Trials@uspto.gov
`571-272-7822
`
`Paper 41
`Date: April 29, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`META PLATFORMS, INC. ET AL.,
`Petitioner,
`v.
`ANGEL TECHNOLOGIES GROUP LLC,
`Patent Owner.
`
`IPR2023-00059
`Patent 10,417,275 B2
`
`
`
`
`
`
`
`
`
`Before MIRIAM L. QUINN, SHARON FENICK, and MICHAEL T.
`CYGAN, Administrative Patent Judges.
`CYGAN, Administrative Patent Judge.
`
`DECISION
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 41
`Date: April 29, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`META PLATFORMS, INC. ET AL.,
`Petitioner,
`v.
`ANGEL TECHNOLOGIES GROUP LLC,
`Patent Owner.
`
`IPR2023-00059
`Patent 10,417,275 B2
`
`
`
`
`
`
`
`
`
`Before MIRIAM L. QUINN, SHARON FENICK, and MICHAEL T.
`CYGAN, Administrative Patent Judges.
`CYGAN, Administrative Patent Judge.
`
`DECISION
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`IPR2023-00059
`Patent 10,417,275 B2
`
`I.
`
`INTRODUCTION
`Background and Summary
`A.
`Meta Platforms, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting institution of inter partes review of claims 1–12 of U.S. Patent
`No. 10,417,275 B2 (Ex. 1001, the “’275 patent”). The Petition was
`accompanied by a Declaration from Dr. Benjamin Bederson. Ex. 1003
`(“Bederson Decl.”). Angel Technologies LLC (“Patent Owner”) filed a
`Preliminary Response (“Prelim. Resp.”). Paper 9. We authorized additional
`briefing on certain matters. Ex. 1036. Petitioner filed a Reply, and Patent
`Owner filed a Sur-reply. Papers 14, 15. We instituted inter partes review as
`to all claims and all grounds raised in the Petition. Paper 16 (Dec. on Inst.).
` Patent Owner filed a Response (Paper 25, “PO Resp.”), accompanied
`by a Declaration by Dr. Eli Saber (Ex. 2021, “Saber Decl.”) and by a
`transcript of a deposition of Dr. Bederson (Ex. 2019). Petitioner filed a
`Reply (Paper 30, “Pet. Reply”) accompanied by a transcript of a deposition
`of Dr. Saber (Exs. 1040, 1041). Patent Owner filed a Sur-Reply. (Paper 31,
`“PO Sur-Reply”). The parties requested an oral hearing, and we held such a
`hearing on February 13, 2024. A transcript of the oral hearing has been
`entered into the record. Paper 40.
`Real Parties in Interest
`B.
`Petitioner identifies Meta Platforms, Inc. (formerly Facebook, Inc.)
`and Instagram, LLC as the real parties in interest. Pet. 2. Patent Owner
`identifies Angel Technologies Group LLC as the real party in interest. Paper
`4, 2.
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`2
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`Patent 10,417,275 B2
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`Related Matters
`C.
`Petitioner represents that the ’275 patent is involved in Angel Techs.
`Group LLC v. Facebook, Inc. and Instagram LLC, No. 2:21-cv-08459-
`CBM-JPR (C.D. Cal.), and that
`On June 30, 2022, the district court found the asserted patents,
`including the ’275 Patent, invalid under 35 U.S.C. § 101 and
`dismissed the case. On July 29, 2022, PO filed a Notice of
`Appeal. The case has been docketed as the following: Angel
`Techs. Group, LLC v. Meta Platforms, Inc., No. 2022-2100 (Fed.
`Cir.). The opening appeal brief is currently due on November 2,
`2022.
`Pet. 3. The parties represent that Petitioner has filed, at substantially the
`same time that this Petition was filed, petitions for inter partes review
`against related family members U.S. Patent No. 8,954,432 (IPR2023-
`00057), U.S. Patent No. 9,959,291 (IPR2023-00058), and U.S. Patent No.
`10,628,480 (IPR2023-00060). Pet. 3; Paper 4, 2.
`The ’275 Patent
`D.
`The ’275 patent is titled “Artificial Intelligence Assisted Tagging of
`Users in Digital Media Online.” Ex. 1001, code (54). The ’275 patent
`issued from Application Serial No 15/933,531, filed on March 23, 2018, and
`claims priority, via continuation applications, to Provisional Application No.
`60/248,949, filed on November 15, 2000. Id. at codes (21), (22), (60), (63).
`The ’275 patent relates to storing and sharing images through a
`communications network, and supplying and receiving information about the
`existence of objects within images. Ex. 1001, 1:20–25. A users database
`(230) receives, stores, and provides information about people, who access
`the host computer, and may include information for each user such as a user
`identifier, the user’s name, and user’s email address. Id. at 7:18–25. An
`image database (250) receives and stores information about photos. Id. at
`
`3
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`Patent 10,417,275 B2
`7:27–34. An identifications database (240) receives, stores, and provides
`information about relationships between users and photos, such as whether
`the user is in the photo, including the coordinates of the user or other person
`within the photo. Id. at 7:45–56. The following is an example of the three
`databases:
`
`
`Id. at 8:45–66. Through uploading of user data by John Doe and Jane Doe
`to the user database, and creation of an image record in the Image database
`when a user uploads a photo to the host computer, a relationship is created
`between the user and the image that is stored in the Identifications database.
`Id. at 7:58–9:3, 12:52–55.
`Following identification of an object within an image, artificial
`intelligence algorithms (e.g., an image recognition system) may be applied
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`Patent 10,417,275 B2
`to the images. Id. at 13:31–36. Such algorithms may be purposed to further
`define characteristics of images, obtain identifying information, and/or
`search a database for other possible matches to a named object. Id. at
`13:36–39.
`
`Illustrative Claim
`E.
`Claim 1 is illustrative, and recites as follows:
`A method implemented within a computer system including a
`plurality of computing devices connected via a communications
`network, the method associating users of the computer system
`with digital media accessible to the computer system, the method
`comprising:
`distinguishing between users of the computer system via one or
`more unique user identifiers stored in a computer-readable
`medium accessible to the computer system, the users of the
`computer system including a named user and an identifying user,
`the named user being different from the identifying user, the
`named user having naming information associated with a unique
`user identifier of the named user;
`in response to an input from the identifying user indicating a
`selection of an image, determining a unique image identifier
`corresponding to the image selected;
`receiving, from the identifying user, an input indicating a
`selection of the named user from a list of other users of the
`computer system, the list of other users including naming
`information previously provided by other users, the list of other
`users including one or more users in a contact list associated with
`the identifying user, the identifying user’s contact list including
`the named user;
`in response to receiving from the identifying user the input
`indicating the selection of the named user from the list of other
`users, determining a unique user identifier of the named user;
`receiving, from the identifying user, one or more inputs
`indicating a set of coordinates corresponding to a location of the
`named user within the image; and
`
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`Patent 10,417,275 B2
`applying artificial intelligence algorithms to image data of other
`images accessible to said computer system to locate images
`matching characteristics of a subset of image data bound by the
`set of coordinates corresponding to the location of the named
`user within
`the
`image, wherein
`the set of coordinates
`corresponding to the location of the named user within the image
`is associated with the unique user identifier of the named user
`and the unique image identifier.
`Evidence
`F.
`Petitioner relies on the following patent evidence.
`Name
`Patent Document
`1005
`Sharpe
`U.S. 7,461,099 B1
`1006
`Eintracht
`U.S. 6,687,878 B1
`1007
`Carey
`U.S. 6,714,793 B1
`Petitioner further relies upon 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) (Ex. 1011, “FotoFile”).
`Prior Art and Asserted Grounds
`G.
`Petitioner asserts that claims 1–12 would have been unpatentable on
`the following grounds:
`Claim(s) Challenged
`1–12
`1–12
`
`Exhibit
`
`35 U.S.C. §
`103(a)1
`103(a)
`
`Reference(s)/Basis
`Sharpe, Eintracht, FotoFile
`Sharpe, Eintracht, FotoFile,
`Carey
`
`
`1 Petitioner asserts, and we agree for purposes of institution, that the pre-
`AIA patentability statutes apply to the ’275 patent. See Pet. 5.
`
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`Patent 10,417,275 B2
`
`II. ANALYSIS
`Legal Standards
`A.
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, “would have been obvious at the time the
`invention was made to a person having ordinary skill in the art [to which
`said subject matter pertains].” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`406 (2007). The question of obviousness is resolved on the basis of
`underlying factual determinations including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of ordinary skill in the art; and (4) objective evidence
`of non-obviousness.2 See Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`
`Level of Ordinary Skill in the Art
`B.
`Petitioner asserts that a person of ordinary skill in the art in 2001
`would have had at least a bachelor’s degree in computer science,
`electrical engineering, computer engineering, or a similar
`technical field, with at least two years of experience in the field
`of networked and Web-based media applications. Additional
`experience could substitute for less education, and additional
`education could likewise substitute for less experience.
`Pet. 13–14 (citing Ex. 1003 ¶ 39). Patent Owner submits an essentially
`identical description of this hypothetical person. PO Resp. 17. We do not
`determine any meaningful significance to the differences between the
`parties’ representations. For purposes of this Decision, we adopt Petitioner’s
`
`
`2 Neither party presents evidence or arguments regarding objective evidence
`of non-obviousness.
`
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`Patent 10,417,275 B2
`proposed level of ordinary skill, as it appears to be consistent with the
`specification of the ’275 patent and the prior art of record.
`Claim Construction
`C.
`In an inter partes review, we construe a patent claim “using the same
`claim construction standard that would be used to construe the claim in a
`civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b) (2019).
`Under this standard, the words of a claim generally are given their “ordinary
`and customary meaning,” which is the meaning the term would have to a
`person of ordinary skill at the time of the invention, in the context of the
`entire patent including the specification. Phillips v. AWH Corp., 415 F.3d
`1303, 1312–13 (Fed. Cir. 2005) (en banc).
`Here, Petitioner asserts that the term “user identifier” should be
`construed as “a series of characters identifying a user.” Pet. 14. Petitioner
`also asserts that the term “contact list” should be construed as a “list of
`people known to the user.” Id. at 16. Patent Owner asserts that no term
`requires express construction. PO Resp. 17–18.
`We note that there is no controversy regarding any term that is
`necessary to resolve to resolve the matter before us, and therefore, we do not
`need to construe any term. See Nidec Motor Corp. v. Zhongshan Broad
`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we
`need only construe terms ‘that are in controversy, and only to the extent
`necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci.
`& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Consequently, each
`claim term is given its ordinary and customary meaning.
`
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`Patent 10,417,275 B2
`D. Obviousness over Sharpe, Eintracht, and FotoFile
`Petitioner asserts that claims 1–12 are unpatentable under § 103(a) as
`obvious over Sharpe, Eintracht, and FotoFile. Patent Owner provides
`arguments and evidence against these assertions.
`Upon consideration of Petitioner’s explanations and the totality of
`evidence in this current record, we are persuaded that Petitioner has
`demonstrated a reasonable likelihood of prevailing in showing that claim 1 is
`unpatentable under § 103(a) as obvious over the combination of Sharpe,
`Eintracht, and FotoFile.
`
`Sharpe
`1.
`Sharpe is titled “Method and System for Archiving and Retrieving
`Items Based on Episodic Memory of Groups of People.” Ex. 1005, code
`(54). Sharpe relates to “the archiving and retrieval of digital media items
`wherein the archiving and retrieval process is performed based on episodic
`memory of predefined groups of people.” Id. at 1:6–9. Sharpe describes
`that work in the storage and archiving techniques for digital media are
`concentrated on “facilitating the retrieval of a particular digital media item;
`i.e., one which matches the user’s requirements exactly.” Id. at 1:11–14.
`Sharpe contrasts prior work relying on semantic memory with the described
`invention, “based on the common episodic memory of a strong social
`group,” which relies upon and enhances “group ‘memory’” and “group
`nostalgia.” Id. at 1:14–32.
`To archive digital media items, a user identifies a group to which the
`user belongs, and then digital media items to be archived for the group are
`identified. Id. at 1:37–45. Using a pull-down menu on a graphical user
`interface [“GUI”], the user may associate each media item with one of three
`parameters: persons, an event, and time. Id. at 1:47–2:11. Later, other users
`
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`IPR2023-00059
`Patent 10,417,275 B2
`may search and retrieve desired photos by searching using one or more of
`those parameters. Id. at 2:12–24. Patent Owner does not dispute that Sharpe
`is available as prior art. See PO Resp. In our decision instituting trial,
`based upon the evidence of record, we determined that Sharpe is available as
`prior art. See Dec. on Inst. 10–21.
`Eintracht
`2.
`Eintracht is titled “Synchronizing/Updating Local Client Notes With
`Annotations Previously Made by Other Clients in a Notes Database.” Ex.
`1006, code (54). Eintracht relates to an Internet-based “system for
`collaborative document annotation based on the exchange of notes attached
`to web based documents.” Id. at 1:9–11. Eintracht states that a common
`need at the time was “to be able to view the [web] document, i.e., images
`etc., on the client computer and be able to add one or more annotations to the
`document.” Id. at 1:26–28. The documents and their associated annotations
`are stored in separated data structures, permitting their data to be managed
`independently. Id. at 2:11–15. Users, via a plug-in module in their web
`browser, may display documents and create annotations. Id. at 2:16–40.
`The annotations are transmitted to a server to be stored in asynchronous
`fashion, permitting multiple users to simultaneously annotate a document.
`Id. at 2:50–58.
`
`FotoFile
`3.
`FotoFile is titled “FotoFile: A Consumer Multimedia Organization
`and Retrieval System.” Ex. 1011. FotoFile relates to a system for
`multimedia organization and retrieval, blending human and automatic
`annotation methods. Id. at 1. FotoFile describes automatic feature
`extraction for automating annotations that would otherwise require manual
`entry. Id. at 4. FotoFile describes a face detection and recognition system
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`Patent 10,417,275 B2
`that attempts to match the face to an identity. Id. That identity will be
`assigned as an annotation to all subsequently seen photos containing a
`matching face. Id.
`
`Analysis of Claim 1
`4.
`We begin our analysis of Petitioner’s obviousness contentions with
`Petitioner’s assertions as to claim 1.
`1[pre]: method implemented within a computer system including a
`a)
`plurality of computing devices connected via a communications network, the
`method associating users of the computer system with digital media
`accessible to the computer system,
`Petitioner asserts that this limitation, to the extent limiting, is
`described by Sharpe’s “digital media items based on episodic memory of
`predefined associated groups of one or more people,” implemented “over the
`Internet.” Pet. 30–31 (citing Ex. 1005, code (57), 4:21–33). Patent Owner
`does not explicitly argue against this assertion. See PO Resp. In view of the
`foregoing, we determine that the combination of Sharpe and Eintracht
`teaches limitation 1[pre].3
`1[a]: distinguishing between users of the computer system via one or
`b)
`more unique user identifiers stored in a computer-readable medium
`accessible to the computer system, the users of the computer system
`including a named user and an identifying user, the named user being
`different from the identifying user, the named user having naming
`information associated with a unique user identifier of the named user;
`Petitioner points to the user archiving the media item as an
`“identifying user,” and the user identified in the image during archive is a
`“named user” that is “different from the identifying user,” because Sharpe
`describes that an individual can identify “digital media items related to other
`
`
`3 Because we find 1[pre] to be taught, we need not determine whether it is
`limiting.
`
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`IPR2023-00059
`Patent 10,417,275 B2
`users.” Id. at 37–38 (citing Ex. 1005, 5:6–13; Ex. 1003 ¶¶ 166–169).
`Petitioner further points to Sharpe’s description of a GUI [Graphical User
`Interface] having a “drop down box . . . provided for selecting any of a
`number of people within the group,” wherein the box is illustrated as a list of
`first names of people. Id. at 38–39 (citing Ex. 1005, 6:67–7:1, 8:26–29, Fig.
`4, Ex. 1003 ¶ 172). We are persuaded by Petitioner’s arguments.
`Petitioner asserts that this limitation is described by Sharpe’s use of a
`user name, recorded in a database, and password for users to identify
`themselves as a member of a group. Id. at 33–34 (citing Ex. 1005, 5:4–6,
`7:35–48). Petitioner points to the user name as a unique user identifier. Id.
`at 34 (citing Ex. 1003 ¶ 152). Petitioner further points to unique user
`identifiers being taught through Sharpe’s process by which images are
`associated with specific users in the database. Id. (citing Ex. 1003 ¶ 153).
`We are persuaded by Petitioner’s arguments.
`Alternately, Petitioner asserts that the unique user identifier limitation
`is taught by the combination of Sharpe and Eintracht, through incorporation
`of Eintracht’s unique user IDs associated with a user name into the invention
`of Sharpe. Id. at 34 (citing Ex. 1006, 8, 8–13, 10:40–63). Petitioner asserts
`that a person having ordinary skill in the art would be motivated to make
`such a combination to benefit from the flexibility in accessing and changing
`user name data from the identifier at a single location. Id. at 36 (citing Ex.
`1003 ¶ 57). Petitioner asserts that this provides an easier and more efficient
`way to change annotation on multiple images by changing one data field
`rather than editing each individual image. Id. at 26 (citing Ex. 1003 ¶ 133;
`Ex. 1006, 1:47–50). Petitioner asserts that a person having ordinary skill in
`the art would have recognized that Eintracht’s asynchronous annotation
`
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`IPR2023-00059
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`capability and groupware features would have thereby improved the
`collaborative digital media archival system of Sharpe. Id. at 25.
`Patent Owner argues that Petitioner has not established that a person
`of ordinary skill in the art would have combined Sharpe with Eintracht.
`Patent Owner argues that Sharpe and Eintracht are “directed to
`fundamentally different systems with different goals.” PO Resp. 18. Patent
`Owner argues that Sharpe’s goal is for image retrieval based on “episodic
`memory” whereas Eintracht’s goal is collaborative documentation
`annotation. Id. at 18–19 (citing Ex. 1003 ¶¶ 71, 75). Patent Owner argues
`that Petitioner’s proposed reason for combining the reference “pertains to
`solving a problem (asynchronous annotation) not present in the primary
`reference Sharpe.” Id. at 19 (citing Ex. 2021 ¶ 80). Patent Owner further
`argues that Petitioner has not explained how the proposed combination of
`Sharpe and Eintracht would work. Id. at 20–21 (citing Ex. 2021 ¶ 81).
`We do not agree with Patent Owner’s arguments because, as indicated
`above, Petitioner sufficiently details how the combination would work;
`Using Eintracht’s unique user ID could be accomplished
`by replacing the username with the unique user ID while keeping
`the username with an association to the unique user ID. Id.
`Another approach would have been to add Eintracht’s unique
`user ID to Sharpe’s user database as an additional column. Id.
`That unique user ID could then be a primary key used to identify
`Sharpe’s users.
`Petitioner asserts, and we agree, that this combination would have had a
`reasonable expectation of success because both are implemented over a
`network via a server, and over the Internet via the World Wide Web. Id. at
`28–29 (citing Ex. 1005, 4:21–28, 5:50–63, Fig. 2; Ex. 1006, 1:7–12, 1:26–
`35, 2:16–27, Fig. 3; Ex. 1003 ¶ 135). Petitioner relies upon a statement from
`Dr. Bederson, which we credit, that a person of ordinary skill in the art
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`would have recognized the systems as structurally similar, and that in view
`of the similarities, that person would expect to be able to combine the
`features of Sharpe and Eintracht. Id. (citing Ex. 1003 ¶ 137). We determine
`this showing to sufficiently explain how the references would have been
`combined such that it would have been obvious to one having ordinary skill
`in the art to do so.
`With respect to the different problems being addressed by Sharpe and
`Eintracht, a determination of obviousness does not require that each
`reference address the same problem or goal. Rather, “any need or problem
`known in the field of endeavor at the time of invention and addressed by the
`patent can provide a reason for combining the elements in the manner
`claimed.” KSR Intern. v. Teleflex, 550 U.S. 398, 420 (2007).
`Consequently, we determine that Petitioner has sufficiently shown
`adequate reason to combine the references. In view of the foregoing, we
`determine that the combination of Sharpe and Eintracht teaches limitation
`1[a].
`1[b]: in response to an input from the identifying user indicating a
`c)
`selection of an image, determining a unique image identifier corresponding
`to the image selected;
`Petitioner points to Sharpe’s description of the user identifying a
`group to which the user belongs, permitting one or more digital media items
`to be identified to be archived by the user’s selection of an item to be
`imported onto the work space. Id. at 40 (citing Ex. 1005, 1:42–47, 2:39–41,
`7:42–44; Ex. 1003 ¶¶ 176–178). Petitioner highlights Sharpe’s use of an
`identifier responsible for associating each item to be stored, and that “digital
`media items may be stored separately with unique identifiers such as a file
`name or index.” Id. at 40–41 (citing Ex. 1005, 3:64–4:6, 5:24–40). We are
`
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`persuaded by Petitioner’s arguments and evidence and Patent Owner does
`not provide arguments addressing limitation 1[b]. See PO Resp. In view of
`the foregoing, we determine that the combination of Sharpe and Eintracht
`teaches limitation 1[b].
`1[c]: receiving, from the identifying user, an input indicating a
`d)
`selection of the named user from a list of other users of the computer system,
`the list of other users including naming information previously provided by
`other users, the list of other users including one or more users in a contact
`list associated with the identifying user, the identifying user’s contact list
`including the named user
`Petitioner points to Sharpe’s description of a graphical user interface
`[“GUI”] from which a user selects a name from a list of names. Id. at 42
`(citing Ex. 1005, Fig. 4, 8:15–25). The selection associates that name with a
`media item, which is then archived with the selected people. Id. (citing Ex.
`1005, 6:58–7:24, 8:15–25). The list of people is taken from a database of
`groups of people, and the names have been previously provided by the users
`when the users database is populated. Id. at 42–44 (citing Ex. 1005, Fig. 4,
`5:4–6, 7:35–38, 8:26–29; Ex. 1003 ¶ 185). Petitioner characterizes Sharpe’s
`list of people in its drop-down box both as a list of other users and a contact
`list for group members. Id. at 45.
`Petitioner further asserts that the use of a contact list for Sharpe’s
`archiving user would have been a simple design choice as it was a known
`feature. Id. at 46 (citing Ex. 1007, 1:20–43; Ex. 1028, 14:7–9; Ex. 1013
`¶ 31; Ex. 1012, 8:53–61; Ex. 1003 ¶ 190). Petitioner further asserts that
`such a combination would have improved group collaboration by allowing
`users to leverage their contacts, and would have facilitated Sharpe’s aim of
`increased participation in the events being archived. Id. at 45–46 (citing Ex.
`1003 ¶ 190). We are persuaded by Petitioner’s arguments and evidence and
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`Patent Owner does not provide arguments addressing limitation 1[c]. See
`PO Resp. In view of the foregoing, we determine that the combination of
`Sharpe and Eintracht teaches limitation 1[c].
`1[d]: in response to receiving from the identifying user the input
`e)
`indicating the selection of the named user from the list of other users,
`determining a unique user identifier of the named user;
`Petitioner points to Sharpe’s description of a user selecting a name
`from the drop-down box, the name being a personal name uniquely
`identifying the named user. Id. at 46 (citing Ex. 1003 ¶ 192).
`Patent Owner argues that Sharpe only teaches the user name for
`identifying the user as a member of a group, not for determining a user name
`in response to selection of a user in an image. PO Resp. 22–23 (citing Ex.
`1005, 7:37–41; Ex. 2021 ¶ 83). Patent Owner argues that Petitioner relies
`upon argument regarding what one of ordinary skill would have understood
`Sharpe to teach, rather than actual disclosures in Sharpe, as to how the user
`name in Sharpe would have been used in Sharpe’s system. Id. (citing Pet.
`46–47). Patent Owner argues that it is not necessary for Sharpe’s user name
`to perform the claimed function, pointing to Dr. Saber’s testimony that a
`separate, internal unique user identifier could have been used in Sharpe for
`keeping track of each user, instead of the user name. Id. at 23–25 (citing Ex.
`2021 ¶¶ 85–86).
`In its Reply, Petitioner responds by arguing that Patent Owner
`mischaracterizes the Petition as presenting an inherency argument. Pet.
`Reply 4–5. Petitioner argues the Petition “establishes that the username
`would have been an obvious design choice for a primary key in view of
`Sharpe’s teachings and the knowledge of a POSA [person of ordinary skill
`in the art.” Id. at 5 (citing Pet. 33–34, 46–47; Ex. 1003 ¶¶ 152–153, 191–
`
`16
`
`
`
`IPR2023-00059
`Patent 10,417,275 B2
`194 ). Petitioner points to Dr. Bederson’s testimony that “a POSA would
`have further understood that a username is one such unique identifier.” Id.
`at 6 (citing Ex. 1039 ¶ 11). Petitioner argues that Patent Owner and Dr.
`Saber both appear to agree that a username would have been recognized as a
`potential user unique identifier by a person having ordinary skill in the art.
`Id. (citing Ex. 2021 ¶¶ 85–86; PO Resp. 23–26). Accordingly, Petitioner
`argues, there is no material dispute that a person having ordinary skill in the
`art would have understood Sharpe’s username as an available design option
`for implementing Sharpe’s databases. Id. at 7.
`Petitioner further argues that the Petition alternatively asserts that it
`would have been obvious to modify Sharpe to use non-username unique IDs
`as taught by Eintracht. Id. (citing Pet. 34–36). Petitioner argues that Patent
`Owner did not address this in its Response. Id.
`In its Sur-reply, Patent Owner argues that Petitioner did not develop
`either such assertion in its Petition that relates to limitation 1[d]. PO Sur-
`reply 3–7. Patent Owner argues that the Petition states that “Sharpe’s
`system must use the username as a unique identifier.” Id. at 3. Patent
`Owner argues that limitation 1[d] was addressed in the Petition as being
`taught by Sharpe – not by Eintracht.
`We start with Petitioner’s assertion in its Reply that the Petition
`addressed limitation 1[d] as being taught by Eintracht. We acknowledge
`that the Petition’s discussion of limitation 1[d] states that “Sharpe alone or in
`view of the knowledge of a POSA discloses this limitation.” Pet. 46. Yet
`we also acknowledge that the Petition addressed the term at issue, the
`“unique identifier,” in its discussion of limitation 1[a]. As detailed in our
`analysis of limitation 1[a], the Petition provided an assertion of obviousness
`of the unique identifier over a combination of Sharpe and Eintracht. Supra
`
`17
`
`
`
`IPR2023-00059
`Patent 10,417,275 B2
`§ II(D)(4)(b). The Petition further provided an explanation of how that
`combination would be achieved, the motivation for such a combination, and
`an explanation of why such a combination would have a reasonable
`expectation of success. Id. We have determined such explanation to be
`sufficiently explained and supported by the record. Id. Therefore, we
`cannot agree that the Petition did not advance a sufficient assertion that the
`“unique identifier” of limitation 1[d] was taught by a combination of Sharpe
`and Eintracht. For the same reasons set forth in our discussion of limitation
`1[a], we determine that the combination of Sharpe and Eintracht teaches
`limitation 1[d]. Consequently, we need not reach the issue of whether
`Sharpe alone teaches this limitation.
`1[e]: receiving, from the identifying user, one or more inputs
`f)
`indicating a set of coordinates corresponding to a location of the named
`user within the image;
`Petitioner points to Sharpe, as described above, for its teaching of the
`labeling of images with the names of the people therein. Id. at 47–49.
`Petitioner also points to Eintracht’s description of its user identifying
`coordinates corresponding to a location within the image. Id. at 49 (citing
`Ex. 1006, 7:55–64, 15:10–16). Petitioner asserts that a person having
`ordinary skill in the art would have been motivated to apply Eintracht’s
`coordinate-specific identification to Sharpe’s identification of users in an
`image, to “improve the user experience and the ability to automatically
`identify faces within the image,” as well as improve the user’s ability to
`recall certain individuals. Id. at 50 (citing Ex. 1003 ¶ 201).
`Patent Owner argues that Eintracht’s coordinate identification of notes
`in a document (its “note anchor”) refers to the coordinates of notes and not
`the coordinates of a named user in an image. PO Resp. 28 (citing Ex. 2021
`
`18
`
`
`
`IPR2023-00059
`Patent 10,417,275 B2
`¶ 92). Patent Owner argues that the user decides where the notes are placed,
`and that combination with Sharpe would result in the notes being placed
`over the image, potentially obscuring the user from view contrary to the
`purpose of Sharpe. Id. at 28–29 (citing Ex. 2019, 63:12–64:3; Ex. 2021
`¶ 93); Sur-reply 7–8. Patent Owner argues that a person having ordinary
`skill in the art “would not have sought to modify Sharpe—which discloses
`people depicted in images—in light of the teachings of Eintracht to arrive at
`limitation 1[e], which requires coordinates “corresponding to a location of
`the named user within the image.” PO Resp. 30. Patent Owner argues that
`the Petition does not explain how and where such coordinates would be
`stored, or how the location of the named user within the image would be
`determined. Id. at 31. Patent Owner further argues that Eintracht relates to
`non-person images. Id. at 28–29 (citing Ex. 1006, Fig. 1B).
`We do not agree with Patent Owner’s argument that the potential for
`obscuring a face in an image would dissuade a person having ordinary skill
`in the art from applying Eintracht’s teachings to identifying the coordinates
`of users in photos per Sharpe. Limitation 1[d] requires the user to indicate
`coordinates corresponding to a person in the image. The disclosure of the
`’275 patent indicates that the correspondence between the shape of the figure
`and the stored coordinates need not be exact. See Ex. 1001, 8:23–35 (“John
`Doe appears in the circular area bound by the coordinates 50, 50, 25 x-axis
`location, y-axis location, radius of circ
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