Trials@uspto.gov
`571-272-7822
`
`Paper 40
`Date: May 7, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`META PLATFORMS, INC.,
`Petitioner,
`v.
`ANGEL TECHNOLOGIES GROUP LLC,
`Patent Owner.
`
`IPR2023-00058
`Patent 9,959,291 B2
`
`
`
`
`
`
`
`
`
`Before MIRIAM L. QUINN, SHARON FENICK, and
`MICHAEL T. CYGAN, Administrative Patent Judges.
`FENICK, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
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`IPR2023-00058
`Patent 9,959,291 B2
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`I.
`
`INTRODUCTION
`Background and Summary
`A.
`Meta Platforms, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting inter partes review of claims 1–26 (“challenged claims”) of
`U.S. Patent No. 9,959,291 B2 (Ex. 1001, “the ’291 patent”). Angel
`Technologies Group LLC (“Patent Owner”) filed a Preliminary Response
`(Paper 9). Petitioner filed a Preliminary Reply (Paper 14) and Patent Owner
`filed a Preliminary Sur-reply (Paper 15). We determined that the
`information presented in the Petition established that there was a reasonable
`likelihood that Petitioner would prevail with respect to at least one of the
`challenged claims, and therefore we instituted this proceeding on May 11,
`2023, as to all challenged claims and all grounds of unpatentability. Paper
`16 (“Dec. on Inst.”).
`Patent Owner filed a Patent Owner’s Response (Paper 24, “PO
`Resp.”), Petitioner filed a Reply (Paper 29, “Pet. Reply”), and Patent Owner
`filed a Sur-reply (Paper 30, “PO Sur-reply”). The parties presented oral
`arguments on February 13, 2024 and the Board entered a transcript into the
`record. Paper 39.
`For the reasons set forth in this Final Written Decision pursuant to 35
`U.S.C. § 318(a), we determine that Petitioner demonstrates by a
`preponderance of evidence that claims 1–14 and 16–26 are unpatentable but
`that Petitioner does not demonstrate that claim 15 is unpatentable.
`Real Parties in Interest
`B.
`Petitioner identifies itself and Instagram, LLC as the real parties in
`interest, and notes that it was formerly known as Facebook, Inc. Pet. 2.
`Patent Owner identifies only itself as a real party in interest. Paper 4
`(Patent Owner’s Mandatory Notices), 2.
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`IPR2023-00058
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`Related Matters
`C.
`Petitioner and Patent Owner identify Angel Technologies Group LLC
`v. Facebook, Inc. and Instagram LLC, No. 2:21-cv-08459 (C.D. Cal.) as a
`related case. Pet. 2–3; Paper 4, 2. Petitioner notes that an appeal of that
`case was filed with the Federal Circuit. Pet. 2–3. The parties identify that
`appeal as Angel Technologies Group LLC v. Meta Platforms, Inc., Case No.
`22-2100, filed with the Federal Circuit on August 3, 2022. Id.; Paper 25
`(Patent Owner’s Fourth Amended Mandatory Notices), 1.
`Petitioner and Patent Owner additionally identify IPR2023-00057
`(challenging claims of U.S. Patent 8,954,432 B2); IPR2023-00059
`(challenging claims of U.S. Patent 10,417,275 B2); and IPR2023-00060
`(challenging claims of U.S. Patent 10,628,480 B2) as related inter partes
`review requests. Id. at 3; Paper 4, 2.
`The ’291 Patent
`D.
`The ’291 patent is titled “Users Tagging Users in Media 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), 1:19–
`25. The ’291 patent issued from an application filed October 15, 2013, and
`claims priority to an application filed November 15, 2001, and to a
`provisional application, No. 60/248,994, filed on November 15, 2000. Id. at
`codes (22), (60), (63), 1:6–15; Ex. 2017. A certificate of correction (“Cert.
`of Corr.”) was issued on May 1, 2018 correcting certain errors in claim 26.
`The ’291 patent describes, as the 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, 1:35–2:6. However, the ’291 patent
`describes disadvantages or limitations to these prior art albums, among
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`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 2:7–35, 2:49–
`3:9, 3:17–25; 3:31–40.
`The ’291 patent describes a system in which databases are used to
`store information to provide users access to upload, view, and access
`images, information about objects or people, and information about
`relationships between users and images. Id. at 5:42–55, 7:10–57. The
`’291 patent specification describes that the information can be stored in one
`or more databases. Id. at 7:12–14. “For instance, the system may utilize a
`Users database 230, Identifications database 240, and Images database 250
`as depicted in FIG. 2.” Id. at 7:14–16. Figure 2, reproduced below, is a
`schematic diagram of the databases according to one embodiment of the
`invention. Id. at 4:47–48.
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`Figure 2 depicts users database 230, identifications database 240, and
`images database 250, with the fields used in each database, and shows that
`identifications database 240 links information in users database 230 with
`information in images database 250. Id. at 7:14–57.
`Users database 230 stores information about people or other objects
`identified within images. Id. at 7:18–21. The information can relate to users
`who access the system, and may include a user identifier unique to a user or
`the user’s client computer system and other information relating to the user,
`including name, e-mail address, home page address, and a list of contacts.
`Id. at 7:18–25, 9:29–36. Users may enter other users as contacts. Id. at
`9:36–46.
`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
`7:27–44, 9:47–59.
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`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 7:45–57, 8:11–30, 8:51–61, 9:59–62. The location of the person in the
`photo may also be specified in the identifications database. Id. at 8:15–30.
`Web pages that permit users to identify people or other objects within photos
`are presented to obtain identifying information. Id. at 10:10–18, 11:56–59.
`The location of a user in an image may also be captured in such a page. Id.
`at 11:64–12:20. Figure 4, reproduced below, is an example of such an
`“identifying page.” Id. at 10:19–20.
`
`
`Figure 4 is a web page that presents photo 34, list of contacts 36 labeled
`“CONTACTS” and including seven options and radio buttons, and submit
`button 38. Id. at 10:20–22. The list of contacts may be selected from among
`the objects and users listed in users database 230 or may optionally be a
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`filtered list from users database 230, for example, a list of user contacts. Id.
`at 11:13–17. 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 10:11–16, 10:46–52, 12:36–
`13:13.
`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 8:62–9:22, 13:44–16:30.
`Illustrative Claims
`E.
`Claims 1, 24, 25, and 26 are independent, and claims 2–23 are
`dependent. Independent claims 1 and 26 are illustrative, and are reproduced
`below with limitation identifiers in brackets.
`
`1. [1pre] A method implemented within a computer system
`including a plurality of computing devices connected via a
`communications network, the method associating users of the
`computer system with digital media accessible to one or more of
`the plurality of computing devices, the method comprising:
`[1a] identifying a plurality of users of the computer system,
`one or more of the plurality of users having a unique user
`identifier stored in memory accessible to one or more of
`the plurality of computing devices, the plurality of users
`including a first user and a second user, the first user being
`different from the second user;
`[1b] determining, from memory accessible to one or more of
`the plurality of computing devices, associations between
`descriptive information about one or more of the plurality
`of users and unique user identifiers of the users, the
`associations including an association between descriptive
`information previously provided by the first user and a
`unique user identifier of the first user;
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`[1c] determining, from memory accessible to one or more of
`the plurality of computing devices, associations between
`the plurality of users, the associations including an
`association between the first user and the second user;
`[1d] determining, from a plurality of digital media accessible
`to one or more of the plurality of computing devices, a
`unique digital media identifier corresponding to a digital
`media selection input by the second user;
`[1e] providing, via one or more of the plurality of computing
`devices, a graphical user interface for presentation to the
`second user, the graphical user interface operative to
`receive one or more inputs from the second user indicating
`a selection of one or more of the plurality of users from
`descriptive information associated with unique user
`identifiers of the one or more of the plurality of users, the
`graphical user interface configured to display descriptive
`information associated with unique user identifiers of one
`or more of the plurality of users with a determined
`association with the second user;
`[1f] receiving, via the communications network, an input
`initiated by the second user via the graphical user
`interface, the received input indicating a selection of the
`first user from descriptive information associated with the
`unique user identifier of the first user;
`[1g] determining the unique user identifier of the first user
`from the received input initiated by the second user
`indicating the selection of the first user; and
`[1h] in response to receiving the input initiated by the second
`user indicating the selection of the first user and to
`determining the unique user identifier of the first user,
`storing in memory accessible to one or more of the
`plurality of computing devices an association between the
`unique user identifier of the first user and the unique
`digital media identifier corresponding to the digital media
`selection input by the second user.
`26. [26pre] A method implemented within a computer system
`including a plurality of computing devices connected via a
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`communications network, the method associating users of the
`computer system with digital media accessible to the computer
`system, the method comprising:
`[26a] distinguishing between users of the computer system via
`one or more unique user identifiers stored in a computer-
`readable medium accessible to the computer system, the
`users including a named user and an identifying user, the
`named user being different from the identifying user, the
`named user having naming information associated with a
`unique user identifier of the named user;
`[26b] in response to an input from the identifying user
`indicating a selection of an item of digital media,
`determining a
`unique digital media
`identifier
`corresponding to the digital media selected;
`[26c] receiving, from the identifying user, an input indicating
`a selection of the named user from a list of other network
`users, the list of other users including naming information
`previously provided by other users, the list of other users
`including one or more users in a contact list associated
`with the identifying user, the identifying user’s contact list
`including the named user;
`[26d] in response to receiving from the identifying user the
`input indicating the selection of the named user from the
`list of other users, determining a unique user identifier of
`the named user; and
`[26e] storing an association between a unique user identifier
`of the named user and a unique digital media identifier
`corresponding to the digital media selected.
`Ex. 1001, 22:4–60, 26:30-60, Cert. of Corr.
`Prior Art and Asserted Grounds
`F.
`Petitioner asserts that claims 1–26 would have been unpatentable on
`the following grounds:
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`IPR2023-00058
`Patent 9,959,291 B2
`Reference(s)/Basis
`35 U.S.C. §1
`Claim(s) Challenged
`Sharpe2
`103
`1, 5, 10–26
`Sharpe, Eintracht3
`103
`1–26
`Sharpe, Carey4
`103
`18, 19, 26
`Sharpe, Eintracht, Carey
`103
`18, 19, 26
`Petitioner additionally relies on declarations of Dr. Benjamin B. Bederson
`(Exs. 1003, 1039). Patent Owner relies on a declaration of Dr. Eli Saber
`(Ex. 2021).
`
`II. ANALYSIS
`Legal Standards
`A.
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring [inter partes] review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)). This burden never shifts to
`Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800
`F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek,
`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
`
`
`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
`’291 patent claims priority to an application 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); see Pet. 5 nn.1–3 (applying pre-
`AIA statutes).
`2 Sharpe et al., US Patent 7,461,099 B1 (iss. Dec. 2, 2008) (Ex. 1005).
`3 Eintracht et al., US Patent 6,687,878 B1 (iss. Feb. 3, 2004) (Ex. 1006).
`4 Carey et al., US Patent 6,714,793 B1 (iss. Mar. 30, 2004) (Ex. 1007).
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`unpatentable. 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104(b)(4) (“The
`petition must specify where each element of the claim is found in the prior
`art patents or printed publications relied upon.”).
`A claim is unpatentable under 35 U.S.C. § 103 if the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) objective evidence of nonobviousness,
`i.e., secondary considerations.5 See Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966).
`
`Level of Ordinary Skill in the Art
`B.
`Petitioner argues that one of ordinary skill in the art would “have had
`at least a bachelor’s degree in computer science, electrical engineering,
`computer engineering, or a similar technical field, with at least two years of
`experience in the field of networked and Web-based media applications” and
`that “[a]dditional experience could substitute for less education, and
`additional education could likewise substitute for less experience.” Pet. 13–
`14 (citing Ex. 1003 ¶¶ 37–43).
`In the Decision on Institution, we removed the open-ended term “at
`least” from Petitioner’s proposed definition and adopted that amended
`
`
`5 On the current record, no party has raised any arguments relating to
`objective evidence of nonobviousness. See Pet. 77.
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`definition. Dec. on Inst. 9–10. Consistently, Patent Owner contends that a
`person of ordinary skill in the art “would have a bachelor’s degree in
`computer science, electrical engineering, computer engineering, or a similar
`technical field, with two years of experience in the field of networked and
`Web-based media applications” and that “[a]dditional experience could
`substitute for less education, and additional education could likewise
`substitute for less experience.” PO Resp. 16 (citing Ex. 2021 ¶ 44).
`We adopt Patent Owner’s definition, which is consistent with the
`specification of the ’291 patent and the prior art and supported by the
`testimony of both experts.
`C. Claim Construction
`Petitioner discusses the construction of the following claim terms:
`“user identifier” (all claims) and “contact” (in claim 26). Pet. 14–16.
`Petitioner argues that each should be given their ordinary meaning in the
`context of the ’291 patent. Id. For “user identifier,” Petitioner argues that
`the ordinary meaning is “a series of characters identifying a user.” Id.at 14–
`16 (citing Ex. 1001, 7:58–60, 8:1–3; Ex. 1003 ¶¶ 62–64). For “contact”,
`Petitioner argues that the ordinary meaning of “contacts” is “people known
`to the user.” Id. at 15–16 (citing Ex. 1001, 9:36–37, 9:39–42; Ex. 1003
`¶¶ 65–67).
`In response, with respect to these claim terms, Patent Owner argues
`that no claims require express construction and that each term should be
`given its ordinary and customary meaning. PO Resp. 17 (citing Ex. 2021
`¶ 63).
`“The Board is required to construe ‘only those terms . . . that are in
`controversy, and only to the extent necessary to resolve the controversy.”’
`Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019)
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`(alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner does not appear to use the
`claim constructions it discusses in the Petition in its unpatentability
`arguments and Patent Owner does not raise the proper construction of these
`terms in its Response or Sur-reply.
`In this case, with respect to “user identifier” and “contact,” these
`terms do not require construction to reach our decision with respect to
`patentability, and therefore we do not provide any constructions for these
`terms. See Realtime Data, 912 F.3d at 1375.
`To the extent required, we discuss the claim interpretation of
`“determining . . . the unique digital media identifier corresponding to a
`digital media selection input by the second user,” from claim 1, below, in
`our analysis of claim 1. See infra § II.D.4.c.
`With that possible exception, no other terms require construction to
`reach our decision. Realtime Data, 912 F.3d at 1375.
`D. Challenge to Claims 1, 5, and 10–26 as Obvious Over Sharpe
`Petitioner argues that claims 1, 5, and 10–26 would have been obvious
`over Sharpe. Pet. 22–59. Patent Owner presents contentions countering
`certain aspects of Petitioner’s showing. PO Resp. 18–49; PO Sur-reply 4–
`16.
`
`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
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`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
`associate stored multimedia items with the group to which the user belongs.
`Id. at 7:47–48.
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`Information from database of groups of people 3 is used, along with
`multimedia items to be archived 6, information from table of event types 4
`and calendar 5, resulting in the indexing of a multimedia item in accordance
`with the group, members of the group, event type, and date. Id. at 5:24–37,
`5:41–43.
`Figure 4 of Sharpe, reproduced below, depicts a graphical user
`interface according to the Sharpe system. Id. at 6:58–59.
`
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`Figure 4 includes work space 51 that displays media items (images 52
`and 53 and text 54) and user controls for generating index information. Id.
`at 6:59–67, 7:42–44. Drop down box 55 allows selection of any of a number
`of people from within a group. Id. at 6:67–7:1. The database of groups of
`people 79 is used to provide the list of people. Id. at 8:26–27. Drop down
`box 56 allows the identification of one of a number of event types. Id. at
`7:1–2. Date entry 57 allows a user to enter a date. Id. at 7:3. Archive
`button 60 is used to enter this index information for the archiving process.
`Id. at 7:14–24, 7:44–47, 8:30–31, 8:37. This allows group members to view
`the contents of the group archive, for example, with a focus on a specific
`person or people, date or time period, or event type. Id. at 8:45–67, 9:12–32,
`Fig. 7.
`2.
`
`Arguments Regarding Sufficiency of the Obviousness Ground
`Presented
`Before we address specific assertions regarding unpatentability, we
`address arguments Patent Owner raises regarding this single-reference
`obviousness ground.
`Patent Owner argues that although the Petition styles arguments
`relating to unpatentability in view of Sharpe alone as an obviousness ground,
`the Petition “contains no actual obviousness analysis” and rather only
`contends that Sharpe actually discloses the elements of the challenged
`claims. PO Resp. 44–49. Patent Owner asserts that, “[b]y not addressing
`what is missing from Sharpe such that an obviousness modification would
`be hypothetically made, the Petition’s analysis is flawed at least with respect
`to” the second Graham factor, relating to differences between the claimed
`subject matter and the prior art. Id. at 44–45 (referencing the four factors set
`forth in Graham v. John Deere Co., 383 U.S. at 17–18). Additionally,
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`Patent Owner argues that no analysis was presented regarding the reasonable
`expectation of success regarding any such modification. Id. at 45–46 (citing
`In re Stepan Co., 868 F.3d 1342, 1346 n.1 (Fed. Cir. 2017)). Patent Owner
`argues that Petitioner has created a “legal limbo” in which it would be
`impossible to determine whether Petitioner has sufficiently shown
`obviousness because the Petition is fatally ambiguous regarding obviousness
`and does not provide Patent Owner proper notice of the theory of
`unpatentability under the Administrative Procedure Act (APA). Id. at 46–
`49. Patent Owner additionally argues that arguments relating to obviousness
`in the Petitioner’s Reply are improper new arguments that should be
`excluded. PO Sur-reply 1–4.
`We do not agree that the obviousness ground is deficient.
`Patent Owner cites M & K Holdings (PO Resp. 47–49) to argue that
`the Board cannot deviate from the invalidity theory set forth in a petition in a
`final determination, and we begin by examining what is present in the
`Petition in this proceeding. See M & K Holdings, Inc. v. Samsung Elecs.
`Co., 985 F.3d 1376, 1385 (Fed. Cir. 2021). We agree with Petitioner that it
`was clear from the Petition that an obviousness ground over Sharpe was
`presented, and that the Petition describes the “knowledge and skills that a
`[person of ordinary skill in the art] would have applied to implement
`Sharpe.” See Pet. Reply 14. The Petition describes the ground as relating to
`obviousness over 35 U.S.C. § 103. Pet. 5 (identification of challenges), 22
`(heading). The ground specifically describes elements of Sharpe as
`teachings recognizable by one of ordinary skill in the art rather than as
`disclosures of Sharpe. See, e.g., id. at 25 (one of ordinary skill in the art
`recognizing the identification of users registered as being in a group through
`usernames), 26 (one of ordinary skill in the art understanding that a
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`username would be unique and would support database queries relating to
`people associated with digital media items), 29 (one of ordinary skill in the
`art understanding regarding the association of a username and personal
`name), 34 (one of ordinary skill in the art’s understanding regarding
`collection of naming information), 35–36 (one of ordinary skill in the art’s
`modification of Sharpe to include a contact list), 36–38 (one of ordinary skill
`using a username as a primary key for databases); see also id. at 39–47
`(similar arguments with respect to claim 1), 57–59 (reference to claim 1
`arguments for claims 24 and 25).
`Patent Owner’s Response shows that Patent Owner had notice that
`Petitioner’s arguments were styled as based on obviousness. PO Resp. 18.
`Our Decision on Institution (at 7, 24–27) indicated the Board’s
`understanding of the Petition as presenting an obviousness ground over
`Sharpe, Petitioner’s Reply (at 2–5, 13–18) clarified this further, and Patent
`Owner has had an opportunity to respond to the obviousness theories
`presented throughout the proceeding. Thus, we perceive no APA issue;
`Patent Owner has had notice and a fair opportunity to be heard on these
`matters. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir.
`2015) (in an IPR, “the Administrative Procedure Act requires the PTO to
`timely inform a patent owner of the matters of fact and law asserted in an
`inter partes review of its patent, to give all interested parties opportunity for
`. . . the submission and consideration of facts and arguments . . . and hearing
`and decision on notice, and to permit a party to submit rebuttal evidence, and
`to conduct such cross-examination as may be required for a full and true
`disclosure of the facts” (internal quotations and citations elided)).
`With respect to the argument that the Petition was deficient as lacking
`a showing of a reasonable expectation of success, we agree with Petitioner
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`IPR2023-00058
`Patent 9,959,291 B2
`that Stepan stands for the proposition that such a showing must be made
`when there is a combination of teachings, including from the same reference.
`Pet. Reply 16–17; Stepan, 868 F.3d at 1346 n.1 (“Whether a rejection is
`based on combining disclosures from multiple references, combining
`multiple embodiments from a single reference, or selecting from large lists
`of elements in a single reference, there must be a motivation to make the
`combination and a reasonable expectation that such a combination would be
`successful, otherwise a skilled artisan would not arrive at the claimed
`combination.”). We note that Petitioner – in describing the collection of
`name information (e.g., for presentation in a drop down box of a workspace
`as in Sharpe’s Figure 4) during registration as a “conventional design
`choice” and in citing Dr. Bederson’s testimony to this effect – provides
`argument and evidence regarding an expectation of success in using the
`username. Pet. 34 (citing Ex. 1003 ¶ 168); see Sisvel S.p.A. v. TCT Mobile
`Int’l Ltd., No. 2023-1123, 2024 WL 1173047 at *3 (Fed. Cir. March 19,
`2024) (nonprecedential) (finding a reasonable expectation of success where
`an expert testified regarding a “simple design choice” and the prior art
`reference noted a solution as “a good candidate”).
`With respect to arguments in the Reply that relate to obviousness,
`including arguments that the use of a username was a design choice (PO
`Sur-reply 2–3), we find that Petitioner’s arguments in the Reply “properly
`expand[] on and [are] a fair extension of its previously raised . . . argument.”
`Rembrandt Diagnostics, LP v. Alere, Inc., 76 F.4th 1376, 1385 (Fed. Cir.
`2023). In the Petition, Petitioner argued that one of ordinary skill would
`have understood that a username would have been “typically implemented”
`as a unique user identifier that would support the querying of the database
`and storing information in a database. Pet. 25–26 (citing Ex. 1003 ¶¶ 141–
`
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`IPR2023-00058
`Patent 9,959,291 B2
`143), 28–29, 34 (citing Ex. 1003 ¶ 168), 36–38 (citing Ex. 1003 ¶¶ 174–176,
`179). The Petition further describes the knowledge of one of ordinary skill
`regarding the “typical implement[ation]” of a username as a unique
`identifier and that the use of such a unique identifier supports querying a
`database, particularly in the circumstances of Sharpe. Pet. 26 (citing Ex.
`1003 ¶¶ 142–143). The Reply further explains that in view of Sharpe’s
`teachings, the username is the most obvious design choice because a
`username is one such unique identifier. Pet. Reply 3. We determine the
`discussion in the Reply describing the use of a username rather than the
`user’s personal name as a design choice for use as a primary key (Pet. Reply
`3–4) is the same argument as, or a fair extension of, these contentions in the
`Petition.
`For these reasons, we do not find the ground of obviousness over
`Sharpe deficient as Patent Owner argues. We reserve for later portions of
`this Decision specific determinations regarding substantive arguments of the
`parties with respect to the ground presented and regarding the ultimate
`question of whether the Petitioner has met its burden of proof.
`Independent Claim 26
`3.
`Petitioner begins by addressing the obviousness of claim 26, and we
`follow this ordering in our analysis.
`Petitioner’s Contentions in the Petition
`a)
`Without arguing that the preamble of claim 26 is limiting, Petitioner
`argues that Sharpe renders the preamble of claim 26 obvious by teaching a
`method for associating users with digital media. Pet. 22–24 (citing, inter
`alia, Ex. 1005, 4:21–26, 5:4–13, 5:27–35, 5:50–63, 7:35–48; Ex. 1003
`¶¶ 129–135).
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`IPR2023-00058
`Patent 9,959,291 B2
`With respect to limitation 26a, the method step of “distinguishing
`between users of the computer system via one or more unique user
`identifiers stored in a computer-readable medium accessible to the computer
`system, the users including a named user and an identifying user, the named
`user being different from the identifying user, the named user having naming
`information associated with a unique user identifier of the named user,”
`Petitioner describes Sharpe’s disclosure of groups of users regis