Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 39
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`META PLATFORMS, INC.,
`Petitioner,
`
`v.
`
`ANGEL TECHNOLOGIES GROUP LLC,
`Patent Owner.
`____________
`
`IPR2023-00057 - Patent 8,954,432 B2
`IPR2023-00058 - Patent 9,959,291 B2
` IPR2023-00059 - Patent 10,417,275 B2
` IPR2023-00060 - Patent 10,628,480 B2
`____________
`
`Record Of Oral Hearing
`Held: February 13, 2024
`____________
`
`
`
`
`Before MIRIAM L. QUINN, SHARON FENICK, and
`MICHAEL T. CYGAN, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`

`

`IPR2023-00057 - Patent 8,954,432 B2
`IPR2023-00058 - Patent 9,959,291 B2
`IPR2023-00059 - Patent 10,417,275 B2
`IPR2023-00060 - Patent 10,628,480 B2
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`ALAN M. BILLHARZ, ESQUIRE
`LISA K. NGUYEN, ESQUIRE
`KATIE BROCKWAY, ESQUIRE
`DAVID M. TENNANT, ESQUIRE
`CHITRAJIT CHANDRASHEKAR, ESQUIRE
`Allen & Overy LLP
`1101 New York Avenue, NW.
`Washington, D.C. 20005
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`SCOTT W. HEJNY, ESQUIRE
`ARVIND JAIRAM, ESQUIRE
`ELIZABETH BERNARD, ESQUIRE
`KAYLEE HOFFNER, ESQUIRE
`McKool Smith, P.C.
`1999 K Street, NW., Suite 600
`Washington, D.C. 20006
`
`
`
`
`The above-entitled matter came on for hearing on Tuesday, February 13,
`2024, commencing at 10:00 a.m., at the U.S. Patent and Trademark Office,
`600 Dulany Street, Alexandria, Virginia.
`
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`2
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`

`

`IPR2023-00057 - Patent 8,954,432 B2
`IPR2023-00058 - Patent 9,959,291 B2
`IPR2023-00059 - Patent 10,417,275 B2
`IPR2023-00060 - Patent 10,628,480 B2
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE FENICK: All right, thank you. Please be seated. It will take
`one second to log on to our computers -- thank you.
`Good morning. We are convened today for oral arguments in
`IPR2023-00057, 00058, 00059, and 00060, in which are challenged,
`respectively, claims of patents 8,954,432; 9,959,291; 10,417,275; and
`10,628,480. I'm Judge Fenick and my colleagues are Judges Cygan and
`Quinn. Judge Quinn is joining us remotely.
`Judge Quinn, can you see and hear us?
`JUDGE QUINN: Yes, I can see and hear you.
`JUDGE FENICK: Thank you. The hearing order, which is paper 32
`in IPR2023-00057, provided that each party has 90 minutes total time to
`argue their case. Today we are welcoming a LEAP practitioner for
`Petitioner, so Petitioner will have 15 extra minutes to provide for the LEAP
`practitioner's meaningful and substantive opportunity to argue before the
`Board. We are glad to have parties participate in this important program.
`Petitioner has the ultimate burden of establishing unpatentability.
`Therefore, Petitioner will open the hearing by presenting its case as
`presented in its petition regarding the alleged unpatentability of the
`challenged claims. Petitioner may reserve rebuttal time, but no more than
`half of its total argument time. Thereafter, Patent Owner will respond to
`Petitioner's arguments. Patent Owner may reserve surrebuttal time, no more
`than half of its total argument time, to respond to Petitioner's rebuttal.
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`IPR2023-00057 - Patent 8,954,432 B2
`IPR2023-00058 - Patent 9,959,291 B2
`IPR2023-00059 - Patent 10,417,275 B2
`IPR2023-00060 - Patent 10,628,480 B2
`
`Otherwise, the parties may use their allotted time to discuss the case as they
`choose.
`We ask that you make it clear which challenges and claims you are
`addressing for the clarity of the record. Also following the hearings, please
`wait and provide the court reporter a chance to ask for any spellings or other
`clarifications. We ask the parties hold any objections regarding a party's
`arguments until it is their time at the podium. We will not take objections
`during a party's argument and you must wait until it is your time at the
`podium to note any objections. I will maintain a clock which you'll see
`behind me.
`So now if we can get started with appearances for both sides, starting
`with Petitioner, please.
`MR. BILLHARZ: Good morning, Your Honor. Alan Billharz on
`behalf of Petitioner, Meta Platforms, Incorporated. I'm joined by lead
`counsel for Petitioner, Lisa Nguyen, and also by in-house counsel, Katie
`Brockway.
`JUDGE FENICK: Thank you. And for Patent Owner, please?
`MR. HEJNY: Your Honor, may it please the Board, Lead Counsel
`Scott Hejny on behalf of Angel Technologies. With me today in presenting
`oral argument on behalf of Angel Technologies is Ms. Elizabeth Bernard
`and Mr. Arvind Jairam. Present via the remote feed are Kaylee Hoffner of
`McKool Smith and the inventor and owner of Angel Technologies, Mr.
`Mark Frigon.
`JUDGE FENICK: Thank you. And we'll start with the Petitioner.
`Mr. Billharz, would you like to reserve rebuttal time?
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`IPR2023-00057 - Patent 8,954,432 B2
`IPR2023-00058 - Patent 9,959,291 B2
`IPR2023-00059 - Patent 10,417,275 B2
`IPR2023-00060 - Patent 10,628,480 B2
`
`
`MR. BILLHARZ: Yes, Your Honor, we'd like to reserve 30 minutes
`for rebuttal.
`JUDGE FENICK: Okay. Please begin when you're ready.
`MR. BILLHARZ: Yes, Your Honor. Good morning, Your Honors,
`and may it please the Board, Alan Billharz on behalf of Petitioner Meta
`Platforms. I'm joined by Lead Counsel Lisa Nguyen and by in-house
`counsel for Meta, Katie Brockway. So I'm grateful to participate in today's
`program via the LEAP program, and I do expect to address all of the issues
`in today's proceeding. But I may need to confer with lead counsel from time
`to time. And I'd ask for an opportunity to confer with lead counsel before
`we begin a rebuttal.
`Unless there are any questions from the Board, I intend to proceed
`with the demonstratives that we prepared for today. I have paper copies of
`those demonstratives, if the Board would like a copy.
`JUDGE FENICK: We have them here.
`MR. BILLHARZ: Okay. Well, Your Honor, with that then, I will
`turn to slide 2 of our demonstratives. On slide 2, we have a roadmap for
`today's proceeding. I intend to present a brief overview of the patents, of the
`challenged patents, and the prior art, and then proceed with three modules of
`disputed issues: the first being the Sharpe alone or in view of a POSA's
`knowledge ground; the second being the combination of Sharpe and
`Eintracht; and the third being Robertson and Lloyd-Jones, which is the
`combination at issue for the '480 patent only.
`Turning to slide 5, Your Honors, there are four challenged patents at
`issue in these proceedings. They're all related patents with a common
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`IPR2023-00057 - Patent 8,954,432 B2
`IPR2023-00058 - Patent 9,959,291 B2
`IPR2023-00059 - Patent 10,417,275 B2
`IPR2023-00060 - Patent 10,628,480 B2
`
`specification. The '432 patent is the first patent in the series which was filed
`in 2001. Now, the '432 patent issued after nearly 15 years of prosecution.
`And then the applicant proceeded to file several continuations, the last of
`which is the '480 patent which issued in 2000, nearly 20 years after the filing
`of the original application. Now, all of these patents are expired except for
`the '291 patent, which, due to patent term adjustment, will expire at the end
`of this month.
`Turn to slide 6, Your Honors. The challenged patents on their face
`are nominally directed to photo tagging. But the disputed issues in these
`proceedings are not about photo tagging. They're about implementation
`details in a photo tagging application. And why is that?
`Turning to slide 8, Your Honors, it's because photo tagging was
`known in the art. On slide 8, for example, we have the PhotoFinder
`application, which appears on the left of slide 8, in which a user, this is a
`prior art application, in which a user could tag photos and identify
`individuals depicted in those photos. As I'm illustrating here with the red
`dot which appears in the lower right-hand corner of the figure from
`PhotoFinder.
`FotoFile, which is one of the secondary references at issue in these
`proceedings, was another photo tagging application that predates the
`challenged patents with PhotoFinder -- I'm sorry, with FotoFile you could
`tag individuals in photos and actually look for other photos in which that
`same individual was tagged.
`Now, the Examiner, in prosecuting these patents or examining these
`patents, recognized this fact. And that's why these patents, turning to slide
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`IPR2023-00057 - Patent 8,954,432 B2
`IPR2023-00058 - Patent 9,959,291 B2
`IPR2023-00059 - Patent 10,417,275 B2
`IPR2023-00060 - Patent 10,628,480 B2
`
`9, spent more than 13 years of back and forth with the Examiner, with
`rejection after rejection after rejection. And when these patents were finally
`allowed, when the '432 patent was allowed, the Examiner made clear that
`photo tagging was not the basis for allowance.
`Instead, the basis for allowance, turning to slide 10, was a series of
`three distinct and separate databases which the Examiner identified in a
`telephone interview with the applicant, suggested that the applicant add
`those to the claims to make them allowable.
`So, turning to slide 11, that's what the applicant did in the '432 patent.
`The claims recite three distinct and separate databases that were the
`purported basis for a point of novelty.
`Now, turning to slide 12, Your Honors, when the Examiner allowed
`the '432 patent, the Examiner made clear, as you see on slide 12, that it was
`the three distinct and separate databases, not photo tagging, that was the
`basis for allowance.
`Turning to slide 13, when the applicant began filing continuation
`applications, the basis for allowance for the '291 patent was, again, not photo
`tagging. The basis for allowance was selecting a tagged user from a contact
`list, an implementation detail, again, and a photo tagging system.
`Turning to slide 15, the same basis for allowance applied to the '275
`patent, the third in the series. Selecting a tagged user from a contact list was
`the basis for allowance, and the Examiner made clear that it was not photo
`tagging which was known in the art.
`Now, the applicant, in pursuing the fourth patent in the series, turning
`to slide 17, the applicant ran into a problem, which is the Examiner
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`IPR2023-00057 - Patent 8,954,432 B2
`IPR2023-00058 - Patent 9,959,291 B2
`IPR2023-00059 - Patent 10,417,275 B2
`IPR2023-00060 - Patent 10,628,480 B2
`
`discovered the Carey reference and held that Carey, which is a secondary
`reference in these proceedings, discloses the purported point of novelty in
`the '275 and the '291 patents, selecting a tagged user from a contact list. So
`the applicant had to turn to another implementation detail, which, turning to
`slide 18 was the prompt to a viewing user of a photo to add a tagged user to
`that viewing user's contact list.
`So, Your Honors, turning to slide 21, the basis for allowance for the
`patents at issue in these proceedings was not photo tagging, which was well
`known in the art. The basis was a series of implementation details about
`how photos are stored and how tagged users are selected to appear in photos,
`and also a prompt to add that contact or add contacts based on the tagged
`photo. And as we made clear in the petition and the supporting briefing,
`these implementation details were obvious in view of the prior art.
`So with that, I'll turn to the prior art at issue in this proceeding. Your
`Honors, turning to slide 23. On slide 23, we have an overview of the
`instituted grounds in these proceedings. And just at a high level, the primary
`reference that we'll discuss for the '432, '291, '275 patents is the Sharpe
`reference. And there's also the Sharpe in view of Eintracht combination for
`those. Carey and FotoFile are secondary references that are not at issue in
`these proceedings. Their disclosures are not disputed and so we won't be
`discussing them in any substantive way today. And then the '480 patent has
`a different pair of prior art that we'll come back to later in the proceeding.
`So, turning to Sharpe on slide 24, Sharpe was not considered during
`the prosecution of the challenged patents. But like the challenged patents,
`Sharpe discloses a photo tagging system in which groups of people
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`IPR2023-00057 - Patent 8,954,432 B2
`IPR2023-00058 - Patent 9,959,291 B2
`IPR2023-00059 - Patent 10,417,275 B2
`IPR2023-00060 - Patent 10,628,480 B2
`
`collaborate to annotate photos to identify the people in those photos, the
`events at which those photos were taken, the dates on which those photos
`were taken, and so on.
`Now, Sharpe discloses a web-based application, just like the
`challenge patents and Sharpe discloses specifically, as you see on slide 24,
`figure 4 is a user interface of Sharpe in which individuals, for example, with
`the drop-down box 55, users of the system can tag individuals in photos, and
`the photos appear in what's called the workspace 51 of Sharpe's figure 4.
`Now, importantly, Sharpe also discloses the database back end,
`similar to or actually the same as the challenge patents. Sharpe discloses the
`use of databases to store the information relating to the photos. And indeed,
`Sharpe discloses the use of multiple databases, the three distinct and
`separate databases that were the basis for allowance for the '432 patent, and
`that's not disputed in these proceedings.
`It's also not disputed that Sharpe discloses, turning to slide 27, Sharpe
`discloses the selecting of a tagged user from contact list, which was the basis
`for allowance for the '291 and the '275 patents.
`So with that, Your Honors, I will turn to what is disputed about
`Sharpe in these proceedings if you'll turn to slide 35, which I'm presenting
`now. There are two groups of issues that I'll address for the Sharpe alone
`ground. The first is single reference obviousness and the second is a series
`of disputed limitations about Sharpe's disclosure.
`So, turning to slide 37 of our demonstratives, Your Honor, Patent
`Owner disputes that we presented Sharpe alone or in view of the knowledge
`of a POSA as an obviousness ground. But based on the disclosures that we
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`IPR2023-00057 - Patent 8,954,432 B2
`IPR2023-00058 - Patent 9,959,291 B2
`IPR2023-00059 - Patent 10,417,275 B2
`IPR2023-00060 - Patent 10,628,480 B2
`
`present on slide 37, it's plainly obvious, plainly clear that we presented
`Sharpe alone or view of the knowledge of a POSA as an obviousness
`ground. I would think Patent Owner takes issue with our use of the word
`"discloses," but disclosure is the epitome of obviousness, and the Board
`understood this. In the Institution decision, the Board acknowledged Sharpe
`alone or in view of the knowledge of a POSA as a 103 obviousness ground.
`Turning to slide 38, Patent Owner also argues that if Sharpe alone or
`in view of the knowledge of a POSA is an obviousness ground, then we
`failed to present motivation to combine for that obviousness ground. And
`that's simply incorrect, Your Honor. As the Board recognized in the
`Institution decision, I have footnote 11 of page 27 of the '432 Institution
`decision on the slide, the Board recognized that motivation combined is not
`required for a single reference obviousness challenge.
`JUDGE FENICK: Mr. Billharz, can you discuss, for example, with
`respect to claim 6 of the '432 patent for the 00057 petition, what in the
`petition -- what elements of the claim required obviousness rather than
`disclosure according to the petition?
`MR. BILLHARZ: Your Honor, so our view is that Sharpe discloses
`the elements, but in view of a POSA's knowledge. So there are certain
`disclosures of Sharpe that are not expressed, for example, how databases
`work and how a POSA would have understood that the tables, for example,
`in Sharpe's figure 6, relate to each other with the use of primary keys. And
`that's why we brought this as an obviousness ground, because there is an
`element of knowledge that a POSA would have about Sharpe's disclosures,
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`IPR2023-00057 - Patent 8,954,432 B2
`IPR2023-00058 - Patent 9,959,291 B2
`IPR2023-00059 - Patent 10,417,275 B2
`IPR2023-00060 - Patent 10,628,480 B2
`
`and Sharpe does not expressly discuss those concepts because a person,
`ordinary skill in the art, would have understood those concepts.
`JUDGE FENICK: Thank you.
`MR. BILLHARZ: Your Honor, just to close out this point, turning to
`slide 39, we pointed to the Realtime Data case in our briefs, which makes
`clear, the Federal Circuit makes clear that when presenting a ground like
`this, motivation to combine is not required and the Board does not need to
`find motivation combined.
`And turning to slide 40, Patent Owner is only pointed to a footnote in
`the Stepan case for the legal proposition that motivation is combined -- to
`combine is required for a single reference obviousness ground. But the facts
`here are distinguishable from Stepan. Stepan dealt with combining multiple
`embodiments from a single reference or selecting from large lists of
`elements. I believe it was the latter in Stepan that the Federal Circuit was
`addressing.
`JUDGE QUINN: Well, Counsel, if I could ask you a question.
`MR. BILLHARZ: Yes, Your Honor.
`JUDGE QUINN: It seems to me, though, that you did provide some
`motivations to combine when encountering the issue of the username
`limitation. To the extent that it's a rationale rather than a motivation to
`combine, such as obvious to try, there may be multiple ways in which a
`person of skill in the art implements that limitation. Can you explain that?
`MR. BILLHARZ: Yes, Your Honor. Yes, we did provide the
`rationale for why a person of ordinary skill in the art in implementing
`Sharpe would have recognized the username as a unique user identifier and
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`

`IPR2023-00057 - Patent 8,954,432 B2
`IPR2023-00058 - Patent 9,959,291 B2
`IPR2023-00059 - Patent 10,417,275 B2
`IPR2023-00060 - Patent 10,628,480 B2
`
`would have used it as a primary key in relating the tables in Sharpe's
`database. So we did speak to both why a POSA would have understood that
`and then why a POSA would have used the username in particular for that
`limitation.
`JUDGE QUINN: And just to follow up on that.
`MR. BILLHARZ: Yes, ma'am.
`JUDGE QUINN: The evidence that you have is strictly Mr.
`Bederson's testimony, is that right?
`MR. BILLHARZ: No, Your Honor. There's additional evidence
`there. So it's Dr. Bederson's testimony.
`I would also -- let me take you to a slide, Your Honor. I'm now
`projecting slide 44, Your Honor. So in addition to Dr. Bederson's testimony,
`which if you review his declaration, he goes through a series of database
`treatises, his own explanations, and his own experience with implementing
`databases, but on top of that, on reply, Your Honor, we have, when Patent
`Owner challenged that this was -- to the extent Patent Owner challenged that
`this is a way that a POSA would have recognized that you could implement
`Sharpe's system, we pointed to an example. This is Exhibit 1042, the
`Falquet reference. Exhibit 1042 makes clear this is just an example of a
`person, a POSA, using the username as a primary key to implement a
`system. Because as it says on slide 44, all users must have a different
`username.
`JUDGE QUINN: So you say that this came in at the reply stage, is
`that correct?
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`IPR2023-00057 - Patent 8,954,432 B2
`IPR2023-00058 - Patent 9,959,291 B2
`IPR2023-00059 - Patent 10,417,275 B2
`IPR2023-00060 - Patent 10,628,480 B2
`
`
`MR. BILLHARZ: Yes, Your Honor, and it was in response to Patent
`Owner's disputing of that a POSA would have recognized to the extent
`Patent Owner disputes that we pointed to this reference. But if you look at
`Dr. Bederson's declaration, he provides all the explanation in support of the
`petition. The theory, Your Honor, certainly was not new.
`JUDGE QUINN: Right. That was my question to you earlier. The
`petition, I think does express Mr. Bederson's opinion that it would have been
`obvious to try but didn't go into details. Perhaps he didn't say, obvious to try
`this design choice.
`MR. BILLHARZ: Yes, Your Honor. He said it would have been a
`known design choice, and it would have been, in fact, the most obvious
`design choice to implement the system. That's not a requirement of
`obviousness, but he just pointed to, in view of Sharpe's disclosures, the
`username was already present. It's a known aspect of the system, you need
`to relate users to images. It was available and a POSA implementing
`Sharpe's system would have recognized that as the primary key to use to
`make those relationships.
`JUDGE QUINN: Thank you.
`MR. BILLHARZ: Your Honor. I will turn now to slide 41, the
`disputed limitations of Sharpe. We've already discussed, turning to slide 42,
`the unique user identifier, so, you know, I will not belabor that point. But
`we established in the petition that a POSA would have recognized Sharpe's
`username as unique user identifier. And I don't think that there is a dispute
`about what Sharpe teaches here. There's only a dispute about whether we
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`

`IPR2023-00057 - Patent 8,954,432 B2
`IPR2023-00058 - Patent 9,959,291 B2
`IPR2023-00059 - Patent 10,417,275 B2
`IPR2023-00060 - Patent 10,628,480 B2
`
`have argued inherency for this limitation. And Your Honor, we certainly
`have not argued inherency for this limitation.
`Pointing -- turning to slide 46, Your Honors, these are just some
`examples from the petition and Dr. Bederson's declaration where we make
`the argument that this is an obvious design choice in view of Sharpe's
`teachings. Not that it must be the only way to implement Sharpe, but it's
`something that a POSA would have recognized and is, therefore, obvious.
`Your Honors, turning to slide 47, the next disputed issue for Sharpe
`alone is the request for said image data. And the claims require, as you see
`on slide 47, that there is a request for the image data recited earlier in the
`claim, and that image data is one that was uploaded and then tagged. So
`Patent Owner has taken the position that the request for said image data must
`be a request for a single and particular image, not multiple images. And we
`think our position is that is contrary to the plain language of the claim,
`contrary to the disclosures of the specification, and it would exclude an
`embodiment improperly. So the claims themselves are comprising claims,
`open-ended claims. The term "image data" is not singular. In fact, the
`specification uses image data to describe multiple images, and we cite to that
`in our briefs.
`JUDGE QUINN: I have a question, though --
`MR. BILLHARZ: Yes, Your Honor.
`JUDGE QUINN: -- because the claim language says, "obtaining
`image data from at least one uploading user," but then, "assigning a unique
`image identifier to said image data," if you're assigning a unique identifier,
`it's got to be a single photo or a single image file.
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`IPR2023-00057 - Patent 8,954,432 B2
`IPR2023-00058 - Patent 9,959,291 B2
`IPR2023-00059 - Patent 10,417,275 B2
`IPR2023-00060 - Patent 10,628,480 B2
`
`
`MR. BILLHARZ: So, Your Honor, I believe we addressed this in our
`briefing, but standard claim interpretation techniques is that "a" means one
`or more. And so our understanding of this claim is that if there were, in fact,
`multiple images, then it would assign a unique identifier to each of those
`images. The claim can accommodate that. But even if that were not the
`Board's interpretation of this claim, I'd still argue that this is a comprising
`claim, so it's open ended. So imagine, for example, there's a request for an
`image, and there's also a request for additional images. That would not put
`you outside the scope of this claim.
`JUDGE QUINN: Then how do you reconcile that with Sharpe, which
`does not assign identifiers to each image? It indexes the images based on
`people, events.
`MR. BILLHARZ: Your Honor, Sharpe does assign a unique image
`identifier to each image. I can find you the cite for that, but we certainly
`argued that in our petition. And in fact, I don't believe that's disputed in this
`proceeding. I think the dispute here is just whether the request has to be for
`a particular image or if it can accommodate multiple images.
`JUDGE QUINN: Column 2 of Sharpe says, "Thus the indexing
`system does not uniquely identify individual digital media items." How do
`you explain that?
`MR. BILLHARZ: Your Honor -- column 2, Your Honor? Yes,
`Sharpe -- what Sharpe is addressing there is that the purpose of its system is
`to identify photos for nostalgic retrieval, right? That means when a user or
`series of users are using the system, they're annotating photos such they can
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`IPR2023-00057 - Patent 8,954,432 B2
`IPR2023-00058 - Patent 9,959,291 B2
`IPR2023-00059 - Patent 10,417,275 B2
`IPR2023-00060 - Patent 10,628,480 B2
`
`be retrieved to describe an event, so on and so forth. That does not mean
`that Sharpe does not apply a unique user identifier to each image.
`And I think we've established in the petition that Sharpe does apply a
`unique user identifier. And I think that is supported at least by figure 6 of
`Sharpe, which has item identifiers for each image. I believe there are some
`disclosures. I have to find those for you, Your Honor, but they're later in
`Sharpe where they talk about the upload process. And that upload process
`includes assigning image identifiers to the images at the time of upload.
`So just because Sharpe's purpose is to support nostalgic retrieval does
`not mean Sharpe does not practice these claims or disclose these claims,
`Your Honor.
`So, Your Honors, turning to slide 49, there is an embodiment
`described in the challenged patents, in which it's expressly discussed that the
`client sends a request for multiple images, an image or a list of images, in
`which the specified user or several users have been identified. And so if the
`claims were limited to requests for a single image, they would exclude this
`embodiment. Now, that's not necessarily -- that's not issue dispositive, but
`the Federal Circuit encourages us to -- or an interpretation of a claim that
`would exclude an embodiment like this is disfavored.
`Also, Your Honors, even if Patent Owner's interpretation is correct, so
`I'm on slide 50 at this time, even if the claims are limited to requests for a
`single particular image, Sharpe discloses that because Sharpe discloses a
`narrowing process where a series of searches are performed with additional
`parameters to get to a smaller number of images. And as Dr. Bederson
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`IPR2023-00057 - Patent 8,954,432 B2
`IPR2023-00058 - Patent 9,959,291 B2
`IPR2023-00059 - Patent 10,417,275 B2
`IPR2023-00060 - Patent 10,628,480 B2
`
`explained, a person of ordinary skill in the art would have understood this
`disclosure to teach the eventual request for a single in particular image.
`And, Your Honors, just turning back on the unique user identifier
`issue, I would direct the Board to Sharpe at column 3, line 64, through
`column 5, line 6, for discussing about unique identifiers being applied to
`images.
` Your Honors, the next disputed issue for Sharpe alone or in view of
`the knowledge of a POSA is the list of pictured users. Now, for this
`limitation, we have pointed to Sharpe's drop-down list 55, which appears in
`figure 4 on slide 51. I'm highlighting it now. Patent Owner's argument here
`is that the drop-down list 55 cannot be both a list of individuals in a group
`and a list of individuals pictured in an image. But the important realization
`here is that Sharpe's UI, figure 4, is used for both archival and retrieval of
`images. And as we explained in the petition, a person of ordinary skill in the
`art would have recognized that in implementing Sharpe's figure 4, this
`people drop-down box would have displayed both the total number of users
`in the group or the total users in the group, and then the pictured users in the
`particular images loaded in the workspace.
`JUDGE FENICK: Is the --
`MR. BILLHARZ: Yes, Your Honor?
`JUDGE FENICK: Is the argument that the pictured users would
`somehow be highlighted the way Dr. Bederson highlighted them in this
`figure, or that they would just appear because they wouldn't disappear after
`having been selected?
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`IPR2023-00057 - Patent 8,954,432 B2
`IPR2023-00058 - Patent 9,959,291 B2
`IPR2023-00059 - Patent 10,417,275 B2
`IPR2023-00060 - Patent 10,628,480 B2
`
`
`MR. BILLHARZ: Your Honor, the argument is more the former, as
`you described it, that the list itself would still continue to include all
`members of the group because you would need to be able to select other
`members of the group for purposes of additional retrieval or additional
`archival, but that the individuals in the group, and there are plenty of ways to
`implement this. This is not the only way. This is just one obvious way to do
`it, would be to highlight the individuals in the group who are currently
`selected for the current retrieval of images.
`JUDGE FENICK: And that's supported by Dr. Bederson at 340. Is
`that the first declaration, sorry, of Dr. Bederson?
`MR. BILLHARZ: Dr. Bederson's the declaration at 340. Your
`Honor, I'd have to get that cite for you. I'll get that for you in rebuttal. But
`to support there, yes, Your Honor, Dr. Bederson goes into detail. Oh, I
`understand it's 340 through 345, Your Honors. Paragraphs 340 through 345
`of the '432 declaration where he discusses this feature.
`JUDGE FENICK: Dr. Bederson says that the list would be updated to
`reflect the current selected set of users.
`MR. BILLHARZ: Yes, Your Honor.
`JUDGE FENICK: And what would that update -- that update would
`be the highlighting?
`MR. BILLHARZ: Yes, Your Honor, it would be the highlighting. I
`believe we have figures that are annotated in Dr. Bederson's declaration and
`in the petition illustrating what this sort of highlighting would appear. But I
`do want to emphasize that that's just one example of how this would be
`implemented. We're not saying that that is the only way, it's just one
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`IPR2023-00057 - Patent 8,954,432 B2
`IPR2023-00058 - Patent 9,959,291 B2
`IPR2023-00059 - Patent 10,417,275 B2
`IPR2023-00060 - Patent 10,628,480 B2
`
`obvious way that a POSA would have recognized at the time that in
`implementing Sharpe's system one way and someone implementing Sharpe's
`system would have indicated who's tagged in the currently loaded photos.
`And Your Honors, if I may turn your attention to slide 53. On reply,
`we pointed to additional evidence. Patent Owner's position appears to be
`that this drop-down box, people drop-down box in Sharpe's figure 4 cannot
`be both. But ,in fact, it was well known there were UI paradigms at the
`time, as Dr. Bederson described, that were, in fact, exactly like this: a drop-
`down list that both indicated the current selection and allowed you to make
`additional selections.
`And you see on the lower left-hand side of slide 53, this is an example
`from the Apple Mac OS operating system that there were a series of menus,
`drop-down menus, that would both indicate the currently selected
`individuals with a chec