`
`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`WHATSAPP, INC., FACEBOOK, INC.,
`Appellants
`
`v.
`
`TRIPLAY, INC.,
`Appellee
`______________________
`
`2017-2549, 2017-2551
`______________________
`
`Appeals from the United States Patent and Trade-
`mark Office, Patent Trial and Appeal Board in Nos.
`IPR2016-00717, IPR2016-00718.
`______________________
`
`Decided: November 14, 2018
`______________________
`
`HEIDI LYN KEEFE, Cooley LLP, Palo Alto, CA, argued
`for appellants. Also represented by REUBEN HO-YEN
`CHEN, MARK R. WEINSTEIN.
`
` MICHAEL ANTHONY NICODEMA, Greenberg Traurig
`LLP, Florham Park, NJ, argued for appellee. Also repre-
`sented by BARRY SCHINDLER.
`______________________
`
`Before DYK, WALLACH, and TARANTO, Circuit Judges.
`
`

`

`2
`
`
`
`WHATSAPP, INC. v. TRIPLAY, INC.
`
`DYK, Circuit Judge.
` WhatsApp, Inc. and its parent, Facebook, Inc., (“peti-
`tioners”) appeal the Patent Trial and Appeal Board’s (“the
`Board”) Final Decisions in IPR Nos. 2016-00717 and
`2016-00718. The Board declined to find claims of U.S.
`Patent No. 8,874,677 (“the ’677 patent”), owned by
`TriPlay, Inc. (“TriPlay”), unpatentable as obvious. We
`vacate and remand.
`
`BACKGROUND
`The ’677 patent, entitled “Messaging System and
`Method,” is directed to an electronic messaging system
`that addresses the problem of “cross-platform messaging,”
`wherein messaging devices have “different communica-
`tion and displaying capabilities and may use different
`communication protocols.” ’677 patent, Abstract; id. col.
`11 ll. 53–56. The specification states that such messages
`may be “any kind of communication objects capable to be
`exchanged between communication devices,” id. col. 10 ll.
`43–46, and that the messaging system of the invention “is
`configured to support a variety of message formats, in-
`cluding, . . . video format (e.g. MPEG family, WMV family,
`3GPP, etc.),” id. col. 12 ll. 16–19. The claims would, for
`example, cover an embodiment in which a PC user and
`cell phone user can send messages to one another contain-
`ing pictures and video.
`Independent claim 1 of the ’677 patent is representa-
`tive:
`1. A method comprising:
`receiving, by a messaging system, an initial mes-
`sage 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 indica-
`tive of at least one receiver associated with the in-
`
`

`

`
`
`WHATSAPP, INC. v. TRIPLAY, INC.
`
`3
`
`itial message, wherein the initial message in-
`cludes a video;
`obtaining, by the messaging system, data indica-
`tive 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 display-
`ing 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:
`i) based on the video from the ini-
`tial message and
`ii) clickable into an adapted ver-
`sion of the video, wherein the
`adapted version of the video is
`adapted to the displaying capabili-
`ties of the destination communica-
`tion 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 communi-
`cation device.
`’677 patent, col. 23 ll. 23–51.
` On March 6, 2016, WhatsApp filed two petitions
`for inter partes review (“IPR”) of claims 1–21 of the ’677
`patent. The PTAB instituted IPR based on the first
`petition as to claims 1, 2, 11, 13, 14, 16, 17, 20, and 21
`
`

`

`4
`
`
`
`WHATSAPP, INC. v. TRIPLAY, INC.
`
`(IPR No. 2016-00717), and based on the second petition as
`to claims 6, 7, and 15 (IPR No. 2016-00718). In both
`institution decisions, the Board concluded that the claims
`were likely unpatentable as obvious over three pieces of
`prior art: U.S. Patent Application No. 2003/0236892
`(“Coulombe”), U.S. Patent Application No. 2006/0176902
`(“Bellordre”), and U.S. Patent No. 7,593,991 (“Friedman”).
`Coulombe, entitled “System for Adaptation of SIP
`Messages Based on Recipient’s Terminal Capabilities and
`Preferences,” is directed to solving the same problem as
`the ’677 patent and does so generally in the same way as
`the ’677 patent. J.A. 222. The Coulombe application
`teaches a messaging system relating to “interoperability
`between terminal devices using session initiation protocol
`(SIP) messages and, more particularly, to multimedia
`content adaptation.” J.A. 225 ¶ [0001]. As with the ’677
`patent, Coulombe recognizes the importance of interoper-
`ability, given the “wide diversity of terminal characteris-
`tics: display size and resolution, available memory,
`formats supported, etc.” J.A. 225 ¶ [0002]. Thus, the
`system described in Coulombe includes a “Capability
`Negotiation Manager” and a “Message Adaptation En-
`gine,” which respectively “resolv[e] terminal capability
`information” and “manipulat[e] or modif[y] . . . message
`content based on the terminal capabilities, user prefer-
`ences, network conditions, or any characteristics of the
`user, his terminal or his environment.”
` J.A. 228
`¶¶ [0059], [0063].
`There is no dispute that Coulombe discloses a majori-
`ty of the claim limitations, with the exception of two
`limitations: adaptation of video objects (a limitation
`petitioners find in Bellordre) and clickable icons (a limita-
`tion petitioners find in Friedman). Together, Coulombe,
`Bellordre, and Friedman disclose all the limitations of the
`’677 patent.
`
`

`

`
`
`WHATSAPP, INC. v. TRIPLAY, INC.
`
`5
`
`Bellordre is directed to solving the same general prob-
`lem as Coulombe and the ’677 patent but solves it in a
`different way. However, Bellordre, unlike Coulombe,
`discloses a method of processing “video objects.” J.A. 238
`¶¶ [0003]–[0004].
`On August 28, 2017, the Board issued final decisions
`in both IPRs declining to find the claims obvious. The
`Board explained that while all elements of the claims
`were disclosed by the cited prior art references, the
`“[p]etitioner has not explained sufficiently its reasoning
`for the combination of Coulombe’s message adaptation
`system with Bellordre’s video adaptation and delivery
`processes.” J.A. 16. The Board’s decision addressed only
`the motivation to combine Coulombe with Bellordre; the
`Board did not address the motivation to combine Fried-
`man with Coulombe and Bellordre.
`As to the Coulombe and Bellordre combination, the
`petitioners’ theory was that one skilled in the art would
`have been motivated to combine the video objects of
`Bellordre with the method of Coulombe because video was
`“more powerful.” J.A. 50. The Board found the petition-
`ers’ “ha[d] not provided the necessary reasoned analysis
`and evidentiary support for the assertion that the incor-
`poration of a video object for adaptation and delivery by
`Coulombe’s system would have been ‘common sense.’”
`J.A. 17–18. The Board stated that the petitioners “ha[d]
`not explained with reasoning or supporting evidence why
`a person of ordinary skill in the art, or a layperson, would
`consider video to be ‘more powerful’ than text or still
`photos.” J.A. 18. Thus, the Board concluded that the
`petitioners and their expert’s “comparison of televisions to
`text and photos is too simplistic and general, and is not
`directed to the particular technology at issue.” J.A. 21.
`Although the claims challenged in the two IPRs were
`different, the reasons given by the Board for finding
`nonobvious the claims at issue were largely identical.
`
`

`

`6
`
`
`
`WHATSAPP, INC. v. TRIPLAY, INC.
`
`The petitioners appeal. This court has jurisdiction
`pursuant
`to 35 U.S.C. § 141(c) and 28 U.S.C.
`§ 1295(a)(4)(A).
`
`DISCUSSION
`We review the Board’s legal conclusions de novo and
`its factual findings for substantial evidence. Redline
`Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 449
`(Fed. Cir. 2015). A claim is unpatentable for obviousness
`where “the differences between the subject matter sought
`to be patented and the prior art are such that the subject
`matter as a 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(a) (2006); accord KSR Int’l Co. v. Teleflex
`Inc., 550 U.S. 398, 406 (2007). Obviousness is a question
`of law based on underlying factual findings. Graham v.
`John Deere Co., 383 U.S. 1, 17–18 (1966); K/S HIMPP v.
`Hear–Wear Techs., LLC, 751 F.3d 1362, 1364 (Fed. Cir.
`2014).
`As part of the obviousness inquiry, we consider
`“whether a person of ordinary skill in the art would have
`been motivated to combine the prior art to achieve the
`claimed invention and whether there would have been a
`reasonable expectation of success in doing so.” DyStar
`Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick
`Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006); see also KSR,
`550 U.S. at 418 (“[I]t can be important to identify a reason
`that would have prompted a person of ordinary skill in
`the relevant field to combine the elements in the same
`way the claimed new invention does.”).
`In KSR, the Supreme Court instructed courts to take
`a more “expansive and flexible approach” in determining
`whether an invention was obvious at the time it was
`made. 550 U.S. at 415. In doing so, the Court noted that
`“common sense . . . can be important to identify a reason
`that would have prompted a person of ordinary skill in
`
`

`

`
`
`WHATSAPP, INC. v. TRIPLAY, INC.
`
`7
`
`the relevant field to combine elements in the way the
`claimed new invention does.” Id. at 418; see also Arendi
`S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 (Fed. Cir.
`2016) (affirming that courts should “consider common
`sense, common wisdom, and common knowledge in ana-
`lyzing obviousness”).
`This court has in some cases been hesitant to use
`common sense to supply a missing limitation, particularly
`where the assertion is conclusory. See Arendi, 832 F.3d at
`1361, 1366 (declining to apply common sense to supply
`missing limitation); K/S HIMPP, 751 F.3d at 1365–66
`(same); Mintz v. Dietz & Watson, Inc., 679 F.3d 1372,
`1377–78 (Fed. Cir. 2012) (same). But see Perfect Web
`Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1330–31
`(Fed. Cir. 2009) (common sense to repeat e-mail distribu-
`tion steps where there existed a goal of reaching a certain
`number of people).
`But, as KSR suggests, common sense has frequently
`been used to support a motivation to combine. See, e.g.,
`Western Union Co. v. MoneyGram Payment Sys., Inc., 626
`F.3d 1361, 1369–70 (Fed. Cir. 2010) (common sense to add
`electronic transaction device from prior art system where
`“such a transition was commonplace in the art”); Ball
`Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc.,
`555 F.3d 984, 991–93 (Fed. Cir. 2009) (common sense to
`combine features that would increase the distance be-
`tween candle holder and table where there existed a
`concern with scorching the supporting surface); see also
`Cimline, Inc. v. Crafco, Inc., 413 F. App’x 240, 245–46
`(Fed. Cir. 2011) (non-precedential) (common sense to
`include a powered conveyor belt).
`Here the parties agree that the prior art references
`disclose all the claim limitations, and common sense is
`argued only to supply a motivation to combine the teach-
`ings of Coulombe and Bellordre. Petitioners in this case
`presented undisputed evidence that video is sometimes a
`
`

`

`8
`
`
`
`WHATSAPP, INC. v. TRIPLAY, INC.
`
`more powerful medium than text or still photographs and
`provided supporting expert testimony to that effect.
`Petitioners’ expert, Mr. Klausner, testified that “people
`have long understood that video information (such as
`television and motion pictures) can provide a more power-
`ful message than text or still photos.” J.A. 163 ¶ 64.
`TriPlay’s expert agreed that “MMS is more powerful
`because you could actually include multimedia content
`with the message.” J.A. 957, 48:22–25. The undisputed
`record also established that consumers valued video. At
`oral argument, TriPlay again agreed that “people value
`video in some contexts.” Oral Arg. at 14:10–14:20.
`Petitioners submitted several articles predating the
`priority date of the ’677 patent (August 2005), which
`illustrate consumer demand for such functionality.1 For
`
`
`1 TriPlay argues that we should not consider this
`evidence because it was first presented in the petitioners’
`reply before the Board. See Intelligent Bio-Sys., Inc. v.
`Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir.
`2016). We do not find this argument persuasive. As an
`initial matter, the petitioners appear to have properly
`raised this evidence in response to arguments made by
`TriPlay’s expert after institution. And in any event, “it is
`incumbent upon the party complaining of some procedural
`violation—such as the inclusion of improper rebuttal in a
`reply brief—to first raise the issue below.” Securus
`Techs., Inc. v. Global Tel*Link Corp., 685 F. App’x 979,
`985 (Fed. Cir. 2017) (non-precedential) (citing Belden Inc.
`v. Berk-Tek LLC, 805 F.3d 1064, 1081 (Fed. Cir. 2015)).
`Because TriPlay did not argue before the Board that
`petitioners raised new arguments in their reply and failed
`to “avail[] itself of the procedures for filing a sur-reply, a
`motion to strike, or a conference call to challenge th[e]
`allegedly improper argument,” we see no reason to enter-
`tain such argument now. Id.
`
`

`

`
`
`WHATSAPP, INC. v. TRIPLAY, INC.
`
`9
`
`example, the petitioners cited an article indicating that,
`prior to 2005, consumers “want[ed] more news on the
`fly—two way communications, full text stories, picture
`displays and, increasingly, video.” J.A. 982; see also J.A.
`975 (“And you thought your camera phone was cool – Yet
`taking photos with mobile phones is so last year – the
`excitement now is video.”). Petitioners also pointed to
`various articles indicating that even before the priority
`date, major mobile carriers and mobile-device manufac-
`turers—including Verizon, AT&T, Sprint, T-Mobile, and
`Samsung—were providing consumers video-messaging
`capability. There was no contrary evidence. Given 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. We conclude that the Board’s con-
`trary conclusion is not supported by substantial evidence.
`Finally, although the Board did not rely on this theo-
`ry, TriPlay argues that there would have been no motiva-
`tion to combine Coulombe and Bellordre because
`Coulombe already discloses video-messaging capability.
`But Coulombe’s sole reference to video describes “video
`calls,” i.e., streaming video, J.A. 228 ¶ [0069], whereas
`Bellordre discusses the use of “encapsulated or video
`objects,” J.A. 1990, 113:23–24. As both parties’ and their
`experts agree, streaming video and video objects are
`distinct. Coulombe’s disclosure of video relates to the sort
`of live, streaming video communication associated with
`video calls or a television broadcast. The video objects of
`the invention, on the other hand, can be sent as video that
`can be watched at any time. Given these differences,
`there is no basis to find that the disclosure of streaming
`video in Coulombe would have dissuaded the inclusion of
`video objects in Coulombe.
`Despite our conclusion that there was a motivation to
`combine the messaging system of Coulombe with the
`video of Bellordre, we note that the Board did not express-
`
`

`

`10
`
`
`
`WHATSAPP, INC. v. TRIPLAY, INC.
`
`ly consider TriPlay’s alternative bases for finding that the
`petitioners had not carried their burden of proving un-
`patentability of the instituted claims. Specifically, the
`Board has not yet addressed TriPlay’s arguments that the
`petitioners have failed to establish a motivation to com-
`bine Friedman with Coulombe and Bellordre.
`In this respect, 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.
`Accordingly, we vacate the Board’s nonobviousness
`decision and remand for further consideration of the
`motivation to combine the clickable icons of Friedman
`with Coulombe and Bellordre.
`VACATED AND REMANDED
`COSTS
`
`Costs to appellants.
`
`