Filed on behalf of: Meta Platforms, Inc.
`
`Filed: November 17, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`META PLATFORMS, INC.
`Petitioner,
`
`v.
`
`ANGEL TECHNOLOGIES GROUP LLC,
`Patent Owner.
`__________________
`Case No. IPR2023-00058
`U.S. Patent No. 9,959,291
`__________________
`
`DECLARATION OF DR. BENJAMIN B. BEDERSON
` IN SUPPORT OF PETITIONER’S REPLY
`
`Meta Platforms, Inc.
`Meta Platforms, Inc. v. Angel Technologies Group LLC
`IPR2023-00058
`Exhibit 1039 - Cover
`
`
`
`Filed: November 17, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`META PLATFORMS, INC.
`Petitioner,
`
`v.
`
`ANGEL TECHNOLOGIES GROUP LLC,
`Patent Owner.
`__________________
`Case No. IPR2023-00058
`U.S. Patent No. 9,959,291
`__________________
`
`DECLARATION OF DR. BENJAMIN B. BEDERSON
` IN SUPPORT OF PETITIONER’S REPLY
`
`Meta Platforms, Inc.
`Meta Platforms, Inc. v. Angel Technologies Group LLC
`IPR2023-00058
`Exhibit 1039 - Cover
`
`
`
`IPR2023-00058 (USP 9,959,291)
`
` Decl. ISO Petitioner’s Reply
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`TABLE OF CONTENTS
`
`I.
`
`II.
`
`III.
`
`A.
`
`B.
`
`C.
`
`A.
`
`B.
`
`C.
`
`D.
`
`INTRODUCTION ................................................................................. 1
`
`GROUND 1: SHARPE ALONE OR IN VIEW OF THE
`KNOWLEDGE OF A POSA RENDERS OBVIOUS CLAIMS 1, 5,
`10-26 ...................................................................................................... 3
`
`Sharpe Alone or in View of the Knowledge of a POSA Teaches
`the “Unique User Identifier” (26[d-e], 1[e-g]) ...................................... 3
`
`Sharpe Alone or in View of the Knowledge of a POSA Teaches
`the “Digital Media Selection Input” (1[d], 5, 12-14) ............................ 5
`
`Sharpe Alone or in View of the Knowledge of a POSA Teaches
`the “List of Descriptive Information” (Claims 13, 14) ......................... 8
`
`GROUND 2: SHARPE IN VIEW OF EINTRACHT RENDERS
`OBVIOUS CLAIMS 1-26 ................................................................... 15
`
`A POSA Would Have Been Motivated to Combine Sharpe with
`Eintracht .............................................................................................. 15
`
`Sharpe in View of Eintracht Teaches “Digital Media Selection”
`Under PO’s Interpretation (1[d], 5, 12-14) ......................................... 16
`
`Sharpe in View of Eintracht Teaches the Claimed Email
`Notifications (Claims 2 & 3) ............................................................... 17
`
`Sharpe in View of Eintracht Teaches “Coordinates” (Claim 6) ......... 18
`
`IV.
`
`CONCLUSION .................................................................................. 23
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`Meta Platforms, Inc.
`Meta Platforms, Inc. v. Angel Technologies Group LLC
`IPR2023-00058
`Exhibit 1039 - Page i of 23
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`IPR2023-00058 (USP 9,959,291)
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` Decl. ISO Petitioner’s Reply
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`I, Dr. Benjamin B. Bederson, do hereby declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`I am making this declaration at the request of Meta Platforms, Inc.
`
`(“Petitioner”) in IPR2023-00058, the Inter Partes Review of claims 1-26 of
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`U.S. Patent No. 9,959,291 (“the ’291 patent”); I am also making separate
`
`declarations at the request of Petitioner in IPR2023-00057, the Inter Partes Review
`
`of claims 1-8 of U.S. Patent No. 8,954,432 (“the ’432 patent”); IPR2023-00059, the
`
`Inter Partes Review of claims 1-12 of U.S. Patent No. 10,417,275 (“the ’275
`
`patent”); and IPR2023-00060 the Inter Partes Review of claims 1-30 of U.S. Patent
`
`No. 10,628,480 (“the ’480 patent”).
`
`2.
`
`I am being compensated for my work in this matter at my standard
`
`hourly rate. I am also being reimbursed for reasonable and customary expenses
`
`associated with my work and testimony. My compensation is not contingent on the
`
`outcome of this matter or the specifics of my testimony.
`
`3.
`
`I previously submitted a declaration in this proceeding as Exhibit 1003,
`
`which I will refer to as my original declaration (“Bederson Decl.”). My original
`
`declaration set forth my background, credentials, and curriculum vitae.
`
`4.
`
`I submit this declaration in reply to arguments advanced by Patent
`
`Owner Angel Technologies Group LLC (“Patent Owner”) in its Patent Owner
`
`Response (“POR”) and in the Declaration of Dr. Eli Saber in Support of Patent
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`Meta Platforms, Inc.
`Meta Platforms, Inc. v. Angel Technologies Group LLC
`IPR2023-00058
`Exhibit 1039 - Page 1 of 23
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`IPR2023-00058 (USP 9,959,291)
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` Decl. ISO Petitioner’s Reply
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`Owner Response (“Saber Decl.”), submitted in this proceeding as Paper 24 and
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`Exhibit 2021, respectively.
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`5.
`
`In addition to the materials I reviewed in preparing my original
`
`declaration, and the materials cited in this supplemental declaration, I have also
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`reviewed the following in preparing this supplemental declaration:
`
`a. Paper 24, Patent Owner Response in IPR2023-00057,
`
`b. Paper 24, Patent Owner Response in IPR2023-00058,
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`c. Paper 25, Patent Owner Response in IPR2023-00059,
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`d. Paper 24, Patent Owner Response in IPR2023-00060,
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`e. Ex. 2021, Declaration of Dr. Eli Saber in IPR2023-00057,
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`f. Ex. 2021, Declaration of Dr. Eli Saber in IPR2023-00058,
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`g. Ex. 2021, Declaration of Dr. Eli Saber in IPR2023-00059,
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`h. Ex. 2022, Declaration of Dr. Eli Saber in IPR2023-00060,
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`i. Ex. 2019, Transcript of July 20, 2023 Deposition of Dr. Benjamin B.
`
`Bederson in IPR2023-00057, -00058, and -00059,
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`j. Ex. 2021, Transcript of July 21, 2023 Deposition of Dr. Benjamin B.
`
`Bederson in IPR2023-00060,
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`k. Ex. 1040, Transcript of October 20, 2023 Deposition of Dr. Eli Saber,
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`and
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`l. Ex. 1041, Transcript of October 23, 2023 Deposition of Dr. Eli Saber.
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`Meta Platforms, Inc.
`Meta Platforms, Inc. v. Angel Technologies Group LLC
`IPR2023-00058
`Exhibit 1039 - Page 2 of 23
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`IPR2023-00058 (USP 9,959,291)
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` Decl. ISO Petitioner’s Reply
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`II. GROUND 1: SHARPE ALONE OR IN VIEW OF THE KNOWLEDGE
`OF A POSA RENDERS OBVIOUS CLAIMS 1, 5, 10-26
`
`
`
`6.
`
`In my original declaration, I explained why claims 1, 5, and 10-26 of
`
`the ’291 patent would have been obvious over Sharpe alone or in view of the
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`knowledge of a POSA. I understand from counsel that Patent Owner and Dr. Saber
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`disagreed with some of my conclusions. Counsel has asked me to address some of
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`those disagreements, and I do so in the following paragraphs.
`
`A.
`
`7.
`
`Sharpe Alone or in View of the Knowledge of a POSA Teaches the
`“Unique User Identifier” (26[d-e], 1[e-g])
`
`As I explained in my original declaration, a POSA would have
`
`understood that Sharpe’s username would be a primary key suitable to distinctly
`
`specify a relationship between a particular user and a particular image in Sharpe’s
`
`database system. See, e.g., Bederson Decl. ¶¶ 121-22, 138-43, 173-79. While a
`
`POSA would have understood that there are other available design options, a
`
`username would have been an obvious design choice in view of Sharpe’s disclosure
`
`and a POSA’s knowledge that usernames are often used as primary keys in database
`
`schemas. See id.
`
`8.
`
`Patent Owner and Dr. Saber misunderstand my analysis when they
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`conclude that my opinion is that “Sharpe’s system must use the user name … as a
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`Meta Platforms, Inc. v. Angel Technologies Group LLC
`IPR2023-00058
`Exhibit 1039 - Page 3 of 23
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`IPR2023-00058 (USP 9,959,291)
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` Decl. ISO Petitioner’s Reply
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`unique identifier or ‘primary key.’” E.g., Saber Decl. ¶ 81.1 That is not my opinion.
`
`
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`Rather, my opinion is that a POSA would have understood that a username is one
`
`such unique identifier and the most obvious design choice for the Sharpe system
`
`given that each user already required a username to log on to the system. See, e.g.,
`
`Bederson Decl. ¶¶ 121-22, 138-43, 173-79.
`
`9.
`
`Indeed, Patent Owner and Dr. Saber appear to agree with my opinion
`
`that a POSA would have recognized that Sharpe’s username is one option to
`
`implement a primary key in Sharpe’s system. For example, Dr. Saber does not
`
`appear to dispute that the username can be a primary key, and instead argues that the
`
`username “does not need to be” the primary key, and that “another possible way” to
`
`implement Sharpe’s system is to assign an internal unique identifier to a user. Saber
`
`Decl. ¶¶ 81-83.
`
`10. To the extent that Patent Owner and Dr. Saber dispute that a username
`
`can be used as a primary key in Sharpe’s system, it was known in the art to utilize
`
`usernames as primary keys in database schemas. For example, a 1996 paper2
`
`describes a language and system for constructing web-based views of the contents
`
`
`1 All emphasis added unless otherwise indicated.
`
`2 Gilles Falquet, et al., Generating Hypertext Views on Databases, ACTES DU
`
`XIVÈME CONGRÈS INFORSID 269, 269-84 (1996) (Ex. 1042).
`
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`Meta Platforms, Inc. v. Angel Technologies Group LLC
`IPR2023-00058
`Exhibit 1039 - Page 4 of 23
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`IPR2023-00058 (USP 9,959,291)
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`of a database. Ex. 1042 at 1. In describing the relationships in the database, the
`
`
`
`paper explains that they “usually possess a primary key which is composed of one
`
`or more attributes the values of which uniquely identify each tuple of the relation.”
`
`Id. at 3. The paper then provides the username as an example of a suitable primary
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`key, explaining that “the attribute username is a primary key … since all users must
`
`have a different user name.” Id. This paper provides further confirmation that the
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`username would have been an immediate and obvious user unique identifier to a
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`POSA reviewing Sharpe’s disclosure.
`
`B.
`
`Sharpe Alone or in View of the Knowledge of a POSA Teaches the
`“Digital Media Selection Input” (1[d], 5, 12-14)
`
`11. As I explained in my original declaration, a POSA would have
`
`recognized that Sharpe discloses the claimed “digital media selection input” through
`
`its image retrieval process. See, e.g., Bederson Decl. ¶¶ 194-97 (citing Ex. 1005 at
`
`1:58-65, 2:5-9, 9:4-7), 213-15, 219-23.
`
`12. Patent Owner and Dr. Saber argue that Sharpe’s retrieval process does
`
`not disclose the “digital media selection input” as claimed because Sharpe’s retrieval
`
`process finds “any and all items” matching the parameters inputted by the user. See,
`
`e.g., Saber Decl. ¶ 88. According to Patent Owner and Dr. Saber, “Sharpe does not
`
`disclose a request for a ‘digital media selection input’ at all, because Sharpe’s user
`
`is not selecting a particular image.” E.g., id. ¶ 89. That is, because “multiple images
`
`may turn up,” Sharpe “is not determining a unique digital media item.” Id.
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`Meta Platforms, Inc.
`Meta Platforms, Inc. v. Angel Technologies Group LLC
`IPR2023-00058
`Exhibit 1039 - Page 5 of 23
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`IPR2023-00058 (USP 9,959,291)
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` Decl. ISO Petitioner’s Reply
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`In my opinion, Patent Owner and Dr. Saber misinterpret the claim
`
`13.
`
`language. The claims do not require that the claimed “digital media selection input”
`
`is exclusively for, or otherwise limited to, a single, specific digital media item.
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`Certainly, the digital media selection input must include the unique digital media
`
`identifier of the digital media item recited elsewhere in the claim. But the claimed
`
`selection is not limited to a single digital media item, and even if it were, the claims
`
`do not exclude the possibility of selecting other digital media items (e.g., other
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`images) in addition to the recited digital media item.
`
`14. To start, a POSA would understand that the recited “digital media” is
`
`plural and can include one or more images. The term “media” itself is a plural noun,
`
`and the term “digital media” can include the information required to describe a single
`
`image or multiple images. The independent claims of the ’291 patent confirm the
`
`POSA’s understanding when they recite “determining, from a plurality of digital
`
`media accessible to one or more of the plurality of computing devices.” E.g.,
`
`Ex. 1001 at 22:29-30. That is, “digital media” can include multiple images.
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`15. The claims further recite that “a” unique digital media identifier
`
`corresponds to the digital media selection input, but I am informed by counsel that,
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`as a matter of patent law, “a” can mean “one or more.” Accordingly, a POSA would
`
`understand that if “digital media” includes one or more images, then one or more
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`Meta Platforms, Inc. v. Angel Technologies Group LLC
`IPR2023-00058
`Exhibit 1039 - Page 6 of 23
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`IPR2023-00058 (USP 9,959,291)
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` Decl. ISO Petitioner’s Reply
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`unique digital media identifiers would be assigned to the one or more images in the
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`
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`digital media.
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`16. The POSA’s understanding of the claims is further confirmed by the
`
`specification’s description of an embodiment that retrieves multiple images with
`
`varying numbers of tagged individuals. See Ex. 1001 at 16:3-30, Fig. 10. Figure 10
`
`is “a flow chart describing the process for generating a set of search results in
`
`response to a request.” Id. at 16:3-4. At step 1000 of Figure 10, the “client sends a
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`request for images (or a list of images) wherein a specified user, or several users,
`
`have been identified.” Id. at 16:6-8. Thus, a request may include multiple images,
`
`and may also specify multiple users. Indeed, the ’291 patent elaborates that “[w]hen
`
`the request is sent, if more than one user is selected, the resulting page may list only
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`images of the selected users together or, alternatively, any image containing one of
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`the selected users.” Id. at 16:24-27. In this way, the ’291 patent confirms that—just
`
`as in Sharpe—a user may search for several tagged users simultaneously, and the
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`results of the user’s request may include multiple images with varying numbers of
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`tagged users. Patent Owner and Dr. Saber’s interpretation—which limits the recited
`
`request to a single, specific image—would exclude this embodiment.
`
`17. Even if the “digital media selection input” were limited to a single,
`
`specific image, as Patent Owner and Dr. Saber contend, Sharpe still teaches that. As
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`an initial matter, the claims of the ’291 patent are “comprising” claims. See, e.g.,
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`Meta Platforms, Inc.
`Meta Platforms, Inc. v. Angel Technologies Group LLC
`IPR2023-00058
`Exhibit 1039 - Page 7 of 23
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`IPR2023-00058 (USP 9,959,291)
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` Decl. ISO Petitioner’s Reply
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`Ex. 1001 at 22:4-9 (“A method implemented within a computer system … the
`
`method comprising:”). I understand from counsel that “comprising” claims are
`
`open-ended and do not preclude doing additional things beyond what is recited.
`
`Thus, a POSA would understand that the claims of the ’291 patent do not preclude
`
`selecting additional images beyond the “digital media selection input” recited, even
`
`under Patent Owner and Dr. Saber’s narrow interpretation.
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`18.
`
`Sharpe, furthermore, also teaches a request for a single, specific digital
`
`media item. Sharpe explains that the user can use multiple parameters to narrowly
`
`focus a search to “reveal[] a smaller number of items.” Ex. 1005 at 3:29-44. Sharpe
`
`further explains that its system can be used to retrieve a “specific photograph” by
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`“searching on the event or the person.” Id. at 2:21-24. Thus, a POSA would
`
`understand that Sharpe teaches a request for a single, specific digital media item via
`
`its narrowly focused search that returns a single result.3
`
`C.
`
`Sharpe Alone or in View of the Knowledge of a POSA Teaches the
`“List of Descriptive Information” (Claims 13, 14)
`19. As explained in my original declaration, Sharpe alone or in view of the
`
`knowledge of a POSA teaches the claimed “list of descriptive information” of
`
`claims 13 and 14. E.g., Bederson Decl. ¶¶ 221-23. In particular, a POSA would
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`3 Eintracht also teaches a request for a single, specific image, as I discuss below for
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`Ground 2. Infra, ¶¶ 31-32.
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`Meta Platforms, Inc.
`Meta Platforms, Inc. v. Angel Technologies Group LLC
`IPR2023-00058
`Exhibit 1039 - Page 8 of 23
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`IPR2023-00058 (USP 9,959,291)
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` Decl. ISO Petitioner’s Reply
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`understand that Sharpe provides the personal names of the pictured users through
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`
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`the drop-down box 55 of Figure 4 as various images are retrieved by a viewing user,
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`including as part of a nostalgic retrieval. Id.
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`20. Patent Owner and Dr. Saber contend that Sharpe’s drop down box 55
`
`“is not a list of personal names … [r]ather, the drop down list is a list of people in
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`the user’s group.” E.g., Saber Decl. ¶ 103. They offer no explanation or evidence
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`as to why Sharpe’s drop down list cannot serve both purposes of (1) identifying all
`
`individuals of the group, and (2) identifying the subset of individuals pictured in the
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`currently selected images (via their personal names). See id.
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`21.
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`In my opinion, Patent Owner and Dr. Saber fail to properly consider the
`
`knowledge of a POSA. As I previously testified, Sharpe’s figures, including
`
`Figure 4, are simplified illustrations that do not comprehensively disclose all the user
`
`interface capabilities of Sharpe’s system, much less all the user interface design
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`options available to a POSA implementing Sharpe’s system. Ex. 2019 at 44:14-
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`45:13. For example, Sharpe explains that Figure 4 omits a second date entry field
`
`“to allow the entry of both the start and end dates of a time period” for a retrieval.
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`Ex. 1005 at 7:3-6. Sharpe also omits a “medium type” retrieval parameter from
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`Figure 4, and “[a]ny suitable means can be used.” Id. at 9:4-10.
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`22. A POSA, furthermore, would have been aware of multiple user
`
`interface paradigms to implement this functionality. User interface elements that
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`Meta Platforms, Inc. v. Angel Technologies Group LLC
`IPR2023-00058
`Exhibit 1039 - Page 9 of 23
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` Decl. ISO Petitioner’s Reply
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`displayed a full set of options (e.g., all users in a group) along with a selected subset
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`
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`of options (e.g., tagged users from that group) were known in the art. For example,
`
`by the early 1990s, Apple systems included drop-down menus that would place a
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`check mark next to menu items that were currently selected, as illustrated below.
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`
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`Ex. 1043 at 79; see also id. at 81 (similar menu).4 In the above example, which
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`originates from a Mac OS text editor application, the menus list all formatting
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`options available for text. The check marks indicate the formatting applied to the
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`currently selected text. (Based on the check marks, the current text is aligned left,
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`single spaced, and plain.) If the user were to change the properties or select a
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`different section of text, the check marks would change to reflect the current
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`properties.
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`4 APPLE COMPUTER, INC., MACINTOSH HUMAN INTERFACE GUIDELINES (1992)
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`(Ex. 1043).
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`Meta Platforms, Inc. v. Angel Technologies Group LLC
`IPR2023-00058
`Exhibit 1039 - Page 10 of 23
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`IPR2023-00058 (USP 9,959,291)
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`23. Using a Mac OS 8.1 emulator, I confirmed that a Mac OS text editor
`
`application would dynamically update the checkmarks in the menu based on the
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`currently selected text. For example, if the selected text is bolded, then the menu
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`includes a check mark next to the “Bold” property:
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`But if the selected text is both bolded and italicized, then the menu includes a check
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`mark next to both the “Bold” and “Italic” properties:
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`Meta Platforms, Inc.
`Meta Platforms, Inc. v. Angel Technologies Group LLC
`IPR2023-00058
`Exhibit 1039 - Page 11 of 23
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`IPR2023-00058 (USP 9,959,291)
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` Decl. ISO Petitioner’s Reply
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`In this way, the Mac OS menu system demonstrates a POSA’s understanding of that
`
`the same UI element can indicate both a full set of options (e.g., all text formatting
`
`options) along with a selected subset of selected options (e.g., the currently applied
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`formatting).
`
`24. By 1988, Microsoft’s Presentation Manager5 application had a similar
`
`user interface for identifying the currently selected viewing properties. Based on the
`
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`5 Brad A. Myers, “All the Widgets,” Technical Video Program of the SIGCHI’90
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`Conference, Seattle, WA, April 1-4, 1990. SIGGRAPH Video Review, Issue 57,
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`available at https://vimeo.com/61556918 (Microsoft Presentation Manager begins
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`at 30:41, and the “View” menu is presented at 31:36).
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`Meta Platforms, Inc. v. Angel Technologies Group LLC
`IPR2023-00058
`Exhibit 1039 - Page 12 of 23
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`IPR2023-00058 (USP 9,959,291)
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` Decl. ISO Petitioner’s Reply
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`placement of the check marks, file names are listed, and the items are sorted by file
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`
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`name. Other, unselected options include displaying file details and icons, and
`
`sorting by file type:
`
`
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`25. Other user interface design options, including property sheets, were
`
`known to a POSA at the time of the purported invention of the ’291 patent. Property
`
`sheets would list all available properties while using shading or other indications to
`
`dynamically reflect the properties of a current selection in another portion of the user
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`interface. Property sheets were available in the Xerox Star system at least by 1990.6
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`The following image illustrates a property sheet from the Xerox Star system. The
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`6 See “All the Widgets,” supra, at 1:22:33.
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`Meta Platforms, Inc.
`Meta Platforms, Inc. v. Angel Technologies Group LLC
`IPR2023-00058
`Exhibit 1039 - Page 13 of 23
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`IPR2023-00058 (USP 9,959,291)
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` Decl. ISO Petitioner’s Reply
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`shaded portions of the property sheet reflect the properties of the currently selected
`
`
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`text in the corresponding document:
`
`
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`26. Thus, showing a list of pictured users (including their personal names)
`
`using Sharpe’s drop-down box 55 would have been a simple matter of design choice
`
`to a POSA implementing Sharpe’s system. A POSA would have known of the
`
`menus with check marks included in prior art Apple and Microsoft systems, and
`
`could have implemented that design option by placing check marks in Sharpe’s drop-
`
`down box 55 to reflect the individuals in the currently displayed images in Sharpe’s
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`work space 51. Or, a POSA could have implemented Sharpe’s drop-down box 55
`
`using the principles of property sheets from the Xerox prior art system, using shading
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`Meta Platforms, Inc. v. Angel Technologies Group LLC
`IPR2023-00058
`Exhibit 1039 - Page 14 of 23
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` Decl. ISO Petitioner’s Reply
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`to indicate the individuals identified in the currently displayed images in Sharpe’s
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`work space 51.
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`III. GROUND 2: SHARPE IN VIEW OF EINTRACHT RENDERS
`OBVIOUS CLAIMS 1-26
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`27.
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`In my original declaration, I explained why claims 1-26 of the ’291
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`patent would also have been obvious over Sharpe in view of Eintracht. I understand
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`from counsel that Patent Owner and Dr. Saber disagreed with some of my
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`conclusions. Counsel has asked me to address some of those disagreements, and I
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`do so in the following paragraphs.
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`A. A POSA Would Have Been Motivated to Combine Sharpe with
`Eintracht
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`28. As I previously explained, a POSA would have been motivated to
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`combine the teachings of Sharpe and Eintracht with a strong expectation of success.
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`Bederson Decl. ¶¶ 252-58. Patent Owner and Dr. Saber assert that Sharpe and
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`Eintracht are “fundamentally different systems with different goals.” E.g., Saber
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`Decl. ¶¶ 110-12. For example, Dr. Saber opines that “Eintracht is not related to
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`archival and retrieving of digital media items, nor is Sharpe related to collaborative
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`document annotation.” Id. ¶ 112. I disagree.
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`29. A POSA would have recognized that Sharpe and Eintracht disclose
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`overlapping systems and goals. Eintracht’s collaborative system operates on “a
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`variety of document types,” including digital media items—indeed, the primary
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`Meta Platforms, Inc.
`Meta Platforms, Inc. v. Angel Technologies Group LLC
`IPR2023-00058
`Exhibit 1039 - Page 15 of 23
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`IPR2023-00058 (USP 9,959,291)
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` Decl. ISO Petitioner’s Reply
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`example in the specification is the annotation of an image. See, e.g., Ex. 1006 at
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`
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`6:55-7:23, Figs. 1A, 1B, 1C, 2. Sharpe similarly contemplates collaborative work
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`with documents and images, including the application of its system in a business
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`context—with archival and retrieval of “digital media items” relating to a meeting,
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`such as e-mails, letters, and presentations. See, e.g., Ex. 1005 at 3:45-56. Thus,
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`Sharpe and Eintracht overlap because they both expressly contemplate collaborative
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`work involving the annotation of digital media items.
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`30. And, as I explained in my declaration, both Sharpe and Eintracht are
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`also structurally similar, web-based, multi-user collaborative systems implemented
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`on a server and accessible via the Internet. Bederson Decl. ¶¶ 257-58. Patent Owner
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`and Dr. Saber do not acknowledge, much less dispute, my analysis regarding the
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`structural similarity of Sharpe and Eintracht.
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`B.
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`Sharpe in View of Eintracht Teaches “Digital Media Selection”
`Under PO’s Interpretation (1[d], 5, 12-14)
`
`31. As noted above, Patent Owner and Dr. Saber argue that “digital media
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`selection” is exclusively for, or otherwise limited to, a selection of a single, specific
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`digital media item. Supra ¶¶ 11-18. For all the reasons discussed above, I disagree.
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`Id. And, as discussed above, Sharpe alone or in view of the knowledge of a POSA
`
`teaches the claimed selection under their improper interpretation. Id. I add here that
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`Sharpe in view of Eintracht also teaches the claimed selection under the improper
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`interpretation of Patent Owner and Dr. Saber.
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`Meta Platforms, Inc.
`Meta Platforms, Inc. v. Angel Technologies Group LLC
`IPR2023-00058
`Exhibit 1039 - Page 16 of 23
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`IPR2023-00058 (USP 9,959,291)
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`
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` Decl. ISO Petitioner’s Reply
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`32. Like Sharpe, Eintracht similarly discloses the selection of a single,
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`
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`specific image. For example, Eintracht discloses an “annotation session,” illustrated
`
`in Figure 6, in which “[t]he client first issues a request to the server to view a
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`particular document by selecting its corresponding document URL.” Ex. 1006 at
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`13:41-43, Fig. 6 (step 110). “[T]he server then responds by sending the document
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`data, i.e., image data in this example, to the client.” Id. at 13:56-58, Fig. 6 (step
`
`118). Thus, a POSA would understand that Eintracht also teaches the selection of a
`
`single, specific image as part of its annotation session.
`
`C.
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`Sharpe in View of Eintracht Teaches the Claimed Email
`Notifications (Claims 2 & 3)
`
`33. As I explained in my original declaration, Sharpe in view of Eintracht
`
`discloses the claimed email notification of dependent claims 2 and 3. Bederson Decl.
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`¶¶ 264-65. Patent Owner and Dr. Saber acknowledge that Eintracht discloses email
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`notifications, but assert that Eintracht’s “notifications are related simply to an event,
`
`not to notification of an association.” E.g., Saber Decl. ¶ 113. Thus, Eintracht does
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`not disclose “the email would include information about the association.” Id.
`
`34.
`
`I disagree with Patent Owner and Dr. Saber’s analysis. Once again,
`
`they improperly view the teachings of Sharpe and Eintracht in isolation. When
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`properly viewed in context of the combined teachings of Sharpe and Eintracht, it
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`would have been obvious to a POSA that the email notification would include
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`information about the annotation as recited in claims 2 and 3. As I explained, a
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`Meta Platforms, Inc.
`Meta Platforms, Inc. v. Angel Technologies Group LLC
`IPR2023-00058
`Exhibit 1039 - Page 17 of 23
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`IPR2023-00058 (USP 9,959,291)
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` Decl. ISO Petitioner’s Reply
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`POSA would have recognized that the association of user with a photo is an event
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`that would trigger an email alert in the combined system. See, e.g., Bederson Decl.
`
`¶ 265. A POSA would have further recognized that Eintracht’s email notification
`
`can include “any portion of the notes along with additional information … when a
`
`new annotation is added.” Id. The most obvious “additional information” to include
`
`in the email notification would be information about the image annotation that
`
`triggered the notification in the first place. Patent Owner and Dr. Saber fail to
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`appreciate that the POSA is capable of ordinary creativity, and ordinary creativity is
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`all that is required to reach the limitation of claims 2 and 3 in view of the combined
`
`teachings of Sharpe and Eintracht.
`
`D.
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`Sharpe in View of Eintracht Teaches “Coordinates” (Claim 6)
`
`35. As I explained in my original declaration, Sharpe in view of Eintracht
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`discloses the claimed “coordinates” of claim 6. Bederson Decl. ¶¶ 270-72. Indeed,
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`Eintracht expressly discloses an annotation located at specific (X, Y) coordinates.
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`Id. (citing Ex. 1006 at 7:62-64, 10:56-63, 17:28-29, 18:52-53).
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`36.
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`Patent Owner and Dr. Saber nevertheless dispute that Sharpe in view of
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`Eintracht discloses the claimed “coordinates.” E.g., Saber Decl. ¶¶ 115-21. For
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`example, Dr. Saber admits that Sharpe “discloses people depicted in images,” yet
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`opines that a POSA would not have made the combination because “Eintracht does
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`not disclose people depicted in images.” Id. ¶ 119-20. Dr. Saber explains that
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`Meta Platforms, Inc. v. Angel Technologies Group LLC
`IPR2023-00058
`Exhibit 1039 - Page 18 of 23
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`IPR2023-00058 (USP 9,959,291)
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` Decl. ISO Petitioner’s Reply
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`“Petitioner has proposed a primary reference (Sharpe) that discloses people, and a
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`
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`secondary reference (Eintracht) that discloses coordinates in an entirely different
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`context.” Id. ¶ 120.
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`37.
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`I disagree with Patent Owner and Dr. Saber’s analysis. They
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`improperly view the teachings of Sharpe and Eintracht in isolation. When properly
`
`viewed in context of the combined teachings of Sharpe and Eintracht, it would have
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`been obvious to a POSA to annotate an image with name of the pictured individual
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`at a particular location, as recited in claim 6. Sharpe discloses the annotation of
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`images to identify users within those images, and Eintracht discloses that the user
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`identifies a specific (X, Y) coordinate location in an image for an associated
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`annotation. E.g., Bederson Decl. ¶ 271.
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`38. Patent Owner and Dr. Saber also argue that Eintracht’s annotations
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`would “potentially obscure[e]” a user within an image because the annotations are
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`placed over the image. E.g., Saber Decl. ¶ 117. Once again, they take an overly
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`limited view of the prior art’s teachings and the knowledge and skill of a POSA. As
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`with Sharpe, the annotations presented in Eintracht’s figures are simplified
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`illustrations that do not account for every aspect of the user interface. See, e.g.,
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`Ex. 1006 at 4:56-62, 6:55-65, 19:38-41 (figures are examples for illustrative
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`purposes). Furthermore, it was well within the skill of a POSA to implement
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`Eintracht’s annotations without obscuring the users depicted in the image.
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`Meta Platforms, Inc.
`Meta Platforms, Inc. v. Angel Technologies Group LLC
`IPR2023-00058
`Exhibit 1039 - Page 19 of 23
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`IPR2023-00058 (USP 9,959,291)
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` Decl. ISO Petitioner’s Reply
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`“Tool tips” were a common user interface element at the time of the
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`39.
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`purported invention of the ’291 patent. A tool tip is a text box that appears when the
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`user hovers the cursor over another element in the user interface, and disappears
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`when the user moves the cursor away. See Ex. 1044 at 168, 343.7 For example, the
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`tool tip “Small Icons” appears when the user hovers the cursor over the
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`corresponding toolbar button:
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`
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`Id. at 343. A POSA would have recognized that Eintracht’s annotations could have
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`been implemented as tool tips so that they annotations only appear when the user
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`hovers a cursor over the tagged individual.
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`40. Alternatively, or in combination, a POSA could have implemented
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`Eintracht’s annotations using transparency. Transparent windows and menus were
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`known in the art at the time of the purported invention of the ’291 patent. For
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`7 MICROSOFT PROFESSIONAL REFERENCE, THE WINDOWS INTERFACE GUIDELINES
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`FOR SOFTWARE DESIGN (1995) (Ex. 1044).
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`Meta Platforms, Inc. v. Angel Technologies Group LLC
`IPR2023-00058
`Exhibit 1039 - Page 20 of 23
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`IPR2023-00058 (USP 9,959,291)
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` Decl. ISO Petitioner’s Reply
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`example, a 1996 paper8 provides “a systematic evaluation of transparent user
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`interfaces.” Ex. 1045 at 1. The paper demonstrates how transparent and semi-
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`transparent text menus can be
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