Trials@uspto.gov
`571-272-7822
`
`Paper 9
`Date: May 16, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TRILLER, INC.,
`Petitioner,
`v.
`TIKTOK PTE. LTD.,
`Patent Owner.
`
`IPR2022-00180
`Patent 9,992,322 B2
`
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, JOHN D. HAMANN, and
`JULIET MITCHELL DIRBA, Administrative Patent Judges.
`HAMANN, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`

`

`IPR2022-00180
`Patent 9,992,322 B2
`
`INTRODUCTION
`I.
`Triller, Inc. (“Petitioner”) filed a petition for inter partes review of
`claims 30–32, 35, 51, 55, and 56 (“the challenged claims”) of U.S. Patent
`No. 9,992,322 B2 (Ex. 1002, “the ’322 patent”). Paper 1 (“Pet.”). TikTok
`Pte. Ltd. (“Patent Owner”) filed a Preliminary Response. Paper 8 (“Prelim.
`Resp.”).
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition . . . and any response . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a)
`(2018); see 37 C.F.R. § 42.108 (2021). Upon consideration of the papers,
`we determine that the information presented shows that there is a reasonable
`likelihood that Petitioner would prevail in establishing the unpatentability of
`at least one of the challenged claims of the ’322 patent.
`A. Real Parties-in-Interest
`Petitioner identifies itself as a real party-in-interest, and identifies
`
`Triller Holdco LLC as its parent company. Pet. 1. Patent Owner identifies
`itself as a real party-in-interest. Paper 5, 1.
`B. Related Matters
`The parties identify Bytedance Inc. v. Triller, Inc., 4:20-CV-07572
`(N.D. Cal.) as a matter that may affect, or be affected by, a decision in this
`proceeding. Pet. 1; Paper 5, 1. In addition, Petitioner filed petitions for inter
`partes review of two additional patents that are related to the ’322 patent and
`owned by Patent Owner: (i) U.S. Patent No. 9,648,132 B2 (IPR2022-00179)
`and (ii) U.S. Patent No. 9,294,430 B2 (“the ’430 patent”) (IPR2022-0181).
`
`2
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`IPR2022-00180
`Patent 9,992,322 B2
`C. The Challenged Patent
`The ’322 patent, in relevant part, relates to a portable wireless
`
`computing device (e.g., a smart phone), which allows for social network
`functionality, including allowing a user to create a profile, identify other
`users as friends, and interact with other users. See generally Ex. 1002, 1:26–
`34, 76:50–79:43. More specifically, the ’322 patent teaches that a user of a
`social network can create a profile so that they can partake in community
`features and communicate with other users. Id. at 76:50–54. In creating
`their profile, the user can select a unique member name, an image, and a
`catchphrase, which can be displayed to other users. Id. at 76:57–63. The
`’322 patent also teaches ways for a user to become a friend with another user
`by allowing the user to view other users’ profiles, or search for them by
`name or phone number, and send a friend request—a list of a user’s friends
`is maintained in the user’s profile. Id. at 78:65–67, 79:7–19. In accordance
`with the ’322 patent, a user can make recommendations (i.e., recommend a
`music album, artist, playlist, or track) and send messages to other users who
`are their friends. Id. at 79:20–43.
`D. The Challenged Claims
`Petitioner challenges claims 30–32, 35, 51, 55, and 56 of the ’322
`patent, of which claim 30 is an independent claim. Claim 30 is illustrative
`of the challenged claims and is reproduced below:
`
`30. Software application embodied on a non-transitory
`storage medium, wherein the software application is executable
`on a smartphone device, wherein the software application
`enables an end-user to interact with other users and (a) in which
`the software application allows the end-user to, over a wireless
`connection, create on a remote server one or more user accounts
`with associated profiles for that end-user, wherein the profiles
`are editable; and (b) the software application allows the end-user
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`IPR2022-00180
`Patent 9,992,322 B2
`to, over the wireless connection, view profiles created by other
`users of a service; and (c) the software application allows the
`end-user to, over the wireless connection, interact with other
`users of the service; and (d) the software application allows the
`end-user to, over the wireless connection, send and receive
`messages to and from other users of the service; and (e) the
`software application allows the end-user to, over the wireless
`connection, link his or her user account on the remote server to
`user accounts on the remote server of other users of the same
`service or of other services.
`Ex. 1002, 90:28–46.
`E. Asserted Grounds of Unpatentability
`Petitioner asserts that the challenged claims of the ’322 patent are
`unpatentable based on the following grounds:
`
`Claim(s) Challenged 35 U.S.C. §1
`30, 51, 55
`102
`30, 31, 51, 55, 56
`103
`
`Reference(s)/Basis2
`Abrams3
`Abrams
`
`
`1 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35
`U.S.C. §§ 102, 103 that became effective on March 16, 2013. At this stage
`of the proceeding, we apply the pre-AIA version of the statutory bases for
`unpatentability because the ’322 patent claims priority to an application filed
`before March 16, 2013. Ex. 1002, 1:9–18. In addition, although Petitioner
`argues that the ’322 patent is subject to post-AIA § 102 (Pet. 11 n.1, 39 n.4),
`the parties do not argue that the patentability analysis differs here based on
`what version applies.
`2 For certain challenged claims of certain asserted grounds, Petitioner also
`lists “the knowledge of [one of ordinary skill in the art] about multitasking
`and multithreading (as evidenced by Java Threads (Ex. 1015) and expert
`testimony (Ex. 1025)).” Pet. 3–4. Although we do not list such knowledge
`separately, we consider it as part of our obviousness analysis. See Randall
`Mfg. v. Rea, 733 F.3d 1355, 1362–63 (Fed. Cir. 2013). In addition, we view
`Petitioner’s listing of Exhibit 1015 as evidencing the alleged knowledge of
`one of ordinary skill, rather than including Exhibit 1015 as part of an
`asserted combination for an asserted ground.
`3 US 2005/0021750 A1, published Jan. 27, 2005 (Ex. 1009, “Abrams”).
`
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`IPR2022-00180
`Patent 9,992,322 B2
`Claim(s) Challenged 35 U.S.C. §1
`32, 35
`103
`35
`103
`30, 31, 51, 55, 56
`103
`32, 35
`103
`30, 31, 51, 55, 56
`103
`32, 35
`103
`30, 31, 51, 55, 56
`103
`32, 35
`103
`103
`103
`103
`102
`103
`
`Reference(s)/Basis2
`Abrams, Khedouri4
`Abrams, Partovi5
`Abrams, CNET,6 Collins7
`Abrams, CNET, Collins, Khedouri
`Abrams, CNET, Monas8
`Abrams, CNET, Monas, Khedouri
`Abrams, CNET, Collins, Monas
`Abrams, CNET, Collins, Monas,
`Khedouri
`Abrams, CNET, Collins, Partovi
`Abrams, CNET, Monas, Partovi
`Abrams, CNET, Collins, Monas,
`Partovi
`Knight9
`Knight
`
`35
`35
`35
`32, 35, 56
`32, 35, 56
`
`Pet. 3–5, 11–69. Petitioner submits in support of its arguments the
`Declaration of Michael Shamos, Ph.D. (Ex. 1025).
`II. DISCRETIONARY DENIAL UNDER 35 U.S.C. § 325(d)
`Patent Owner argues that we should exercise discretion under
`
`35 U.S.C. § 325(d) to deny institution. See Prelim. Resp. 7 n.3, 25 n.7. In
`particular, Patent Owner argues that the Petition’s analysis of Abrams for the
`“software application” “element is ‘substantially the same’ as prior art [(i.e.,
`Sittig)] applied in a substantive rejection and fails for the same reasons—
`both describe a generic browser/website pushed out by a web server, with all
`
`4 US 2006/0008256 A1, published Jan. 12, 2006 (Ex. 1011, “Khedouri”).
`5 US 8,572,169 B2, issued Oct. 29, 2013 (Ex. 1010, “Partovi”).
`6 Pages from www.cnet.com archived on Wayback Machine (dated in 2005
`and 2006) (Ex. 1019, “CNET”).
`7 US 5,963,951, issued Oct. 5, 1999 (Ex. 1020, “Collins”).
`8 Steve Monas, YourSpace: A Friend’s Guide to MySpace.com: The Basics
`(2006) (excerpts) (Ex. 1014, “Monas”).
`9 US 2010/0031366 A1, published Feb. 4, 2010 (Ex. 1012, “Knight”).
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`IPR2022-00180
`Patent 9,992,322 B2
`of the functionality provided by the web server.” Id. at 7 n.3. Similarly,
`Patent Owner argues that the Petition’s analysis of Abrams for the
`“creat[ing] on a remote server one or more user accounts” “element is
`‘substantially the same’ as prior art (the Reddick reference) applied in a
`substantive rejection during prosecution of the parent ’430 patent and fails
`for the same reasons—both references arguably describe allowing a user to
`edit profiles, but not allowing a user to create accounts.” Id. at 25 n.7 (citing
`Ex. 1005, 73–74).
`
`In evaluating arguments under § 325(d), we use a two-part
`framework, with the first part being whether the same or substantially the
`same art previously was presented to the Office or whether the same or
`substantially the same arguments previously were presented to the Office.
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH,
`IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential)
`(addressing in a two part framework the factors presented in Becton,
`Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586, Paper 8
`at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III(C)(5), first
`paragraph)). As we discuss below, we are not persuaded that the first part of
`the framework is met.
`
`Patent Owner does not argue that Abrams previously was presented to
`the Office. See Prelim. Resp. 7 n.3, 25 n.7. And we are not persuaded that
`Abrams is substantially the same art as Sittig or Reddick simply because
`Abrams may have one claimed feature in common with Sittig (i.e., “a
`generic browser”) and a different claimed feature in common with Reddick
`(i.e., allowing a user to edit, but not create, profiles). Id. Petitioner is
`relying on Abrams to teach multiple claimed features, and Patent Owner’s
`§ 325(d) arguments address only a subset of those features. Id.
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`IPR2022-00180
`Patent 9,992,322 B2
`
`Moreover, as we discuss below, we disagree with Patent Owner that
`Sittig employing a browser was a reason that particular rejection was
`overcome. See infra Section IV (addressing Applicant’s remarks to a
`rejection). Rather, the rejection was overcome for failing to teach a
`limitation (i.e., that a software application allowed a user, over a wireless
`connection, to create a user account) that Abrams teaches. See id.; infra
`Section VI(B)(3) (applying Abrams). Nor do we agree with Patent Owner
`that Abrams (unlike Reddick) fails to teach allowing a user to create an
`account. See infra Section VI(B)(3) (applying Abrams).
`
`In addition, Patent Owner does not address whether the same or
`substantially the same arguments previously were presented to the Office.
`See Prelim. Resp. 7 n.3, 25 n.7.
`
`In light of the above, we find that the first part of the Advanced
`Bionics framework is not met, and thus, we do not proceed to the second
`part. See Advanced Bionics, Paper 6 at 10. Accordingly, we decline to
`exercise discretion to deny institution under 35 U.S.C. § 325(d).
`III. LEVEL OF ORDINARY SKILL IN THE ART
`To determine whether an invention would have been obvious at the
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham v. John Deere Co., 383 U.S. 1,
`17 (1966). In assessing the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955,
`962–63 (Fed. Cir. 1986)). “[O]ne or more factors may predominate.” Id.
`
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`IPR2022-00180
`Patent 9,992,322 B2
`Petitioner submits that one of ordinary skill in the art would have had
`“a bachelor’s degree in computer science, electrical engineering, or an
`equivalent discipline, or equivalent experience, including familiarity with
`multitasking and multithreading, wireless communications and client/server
`computing, and, in addition, familiarity with digital music distribution and
`DRM.” Ex. 1025 ¶ 62; Pet. 35.
`
`Patent Owner submits that one of ordinary skill in the art would have
`had “a Bachelor’s degree in Computer Science, Computer Engineering,
`Human Factors, or an equivalent degree and at least two years of experience
`working in the fields of user interfaces, communications applications,
`networking applications, or media applications, or a person with equivalent
`education, work, or experience in such fields.” Prelim. Resp. 2.
`The parties’ dispute regarding the level of ordinary skill in the art does
`not substantively impact our analysis for purposes of institution. Rather, we
`find in applying either parties’ definition for what comprises the level of
`ordinary skill in the art that Petitioner shows that there is a reasonable
`likelihood that it would prevail in proving the unpatentability of the
`challenged claims. At this stage of the proceeding, however, we adopt
`Petitioner’s proposed definition as it is supported by expert testimony, and
`Patent Owner’s is not.
`During trial, and in accordance with our Rules, the parties should
`address what substantive effect, if any, different proposed definitions for the
`level of ordinary skill in the art have on analyzing what the prior art teaches
`or in otherwise evaluating unpatentability of the challenged claims.
`IV. CLAIM CONSTRUCTION
`Because the Petition was filed after November 13, 2018, we apply the
`same claim construction standard that would be used in a civil action under
`
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`IPR2022-00180
`Patent 9,992,322 B2
`35 U.S.C. § 282(b), following the standard articulated in Phillips v. AWH
`Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b);
`83 Fed. Reg. 51,340, 51,340–41, 51,343 (Oct. 11, 2018). In applying such
`standard, claim terms are generally given their ordinary and customary
`meaning, as would be understood by a person of ordinary skill in the art, at
`the time of the invention and in the context of the entire patent disclosure.
`Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed
`claim limitation, we look principally to the intrinsic evidence of record,
`examining the claim language itself, the written description, and the
`prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
`415 F.3d at 1312–17).
`Petitioner does not identify any specific claim term for construction.
`Pet. 5. Patent Owner submits that the claim term “software application” is
`defined in the Specification of the ’322 patent. Prelim. Resp. 3. More
`specifically, Patent Owner submits that the “Definitions” section of the
`Specification provides the following: “Software Application: The Client
`software application which is to be delivered over-the-air to, or pre-installed
`on, the Wireless Computing Device.” See id. (quoting Ex. 1002, 8:63–65).
`We note that the definition for software application incorporates,
`based on the capitalization of defined words, the following additional
`definitions10 from the “Definitions” section of the Specification:
`
`
`10 The definitions provided in the Specification sometimes also include
`examples to help further explain the term. We do not include such examples
`here as we view them as not limiting the definition for the term.
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`IPR2022-00180
`Patent 9,992,322 B2
`(i) “Client: A computing device connected to a network delivering
`the features and functions of a network-centric application to the user or
`consumer of the application”;
`(ii) “Wireless Computing Device: A type of Client which connects to
`the network via a Wireless Network”; and
`(iii) “Wireless Network: A network which provides wireless
`connectivity to client computing devices.” Ex. 1002, 8:25–26, 8:43–45,
`8:53–55.
` At this stage of the proceeding, we conclude that the term “software
`application” should be afforded the meaning provided by these definitions.
`See Cont’l Cirs. LLC v. Intel Corp., 915 F.3d 788, 796 (Fed. Cir. 2019)
`(citing Phillips, 415 F.3d at 1316) (“When the patentee acts as its own
`lexicographer, that definition governs.”). We also note that the parties do
`not argue that these definitions are inconsistent with the plain and ordinary
`meaning of “software application,” or any other claim term.
`In addition, at this stage of the proceeding, we disagree with Patent
`Owner that the Applicant limited the meaning of “software application”
`during the prosecution of the ’322 patent, thereby excluding a browser. See
`Prelim. Resp. 7–8. More specifically, we disagree that the Applicant
`distinguished a reference (i.e., Sittig) by arguing that “Sittig’s system lacked
`a ‘software application’ having the claimed features on the user device.” Id.
`at 7. Rather, the Applicant argued “Sittig fails to disclose that the software
`application of the portable wireless computing device allows the end-user to,
`over a wireless connection, create on a remote server one or more user
`accounts with associated profiles for that end-user.” Ex. 1006, 45.
`According to the Applicant, Sittig instead “teaches that the social network
`engine is used to enter details,” and “that the core functionality of the social
`
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`IPR2022-00180
`Patent 9,992,322 B2
`network resides in the social network engine 106, with which users are in
`communication, which teaches away from the software application of the
`portable wireless computing device allowing the end-user to, over a wireless
`connection, create on a remote server one or more user accounts.” Id. (citing
`Ex. 2004 ¶ 18).
`We find that Applicant’s arguments are directed to Sittig’s teaching of
`“[u]sing the social network engine 106, the user 102A enters the details
`about the relationship.” Ex. 2004 ¶ 18. In other words, the Applicant
`argued that Sittig teaches that the social network engine is used to enter
`relationship details, in lieu of using a portable wireless device and a wireless
`connection to enter the relationship details. See Ex. 1006, 45; see also
`Ex. 2004 ¶ 16 (“Optionally, one or more of the users 102 may be able to
`access the social network engine 106 directly.”) (emphasis added), ¶ 18. At
`this stage of the proceeding, we view this finding as consistent with
`Applicant’s additional arguments, quoted by Patent Owner, that “Sittig lacks
`any disclosure of any key functionality on a portable wireless computing
`device[, and i]nstead, the key functionality in Sittig is disclosed to be in the
`social network engine.” Prelim. Resp. 7 (quoting Ex. 1006, 46).
`Regardless, the Applicant’s arguments are at least amenable to
`multiple reasonable interpretations, and thus prosecution disclaimer is not
`established. See Tech. Properties Ltd. LLC v. Huawei Techs. Co., 849 F.3d
`1349, 1358 (Fed. Cir. 2017) (citing MIT v. Shire Pharm., Inc., 839 F.3d
`1111, 1119 (Fed. Cir. 2016)). Rather, for prosecution disclaimer to apply, it
`must be “both clear and unmistakable to one of ordinary skill in the art.”
`See id. at 1357–58.
`In addition, at this stage of the proceeding, we disagree with Patent
`Owner’s argument that “software application” does not encompass a
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`Patent 9,992,322 B2
`browser because the ’322 patent “discusses ‘browsers’ generally as distinct
`from the claimed ‘software application.’” Prelim. Resp. 8. In particular, we
`disagree that “the ’322 patent distinguishes its ‘software application’ (e.g.,
`such as the example MusicStation software application described at length
`by the ’322 [p]atent) from ‘Wireless Application Protocol’ [(WAP)]
`browsers,” as Patent Owner argues. Id. (citing Ex. 1002, 2:5–21, 17:28,
`32:8–11). Instead, the ’322 patent recognizes challenges and difficulties
`presented by using WAP (a protocol), rather than faulting the browser.
`Ex. 1002, 2:5–21. Although disavowal can be effectuated by language in a
`patent’s specification, “the standard for disavowal is exacting, requiring
`clear and unequivocal evidence that the claimed invention includes or does
`not include a particular feature.” Poly-America, L.P. v. API Indus., Inc., 839
`F.3d 1131, 1136 (Fed. Cir. 2016). At this stage of the proceeding, Patent
`Owner does not identify statements in the ’322 patent’s Specification that
`clearly evidence excluding a browser from the term “software application.”
`In addition, we disagree with Patent Owner that Petitioner fails to
`provide how the challenged claims are to be construed, as required by
`37 C.F.R. § 42.104(b)(3). Prelim. Resp. 11–12. Rather, we find that
`Petitioner’s statement identifies no claim terms as requiring express
`construction, which is consistent with the terms being provided their plain
`and ordinary meaning. Pet. 5; see Consolidated Trial Practice Guide
`(November 2019)11 (“CTPG”) 44 (“[A] petitioner may include a statement
`that the claim terms require no express construction.”).
`Lastly, we determine that we do not need to address other claim terms
`in order to determine whether to institute inter partes review. See, e.g.,
`
`11 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
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`IPR2022-00180
`Patent 9,992,322 B2
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
`1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that
`are in controversy, and only to the extent necessary to resolve the
`controversy.’”).
`
`V. PRINCIPLES OF LAW
`A claim is unpatentable under 35 U.S.C. § 102 “if each and every
`
`[claim] limitation is found either expressly or inherently in a single prior art
`reference.” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 851
`F.3d 1270, 1273 (Fed. Cir. 2017). “A claim limitation is inherent in the
`prior art if it is necessarily present in the prior art, not merely probably or
`possibly present.” Akamai Techs., Inc. v. Cable & Wireless Internet Servs.,
`Inc., 344 F.3d 1186, 1192 (Fed. Cir. 2003) (citing Rosco, Inc. v. Mirror Lite,
`Co., 304 F.3d 1373, 1380 (Fed. Cir. 2002)).
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time of the invention to a
`person having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550
`U.S. 398, 406 (2007). The question of obviousness is resolved on the basis
`of underlying factual determinations, including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of ordinary skill in the art; and (4) objective evidence
`of non-obviousness, if present.12 See Graham, 383 U.S. at 17–18. When
`evaluating a claim for obviousness, we also must “determine whether there
`
`
`12 Patent Owner does not present arguments or evidence of such objective
`evidence of non-obviousness. See generally Prelim. Resp.
`
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`was an apparent reason to combine the known elements in the fashion
`claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn,
`441 F.3d 977, 988 (Fed. Cir. 2006)).
`VI. ALLEGED OBVIOUSNESS OVER ABRAMS
`Petitioner argues that Abrams renders claims 30, 31, 51, 55, and 56 of
`the ’322 patent obvious. Pet. 4, 11–36. For the reasons that follow, we
`determine that Petitioner establishes a reasonable likelihood that it would
`prevail in showing that Abrams renders these claims obvious.
`A. Summary of Abrams
`Abrams “relates to computer data and information systems accessed
`over the Internet, and more particularly to a computer-based system for more
`effectively connecting people based on their positions within social
`networks.” Ex. 1009 ¶ 2. More specifically, Abrams teaches “a system for
`connecting people via an online database and . . . allows searching of social
`networks,” which “facilitates interaction among people connected through a
`social network.” Id. ¶ 41.
`Abrams’ system provides a graphical interface to obtain descriptive
`data from a user to create a user account, “allowing the user to login securely
`and be identified by the system.” Id. ¶ 99. “Descriptive data generally
`describes characteristics and preferences of a user” (e.g., “a first and last
`name”; “attributes of the user, such as gender, marital status or occupation”;
`and hobbies). Id. ¶¶ 41, 64.
`Abrams also teaches that a user can “view descriptive data about other
`users in her social network,” and “discover[] other users who have
`characteristics she finds appealing.” Id. ¶ 45. Based on the user’s judgment
`of the viewed descriptive data, the user may wish to contact another user
`through Abrams’ system. Id. More specifically, Abrams teaches “an
`
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`internal messaging system whereby users may send one another private
`messages.” Id. ¶ 97. In addition, Abrams teaches “allow[ing] users to invite
`friends or acquaintances to join the system.” Id. ¶ 43. “The invited friend or
`acquaintance may accept the invitation, and then become a user of the
`system, as a friend of the inviting user.” Id. Moreover, Abrams teaches
`“allow[ing] two users to confirm that they are ‘friends,’” before designating
`them as such in the system. Id.
`B. Challenged Claim 30
`1. Software Application Embodied on Non-transitory Medium
`Petitioner argues that Abrams teaches a “software application
`embodied on a non-transitory storage medium, wherein the software
`application is executable on a smartphone device, wherein the software
`application enables an end-user to interact with other users,” as recited in
`claim 30. Pet. 20–22. More specifically, Petitioner argues that Abrams
`teaches having a Web browser (software application) “executing on user
`devices 106 and 108 so as to receive and render Web pages from a Web
`server.” Id. at 20 (citing Ex. 1009 ¶¶ 52–53, 77, Figs. 1, 3a–3b, 4–6;
`Ex. 1025, 61–62). Petitioner argues that Abrams teaches that devices 106
`and 108 (i) are hosts for a Web browser, and (ii) can be cellular telephones
`or hand-held personal digital assistants, with no indication that the browser
`needs to be reinstalled after powering off the device, and thus, the browser
`“would inherently be ‘embodied on a non transitory storage medium.’” Id.
`(citing Ex. 1009 ¶¶ 74, 77; Ex. 1025, 61–62). “At the very least, it would
`have been obvious for the browser application to be ‘embodied on a non
`transitory storage medium’ so that it would not need to be reinstalled [e]very
`time the user device was powered off and on,” according to Petitioner. Id. at
`20–21 (citing Ex. 1025, 61–62).
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`In addition, Petitioner argues that Abrams teaches that the Web
`browser executes on user devices 106 and 108, which can be cellular
`telephones, and “presents GUI displays such as 102, 104, 302, 304, 404, and
`604 as shown in Figures” 3a–3b and 4–6. Id. at 21 (citing Ex. 1009 ¶¶ 74,
`77, Figs. 1, 3a–3b, 4–6; Ex. 1025, 62, 75–76). According to Petitioner, “[a]
`cellular telephone capable of presenting the GUI displays shown in Abrams,
`running a browser, and doing all that Abrams discloses for it is inherently a
`‘smartphone.’” Id. (citing Ex. 1025, 75–76). Petitioner alternatively argues
`that “it would have been obvious to [one of ordinary skill in the art] to use a
`smartphone for the ‘cellular telephone’ disclosed in Abrams, given all of the
`functions disclosed for it in Abrams.” Id. (citing Ex. 1025, 76). Moreover,
`CNET “shows that smartphones with browsers were well-known and
`commercially available by at least 2006,” according to Petitioner. Id. (citing
`Ex. 1019).
`In addition, Petitioner argues that Abrams teaches that its browser
`“enables an end-user to interact with other users.” Id. at 22 (citing Ex. 1025,
`62–63, 76). More specifically, Petitioner argues that Abrams enables an
`end-user to interact with other users, including teaching “a system for
`connecting people via an online database and . . . further facilitates
`interaction among people connected through a social network.” Id.
`(quoting Ex. 1009 ¶ 41) (alteration in original).
`
`At this stage of the proceeding, we are persuaded that Petitioner
`demonstrates, for purposes of this institution decision, that Abrams teaches a
`“software application embodied on a non-transitory storage medium,
`wherein the software application is executable on a smartphone device,
`wherein the software application enables an end-user to interact with other
`users.” In particular, we find that Abrams teaches having a Web browser
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`(i.e., software application) executing on a user device (e.g., a cellular
`telephone) to receive and render Web pages from a Web server. See
`Ex. 1009 ¶¶ 52–53, 74, 77, Figs. 1, 3a, 3b, 4–6. At this stage of the
`proceeding, we agree with Petitioner and find that this disclosure from
`Abrams teaches that the browser is executable on Abrams’ cellular
`telephones. See id.; see also Ex. 1025, 61–62. At this stage of the
`proceeding, we also find that Abrams teaches that its cellular telephones can
`present GUI displays, which teaches “smartphones.” See Ex. 1009 ¶¶ 74,
`77, Figs. 1, 3a–3b, 4–6; Ex. 1025, 62, 75–76. In addition, at this stage of the
`proceeding, we find that it would have been obvious to one of ordinary skill
`in the art to use a smartphone for the cellular telephone taught in Abrams,
`and that smartphones with browsers were well-known and commercially
`available by at least 2006. See generally Ex. 1019.
`
`At this stage of the proceeding, we also agree with Petitioner and find
`that it would have been obvious to one of ordinary skill in the art for the
`browser to be “embodied on a non-transitory storage medium” so that the
`browser would not need to be reinstalled each time a user device powers up.
`See Ex. 1025, 62. In addition, at this stage of the proceeding, we agree with
`Petitioner and find that Abrams teaches that its browser “enables an end-user
`to interact with other users.” See Ex. 1009 ¶ 41 (teaching “a system [that]
`. . . facilitates interaction among people connected through a social
`network”); Ex. 1025, 62–63, 76.
`
`At this stage of the proceeding, we find unavailing Patent Owner’s
`argument that the claimed “‘software application’ elements . . . require not
`merely any ‘software application’ generally, but a specific software
`application configured to perform the claimed functions.” Prelim. Resp. 4
`(citing Ex. 1002, 90:28–46) (reciting claim 30). More specifically, Patent
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`Owner argues that “[r]ather than a dedicated software application for
`performing the claimed functions, the Petition identifies a generic ‘browser’
`of Abrams . . . .’” Id. As we discuss above, however, the term “software
`application” does not exclude a browser. See supra Section IV (construing
`“software application”). Thus, Patent Owner’s arguments that are premised
`on excluding a browser fail.
`At this stage of the proceeding, we also find unavailing Patent
`Owner’s argument that Petitioner fails to show that Abrams teaches a
`software application that is “embodied on” the portable device because
`Petitioner—in addition to Abrams’ browser—relies on Abrams’ teachings
`involving a remote “Web server” to show the claimed functions that the
`software application allows. See Prelim. Resp. 5, 9–10 (citing Ex. 1009
`¶ 77). Patent Owner’s argument is premised on claim 30 requiring that the
`software application alone provides all of the claimed functions. Id. At this
`stage of the proceeding, however, we find that this premise is incorrect.
`Rather, the language of claim 30 recites that the software application
`“enables an end-user to interact with other users,” and “allows the end-user”
`to perform the claimed functions. Ex. 1002, 90:28–46 (reciting claim