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`Filed on behalf of: Meta Platforms, Inc.
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`Filed: November 17, 2023
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
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`META PLATFORMS, INC.
`Petitioner,
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`v.
`
`ANGEL TECHNOLOGIES GROUP LLC,
`Patent Owner.
`__________________
`Case No. IPR2023-00058
`U.S. Patent No. 9,959,291
`__________________
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`IPR2023-00058 (USP 9,959,291)
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`TABLE OF CONTENTS
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` Petitioner’s Reply
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`B.
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`C.
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`D.
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`E.
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`F.
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`INTRODUCTION ........................................................................................... 1
`GROUND 1: SHARPE ALONE OR IN VIEW OF THE
`KNOWLEDGE OF A POSA RENDERS OBVIOUS CLAIMS 1, 5,
`10-26 ................................................................................................................ 1
`A.
`Sharpe Alone Or In View Of The Knowledge Of A POSA
`Teaches The “Unique User Identifier” (26[d-e], 1[e-g]) ...................... 2
`Sharpe Alone Or In View Of The Knowledge Of A POSA
`Teaches The “Digital Media Selection Input” (1[d], 5, 12-14) ............ 5
`PO Misinterprets the Claim Language ........................................ 6
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`Even Under PO’s Incorrect Interpretation, the Prior Art
`Discloses the Limitation ............................................................. 7
`PO’s Remaining Argument is Meritless ..................................... 8
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`Sharpe Alone Or In View Of The Knowledge Of A POSA
`Teaches Independent Claims 24 And 25 ............................................... 8
`Sharpe Alone Or In View Of The Knowledge Of A POSA
`Teaches The “List of Descriptive Information” (Claims 13, 14) .......... 9
`Sharpe Alone Or In View Of The Knowledge Of A POSA
`Teaches The Remaining Dependent Claims (Claims 15, 17, 19) ....... 11
`Dependent Claim 15 Would Have Been Obvious .................... 11
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`Dependent Claim 17 Would Have Been Obvious .................... 12
`Dependent Claim 19 Would Have Been Obvious .................... 13
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`The Petition Plainly Presents Sharpe As A Single-Reference
`Obviousness Ground ........................................................................... 13
` GROUND 2: SHARPE IN VIEW OF EINTRACHT RENDERS
`OBVIOUS CLAIMS 1-26 ............................................................................. 18
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` Petitioner’s Reply
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`C.
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`B.
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`A. A POSA Would Have Been Motivated To Combine Sharpe
`With Eintracht ..................................................................................... 18
`PO Fails To Address Eintracht’s Disclosure Of The Purportedly
`Missing Claim Limitations (Claims 1, 13, 14, 24, 25) ........................ 20
`Sharpe In View Of Eintracht Teaches The Claimed Email
`Notifications (Claims 2, 3) .................................................................. 21
`Sharpe In View Of Eintracht Teaches “Coordinates” (Claim 6) ........ 22
`D.
` GROUNDS 3 & 4: SHARPE IN VIEW OF CAREY, AND SHARPE
`IN VIEW OF EINTRACHT AND CAREY RENDERS OBVIOUS
`CLAIMS 18-19, 26 ........................................................................................ 24
`CONCLUSION .............................................................................................. 25
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` Petitioner’s Reply
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
`Adobe, Inc. v. Realtime Adaptive Streaming LLC,
`No. IPR2019-00712, 2020 WL 4809374 (P.T.A.B. Aug. 17, 2020) .................. 16
`Application of Skoner,
`517 F.2d 947 (C.C.P.A. 1975) ............................................................................ 14
`Arctic Cat Inc. v. Bombardier Recreational Prods. Inc.,
`876 F.3d 1350 (Fed. Cir. 2017) .......................................................................... 15
`Beckson Marine, Inc. v. NFM, Inc.,
`292 F.3d 718 (Fed. Cir. 2002) ............................................................................ 20
`Bradium Techs. LLC v. Iancu,
`923 F.3d 1032 (Fed. Cir. 2019) ...................................................................... 9, 22
`Dow Jones & Co., Inc. v. Ablaise Ltd.,
`606 F.3d 1338 (Fed. Cir. 2010) .................................................................... 14, 16
`Elekta Ltd. v. ZAP Surgical Sys., Inc.,
`81 F.4th 1368 (Fed. Cir. 2023) ......................................................... 12, 22, 23, 24
`EWP Corp. v. Reliance Universal Inc.,
`755 F.2d 898 (Fed. Cir. 1985) ............................................................................ 22
`Genentech, Inc. v. Chiron Corp.,
`112 F.3d 495 (Fed. Cir. 1997) .............................................................................. 7
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .......................................................................... 15
`Koninklijke Philips N.V. v. Google LLC,
`948 F.3d 1330 (Fed. Cir. 2020) .......................................................................... 14
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ................................................................................ 11, 12, 22
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` Petitioner’s Reply
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`M&K Holdings, Inc. v. Samsung Elecs. Co.,
`985 F.3d 1376 (Fed. Cir. 2021) .................................................................... 17, 18
`Maxlite, Inc. v. Jiaxing Super Lighting Elec. Appliance Co., Ltd.,
`No. IPR2020-00208, 2022 WL 1416695 (P.T.A.B. Apr. 29, 2022) .... 5, 8, 21, 25
`Novartis Pharms. Corp. v. West-Ward Pharms. Int’l Ltd.,
`923 F.3d 1051 (Fed. Cir. 2019) .......................................................................... 23
`Polygroup Ltd. MCO v. Willis Elec. Co., Ltd,
`759 F. App’x 934 (Fed. Cir. 2019) ..................................................................... 16
`Realtime Data, LLC v. Iancu,
`912 F.3d 1368 (Fed. Cir. 2019) .................................................................... 15, 16
`Smith & Nephew, Inc. v. Ethicon, Inc.,
`276 F.3d 1304 (Fed. Cir. 2001) ............................................................................ 7
`In re Stepan Co.,
`868 F.3d 1342 (Fed Cir. 2017) ..................................................................... 16, 17
`Therasense, Inc. v. Becton, Dickinson & Co.,
`593 F.3d 1325 (Fed. Cir. 2010) .......................................................................... 16
`TQ Delta, LLC v. Cisco Sys., Inc.,
`942 F.3d 1352 (Fed. Cir. 2019) ...................................................................... 9, 20
`Other Authorities
`37 C.F.R. § 42.23(b) .................................................................................................. 5
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` Petitioner’s Reply
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`Exhibit
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`EXHIBIT LIST
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`Description
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`1015
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`U.S. Patent No. 9,959,291 (“’291 Patent”)
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`Prosecution History of U.S. Patent No. 9,959,291 (“’291 FH”)
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`Declaration of Dr. Benjamin B. Bederson (“Bederson”)
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`Curriculum Vitae of Dr. Benjamin B. Bederson
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`U.S. Patent No. 7,461,099 to Sharpe et al. (“Sharpe”)
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`U.S. Patent No. 6,687,878 to Eintracht et al. (“Eintracht”)
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`U.S. Patent No. 6,714,793 to Carey et al. (“Carey”)
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`Prosecution History of U.S. Patent No. 10,628,480 (“’480 FH”)
`
`Excerpt from THE OXFORD AMERICAN DICTIONARY AND LANGUAGE
`GUIDE (1999), at 203 (contact)
`Excerpt from THE AMERICAN HERITAGE DICTIONARY (4th ed. 2001),
`at 191 (contact)
`Kuchinsky et al., FotoFile: A Consumer Multimedia Organization and
`Retrieval System, CHI ’99: PROCEEDINGS OF THE SIGCHI
`CONFERENCE ON HUMAN FACTORS IN COMPUTING SYSTEMS, 496-503
`(May 1999) (“FotoFile”)
`U.S. Patent No. 7,739,139 to Robertson, et al. (“Robertson”)
`
`U.S. Patent App. Pub. No. 2002/0055955 to Lloyd-Jones, et al.
`(“Lloyd-Jones”)
`Reserved
`
`Yuichi Yagawa et al., The Digital Album: A Personal File-tainment
`System, PROCEEDINGS OF THE THIRD IEEE INTERNATIONAL
`CONFERENCE ON MULTIMEDIA COMPUTING AND SYSTEMS
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`Exhibit
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`Description
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`1016
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`1017
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`1019
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`1020
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`1021
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`(MULTIMEDIA ’96), June 17-23, 1996, at 433-39
`Ben Shneiderman & Hyunmo Kang, Direct Annotation: A Drag-and-
`Drop Strategy for Labeling Photos, 2000 IEEE INTERNATIONAL
`CONFERENCE ON INFORMATION VISUALIZATION (IV ’00), July 19-21,
`2000
`Benjamin B. Bederson et al., Pad++: A Zoomable Graphical
`Sketchpad For Exploring Alternate Interface Physics, 7 J. OF VISUAL
`LANGUAGES & COMPUTING 3 (1996)
`1018 Mark Roseman & Saul Greenberg, Building Real-Time Groupware
`with GroupKit, a Groupware Toolkit, 3 ACM TRANSACTIONS ON
`COMPUTER-HUMAN INTERACTION 1 (Mar. 1996), at 66-106
`Excerpts from ROB KIRKLAND ET AL., DOMINO SYSTEM
`ADMINISTRATION (1999)
`Excerpts from DOROTHY BURKE & JANE CALABRIA, TEN MINUTE
`GUIDE TO LOTUS NOTES 4.6 (1997)
`Elizabeth F. Churchill, et al., Anchored Conversations: Chatting in the
`Context of a Document, CHI ’00: PROCEEDINGS OF THE SIGCHI
`CONFERENCE ON HUMAN FACTORS IN COMPUTING SYSTEMS, April
`2000, at 454-61
`1022 Mark S. Ackerman & David W. McDonald, Answer Garden 2:
`Merging Organizational Memory with Collaborative Help, CSCW
`’96: PROCEEDINGS OF THE 1996 ACM CONFERENCE ON COMPUTER
`SUPPORTED COOPERATIVE WORK, Nov. 1996, at 97-105
`U.S. Patent No. 6,175,831 to Weinreich, et al.
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`1023
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`1024
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`1025
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`1026
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`Excerpts from C.J. DATE, AN INTRODUCTION TO DATABASE SYSTEMS
`(6th ed. 1995)
`Excerpts from RANDY JAY YARGER ET AL., MYSQL & MSQL (1st ed.
`1999)
`Ulla Merz & Roger King, DIRECT: A Query Facility for Multiple
`Databases, 12 ACM TRANSACTIONS ON INFORMATION SYSTEMS 4
`(Oct. 1994), at 339-59
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`Exhibit
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`Description
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`1027
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`1028
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`1029
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`1030
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`1031
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`1032
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`1033
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`1034
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`1035
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`1036
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`1037
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`1038
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`1039
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`1040
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`1041
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`1042
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`1043
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`Excerpts from CHARLES DYE, ORACLE DISTRIBUTED SYSTEMS (1999)
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`U.S. Patent No. 6,442,573 to Schiller, et al.
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`Reserved
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`Reserved
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`Reserved
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`Reserved
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`Reserved
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`Reserved
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`Reserved
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`Board correspondence with Petitioner dated Feb. 24, 2023
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`Declaration of Eric E. Lancaster in support of Petitioner’s motion for
`pro hac vice admission dated June 14, 2023
`Declaration of Sara L. Townsend in support of Petitioner’s motion for
`pro hac vice admission dated June 14, 2023
`Declaration of Dr. Benjamin B. Bederson in Support of Petitioner’s
`Reply (“Bederson Reply”)
`Deposition transcript of Dr. Eli Saber dated Oct. 20, 2023 (Vol. I)
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`Reserved
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`Gilles Falquet, et al., Generating Hypertext Views on Databases,
`ACTES DU XIVÈME CONGRÈS INFORSID 269, 269-84 (1996)
`Excerpts from APPLE COMPUTER, INC., MACINTOSH HUMAN
`INTERFACE GUIDELINES (1992)
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`Exhibit
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`1044
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`1045
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`Description
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`Excerpts from MICROSOFT PROFESSIONAL REFERENCE, THE WINDOWS
`INTERFACE GUIDELINES FOR SOFTWARE DESIGN (1995)
`Beverly L. Harrison & Kim J. Vicente, An Experimental Evaluation
`of Transparent Menu Usage, CHI ’96: PROCEEDINGS OF THE SIGCHI
`CONFERENCE ON HUMAN FACTORS IN COMPUTING SYSTEMS, April
`2000, at 391-398
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` Petitioner’s Reply
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`INTRODUCTION
`The Petition established that the claims of the ’291 Patent would have been
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`obvious over the asserted prior art. PO cannot establish otherwise. Indeed, PO does
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`not even dispute that the asserted prior art discloses the purported point of novelty
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`that the Applicant belatedly added to obtain allowance—i.e., selecting users to tag
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`from a contact list. PO also no longer attempts to swear behind the asserted prior
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`art, abandoning the failed position it took in its Preliminary Response.
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`Instead, PO now resorts to a patchwork of mischaracterizations of fact and
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`misstatements of law to argue that the asserted prior art does not disclose various
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`non-novel claim limitations. None of its arguments have merit. PO’s last-ditch
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`arguments fail to properly consider the asserted prior art references for all that they
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`teach, and would improperly reduce the POSA to a robotic automaton devoid of any
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`common sense. The Board should reject PO’s arguments and find all challenged
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`claims unpatentable.
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` GROUND 1: SHARPE ALONE OR IN VIEW OF THE KNOWLEDGE
`OF A POSA RENDERS OBVIOUS CLAIMS 1, 5, 10-26
`For Ground 1, PO’s Response relies on mischaracterizations of Petitioner’s
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`arguments and the asserted references. POR 18-44. PO also disputes the Petition’s
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`identification of Sharpe as a single-reference obviousness ground. Id., 44-49. But
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`PO’s arguments fail.
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`A.
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`Sharpe Alone Or In View Of The Knowledge Of A POSA Teaches
`The “Unique User Identifier” (26[d-e], 1[e-g])
`Sharpe teaches the claimed unique user identifier through its username. E.g.,
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`Pet. 25-26, 36-38, 43-46. As explained in the Petition, a POSA would have
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`understood that Sharpe’s database system uses a primary key to uniquely identify
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`users and form associations in its database, and a POSA would have recognized
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`Sharpe’s username as an obvious design choice for implementing the primary key
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`in view of Sharpe’s disclosures. See id. (citing Bederson ¶¶138-43, 173-79).
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`In response, PO attacks a straw man. See POR 18-24, 29-33. According to
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`PO, Petitioner has presented an inherency argument that must fail because there are
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`other ways for a POSA to implement a primary key in Sharpe. See, e.g., id., 21
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`(“Petitioner’s argument is flawed because the mere fact that the user name might be
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`used in the manner describe[d] in the Petition is insufficient for demonstrating
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`inherency.” (first emphasis original)), 24 (“The existence of even one other way to
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`associate images with the named user
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`. . . defeats Petitioner’s inherency
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`argument.”).1
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`PO’s straw-man inherency argument rests on a mischaracterization of the
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`Petition, which never argues that Sharpe’s system must use the username as unique
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`user identifier. See, e.g., Saber ¶81 (“It appears that Petitioner and Dr. Bederson are
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`1 All emphasis added unless otherwise indicated.
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`saying that Sharpe’s system must use the user name … as a unique identifier or
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`‘primary key.’”). Rather, the Petition establishes that the username would have been
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`an obvious design choice for a primary key in view of Sharpe’s teachings and the
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`knowledge of a POSA. See, e.g., Pet. 25-26, 36-38; Bederson ¶¶138-43, 173-79.
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`PO relies on selective quotations to misleadingly assert that the Petition
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`argued that “the username would be the primary key.” POR 19 (emphasis introduced
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`by PO). The full quote, which PO omits, reveals that the Petition was merely
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`distinguishing between the username and the personal name of the user, which had
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`already been discussed earlier in the analysis. Pet. 36-37 (“Although the username
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`of each person in the group is not shown in the figures of Sharpe, a POSA would
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`understand that the username would be the primary key for the database 3 (also
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`called “Database of Groups of People”) and not the personal name of the user
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`because multiple people in the group could have the same personal name (i.e., a
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`person’s name is not unique).”); see also id., 28-29 (introducing personal name for
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`claim element 26[a]).
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`As Dr. Bederson explains, a username is not the only possible choice, but the
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`most obvious design choice in view of Sharpe’s teachings. Bederson Reply ¶¶7-9.
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`For example, Dr. Bederson opines that a POSA would have understood that a
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`username is one such unique identifier. Id. He explains that usernames are often
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`used as primary keys in database schemas, and the most obvious design choice for
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`the Sharpe system given that each user already required a username to log on to the
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`system. Id.; see also Bederson ¶¶111-27 (discussing primary keys between multiple
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`databases).
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`PO and its expert appear to agree that a username is one of several potential
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`unique user identifiers available to a POSA to implement the databases disclosed in
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`Sharpe.2 For example, Dr. Saber does not dispute that a username can be a primary
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`key. Instead, he opines that the username does not “need” to be the primary key,
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`and that there are several other ways to keep track of users and form associations,
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`such as assigning an internal unique identifier to each user. See, e.g., Saber ¶¶81-
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`82, 86. Similarly, PO focuses its argument on “another possible way” to implement
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`Sharpe’s system beyond the username—“a piece of data different than the user name
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`for keeping track of each user.” E.g., POR 20-22, 24. But regardless of how many
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`different potential unique identifiers PO identifies, these options are irrelevant.
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`Rather, what matters is that there is no genuine dispute that a POSA would have
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`understood Sharpe’s username to be an available design option for implementing
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`Sharpe’s databases. Accordingly, PO cannot legitimately dispute that usernames—
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`2 To the extent that PO disputes that a username can be used as a primary key, it
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`was known in the art to utilize usernames as primary keys in database schemas.
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`Bederson Reply ¶10.
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`a known and available design option—would have been obvious in view of Sharpe’s
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`teachings.3
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`B.
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`Sharpe Alone Or In View Of The Knowledge Of A POSA Teaches
`The “Digital Media Selection Input” (1[d], 5, 12-14)
`Sharpe teaches the claimed “digital media selection input” through its image
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`retrieval process. Pet. 42-43, 48, 50-51. PO’s contentions otherwise are premised
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`on a misinterpretation of the claim language. See POR 25-29, 34-40. Specifically,
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`PO contends that the digital media selection input must only include the particular
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`digital media item, and no other digital media items. But nothing in the claim
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`language compels this interpretation. And regardless, even under PO’s incorrect
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`interpretation of the claims, the recited “digital media selection input” is taught by
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`the prior art. PO’s remaining argument lacks merit.
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`3 Even if Sharpe did not teach the “unique user identifier,” Eintracht discloses it.
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`Pet. 62-64. PO failed to address that analysis and has waived any rebuttal. Maxlite,
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`Inc. v. Jiaxing Super Lighting Elec. Appliance Co., Ltd., No. IPR2020-00208, 2022
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`WL 1416695, at *12 n.6 (P.T.A.B. Apr. 29, 2022) (“It is a long-standing practice in
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`IPR proceedings that arguments not raised in the Patent Owner Response are
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`waived.”) (citing 37 C.F.R. § 42.23(b)).
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` Petitioner’s Reply
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`PO Misinterprets the Claim Language
`PO asserts that Sharpe fails to disclose the claimed digital media selection
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`input because Sharpe’s image retrieval is not limited to a “specific” or “particular”
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`digital media item. E.g., POR 28. According to PO, Sharpe “find[s] any digital
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`media items that match the parameters inputted by the user.” Id. Because “multiple
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`images may turn up … Sharpe does not disclose determining a ‘a unique digital
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`media identifier’ corresponding to the user’s input.” Id. PO repeats this argument
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`several times in its Response. See, e.g., POR 34, 35-36, 38-39.
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`PO’s argument is premised on a misinterpretation of the claim language. “[A]
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`unique digital media identifier corresponding to a digital media selection input” does
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`not require the claimed selection to be limited to a specific or particular image.
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`Rather, “a digital media selection input” merely requires that the selection include
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`the unique digital media identifier that is recited later in the claim—i.e., the unique
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`identifier(s) of the one or more digital media items in which the first user is tagged
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`by the second user. Bederson Reply ¶¶13-16.
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`As an initial matter, the term “digital media” is plural and can include multiple
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`images, based on both plain English and the disclosure of the ’291 Patent itself. See,
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`e.g., EX1001, 22:29-30 (“determining, from a plurality of digital media accessible
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`to one or more of the plurality of computing devices”). Even if “digital media” were
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`limited to a single item, the claims of the ’291 Patent are open-ended “comprising”
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`claims that are not limited to the recited elements. Instead, “other elements may be
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`added and still form a construct within the scope of the claim.” Genentech, Inc. v.
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`Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997).
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`Importantly, PO’s interpretation would exclude the preferred embodiment
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`disclosed in the ’291 Patent, in which multiple images are returned in response to a
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`request. Bederson Reply ¶16. For example, in Figure 10 at step 1000, the “client
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`sends a request for images (or a list of images) wherein a specified user, or several
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`users, have been identified.” EX1001, 16:3-14, Fig. 10. The ’291 Patent explains
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`that—just as in Sharpe—a user may search for several tagged users simultaneously,
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`and the results may include multiple images with varying numbers of tagged users.
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`See id., 16:14-30.
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` Accordingly, the Board should reject PO’s incorrect
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`interpretation. See Smith & Nephew, Inc. v. Ethicon, Inc., 276 F.3d 1304, 1309-10
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`(Fed. Cir. 2001) (“A claim interpretation that would exclude the reasonable practice
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`of the method taught in the patent is rarely the correct interpretation.”)
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`Even Under PO’s Incorrect Interpretation, the Prior Art
`Discloses the Limitation
`Even under PO’s improper narrowing interpretation, the claimed selection is
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`disclosed by the prior art. For example, Sharpe also explains that the user can use
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`multiple parameters to narrowly focus a search to “reveal[] a smaller number of
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`items.” EX1005, 3:29-44. Indeed, Sharpe explains that its system can be used to
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`retrieve a “specific photograph” by “searching on the event or the person.” Id., 2:21-
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`24. Thus, a POSA would understand that Sharpe teaches a request for a single,
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`specific image via its narrowly focused search that returns a single result. Bederson
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`Reply ¶¶17-18.4
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`PO’s Remaining Argument is Meritless
`PO tacks on a meritless argument for claim 12. PO asserts that the Petition
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`fails to address the “specific temporal and causative sequence” in which an interface
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`is presented “in response to” storing an association. POR 36. PO fails to account
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`for the Petition’s express incorporation of its analysis of element 1[h] into the
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`relevant section, which establishes the obviousness of the action that initiates the
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`responsive elements of claim 12. See Pet. 50-51 (“After storing the association
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`discussed in 1[h] … Sharpe teaches that the GUI is still available [for tagging].”).
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`C.
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`Sharpe Alone Or In View Of The Knowledge Of A POSA Teaches
`Independent Claims 24 And 25
`PO does not separately challenge claims 24 and 25, relying instead on the
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`flawed arguments addressed above. See POR 43-44. Any arguments otherwise are
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`waived. See Maxlite, 2022 WL 1416695, at *12 n.6.
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`4 Eintracht also discloses this limitation under PO’s improper narrowing
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`interpretation. See infra, 21-22.
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`D.
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`Sharpe Alone Or In View Of The Knowledge Of A POSA Teaches
`The “List of Descriptive Information” (Claims 13, 14)
`Sharpe teaches the “list of descriptive information” of claims 13 and 14.
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`Pet. 51-53 (citing Bederson ¶¶221-23). In particular, the Petition explains how a
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`POSA would understand that Sharpe provides the personal names of the pictured
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`users through the drop-down box 55 of Figure 4 as various images are retrieved by
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`a viewing user, including as part of a nostalgic retrieval. See id.
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`In response, PO and its expert offer little more than “not so.” POR 37-38. PO
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`insists that the “drop down list is not a list of personal names … rather, it is a list of
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`people in the user’s group.” Id. PO provides no evidence in support of its false
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`choice other than the declaration of its expert, who repeats the statements nearly
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`verbatim. Saber ¶103. This conclusory testimony is not entitled to any weight. TQ
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`Delta, LLC v. Cisco Sys., Inc., 942 F.3d 1352, 1358 (Fed. Cir. 2019).
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`To the extent that PO contends that Sharpe’s Figure 4 does not expressly show
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`the list of pictured users, PO fails to appreciate Sharpe “not only for what it expressly
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`teaches, but also for what it fairly suggests.” Bradium Techs. LLC v. Iancu, 923 F.3d
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`1032, 1049 (Fed. Cir. 2019). As Dr. Bederson testified, a POSA would have
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`understood
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`that Sharpe’s figures are simplified
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`illustrations
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`that do not
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`comprehensively disclose all capabilities of Sharpe’s user interface. EX2019, 44:14-
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`45:13; see also EX1005, 7:3-6, 9:4-10 (describing UI elements not shown in Fig. 4);
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`Bederson Reply ¶¶20-21. As explained, a POSA would have recognized this feature
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`as a simple design choice. Pet. 51 (citing Bederson ¶223). For example, a POSA
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`would have understood that Sharpe’s UI would update during repeated searches to
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`show the currently tagged users. Bederson Reply ¶19. PO has offered no evidence
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`suggesting otherwise.
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`To the extent that PO argues that Sharpe’s drop-down box 55 cannot be both
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`a list of people pictured in an image and a list of people in the group, PO is mistaken.
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`Drop-down boxes that displayed a full set of options (e.g., all users in a group) along
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`with a selected subset of options (e.g., tagged users from that group) were known in
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`the art. Bederson Reply ¶¶22-26. For example, by the early 1990s, Apple systems
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`included drop-down menus that would place a checkmark next to menu items that
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`were currently selected, as illustrated below:
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`Id. (citing EX1043). Thus, showing a list of pictured users using Sharpe’s drop-
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`down box 55 would have been a simple matter of design choice to a POSA. Id. To
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`the extent PO argues otherwise, the Board should reject PO’s unsupported
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`argument.5
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`E.
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`Sharpe Alone Or In View Of The Knowledge Of A POSA Teaches
`The Remaining Dependent Claims (Claims 15, 17, 19)
`PO dedicates a substantial portion of its Response to disputing the prior art’s
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`disclosure of certain dependent claims, POR 40-43, but none of its arguments have
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`merit.
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`Dependent Claim 15 Would Have Been Obvious
`The Petition establishes that adding an image to a photo album associated with
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`a tagged user would have been obvious in view of Sharpe’s teachings and the
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`knowledge of a POSA. Pet. 53-54 (citing Bederson ¶¶224-27). PO asserts that the
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`Petition’s analysis “does not make sense” because a user retrieving photos using
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`Sharpe’s UI would not need to archive them again. POR 40-41. To start, PO fails
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`to appreciate that Sharpe uses the same UI (Figure 4) for both retrieval and archival.
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`See, e.g., Bederson ¶¶75, 196. A user of Sharpe’s system may retrieve images,
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`change their associated information, and re-archive them. Id. Regardless, claim 15
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`would have been obvious because the POSA is not an automaton. KSR Int’l Co. v.
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`5 Even if Sharpe did not teach the “list of descriptive information,” Eintracht
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`discloses it. Pet. 70-72. PO failed to address that analysis, and has waived any
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`rebuttal.
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`Teleflex Inc., 550 U.S. 398, 421 (2007). Ordinary creativity is all that is required to
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`reach the limitation of claim 15 in view of the teachings of Sharpe. See id.; see also
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`Elekta Ltd. v. ZAP Surgical Sys., Inc., 81 F.4th 1368, 1374 (Fed. Cir. 2023). That is
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`especially the case because digital photo albums were known in the art, as Dr.
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`Bederson explained. Bederson ¶¶96-98 (citing EX1011, EX1015, EX1016).
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`Dependent Claim 17 Would Have Been Obvious
`The Petition establishes that a POSA would have understood that Sharpe can
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`collect naming information during its registration process, and it would have been
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`obvious to include the username in the naming information collected from the user
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`at that time. See, e.g., Pet. 33-34, 39-41, 54-55. PO oddly asserts that “Sharpe does
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`not disclose or suggest that the first user’s user name … is included in the first user’s
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`personal name.” POR 42-43. PO’s flawed argument is premised on its assumption
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`that “descriptive information” is mapped to the first user’s personal name and
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`therefore cannot include any other information. See id. (“Under Petitioner’s
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`mapping … the user’s personal name … is the claimed ‘descriptive information.’”).
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`The Petition never asserts that “descriptive information” is limited to a personal
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`name. See, e.g., Pet. 28-29, 40-41. Indeed, the Petition repeatedly asserts that other
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`information can be included within “descriptive information.” See, e.g., Pet. 54-55
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`(username), 55 (screen name), 75-76 (e-mail address), 77 (e-mail addresses and
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`screen names). The ’291 Patent does too. EX1001, cls. 18 (“e-mail address, other
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`naming information, or a home page address”), 19 (“screen name”).
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`Dependent Claim 19 Would Have Been Obvious
`PO asserts that Petitioner “fail[s] to explain why the username would also
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`function as a screen name,” but PO does not address, much less dispute, the analysis
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`incorporated by reference from other portions of the Petition. See POR 43. As noted
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`above, the Petition establishes that it would have been obvious to include the
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`username in the naming information collected from the user during Sharpe’s
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`registration process. See, e.g., Pet. 33-34, 39-41, 54-55. Then, for claim 19, the
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`Petition explains that usernames and screen names are synonymous in many
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`systems, so it also would have been obvious to include a screen name in the naming
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`information. Pet. 55.6 Thus, claim 19 is obvious by analogy to the prior analysis.
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`Id.
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`F.
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`The Petition Plainly Presents Sharpe As A Single-Reference
`Obviousness Ground
`PO feigns ignorance as to whether Ground 1 is an anticipation or obviousness
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`ground. POR 44-49. This argument strains credulity. The Petition plainly and
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`repeatedly presents Ground 1 as a single-reference obviousness ground: Sharpe
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`6 The Petition also establishes that Carey discloses claim 19, and PO has failed to
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`rebut that analysis. See infra, 25.
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`alone or in view of the knowledge of a POSA. See, e.g., Pet. 5, 22; see also Bederson
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`¶¶4, 128 (same). Similar single-reference obviousness challenges have been
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`repeatedly affirmed by the Federal Circuit. See, e.g., Koninklijke Philips N.V. v.
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`Google LLC, 948 F.3d 1330, 1338-39 (Fed. Cir. 2020); Dow Jones & Co., Inc. v.
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`Ablaise Ltd., 606 F.3d 1338, 1351-52 (Fed. Cir. 2010).
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`PO’s argument is belied by the proceedings in this action. PO was able to
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`identify Ground 1 as an obviousness ground in its Preliminary Response. See, e.g.,
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`POPR 34 (“[T]he Board should deny the proposed obviousness combinations in
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`Grounds I-IV.”). The Board identified Ground 1 as an obviousness ground in the
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`Institution Decision, and proceeded to analyze the obviousness of claim 26 over
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`Sharpe alone. ID 7, 24-27. PO’s expert also recognized Ground 1 as an obviousness
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`ground. EX1040, 7:14-8:3.
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`PO faults the Petition’s use of the term “discloses” as too potent for an
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`obviousness ground, POR 46, but disclosure is the “ultimate or epitome of
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`obviousness.” Application of Skoner, 517 F.2d 947, 950 (C.C.P.A. 1975). PO also
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`contends that the Petition does not set forth any “obviousness modification” to
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`Sharpe, POR 45, but the Petition repeatedly describes the knowledge and skills that
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`a POSA would have applied to implement Sharpe—including the implementation of
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`the primary key and graphical user interface elements that PO disputes in its
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`Response. See,
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