`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––
`
`META PLATFORMS, INC.,
`Petitioner,
`
`v.
`
`ANGEL TECHNOLOGIES LLC,
`Patent Owner.
`
`––––––––––
`
`Case IPR2023-00057
`U.S. Patent 8,954,432
`––––––––––
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`
`I. 
`II. 
`
`INTRODUCTION ........................................................................................... 1 
`PETITIONER IMPROPERLY INTRODUCES NEW ARGUMENTS
`IN ITS REPLY ................................................................................................ 1 
`III.  THE CITED REFERENCES DO NOT RENDER CLAIMS 1-8
`UNPATENTABLE .......................................................................................... 4 
`A.  Ground 1 ................................................................................................ 4 
`1. 
`Sharpe Does Not Disclose or Suggest Limitations 6[e] or
`7[a] .............................................................................................. 4 
`Sharpe Does Not Disclose or Suggest Limitations 7[a],
`7[b], or 1[h] ................................................................................. 6 
`Sharpe Does Not Disclose or Suggest Limitations 8[a],
`1[d], 1[e], 1[h], or 1[i] ................................................................. 7 
`Sharpe Does Not Disclose or Suggest Limitations 8[b] or
`1[m] ........................................................................................... 10 
`The Petition Does Not Plainly Present Sharpe As A
`Single-Reference Obviousness Ground .................................... 12 
`Ground 2 .............................................................................................. 14 
`1. 
`Petitioner Has Failed to Establish that a POSITA Would
`Have Been Motivated to Modify or Combine the Cited
`References to Arrive at the Claimed Invention ........................ 14 
`The Petition Fails to Explain How the Combination of
`Sharpe and Eintracht Would Operate and Have a
`Reasonable Expectation of Success .......................................... 15 
`Independent Claim 1 ................................................................. 18 
`3. 
`Claims and 2 and 4 .................................................................... 19 
`4. 
`Claim 5 ...................................................................................... 19 
`5. 
`Ground 3 .............................................................................................. 21 
`C. 
`D.  Ground 4 .............................................................................................. 22 
`IV.  CONCLUSION .............................................................................................. 22 
`
`
`B. 
`
`2. 
`
`3. 
`
`4. 
`
`5. 
`
`2. 
`
`i
`
`

`

`TABLE OF AUTHORITIES
`
`
`
` Page(s)
`
`Cases
`Allsteel Inc. v. Dirtt Environmental Solutions LTD.,
`IPR2015-01691, Paper 61 (PTAB April 22, 2019) .......................................... 2, 3
`Apple Inc. v. Yu,
`IPR2019-01258, Paper 29 (PTAB Jan. 5, 2021) ................................................ 12
`Application of Skoner,
`517 F.2d 947 (C.C.P.A. 1975) ............................................................................ 13
`ATD Corp. v. Lydall, Inc.,
`159 F.3d 534 (Fed. Cir. 1998) ............................................................................ 17
`Beckson Marine, Inc. v. NFM, Inc.,
`292 F.3d 718 (Fed. Cir. 2002) ............................................................................ 17
`Cohesive Techs., Inc. v. Waters Corp.,
`543 F.3d 1351 (Fed. Cir. 2008) .......................................................................... 13
`Crown Operations Int’l, Ltd. v. Solutia, Inc.,
`289 F.3d 1367 (Fed. Cir. 2002) .......................................................................... 17
`Fisher & Paykel Healthcare Ltd. V. ResMed R&D Ger. GmbH,
`IPR2017-00272, Paper 41 (PTAB Sept. 6, 2018) ............................................... 15
`Google LLC v. Ecofactor, Inc,
`No. IPR2021-00054, Paper 35 (PTAB April 18, 2022) ..................................... 11
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ................................................................................................ 12
`Group III Int’l, Inc. v. Targus Int’l LLC,
`IPR2021-00371, Paper 43 (Oct. 21, 2021) ........................................................... 6
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) ................................................................ 1, 10, 21
`Koninklijke Philips N.V. v. Google LLC,
`948 F.3d 1330 (Fed. Cir. 2020) .................................................................... 13, 14
`
`ii
`
`

`

`
`
`Kranos Corp. v. Riddell, Inc.,
`IPR2016-01646, Paper 10 (PTAB Feb. 14, 2017) .............................................. 12
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 12
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ............................................................................ 1
`PAR Pharm., Inc. v. TWI Pharms., Inc.,
`773 F.3d 1186 (Fed. Cir. 2014) ............................................................................ 5
`SAS Inst. Inc. v. Iancu,
`138 S. Ct. 1348 (2018) ........................................................................................ 13
`Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc.,
`853 F.3d 1272 (Fed. Cir. 2017) ........................................................................ 2, 3
`Yamaha Golf Car Co. v. Club Car, LLC,
`2019 WL 1473077 (PTAB Apr. 2, 2019) ............................................................. 3
`Statutes
`35 U.S.C. §312(a) ...................................................................................................... 1
`35 U.S.C. § 312(a)(3) (2012) ................................................................................... 21
`Other Authorities
`37 C.F.R. § 42.65(a) ................................................................................................. 11
`37 C.F.R. § 42.104(b)(4)–(5) (2012) ....................................................................... 21
`Consolidated Trial Practice Guide 73 (Nov. 2019) ................................................... 3
`
`iii
`
`

`

`
`
`PATENT OWNER’S EXHIBIT LIST
`
`2001 Eliza Beeney Biography (previously submitted)
`2002 Declaration of Eliza Beeney in Support of Motion for Pro Hac Vice
`(previously submitted)
`2003 Kaylee Hoffner Biography (previously submitted)
`2004 Declaration of Kaylee Hoffner in Support of Motion for Pro Hac Vice
`(previously submitted)
`2005 Declaration of Mark Frigon Under 37 C.F.R. § 1.131 (previously
`submitted)
`Pict_inpt (previously submitted)
`2006
`Picture.mbd (previously submitted)
`2007
`Pict_upd (previously submitted)
`2008
`Picture.asp (previously submitted)
`2009
`2010 Links.asp (previously submitted)
`2011 Ex0006.log (previously submitted)
`2012 Messages_post (previously submitted)
`2013 Ex0007.log (previously submitted)
`2014 American Express Statement (previously submitted)
`2015 Emails (users populating profiles) (previously submitted)
`2016 Declaration of Chris Malone Under 37 C.F.R. § 1.131 (previously
`submitted)
`Provisional File History Regarding Application 60/248994 of
`November 15, 2000 (previously submitted)
`2018 Declaration of Lisa Larson Under 37 C.F.R. § 1.131 (previously
`submitted)
`
`2017
`
`iv
`
`

`

`
`
`2019 Deposition transcript of Dr. Benjamin Bederson dated July 20, 2023 in
`IPR2023-00056, 00058 and 00059 (previously submitted)
`2020 RESERVED
`2021 Declaration of Dr. Eli Saber (previously submitted)
`
`
`
`
`v
`
`

`

`Case IPR2023-00057
`U.S. Patent No. 8,954,432
`
`I.
`
`INTRODUCTION
`Petitioner’s Reply (Paper 29) rests on inaccurate statements. Petitioner has
`
`the burden to prove unpatentability of the instituted claims by a preponderance of
`
`the evidence, and has failed to do so. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
`
`1364, 1375 (Fed. Cir. 2016). As put forth in Patent Owner’s Response (“Response”
`
`or “POR,” Paper 24), and in more detail below, Petitioner has not established that
`
`the cited prior art references disclose or suggest all of the limitations of the
`
`Challenged Claims (claims 1-8). Further, Petitioner has not established motivation
`
`to combine Sharpe and Eintracht to arrive at the Challenged Claims, even if they
`
`were combined. As a result, the Board should confirm the patentability of the
`
`Challenged Claims.
`
`II.
`
`PETITIONER IMPROPERLY INTRODUCES NEW ARGUMENTS
`IN ITS REPLY
`Unable to find support in its Petition to support its Reply, Petitioner
`
`improperly adds new arguments to its proposed obviousness combinations for the
`
`first time in its Reply and via a reply declaration (Ex. 1039, “Bederson Reply
`
`Declaration”) from its expert, Dr. Bederson. “It is of the utmost importance that
`
`petitioners in the IPR proceedings adhere to the requirement that the initial petition
`
`identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge
`
`to each claim.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359,
`
`1369 (Fed. Cir. 2016) (citing 35 U.S.C. §312(a)). Namely, once a petition is
`
`1
`
`

`

`Case IPR2023-00057
`U.S. Patent No. 8,954,432
`instituted, the challenges set forth in the petition are crystallized, and the scope of a
`
`petitioner’s argument thereafter is expressly limited to “explaining how its original
`
`petition was correct.” Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272,
`
`1286 (Fed. Cir. 2017). Thus, for these same reasons, a petitioner on reply “may not
`
`submit any new evidence, issues, or argument that it could have presented earlier,
`
`e.g. to make out a prima facie case of unpatentability.” Allsteel Inc. v. Dirtt
`
`Environmental Solutions LTD., IPR2015-01691, *2 (PTAB April 22, 2019) (“It
`
`would not be appropriate for Petitioner to fill in the gaps of the Petition by showing,
`
`for the very first time, how the prior art of record describes a claim element that was
`
`not accounted for previously.”).
`
`Yet that is precisely what Petitioner does here. Petitioner argues in its Reply
`
`that a username would have been “the most obvious design choice for the Sharpe
`
`system.” Reply, 3 (citing Bederson Reply Declaration ¶¶7-9). But, in its Petition,
`
`Petitioner did not meaningfully argue obviousness (other than cursory mention of
`
`the word “obvious”) regarding using Sharpe’s username. Petition, 32. Petitioner
`
`did not state that the username is being implemented in a proposed modification of
`
`Sharpe’s system. Therefore, Petitioner failed to address any specific gap in the
`
`Sharpe’s disclosure with respect to the claim language. If Petitioner wanted to argue
`
`obviousness regarding the username, it should have done so in the Petition at the
`
`requisite level of detail, e.g., including discussion of what aspect of the claim
`
`2
`
`

`

`Case IPR2023-00057
`U.S. Patent No. 8,954,432
`language is missing from the primary reference, rationale for modifying the primary
`
`reference, etc.
`
`Petitioner introduces new evidence and tees up a new argument, including by
`
`adding a new image and, for the first time, citations to Sharpe for retrieving a specific
`
`photograph not presented in the Petition. Reply, 8. According to the Board’s rules,
`
`a petitioner “may not submit new evidence or argument in reply that it could have
`
`presented earlier, e.g. to make out a prima facie case of unpatentability.”
`
`Consolidated Trial Practice Guide 73 (Nov. 2019). If Petitioner wanted to argue
`
`that Sharpe disclosed retrieving “said image” as required by the claims, this
`
`argument should have been presented in the Petition. It is not reasonable to say that
`
`it was not foreseeable that Patent Owner would raise this issue in the Response, when
`
`it’s a clear mapping to the claim limitation.
`
`Petitioner cannot use its Reply to belatedly “craft a new obviousness challenge
`
`by piggybacking on the one that was clearly wanting.” Yamaha Golf Car Co. v.
`
`Club Car, LLC, 2019 WL 1473077, at *13 (PTAB Apr. 2, 2019). Nor is it
`
`permissible for Petitioner to retroactively “fill in the gaps of the Petition by showing,
`
`for the very first time, how the prior art of record describes a claim element that was
`
`not accounted for previously.” Allsteel Inc. v. Dirtt Environmental Solutions Ltd.,
`
`IPR2015-01691, Paper 61 at 3-4 (PTAB April 22, 2019). “Shifting arguments in this
`
`fashion is foreclosed by statute, our precedent, and Board guidelines.” Wasica Fin.
`
`3
`
`

`

`Case IPR2023-00057
`U.S. Patent No. 8,954,432
`GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1286–87 (Fed. Cir. 2017).
`
`Accordingly, for the new allegations mentioned above in Petitioner’s Reply not
`
`found in the original Petition, these arguments must be excluded.
`
`III. THE CITED REFERENCES DO NOT RENDER CLAIMS 1-8
`UNPATENTABLE
`A. Ground 1
`Sharpe Does Not Disclose or Suggest Limitations 6[e] or 7[a]
`Despite the Petition specifically asserting that “a POSA would have
`
`1.
`
`understood that Sharpe’s system allows a user to identify a user in an image
`
`(obtaining identification data from a first tagging user of said computer network) to
`
`create an association including the item identifier and a unique identifier of the
`
`selected user (i.e., their username),” (Petition, 37), Petitioner now attempts to assert
`
`in its Reply that the Petition never argues that Sharpe’s system must use the
`
`username as a unique identifier. Reply, 2-3. However, Petitioner’s repeated reliance
`
`on what a POSITA would have understood implies just that.
`
`As explained in the POR, because Sharpe does not explicitly disclose
`
`obtaining identification data comprising a unique image identifier and a pictured
`
`user unique identifier of a user in an image, Petitioner resorts to arguments about
`
`what a POSITA would have understood about Sharpe’s disclosure. Response, 19-
`
`20. Despite the fact that the Petition doesn’t use the word “must,” Petitioner’s
`
`argument as set forth in the Petition is clearly an inherency argument—e.g.,
`
`4
`
`

`

`Case IPR2023-00057
`U.S. Patent No. 8,954,432
`“Sharpe’s system would use an identifier or ‘primary key’ that is unique,” “Sharpe’s
`
`system would have used a person’s username as the unique identifier,” “Sharpe’s
`
`user name would be a primary key.” Petition, 31 (emphasis added). Far from
`
`relying on any actual prior art disclosures, Petitioner’s reliance on what a POSITA
`
`would have understood without further analysis is insufficient. PAR Pharm., Inc. v.
`
`TWI Pharms., Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014) (“the use of inherency, a
`
`doctrine originally rooted in anticipation, must be carefully circumscribed in the
`
`context of obviousness.”).
`
`The Petition makes clear what a POSITA would have allegedly understood
`
`Sharpe to disclose, while ignoring the fact that the user name does not need to be the
`
`primary key. As discussed in the POR, Petitioner presented a thinly disguised
`
`inherency argument, and now attempts to back it up with support from its expert’s
`
`newly submitted reply declaration. The Reply states that “there is no genuine dispute
`
`that a POSA would have understood Sharpe’s username to be an available design
`
`option.” Reply, 3-4. Petitioner is mischaracterizing and deviating from its argument
`
`initially presented in the Petition. The Petition did not assert that the username may
`
`have been used as the primary key, but that it would have been so. The Petition first
`
`states that Sharpe discloses this limitation and then vaguely mentions “the most
`
`obvious design choice” without presenting sufficient obviousness rationale/analysis.
`
`5
`
`

`

`Case IPR2023-00057
`U.S. Patent No. 8,954,432
`Petition, 31. This quotation from the Petition is the only reference to the word
`
`“obvious” with regard to limitation 6[e].
`
`Further, Petitioner attempts to say that “Dr. Bederson opined that “a POSA
`
`would have further understood that a username is one such unique identifier.” Reply,
`
`3. However, to the extent Petitioner contends that discussion included in Dr.
`
`Bederon's declaration is the requisite obviousness analysis, it cannot be incorporated
`
`by reference into the Petition. Group III Int’l, Inc. v. Targus Int’l LLC, IPR2021-
`
`00371, Paper 43 (Oct. 21, 2021). It remains that Petition merely said this was
`
`obvious without any supporting analysis.
`
`If Petitioner had wanted to say that it would have been obvious to modify
`
`Sharpe’s system to use the username as a primary key, Petitioner should have
`
`presented this analysis in its Petition. PO explained why a POSITA would not have
`
`necessarily understood Sharpe’s user name to be a primary key in the database based
`
`on Sharpe’s singular reference to the term “user name,” a reference not made in the
`
`context of a “primary key.” Response, 18-23. PO further explained that any
`
`obviousness analysis on this issue was insufficient (Response, 18-23).
`
`2.
`
`Sharpe Does Not Disclose or Suggest Limitations 7[a], 7[b],
`or 1[h]
`Petitioner fails to establish that Sharpe discloses or suggests limitations 7[a],
`
`7[b] or 1[h] with respect to a “second tagging user.” In its Reply, Petitioner points
`
`to case law addressing that “it would have been obvious to implement the claimed
`
`6
`
`

`

`Case IPR2023-00057
`U.S. Patent No. 8,954,432
`tagging features for a second user.” Reply, 4. However, Patent Owner does not assert
`
`that a POSITA would simply need to implement the claimed features for a second
`
`user. Rather, the POR clearly explained that Sharpe does not disclose or suggest
`
`identification data comprising “said unique image identifier” and a “pictured user
`
`unique identifier of a user … pictured in said image data,” and as such, Sharpe also
`
`does not disclose or suggest obtaining this identification from a second tagging user,
`
`when Sharpe does not disclose or suggest obtaining the identification data at all. Ex.
`
`2021, ¶ 85. It’s not that some functionality could not be replicated, but rather that
`
`the functionality Petitioner is trying to say is replicated is not disclosed in the prior
`
`art. Petitioner once again mischaracterizes the POR in an attempt to distract from
`
`the Petition’s deficient analysis.
`
`3.
`
`Sharpe Does Not Disclose or Suggest Limitations 8[a], 1[d],
`1[e], 1[h], or 1[i]
`Petitioner fails to establish that Sharpe discloses or suggests limitations 8[a],
`
`1[d], 1[e], 1[h], or 1[i] with respect to “requests” for image data. Petitioner argues
`
`that Sharpe’s image retrieval is not limited to a specific or particular image. Reply,
`
`6. As pointed out in the POR, Petitioner again ignores that Sharpe’s retrieval process
`
`does not disclose the user requesting “said image data” as claimed—namely, the
`
`specific image that the Petitioner mapped to the image data for Claim 6 (from which
`
`Claim 8 ultimately depends). Petitioner’s mapping needs to be consistent throughout
`
`Petitioner’s analysis, including with respect to antecedent basis for a phrase found
`
`7
`
`

`

`Case IPR2023-00057
`U.S. Patent No. 8,954,432
`in a dependent claim. Petitioner misinterprets the claim language, because “said
`
`image data” does in fact require a request for the image data of Claim 6. The “said
`
`image data” is what is actually associated with the unique image identification in the
`
`base independent claims.1 Therefore, any request for said image data is particularly
`
`requesting the said image data associated with the unique image identification as
`
`claimed in independent Claims 1 and 6. Petitioner attempts to distract from the
`
`language here, but Petitioner cannot change the claim language that clearly
`
`comprises a request for specific image data. Petitioner cannot rewrite or re-interpret
`
`the Challenged Patent’s claim language to mean anything other than what it actually
`
`says.
`
`Further, Petitioner resorts to misrepresenting the specification of the ’432
`
`patent by conflating the patent’s search functionality with its tagging functionality.
`
`In particular, Petitioner states that “PO’s interpretation would exclude the preferred
`
`embodiment disclosed in the ‘432… a user may search for several tagged users
`
`simultaneously, and the results may include multiple images.” Reply, 7. Firstly,
`
`Petitioner is pointing to a portion of the specification directed to a user’s ability to
`
`search for and view photos after they have been tagged, not before. Secondly, the
`
`
`1 Both Claims 1 and 6 recite “assigning a unique image identification to said image
`
`data.”
`
`8
`
`

`

`Case IPR2023-00057
`U.S. Patent No. 8,954,432
`specification never states this is the preferred embodiment in reference to requesting
`
`an “identifying page.” On the contrary, when discussing users creating a tag via the
`
`“identifying page” the specification clearly teaches selecting a single photo from
`
`within a photo album,2 not the functionality directed to searching all tagged photos.
`
`In fact, the specification clearly states the selection of a single photo when a user
`
`uses an “identifying page” to create a new tag.3 Finally, in both its Petition and
`
`Reply, Petitioner, likely anticipating that its mapping of this element is insufficient,
`
`argues that “a POSA would understand that Sharpe’s trail request includes an image
`
`identifier.” Reply, 8 (citing Petition, 49-50). In its Reply, Petitioner attacked PO’s
`
`Response by saying that PO has not explained why a trail request is distinct from a
`
`
`2 “The host computer 200 may display photos in an album alongside an “identify
`
`people” button or link that may be selected to request an identifying page.” Ex. 1001,
`
`[0060].
`
`3 “The identifying page includes a photo 34 requested by the user, a list of contacts
`
`36 associated with the user, and a “Submit” button or link 38…The host computer
`
`a200 may display photos in an album alongside an “identify people” button or link
`
`that may be selected to request an identifying page. Embedded in the button or link
`
`is a request for an identifying page, the image I.D. for the photo…” Ex. 1001, 10:2-
`
`36.
`
`9
`
`

`

`Case IPR2023-00057
`U.S. Patent No. 8,954,432
`request to identify users. To the contrary, Petitioner has failed to prove why the trail
`
`request is a request to identify users. Importantly, Petitioner, and not Patent Owner,
`
`bears the burden of establishing unpatentability, which they have again failed to do
`
`here. Petitioner introduces new argument in its reply expert declaration which
`
`describes that a user can continue to tag individuals after retrieving the photos of a
`
`trail. Id. A trail is nothing more than a time-sorted collection of photos, along the
`
`line of a photo album. The request to retrieve a photo album is certainly not a request
`
`to identify users. Petitioner has not provided any explanation to the contrary in either
`
`its Petition or its Reply.
`
`Petitioner then uses the Reply and the Reply Declaration of their expert to
`
`point to additional disclosures in Sharpe under the proper interpretation of the claim
`
`language. Reply, 8. The Board should reject Petitioner’s attempt to present new
`
`arguments and citations from the prior art reference that were not clearly cited and
`
`explained in the Petition. Intelligent Bio-Systems, 821 F.3d at 1366.
`
`4.
`
`Sharpe Does Not Disclose or Suggest Limitations 8[b] or 1[m]
`Sharpe does not disclose or suggest a “list of pictured users.” The POR clearly
`
`refuted this argument by demonstrating that Sharpe’s drop down box is a list of
`
`members of a group, not a “list of pictured users.” Response, 32-36. Petitioner now
`
`appears to propose that Sharpe’s drop-down box can be both a list of people pictured
`
`in an image and a list of people in a group. This was not proposed in the Petition,
`
`10
`
`

`

`Case IPR2023-00057
`U.S. Patent No. 8,954,432
`nor was the additional evidence that Petitioner submitted in the Reply and in Dr.
`
`Bederson’s Reply Declaration, including a figure of an Apple hierarchical menu. As
`
`in the Petition, the Reply makes conclusory statements regarding the list of users
`
`updating to reflect the current selection of users, despite Sharpe making no such
`
`disclosures. Petitioner failed to articulate how or why this would be. Petition, 42;
`
`Reply, 10-12; Google LLC v. Ecofactor, Inc, No. IPR2021-00054, Paper 35, 42
`
`(PTAB April 18, 2022) (“conclusory opinions with no factual support are entitled to
`
`little or no weight.”); see also 37 C.F.R. § 42.65(a).
`
`To the extent that Petitioner is proposing that Sharpe’s drop down list only
`
`shows people in the picture, this would defeat Sharpe’s objective by making it
`
`impossible to associate other members of the group with the media item. Ex. 2021,
`
`¶ 94. Petitioner’s newly presented argument in the Reply indicates that the list could
`
`be a drop down menu of people in the group, with checkmarks next to pictured users.
`
`This was not presented in the Petition, and cannot be relied upon now. The Petition
`
`did not include any obviousness analysis for this claim limitation, instead relying on
`
`what Sharpe actually discloses. Petition, 39-40. Therefore, Petitioner is confined to
`
`its analysis of Sharpe’s disclosure, as presented in the Petition, which for the reasons
`
`explained in the POR is insufficient. Response, 32-36 and 45.
`
`11
`
`

`

`Case IPR2023-00057
`U.S. Patent No. 8,954,432
`The Petition Does Not Plainly Present Sharpe As A Single-
`Reference Obviousness Ground
`Petitioner asserts that the Petition presented Ground 1 as a single-reference
`
`5.
`
`obviousness ground. Reply, 12. As explained in the POR (Response, 46), however,
`
`Ground 1 contained no actual obviousness analysis and does not even mention
`
`“obvious” or “obviousness” for Claim 1—which is a fatal flaw for an obviousness
`
`ground. Kranos Corp. v. Riddell, Inc., IPR2016-01646, Paper 10 at 68 (PTAB Feb.
`
`14, 2017) (“[O]bviousness grounds cannot be sustained by mere conclusory
`
`statements; instead, there must be some articulated reasoning with some rational
`
`underpinning to support the legal conclusion of obviousness.”) (citing KSR Int’l Co.
`
`v. Teleflex Inc., 550 U.S. 398, 418 (2007)). Calling Ground 1 a single-reference
`
`obviousness ground without the requisite analysis does not meet Petitioner’s burden.
`
`It is well established, and Petitioner does not dispute, that “[t]he 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) where in
`
`evidence, so-called secondary considerations.” Apple Inc. v. Yu, IPR2019-01258,
`
`Paper 29 at 39 (PTAB Jan. 5, 2021) (citing Graham v. John Deere Co., 383 U.S. 1,
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`17–18 (1966)). Petitioner was silent in both the Petition and their Reply as to what
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`is missing from Sharpe such that an obviousness modification would be
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`hypothetically made, and the analysis is therefore flawed.
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`U.S. Patent No. 8,954,432
`Further, Petitioner asserts that disclosure is the epitome of obviousness.
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`Reply, 14 (citing Application of Skoner, 517 F.2d 947, 950 (C.C.P.A. 1975).).
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`Petitioner has cited to a nearly half century old case from the predecessor to the
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`Federal Circuit for the proposition that disclosure is the epitome of obviousness, but
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`that has been squarely rejected. To the extent Petitioner contends, or the Board may
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`be inclined to find, that Petitioner’s statements regarding Sharpe’s teachings alone
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`suffice for Petitioner to prevail on its obviousness ground, that is contrary to law.
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`Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1364 n.2 (Fed. Cir. 2008)
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`(“The dissent claims categorically that ‘every anticipated claim is obvious.’ … But
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`this is not correct. … [O]ur precedent has rejected reliance on the ‘legal homily’ that
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`‘anticipation is the epitome of obviousness.’”) (internal citations omitted).
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`Petitioner cannot prevail on obviousness, because it has not carried out the
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`requisite analysis. But, significantly, it also cannot prevail on anticipation. There is
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`no anticipation ground in the Petition, and the Board cannot deviate from the
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`Petition, because “it is the petition … that defines the metes and bounds of an inter
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`partes review.” Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330, 1336 (Fed.
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`Cir. 2020) (citing SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018)); see also
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`Koninklijke, 948 F.3d at 1336 (“[T]he Board does not ‘enjoy[] a license to depart
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`from the petition and institute a different inter partes review of his own design.’”)
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`(citing SAS, 138 S. Ct. at 1356, emphasis in original). The present situation is akin
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`to Koninklijke, where Google’s petition did not advance an argument of
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`unpatentability based on a certain ground and the Federal Circuit held the Board
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`improperly instituted IPR based on that ground. Here, Petitioner has not advanced a
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`ground of anticipation by Shapre and thus the Board cannot find anticipation by
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`Sharpe for any claims.
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`Petitioner cannot win on a single-reference obviousness ground when
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`Petitioner has failed to provide the requisite obviousness analysis or explain what is
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`missing from Sharpe that Petitioner might be using obviousness to bridge. Here,
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`Petitioner has provided no such analysis, and must fail on Ground 1 as a result.
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`1.
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`B. Ground 2
`Petitioner Has Failed to Establish that a POSITA Would
`Have Been Motivated to Modify or Combine the Cited
`References to Arrive at the Claimed Invention
`Petitioner’s Reply attempts to submit new evidence in their expert’s reply
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`declaration as to how the purposes of Sharpe and Eintracht overlap. Reply, 18.
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`However, Petitioner once again fails to establish that a POSITA would have
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`modified the system of Sharpe, which is directed to archiving and retrieving digital
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`media items based on episodic memory, in light of the teachings of Eintracht, which
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`is directed to collaborative document annotation. Petitioner’s expert refers to both
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`systems as collaborative systems for documents and images. Reply, 18; Bederson
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`Reply ¶33. However, Eintracht is not related to archival and retrieving of digital
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`media items, nor is Sharpe related to collaborative document annotation. Ex. 2021,
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`¶ 110. Petitioner is attempting to characterize the references to make them fit, when
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`they are directed to fundamentally different systems on their face.
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`Sharpe and Eintracht are aimed at solving different problems, and Petitioner
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`has failed to provide a sufficient reason for combining Sharpe and Eintracht since
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`Petitioner’s proposed rationale for combining the references pertains to solving a
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`problem (asynchronous annotation) not present in the primary reference Sharpe. Ex-
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`2021, ¶ 110. See Fisher & Paykel Healthcare Ltd. V. ResMed R&D Ger. GmbH,
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`IPR2017-00272, Paper 41 at 26 (PTAB Sept. 6, 2018) (no motivation to combine
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`where secondary reference seeks a new way to solve a problem absent in primary
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`reference). Petitioner has cherry-picked isolated teachings from prior art references
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`that are quite different from one another in view of the ’432 patent to try and read
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`the clearly different systems as similar.
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`2.
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`The Petition Fails to Explain How the Combination of
`Sharpe and Eintracht Would Operate and Have a
`Reasonable Expectation of Success
`Petitioner’s Reply also does not substantively address the POR’s arguments
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`against reasonable expectation of success.
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`It is not enough that Petitioner now argues in its Reply that the references had
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`structural similarities. Reply, 18. Petitioner fails to clearly explain or show how the
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`combination of the two references would have worked in the proposed combination,
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`Case IPR2023-00057
`U.S. Patent No. 8,954,432
`as required. The Petition itself conclusorily stated that the two systems were
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`structurally similar, based solely on the fact that the systems can connect to web-
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`based servers which provide user interface to users and stores images/annotations.
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`Petition, 62. Petitioner now adds minimal detail in the form of their expert’s reply
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`declaration, asserting that the systems have structural simil