Filed on behalf of: Meta Platforms, Inc.
`
`Filed: November 17, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`META PLATFORMS, INC.
`Petitioner,
`
`v.
`
`ANGEL TECHNOLOGIES GROUP LLC,
`Patent Owner.
`__________________
`Case No. IPR2023-00059
`U.S. Patent No. 10,417,275
`__________________
`
`DECLARATION OF DR. BENJAMIN B. BEDERSON
` IN SUPPORT OF PETITIONER’S REPLY
`
`Meta Platforms, Inc.
`Meta Platforms, Inc. v. Angel Technologies Group
`LLC IPR2023-00059
`Exhibit 1039 - Cover
`
`
`
`Filed: November 17, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`META PLATFORMS, INC.
`Petitioner,
`
`v.
`
`ANGEL TECHNOLOGIES GROUP LLC,
`Patent Owner.
`__________________
`Case No. IPR2023-00059
`U.S. Patent No. 10,417,275
`__________________
`
`DECLARATION OF DR. BENJAMIN B. BEDERSON
` IN SUPPORT OF PETITIONER’S REPLY
`
`Meta Platforms, Inc.
`Meta Platforms, Inc. v. Angel Technologies Group
`LLC IPR2023-00059
`Exhibit 1039 - Cover
`
`
`
`IPR2023-00059 (USP 10,417,275)
`
` Decl. ISO Petitioner’s Reply
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ............................................................................... 1
`
`GROUND 1: SHAPE IN VIEW OF EINTRACHT AND
`FOTOFILE RENDERS OBVIOUS CLAIMS 1-12 ......................... 3
`
`A.
`
`B.
`
`C.
`
`D.
`
`A POSA Would Have Been Motivated to Combine Sharpe with
`Eintracht and FotoFile ........................................................................... 3
`
`Sharpe in View of Eintracht and FotoFile Teaches the “Unique
`User Identifier” (Claim 1[d]) ................................................................. 4
`
`Sharpe in View of Eintracht and FotoFile Teaches
`“Coordinates” (Claims 1[e], 7, 8) ......................................................... 6
`
`Sharpe in View of Eintracht and FotoFile Teaches the Claimed
`Email Notification (Claims 3 & 4) ...................................................... 11
`
`III.
`
`CONCLUSION .................................................................................. 13
`
`- i -
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`Meta Platforms, Inc.
`Meta Platforms, Inc. v. Angel Technologies Group LLC
`IPR2023-00059
`Exhibit 1039 - Page i of 13
`
`
`
`IPR2023-00059 (USP 10,417,275)
`
` Decl. ISO Petitioner’s Reply
`
`I, Dr. Benjamin B. Bederson, do hereby declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`I am making this declaration at the request of Meta Platforms, Inc.
`
`(“Petitioner”) in IPR2023-00059, the Inter Partes Review of claims 1-12 of U.S.
`
`Patent No. 10,417,275 (“the ’275 patent”). I am also making separate declarations
`
`at the request of Petitioner in IPR2023-00057, the Inter Partes Review of claims 1-8
`
`of U.S. Patent No. 8,954,432 (“the ’432 patent”); IPR2023-00058, the Inter Partes
`
`Review of claims 1-26 of U.S. Patent No. 9,959,291 (“the ’291 patent”); and
`
`IPR2023-00060 and the Inter Partes Review of claims 1-30 of U.S. Patent No.
`
`10,628,480 (“the ’480 patent”).
`
`2.
`
`I am being compensated for my work in this matter at my standard
`
`hourly rate. I am also being reimbursed for reasonable and customary expenses
`
`associated with my work and testimony. My compensation is not contingent on the
`
`outcome of this matter or the specifics of my testimony.
`
`3.
`
`I previously submitted a declaration in this proceeding as Exhibit 1003,
`
`which I will refer to as my original declaration (“Bederson Decl.”). My original
`
`declaration set forth my background, credentials, and curriculum vitae.
`
`4.
`
`I submit this declaration in reply to arguments advanced by Patent
`
`Owner Angel Technologies Group LLC (“Patent Owner”) in its Patent Owner
`
`Response (“POR”) and in the Declaration of Dr. Eli Saber in Support of Patent
`
`- 1 -
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`Meta Platforms, Inc.
`Meta Platforms, Inc. v. Angel Technologies Group LLC
`IPR2023-00059
`Exhibit 1039 - Page 1 of 13
`
`
`
`IPR2023-00059 (USP 10,417,275)
`
`
`
` Decl. ISO Petitioner’s Reply
`
`Owner Response (“Saber Decl.”), submitted in this proceeding as Paper 25 and
`
`Exhibit 2021, respectively.
`
`5.
`
`In addition to the materials I reviewed in preparing my original
`
`declaration and the materials cited in this supplemental declaration, I have also
`
`reviewed the following in preparing this supplemental declaration:
`
`a. Paper 24, Patent Owner Response in IPR2023-00057,
`
`b. Paper 24, Patent Owner Response in IPR2023-00058,
`
`c. Paper 25, Patent Owner Response in IPR2023-00059,
`
`d. Paper 24, Patent Owner Response in IPR2023-00060,
`
`e. Ex. 2021, Declaration of Dr. Eli Saber in IPR2023-00057,
`
`f. Ex. 2021, Declaration of Dr. Eli Saber in IPR2023-00058,
`
`g. Ex. 2021, Declaration of Dr. Eli Saber in IPR2023-00059,
`
`h. Ex. 2022, Declaration of Dr. Eli Saber in IPR2023-00060,
`
`i. Ex. 2019, Transcript of July 20, 2023 Deposition of Dr. Benjamin B.
`
`Bederson in IPR2023-00057, -00058, and -00059,
`
`j. Ex. 2021, Transcript of July 21, 2023 Deposition of Dr. Benjamin B.
`
`Bederson in IPR2023-00060,
`
`k. Ex. 1040, Transcript of October 20, 2023 Deposition of Dr. Eli Saber,
`
`and
`
`l. Ex. 1041, Transcript of October 23, 2023 Deposition of Dr. Eli Saber.
`
`- 2 -
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`Meta Platforms, Inc.
`Meta Platforms, Inc. v. Angel Technologies Group LLC
`IPR2023-00059
`Exhibit 1039 - Page 2 of 13
`
`
`
`IPR2023-00059 (USP 10,417,275)
`
`
`
` Decl. ISO Petitioner’s Reply
`
`
`II. GROUND 1: SHAPE IN VIEW OF EINTRACHT AND FOTOFILE
`RENDERS OBVIOUS CLAIMS 1-12
`
`6.
`
`In my original declaration, I explained why claims 1-12 of the ’275
`
`patent would have been obvious over Sharpe in view of Eintracht and FotoFile. I
`
`understand from counsel that Patent Owner and Dr. Saber disagreed with some of
`
`my conclusions. Counsel has asked me to address some of those disagreements, and
`
`I do so in the following paragraphs.
`
`A. A POSA Would Have Been Motivated to Combine Sharpe with
`Eintracht and FotoFile
`As I previously explained, a POSA would have been motivated to
`
`7.
`
`combine the teachings of Sharpe and Eintracht with a strong expectation of success.
`
`Bederson Decl. ¶¶ 128-31, 135-36. A POSA would have been further motivated to
`
`combine the teachings of Sharpe and Eintracht with the teachings of FotoFile. Id. at
`
`¶¶ 132-34, 137-38. Patent Owner and Dr. Saber only dispute the combination of
`
`Sharpe and Eintracht. They assert that Sharpe and Eintracht are “fundamentally
`
`different systems with different goals.” E.g., Saber Decl. ¶¶ 78-81. For example,
`
`Dr. Saber opines that “Eintracht does not relate to archival and retrieving of digital
`
`media items, Sharpe does not relate to collaborative document annotation.” Id. ¶ 80.
`
`I disagree.
`
`8.
`
`A POSA would have recognized that Sharpe and Eintracht disclose
`
`overlapping systems and goals. Eintracht’s collaborative system operates on “a
`
`
`
`- 3 -
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`Meta Platforms, Inc.
`Meta Platforms, Inc. v. Angel Technologies Group LLC
`IPR2023-00059
`Exhibit 1039 - Page 3 of 13
`
`
`
`IPR2023-00059 (USP 10,417,275)
`
` Decl. ISO Petitioner’s Reply
`
`variety of document types,” including digital media items—indeed, the primary
`
`
`
`example in the specification is the annotation of an image. See, e.g., Ex. 1006 at
`
`6:55-7:23, Figs. 1A, 1B, 1C, 2. Sharpe similarly contemplates collaborative work
`
`with documents and images, including the application of its system in a business
`
`context—with archival and retrieval of “digital media items” relating to a meeting,
`
`such as e-mails, letters, and presentations. See, e.g., Ex. 1005 at 3:45-56. Thus,
`
`Sharpe and Eintracht overlap because they both expressly contemplate collaborative
`
`work involving the annotation of digital media items.
`
`9.
`
`And, as I explained in my declaration, both Sharpe and Eintracht are
`
`also structurally similar, web-based, multi-user collaborative systems implemented
`
`on a server and accessible via the Internet. Bederson Decl. ¶¶ 135-36. Patent Owner
`
`and Dr. Saber do not acknowledge, much less dispute, my analysis regarding the
`
`structural similarity of Sharpe and Eintracht.
`
`B.
`
`Sharpe in View of Eintracht and FotoFile Teaches the “Unique
`User Identifier” (Claim 1[d])
`10. As I explained in my original declaration, a POSA would have
`
`understood that Sharpe’s username would be a primary key suitable to distinctly
`
`specify a relationship between a particular user and a particular image in Sharpe’s
`
`database system. See, e.g., Bederson Decl. ¶¶ 120-21, 173-74, 191-94. While a
`
`POSA would have understood that there are other available design options, a
`
`username would have been an obvious design choice in view of Sharpe’s disclosure
`
`
`
`- 4 -
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`Meta Platforms, Inc.
`Meta Platforms, Inc. v. Angel Technologies Group LLC
`IPR2023-00059
`Exhibit 1039 - Page 4 of 13
`
`
`
`IPR2023-00059 (USP 10,417,275)
`
` Decl. ISO Petitioner’s Reply
`
`and a POSA’s knowledge that usernames are often used as primary keys in database
`
`
`
`schemas. See id.
`
`11. Patent Owner and Dr. Saber misunderstand my analysis when they
`
`conclude that my opinion is that “Sharpe’s system must use the user name … as a
`
`unique identifier or ‘primary key.’” E.g., Saber Decl. ¶ 85.1 That is not my opinion.
`
`Rather, my opinion is that a POSA would have understood that a username is one
`
`such unique identifier and the most obvious design choice for the Sharpe system
`
`given that each user already required a username to log on to the system. See, e.g.,
`
`Bederson Decl. ¶¶ 120-21, 173-74, 191-94.
`
`12.
`
`Indeed, Patent Owner and Dr. Saber appear to agree with my opinion
`
`that a POSA would have recognized that Sharpe’s username is one option to
`
`implement a primary key in Sharpe’s system. For example, Dr. Saber does not
`
`appear to dispute that the username can be a primary key, and instead argues that the
`
`username “does not need to be” the primary key, and that “another possible way” to
`
`implement Sharpe’s system is to assign an internal unique identifier to a user. Saber
`
`Decl. ¶¶ 85-87.
`
`13. To the extent that Patent Owner and Dr. Saber dispute that a username
`
`can be used as a primary key in Sharpe’s system, it was known in the art to utilize
`
`
`1 All emphasis added unless otherwise indicated.
`
`
`
`- 5 -
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`Meta Platforms, Inc.
`Meta Platforms, Inc. v. Angel Technologies Group LLC
`IPR2023-00059
`Exhibit 1039 - Page 5 of 13
`
`
`
`IPR2023-00059 (USP 10,417,275)
`
` Decl. ISO Petitioner’s Reply
`
`usernames as primary keys in database schemas. For example, a 1996 paper2
`
`
`
`describes a language and system for constructing web-based views of the contents
`
`of a database. Ex. 1042 at 2. In describing the relationships in the database, the
`
`paper explains that they “usually possess a primary key which is composed of one
`
`or more attributes the values of which uniquely identify each tuple of the relation.”
`
`Id. at 4. The paper then provides the username as an example of a suitable primary
`
`key, explaining that “the attribute username is a primary key … since all users must
`
`have a different user name.” Id. This paper provides further confirmation that the
`
`username would have been an immediate and obvious user unique identifier to a
`
`POSA reviewing Sharpe’s disclosure.
`
`C.
`
`Sharpe in View of Eintracht and FotoFile Teaches “Coordinates”
`(Claims 1[e], 7, 8)
`14. As I explained in my original declaration, Sharpe in view of Eintracht
`
`discloses the claimed “coordinates” of claims 1[e], 7, and 8. Bederson Decl. ¶¶ 195-
`
`202, 230-38. Indeed, Eintracht expressly discloses an annotation located at specific
`
`(X, Y) coordinates, and the Applicant acknowledged that fact during prosecution of
`
`the ’432 patent. Id. ¶¶ 199-200.
`
`
`2 Gilles Falquet, et al., Generating Hypertext Views on Databases, ACTES DU
`
`XIVÈME CONGRÈS INFORSID 269, 269-84 (1996) (Ex. 1042).
`
`
`
`- 6 -
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`Meta Platforms, Inc.
`Meta Platforms, Inc. v. Angel Technologies Group LLC
`IPR2023-00059
`Exhibit 1039 - Page 6 of 13
`
`
`
`IPR2023-00059 (USP 10,417,275)
`
` Decl. ISO Petitioner’s Reply
`
`15. Patent Owner and Dr. Saber nevertheless dispute that Sharpe in view of
`
`
`
`Eintracht discloses the claimed “coordinates.” E.g., Saber Decl. ¶¶ 89-95, 106-07.
`
`For example, Dr. Saber admits that Sharpe “discloses people depicted in images,”
`
`yet opines that a POSA would not have made the combination because “Eintracht
`
`does not disclose people depicted in images.” Id. ¶ 93-94. Dr. Saber explains that
`
`“Petitioner has proposed a primary reference (Sharpe) that discloses people, and a
`
`secondary reference (Eintracht) that discloses coordinates in an entirely different
`
`context.” Id. ¶ 94.
`
`16.
`
`I disagree with Patent Owner and Dr. Saber’s analysis. They
`
`improperly view the teachings of Sharpe and Eintracht in isolation. When properly
`
`viewed in context of the combined teachings of Sharpe and Eintracht, it would have
`
`been obvious to a POSA to annotate an image with name of the pictured individual
`
`at a particular location, as recited in claims 1[e], 7, and 8. Sharpe discloses the
`
`annotation of images to identify users within those images, and “Eintracht discloses
`
`that the user identifies a specific X, Y coordinate location in an image for an
`
`associated annotation.” E.g., Bederson Decl. ¶ 199.
`
`17. Patent Owner and Dr. Saber also argue that Eintracht’s annotations
`
`would “potentially obscure” a user within an image because the annotations are
`
`placed over the image. E.g., Saber Decl. ¶ 93. Once again, they take an overly
`
`limited view of the prior art’s teachings and the knowledge and skill of a POSA. As
`
`
`
`- 7 -
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`Meta Platforms, Inc.
`Meta Platforms, Inc. v. Angel Technologies Group LLC
`IPR2023-00059
`Exhibit 1039 - Page 7 of 13
`
`
`
`IPR2023-00059 (USP 10,417,275)
`
` Decl. ISO Petitioner’s Reply
`
`with Sharpe, the annotations presented in Eintracht’s figures are simplified
`
`
`
`illustrations that do not account for every aspect of the user interface. See, e.g.,
`
`Ex. 1006 at 4:56-62, 6:55-65, 19:38-41 (figures are examples for illustrative
`
`purposes). Furthermore, it was well within the skill of a POSA to implement
`
`Eintracht’s annotations without obscuring the users depicted in the image.
`
`18.
`
`“Tool tips” were a common user interface element at the time of the
`
`purported invention of the ’275 patent. A tool tip is a text box that appears when the
`
`user hovers the cursor over another element in the user interface, and disappears
`
`when the user moves the cursor away. See Ex. 1044 at 168, 343.3 For example, the
`
`tool tip “Small Icons” appears when the user hovers the cursor over the
`
`corresponding toolbar button:
`
`
`
`
`3 MICROSOFT PROFESSIONAL REFERENCE, THE WINDOWS INTERFACE GUIDELINES
`
`FOR SOFTWARE DESIGN (1995) (Ex. 1044).
`
`
`
`- 8 -
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`Meta Platforms, Inc.
`Meta Platforms, Inc. v. Angel Technologies Group LLC
`IPR2023-00059
`Exhibit 1039 - Page 8 of 13
`
`
`
`IPR2023-00059 (USP 10,417,275)
`
` Decl. ISO Petitioner’s Reply
`
`Id. at 343. A POSA would have recognized that Eintracht’s annotations could have
`
`
`
`been implemented as tool tips so that they annotations only appear when the user
`
`hovers a cursor over the tagged individual.
`
`19. Alternatively, or in combination, a POSA could have implemented
`
`Eintracht’s annotations using transparency. Transparent windows and menus were
`
`known in the art at the time of the purported invention of the ’275 patent. For
`
`example, a 1996 paper4 provides “a systematic evaluation of transparent user
`
`interfaces.” Ex. 1045 at 391. The paper demonstrates how transparent and semi-
`
`transparent text menus can be placed over images, using as an example an image of
`
`a vehicle strikingly similar to Eintracht’s figures:
`
`
`4 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 (Ex. 1045).
`
`
`
`- 9 -
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`Meta Platforms, Inc.
`Meta Platforms, Inc. v. Angel Technologies Group LLC
`IPR2023-00059
`Exhibit 1039 - Page 9 of 13
`
`
`
`IPR2023-00059 (USP 10,417,275)
`
`
`
` Decl. ISO Petitioner’s Reply
`
`
`
`
`Id. (excerpt from Fig. 1).
`
`20. Patent Owner and Dr. Saber also appear to suggest that Eintracht does
`
`not disclose claims 1[e], 7, and 8 because Eintracht’s annotations are “placed over
`
`the image” and are “not a part of the image itself.” E.g., Saber Decl. ¶ 92. To the
`
`extent that Patent Owner and Dr. Saber argue this, they are wrong. The claims do
`
`not require the annotations to be part of the image itself. In particular, claim 1[e]
`
`recites “a set of coordinates corresponding to a location of the named user within the
`
`image.” Ex. 1001 at 17:18-20. This describes pictured users “within” said image
`
`data, not that the coordinates are “within” the image data. Claims 7 and 8 similarly
`
`recite coordinates that indicate or correspond to “the location of the named user
`
`within the image.” Id. at 18:6-21. This also describes the pictured users that are
`
`“within the image,” not that the coordinates are stored within the image data. In any
`
`
`
`- 10 -
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`Meta Platforms, Inc.
`Meta Platforms, Inc. v. Angel Technologies Group LLC
`IPR2023-00059
`Exhibit 1039 - Page 10 of 13
`
`
`
`IPR2023-00059 (USP 10,417,275)
`
` Decl. ISO Petitioner’s Reply
`
`event, even if that were a requirement, the collective teachings of Sharpe and
`
`
`
`Eintracht would still render these claims obvious. Sharpe expressly states that its
`
`“index information may be stored together with the digital media item for example
`
`as a ‘header.’” Ex. 1005 at 3:64-65.
`
`21. Finally, Patent Owner and Dr. Saber contend that a POSA would need
`
`specific details about the storage of coordinates and how to determine the location
`
`of the user within the image. E.g., Saber Decl. ¶ 95. Once again, these are minor
`
`implementation details well within the skill of a POSA, who would have at least two
`
`years of experience with networked and Web-based media applications. E.g.,
`
`Bederson Decl. ¶¶ 39, 135-38. In any event, Eintracht discloses how the location of
`
`the annotation is determined. Id. ¶ 199 (citing Ex. 1006 at 15:10-16). Eintracht also
`
`explains that the coordinates of an annotation are stored in its notes database and
`
`communicated using a data structure that includes a “note anchor field.” See, e.g.,
`
`Ex. 1006 at 10:56-63, 17:28-29, 18:52-53, Fig. 11 (item 216), Fig. 13 (item 268).
`
`As I previously explained, the Sharpe and Eintracht systems are structurally similar,
`
`so a POSA would have expected to successfully combine their teachings. Bederson
`
`Decl. ¶¶ 135-36.
`
`D.
`
`Sharpe in View of Eintracht and FotoFile Teaches the Claimed
`Email Notification (Claims 3 & 4)
`22. As I explained in my original declaration, Sharpe in view of Eintracht
`
`and FotoFile discloses the claimed email notification of dependent claims 3 and 4.
`
`
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`- 11 -
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`Meta Platforms, Inc.
`Meta Platforms, Inc. v. Angel Technologies Group LLC
`IPR2023-00059
`Exhibit 1039 - Page 11 of 13
`
`
`
`IPR2023-00059 (USP 10,417,275)
`
` Decl. ISO Petitioner’s Reply
`
`Bederson Decl. ¶¶ 224-27. Patent Owner and Dr. Saber acknowledge that Eintracht
`
`
`
`discloses email notifications, but assert that Eintracht’s “notifications are related
`
`simply to a note event, not to the notification of an association.” E.g., Saber Decl. ¶
`
`104. Thus, Eintracht does not “disclose sending an email with information about
`
`the association.” Id. (emphasis original).
`
`23.
`
`I disagree with Patent Owner and Dr. Saber’s analysis. Once again,
`
`they improperly view the teachings of Sharpe and Eintracht in isolation. When
`
`properly viewed in context of the combined teachings of Sharpe, Eintracht, and
`
`FotoFile, it would have been obvious to a POSA that the email notification would
`
`include information about the annotation as recited in claims 3 and 4. As I explained,
`
`a POSA would have recognized that the association of user with a photo is an event
`
`that would trigger an email alert in the combined system. E.g., Bederson Decl.
`
`¶ 226. A POSA would have further recognized “that Eintracht’s email notification
`
`can include portions of the annotation, including the identified user, and additional
`
`information about the associated image.” Id. The most obvious “additional
`
`information” to include in the email notification would be information about the
`
`image annotation that triggered the notification in the first place. Patent Owner and
`
`Dr. Saber fail to appreciate that the POSA is capable of ordinary creativity, and
`
`ordinary creativity is all that is required to reach the limitation of claims 3 and 4 in
`
`view of the combined teachings of Sharpe, Eintracht, and FotoFile.
`
`
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`- 12 -
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`Meta Platforms, Inc.
`Meta Platforms, Inc. v. Angel Technologies Group LLC
`IPR2023-00059
`Exhibit 1039 - Page 12 of 13
`
`
`
`IPR2023-00059 (USP 10,417,275)
`
`
`
` Decl. ISO Petitioner’s Reply
`
`
`III. CONCLUSION
`
`I hereby declare that all statements made herein of my own knowledge are
`
`true and that all statements made on information and belief are believed to be true,
`
`and further that these statements were made with the knowledge that willful false
`
`statements and the like so made are punishable by fine or imprisonment, or both,
`
`under Section 1001 of Title 18 of the United States Code.
`
`
`Executed this 17th day of November 2023 in Windsor, Massachusetts.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`___________________________
`Dr. Benjamin B. Bederson
`
`
`
`
`
`- 13 -
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`Meta Platforms, Inc.
`Meta Platforms, Inc. v. Angel Technologies Group LLC
`IPR2023-00059
`Exhibit 1039 - Page 13 of 13
`
`
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