Trials@uspto.gov
`571-272-7822
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` Paper No. 7
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` Entered: August 5, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC., INSTAGRAM, LLC, and WHATSAPP INC.,
`Petitioner,
`
`v.
`
`BLACKBERRY LIMITED,
`Patent Owner.
`____________
`
`Case IPR2019-00516
`Patent 8,279,173 B2
`____________
`
`
`
`Before MIRIAM L. QUINN, JACQUELINE T. HARLOW, and
`AARON W. MOORE, Administrative Patent Judges.
`
`HARLOW, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`

`

`IPR2019-00516
`Patent 8,279,173 B2
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`
`I. INTRODUCTION
`Facebook, Inc., Instagram, LLC, and WhatsApp Inc. (collectively,
`“Petitioner”), filed a Petition (Paper 2, “Pet.”), requesting inter partes
`review of claims 1, 2, 4, 6–8, 10, 12–14, 16, and 18 of U.S. Patent
`No. 8,279,173 B2 (Ex. 1001, “the ’173 patent”). Blackberry Limited
`(“Patent Owner”) timely filed a Preliminary Response (Paper 6, “Prelim.
`Resp.”).
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`unless the information presented in the petition “shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.” For the reasons stated
`below, we determine that there is a reasonable likelihood that Petitioner
`would prevail with respect to at least one challenged claim. We hereby
`institute inter partes review of the challenged claims on all the grounds of
`unpatentability asserted in the Petition.
`A. Related Matters
`The ’173 patent is the subject of a district court proceeding in the
`Central District of California, captioned BlackBerry Ltd. v. Facebook, Inc.,
`Case No. 2:18-cv-01844-GW-KS (C.D. Cal.). Pet. 2; Paper 4, 2. In
`addition, Petitioner filed a second petition seeking inter partes review of the
`’173 patent in IPR2019-00528 (“the ’528 IPR”). ’528 IPR, Paper 6, 1. Our
`decision instituting inter partes review in the ’528 IPR issued concurrently
`with this Decision.
`
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`IPR2019-00516
`Patent 8,279,173 B2
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`
`B. The ’173 Patent
`The ’173 patent relates to a “user interface for selecting a photo tag”
`to associate with a digital photograph, for example, in a social networking or
`photo sharing application. Ex. 1001, 1:15–23. The patent recognizes the
`existence of prior art methods for tagging digital photographs, but explains
`that an improved user interface is needed because “[s]electing a ‘tag’ to
`associate with an identified point in a photograph can be a complicated task
`if there are many potential tags to choose from,” and “common techniques
`used on desktops and laptops with full sized screens do not work as well” on
`smaller wireless mobile devices. Id. at 1:23–32. To this end, the ’173 patent
`discloses a
`user interface [that] embodies a method of selecting a photo tag
`for a tagged photo, comprising: providing a tag entry field for
`entering a photo tag; in dependence upon a string entered by a
`user, displaying in a matching tag list any tags from one or more
`selected tag sources matching the entered string. The method
`may further comprise displaying a tag type for each tag appearing
`in the matching tag list. The method may further comprise
`allowing user selection of a tag in the matching tag list to
`complete the tag entry field.
`Id. at Abstract.
`Figures 4A and 4B of the ’173 patent, reproduced below, depict an
`exemplary user interface in accordance with the claimed invention.
`Ex. 1001, 1:43–44.
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`IPR2019-00516
`Patent 8,279,173 B2
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`
`Referring to Figure 4A, the ’173 patent explains that the tag selection user
`interface presents the user “with a tag entry field 406 indicating that he
`should start typing a tag.” Id. at 5:32–37.
`[A]s the user begins to type, photo tag selection module 148B
`may be configured to search one or more selected “tag sources”
`for tags that match the currently entered text. As shown by way
`of illustration in screen 400B of FIG. 4B, these 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.
`Id. at 5:39–47. The ’173 patent further explains that
`photo tag selection module 148B may be configured to display
`any matching tags . . . 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.
`Id. at 5:49–55. According to the patent, similar to “tag sources,” “tag types
`could include a free-form alphanumeric string, Facebook™ friends, address
`book entries (in address book 142), browser bookmarks (in Internet browser
`module 138), etc.” Id. at 4:46–50.
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`IPR2019-00516
`Patent 8,279,173 B2
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`C. Challenged Claims
`Petitioner challenges claims 1, 2, 4, 6–8, 10, 12–14, 16, and 18 of the
`’173 patent. Claims 1, 7, and 13 are independent. Claim 1 is representative,
`and is reproduced below:
`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.
`Ex. 1001, 9:14–21. Independent claims 7 and 13 respectively recite a
`“system” and “computer readable medium” for performing the method of
`claim 1. Id. at 9:34–41, 10:13–21.
`D. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability (Pet. 4–5):
`
`Ground
`
`1
`
`2
`
`Claims
`1, 2, 4, 6–8, 10,
`12–14, 16, 18
`1, 2, 4, 6–8,
`12–14, 18
`
`Basis
`
`References
`
`§ 103 Zuckerberg1
`§ 103 Zuckerberg, Rothmuller,2 and
`MacLaurin3
`
`
`1 Zuckerberg, US 7,945,653 B2, issued May 17, 2011 (Ex. 1003).
`2 Rothmuller, US 7,415,662 B2, issued Aug. 19, 2008 (Ex. 1004).
`3 MacLaurin, US 7,831,913 B2, issued Nov. 9, 2010 (Ex. 1006).
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`IPR2019-00516
`Patent 8,279,173 B2
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`Ground
`
`Claims
`
`3
`
`4
`
`5
`
`6
`7
`
`10, 16
`1, 2, 4, 6–8,
`12–14, 18
`10, 16
`1, 2, 4, 6–8, 10,
`12–14, 16, 18
`10, 16
`
`References
`Basis
`§ 103 Zuckerberg, Rothmuller, MacLaurin,
`and Ortega4
`§ 103 Zuckerberg, Plotkin,5 and
`MacLaurin
`§ 103 Zuckerberg, Plotkin, MacLaurin, and
`Ortega
`§ 103 Rothmuller and Matthews6
`§ 103 Rothmuller, Matthews, and Ortega
`
`Petitioner relies on the Declaration of Dr. Sandeep Chatterjee, Ph.D.
`(Ex. 1002) to support its patentability challenge.
`
`II. ANALYSIS
`A. Level of Ordinary Skill in the Art
`Petitioner contends that a person of ordinary skill in the art at the time
`of invention of the ’173 patent “would have possessed at least a bachelor’s
`degree in software engineering, computer science, computer engineering, or
`electrical engineering with at least two years of experience in software
`application development, including graphical user interface development (or
`equivalent degree or experience).” Pet. 6–7 (citing Ex. 1002 ¶¶ 12–15).
`Patent Owner does not address the requisite level of skill in its Preliminary
`Response.
`
`
`4 Ortega, US 6,564,213 B1, issued May 13, 2003 (Ex. 1007).
`5 Plotkin, How to Do Everything with Photoshop Elements 4.0 (Ex. 1008).
`6 Matthews, US 2006/0218503 A1, published Sept. 28, 2006 (Ex. 1009).
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`Patent 8,279,173 B2
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`For purposes of this decision, we adopt Petitioner’s presently
`undisputed definition of the level of ordinary skill in the art, as it is
`consistent with the level of skill in the art reflected in the prior art of record.
`See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`B. Claim Construction
`In this inter partes review proceeding, the claims of the patent are
`construed using the same standard used in federal district court, including
`construing the claim in accordance with the ordinary and customary
`meaning of the claim as understood by one of ordinary skill in the art and the
`prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b); 83 Fed.
`Reg. 51358 (Oct. 11, 2018) (amending the claim construction standard for
`trial proceedings before the Board). At this stage in the proceeding,
`although Petitioner presents alternative grounds of unpatentability to account
`for various claim interpretations Patent Owner might advance, neither party
`seeks express construction of any claim term. See Pet. 10 (“For purposes of
`the prior art cited herein, Petitioner does not, at this time, contend that any
`term requires express construction.”); id. at 31 (“[I]n the event the Patent
`Owner argues that claim 1 requires display of a visually separate indicator
`for every tag in the list, Grounds 2–5 below establish that Zuckerberg would
`still render the claim obvious in view of additional references.”); see
`generally Prelim. Resp.
`For purposes of this decision, we interpret the challenged claims in
`accord with their ordinary meaning to one skilled in the art at the time of
`invention, in light of the teachings of the specification and the prosecution
`history, and do not find it necessary to provide any express claim
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`constructions. In reaching this conclusion we observe that the parties do not
`dispute the meaning of the challenged claims, and our decision to institute
`trial does not turn on the adoption of any particular claim construction. See
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d
`1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that
`are in controversy, and only to the extent necessary to resolve the
`controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999)).
`C. Obviousness Grounds Based on
`Zuckerberg
`Petitioner contends that claims 1, 2, 4, 6–8, 10, 12–14, 16, and 18 are
`rendered obvious by Zuckerberg alone, or in combination with MacLaurin
`and either of Rothmuller or Plotkin. Pet. 21–45, 49–53. Petitioner asserts
`that claims 10 and 16 are also rendered obvious by the combination of
`Zuckerberg, MacLaurin, Ortega, and either of Rothmuller or Plotkin. Id. at
`45–49, 53–54. To support its contentions, Petitioner cites to Dr. Chatterjee’s
`declaration testimony (Ex. 1002).
`Patent Owner disagrees and asserts that the Zuckerberg grounds fail to
`teach or suggest “displaying a tag type indicator . . . indicative of a tag
`source.” Prelim. Resp. 32–38. Patent Owner additionally argues that
`hindsight bias improperly pervades Petitioner’s contention that Zuckerberg
`discloses “tag sources.” Id. at 38–41.
`
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`IPR2019-00516
`Patent 8,279,173 B2
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`1. Overview of the Asserted References
`a. Zuckerberg
`Zuckerberg discloses “systems and methods for tagging digital
`media”––including digital images––“in a social network environment
`administered by a social network server.” Ex. 1003, 1:54–57. In particular,
`Zuckerberg explains that
`[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.
`Id. at 1:59–65.
`Figure 5 of Zuckerberg, depicting an exemplary “tag web page,” is
`reproduced below.
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`As illustrated in Figure 5, once a user selects a region of a digital image to
`tag, auto list component 420 presents a list of likely tags to the user for
`association with selected region 520. Ex. 1003, 8:49–52. Zuckerberg
`explains that
`[t]he tag list 540 may include a text entry window 542 and a list
`of previously used tags. As text is entered in the text entry
`window 542, the list of previously used tags may be culled to
`include only those that match the text in some manner. In some
`embodiments, the list of previously used tags includes a text list
`544 and a friends list 546.
`Id. at 8:52–58.
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`b. Rothmuller
`Rothmuller describes an apparatus and methods for managing digital
`media using tags. Ex. 1004, Abstract. More specifically, Rothmuller
`discloses “methods for associating (‘tagging’) fields of text and numeric data
`(‘metadata’) with individual objects such as images or photos, storing the
`objects and associated metadata as records in a relational database, and
`selecting, sorting, organizing and finding the objects based on their tagged
`metadata content.” Id. at 1:57–62. Rothmuller further explains that
`[d]efault metadata tags can be specified, and new metadata tags
`can be defined and created through a tag editor by naming the
`tag, selecting its tag type, optionally selecting a graphical icon
`that represents the tag, and filling in any remaining fields or
`attributes that are unique to and define the tag type.
`Id. at 1:63–67.
`Figure 1 of Rothmuller, depicting an exemplary user interface for the
`disclosed photo tagging system, is reproduced below. Ex. 1004, 3:3–5.
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`As illustrated in Figure 1, Rothmuller explains that “tags 350 can be applied
`to photos by dragging and dropping graphical icons representing the tags
`onto one or more photos 1–4 that are displayed in an image area 100.” Id. at
`3:36–39.
`Rothmuller discloses also that tags can be created and modified using
`a “tag editor.” Ex. 1004, 3:51–52.
`The tag editor allows a user to specify a tag name and tag type,
`and to enter metadata in the form of tag attributes that can be
`stored in tags of the specified tag type. For convenience, tags
`can be divided into one or more tag categories. For example, in
`one embodiment tags are divided into people, events, places and
`miscellaneous tag categories. Tags in the different tag categories
`generally have different tag attributes to distinguish between
`themselves and tags in other tag categories.
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`Id. at 3:52–60.
`Rothmuller incorporates by reference U.S. Provisional Patent
`Application No. 60/334,516, filed October 31, 2001 (Ex. 1005; “Rothmuller
`Provisional”). Ex. 1004, 1:14–17. Rothmuller Provisional explains that
`[t]he recent tag area keeps a set of recently used tags. In a
`preferred embodiment, the Favorite Tag is always maintained in
`this area at the top. The state of this area is preserved between
`Photo Journal sessions. Tags are displayed using small tag type
`icons and the tag name.
`Ex. 1005, 68. The description of the recent tag area in Rothmuller
`Provisional is consistent with the “recently used tags 330” list depicted in
`Figure 1 of Rothmuller. As seen in Figure 1, Rothmuller discloses
`associating icons with tags. Ex. 1004, Fig. 1. For example, icons depicting
`block figures resembling people are associated with the tags for “Mary Jane”
`and “Lori.” Id.
`
`c. Plotkin
`Plotkin describes the photo tagging features of Adobe Photoshop
`Elements, version 4, a commercial software program. Ex. 1008, xix, 321–
`346. Plotkin explains that in Adobe Photoshop Elements “[t]ags and
`collections give you ways to assign keywords to images and to group them
`together in virtual folders. You can also search for images by tag,
`collection, and other criteria.” Id. at 322.
`Plotkin discloses that “[c]ategories, subcategories, and tags form a
`hierarchy [in Adobe Photoshop Elements]. At the top of the heap is the
`category. . . . Subcategories are the-next layer. . . . Tags are at the lowest
`(most atomic) level, and are typically used for keywords or phrases.”
`
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`Ex. 1008, 323. Plotkin further explains that although the software
`automatically provides several base categories, including favorites, people,
`places, and events, a user can create additional categories, and specify
`particular subcategories and tags. Id. at 322–323.
`Plotkin discloses that each tag category has an associated icon, and
`that the category icon may be displayed alongside the category, as well as
`alongside tags falling within that category. Ex. 1008, 323, 325. For
`example, Plotkin includes a screenshot from Adobe Photoshop Elements,
`version 4, reproduced below, in which category icons are displayed next to
`tag.
`
`Id. at 328. As depicted in the Adobe Photoshop Elements screenshot shown
`in Plotkin, the icon for the “people” category appears next to the tags for
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`various people, including, for example, “Russ H,” and the icon for the
`“places” category appears next to the tag for “SeaWorld Orlando.” Id.
`d. MacLaurin
`MacLaurin describes “systems and methods for tagging items”––
`including digital pictures––“based on user selections of items.” Ex. 1006,
`2:40–41, 2:2–7. Of particular relevance here, MacLaurin discloses a “light
`‘tagging mode’” having the following characteristics:
`display a special icon and/or text message indicating that
`tagging is active
`accumulate each key a user types into a “tag buffer”
`use this tag buffer to guess at likely tags
`display the current “best guess” tag in a textual readout
`associated with the window
`allow a user to choose between “tag guesses” using cursor
`arrows
`allow a user to choose whether to accept guesses or simply
`use the buffer as is
`if a user hits the escape key (or similar), exit tagging mode
`if the user hits the enter/return key (or similar), apply the
`items to the tag
`Ex. 1006, 8:4–18.
`MacLaurin teaches that “[t]he tagging system can contain both
`automatic tags generated by the tagging system and explicit tags from a user.
`By distinguishing between the two types of tags easily, a user can be alerted
`to their confidence level with regard to the tags.” Ex. 1006, 7:48–51. More
`specifically, MacLaurin discloses that “if an automated tag and an explicit
`tag (one entered by a user) are both presented to the user, each type of tag
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`can be distinguished utilizing different sizes, fonts, colors, and/or symbols
`and the like.” Id. at 8:19–25.
`
`e. Ortega
`Ortega describes “methods for assisting users in efficiently entering
`search queries.” Ex. 1007, 1:5–6. In particular, Ortega teaches a method for
`“suggesting autocompletion strings (terms and/or phrases) to users during
`the query entry process, wherein the suggested strings are based on specific
`attributes of the particular database access system being searched.” Id. at
`1:66–2:3. Figure 2A of Ortega, depicting an exemplary user interface for
`use by an autocompletion client, is reproduced below. Id. at 5:23–25.
`
`
`As illustrated in Figure 2A, “as the user enters a search query into a search
`field 60 of the Amazon.com web site (by voice, stylus, etc.), the
`autocompletion client displays suggested autocompletion terms and phrases
`in a drop-down box 62.” Id. at 5:25–29. Ortega additionally explains that
`“once the user has completed a term, the autocompletion client may only
`display suggested phrases.” Id. at 5:34–36.
`
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`
`2. Analysis
`Petitioner asserts that independent claims 1, 7, and 13 are rendered
`obvious by Zuckerberg alone, or in combination with either Rothmuller or
`Plotkin, and MacLaurin.7 Pet. 21–31, 34–35, 37, 38–45, 49–53. Because
`claims 7 and 13 respectively recite a “system” and “computer readable
`medium” for performing the method of claim 1, we, like the parties, focus
`our discussion on claim 1.8
`Petitioner contends that the user interface depicted in Figure 5 of
`Zuckerberg discloses “[a] method of selecting a photo tag for a tagged
`photo” (Ex. 1001, 9:14–15), as recited in the preamble of claim 1. Pet. 21–
`23. In particular, Petitioner asserts that Figure 5 “instructs the user to
`‘[c]lick on people in the photo to tag them.’” Id. at 21 (quoting Ex. 1001,
`Fig. 5). Petitioner further asserts that Figure 5 of Zuckerberg suggests
`selecting additional tags for a photograph that has previously been tagged.
`Id. at 22–23 (citing Ex. 1002 ¶ 73); see also Ex. 1003, Fig. 5 (providing a
`tagging interface, and indicating that “erin” and “betty jo” have already been
`tagged in the photograph).
`
`7 Petitioner also details how each limitation of dependent claims 2, 4, 6, 8,
`10, 12, 14, 16, and 18 is met by the disclosures of Zuckerberg alone, or in
`combination with Rothmuller or Plotkin, MacLaurin, and Ortega. See Pet.
`31–54. At this stage of the proceeding, Patent Owner has not addressed
`claims 2, 4, 6, 8, 10, 12, 14, 16, and 18 individually for any of the asserted
`grounds. See generally Prelim. Resp. Accordingly, we focus our analysis
`on the independent claims.
`8 Because the relevant elements of claims 1, 7, and 13 are identical, and the
`parties argue the claims together, for readability, we provide citations only to
`claim 1.
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`Petitioner contends that the claim 1 requirement for “displaying a tag
`list including tags from one or more tag sources matching a search string”
`(Ex. 1001, 9:16–17) is satisfied by Zuckerberg’s disclosure of “a ‘list of
`previously used tags’ that ‘includes a text list 544 and friends list 546,’” as
`depicted in Figure 5. Pet. 24 (quoting Ex. 1003, 8:52–54, 8:56–58; citing id.
`at Fig. 5). According to Petitioner, Zuckerberg discloses that this tag list
`“‘includ[es] tags . . . matching a search string’: ‘As text is entered in the text
`entry window 542, the list of previously used tags may be culled to include
`only those that match the text in some manner.’” Pet. 24 (quoting Ex. 1003,
`8:54–56). Relying on Dr. Chatterjee, Petitioner additionally asserts that
`Zuckerberg discloses two tag sources: “one ‘tag source’ in the form of (1) a
`collection of predefined contacts used to populate the friends list 546, and
`another ‘tag source’ in the form of (2) a cache or collection of previously
`used tags to populate the text list 544.” Pet. 24 (citing Ex. 1002 ¶ 75); see
`also Pet. 25–27 (citing Ex. 1002 ¶¶ 76–79); Ex. 1003, 8:58–66
`(exemplifying information that may be included in the “friends list” and the
`“text list”).
`Claim 1 further calls for “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.” Ex. 1001, 9:18–20. Petitioner asserts that
`Zuckerberg alone, or in combination with either Rothmuller and MacLaurin
`or Plotkin and MacLaurin meets this claim requirement. Pet. 27–31, 38–45,
`49–53.
`Relying on Zuckerberg alone, Petitioner reasons that Zuckerberg’s
`friends list and text list each includes different tag types indicative of
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`different tag sources. Pet. 28–29 (citing Ex. 1002 ¶¶ 82–83). According to
`Petitioner, the distinct names “friends list” and “text list” convey that the
`tags in each respective list are of different types, and the fact that the
`“friends list” includes tags corresponding to predefined contacts, while the
`“text list” includes free-form tags not necessarily associated with a person,
`underscores that the lists include different tag types derived from different
`tag sources. Pet. 28–29 (citing Ex. 1002 ¶¶ 82–83). As to the required “tag
`type indicator,” Petitioner contends that the horizontal line separating the
`“friends list” and the “text list” in Zuckerberg’s “tag list” meets this claim
`element. Pet. 30–31 (citing Ex. 1002 ¶ 84). In particular, Petitioner asserts
`that “[t]his line visually separates the two types of tags from one another; it
`indicates to the user that the tags above the line belong to a different type
`and originate from a different source than the ones below the line.” Pet. 30
`(citing Ex. 1002 ¶ 84).
`Petitioner also asserts that the combination of Zuckerberg,
`Rothmuller, and MacLaurin teaches “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” (Ex. 1001, 9:18–20). Pet. 38–45. Relying on the
`aspects of Zuckerberg discussed above, Petitioner identifies Rothmuller as
`teaching displaying a tag type indicator with each tag appearing in the tag
`list. Id. In particular, Petitioner points to Rothmuller’s teaching that “[t]ags
`are displayed using small tag type icons and the tag name.” Id. at 40–41
`(quoting Ex. 1005, 68). Petitioner further asserts that an ordinarily skilled
`artisan would have sought to combine Zuckerberg and Rothmuller based on
`MacLaurin’s teachings that “each type of tag can be distinguished utilizing
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`different sizes, fonts, colors, and/or symbols and the like” and “[b]y
`distinguishing between the two types of tags easily, a user can be alerted to
`their confidence level with regard to the tags.” Pet. 42–43 (quoting
`Ex. 1006, 8:19–23, 7:48–51). Petitioner reasons that the proposed
`combination would have resulted in an improved user experience “by
`allowing the user to more quickly identify an appropriate tag among the
`listed options,” and “greater flexibility in the organization of the list of tag
`suggestions.” Pet. 44 (citing Ex. 1002 ¶¶ 100, 102–103). Petitioner also
`contends that because of the similarities between the tag categories taught by
`Rothmuller and tag types of Zuckerberg, “[o]ne of ordinary skill would
`therefore have found Rothmuller’s teachings to be directly applicable and
`readily combinable with Zuckerberg.” Pet. 44 (citing Ex. 1002 ¶ 101).
`Petitioner’s arguments concerning the combination of Zuckerberg,
`Plotkin, and MacLaurin closely mirror those asserted as to the
`aforementioned combination of Zuckerberg, Rothmuller, and MacLaurin.
`Compare Pet. 49–53 with id. at 38–48. Specifically, Petitioner asserts that
`Plotkin discloses an embodiment in which a tag category icon is shown next
`to each tag in a tag list. Pet. 51 (citing Ex. 1008, 328). Petitioner contends
`that the same “motivations for adapting Zuckerberg’s tag list to include tag
`type indicators” discussed above concerning the combination of Zuckerberg
`with Rothmuller and MacLaurin apply to the combination of Zuckerberg,
`Plotkin, and MacLaurin. Pet. 52. Petitioner further contends that “[g]iven
`the popularity of the Adobe product [described by Plotkin], market forces, in
`addition to the motivations already discussed, would have further
`encouraged a person of ordinary skill to adapt Plotkin’s tag type indicators
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`to the tag list in Zuckerberg.” Id. at 53 (citing Ex. 1002 ¶ 113). Petitioner
`also argues that Plotkin’s disclosure of using tag type indicators “in the
`context of importing tags into the system . . . confirms that the advantages of
`using tag type indicators in a tag list (e.g., the ability to quickly distinguish
`tags based on their tag type) are applicable to a broad range of user
`interfaces.” Id. (citing Ex. 1002 ¶ 114).
`Based on our review of the current record, with the exception of
`Petitioner’s assertions concerning whether “Zuckerberg discloses and
`renders obvious a ‘tag type being indicative of a tag source associated with
`the tag’” (Pet. 29), we agree at this juncture with Petitioner’s
`characterization of the teachings of Zuckerberg, Rothmuller, Plotkin, and
`MacLaurin, as well as with Petitioner’s assertions as to the reasonable
`inferences an ordinary artisan would have made from those references. We
`address Patent Owner’s arguments, including the adequacy of Petitioner’s
`unpatentability assertions based on Zuckerberg alone, below.
`Patent Owner asserts that Petitioner’s obviousness arguments relying
`on Zuckerberg cannot stand because Petitioner fails to establish that the tags
`in Zuckerberg’s “friends list” and “text list” are from different tag sources.
`Prelim. Resp. 38–41. We do not agree. The challenged claims refer to tag
`sources in two instances. In particular, the claims recite that the tag list must
`include “tags from one or more tag sources” (see, e.g., Ex. 1001, 9:16–17),
`and that “tag type” must be “indicative of a tag source associated with the
`
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`tag (see, e.g., id. at 9:18–20).”9 As Petitioner explains (Pet. 24–27),
`Zuckerberg teaches that the “text list” and “friends list” are populated with
`different information (Ex. 1003, 8:58–66). In particular, Zuckerberg
`exemplifies “contacts within the social network environment,” “approved
`contacts,” and other “selected” information pertaining to a predefined
`contact as populating the “friends list.” Ex. 1003, 8:62–66. In contrast,
`Zuckerberg indicates that the “text list” may include “text strings” unrelated
`to any predefined contact, such as “words” or “objects.” Id. at 8:58–62.
`In view of Zuckerberg’s teachings, Petitioner persuasively asserts,
`relying on Dr. Chatterjee’s testimony, that an ordinarily skilled artisan
`would have understood that “any tag presented in the friends list 546 would
`have originated from a list or collection of contacts used by the system to
`populate friends list 546,” and that “the Zuckerberg system could not
`identify particular tags for friends list 546, and visually present them as
`shown in Figure 5, unless those tags were part of a list or collection of
`known contacts.” Pet. 25 (citing Ex. 1002 ¶ 76). Petitioner’s parallel
`contention, again based on Dr. Chatterjee’s testimony, that an ordinarily
`
`
`9 As Petitioner points out, it is unclear whether the challenged claims intend
`to refer to “said tag type” indicating a tag source as written, or “said tag type
`indicator” indicating a tag source, as the claims include an antecedent basis
`for “said tag type indicator” but not for “said tag type.” Pet. 29, n. 7.
`Nevertheless, we also agree with Petitioner that, for purposes of this
`Decision, in view of Petitioner’s mapping of the asserted art to the
`challenged claims, either understanding of the claims leads to the same
`result. Id. To the extent Patent Owner contends that the interpretation of
`“said tag type indicating” bears on our patentability analysis, Patent Owner
`is requested to further brief the issue during trial.
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`skilled artisan would have appreciated that “text list 544 represents a distinct
`tag source, i.e., a cache of ‘previously used tags’ (Zuckerberg, 8:52-58) that
`is separate from the list of contacts used to populate the friends list 546” is
`also persuasive. Id. (citing Ex. 1002 ¶ 77). Accordingly, based on the
`current record, we determine that Petitioner has adequately shown, for
`purposes of this Decision, that Zuckerberg teaches or suggests two distinct
`“tag sources.”
`Patent Owner argues also that the asserted grounds of unpatentability
`based on Zuckerberg fail to teach or suggest 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” (see, e.g., Ex. 1001, 9:18–20) as required by
`the challenged independent claims. Prelim. Resp. 32–38. Foundational to
`Patent Owner’s argument is the contention, with which we agree, that
`Petitioner has not established a reasonable likelihood of showing that
`Zuckerberg discloses or suggests this claim element. Id. at 33–37. At best,
`the horizontal line separating Zuckerberg’s “friend list” and “text list”
`reinforces our above determination that the “friends list” and “text list” are
`populated with tags from different sources. That line, however, is not
`“indicative of a tag source associated” with the tags in the lists (see, e.g.,
`Ex. 1001, 9:18–20 (emphasis added)). Although a person of ordinary skill
`may be capable of inferring the source of the tags in the lists on either side
`of Zuckerberg’s horizontal line based in the information in those lists,
`Petitioner does not make that argument, and the horizontal line itself is not
`“indicative of a tag source associated with the