Filed on behalf of: Meta Platforms, Inc.
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`Filed: November 17, 2023
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
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`META PLATFORMS, INC.
`Petitioner,
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`v.
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`ANGEL TECHNOLOGIES GROUP LLC,
`Patent Owner.
`__________________
`Case No. IPR2023-00059
`U.S. Patent No. 10,417,275
`__________________
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`Filed: November 17, 2023
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
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`META PLATFORMS, INC.
`Petitioner,
`
`v.
`
`ANGEL TECHNOLOGIES GROUP LLC,
`Patent Owner.
`__________________
`Case No. IPR2023-00059
`U.S. Patent No. 10,417,275
`__________________
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`IPR2023-00059 (USP 10,417,275)
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`Petitioner’s Reply
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`TABLE OF CONTENTS
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`B.
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`C.
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`D.
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`E.
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`INTRODUCTION ........................................................................................... 1
`GROUND 1: SHARPE IN VIEW OF EINTRACHT AND FOTOFILE
`RENDERS OBVIOUS CLAIMS 1-12 ........................................................... 1
`A. A POSA Would Have Been Motivated To Combine Sharpe With
`Eintracht And FotoFile ......................................................................... 2
`Sharpe In View Of Eintracht And FotoFile Teaches The “Unique
`User Identifier” (1[d]) ........................................................................... 4
`Sharpe In View Of Eintracht And FotoFile Teaches
`“Coordinates” (1[e], 7, 8) ..................................................................... 8
`Sharpe In View Of Eintracht And FotoFile Teaches “Applying
`Artificial Intelligence Algorithms” (1[f]) ........................................... 10
`Sharpe In View Of Eintracht And FotoFile Teaches The
`Dependent Claims (Claims 3-4, 8-9, 11) ............................................ 11
`Dependent Claims 3 and 4 Would Have Been Obvious .......... 12
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`Dependent Claims 8 and 9 Would Have Been Obvious .......... 13
`Dependent Claim 11 Would Have Been Obvious .................... 14
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`The Petition Clearly Presents Sharpe In View Of Eintracht and
`FotoFile As An Obviousness Ground ................................................. 14
` GROUND 2: SHARPE IN VIEW OF EINTRACHT, FOTOFILE, AND
`CAREY RENDERS OBVIOUS CLAIMS 1-12 .......................................... 16
` CONCLUSION ............................................................................................. 16
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`F.
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`IPR2023-00059 (USP 10,417,275)
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`Petitioner’s Reply
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Beckson Marine, Inc. v. NFM, Inc.,
`292 F.3d 718 (Fed. Cir. 2002) .............................................................................. 3
`Bradium Techs LLC v. Iancu,
`923 F.3d 1032 (Fed. Cir. 2019) ............................................................................ 8
`Elekta Ltd. v. ZAP Surgical Sys., Inc.,
`81 F.4th 1368 (Fed. Cir. 2023) ................................................................. 9, 10, 12
`EWP Corp. v. Reliance Universal Inc.,
`755 F.2d 898 (Fed. Cir. 1985) .............................................................................. 8
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ........................................................................................... 12
`Maxlite, Inc. v. Jiaxing Super Lighting Elec. Appliance Co., Ltd.,
`No. IPR2020-00208, 2022 WL 1416695 (P.T.A.B. Apr. 29, 2022) .............. 7, 16
`Novartis Pharms. Corp. v. West-Ward Pharms. Int’l Ltd.,
`923 F.3d 1051 (Fed. Cir. 2019) ............................................................................ 9
`TQ Delta, LLC v. Cisco Sys., Inc.,
`942 F.3d 1352 (Fed. Cir. 2019) ............................................................................ 4
`Other Authorities
`37 C.F.R. § 42.23(b) .................................................................................................. 8
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`viii
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`Petitioner’s Reply
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`Exhibit
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`EXHIBIT LIST
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`Description
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`1015
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`U.S. Patent No. 10,417,275 (“’275 Patent”)
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`Prosecution History of U.S. Patent No. 10,417,275 (“’275 FH”)
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`Declaration of Dr. Benjamin B. Bederson (“Bederson”)
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`Curriculum Vitae of Dr. Benjamin B. Bederson
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`U.S. Patent No. 7,461,099 to Sharpe, et al. (“Sharpe”)
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`U.S. Patent No. 6,687,878 to Eintracht, et al. (“Eintracht”)
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`U.S. Patent No. 6,714,793 to Carey, et al. (“Carey”)
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`Prosecution History of U.S. Patent No. 10,628,480 (“’480 FH”)
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`Excerpt from THE OXFORD AMERICAN DICTIONARY AND LANGUAGE
`GUIDE (1999), at 203 (contact)
`Excerpt from THE AMERICAN HERITAGE DICTIONARY (4th ed. 2001),
`at 191 (contact)
`Allan Kuchinsky et al., FotoFile: A Consumer Multimedia
`Organization and Retrieval System, CHI ’99: PROCEEDINGS OF THE
`SIGCHI CONFERENCE ON HUMAN FACTORS IN COMPUTING SYSTEMS,
`496-503 (May 1999) (“FotoFile”)
`U.S. Patent No. 7,739,139 to Robertson, et al. (“Robertson”)
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`U.S. Patent App. Pub. No. 2002/0055955 to Lloyd-Jones, et al.
`(“Lloyd-Jones”)
`Reserved
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`Yuichi Yagawa et al., The Digital Album: A Personal File-tainment
`System, PROCEEDINGS OF THE THIRD IEEE INTERNATIONAL
`CONFERENCE ON MULTIMEDIA COMPUTING AND SYSTEMS
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`ix
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`IPR2023-00059 (USP 10,417,275)
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`Petitioner’s Reply
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`Exhibit
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`Description
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`1016
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`1017
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`1019
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`1020
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`1021
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`(MULTIMEDIA ’96), June 17-23, 1996, at 433-39
`Ben Shneiderman & Hyunmo Kang, Direct Annotation: A Drag-and-
`Drop Strategy for Labeling Photos, 2000 IEEE INTERNATIONAL
`CONFERENCE ON INFORMATION VISUALIZATION (IV ’00), July 19-21,
`2000
`Benjamin B. Bederson et al., Pad++: A Zoomable Graphical
`Sketchpad For Exploring Alternate Interface Physics, 7 J. OF VISUAL
`LANGUAGES & COMPUTING 3 (1996)
`1018 Mark Roseman & Saul Greenberg, Building Real-Time Groupware
`with GroupKit, a Groupware Toolkit, 3 ACM TRANSACTIONS ON
`COMPUTER-HUMAN INTERACTION 1 (Mar. 1996), at 66-106
`Excerpts from ROB KIRKLAND ET AL., DOMINO SYSTEM
`ADMINISTRATION (1999)
`Excerpts from DOROTHY BURKE & JANE CALABRIA, TEN MINUTE
`GUIDE TO LOTUS NOTES 4.6 (1997)
`Elizabeth F. Churchill, et al., Anchored Conversations: Chatting in the
`Context of a Document, CHI ’00: PROCEEDINGS OF THE SIGCHI
`CONFERENCE ON HUMAN FACTORS IN COMPUTING SYSTEMS, April
`2000, at 454-61
`1022 Mark S. Ackerman & David W. McDonald, Answer Garden 2:
`Merging Organizational Memory with Collaborative Help, CSCW
`’96: PROCEEDINGS OF THE 1996 ACM CONFERENCE ON COMPUTER
`SUPPORTED COOPERATIVE WORK, Nov. 1996, at 97-105
`U.S. Patent No. 6,175,831 to Weinreich, et al.
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`1023
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`1024
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`1025
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`1026
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`Excerpts from C.J. DATE, AN INTRODUCTION TO DATABASE SYSTEMS
`(6th ed. 1995)
`Excerpts from RANDY JAY YARGER ET AL., MYSQL & MSQL (1st ed.
`1999)
`Ulla Merz & Roger King, DIRECT: A Query Facility for Multiple
`Databases, 12 ACM TRANSACTIONS ON INFORMATION SYSTEMS 4
`(Oct. 1994), at 339-59
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`x
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`Exhibit
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`Description
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`1027
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`1028
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`1029
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`1030
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`1031
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`1032
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`1033
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`1034
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`1035
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`1036
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`1037
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`1038
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`1039
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`1040
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`1041
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`1042
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`Excerpts from CHARLES DYE, ORACLE DISTRIBUTED SYSTEMS (1999)
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`U.S. Patent No. 6,442,573 to Schiller, et al. (“Schiller”)
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`Reserved
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`Reserved
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`Reserved
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`Reserved
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`Reserved
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`Prosecution History of U.S. Patent No. 8,954,432 (“’432 FH”)
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`Declaration of Sylvia D. Hall-Ellis, Ph.D. (“Hall-Ellis”)
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`Board correspondence with Petitioner dated Feb. 24, 2023
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`Declaration of Eric E. Lancaster in support of Petitioner’s motion for
`pro hac vice admission dated June 14, 2023
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`Declaration of Sara L. Townsend in support of Petitioner’s motion for
`pro hac vice admission dated June 14, 2023
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`Declaration of Dr. Benjamin B. Bederson in Support of Petitioner’s
`Reply (“Bederson Reply”)
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`Deposition transcript of Dr. Eli Saber dated Oct. 20, 2023 (Vol. I)
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`Reserved
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`Gilles Falquet, et al., Generating Hypertext Views on Databases,
`ACTES DU XIVÈME CONGRÈS INFORSID 269, 269-84 (1996)
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`1043
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`Excerpts from APPLE COMPUTER, INC., MACINTOSH HUMAN INTERFACE
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`GUIDELINES (1992)
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`Petitioner’s Reply
`to PO Response
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`1044
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`1045
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`Excerpts from MICROSOFT PROFESSIONAL REFERENCE, THE WINDOWS
`INTERFACE GUIDELINES FOR SOFTWARE DESIGN (1995)
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`Beverly L. Harrison & Kim J. Vicente, An Experimental Evaluation of
`Transparent Menu Usage, CHI ’96: PROCEEDINGS OF THE SIGCHI
`CONFERENCE ON HUMAN FACTORS IN COMPUTING SYSTEMS, April
`2000, at 391-398
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`Petitioner’s Reply
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`INTRODUCTION
`The Petition established that the claims of the ’275 Patent would have been
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`obvious over the asserted prior art. PO cannot establish otherwise. Indeed, PO does
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`not even dispute that the asserted prior art discloses the purported point of novelty
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`that the Applicant belatedly added to obtain allowance—i.e., selecting users to tag
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`from a contact list. PO also no longer attempts to swear behind the asserted prior
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`art, abandoning the failed position it took in its Preliminary Response.
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`Instead, PO now resorts to a patchwork of mischaracterizations of fact and
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`misstatements of law to argue that the asserted prior art does not disclose various
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`non-novel claim limitations. None of its arguments have merit. PO’s last-ditch
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`arguments fail to properly consider the asserted prior art references for all that they
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`teach, and would improperly reduce the POSA to a robotic automaton devoid of any
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`common sense. The Board should reject PO’s arguments and find all challenged
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`claims unpatentable.
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` GROUND 1: SHARPE IN VIEW OF EINTRACHT AND FOTOFILE
`RENDERS OBVIOUS CLAIMS 1-12
`For Ground 1, PO first attacks the motivation to combine Sharpe and Eintracht
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`(but not FotoFile). POR 18-22. PO then relies on mischaracterizations of
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`Petitioner’s arguments and the asserted references to dispute the disclosures of
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`several limitations in the independent claim (but not the point of novelty). Id., 22-
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`35. PO next applies the same improper techniques to dispute Eintracht’s disclosure
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`of several dependent claims. Id., 35-41. Finally, after presenting multiple responses
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`to the analysis presented in the Petition, PO asserts that the Petition is
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`“impermissibly vague.” Id., 42-44. As explained below, PO’s arguments all fail.
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`A. A POSA Would Have Been Motivated To Combine Sharpe With
`Eintracht And FotoFile
`As explained in the Petition, a POSA would have been motivated to combine
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`the teachings of Sharpe and Eintracht because a POSA would have recognized that
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`Eintracht’s asynchronous annotation capability and groupware features would have
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`improved the collaborative archival system of Sharpe. Pet. 25-27. A POSA would
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`have been further motivated to combine the teachings of Sharpe and Eintracht with
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`the teachings of FotoFile because a POSA would have recognized that FotoFile
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`would have enabled the combined system to automatically locate images of a named
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`user using facial recognition. Pet. 27-28. PO only challenges the combination of
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`Sharpe with Eintracht, and its response is little more than “not so.” See POR 18-22.
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`PO first asserts that Sharpe and Eintracht are “fundamentally different
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`systems with different goals.” POR 18-19. PO’s narrow read of the references is
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`wrong. Eintracht’s collaborative system operates on documents and images—
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`indeed, the primary example in the specification is the annotation of an image. See,
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`e.g., EX1006, 6:55-7:23, Figs. 1A, 1B, 2. Sharpe similarly contemplates
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`collaborative work with documents and images, including the application of its
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`system in a business context, with archival and retrieval of e-mails, letters, and
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`presentations. See, e.g., EX1005, 3:45-56. Thus, a POSA would have understood
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`that the purposes of Sharpe and Eintracht overlap. Bederson Reply ¶¶7-8. And, as
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`explained in the Petition, both Sharpe and Eintracht are also structurally similar,
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`web-based, multi-user collaborative systems implemented on a server and accessible
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`via the Internet. Id. ¶9; Pet. 28-29. PO offers no response to these arguments.
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`PO also asserts that the asynchronous annotation problem discussed in the
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`Petition is “not present” in Sharpe, but PO offers no explanation as to why. POR 19-
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`20. Nor does PO’s expert, who merely states that the references “solve different
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`problems” without further elaboration. Saber ¶80. It is unclear whether PO contends
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`that asynchronous annotation must be expressly discussed in Sharpe as a legal
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`matter, or that Sharpe does not have an asynchronous annotation problem as a
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`technical matter. Either way, PO is wrong. As a legal matter, motivation to combine
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`does not need to be expressly stated in a prior art reference, and can instead be shown
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`by reference to the knowledge of a POSA. Beckson Marine, Inc. v. NFM, Inc., 292
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`F.3d 718, 728 (Fed. Cir. 2002). As a technical matter, a POSA would recognize that
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`Sharpe’s web-based, multi-user system would need to address the situation where
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`multiple users from the same group seek to index the same image simultaneously
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`from different devices, thus giving rise to the asynchronous annotation problem.
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`Pet. 25-27 (citing Bederson ¶¶130-34).
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`Finally, PO asserts that the Petition fails to explain how a POSA would have
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`implemented the combination of Sharpe and Eintracht. POR 20-22. PO again
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`ignores the Petition, which lays out the structural similarities that would have
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`supported the combination of Sharpe and Eintracht, citing to Dr. Bederson’s
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`declaration for support. Pet. 28-30 (citing Bederson ¶¶135-38). PO fails to even
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`acknowledge, much less address, these specific arguments. Instead, PO only offers
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`generic attorney argument supported by conclusory expert testimony. See POR 20-
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`22 (citing only a single conclusory paragraph at Saber ¶81). The Board should give
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`these arguments no weight. TQ Delta, LLC v. Cisco Sys., Inc., 942 F.3d 1352, 1358
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`(Fed. Cir. 2019).
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`B.
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`Sharpe In View Of Eintracht And FotoFile Teaches The “Unique
`User Identifier” (1[d])
`Sharpe alone or in view of the knowledge of a POSA teaches the claimed user
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`unique identifier through Sharpe’s username. Pet. 33-34, 46-47. As explained in
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`the Petition, a POSA would have understood that Sharpe’s database system uses a
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`primary key to uniquely identify users in its database, and a POSA would have
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`recognized Sharpe’s username as an obvious design choice for implementing the
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`primary key in view of Sharpe’s disclosures. See id. (citing Bederson ¶¶152-53,
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`191-94).
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`In response, PO attacks a straw man. See POR 22-26. According to PO,
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`Petitioner has presented an inherency argument that must fail because there are other
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`ways for a POSA to implement a primary key in Sharpe. See, e.g., id., 25
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`(“Petitioner’s argument is flawed because the mere fact that the user name might be
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`used in the manner described in the Petition is insufficient for demonstrating
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`inherency.” (first emphasis original)).1
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`PO’s straw-man inherency argument rests on a mischaracterization of the
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`Petition, which never argues that Sharpe’s system must use the username as unique
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`user identifier. See, e.g., Saber ¶85 (“It appears that Petitioner and Dr. Bederson are
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`saying that Sharpe’s system must use the user name … as a unique identifier or
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`‘primary key.’”). Rather, the Petition establishes that the username would have been
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`an obvious design choice for a primary key in view of Sharpe’s teachings and the
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`knowledge of a POSA. See, e.g., Pet. 33-34, 46-47 (citing Bederson ¶¶152-53, 191-
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`94). PO relies on selective quotations to misleadingly assert that the Petition argued
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`that “the username would be the primary key.” POR 23 (emphasis introduced by
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`PO). The full quote, which PO omits, reveals that the Petition was merely
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`distinguishing between the username and the personal name of the user, which had
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`already been discussed earlier in the analysis. Pet. 47 (“Although the username of
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`each person in the group is not shown in the figures of Sharpe, a POSA would have
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`understood that the username would be the primary key for the database 3 (also
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`1 All emphasis added unless otherwise indicated.
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`called “Database of Groups of People”) and not the personal name of the user
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`because multiple people in the group could have the same personal name (i.e., a
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`person’s name is not unique).”); see also id., 38 (introducing personal name for claim
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`element 1[a]).
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`As Dr. Bederson explains, a username is not the only possible choice, but the
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`most obvious design choice in view of Sharpe’s teachings. Bederson Reply ¶¶10-
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`13. For example, Dr. Bederson opines that “a POSA would have further understood
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`that a username is one such unique identifier.” Id. ¶11. He explains that “a
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`username would have been an obvious design choice in view of Sharpe’s disclosure
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`and a POSA’s knowledge that usernames are often used as primary keys in database
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`schemas.” Id. ¶10; see also Bederson ¶¶110-26 (discussing primary keys between
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`multiple databases).
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`PO and its expert appear to agree that a username is one of several potential
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`user unique identifiers available to a POSA to implement the databases disclosed in
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`Sharpe.2 For example, Dr. Saber does not dispute that a username can be a primary
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`2 To the extent that PO disputes that a username can be used as a primary key, it
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`was known in the art to utilize usernames as primary keys in database schemas.
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`Bederson Reply ¶13 (citing EX1042). PO has offered no argument or evidence
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`suggesting otherwise.
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`key. Instead, he opines that the username does not “need” to be the primary key,
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`and that there are several other ways to keep track of users, such as assigning an
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`internal unique identifier to each user. See Saber ¶¶85-86. Similarly, PO focuses its
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`argument on “another possible way” to implement Sharpe’s system beyond the
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`username—“a piece of data different than the user name for keeping track of each
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`user.” POR 23-26. But regardless of how many different potential unique identifiers
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`PO identifies, these options are irrelevant. Rather, what matters is that there is no
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`genuine dispute that a POSA would have understood Sharpe’s username to be an
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`available design option for implementing Sharpe’s databases. Accordingly, PO
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`cannot legitimately dispute that usernames—a known and available design option—
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`would have been obvious in view of Sharpe’s teachings.
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`Even if there were a dispute about Sharpe’s teachings, PO has not challenged
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`the Petition’s showing that Eintracht—also part of Ground 1—additionally discloses
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`the claimed “unique user identifier.” See Pet. 34-36 (citing Bederson ¶¶154-58).
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`The Petition argues in the alternative that Eintracht teaches a “unique user identifier”
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`through its “unique user ID.” Pet. 34-36. The Petition specifically explains that
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`Eintracht’s unique user ID could also be used as a primary key in the combined
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`system of Sharpe and Eintracht. Id., 36 (citing Bederson ¶158). PO has waived any
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`rebuttal to this analysis. Maxlite, Inc. v. Jiaxing Super Lighting Elec. Appliance Co.,
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`Ltd., No. IPR2020-00208, 2022 WL 1416695, at *12 n.6 (P.T.A.B. Apr. 29, 2022)
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`(“It is a long-standing practice in IPR proceedings that arguments not raised in the
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`Patent Owner Response are waived.”) (citing 37 C.F.R. § 42.23(b)).
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`C.
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`Sharpe In View Of Eintracht And FotoFile Teaches
`“Coordinates” (1[e], 7, 8)
`Sharpe in view of Eintracht discloses the “coordinates” of claims 1[e], 7,
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`and 8. Pet. 47-51, 62-66.3 PO’s response improperly considers the teachings of each
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`reference in isolation, rather than the collective teachings of the combined system of
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`Sharpe and Eintracht. POR 27-31, 37-38; see also EWP Corp. v. Reliance Universal
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`Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (obviousness requires consideration of “the
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`combined teachings of the prior art as a whole”); Bradium Techs LLC v. Iancu, 923
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`F.3d 1032, 1050 (Fed. Cir. 2019) (obviousness “cannot be overcome ‘by attacking
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`references individually where the rejection is based upon the teachings of a
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`combination of references.’”). For example, PO complains that Sharpe “discloses
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`people,” while Eintracht discloses coordinates in “an entirely different context.”
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`POR 30. PO asserts that Eintracht alone does not disclose coordinates corresponding
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`to a location of a named user in the image. Id., 28-29.4 PO argues that Eintracht
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`3 The Petition also relies on FotoFile to disclose other elements of claim 8. Pet. 64-
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`65. Other aspects of dependent claim 8 are addressed below. Infra, 13-14.
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`4 To the extent PO argues that the annotation must be part of the image itself, PO is
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`wrong. See POR 28-29 (arguing that Eintracht’s annotations are not part of the
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`8
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`Petitioner’s Reply
`IPR2023-00059 (USP 10,417,275)
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`alone discloses storing who created a note, rather than who is present in the
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`annotation. Id., 29-30. When properly viewed in context of the combined teachings
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`of Sharpe and Eintracht, however, it would have been obvious to annotate an image
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`at the coordinates of the pictured individual as recited in claims 1[e], 7, and 8.
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`Bederson Reply ¶¶14-16.
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`PO further asserts that Eintracht’s annotations are incompatible with Sharpe
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`because they would “potentially obscur[e]” a user within an image. POR 29. As an
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`initial matter, a particular combination does not need to be the preferred or most
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`desirable combination described in the prior art. Novartis Pharms. Corp. v. West-
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`Ward Pharms. Int’l Ltd., 923 F.3d 1051, 1059 (Fed. Cir. 2019). A POSA,
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`furthermore, is more than capable of overcoming that potential implementation
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`detail using ordinary creativity. Bederson Reply ¶¶17-19; see also Elekta Ltd. v.
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`ZAP Surgical Sys., Inc., 81 F.4th 1368, 1374 (Fed. Cir. 2023) (“The inquiry into the
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`existence of a motivation to combine assumes that a skilled artisan is a person of
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`ordinary creativity with common sense, common wisdom, and common
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`knowledge.”). For example, a POSA would have been aware of many UI design
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`image itself). The claims do not include such a requirement, and Sharpe discloses
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`that feature anyway. Bederson Reply ¶20 (citing EX1005, 3:64-65).
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`9
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`Petitioner’s Reply
`IPR2023-00059 (USP 10,417,275)
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`options to prevent obscuring a person in an image (e.g., tool tips, transparency).
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`Bederson Reply ¶¶17-19.
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`PO incorrectly asserts that the Petition fails to address reasonable expectation
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`of success for these claim limitations. POR 31. As noted above, the Petition
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`addresses reasonable expectation of success for all of Ground 1, Pet. 28-30, and the
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`analysis for claim 1[e] also includes an express reference to that analysis, Pet. 50-
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`51. PO has failed to rebut the Petition’s analysis of reasonable expectation of success
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`with any specific arguments or evidence. See POR 31; see also Saber ¶95 (repeating
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`conclusory arguments verbatim).
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`PO also complains that the Petition does not explain specific details about the
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`storage of coordinates and the location of the user within the image, POR 31, but
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`again, these are minor implementation details well within the skill of a POSA, who
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`would have at least two years of experience with networked and web-based media
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`applications. Bederson Reply ¶21; see also Elekta, 81 F.4th at 1374 (“[A]n
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`obviousness determination does not always require prior art to expressly state a
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`motivation for every obvious combination.”).
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`D.
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`Sharpe In View Of Eintracht And FotoFile Teaches “Applying
`Artificial Intelligence Algorithms” (1[f])
`Sharpe in view of Eintracht and FotoFile discloses the claimed “applying
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`artificial intelligence algorithms” of limitation 1[f]. Pet. 51-57. The Petition
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`explains how a POSA would have recognized FotoFile’s face detection and
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`10
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`Petitioner’s Reply
`IPR2023-00059 (USP 10,417,275)
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`recognition system as an artificial intelligence algorithm, and that a POSA would
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`have been motivated to apply that algorithm to the combined system of Sharpe and
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`Eintracht. Id., 52-55.
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`PO does not dispute teachings of FotoFile, nor that a POSA would have
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`applied those teachings to the combined system of Sharpe and Eintracht. See
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`POR 32-35. Instead, PO merely recycles its prior arguments regarding Sharpe and
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`Eintracht. Id. In particular, PO recycles its flawed “unique user identifier” argument
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`from limitation 1[d] (POR 32-33), its “coordinates” argument from limitation 1[e]
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`(POR 32-34), and its motivation to combine and reasonable expectation of success
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`arguments discussed above (POR 34-35). All of these arguments fail for the reasons
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`set forth above. See supra, 2-10.
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`E.
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`Sharpe In View Of Eintracht And FotoFile Teaches The
`Dependent Claims (Claims 3-4, 8-9, 11)5
`PO dedicates a substantial portion of its Response to disputing the prior art’s
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`disclosure of certain dependent claims, POR 35-41, but none of its arguments have
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`merit.
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`5 PO’s challenge for dependent claim 7, POR 37-38, is addressed entirely by the
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`“coordinates” argument discussed above. Supra, 8-10.
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`11
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`IPR2023-00059 (USP 10,417,275)
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`Petitioner’s Reply
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`Dependent Claims 3 and 4 Would Have Been Obvious
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`Sharpe in view of Eintracht and FotoFile discloses the email notifications of
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`claims 3 and 4. Pet. 59-60. PO complains that Eintracht’s “alert notifications are
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`related simply to an event, not to notification of an association.” POR 36. PO also
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`asserts that Eintracht does not disclose sending an email “with information about the
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`association.” Id. (emphasis original).6
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`Claims 3 and 4 would have been obvious because the POSA is not an
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`automaton. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Ordinary
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`creativity is all that is required to reach the limitations of claims 3 and 4 in view of
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`the combined teachings of Sharpe, Eintracht, and FotoFile. See id.; see also Elekta,
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`81 F.4th at 1374. PO’s arguments otherwise are premised improperly viewing the
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`teachings of Eintracht in isolation. The association of user with a photo is an event
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`that would trigger an email alert in the combined system. Bederson Reply ¶¶22-23.
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`The most obvious information to include in that email alert would be information
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`about the associated image in which the user was tagged. Id.; see also Bederson
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`¶225 (“a POSA would have recognized that Eintracht discloses the claim limitation
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`6 PO also feigns ignorance about whether the Petition relies on the disclosures of
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`Eintracht or FotoFile for the claimed email notifications. POR 36. As addressed
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`below, PO’s argument is not credible. Infra, 14-16.
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`12
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`Petitioner’s Reply
`IPR2023-00059 (USP 10,417,275)
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`set forth above, by including any portion of the notes along with additional
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`information each time a note event is received (providing information indicating that
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`amed user has been associated with one or more images)”); EX1006, 11:11-14
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`(“The alert notifications may comprise any portion of the notes themselves along
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`with additional information about the annotated document.”). Accordingly, claims 3
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`and 4 would have been obvious to a POSA.
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`Dependent Claims 8 and 9 Would Have Been Obvious
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`PO argues that the Petition fails to properly address the “specific temporal and
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`causative sequence” required for claims 8 and 9—namely, that specific functionality
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`takes place “in response to” the location of an image as recited in the independent
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`claim. POR 38-41. PO fails to account for the Petition’s express incorporation of
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`its analysis of element 1[f] into this section, which establishes the obviousness of the
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`action that initiates the responsive elements of claims 8 and 9. See Pet. 64, 67.
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`As explained, the asserted prior art teaches the functionality of claims 8 and 9
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`in response to importing any image. Pet. 63-67. Thus, it would have been obvious
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`to apply same functionality to the specific image recited in element 1[f]. Id. PO
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`asserts that any image is not the same as the image recited in element 1[f], POR 39-
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`40, but that is a distinction without a difference. PO does not identify any reason
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`why performing the same functionality in response to the location of an image is
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`distinguishable from performing the same functionality in response to the location
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`13
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`Petitioner’s Reply
`IPR2023-00059 (USP 10,417,275)
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`of any image. The applicable standard is obviousness, and the teachings of the
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`asserted prior art are sufficient to establish that claims 8 and 9 are obvious.
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`Dependent Claim 11 Would Have Been Obvious
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`PO asserts that “Petitioner’s discussion for claim 11 is conclusory and
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`unclear,” but PO does not address, much less dispute, the analysis incorporated by
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`reference from element 1[a]. See POR 41. There, the Petition established that it
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`would have been obvious to include the username in the naming information
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`provided by the user. Pet. 33-34. Then, for claim 11, the Petition explains that
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`username and screen name are synonymous in many systems, so it also would have
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`been obvious to a POSA to include screen name in the naming information. Pet. 67.7
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`Thus, claim 11 is obvious by analogy to the prior analysis. Id.
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`F.
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`The Petition Clearly Presents Sharpe In View Of Eintracht and
`FotoFile As An Obviousness Ground
`On the final pages of its Response, PO tries to gin up a dispute based on a
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`couple of inadvertent typos in the Petition, hyperbolically asserting that they make
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`the Petition “cryptic” and “impermissibly vague.” See POR 42-44. PO’s arguments
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`are simply not credible. In each case, the grounds and applicable disclosures are
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`clear based on the surrounding discussion.
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`7 As discussed below, the Petition also establishes that Carey discloses dependent
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`claim 11, and PO has failed to rebut that analysis. Infra, 16.
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`14
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`IPR2023-00059 (USP 10,417,275)
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`Petitioner’s Reply
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`First, PO asserts that the Petition is unclear regarding which prior art
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`references disclose element 1[c]. POR 42. PO acknowledges that the analysis in the
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`Petition focuses entirely on Sharpe, but nevertheless feigns confusion based on the
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`inadvertent inclusion of “Eintracht” in a single sentence of the Petition. Id. (citing
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`Pet. 41). As an initial matter, PO has not challenged the disclosure of element 1[c]
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`by Sharpe alone or Sharpe in view of Eintracht, so its point is moot. Regardless, the
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`Petition and Dr. Bederson make clear that the disclosure is by Sharpe alone or in
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`view of the knowledge of POSA. The Petition addresses 1[c] in three sections, each
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`of which exclusively identifies Sharpe and a POSA’s understanding as disclosing
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`that section. Pet. 41-46. Dr. Bederson similarly addresses 1[c] in three sections, and
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`expressly identifies “Sharpe alone or in view of the knowledge of a POSA” as
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`disclosing each section. Bederson ¶¶ 180, 183, 187.
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`Second, PO asserts that the Petition is unclear regarding which prior art
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`references disclose dependent claims 3 and 4. POR 42-44. Once again, PO
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`acknowledges the disclosure of email notifications in Eintracht in its response to
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`claims 3 and 4, POR 36-37, yet feigns confusion based on the inadvertent inclusion
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`of “FotoFile” in a single sentence of the Petition, POR 42-43 (citing Pet. 59-60).
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`The Petition and Dr. Bederson make clear that the relevant disclosure is by Eintracht,
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`not FotoFile. All of the subsequent analysis and citations correctly reference
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`Eintracht as disclosing email notifications. Pet. 60, Bederson ¶¶225-27. Petitioner,
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`15
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`Petitioner’s Reply
`IPR2023-00059 (USP 10,417,275)
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`furthermore, has identified the same disclosures of Eintracht to address email
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`notifications in two parallel inter partes review proceedings,8 and PO has
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