Trials@uspto.gov
`571-272-7822
`
`Paper 16
`Date: May 11, 2023
`
`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.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 16
`Date: May 11, 2023
`
`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.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`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, “Prelim. Resp.”). With our prior authorization (Ex. 1036),
`Petitioner filed a Preliminary Reply (Paper 14, “Prelim. Reply”) and Patent
`Owner filed a Preliminary Sur-reply (Paper 15, “Prelim. Sur-reply”).
`An inter partes review may be instituted only if “the information
`presented in the petition . . . and any [preliminary] response . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a)
`(2018). For the reasons below, Petitioner has established a reasonable
`likelihood that it would prevail in showing the unpatentability of at least one
`of the challenged claims. Accordingly, we institute an inter partes review of
`the challenged claims on all grounds raised in the Petition.
`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.
`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 this case
`has been filed with the Federal Circuit. Pet. 2–3.
`
`2
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`Patent 8,954,432 B2
`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 pending 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 (Ex. 2017)
`(“the ’994 provisional”), 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;
`(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
`
`3
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`Patent 8,954,432 B2
`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.
`
`
`
`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
`
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`Patent 8,954,432 B2
`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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`5
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`Patent 8,954,432 B2
`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.
`Illustrative Claim
`E.
`Claims 1 and 6 are independent, claims 2–5, 7, and 8 are dependent.
`Independent claim 6 is illustrative, and are 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;
`
`6
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`Patent 8,954,432 B2
`[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.
`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 a declaration of Dr. Benjamin B. Bederson
`(Ex. 1003).
`
`
`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).
`
`7
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`
`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,
`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,
`
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`Patent 8,954,432 B2
`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
`additional education could likewise substitute for less experience.” Pet. 12
`(citing Ex. 1003 ¶¶ 36–42).
`Patent Owner contends that a person of ordinary skill in the art
`“would have a bachelor’s degree in computer science, electrical engineering,
`or computer engineering, and at least two years of experience designing
`Web-based media applications.” Prelim. Resp. 15.
`We note that the two proposed definitions are similar, with Patent
`Owner’s slightly more narrowly drawn, limiting the subject of the bachelor’s
`degree and not providing that more experience might substitute for less
`education or more education for less experience. For the purpose of
`institution, we adopt Petitioner’s provided definition for the level of skill of
`a person of ordinary skill in the art, modified to remove the open-ended term
`“at least” in two places, to avoid providing no upper bound to the level of
`skill considered. See Envtl. Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d
`693, 697 (Fed. Cir. 1983) (Considering obviousness to an ordinarily skilled
`person rather than “to the judge, or to a layman, or to those skilled in remote
`
`
`5 On the current record, no party has raised any arguments relating to
`objective evidence of nonobviousness. See Pet. 79.
`
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`Patent 8,954,432 B2
`arts, or to geniuses in the art at hand”). We view this definition as
`reasonable and consistent with the prior art, and it is supported by the
`testimony of Dr. Bederson.
`Claim Construction
`C.
`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).
`Patent Owner argues that no claims require express construction.
`Prelim. Resp. 15. Patent Owner additionally argues that the claims should
`be construed according to their broadest reasonable interpretation. Id. at 32.
`However, for petitions filed on or after November 13, 2018, the “broadest
`reasonable interpretation” standard has been replaced with the federal court
`claim construction standard that is used to construe a claim in a civil action
`under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (2019). We use this claim
`construction standard, as articulated in Phillips v. AWH Corp., 415 F.3d
`1303 (Fed. Cir. 2005) (en banc), and its progeny.
`Patent Owner additionally argues that the Petition should be denied
`because the Petitioner did not provide evidence to support its claim
`construction. Id. at 30–31. Patent Owner asserts that “Dr. Bederson did not
`opine on this topic.” Id. at 31. However, as Patent Owner acknowledges,
`Petitioner does cite evidence, including in the form of Dr. Bederson’s
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`declaration, regarding the claim construction. See id. at 31 (discussing Dr.
`Bederson’s declaration opinions relating to the construction of “user
`identifier”/“user identification”); Pet. 13–14 (citing Ex. 1001, 7:37–39,
`7:47–49, 9:18–19, 9:21–28; Ex. 1003 ¶¶ 73–78). Patent Owner further
`asserts that Petitioner does not “explain why . . . the claim construction is
`necessary in the first place.” Prelim. Resp. 31–32. We agree that Petitioner
`does not appear to use the claim constructions it discusses in its
`unpatentability arguments, and thus that they appear to be superfluous to the
`arguments in the Petition. However, we do not agree with Patent Owner’s
`statement (without further explanation) that “[t]he Petition’s failure to
`provide a proper claim construction resulted in numerous deficiencies in the
`presented grounds of unpatentability.” Id. at 32.
`“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)). In this case, no claim terms require
`construction to reach our decision to institute, and therefore we do not
`provide any constructions here.
`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 argues that Sharpe does not qualify
`as prior art. Prelim. Resp. 16–30. Patent Owner additionally generally
`argues that Petitioner does not provide articulated reasoning with some
`rational underpinning to support the legal conclusion of obviousness, and
`offers at best a conclusory comparison between the cited portions of the
`references and the claimed limitations. Id. at 32–33.
`
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`
`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.
`
`Availability of Sharpe as Prior Art
`Legal Standards
`a)
`As reviewed above, in an inter partes review, the burden of
`persuasion is on the petitioner to prove unpatentability by a preponderance
`of the evidence, and that burden never shifts to the patent owner. Dynamic
`Drinkware, 800 F.3d at 1378. The petitioner has the initial burden of
`production to show that an asserted reference qualifies as prior art under
`35 U.S.C. § 102. Id. at 1378–79. Once the petitioner meets the initial
`burden, a burden of production shifts to the patent owner to argue or produce
`evidence that either the asserted reference does not render the challenged
`claims unpatentable, or the reference is not prior art. Id. at 1379–80 (citing
`Tech. Licensing Corp., 545 F.3d at 1327).
`“Pre-AIA section 102(g) allows a patent owner to antedate a reference
`by proving earlier conception and reasonable diligence in reducing to
`practice.” Perfect Surgical Techniques, Inc. v. Olympus Am., Inc., 841 F.3d
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`1004, 1007 (Fed. Cir. 2016). This can be done by showing that the
`invention was conceived before the effective date of the reference, with
`diligence to actual or constructive reduction to practice. Id.; In re Steed, 802
`F.3d 1311, 1320 (Fed. Cir. 2015) (citing 37 C.F.R. § 1.131). In an inter
`partes review, “a patent challenger has the burden of producing evidence to
`support a conclusion of unpatentability under § 102 or § 103,” but a patentee
`that “affirmatively seeks to establish a proposition not relied on by the patent
`challenger and not a necessary predicate for the unpatentability claim
`asserted,” such as establishing the benefit of an earlier priority date for the
`challenged claims, bears the burden with respect to establishing that
`proposition. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1375–76
`(Fed. Cir. 2016) (citing Dynamic Drinkware, 800 F.3d at 1379).
`“To antedate (or establish priority) of an invention, a party must show
`either an earlier reduction to practice, or an earlier conception followed by a
`diligent reduction to practice.” Purdue Pharma L.P. v. Boehringer
`Ingelheim GmbH, 237 F.3d 1359, 1365 (Fed. Cir. 2001). “The filing of a
`patent application serves as conception and constructive reduction to
`practice of the subject matter described in the application.” Hyatt v. Boone,
`146 F.3d 1348, 1352 (Fed. Cir. 1998); Frazer v. Schlegel, 498 F.3d 1283,
`1288 (Fed. Cir. 2007).
`When evaluating diligence, we are mindful of the guidance of our
`reviewing court that we must not apply a standard that is “too exacting” or
`“too rigid.” Perfect Surgical, 841 F.3d at 1008; Arctic Cat Inc. v. GEP
`Power Prods., Inc., 919 F.3d 1320, 1331 (Fed. Cir. 2019). Though “periods
`of inactivity within the critical period do not automatically vanquish a patent
`owner’s claim of reasonable diligence,” Arctic Cat, 919 F.3d at 1331,
`“[m]erely asserting diligence is not enough” and a party must “account for
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`the entire period during which diligence is required.” In re Meyer Mfg.
`Corp., 411 F. App’x 316, 319 (Fed. Cir. 2010). “[D]iligence need not be
`perfectly continuous—only reasonably continuous.” Arctic Cat, 919 F.3d at
`1331 (emphasis omitted). The key question for diligence is whether, “in
`light of the evidence as a whole, the invention was not abandoned or
`unreasonably delayed.” Id. (internal quotations omitted).
`“Priority of invention and its constituent issues of conception and
`reduction to practice are questions of law predicated on subsidiary factual
`findings.” Singh v. Brake, 317 F.3d 1334, 1340 (Fed. Cir. 2003).
`“[C]onception must encompass all limitations of the claimed invention . . .
`and ‘is complete only when the idea is so clearly defined in the inventor’s
`mind that only ordinary skill would be necessary to reduce the invention to
`practice, without extensive research or experimentation.’” Id. (quoting
`Burroughs Wellcome Co. v. Barr Labs. Inc., 40 F.3d 1223, 1228 (Fed. Cir.
`1994)). To establish an actual reduction to practice, Patent Owner must
`prove that: (1) an embodiment of the invention was performed that met all
`the limitations of the claims at issue; and (2) the inventor determined that the
`invention would work for its intended purpose. Cooper v. Goldfarb, 154
`F.3d 1321, 1327 (Fed. Cir. 1998).
`In addition, a showing of prior invention requires corroboration.
`Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996).
`“Sufficiency of corroboration is determined . . . using a ‘rule of reason’
`analysis, under which all pertinent evidence is examined when determining
`the credibility of an inventor’s testimony.” Medichem, S.A. v. Rolabo, S.L.,
`437 F.3d 1157, 1170 (Fed. Cir. 2006) (citing Price v. Symsek, 988 F.2d
`1187, 1195 (Fed. Cir. 1993)).
`
`17
`
`
`
`IPR2023-00057
`Patent 8,954,432 B2
`
`Parties’ Positions
`b)
`Petitioner argues that Sharpe qualifies as prior art due to its filing date
`of September 26, 2000. Pet. 5 n.1; Prelim. Reply 5; Ex. 1005, code (22).
`Petitioner’s contention is based on its assertion that the challenged claims
`are entitled to an effective date of no earlier than November 15, 2000, which
`is the filing date of the ’994 provisional, to which the ’432 patent claims
`priority. Pet. 9; Ex. 1001, code (60), 1:4–6.
`Patent Owner argues that Sharpe is not prior art because the
`challenged claims relate to an invention that was conceived of and reduced
`to practice before the September 26, 2000 filing date of Sharpe. Prelim.
`Resp. 16–30; PO Sur-reply 1–7.
`Patent Owner submits a declaration by Marc Frigon, the named
`inventor of the ’432 patent, in support of its position. Prelim. Resp. 21; Ex.
`2005 ¶ 2. Patent Owner asserts that the ’994 provisional had been prepared
`by August 15, 2000, and that this is shown in the file history of the
`provisional and via Mr. Frigon’s declaration. Prelim. Resp. 20 (citing Ex.
`20056 and Ex. 20177). Specifically, Patent Owner states that Mr. Frigon
`“had signed the provisional application, fee transmittal, and small entity
`declaration by August 15, 2000.” Id. “That August 15, 2000 signature in
`and of itself demonstrates that Sharpe is not prior art.” Prelim. Sur-reply 1.
`Patent Owner additionally submits a declaration of Lisa Larson (Ex. 2018),
`
`
`6 While no specific reference is provided, this appears to relate to paragraph
`3 of Mr. Frigon’s declaration. See Ex. 2005 ¶ 3. Patent Owner should
`ensure that, going forward, specific citations are made to portions of any
`documents cited.
`7 While no specific reference is provided, this appears to relate to pages 2–4
`of Ex. 2017 (cover page, fee transmittal, and small entity declaration for the
`’994 provisional) which include this date. See Ex. 2017, 2–4.
`
`18
`
`
`
`IPR2023-00057
`Patent 8,954,432 B2
`which it cites as corroborating the August 15, 2000 date. Id. (citing Ex.
`20188). Patent Owner submits that the delay between drafting and filing the
`provisional related to Mr. Frigon’s move from New York to Colorado, and
`was not unreasonable. Prelim. Resp. 20. Patent Owner argues that the
`’994 provisional describes the invention, including the three databases
`described in the independent claims. Prelim Sur-reply 4.
`In addition to constructive reduction to practice, Patent Owner argues
`actual reduction to practice prior to September 26, 2000. Prelim. Resp. 21–
`29. Patent Owner presents a table relating to the elements of claim 6
`“through citations to Patent Owner’s software code,” which was “developed
`and was in-use on Patent Owner’s platform, cmalone.com, prior to Sharpe’s
`earliest priority date.” Id. at 21–27.
`The citations in the support table provided describe what Patent
`Owner calls “April 2000 Program Code” in Exhibits 2006 through 2013. Id.
`at 22–27. Patent Owner also cites Mr. Frigon’s declaration that Patent
`Owner contends “shows that this code was integrated into a website for user
`access in August 2000, and was up and running in September 2000.” Id. at
`27 (citing Ex. 20059).
`Patent Owner specifically cites Exhibit 2011 as a log file that
`demonstrates at least one user using the system and being identified by client
`
`
`8 While no specific reference is provided, this appears to relate to paragraph
`6 of Ms. Larson’s declaration, in which she relates that she recalls Mr.
`Frigon drafting the application “in the August and September 2000
`timeframe.” See Ex. 2018 ¶ 5.
`9 While no specific reference is provided, this appears to relate to paragraphs
`16 and 17 of Mr. Frigon’s declaration, which describe “sacko.com” as
`operative before September 26, 2000. See Ex. 2005 ¶¶ 16, 17.
`
`19
`
`
`
`IPR2023-00057
`Patent 8,954,432 B2
`IP address and username. Id. at 22. Patent Owner cites Exhibit 201010 as
`demonstrating the presence of assigned unique identifier “Person_ID” in a
`table to identify a user in a picture. Id. at 22–23. Patent Owner includes
`what appear to be screenshots of a table that Patent Owner describes as
`“Picts” table in “pictures.mdb” database and cites Exhibit 2012, however
`neither Exhibit 2012 nor Exhibit 2007 (described as Picture.mbd in Patent
`Owner’s exhibit list) contain the depicted information. Compare Prelim.
`Resp. 23, 24, 25, with Ex. 2007 and Ex. 2012. Patent Owner describes that
`the Picts table contains a unique image identifier for new records, such as an
`ID or File_name. Prelim. Resp. 24–25. Patent Owner argues that
`“pict_upd.asp.asp” contains code that obtains a unique image identifier and
`user identifier of a pictured user from a tagging user, supporting limitation
`6e, citing Ex. 2008. Id. at 25.
`Patent Owner argues that claim 1 is a system corollary of the method
`of claim 6, and refers to its showing with respect to claim 6 as proving
`conception of claim 1. Prelim. Resp. 29. Additionally, Patent Owner
`contends that claims 2–5, 7, and 8 “are patentable for the same reasons” as
`claims 1 and 6. Prelim. Resp. 29–30.
`Patent Owner cites, in support of its arguments of actual reduction to
`practice, a declaration of Chris Malone, who declares that he continuously
`was working on the photo-tagging technology beginning in 1998 or 1999
`through 2000. Prelim. Resp. 27 (citing Ex. 2016); Ex. 2016 ¶¶ 3, 6.
`Mr. Malone testifies that by August of 2000, Mr. Frigon “had demonstrated
`to me his invention and its functionality.” Ex. 2016 ¶ 7. Patent Owner
`
`
`10 We assume Patent Owner’s citations to Exhibit 2011 for this are an error;
`the citations to specific lines appear to relate to Exhibit 2010.
`
`20
`
`
`
`IPR2023-00057
`Patent 8,954,432 B2
`additionally cites Ms. Larson’s declaration, which describes Mr. Frigon as
`having “demonstrated the functionality of the invention and his website to
`me, including by having me register on his functional website as referenced
`in the emails submitted as Exhibit 2015 from September 28, 2000.”
`Ex. 2018 ¶ 6; see Prelim. Resp. 28 (citing Ex. 2018).
`Petitioner argues that Patent Owner has failed to antedate Sharpe.
`Prelim. Reply. With respect to conception and actual reduction to practice,
`Petitioner contends that Patent Owner’s evidence is insufficient. Id. at 2–5.
`Petitioner argues that Patent Owner’s showing regarding Mr. Frigon’s
`websites relates only to a single database embodiment, as Patent Owner
`refers to “pictures.mdb” (Ex. 2007) for each of the databases referred to in
`claim 6. Id. at 3–4 (citing Prelim. Resp. 23–27). Petitioner additionally
`notes that the exhibit provided does not include data and shows only a single
`table. Id. at 4 (citing Ex. 2007). Petitioner further argues that the supporting
`evide
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