Filed on behalf of: Meta Platforms, Inc.
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`Entered: March 7, 2023
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`META PLATFORMS, INC.
`Petitioner,
`
`v.
`
`ANGEL TECHNOLOGIES LLC,
`Patent Owner.
`__________________
`Case No. IPR2023-00057
`U.S. Patent No. 8,954,432
`__________________
`
`
`PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
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`Entered: March 7, 2023
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`META PLATFORMS, INC.
`Petitioner,
`
`v.
`
`ANGEL TECHNOLOGIES LLC,
`Patent Owner.
`__________________
`Case No. IPR2023-00057
`U.S. Patent No. 8,954,432
`__________________
`
`
`PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
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`IPR2023-00057 (USP 8,954,432)
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` Petitioner’s Reply to POPR
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`TABLE OF CONTENTS
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`I.
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`PATENT OWNER FAILS TO ANTEDATE SHARPE ................................. 1
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`PO Fails to Show an Earlier Conception of the Claimed
`Invention ................................................................................................ 2
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`PO Fails to Show an Earlier Reduction to Practice .............................. 5
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`PO Fails to Show Diligence to a Subsequent Reduction to
`Practice .................................................................................................. 5
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`PO Provides No Evidence for Claims 1-5 and 7-8 ............................... 7
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`II.
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`PATENT OWNER’S CLAIM CONSTRUCTION ARGUMENTS FAIL ..... 7
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`IPR2023-00057 (USP 8,954,432)
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` Petitioner’s Reply to POPR
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`TABLE OF AUTHORITIES
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` Page(s)
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`CASES
`Burroughs Wellcome Co. v. Barr Labs., Inc.,
`40 F.3d 1223 (Fed. Cir. 1994) .............................................................................. 2
`Coleman v. Dines,
`754 F.2d 353 (Fed. Cir. 1985) .............................................................................. 3
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) ........................................................................ 1, 6
`Field v. Knowles,
`183 F.2d 593 (C.C.P.A. 1950) .............................................................................. 3
`Medichem, S.A. v. Rolabo, S.L.,
`437 F.3d 1157 (Fed. Cir. 2006) ........................................................................ 1, 5
`Perfect Surgical Techniques, Inc. v. Olympus Am., Inc.,
` 841 F.3d 1004 (Fed. Cir. 2016) ........................................................................... 5
`Sewall v. Walters,
`21 F.3d 411 (Fed. Cir. 1994) ............................................................................ 1, 2
`REGULATIONS
`37 C.F.R. § 1.131(b) .................................................................................................. 1
`
`
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`ii
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`IPR2023-00057 (USP 8,954,432)
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` Petitioner’s Reply to POPR
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`Exhibit
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`EXHIBIT LIST
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`Description
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`1001 U.S. Patent No. 8,954,432 (“’432 Patent”)
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`1002
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`Prosecution History of U.S. Patent No. 8,954,432 (“’432 FH”)
`
`1003 Declaration of Dr. Benjamin B. Bederson (“Bederson”)
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`1004
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`Curriculum Vitae of Dr. Benjamin B. Bederson
`
`1005 U.S. Patent No. 7,461,099 to Sharpe et al. (“Sharpe”)
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`1006 U.S. Patent No. 6,687,878 to Eintracht et al. (“Eintracht”)
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`1007 U.S. Patent No. 6,714,793 to Carey et al. (“Carey”)
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`1008
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`Prosecution History of U.S. Patent No. 10,628,480 (“’480 FH”)
`
`1009
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`1010
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`Excerpt from THE OXFORD AMERICAN DICTIONARY AND LANGUAGE
`GUIDE (1999), at 203 (contact).
`Excerpt from THE AMERICAN HERITAGE DICTIONARY (4th ed. 2001), at
`191 (contact).
`1011 Kuchinsky et al., FotoFile: A Consumer Multimedia Organization and
`Retrieval System, CHI ’99: PROCEEDINGS OF THE SIGCHI
`CONFERENCE ON HUMAN FACTORS IN COMPUTING SYSTEMS, 496-503
`(May 1999) (“FotoFile”)
`Reserved
`
`1012
`
`1013
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`1014
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`Reserved
`
`Reserved
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`1015 Yuichi Yagawa et al., The Digital Album: A Personal File-tainment
`System, PROCEEDINGS OF THE THIRD IEEE INTERNATIONAL
`CONFERENCE ON MULTIMEDIA COMPUTING AND SYSTEMS
`(MULTIMEDIA ’96), June 17-23, 1996, at 433-39.
`
`
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`iii
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`IPR2023-00057 (USP 8,954,432)
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` Petitioner’s Reply to POPR
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`Exhibit
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`Description
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`1016
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`1017
`
`Ben Shneiderman & Hyunmo Kang, Direct Annotation: A Drag-and-
`Drop Strategy for Labeling Photos, 2000 IEEE INTERNATIONAL
`CONFERENCE ON INFORMATION VISUALIZATION (IV ’00), July 19-21,
`2000.
`Benjamin B. Bederson et al., Pad++: A Zoomable Graphical
`Sketchpad For Exploring Alternate Interface Physics, 7 J. OF VISUAL
`LANGUAGES & COMPUTING 3 (1996).
`1018 Mark Roseman & Saul Greenberg, Building Real-Time Groupware
`with GroupKit, a Groupware Toolkit, 3 ACM TRANSACTIONS ON
`COMPUTER-HUMAN INTERACTION 1 (Mar. 1996), at 66-106.
`Excerpts from ROB KIRKLAND ET AL., DOMINO SYSTEM
`ADMINISTRATION (1999).
`Excerpts from DOROTHY BURKE & JANE CALABRIA, TEN MINUTE
`GUIDE TO LOTUS NOTES 4.6 (1997).
`Elizabeth F. Churchill, et al., Anchored Conversations: Chatting in the
`Context of a Document, CHI ’00: PROCEEDINGS OF THE SIGCHI
`CONFERENCE ON HUMAN FACTORS IN COMPUTING SYSTEMS, April
`2000, at 454-61.
`1022 Mark S. Ackerman & David W. McDonald, Answer Garden 2:
`Merging Organizational Memory with Collaborative Help, CSCW
`’96: PROCEEDINGS OF THE 1996 ACM CONFERENCE ON COMPUTER
`SUPPORTED COOPERATIVE WORK, Nov. 1996, at 97-105.
`1023 U.S. Patent No. 6,175,831 to Weinreich, et al.
`
`1019
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`1020
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`1021
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`1024
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`1025
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`Excerpts from C.J. DATE, AN INTRODUCTION TO DATABASE SYSTEMS
`(6th ed. 1995).
`Excerpts from RANDY JAY YARGER ET AL., MYSQL & MSQL (1st ed.
`1999).
`1026 Ulla Merz & Roger King, DIRECT: A Query Facility for Multiple
`Databases, 12 ACM TRANSACTIONS ON INFORMATION SYSTEMS 4
`(Oct. 1994), at 339-59.
`Excerpts from CHARLES DYE, ORACLE DISTRIBUTED SYSTEMS (1999).
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`1027
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`iv
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`Exhibit
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`Description
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`1028
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`1029
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`1030
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`1031
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`1032
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`1033
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`1034
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`1035
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`1036
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`Reserved
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`Reserved
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`Reserved
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`Reserved
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`Reserved
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`Reserved
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`Reserved
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`Reserved
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`Board correspondence dated February 24, 2023.
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`v
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` Petitioner’s Reply to POPR
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`Pursuant to the Board’s authorization (Ex. 1036), Petitioner submits its reply
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`to Patent Owner’s (“PO”) Preliminary Response (“POPR,” Paper 9).
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`I.
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`PATENT OWNER FAILS TO ANTEDATE SHARPE
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`PO attempts to antedate Sharpe with a swear-behind declaration from the
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`named inventor of the ’432 Patent, Mr. Mark Frigon. POPR 16-29 (citing EX2005).
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`This evidence fails to antedate Sharpe, which qualifies as prior art on its face.
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`To antedate Sharpe, PO must produce evidence showing an earlier reduction
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`to practice of the claimed invention, or an earlier conception of the claimed invention
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`plus diligence to a subsequent reduction to practice. 37 C.F.R. § 1.131(b); Dynamic
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`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378-80 (Fed. Cir. 2015).
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`Critically, PO’s evidence must address every feature of the claimed invention. See
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`Sewall v. Walters, 21 F.3d 411, 415 (Fed. Cir. 1994); Medichem, S.A. v. Rolabo,
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`S.L., 437 F.3d 1157, 1169 (Fed. Cir. 2006). It does not.
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`Mr. Frigon admits that, at most, he conceived or reduced to practice only a
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`single database. See EX2005 at 5-9. Yet all the claims of the ’432 Patent require
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`“three distinct and separate” databases—indeed, this was the sole basis for
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`allowance after over a decade of prosecution. EX1002 at 935. On this basis alone,
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`PO’s attempt to antedate Sharpe must fail.
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`In addition, there are significant issues with the adequacy of the evidence
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`presented. For example, PO’s corroborating evidence includes missing and empty
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`1
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`files. PO’s evidence of diligence is insufficiently specific and fails to address the
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`relevant period. See POPR 28-29. PO also fails to provide evidence or analysis
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`showing all elements of the claimed invention reduced to practice or conceived. See
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`generally id. Indeed, PO does not even attempt to address any of the claimed
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`features beyond those of claim 6, despite the Petition’s reliance on Sharpe’s
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`teachings to challenge all the remaining claims. See POPR 29-30.
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`Thus, PO has failed to satisfy its burden to provide evidence showing prior
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`conception, diligence, or any reduction to practice of the claimed invention of the
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`’432 Patent. The Board should reject PO’s attempt to swear behind Sharpe.
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`PO Fails to Show an Earlier Conception of the Claimed Invention
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`PO’s conception evidence is inadequate because it fails to establish prior
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`conception of every feature and fails to describe the features with particularity. See
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`Sewall, 21 F.3d at 415 (“Conception exists when a definite and permanent idea of
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`an operative invention, including every feature of the subject matter sought to be
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`patented, is known.” (emphasis added)); see also Burroughs Wellcome Co. v. Barr
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`Labs., Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994) (“[C]onception analysis necessarily
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`turns on the inventor’s ability to describe his invention with particularity.”).
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`Of particular note, PO’s inventor testimony fails to establish prior conception
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`of the express claim requirement of three different databases—a “users database,”
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`an “images database,” and an “identifications database.” E.g., EX1001 cl. 6. As
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`2
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`explained in the Petition, the applicant added these “three distinct and separate”
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`databases to the claims to obtain allowance after more than a decade of prosecution.
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`Pet. 11 (quoting EX1002 at 935).
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`PO’s inventor testimony, at most, confirms conception of a single
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`“pictures.mdb” database, submitted as evidence for all three claimed databases.
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`POPR 23 (users database), 24-25 (images database), 26-27 (identifications
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`database). However, the single database feature was not sufficient to obtain the
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`’432 Patent. See EX1002 at 885, 916, 924. To the extent PO argues that its use of
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`three tables within a single database demonstrates conception of three distinct and
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`separate databases, adopting such a construction would vitiate the distinction it relied
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`upon to obtain the claims. EX1002 at 919-24 (amending pending claims to identify
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`“three different databases” per Examiner suggestion). In any event, PO’s submitted
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`copy of “pictures.mdb” only shows a single “Picts” table. See generally EX2007.
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`Further, PO’s inventor testimony is inadequately corroborated. Inventor
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`testimony must be supported by corroborating evidence showing that “the inventor
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`disclosed to others [a] ‘completed thought expressed in such clear terms as to enable
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`those skilled in the art’ to make the invention.” Coleman v. Dines, 754 F.2d 353,
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`359 (Fed. Cir. 1985) (quoting Field v. Knowles, 183 F.2d 593, 601 (C.C.P.A. 1950)).
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`PO’s corroborating evidence is riddled with inconsistencies and gaps, including
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`missing and empty files.
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` For example, Mr. Frigon relies on
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`the file
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`3
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`“pict_upd_asp.asp” to corroborate his purported conception of claim element 6[f].
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`EX2005 at 8-9. PO has not provided any such file in support of its inventor’s
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`declaration, however.1 Similarly, Mr. Frigon relies on the “pictures.mdb” database
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`to corroborate his testimony regarding claim 6, but the supporting exhibit includes
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`no data and, as noted above, only shows a single table. See generally EX2007.
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`The other purported corroborating evidence is insufficiently specific to
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`support conception of the claimed features. Mr. Frigon’s purchase of web authoring
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`software in August 2000 does not establish conception of any particular feature of
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`the claimed subject matter. EX2005 ¶ 16; EX2014. The declarations of Lisa Larson
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`(EX2018) and Chris Malone (EX2016) similarly fail to corroborate the missing
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`elements of the claimed invention—including the claimed three distinct and separate
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`databases. See generally EX2018, EX2016. Rather, Ms. Larson merely states that
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`Mr. Frigon “demonstrated the functionality of the invention and his website to me.”
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`EX2018 ¶ 6. Likewise, Mr. Malone merely describes the user-side experience,
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`stating “he could load images into the website he had developed and identify
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`individuals in the photo by labeling their faces” and “later enter individuals’ names
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`and then pull up all the photos that they had been identified in.” EX2016 ¶ 4.
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`1 PO has provided a similarly named file, “pict_upd.asp” (EX2008), but the code
`identified in Mr. Frigon’s declaration does not appear in that file either.
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`4
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` Petitioner’s Reply to POPR
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`PO Fails to Show an Earlier Reduction to Practice
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`Actual reduction to practice requires an even greater showing than
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`conception: (1) construction of an embodiment with all claimed features, (2) proof
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`that the device works, and (3) corroborating evidence. Medichem, 437 F.3d at 1169.
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`PO relies on the same faulty, insufficient evidence for actual reduction to practice.
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`See POPR 2; EX2005 ¶¶ 3, 5, 18.
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`PO Fails to Show Diligence to a Subsequent Reduction to Practice
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`To rely on the provisional application as a subsequent constructive reduction
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`to practice, PO must provide evidence showing reasonably continuous diligence
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`from just before the priority date of Sharpe (September 26, 2000) until the filing date
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`of the provisional application (November 15, 2000). See Perfect Surgical
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`Techniques, Inc. v. Olympus Am., Inc., 841 F.3d 1004, 1007 (Fed. Cir. 2016).
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`However, most of PO’s purported evidence of diligence is for the wrong time period:
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`from the purported conception in April 2000 to Sharpe’s filing on September 26,
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`2000. POPR 18-19 (“[B]etween the conception in early 2000 of the invention, and
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`the critical date of Sharpe, the patent owner had reasonably continued activity to
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`reduce the invention to practice.”). Therefore, such evidence is immaterial.
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`The only purportedly corroborating evidence of diligence within the relevant
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`time period is an email exchange between Mr. Frigon and Ms. Larson dated
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`September 28, 2000. EX2015. That exchange discusses a different web site
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`5
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`(sacko.com) from the site used to support conception (cmalone.com), and does not
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`discuss the required three distinct and separate databases. Id. at 1 (“[I] just threw
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`random numbers into the database.” (emphasis added)).
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`PO provides no additional evidence to account for the remaining 48 days of
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`the critical period. Indeed, PO and Mr. Frigon assert that the provisional application
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`itself was complete and ready for mailing by August 15, 2000. EX2005 ¶ 3. Thus,
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`the preparation of the provisional application cannot account for diligence in the
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`relevant period. Instead, the three-month delay in mailing the application further
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`underscores the unreasonable delay in the critical period. PO asserts that
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`“Mr. Frigon’s move to Colorado” was the source of the delay, but Mr. Frigon does
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`not testify that the move was the source of any delay. Compare POPR 20, with
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`EX2005 ¶ 3. Notably, Mr. Frigon’s credit card statements suggest that he mailed
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`the provisional application from New York—not Colorado. See EX2014 at 2
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`(November 15, 2000 charge for “USPS” located in Westhampton Beach, NY).
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`Finally, PO provides no evidence or analysis establishing that the provisional
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`application actually qualifies as a constructive reduction to practice. See generally
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`POPR. Because the Office does not examine priority claims unless necessary, the
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`Board has no basis to presume that the ’432 Patent is entitled to the filing date of its
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`provisional application. See Dynamic Drinkware, 800 F.3d at 1380. Without any
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`6
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`argument or evidence from PO establishing the provisional as a constructive
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`reduction to practice, PO’s attempt to antedate Sharpe must fail.
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`PO Provides No Evidence for Claims 1-5 and 7-8
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`PO does not separately address the elements of claims 1-5 and 7-8 despite the
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`requirement that conception and reduction to practice are determined on a claim-by-
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`claim basis. See POPR 29-30. On its face, claim 1 includes additional elements
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`beyond claim 6, as do its dependent claims, but PO does not address them. See id.
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`at 30. Accordingly, even if PO had provided evidence sufficient to show prior
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`conception, diligence, and reduction to practice for claim 6 (and it has not), PO has
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`not provided any basis to disqualify Sharpe for the remaining challenged claims.
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`II.
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`PATENT OWNER’S CLAIM CONSTRUCTION ARGUMENTS FAIL
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`PO’s argument that the Petition sets forth “unreasonable claim constructions”
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`(POPR 30-32) is nonsensical. To start, PO applies the incorrect “broadest reasonable
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`interpretation” standard. Id. at 32. Further, PO incredibly asserts “the Petition failed
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`to provide any evidence to support its claim construction” (id. at 30), ignoring
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`evidence plainly set forth in the Petition and supporting declaration. Pet. 13-14
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`(citing EX1001, EX 1003 ¶¶ 73-78, EX1009, EX1010). Critically, PO does not
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`assert that the prior art fails to disclose any limitation under a plain meaning or other
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`construction—rendering PO’s criticism irrelevant to institution. See POPR 30-32.
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` Petitioner’s Reply to POPR
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`Date: March 7, 2023
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`Respectfully submitted,
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`By: / Lisa K. Nguyen /
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`Lisa K. Nguyen (Reg. No. 58,018)
`lisa.nguyen@allenovery.com
`ALLEN & OVERY LLP
`550 High Street
`Palo Alto, CA 94301
`Telephone: 650.388.1724
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`Counsel for Petitioner
`Meta Platforms, Inc.
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), I certify that on this 7th day of March, 2023,
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`a true and correct copy of the foregoing Petitioner’s Reply to Patent Owner’s
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`Preliminary Response was served by electronic mail on Patent Owner’s lead and
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`backup counsel at the following email addresses:
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`Scott W. Hejny (Reg. No. 45,882)
`shejny@mckoolsmith.com
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`Eliza Beeney (pro hac vice)
`ebeeney@mckoolsmith.com
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`Kaylee Hoffner (pro hac vice)
`khoffner@mckoolsmith.com
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`By: / Lisa K. Nguyen /
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`Lisa K. Nguyen (Reg. No. 58,018)
`lisa.nguyen@allenovery.com
`ALLEN & OVERY LLP
`550 High Street
`Palo Alto, CA 94301
`Tel: (650) 388-1724
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`Counsel for Petitioner
` Meta Platforms, Inc.
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`9
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