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`Filed on behalf of: Meta Platforms, Inc.
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`Filed: November 17, 2023
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
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`META PLATFORMS, INC.
`Petitioner,
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`v.
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`ANGEL TECHNOLOGIES GROUP LLC,
`Patent Owner.
`__________________
`Case No. IPR2023-00057
`U.S. Patent No. 8,954,432
`__________________
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`IPR2023-00057 (USP 8,954,432)
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` Petitioner’s Reply
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`TABLE OF CONTENTS
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`B.
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`C.
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`INTRODUCTION ........................................................................................... 1
`GROUND 1: SHARPE ALONE OR IN VIEW OF THE
`KNOWLEDGE OF A POSA RENDERS OBVIOUS CLAIMS 1, 3,
`6-8 .................................................................................................................... 1
`A.
`Sharpe Alone Or In View Of The Knowledge Of A POSA
`Teaches The “User Unique Identifier” (6[e], 7[a]) ............................... 2
`Sharpe Alone Or In View Of The Knowledge Of A POSA
`Teaches A “Second Tagging User” (7[a], 7[b], 1[h]) ........................... 4
`Sharpe Alone Or In View Of The Knowledge Of A POSA
`Teaches Requests For Image Data (8[a], 1[d], 1[e], 1[h], 1[i]) ............ 6
`PO Misinterprets the Claim Language ........................................ 6
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`Even Under PO’s Incorrect Interpretation, the Prior Art
`Discloses the Limitation ............................................................. 8
`PO’s Remaining Arguments are Meritless ................................. 8
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`Sharpe Alone Or In View Of The Knowledge Of A POSA
`Teaches The “List of Pictured Users” (8[b], 1[m]) ............................. 10
`The Petition Plainly Presents Sharpe As A Single-Reference
`Obviousness Ground ........................................................................... 12
` GROUND 2: SHARPE IN VIEW OF EINTRACHT RENDERS
`OBVIOUS CLAIMS 1-8 ............................................................................... 17
`A. A POSA Would Have Been Motivated To Combine Sharpe
`With Eintracht ..................................................................................... 18
`PO Fails To Address Eintracht’s Disclosure Of The
`Independent Claims ............................................................................. 20
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`D.
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`E.
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`B.
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`C.
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`D.
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`Sharpe In View Of Eintracht Teaches “Coordinates” (Claims 2,
`4) .......................................................................................................... 21
`Sharpe In View Of Eintracht Teaches The Email Notification
`(Claim 5) .............................................................................................. 23
` GROUNDS 3 & 4: SHARPE IN VIEW OF CAREY, AND SHARPE
`IN VIEW OF EINTRACHT AND CAREY RENDERS OBVIOUS
`CLAIM 3 ....................................................................................................... 24
`CONCLUSION .............................................................................................. 24
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` Petitioner’s Reply
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
`Adobe, Inc. v. Realtime Adaptive Streaming LLC,
`No. IPR2019-00712, 2020 WL 4809374 (P.T.A.B. Aug. 17, 2020) .................. 15
`Application of Skoner,
`517 F.2d 947 (C.C.P.A. 1975) ............................................................................ 13
`Arctic Cat Inc. v. Bombardier Recreational Prods. Inc.,
`876 F.3d 1350 (Fed. Cir. 2017) .......................................................................... 14
`B/E Aerospace, Inc. v. C&D Zodiac, Inc.,
`962 F.3d 1373 (Fed. Cir. 2020) ............................................................................ 5
`Beckson Marine, Inc. v. NFM, Inc.,
`292 F.3d 718 (Fed. Cir. 2002) ............................................................................ 19
`Bradium Techs. LLC v. Iancu,
`923 F.3d 1032 (Fed. Cir. 2019) .................................................................... 11, 21
`Dow Jones & Co., Inc. v. Ablaise Ltd.,
`606 F.3d 1338 (Fed. Cir. 2010) ...................................................................... 13, 5
`Elekta Ltd. v. ZAP Surgical Sys., Inc.,
`81 F.4th 1368 (Fed. Cir. 2023) ............................................................... 22, 23, 24
`EWP Corp. v. Reliance Universal Inc.,
`755 F.2d 898 (Fed. Cir. 1985) ............................................................................ 21
`Genentech, Inc. v. Chiron Corp.,
`112 F.3d 495 (Fed. Cir. 1997) .............................................................................. 7
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .......................................................................... 14
`Koninklijke Philips N.V. v. Google LLC,
`948 F.3d 1330 (Fed. Cir. 2020) .......................................................................... 13
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`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .............................................................................................. 3
`M&K Holdings, Inc. v. Samsung Elecs. Co.,
`985 F.3d 1376 (Fed. Cir. 2021) .................................................................... 16, 17
`Maxlite, Inc. v. Jiaxing Super Lighting Elec. Appliance Co., Ltd.,
`No. IPR2020-00208, 2022 WL 1416695 (P.T.A.B. Apr. 29, 2022) ........ 4, 20, 24
`Novartis Pharms. Corp. v. West-Ward Pharms. Int’l Ltd.,
`923 F.3d 1051 (Fed. Cir. 2019) .......................................................................... 22
`Polygroup Ltd. MCO v. Willis Elec. Co., Ltd,
`759 F. App’x 934 (Fed. Cir. 2019) ..................................................................... 15
`Realtime Data, LLC v. Iancu,
`912 F.3d 1368 (Fed. Cir. 2019) .......................................................................... 14
`Smith & Nephew, Inc. v. Ethicon, Inc.,
`276 F.3d 1304 (Fed. Cir. 2001) ............................................................................ 8
`In re Stepan Co.,
`868 F.3d 1342 (Fed Cir. 2017) ..................................................................... 15, 16
`Therasense, Inc. v. Becton, Dickinson & Co.,
`593 F.3d 1325 (Fed. Cir. 2010) .......................................................................... 15
`Ex parte Thomas Lederer,
`No. APPEAL 2012-000270, 2014 WL 4980020 .................................................. 5
`TQ Delta, LLC v. Cisco Sys., Inc.,
`942 F.3d 1352 (Fed. Cir. 2019) ...................................................................... 9, 11
`Other Authorities
`37 C.F.R. § 42.23(b) .................................................................................................. 4
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`Exhibit
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`EXHIBIT LIST
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`Description
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`1015
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`U.S. Patent No. 8,954,432 (“’432 Patent”)
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`Prosecution History of U.S. Patent No. 8,954,432 (“’432 FH”)
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`Declaration of Dr. Benjamin B. Bederson (“Bederson”)
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`Curriculum Vitae of Dr. Benjamin B. Bederson
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`U.S. Patent No. 7,461,099 to Sharpe et al. (“Sharpe”)
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`U.S. Patent No. 6,687,878 to Eintracht et al. (“Eintracht”)
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`U.S. Patent No. 6,714,793 to Carey et al. (“Carey”)
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`Prosecution History of U.S. Patent No. 10,628,480 (“’480 FH”)
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`Excerpt from THE OXFORD AMERICAN DICTIONARY AND LANGUAGE
`GUIDE (1999), at 203 (contact)
`Excerpt from THE AMERICAN HERITAGE DICTIONARY (4th ed. 2001), at
`191 (contact)
`Kuchinsky et al., FotoFile: A Consumer Multimedia Organization and
`Retrieval System, CHI ’99: PROCEEDINGS OF THE SIGCHI
`CONFERENCE ON HUMAN FACTORS IN COMPUTING SYSTEMS, 496-503
`(May 1999) (“FotoFile”)
`Reserved
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`Reserved
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`Reserved
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`Yuichi Yagawa et al., The Digital Album: A Personal File-tainment
`System, PROCEEDINGS OF THE THIRD IEEE INTERNATIONAL
`CONFERENCE ON MULTIMEDIA COMPUTING AND SYSTEMS
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`Exhibit
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`Description
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`1016
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`1017
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`1019
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`1020
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`1021
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`(MULTIMEDIA ’96), June 17-23, 1996, at 433-39
`Ben Shneiderman & Hyunmo Kang, Direct Annotation: A Drag-and-
`Drop Strategy for Labeling Photos, 2000 IEEE INTERNATIONAL
`CONFERENCE ON INFORMATION VISUALIZATION (IV ’00), July 19-21,
`2000
`Benjamin B. Bederson et al., Pad++: A Zoomable Graphical
`Sketchpad For Exploring Alternate Interface Physics, 7 J. OF VISUAL
`LANGUAGES & COMPUTING 3 (1996)
`1018 Mark Roseman & Saul Greenberg, Building Real-Time Groupware
`with GroupKit, a Groupware Toolkit, 3 ACM TRANSACTIONS ON
`COMPUTER-HUMAN INTERACTION 1 (Mar. 1996), at 66-106
`Excerpts from ROB KIRKLAND ET AL., DOMINO SYSTEM
`ADMINISTRATION (1999)
`Excerpts from DOROTHY BURKE & JANE CALABRIA, TEN MINUTE
`GUIDE TO LOTUS NOTES 4.6 (1997)
`Elizabeth F. Churchill, et al., Anchored Conversations: Chatting in the
`Context of a Document, CHI ’00: PROCEEDINGS OF THE SIGCHI
`CONFERENCE ON HUMAN FACTORS IN COMPUTING SYSTEMS, April
`2000, at 454-61
`1022 Mark S. Ackerman & David W. McDonald, Answer Garden 2:
`Merging Organizational Memory with Collaborative Help, CSCW
`’96: PROCEEDINGS OF THE 1996 ACM CONFERENCE ON COMPUTER
`SUPPORTED COOPERATIVE WORK, Nov. 1996, at 97-105
`U.S. Patent No. 6,175,831 to Weinreich, et al.
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`1023
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`1024
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`1025
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`1026
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`Excerpts from C.J. DATE, AN INTRODUCTION TO DATABASE SYSTEMS
`(6th ed. 1995)
`Excerpts from RANDY JAY YARGER ET AL., MYSQL & MSQL (1st ed.
`1999)
`Ulla Merz & Roger King, DIRECT: A Query Facility for Multiple
`Databases, 12 ACM TRANSACTIONS ON INFORMATION SYSTEMS 4
`(Oct. 1994), at 339-59
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`Exhibit
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`Description
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`1027
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`1028
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`1029
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`1030
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`1031
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`1032
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`1033
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`1034
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`1035
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`1036
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`1037
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`1038
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`1039
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`1040
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`1041
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`1042
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`Excerpts from CHARLES DYE, ORACLE DISTRIBUTED SYSTEMS (1999)
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`Reserved
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`Reserved
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`Reserved
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`Reserved
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`Reserved
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`Reserved
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`Reserved
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`Reserved
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`Board correspondence with Petitioner dated Feb. 24, 2023
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`Declaration of Eric E. Lancaster in support of Petitioner’s motion for
`pro hac vice admission dated June 14, 2023
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`Declaration of Sara L. Townsend in support of Petitioner’s motion
`for pro hac vice admission dated June 14, 2023
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`Declaration of Dr. Benjamin B. Bederson in Support of Petitioner’s
`Reply (“Bederson Reply”)
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`Deposition transcript of Dr. Eli Saber dated Oct. 20, 2023 (Vol. I)
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`Reserved
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`Gilles Falquet, et al., Generating Hypertext Views on Databases,
`ACTES DU XIVÈME CONGRÈS INFORSID 269, 269-84 (1996)
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`1043
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`Excerpts from APPLE COMPUTER, INC., MACINTOSH HUMAN
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`INTERFACE GUIDELINES (1992)
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`1044
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`1045
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`Excerpts from MICROSOFT PROFESSIONAL REFERENCE, THE
`WINDOWS INTERFACE GUIDELINES FOR SOFTWARE DESIGN (1995)
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`Beverly L. Harrison & Kim J. Vicente, An Experimental Evaluation
`of Transparent Menu Usage, CHI ’96: PROCEEDINGS OF THE SIGCHI
`CONFERENCE ON HUMAN FACTORS IN COMPUTING SYSTEMS, April
`2000, at 391-398
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`Petitioner’s Reply
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`INTRODUCTION
`The Petition established that the claims of the ’432 Patent would have been
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`obvious over Sharpe alone or in view of Eintracht and/or Carey. PO cannot establish
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`otherwise. Indeed, PO does not even dispute that the asserted prior art discloses the
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`purported point of novelty that the Applicant belatedly inserted, at the Examiner’s
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`suggestion, after over a decade of prosecution—i.e., the claimed three separate and
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`distinct databases. PO also no longer attempts to swear behind the asserted prior art,
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`abandoning the failed position it took in its Preliminary Response.
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`Instead, PO now resorts to a patchwork of mischaracterizations of fact and
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`misstatements of law to argue that the asserted prior art does not disclose various
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`non-novel claim limitations. None of its arguments have merit. PO’s last-ditch
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`arguments fail to properly consider the asserted prior art references for all that they
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`teach, and would improperly reduce the POSA to a robotic automaton devoid of any
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`common sense. The Board should reject PO’s arguments and find all challenged
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`claims unpatentable.
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` GROUND 1: SHARPE ALONE OR IN VIEW OF THE KNOWLEDGE
`OF A POSA RENDERS OBVIOUS CLAIMS 1, 3, 6-8
`For Ground 1, PO’s Response relies on mischaracterizations of Petitioner’s
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`arguments and the asserted references. POR 18-45. PO also disputes the Petition’s
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`identification of Sharpe as a single-reference obviousness ground. Id., 46-51. As
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`explained below, none of PO’s arguments have merit.
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`Petitioner’s Reply
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`A.
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`Sharpe Alone Or In View Of The Knowledge Of A POSA Teaches
`The “User Unique Identifier” (6[e], 7[a])
`Sharpe teaches the claimed user unique identifier through its username.
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`Pet. 29-32. As explained in the Petition, a POSA would have understood that
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`Sharpe’s database system uses a primary key to uniquely identify users in its
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`database, and a POSA would have recognized Sharpe’s username as “the most
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`obvious design choice” for implementing the primary key in view of Sharpe’s
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`disclosures. Id.
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`In response, PO attacks a straw man. See POR 18-24. According to PO,
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`Petitioner has presented an inherency argument that must fail because there are other
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`ways for a POSA to implement a primary key in Sharpe. See, e.g., id., 20
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`(“Petitioner’s argument is flawed because the mere fact that the user name might be
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`used in the manner described in the Petition is insufficient for demonstrating
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`inherency.” (first emphasis original)).1
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`PO’s straw-man inherency argument rests on a mischaracterization of the
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`Petition, which never argues that Sharpe’s system must use the username as unique
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`user identifier. See, e.g., Saber ¶80 (“It appears that Petitioner and Dr. Bederson are
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`saying that Sharpe’s system must use the user name … as a unique identifier or
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`‘primary key.’”). Rather, the Petition establishes that the username would have been
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`1 All emphasis added unless otherwise indicated.
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`2
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`an obvious design choice for a primary key in view of Sharpe’s teachings and the
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`knowledge of a POSA. See, e.g., Pet. 24-25, 31-32.
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`As Dr. Bederson explained, a username is not the only possible choice, but
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`the most obvious design choice in view of Sharpe’s teachings. For example,
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`Dr. Bederson opined that “a POSA would have further understood that a username
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`is one such unique identifier.” EX1003 ¶307. He explained that “[u]sernames are
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`often used as primary keys in database schemas, and the most obvious design choice
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`for the Sharpe system given that each user already required a username to log on to
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`the system.” Id.; see also Bederson Reply ¶¶7-9.
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`PO and its expert appear to agree that a username is one of several potential
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`user unique identifiers available to a POSA to implement Sharpe’s databases.2 For
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`example, Dr. Saber does not dispute that a username can be a primary key. Instead,
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`he opines that the username does not “need” to be the primary key, and that there
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`are several other ways to keep track of users, such as assigning an internal unique
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`identifier to each user. See Saber ¶¶80-81. Similarly, PO focuses its argument on
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`“another possible way” to implement Sharpe’s system beyond the username.
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`POR 20-21. Thus, there appears to be no genuine dispute that a POSA would have
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`2 It was known in the art to utilize usernames as primary keys in database schemas.
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`Bederson ¶307; Bederson Reply ¶10 (citing EX1042).
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`3
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`understood Sharpe’s username to be an available design option for implementing
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`Petitioner’s Reply
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`Sharpe’s databases. Accordingly, there is no genuine dispute that this limitation
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`would have been obvious in view of Sharpe’s teachings.3
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`B.
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`Sharpe Alone Or In View Of The Knowledge Of A POSA Teaches
`A “Second Tagging User” (7[a], 7[b], 1[h])
`As established in the Petition, it would have been obvious to implement the
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`claimed tagging features for a second user in view of Sharpe’s disclosure of a
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`collaborative, multi-user system. Pet. 38-39, 55. PO asserts that the Petition is
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`“deficient” because it fails to address “additional features not claimed by
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`limitation 6[e]”—yet PO does not expressly identify the purported “additional
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`features.” See POR 24-27, 43-44 (addressing 1[h]).
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`PO appears to rely on the fact that claims 1 and 7 require the identification of
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`an additional pictured user in the same image by a second user. See POR 25, 44.
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`But the Petition squarely addressed that requirement. E.g., Pet. 38 (“Accordingly, a
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`3 Even if Sharpe did not teach the “user unique identifier,” Eintracht discloses it.
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`Pet. 63-64, 68. PO failed to respond to that analysis and has waived any rebuttal.
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`Maxlite, Inc. v. Jiaxing Super Lighting Elec. Appliance Co., No. IPR2020-00208,
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`2022 WL 1416695, at *12 n.6 (P.T.A.B. Apr. 29, 2022) (“It is a long-standing
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`practice in IPR proceedings that arguments not raised in the Patent Owner Response
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`are waived.”) (citing 37 C.F.R. § 42.23(b)).
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`4
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`POSA would have understood that a second user could also identify additional users
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`Petitioner’s Reply
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`in an image as part of the associated index information used for archival and
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`retrieval of images in Sharpe’s system, as discussed for 6[e].”). PO’s position,
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`furthermore, is at odds with its own prior statements. For example, PO argued in its
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`Preliminary Response that claim 7 is “patentable for the same reasons” as claim 6
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`without further elaboration. POPR 30.
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`At bottom, Ground 1 is based on obviousness, and it was well within the skill
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`of a POSA to implement the features of 6[e], 6[f], and 1[d] for a second user. That
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`is, it would have been obvious to apply a predictable sequence of nearly identical
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`software operations to the same image for second user. See Pet. 38-39, 55; see also,
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`e.g., B/E Aerospace, Inc. v. C&D Zodiac, Inc., 962 F.3d 1373, 1379 (Fed. Cir. 2020)
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`(modifying prior art combination to include second recess was obvious because it
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`was “nothing more than the predictable application of known technology”); Ex parte
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`Thomas Lederer, 2014 WL 4980020, at *3 (P.T.A.B. Sept. 25, 2014) (agreeing that
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`“it would have been obvious to one of ordinary skill in the art to simply repeat the
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`search function … a second time”).4
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`4 Even if Sharpe did not teach the “second tagging user,” Eintracht discloses it.
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`Pet. 70. PO failed to address that analysis and has waived any rebuttal.
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`5
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`Petitioner’s Reply
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`C.
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`Sharpe Alone Or In View Of The Knowledge Of A POSA Teaches
`Requests For Image Data (8[a], 1[d], 1[e], 1[h], 1[i])
`Sharpe alone or in view of the knowledge of a POSA teaches the “requests”
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`for image data recited in claims 1 and 8. Pet. 39-40, 44-53, 55. As explained below,
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`PO’s contentions otherwise are premised on a misinterpretation of the claim
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`language. See POR 28-32, 36-42, 45. Even under PO’s incorrect interpretation of
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`the claims, the recited “requests” are taught by the prior art. PO’s remaining
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`arguments lack merit.
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`PO Misinterprets the Claim Language
`PO asserts that Sharpe fails to disclose the claimed requests for image data
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`because Sharpe’s image retrieval is not limited to a “specific” or “particular” image.
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`E.g., POR 31-32. According to PO, Sharpe “finds any and all images matching the
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`parameters inputted by the user.” Id., 28. Because “multiple images may turn up …
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`Sharpe does not disclose ‘receiving a request for said image data.’” Id., 32 (second
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`emphasis original). PO repeats variations of this argument throughout its Response.
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`See, e.g., POR 36-42, 45.
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`PO’s argument is premised on a misinterpretation of the claim language. “A
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`request for said image data” does not require the claimed request to be limited to a
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`specific or particular image. Rather, “a request for said image data” merely requires
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`that the request include the image data that was recited earlier in the claim—i.e., the
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`one or more images in which one or more users were tagged. Bederson Reply ¶¶13-
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`Petitioner’s Reply
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`16.
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`As an initial matter, the term “image data” is plural and can include multiple
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`images, based on both plain English and the disclosure of the ’432 Patent itself. See,
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`e.g., EX1001, 7:8-10 (“Images database 250 receives and stores information about
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`photos (e.g., image data) uploaded or otherwise made accessible to the network by
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`users.”). Even if “image data” were limited to a single image, the claims of the
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`’432 Patent are open-ended “comprising” claims that are not limited to the recited
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`elements. Instead, “other elements may be added and still form a construct within
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`the scope of the claim.” Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed.
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`Cir. 1997).
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`Importantly, PO’s interpretation would exclude the preferred embodiment
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`disclosed in the ’432 Patent, in which multiple images are returned in response to a
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`request. For example, in Figure 10 at step 1000, the “client sends a request for
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`images (or a list of images) wherein a specified user, or several users, have been
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`identified.” EX1001, 15:46-56, Fig. 10. The ’432 Patent explains that—just as in
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`Sharpe—a user may search for several tagged users simultaneously, and the results
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`may include multiple images with varying numbers of tagged users. See id., 15:56-
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`16:4. Accordingly, the Board should reject PO’s incorrect interpretation. See Smith
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`& Nephew, Inc. v. Ethicon, Inc., 276 F.3d 1304, 1309-10 (Fed. Cir. 2001) (“A claim
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`7
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`interpretation that would exclude the reasonable practice of the method taught in the
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`Petitioner’s Reply
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`patent ‘is rarely the correct interpretation.’”)
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`Even Under PO’s Incorrect Interpretation, the Prior Art
`Discloses the Limitation
`Even under PO’s improper narrowing interpretation, the claimed requests are
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`disclosed by the prior art. For example, Sharpe also explains that the user can use
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`multiple parameters to narrowly focus a search to “reveal[] a smaller number of
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`items.” EX1005, 3:29-44. Indeed, Sharpe explains that its system can be used to
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`retrieve a “specific photograph” by “searching on the event or the person.” Id., 2:21-
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`24. Thus, a POSA would understand that Sharpe teaches a request for a single,
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`specific image via its narrowly focused search that returns a single result. Bederson
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`Reply ¶¶17-18.5
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`PO’s Remaining Arguments are Meritless
`PO tacks on two meritless arguments. PO asserts that Sharpe fails to disclose
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`that “said request” contains “said image identification,” and that the “said request”
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`also lacks “the user identification of said first tagging user.” POR 40-41.
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`Regarding the request including “said image identification,” the Petition
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`establishes that a POSA would understand that Sharpe’s trail request includes an
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`5 Eintracht also discloses the limitation under PO’s improper narrowing
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`interpretation, as explained below. See infra, 20-21.
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`image identifier—as PO acknowledges. Id. (citing Pet. 49-50). PO responds in
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`Petitioner’s Reply
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`conclusory fashion that “a request to retrieve a trail” is not “a request to identify
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`users.” Id., 41. Neither PO nor its expert explain why Sharpe’s trail request is
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`somehow distinct from a request to identify users. PO’s expert only offers the same
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`conclusory statement verbatim, with no further explanation. Saber ¶100. PO’s
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`argument is unsupported by any evidence and thus entitled to no weight. TQ Delta,
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`LLC v. Cisco Sys., Inc., 942 F.3d 1352, 1358-59 (Fed. Cir. 2019).
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`In any event, PO’s first argument is meritless. Sharpe’s trail request is a
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`“request to identify users” because the user can continue to tag additional individuals
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`after retrieving the photos of a trail. Bederson Reply ¶¶19-20. As explained in the
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`Petition, Sharpe uses the same UI (Figure 4) for both retrieval and archival. Id.; see
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`also Pet. 39-42, 44-51. A user of Sharpe’s system first retrieves images into the
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`work space 51 of Figure 4 in order to tag and archive those images. Bederson Reply
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`¶20. Sharpe explains that trail items are identified and displayed as part of Sharpe’s
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`retrieval process. EX1005, 9:20-27, Fig. 7 (steps 93-94). Thus, a POSA would have
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`understood that, following the retrieval of a trail, the photos of a trail are available
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`for additional tagging using the archival controls of Figure 4. Bederson Reply ¶20.
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`Regarding the request including “the user identification,” a POSA would have
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`understood that Sharpe’s request includes a username to identify the requesting user
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`and retrieve images corresponding to the user’s group. Pet. 49. PO acknowledges
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`that Sharpe includes usernames for that purpose, but then asserts that Sharpe’s drop-
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`Petitioner’s Reply
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`down box 55 of Figure 4 includes personal names, not usernames. POR 41. The
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`relevance of PO’s argument is unclear, but in any event, PO appears to be improperly
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`importing limitations into its claims. Claim 1[d] only requires that the request
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`include the user identification of the first tagging user. Claim 1[d] does not include
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`any requirements for the UI used to form the request, so PO’s argument should be
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`rejected. See Bederson Reply ¶¶21-22.
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`D.
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`Sharpe Alone Or In View Of The Knowledge Of A POSA Teaches
`The “List of Pictured Users” (8[b], 1[m])
`Sharpe alone or in view of the knowledge of a POSA teaches the claimed “list
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`of pictured users” of claims 1 and 8. Pet. 40-42, 58. In particular, the Petition
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`explains how a POSA would understand that Sharpe updates the drop-down box 55
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`of Figure 4 to identify the pictured users as various images are retrieved by a viewing
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`user, including as part of a nostalgic retrieval. Id.
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`In response, PO and its expert offer little more than “not so.” POR 32-36, 45.
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`PO insists that the “drop down list is not a list of people pictured in the image; rather,
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`it is a list of people in the group.” Id., 34. PO explains that “[t]he group members
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`in the drop down list depicted in Figure 4 of Sharpe would be the same regardless of
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`which media item was being shown.” Id., 33. PO provides no evidence in support
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`of its false choice other than the declaration of its expert, who repeats the statements
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`nearly verbatim. Saber ¶94. This conclusory testimony is not entitled to any weight.
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`Petitioner’s Reply
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`TQ Delta, 942 F.3d at 1358-59.
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`To the extent that PO contends that Sharpe’s Figure 4 does not expressly show
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`the list of pictured users, PO fails to appreciate Sharpe “not only for what it expressly
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`teaches, but also for what it fairly suggests.” Bradium Techs. LLC v. Iancu, 923 F.3d
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`1032, 1049 (Fed. Cir. 2019). As Dr. Bederson testified, a POSA would have
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`understood
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`that Sharpe’s figures are simplified
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`illustrations
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`that do not
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`comprehensively disclose all capabilities of Sharpe’s graphical user interface.
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`EX2019, 44:14-45:13; see also EX1005, 7:3-6, 9:4-10 (describing UI elements not
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`shown in Fig. 4); Bederson Reply ¶25. For all the reasons set forth in the Petition,
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`a POSA would have understood that Sharpe’s UI would update during repeated
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`searches to show the currently tagged users. Pet. 40-42, 58. PO has offered no
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`evidence suggesting otherwise.
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`To the extent that PO argues that Sharpe’s drop-down box 55 cannot be both
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`a list of people pictured in an image and a list of people in the group, PO is mistaken.
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`Drop-down boxes that displayed a full set of options (e.g., all users in a group) along
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`with a selected subset of options (e.g., tagged users from that group) were known in
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`the art. Bederson Reply ¶¶26-30. For example, by the early 1990s, Apple systems
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`included drop-down menus that would place a checkmark next to menu items that
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`were currently selected, as illustrated below:
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`Petitioner’s Reply
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`Id. (citing EX1043). Thus, showing a list of pictured users using Sharpe’s drop-
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`down box 55 would have been a simple matter of design choice to a POSA
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`implementing Sharpe’s system. Id. To the extent PO argues otherwise, the Board
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`should reject PO’s unsupported argument.6
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`E.
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`The Petition Plainly Presents Sharpe As A Single-Reference
`Obviousness Ground
`PO feigns ignorance as to whether Ground 1 is an anticipation or obviousness
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`ground. POR 46-51. This argument strains credulity. The Petition plainly and
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`repeatedly presents Ground 1 as a single-reference obviousness ground: Sharpe
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`alone or in view of the knowledge of a POSA. See, e.g., Pet. 5 (identification of
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`challenges), 22 (section heading); see also Bederson ¶¶3, 139. Similar single-
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`reference obviousness challenges have been repeatedly affirmed by the Federal
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`6 Even if Sharpe did not teach the list of pictured users, Eintracht discloses it.
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`Pet. 71. PO failed to address that analysis and has waived any rebuttal.
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`Circuit. See, e.g., Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330, 1338-39
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`Petitioner’s Reply
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`(Fed. Cir. 2020); Dow Jones & Co., Inc. v. Ablaise Ltd., 606 F.3d 1338, 1351-52
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`(Fed. Cir. 2010).
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`PO’s argument is belied by the proceedings in this action. PO was able to
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`identify Ground 1 as an obviousness ground in its Preliminary Response. See, e.g.,
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`POPR 35 (“[T]he Board should deny the proposed obviousness combinations in
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`Grounds I-IV.”). The Board identified Ground 1 as an obviousness ground in the
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`Institution Decision, and proceeded to analyze the obviousness of claim 6 in view of
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`Sharpe alone. ID 7, 24-27. PO’s expert also recognized Ground 1 as an obviousness
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`ground. EX1040, 7:14-8:3.
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`PO faults the Petition’s use of the term “discloses” as too potent for an
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`obviousness ground, POR 47, but disclosure is the “ultimate or epitome of
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`obviousness.” Application of Skoner, 517 F.2d 947, 950 (C.C.P.A. 1975). PO also
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`contends that the Petition does not set forth any “obviousness modification” to
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`Sharpe, POR 47, but the Petition repeatedly describes the knowledge and skills that
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`a POSA would have applied to implement Sharpe—including the implementation of
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`the primary key and graphical user interface elements that PO disputes in its
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`Response. See, e.g., Pet. 31-32, 45-51.
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`PO further asserts that the Petition failed to address reasonable expectation of
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`success for Ground 1. POR 47. As an initial matter, “[t]he reasonable expectation
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`of success requirement refers to the likelihood of success in combining references
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`Petitioner’s Reply
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`to meet the limitations of the claimed invention.” Intelligent Bio-Sys., Inc. v.
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`Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016). There must first be
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`a proposed combination before there can be a reasonable expectation of success in
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`making the combination. See Arctic Cat Inc. v. Bombardier Recreational Prods.
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`Inc., 876 F.3d 1350, 1360-61 (Fed. Cir. 2017) (“[W]here a party argues a skilled
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`artisan would have been motivated to combine references, it must show the artisan
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`would have had a reasonable expectation of success from doing so.”). There is no
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`combination at issue for Ground 1, so there is no reasonable expectation of success
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`requirement for Ground 1.
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`In that sense, this case is on all fours with Realtime v. Iancu, where the petition
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`argued that certain claims were obvious based on a single reference (i.e., Sharpe
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`alone), with a combination (i.e., Sharpe in view of Eintracht) supporting the
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`obviousness of those claims in the alternative. Realtime Data, LLC v. Iancu,
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`912 F.3d 1368, 1372-73 (Fed. Cir. 2019). The Federal Ci
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