UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`TRILLER, INC.,
`Petitioner
`
`v.
`
`TIKTOK PTE. LTD.
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2022-00180
`Patent 9,992,322 B2
`
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER TIKTOK PTE. LTD.’S
`RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`TRILLER, INC.,
`Petitioner
`
`v.
`
`TIKTOK PTE. LTD.
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2022-00180
`Patent 9,992,322 B2
`
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER TIKTOK PTE. LTD.’S
`RESPONSE
`
`
`
`Case IPR2022-00180
`Attorney Docket No: 50048-0016IP1
`
`I.
`
`V.
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`A.
`BACKGROUND ON THE ’322 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 ’322 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-2B AND 4A-6B) ................................................................ 10
`VI. KNIGHT 2010 IS NOT PRIOR ART TO THE ’322 PATENT (GROUNDS
`3A AND 3B) .................................................................................................. 27
`A.
`LEGAL STANDARD FOR WRITTEN DESCRIPTION
`SUPPORT ........................................................................................... 28
`THE 2007 PCT APPLICATION PROVIDES WRITTEN
`DESCRIPTION SUPPORT FOR CLAIMS 32 AND 56 ................... 29
`THE 2007 PCT APPLICATION PROVIDES WRITTEN
`DESCRIPTION SUPPORT FOR CLAIM 35 .................................... 37
`D. GROUNDS 3A AND 3B FAIL BECAUSE KNIGHT 2010 IS NOT
`PRIOR ART TO THE ’322 PATENT ................................................ 44
`VII. THE PETITION FAILS TO SHOW THAT IT WOULD HAVE BEEN
`OBVIOUS TO A POSITA TO COMBINE ABRAMS AND KHEDOURI
`(OR ABRAMS, KHEDOURI, CNET REVIEWS, AND COLLINS
`AND/OR MONAS) IN THE PROPOSED MANNER (GROUNDS 4A-
`5B)
` ............................................................................................................. 45
`VIII. PARTOVI IS NOT PRIOR ART TO THE ’322 PATENT (GROUNDS 6A-
`6B)
` ............................................................................................................. 54
`
`B.
`
`C.
`
`i
`
`
`
`Case IPR2022-00180
`Attorney Docket No: 50048-0016IP1
`IX. THE PETITION FAILS TO SHOW THAT IT WOULD HAVE BEEN
`OBVIOUS TO A POSITA TO COMBINE ABRAMS AND PARTOVI (OR
`ABRAMS, PARTOVI, CNET REVIEWS, AND COLLINS AND/OR
`MONAS) IN THE PROPOSED MANNER (GROUNDS 6A-6B) .............. 55
`THE PETITION FAILS TO SHOW THAT THE PROPOSED
`COMBINATION OF ABRAMS AND PARTOVI (OR ABRAMS,
`PARTOVI, CNET REVIEWS, AND COLLINS AND/OR MONAS)
`PROVIDES ALL ELEMENTS OF CLAIM 35 (GROUNDS 6A-6B) ......... 58
`XI. CONCLUSION .............................................................................................. 59
`
`
`X.
`
`ii
`
`
`
`Case IPR2022-00180
`Attorney Docket No: 50048-0016IP1
`LIST OF EXHIBITS
`
`Exhibit No.
`EX2001
`EX2002
`EX2003
`EX2004
`EX2005
`EX2006
`
`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”)
`
`
`
`
`
`
`iii
`
`
`
`Case IPR2022-00180
`Attorney Docket No: 50048-0016IP1
`
`I.
`
`
`INTRODUCTION
`
`The Petition failed to meet its burden of proving that claims 30–32, 35, 51,
`
`55, and 56 (“Challenged Claims”) are unpatentable. For example, the ’322 patent
`
`provides a lexicographic definition of “Software application” in a “Definitions”
`
`section. EX1002, 8:63-65. Petitioner ignores this definition, shirking its
`
`mandatory burden under 37 C.F.R. 42.104(b)(3)-(b)(4). There is no dispute that
`
`the ’322 patent’s lexicographic definition sets forth a specific meaning of
`
`“Software Application” (EX2006, 38:4-39:4; EX2005, ¶31), but the Petition never
`
`attempts to map the cited art to the specific definition set forth by the ’322 patent.
`
`The Petition’s analysis of independent claim 30 is deficient for additional,
`
`independent reasons. Petitioner’s analysis of independent claim 30 is premised on
`
`inherency for each “wireless connection” element. Yet, the Petition never
`
`demonstrates these elements were “necessarily present” in the cited art, relying
`
`instead on a hypothetical cell phone that Abrams does not describe nor limit its
`
`system to. EX2006, 55:5-9 (“Okay, so I’m referring to cellular telephones that
`
`don’t have wired interfaces.”). The Petition’s inherency theory simply fails as a
`
`matter of law.
`
`The Petition additionally fails to prove that multiple dependent claims are
`
`unpatentable. The Knight 2010 reference (EX1012) does not qualify as prior art
`
`with respect to any of the challenged claims, which are all fully supported by the
`
`1
`
`
`
`Case IPR2022-00180
`Attorney Docket No: 50048-0016IP1
`earlier filed May 2007 PCT application to which the ’322 patent claims priority.
`
`As to Petitioner’s alternative theories in Grounds 4a-5b and 6a-6b, the Petition fails
`
`to articulate any sufficient motivation to modify Abrams based on the Khedouri or
`
`Partovi references, or explain how the purported modifications would work.
`
`The “information presented in the petition” is plainly insufficient to satisfy
`
`Petitioner’s burden—especially where Petitioner cannot subsequently add
`
`theories/arguments that should have been part of the Petition. Intelligent Bio-
`
`Systems, Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016);
`
`In re Magnum Oil Tools Int’l, 829 F.3d 1364, 1380 (Fed. Cir. 2016). Each of
`
`Grounds 1a-6b fail, as discussed in detail below. The Board should confirm the
`
`patentability of the Challenged Claims.
`
`A. BACKGROUND ON THE ’322 PATENT
`The ’322 patent includes claims directed to a software application that
`
`uniquely provides a range of functions for accessing and loading digital content,
`
`such as music or social network data, on mobile devices including mobile phones.
`
`EX1002, cl. 30; see also Abstract; 1:26-9:15; EX2005, ¶¶22, 25-29.
`
`While mobile devices were in use by May 2007 (latest priority date of the
`
`’322 patent), the common technique to transfer media (e.g., to load music or video)
`
`was to use a wired connection by plugging the mobile device into a personal
`
`computer. EX2005, ¶26; EX1002, 3:62-67. Digital audio players of the time, like
`
`2
`
`
`
`Case IPR2022-00180
`Attorney Docket No: 50048-0016IP1
`the Apple iPod device, similarly operated in this manner. See EX1002, 1:41-54,
`
`3:62-67. Unlike present-day networks that support extremely fast data rates, the
`
`3G networks at the time of the ’322 patent provided substantially lower data rates,
`
`which made transfer of even relatively small amounts of data time-consuming and
`
`sometimes impossible as a practical matter. EX2005, ¶70. The inventors of the
`
`’322 patent additionally recognized deficiencies in nascent digital rights
`
`management features that led to significant piracy of digital content. Id., ¶29.
`
`The ’322 patent identified and addressed such shortcomings with a technical
`
`solution that facilitated the transfer of digital content to a mobile device. As
`
`recited by independent claim 30, the solution includes a mobile software
`
`application executable on a smartphone device that allows a user to carry out
`
`multiple actions over a “wireless connection,” including to “create on a remote
`
`server one or more user accounts with associated profiles for that end-user,
`
`wherein the profiles are editable,” “view profiles created by other users of a
`
`service,” “interact with other users of the service,” “send and receive messages to
`
`and from other users of the service,” and “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.” EX1002, cl. 30.
`
`Moreover, the claimed solution provides features that involve information
`
`about music tracks on a separate metadata layer, facilitating integration of DRM
`
`3
`
`
`
`Case IPR2022-00180
`Attorney Docket No: 50048-0016IP1
`techniques into music platforms, allowing a user to browse/search content without
`
`exposing content to unauthorized users, and facilitating operation using mobile
`
`devices operating on wireless networks having limited resources. EX2005, ¶28-
`
`29; see, e.g., EX1002, 3:11-50. The solutions claimed by the ’322 patent also
`
`addressed issues stemming from limitations of mobile devices of the time,
`
`providing specific techniques involving multitasking and multithreading associated
`
`with network access, media operations, and DRM. Id.
`
`II. LEVEL OF ORDINARY SKILL
`
`For purposes of this IPR, a person of ordinary skill in the art at the time of
`
`the alleged invention (a “POSITA”) 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. EX2005,
`
`¶¶23-24.
`
`III. CLAIM CONSTRUCTION
`
`Patent Owner submits that all claim terms should be construed according to
`
`the Phillips standard. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005); 37
`
`C.F.R. §42.100. Unless otherwise noted below, Patent Owner submits that terms
`
`should be given their plain meaning in light of the specification, but reserves
`
`4
`
`
`
`Case IPR2022-00180
`Attorney Docket No: 50048-0016IP1
`opportunity to respond to constructions offered by Petitioner or adopted by the
`
`Board.
`
`The following term is defined by the ’322 Patent in the “Definitions”
`
`section, but was not construed by the Petition. Phillips, 415 F.3d at 1316 (“[T]he
`
`specification may reveal a special definition given to a claim term by the patentee
`
`that differs from the meaning it would otherwise possess. In such cases, the
`
`inventor’s lexicography governs.”); Cont’l Cirs. LLC v. Intel Corp., 915 F.3d 788,
`
`796 (Fed. Cir. 2019) (“When the patentee acts as its own lexicographer, that
`
`definition governs.”).
`
`“Software Application” – “The Client software application which is to be
`
`delivered over-the-air to, or pre-installed on, the Wireless Computing Device.”
`
`EX1002, 8:63-65; EX2005, ¶¶30-31.
`
`IV. THE PETITION FAILS TO DEMONSTRATE A “SOFTWARE
`APPLICATION” AS DEFINED BY THE ’322 PATENT
`
`
`Independent claim 30 recites a “Software application embodied on a non-
`
`transitory storage medium” and “executable on a smartphone device” that “enables
`
`an end-user to interact with other users” and “allows the end-user to” perform a
`
`number of recited actions. EX1002, cl. 30. The ’322 patent lexicographically
`
`defines the term “Software Application” in the “Definitions” section. Supra,
`
`Section III; EX2005, ¶75. The “software application” elements thus require not
`
`5
`
`
`
`Case IPR2022-00180
`Attorney Docket No: 50048-0016IP1
`merely any “software application” generally, but a specific software application
`
`configured to perform the claimed functions and as defined by the lexicographic
`
`definition of the ’322 patent. Id. The Petition’s terse analysis ignores the ’322
`
`patent’s lexicographic definition, and never explains how its prior art purportedly
`
`maps to the “software application” elements according to the ’322 patent’s
`
`lexicographic definition.
`
`In particular, the Petition fails to address the definition of “software
`
`application” and related claim terms in the ’322 patent’s specification. The ’322
`
`patent includes a “Definitions” section that defines the term “Software
`
`Application” as “[t]he Client software application which is to be delivered over-
`
`the-air to, or pre-installed on, the Wireless Computing Device.” EX1002, 8:62-65;
`
`see also supra, Section II. The ’322 Patent itself thus limits the claimed “Software
`
`Application” according to its stated definition, and does not extend to generic
`
`“browsers” that do not meet this definition. EX2005, ¶¶75-76; Phillips, 415 F.3d
`
`at 1316 (If the specification “reveal[s] a special definition given to a claim term by
`
`the patentee that differs from the meaning it would otherwise possess[,] . . . the
`
`inventor’s lexicography governs.”) (citing CCS Fitness, Inc. v. Brunswick Corp.,
`
`288 F.3d 1359, 1366 (Fed. Cir. 2002)).
`
`The Board’s rules require that “the petition must set forth: . . . [h]ow the
`
`challenged claim is to be construed” and “[h]ow the construed claim is
`
`6
`
`
`
`Case IPR2022-00180
`Attorney Docket No: 50048-0016IP1
`unpatentable.” 37 C.F.R. 42.104(b)(3)-(b)(4). In inter partes review, the logic of
`
`this requirement is apparent—petitioners carry the burden of proof and must state a
`
`complete prima facie case in the initiating petition. See Intelligent Bio-Systems,
`
`821 F.3d at 1369 (“the expedited nature of IPRs bring with it an obligation for
`
`petitioners to make their case in their petition to institute”). While a petitioner may
`
`include a statement that the claim requires no express construction, such a
`
`statement is not always sufficient, and it certainly is not sufficient here where the
`
`’322 patent specification includes a “Definitions” section that defines particular
`
`claim terms. E.g., Phillips, 415 F.3d at 1316.
`
`
`
`Here, Petitioner attempts to evade its claim construction burden. The
`
`Petition includes a claim construction section indicating that, “[w]here necessary,
`
`claim construction is addressed below in Section V in the context of analyzing the
`
`patentability of claims in which the construed claims appear.” Pet., 5. But in the
`
`Section V mapping of the “software application” elements, the Petition never
`
`addresses the ’322 Patent’s definition of “Software Application.” See, e.g., Pet.,
`
`Section V.A.
`
`Worse, the Petition never attempts to map Abrams’ “browser” to the
`
`definition of “Software Application” provided by the ’322 Patent. The Petition
`
`identifies a generic “browser” of Abrams as allegedly providing the claimed
`
`“software application”—“[T]he ‘software application’ of claim 30 is found in
`
`7
`
`
`
`Case IPR2022-00180
`Attorney Docket No: 50048-0016IP1
`Abrams as a Web browser executing on user devices 106 and 108 so as to receive
`
`and render Web pages from a Web server.” Pet., 20. But the Petition’s terse
`
`analysis never addresses the full limitations of “software application” as defined by
`
`the ’322 Patent. EX2005, ¶¶77-78. The Petition never addresses delivery of
`
`Abrams’ purported “browser,” and never addresses whether the “browser” is
`
`“delivered over-the-air to, or pre-installed on,” the purported smartphone (e.g.,
`
`versus alternative techniques such as a USB cable or other wired connection). Id.
`
`The Petition ignores the ’322 Patent’s definition altogether, and simply fails to
`
`satisfy its burden. 37 C.F.R. §§ 42.104(b)(3) and 42.104(b)(4) (“[h]ow the
`
`challenged claim is to be construed” and “[h]ow the construed claim is
`
`unpatentable under the statutory grounds identified.”). The Petition fails to
`
`demonstrate unpatentability of any challenged claim for this independent reason.
`
`To be clear, there is no dispute that the ’322 patent defines “Software
`
`Application” in the “Definitions” section. Dr. Shamos acknowledges the ’322
`
`patent definition “is attempting to narrow the set of software applications that
`
`could properly be called a software application in the patent.” See EX2006, 38:4-
`
`12; 38:22-39:4 (describing that a scenario in which the software is manually loaded
`
`through a wired connection “would seem to be excluded from the definition of
`
`software application” in the ’322 patent); EX2005, ¶¶76-78. The ’322 patent
`
`provides a lexicographic definition. The Petition ignored it, never even attempting
`
`8
`
`
`
`Case IPR2022-00180
`Attorney Docket No: 50048-0016IP1
`to map the cited art to the claim term as defined by the ’322 patent. The Petition
`
`must demonstrate “[h]ow the construed claim is unpatentable under the statutory
`
`grounds identified.” 37 C.F.R. §§ 42.104(b)(3) and 42.104(b)(4). The Petition did
`
`not do so and is legally deficient.
`
`Like the Petition, the Shamos declaration (EX1025) never specifically
`
`addresses the requirements of the claimed “software application,” as defined by the
`
`’322 patent. Pages 61-62 and 75 cited in the Limitation 30.1 analysis, and pages
`
`75-76 cited in the Limitation 30.2 analysis, include text that is nearly identical to
`
`the Petition. A declarant’s bare conclusion does not provide evidentiary support,
`
`and is insufficient to demonstrate features that are never specifically addressed.
`
`TQ Delta, 942 F.3d at 1362-64; see also In re Am. Acad. of Sci. Tech Ctr., 367
`
`F.3d at 1368; Tate & Lyle Americas LLC v. Cargill, Inc., IPR2014-00084, Paper 12
`
`at 17-18 (PTAB April 1, 2014); Kamada, ITD. V. Grigols Therapeutics Inc.,
`
`IPR2014-00899, Paper 43 at 10 (PTAB Dec. 15, 2015). Like the Petition, the
`
`Shamos Declaration never address the “Definition” of “Software application”
`
`provided by the ’322 patent. Critically, the Shamos Declaration never discusses
`
`delivery of Abrams’ purported “browser,” or whether the “browser” is “delivered
`
`over-the-air to or pre-installed on” the purported smartphone, as compared to
`
`alternative techniques such as delivery via a USB cable or other wired connection.
`
`9
`
`
`
`Case IPR2022-00180
`Attorney Docket No: 50048-0016IP1
`The “information presented in the petition” is insufficient to satisfy
`
`Petitioner’s burden. The Board should confirm the patentability of the Challenged
`
`Claims for this independent reason.
`
`V. THE PETITION FAILS TO DEMONSTRATE THAT THE SYSTEM
`OF ABRAMS WOULD HAVE “INHERENTLY” PERFORMED THE
`CLAIMED FUNCTIONS “OVER A WIRELESS CONNECTION”
`(GROUNDS 1A-2B AND 4A-6B)
`
`
`Independent claim 30 recites a series of functions carried out over a
`
`“wireless connection.” EX1002, cl. 30. To reach the “wireless connection”
`
`elements, Petitioner relies exclusively on inherency. Pet., 11-32 (Ground 1a). The
`
`Petition points to a single mention of a “cellular telephone” in Abrams, assuming
`
`that “all interactions” between Abrams’ user devices 106, 108 and server apparatus
`
`110 “inherently occur over a ‘wireless connection’” when a “cellular telephone” is
`
`used. 1 Pet., 28. From this unsupported premise that “all interactions” occur
`
`wirelessly, Petitioner incorrectly asserts that the specific functions required by
`
`independent claim 30 necessarily occur over a “wireless connection.” Id.
`
`Contrary to Petitioner’s theory, however, nothing in Abrams describes that
`
`interactions between the user device and server apparatus occur over a “wireless
`
`connection,” and Petitioner’s declarant Dr. Shamos acknowledges the opposite—
`
`
`
`
` 1
`
` All emphasis added unless otherwise noted.
`
`10
`
`
`
`Case IPR2022-00180
`Attorney Docket No: 50048-0016IP1
`that all interactions described by Abrams between the “cellular telephone” and
`
`“server” were achievable in Abrams’ system without wireless cellular
`
`communication. EX2006, 54:6-11; 58:15-59:4; 65:13-66:21; EX2005, ¶¶59-61.
`
`The Petition’s inherency theory is based on layers of incorrect assumptions, and
`
`simply fails to demonstrate that the functions recited by claim 30 would have
`
`necessarily been carried out over a “wireless connection” in Abrams’ system. The
`
`Abrams Grounds are fatally deficient and do not demonstrate unpatentability of the
`
`challenged claims.
`
`Petitioner’s inherency theory ignores the mandatory authority imposing the
`
`burden upon Petitioner to cite disclosure indicating that the “wireless connection”
`
`elements would “necessarily be present.” Inherency “may not be established by
`
`probabilities or possibilities. The mere fact that a certain thing may result from a
`
`given set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745
`
`(Fed. Cir. 1999); see also In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993);
`
`Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991)
`
`(“Such evidence must make clear that the missing descriptive matter is necessarily
`
`present in the thing described in the reference, and that it would be so recognized
`
`by persons of ordinary skill.”). This high burden on Petitioner to demonstrate
`
`inherency is not satisfied by a mere showing that a system “would allow for” the
`
`missing descriptive matter. In re Asset Guard Prods. Inc., 2022 U.S. App. LEXIS
`
`11
`
`
`
`Case IPR2022-00180
`Attorney Docket No: 50048-0016IP1
`9909, *14, 2022 U.S.P.Q.2D (BNA) 343, 2022 WL 1097363 (non-precedential)
`
`(reversing the Board and explaining that the Board’s finding that the teachings of
`
`the prior art reference “would allow for” seams formed between encapsulated
`
`sections of the pad to allow moisture to pass was insufficient to demonstrate
`
`inherency). Petitioner’s inherency theory relies on such prohibited assumptions,
`
`never demonstrating that the “wireless connection” elements required by the
`
`claims are “necessarily present” in Abrams’ system.
`
`For example, the Petition fails to identify any description in Abrams that
`
`says interactions between the user device and server occur over a wireless cellular
`
`network. In Figure 1, Abrams illustrates “user interface devices 106 & 108” as
`
`desktop computers connected to the server 110 via the internet 112, and a “wired
`
`connection” is illustrated by solid lines extending between the desktop computers
`
`and the “internet 112” and between the “internet 112” and the “server 110.”
`
`EX2006, 48:18-49:5 (“[I]t would appear to me that there’s a wired connection to
`
`the Internet.”); EX1009, FIG. 1; [0074]; [0077].
`
`12
`
`
`
`Case IPR2022-00180
`Attorney Docket No: 50048-0016IP1
`
`EX2005, ¶62 (EX1009, FIG. 1 (annotated)).
`
`Petitioner’s theory is premised on the assumption that “all interactions”
`
`between Abrams’ user devices 106, 108 and the server apparatus 110 “inherently
`
`
`
`13
`
`
`
`Case IPR2022-00180
`Attorney Docket No: 50048-0016IP1
`occur over a ‘wireless connection’” when the user devices are “cellular
`
`telephones.” 2 Pet., 28; see also id., 29 (“all interactions”), 30 (“all interactions”).
`
`The Petition points to a single mention of a “cellular telephone” at paragraph
`
`[0074] of Abrams. Pet., 20. Abrams states that “[t]he user interface may be any
`
`device capable of presenting data, including, but not limited to, cellular telephones,
`
`television sets or hand-held ‘personal digital assistants’.” EX1009, [0074]. That is
`
`all. Abrams never again mentions the term “cellular telephone,” and never
`
`mentions carrying out interactions over a wireless connection, regardless of the
`
`device form factor. Rather, Abrams illustrates a “wired connection” in Fig. 1, and
`
`never mentions any alternative. EX1009, FIG. 1; EX2005, ¶63. Nothing in
`
`
`
`
` 2
`
` Abrams conspicuously notes only that the “user interface”—not “user interface
`
`devices 106 & 108”—may be a “cellular telephone.” Petitioner ignores Abrams
`
`use of different terminology here, never explaining why the “cellular telephone”
`
`should be considered to substitute for the “user interface devices 106 & 108” rather
`
`than providing merely the “user interface” according to Abrams actual disclosure
`
`(e.g., and connecting via the desktop computer or other “user interface devices 106
`
`& 108”). EX2005, ¶64. Here again, Petitioner’s theory relies on unexplained
`
`assumptions about Abrams’ system.
`
`14
`
`
`
`Case IPR2022-00180
`Attorney Docket No: 50048-0016IP1
`Abrams describes interactions between Abrams’ user device interface and server
`
`occur over a wireless connection, regardless of the type of device that is used.
`
`Abrams illustrates use of a “wired connection” exclusively, and Petitioner cites
`
`nothing in Abrams that such a connection would necessarily be used instead,
`
`especially where Abrams never describes any alternative. EX2005, ¶63.
`
`Even if the “user device” were implemented as a “cellular telephone,” a
`
`POSITA would have readily recognized that interactions do not need to occur over
`
`a wireless cellular connection in Abrams system to achieve Abrams’ stated
`
`interactions, and instead such interactions readily occur over Abrams’ wired
`
`connection (e.g., consistent with FIG. 1). EX2005, ¶65. Dr. Shamos
`
`acknowledged that “all interactions” in Abrams system were achievable with a
`
`wired connection, even if the user device were implemented as a “cellular
`
`telephone.” See, e.g., EX2006, 54:6-11 (Q. “Is it your opinion then that the
`
`cellular telephone could carry out interactions with the server over a wired
`
`connection?” A. “I believe that there were cellular telephones that could do that
`
`and there were cellular telephones that couldn’t do it.”); 65:13-66:21 (Q. “Could
`
`all the operations described in Abrams be performed over that wired connection
`
`between the device and the server?” . . . A. “Well, in your hypothetical, yes.”); see
`
`also id. 58:15-59:4 (“So if it had a wired interface and I had to make a choice of
`
`which interface to use, then if I had to, I would certainly consider download time.
`
`15
`
`
`
`Case IPR2022-00180
`Attorney Docket No: 50048-0016IP1
`And if it was going to take a prohibitively long time to do it over a slow wireless
`
`network, but could be done faster over a wired network, I might choose to do
`
`that.”).
`
`Critically, Dr. Shamos acknowledges that Petitioner’s analysis of “all
`
`interactions” between the cellular telephone and server relies on an artificially
`
`limited scenario involving a hypothetical cellular telephone that includes
`
`exclusively wireless connection capability:
`
`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.”
`
`EX2005, 55:5-9. But Petitioner’s inherency theory is not remedied by such an
`
`assumption. First, the Petition never identifies such a device, and never
`
`demonstrates that such device was even in existence. Second, even if such a
`
`device existed, the Petition never demonstrates that such a device had capability to
`
`carry out the range of “all interactions” with the server described by Abrams (or
`
`even that such a device had a “user interface.”). EX2005, ¶66. Third, Petitioner
`
`cites nothing in Abrams that Abrams’ “cellular telephone” calls for a device that
`
`includes only wireless cellular connectivity and no wired or other connections.
`
`Abrams is silent at best, never mentioning communication with the server via a
`
`wireless connection, and certainly does not require such a configuration. Indeed,
`
`16
`
`
`
`Case IPR2022-00180
`Attorney Docket No: 50048-0016IP1
`Dr. Shamos acknowledges that Abrams’ “cellular telephone” encompasses devices
`
`having other types of connections (besides wireless) capable of carrying out “all
`
`interactions” described by Abrams. EX2006, 63:12-64:22; 65:22-67:19.3
`
`The Petition fails to demonstrate inherency of the “wireless connection”
`
`elements for yet additional reasons. The Petition fails to identify anything in
`
`Abrams demonstrating that its “cellular telephone” would have even been capable
`
`of carrying out “all interactions” with the server described by Abrams over a
`
`wireless connection. Abrams describes several “interactions” between the user
`
`devices 106, 108 and the server apparatus 110, but none are specifically addressed
`
`by the Petition in its analysis of the “wireless connection” elements. For example,
`
`interactions between the user devices and server apparatus 110 in Abrams’ system
`
`include not only communication of user data represented by text or integers, but
`
`
`
`
` 3
`
` To be clear, even if a “cellular phone” existed that met Petitioner’s criteria (which
`
`the Petition does not demonstrate), this does not demonstrate that Abrams’
`
`“cellular telephone” necessarily included such features. Petitioner’s inherency
`
`theory still fails to satisfy its burden to show the “wireless connection” elements
`
`are “necessarily present,” not merely that Abrams system might “allow for” such a
`
`feature.
`
`17
`
`
`
`Case IPR2022-00180
`Attorney Docket No: 50048-0016IP1
`also more bandwidth-intensive interactions, such as email messaging and
`
`upload/download of photographs and other media data. EX2005, ¶¶66-67;
`
`EX1009, [0086] (“The apparatus 110 may also include the image server 126 or a
`
`plurality of image servers that manage(s) digital photographs and other human
`
`viewable images.”); [0088] (“digital images”); [0091] (“descriptive data . . . may
`
`represent a digital image—a photograph—of the user.”); [0103] (“data displayed”
`
`includes “a digital image.”); [0105] (“displays a profile” that includes “digital
`
`images of the second user, digital images of the second user’s friends.”); FIG. 3a
`
`(“upload a photo”); cls. 24 and 36 (“aggregating and displaying” characteristic data
`
`of said users “wherein said characteristic data of said user includes recorded audio
`
`or video of said user.”); EX2006, 57:8-18; 60:19-61:8. The Petition cites nothing
`
`in Abrams that indicates uploading and downloading photos or other media data
`
`occur over a “wireless connection,” or that its user devices were capable of
`
`carrying out such bandwidth-intensive interactions with the server over a “wireless
`
`connection.” EX2005, ¶67; EX1009, [0086]; [0088]; [0091]; [0103]; [0105]; FIG.
`
`3a; cls. 24 and 36.
`
`A POSITA would have recognized Abrams’ terse mention of a “cellular
`
`telephone” as lacking any structural features or characteristics that indicate the
`
`extent of its wireless cellular capabilities. EX2005, ¶68. The Petition does not cite
`
`any description in Abrams that the “descriptive data,” or associated user “photos”
`
`18
`
`
`
`Case IPR2022-00180
`Attorney Docket No: 50048-0016IP1
`and other “audio” and “video data,” was capable of transfer by the “cellular
`
`telephone” via a wireless cellular connection. Id. Indeed, as noted above, Abrams
`
`never describes use of a wireless cellular network for interactions between server
`
`apparatus 110 and the cellular telephone for communicating such data—the single
`
`mention of “cellular telephones” at paragraph [0074] of Abrams describes
`
`“presenting data,” not the extent of connectivity capabilities. Id. EX1009, [0074];
`
`EX2005, ¶68. Likewise, Abrams’ mention of communication “via the Internet” or
`
`the use of a “browser” does not demonstrate use of a wireless cellular network.
`
`Interaction “via the Internet” or involving a browser, as described by Abrams, need
`
`not be wireless at all. EX2005, ¶68.
`
`The Petition overlooks passages of Abrams that demonstrate the opposite—
`
`specifically describing interactions using the user’s “computer,” rather than
`
`describing the “cellular telephone” or a “user interface device 106 & 108”
`
`generically. For example, at paragraph [0100], Abrams describes a user interface
`
`for uploading photos to the server. EX1009, [0100]. “A user can through an
`
`interface 306 browse files on his own computer select them, and then upload them
`
`to the system of the present invention.” Id. Abrams never describes use of a
`
`“cellular telephone” to upload photos or other media to the server, much less that a
`
`“cellular phone” was even capable of such an interaction. EX2005, ¶69. The
`
`19
`
`
`
`Case IPR2022-00180
`Attorney Docket No: 50048-0016IP1
`Petition never addresses Abrams’ description of interacting with the server to
`
`upload photos or other media.
`
`While Abrams does not describe any structure or details of its “cellular
`
`telephone” that supports Petitioner’s inherency theory, relevant documentary
`
`evidence demonstrates what a POSITA would have readily recognized—that
`
`“cellular telephones” in the timeframe of the ’322 patent often utilized wired
`
`communication and lacked the extensive wireless connectivity capabilities of
`
`present-day cell phones. EX2005, ¶¶70-71. The Petition oddly ignores this readily
`
`available knowledge that would have been apparent to a POSITA in the time
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
