UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________
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`TRILLER, INC.,
`Petitioner
`
`v.
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`TIKTOK PTE. LTD.
`Patent Owner
`
`
`
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`
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`Case IPR2022-00180
`Patent 9,992,322 B2
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`_________________
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`
`
`
`
`
`
`PATENT OWNER TIKTOK PTE. LTD.’S
`PRELIMINARY RESPONSE
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`

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`Case IPR2022-00180
`Attorney Docket No: 50048-0016IP1
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`TABLE OF CONTENTS
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`
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`INTRODUCTION ............................................................................................ 1 
`I. 
`II.  LEVEL OF ORDINARY SKILL ..................................................................... 2 
`III.  CLAIM CONSTRUCTION .............................................................................. 3 
`IV.  ABRAMS FAILS TO PROVIDE ALL ELEMENTS OF THE
`INDEPENDENT CLAIMS ............................................................................... 3 
`A.  The Petition Fails To Demonstrate A “Software Application Embodied On
`A Non-Transitory Storage Medium” And “Executable On A Smartphone
`Device,” That Provides the Claimed Functions (Grounds 1a-2b and 4a-6b)
` ....................................................................................................................... 3 
`B.  The Petition Fails to Demonstrate that the System of Abrams Would Have
`“inherently” Performed the Claimed Functions “over a wireless
`connection” as Required by the Independent Claim (Grounds 1a-2b and 4a-
`6b) ................................................................................................................ 13 
`C.  The Petition fails to address the limitation “creat[ing] on a remote server
`one or more user accounts” recited in independent claim 30 (Grounds 1a-
`2b and 4a-6b) ............................................................................................... 24 
`V.  KNIGHT 2010 IS NOT PRIOR ART TO THE ’322 PATENT (GROUNDS
`3a AND 3b) ..................................................................................................... 26 
`A.  Legal Standard for Written Description Support ........................................ 27 
`B.  The 2007 PCT Application Provides Written Description Support for
`Claims 32 and 56 ......................................................................................... 28 
`C.  The 2007 PCT Application Provides Written Description Support for
`Claim 35 ...................................................................................................... 36 
`D.  Grounds 3a and 3b Fail Because Knight 2010 is Not Prior Art to the ’322
`Patent ........................................................................................................... 42 
`VI.  CONCLUSION ............................................................................................... 43 
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`Case IPR2022-00180
`Attorney Docket No: 50048-0016IP1
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`LIST OF EXHIBITS
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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”)
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`
`
`
`Exhibit No.
`EX2001
`EX2002
`EX2003
`EX2004
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`ii
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`I.
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`Case IPR2022-00180
`Attorney Docket No: 50048-0016IP1
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`INTRODUCTION
`The Petition sets forth thirteen Grounds of unpatentability, each of which
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`suffers from critical defects that render Inter Partes Review untenable. Throughout
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`the Petition, Triller repeatedly identifies high level descriptions in the cited
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`references without specifying how each specific claim recitation is found within the
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`references, while insisting that other non-disclosed features occur “inherently” or
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`would occur in “all” such systems with no support for such assertions. This failure
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`to proper demonstrate how each claim element is provided in the prior art. Is
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`pervasive throughout the Petition, including both the independent and dependent
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`claims.
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`To start, Triller fails to demonstrate that the Abrams reference (EX1009)
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`includes a software application “executable on a portable wireless computing
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`device” that performs each of the functions recited by the challenged claims. Rather,
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`Abrams discloses a web-server that performs various functions and merely “sends
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`out Web pages” to end user devices. EX1009, [0077]. That is, as demonstrated
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`below, all relevant functionality described in Abrams is performed at a “Web
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`application server” and not by a software application installed on and executed by a
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`portable wireless computing device. Id.
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`Second, Triller argues that all of the functions recited by the challenged claims
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`would “inherently occur over a ‘wireless connection’” in Abrams’s system. See, e.g.,
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`1
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`Pet., 28. As demonstrated below, however, the evidence of record shows that such
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`functionality is anything but inherent.
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`Finally, the Knight 2010 reference (EX1012) does not qualify as prior art with
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`respect to any of the challenged claims because all of the challenged claims (and in
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`particular, dependent claims 3, 6, and 27) are fully supported by the earlier filed May
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`2007 PCT application to which the ’322 patent claims priority. As demonstrated
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`below, each of Grounds 1a-6b as articulated in the Petition fail, and therefore
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`institution should be denied.
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`II. LEVEL OF ORDINARY SKILL
`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.
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`2
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`III. CLAIM CONSTRUCTION
`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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`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 ’322 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.”).
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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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`EX1002, 8:63-65.
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`IV. ABRAMS FAILS TO PROVIDE ALL ELEMENTS OF THE
`INDEPENDENT CLAIMS
`A. The Petition Fails To Demonstrate A “Software Application
`Embodied On A Non-Transitory Storage Medium” And
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`“Executable On A Smartphone Device,” That Provides the
`Claimed Functions (Grounds 1a-2b and 4a-6b)
`Independent claim 30 recites a “Software application embodied on a non-
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`transitory storage medium” and “executable on a smartphone 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.1 EX1002, cl. 30. The “software application”
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`elements thus require not merely any “software application” generally, but a
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`specific software application configured to perform the claimed functions. Id.
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`Additionally, the software application that “enables an end-user to interact with
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`other users” and “allows the end-user to” perform a number of actions must be
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`“embodied on a non-transitory storage medium” and “executable on the
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`smartphone device.” Id. The Petition’s terse analysis, which relies exclusively on
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`Abrams, fails to fully address these “software application” elements.
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`Rather than a dedicated software application for performing the claimed
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`functions, the Petition identifies a generic “browser” of Abrams as allegedly
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`providing the claimed “software application”—“[T]he ‘software application’ of
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`claim 30 is found in Abrams as a Web browser executing on user devices 106 and
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`108 so as to receive and render Web pages from a Web server.” Pet., 20. From
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`there, the Petition relies on other aspects of Abrams system for features of claim
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`1 All emphasis added unless otherwise noted.
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`4
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`30, including “a bulletin board that users can use to conduct online discussions”
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`(Pet., Limitation 30.3), “interfaces” related to profile data or messaging (Pet.,
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`Limitations 30.4, 30.7), and a “web page” that presents other users within the
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`social network (Limitation 30.5), etc. Such reliance ignores the full limitations of
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`claim 30.
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`For example, the Petition ignores that the features it relies on as purportedly
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`part of the “software application” that “enables an end-user to interact with other
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`users” and “allows the end-user to” perform a number of actions are not actually
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`“embodied on” the portable device at all, as required by independent claim 30.
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`Instead, Abrams plainly states that these aspects of its system are located at a
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`remote “Web server”:
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`The Web application server 130 is a system that sends out Web pages
`in response to Hypertext Transfer Protocol (HTTP) requests from
`remote browsers (i.e. users of the apparatus 110). That is, the Web
`server 130 provides the GUI 102 & 104 to users of the system in the
`form of Web pages. These Web pages sent to the user’s device 106 &
`108 would result in GUI screens 102 & 104 being displayed.
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`EX1009, [0077]. Simply put, the features identified by the Petition are not
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`“embodied on” the purported smartphone at all. In Abrams system, the “Web
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`server,” and other components of its system remote from the user device, handle
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`these functions—not the user device. The web server provides the GUI to users of
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`the system in the form of web pages that are merely displayed by the user interface
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`devices.2
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`
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`The Petition never addresses Abrams straightforward description on this
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`point, and thus fails to fully address the “software application” elements of
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`independent claim 30. Claim 30 requires that the “software application” that
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`“enables an end-user to interact with other users” and “allows the end-user to”
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`carry out the recited set of actions be “embodied on” the non-transitory storage
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`medium and “executable on” the smartphone. The Petition, instead, identifies a
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`generic browser used in a system in which a web server handles these functions,
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`merely pushing HTML code to the generic browser. This defect infects the
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`Petitioner’s mapping of each aspect of claim 30, including the “bulletin board,” the
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`“interfaces,” and “web page,”—all of which are provided by Abrams’ “Web
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`server,” and none of which have been shown to be “embodied on” the non-
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`transitory storage medium (identified by Petitioner as provide by a smartphone).
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`The Abrams grounds fail for this independent reason.
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`2 To be clear, this is not an issue of whether a web browser is a “software
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`application”—the ’322 patent acknowledges that some “browsers” may provide a
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`“software application.” EX1002, 62:8-12. But the claims require more, which the
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`Petition fails to address.
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`Critically, the Petition never addresses the ’322 Patent’s prosecution history
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`relevant to the “software application” features. For example, during prosecution of
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`the parent of the ’322 patent (EX1006) involving nearly identical claim language,
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`the Sittig reference (U.S. 2007/0214141, EX2004) was distinguished in part
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`because Sittig’s system lacked a “software application” having the claimed
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`features on the user device: “Sittig lacks any disclosure of any key functionality
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`on a portable wireless computing device. Instead, the key functionality in Sittig is
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`disclosed to be in the social network engine.” EX1006, 45-47. Like Abrams,
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`Sittig described a “social networking website” (accessed via a computing device),
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`and “one or more servers operating the social networking website.” EX2004,
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`[0016]-[0017]. Applicant’s remarks were followed by a notice of allowance in
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`which the Examiner concluded that “the substance of applicant’s arguments filed
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`on 10/25/16 are persuasive” and “applicant’s reply make evident the reasons for
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`allowance.”3 EX1006, 12. The Petition simply does not demonstrate that Abrams
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`3 The Petition’s analysis of Abrams on this element is “substantially the same” as
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`prior art applied in a substantive rejection and fails for the same reasons—both
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`describe a generic browser/website pushed out by a web server, with all of the
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`functionality provided by the web server. The Petition never explains any
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`discloses the claimed “software application” features when, like Sittig, Abrams
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`describes a mere “browser” at the user device with the relevant functionality
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`provided by a remote “Web server.”
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`The Petition also ignores the ’322 Patent specification itself, which discusses
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`“browsers” generally as distinct from the claimed “software application.” For
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`example, the ’322 patent distinguishes its “software application” (e.g., such as the
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`example MusicStation software application described at length by the ’322 Patent)
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`from “Wireless Application Protocol” browsers. See, e.g., EX1002, 2:5-21
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`(describing WAP technology as “unfriendly, slow and cumbersome for users” and
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`“the world’s largest mobile phone group . . . has avoided selling full music
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`downloads on anything but top-of-the-range 3G phones because of the end-user
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`difficulties associated with WAP.”); id, 17:28 (“WAP browser”); id, 32:8-11
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`(“WAP page” and “WAP browser,” distinct from “MusicStation” software
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`application). “Two alternatives to WAP based acquisition of full music content are
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`difference between the Petition’s reliance on Abrams and the features purportedly
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`disclosed by Sittig and applied in a rejection during original prosecution. 35
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`U.S.C. § 325(d); Advanced Bionics, LLC v. MED-EL Elektromedizinische Gerate
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`GmbH, IPR2019-01469, Paper 6 at 9 (PTAB Feb. 13, 2020) (precedential). Denial
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`of institution under 325(d) is thus appropriate.
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`currently favored,” including “Music shop applications, running locally on a
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`mobile telephone.” EX1002, 2:27-32. Here again, the Petition inexplicably
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`ignores the ’322 Patent specification, relying instead on “browsers” explicitly
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`addressed in the Background and that lack critical elements of independent claim
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`30.
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`The Petition’s deficiencies in the Abrams grounds are not remedied by
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`arguments (1) that the “browser” would “inherently” be “embodied on” the
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`smartphone device because the “browser” does not have to be repeatedly
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`reinstalled, or (2) that it would have been obvious to modify Abrams so the
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`“browser” was “embodied on” the smartphone device. Pet., 20-21. Even if true as
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`to the generic “browser” (which the Petition does not demonstrate), the Petition
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`fails to show a software application that “enables an end-user to interact with other
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`users” and “allows the end-user to” perform the claimed actions is “embodied on a
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`non-transitory storage medium” and “executable on the smartphone device,” or any
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`evidence that such elements would be “necessarily present” in Abrams’ user
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`device. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (Inherency “may not
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`be established by probabilities or possibilities. The mere fact that a certain thing
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`may result from a given set of circumstances is not sufficient.”). Instead, Abrams’
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`description shows Abrams’ preference in which the claimed configuration is not
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`present—the features in Abrams that Petitioner relies upon are provided by a “Web
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`server,” not “embodied on” the purported smartphone. EX1009, [0077]. None of
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`the “interfaces” in Abrams identified by the Petition are part of the purported
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`“browser,” nor are they “embodied on non-transitory memory” on the purported
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`smartphone device. The “interfaces” in Abrams are accessible at the user device
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`when pushed out by the web server, and the interfaces reflect whatever updates or
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`changes are made at the web server each time the web page is displayed (e.g.,
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`independent of the browser at the user device). Simply put, there is an
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`irreconcilable disconnect between Petitioner’s identification of the “browser” as
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`the purported “software application,” and identification of other system aspects
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`that are provided by the remote “Web server.”
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`To be clear, the Shamos declaration (EX1025) adds nothing. Pages 61-62
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`and 75 cited in the Limitation 30.1 analysis, and pages 75-76 cited in the
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`Limitation 30.2 analysis, include text that is nearly identical to the Petition. A
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`declarant’s bare conclusion does not provide evidentiary support, and is
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`insufficient to demonstrate features that are never specifically addressed. TQ
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`Delta, LLC v. Cisco Sys., 942 F.3d 1352, 1362-64 (Fed. Cir. 2019). (reversing
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`finding of obviousness and refusing to give weight to petitioner’s “ipse dixit
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`declaration”); see also In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed.
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`Cir. 2004) (“the Board is entitled to weigh the declarations and conclude that the
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`lack of factual corroboration warrants discounting the opinions expressed in the
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`declarations”); Tate & Lyle Americas LLC v. Cargill, Inc., IPR2014-00084, Paper
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`12 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). In short, this is not a case
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`in which the Board should give deference to Petitioner’s declarant at the institution
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`stage.
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`The Petition’s analysis of the “software application” elements fails for an
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`additional, independent reason. The Petition never addresses the definition of
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`“software application” and related claim terms in the ’322 Patent’s specification.
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`For example, the ’322 Patent includes a “Definitions” section that defines the term
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`“Software Application” as “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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`EX1002, 8:62-65; see also supra, Section II. The ’322 Patent itself thus limits the
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`claimed “Software Application” according to its stated definition, and does not
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`extend to generic “browsers” that do not meet this definition.
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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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`Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“the
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`expedited nature of IPRs bring with it an obligation for petitioners to make their
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`case in their petition to institute”). While a petitioner may include a statement that
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`the claim requires no express construction, such a statement is not always
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`sufficient, and it certainly is not sufficient here where the ’322 Patent specification
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`includes a “Definitions” section that defines particular claim terms. E.g., Phillips,
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`415 F.3d at 1316.
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`
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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 ’322 Patent’s definition of “Software Application,” and never
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`attempts to map Abrams “browser” to the definition of “Software Application”
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`provided by the ’322 Patent See, e.g., Pet., Section V.A. For example, the Petition
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`never addresses delivery of Abrams purported “browser,” and never addresses
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`whether the “browser” is “delivered over-the-air to, or pre-installed on,” the
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`purported smartphone (e.g., versus alternative techniques such as a USB cable or
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`other wired connection (see Section IV.B., infra)). The Petition simply ignores the
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`’322 Patent’s definition altogether.4 The Abrams grounds fail for this additional,
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`independent reason.
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`B.
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`The Petition Fails to Demonstrate that the System of Abrams
`Would Have “inherently” Performed the Claimed Functions
`“over a wireless connection” as Required by the Independent
`Claim (Grounds 1a-2b and 4a-6b)
` When addressing elements [30.4], [30.5], [30.6], [30.7], and [30.8], Triller
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`repeatedly, yet incorrectly, insists that the “cellular telephones” briefly mentioned
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`by Abrams would “inherently communicate with server apparatus 110 over a
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`‘wireless connection’” to perform each of the functions recited by elements [30.4]-
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`[30.8] and that “all interactions” between the cellular telephones and the server
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`“inherently occur over a ‘wireless connection.’”5 Pet., 23, 27-30. The Shamos
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`4 Petitioner’s strategy here defies the Board’s rules and fails to satisfy its burden to
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`set forth both “[h]ow the challenged claim is to be construed” and “[h]ow the
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`construed claim is unpatentable under the statutory grounds identified.” 37 C.F.R.
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`§§ 42.104(b)(3) and 42.104(b)(4).
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`5 The Petition addresses elements [31.4]-[31.8] through mere citation back to the
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`analysis of elements [1.4]-[1.8]. Similar to claim 1, each of elements [31.4]-[31.8]
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`recite that the claimed functions are performed “over [a/the] wireless connection.”
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`Claim 31 therefore distinguishes over Abrams for the same reasons discussed here
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`with respect to claim 1.
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`declaration does not expand upon, provide analysis with respect to, or identify
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`additional evidence to support this incorrect assertion that all communications in
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`Abrams involving a cellular phone/PDA are “inherently” wireless, but rather
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`merely repeats the same bald assertion as the Petition that “[a]ll interactions
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`between the ‘server apparatus 110’ and user devices 106 and 108 are inherently via
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`a ‘wireless connection’ when the user device is a ‘cellular telephone’ or PDA.”
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`EX1025, p. 63 (cited at Pet., 23). However, there is simply no support in the record
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`that “all” of the communications involved in performing each of the distinct
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`functions of elements [30.4]-[30.8] would “inherently occur” over a wireless
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`connection, as Triller asserts. Indeed, the evidence here shows the opposite.
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`First, Abrams’ disclosure of “cellular telephones” is, at best, terse. Abrams
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`makes passing reference to the fact that “user interface devices 106 & 108” may be
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`implemented as “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]. The discussion of the user interface devices 106 & 108 in
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`general is also limited. They are merely described as being capable of receiving
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`and displaying “Web pages” communicated “via the Internet 112.” Id., [0077],
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`[0074].
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`Furthermore, Triller’s assertion that the cellular telephone implementation of
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`Abrams’ user interface devices 106 & 108 would “inherently” utilize wireless
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`communications for “all interactions” with the server when performing all of the
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`functions of elements [30.4]-[30.8] is not supported by any corroborating evidence
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`or any analysis on the subject from Triller’s expert. Rather, Triller appears to rely
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`on the reader’s understanding of capabilities of cellular telephones at the present
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`time, without any discussion of the far more limited capabilities of cellular
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`telephones prior to the May 5, 2006 priority date of the ’132 patent.6
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`During the relevant time frame (prior to May 2006), early cellular phones
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`capable of both voice and data communication relied upon a hybrid of wireless
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`communications (for voice communications and certain limited data
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`communication such as SMS messaging) and wired communications (for data
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`communications). For example, as previously discussed, the software application
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`described by the ’322 patent is directed toward providing social interaction and
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`connection between various users to allow for the easy sharing of music and other
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`media content. EX1002, 33:62-34:3, 36:32-54. Haeusel (Ex. 2002) describes that
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`in prior art mobile phones, such communication of media content was provided to
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`the mobile phone over a wired connection. Ex. 2002, [0042], [0059] (“media
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`content includes video, music, and other data”). Specifically, Haeusel describes
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`that users would generally “plug (i.e., ‘dock’) their mobile phone into their [set top
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`6 See fn. 8, infra, re the proper May 5, 2006 priority claim of the ’132 patent.
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`box]. By interacting with an electronic programming guide (‘EPG’) displayed on a
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`television coupled to the STB, users connect to media content services such as
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`electronic storefronts or virtual shopping to browse, select and then purchase
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`and/or download media content such as music to their mobile phones through the
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`STB.” Id. Such a physical connection was used to deliver media and other data to
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`a cellular phone in prior art systems because “the mobile phone used in such an
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`arrangement needs no modifications or alterations.” Id.
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`The data provided to the mobile phone over the physical, wired connection
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`is communicated to the set top box via “distributed networks such as the Internet.”
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`Id., [0043]. Hausel also provides depictions of the state of the art cell phones of
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`the time, far from the fully functional, touch-screen smart phones of today:
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`Ex. 2002, Figs. 2-5. Such mobile phones included “accessory connector[s] 238”
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`for connecting accessories such as “data cables.” Id., [0049]. Haeusel describes
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`that “contacts in contact set 626 used for data transmission are operatively coupled
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`to the mobile phone's I/O controller circuitry.” Id., [0055], see also [0057]
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`(describing various physical connection arrangements, including USB, for
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`communicating data to the cell phone).
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`As another example, Lipsit (Ex. 2003) describes that data communications
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`between cellular telephones and other computing devices would often occur over a
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`physical, wired connection. FIG. 1 of Lipsit shows “a cellular telephone 160” in
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`communication with a computer 102 over a wired, physical connection:
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`Ex. 2001, FIG. 1, 4:15-25. Specifically, Lipsit describes that “[t]he computer 102
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`is connected to a serial interface 150 via a cable 135 which connects the serial
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`port 114 of the computer 102 to the serial interface 150. The serial interface 150 is
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`connected to a data interface port 162 of a cellular telephone 160, via cable 155.”
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`Id. Lipsit goes on to describe that “[t]he data interface port 162 allows the
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`microprocessor of the cellular telephone 160 to communicate with external
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`devices. Thus, cable 135, serial interface 150, and cable 155 allow the computer
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`102 to communicate with the cellular telephone 160.” Id. Lipsit goes on to
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`describe conducting data communication with the cellular telephone 160 “via the
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`serial interface 150 and cables 135 and 155.” Id., 8:3-9.
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`Similarly, Dickie (Ex. 2001) describes a PDA 102 implemented as a
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`“cellular phone” that communicates with a portable computer 104 via a physical
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`docking cradle 120. Ex. 2001, [0013]-[0016]. Data communication for various
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`applications executing on the cellular phone, including calendar and email
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`applications, occurs over the physical dock connection. Id., [0013], [0030]. As
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`Dickie explains “[i]n addition to physically mounting the PDA 102, the PDA
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`docking cradle 120 provides an interface that supports both data communication
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`and power resources. In this manner, the integrated PDA docking cradle 120 offers
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`the cradle functionality to interface the PDA 102 with the portable computer 104,
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`thereby eliminating the need for external docking cradles.” Id., [0020]. The user
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`can fully interact with the cellular phone to interact with these applications when
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`the cellular phone is docked. Id., [0021].
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`As can be seen from these examples, wired connections for providing data
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`communications with cellular telephones were ubiquitous during the relevant time
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`frame. Communication of application data, such as that described in Abrams, over
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`a wireless connection is anything but “inherent[]” and wireless communication was
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`certainly not utilized for “all interactions” between cellular phones and servers in
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`prior art systems, as Triller asserts. In re Robertson, 169 F.3d at 745 (Inherency
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`“may not be established by probabilities or possibilities. The mere fact that a
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`certain thing may result from a given set of circumstances is not sufficient.”).
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`Indeed, the ’322 patent expressly describes that one of the “[b]enefits” of the
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`claimed invention was that the claimed functions are performed “when on the
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`move, not just when it is physically attached to an internet-connected PC.”
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`EX1002, 4:18-22.
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`Furthermore, Triller has not even attempted to provide any evidence that the
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`wireless communication of all application data “is necessarily present” in the prior
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`art in general or in Abrams’ system specifically. Continental Can Co. USA v.
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`Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991) (“Such evidence must make
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`clear that the missing descriptive matter is necessarily present in the thing
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`described in the reference, and that it would be so recognized by persons of
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`ordinary skill.”). The fact that a certain function may occur or be present in the
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`prior art is not sufficient to establish the inherency of that function. In re Rijckaert,
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`9 F.3d 1531, 1534 (Fed. Cir. 1993); In re Robertson, 169 F.3d at 745.
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`The only citation in Triller’s assertion in the Petition regarding the functions
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`of elements [30.4]-[30.8] being performed “over a wireless connection” is a nearly
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`identical, two sentence statement in Triller’s Shamos declaration. Compare Pet.,
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`22-23 with EX1025, p. 63. But a declarant’s bare conclusion, unsupported by any
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`underlying facts or data, does not provide evidentiary support and is insufficient to
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`demonstrate features that are never specifically addressed. TQ Delta, 942 F.3d at
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`1362-64 (reversing finding of obviousness and refusing to give weight to
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`petitioner’s “ipse dixit declaration”). Triller has therefore failed to that establish
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`that each of the functions recited by elements [30.4]-[30.8] is inherently performed
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`“over a wireless connection” in Abrams’ system.
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`Triller’s insistence that the mere presence of a cellular phone somehow
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`indicates each of the functions recited by elements [30.4]-[30.8] are inherently
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`performed “over a wireless connection” essentially reads this requirement entirely
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`out of the claim. This unsupported assertion by Triller “turns the Petition into an
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`empty invitation f