Trials@uspto.gov
`571-272-7822
`
`Paper 9
`Date: May 16, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TRILLER, INC.,
`Petitioner,
`v.
`TIKTOK PTE. LTD.,
`Patent Owner.
`
`IPR2022-00179
`Patent 9,648,132 B2
`
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, JOHN D. HAMANN, and
`JULIET MITCHELL DIRBA, Administrative Patent Judges.
`HAMANN, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
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`

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`IPR2022-00179
`Patent 9,648,132 B2
`
`INTRODUCTION
`I.
`Triller, Inc. (“Petitioner”) filed a petition for inter partes review of
`claims 1–3, 6, 22, 26, 27, and 31 (“the challenged claims”) of U.S. Patent
`No. 9,648,132 B2 (Ex. 1001, “the ’132 patent”). Paper 1 (“Pet.”). TikTok
`Pte. Ltd. (“Patent Owner”) filed a Preliminary Response. Paper 8 (“Prelim.
`Resp.”).
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition . . . and any response . . . shows that
`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)
`(2018); see 37 C.F.R. § 42.108 (2021). Upon consideration of the papers,
`we determine that the information presented shows that there is a reasonable
`likelihood that Petitioner would prevail in establishing the unpatentability of
`at least one of the challenged claims of the ’132 patent.
`A. Real Parties-in-Interest
`Petitioner identifies itself as a real party-in-interest, and identifies
`
`Triller Holdco LLC as its parent company. Pet. 1. Patent Owner identifies
`itself as a real party-in-interest. Paper 5, 1.
`B. Related Matters
`The parties identify Bytedance Inc. v. Triller, Inc., 4:20-CV-07572
`(N.D. Cal.) as a matter that may affect, or be affected by, a decision in this
`proceeding. Pet. 1; Paper 5, 1. In addition, Petitioner filed petitions for inter
`partes review of two additional patents that are related to the ’132 patent and
`owned by Patent Owner: (i) U.S. Patent No. 9,991,322 B2 (IPR2022-00180)
`and (ii) U.S. Patent No. 9,294,430 B2 (“the ’430 patent”) (IPR2022-0181).
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`IPR2022-00179
`Patent 9,648,132 B2
`C. The Challenged Patent
`The ’132 patent, in relevant part, relates to a portable wireless
`
`computing device (e.g., a smart phone), which allows for social network
`functionality, including allowing a user to create a profile, identify other
`users as friends, and interact with other users. See generally Ex. 1001, 1:24–
`32, 76:11–78:54. More specifically, the ’132 patent teaches that a user of a
`social network can create a profile so that they can partake in community
`features and communicate with other users. Id. at 76:11–15. In creating
`their profile, the user can select a unique member name, an image, and a
`catchphrase, which can be displayed to other users. Id. at 76:19–32. The
`’132 patent also teaches ways for a user to become a friend with another user
`by allowing the user to view other users’ profiles, or search for them by
`name or phone number, and send a friend request—a list of a user’s friends
`is maintained in the user’s profile. Id. at 78:12–20, 78:31–43. In accordance
`with the ’132 patent, a user can make recommendations (i.e., recommend a
`music album, artist, playlist, or track) and send messages to other users who
`are their friends. Id. at 78:44–67.
`D. The Challenged Claims
`Petitioner challenges claims 1–3, 6, 22, 26, 27, and 31 of the ’132
`patent, of which claims 1 and 31 are independent claims. Claim 1 is
`illustrative of the challenged claims and is reproduced below:
`
`1. A portable wireless computing device comprising a
`hardware processor programmed with a software application
`embodied on a non-transitory storage medium, that enables an
`end-user to interact with other users in which (a) the software
`application allows the end-user to, over a wireless connection,
`create on a remote server one or more user accounts with
`associated profiles for that end-user; and (b) the software
`application allows the end-user to, over the wireless connection,
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`IPR2022-00179
`Patent 9,648,132 B2
`view profiles created by other users of a service; and (c) the
`software application allows the end-user to, over the wireless
`connection, interact with other users of the service; and (d) the
`software application allows the end-user to, over the wireless
`connection, send and receive messages to and from other users
`of the service; and (e) the software application allows the
`end-user to, over the wireless connection, link his or her user
`account on the remote server to user accounts on the remote
`server of other users of the same service or of other services.
`Ex. 1001, 86:32–49.
`E. Asserted Grounds of Unpatentability
`Petitioner asserts that the challenged claims of the ’132 patent are
`unpatentable based on the following grounds:
`
`Claim(s) Challenged
`1, 22, 26, 31
`1, 2, 22, 26, 27, 31
`
`35 U.S.C. §1
`102
`103
`
`Reference(s)/Basis2
`Abrams3
`Abrams
`
`
`1 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35
`U.S.C. §§ 102, 103 that became effective on March 16, 2013. At this stage
`of the proceeding, we apply the pre-AIA version of the statutory bases for
`unpatentability because the ’132 patent claims priority to an application filed
`before March 16, 2013. Ex. 1001, 1:9–18. In addition, although Petitioner
`argues that the ’132 patent is subject to post-AIA § 102 (Pet. 11 n.1, 40 n.4),
`the parties do not argue that the patentability analysis differs here based on
`what version applies.
`2 For certain challenged claims of certain asserted grounds, Petitioner also
`lists “the knowledge of [one of ordinary skill in the art] about multitasking
`and multithreading (as evidenced by Java Threads (Ex. 1015) and expert
`testimony (Ex. 1025)).” Pet. 3–4. Although we do not list such knowledge
`separately, we consider it as part of our obviousness analysis. See Randall
`Mfg. v. Rea, 733 F.3d 1355, 1362–63 (Fed. Cir. 2013). In addition, we view
`Petitioner’s listing of Exhibit 1015 as evidencing the alleged knowledge of
`one of ordinary skill, rather than including Exhibit 1015 as part of an
`asserted combination for an asserted ground.
`3 US 2005/0021750 A1, published Jan. 27, 2005 (Ex. 1009, “Abrams”).
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`35 U.S.C. §1
`103
`103
`102
`103
`
`Reference(s)/Basis2
`Abrams, Khedouri4
`Abrams, Partovi5
`Knight6
`Knight
`
`IPR2022-00179
`Patent 9,648,132 B2
`Claim(s) Challenged
`3, 6
`6
`3, 6, 27
`3, 6, 27
`
`Pet. 3–4, 11–70. Petitioner submits in support of its arguments the
`Declaration of Michael Shamos, Ph.D. (Ex. 1025).
`II. DISCRETIONARY DENIAL UNDER 35 U.S.C. § 325(d)
`Patent Owner argues that we should exercise discretion under
`
`35 U.S.C. § 325(d) to deny institution. See Prelim. Resp. 7 n.3, 26 n.7. In
`particular, Patent Owner argues that the Petition’s analysis of Abrams for the
`“software application” “element is ‘substantially the same’ as prior art [(i.e.,
`Sittig)] applied in a substantive rejection and fails for the same reasons—
`both describe a generic browser/website pushed out by a web server, with all
`of the functionality provided by the web server.” Id. at 7 n.3. Similarly,
`Patent Owner argues that the Petition’s analysis of Abrams for the
`“creat[ing] on a remote server one or more user accounts” “element is
`‘substantially the same’ as prior art (the Reddick reference) applied in a
`substantive rejection during prosecution of the parent ’430 patent and fails
`for the same reasons—both references arguably describe allowing a user to
`edit profiles, but not allowing a user to create accounts.” Id. at 26 n.7 (citing
`Ex. 1005, 73–74).
`
`In evaluating arguments under § 325(d), we use a two-part
`framework, with the first part being whether the same or substantially the
`
`
`4 US 2006/0008256 A1, published Jan. 12, 2006 (Ex. 1011, “Khedouri”).
`5 US 8,572,169 B2, issued Oct. 29, 2013 (Ex. 1010, “Partovi”).
`6 US 2010/0031366 A1, published Feb. 4, 2010 (Ex. 1012, “Knight”).
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`IPR2022-00179
`Patent 9,648,132 B2
`same art previously was presented to the Office or whether the same or
`substantially the same arguments previously were presented to the Office.
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH,
`IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential)
`(addressing in a two part framework the factors presented in Becton,
`Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586, Paper 8
`at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III(C)(5), first
`paragraph)). As we discuss below, we are not persuaded that the first part of
`the framework is met.
`
`Patent Owner does not argue that Abrams previously was presented to
`the Office. See Prelim. Resp. 7 n.3, 26 n.7. And we are not persuaded that
`Abrams is substantially the same art as Sittig or Reddick simply because
`Abrams may have one claimed feature in common with Sittig (i.e., “a
`generic browser”) and a different claimed feature in common with Reddick
`(i.e., allowing a user to edit, but not create, profiles). Id. Petitioner is
`relying on Abrams to teach multiple claimed features, and Patent Owner’s
`§ 325(d) arguments address only a subset of those features. Id.
`
`Moreover, as we discuss below, we disagree with Patent Owner that
`Sittig employing a browser was a reason that particular rejection was
`overcome. See infra Section IV (addressing Applicant’s remarks to a
`rejection). Rather, the rejection was overcome for failing to teach a
`limitation (i.e., that a software application allowed a user, over a wireless
`connection, to create a user account) that Abrams teaches. See id.; infra
`Section VI(B)(3) (applying Abrams). Nor do we agree with Patent Owner
`that Abrams (unlike Reddick) fails to teach allowing a user to create an
`account. See infra Section VI(B)(3) (applying Abrams).
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`Patent 9,648,132 B2
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`In addition, Patent Owner does not address whether the same or
`substantially the same arguments previously were presented to the Office.
`See Prelim. Resp. 7 n.3, 26 n.7.
`
`In light of the above, we find that the first part of the Advanced
`Bionics framework is not met, and thus, we do not proceed to the second
`part. See Advanced Bionics, Paper 6 at 10. Accordingly, we decline to
`exercise discretion to deny institution under 35 U.S.C. § 325(d).
`III. LEVEL OF ORDINARY SKILL IN THE ART
`To determine whether an invention would have been obvious at the
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham v. John Deere Co., 383 U.S. 1,
`17 (1966). In assessing the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955,
`962–63 (Fed. Cir. 1986)). “[O]ne or more factors may predominate.” Id.
`Petitioner submits that one of ordinary skill in the art would have had
`“a bachelor’s degree in computer science, electrical engineering, or an
`equivalent discipline, or equivalent experience, including familiarity with
`multitasking and multithreading, wireless communications and client/server
`computing, and, in addition, familiarity with digital music distribution and
`DRM.” Ex. 1025 ¶ 62; Pet. 36.
`
`Patent Owner submits that one of ordinary skill in the art would have
`had “a Bachelor’s degree in Computer Science, Computer Engineering,
`Human Factors, or an equivalent degree and at least two years of experience
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`IPR2022-00179
`Patent 9,648,132 B2
`working in the fields of user interfaces, communications applications,
`networking applications, or media applications, or a person with equivalent
`education, work, or experience in such fields.” Prelim. Resp. 2.
`The parties’ dispute regarding the level of ordinary skill in the art does
`not substantively impact our analysis for purposes of institution. Rather, we
`find in applying either parties’ definition for what comprises the level of
`ordinary skill in the art that Petitioner shows that there is a reasonable
`likelihood that it would prevail in proving the unpatentability of the
`challenged claims. At this stage of the proceeding, however, we adopt
`Petitioner’s proposed definition as it is supported by expert testimony, and
`Patent Owner’s is not.
`During trial, and in accordance with our Rules, the parties should
`address what substantive effect, if any, different proposed definitions for the
`level of ordinary skill in the art have on analyzing what the prior art teaches
`or in otherwise evaluating unpatentability of the challenged claims.
`IV. CLAIM CONSTRUCTION
`Because the Petition was filed after November 13, 2018, we apply the
`same claim construction standard that would be used in a civil action under
`35 U.S.C. § 282(b), following the standard articulated in Phillips v. AWH
`Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b);
`83 Fed. Reg. 51,340, 51,340–41, 51,343 (Oct. 11, 2018). In applying such
`standard, claim terms are generally given their ordinary and customary
`meaning, as would be understood by a person of ordinary skill in the art, at
`the time of the invention and in the context of the entire patent disclosure.
`Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed
`claim limitation, we look principally to the intrinsic evidence of record,
`examining the claim language itself, the written description, and the
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`Patent 9,648,132 B2
`prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
`415 F.3d at 1312–17).
`Petitioner does not identify any specific claim term for construction.
`Pet. 4. Patent Owner submits that the claim term “software application” is
`defined in the Specification of the ’132 patent. Prelim. Resp. 3. More
`specifically, Patent Owner submits that the “Definitions” section of the
`Specification provides the following: “Software Application: The Client
`software application which is to be delivered over-the-air to, or pre-installed
`on, the Wireless Computing Device.” See id. (quoting Ex. 1001, 8:61–63).
`We note that the definition for software application incorporates,
`based on the capitalization of defined words, the following additional
`definitions7 from the “Definitions” section of the Specification:
`(i) “Client: A computing device connected to a network delivering
`the features and functions of a network-centric application to the user or
`consumer of the application”;
`(ii) “Wireless Computing Device: A type of Client which connects to
`the network via a Wireless Network”; and
`(iii) “Wireless Network: A network which provides wireless
`connectivity to client computing devices.” Ex. 1001, 8:23–24, 8:41–43,
`8:51–52.
` At this stage of the proceeding, we conclude that the term “software
`application” should be afforded the meaning provided by these definitions.
`See Cont’l Cirs. LLC v. Intel Corp., 915 F.3d 788, 796 (Fed. Cir. 2019)
`
`7 The definitions provided in the Specification sometimes also include
`examples to help further explain the term. We do not include such examples
`here as we view them as not limiting the definition for the term.
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`IPR2022-00179
`Patent 9,648,132 B2
`(citing Phillips, 415 F.3d at 1316) (“When the patentee acts as its own
`lexicographer, that definition governs.”). We also note that the parties do
`not argue that these definitions are inconsistent with the plain and ordinary
`meaning of “software application,” or any other claim term.
`In addition, at this stage of the proceeding, we disagree with Patent
`Owner that the Applicant limited the meaning of “software application”
`during the prosecution of the ’132 patent, thereby excluding a browser. See
`Prelim. Resp. 7–8. More specifically, we disagree that the Applicant
`distinguished a reference (i.e., Sittig) by arguing that “Sittig’s system lacked
`a ‘software application’ having the claimed features on the user device.” Id.
`at 7. Rather, the Applicant argued “Sittig fails to disclose that the software
`application of the portable wireless computing device allows the end-user to,
`over a wireless connection, create on a remote server one or more user
`accounts with associated profiles for that end-user.” Ex. 1006, 45.
`According to the Applicant, Sittig instead “teaches that the social network
`engine is used to enter details,” and “that the core functionality of the social
`network resides in the social network engine 106, with which users are in
`communication, which teaches away from the software application of the
`portable wireless computing device allowing the end-user to, over a wireless
`connection, create on a remote server one or more user accounts.” Id. (citing
`Ex. 2004 ¶ 18).
`We find that Applicant’s arguments are directed to Sittig’s teaching of
`“[u]sing the social network engine 106, the user 102A enters the details
`about the relationship.” Ex. 2004 ¶ 18. In other words, the Applicant
`argued that Sittig teaches that the social network engine is used to enter
`relationship details, in lieu of using a portable wireless device and a wireless
`connection to enter the relationship details. See Ex. 1006, 45; see also
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`Patent 9,648,132 B2
`Ex. 2004 ¶ 16 (“Optionally, one or more of the users 102 may be able to
`access the social network engine 106 directly.”) (emphasis added), ¶ 18. At
`this stage of the proceeding, we view this finding as consistent with
`Applicant’s additional arguments, quoted by Patent Owner, that “Sittig lacks
`any disclosure of any key functionality on a portable wireless computing
`device[, and i]nstead, the key functionality in Sittig is disclosed to be in the
`social network engine.” Prelim. Resp. 7 (quoting Ex. 1006, 46).
`Regardless, the Applicant’s arguments are at least amenable to
`multiple reasonable interpretations, and thus prosecution disclaimer is not
`established. See Tech. Properties Ltd. LLC v. Huawei Techs. Co., 849 F.3d
`1349, 1358 (Fed. Cir. 2017) (citing MIT v. Shire Pharm., Inc., 839 F.3d
`1111, 1119 (Fed. Cir. 2016)). Rather, for prosecution disclaimer to apply, it
`must be “both clear and unmistakable to one of ordinary skill in the art.”
`See id. at 1357–58.
`In addition, at this stage of the proceeding, we disagree with Patent
`Owner’s argument that “software application” does not encompass a
`browser because the ’132 patent “discusses ‘browsers’ generally as distinct
`from the claimed ‘software application.’” Prelim. Resp. 8. In particular, we
`disagree that “the ’132 patent distinguishes its ‘software application’ (e.g.,
`such as the example MusicStation software application described at length
`by the ’132 [p]atent) from ‘Wireless Application Protocol’ [(WAP)]
`browsers,” as Patent Owner argues. Id. (citing Ex. 1001, 2:1–16, 16:65,
`31:44–47). Instead, the ’132 patent recognizes challenges and difficulties
`presented by using WAP (a protocol), rather than faulting the browser.
`Ex. 1001, 2:1–16. Although disavowal can be effectuated by language in a
`patent’s specification, “the standard for disavowal is exacting, requiring
`clear and unequivocal evidence that the claimed invention includes or does
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`Patent 9,648,132 B2
`not include a particular feature.” Poly-America, L.P. v. API Indus., Inc., 839
`F.3d 1131, 1136 (Fed. Cir. 2016). At this stage of the proceeding, Patent
`Owner does not identify statements in the ’132 patent’s Specification that
`clearly evidence excluding a browser from the term “software application.”
`In addition, we disagree with Patent Owner that Petitioner fails to
`provide how the challenged claims are to be construed, as required by
`37 C.F.R. § 42.104(b)(3). Prelim. Resp. 11–12. Rather, we find that
`Petitioner’s statement identifies no claim terms as requiring express
`construction, which is consistent with the terms being provided their plain
`and ordinary meaning. Pet. 4; see Consolidated Trial Practice Guide
`(November 2019)8 (“CTPG”) 44 (“[A] petitioner may include a statement
`that the claim terms require no express construction.”).
`Lastly, we determine that we do not need to address other claim terms
`in order to determine whether to institute inter partes review. See, e.g.,
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
`1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that
`are in controversy, and only to the extent necessary to resolve the
`controversy.’”).
`
`V. PRINCIPLES OF LAW
`A claim is unpatentable under 35 U.S.C. § 102 “if each and every
`
`[claim] limitation is found either expressly or inherently in a single prior art
`reference.” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 851
`F.3d 1270, 1273 (Fed. Cir. 2017). “A claim limitation is inherent in the
`prior art if it is necessarily present in the prior art, not merely probably or
`
`8 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`possibly present.” Akamai Techs., Inc. v. Cable & Wireless Internet Servs.,
`Inc., 344 F.3d 1186, 1192 (Fed. Cir. 2003) (citing Rosco, Inc. v. Mirror Lite,
`Co., 304 F.3d 1373, 1380 (Fed. Cir. 2002)).
`A claim is unpatentable under 35 U.S.C. § 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 of the invention to a
`person having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550
`U.S. 398, 406 (2007). The question of obviousness is resolved on the basis
`of underlying factual determinations, including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of ordinary skill in the art; and (4) objective evidence
`of non-obviousness, if present.9 See Graham, 383 U.S. at 17–18. When
`evaluating a claim for obviousness, we also must “determine whether there
`was an apparent reason to combine the known elements in the fashion
`claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn,
`441 F.3d 977, 988 (Fed. Cir. 2006)).
`VI. ALLEGED OBVIOUSNESS OVER ABRAMS
`Petitioner argues that Abrams renders claims 1, 2, 22, 26, 27, and 31
`of the ’132 patent obvious. Pet. 3, 11–37. For the reasons that follow, we
`determine that Petitioner establishes a reasonable likelihood that it would
`prevail in showing that Abrams renders these claims obvious.
`A. Summary of Abrams
`Abrams “relates to computer data and information systems accessed
`over the Internet, and more particularly to a computer-based system for more
`
`
`9 Patent Owner does not present arguments or evidence of such objective
`evidence of non-obviousness. See generally Prelim. Resp.
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`effectively connecting people based on their positions within social
`networks.” Ex. 1009 ¶ 2. More specifically, Abrams teaches “a system for
`connecting people via an online database and . . . allows searching of social
`networks,” which “facilitates interaction among people connected through a
`social network.” Id. ¶ 41.
`Abrams’ system provides a graphical interface to obtain descriptive
`data from a user to create a user account, “allowing the user to login securely
`and be identified by the system.” Id. ¶ 99. “Descriptive data generally
`describes characteristics and preferences of a user” (e.g., “a first and last
`name”; “attributes of the user, such as gender, marital status or occupation”;
`and hobbies). Id. ¶¶ 41, 64.
`Abrams also teaches that a user can “view descriptive data about other
`users in her social network,” and “discover[] other users who have
`characteristics she finds appealing.” Id. ¶ 45. Based on the user’s judgment
`of the viewed descriptive data, the user may wish to contact another user
`through Abrams’ system. Id. More specifically, Abrams teaches “an
`internal messaging system whereby users may send one another private
`messages.” Id. ¶ 97. In addition, Abrams teaches “allow[ing] users to invite
`friends or acquaintances to join the system.” Id. ¶ 43. “The invited friend or
`acquaintance may accept the invitation, and then become a user of the
`system, as a friend of the inviting user.” Id. Moreover, Abrams teaches
`“allow[ing] two users to confirm that they are ‘friends,’” before designating
`them as such in the system. Id.
`B. Challenged Claim 1
`1. A Portable Wireless Computing Device (Preamble)
`Petitioner argues that Abrams teaches “[a] portable wireless
`computing device,” as recited in the preamble of claim 1. Pet. 21. More
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`specifically, Petitioner argues that Abrams teaches “that user devices 106
`and 108 can be ‘cellular telephones . . . or hand-held “personal digital
`assistants.”’” Id. (quoting Ex. 1009 ¶74; citing Ex. 1025, 62, 70).
`
`After reviewing Petitioner’s arguments and evidence, which are not
`addressed by Patent Owner at this stage of the proceeding, we are persuaded
`that Petitioner demonstrates, for purposes of this institution decision, that
`Abrams teaches “[a] portable wireless computing device.” In light of our
`finding, we need not, and thus do not, reach whether the preamble is
`limiting.
`2. Hardware Processor Programmed with a Software Application
`Petitioner argues that Abrams teaches “a hardware processor
`programmed with a software application embodied on a non-transitory
`storage medium, that enables an end-user to interact with other users,” as
`recited in claim 1. Pet. 21–22. More specifically, Petitioner argues that
`Abrams teaches having a Web browser (software application) “executing on
`user devices 106 and 108 so as to receive and render Web pages from a Web
`server.” Id. at 21 (citing Ex. 1009 ¶¶ 52–53, 77, Figs. 1, 3a– 3b, 4–6;
`Ex. 1025, 61–62, 69). Petitioner argues that Abrams teaches that devices
`106 and 108 (i) are hosts for a Web browser, and (ii) can be cellular
`telephones or hand-held personal digital assistants, and thus, “those devices
`inherently have a ‘hardware processor programmed with’ the browser
`application.” Id. (citing Ex. 1009 ¶¶ 74, 77).
`In addition, Petitioner argues that Abrams provides no indication that
`the browser needs to be reinstalled after powering off the device, and thus,
`the browser “would inherently be ‘embodied on a non transitory storage
`medium.’” Id. at 21–22 (citing Ex. 1025, 61–62, 69). “At the very least, it
`would have been obvious for the browser application to be ‘embodied on a
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`non transitory storage medium’ so that it would not need to be reinstalled
`[e]very time the user device was powered off and on,” according to
`Petitioner. Id. at 22 (citing Ex. 1025, 62).
`
`In addition, Petitioner argues that Abrams teaches that its browser
`“enables an end-user to interact with other users.” Id. (citing Ex. 1025, 62–
`63, 70). More specifically, Petitioner argues that Abrams enables an
`end-user to interact with other users, including teaching “a system for
`connecting people via an online database and . . . further facilitates
`interaction among people connected through a social network.” Id.
`(quoting Ex. 1009 ¶ 41) (alteration in original).
`
`At this stage of the proceeding, we are persuaded that Petitioner
`demonstrates, for purposes of this institution decision, that Abrams teaches
`“a hardware processor programmed with a software application embodied on
`a non-transitory storage medium, that enables an end-user to interact with
`other users.” In particular, we find that Abrams teaches having a Web
`browser (i.e., software application) executing on a user device (e.g., a
`cellular telephone) to receive and render Web pages from a Web server. See
`Ex. 1009 ¶¶ 52–53, 74, 77, Figs. 1, 3a, 3b, 4–6. At this stage of the
`proceeding, we agree with Petitioner and find that this disclosure from
`Abrams teaches that the user device includes a hardware processor
`programmed with the browser. See id.; see also Ex. 1025, 61–62.
`
`At this stage of the proceeding, we also agree with Petitioner and find
`that it would have been obvious to one of ordinary skill in the art for the
`browser to be “embodied on a non transitory storage medium” so that the
`browser would not need to be reinstalled each time a user device powers up.
`See Ex. 1025, 62. In addition, at this stage of the proceeding, we agree with
`Petitioner and find that Abrams teaches that its browser “enables an end-user
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`to interact with other users.” See Ex. 1009 ¶ 41 (teaching “a system [that]
`. . . facilitates interaction among people connected through a social
`network”); Ex. 1025, 62–63, 70.
`
`At this stage of the proceeding, we find unavailing Patent Owner’s
`argument that the claimed “‘software application’ elements . . . require not
`merely any ‘software application’ generally, but a specific software
`application configured to perform the claimed functions.” Prelim. Resp. 4
`(citing Ex. 1001, 86:32–49). More specifically, Patent Owner argues that
`“[r]ather than a dedicated software application for performing the claimed
`functions, the Petition identifies a generic ‘browser’ of Abrams . . . .’” Id.
`As we discuss above, however, the term “software application” does not
`exclude a browser. See supra Section IV (construing “software
`application”). Thus, Patent Owner’s arguments that are premised on
`excluding a browser fail.
`At this stage of the proceeding, we also find unavailing Patent
`Owner’s argument that Petitioner fails to show that Abrams teaches a
`software application that is “embodied on” the portable device because
`Petitioner—in addition to Abrams’ browser—relies on Abrams’ teachings
`involving a remote “Web server” to show the claimed functions that the
`software application allows. See Prelim. Resp. 5, 9–10 (citing Ex. 1009
`¶ 77). Patent Owner’s argument is premised on claim 1 requiring that the
`software application alone provides all of the claimed functions. Id. At this
`stage of the proceeding, however, we find that this premise is incorrect.
`Rather, the language of claim 1 recites that the software application “enables
`an end-user to interact with other users,” and “allows the end-user” to
`perform the claimed functions. Ex. 1001, 86:32–49 (reciting claim 1)
`(emphases added). Thus, although the claimed software application
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`embodied on the portable device is a necessary part of providing the claimed
`functions, it need not be everything. See id.; see also In re Hiniker Co., 150
`F.3d 1362, 1369 (Fed. Cir. 1998) (finding “the name of the game is the
`claim”). This conclusion aligns with how the ’132 patent defines “software
`application” as being, in part, a “Client software application,” and defines
`“Client” as “[a] computing device connected to a network delivering the
`features and functions of a network-centric application to the user or
`consumer of the application,” and that “[t]he Client typically connects to a
`Server and requests Services.” Ex. 1001, 8:41–44, 8:61–63. In other words,
`the ’132 patent expressly describes its software application as connecting to
`a server to receive functions of a network-centric application, rather than
`alone providing the functions. Id.
`
`At this stage of the proceeding, we also find unavailing Patent
`Owner’s argument that Petitioner fails to address the definition of “software
`application” as provided in the ’132 patent’s Specification. Prelim. Resp.
`11–12. Rather, as we discuss above, Petitioner identifies Abrams’ browser
`as the claimed software application and argues that the browser would have
`been installed in non-volatile memory (“so that it would not need to be
`reinstalled”) on a cellular telepho