Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 49
`Entered: July 16, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`WHATSAPP INC.,
`Petitioner,
`v.
`TRIPLAY, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-00717
`Patent 8,874,677 B2
`_______________
`
`
`Before JOSIAH C. COCKS, BRIAN J. MCNAMARA, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`IPPOLITO, Administrative Patent Judge.
`
`
`
`DECISION ON REMAND
`35 U.S.C. § 318(a) and 35 U.S.C. § 144
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`I.
`
`INTRODUCTION
`
`A. Background
`WhatsApp Inc. (“Petitioner”) filed a Petition requesting inter partes
`review of claims 1–5, 11–14, and 16–21 of U.S. Patent No. 8,874,677 B2
`(Ex. 1001, “the ’677 patent”). Paper 1 (“Pet.”). TriPlay, Inc. (“Patent
`Owner”) filed a Preliminary Response. Paper 12 (“Prelim. Resp.”).
`Based on these submissions, we instituted an inter partes review of
`claims 1, 2, 11, 13, 14, 16, 17, 20, and 21 of the ’677 patent based on
`Petitioner’s asserted challenge that these claims are unpatentable under
`35 U.S.C. § 103 as obvious over Coulombe,1 Bellordre,2 and Friedman3.
`Paper 15 (“Dec.”).
`After institution, Patent Owner filed its Patent Owner Response on
`December 16, 2016 (Paper 21, “PO Resp.”) and Petitioner filed a Reply
`(Paper 26, “Reply”). An oral hearing was held on June 12, 2017. A
`transcript of that hearing is available at Paper 41 (“2017 Tr.”).
`In due course, we issued a final written decision determining that
`Petitioner had not shown by a preponderance of the evidence that claims 1,
`2, 11, 13, 14, 16, 17, 20, and 21 of the ’677 patent are unpatentable. Paper
`42, 25 (“Final Written Decision” or “FWD”).
`Petitioner appealed our final written decision to the United States
`Court of Appeals for the Federal Circuit. The court issued its decision
`vacating our written decision and remanding this case to the Board on
`
`
`1 US 2003/0236892 A1 (Dec. 25, 2003) (Ex. 1003).
`2 US 2006/0176902 A1 (Aug. 10, 2006) (Ex. 1004).
`3 US 7,593,991 B2 (Sept. 22, 2009) (Ex. 1005).
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`November 14, 2018. WhatsApp, Inc. v. TriPlay, Inc., 752 F. App’x 1011
`(Fed. Cir. 2018) (nonprecedential) (“Remand Decision”).
`Following remand, a conference call was held between the parties and
`the panel. See Paper 44. On the call, the parties both indicated that post-
`remand briefing was not necessary in this proceeding. Id. The parties did,
`however, jointly request a supplemental oral hearing to address the
`remaining remanded issues, namely the evidence and arguments the parties
`have submitted previously regarding the combination of prior art references
`asserted in the Petition. Id. at 2. We granted the parties’ joint request. Id. at
`2–3. On March 5, 2019, a supplemental oral hearing was held with
`Petitioner and Patent Owner. A transcript of that hearing is available at
`Paper 47 (“2019 Tr.”).
`For the reasons that follow, we determine Petitioner has demonstrated,
`by a preponderance of the evidence, that claims 1, 2, 11, 13, 14, 16, 17, 20,
`and 21 of the ’677 patent are unpatentable.4
`
`
`4 In the Petition, Petitioner initially also presented challenges to the
`patentability of claims 3–5, 12, 18, and 19 of the ’677 patent. We, however,
`were not persuaded that Petitioner was likely to prevail in those challenges,
`and we did not institute trial as to those claims. See Paper 15. Petitioner did
`not request rehearing. On April 24, 2018, the Supreme Court issued SAS
`Institute, Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018), which held that we
`may not institute trial on fewer than all claims. The Federal Circuit,
`however, has determined that “a party’s request for SAS relief can be
`waived.” Mylan Pharm. Inc. v. Research Corp. Techs, Inc., 914 F.3d 1366,
`1376 (Fed. Cir. 2019). In this case, neither party has raised any issue
`pertaining to claims 3–5, 12, 18, and 19 as a part of the trial in this
`proceeding, before the Federal Circuit, or now on Remand. Indeed, when
`queried, the parties expressly stated that no further briefing on any issue was
`necessary (Paper 44, 2), and no mention or discussion of claims 3–5, 12, 18,
`and 19 was made at the supplemental oral argument on March 5, 2019. In
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`B. Related Proceedings
` The ’677 patent is also involved in IPR2016-00718.5 The parties
`indicate that the ’677 patent is the subject of pending litigation captioned
`TriPlay, Inc. v. WhatsApp Inc., Case No. 1:13-cv-1703-LPS (D. Del.). Pet.
`1; Paper 5, 2. Additionally, the parent to the ’677 patent, U.S. Patent No.
`8,332,475, was involved in IPR2015-00740. Pet. 1.
`
`C. The ’677 Patent
`The ’677 patent issued October 28, 2014 from an application filed
`November 16, 2012, and claims priority to a provisional application filed
`August 22, 2005. Ex. 1001, cover page. The ’677 patent is directed to
`“cross-platform messaging” and describes a messaging system that converts
`the formats and layouts of messages sent between communication devices
`that may have different communication and display capabilities. Id.,
`Abstract, 11:53–56. Figure 1, reproduced below, illustrates a network
`architecture in which the messaging system may be used.
`
`
`light of the circumstances present here, we determine that the parties have
`waived any SAS issue pertaining to claims 3–5, 12, 18, and 19. Accordingly,
`we do not address claims 3–5, 12, 18, and 19 as a part of this Decision on
`Remand.
`5 A post-remand Final Written Decision in IPR2016-00718 has been issued
`concurrently with the present Decision.
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`Figure 1 depicts various communication devices 11 (e.g., cell phone, PC)
`connected to at least one of Internet 12, Cellular Operator Network 13, etc.
`Id. at 11:30–40. Messages from an originating device to a destination device
`pass through messaging system 16, where at least one of the devices is
`assigned to a user registered in the system. Id. at 12:12–13. Messaging
`System 16 supports a variety of message formats such as text, video, and
`image. Id. at 12:16–21.
`Figure 6, reproduced below, depicts an example of the messaging
`system’s operation.
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`As shown in Figure 6, Subscriber A composes a message at one of the
`communication devices assigned and sends the message to Subscriber B and
`Non-subscriber C. Id. at 16:40–42. Messaging system 16 receives the
`message and analyzes at 61 originating and destination addresses comprised
`in the message. Id. at 16:44–46. If the destination device is assigned to a
`subscriber, the system analyzes destination device 62 and makes a delivery
`decision 63 accordingly. Id. at 16:45–49. The delivery decision comprises
`deciding, e.g., the content, format, and/or layout of the message to be
`delivered. Id. at 16:45–57. “In accordance with the delivery decision, the
`system provides transcoding of the message format 64 and/or adapting
`[message] layout 65 and appropriate repackaging 66 if necessary (for
`example, if limitations [of the] communication media and/or destination
`device . . . require deleting or replacing some of the media items in the
`message).” Id. at 16:64–17:3. “The converted message and/or notification
`thereof are delivered 67 to the destination device, and the transaction is
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`registered 68 in the system.” Id. at 17:4–6. “The described process may be
`provided in a similar manner for several destination devices.” Id. at 17:6–9.
`The ’677 patent further describes facilitating composing messages
`using “pre-defined templates.” Id. at 19:40–42. The ’677 patent describes
`different template “types,” each having different “Content Structures.” Id. at
`19:50–66 (Table 1). “Each type of template and/or each template is
`provided with [a] unique identifier [that can be] recognized by the message
`system and/or client and stored in the message metadata.” Id. at 19:45–48.
`The template layout may depend on the capabilities of the destination
`device. Id. at 20:50–52. For example, Table 2 of the ’677 patent describes a
`“General” template type with different layouts for PC, Web, and cell-phone
`display. For audio/video media, the cell phone layout contains a clickable
`icon into the video. Id., Table 2. “Among advantages of certain aspects of
`the present invention is reduction in need of content analysis and ability to
`provide layout-related delivery instructions based on pre-defined rules and
`parameters (e.g., in a form of a look-up table).” Id. at 20:63–67.
`
`D. The Challenged Claims
`Of the challenged claims, claims 1, 11, and 13 are independent.
`
`Claim 1 is illustrative, and is reproduced below:
`
`A method comprising:
`1.
`receiving, by a messaging system, an initial message sent
`by an originating communication device to a destination
`communication device, the initial message being characterized,
`at least, by message format, an initial message layout and data
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`indicative of at least one receiver associated with the initial
`message, wherein the initial message includes a video;
`obtaining, by the messaging system, data indicative of
`displaying capabilities of the destination communication device;
`before delivery to the destination communication device
`associated with the at least one receiver, enabling, by the
`messaging system, conversion, in accordance with a criterion
`related
`to
`the displaying capabilities of
`the destination
`communication device, of the initial message into an adapted
`message, wherein the conversion comprises:
`a) providing, by the messaging system, a clickable icon:
`based on the video from the initial message
`i)
`and
`clickable into an adapted version of the
`video, wherein the adapted version of the
`video is adapted to the displaying capabilities
`of the destination communication device, and
`b) determining, by the messaging system, an adapted
`message layout, comprising the clickable icon; and
`facilitating, by the messaging system, delivery of the
`adapted message to the destination communication
`device.
`
`ii)
`
`II. ANALYSIS
`
`A. Federal Circuit Remand Decision
`In our final written decision, we determined that Petitioner had not
`explained sufficiently its reasoning for the combination of Coulombe’s
`message adaptation system with Bellordre’s video adaptation and delivery
`processes. FWD 16–25. We did not reach Patent Owner’s arguments
`regarding the three reference combination—Coulombe, Bellordre, and
`Friedman—because we had determined there to be deficiencies in
`Petitioner’s arguments regarding the combination of two of the references:
`Coulombe and Bellordre. Id.
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`In the Remand Decision, the Federal Circuit vacated our final written
`decision and determined that Petitioner had provided sufficient evidence,
`including submitted articles and testimony from Petitioner’s expert
`Mr. Klausner, to establish “that there was a motivation to combine the
`messaging system of Coulombe with the video of Bellordre.” WhatsApp,
`752 F. App’x at 1015–17. Our reviewing court further noted that the Board
`had not addressed Patent Owner’s alternative arguments that Petitioner has
`failed to establish a motivation to combine Friedman with Coulombe and
`Bellordre, i.e., all three references. Id. at 1017. The Federal Circuit vacated
`our decision and remanded the proceeding for the Board to specifically
`consider the motivation to combine the clickable icons of Friedman with
`Coulombe and Bellordre. Id. More particularly, the Federal Circuit directly
`instructed that
`petitioners presented expert testimony from Mr. Klausner that
`“the advantage of Friedman’s clickable thumbnail graphic is
`‘self-explanatory’ – it ‘makes it possible to view a video object
`by clicking on an icon.’ ” J.A. 940–41 ¶ 45. He explained that
`this was a “simple combination” that “would ... not have required
`even the experience of a skilled artisan to appreciate the clear
`benefits of this combination.” Id. Mr. Klausner further testified
`that combining the clickable icons of Friedman with Coulombe
`and Bellordre would have been viewed as “particularly
`advantageous” because “one of ordinary skill in the art would
`have appreciated that pictorial icons.... allow a message recipient
`to make a more informed decision of whether he or she wants to
`download the video from the messaging server, thereby
`conserving device and network resources.” Id. ¶ 48. The Board
`has not addressed this testimony.
`WhatsApp, 752 F. App’x at 1017 (emphasis added).
`
`With the Federal Circuit’s instructions in mind, we turn to Petitioner’s
`obviousness challenge and the remaining remanded issues before us.
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`B. Claim Construction
`The ’677 patent has not expired, and the Petition was filed prior to
`November 13, 2018. See Paper 3. Therefore, we interpret terms of the
`challenged claims according to their broadest reasonable interpretation in
`light of the specification of the ’677 patent. See 37 C.F.R. § 42.100(b)
`(2015); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)
`(upholding the use of the broadest reasonable interpretation standard).6
`In the vacated final written decision, we gave all terms their ordinary
`and customary meanings and determined that no express construction was
`necessary based on that record before us. FWD 6–7. The current, post-
`remand record does not raise any claim construction issues. Thus, we give
`all terms the same ordinary and customary meanings and do not expressly
`construe any specific claim term on this record. See Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those
`terms need be construed that are in controversy, and only to the extent
`necessary to resolve the controversy.”); see also Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(applying Vivid Techs. in the context of an inter partes review).
`
`Principles of Law
`C.
`A claim is unpatentable under § 103 if “the differences between the
`subject matter . . . and the prior art are such that the subject matter as a
`
`6 See also Changes to the Claim Construction Standard for Interpreting
`Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83
`Fed. Reg. 51,340, 51,344 (Oct. 11, 2018) (“The Office will continue to apply
`the BRI standard for construing unexpired patent claims . . . in AIA
`proceedings where a petition was filed before the [November 13, 2018]
`effective date of the rule.”).
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`whole would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.”
`35 U.S.C. § 103. The ultimate determination of obviousness under § 103 is
`a question of law based on underlying factual findings. In re Baxter Int’l,
`Inc., 678 F.3d 1357, 1361 (Fed. Cir. 2012) (citing Graham v. John Deere
`Co., 383 U.S. 1, 17–18 (1966)). These underlying factual considerations
`consist of: (1) the “level of ordinary skill in the pertinent art,” (2) the “scope
`and content of the prior art,” (3) the “differences between the prior art and
`the claims at issue,” and (4) “secondary considerations” of non-obviousness
`such as “commercial success, long felt but unsolved needs, failure of others,
`etc.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting
`Graham, 383 U.S. at 17–18).
`We analyze the remaining obviousness issues based on the principles
`identified above.
`
`Level of Skill in the Art
`D.
`Petitioner’s declarant, Mr. David Klausner, testifies that a person of
`ordinary skill in the art at the time of the invention would have had “at least
`a bachelor’s degree in electrical engineering or computer science (or
`equivalent degree or experience) with at least two years of experience in the
`design and implementation of systems for sending and receiving messages
`over a communications network, such as the Internet.” Ex. 1002 ¶ 16.
`Mr. Klausner adds that this “experience would include an understanding of
`(a) network communications protocols used to exchange messages over a
`network (such as the Hypertext Transport Protocol (HTTP), Simple Mail
`Transfer Protocol (SMTP) or Session Initiated Protocol (SIP)), and
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`(b) formats that can be used to encode the messages exchanged over the
`network.” Id.
`Patent Owner’s declarant, Dr. Rajeev Surati, testifies a person of
`ordinary skill in the art at the time of the invention is a person with a
`bachelor’s degree in either electrical engineering or computer science, at
`least two years of experience designing and implementing messaging
`systems between user devices, and at least one year of experience working
`with format encoding and layout of images or video. Ex. 2002 ¶ 32.
`We do not perceive any meaningful difference between the parties’
`definitions of the technical field or the required experience. For example,
`both experts testify that the level of ordinary skill entails a bachelor’s degree
`in electrical engineering or computer science, and at least two years of
`experience in designing and implementing messaging systems. Ex. 1002
`¶ 16; Ex. 2002 ¶ 32. Based on the complete remand record, including our
`review of the ’677 patent and the types of problems and solutions described
`in the ’677 patent and cited prior art, we determine that our analysis would
`be the same using either definition. As noted, we have also considered the
`cited references as representative of the level of ordinary skill in the art. See
`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the level of
`ordinary skill in the art may be evidenced by the cited references
`themselves).
`
`E.
`
`Claims 1, 2, 11, 13, 14, 16, 17, 20, and 21—Obviousness over
`Coulombe, Bellordre, and Friedman
`We instituted trial on Petitioner’s challenge that the subject matter of
`claims 1, 2, 11, 13, 14, 16, 17, 20, and 21 would have been obvious over the
`combination of Coulombe, Bellordre, and Friedman. Dec. on Inst. 7–17, 21;
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`see Pet. 11–38. Having now considered the evidence in the complete post-
`remand record, we determine Petitioner has demonstrated by a
`preponderance of the evidence that the challenged claims would have been
`obvious over those references in combination.
`Coulombe
`1.
`Coulombe, titled “System for Adaptation of SIP Messages Based on
`Recipient’s Terminal Capabilities and Preferences,” published December 25,
`2003, from an application filed May 31, 2002. Ex. 1003, cover page.
`Coulombe describes a system for adaptation of SIP messages based on the
`recipient’s terminal capabilities and preferences. Id., Abstract. Coulombe
`discloses that the described invention “tries to overcome the problem of
`interoperability between terminals and to improve the end user experience
`by providing a framework for making SIP messages conform to the
`recipient’s terminal capability and characteristics.” Id. ¶ 7. For example,
`Coulombe describes message size reduction and format adaptation for
`delivery to the destination terminal. Id.
`Figure 1 is reproduced below.
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`Figure 1 shows a message flow for SIP message adaptation using system 10.
`System 10 includes SIP proxy/registrar 12, Capability Negotiation Manager
`16, and Message Adaptation Engine 20. Id. ¶ 54. Coulombe discloses that
`when new message 18 arrives at proxy/registrar 12 from another entity, such
`as sending terminal 19, proxy 12 obtains the terminal capabilities or user
`preferences of intended recipient’s terminal 15 already stored in the
`registrar, adapts the message (using Message Adaptation Engine 20), and
`sends adapted message 22 to recipient’s terminal 15. Id. ¶ 58. Capability
`Negotiation Manager 16 is responsible for resolving terminal capability
`information. Id. ¶ 59. Message Adaptation Engine 20 is responsible for
`adapting the message for recipient terminal 15 by performing format
`conversion, presentation adaptation, media characteristics adaptation,
`message size reduction, and encapsulation adaptation, as needed. Id. ¶¶ 63,
`85–91. Coulombe further teaches that “adaptation is any manipulation or
`modification of the message content based on the terminal capabilities, user
`preferences, network conditions, or any characteristics of the user, his
`terminal or his environment.” Id. ¶ 63.
`Bellordre
`2.
`Bellordre relates to “a method of processing a multimedia message
`and a corresponding processing system.” Ex. 1004 ¶ 1. Multimedia
`messages may contain text, picture, audio, and/or video objects. Id. ¶ 4.
`Bellordre’s message-processing system receives a multimedia message from
`a receiver, extracts any audio or video object from the message, “adapt[s]
`the format, sound and size of the audio and video objects to the technical
`features of the destination terminal,” and stores the adapted message. Id.
`¶¶ 17–19, 57, 47, 69. Adapting a video object may entail “modifying its size
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`(number of pixels) to adapt it to the size of the screen of the [receiving
`terminal], or reducing its size (number of bytes) to take account of the object
`reception characteristics.” Id. ¶ 62. The system then sends to the intended
`recipient a “substitute message.” Figures 3 and 4, reproduced below,
`compare the initial message and substitute message:
`
`
`
`Fig. 3 Fig. 4
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`Figure 3 depicts multimedia message 21 comprising, e.g.,
`identification element 23 identifying the terminal receiving the message,
`audio or video object 24, and text object 25. Id. ¶ 46. Substitute message
`26, depicted in Figure 4 retains identification element 23 and text object 25,
`and further contains sequence 27 and “SDP definition file 28 replacing the
`audio or video object 24.” Id. ¶ 47. Sequence 27 is an object comprising
`one or more representative extracts from the audio or video object, such as
`one or more pictures from a video (animated GIF) or a musical excerpt.
`Id. ¶ 48. SDP definition file 28 contains URL hyperlink address 29 of the
`storage location of the object. Id. ¶ 49.
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`Friedman
`3.
`Friedman discloses a system for processing attachments in electronic
`messages. Ex. 1005, 1:7–9, 2:40–42. Friedman defines “attachment” as any
`object—e.g., text file, image file, or video file—that is “transported inside,
`outside, and/or along with, an electronic message.” Id. at 8:1–9. Friedman’s
`attachment processing system: (1) automatically detaches and saves the
`contents of the object; (2) generates a “thumbnail graphic” for a portion of
`the object; and (3) displays the thumbnail graphic in a display area of a
`graphical user interface. Id. at 8:30–34, 8:59–60, 9:5–7, Figs. 5A, 5B.
`Figure 4, reproduced below, illustrates one embodiment of the system’s
`graphical user interface:
`
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`
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`Figure 4 depicts graphical user interface 500 having display area 510
`showing multiple thumbnail graphics representing email attachments. Id. at
`7:8–12, Fig. 4. In particular, thumbnail graphic 525, labeled “riddik.mov,”
`represents a video. Id. at 7:19–21, Fig. 4. To open the video, the user may
`double-click on the thumbnail graphic. Id. at 9:21–25.
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`Independent Claims 1, 11, and 13
`4.
`We follow the parties’ lead and treat claim 1 as representative of
`claims 11 and 13, which are the other independent claims challenged in this
`ground. Pet. 32, 34–35.
`Remanded Issue
`a.
`In the course of this proceeding, the parties have not disputed that the
`prior art references disclose all the elements of the challenged claims. For
`example, at the June 2017 Oral Hearing, Patent Owner was asked whether it
`disputes that the prior art references cited in the petition disclose each
`element of each instituted claim. 2017 Tr. 65:17–66:2. Patent Owner
`confirmed that it is “not challenging that the references are missing . . .
`limitations” and that its arguments are “strictly based on motivation.” Id. at
`66:4–8. Further, in the Remand Decision, the Federal Circuit noted that “the
`parties agree that the prior art references disclose all the claim limitations[.]”
`WhatsApp, 752 F. App’x at 1015.
`
`That being said, for convenience, we summarize Petitioner’s
`contentions regarding the limitations of claim 1 that are not in dispute or
`pending our determination at this juncture. Specifically, Petitioner relies on
`Coulombe to teach a messaging system that: (1) receives the initial message
`from an originating communication device characterized, at least, by
`message format, an initial layout, and data indicative of at least one receiver
`associated with the initial message; (2) obtains data indicative of the
`destination communication device; (3) enables conversion of the initial
`message into an adapted message based on the destination device’s display
`capabilities; (4) determines an adapted message layout; and (5) facilitates
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`delivery of the adapted message to the destination communication device.
`Pet. 14–16, 18–21.
`Petitioner acknowledges that Coulombe “does not appear to expressly
`disclose that the message received . . . ‘includes a video.’” Id. at 16.
`Petitioner relies on Bellordre for this limitation, noting that Bellordre teaches
`a message that contains “at least one audio or video multimedia object.”
`Id. at 17. Petitioner further asserts that it would have been obvious to a
`person of ordinary skill to combine Coulombe and Bellordre such that
`Coulombe’s initial message includes video and video adaptation capability
`as taught by Bellordre. Id. at 16–17 (citing Ex. 1002 ¶ 64); Reply 2–17. In
`the Remand Decision, the Federal Circuit concluded that “[g]iven the
`advantages of video as a powerful medium and consumer desire for video, it
`would have been common sense to include the video objects from Bellordre
`in the processing system of Coulombe.” WhatsApp, 752 F. App’x at 1016.
`Thus, the remaining remanded issue before us is narrow and pertains solely
`to determining whether Petitioner’s evidence and arguments provide
`sufficient reasoning for the asserted combination of Friedman’s clickable
`thumbnail graphic with the teachings of Bellordre and Coulombe. Id.
`
`With this background context, we focus our discussion below on the
`parties’ contentions regarding the combination of Friedman’s clickable
`thumbnail graphic with the other two references.
`Discussion
`b.
`Based on the complete record, including the Remand Decision, we
`determine that Petitioner has demonstrated, by a preponderance of the
`evidence, that independent claim 1 (and independent claims 11 and 13)
`would have been obvious over the asserted combination of Coulombe,
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`Bellordre, and Friedman. Specifically, with regard to the remanded issues,
`we find Petitioner articulates sufficient reasoning with some rational
`underpinning to support the asserted combination of Coulombe’s messaging
`system, as modified by Bellordre’s treatment of video files, with Friedman’s
`clickable thumbnail graphic.
`Claim 1 requires the recited “conversion” to provide a “clickable
`icon” that is “based on the video from the initial message and clickable into
`an adapted version of the video, wherein the adapted version of the video is
`adapted to the displaying capabilities of the destination communication
`device.” Claim 1 recites:
`a) providing, by the messaging system, a clickable icon:
`based on the video from the initial message
`i)
`and
`clickable into an adapted version of the
`video, wherein the adapted version of the
`video is adapted to the displaying capabilities
`of the destination communication device, and
`b) determining, by the messaging system, an adapted
`message layout, comprising the clickable icon; and
`facilitating, by the messaging system, delivery of the
`adapted message to the destination communication
`device.
`Ex. 1001, claim 1 (emphasis added).
`For the “clickable icon,” Petitioner relies on Friedman’s teaching of
`“thumbnail graphic 525.” Pet. 21 (citing Ex. 1005, 7:19). Petitioner asserts
`that Friedman’s thumbnail graphic 525 is based on a video attachment
`(“riddick.mov”) attached to an electronic message, and double-clicking on
`the thumbnail graphic opens the video. Pet. 22–23 (citing Ex. 1005,
`passim). Petitioner contends that “[o]ne of ordinary skill in the art would
`therefore have appreciated that generating a clickable thumbnail graphic
`
`ii)
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`would allow for straightforward access to a video attached to a message
`transported by the Coulombe messaging system.” Id. at 25 (citing Ex. 1002
`¶ 74). Petitioner notes that “Friedman does not appear to expressly disclose
`that the thumbnail graphic is clickable ‘into an adapted version of the
`video,’” but that “one of ordinary skill in the art would have been motivated
`to apply the teachings of Friedman to ‘uniquely associate[]’ the generated
`thumbnail graphic with the adapted video of Bellordre” so that Friedman’s
`thumbnail graphic is clickable into Bellordre’s adapted video. Id. at 23–24
`(citing Ex. 1002 ¶ 72).
`We observe first that in the briefs and at the oral hearings, Patent
`Owner argues that Petitioner relies on the combination of only two
`references—Friedman’s clickable thumbnail graphics with Coulombe’s
`video streaming. PO Resp. 44–45 (“Having failed to consider Coulombe’s
`existing video streaming capabilities, Petitioner has also failed to explain
`how Coulombe would be combined with Friedman to generate a ‘clickable
`icon’ for a video stream.”); see 2017 Tr. 37:4–7 (“It doesn’t work to put
`Coulombe video together with Friedman; and therefore, they need Bellordre
`to bridge the gap between the two.”); see also 2019 Tr. 20:2–7.
`For clarity of the record, we note that Petitioner expressly relies on the
`combination of Coulombe’s messaging system, as modified by Bellordre’s
`teachings, with Friedman’s clickable thumbnail graphics. The Petition
`states:
`[I]t would have been obvious to combine Coulombe and
`Bellordre. It would also have been obvious to one of ordinary
`skill in the art to further combine them with Friedman, with no
`change in their respective functions. This combination would
`have predictably resulted in the messaging system of Coulombe
`in which messages received by the SIP Proxy/Registrar (12)
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`encompassed messages that include a video, and in which the
`Message Adaptation Engine (20) provided a thumbnail graphic
`(“clickable icon”) (i) based on the video and (ii) clickable into
`an adapted version of the video. (Klausner Decl., ¶ 73.)
`Pet. 24 (emphasis added).
`Next, turning to the references, we determine that Friedman teaches
`processing attachments in electronic messages and generating a clickable
`icon for those attachments. Ex. 1005, 1:7–9, 2:40–42. Friedman’s
`attachment processing system: (1) automatically detaches and saves the
`contents of the object; (2) generates a “thumbnail graphic” for a portion of
`the object; and (3) displays the thumbnail graphic in a display area of a
`graphical user interface. Id. at 8:30–34, 8:59–60, 9:5–7, Figs. 5A, 5B.
`Referring to Figure 5A, Friedman teaches that the user may double-click the
`thumbnail graphic to open the attachment. See Ex. 1005, 9:21–30.
`Further, we agree with Petitioner that Coulombe’s system 10 includes
`Message Adaptation Engine 20 that may adapt a message having an
`attachment. See, e.g., Pet. 25. System 10 is responsible for adapting the
`message for recipient terminal 15 by performing format conversion,
`presentation adaptation, media characteristics adaptation, message size
`reduction, and encapsulation adaptation, as needed.