UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TRILLER, INC.,
`Petitioner
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`v.
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`TIKTOK PTE. LTD.
`Patent Owner
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`Case IPR2022-00179
`Patent 9,648,132 B2
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`PATENT OWNER TIKTOK PTE. LTD.’S
`RESPONSE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TRILLER, INC.,
`Petitioner
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`v.
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`TIKTOK PTE. LTD.
`Patent Owner
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`Case IPR2022-00179
`Patent 9,648,132 B2
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`PATENT OWNER TIKTOK PTE. LTD.’S
`RESPONSE
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`Case IPR2022-00179
`Attorney Docket No: 50048-0015IP1
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`I.
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`V.
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`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 1
`A.
`BACKGROUND ON THE ’132 PATENT .......................................... 2
`LEVEL OF ORDINARY SKILL .................................................................... 4
`II.
`III. CLAIM CONSTRUCTION ............................................................................ 4
`IV. THE PETITION FAILS TO DEMONSTRATE A “SOFTWARE
`APPLICATION” AS DEFINED BY THE ’132 PATENT ............................. 5
`THE PETITION FAILS TO DEMONSTRATE THAT THE SYSTEM OF
`ABRAMS WOULD HAVE “INHERENTLY” PERFORMED THE
`CLAIMED FUNCTIONS “OVER A WIRELESS CONNECTION”
`(GROUNDS 1A-2 AND 4-6) ........................................................................ 10
`VI. KNIGHT 2010 IS NOT PRIOR ART TO THE ’132 PATENT (GROUNDS
`3A AND 3B) .................................................................................................. 27
`A.
`LEGAL STANDARD FOR WRITTEN DESCRIPTION
`SUPPORT ........................................................................................... 28
`THE 2007 PCT APPLICATION PROVIDES WRITTEN
`DESCRIPTION SUPPORT FOR CLAIMS 3 AND 27 ..................... 29
`THE 2007 PCT APPLICATION PROVIDES WRITTEN
`DESCRIPTION SUPPORT FOR CLAIM 6 ...................................... 37
`D. GROUNDS 3A AND 3B FAIL BECAUSE KNIGHT 2010 IS NOT
`PRIOR ART TO THE ’132 PATENT ................................................ 44
`VII. THE PETITION FAILS TO SHOW THAT IT WOULD HAVE BEEN
`OBVIOUS TO A POSITA TO COMBINE ABRAMS AND KHEDOURI
`IN THE PROPOSED MANNER (GROUNDS 4-5) ..................................... 45
`VIII. PARTOVI IS NOT PRIOR ART TO THE ’132 PATENT (GROUND 6) .. 54
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`B.
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`C.
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`IX. THE PETITION FAILS TO SHOW THAT IT WOULD HAVE BEEN
`OBVIOUS TO A POSITA TO COMBINE ABRAMS AND PARTOVI IN
`THE PROPOSED MANNER (GROUND 6) ................................................ 55
`THE PETITION FAILS TO SHOW THAT THE PROPOSED
`COMBINATION OF ABRAMS AND PARTOVI PROVIDES ALL
`ELEMENTS OF CLAIM 35 (GROUND 6) ................................................. 58
`XI. CONCLUSION .............................................................................................. 59
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`X.
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`ii
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`LIST OF EXHIBITS
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`Exhibit No.
`EX2001
`EX2002
`EX2003
`EX2004
`EX2005
`EX2006
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`Description
`U.S. Patent Pub. No. 2004/0268005 to Dickie (“Dickie”)
`U.S. Patent Pub. No. 2007/0130592 to Haeusel (“Haeusel”)
`U.S. Patent No. 7,260,381 to Lipsit (“Lipsit”)
`U.S. Patent Pub. No. 2007/0214141 (“Sittig”)
`Declaration of Dr. Rajeev Surati
`Transcript of August 1, 2022 Deposition of Dr. Michael Shamos,
`Ph.D. (“Shamos Deposition”)
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`Case IPR2022-00179
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`I.
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`INTRODUCTION
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`The Petition failed to meet its burden of proving that claims 1-3, 6, 22, 26-
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`27, and 31 (“Challenged Claims”) are unpatentable. For example, the ’132 patent
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`provides a lexicographic definition of “Software application” in a “Definitions”
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`section. EX1001, 8:61-63. Petitioner ignores this definition, shirking its
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`mandatory burden under 37 C.F.R. 42.104(b)(3)-(b)(4). There is no dispute that
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`the ’132 patent’s lexicographic definition sets forth a specific meaning of
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`“Software Application” (EX2006, 38:4-39:4; EX2005, ¶31), but the Petition never
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`attempts to map the cited art to the specific definition set forth by the ’132 patent.
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`The Petition’s analysis of independent claims 1 and 31 is deficient for
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`additional, independent reasons. Petitioner’s analysis of independent claims 1 and
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`31 is premised on inherency for each “wireless connection” element. Yet, the
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`Petition never demonstrates these elements were “necessarily present” in the cited
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`art, relying instead on a hypothetical cell phone that Abrams does not describe nor
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`limit its system to. EX2006, 55:5-9 (“Okay, so I’m referring to cellular telephones
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`that don’t have wired interfaces.”). The Petition’s inherency theory simply fails as
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`a matter of law.
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`The Petition additionally fails to prove that multiple dependent claims are
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`unpatentable. The Knight 2010 reference (EX1012) does not qualify as prior art
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`with respect to any of the challenged claims, which are all fully supported by the
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`1
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`earlier filed May 2007 PCT application to which the ’132 patent claims priority.
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`As to Petitioner’s alternative theories in Grounds 4-6, the Petition fails to articulate
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`any sufficient motivation to modify Abrams based on the Khedouri or Partovi
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`references, or explain how the purported modifications would work.
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`The “information presented in the petition” is plainly insufficient to satisfy
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`Petitioner’s burden—especially where Petitioner cannot subsequently add
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`theories/arguments that should have been part of the Petition. Intelligent Bio-
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`Systems, Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016);
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`In re Magnum Oil Tools Int’l, 829 F.3d 1364, 1380 (Fed. Cir. 2016). Each of
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`Grounds 1a-6 fail, as discussed in detail below. The Board should confirm the
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`patentability of the Challenged Claims.
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`A. BACKGROUND ON THE ’132 PATENT
`The ’132 patent includes claims directed to a software application that
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`uniquely provides a range of functions for accessing and loading digital content,
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`such as music or social network data, on portable wireless computing devices
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`including mobile phones. EX1001, cl. 1; see also Abstract; 1:24-9:13; EX2005,
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`¶¶22, 25-29.
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`While mobile devices were in use by May 2007 (latest priority date of the
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`’132 patent), the common technique to transfer media (e.g., to load music or video)
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`was to use a wired connection by plugging the mobile device into a personal
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`computer. EX2005, ¶26; EX1001, 3:58-63. Digital audio players of the time, like
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`the Apple iPod device, similarly operated in this manner. See EX1001, 1:34-50,
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`3:58-61. Unlike present-day networks that support extremely fast data rates, the
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`3G networks at the time of the ’132 patent provided substantially lower data rates,
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`which made transfer of even relatively small amounts of data time-consuming and
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`sometimes impossible as a practical matter. EX2005, ¶70. The inventors of the
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`’132 patent additionally recognized deficiencies in nascent digital rights
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`management features that led to significant piracy of digital content. Id., ¶29.
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`The ’132 patent identified and addressed such shortcomings with a technical
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`solution that facilitated the transfer of digital content to a mobile device. As
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`recited by independent claims 1 and 31, the solution includes a mobile software
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`application executable on a portable wireless computing device that allows a user
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`to carry out multiple actions over a “wireless connection,” including to “create on a
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`remote server one or more user accounts with associated profiles for that end-
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`user,” “view profiles created by other users of a service,” “interact with other users
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`of the service,” “send and receive messages to and from other users of the service,”
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`and “link his or her user account on the remote server to user accounts on the
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`remote server of other users of the same service or of other services.” EX1001, cl.
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`1.
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`3
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`Moreover, the claimed solution provides features that involve information
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`about music tracks on a separate metadata layer, facilitating integration of DRM
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`techniques into music platforms, allowing a user to browse/search content without
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`exposing content to unauthorized users, and facilitating operation using mobile
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`devices operating on wireless networks having limited resources. EX2005, ¶28-
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`29; see, e.g., EX1001, 3:6-46. The solutions claimed by the ’132 patent also
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`addressed issues stemming from limitations of mobile devices of the time,
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`providing specific techniques involving multitasking and multithreading associated
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`with network access, media operations, and DRM. Id.
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`II. LEVEL OF ORDINARY SKILL
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`For purposes of this IPR, a person of ordinary skill in the art at the time of
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`the alleged invention (a “POSITA”) would have had a Bachelor’s degree in
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`Computer Science, Computer Engineering, Human Factors, or an equivalent
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`degree and at least two years of experience working in the fields of user interfaces,
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`communications applications, networking applications, or media applications, or a
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`person with equivalent education, work, or experience in such fields. EX2005,
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`¶¶23-24.
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`III. CLAIM CONSTRUCTION
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`Patent Owner submits that all claim terms should be construed according to
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`the Phillips standard. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005); 37
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`4
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`C.F.R. §42.100. Unless otherwise noted below, Patent Owner submits that terms
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`should be given their plain meaning in light of the specification, but reserves
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`opportunity to respond to constructions offered by Petitioner or adopted by the
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`Board.
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`The following term is defined by the ’132 Patent in the “Definitions”
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`section, but was not construed by the Petition. Phillips, 415 F.3d at 1316 (“[T]he
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`specification may reveal a special definition given to a claim term by the patentee
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`that differs from the meaning it would otherwise possess. In such cases, the
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`inventor’s lexicography governs.”); Cont’l Cirs. LLC v. Intel Corp., 915 F.3d 788,
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`796 (Fed. Cir. 2019) (“When the patentee acts as its own lexicographer, that
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`definition governs.”).
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`“Software Application” – “The Client software application which is to be
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`delivered over-the-air to, or pre-installed on, the Wireless Computing Device.”
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`EX1001, 8:61-63; EX2005, ¶¶30-31.
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`IV. THE PETITION FAILS TO DEMONSTRATE A “SOFTWARE
`APPLICATION” AS DEFINED BY THE ’132 PATENT
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`Independent claim 1 recites a “portable wireless computing device” that is
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`“programmed with a software application embodied on a non-transitory storage
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`medium” that “enables an end-user to interact with other users” and “allows the
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`end-user to” perform a number of recited actions. EX1001, cl. 1. Independent
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`claim 31 similarly recites a “Software application embodied on a non transitory
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`storage medium” and “executable on a portable wireless computing device” that
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`“enables an end-user to interact with other users” and “allows the end-user to”
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`perform a number of recited actions. EX1001, cl. 31. The ’132 patent
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`lexicographically defines the term “Software Application” in the “Definitions”
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`section. Supra, Section III; EX2005, ¶75. The “software application” elements
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`thus require not merely any “software application” generally, but a specific
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`software application configured to perform the claimed functions and as defined by
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`the lexicographic definition of the ’132 patent. Id. The Petition’s terse analysis
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`ignores the ’132 patent’s lexicographic definition, and never explains how its prior
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`art purportedly maps to the “software application” elements according to the ’132
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`patent’s lexicographic definition.
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`In particular, the Petition fails to address the definition of “software
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`application” and related claim terms in the ’132 patent’s specification. The ’132
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`patent includes a “Definitions” section that defines the term “Software
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`Application” as “[t]he Client software application which is to be delivered over-
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`the-air to, or pre-installed on, the Wireless Computing Device.” EX1001, 8:61-63;
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`see also supra, Section II. The ’132 Patent itself thus limits the claimed “Software
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`Application” according to its stated definition, and does not extend to generic
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`“browsers” that do not meet this definition. EX2005, ¶¶75-76; Phillips, 415 F.3d
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`at 1316 (If the specification “reveal[s] a special definition given to a claim term by
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`the patentee that differs from the meaning it would otherwise possess[,] . . . the
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`inventor’s lexicography governs.”) (citing CCS Fitness, Inc. v. Brunswick Corp.,
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`288 F.3d 1359, 1366 (Fed. Cir. 2002)).
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`The Board’s rules require that “the petition must set forth: . . . [h]ow the
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`challenged claim is to be construed” and “[h]ow the construed claim is
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`unpatentable.” 37 C.F.R. 42.104(b)(3)-(b)(4). In inter partes review, the logic of
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`this requirement is apparent—petitioners carry the burden of proof and must state a
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`complete prima facie case in the initiating petition. See Intelligent Bio-Systems,
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`821 F.3d at 1369 (“the expedited nature of IPRs bring with it an obligation for
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`petitioners to make their case in their petition to institute”). While a petitioner may
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`include a statement that the claim requires no express construction, such a
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`statement is not always sufficient, and it certainly is not sufficient here where the
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`’132 patent specification includes a “Definitions” section that defines particular
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`claim terms. E.g., Phillips, 415 F.3d at 1316.
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`Here, Petitioner attempts to evade its claim construction burden. The
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`Petition includes a claim construction section indicating that, “[w]here necessary,
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`claim construction is addressed below in Section V in the context of analyzing the
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`patentability of claims in which the construed claims appear.” Pet., 5. But in the
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`Section V mapping of the “software application” elements, the Petition never
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`addresses the ’132 Patent’s definition of “Software Application.” See, e.g., Pet.,
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`Section V.A.
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`Worse, the Petition never attempts to map Abrams’ “browser” to the
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`definition of “Software Application” provided by the ’132 Patent. The Petition
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`identifies a generic “browser” of Abrams as allegedly providing the claimed
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`“software application”—“[T]he ‘software application’ of claim 1 is found in
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`Abrams as a Web browser executing on user devices 106 and 108 so as to receive
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`and render Web pages from a Web server.” Pet., 21. But the Petition’s terse
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`analysis never addresses the full limitations of “software application” as defined by
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`the ’132 Patent. EX2005, ¶¶77-78. The Petition never addresses delivery of
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`Abrams’ purported “browser,” and never addresses whether the “browser” is
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`“delivered over-the-air to, or pre-installed on,” the purported smartphone (e.g.,
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`versus alternative techniques such as a USB cable or other wired connection). Id.
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`The Petition ignores the ’132 Patent’s definition altogether, and simply fails to
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`satisfy its burden. 37 C.F.R. §§ 42.104(b)(3) and 42.104(b)(4) (“[h]ow the
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`challenged claim is to be construed” and “[h]ow the construed claim is
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`unpatentable under the statutory grounds identified.”). The Petition fails to
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`demonstrate unpatentability of any challenged claim for this independent reason.
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`To be clear, there is no dispute that the ’132 patent defines “Software
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`Application” in the “Definitions” section. Dr. Shamos acknowledges the ’132
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`patent definition “is attempting to narrow the set of software applications that
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`could properly be called a software application in the patent.” See EX2006, 38:4-
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`12; 38:22-39:4 (describing that a scenario in which the software is manually loaded
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`through a wired connection “would seem to be excluded from the definition of
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`software application” in the ’132 patent); EX2005, ¶¶76-78. The ’132 patent
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`provides a lexicographic definition. The Petition ignored it, never even attempting
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`to map the cited art to the claim term as defined by the ’132 patent. The Petition
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`must demonstrate “[h]ow the construed claim is unpatentable under the statutory
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`grounds identified.” 37 C.F.R. §§ 42.104(b)(3) and 42.104(b)(4). The Petition did
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`not do so and is legally deficient.
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`Like the Petition, the Shamos declaration (EX1025) never specifically
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`addresses the requirements of the claimed “software application,” as defined by the
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`’132 patent. Pages 61-62 and 69 cited in the Limitation 1.2 analysis, and pages 62
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`and 70 cited in the Limitation 1.1 analysis, include text that is nearly identical to
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`the Petition. A declarant’s bare conclusion does not provide evidentiary support,
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`and is insufficient to demonstrate features that are never specifically addressed.
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`TQ Delta, 942 F.3d at 1362-64; see also In re Am. Acad. of Sci. Tech Ctr., 367
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`F.3d at 1368; Tate & Lyle Americas LLC v. Cargill, Inc., IPR2014-00084, Paper 12
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`at 17-18 (PTAB April 1, 2014); Kamada, ITD. V. Grigols Therapeutics Inc.,
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`IPR2014-00899, Paper 43 at 10 (PTAB Dec. 15, 2015). Like the Petition, the
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`Shamos Declaration never address the “Definition” of “Software application”
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`provided by the ’132 patent. Critically, the Shamos Declaration never discusses
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`delivery of Abrams’ purported “browser,” or whether the “browser” is “delivered
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`over-the-air to or pre-installed on” the purported smartphone, as compared to
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`alternative techniques such as delivery via a USB cable or other wired connection.
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`The “information presented in the petition” is insufficient to satisfy
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`Petitioner’s burden. The Board should confirm the patentability of the Challenged
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`Claims for this independent reason.
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`V. THE PETITION FAILS TO DEMONSTRATE THAT THE SYSTEM
`OF ABRAMS WOULD HAVE “INHERENTLY” PERFORMED THE
`CLAIMED FUNCTIONS “OVER A WIRELESS CONNECTION”
`(GROUNDS 1A-2 AND 4-6)
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`Independent claims 1 and 31 recite a series of functions carried out over a
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`“wireless connection.” EX1001, cls. 1, 31. To reach the “wireless connection”
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`elements, Petitioner relies exclusively on inherency. Pet., 11-33 (Ground 1a). The
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`Petition points to a single mention of a “cellular telephone” in Abrams, assuming
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`that “all interactions” between Abrams’ user devices 106, 108 and server apparatus
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`110 “inherently occur over a ‘wireless connection’” when a “cellular telephone” is
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`used. 1 Pet., 27. From this unsupported premise that “all interactions” occur
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` 1
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` All emphasis added unless otherwise noted.
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`wirelessly, Petitioner incorrectly asserts that the specific functions required by
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`independent claims 1 and 31 necessarily occur over a “wireless connection.” Id.
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`Contrary to Petitioner’s theory, however, nothing in Abrams describes that
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`interactions between the user device and server apparatus occur over a “wireless
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`connection,” and Petitioner’s declarant Dr. Shamos acknowledges the opposite—
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`that all interactions described by Abrams between the “cellular telephone” and
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`“server” were achievable in Abrams’ system without wireless cellular
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`communication. EX2006, 54:6-11; 58:15-59:4; 65:13-66:21; EX2005, ¶¶59-61.
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`The Petition’s inherency theory is based on layers of incorrect assumptions, and
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`simply fails to demonstrate that the functions recited by claims 1 and 31 would
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`have necessarily been carried out over a “wireless connection” in Abrams’ system.
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`The Abrams Grounds are fatally deficient and do not demonstrate unpatentability
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`of the challenged claims.
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`Petitioner’s inherency theory ignores the mandatory authority imposing the
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`burden upon Petitioner to cite disclosure indicating that the “wireless connection”
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`elements would “necessarily be present.” Inherency “may not be established by
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`probabilities or possibilities. The mere fact that a certain thing may result from a
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`given set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745
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`(Fed. Cir. 1999); see also In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993);
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`Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991)
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`(“Such evidence must make clear that the missing descriptive matter is necessarily
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`present in the thing described in the reference, and that it would be so recognized
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`by persons of ordinary skill.”). This high burden on Petitioner to demonstrate
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`inherency is not satisfied by a mere showing that a system “would allow for” the
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`missing descriptive matter. In re Asset Guard Prods. Inc., 2022 U.S. App. LEXIS
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`9909, *14, 2022 U.S.P.Q.2D (BNA) 343, 2022 WL 1097363 (non-precedential)
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`(reversing the Board and explaining that the Board’s finding that the teachings of
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`the prior art reference “would allow for” seams formed between encapsulated
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`sections of the pad to allow moisture to pass was insufficient to demonstrate
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`inherency). Petitioner’s inherency theory relies on such prohibited assumptions,
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`never demonstrating that the “wireless connection” elements required by the
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`claims are “necessarily present” in Abrams’ system.
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`For example, the Petition fails to identify any description in Abrams that
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`says interactions between the user device and server occur over a wireless cellular
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`network. In Figure 1, Abrams illustrates “user interface devices 106 & 108” as
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`desktop computers connected to the server 110 via the internet 112, and a “wired
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`connection” is illustrated by solid lines extending between the desktop computers
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`and the “internet 112” and between the “internet 112” and the “server 110.”
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`EX2006, 48:18-49:5 (“[I]t would appear to me that there’s a wired connection to
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`the Internet.”); EX1009, FIG. 1; [0074]; [0077].
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`EX2005, ¶62 (EX1009, FIG. 1 (annotated)).
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`Petitioner’s theory is premised on the assumption that “all interactions”
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`between Abrams’ user devices 106, 108 and the server apparatus 110 “inherently
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`occur over a ‘wireless connection’” when the user devices are “cellular
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`telephones.” 2 Pet., 27; see also id., 28 (“all interactions”), 29 (“all interactions”),
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`31 (“all interactions”). The Petition points to a single mention of a “cellular
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`telephone” at paragraph [0074] of Abrams. Pet., 20. Abrams states that “[t]he user
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`interface may be any device capable of presenting data, including, but not limited
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`to, cellular telephones, television sets or hand-held ‘personal digital assistants’.”
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`EX1009, [0074]. That is all. Abrams never again mentions the term “cellular
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`telephone,” and never mentions carrying out interactions over a wireless
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`connection, regardless of the device form factor. Rather, Abrams illustrates a
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`“wired connection” in Fig. 1, and never mentions any alternative. EX1009, FIG. 1;
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` Abrams conspicuously notes only that the “user interface”—not “user interface
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`devices 106 & 108”—may be a “cellular telephone.” Petitioner ignores Abrams
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`use of different terminology here, never explaining why the “cellular telephone”
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`should be considered to substitute for the “user interface devices 106 & 108” rather
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`than providing merely the “user interface” according to Abrams actual disclosure
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`(e.g., and connecting via the desktop computer or other “user interface devices 106
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`& 108”). EX2005, ¶64. Here again, Petitioner’s theory relies on unexplained
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`assumptions about Abrams’ system.
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`EX2005, ¶63. Nothing in Abrams describes interactions between Abrams’ user
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`device interface and server occur over a wireless connection, regardless of the type
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`of device that is used. Abrams illustrates use of a “wired connection” exclusively,
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`and Petitioner cites nothing in Abrams that such a connection would necessarily be
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`used instead, especially where Abrams never describes any alternative. EX2005,
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`¶63.
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`Even if the “user device” were implemented as a “cellular telephone,” a
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`POSITA would have readily recognized that interactions do not need to occur over
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`a wireless cellular connection in Abrams system to achieve Abrams’ stated
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`interactions, and instead such interactions readily occur over Abrams’ wired
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`connection (e.g., consistent with FIG. 1). EX2005, ¶65. Dr. Shamos
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`acknowledged that “all interactions” in Abrams system were achievable with a
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`wired connection, even if the user device were implemented as a “cellular
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`telephone.” See, e.g., EX2006, 54:6-11 (Q. “Is it your opinion then that the
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`cellular telephone could carry out interactions with the server over a wired
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`connection?” A. “I believe that there were cellular telephones that could do that
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`and there were cellular telephones that couldn’t do it.”); 65:13-66:21 (Q. “Could
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`all the operations described in Abrams be performed over that wired connection
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`between the device and the server?” . . . A. “Well, in your hypothetical, yes.”); see
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`also id. 58:15-59:4 (“So if it had a wired interface and I had to make a choice of
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`which interface to use, then if I had to, I would certainly consider download time.
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`And if it was going to take a prohibitively long time to do it over a slow wireless
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`network, but could be done faster over a wired network, I might choose to do
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`that.”).
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`Critically, Dr. Shamos acknowledges that Petitioner’s analysis of “all
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`interactions” between the cellular telephone and server relies on an artificially
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`limited scenario involving a hypothetical cellular telephone that includes
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`exclusively wireless connection capability:
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`Q: Could you describe what you mean by “all interactions”?
`A: “Okay, so I’m referring to cellular telephones that don’t have
`wired interfaces. If you don’t have a wired interface, the only way that
`you can talk to any other device in the world is wirelessly.”
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`EX2005, 55:5-9. But Petitioner’s inherency theory is not remedied by such an
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`assumption. First, the Petition never identifies such a device, and never
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`demonstrates that such device was even in existence. Second, even if such a
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`device existed, the Petition never demonstrates that such a device had capability to
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`carry out the range of “all interactions” with the server described by Abrams (or
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`even that such a device had a “user interface.”). EX2005, ¶66. Third, Petitioner
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`cites nothing in Abrams that Abrams’ “cellular telephone” calls for a device that
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`includes only wireless cellular connectivity and no wired or other connections.
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`Abrams is silent at best, never mentioning communication with the server via a
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`wireless connection, and certainly does not require such a configuration. Indeed,
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`Dr. Shamos acknowledges that Abrams’ “cellular telephone” encompasses devices
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`having other types of connections (besides wireless) capable of carrying out “all
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`interactions” described by Abrams. EX2006, 63:12-64:22; 65:22-67:19.3
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`The Petition fails to demonstrate inherency of the “wireless connection”
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`elements for yet additional reasons. The Petition fails to identify anything in
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`Abrams demonstrating that its “cellular telephone” would have even been capable
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`of carrying out “all interactions” with the server described by Abrams over a
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`wireless connection. Abrams describes several “interactions” between the user
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`devices 106, 108 and the server apparatus 110, but none are specifically addressed
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`by the Petition in its analysis of the “wireless connection” elements. For example,
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`interactions between the user devices and server apparatus 110 in Abrams’ system
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` 3
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` To be clear, even if a “cellular phone” existed that met Petitioner’s criteria (which
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`the Petition does not demonstrate), this does not demonstrate that Abrams’
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`“cellular telephone” necessarily included such features. Petitioner’s inherency
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`theory still fails to satisfy its burden to show the “wireless connection” elements
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`are “necessarily present,” not merely that Abrams system might “allow for” such a
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`feature.
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`include not only communication of user data represented by text or integers, but
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`also more bandwidth-intensive interactions, such as email messaging and
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`upload/download of photographs and other media data. EX2005, ¶¶66-67;
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`EX1009, [0086] (“The apparatus 110 may also include the image server 126 or a
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`plurality of image servers that manage(s) digital photographs and other human
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`viewable images.”); [0088] (“digital images”); [0091] (“descriptive data . . . may
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`represent a digital image—a photograph—of the user.”); [0103] (“data displayed”
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`includes “a digital image.”); [0105] (“displays a profile” that includes “digital
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`images of the second user, digital images of the second user’s friends.”); FIG. 3a
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`(“upload a photo”); cls. 24 and 36 (“aggregating and displaying” characteristic data
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`of said users “wherein said characteristic data of said user includes recorded audio
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`or video of said user.”); EX2006, 57:8-18; 60:19-61:8. The Petition cites nothing
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`in Abrams that indicates uploading and downloading photos or other media data
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`occur over a “wireless connection,” or that its user devices were capable of
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`carrying out such bandwidth-intensive interactions with the server over a “wireless
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`connection.” EX2005, ¶67; EX1009, [0086]; [0088]; [0091]; [0103]; [0105]; FIG.
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`3a; cls. 24 and 36.
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`A POSITA would have recognized Abrams’ terse mention of a “cellular
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`telephone” as lacking any structural features or characteristics that indicate the
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`extent of its wireless cellular capabilities. EX2005, ¶68. The Petition does not cite
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`any description in Abrams that the “descriptive data,” or associated user “photos”
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`and other “audio” and “video data,” was capable of transfer by the “cellular
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`telephone” via a wireless cellular connection. Id. Indeed, as noted above, Abrams
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`never describes use of a wireless cellular network for interactions between server
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`apparatus 110 and the cellular telephone for communicating such data—the single
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`mention of “cellular telephones” at paragraph [0074] of Abrams describes
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`“presenting data,” not the extent of connectivity capabilities. Id. EX1009, [0074];
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`EX2005, ¶68. Likewise, Abrams’ mention of communication “via the Internet” or
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`the use of a “browser” does not demonstrate use of a wireless cellular network.
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`Interaction “via the Internet” or involving a browser, as described by Abrams, need
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`not be wireless at all. EX2005, ¶68.
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`The Petition overlooks passages of Abrams that demonstrate the opposite—
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`specifically describing interactions using the user’s “computer,” rather than
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`describing the “cellular telephone” or a “user interface device 106 & 108”
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`generically. For example, at paragraph [0100], Abrams describes a user interface
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`for uploading photos to the server. EX1009, [0100]. “A user can through an
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`interface 306 browse files on his own computer select them, and then upload them
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`to the system of the present invention.” Id. Abrams never describes use of a
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`“cellular telephone” to upload photos or other media to the server over a wireless
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`connection, much less that a “cellular phone” was even capable of such an
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`interaction. EX2005, ¶69. The Petition never addresses Abrams’ description of
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`interacting with the server to upload photos or other media.
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`While Abrams does not describe any structure or details of its “cellular
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`telephone” that supports Petitioner’s inherency theory, relevant documentary
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`evidence demonstrates what a POSITA would have readily recognized—that
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`“cellular telephones” in the timeframe of the ’132 patent often utilized wired
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`communication and lacked the extensive wireless connectivity capabilities of
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`present-day cell phones. EX2005, ¶¶70-71. The
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