Trials@uspto.gov
`571-272-7822
`
`Paper 40
`Date: May 7, 2024
`
`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
`
`
`
`
`
`
`
`
`
`Before MIRIAM L. QUINN, SHARON FENICK, and
`MICHAEL T. CYGAN, Administrative Patent Judges.
`FENICK, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 40
`Date: May 7, 2024
`
`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
`
`
`
`
`
`
`
`
`
`Before MIRIAM L. QUINN, SHARON FENICK, and
`MICHAEL T. CYGAN, Administrative Patent Judges.
`FENICK, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`IPR2023-00057
`Patent 8,954,432 B2
`
`I.
`
`INTRODUCTION
`Background and Summary
`A.
`Meta Platforms, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting inter partes review of claims 1–8 (“challenged claims”) of
`U.S. Patent No. 8,954,432 B2 (Ex. 1001, “the ’432 patent”). Angel
`Technologies Group LLC (“Patent Owner”) filed a Preliminary Response
`(Paper 9). Petitioner filed a Preliminary Reply (Paper 14) and Patent Owner
`filed a Preliminary Sur-reply (Paper 15). We determined that the
`information presented in the Petition established that there was a reasonable
`likelihood that Petitioner would prevail with respect to at least one of the
`challenged claims, and therefore we instituted this proceeding on May 11,
`2023, as to all challenged claims and all grounds of unpatentability. Paper
`16 (“Dec. on Inst.”).
`Patent Owner filed a Patent Owner’s Response (Paper 24, “PO
`Resp.”), Petitioner filed a Reply (Paper 29, “Pet. Reply”), and Patent Owner
`filed a Sur-reply (Paper 30, “PO Sur-reply”). The parties presented oral
`arguments on February 13, 2024 and the Board entered a transcript into the
`record. Paper 39 (“Tr.”).
`For the reasons set forth in this Final Written Decision pursuant to 35
`U.S.C. § 318(a), we determine that Petitioner demonstrates by a
`preponderance of evidence that claims 1–8 are unpatentable.
`Real Parties in Interest
`B.
`Petitioner identifies itself and Instagram, LLC as the real parties in
`interest, and notes that it was formerly known as Facebook, Inc. Pet. 2.
`Patent Owner identifies only itself as a real party in interest. Paper 4
`(Patent Owner’s Mandatory Notices), 2.
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`Related Matters
`C.
`Petitioner and Patent Owner identify Angel Technologies Group LLC
`v. Facebook, Inc. and Instagram LLC, No. 2:21-cv-08459 (C.D. Cal.) as a
`related case. Pet. 2; Paper 4, 2. Petitioner notes that an appeal of that case
`was filed with the Federal Circuit. Pet. 2–3. The parties identify that appeal
`as Angel Technologies Group LLC v. Meta Platforms, Inc., Case No. 22-
`2100, filed with the Federal Circuit on August 3, 2022. Id.; Paper 25 (Patent
`Owner’s Fourth Amended Mandatory Notices), 1.
`Petitioner and Patent Owner additionally identify IPR2023-00058
`(challenging claims of U.S. Patent 9,959,291 B2); IPR2023-00059
`(challenging claims of U.S. Patent 10,417,275 B2); and IPR2023-00060
`(challenging claims of U.S. Patent 10,628,480 B2) as related inter partes
`review requests. Id. at 3; Paper 4, 2.
`The ’432 Patent
`D.
`The ’432 patent is titled “Users Tagging Users in Photos Online” and
`relates to using computer(s) and a communication network for storing and
`sharing images such as photographs and permitting the identification of
`objects such as persons within the photos. Ex. 1001, codes (54), (57), 1:11–
`17. The ’432 patent issued from an application filed November 15, 2001,
`and claims priority to a provisional application, No. 60/248,994, filed on
`November 15, 2000. Id. at codes (22), (60), 1:4–6; Ex. 2017.
`The ’432 patent describes, as part of the prior art, websites that allow
`users to organize digital photographs into online photo albums that can be
`accessed by other users. Ex. 1001, 1:25–61. However, the ’432 patent
`describes disadvantages or limitations to these prior art albums, among
`others these include: (1) no ability for users to identify individuals or objects
`in photos; (2) text captions or descriptions cumbersome and possibly vague;
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`(3) no search capabilities for searching for photos of specific individuals;
`and (4) no ability to associate descriptive terms identifying an object or
`individual in a photo with a specific area of the photo. Id. at 1:62–2:23,
`2:37–63, 3:8–12; 3:17–26.
`The ’432 patent describes a system in which databases are used to
`store information to provide users access to upload, view, and access
`images, information about objects or people, and information about
`relationships between users and images. Id. at 5:26–41, 6:59–7:37. The
`’432 patent specification describes that the information can be stored in one
`or more databases. Id. at 6:61–63. “For instance, the system may utilize a
`Users database 230, Identifications database 240, and Images database 250
`as depicted in FIG. 2.” Id. at 6:63–65. Figure 2, reproduced below, is a
`schematic diagram of the databases according to one embodiment of the
`invention. Id. at 4:31–32.
`
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`Figure 2 depicts users database 230, identifications database 240, and
`images database 250, with the fields used in each database, and shows that
`identifications database 240 links information in users database 230 with
`information in images database 250. Id. at 6:63–7:36.
`Users database 230 stores information about people or other objects
`identified within images. Id. at 6:66–7:1. The information can relate to
`users who access the system, and may include a user identifier unique to a
`user or the user’s client computer system and other information relating to
`the user, including name, e-mail address, home page address, and a list of
`contacts. Id. at 6:66–7:5, 9:12–18. Users may enter other users as contacts.
`Id. at 9:18–28.
`Images database 250 receives and stores image data, and may include
`a photo identifier and the location of the image file on the network, in
`addition to descriptive information such as a caption or date taken. Id. at
`7:8–25, 9:29–41.
`Identifications database 240 receives, stores, and provides information
`about relationships between users and photos, for example by linking
`information in users database 230 with information in images database 250.
`Id. at 7:25–36, 7:58–8:10, 8:34–44, 9:41–44. The location of the person in
`the photo may also be specified in the identifications database. Id. at 7:62–
`8:10. Web pages that permit users to identify people or other objects within
`photos are presented to obtain identifying information. Id. at 9:60–67,
`11:38–41. The location of a user in an image may also be captured in such a
`page. Id. at 11:46–12:3. Figure 4, reproduced below, is an example of such
`an “identifying page.” Id. at 10:1–2.
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`Figure 4 is a web page that presents photo 34, list of contacts 36 labelled
`“CONTACTS” and including seven options and radio buttons, and submit
`button 38. Id. at 10:2–4. The list of contacts may be selected from among
`the objects and users listed in users database 230 or may optionally be a
`filtered list from user database 230, for example, a list of user contacts. Id.
`at 10:62–65. The information identifying people within the image
`displayed, obtained from a user interaction with an identifying page, is
`stored in the identifications database. Id. at 9:60–64, 10:28–33, 12:18–61.
`Information in identifications database 240 may be used to find all the
`people identified in a given photo or to find all the photos a given person has
`been identified in. Id. at 8:45–9:5, 13:24–16:4.
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`Patent 8,954,432 B2
`
`Illustrative Claim
`E.
`Claims 1 and 6 are independent, and claims 2–5, 7, and 8 are
`dependent. Independent claim 6 is illustrative, and is reproduced below with
`limitation identifiers in brackets.
`6. [6pre] In a multi-user computer network, a method for
`obtaining and displaying information relating to existence of at
`least one user of a computer network in an image comprising:
`[6a] identifying users of said computer network and assigning
`a unique user identification to a user of said computer
`network;
`[6b] storing said unique user identifier in an users database
`wherein said database is accessible by other computers of
`said computer network;
`[6c] obtaining image data from at least one uploading user of
`said computer network and assigning a unique image
`identifier to said image data;
`[6d] storing said unique image identifier in an images
`database wherein said database is accessible by other
`computers of said computer network;
`[6e] obtaining identification data from a first tagging user of
`said computer network, wherein said identification data
`comprises said unique image identifier and a pictured user
`unique identifier of a user of said computer network
`pictured in said image data;
`[6f] storing said identification data from said first tagging user
`in an identifications database accessible by other
`computers of said network whereby a user identifier may
`be associated with one or more image identifiers and an
`image identifier may be associated with one or more users
`identifiers.
`
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`IPR2023-00057
`Patent 8,954,432 B2
`Prior Art and Asserted Grounds
`F.
`Petitioner asserts that claims 1–8 would have been unpatentable on the
`following grounds:
`Reference(s)/Basis
`35 U.S.C. §1
`Claim(s) Challenged
`Sharpe2
`103
`1, 3, 6–8
`Sharpe, Eintracht3
`103
`1–8
`Sharpe, Carey4
`103
`3
`Sharpe, Eintracht, Carey
`103
`3
`Petitioner additionally relies on declarations of Dr. Benjamin B. Bederson
`(Ex. 1003, Ex. 1039). Patent Owner relies on a declaration of Dr. Eli Saber
`(Ex. 2021).
`
`II. ANALYSIS
`Legal Standards
`A.
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring [inter partes] review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)). This burden never shifts to
`Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800
`F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek,
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102, 103. Because the ’432
`patent was filed before the effective date of the applicable AIA amendment,
`we refer to the pre-AIA version of the relevant statutes. See Ex. 1001, code
`(22).
`2 Sharpe et al., US Patent 7,451,099 B1 (iss. Dec. 2, 2008) (Ex. 1005).
`3 Eintracht et al., US Patent 6,687,878 B1 (iss. Feb. 3, 2004) (Ex. 1006).
`4 Carey et al., US Patent 6,714,793 B1 (iss. Mar. 30, 2004) (Ex. 1007).
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`Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of
`proof in inter partes review). Furthermore, Petitioner must explain with
`particularity how the prior art would have rendered the challenged claims
`unpatentable. 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104(b)(4) (“The
`petition must specify where each element of the claim is found in the prior
`art patents or printed publications relied upon.”).
`A claim is unpatentable under 35 U.S.C. § 103 if the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) objective evidence of nonobviousness,
`i.e., secondary considerations.5 See Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966).
`
`Level of Ordinary Skill in the Art
`B.
`Petitioner argues that one of ordinary skill in the art would “have had
`at least a bachelor’s degree in computer science, electrical engineering,
`computer engineering, or a similar technical field, with at least two years of
`experience in the field of networked and Web-based media applications” and
`that “[a]dditional experience could substitute for less education, and
`
`
`5 The record contains no evidence or argument regarding objective evidence
`of nonobviousness.
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`additional education could likewise substitute for less experience.” Pet. 12
`(citing Ex. 1003 ¶¶ 36–42).
`In the Decision on Institution, we removed the open-ended term “at
`least” from Petitioner’s proposed definition and adopted that amended
`definition. Dec. on Inst. 9. Consistently, Patent Owner contends that a
`person of ordinary skill in the art “would have a bachelor’s degree in
`computer science, electrical engineering, computer engineering, or a similar
`technical field, with two years of experience in the field of networked and
`Web-based media applications” and that “[a]dditional experience could
`substitute for less education, and additional education could likewise
`substitute for less experience.” PO Resp. 16 (citing Ex. 2021 ¶ 44).
`We adopt Patent Owner’s definition, which is consistent with the
`specification of the ’432 patent and the prior art and supported by the
`testimony of both experts.
`C. Claim Construction
`“user identifier,” “user identification,” and “contacts”
`1.
`Petitioner discusses the construction of the following claim terms:
`“user identifier” (claims 6–8); “user identification” (claims 1–5); and
`“contacts” (in claim 3). Pet. 13–14. Petitioner argues that each should be
`given their ordinary meaning in the context of the ’432 patent. For “user
`identifier” and “user identification,” Petitioner argues that the ordinary
`meaning is “a series of characters identifying a user.” Id. (citing Ex. 1001,
`7:37–39, 7:47–49; Ex. 1003 ¶¶ 73–75). For “contacts,” Petitioner argues
`that the ordinary meaning is “people known to the user.” Id. at 14 (citing
`Ex. 1001, 9:18–19, 9:21–28; Ex. 1003 ¶¶ 76–78).
`In response, with respect to these claim terms, Patent Owner argues
`that no claims require express construction and that each term should be
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`Patent 8,954,432 B2
`given its ordinary and customary meaning. PO Resp. 17 (citing Ex. 2021
`¶ 63).
`“The Board is required to construe ‘only those terms . . . that are in
`controversy, and only to the extent necessary to resolve the controversy.”’
`Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019)
`(alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner does not appear to use the
`claim constructions it discusses in the Petition in its unpatentability
`arguments and Patent Owner does not raise the proper construction of these
`terms in its Response or Sur-reply.
`In this case, with respect to “user identifier,” “user identification,” and
`“contacts,” these terms do not require construction to reach our decision
`with respect to patentability, and therefore we do not provide any
`constructions for these terms. See Realtime Data, 912 F.3d at 1375.
`“a request for said image data”
`2.
`Additionally, Petitioner and Patent Owner each raise issues with
`respect to the claim language “a request for said image data” (in claims 1
`and 8). Patent Owner argues that this requires a request for a single specific
`image. PO Resp. 28–32; PO Sur-reply 6–8. Petitioner argues that the
`requirement is that an image retrieval process retrieves images responsive to
`a request. Pet. 39–40, 57 (assuming this construction); Pet. Reply 6–8
`(arguing for this construction in response to Patent Owner’s arguments).
`Patent Owner contends that Petitioner does not properly interpret the
`claim term, which Patent Owner argues must be interpreted to comprise
`“particularly requesting the said image data associated with the unique
`image identification,” citing the antecedent basis of “image data” in claim 1
`(for claim 1’s recitation of “a request for said image data) or in claim 6 (for
`
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`claim 8, due to dependency). PO Sur-reply 8; PO Resp. 28, 31. Patent
`Owner contends that this would not be taught or suggested by a search that
`retrieves multiple images. PO Resp. 32. In response to Petitioner’s
`arguments in Reply (discussed below) regarding a client request for image,
`Patent Owner argues that “a request for said image data” relates to the ’432
`patent specification’s discussion of creating a tag rather than the
`functionality describing searching tagged photos. PO Sur-reply 8–9 & nn. 2,
`3 (citing Ex. 1001, 10:2–36 (discussing the acquisition of identifying
`information regarding a photo from a user)). Patent Owner cites to Dr.
`Saber’s declaration, but the declaration does not provide support for the
`proposed construction; rather, Dr. Saber assumes that “a request for said
`image data” should be interpreted to require a request for a single specific
`digital media item, without discussing the construction further. Ex. 2021
`¶¶ 89, 92.
`Petitioner argues that “a request for said image data” does not require
`a request limited to a specific or particular image, but encompasses requests
`that would return multiple images. Pet. Reply 6–7. In part, Petitioner bases
`this on the ’432 patent specification’s description of multiple images being
`returned in response to a client request for images. Id. at 6–8 (citing Ex.
`1001, 15:46–16:4, Fig. 10; Ex. 1039 ¶¶ 13–16).
`We conclude that the proper construction for “a request for said image
`data” is not limited to a request for a specific single image, but rather
`encompasses searches with parameters that would return “said image data” –
`e.g., an image as previously obtained from an uploading user (see limitation
`1b of claim 1 and 6c of claim 6) – either on its own or among a number of
`images. We do not see a reason, as Patent Owner argues, to limit our
`understanding of this limitation as directed to the “tagging functionality”
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`described in the ’432 patent specification rather than to the “search
`functionality.” See PO Sur-reply 8. Indeed, in each case, the “request for
`said image data” is “receiv[ed] . . . from a viewing user of said computer
`network.” (Ex. 1001, 17:11–12, 18:37–38) (emphasis added). On the other
`hand, the tagging process described in the ’432 patent specification appears
`to correspond to the steps in claim 1 and in claims 6 and 7 (from which
`claim 8 depends) relating to the “first tagging user” and “second tagging
`user.” Ex. 1001, 16:38–17:10 (claim 1), 18:12–35 (claims 6 and 7)
`(emphasis added).
`Because of this, we understand the “request for said image data” to at
`least not be limited to the tagging functionality as argued by Patent Owner.
`Instead, we agree with Petitioner that the proper construction encompasses
`situations in which multiple images may be retrieved as a response to a
`request by a viewing user. Ex. 1001, 15:46–16:4, Fig. 10 (cited at Pet.
`Reply 6–8); see id. at 13:58–62, Fig. 7 (describing an embodiment in which
`“one or more requested images” are included in a display page along with “a
`list of identification information for all persons displayed within the image”
`for each image). Thus, we conclude that the claim term “a request for said
`image data” encompasses requests directed to retrieval of a larger group of
`image data (e.g., images) that includes the specific “said image data” that
`other steps refer to.
`
`Other Terms
`3.
`No other terms require construction to reach our decision.
`D. Challenge to Claims 1, 3, and 6–8 as Obvious Over Sharpe
`Petitioner argues that claims 1, 3, and 6–8 would have been obvious
`over Sharpe. Pet. 22–59. Patent Owner presents contentions countering
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`certain aspects of Petitioner’s showing. PO Resp. 18–51; PO Sur-reply 4–
`14.
`
`Sharpe – Overview
`1.
`Sharpe is titled “Method and System for Archiving and Retrieving
`Items Based on Episodic Memory of Groups of People” and describes
`archiving and retrieving digital media items. Ex. 1005, codes (54), (57),
`1:33–37.
`Sharpe describes that a user archives digital media items by
`identifying a group to which the user belongs and archiving the digital media
`item for the group. Id. at 1:37–45. To archive the digital media item, the
`user can select parameters to index the digital media item; these parameters
`may include identifying as associated with the item: a group event type,
`persons, or a time period. Id. at 1:47–58, 1:66–2:02, 8:15–25. These
`parameters can then be used to retrieve digital media items. Id. at 1:58–63,
`2:2–9.
`“The index information may be stored together with the digital media
`item for example as a ‘header’. Alternatively, the digital media items may
`be stored separately with unique identifiers such as a file name or index.”
`Id. at 3:64–67, 5:43–45. In such cases, the index information, stored
`separately from the digital media items in a faster storage medium, includes
`a reference to this unique identifier. Id. at 3:67–4:3. “This allows the digital
`mediabase to be searched quickly but does not use the expensive, fast access
`storage for space consuming digital media files.” Id. at 4:3–6.
`Figure 1 of Sharpe, reproduced below, is a block diagram of an
`embodiment of Sharpe. Id. at 5:4–6.
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`Figure 1 includes processes, information, databases, and their
`relationships. Groups of users 1 are registered by group registration process
`2 as stored in database of groups of people 3, including information
`identifying the people in the group and identifying a group. Id. at 5:4–6,
`7:35–38. A user of the system may identify themselves as a member of the
`group using a user name and password. Id. at 7:39–41. This allows them to
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`associate stored multimedia items with the group to which the user belongs.
`Id. at 7:47–48.
`Information from database of groups of people 3 is used, along with
`multimedia items to be archived 6, information from table of event types 4
`and calendar 5, resulting in the indexing of a multimedia item in accordance
`with the group, members of the group, event type, and date. Id. at 5:24–37,
`5:41–43.
`Figure 4 of Sharpe, reproduced below, depicts a graphical user
`interface according to the Sharpe system. Id. at 6:58–59.
`
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`Figure 4 includes work space 51 that displays media items (images 52
`and 53 and text 54) and user controls for generating index information. Id.
`at 6:59–67, 7:42–44. Drop down box 55 allows selection of any of a number
`of people from within a group. Id. at 6:67–7:1. The database of groups of
`people 79 is used to provide the list of people. Id. at 8:26–27. Drop down
`box 56 allows the identification of one of a number of event types. Id. at
`7:1–2. Date entry 57 allows a user to enter a date. Id. at 7:3. Archive
`button 60 is used to enter this index information for the archiving process.
`Id. at 7:14–24, 7:44–47, 8:30–31, 8:37. This allows group members to view
`the contents of the group archive, for example, with a focus on a specific
`person or people, date or time period, or event type. Id. at 8:45–67, 9:12–32,
`Fig. 7.
`2.
`
`Arguments Regarding Sufficiency of the Obviousness Ground
`Presented
`Before we address specific assertions regarding unpatentability, we
`address arguments Patent Owner raises regarding this single-reference
`obviousness ground.
`Patent Owner argues that while the Petition styles arguments relating
`to unpatentability in view of Sharpe alone as an obviousness ground, the
`Petition “contains no actual obviousness analysis” and rather only contends
`that Sharpe actually discloses the elements of the challenged claims. PO
`Resp. 46–48. Patent Owner asserts that, “[b]y not addressing what is
`missing from Sharpe such that an obviousness modification would be
`hypothetically made, the Petition’s analysis is flawed at least with respect
`to” the second Graham factor, relating to differences between the claimed
`subject matter and the prior art. Id. at 46–47 (referencing the four factors set
`forth in Graham v. John Deere Co., 383 U.S. at 17–18). Additionally,
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`Patent Owner argues that no analysis was presented regarding the reasonable
`expectation of success regarding any such modification. Id. at 47 (citing In
`re Stepan Co., 868 F.3d 1342, 1346 n.1 (Fed. Cir. 2017)). Patent Owner
`argues that Petitioner has created a “legal limbo” in which it would be
`impossible to determine whether Petitioner has sufficiently shown
`obviousness because the Petition is fatally ambiguous regarding obviousness
`and does not provide Patent Owner proper notice of the theory of
`unpatentability under the Administrative Procedure Act (APA). Id. at 48–
`51.
`
`We do not agree that the obviousness ground is deficient.
`Patent Owner cites M & K Holdings (PO Resp. 49–51) to argue that
`the Board cannot deviate from the invalidity theory set forth in a petition in a
`final determination, and we begin by examining what is present in the
`Petition in this proceeding. See M & K Holdings, Inc. v. Samsung Elecs.
`Co., 985 F.3d 1376, 1385 (Fed. Cir. 2021). We agree with Petitioner that it
`was clear from the Petition that an obviousness ground over Sharpe was
`presented, and that the Petition describes the “knowledge and skills that [a
`person of ordinary skill in the art] would have applied to implement Sharpe.”
`See Pet. Reply 12–13. The Petition describes the ground as relating to
`obviousness over 35 U.S.C. § 103 and specifically describes one of ordinary
`skill in the art making certain implementation decisions with respect to
`employing teachings of Sharpe. Pet. 5 (identification of challenges), 22
`(heading), 29–37 (claim 6); see id. at 53–58 (claim 1). The Petition presents
`an argument, related to limitation 6e of claim 6, for using the Sharpe
`username as a primary key to archive a digital media item (image) with
`selected people identified as being in the image, arguing that one of ordinary
`skill would have found it “suitable” for that use, that it would have been a
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`IPR2023-00057
`Patent 8,954,432 B2
`“known design choice,” and that another option (the personal name of a
`user) would not have been a suitable primary key. Id. at 29–32; 53 (claim 1,
`referring back to arguments for limitation 6e). Petitioner indicates a
`difference between the prior art and the claimed subject matter – that Sharpe
`does not detail the use of the Sharpe username as a primary key – and
`addresses that difference. Id.
`Patent Owner’s Response shows that Patent Owner had notice that
`Petitioner’s arguments were based on obviousness. PO Resp. 18, 22–23.
`Our Decision on Institution (at 7, 24–27) indicated the Board’s
`understanding of the Petition as presenting an obviousness ground over
`Sharpe, Petitioner’s Reply (at 2–3) clarified this further, and Patent Owner
`has had an opportunity to respond to the obviousness theories throughout the
`proceeding. Thus, we perceive no APA issue; Patent Owner has had notice
`and a fair opportunity to be heard on these matters. See Belden Inc. v. Berk-
`Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015) (in an IPR, “the
`Administrative Procedure Act requires the PTO to timely inform a patent
`owner of the matters of fact and law asserted in an inter partes review of its
`patent, to give all interested parties opportunity for . . . the submission and
`consideration of facts and arguments . . . and hearing and decision on notice,
`and to permit a party to submit rebuttal evidence, and to conduct such cross-
`examination as may be required for a full and true disclosure of the facts”
`(internal quotations and citations elided)).
`With respect to the argument that the Petition was deficient as lacking
`a showing of a reasonable expectation of success, we agree with Petitioner
`that Stepan stands for the proposition that such a showing must be made
`when there is a combination of teachings, including from the same reference.
`Pet. Reply 15–16; Stepan, 868 F.3d at 1346 n.1 (“Whether a rejection is
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`IPR2023-00057
`Patent 8,954,432 B2
`based on combining disclosures from multiple references, combining
`multiple embodiments from a single reference, or selecting from large lists
`of elements in a single reference, there must be a motivation to make the
`combination and a reasonable expectation that such a combination would be
`successful, otherwise a skilled artisan would not arrive at the claimed
`combination.”). We note that Petitioner – in describing the use of Sharpe’s
`username as a “known design choice” and “the most obvious design choice;”
`in contrasting the use of personal names, which might be duplicated, with
`the use of usernames that would be unique; and in citing Dr. Bederson’s
`testimony to this effect – provides argument and evidence regarding an
`expectation of success in using the username. Pet. 32 (citing Ex. 1003
`¶¶ 307–309); see Sisvel S.p.A. v. TCT Mobile Int’l Ltd., No. 2023-1123,
`2024 WL 1173047 at *3 (Fed. Cir. March 19, 2024) (nonprecedential)
`(finding a reasonable expectation of success where an expert testified
`regarding a “simple design choice” and the prior art reference noted a
`solution as “a good candidate”).
`For these reasons, we do not find the ground of obviousness over
`Sharpe deficient as Patent Owner argues. We reserve for later portions of
`this Decision specific determinations regarding substantive arguments of the
`parties with respect to the ground presented and regarding the ultimate
`question of whether the Petitioner has met its burden of proof.
`Independent Claim 6
`3.
`Petitioner begins by addressing the obviousness of claim 6, and we
`follow this ordering in our analysis.
`Petitioner’s Contentions in the Petition
`a)
`Without arguing that the preamble of claim 6 is limiting, Petitioner
`argues that Sharpe renders the preamble of claim 6 obvious by teaching a
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`IPR2023-00057
`Patent 8,954,432 B2
`method for obtaining and displaying information relating to an image,
`including information regarding users in the image. Pet. 22–23 (citing, inter
`alia, Ex. 1005, 1:6–9, 6:58–7:24, 8:45–9:27; Ex. 1003 ¶¶ 274, 278).
`Petitioner further argues that Sharpe describes that the information relates to
`a user of a multi-user computer network. Id. (citing Ex. 1005, 4:21–30,
`5:50–63, Fig. 2; Ex. 1003 ¶ 277).
`With respect to limitation 6a, the method step of “identifying users of
`said computer network and assigning a unique user identification to a user of
`said computer network,” Petitioner argues that this is taught in Sharpe’s
`disclosure of groups of users registered by a group registration process, with
`a user entering a username and password to use the system. Id. at 23–24
`(citing Ex. 1005, 5:4–18, 7:39–41; Ex. 1003 ¶¶ 280–281). Petitioner further
`argues that one of ordinary skill in the art would have understood that the
`usernames of Sharpe are unique usernames because such a login process
`would typically be implemented with a unique username, and because
`Sharpe’s archiving and retrieving of images based on associated users would
`require a unique user identifier. Id. at 24–25 (citing Ex. 1005, 7:35–48,
`8:60–9:11; Ex. 1003 ¶¶ 284–285).
`For limitation 6b, the method step of “storing said unique user
`identifier in an users database wherein said database is accessible by other
`computers of said computer network,” Petitioner argues that Sharpe
`discloses a users database in which users are registered, citing database 3
`from Figure 1 and associated disclosure. Id. at 25–26 (citing, inter alia,
`Ex. 1005, 5:4–6, Fig. 1; Ex. 1003 ¶¶ 292–293). With respect to the
`accessibility by other computers, Petitioner cites Dr. Bederson’s testimony
`that one of ordinary skill would have needed to be accessible in order to
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`IPR2023-00057
`Patent 8,954,432 B2
`allow users to access the server using, e.g., web browsers. Id. at 26–27
`(citing, inter alia, Ex. 1005, 4:28–30; Ex. 1003 ¶ 295).
`With re
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