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` Paper No. 42
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`Entered: August 3, 2020
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`Trials@uspto.gov
`571-272-7822
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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.
`____________
`
`IPR2019-00516
`IPR2019-00528
`Patent 8,279,173 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, MIRIAM L. QUINN and
`AARON W. MOORE, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Consolidated Final Written Decision
`Determining All Challenged Claims Unpatentable
`Denying Patent Owner’s Motion to Amend
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`IPR2019-00516
`IPR2019-00528
`Patent 8,279,173 B2
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`
`INTRODUCTION
`I.
`We instituted inter partes review pursuant to 35 U.S.C. § 314 to
`review 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”), owned by Blackberry
`Limited. We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
`Decision is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons discussed below, Petitioners have shown by a preponderance
`of the evidence that claims 1, 2, 4, 6–8, 10, 12–14, 16, and 18 of the
`’173 patent are unpatentable. Additionally, for the reasons discussed below,
`we deny Patent Owner’s Motion to Amend.
`CONSOLIDATED PROCEEDINGS
`II.
`The two captioned proceedings (IPR2019-00516 and IPR2019-00528)
`involve the ’173 patent and challenge the same set of claims. Although the
`asserted grounds and prior art contentions are different in each proceeding,
`there are disputed claim terms across the challenged claims. For instance,
`the parties dispute the scope of the phrase “tag type indicative of a tag
`source associated with the tag” as it pertains to the meaning of the term “tag
`source.” Consolidation is appropriate where, as here, the Board can more
`efficiently handle the common issues and evidence, and also remain
`consistent across proceedings. Under 35 U.S.C. § 315(d), the Director may
`determine the manner in which these pending proceedings may proceed,
`including “providing for stay, transfer, consolidation, or termination of any
`such matter or proceeding.” See also 37 C.F.R. § 42.4(a) (“The Board
`institutes the trial on behalf of the Director.”). There is no specific Board
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`Rule that governs consolidation of cases. But 37 C.F.R. § 42.5(a) allows the
`Board to determine a proper course of conduct in a proceeding for any
`situation not specifically covered by the rules and to enter non-final orders to
`administer the proceeding. Therefore, on behalf of the Director under
`§ 315(d), and for a more efficient administration of these proceedings, we
`consolidate IPR2019-00516 and IPR2019-00528 for purposes of rendering
`this Final Written Decision.
`III. PROCEDURAL BACKGROUND
`Facebook, Inc., Instagram, LLC, and WhatsApp Inc. (collectively,
`“Petitioner”), filed the Petition in IPR2019-00516 (“516 IPR”) on December
`31, 2018 and the Petition in IPR2019-00528 (“528 IPR”) on January 3,
`2019. 516 IPR, Paper 2 (“516 Petition” or “516 Pet.”); 528 IPR, Paper 2
`(“528 Petition” or “528 Pet.”). Both proceedings challenge the same set of
`claims of the ’173 patent: Claims 1, 2, 4, 6–8, 10, 12–14, 16, and 18. See
`516 Pet. 4–5; 528 Pet. 4−5. After considering Patent Owner’s Preliminary
`Responses, the Board instituted trial in each of these proceedings. 516 IPR,
`Paper 7, Decision on Institution (“516 Dec. on Inst.”); 528 IPR, Paper 8,
`Decision on Institution (“528 Dec. on Inst.”).
`In each proceeding, Patent Owner filed a Response. 516 IPR, Paper
`14 (“516 PO Resp.”); 528 IPR, Paper 16 (“528 PO Resp.”). Petitioner filed
`Replies. 516 IPR, Paper 22 (“516 Pet. Reply”); 528 IPR, Paper 23 (“528
`Pet. Reply”). And Patent Owner filed Sur-Replies. 516 IPR, Paper 29 (“516
`PO Sur-Reply”); 528 IPR, Paper 29 (“528 PO Sur-Reply”).
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`Patent Owner also filed a Conditional Motion to Amend in each
`proceeding. The filed motions (and subsequently filed paper) are identical,
`and, therefore, we refer hereinafter to the papers filed in the 516 IPR.
`IPR2019-00516, Paper 15 (“Motion” or “MTA”). Petitioner filed an
`opposition to the Motion. 516 IPR, Paper 23 (“MTA Opp.”). Pursuant to
`Patent Owner’s request, we issued a non-binding Preliminary Guidance on
`the Motion. Paper 25 (“PG”). Patent Owner had an opportunity to address
`the Preliminary Guidance and Petitioner’s Opposition in its Reply to the
`Motion. 516 IPR, Paper 20 (“MTA Reply”). And Petitioner also had an
`opportunity to address the Preliminary Guidance and respond to Patent
`Owner’s Reply to the Motion. 516 IPR, Paper 36 (“MTA Sur-Reply”).
`We held Oral Argument on the captioned proceedings on May 5,
`2020, the transcript of which is in the record. 516 IPR, Paper 41 (“Tr.”).
`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.,
`No. 2:18-cv-01844-GW-KS (C.D. Cal.). 516 Pet. 2; 516 IPR, Paper 4, 2.
`IV. THE ’173 PATENT AND PRESENTED CHALLENGES
`A. THE ’173 PATENT, EXHIBIT 10011
`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
`
`
`1 We note that the evidence filed in both proceedings is generally consistent
`in having the same exhibit number. Therefore, we reference Exhibits as they
`appear in the 516 IPR record, unless otherwise noted.
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`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. Id. at
`1:43–44.
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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. The patent states that:
`[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
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`book entries (in address book 142), browser bookmarks (in Internet browser
`module 138), etc.” Id. at 4:46–50.
`B. CHALLENGED CLAIMS
`Claims 1, 2, 4, 6–8, 10, 12–14, 16, and 18 of the ’173 patent are under
`review in this proceeding. 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, 9:14–20. Independent claims 7 and 13, respectively, recite a
`“system” and “computer readable medium” for performing the method of
`claim 1. Id. at 9:34–40, 10:13–21.
`C. ASSERTED PRIOR ART AND INSTITUTED GROUNDS OF UNPATENTABILITY
`These proceedings rely on the following prior art references:
`
`a) Zuckerberg: US 7,945,653 B2, issued May 17, 2011 (Ex. 1003);
`
`b) Rothmuller: US 7,415,662 B2, issued Aug. 19, 2008 (Ex. 1004);
`
`c) MacLaurin: US 7,831,913 B2, issued Nov. 9, 2010 (Ex. 1006);
`
`d) Ortega: US 6,564,213 B1, issued May 13, 2003 (Ex. 1007);
`
`e) Plotkin: How to Do Everything with Photoshop Elements 4.0
`(Ex. 1008); and
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`f) Matthews: US 2006/0218503 A1, published Sept. 28, 2006
`(Ex. 1009).
`
`In IPR2019-00516, Petitioner asserts the following grounds of
`unpatentability (516 Pet. 4–5):
`
`Claim(s)
`Challenged
`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
`
`35 U.S.C. §2
`
`Reference(s)/Basis
`
`103
`
`103
`
`103
`
`103
`
`103
`
`103
`103
`
`Zuckerberg
`Zuckerberg, Rothmuller,
`MacLaurin
`Zuckerberg, Rothmuller,
`MacLaurin, Ortega
`Zuckerberg, Plotkin,
`MacLaurin
`Zuckerberg, Plotkin,
`MacLaurin, Ortega
`Rothmuller, Matthews
`Rothmuller, Matthews, Ortega
`
`In IPR2019-00528, Petitioner asserts the following grounds of
`unpatentability (528 Pet. 4−5):
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29,
`125 Stat. 284, 287–88 (2011), revised 35 U.S.C. § 103, effective March 16,
`2013. Because the patent application resulting in the ’173 patent was filed
`before the effective date of the relevant section of the AIA, we refer to the
`pre-AIA version of § 103 throughout this decision.
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`35 U.S.C. §3
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`Reference(s)/Basis
`
`Claim(s)
`Challenged
`1, 2, 4, 6–8, 10,
`MacLaurin
`12–14, 16, 18
`MacLaurin, Ortega
`2, 8, 10, 14, 16
`1, 2, 4, 6–8, 10,
`MacLaurin, Rothmuller
`12–14, 16, 18
`MacLaurin, Rothmuller,
`2, 8, 10, 14, 16
`Ortega
`1, 2, 4, 6–8, 10,
`MacLaurin, Plotkin
`103
`12–14, 16, 18
`MacLaurin, Plotkin, Ortega
`103
`2, 8, 10, 14, 16
`Petitioner relies on multiple Declarations of Dr. Sandeep Chatterjee,
`Ph.D. to support the patentability challenges in each proceeding. 516 IPR,
`Ex. 1002 (“516 Chatterjee Decl.”); 528 IPR, Ex. 1002 (“528 Chatterjee
`Decl.”); 516 IPR, Ex. 1023 (“516 Reply Chatterjee Decl.”); 528 IPR,
`Ex. 1023 (“528 Reply Chatterjee Decl.”).
`Patent Owner relies on the Declaration of Dr. Rajeev Surati in each
`proceeding. 516 IPR, Ex. 2001 (“516 Surati Decl.”); 528 IPR, Ex. 2001
`(“528 Surati Decl.”).
`
`103
`103
`103
`
`103
`
`V. 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
`
`
`3 See supra n.2.
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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).” 516 Pet. 6–7 (citing 516 Chatterjee Decl.
`¶¶ 12–15); 528 Pet. 9 (citing 528 Chatterjee Decl. ¶¶ 12–15). We adopted
`Petitioner’s stated level of ordinary skill in the art in our Decision on
`Institution noting that it was consistent with the level of skill in the art
`reflected in the prior art of record. 516 Dec. on Inst. 6−7; 528 Dec. on
`Inst. 6 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)).
`Patent Owner does not dispute our determination and “adopts the Board’s
`adopted level of ordinary skill in the art.” 516 PO Resp. 19−20; 528 PO
`Resp. 18. Because there is no dispute on this issue, we determine that the
`level of ordinary skill in the art as asserted by Petitioner is proper.
`B. CLAIM CONSTRUCTION
`In an inter partes review proceeding, a claim of a patent is 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. See Changes to the Claim Construction
`Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial
`and Appeal Board, 83 Fed. Reg. 51,340, 51,340, 51,358 (Oct. 11, 2018)
`(amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now
`codified at 37 C.F.R. § 42.100(b) (2019)). In our Decision on Institution we
`noted that, although Petitioner presented alternative grounds of
`unpatentability to account for various claim interpretations Patent Owner
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`might advance, Petitioner did not seek express construction of any claim
`term. See, e.g., 516 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.”). After institution, Patent Owner
`raised claim construction issues concerning two terms. 516 PO Resp.
`20−32. We analyze each in turn.4
`1. Tag Sources
`Patent Owner contends that we should construe the term “tag sources”
`in accordance with the plain and ordinary meaning of the term: “a
`separately searchable collection of tags.” Id. at 22. According to Patent
`Owner, the term “does not describe the tags themselves[,] but rather refers to
`how tags are obtained (‘from one or more sources’).” Id. (citing 516 Surati
`Decl. ¶ 89). In response, Petitioner agrees that a “tag source” refers to a
`“collection of tags.” 516 Pet. Reply 1 (emphasis omitted); Tr. 5:15−20.
`Petitioner, however, disagrees with the part of Patent Owner’s proposed
`construction requiring that the collection of tags be “separately searchable.”
`516 Pet. Reply 1.
`
`
`4 The claim construction issues are relevant to both consolidated proceedings
`notwithstanding our reference to the papers filed in the 516 IPR.
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`We start our analysis with the claim term itself and the surrounding
`claim language. Claim 1 recites displaying a tag list including “tags from
`one or more tag sources” and a tag type indicator, for each displayed tag,
`where the tag type is “indicative of a tag source associated with the tag.”
`The three interrelated terms of the claim are (1) “tags” from (2) “one or
`more tag sources” and (3) a “tag type indicator” indicative of the “tag
`source.” Dependent claims 6, 12, and 18 shed further light into the “tag
`source” term by reciting the further limitation of selecting “as a tag source
`one or more of an online network profile, an address book, browser
`bookmarks, landmark tags, and freeform text.” According to these claim
`limitations then, the “tag source” may very well be a “collection of tags,” as
`the parties have argued, because the tags are grouped according to their
`source. However, the plain and ordinary meaning of the term, when
`considering the word “source,” provides a connotation not expressly
`acknowledged by the portion of the agreed-to meaning, i.e., “collection of
`tags.”
`The plain and ordinary meaning of the word “source” includes the
`notion of the tags’ origin. For instance, Patent Owner correctly argues that
`the word “source” relates to the origin of the information (e.g., where the
`information is from), but not necessarily the subject matter of the
`information. 516 PO Resp. 21. In support of this argument, Patent Owner
`proffers various dictionary definitions that define the word “source,” as it is
`customarily known, to denote the origin or the supply of the information,
`i.e., the origin of the tags. See Exs. 2002 (defining source as “[t]he point of
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`origin” and “[o]ne, such as a person or document, that supplies
`information”); 2003 (defining “source” as “a person, book, document, etc.
`that provides information”); 2004 (defining “source” as a “point of origin or
`procurement” and “one that supplies information”). Patent Owner also
`proffers the testimony of Petitioner’s expert, Dr. Chatterjee, who, when
`testifying that a tag source is a stored collection or group of predefined tags,
`agreed that his testimony uses the word “source” in a manner consistent with
`how it is defined in a general purpose dictionary. Ex. 2012, 53:25−54:5.
`Patent Owner also proffers the testimony of its own expert, Dr. Surati, who
`also states that the plain meaning of the word “source,” relates to the origin
`of the information, and more specifically, where the information is from.
`516 Surati Decl. ¶ 83.
`Thus, it is apparent from the specific claim language at issue and the
`surrounding claim language that the plain and ordinary meaning of the term
`“tag source” includes the notion of the origin of the information, i.e., where
`the tag comes from. And as stated above, the experts testifying in this
`proceeding agree that the plain and ordinary meaning of the term “source”
`aligns with the common dictionary definitions discussed above. However,
`the experts disagree as to what the ’173 patent Specification would inform a
`person of ordinary skill in the art vis-à-vis the “tag sources.” On the one
`hand, Dr. Surati testified that the ’173 patent would inform a person of
`ordinary skill that each “tag source” is separately searched for tags, a search
`that is distinguished primarily by how a query is crafted and executed to
`search each “collection of tags.” 516 Surati Decl. ¶¶ 93−101; Ex. 1021,
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`121:10−123:16 (Surati deposition). On the other hand, Dr. Chatterjee
`testified that the ’173 patent so broadly describes the “tag source” search
`that the term only conveys that the tags are merely stored or associated with
`each other as a collection or group of predefined tags. 516 Chatterjee Decl.
`¶ 177; 516 Reply Chatterjee Decl. ¶¶ 7−11; Ex. 2012, 51:17−54:5. We find,
`however, that neither the claim language nor the ’173 patent Specification
`supports either expert’s position.
`First, as to Dr. Surati’s opinion, we note that the plain reading of the
`claim language requires only that the tags in the tag list are included “from
`one or more tag sources.” Further, although the claim requires that the
`displayed tags are the tags matching a search string, the plain reading of the
`claim language does not require a search of tag sources in order to display
`the tag list. It may be that before the search for matching tags, these would
`have been extracted from the selected tag sources. It may also be possible to
`search the tag sources at the same time the user searches for a tag. But the
`claim does not require a tag source search. That is, the claim language
`speaks to where the tags come from (read here “tag sources”), but does not
`recite how or when the tags are collected or extracted from said “tag
`sources.” Thus, Patent Owner’s contention and Dr. Surati’s testimony, that
`there must be a requirement of separately searchable collections of tags, are
`unsupported by the claim language.
`We also are not persuaded that the ’173 patent Specification supports
`Patent Owner’s and Dr. Surati’s position. Patent Owner argues that the
`’173 patent Specification confirms that the different “tag sources” are
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`separately searchable and that all embodiments are consistent in this regard.
`516 PO Resp. 22−26 (citing Ex. 1001, 3:40−55, 5:39−42, 5:56−61, 6:27−48,
`6:49−52, Fig. 1; 516 Surati Decl. ¶¶ 88−101); see also 516 PO Sur-Reply
`7−8 (arguing that “[t]he correct focus in this analysis is on how tags are
`obtained” and that because the ’173 patent Specification provides for tags
`from different “sources” to be obtained, it confirms that the “separately
`searchable” requirement is not improper). We do not agree. The ’173 patent
`describes one embodiment in which, as the user begins to type, the photo
`tagging module searches one or more selected “tag sources” for tags that
`match the currently entered text. Ex. 1001, 5:39−42. Then the Specification
`describes potential tag sources: a list of friends from an online service such
`as Facebook, a list of contacts from the user’s address book, a list of the
`user’s browser bookmarks, and a cache of recent free-form text entries. Id.
`at 5:42−47. Thus, in that embodiment, a photo-tagging module may be
`configured to search various “tag sources,” which essentially are either
`“lists” of tags or the “cache of recent” entries. This description explains, at
`best, what is being searched (the tag sources, such as lists or a cache) and
`when the search occurs (as the user begins to type), but it does not explain
`how the search occurs or how the tags are collected for display. See also id.
`at 5:48−61 (explaining matching tags from the tag sources when the user
`types text and creating a new entry to add to the cache if there are no tags
`“from the tag sources” in the matching tag list).
`All other examples of the ’173 patent Specification similarly belie
`Patent Owner’s contention that the claim requires “separate searchability” of
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`“tag sources.” For instance, in another embodiment, landmark tags may be
`another tag source. Id. at 6:27−54. But this embodiment, at best, describes
`that either the user creates the landmarks tag list or, in the alternative, a
`third-party provides the landmarks tag list. Id. The Specification provides
`no explanation as to how the “tag source,” e.g., the prepared landmarks tag
`list, is searched. Again, the Specification, like the claim language, focuses
`on where the tags are obtained from, not how they are searched or obtained
`from the “tag source.” See also 516 Pet. Reply 3−5 (Petitioner arguing that
`searching “tag sources,” as contended by Patent Owner, is not supported by
`the Specification, and that, at best, such a requirement would read
`embodiments into the claims).
`Second, as to Petitioner’s contentions, the grouping of tags to form a
`collection, alone, does not explain sufficiently the requirement that a “tag
`source” is the source of tags. Plainly speaking, a collection of tags would be
`a “tag source” if the tags that the system displays originated from that
`collection. Petitioner, in oral argument, appeared to agree with this
`interpretation when arguing that “when that collection is used as a source of
`tags for the tagging functionality, it’s a tag source for that functionality.”
`Tr. 7:22−23. Thus, the “collection of tags,” as the meaning for “tag
`sources,” and to capture the plain and ordinary meaning of the word
`“source,” needs to embody the concept of a collection from which the tags
`originate, in accordance with the context of the claim language and the
`Specification.
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`Patent Owner expressed concern at oral argument that, although “tag
`sources” should reflect the origin for the tags, the perspective of the claim is
`not on the historical origin of the tag, i.e., initial creation of the tag. See
`Tr. 20:2−14. We agree with Patent Owner in this regard and find that the
`’173 patent supports Patent Owner’s contention. For instance, the
`’173 patent describes that one “tag source” may be “a prepared landmark
`list” compiled by a third party of famous landmarks for various cities.
`Ex. 1001, 6:49−54. But the ’173 patent Specification also states that a
`“prepared landmark tag list” may be set up by a user while a user visits a
`landmark and records the requisite information for a landmark tag. Id. at
`6:36−45 (describing that the user provides the landmark name and records
`the geographic location at each landmark location). A “tag source” such as
`“landmark tags,” as recited in claim 6, indeed may be a collection of tags
`with a common subject matter, i.e., famous landmarks. However, in the first
`instance, the third party created the tags that eventually formed the
`collection or “the prepared landmark list.” And in the second instance, the
`user created the tags that formed the same collection or “prepared landmark
`list.” Therefore, that example explains the concept that the landmark tag list,
`as a “tag source,” supplies the landmark tags for the tagging functionality,
`regardless of whether or when the user or a third-party created the list of
`landmark tags as a collection of tags. Thus, as we capture the meaning of
`the word “source” to refer to where the tags came from, the meaning cannot
`be limited to referring only to the original source (or creation) of the
`collection of tags.
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`However, from the landmark tag list example we glean that once the
`famous landmark tags were grouped or collected into the list, that list
`became the source of the tags evidenced by the tagging functionality
`associating the tag with the tag source (see claim 1: tag type being indicative
`of a tag source associated with the tag). Thus, identifying the landmark tag
`list, for example, as a discrete source of landmark tags is predicate for the
`claimed tag type to indicate the tag source. That is, we understand the
`context of the claim language and the ’173 patent Specification to convey
`that regardless of how or when the tags are created and collected into a list,
`what matters is that each source must be distinct such that a tag type
`indicator or other context, indicating the tag source, can be displayed for
`each tag. See Ex. 1001, 9:18−20 (claim 1 reciting that the tag type indicator
`displayed for each tag is indicative of a tag source associated with the tag),
`4:56−58 (describing that tags displayed include an icon indicating what type
`of tag it is), 4:44−50 (listing the types of tags as including “a free-form
`alphanumeric string, Facebook[] friends, address book entries (in address
`book 142), browser bookmarks (in Internet browser module 138), etc.”),
`6:55−62 (explaining that an “associated context” may allow the user to
`visually identify and differentiate between the tag types in tag selection user
`interface 404); see also Tr. 5:13−20 (counsel for Petitioner arguing that “the
`system that uses the tags for photo tagging would be able to recognize
`distinct collections of tags in order to carry out the photo tagging
`functionality” (emphasis added); 1−15 (counsel for Petitioner also stating
`that all the examples in the prior art show “distinct collections of tags that
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`the tagging systems recognize as distinct sets in order to provide the tagging
`functionality”); see also Tr. 20−21 (counsel for Patent Owner explaining that
`the proffered dictionary definitions meant to capture also “the possibility of
`distinguishing one or more tag sources”).
`To illustrate, the ’173 patent describes two distinct “tag sources” as
`(1) a list of Facebook friends, and (2) a list of contacts from the user’s
`address book entries. Id. at 5:42−47. Each of these two “tag sources” would
`have an associated tag type indicator. Id. at 4:46−50, 4:56−58, 9:18−20.
`From the claim language’s viewpoint, when or how the friends were added
`to the list of Facebook friends or when the contact was entered in the address
`book is irrelevant. It also is irrelevant when or how the list of friends were
`extracted from Facebook in order to display matching entries—same goes
`for the address book entries. The claim only requires that the displayed tags
`are identifiable as coming from a distinct “tag source,” e.g., by including
`some visual indicator for the Facebook-friends-tags list and a different visual
`indicator for the address-book-tags list. As such, the “tag sources” must be
`distinct from each other, regardless of how or when they were created, and
`how or when tags were added, searched for, or matched.
`Patent Owner also argues that the Federal Circuit’s decision in
`Amazon.com, Inc. v. ZitoVault, LLC, 754 Fed. App’x 965 (Fed. Cir. 2018)
`supports its proposed construction. 516 PO Resp. at 29−30. Patent Owner
`argues that the rationale of ZitoVault, which addresses the real-world
`problem of distinguishing between “sessions,” is applicable to how the
`claims here recite “one or more tag sources.” Id. In particular, Patent
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`Owner argues, because the claim recites “one or more” tag sources, there
`“must be a mechanism for distinguishing a single tag source from multiple
`tag sources.” Id. Thus, according to Patent Owner, similar to the issue in
`ZitoVault, the claim requires that the system recognize the distinct tag
`sources because each source is searched independently. Id. We are not
`persuaded by this argument.
`Although in ZitoVault a “session” was in need of being recognizable
`by having a beginning and an end, the claims here expressly provide for
`recognizability because of the tag type indicators displayed with the tag.
`That is, and as stated above, the claim requires some manner of
`distinguishing one tag source from another, and displaying a tag type
`indicator accordingly. See Tr. 6:16−7:4 (Petitioner stating that providing the
`tag type indicator shows that the tag sources are recognized by the system as
`distinct collections of tags). As Petitioner notes, however, the ZitoVault
`construction would not have limited the claim to any particular technique or
`protocol for implementing the recognizability, thus, there is no need to
`require a “separate searchability” requirement. See 516 Pet. Reply 8−9.
`Therefore, although the claims require that the “tag sources” are distinct
`from each other, as evidenced by the tag type indicator, the ZitoVault
`rationale does not warrant a claim requirement of “separate searchability”
`because neither the claim nor the Specification requires such a search.
`Patent Owner further argues that Petitioner’s proposed
`“recognizability” criteria is not a concrete characteristic that can be used to
`distinguish different “tag sources.” 516 PO Sur-Reply 8−9. According to
`20
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`Patent Owner, an arbitrary collection of tags could qualify as a “tag source”
`with no objective criteria that would allow a person of ordinary skill in the
`art to determine how many “tag sources” are present in the prior art. Id. at
`9−10. We agree, but we explain the difference between “recognizability”
`and “distinctness.” “Recognizability” as proposed by Petitioner and the
`concept of distinctness of tag sources are two different characteristics of the
`tag sources. As stated above, the claim language already provides for
`recognizability of ta
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