Declaration of Sandeep Chatterjee, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,279,173 B2
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`FACEBOOK, INC.,
`Petitioner
`
`v.
`
`BLACKBERRY LIMITED
`Patent Owner
`
`
`
`
`U.S. Patent No. 8,279,173 B2
`Issue Date: October 2, 2012
`
`Title: User Interface for Selecting a Photo Tag
`
`DECLARATION OF SANDEEP CHATTERJEE, PH.D.
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`Facebook's Exhibit No. 1002
`Page 1
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`Table of Contents
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`Page
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`I. 
`
`II. 
`III. 
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`INTRODUCTION AND QUALIFICATIONS .............................................. 1 
`A.  Qualifications and Experience ............................................................. 1 
`B.  Materials Considered ............................................................................ 4 
`PERSON OF ORDINARY SKILL IN THE ART ......................................... 6 
`STATEMENT OF LEGAL PRINCIPLES ..................................................... 8 
`A. 
`Claim Construction .............................................................................. 8 
`IV.  THE ’173 PATENT ...................................................................................... 10 
`A.  Overview of the Specification ............................................................ 10 
`B. 
`The Challenged Claims ...................................................................... 14 
`V.  APPLICATION OF THE PRIOR ART TO ASSERTED CLAIMS ........... 14 
`A. 
`Brief Summary of Prior Art ............................................................... 16 
`1. 
`Zuckerberg [Ex. 1003] ............................................................. 16 
`2. 
`Rothmuller References [Exs. 1004, 1005] ............................... 20 
`3. 
`Plotkin [Ex. 1008] .................................................................... 25 
`4.  Matthews [Ex. 1009] ................................................................ 27 
`5.  MacLaurin [Ex. 1006] .............................................................. 31 
`6. 
`Ortega [Ex. 1007] ..................................................................... 33 
`Grounds 1-5: Obviousness of Claims 1, 2, 4, 6-8, 10, 12-14, 16
`and 18 Based on Zuckerberg .............................................................. 35 
`1. 
`Claim 1 ..................................................................................... 36 
`(a) 
`“displaying a tag list including tags from one or
`more tag sources matching a search string;” (Claim
`1[a]) ................................................................................ 42 
`“displaying a tag type indicator for each tag
`appearing in the tag list, said tag type being
`indicative of a tag source associated with the tag.”
`(Claim 1[b]) ................................................................... 47 
`
`B. 
`
`(b) 
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`-i-
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`Table of Contents
`(continued)
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`Page
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`(1)  Combination of Zuckerberg with Rothmuller
`and MacLaurin .................................................... 53 
`(2)  Combination of Zuckerberg with Plotkin
`and MacLaurin .................................................... 66 
`Claim 2 ..................................................................................... 74 
`2. 
`Claim 4 ..................................................................................... 74 
`3. 
`Claim 6 ..................................................................................... 75 
`4. 
`Claim 7 ..................................................................................... 81 
`5. 
`Claim 8 ..................................................................................... 82 
`6. 
`Claim 10 ................................................................................... 84 
`7. 
`Claim 12 ................................................................................... 93 
`8. 
`Claim 13 ................................................................................... 94 
`9. 
`10.  Claim 14 ................................................................................... 95 
`11.  Claim 16 ................................................................................... 96 
`12.  Claim 18 ................................................................................... 96 
`Grounds 6-7: Obviousness of Claims 1, 2, 4, 6-8, 10, 12-14, 16
`and 18 Based on Rothmuller .............................................................. 97 
`1. 
`Claim 1 ..................................................................................... 97 
`(a) 
`“displaying a tag list including tags from one or
`more tag sources matching a search string;” (Claim
`1[a]) .............................................................................. 101 
`“displaying a tag type indicator for each tag
`appearing in the tag list, said tag type being
`indicative of a tag source associated with the tag.”
`(Claim 1[b]) ................................................................. 124 
`Claim 2 ................................................................................... 130 
`Claim 4 ................................................................................... 131 
`Claim 6 ................................................................................... 133 
`Claim 7 ................................................................................... 138 
`-ii-
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`2. 
`3. 
`4. 
`5. 
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`(b) 
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`C. 
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`Table of Contents
`(continued)
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`Page
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`Claim 8 ................................................................................... 139 
`6. 
`Claim 10 ................................................................................. 142 
`7. 
`Claim 12 ................................................................................. 147 
`8. 
`Claim 13 ................................................................................. 147 
`9. 
`10.  Claim 14 ................................................................................. 149 
`11.  Claim 16 ................................................................................. 149 
`12.  Claim 18 ................................................................................. 149 
`VI.  NO SECONDARY CONSIDERATIONS OF NON-OBVIOUSNESS .... 150 
`VII. 
`INCORPORATION BY REFERNCE OF “NONESSENTIAL”
`DISCLOSURES FROM ROTHMULLER PROVISIONAL ..................... 153 
`VIII.  CONCLUSION ........................................................................................... 166 
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`-iii-
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`Declaration of Sandeep Chatterjee, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,279,173 B2
`
`I, Sandeep Chatterjee, Ph.D., declare as follows:
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS
`A. Qualifications and Experience
`1.
`I am the Chief Executive Officer of Experantis LLC, a technology
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`consulting company. I am also the Dean of the Mobility Center of Excellence at the
`
`International Institute of Digital Technologies. Previously, I was the Executive Vice
`
`President and Chief Technology Officer of SourceTrace Systems, Inc., a technology
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`and services company enabling the delivery of secure remote electronic services
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`over landline and wireless telecommunications networks.
`
`2.
`
`I received my bachelor’s degree in Electrical Engineering and
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`Computer Science from the University of California, Berkeley in 1995. I received
`
`my master’s degree in Computer Science from the Massachusetts Institute of
`
`Technology (MIT) in 1997, and my doctorate in Computer Science from MIT in
`
`2001. I received a certificate of completion for an executive education program on
`
`global leadership from Harvard University in 2011. My doctoral dissertation at MIT,
`
`entitled “Composable System Resources for Networked Systems,” which involved
`
`networked client architectures and systems, was selected as one of the top inventions
`
`in the history of MIT’s Laboratory for Computer Science. This invention is
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`showcased in a time capsule at the Museum of Science in Boston, Massachusetts.
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`3.
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`In 2011, I was named a Young Global Leader. This honor, bestowed
`1
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`
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`Declaration of Sandeep Chatterjee, Ph.D. in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 8,279,173 B2
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`each year by the World Economic Forum, recognizes and acknowledges the top
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`leaders—all below the age of 40—from around the world for their professional
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`accomplishments, commitment to society, and potential to contribute to shaping the
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`future of the world. In 2016, I was appointed to the World Economic Forum’s expert
`
`network as an expert in technology and innovation, and I advise world leaders on
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`issues related to technology and innovation.
`
`4.
`
`From 1997, I was the Entrepreneur-in-Residence at FidelityCAPITAL,
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`the venture capital arm of Fidelity Investments. In 1999, I founded and served as
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`President and Chief Technology Officer (CTO) of Satora Networks, which
`
`developed tools and technologies for building appliances and services for the
`
`Internet using wireless and other technologies to extend it beyond the desktop.
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`5.
`
`In 2001, I joined Bluestone Software’s Mobile Middleware Labs as a
`
`Senior Engineer developing applications and systems infrastructure for enterprise
`
`Java/J2EE, Web services, and enterprise mobile solutions. After the completion of
`
`Hewlett-Packard’s (“HP”) acquisition of Bluestone, I became a Senior Member of
`
`the Technical Staff at HP’s Middleware Division. I was responsible for architecting
`
`and developing the company’s next-generation Web services platform for enterprise
`
`as well as mobile environments, known as the Web Services Mediator.
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`6.
`
`I was part of the Expert Group that developed the JSR-00172 J2ME
`
`
`
`2
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`Declaration of Sandeep Chatterjee, Ph.D. in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 8,279,173 B2
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`(Java 2 Platform, Micro Edition) Web Services Specification, the worldwide
`
`standard for mobile Web services. I am the co-author, with James Webber, of the
`
`book “Developing Enterprise Web Services: An Architect’s Guide” (published by
`
`Prentice-Hall in 2004). This book has been adopted by over 100 universities and
`
`colleges around the world and has been translated or reprinted in numerous countries
`
`around the world.
`
`7.
`
`I have extensive experience in architecting, developing, optimizing,
`
`deploying and managing complex computing systems, including mobile computing
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`systems and messaging based systems, throughout the world. I have architected and
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`developed mobile and distributed computing systems, including hardware and
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`software for these systems. As part of supporting multiple devices and form factors,
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`I have extensive experience with a number of relevant technologies, including HTTP
`
`and HTML (among other web technologies), and with the design and creation of
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`client and server software, devices, and systems, as well as user interfaces that allow
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`users to send, receive, access, and view content distributed on the web, including
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`text and multimedia such as images.
`
`8.
`
`I have been an invited speaker at conferences throughout the world,
`
`including the 2003 Automated Software Engineering Conference, the 2003 and 2004
`
`International Multiconference in Computer Science & Computer Engineering, the
`
`
`
`3
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`Declaration of Sandeep Chatterjee, Ph.D. in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 8,279,173 B2
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`2004 IASTED International Conference on Software Engineering and Applications,
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`and the 2004 IEEE International Conference on e-Technology, e-Commerce, and e-
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`Service. I served as the General Chair for the 2004 International Symposium on Web
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`Services and Applications. I also have served as a columnist on mobile and
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`enterprise software systems for a number of IT magazines, including Java Boutique
`
`and Dataquest.
`
`9.
`
`I have attached a more detailed list of my qualifications as Exhibit A.
`
`10. Experantis is being compensated for my time working on this matter at
`
`my standard hourly rate plus expenses. Neither Experantis nor I have any personal
`
`or financial stake or interest in the outcome of the present proceeding, and the
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`compensation is not dependent on the outcome of this IPR and in no way affects the
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`substance of my statements in this Declaration.
`
`B. Materials Considered
`11. The analysis that I provide in this Declaration is based on my education
`
`and experience in the field of computer systems, as well as the documents I have
`
`considered, including U.S. Patent No. 8,279,173 B2 (“’173 patent”) [Ex. 1001] and
`
`its prosecution history. The ’173 patent states on its face that it issued from a
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`continuation of an application filed on May 9, 2007. For purposes of this
`
`Declaration, I have assumed May 9, 2007 as the effective filing date for the ’173
`
`
`
`4
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`Declaration of Sandeep Chatterjee, Ph.D. in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 8,279,173 B2
`
`patent. I have cited to the following documents in my analysis below:
`
`Exhibit
`Description of Document
`No.
`1001 U.S. Patent No. 8,279,173 B2 to Michael S. Brown al. (filed May 9,
`2007, issued Oct. 2, 2012) (“’173” or “’173 patent”)
`1003 U.S. Patent No. 7,945,653 B2 to Mark Zuckerberg et al. (filed Oct. 11,
`2006, issued May 17, 2011) (“Zuckerberg”)
`1004 U.S. Patent No. 7,415,662 B2 to Kenneth Rothmuller et al. (filed July
`17, 2002, issued Aug. 19, 2008) (“Rothmuller”)
`1005 U.S. Provisional Application No. 60/334,516 to Kenneth Rothmuller
`et al. (filed Oct. 31, 2001) (“Rothmuller Provisional”)
`1006 U.S. Patent No. 7,831,913 B2 to Matthew B. MacLaurin (filed July 29,
`2005, issued Nov. 9, 2010) (“MacLaurin”)
`1007 U.S. Patent No. 6,564,213 B1 to Ruben E. Ortega et al. (filed Apr. 18,
`2000, issued May 13, 2003) (“Ortega”)
`1008 Excerpts from David Plotkin, How to Do Everything with Photoshop
`Elements 4.0 (“Plotkin”)
`1009 U.S. Patent Application Publication No. US2006/0218503 A1 to
`David A. Matthews et al. (filed March 22, 2005, published September
`28, 2006) (“Matthews”)
`1010 Excerpts from Theo Mandel, Elements of User Interface Design
`(1997)
`1011 Excerpts from New Oxford American Dictionary (2nd ed. 2005)
`1012 Excerpts from Random House Webster’s Unabridged Dictionary
`(2001)
`1013 Photoshop Elements 4 One-on-One (2005)
`
`
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`
`
`5
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`Declaration of Sandeep Chatterjee, Ph.D. in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 8,279,173 B2
`
`II.
`
`PERSON OF ORDINARY SKILL IN THE ART
`12.
`I understand that an assessment of claims of the ’173 patent should be
`
`undertaken from the perspective of a person of ordinary skill in the art as of the
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`earliest claimed priority date, which I understand is May 9, 2007. I have also been
`
`advised that to determine the appropriate level of a person having ordinary skill in
`
`the art, the following factors may be considered: (1) the types of problems
`
`encountered by those working in the field and prior art solutions thereto; (2) the
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`sophistication of the technology in question, and the rapidity with which innovations
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`occur in the field; (3) the educational level of active workers in the field; and (4) the
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`educational level of the inventor.
`
`13. The ’173 patent states that “[t]he present invention relates generally to
`
`a user interface for selecting a photo tag.” (’173, 1:16-17.) In my opinion, a person
`
`of ordinary skill in the art as of May 2007 would have possessed at least a bachelor’s
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`degree in software engineering, computer science, computer engineering, or
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`electrical engineering with at least two years of experience in software application
`
`development, including graphical user interface development (or equivalent degree
`
`or experience). A person could also have qualified as a person of ordinary skill in
`
`the art with some combination of (1) more formal education (such as a master’s of
`
`science degree) and less technical experience or (2) less formal education and more
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`
`
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`Declaration of Sandeep Chatterjee, Ph.D. in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 8,279,173 B2
`
`technical or professional experience in the fields listed above. For example, acquired
`
`as part of the person’s basic computer education and/or experience, a person of
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`ordinary skill in the art would have had a working knowledge about computer-based
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`systems for “tagging” photos (i.e., identifying people or objects in photographs),
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`including in the context of photo sharing and social networking, which the
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`specification of the ’173 patent admits was known in the art. (’173, 1:21-25.) Such
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`a person would also have had a basic understanding of messaging applications for
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`sending and receiving text communications which, again, the specification of the
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`’173 patent admits was known. (’173, 3:11-17.)
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`14. My opinions regarding the level of ordinary skill in the art are based
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`on, among other things, my more than 20 years of experience in computer science,
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`my understanding of the basic qualifications that would be relevant to an engineer
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`or scientist tasked with investigating methods and systems in the relevant area, and
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`my familiarity with the backgrounds of colleagues, co-workers, and employees, both
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`past and present.
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`15. Although my qualifications and experience exceed those of the
`
`hypothetical person having ordinary skill in the art defined above, my analysis and
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`opinions regarding the ’173 patent have been based on the perspective of a person
`
`of ordinary skill in the art as of May 2007.
`
`
`
`7
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`Declaration of Sandeep Chatterjee, Ph.D. in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 8,279,173 B2
`
`III. STATEMENT OF LEGAL PRINCIPLES
`A. Claim Construction
`16.
`I understand that under the legal principles, claim terms are generally
`
`given their ordinary and customary meaning, which is the meaning that the term
`
`would have to a person of ordinary skill in the art in question at the time of the
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`invention, i.e., as of the effective filing date of the patent application. I further
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`understand that the person of ordinary skill in the art is deemed to read the claim
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`term not only in the context of the particular claim in which a claim term appears,
`
`but in the context of the entire patent, including the specification.
`
`17.
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`I am informed by counsel that the patent specification, under the legal
`
`principles, has been described as the single best guide to the meaning of a claim
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`term, and is thus highly relevant to the interpretation of claim terms. And I
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`understand for terms that do not have a customary meaning within the art, the
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`specification usually supplies the best context of understanding the meaning of those
`
`terms.
`
`18.
`
`I am further informed by counsel that other claims of the patent in
`
`question, both asserted and unasserted, can be valuable sources of information as to
`
`the meaning of a claim term. Because the claim terms are normally used consistently
`
`throughout the patent, the usage of a term in one claim an often illuminate the
`
`meaning of the same term in other claims. Differences among claims can also be a
`8
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`Declaration of Sandeep Chatterjee, Ph.D. in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 8,279,173 B2
`
`useful guide in understanding the meaning of particular claim terms.
`
`19.
`
`I understand that the prosecution history can further inform the meaning
`
`of the claim language by demonstrating how the inventors understood the invention
`
`and whether the inventors limited the invention in the course of prosecution, making
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`the claim scope narrower than it otherwise would be. Extrinsic evidence may also
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`be consulted in construing the claim terms, such as my expert testimony.
`
`20.
`
`I have been informed by counsel that, in Inter Partes Review (IPR)
`
`proceedings, a claim of a patent shall be construed using the same claim construction
`
`standard that would be used to construe the claim in a civil action filed in a U.S.
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`district court (which I understand is called the “Phillips” claim construction
`
`standard), including construing the claim in accordance with the ordinary and
`
`customary meaning of such claim as understood by one of ordinary skill in the art
`
`and the prosecution history pertaining to the patent.
`
`21.
`
`I have been instructed by counsel to apply the “Phillips” claim
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`construction standard for purposes of interpreting the claims in this proceeding, to
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`the extent they require an explicit construction. The description of the legal
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`principles set forth above thus provides my understanding of the “Phillips” standard
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`as provided to me by counsel.
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`
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`9
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`Declaration of Sandeep Chatterjee, Ph.D. in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 8,279,173 B2
`
`IV. THE ’173 PATENT
`A. Overview of the Specification
`22. The ’173 patent states that it “relates generally to a user interface for
`
`selecting a photo tag.” (’173, 1:16-17.) The ’173 patent does not claim to have
`
`invented photo tagging. The ’173 patent acknowledges that “[i]dentifying people or
`
`objects in photographs is popular in many online contexts, such as photo sharing,
`
`social networking, etc.” but asserts that “[s]electing a ‘tag’ to associate with an
`
`identified point in a photograph can be a complicated task if there are many potential
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`tags to choose from.” (’173, 1:21-25.)
`
`23. The ’173 patent also asserts that existing tagging techniques suitable
`
`for desktop and laptop computers “do not work as well” with wireless mobile
`
`communication devices in light of display size and user input constraints. (’173,
`
`1:25-29.) Despite this statement, none of the claims of the ’173 patent require use
`
`of wireless or mobile devices, and do not recite any limitations specifically directed
`
`at the capabilities or constraints of such devices.
`
`24. The ’173 patent purports to describe an improved user interface for
`
`tagging photos. (’173, 1:30-32.) As shown below, the ’173 patent uses the Facebook
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`social networking service as an illustrative system in which the photo tagging
`
`method can be employed, but the written description does not describe or
`
`acknowledge the photo tagging features that Facebook apparently already had.
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`Declaration of Sandeep Chatterjee, Ph.D. in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 8,279,173 B2
`
`
`25. Figure 3A (at right) shows “an
`
`illustrative user interface screen 300A in which
`
`photo tagging module 148A may be configured
`
`for tagging a photograph in accordance with an
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`embodiment.” (’173, 4:10-13.) Figure 3A
`
`includes a photo 301 of a particular human
`
`subject 302. (’173, 4:13-14.) “With this user interface, a tag list 304 may include
`
`various tags associated subject 302 or other subjects or objects within the photo
`
`301.” (’173, 4:14-17.) But in the case of Figure 3A, tag list 304 is empty. “The
`
`user may click an ‘Add’ button 306 in order to enter a photo tagging mode . . . .”
`
`(’173, 4:17-18.) After pressing the “Add” button 306, the user can utilize a pointer
`
`to identify the particular area or region of the photo 301 that will be the subject of
`
`the tag – such as the face of subject 302. (’173, 4:19-37, Fig. 3B.)
`
`26. Figure 3C (at right) shows an end
`
`result of the photo tagging process – tag 310
`
`(“Terrill Dent”) has been associated with subject
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`302 of the photo. (’173, 4:51-55.)
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`
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`Declaration of Sandeep Chatterjee, Ph.D. in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 8,279,173 B2
`
`
`27. Figures 4A through 4F show, in more
`
`detail, the user interface for the photo tagging
`
`process. (’173, 1:43-44.) “As shown in FIG. 4A
`
`[at right], the user is initially presented with a tag
`
`entry field 406 indicating that he should start typing
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`a tag.” (’173, 5:35-37.) As the user begins to type text into the tag entry field 406,
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`“photo tag selection module 148B may be configured to search one or more selected
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`‘tag sources’ for tags that match the currently entered text.” (’173, 5:39-42.)
`
`28. For example, Figure 4D (at
`
`right) shows that the user has typed “te” into
`
`the tag entry field 406, and matching tags
`
`(e.g., 412a, “Terrill Dent”) are displayed in a
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`tag list 412:
`
`As shown in screen 400C of FIG. 4C, and 400D of FIG. 4D, photo tag
`selection module 148B may be configured to display any matching tags
`(e.g. 412a, 412b, 412c) from one of the tag sources to the tag being
`typed by the user in the tag entry field 406 in a matching tag list 412.
`Each tag may have an icon or some other visual identifier associated
`with it that clearly indicates its type, and allows the user to quickly
`distinguish between different types of tags.
`
`(’173, 5:48-55.)
`
`
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`Declaration of Sandeep Chatterjee, Ph.D. in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 8,279,173 B2
`
`
`29. The passage above also refers to “tag sources” and tag “types.” The
`
`’173 patent describes a “tag source” as a source of predefined tags for associating
`
`with photos. (’173, e.g., 6:5-12 (“Significantly, as the matching tag list 412 includes
`
`possible tags that may be used from various selected tag sources (such as the user’s
`
`Facebook friends, the user’s address book 142, a list of the user’s browser
`
`bookmarks from Internet browser 138, a cache of the recent free-form text entries,
`
`etc.), the user is provided with a simple way to associate subjects or objects in a
`
`photo with a predefined ‘tag’ from one of a number of selected tag sources, as may
`
`be defined by the user.”) (underlining added), 5:39-47.) The patent states that “tag
`
`sources could include, for example, a list of friends from an online service like
`
`Facebook™, a list of contacts from the user’s address book 142, a list of the user’s
`
`browser bookmarks (in Internet browser 138), a cache of recent free-form text
`
`entries, etc.” (’173, 5:43-47; see also id., e.g., 8:25-28, 8:47-50, 9:5-8.) The patent
`
`does not require that a “tag source” have any particular structure or organization, or
`
`correspond to information provided by a particular individual or entity.
`
`30. Moreover, the ’173 patent describes a “tag type” as a type or category
`
`of tags. (’173, e.g., 4:58-59 (“[M]any different types of tags may be used to tag
`
`subjects or objects in the photo 301.”), 5:52-55.) “As an illustrative example,” the
`
`specification explains, “the tag types could include a free-form alphanumeric string,
`
`
`
`13
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`Page 17
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`

`

`Declaration of Sandeep Chatterjee, Ph.D. in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 8,279,173 B2
`
`Facebook™ friends, address book entries (in address book 142), browser bookmarks
`
`(in Internet browser module 138), etc.” (’173, 4:46-50.) During the tagging process,
`
`as shown in Figure 4D above, each displayed tag matching a user-entered text string
`
`“may have an icon or some other visual identifier associated with it that clearly
`
`indicates its type, and allows the user to quickly distinguish between different types
`
`of tags.” (’173, 5:52-55.)
`
`B.
`The Challenged Claims
`31. This Declaration addresses claims 1, 2, 4, 6-8, 10, 12-14, 16 and 18 of
`
`the ’173 patent. Independent claim 1 is representative and recites:
`
`1. A method of selecting a photo tag for a tagged photo, comprising:
`displaying a tag list including tags from one or more tag sources
`matching a search string;
`displaying a tag type indicator for each tag appearing in the tag list,
`said tag type being indicative of a tag source associated with the
`tag.
`
`(’173, 9:14-21.)
`
`32.
`
`I address the claims further in my detailed analysis in Part V below.
`
`V. APPLICATION OF THE PRIOR ART TO ASSERTED CLAIMS
`33.
`I have reviewed and analyzed the prior art references and materials
`
`listed in Part I.B above. In my opinion the claims of the ’173 patent are rendered
`
`obvious based on the following prior art:
`
`
`
`14
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`Facebook's Exhibit No. 1002
`Page 18
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`

`

`Ground
`1
`
`
`2
`
`3
`
`
`
`4
`
`5
`
`
`6
`
`7
`
`References
`Zuckerberg (Ex. 1003) (obvious based
`on a single reference)
`
`Zuckerberg (Ex. 1003),
`Rothmuller (Exs. 1004, 1005),
`MacLaurin (Ex. 1006)
`Zuckerberg (Ex. 1003),
`Rothmuller (Exs. 1004, 1005),
`MacLaurin (Ex. 1006),
`Ortega (Ex. 1007)
`
`Zuckerberg (Ex. 1003),
`Plotkin (Ex. 1008),
`MacLaurin (Ex. 1006)
`Zuckerberg (Ex. 1003),
`Plotkin (Ex. 1008),
`MacLaurin (Ex. 1006),
`Ortega (Ex. 1007)
`
`Rothmuller (Exs. 1004, 1005),
`Matthews (Ex. 1009)
`Rothmuller (Exs. 1004, 1005),
`Matthews (Ex. 1009),
`Ortega (Ex. 1007)
`
`Claim(s)
`1, 2, 4, 6-8, 10, 12-14,
`16, 18
`
`
`1, 2, 4, 6-8, 12-14, 18
`
`10, 16
`
`
`
`1, 2, 4, 6-8, 12-14, 18
`
`10, 16
`
`
`1, 2, 4, 6-8, 10, 12-14,
`16, 18
`
`10, 16
`
`Declaration of Sandeep Chatterjee, Ph.D. in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 8,279,173 B2
`
`
`
`
`34. As shown above, my proposed grounds of obviousness (Grounds 1-7)
`
`can be divided into four logical groups. In the first group (Ground 1), Zuckerberg is
`
`the only prior art reference relied upon to render obvious all of the claims addressed
`
`in this Declaration. In the second group (Grounds 2-3), Zuckerberg is relied upon
`
`as the primary reference that, in combination with Rothmuller and MacLaurin
`
`(Ground 2), renders obvious each independent claim addressed in this Declaration
`
`
`
`15
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`Facebook's Exhibit No. 1002
`Page 19
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`

`

`Declaration of Sandeep Chatterjee, Ph.D. in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 8,279,173 B2
`
`(i.e., claims 1, 7, 13), as well as certain dependent claims (i.e., claims 2, 4, 6, 8, 12,
`
`14, 18). The remaining dependent claims (i.e., claims 10, 16) are covered by a
`
`further combination with Ortega (Ground 3).
`
`35. The third group (Grounds 4-5) is similar to the second group (Grounds
`
`2-3) in that Zuckerberg is relied upon as the primary reference, but differs in that the
`
`Plotkin reference is cited rather than Rothmuller in combination with Zuckerberg.
`
`Finally, the fourth group (Grounds 6-7) relies on Rothmuller (rather than
`
`Zuckerberg) as the primary reference, and further cites Matthews (a reference not
`
`relied on for the other three groups) in combination with Rothmuller.
`
`36.
`
`I am informed by counsel that each of the references cited in the
`
`grounds above qualifies as prior art to the challenged claims because each reference
`
`was filed and/or published before the earliest filing date for the ’173 patent.
`
`A. Brief Summary of Prior Art
`1.
`Zuckerberg [Ex. 1003]
`37. Zuckerberg, U.S. Patent No. 7,945,653, entitled “Tagging Digital
`
`Media,” is a Facebook patent describing a photo tagging method similar in many
`
`respects to what was later described in the ’173 patent. I am informed that
`
`Zuckerberg qualifies as prior art to the ’173 patent because it issued from a patent
`
`application filed on October 11, 2006, which is before the earliest effective filing
`
`date for the ’173 patent.
`
`
`
`16
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`Facebook's Exhibit No. 1002
`Page 20
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`

`

`Declaration of Sandeep Chatterjee, Ph.D. in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 8,279,173 B2
`
`
`38. The process of tagging photos in Zuckerberg is similar in some respects
`
`to the way the Facebook service continues to operate today. As explained in
`
`Zuckerberg:
`
`A user of a social network may upload digital media (e.g., a digital
`image) to a file (e.g., an album) on their web page thus becoming a
`media owner of the digital image. The media owner may select and tag
`a region of the image by clicking on a point in the digital image to select
`the region and typing appropriate text to tag the region. The media
`owner may select and tag multiple regions.
`
`(Zuckerberg, 1:59-65.) Zuckerberg further explains that the user devices that can be
`
`used to tag digital media include computer terminals, personal digital assistants
`
`(PDAs), and wireless telephones connected to a communications network such as
`
`the Internet. (Zuckerberg, 3:10-15.)
`
`39.
`
`In order to carry out photo tagg