Trials@uspto.gov
`571-272-7822
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` Paper No. 8
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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 IPR2019-00528
`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
`
`
`
`
`
`
`571-272-7822
`
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`
`
`
`
` Paper No. 8
`
` 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 IPR2019-00528
`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
`
`
`
`
`
`
`
`IPR2019-00528
`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 7, “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 5, 2. In
`addition, four days prior to filing this Petition, Petitioner filed a petition
`seeking inter partes review of the ’173 patent in IPR2019-00516 (“the
`’516 IPR”). ’516 IPR, Paper 5, 1. Our decision instituting inter partes
`review in the ’516 IPR issued concurrently with this Decision.
`
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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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`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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`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):
`
`Basis
`
`References
`
`Ground
`
`Claims
`1, 2, 4, 6–8, 10,
`§ 103 MacLaurin1
`1
`12–14, 16, 18
`2, 8, 10, 14, 16 § 103 MacLaurin and Ortega2
`2
`1, 2, 4, 6–8, 10,
`§ 103 MacLaurin and Rothmuller3
`3
`12–14, 16, 18
`2, 8, 10, 14, 16 § 103 MacLaurin, Rothmuller, and Ortega
`4
`
`1 MacLaurin, US 7,831,913 B2, issued Nov. 9, 2010 (Ex. 1006).
`2 Ortega, US 6,564,213 B1, issued May 13, 2003 (Ex. 1007).
`3 Rothmuller, US 7,415,662 B2, issued Aug. 19, 2008 (Ex. 1004).
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`Ground
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`5
`6
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`Basis
`
`Claims
`1, 2, 4, 6–8, 10,
`§ 103 MacLaurin and Plotkin4
`12–14, 16, 18
`2, 8, 10, 14, 16 § 103 MacLaurin, Plotkin, and Ortega
`
`References
`
`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. 9 (citing Ex. 1002 ¶¶ 12–15). Patent
`Owner does not address the requisite level of skill in its Preliminary
`Response.
`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).
`
`
`4 Plotkin, How to Do Everything with Photoshop Elements 4.0 (Ex. 1008).
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`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. 12 (“For purposes of
`the prior art cited herein, Petitioner does not, at this time, contend that any
`term requires express construction.”); id. at 13 (“As noted, the other grounds
`are presented primarily in the event of narrow claim construction positions
`the Patent Owner may raise during these proceedings, or strained readings of
`the MacLa[u]r[i]n reference the Patent Owner may advance.”); 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
`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
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`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
`MacLaurin
`Petitioner contends that claims 1, 2, 4, 6–8, 10, 12–14, 16, and 18 are
`rendered obvious by MacLaurin alone, or in combination with Rothmuller or
`Plotkin, and/or Ortega. Pet. 24–67. To support its contentions, Petitioner
`cites to Dr. Chatterjee’s declaration testimony (Ex. 1002).
`Patent Owner disagrees and asserts that the MacLaurin grounds fail to
`teach or suggest “displaying a tag type indicator . . . indicative of a tag
`source.” Prelim. Resp. 28–36. Patent Owner additionally argues that the
`MacLaurin grounds fail to teach or suggest “displaying a tag list including
`tags.” Id. at 36–43.
`1. Overview of the Asserted References
`a. 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
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`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
`can be distinguished utilizing different sizes, fonts, colors, and/or symbols
`and the like.” Id. at 8:19–25.
`
`b. 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.
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`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.
`c. 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.
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`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.
`
`
`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.
`
`d. 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.
`2. Analysis
`Petitioner asserts that independent claims 1, 7, and 13 are rendered
`obvious by MacLaurin alone, or in combination with Rothmuller or Plotkin.5
`Pet. 24–40, 46, 49, 55–67. 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 1.6
`Petitioner contends that MacLaurin teaches “[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. 24–28. Specifically, Petitioner asserts that MacLaurin
`discloses a user interface for tagging computer files, including digital
`photographs, with multiple tags, and suggests reasons for applying
`additional tags to a photograph that has already been tagged. Id. (citing,
`inter alia, Ex. 1002 ¶¶ 63, 65–67; Ex. 1006, 2:1–5, 6:42–44, 6:53–58, 6:62–
`67, 7:66–8:18, Fig. 8).
`
`
`5 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 MacLaurin alone, or in
`combination with Rothmuller or Plotkin, and/or Ortega. See Pet. 40–67. 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.
`6 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 also contends that MacLaurin teaches 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). Pet. 28–34. For
`example, Petitioner points to MacLaurin’s disclosure that the tagging
`component can use the user interface to detect when a user is typing and
`“attempt guesses for possible tag suggestions for the user” that “mimic the
`characters disclosed up to that point” as teaching that “MacLaurin can
`receive partially-entered tag input (a ‘search string’) from the user and
`provide a list of possible tag suggestions (‘tag list’).” Pet. 28–29 (quoting
`Ex. 1006, 5:25–37) (emphasis omitted). Petitioner also identifies
`MacLaurin’s teaching that “the selection-based tagging component 102 can
`respond with tag suggestions that utilize each character that the user 104
`types into a keyboard, providing a list of tag suggestions that utilize at least
`some of the typed characters” as supporting its position. Id. (quoting
`Ex. 1006, 4:42–48) (emphasis omitted). Relying on Dr. Chatterjee,
`Petitioner further contends that an ordinarily skilled artisan would have
`recognized MacLaurin’s “light ‘tagging mode,’” described in Part II.C.1.a.,
`above, as suggesting the presentation of tag suggestions in a tag list in
`response to a search string entered by a user. Id. at 30 (citing Ex. 1002 ¶ 70;
`Ex. 1006, 7:66–8:26). In this regard, Petitioner points out that MacLaurin
`expressly discloses that its “light ‘tagging mode’” “allow[s] a user to choose
`between ‘tag guesses’ using cursor arrows,” and explains that the ability to
`move between tag guesses using cursor arrows “would have clearly
`suggested the existence of a list.” Id. (quoting Ex. 1006, 7:66–8:22; citing
`Ex. 1002 ¶ 70).
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`As to the requirement that the tag list must include “tags from one or
`more tag sources” (Ex. 1001, 9:16–17), Petitioner provides two distinct
`explanations regarding how MacLaurin discloses this claim element.
`Petitioner first contends that MacLaurin teaches two “tag sources” in the
`form of: “(1) a stored collection of ‘automatic’ tags; and (2) a stored
`collection of ‘explicit’ tags.” Pet. 31. Petitioner identifies the following
`passage from MacLaurin as supporting its position:
`The 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. A user
`may have high confidence in their explicit tags and lesser
`confidence in system generated tags.
`Id. (quoting Ex. 1006, 7:48–53). Relying on Dr. Chatterjee, Petitioner
`reasons that “[a] person of ordinary skill would therefore have understood
`and found it obvious that ‘automatic tags’ refer to a collection of tags
`automatically generated by the system (and subsequently stored), and
`‘explicit tags’ refer to a collection of tags defined and stored by the user.”
`Id. at 32 (citing Ex. 1002 ¶ 74). Petitioner additionally asserts that
`MacLaurin teaches including tags from one or more tag sources in the tag
`list because
`MacLaurin discloses, in the context of a “light ‘tagging mode’”
`(MacLaurin, 7:66–8:3), that “if an automated tag and an explicit
`tag (one entered by a user) are both presented to the user, each
`type of tag can be distinguished utilizing different sizes, fonts,
`colors, and/or symbols and the like.” (MacLaurin, 8:19–23.)
`Id. at 33.
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`Petitioner also argues that MacLaurin’s disclosure of “internal” and
`“external” tag sources satisfies the requirement that the tag list must include
`“tags from one or more tag sources” (Ex. 1001, 9:16–17). Pet. 33–34.
`According to Petitioner,
`MacLaurin discloses use of “external tag sources,” e.g., an
`“attorney tag list” obtained from the Internet and a “medical
`profession tag set” retrieved from an online service. These
`external tag sources thus provide a separate basis from the
`internal “automatic” and “explicit” tag sources for meeting the
`“tag source” limitation. (Chatterjee, ¶¶77–78.)
`Pet. 34 (emphasis omitted).
`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
`MacLaurin alone, or in combination with either of Rothmuller or Plotkin,
`meets this claim requirement. Pet. 35–40, 55–67.
`Petitioner first points to MacLaurin’s teaching “that ‘if an automated
`tag and an explicit tag (one entered by a user) are both presented to the user,
`each type of tag can be distinguished utilizing different sizes, fonts, colors,
`and/or symbols and the like’” as suggesting this claim element. Pet. 37
`(quoting Ex. 1006, 8:19–23). According to Petitioner, in view of this and
`related teachings, an ordinarily skilled artisan would have understood that
`“MacLaurin would have involved the display of a tag type indicator for each
`tag presented to the user; otherwise the system could not visually convey to
`the user whether each suggested tag was an explicit or automatic tag.” Id.
`(citing Ex. 1002 ¶ 82) (emphasis omitted). Petitioner further reasons that, as
`explained above, that each “tag type” disclosed by MacLaurin corresponds
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`to a particular “tag source,” and, thus, “[e]ach tag type in MacLaurin []
`serves as an indication and is suggestive of the source from which tags of
`that tag type originated.” Id. at 38.
`Petitioner separately asserts that
`Although MacLaurin discloses a tag type indicator in the
`context of “automatic” and “explicit” tags, MacLaurin’s stated
`motivation – to allow the user to visually distinguish one type of
`tag from another (MacLaurin, 7:49-51, 8:20-23) – would have
`been understood by persons of ordinary skill to apply to other
`types of tags as well. (Chatterjee, ¶¶85, 100.) That same
`rationale would therefore have motivated a person of ordinary
`skill to provide tag type indicators for different “external” tag
`types. (Id.)
`Pet. 40.
`Petitioner also asserts that the combination of MacLaurin and
`Rothmuller 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. 55–60. Relying on the aspects of MacLaurin
`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 56 (quoting Ex. 1005, 68)
`(emphasis omitted). Petitioner further asserts that an ordinarily skilled
`artisan would have sought to combine MacLaurin and Rothmuller based on
`MacLaurin’s teachings that “each type of tag can be distinguished utilizing
`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.” Id. at 59–60 (quoting
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`Patent 8,279,173 B2
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`Ex. 1006, 8:19–23, 7:48–51). According to Petitioner, MacLaurin
`“expressly provides a motivation a person of ordinary skill would have had
`to adapt its tag list to show a separate tag type indicator for each tag – to
`allow the user to easily distinguish each tag in the tag list from the other tags
`based on its tag type.” Id. at 60 (citing Ex. 1002 ¶ 99). In this regard,
`Petitioner points to MacLaurin’s disclosure that “automatic” and “explicit”
`tags may not have equal weight to a user as further supporting the proposed
`combination. Id. (citing Ex. 1002 ¶ 99). Petitioner additionally reasons that
`“[t]his motivation is not limited to distinguishing between ‘automatic’ and
`‘explicit’ tags – it applies equally to distinguishing between tags from
`different ‘external’ tag sources.” Id. (citing Ex. 1002 ¶¶ 85, 100).
`Petitioner’s arguments concerning the combination of MacLaurin and
`Plotkin closely mirror those asserted as to the aforementioned combination
`of MacLaurin and Rothmuller. Compare Pet. 61–67 with id. at 55–61.
`Specifically, Petitioner asserts that Plotkin discloses an embodiment in
`which a tag category icon is shown next to each tag in a tag list. Id. at 63–64
`(citing Ex. 1008, 328). Petitioner contends that the same “motivations for
`adapting MacLaurin’s tag list to include tag type indicators” discussed above
`concerning the combination of MacLaurin and Rothmuller apply to the
`combination of MacLaurin and Plotkin. Id. at 66. 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 to the tag list in MacLaurin.” Id. (citing Ex. 1002 ¶ 110).
`Petitioner also argues that Plotkin’s disclosure of using tag type indicators
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`IPR2019-00528
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`“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. at 67 (citing Ex. 1002 ¶ 111).
`Based on our review of the current record, we agree at this juncture
`with Petitioner’s characterization of the teachings of MacLaurin,
`Rothmuller, and Plotkin, 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 below.
`Patent Owner asserts that Petitioner’s obviousness arguments fail
`because MacLaurin does not teach or suggest displaying “a tag list including
`tags from one or more tag sources matching a search string” (see, e.g.,
`Ex. 1001, 9:16–17), as required by the challenged claims. Prelim. Resp. 36–
`43. At this stage of the proceeding, based on the limited record before us,
`we do not agree with Patent Owner’s narrow reading of MacLaurin, or its
`characterization of Petitioner’s obviousness arguments.
`Although Patent Owner is correct that Figure 8 of MacLaurin depicts
`only one “best-guess” tag, rather than a list of several such tags (Prelim.
`Resp. 38), Petitioner’s reliance on MacLaurin is not so limited. Rather,
`Petitioner identifies several other disclosures in MacLaurin as teaching or
`suggesting displaying tags matching a search string in a tag list. Pet. 28–31.
`For example, Petitioner points to MacLaurin’s disclosure that “the selection-
`based tagging component 102 can respond with tag suggestions that utilize
`each character that the user 104 types into a keyboard, providing a list of tag
`suggestions that utilize at least some of the typed characters” as supporting
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`its obviousness argument. Id. at 29 (quoting Ex. 1006, 4:42–48). Petitioner
`additionally identifies MacLaurin’s “light ‘tagging mode’” as teaching or
`suggesting display of the recited list. Id. at 29–30 (quoting Ex. 1006, 7:66–
`8:22; citing Ex. 1002 ¶ 70).
`Based on the current record, we find Petitioner’s arguments
`persuasive. First, Petitioner’s explanation that MacLaurin’s “light ‘tagging
`mode’” accumulates user key strokes in a “tag buffer” that is used to “guess
`at likely tags,” and “allow[s] a user to choose between ‘tag guesses’ using
`cursor arrows” is based directly on MacLaurin’s express teachings, and is,
`therefore, credible. Pet. 30 (quoting Ex. 1006, 8:2–12) (emphasis omitted).
`In addition, relying on Dr. Chatterjee’s testimony, Petitioner persuasively
`argues that the above teaching of MacLaurin, and in particular the statement
`“that the user can choose between ‘tag guesses’ using cursor arrows,”
`“would have clearly suggested the existence of a list.” Id. (quoting
`Ex. 1006, 8:11–12; citing Ex. 1002 ¶ 70) (citations omitted). We are
`likewise persuaded, for purposes of this Decision, by Petitioner’s argument
`that MacLaurin’s disclosure of a tagging component that, based on user
`input, can provide a list of possible tag suggestions, buttresses the contention
`that an ordinarily skilled artisan would have recognized MacLaurin’s “light
`‘tagging mode’” to teach or suggest displaying the disclosed “tag guesses” in
`a list. Id. at 30–31 (quoting Ex. 1006, 4:44–47, 5:31–33). In making this
`determination, we note our disagreement with Patent Owner’s
`characterization of Petitioner’s analysis as “conclusory.” Prelim. Resp. 42.
`To the contrary, as outlined above, Petitioner, relying on Dr. Chatterjee,
`provides persuasive reasons why an ordinarily skilled artisan would have
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`recognized MacLaurin’s “light ‘tagging mode’” to suggest displaying “a tag
`list including tags from one or more tag sources matching a search string”
`(see, e.g., Ex. 1001, 9:16–17), as required by the challenged claims.
`Second, Patent Owner’s assertion that “MacLa
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