`NOTE: This disposition is nonprecedential.
`United States Court of Appeals
`for the Federal Circuit
`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
`LLP, Florham Park, NJ, argued for appellee. Also repre-
`Before DYK, WALLACH, and TARANTO, Circuit Judges.


`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.
`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-
`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-


`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


`(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.


`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.


`The petitioners appeal. This court has jurisdiction
`to 35 U.S.C. § 141(c) and 28 U.S.C.
`§ 1295(a)(4)(A).
`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.
`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


`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


`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.


`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-


`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.
`Costs to appellants.

This document is available on Docket Alarm but you must sign up to view it.

Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.


A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.

Access Government Site

We are redirecting you
to a mobile optimized page.

Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket