throbber
Trials@uspto.gov
`571-272-7822
`
` Paper 46
`Entered: June 4, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SNAP INC.,
`Petitioner,
`
`v.
`
`VAPORSTREAM, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00200
`Patent 8,886,739 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, STACEY G. WHITE, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`
`
`
`

`

`IPR2018-00200
`Patent 8,886,739 B2
`
`I.
`
`INTRODUCTION
`
`Petitioner, Snap Inc., filed a Petition for inter partes review of claims
`
`1 and 4–6 of U.S. Patent No. 8,886,739 B2 (Ex. 1001, “the ’739 patent”).
`
`Paper 2 (“Pet.”). We instituted trial on claims 1 and 4–6 on all asserted
`
`grounds of unpatentability. Paper 13 (“Decision”). Patent Owner,
`
`Vaporstream, Inc., filed a Patent Owner Response (Paper 25, “PO Resp.”),
`
`Petitioner filed a Reply (Paper 30, “Reply”), and Patent Owner filed a
`
`Sur-Reply (Paper 32, “Sur-Reply”). Patent Owner also filed a Motion to
`
`Exclude (Paper 34) to which Petitioner filed an Opposition (Paper 36).
`
`An oral hearing was held on March 27, 2019, and a transcript of the
`
`hearing is included in the record. Paper 44 (“Tr.”).
`
`We have authority under 35 U.S.C. § 6. This Decision is issued
`
`pursuant to 35 U.S.C. § 318(a). For the reasons that follow, we determine
`
`that Petitioner has shown by a preponderance of the evidence that claims 1
`
`and 4–6 of the ’739 patent are unpatentable.
`
`A. Related Matters
`
`The ’739 patent is at issue in Vaporstream, Inc. v. Snap Inc.,
`
`No. 2:17-cv-00220-MLH-KS (C.D. Cal.). Paper 3; Pet. 1. Petitioner has
`
`filed at least nine other petitions for inter partes review directed to related
`
`patents that are owned by Patent Owner. Paper 9.
`
`B. The ’739 Patent
`
`The ’739 patent is directed to “[a]n electronic messaging system and
`
`method with reduced traceability.” Ex. 1001, Abstract. As noted in the
`
`’739 patent specification, “[t]ypically, an electronic message between two
`
`people is not private.” Id. at 1:53–54. Messages may be intercepted by third
`
`parties; logged and archived; or copied, cut, pasted, or printed. Id. at 1:54–
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`2
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`IPR2018-00200
`Patent 8,886,739 B2
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`58. “This may give a message a ‘shelf-life’ that is often uncontrollable by
`
`the sender or even the recipient.” Id. at 1:59–60. The challenged claims are
`
`directed to a “sender-side” method for reducing traceability of an electronic
`
`message. See id. at 2:14–22, 18:50–19:12.
`
`Figure 3 of the ’739 patent is reproduced below.
`
`Figure 3 depicts an example of the ’739 patent’s messaging system. Id. at
`
`10:51–52. System 300 includes user computers 315 and 320 and single
`
`server computer 310. Id. at 10:52–54. Electronic message 330 is
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`communicated via this system using a method detailed below.
`
`
`
`3
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`IPR2018-00200
`Patent 8,886,739 B2
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`Figure 5 of the ’739 patent is reproduced below.
`
`
`
`Figure 5 is a flow chart depicting an exemplary method of the ’739 patent.
`
`Id. at 3:31–32. In step 510, the user inputs the recipient’s address on a
`
`screen. See id. at 11:30–35, 11:42–45, Fig. 8. A recipient address identifies
`
`a particular desired recipient and may be a unique identifier (e.g., a screen
`
`name, a login name, a messaging name, etc.) that has been established for
`
`use with this system or it may be a preexisting address such as an email
`
`address, Short Message Service (SMS) address, telephone number, or
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`4
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`IPR2018-00200
`Patent 8,886,739 B2
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`Blackberry personal identification number. Id. at 6:63–7:9. After the
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`recipient address has been entered, the system will proceed to step 515 and
`
`display another screen wherein the user may input the content of an
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`electronic message. Id. at 11:42–48, Fig. 9. “An electronic message may be
`
`any electronic file, data and/or other information transmitted between one or
`
`more user computers.” Id. at 7:39–41. The electronic message may include
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`text, image, video, audio, or other types of data. Id. at 7:41–49. In one
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`embodiment, “the recipient address and the message content are entered on
`
`separate display screens.” Id. at 11:48–49. “Separation of the entry of the
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`recipient address and message content further reduces the traceability of an
`
`electronic message by, in part, reducing the ability of logging at computer
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`315” that receives the message, for example, by preventing screenshot
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`logging from capturing the recipient address and message content
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`simultaneously. Id. at 9:9–11, 11:51–54.
`
`At step 520, the message content is communicated to the server. Id. at
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`11:61–63. The recipient address is communicated to the server separately
`
`from the corresponding message content in order to reduce the ability to
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`intercept the entire message during communication to the server. Id. at
`
`11:64–12:1. “[A] correlation (e.g., a non-identifying message ID . . . ) may
`
`be utilized to associate the two components.” Id. at 6:58–60. In this regard,
`
`“at step 530, system 300 generates a message ID for associating the
`
`separated message content and header information [(which includes the
`
`recipient address)] of electronic message 330. Server 310 maintains a
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`correspondence between the message content and header information.” Id.
`
`at 12:26–30, 6:46–54; see also id. at 13:19–21 (“A message ID [is] used to
`
`maintain correspondence between the separated components of electronic
`
`5
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`IPR2018-00200
`Patent 8,886,739 B2
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`message 330.”). The ’739 patent describes an example in which the
`
`message ID is included both in the Extensible Markup Language (XML) file
`
`storing the header information and in the XML file storing the message
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`content. See id. at 13:33–14:17.
`
`C. Illustrative Claim
`
`We instituted challenges to independent claim 1 and dependent claims
`
`4–6 of the ’739 patent. Claim 1 is illustrative of the claimed subject matter:
`
`1. A computer-implemented method of handling an
`electronic message, the method comprising:
`
`providing a first display and a second display at a sending
`user device, the first display configured to allow a sending user
`to associate a first message content including a media component
`with the electronic message, the second display configured to
`allow the sending user to input a first recipient address
`corresponding to the first message content, the first and second
`displays not being displayed at the same time;
`
`displaying via the first display a first message content
`including a media component;
`
`receiving via the second display a first recipient address,
`wherein the first message content including a media component
`and the first recipient address are not displayed to the sending
`user at the same time;
`
`associating a message ID with the first message content
`including a media component, the message ID correlating the
`first recipient address and the first message content including a
`media component; and
`
`transmitting the recipient address and the first message
`content including a media component from the sending user
`device to a server computer, the first message content including
`a media component being transmitted to the server computer
`separately from the recipient address, the first message content
`including a media component not being accessible by the sending
`user for display via the sending user device after said transmitting
`the media component to the server computer.
`
`6
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`IPR2018-00200
`Patent 8,886,739 B2
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`Id. at 18:50–19:12.
`
`D. Asserted Grounds of Unpatentability
`
`Petitioner, with the support of testimony from Sandeep Chatterjee,
`
`Ph.D. (Exs. 1002, 1043), contends that claims 1 and 4–6 of the ’739 patent
`
`would have been obvious over the teachings of Namias1, Saffer2, and
`
`Smith3; and over the teachings of Namias, Blum4, Hazel5, RFC 28216, and
`
`Boyce7. Pet. 3.
`
`E. Person of Ordinary Skill in the Art
`
`On behalf of Petitioner, Dr. Chatterjee opines that a person of
`
`ordinary skill in the art would have had “at least a bachelor’s degree in
`
`software engineering, computer science, or computer engineering 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 (or equivalent degree or experience).” Pet. 4 (citing Ex. 1002
`
`¶¶ 13–16). Patent Owner’s declarant, Kevin Almeroth, Ph.D., “generally
`
`agree[s]” with Petitioner’s characterization of the person of ordinary skill
`
`with the caveat “that such a person of ordinary skill would also have a
`
`working knowledge of design principles for software user interfaces. Such
`
`knowledge often would be learned in an undergraduate course in Human
`
`Computer Interaction (HCI).” Ex. 2009 ¶ 21; see also Ex. 2001 ¶ 14 (Patent
`
`
`
`1 U.S. Patent Pub. 2002/0112005 A1 (Aug. 15, 2002) (Ex. 1003, “Namias”).
`2 U.S. Patent Pub. 2003/0122922 A1 (July 3, 2003) (Ex. 1004, “Saffer”).
`3 U.S. Patent 6,192,407 B1 (Feb. 20, 2001) (Ex. 1005, “Smith”).
`4 Richard Blum, Postfix (2001) (Ex. 1010, “Blum”).
`5 Philip Hazel, Exim: The Mail Transfer Agent (2001) (Ex. 1011, “Hazel”).
`6 Simple Mail Transfer Protocol (SMTP), Request for Comments (RFC)
`2821, published Apr. 2001 (Ex. 1008, “RFC 2821”)).
`7 Jim Boyce, Microsoft Outlook Version 2002 (2001) (Ex. 1012, “Boyce”).
`
`7
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`IPR2018-00200
`Patent 8,886,739 B2
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`Owner’s previous declarant, Michael Shamos Ph.D., also was in general
`
`agreement with this description). Dr. Almeroth’s caveat is well taken
`
`because the ’739 patent discusses the design of an interface that purports to
`
`reduce issues of traceability. See, e.g., Ex. 1001, 1:46–3:9. In the Institution
`
`Decision, we adopted Petitioner’s proposed description of the person of
`
`ordinary skill in the art. Dec. 7. We have reviewed the full record in this
`
`case and based on our analysis, for the purposes of this Decision, adopt
`
`Petitioner’s description of the person of ordinary skill, with the caveat that
`
`such an individual would have had a working knowledge of design
`
`principles for software user interfaces, which may be achieved via study of
`
`human-computer interaction (HCI).
`
`II. DISCUSSION
`
`A. Claim Construction8
`
`In an inter partes review, claim terms in an unexpired patent are
`
`interpreted according to their broadest reasonable constructions in light of
`
`the specification of the patent in which they appear. See 37 C.F.R.
`
`§ 42.100(b). “In claim construction, [our reviewing] court gives primacy to
`
`the language of the claims, followed by the specification. Additionally, the
`
`prosecution history, while not literally within the patent document, serves as
`
`intrinsic evidence for purposes of claim construction.” Tempo Lighting, Inc.
`
`v. Tivoli, LLC, 742 F.3d 973, 977 (Fed. Cir. 2014). Otherwise, under the
`
`
`
`8 The recent revisions to our claim construction standard do not apply to this
`proceeding because the new “rule is effective on November 13, 2018 and
`applies to all IPR, PGR and CBM petitions filed on or after the effective
`date.” Changes to the Claim Construction Standard for Interpreting Claims
`in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
`51340 (Oct. 11, 2018) (to be codified at 37 C.F.R. § 42).
`
`8
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`IPR2018-00200
`Patent 8,886,739 B2
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`broadest reasonable construction standard, claim terms are presumed to have
`
`their ordinary and customary meaning, as would be understood by one of
`
`ordinary skill in the art in the context of the entire disclosure. In re
`
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`Patent Owner seeks construction of the phrase “message content
`
`including a media component.” PO Resp. 23. Petitioner does not seek
`
`express construction of any term of the ’739 patent. Pet. 8–9.
`
`Claim 1 recites various limitations pertaining to a “first message
`
`content including a media component.” For example, claim 1 recites
`
`providing a “first display configured to allow a sending user to associate a
`
`first message content including a media component with the electronic
`
`message,” the “first message content including a media component” being
`
`displayed at a different time than the “first recipient address,” “associating a
`
`message ID with the first message content including a media component,”
`
`and separately transmitting the “recipient address” and “first message
`
`content including a media component” such that the “first message content
`
`including a media component” is not “accessible by the sending user for
`
`display via the sending user device after said transmitting the media
`
`component to the server computer.”
`
`Patent Owner contends that “‘message content including a media
`
`component’ encompasses media content included in the message via a
`
`publicly-accessible [Uniform Resource Locator (URL)].” PO Resp. 25. In
`
`support of this construction, Patent Owner relies on a passage from the
`
`’739 patent, which states that “a message content of an electronic message
`
`may include an attached and/or linked file.” Ex. 1001, 7:51–52 (cited at
`
`PO Resp. 24). Patent Owner also directs us to testimony from Petitioner’s
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`IPR2018-00200
`Patent 8,886,739 B2
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`declarant, Dr. Chatterjee. PO Resp. 25 (citing Ex. 1002 ¶ 100 n.25). Patent
`
`Owner characterizes this testimony as “mak[ing] clear [that] passing the
`
`actual content and passing a link that provides access to that content, such as
`
`a URL, are both examples of ‘passing information.’” Id. Thus, in Patent
`
`Owner’s view, the recited “message content including a media component”
`
`broadly includes both a URL in a message (linking to content accessible via
`
`that URL) and a file attached to the message. Id.
`
`Petitioner responds by arguing that “although the specification states
`
`that ‘message content’ may include a ‘linked file,’ it never states that the link
`
`itself is ‘message content.’” Reply 9. In addition, Petitioner directs us to the
`
`specification, which states that “[t]ypically, a message content, such as
`
`message content 140 does not include information that in itself identifies the
`
`message sender, recipient, location of the electronic message, or time/date
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`associated with the electronic message.” Ex. 1001, 7:55–59 (cited at
`
`Reply 10) (emphasis added). Petitioner explains that “[t]he URL (Uniform
`
`Resource Locator) in the proposed combination [of Namias and Saffer]
`
`therefore does not qualify as ‘message content’ because it identifies ‘the
`
`location of’ the video message on the video server in Saffer.” Reply 10
`
`(citing Ex. 1004 ¶ 28). According to Petitioner, a person of ordinary skill in
`
`the art would “think of a URL as a pointer to content,” i.e., “how you get to
`
`the content” rather than “the content itself.” Tr. 23:12–24:5. In short,
`
`Petitioner contends that “[i]t’s . . . the file that’s the content, not the link
`
`itself.” Id. at 23:6.
`
`We agree with Petitioner’s arguments. The specification states that
`
`[i]n another example, a message content of an electronic message
`may include embedded information. In another example, a
`message content of an electronic message may include an
`
`10
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`IPR2018-00200
`Patent 8,886,739 B2
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`attached and/or linked file. In such an example with an attached
`and/or linked file, the attached and/or linked file may be
`automatically deleted from the messaging system after being
`viewed by a recipient.
`
`Ex. 1001, 7:49–55. Thus, the specification indicates that message content
`
`may be communicated to the user via embedded information, attached files,
`
`or linked files. Embedding, attaching, and linking are three ways to provide
`
`access to information. As such, the email recipient may gain access to the
`
`information or content in a variety of ways, however, the method of
`
`providing access is not the same thing as the underlying information or
`
`content. In the passage quoted above, privacy may be enhanced by
`
`automatically deleting “the attached and/or linked file” from the messaging
`
`system after the file is viewed. Id. at 7:53–54. The specification makes no
`
`provisions for deleting the URL or link to the file, but rather the focus is on
`
`the information itself. That information, or “message content,” is located in
`
`the file itself regardless of the method by which the recipient accesses that
`
`information. Contrary to Patent Owner’s assertion, Dr. Chatterjee’s
`
`testimony cited by Patent Owner also supports this conclusion. Dr.
`
`Chatterjee testifies that there is a “distinction between transmitting the
`
`actual content to the recipient in a message, versus transmitting just a URL
`
`that points to or is an address for the content.” Ex. 1002 ¶ 100 n.25
`
`(emphases added). Dr. Chatterjee’s testimony makes clear that “actual
`
`content” is distinct from “just a URL” that points to the content.
`
`Thus, we determine that that the broadest reasonable interpretation of
`
`the phrase “message content including a media component” does not
`
`encompass a URL in a message (linked to content accessible via that URL).
`
`No further express interpretation is necessary for the purposes of this
`
`11
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`IPR2018-00200
`Patent 8,886,739 B2
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`Decision. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`
`Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe
`
`terms ‘that are in controversy, and only to the extent necessary to resolve the
`
`controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`
`200 F.3d 795, 803 (Fed. Cir. 1999)).
`
`B. Asserted Obviousness Based on Namias, Saffer, and Smith
`
`Petitioner argues that claims 1 and 4–6 of the ’739 patent are
`
`unpatentable under 35 U.S.C. § 103(a) as obvious over the teachings of
`
`Namias, Saffer, and Smith. Pet. 15–45. Relying on the testimony of
`
`Dr. Chatterjee, Petitioner contends that the combined references teach or
`
`suggest the subject matter of the challenged claims and that a person having
`
`ordinary skill in the art would have combined the teachings of the references
`
`in the manner asserted. Id.; Ex. 1002 ¶¶ 54–149. Patent Owner, relying on
`
`the testimony of Dr. Almeroth, disputes Petitioner’s contentions. PO Resp.
`
`25–48. For the reasons described below, we determine Petitioner has
`
`established the unpatentability of these claims by a preponderance of the
`
`evidence.
`
`1. Overview of Namias
`
`Namias is directed to “[a] method and apparatus for providing a video
`
`e-mail kiosk for creating and sending video e-mail messages such as
`
`full motion videos or still snapshots.” Ex. 1003, Abstract. Namias’s video
`
`email kiosk comprises a digital processor, a touch-sensitive screen monitor,
`
`a digital video camera, a microphone, audio speakers, a credit card acceptor,
`
`a cash acceptor, and a digital network communications link. Id. ¶ 31. The
`
`kiosk displays an inactive screen until a user starts a transaction. Id. ¶ 34.
`
`Upon activation of the kiosk, a record screen is shown on the kiosk display
`
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`IPR2018-00200
`Patent 8,886,739 B2
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`and the user may create a video recording or still image from this screen. Id.
`
`¶ 35. A preview screen is displayed after the user has recorded a full motion
`
`video or still snapshot message. Id. ¶ 36.
`
`Figure 4a of Namias is reproduced below.
`
`
`
`Figure 4a depicts “a preview screen that is displayed after a user has
`
`recorded a video message.” Id. ¶ 25. Preview screen 400 allows the user to
`
`review the recorded video or still image and decide whether the message is
`
`acceptable. Id. ¶ 36. If the user is satisfied with the message, then the user
`
`may press send button 450 and proceed to address screen 500. Id. ¶¶ 37, 40.
`
`
`
`Figure 5 of Namias is reproduced below.
`
`
`
`13
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`IPR2018-00200
`Patent 8,886,739 B2
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`Figure 5 depicts an address screen in which a user is prompted to enter a
`
`recipient’s email address. Id. ¶ 27. “The address is a unique identifier
`
`which instructs routing computers where to send the message.” Id. ¶ 5. The
`
`user presses add address button 510 and then may use a keyboard to input
`
`the email address of the recipient. Id. ¶ 40. Once the email addresses have
`
`been entered, the user may press send button 540 to move to the next step in
`
`the process. Id.
`
`“[F]inal screen 700 . . . is displayed at the end of the process after
`
`payment has been made and the video or photographic e-mail has been sent
`
`to the intended recipient or recipients.” Id. ¶ 42. A final display timer is
`
`monitored and upon expiration of the timer the kiosk reverts to the inactive
`
`screen display. Id. ¶ 68.
`
`2. Overview of Saffer
`
`Saffer describes “[a] computer implemented system and method in
`
`which a user can send e-mail messages that include full-motion video and
`
`audio (or, alternatively, audio only), along with (if desired) the text
`
`messages to an e-mail recipient.” Ex. 1004, Abstract. In Saffer, a user
`
`composes a message, records a video, and then hits the send button. Id. ¶ 4.
`
`The sender’s computer retrieves a video ID from the server for that
`
`compressed video. Id. ¶¶ 4, 29, Fig. 3 (step 100). Software on the sender’s
`
`computer compresses the video and transmits the compressed video to a
`
`server. Id. ¶¶ 4, 44, Fig. 3 (steps 102, 110). The sender’s computer inserts
`
`the video ID (with a link or network address to the video server) into an
`
`email message, which is then sent to the recipient. Id. ¶¶ 4, 46, 47, Fig. 3
`
`(step 112).
`
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`3. Overview of Smith
`
`Smith describes “[a] document delivery architecture [that]
`
`dynamically generates a private Uniform Resource Locator (URL) to
`
`distribute information.” Ex. 1005, Abstract. Smith’s private URLs
`
`(“PURLs”) are temporary, dynamically generated URLs that uniquely
`
`identify the recipient of a document, the document to be delivered, and
`
`optionally may include other delivery parameters. Id. at Abstract, 15:8–9.
`
`A sender forwards a document to a server and the server temporarily stores
`
`the document. Id. at 15:29–31. “The server dynamically generates a URL
`
`for each intended recipient of the document.” Id. at 15:31–33. The recipient
`
`is sent an email message which includes the PURL. Id. at 15:38–41. The
`
`recipient uses the PURL and the Web to retrieve the document (or set of
`
`documents). Id. at 14:48–50, 15:41–42. “PURLS avoid attaching
`
`information to e-mail messages to send documents, but rather attach a
`
`general reference to a document to be sent, and then enable the recipient to
`
`access a document via the reference.” Id. at 15:12–15. When the recipient
`
`accesses the document by using a PURL, a server can intercept the
`
`document access request and provide additional services, such as tracking
`
`and security. Id. at 15:16–19.
`
`4. Analysis of Challenge to Claim 1
`
`First, we evaluate Petitioner’s arguments as to how the combination of
`
`Namias, Saffer, and Smith teaches the limitations of claim 1, and then we
`
`examine Petitioner’s contentions as to why a person of ordinary skill in the
`
`art would have been motivated to combine the teachings of the references.
`
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`IPR2018-00200
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`a. Preamble
`
`The preamble of independent claim 1 recites a “computer-
`
`implemented method of handling an electronic message.” Petitioner
`
`contends that, to the extent this preamble is a limitation, a person of ordinary
`
`skill in the art would have understood Namias to teach this aspect of the
`
`claim. Pet. 15–16. Namias describes “providing a video e-mail kiosk for
`
`creating and sending video e-mail messages such as full motion videos of
`
`still snapshots.” Id. at 15 (quoting Ex. 1003, Abstract). We agree, for the
`
`reasons stated in the Petition.
`
`b. “providing a first display and a second display at a sending user device,
`the first display configured to allow a sending user to associate a first
`message content including a media component with the electronic
`message, the second display configured to allow the sending user to input
`a first recipient address corresponding to the first message content, the
`first and second displays not being displayed at the same time”
`
`As recited in claim 1, the first display allows the user to enter message
`
`content and the second display allows the user to enter a recipient address.
`
`Petitioner contends that the recited first display is taught by Namias’s
`
`preview screen, which is depicted in Figure 4a. Pet. 17–18. As noted by
`
`Petitioner, Namias’s preview screen allows the user to manipulate message
`
`content by playing, erasing, and re-recording a video message. Id. at 18
`
`(citing. Ex. 1003 ¶¶ 36–37). When the user is satisfied with the message, the
`
`user may press “SEND THIS VIDEO” to save and send the recorded video
`
`or still image. Id. (citing Ex. 1003 ¶ 37). Petitioner contends that the recited
`
`second display is taught by Namias’s address screen, which is depicted in
`
`Figure 5. Id. at 19–20. “As shown, Figure 5 ‘allows the user to enter an e-
`
`mail address or addresses and thereby designate a recipient or recipients.’”
`
`Id. at 19 (citing Ex. 1003 ¶¶ 40, 27).
`
`16
`
`

`

`IPR2018-00200
`Patent 8,886,739 B2
`
`Petitioner relies upon Namias to teach the limitation that the first and
`
`second displays are not displayed at the same time. Id. at 20. “Namias
`
`explains that ‘FIG. 5 shows an address screen 500 that is displayed after the
`
`full motion video or still snapshot message has been satisfactorily recorded,’
`
`the satisfactory recording of which uses the previously displayed screen
`
`shown in Figure 4A.” Id. (citing Ex. 1003 ¶ 40).
`
`Patent Owner contends that Namias, as modified by Saffer and Smith,
`
`would not have separate displays for message content and address
`
`information. PO Resp. 45–48. Patent Owner argues that “both Namias and
`
`Saffer have user interfaces for composing video emails. Petitioner offers no
`
`reason—other than hindsight—why a [person of ordinary skill in the art]
`
`determined to combine Namias and Saffer and having considered the
`
`references as a whole would choose Namias’s user interface over Saffer’s
`
`user interface.” Id. at 32. Dr. Almeroth opines that “a [person of ordinary
`
`skill in the art] intent on combining Namias with Saffer would almost
`
`certainly choose Saffer’s single screen email composition display (which is
`
`integrated with Saffer and is far more efficient, robust, and less likely to
`
`cause navigational trauma) over Namias’s multi-screen navigation flow,
`
`absent extenuating circumstances.” Ex. 2009 ¶ 118.
`
`Petitioner responds by directing us to the Federal Circuit decision in
`
`In re Fulton, 391 F.3d 1195 (Fed. Cir. 2004). Reply 15. There, the
`
`applicant argued that the record before the Board was insufficient to
`
`establish that the features of the relied upon reference “are preferred over
`
`other alternatives disclosed in the prior art.” Fulton, 391 F.3d at 1200. Our
`
`reviewing court held that “[t]his argument fails because our case law does
`
`not require that a particular combination must be the preferred, or the most
`
`17
`
`

`

`IPR2018-00200
`Patent 8,886,739 B2
`
`desirable, combination described in the prior art in order to provide
`
`motivation for the current invention.” Id. As such, we are tasked with
`
`determining “‘whether there is something in the prior art as a whole to
`
`suggest the desirability, and thus the obviousness, of making the
`
`combination’ not whether there is something in the prior art as a whole to
`
`suggest that the combination is the most desirable combination available.”
`
`Id. (quoting In re Beattie, 974 F.2d 1309, 1311 (Fed. Cir. 1992)).
`
`Petitioner asserts that “while Saffer’s interface may offer certain
`
`benefits that make it desirable in certain circumstances, Namias’s interface
`
`likewise provides other advantages that would have motivated a [person of
`
`ordinary skill in the art] to use it in a video messaging system.” Reply 17
`
`(citing Ex. 1043 ¶ 37). According to Petitioner, the chief advantage of
`
`Namias’s two-screen interface “is its simplicity.” Id. Petitioner directs us to
`
`testimony from Patent Owner’s declarant, Dr. Shamos, wherein he testified
`
`that “drawings of Namias show, in an incidental manner, that message
`
`content and email addresses are entered on different screens; this is a matter
`
`of user interface design simplification, and not to achieve reduced
`
`traceability.” Ex. 2001 ¶ 73 (emphasis added) (cited at Reply 17); see also
`
`id. ¶ 31 (“The only aspects that Namias has in common with the ’739 patent
`
`are that Namias discloses (1) sending a media component by email; and (2)
`
`separate screens for entering message content and recipient address.
`
`However, the reason for the separate screen is not reduced traceability, but
`
`to present a simple interface to a user who has never used the kiosk before.”
`
`(emphasis added)); ¶ 74 (“It is true that the drawings [of Namias] illustrate
`
`different displays, but this is a matter of user interface design
`
`simplification . . . .”). Petitioner asserts that one of ordinary skill in the art
`
`18
`
`

`

`IPR2018-00200
`Patent 8,886,739 B2
`
`would have recognized “that Namias’s multiscreen interface is an example
`
`of a well-known user interface technique known as ‘wizards.’” Reply 18
`
`(citing Ex. 1043 ¶¶ 39–41). As noted by Dr. Chatterjee,
`
`a wizard is a special form of user assistance that automates a task
`through a dialog with the user. Wizards help the user accomplish
`tasks that can be complex and require experience. Wizards can
`automate almost any task . . . . They are especially useful for
`complex or infrequent tasks that the user may have difficulty
`learning or doing.
`
`Ex. 1043 ¶ 40 (quoting Ex. 10489, 335–36). According to Petitioner, certain
`
`users find it easier to use a simpler interface with fewer options on each
`
`page. Tr. 16:8–13 (“[I]t’s far easier for them to have a wizard type scenario
`
`to walk through the things that they have to do, so that they don’t get
`
`confused by multiple options on a single page.”).
`
`Patent Owner responds by asserting that Petitioner “has not provided
`
`any competent evidence that Namias’s multi-screen interface is simpler than
`
`Saffer’s.’” Sur-Reply 18. Patent Owner also contends that arguments
`
`regarding the simplicity of Namias’s interface and the utility of wizards are
`
`untimely because they were first presented in Petitioner’s Reply. Id.
`
`In light of the evidence and arguments presented on this point, we
`
`determine that Petitioner is correct in asserting that one of skill in the art
`
`would have understood the combination of Namias with Saffer and Smith to
`
`teach separate displays as recited in claim 1. Namias’s Figures 4a and 5 are
`
`separate displays. Patent Owner concedes as much in its comparison of the
`
`multi-screen configuration of Namias with the single screen configuration of
`
`Saffer. See Sur-Reply 18–19. There, Patent Owner compares Namias’s
`
`
`
`9 Theo Mandel, The Elements of User Interface Design (1997) (“Mandel”).
`
`19
`
`

`

`IPR2018-00200
`Patent 8,886,739 B2
`
`“sequence of seven separate screens” with “Saffer’s single integrated
`
`screen.” Id. at 18. Namias’s Figure 5, the recited “second display,” is not
`
`accessible to the user until after the media content is handled via the “first
`
`display” of Figure 4. See Ex. 1003 ¶ 40. Thus, Namias’s screens perform
`
`the recited tasks with the required separation.
`
`We are not persuaded by Patent Owner’s argument that one of skill in
`
`the art would not have selected Namias’s multi-screen interface over
`
`Saffer’s integrated interface. As Petitioner has pointed out, under Federal
`
`Circuit precedent, obviousness “does not require that the motivation be the
`
`best option, only that it be a suitable option from which the prior art did not
`
`teach away.” PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197–
`
`98 (Fed. Cir. 2014) (citing Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d
`
`731, 738 (Fed. Cir. 2013)). Here, we are presented with persuasive evidence
`
`from Dr. Chatterjee showing that one of skill in the art would have looked to
`
`Namias to design a video messaging system that was easy to use. Dr.
`
`Chatterjee’s opinion is supported by a 1997 reference book, Mandel,
`
`discussing the elements of user interface design. See Ex. 1043 ¶ 40 (citing
`
`Mandel). In

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