Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 26
`Entered: February 27, 2020
`
`
`
`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.
`____________
`
`IPR2019-00516
`IPR2019-005281
`Patent 8,279,173 B2
`___________
`
`
`Before SALLY C. MEDLEY, MIRIAM L. QUINN, and
`AARON W. MOORE, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`PRELIMINARY GUIDANCE
`PATENT OWNER’S MOTION TO AMEND
`
`
`
`
`
`1 This Preliminary Guidance addresses each of these related cases. The
`parties, however, are not authorized to use this heading for any subsequent
`filings.
`
`

`

`IPR2019-00516 (Patent 8,279,173 B2)
`IPR2019-00528 (Patent 8,279,173 B2)
`
`
`I. INTRODUCTION
`On August 5, 2019, we instituted 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 (“the ’173
`patent”). Paper 7 (“Dec.”).2 After institution, Blackberry Limited (“Patent
`Owner”) filed a Contingent Motion to Amend. Paper 15 (“Motion” or
`“Mot.”). Specifically, should we find in a final written decision that the
`challenged claims are unpatentable, Patent Owner proposes amendment of
`the ’173 patent to include proposed substitute claims 21–32, each of which
`corresponds to a respective one of challenged claims 1, 2, 4, 6–8, 10, 12–14,
`16, and 18. Id. at 1, Appendix A (appendix with marked-up version of
`substitute claims 21–32) (“App. A”). Patent Owner also requests that we
`provide Preliminary Guidance on the Motion in accordance with the Board’s
`pilot program concerning motion to amend practice and procedures. Id. at
`1–2.3 Facebook, Inc., Instagram, LLC, and WhatsApp Inc. (“Petitioner”)
`filed an Opposition to the Motion. Paper 23 (“Opposition “ or “Opp.”). We
`have considered Patent Owner’s Motion and Petitioner’s Opposition and the
`associated arguments and evidence.
`
`In this Preliminary Guidance, we provide information indicating the
`panel’s preliminary, non-binding views on whether Patent Owner has shown
`a reasonable likelihood that it has satisfied the statutory and regulatory
`
`
`2 The Motion and Opposition filed in each of the above-identified
`proceedings are substantively the same. All citations are to the Papers in
`IPR2019-00516 unless otherwise noted.
`3 See also Notice Regarding a New Pilot Program Concerning Motion to
`Amend Practice and Procedures in Trial Proceedings Under the America
`Invents Act Before the Patent Trial and Appeal Board, 84 Fed. Reg. 9,497
`(Mar. 15, 2019) (providing a patent owner with the option to receive
`preliminary guidance from the Board on its motion to amend) (“Notice”).
`
`2
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`IPR2019-00516 (Patent 8,279,173 B2)
`IPR2019-00528 (Patent 8,279,173 B2)
`
`requirements associated with filing a motion to amend in an inter partes
`review and whether Petitioner (or the record) establishes a reasonable
`likelihood that the substitute claims are unpatentable. See 35 U.S.C.
`§ 316(d); 37 C.F.R. § 42.121; Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-
`01129, Paper 15 (PTAB Feb. 25, 2019) (precedential).4 In the Final Written
`Decision, we will determine whether the substitute claims are unpatentable
`by a preponderance of the evidence based on the entirety of the record,
`including any opposition made by the petitioner. Lectrosonics, Paper 15, at
`4.
`
`For purposes of this Preliminary Guidance, we focus on the proposed
`substitute claims, and specifically on the amendments proposed in the
`Motion. See Notice, 84 Fed. Reg. at 9,497. In this paper, we do not address
`the patentability of the originally challenged claims. Id. Moreover, in
`formulating our preliminary views on the Motion and Opposition, we have
`not considered the parties’ other substantive papers on the underlying merits
`of Petitioner’s challenges. We emphasize that the views expressed in this
`Preliminary Guidance are subject to change upon consideration of the
`complete record, including, if applicable, any revision to the Motion filed by
`Patent Owner. Thus, this Preliminary Guidance is not binding on the Board
`when rendering a final written decision. See id. at 9, 500.
`
`
`
`4 See also Notice, 84 Fed. Reg. at 9,497 (“The preliminary guidance . . .
`provides preliminary, non-binding guidance from the Board to the parties
`about the [motion to amend].”).
`
`3
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`

`IPR2019-00516 (Patent 8,279,173 B2)
`IPR2019-00528 (Patent 8,279,173 B2)
`
`
`II. PRELIMINARY GUIDANCE
`A. Statutory and Regulatory Requirements
`For the reasons discussed below, at this stage of the proceeding and
`based on the current record, Patent Owner appears to have shown a
`reasonable likelihood that it has satisfied the statutory and regulatory
`requirements under 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121(a) associated
`with filing a motion to amend for substitute claims 21–32.
`1. Reasonable Number of Substitute Claims
`
`Does Patent Owner propose a reasonable number of substitute
`claims? (35 U.S.C. § 316(d)(1)(B))
`Yes. Patent Owner proposes one substitute claim for each of the twelve
`(12) challenged claims and argues that the number of substitute claims is
`reasonable. See Mot. 1–2, App. A. Petitioner does not contest Patent
`Owner’s arguments on this point. See generally Opp.
`2. Respond to Ground of Unpatentability
`Does the Motion respond to a ground of unpatentability involved in
`the trial? (37 C.F.R. § 42.121(a)(2)(i))
`Yes. Patent Owner presents the claim amendments in an attempt to add
`features to further distinguish the substitute claims as patentable over the
`references asserted in the instituted grounds. In particular, because Patent
`Owner addresses expressly Grounds 1–7 in IPR2019-00516 and Grounds
`1–6 in IPR 2019-00528, including the Zuckerberg, Rothmuller, and
`MacLaurin references in particular, which underlie our Institution
`Decision, the Motion responds to the grounds of unpatentability involved
`in the trial. See Mot. 13–15 (citing Ex. 1003, Fig. 5; Ex. 1004, 3:36–39;
`Ex. 2012, 126:21–25, 127:10–18; Ex. 1006, 1:60–64, 8:8–11, Fig. 8).
`Petitioner does not contest Patent Owner’s arguments on this point. See
`generally Opp.
`
`4
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`IPR2019-00516 (Patent 8,279,173 B2)
`IPR2019-00528 (Patent 8,279,173 B2)
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`
`3. Scope of Amended Claims
`Does the amendment seek to enlarge the scope of the claims?
`(35 U.S.C. § 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii))
`No. Proposed substitute claims 21–32 include narrowing limitations as
`compared to each corresponding original claim. See Mot. 2, App. A.
`Petitioner does not contest Patent Owner’s arguments on this point. See
`generally Opp.
`4. New Matter
`Do the amendments seek to add new subject matter? (35 U.S.C.
`§ 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii))
`No. On the current record, Patent Owner appears to have set forth
`adequate written description support for the amendments of proposed
`substitute claims 21–32. See Mot. 5–13 (citing Ex. 2009 ¶¶ 3, 8, 11, 12,
`14, 16–41, 49, 50, 52, 53, 56, 59, 62, 64, 65, 68, 70, 71, 74, 76, Figs. 1,
`3A–E, 4A–F, 5, 6).5
`Although Petitioner alludes to the lack of textual description in the ’173
`patent of the vertical list limitation, Petitioner does not argue that any
`particular limitations lack adequate written description support. See Opp.
`5.
`
`B. Patentability6
`For the reasons discussed below, at this stage of the proceeding and
`based on the current record, it appears that Petitioner has shown a reasonable
`likelihood that proposed substitute claims 21–32 are unpatentable.
`
`
`5 Exhibit 2009 refers to U.S. Appl. No. 13/252,807 (now the ’173 patent),
`which is a continuation of U.S. Appl. No. 11/746,285 (filed May 9, 2007).
`See Mot. 5 n.1.
`
` We express no view on the patentability of original claims 1, 2, 4, 6–8, 10,
`12–14, 16, and 18 in this Preliminary Guidance. Instead, we focus on
`limitations added to proposed substitute claims 21–32 in Patent Owner’s
`Motion to Amend.
`
` 6
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`5
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`IPR2019-00516 (Patent 8,279,173 B2)
`IPR2019-00528 (Patent 8,279,173 B2)
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`
`Does the record establish a reasonable likelihood that the proposed
`substitute claims are unpatentable?
`Yes. Based on the current record, it appears that Petitioner (or the record)
`has shown a reasonable likelihood that proposed substitute claims 21–32
`are unpatentable for the reasons discussed below.
`We note that Patent Owner will have the opportunity to respond to the
`evidence cited in Petitioner’s Opposition and this Preliminary Guidance in
`a reply in support of its motion to amend or in a revised motion to amend
`in these proceedings.
`Proposed substitute claims 21–32 introduce new limitations only with
`respect to proposed substitute claims 21, 25, and 29, which would replace
`original independent claims 1, 7, and 13, respectively. See Mot. 2. The
`new limitations of proposed substitute claims 21, 25, and 29 are
`substantially similar in scope. See id. (App. A). The remaining proposed
`substitute dependent claims are unchanged from their corresponding
`original claims other than modifying the claim dependency. See id. at 2.
`Accordingly, the following guidance for proposed substitute claim 21
`applies equally to proposed substitute claims 25 and 29, as well as to
`proposed substitute claims 22–24, 26–28, and 30–32.
`The new limitations of proposed substitute claim 21 are as follows, with
`letter identifiers added for ease of reference:
`[A] displaying a photograph comprising at least one subject or
`object;
`[B] receiving a user selection of a location in the photograph
`corresponding to the at least one subject or object; . . .
`[C] wherein the tags in the tag list are displayed in a vertical list, and
`wherein: a first tag from a first tag source is displayed above a second tag
`from a second tag source; and the second tag from the second tag source is
`displayed above a third tag from the first tag source; . . . and
`[D] associating at least one of the tags in the tag list with the at least
`one subject or object.
`Id. (Claims App.) (underlining indicating added words).
`Petitioner contends proposed substitute claims 21–32 are unpatentable as
`obvious over (1) Grounds 2–5 asserted in IPR2019-00516; (2) Grounds 6
`and 7 asserted in IPR2019-00516, with the addition of Zuckerberg7; and
`
`7 Ex. 1003.
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`IPR2019-00528 (Patent 8,279,173 B2)
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`
`(3) Grounds 3–6 asserted in IPR2019-00528, with the addition of
`Zuckerberg. See Opp. 1–22.
`In particular, Petitioner challenges proposed substitute claims 21–32 on
`the following grounds:
`(1) Zuckerberg, Rothmuller,8 or Plotkin,9 and one or more of Ortega10 and
`MacLaurin11 (id. at 2–16);
`(2) Rothmuller and one or more of Matthews12 and Ortega, with the
`addition of Zuckerberg (id. at 2–14, 16–19); and
`(3) MacLaurin, Rothmuller, or Plotkin, with or without Ortega, with the
`addition of Zuckerberg (id. at 2–14, 19–22).
`1. Obviousness
`a) Yes, as to each of Petitioner’s grounds identified above.
`Based on the current record, it appears that Petitioner (or the record) has
`shown a reasonable likelihood that proposed substitute claims 21–32 are
`obvious over each of the above Grounds as currently proposed.
`
`THE 516 PROCEEDING:
`
`Limitations A, B, and D: the “displaying,” “receiving,” and
`“associating” limitations taught by Zuckerberg
`Petitioner contends that Zuckerberg teaches “displaying a photograph
`comprising at least one subject or object” with its display of digital image
`362 as shown in Figure 5. Opp. 2–3 (citing Ex. 1003, Fig. 5 (item 362);
`Ex. 1027 ¶¶ 6–8).
`Petitioner contends that Zuckerberg teaches “receiving a user selection of
`a location in the photograph corresponding to the at least one subject or
`object” because Zuckerberg discloses that “[t]he region selection
`component 410 is configured to receive input from a user 101” and “select
`a region (e.g., a selected region 520) within a digital image 362 according
`to the input.” Id. at 3 (citing Ex. 1003, 8:15–21); see also id. at 34 (citing
`
`8 Ex. 1004.
`9 Ex. 1008.
`10 Ex. 1007.
`11 Ex. 1006.
`12 Ex. 1009.
`
`7
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`IPR2019-00516 (Patent 8,279,173 B2)
`IPR2019-00528 (Patent 8,279,173 B2)
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`
`Ex. 1003, 8:22–27, Fig. 5 (“Click on people in the photo to tag them.”);
`Ex. 1027 ¶ 7).
`Petitioner contends that Zuckerberg teaches “associating at least one of the
`tags in the tag list with the at least one subject or object” because
`Zuckerberg discloses a tag component 340 configured to associate the tag
`with the selected region 520 in the photo after receiving a selection of the
`tag in the tag list. Id. at 4 (citing Ex. 1003, 7:54–56, 8:66–91; Ex. 1027
`¶ 8).
`At this stage of the proceeding, and based on the current record, we are
`persuaded by Petitioner’s arguments. We find no evidence or argument on
`the present record with respect to the “displaying,” “receiving,” and
`“associating” limitations that persuasively rebuts the above disclosures of
`Zuckerberg. See Mot. 13–15.
`a. Reasons to Combine Rothmuller with Zuckerberg
`Petitioner contends that a person of ordinary skill in the art would have
`been motivated to add Zuckerberg’s region selection feature to
`Rothmuller’s system. Opp. 16–19 (explaining the modification of the
`grounds in the 516 proceeding to now rely on a combination of
`Zuckerberg’s features described above with teachings of Rothmuller).
`Petitioner reasons that the combination would have enhanced the system
`of Rothmuller by allowing for the selection and association of tags of a
`particular object or subject within the photo, which is much more specific
`and useful than merely tagging the photo as a whole. Id. at 17–18 (citing
`Ex. 1027 ¶ 31). Petitioner further reasons that a second motivation to
`combine flows from the fact that both Zuckerberg and Rothmuller assign
`multiple tags to a single photo, which “strengthens the motivation . . . to
`add Zuckerberg’s region selection features to Rothmuller” because
`“without the ability to granularly associate a tag with a particular subject
`or object in the photograph, the tag is much less useful”—“it cannot be
`used to identify where the tagged subject or object appears in the photo, or
`distinguish more significant objects from in the photo.” Id. at 18 (citing
`Ex. 1027 ¶ 32; Pet. 22–23, 54–55; Ex. 1002 ¶¶ 72, 73, 168, 169; Ex. 1003,
`1:65, 9:67–10:1, Figs. 6, 7; Ex. 1004, 4:42–45, Fig. 2). Petitioner
`additionally reasons that a person of ordinary skill in the art would have
`perceived no technical obstacle in adding to Rothmuller Zuckerberg’s user
`interface for displaying a photograph and selecting a region, which would
`
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`have involved no more than routine and conventional programming
`techniques. Id. at 19 (citing Ex. 1027 ¶ 33).
`At this stage, based on the current record, we are persuaded that
`Petitioner’s argument and evidence of reasons to combine Zuckerberg
`with Rothmuller have merit. We find no argument or evidence in the
`current record that persuasively rebuts the proffered reasons to combine
`Zuckerberg with Rothmuller. See Mot. 13–15.
`
`Limitation C—the “wherein” limitations
`
`a. Predictable Variation or Obvious to Try
`First, Petitioner contends the patentability of the “wherein” limitations is
`“questionable” because the sole support for this feature in the ’173 patent
`is “[t]he particular sequence of tags in Figure 4B,” which “appears to be
`little more than the happenstance of the particular screenshot used to
`create that figure.” Opp. 5 (citing Mot. 4; Ex. 1001, Fig. 4B). Petitioner
`explains that “[n]othing in the ’173 patent suggests that this particular
`sequence or ordering of tags was in any way a point of novelty over the
`prior art or significant in any way to the invention.” Id. (citing Ex. 1027
`¶ 25). Based on the current record, we are persuaded by Petitioner’s
`argument, and we find no persuasive evidence in the current record to the
`contrary. See generally Mot.
`Although this limitation recites a particular arrangement of three tags in a
`vertical list, the claimed arrangement appears to be no more than a
`predictable variation of arrangements of data in a list. Particularly, three
`tags (A, B, and C), two of which have the same tag source (i), would be
`arranged in one of various predictable orders, such as: grouping the tag
`sources (Ai and Ci grouped together listed in any order followed by Bii or
`Bii listed first and followed by Ai and Ci in any order), listed
`alphabetically by tag (Ai, Bii, Ci), listing tag used most recently first,
`listing tags in order of frequent use, random ordering, or reverse ordering
`any of the above. The particular claimed order of the listed data appears to
`be one of the predictable options of arranging data and such an
`“improvement” is no more “than the predictable use of prior art elements
`according to their established functions.” KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398, 417 (2007).
`
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`
`For the same reasons, we are persuaded that the recited listing of tags
`would have been obvious to try for a person of ordinary skill in the art in
`view of the vertical tag list disclosed in the Zuckerberg reference. “When
`a work is available in one field of endeavor, design incentives and other
`market forces can prompt variations of it, either in the same field or a
`different one. If a person of ordinary skill can implement a predictable
`variation, § 103 likely bars its patentability.” Id. at 417. In addition,
`[w]hen there is a design need or market pressure to solve a
`problem and there are a finite number of identified, predictable
`solutions, a person of ordinary skill has good reason to pursue
`the known options within his or her technical grasp. If this
`leads to the anticipated success, it is likely the product not of
`innovation but of ordinary skill and common sense.
`Id. at 421.13 Here, and as stated above, it appears there are a finite number
`of ways to arrange tags matching a search string in a vertical tag list, such
`as by tag source, alphabetically by tag name, by recency, or by frequency.
`It appears that, given Zuckerberg’s vertical list of tags grouped by tag
`source and alphabetized, a person of ordinary skill in the art would have
`had good reason to pursue other arrangements, which would be within
`their technical grasp and “provid[e] the benefit of a more flexibly-
`organized tag list, where tags could be displayed in any order, without the
`constraints of a separate list for each type.” Opp. 15 (citing Pet. 44–45;
`Ex. 1002 ¶¶ 102, 112). It also appears that the results of such efforts
`would include a vertical tag list having tags from a first source listed
`above and below a tag from a second source, as claimed—for example, if
`all matching tags spanning a plurality of tag sources were displayed
`alphabetically irrespective of tag source. Accordingly, we preliminarily
`determine that added limitation C is no more than a predictable variation
`or data arrangement in a display that would have been obvious.
`b. Rothmuller Teachings
`Second, Petitioner contends that Figure 9A of Rothmuller discloses or
`renders obvious limitation C by showing Landscapes, Lori, and Animals
`listed one after another in a vertical arrangement, with the “first tag”
`(“Landscapes”) and the “third tag” (“Animals”) from “a first tag source”
`
`
`13 See Perfect Web Tech., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed.
`Cir. 2009); Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010).
`
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`(indicated by an icon showing windows), and the “second tag” (“Lori”)
`from a “second tag source” (indicated by icon showing people). See Opp.
`6–11 (citing Ex. 1005, Fig. 9A; Ex. 1002 ¶¶ 87–89, 171, 172, 197, 198;
`Ex. 1027 ¶¶ 9, 13–16; Ex. 1028, 34–36). Petitioner explains that even
`though Rothmuller discloses a tag list arranged in two vertical columns
`rather than a single vertical list, the right column’s list of recently used
`tags in Figure 9A still satisfies the claim language, which “merely requires
`a single vertical list with more than one tag” and “does not preclude the
`existence of additional elements,” such as a second vertical column of
`tags. Opp. 7–8. Petitioner further explains that even if the claim were to
`require a single vertical tag list,
`it would have been obvious to a person of ordinary skill in the
`art that, at some earlier point during the use of the Rothmuller
`system – when fewer tags had been used – the recently used tag
`area in Figure 9A could have included fewer tags such that all
`of them would fit in a single vertical list.
`Id. at 8. Petitioner also cites Microsoft Windows, as shown in Fred Davis,
`The Windows 95 Bible (Ex. 1028), as evidence that the “Windows
`operating system since at least the 1990s had the ability (through the
`ubiquitous Windows ‘View’ menu) to list items in a window as a single
`vertical list or in a multi-column arrangement similar to Figure 9A.”
`Opp. 9. Petitioner reasons that “a person of ordinary skill in the art would
`have understood that displaying the tags in Rothmuller in the form of a
`single vertical list (similar to the ‘Details’ view of Figure 3.17 in Davis
`shown above) was one of a finite number of techniques for arranging or
`listing items on the screen” and would “accommodate longer tag names
`that might be truncated or cut off under the multiple column arrangement
`shown in Figure 9A.” Id. at 9–10 (citing Ex. 1027 ¶¶ 15, 16; Ex. 1028,
`34–36).
`At this stage, based on the current record, we are persuaded by Petitioner’s
`arguments that Rothmuller teaches limitation C.
`c. Plotkin’s Teachings
`Third, Petitioner contends that Plotkin discloses or renders obvious
`limitation C because Plotkin teaches an Import Attached Tags window
`including three tags (“Birds,” “David P,” and “Seals/Sealions”) shown
`listed in a vertical arrangement, with the “first tag” (“Birds”) and the
`“third tag” (“Seals/Sealions”) from “a first tag source” (indicated by an
`
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`icon of a bird), and the “second tag” (“David P”) from “a second tag
`source” (indicated by an icon showing two people). See Opp. 11–14
`(citing Ex. 1008, 328; Ex. 1002 ¶¶ 54, 55, 107, 110; Ex. 1027 ¶¶ 16, 23,
`24). Petitioner notes that even though the “second tag,” “David P,” is not
`immediately above the “third tag” “Seals/Sealions” (due to an intervening
`tag “Russ H”), the claims recite the open-ended term “comprising” and
`“do not preclude the existence of other tags.” Id. at 12–13. Petitioner
`further notes that even if the claims were to preclude intervening tags, the
`cited disclosures of Plotkin still would render the limitation at issue
`obvious. Petitioner explains that,
`[t]he tag list in Plotkin is alphabetically organized, and it would
`have been obvious to a person of ordinary skill in the art that
`the sequence of tag type indicator icons in the list (and thus tag
`sources) was simply the happenstance of the particular tags that
`were being imported as captured in that screenshot.
`Id. at 13 (citing Ex. 1027 ¶ 23). Petitioner further explains that,
`[i]t would have been obvious to a person of ordinary skill in the
`art that the Plotkin user interface could have generated different
`arrangements meeting even [under] this narrower view; if for
`example the “Russ H” tag was not present in the tag import
`data, the software would not display any intermediary tag
`between the “second” and “third” tags.
`
`Id.
`At this stage of the proceeding, and based on the current record, we are
`persuaded by Petitioner’s arguments that Plotkin teaches limitation C.
`d. Reasons to Combine Zuckerberg with Rothmuller or Plotkin
`Petitioner contends that a person of ordinary skill in the art would have
`been motivated to combine Zuckerberg with the above teachings of
`Rothmuller or Plotkin for the benefit of a more flexibly-organized tag list
`with tags displayed in any order, without the constraints of a separate list
`for each type. Opp. 15 (citing Pet. 44–45; Ex. 1002 ¶¶ 102, 112).
`Petitioner explains that,
`the combination of Zuckerberg with Rothmuller or Plotkin
`would have predictably resulted in a vertical tag list displaying
`three tags, e.g., a “first tag” from the friends list, a “second tag”
`from the text list and below the first tag, and a “third tag” from
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`the friends list . . . below the second tag, each tag displayed
`alongside an appropriate tag type indicator icon as taught in
`Rothmuller and Plotkin.
`Id. (emphasis omitted) (citing Pet. 24–26; Ex. 1003 ¶¶ 75–77), see also id.
`at 16 (citing Ex. 1027 ¶¶ 11, 24, 28).
`At this stage of the proceeding, and based on the current record, we find
`Petitioner’s contentions sufficient to show a reasonable likelihood that
`proposed substitute claims 2132 would have been obvious as asserted in
`the Opposition.
`
`THE 528 PROCEEDING
`Petitioner relies on the same Zuckerberg teachings discussed above with
`respect to the 516 Proceeding concerning limitations A, B, and D.
`Petitioner contends that “the same clear benefits discussed above for the
`combination of Rothmuller and Zuckerberg would have applied equally to
`the combination of MacLaurin and Zuckerberg.” Opp. 20 (citing Ex. 1027
`¶¶ 31–33, 36). Petitioner explains that MacLaurin discloses a preference
`for assigning multiple tags to a single photo, which “makes the motivation
`for adding Zuckerberg’s techniques even more compelling” because
`“[w]ithout the ability to more granularly associate tags with particular
`subjects in a photograph, individual tags (e.g. for particular people) are
`less useful”—“they cannot be used to identify where in the photo the
`tagged subject appears.” Id. at 20–21 (citing Ex. 1002 ¶¶ 65–67;
`Ex. 1006, 6:53–58; Ex. 1027 ¶ 36).
`With regard to limitation C, Petitioner explains that the combination of
`MacLaurin with Rothmuller or Plotkin teaches the “wherein” limitations
`of proposed substitute claim 21. Opp. 21. Here, Petitioner asserts that
`“[t]he claimed ‘first tag source’ corresponds to (1) either the collection of
`‘automatic’ tags or the collection of ‘explicit’ tags, or (2) in the alternative
`application of MacLaurin, one of at least two ‘external’ tag sources.” Id.
`(citing Ex. 1002 ¶ 97; Ex. 1006, 6:21–31, 7:40–49, 8:20–23; Ex. 1027 ¶
`12). Petitioner further asserts that a person of ordinary skill in the art
`would have been motivated to combine the Rothmuller and Plotkin “tag
`type indicators” to the system of MacLaurin, thereby predictably resulting
`in a system adapted to display the claimed sequence of three tags. Id. at
`21–22 (citing Pet. 58–61, 65–67; Ex. 1002 ¶¶ 96, 97, 108). Petitioner also
`reasons that a person of ordinary skill in the art would have perceived no
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`IPR2019-00516 (Patent 8,279,173 B2)
`IPR2019-00528 (Patent 8,279,173 B2)
`
`
`technical obstacle in adding to MacLaurin the Zuckerberg user interface
`for displaying a photograph and selecting a region, which would have
`involved no more than routine and conventional programming techniques.
`Id. at 22 (citing Ex. 1027 ¶ 37).
`At this stage, based on the current record, we find Petitioner’s contentions
`sufficient to show a reasonable likelihood that proposed substitute claims
`2132 would have been obvious as asserted in the Opposition.
`We acknowledge that Patent Owner has not yet had the opportunity to
`respond to Petitioner’s contentions that substitute claims 2132 would
`have been obvious. Patent Owner will have the opportunity to do so in its
`reply to Petitioner’s Opposition (or in a revised motion) in this proceeding.
`
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`IPR2019-00516 (Patent 8,279,173 B2)
`IPR2019-00528 (Patent 8,279,173 B2)
`
`PETITIONER:
`
`Heidi L. Keefe
`Andrew C. Mace
`COOLEY LLP
`hkeefe@cooley.com
`amace@cooley.com
`
`
`PATENT OWNER:
`
`James M. Glass
`Richard Lowry
`QUINN EMANUEL URQUHART
`& SULLIVAN, LLP
`jimglass@quinnemanuel.com
`richardlowry@quinnemanuel.com
`
`
`
`15
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`