during prosecution of the
`
`[challenged] patent.”). Rothmuller (US 2008/0306921) was also listed on a “Notice
`
`of References Cited” during prosecution of the parent to the ’173 patent. (Ex. 1017,
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`-5-
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,279,173 B2
`
`Item (K), Page 1.) But like the ’173 patent, Rothmuller was never substantively
`
`discussed or the subject of any Office Action.
`
`There are two other reasons why the citation to Rothmuller during prosecution
`
`does not create any §325(d) issues. First, this Petition also relies on disclosures in
`
`the Rothmuller Provisional (Ex. 1005) incorporated into Rothmuller. There is no
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`evidence that the Rothmuller Provisional was separately cited or otherwise
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`considered during prosecution of the ’173 patent or its parent. Second, this Petition
`
`cites Rothmuller solely as a secondary reference for Grounds 3 and 4 with respect a
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`particular limitation (“tag type indicator”), and not as a primary reference.
`
`D. Considerations under §314(a)
`Petitioner is unaware of any basis for the Board to exercise discretionary
`
`authority to decline to consider this Petition under §314(a). This Petition was timely
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`filed several months before the statutory deadline. The Petitioner did file an IPR
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`petition on December 31, 2018 (IPR2019-00516) based on different grounds, but
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`that earlier-filed petition does not justify denial under §314(a) or under the General
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`Plastic factors. The present Petition was filed a mere two business days after the
`
`filing in IPR2019-00516, months before receiving any preliminary response from
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`the Patent Owner. Petitioner therefore did not file the present Petition in response
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`to any intervening event or to obtain any unfair tactical advantage.
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`Petitioner considered filing a single IPR petition that included all of the
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`-6-
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,279,173 B2
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`grounds in IPR2019-00516 and the MacLaurin-based grounds listed in Part IV.B
`
`above. But packing all of those grounds into a single IPR petition (within the page
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`limits) would have resulted in a reduction in the thoroughness of analysis. Petitioner
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`has thus decided to file two separate IPR petitions so that each asserted ground of
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`unpatentability could be presented in a more clear and thorough manner, thus
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`reducing the burden on the Board in evaluating them.3
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`The grounds presented in this Petition are not redundant or cumulative of the
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`grounds in IPR2019-00516. As shown in Part IV.B above, each ground presented
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`in this Petition, unlike IPR2019-00516, relies on MacLaurin as the primary reference
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`for purposes of obviousness. In fact, Ground 1 relies solely on MacLaurin to show
`
`
`3 The Supreme Court’s decision in SAS Inst., Inc. v. Iancu, 138 S.Ct. 1348 (2018),
`
`as interpreted by the PTO, actually incentivizes IPR petitioners to do exactly the
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`opposite – fit as many grounds as possible into a single IPR petition because
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`institution based on a single ground on a single claim results in institution of all
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`grounds set forth in the petition. Petitioner believes that such a course of action here
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`would have resulted in an IPR petition that was less thorough, less readable, and
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`more difficult for the Board to follow. Accordingly, Petitioner respectfully submits
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`that it should not be penalized under §314(a) for having filed two separate petitions
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`to provide a more thorough analysis of the asserted grounds.
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`-7-
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,279,173 B2
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`obviousness of all claims challenged in this Petition. The other grounds are
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`presented primarily to account for narrow claim construction positions the Patent
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`Owner may raise during these proceedings, or strained readings of the MacLaren
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`reference the Patent Owner may advance, as explained further below. This Petition
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`should thus be afforded a full and fair consideration by the Board, as it provides prior
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`art mappings – based on MacLaurin – that are fundamentally distinct from those
`
`presented in IPR2019-00516.
`
`Petitioner also respectfully submits that the present Petition will not endanger
`
`the requirement under §316(a)(11) of issuing a Final Written Decision within one
`
`year of institution. Because the present Petition and the petition in IPR2019-00516
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`were filed only two business days apart (with the intermediate New Year’s holiday
`
`separating them), the two petitions will likely have substantially the same schedule.
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`Additionally, the present Petition relies on prior art references (i.e., MacLaurin,
`
`Rothmuller, Plotkin, Ortega) that are already of record and discussed in IPR2019-
`
`00516 (although as discussed, this Petition combines them in a different manner to
`
`provide substantively distinct prior art mappings). The Board will therefore not have
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`to master any additional prior art.
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`Moreover, although the present Petition contains the necessary separate
`
`analysis to explain how MacLaurin can be mapped as a primary (or only) reference
`
`for all grounds of obviousness presented herein, the analysis of the secondary
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`-8-
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,279,173 B2
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`obviousness references (i.e., Rothmuller, Plotkin, Ortega) is similar to the analysis
`
`in IPR2019-00516. Accordingly, the present Petition will consume a fraction of the
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`resources that would have been required had the Petitioner filed a second IPR
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`petition relying on different prior art references.
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`V. OVERVIEW OF THE ’173 PATENT
`A. Level of Ordinary Skill in the Art
`The ’173 patent states that it “relates generally to a user interface for selecting
`
`a photo tag.” (’173, 1:16-17.) A person of ordinary skill in the art as of May 2007
`
`(earliest priority date for the ’173 patent) would have possessed at least a bachelor’s
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`degree in software engineering, computer science, computer engineering, or
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`electrical engineering with at least two years of experience in software application
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`development, including graphical user interface development (or equivalent degree
`
`or experience). (Chatterjee, ¶¶12-15.)
`
`B.
`Specification Overview
`The ’173 patent does not claim to have invented photo tagging. The
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`specification acknowledges that “[i]dentifying people or objects in photographs is
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`popular in many online contexts, such as photo sharing, social networking, etc.” but
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`alleges that “[s]electing a ‘tag’ to associate with an identified point in a photograph
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`can be a complicated task if there are many potential tags to choose from.” (’173,
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`1:21-25.) The patent also asserts that existing tagging techniques “do not work as
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`-9-
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,279,173 B2
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`well” with wireless mobile communication devices in light of display size and user
`
`input constraints.” (’173, 1:25-29.) Despite that statement, none of the claims
`
`require use of wireless or mobile devices, or recite any limitations specifically
`
`directed at the capabilities or constraints of such devices.4
`
`The ’173 patent purports to describe an
`
`improved user interface for tagging photos. (’173,
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`1:30-32.) Figure 3A shows a photo 301 of a
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`particular human subject 302. (’173, 4:13-14.)
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`The user can click the “Add” button 306 to
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`identify the particular area or region of the photo
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`301 that will be the subject of the tag. (’173, 4:19-37, Fig. 3B.)
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`Figure 4A shows that the user is initially
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`presented with a tag entry field 406 indicating
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`that he should start typing a tag. (’173, 5:35-
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`37.) As the user begins to type text, “photo
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`tag
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`selection module 148B may be
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`configured to search one or more selected
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`4 In fact, the Patent Owner has accused photo tagging on Facebook’s non-mobile
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`website (at www.facebook.com) of infringement. (Ex. 1015, ¶¶175, 180.)
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`-10-
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,279,173 B2
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`‘tag sources’ for tags that match the currently entered text.” (’173, 5:39-42.) For
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`example, Figure 4D shows that the user has typed “te” into the tag entry field 406,
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`and matching tags (e.g., 412a, “Terrill Dent”) are displayed in a tag list 412. The
`
`patent explains:
`
`As shown in screen 400C of FIG. 4C, and 400D of FIG. 4D, photo tag
`selection module 148B may be configured to display any matching tags
`(e.g. 412a, 412b, 412c) from one of the tag sources to the tag being
`typed by the user in the tag entry field 406 in a matching tag list 412.
`Each tag may have an icon or some other visual identifier associated
`with it that clearly indicates its type, and allows the user to quickly
`distinguish between different types of tags.
`
`(’173, 5:48-55.)
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`The passage above refers to “tag sources” and tag “types.” The ’173 patent
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`describes a “tag source” as a source of predefined tags for associating with photos.
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`(’173, e.g., 6:5-12, 5:39-47.) “[T]ag sources could include, for example, a list of
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`friends from an online service like Facebook™, a list of contacts from the user’s
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`address book 142, a list of the user’s browser bookmarks (in Internet browser 138),
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`a cache of recent free-form text entries, etc.” (’173, 5:43-47; see also id., e.g., 8:25-
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`28, 8:47-50, 9:5-8.) The patent does not require that a “tag source” have any
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`particular structure or organization, or correspond to information provided by a
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`particular individual or entity. (Chatterjee, ¶29.)
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`Moreover, the ’173 patent describes a “tag type” as a type or category of tags.
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`(’173, e.g., 4:58-59, 5:52-55.) “[T]he tag types could include a free-form
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`alphanumeric string, Facebook™ friends, address book entries (in address book
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`142), browser bookmarks (in Internet browser module 138), etc.” (’173, 4:46-50.)
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`C. The Challenged Claims
`This Petition addresses claims 1, 2, 4, 6-8, 10, 12-14, 16, and 18, with claims
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`1, 7, and 13 being independent claims. Claim 1 is representative and recites:
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`1. A method of selecting a photo tag for a tagged photo, comprising:
`[a]
`displaying a tag list including tags from one or more tag
`sources matching a search string;
`displaying a tag type indicator for each tag appearing in
`the tag list, said tag type being indicative of a tag source
`associated with the tag.
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`[b]
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`(’173, 9:14-21.) Claims 7 and 13 recite, respectively, “system” and “computer
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`readable medium” claims for performing the steps of claim 1.
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`VI. CLAIM CONSTRUCTION
`For purposes of the prior art cited herein, Petitioner does not, at this time,
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`contend that any term requires express construction.
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`VII. THE CHALLENGED CLAIMS ARE OBVIOUS
`A. Overview of Grounds
`As listed above, this Petition presents six grounds of obviousness, each
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`revolving around the MacLaurin prior art reference. Ground 1 presents a single
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`reference obviousness ground for all challenged claims.
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`As noted, the other grounds are presented primarily in the event of narrow
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`claim construction positions the Patent Owner may raise during these proceedings,
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`or strained readings of the MacLaren reference the Patent Owner may advance.
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`Because IPR proceedings are governed by the same claim construction standard as
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`district courts (and the district court has provided no claim construction rulings),
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`uncertainty exists as to how certain limitations may be interpreted by the Board.
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`Additionally, Petitioner does not know how the Patent Owner may attempt to
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`distinguish MacLaurin in the event of institution. Accordingly, Grounds 2-6
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`present MacLaurin in combination with other references to account for narrower
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`claim construction positions and other arguments that the Patent Owner may raise
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`with respect to MacLaurin alone. For example, Grounds 3 and 5 combine
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`MacLaurin with Rothmuller and Plotkin, respectively, to show that the “displaying
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`a tag type indicator for each tag” limitation of the independent claims is still
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`obvious even under a narrow reading of the claims and strained interpretations of
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`MacLaurin’s teachings. Grounds 2, 4, and 6 are presented in the event the Patent
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`Petition for Inter Partes Review of
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`Owner argues (without basis, Petitioner believes) that MacLaurin does not disclose
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`the “tag entry field” limitations in dependent claims 2, 8, 10, 14, and 16.
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`Petitioner has taken considerable effort to explain how the prior art references
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`can be properly combined, as set forth below. In some cases, Petitioner and its expert
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`have explained in detail how the techniques in one reference could technologically
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`work with and complement the MacLaurin primary reference. In making this
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`showing, Petitioner is not suggesting that invalidity of the challenged claims depends
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`on physically combining the systems disclosed by the prior art – as no such showing
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`is required under the law. See, e.g., In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir.
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`2012). These explanations are instead intended to illustrate how technologically
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`straightforward the proposed combinations would have been to a person of ordinary
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`skill, which provides a further motivation to combine.
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`B.
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`Summary and Date Qualification of the Prior Art
` MacLaurin [Ex. 1006]
`MacLaurin, entitled “Selection-Based Item Tagging,” relates generally to
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`computer-based techniques for organizing information in a computer-based
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`environment. (MacLaurin, e.g., 2:39-67.) MacLaurin qualifies as prior art to the
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`’173 patent under §102(e).
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`As mentioned, this Petition relies on MacLaurin as the primary reference for
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`all grounds. MacLaurin, alone or in combination with other references as identified
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`in Grounds 1-6, renders obvious all of the challenged claims.
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`MacLaurin explains that files in a computer are typically organized using a
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`“filing cabinet” metaphor in which files are stored in folders in a computer’s hard
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`drive. (MacLaurin, 1:38-46.) But organizing files based on folders can become
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`unwieldy and inefficient as the number of files increases. (MacLaurin, 1:46-60.)
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`MacLaurin discloses a technique for “tagging” files to alleviate the problems and
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`burdens associated with using folders to organize files. (MacLaurin, 1:60-2:7; see
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`also id., 4:11-12 (“Ad-hoc item tags are simple text-based strings that are a useful
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`form of organization for end users.”).) The technique in MacLaurin can tag photos,
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`word processing documents, and other types of files and data. (MacLaurin, 2:39-41,
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`1:67-2:1 (“different types of items such as graphics, text, and/or data and the like”),
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`2:2-5 (photos), 7:32-35 (word processing document), 7:66-8:3 (files).)
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`MacLaurin provides an example of a tagging process that uses a familiar
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`Microsoft Windows-based graphical user interface. Figure 5 shows an exemplary
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`screen display in which the tag “graphics” is being applied to three files:
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,279,173 B2
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`(MacLaurin, Fig. 5.)5 Figure 5 shows file items 504-508 (in yellow highlighting)
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`that were selected by the user. (MacLaurin, 8:32-38.) The bottom of Figure 5,
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`shown in the red box, shows the direct input of the tag “graphics” for these files.
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`MacLaurin explains: “The tag 502 is ‘graphics’ and the user input is marked by an
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`icon 510 to indicate that tagging is occurring. For this example, the user has typed
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`‘graphics’ and when the enter key is pressed on the keyboard, the tag 502 is
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`associated with the selected items 504-508.” (MacLaurin, 8:38-43; see also id.,
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`5 All highlighting and annotations have been added by the Petitioner for emphasis.
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`8:47-51, Fig. 7 (confirming that the three items highlighted in yellow above have
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`been associated with the “graphics” tag).)
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`MacLaurin further describes an exemplary user interface (a “light ‘tagging
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`mode’”) as follows:
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`As an example user interface, given a display of items, such as the list
`of files presented in a desktop file window, if the user has selected one
`or more items utilizing the user interface and begins to type, a light
`‘tagging mode’ can be entered with the following characteristics:
`display a special icon and/or text message indicating that tagging is
`active
`accumulate each key a user types into a “tag buffer”
`use this tag buffer to guess at likely tags
`display the current “best guess” tag in a textual readout associated with
`the window
`allow a user to choose between “tag guesses” using cursor arrows
`allow a user to choose whether to accept guesses or simply use the
`buffer as is
`if a user hits the escape key (or similar), exit tagging mode
`if the user hits the enter/return key (or similar), apply the items to the
`tag
`In addition, if an automated tag and an explicit tag (one entered by a
`user) are both presented to the user, each type of tag can