`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––
`
`META PLATFORMS, INC.,
`Petitioner,
`
`v.
`
`ANGEL TECHNOLOGIES LLC,
`Patent Owner.
`
`––––––––––
`
`Case IPR2023-00058
`U.S. Patent 9,959,291
`––––––––––
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`
`I. 
`II. 
`
`INTRODUCTION ........................................................................................... 1 
`PETITIONER IMPROPERLY INTRODUCES NEW ARGUMENTS
`IN ITS REPLY ................................................................................................ 1 
`III.  THE CITED REFERENCES DO NOT RENDER CLAIMS 1-8
`UNPATENTABLE .......................................................................................... 4 
`A.  Ground 1 ................................................................................................ 4 
`1. 
`Sharpe Does Not Disclose or Suggest Limitations 26[d-e]
`or 1[e-g] ....................................................................................... 4 
`Sharpe Does Not Disclose or Suggest Limitations 1[d], 5,
`12-14 ........................................................................................... 7 
`Sharpe Does Not Disclose or Suggest All the Limitations
`of Independent Claims 24 and 25 ............................................... 8 
`Sharpe Does Not Disclose or Suggest All the Limitations
`of Claims 13, 14 .......................................................................... 9 
`Sharpe Does Not Disclose or Suggest All the Limitations
`of Claim 15 ................................................................................ 10 
`Sharpe Does Not Disclose or Suggest All the Limitations
`of Claim 17 ................................................................................ 11 
`Sharpe Does Not Disclose or Suggest All the Limitations
`of Claim 19 ................................................................................ 12 
`The Petition Does Not Plainly Present Sharpe As A
`Single-Reference Obviousness Ground .................................... 14 
`Ground 2 .............................................................................................. 16 
`1. 
`Petitioner Has Failed to Establish that a POSITA Would
`Have Been Motivated to Modify or Combine the Cited
`References to Arrive at the Claimed Invention ........................ 16 
`The Petition Fails to Explain How the Combination of
`Sharpe and Eintracht Would Operate and Have a
`Reasonable Expectation of Success .......................................... 17 
`Eintracht Does Not Cure the Identified Deficiencies in
`Ground 1, Including for Claims 1, 13, 14, 24, 25 ..................... 20 
`Sharpe in View of Eintracht Does Not Disclose or Suggest
`All the Limitations of Claims 2 and 3 ....................................... 21 
`
`B. 
`
`2. 
`
`3. 
`
`4. 
`
`5. 
`
`6. 
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`7. 
`
`8. 
`
`2. 
`
`3. 
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`4. 
`
`i
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`

`

`
`
`5. 
`
`Sharpe in View of Eintracht Does Not Disclose or Suggest
`All the Limitations of Claim 6 .................................................. 22 
`Grounds 3 and 4 .................................................................................. 23 
`C. 
`IV.  CONCLUSION .............................................................................................. 23 
`
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`
`
`ii
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`

`

`TABLE OF AUTHORITIES
`
`
`
` Page(s)
`
`Cases
`Allsteel Inc. v. Dirtt Environmental Solutions LTD.,
`IPR2015-01691, Paper 61 (PTAB April 22, 2019) .................................... 2, 3, 20
`Apple Inc. v. Yu,
`IPR2019-01258, Paper 29 (PTAB Jan. 5, 2021) ................................................ 14
`Application of Skoner,
`517 F.2d 947 (C.C.P.A. 1975) ............................................................................ 15
`ATD Corp. v. Lydall, Inc.,
`159 F.3d 534 (Fed. Cir. 1998) ............................................................................ 19
`Beckson Marine, Inc. v. NFM, Inc.,
`292 F.3d 718 (Fed. Cir. 2002) ...................................................................... 18, 19
`Cohesive Techs.,
`543 F.3d 1351 (Fed. Cir. 2008) .......................................................................... 15
`Crown Operations Int’l, Ltd. v. Solutia, Inc.,
`289 F.3d 1367 (Fed. Cir. 2002) .......................................................................... 19
`Fisher & Paykel Healthcare Ltd. V. ResMed R&D Ger. GmbH,
`IPR2017-00272, Paper 41 (PTAB Sept. 6, 2018) ............................................... 17
`Google LLC v. Ecofactor, Inc,
`No. IPR2021-00054, Paper 35 (PTAB April 18, 2022) ..................................... 10
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ................................................................................................ 14
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) ................................................................ 1, 12, 22
`Koninklijke Philips N.V. v. Google LLC,
`948 F.3d 1330 (Fed. Cir. 2020) .......................................................................... 15
`Kranos Corp. v. Riddell, Inc.,
`IPR2016-01646, Paper 10 (PTAB Feb. 14, 2017) .............................................. 14
`
`iii
`
`

`

`
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 14
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ............................................................................ 1
`PAR Pharm., Inc. v. TWI Pharms., Inc.,
`773 F.3d 1186 (Fed. Cir. 2014) ........................................................................ 5, 6
`SAS Inst. Inc. v. Iancu,
`138 S. Ct. 1348 (2018) .................................................................................. 15, 16
`Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc.,
`853 F.3d 1272 (Fed. Cir. 2017) ........................................................................ 2, 4
`Yamaha Golf Car Co. v. Club Car, LLC,
`2019 WL 1473077 (PTAB Apr. 2, 2019) ............................................................. 3
`Statutes
`35 U.S.C. §312(a) ...................................................................................................... 1
`35 U.S.C. § 312(a)(3) (2012) ................................................................................... 22
`Other Authorities
`37 C.F.R. § 42.65(a) ................................................................................................. 10
`Consolidated Trial Practice Guide 73 (Nov. 2019) ................................................... 3
`
`
`iv
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`

`

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

`

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

`

`Case IPR2023-00058
`U.S. Patent No. 9,959,291
`
`I.
`
`INTRODUCTION
`Petitioner’s Reply (Paper 29) rests on inaccurate statements. Petitioner has
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`the burden to prove unpatentability of the instituted claims by a preponderance of
`
`the evidence, and has not done so. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
`
`1364, 1375 (Fed. Cir. 2016). Petitioner, in its Reply, improperly introduces new
`
`arguments that should be excluded, makes numerous incorrect statements, has not
`
`established that the cited prior art references disclose or suggest all of the limitations
`
`of the Challenged Claims (Claims 1-26), and has not established motivation to
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`combine Sharpe and Eintracht to arrive at the Challenged Claims. As a result, and
`
`as explained in more detail below, the Board should confirm the patentability of the
`
`Challenged Claims.
`
`II.
`
`PETITIONER IMPROPERLY INTRODUCES NEW ARGUMENTS
`IN ITS REPLY
`Unable to find support in its Petition to support its Reply, Petitioner
`
`improperly adds new arguments to its proposed obviousness combinations for the
`
`first time in its Reply and via a reply declaration (Ex. 1039, “Bederson Reply
`
`Declaration”) from its expert, Dr. Bederson. “It is of the utmost importance that
`
`petitioners in the IPR proceedings adhere to the requirement that the initial petition
`
`identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge
`
`to each claim.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359,
`
`1369 (Fed. Cir. 2016) (citing 35 U.S.C. §312(a)). Namely, once a petition is
`
`1
`
`

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`Case IPR2023-00058
`U.S. Patent No. 9,959,291
`instituted, the challenges set forth in the petition are crystallized, and the scope of a
`
`petitioner’s argument thereafter is expressly limited to “explaining how its original
`
`petition was correct.” Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272,
`
`1286 (Fed. Cir. 2017). Thus, for these same reasons, a petitioner on reply “may not
`
`submit any new evidence, issues, or argument that it could have presented earlier,
`
`e.g. to make out a prima facie case of unpatentability.” Allsteel Inc. v. Dirtt
`
`Environmental Solutions LTD., IPR2015-01691, *2 (PTAB April 22, 2019).
`
`Yet that is precisely what Petitioner does here. Petitioner argues in its Reply
`
`for the first time that a username would have been “the most obvious design choice
`
`for the Sharpe system.” Reply, 3 (citing Bederson Reply Declaration ¶¶7-9). But in
`
`its Petition, Petitioner did not meaningfully argue obviousness for the limitations
`
`Petitioner asserts this for (26[d-e] and 1[e-g]). In fact, the Petition not only avoids
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`reliance on any secondary reference for these limitations, but does not even mention
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`the words “obvious” or “obviousness” with regard to these claim limitations.
`
`Petitioner did not state that the username is being implemented in a proposed
`
`modification of Sharpe’s system to address any specific gap in the Sharpe’s
`
`disclosure with respect to the claim language. If Petitioner wanted to argue
`
`obviousness regarding the username, it should have done so in the Petition at the
`
`requisite level of detail, e.g., including discussion of what aspect of the claim
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`language is missing from the primary reference, rationale for modifying the primary
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`2
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`

`

`Case IPR2023-00058
`U.S. Patent No. 9,959,291
`reference, etc. Petitioner did no such thing, and instead asserted that Sharpe actually
`
`disclosed this limitation. Petition, 25-26, 36-38, 43-48.
`
`Petitioner also tees up new argument by adding in a new image and, for the
`
`first time, citing to Sharpe for retrieving a specific photograph not presented in the
`
`Petition with respect to Claims 13 and 14. Reply, 7-10. According to the Board’s
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`rules, a petitioner “may not submit new evidence or argument in reply that it could
`
`have presented earlier, e.g. to make out a prima facie case of unpatentability.”
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`Consolidated Trial Practice Guide 73 (Nov. 2019). So if, for example, Petitioner
`
`wanted to argue that Sharpe disclosed retrieving “said image” as required by the
`
`claims, this argument should have been presented in the Petition. The issue is a
`
`straightforward mapping to the claim limitation, so it is entirely foreseeable and
`
`expected that Patent Owner would raise this issue in the Response. That the Petition
`
`failed to address this limitation fully is its own deficiency and should not be
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`rewarded by the Board.
`
`Petitioner cannot use its Reply to belatedly “craft a new obviousness challenge
`
`by piggybacking on the one that was clearly wanting.” Yamaha Golf Car Co. v.
`
`Club Car, LLC, 2019 WL 1473077, at *13 (PTAB Apr. 2, 2019). Nor is it
`
`permissible for Petitioner to retroactively “fill in the gaps of the Petition by showing,
`
`for the very first time, how the prior art of record describes a claim element that was
`
`not accounted for previously.” Allsteel Inc. v. Dirtt Environmental Solutions Ltd.,
`
`3
`
`

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`Case IPR2023-00058
`U.S. Patent No. 9,959,291
`IPR2015-01691, *2 (PTAB April 22, 2019). “Shifting arguments in this fashion is
`
`foreclosed by statute, our precedent, and Board guidelines.” Wasica Fin. GmbH v.
`
`Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1286–87 (Fed. Cir. 2017). Accordingly, for
`
`the new allegations mentioned above in Petitioner’s Reply which are not found in
`
`the original Petition, the arguments must be excluded.
`
`III. THE CITED REFERENCES DO NOT RENDER CLAIMS 1-8
`UNPATENTABLE
`A. Ground 1
`Sharpe Does Not Disclose or Suggest Limitations 26[d-e] or
`1[e-g]
`Despite the Petition specifically asserting that “a POSA would have
`
`1.
`
`understood that Sharpe’s system allows a user to identify a user in an image
`
`(obtaining identification data from a first tagging user of said computer network) to
`
`create an association including the item identifier and a unique identifier of the
`
`selected user (i.e., their username)” (Petition, 37), Petitioner now attempts to assert
`
`in its Reply that the Petition never argues that Sharpe’s system must use the
`
`username as a unique identifier. Reply, 2-3. However, Petitioner’s repeated reliance
`
`on what a POSITA would have understood implies just that. Even in its Reply,
`
`Petitioner continues to maintain that “Sharpe teaches the claimed unique user
`
`identifier.” Reply, 2 (emphasis added). This is incorrect.
`
`As explained in Patent Owner’s Response, because Sharpe does not explicitly
`
`disclose obtaining identification data comprising a unique image identifier and a
`
`4
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`

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`Case IPR2023-00058
`U.S. Patent No. 9,959,291
`pictured user unique identifier of a user in an image, Petitioner resorts to arguments
`
`about what a POSITA would have understood about Sharpe’s disclosure. Response,
`
`19-20. While the Petition does not explicitly use the word “must,” Petitioner’s
`
`argument as set forth in the Petition is clearly an inherency argument—e.g., “A
`
`POSA would understand the username would be the primary key for the database
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`3.” Petition, 36 (emphasis added). Far from relying on any actual prior art
`
`disclosures, Petitioner’s reliance on what a POSITA would have understood without
`
`further analysis is insufficient. PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d
`
`1186, 1195 (Fed. Cir. 2014) (“the use of inherency, a doctrine originally rooted in
`
`anticipation, must be carefully circumscribed in the context of obviousness.”).
`
`The Petition asserts that a POSITA would have understood Sharpe to disclose
`
`the user name as Sharpe system’s primary key, while ignoring the fact that the user
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`name need not be the primary key. As discussed in the POR, Petitioner presented a
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`thinly disguised inherency argument (Response, 24), and now attempts to back it up
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`with support from its expert’s newly submitted reply declaration. The Reply states
`
`that “there is no genuine dispute that a POSA would have understood Sharpe’s
`
`username to be an available design option.” Reply, 4. Petitioner is mischaracterizing
`
`and deviating from its argument initially presented in the Petition. The Petition did
`
`not assert that the username may have been used as the primary key, but that it would
`
`have been so. The Petition first states that Sharpe discloses this limitation, and
`
`5
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`

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`Case IPR2023-00058
`U.S. Patent No. 9,959,291
`significantly does not mention anywhere with reference to elements 26[d-e] or 1[e-
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`g] the terms “obvious design choice,” “design choice” or anything having to do with
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`Petitioner’s meritless assertion that “As explained in the Petition…A POSA would
`
`have recognized Sharpe’s username as an obvious design choice for implementing
`
`the primary key.” Reply, 2. See Petition, 25-26, 36-38, 43-48. Nor does Petitioner’s
`
`expert state anywhere with reference to these limitations that the username as a
`
`primary key would be an obvious choice as they falsely claim in their Reply. Reply,
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`2. Instead, both Petitioner and Petitioner’s expert state that “a POSA would have
`
`understood that the usernames as used in Sharpe would be unique to each user of
`
`Sharpe’s system and therefore are unique user identifiers.” Ex. 1003, ¶ 141.
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`Petitioner’s argument is nothing more than a thinly veiled inherency argument, and
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`Petitioner has not completed the requisite analysis with reference to this limitation.
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`PAR Pharm., 773 F.3d at 1195.
`
`The Petition also fails to present sufficient obviousness rationale/analysis. If
`
`Petitioner had wanted to say that it would have been obvious to modify Sharpe’s
`
`system to use the username as a primary key, Petitioner should have presented this
`
`analysis in its Petition. PO explained why a POSITA would not have necessarily
`
`understood Sharpe’s singularly referenced user name to be a primary key in the
`
`database, and further explained that any obviousness analysis on this issue was
`
`insufficient (Response, 18-24).
`
`6
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`

`

`Case IPR2023-00058
`U.S. Patent No. 9,959,291
`Sharpe Does Not Disclose or Suggest Limitations 1[d], 5, 12-
`14
`Petitioner fails to establish that Sharpe discloses or suggests limitations 1[d],
`
`2.
`
`5, or 12-14 with respect to the claimed “digital media selection input.” Petitioner
`
`inexplicably asserts that “PO contends that the digital media selection input must
`
`only include the particular digital media item, and no other digital media items.”
`
`Reply, 5. The claim language specifically requires “determining…a unique digital
`
`media identifier corresponding to a digital media selection input.” Ex. 1001,
`
`Limitation 1[d].
`
`As thoroughly explained in the POR, the user of Sharpe’s system is not
`
`selecting or requesting a specific digital media item, but any digital media items
`
`matching parameters input by a user. Response, 28. Petitioner appears to be
`
`suggesting that Sharpe’s system can somehow determine a digital media identifier
`
`for multiple responsive photographs. Not only was this not argued in the Petition, it
`
`is inconsistent with the claim language. Petitioner asserts that “digital media” can be
`
`plural, but the claim language which recites “a digital media identifier” is clearly
`
`not.
`
`Petitioner then asserts that even under Patent Owner’s interpretation of what
`
`the claims clearly recite, Sharpe discloses retrieving a specific photograph by
`
`“searching on the event or the person.” Reply, 7 (citing Ex. 1005, 2:21-24). The only
`
`way this would retrieve a single photograph is in an instance when only 1 photo of
`
`7
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`

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`Case IPR2023-00058
`U.S. Patent No. 9,959,291
`a person or event is achieved. The user is not inputting a specific digital media
`
`selection, but inputting search parameters including, for example, a person and an
`
`event. None of these parameters include an input for a specific image.1
`
`Even if there was only one responsive photo, the user of the system is not
`
`requesting a specific digital media selection item. Sharpe does not disclose a “digital
`
`media selection input” at all, because Sharpe’s user is not selecting a particular
`
`image, and Sharpe further does not disclose “a unique digital media identifier”
`
`corresponding to a digital media selection input.
`
`3.
`
`Sharpe Does Not Disclose or Suggest All the Limitations of
`Independent Claims 24 and 25
`In Ground 1, for independent Claims 24 and 25, the Petition primarily cites
`
`back to its arguments for independent Claim 1. Petition, 57-59. The Petition only
`
`provides support for claim elements “apparatus/computer readable medium”
`
`(24[pre]/25[pre]) and “physical computing system” (24[a]). But that does not cure
`
`the deficiencies of the Petition’s analysis of independent Claim 1. See Response, 43-
`
`
`1 “The aim of retrieval is not to retrieve a specific digital media item but instead
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`to retrieve any digital media items relating to a memorable episode. Thus the
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`indexing system does not uniquely identify digital media items, but replaces them
`
`within a highly personal framework.” Ex. 1005, 2:17-22 (emphasis added).
`
`
`
`8
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`

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`Case IPR2023-00058
`U.S. Patent No. 9,959,291
`44. Therefore, the Petition’s analysis for Claims 24 and 25 is deficient as to the
`
`limitations that are also in Claim 1.
`
`4.
`
`Sharpe Does Not Disclose or Suggest All the Limitations of
`Claims 13, 14
`Sharpe does not disclose or suggest a “list of descriptive information” as
`
`recited in Claims 13 and 14 because Sharpe’s list is not associated with requested
`
`image/media but rather a listing of members of a group. As explicitly taught by
`
`Sharpe, “a drop down box 55 is provided for selecting any of a number of people
`
`within the group.” The Petition does not explain how a POSITA would understand
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`to modify Sharpe’s drop down box to list names of people in the picture as opposed
`
`to the group. Reply, 9. Rather, as explained in the POR, the drop down list is not a
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`list of personal names (“descriptive information”) of people “associated with unique
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`user identifiers associated with the unique digital media identifier of the requested
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`[digital media | image data].” Rather, Sharpe’s drop down list is a list of people in
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`the user’s group. Response, 37-38.
`
`Petitioner introduces new evidence and arguments stating that “POSA would
`
`have understood that Sharpe’s UI would update during repeated searches to show
`
`the currently tagged users.” Reply, 9-10. Petitioner attempts to characterize this
`
`feature as a “simple design choice,” but that is conclusory. There is insufficient
`
`support for why a “POSA would have understood that Sharpe’s UI would update.”
`
`9
`
`

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`Case IPR2023-00058
`U.S. Patent No. 9,959,291
`Petitioner plainly ignores the bulk of Patent Owner’s arguments with respect
`
`to these claims. As outlined in the POR, the Petitioner is additionally (1) incorrect
`
`in its analysis regarding Sharpe’s retrieval parameters (2) silent as to the lack of
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`“unique digital media identifier” and “determining unique user identifiers having an
`
`association with the unique digital media identifier” in Sharpe. Response, 38-40.
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`Petitioner ignores Patent Owner’s argument, instead using this as an
`
`opportunity to for the first time provide an attempt at obviousness analysis with
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`additional references and pictures of hierarchal menus with multiple options
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`selected. Reply, 10. Petitioner should have presented any obviousness analysis in its
`
`Petition. Instead, all the Petition does is include a one-sentence conclusory reference
`
`to a “simple design choice.” Petition, 52. But, the Petition didn’t explain how or why
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`this design choice would have worked, and did not complete a proper obviousness
`
`analysis for this missing element. Google LLC v. Ecofactor, Inc, No. IPR2021-
`
`00054, Paper 35, 42 (PTAB April 18, 2022) (“conclusory opinions with no factual
`
`support are entitled to little or no weight.”); see also 37 C.F.R. § 42.65(a).
`
`5.
`
`Sharpe Does Not Disclose or Suggest All the Limitations of
`Claim 15
`Sharpe does not disclose or suggest adding an image to a photo album
`
`associated with a tagged user. Sharpe makes no mention of photo albums
`
`whatsoever, let alone “photo album associated with the first user” (the tagged user).
`
`Even if Sharpe’s archives were considered to be photo albums, Sharpe only discloses
`
`10
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`

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`Case IPR2023-00058
`U.S. Patent No. 9,959,291
`archives associated with a group, not users. Petitioner in its Reply ignores Patent
`
`Owner’s arguments regarding why their analysis does not make sense. Reply, 12. As
`
`outlined in the POR (Response, 41), the Petition first describes “Cheryl…retrieving
`
`images associated with Sonia”—i.e., the images are associated with Sonia due to
`
`prior archival. Then, the Petition states that “Cheryl can further add the photo…to
`
`the collection associated with Sonia…by archiving an image using the GUI,
`
`selecting Sonia from the drop down box 55, and pressing the ‘Archive’ button.”
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`Petition, 54. In the example Petitioner provided, the image was allegedly already
`
`associated with Sonia, so it wouldn’t need to be re-associated before re-archiving.
`
`Petitioner now asserts that ordinary creativity is all that is required to reach Claim
`
`15, but this was not explained in the Petition, nor can Petitioner provide any
`
`explanation for their illogical mapping.
`
`6.
`
`Sharpe Does Not Disclose or Suggest All the Limitations of
`Claim 17
`According to the Petition’s mapping, Sharpe does not disclose or suggest that
`
`the first user’s user name (“unique user identifier”) is included in the first user’s
`
`personal name (“descriptive information”). Petition, 40. Specifically, the Petition
`
`asserts that “personal names are previously provided by users.” Id. at 41. Petitioner’s
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`mapping here clearly indicates that the naming information is provided separately
`
`(previously provided) from the username, and not included in it, despite its
`
`conclusory statements as to such. Id. Response, 42.
`
`11
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`Case IPR2023-00058
`U.S. Patent No. 9,959,291
`Petitioner now asserts that “PO’s flawed argument is premised on its
`
`assumption that “descriptive information” is mapped to the first user’s personal
`
`name and therefore cannot include any other information.” Reply, 12. However,
`
`Claim 17 is dependent on Claim 1 and Claim 1 alone. “Descriptive information” in
`
`Claim 1 appears for the first time in limitation 1[b]. Petitioner does not include any
`
`other citations or disclosures in its “descriptive information” analysis besides the
`
`user’s “personal name.” Petition, 41. Despite Petitioner now trying to assert that the
`
`descriptive information includes things beyond personal names, the Petition did not
`
`map to anything but the user’s personal name for this in Claim 1, from which Claim
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`17 depends. Petitioners have the burden to present a clear argument, which they have
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`not done so here and cannot remedy through their Reply. Intelligent Bio-Systems,
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`821 F.3d at 1367.
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`7.
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`Sharpe Does Not Disclose or Suggest All the Limitations of
`Claim 19
`Sharpe does not disclose or suggest descriptive information including a screen
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`name. Petitioner incorrectly states in its reply that “PO does not address, much less
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`dispute, the analysis incorporated by reference from other portions of the Petition.”
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`The POR clearly rebuts the analysis incorporated by reference, stating on its face
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`that “claim 19 depends from claim 1, and the Petitioner has not shown that the prior
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`art discloses each element of claim 1.” Response, 43. Petitioner incorrectly
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`concludes that because Sharpe makes a single reference to a user name, a “username
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`U.S. Patent No. 9,959,291
`can be included in the descriptive information.” Petition, 55. Then, Petitioner makes
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`the leap to a screenname. In the Reply, Petitioner says that “it would have been
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`obvious to include the username in the naming information” and therefore would
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`“also have been obvious to include a screenname in the naming information.” Reply,
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`13. Petitioner once again provides no explanation or analysis for how the username
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`could be included in the descriptive information.
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`To the extent that Petitioner is proposing that Sharpe’s drop down list only
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`shows people in the picture, this would defeat Sharpe’s objective by making it
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`impossible to associate any non-pictured members of the group with the media item.
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`Ex. 2021, ¶ 94. In fact, were this the case, no users could be tagged whatsoever as
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`any photo would necessarily start with an empty drop down list. To combat this
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`deficiency in the Petition, Petitioner impermissibly presents new arguments in the
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`Reply that the drop down menu could list both people in the group and pictured
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`users. This was not presented in the Petition, and cannot be relied upon now.
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`The Petition did not include any obviousness analysis for this claim limitation,
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`instead relying on what Sharpe actually discloses. Petition, 39-40. Therefore,
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`Petitioner is confined to its analysis of Sharpe’s disclosure from the Petition, which
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`for the reasons explained in the POR is insufficient. Response, 32-36 and 45.
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`The Petition Does Not Plainly Present Sharpe As A Single-
`Reference Obviousness Ground
`Petitioner asserts that the Petition presented Ground 1 as a single-reference
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`8.
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`obviousness ground. Reply, 13. As explained in the POR (Response, 44), however,
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`Ground 1 contained no actual obviousness analysis and does not even mention
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`“obvious” or “obviousness” for the independent claims—which is a fatal flaw for an
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`obviousness ground. Kranos Corp. v. Riddell, Inc., IPR2016-01646, Paper 10 at 68
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`(PTAB Feb. 14, 2017) (“[O]bviousness grounds cannot be sustained by mere
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`conclusory statements; instead, there must be some articulated reasoning with some
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`rational underpinning to support the legal conclusion of obviousness.”) (citing KSR
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`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). Calling Ground 1 a single-
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`reference obviousness ground without the requisite analysis does not meet
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`Petitioner’s burden.
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`It is well established, and Petitioner does not dispute, that “[t]he question of
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`obviousness is resolved on the basis of underlying factual determinations, including
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`(1) the scope and content of the prior art; (2) any differences between the claimed
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`subject matter and the prior art; (3) the level of skill in the art; and (4) where in
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`evidence, so-called secondary considerations.” Apple Inc. v. Yu, IPR2019-01258,
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`Paper 29 at 39 (PTAB Jan. 5, 2021) (citing Graham v. John Deere Co., 383 U.S. 1,
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`17–18 (1966)). Petitioner was silent in both the Petition and their Reply as to what
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`is missing from Sharpe such that an obviousness modification would be
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`hypothetically made, and the analysis is therefore flawed.
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`Further, Petitioner asserts that disclosure is the epitome of obviousness.
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`Reply, 14 (citing Application of Skoner, 517 F.2d 947, 950 (C.C.P.A. 1975).).
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`Petitioner has cited to a nearly half century old case to the predecessor to the Federal
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`Circuit with the proposition that disclosure is the epitome of obviousness, but that
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`has been squarely rejected. To the extent Petitioner contends, or the Board may be
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`inclined to find, that Petitioner’s statements regarding Sharpe’s teachings alone
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`suffice for Petitioner to prevail on its obviousness ground, that is contrary to law.
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`Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1364 n.2 (Fed. Cir. 2008)
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`(“The dissent claims categorically that ‘every anticipated claim is obvious.’ … But
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`this is not correct. … [O]ur precedent has rejected reliance on the ‘legal homily’ that
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`‘anticipation is the epitome of obviousness.’”) (internal citations omitted).
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`Petitioner cannot prevail on obviousness, because it has not carried out the
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`requisite analysis. But, significantly, it also cannot prevail on anticipation. There is
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`no anticipation ground in the Petition, and the Board cannot deviate from the
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`Petition, because “it is the petition … that defines the metes and bounds of an inter
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`partes review.” Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330, 1336 (Fed.
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`Cir. 2020) (citing SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018)); see also
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`Koninklijke, 948 F.3d at 1336 (“[T]he Board does not ‘enjoy[] a license to depart
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`from the petition and institute a different inter partes review of his own design.’”)
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`(citing SAS, 138 S. Ct. at 1356, emphasis i