throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper No. 43
`Entered: June 28, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SNAP INC.,
`Petitioner,
`
`v.
`
`VAPORSTREAM, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00369
`Patent 9,313,155 B2
`____________
`
`
`Before JUSTIN T. ARBES, STACEY G. WHITE, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
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`I.
`
`INTRODUCTION
`We have jurisdiction to hear this inter partes review under 35 U.S.C.
`§ 6. This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons discussed herein, we determine that
`Snap Inc. (“Petitioner”) has shown, by a preponderance of the evidence, that
`claims 1–6 and 9 (“the challenged claims”) of U.S. Patent No. 9,313,155 B2
`(Ex. 1001, “the ’155 patent”) are unpatentable.
`
`A. Procedural History
`Petitioner filed a Petition for inter partes review of claims 1–6 and 9
`of the ’155 patent. Paper 3 (“Pet.”). Petitioner provided a Declaration of
`Sandeep Chatterjee, Ph.D. (Ex. 1002) to support its positions. Vaporstream,
`Inc. (“Patent Owner”) filed a Preliminary Response (Paper 8), supported by
`the Declaration of Michael Shamos, Ph.D. (Ex. 2001). Pursuant to
`35 U.S.C. § 314(a), on July 10, 2018, inter partes review was instituted on
`the following grounds:
`whether claims 1, 4, 5, and 9 would have been obvious under
`35 U.S.C. § 103(a) in view of Namias1, Fardella2, and Stevenson3;
`whether claim 6 would have been obvious under 35 U.S.C. § 103(a) in
`view of Namias, Fardella, Stevenson, and Ford4;
`
`
`1 U.S. Patent Appl. Pub. No. 2002/0112005 A1, published Aug. 15, 2002
`(Ex. 1003).
`2 U.S. Patent Appl. Pub. No. 2001/0032246 A1, published Oct. 18, 2001
`(Ex. 1035).
`3 NANCY STEVENSON, TABLET PCS FOR DUMMIES (2003) (Ex. 1036).
`4 U.S. Patent Appl. Pub. No. 2005/0014493 A1, published Jan. 20, 2005
`(Ex. 1037).
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`whether claim 3 would have been obvious under 35 U.S.C. § 103(a) in
`view of Namias, Fardella, Stevenson, and Saffer5;
`whether claim 2 would have been obvious under 35 U.S.C. § 103(a) in
`view of Namias, Fardella, Stevenson, Saffer, and Smith6;
`whether claim 3 would have been obvious under 35 U.S.C. § 103(a) in
`view of Namias, Fardella, Stevenson, and RFC 28217; and
`whether claim 2 would have been obvious under 35 U.S.C. § 103(a) in
`view of Namias, Fardella, Stevenson, RFC 2821, and Hazel8.
`See Paper 13 (“Inst. Dec.”).
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 24, “PO Resp.”), along with a Declaration of Kevin C.
`Almeroth, Ph.D. (Ex. 2009) to support its positions. Petitioner filed a Reply
`(Paper 27, “Pet. Reply”) to the Patent Owner Response, along with a Reply
`Declaration of Dr. Chatterjee (Ex. 1049), and Patent Owner filed a Sur-
`Reply (Paper 30, “PO Sur-Reply”). Patent Owner filed a Motion to Exclude
`(Paper 32), to which Petitioner filed an Opposition (Paper 34).
`An oral hearing was held on March 27, 2019. A transcript of the
`hearing is included in the record. Paper 41 (“Tr.”).
`
`
`5 U.S. Patent Appl. Pub. No. 2003/0122922 A1, published July 3, 2003
`(Ex. 1004).
`6 U.S. Patent No. 6,192,407 B1, issued Feb. 20, 2001 (Ex. 1005).
`7 Simple Mail Transfer Protocol, Network Working Group, Request for
`Comments 2821 (J. Klensin ed., AT&T Labs), published April 2001
`(Ex. 1008).
`8 PHILIP HAZEL, EXIM: THE MAIL TRANSFER AGENT (2001) (Ex. 1011).
`
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`B. Related Proceedings
`The parties indicate that the ’155 patent is the subject of the following
`district court proceeding involving Petitioner and Patent Owner:
`Vaporstream, Inc. v. Snap Inc., Case No. 2:17-cv-00220-MLH-KS
`(C.D. Cal.). Pet. 1; Paper 4, 1.
`Petitioner filed nine additional petitions for inter partes review of
`various other patents owned by Patent Owner, “each of which claims
`priority to the same priority application as the ‘155 patent” (Paper 7, 1):
`Cases IPR2018-00200, IPR2018-00312, IPR2018-00397, IPR2018-00404,
`IPR2018-00408, IPR2018-00416, IPR2018-00439, IPR2018-00455, and
`IPR2018-00458. See Paper 7, 1–2; Pet. 1. Inter partes review was instituted
`in each of these proceedings.
`
`C. The ’155 Patent
`The ’155 patent is titled “Electronic Message Send Device Handling
`System and Method with Separation of Message Content and Header
`Information,” was filed on December 17, 20149, and issued April 12, 2016.
`Ex. 1001, at [22], [45], [54]. The ’155 patent relates to an electronic
`messaging method “with reduced traceability.” Id. at [57]. The ’155 patent
`notes that “[t]ypically, an electronic message between two people is not
`private.” Id. at 2:7–8. For example, messages may be intercepted by third
`parties; logged and archived; or copied, cut, pasted, or printed. Id. at 2:8–12.
`
`
`9 The ’155 patent claims priority, through a chain of continuation
`applications, to application No. 11/401,148, filed on April 10, 2006, and
`provisional application No. 60/703,367, filed on July 28, 2005. Ex. 1001, at
`[60], [63]. The specific priority date of the challenged claims is not at issue
`in this proceeding, and we need not make any determination in this regard.
`
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`“This may give a message a ‘shelf-life’ that is often uncontrollable by the
`sender or even the recipient.” Id. at 2:13–14. The challenged claims are
`directed to a “computer-implemented method of handling an electronic
`message” for reducing traceability of an electronic message. See id. at 1:66–
`2:3, 2:27–29, 18:43–19:21, 19:42–45.
`Figure 3 of the ’155 patent is reproduced below:
`
`
`Figure 3, above, illustrates an example of a messaging system according to
`the ’155 patent. Id. at 10:44–45. System 300 includes user computers 315,
`320 and server computer 310, connected via network 325. Id. at 10:45–48.
`Electronic message 330 is communicated via this system using a method
`detailed below. Id. at 10:48–49. Reply electronic message 340 also is
`illustrated, but is not discussed in further detail herein. Id. at 10:49–50.
`
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`Figure 5 of the ’155 patent is reproduced below:
`
`
`Figure 5, above, is a flow chart of an exemplary method of the ’155 patent.
`Ex. 1001, 3:25–26. In step 510, the user inputs a recipient address on a
`screen. See id. at 11:23–27, 11:35–38, 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.) established specifically for use
`with [this] system” or it “may be a pre-established [e-mail] address, text
`messaging address, instant messaging address, Short Messaging Service
`
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`(SMS) address, a telephone number . . . , BLACKBERRY personal
`identification number (PIN), or the like.” Id. at 6:56–7:1.
`After the recipient address has been entered, the system will proceed
`to step 515 and display another screen where the user may input the content
`of an electronic message. Id. at 11:35–42, Fig. 9. “An electronic message
`may be any electronic file, data and/or other information transmitted
`between one or more user computers.” Id. at 7:32–34. The electronic
`message may include text, image, video, audio, or other types of data. Id. at
`7:34–42. In one embodiment, “the recipient address and the message
`content are entered on separate display screens.” Id. at 11:41–42. This
`separate entry “further reduces the traceability of an electronic message by,
`in part, reducing the ability of logging at computer 315,” for example, by
`preventing screenshot logging from capturing the recipient address and
`message content simultaneously. Id. at 9:2–4, 11:44–47.
`At step 520, the message content is communicated to server 310. Id.
`at 11:54–57. The recipient address is communicated to the server separately
`from the corresponding message content, in order to reduce the ability to
`intercept the entire message during communication to the server. Id. at
`11:57–61. “[A] correlation (e.g., a non-identifying message ID . . . ) may be
`utilized to associate the two components.” Id. at 6:51–53. 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
`correspondence between the message content and header information.” Id.
`at 12:19–23, 6:39–47; see also id. at 13:11–13 (“A message ID [is] used to
`maintain correspondence between the separated components of electronic
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`message 330.”). The ’155 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
`content. See id. at 13:23–14:7.
`
`D. Illustrative Claims
`We instituted review based on challenges to independent claim 1 and
`dependent claims 2–6 and 9. Claims 1, 2, and 3 of the ’155 patent are
`reproduced below.
`1. A computer-implemented method of handling an
`electronic message at a sending user mobile device in a
`networked environment, the electronic message including a
`message content including a media component and a header
`information that corresponds to the message content including a
`media component, the method comprising:
`providing a plurality of reduced traceability displays via
`the sending user mobile device using a display generator that
`acts upon a display element of the sending user mobile device
`to provide the plurality of reduced traceability displays, the
`plurality of reduced traceability displays including a first
`display configured to allow a user of the sending user mobile
`device to associate a message content including a media
`component with an electronic message and a second display
`configured to allow the user to associate an identifier of a
`recipient with the electronic message, the first display being
`generated by the display generator such that the first display
`does not include a display of the identifier of the recipient via
`the first display such that a single screen capture of both the
`identifier of a recipient and the media component is prevented;
`associating the message content including a media
`component with the electronic message via the first display at a
`sending user device;
`
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`associating the identifier of a recipient with the electronic
`message via the second display at the sending user device, the
`first and second displays not being displayed at the same time;
`and
`
`transmitting the message content including a media
`component and the identifier of a recipient from the sending
`user device to a server computer.
`Ex. 1001, 18:43–19:7.
`to
`2. A computer-implemented method according
`claim 1, wherein the identifier of a recipient and the message
`content including a media component each include a correlation
`to allow the identifier of a recipient and the message content
`including a media component to be related to each other at a
`later time by the server computer.
`Id. at 19:8–13.
`to
`3. A computer-implemented method according
`claim 1, wherein the transmitting the message content including
`a media component occurs separately from the transmitting the
`identifier of a recipient.
`Id. at 19:14–17.
`
`II. ANALYSIS
`A. Principles of Law
`To prevail in its challenges to the patentability of the claims,
`Petitioner must demonstrate by a preponderance of the evidence that the
`challenged claims are unpatentable. 35 U.S.C. § 316(e); 37 C.F.R.
`§ 42.1(d). “In an [inter partes review], the petitioner has the burden from
`the onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`
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`grounds for the challenge to each claim”)). This burden of persuasion never
`shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in
`inter partes review).
`A claim is unpatentable for obviousness if, to one of ordinary skill in
`the pertinent art, “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.” KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). The
`question of obviousness is resolved on the basis of underlying factual
`determinations including: (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of ordinary skill in the art; and (4) objective evidence of nonobviousness.10
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). An obviousness
`analysis “need not seek out precise teachings directed to the specific subject
`matter of the challenged claim, for a court can take account of the inferences
`and creative steps that a person of ordinary skill in the art would employ.”
`KSR, 550 U.S. at 418; accord In re Translogic Tech., Inc., 504 F.3d 1249,
`1259 (Fed. Cir. 2007). However, Petitioner cannot satisfy its burden of
`proving obviousness by employing “mere conclusory statements,” but “must
`instead articulate specific reasoning, based on evidence of record” to support
`an obviousness determination. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
`1364, 1380–81 (Fed. Cir. 2016). Petitioner also must articulate a reason
`
`
`10 The parties have not asserted or otherwise directed our attention to any
`objective evidence of non-obviousness.
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`why a person of ordinary skill in the art would have combined the prior art
`references. In re NuVasive, 842 F.3d 1376, 1382 (Fed. 2016).
`At this final stage, we determine whether a preponderance of the
`evidence of record shows that the challenged claims would have been
`rendered obvious in view of the asserted prior art. We analyze the asserted
`grounds of unpatentability in accordance with these principles.
`
`B. Level of Ordinary Skill in the Art
`We review the grounds of unpatentability in view of the
`understanding of a person of ordinary skill in the art at the time of the
`invention. Graham, 383 U.S. at 17. Petitioner contends 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. 5 (citing Ex. 1002
`¶¶ 13–16). Patent Owner’s declarant, Dr. Almeroth, “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
`Owner’s previous declarant, Dr. Shamos, generally agreeing with
`Petitioner’s description of one of ordinary skill). We agree, as the ’155
`patent discusses the design of an interface that purports to reduce the
`traceability of electronic messages. See, e.g., Ex. 1001, 1:66–3:3. In the
`Institution Decision, we adopted Petitioner’s proposed description of the
`
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`person of ordinary skill in the art. Inst. Dec. 11. Based on the record
`developed during trial, including our review of the ’155 patent and the types
`of problems and solutions described in the ’155 patent and the cited prior art,
`we agree with and adopt Petitioner’s description of the person of ordinary
`skill in the art, 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).
`
`C. Claim Construction
`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) (2018)11. “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 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).
`
`11 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.
`51,340 (Oct. 11, 2018) (to be codified at 37 C.F.R. § 42).
`
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`Patent Owner proposes constructions for the phrases “reduced
`traceability display” and “message content including a media component,”
`as well as the term “correlation.” PO Resp. 24–29. Petitioner does not seek
`express construction of any term of the ’155 patent in the Petition, but
`responds to Patent Owner’s proposed constructions in its Reply. Pet. 7–8;
`Pet. Reply 1, 12–14, 15–19, 21–23. We discuss each of these claim
`limitations below. No other constructions are needed for purposes of this
`Decision. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`Co., 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))).
`
`1. reduced traceability display
`Claim 1 recites “providing a plurality of reduced traceability
`displays.” In the related litigation, Patent Owner proposed that “reduced
`traceability displays” should be construed as “an arrangement of displays
`that enables reduced traceability of electronic messages (e.g., by separately
`displaying identifying information and message content)” (Ex. 1041, 2–3;
`see also Ex. 2003, 15–17 (district court order adopting Patent Owner’s
`proposed construction)), and Petitioner applies this construction in the
`Petition (see Pet. 25–26).
`We did not construe “reduced traceability displays” in our Institution
`Decision. See Inst. Dec. 9–10. In the Institution Decision in related
`Case IPR2018-00408, we adopted the district court’s construction for this
`phrase. See Snap Inc. v. Vaporstream, Inc., Case IPR2018-00408, slip op.
`at 8–9 (PTAB July 10, 2018) (Paper 10). In that proceeding, the parties did
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`not dispute our preliminary interpretation of “reduced traceability displays,”
`and we do not perceive any reason or evidence that compels any deviation
`from that interpretation in this proceeding. See PO Resp. 24–25 (referencing
`the construction in IPR2018-00408). We, thus, adopt the district court’s
`interpretation of “reduced traceability displays” as the broadest reasonable
`interpretation in light of specification of the ’155 patent—namely,
`“an arrangement of displays that enables reduced traceability of electronic
`messages (e.g., by separately displaying identifying information and
`message content).”
`
`2. message content including a media component
`The challenged claims recite various limitations pertaining to a
`“message content including a media component.” For example, claim 1
`recites a “method of handling an electronic message . . . including a message
`content including a media component,” “a first display configured to allow a
`user . . . to associate a message content including a media component with
`an electronic message,” “associating the message content including a media
`component with the electronic message,” and “transmitting the message
`content including a media component and the identifier of a recipient from
`the sending user device to a user computer.” Claim 2 recites that “the
`identifier of a recipient and the message content including a media
`component each include a correlation to allow the identifier of a recipient
`and the message content including a media component to be related to each
`other at a later time by the server computer.” Claim 3 recites that
`“transmitting the message content including a media component occurs
`separately from the transmitting the identifier of a recipient.”
`
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`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. 27. In
`support of this construction, Patent Owner relies on a passage from
`the ’155 patent, which states that “a message content of an electronic
`message may include an attached and/or linked file.” Ex. 1001, 7:44–45
`(cited at PO Resp. 26). Patent Owner also directs us to testimony from
`Petitioner’s declarant, Dr. Chatterjee. PO Resp. 27 (citing Ex. 1002 ¶ 133
`n.28). Patent Owner characterizes Dr. Chatterjee’s 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. See id.
`at 25–27.
`Petitioner responds by arguing that “although the specification states
`that [the] ‘message content’ may include a ‘linked file,’ it never states that
`the link itself is ‘message content.’” Pet. Reply 13 (emphasis Petitioner’s).
`In addition, Petitioner directs us to a further statement in the specification,
`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 associated with the
`electronic message.” Ex. 1001, 7:48–52 (cited at Pet. Reply 13) (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
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`on the video server in Saffer.” Pet. Reply 13–14 (citing Ex. 1004 ¶ 28)
`(emphasis omitted). 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 (emphasis added).
`We agree with Petitioner’s arguments. The specification of the
`’155 patent states that
`[i]n one 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
`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, 7:42–48. 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. In other words, the e-mail recipient may gain access
`to the information or content in a variety of ways; however, the method of
`providing access to information or content 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 7:46–48. 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
`
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`assertion, Dr. Chatterjee’s testimony cited by Patent Owner also supports
`this conclusion. See PO Resp. 27 (citing Ex. 1002 ¶ 133 n.28).
`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 ¶ 133 n.28
`(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 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 of this phrase is necessary for the purposes of this
`Decision. See, e.g., Nidec Motor Corp., 868 F.3d at 1017.
`
`3. correlation
`Claim 2 recites “the identifier of a recipient and the message content
`including a media component each include a correlation.” In the related
`litigation, the parties agreed that “correlation” should be construed as “data
`corresponding to a message used to associate two components of a
`message.” Ex. 2003, 9 (district court order adopting the parties’ agreed upon
`construction); PO Resp. 29.
`Here, Patent Owner contends this construction is the proper
`interpretation of “correlation,” and further argues that “both recited message
`components must include that data.” PO Resp. 28–29 (emphasis Patent
`Owner’s). Petitioner notes, first, that “the term ‘correlation’ is not
`necessarily limited to ‘data’ under the [broadest reasonable interpretation]
`standard still applicable to this proceeding.” Pet. Reply 15. Petitioner
`
`
`
`17
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`

`

`IPR2018-00369
`Patent 9,313,155 B2
`
`further argues that “the district court interpretation of ‘correlation’ is clearly
`disclosed by the combination of Saffer and Smith.” Id.
`Based upon our review of the record, we determine that the broadest
`reasonable interpretation of “correlation” includes at least “data
`corresponding to a message used to associate two components of a message”
`(i.e., the agreed upon district court interpretation), and apply that
`construction in this proceeding. Because we determine Petitioner has shown
`that the cited combination of references teaches the claimed correlation
`under this interpretation (see infra § II.G.2), we need not decide whether the
`broadest reasonable interpretation of “correlation” encompasses more than
`“data corresponding to a message used to associate two components of a
`message.” See, e.g., Nidec Motor Corp., 868 F.3d at 1017.
`
`D. Asserted Obviousness in View of Namias, Fardella, and Stevenson
`Petitioner contends that claims 1, 4, 5, and 9 are unpatentable under
`35 U.S.C. § 103 as obvious in view of Namias, Fardella, and Stevenson.
`Pet. 4, 15–32. Relying on the testimony of Dr. Chatterjee, Petitioner asserts
`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 ¶¶ 58–103. Patent Owner, relying on the testimony of
`Dr. Almeroth, disputes Petitioner’s contentions. PO Resp. 29–39; Ex. 2009
`¶¶ 83–98. For the reasons discussed below, we determine Petitioner has
`established the unpatentability of claims 1, 4, 5, and 9 by a preponderance of
`the evidence.
`
`
`
`18
`
`

`

`IPR2018-00369
`Patent 9,313,155 B2
`
`
`1. Overview of Namias (Ex. 1003)
`Namias relates 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, at [57]. The video e-mail kiosk
`of Namias includes 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
`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, above, illustrates “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,
`
`
`
`19
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`

`IPR2018-00369
`Patent 9,313,155 B2
`
`then the user may press send button 450 and proceed to address screen 500.
`Id. ¶¶ 37, 40.
`Figure 5 of Namias is reproduced below:
`
`
`Figure 5, above, illustrates an address screen on which a user is prompted to
`enter a recipient’s e-mail 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 e-mail address of the recipient. Id. ¶ 40. Once the e-mail
`address(es) 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.
`
`2. Overview of Fardella (Ex. 1035)
`Fardella relates to “[a] method and system for composing and sending
`a video e-mail from a user to a receiver.” Ex. 1035, at [57]. Fardella
`teaches that the system and method thereof allow a user to “generate moving
`
`
`
`20
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`

`IPR2018-00369
`Patent 9,313,155 B2
`
`and/or still images from a video source, such as a digital camera associated
`with a sender’s personal computer or a stand alone kiosk,” and to send a
`video e-mail to a recipient via a central web server. Id. ¶ 13. Fardella
`teaches an example of software (“Makijam™ kiosk software”) that can be
`used to process the video information on a sender’s personal computer. Id.
`¶ 14.
`
`3. Overview of Stevenson (Ex. 1036)
`Stevenson is a reference book titled “Tablet PCs for Dummies.”
`Ex. 1036. In relevant part, Stevenson discloses that Tablet PC is a style of
`portable computer. Id. at 7.12
`
`4. Analysis of Petitioner’s Challenge to Claim 1
`We begin by assessing Petitioner’s arguments as to how the
`combination of Namias, Fardella, and Stevenson teaches the limitations of
`claim 1, and then turn to Petitioner’s arguments regarding why a person of
`ordinary skill in t

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