Trials@uspto.gov
`571-272-7822
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` Paper 38
` Entered: June 28, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SNAP INC.,
`Petitioner,
`
`v.
`
`VAPORSTREAM, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00404
`Patent 8,935,351 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, STACEY G. WHITE, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`
`571-272-7822
`
`
`
`
` Paper 38
` 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 IPR2018-00404
`Patent 8,935,351 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, STACEY G. WHITE, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`
`
`IPR2018-00404
`Patent 8,935,351 B2
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`
`I. BACKGROUND
`Petitioner Snap Inc. filed a Petition (Paper 2, “Pet.”) requesting inter
`partes review of claims 1, 5, 6, 9, 11, and 12 of U.S. Patent No. 8,935,351
`B2 (Ex. 1001, “the ’351 patent”) pursuant to 35 U.S.C. § 311(a).
`On July 10, 2018, we instituted an inter partes review of all challenges
`raised in the Petition. Paper 11 (“Dec. on Inst.”). Patent Owner
`Vaporstream, Inc. subsequently filed a Patent Owner Response (Paper 22,
`“PO Resp.”), Petitioner filed a Reply (Paper 26, “Reply”), and Patent Owner
`filed a Sur-Reply (Paper 29, “Sur-Reply”). An oral hearing was held on
`March 27, 2019, and a transcript of the hearing is included in the record
`(Paper 36, “Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`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, 5, 6, 9, 11, and 12 are unpatentable.
`
`
`A. Related Proceedings
`The parties indicate that the ’351 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.). See Pet. 1; Paper 4, 1. Petitioner filed nine additional petitions
`for inter partes review of various related patents owned by Patent Owner in
`Cases IPR2018-00200, IPR2018-00312, IPR2018-00369, IPR2018-00397,
`IPR2018-00408, IPR2018-00416, IPR2018-00439, IPR2018-00455, and
`IPR2018-00458. See Pet. 1–2; Paper 4, 1–3. Inter partes review was
`instituted in each of these proceedings.
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`B. The ’351 Patent
`The ’351 patent discloses “[a]n electronic messaging system and
`method with reduced traceability.” Ex. 1001, Abstract. The ’351 patent
`notes that “[t]ypically, an electronic message between two people is not
`private.” Id. at col. 1, ll. 53–54. For example, messages may be intercepted
`by third parties; logged and archived; or copied, cut, pasted, or printed. Id.
`at col. 1, ll. 54–59. “This may give a message a ‘shelf-life’ that is often
`uncontrollable by the sender or even the recipient.” Id. at col. 1, ll. 59–60.
`As such, according to the ’351 patent, there was “a demand for a system and
`method for reducing the traceability of electronic messages.” Id. at col. 2,
`ll. 6–8. Figure 3 of the ’351 patent is reproduced below.
`
`Figure 3 above depicts system 300 for communicating electronic message
`330 from user computer 315 to user computer 320 over network 325 using
`server 310. Id. at col. 10, ll. 51–56. “An electronic message may be any
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`electronic file, data, and/or other information transmitted between one or
`more user computers.” Id. at col. 7, ll. 39–41. The electronic message may
`include text, image, video, audio, or other types of data. Id. at col. 7,
`ll. 41–49.
`Figure 5 of the ’351 patent is reproduced below.
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`Figure 5 depicts the process by which the electronic message is sent from the
`first user computer and received by the second user computer. Id. at col. 10,
`l. 66–col. 11, l. 1. At steps 510–520, the user inputs a recipient address
`(e.g., a unique identifier, such as an email address) and message content,
`using separate screens provided by the server computer, and the message is
`communicated from the user computer to the server. Id. at col. 11, l. 26–col.
`12, l. 15, Figs. 8, 9. The server then performs various actions to process the
`message at steps 525–545. Id. at col. 12, l. 16–col. 14, l. 17. For example,
`the server identifies header information (e.g., information that “identifies the
`sending user, recipient user, location of the electronic message, [or] timing
`of [the] electronic message”) separate from the content of the message itself
`and generates a message ID associated with the header information and
`message content. Id. at col. 12, ll. 26–38, col. 13, ll. 19–21 (“A message ID
`[is] used to maintain a correspondence between the separated components of
`electronic message 330.”). The ’351 patent describes an example in which
`the message ID is included both in an Extensible Markup Language (XML)
`file storing the header information and in an XML file storing the message
`content. Id. at col. 13, l. 27–col. 14, l. 17.
`To retrieve the message, the recipient first logs in to the system at
`step 550. Id. at col. 14, ll. 18–20. At step 555, the server communicates to
`the recipient user computer a display image showing header information for
`multiple messages. Id. at col. 14, ll. 24–40, Fig. 10. For example, the
`display image may show a display name and date/time for each message, but
`not show the content itself for any of the messages. Id. In one embodiment,
`the header information may include “a sequence number (ex: 1, 2, 3, etc.)
`assigned to each electronic message,” where each sequence number is
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`associated with a corresponding message ID for the respective message. Id.
`at col. 14, ll. 45–56. At step 560, the user selects one of the electronic
`messages to be displayed by, for example, selecting a “read” link displayed
`with the respective header information. Id. at col. 14, ll. 57–60. At step
`565, the server communicates to the recipient user computer a display image
`with the content of the chosen message (but not header information for the
`message). Id. at col. 15, ll. 13–22, Fig. 11. At step 570, the message is
`automatically and permanently deleted from the server at a predetermined
`time. Id. at col. 15, ll. 39–41. At step 575, the user closes the display image,
`returns to the message listing, or chooses to respond to the message. Id. at
`col. 16, ll. 28–34. At step 585, the message content is automatically deleted
`from the recipient user computer after viewing. Id. at col. 16, ll. 37–45.
`According to the ’351 patent, displaying header information and message
`content separately, and automatically deleting message content, reduce the
`traceability of electronic messages. Id. at col. 3, l. 48–col. 4, l. 3.
`
`
`C. Illustrative Claim
`Claim 1 of the ’351 patent recites:
`1. A computer-implemented method of handling an
`electronic message, the method comprising:
`receiving at a recipient user device a first header
`information corresponding to a first message content that
`includes a media component;
`providing a first display via the recipient user device, the
`first display including the first header information in a message
`list, the first display not displaying the media component;
`receiving at the recipient user device the first message
`content including the media component, wherein the first
`message content including the media component is associated
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`with a unique message ID that correlates the first message
`content including the media component with the first header
`information;
`receiving a selection by the recipient user via the first
`display, the selection directed to a portion of the message list
`corresponding to the first header information;
`in response to the selection, providing a second display via
`the recipient user device, the second display displaying the first
`message content including the media component without
`displaying a username associated with
`the first header
`information; and
`automatically deleting the first message content including
`the media component at a predetermined amount of time after
`being displayed such that after the second display is terminated
`from view, the first message content including the media
`component is no longer available to the recipient user.
`
`
`D. Prior Art
`The pending grounds of unpatentability in the instant inter partes
`review are based on the following prior art:
`U.S. Patent No. 7,356,564 B2, filed Jan. 9, 2002, issued
`Apr. 8, 2008 (Ex. 1014, “Hartselle”);
`U.S. Patent No. 7,054,905 B1, filed Mar. 30, 2000, issued
`May 30, 2006 (Ex. 1005, “Hanna”);
`U.S. Patent No. 5,958,005, issued Sept. 28, 1999
`(Ex. 1006, “Thorne”);
`U.S. Patent Application Publication No. 2005/0021803
`A1, published Jan. 27, 2005 (Ex. 1003, “Wren”); and
`U.S. Patent Application Publication No. 2003/0152203
`A1, published Aug. 14, 2003 (Ex. 1004, “Berger”).
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`E. Pending Grounds of Unpatentability
`The instant inter partes review involves the following grounds of
`unpatentability:
`References
`
`Basis
`
`Claim(s) Challenged
`
`35 U.S.C. § 103(a)1 1, 5, 6, and 11
`
`35 U.S.C. § 103(a)
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`35 U.S.C. § 103(a)
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`12
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`Wren, Berger, and
`Thorne
`Wren, Berger,
`Thorne, and
`Hartselle
`Wren, Berger,
`Thorne, and Hanna
`
`
`
`II. ANALYSIS
`A. Claim Interpretation
`According to the rules applicable to this proceeding, we interpret
`claims in an unexpired patent using the “broadest reasonable construction in
`light of the specification of the patent in which [they] appear[].” 37 C.F.R.
`§ 42.100(b) (2017).2 Under this standard, we interpret claim terms using
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the challenged claims
`of the ’351 patent have an effective filing date before the effective date of
`the applicable AIA amendment, we refer to the pre-AIA version of
`35 U.S.C. § 103.
`2 The Petition in this proceeding was filed on December 27, 2017, prior to
`the effective date of the rule change that replaces the broadest reasonable
`interpretation standard with the federal court claim interpretation standard.
`See Changes to the Claim Construction Standard for Interpreting Claims in
`Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
`51,340, 51,340 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective
`November 13, 2018).
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`“the broadest reasonable meaning of the words in their ordinary usage as
`they would be understood by one of ordinary skill in the art, taking into
`account whatever enlightenment by way of definitions or otherwise that may
`be afforded by the written description contained in the applicant’s
`specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). “Under
`a broadest reasonable interpretation, words of the claim must be given their
`plain meaning, unless such meaning is inconsistent with the specification
`and prosecution history.” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1062
`(Fed. Cir. 2016); see Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 977
`(Fed. Cir. 2014) (“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.”).
`In the Decision on Institution, based on the record at the time, we
`preliminarily interpreted “correlates” in claim 1 to mean “associates.”
`Dec. on Inst. 8–9. The parties agreed on this interpretation in the related
`litigation and the district court adopted it. Ex. 2002, 8–9. Patent Owner
`argues in its Response that we should maintain our preliminary
`interpretation, Petitioner does not argue otherwise in its Reply, and we do
`not perceive any reason or evidence that compels any deviation from the
`preliminary interpretation. See PO Resp. 6. We adopt the previous analysis
`for purposes of this Decision.
`In addition, Patent Owner seeks interpretation of the phrase “message
`content that includes a media component.” Id. at 7–11. Petitioner does not
`seek express interpretation of any term of the ’351 patent, but responds to
`Patent Owner’s proposed interpretation in its Reply. Reply 17–21.
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`Claim 1 recites various limitations pertaining to a “message content
`that includes a media component.” For example, claim 1 recites “receiving
`at a recipient user device a first header information corresponding to a first
`message content that includes a media component,” “receiving at the
`recipient user device the first message content including the media
`component,” “providing a second display . . . displaying the first message
`content including the media component,” and “automatically deleting the
`first message content including the media component at a predetermined
`amount of time after being displayed.”
`The district court construed the phrase to mean “message content that
`includes sound and/or visual information and does not include header
`information.” Ex. 2002, 22–24. Patent Owner argues that we should adopt
`the district court’s construction “with the understanding that it includes
`message content that is attached to the email or linked via publicly
`accessible [Uniform Resource Locator (URL)].” PO Resp. 10–11.
`According to Patent Owner, “‘message content’ encompasses a URL that
`provides the access path to media content.” Id. at 7. In support of its
`proposed interpretation, Patent Owner relies on a passage from
`the Specification of the ’351 patent stating that “a message content of an
`electronic message may include an attached and/or linked file.” Ex. 1001,
`col. 7, ll. 39–52 (cited at PO Resp. 8). Patent Owner also directs us to
`testimony from Petitioner’s declarant, Sandeep Chatterjee, Ph.D., in a
`different inter partes review involving a patent related to the ’351 patent.
`PO Resp. 8–9 (citing Ex. 2010 ¶ 100 n.25). 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
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`URL, are both examples of ‘passing information,’” and “[t]he same is true of
`‘message content.’” 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 7–11.
`Petitioner responds by arguing that although “the [S]pecification
`states that [the] ‘message content’ may include a ‘linked file,’ it never states
`that the link itself is ‘message content.’” Reply 18. 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, col. 7, ll. 55–59 (cited at Reply 18–19) (emphasis added).
`Petitioner explains that “[t]he URL . . . in the proposed combination
`[of Wren, Berger, Thorne, and Hanna] does not qualify as ‘message content’
`because it identifies ‘the location of’ the video message on the server in
`Hanna.” Reply 19 (citing Ex. 1005, col. 5, ll. 26–28). 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 (emphasis added).
`We agree with Petitioner’s arguments. The Specification of the
`’351 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
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`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, col. 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. In other words, the email 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 col. 7,
`ll. 52–55. 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. See PO Resp. 8–9 (citing Ex. 2010 ¶ 100
`n.25). 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. 2010 ¶ 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 the broadest reasonable interpretation of the
`phrase “message content that includes a media component” does not
`encompass a URL in a message (linked to content accessible via that URL).
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`No further express interpretation of this phrase is necessary for purposes of
`this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe
`terms ‘that are in controversy, and only to the extent necessary to resolve the
`controversy,’ we need not construe [a particular claim limitation] where the
`construction is not ‘material to the . . . dispute.’” (citations omitted)).
`
`B. Principles of Law
`To prevail in challenging claims 1, 5, 6, 9, 11, and 12 of the
`’351 patent, Petitioner must demonstrate by a preponderance of the evidence
`that the claims are unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
`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 “the scope and content of the prior art”;
`“differences between the prior art and the claims at issue”; and “the level of
`ordinary skill in the pertinent art.”3 Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966).
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`
`3 Additionally, secondary considerations, such as “commercial success, long
`felt but unsolved needs, failure of others, etc., might be utilized to give light
`to the circumstances surrounding the origin of the subject matter sought to
`be patented. As indicia of obviousness or nonobviousness, these inquiries
`may have relevancy.” Graham, 383 U.S. at 17–18. Patent Owner, however,
`has not presented any such evidence.
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`A patent claim “is not proved obvious merely by demonstrating that
`each of its elements was, independently, known in the prior art.” KSR,
`550 U.S. at 418. An obviousness determination requires finding “both ‘that
`a skilled artisan would have been motivated to combine the teachings of the
`prior art references to achieve the claimed invention, and that the skilled
`artisan would have had a reasonable expectation of success in doing so.’”
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359,
`1367–68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418
`(for an obviousness analysis, “it 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 way the claimed new invention does”).
`A petitioner’s assertion of obviousness “cannot employ mere conclusory
`statements. The petitioner must instead articulate specific reasoning, based
`on evidence of record, to support the legal conclusion of obviousness.” In re
`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (citing
`KSR, 550 U.S. at 418).
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`C. Level of Ordinary Skill in the Art
`Petitioner argues that a person of ordinary skill in the art at the time of
`the ’351 patent “would have possessed 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),” relying on testimony from
`its declarant, Dr. Chatterjee. Pet. 5–6 (citing Ex. 1002 ¶¶ 13–15). Patent
`Owner does not propose a different level of ordinary skill in the art in its
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`Response. Patent Owner’s declarant, Kevin C. Almeroth, Ph.D., “generally
`agree[s]” with Petitioner’s characterization of the person of ordinary skill in
`the art, 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. We agree, as the ’351 patent
`describes the design of a software user interface that purportedly provides
`for reduced traceability of electronic messages. See, e.g., Ex. 1001,
`Abstract, col. 1, l. 44–col. 3, l. 9. Based on the record developed during
`trial, including our review of the ’351 patent and the types of problems and
`solutions described in the ’351 patent and cited prior art, we agree with and
`adopt Petitioner’s assessment of the level 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).
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`D. Obviousness Ground Based on Wren, Berger, and Thorne
`(Claims 1, 5, 6, and 11)
`1. Wren
`Wren describes “a multimedia video messaging system that provides
`an end-user with the ability to record and send arbitrary-length audio and
`video content” as “audiovisual messages that are automatically addressed to
`recipients based on one-touch activation.” Ex. 1003, Abstract, ¶ 2. The
`sending user (referred to in Wren as the “end-user”) “initiate[s] the method
`from a menu, address-book or an active voice or audio call screen” on the
`user’s device (e.g., a mobile phone). Id. ¶¶ 10, 23. For example, the device
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`may provide the end-user with a “Send” option, which “will auto-compose
`the message [to the desired recipient(s)] based on parameters submitted to
`the method from the point of initiation” or “may prompt the user for the to:
`address that will typically be a phone number or e-mail address, subject text
`and body text.” Id. ¶ 29. The device then sends the movie message in one
`of two ways. Id. ¶¶ 11, 29. If the video is less than a certain size, it is sent
`as an attachment to the message. Id. ¶ 11. If the video is above that size,
`however, “the video and audio streams to a remote disk that is available on
`the world-wide web and a message is created and sent with a [Uniform
`Resource Identifier (URI)4] to the streamed media embedded in the body of
`the message.” Id. “When the message is received, an end-user can click on
`the attachment or the URI to play the video and audio.” Id.
`Figures 9A–9C of Wren are “an illustration of the end-user experience
`receiving the one-touch message with a compatible mobile phone or
`[personal computer (PC)] with a compatible e-mail client.” Id. ¶ 22.
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`4 Dr. Chatterjee explains that a URI is a “sequence of characters that
`identifies a resource,” the most common example of which is a URL, and
`“[t]he terms URL and URI are often used interchangeably when the resource
`being identified is accessible over the Internet, as is the case in Wren.”
`Ex. 1002 ¶ 33 n.5.
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`Figures 9A and 9B of Wren are reproduced below.
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`Figure 9A depicts “a notification of a new message,” and Figure 9B depicts
`“a view of the Movie once the user selects play from a new message
`notification.” Id. ¶ 32. Wren also includes Figure 9C, which is reproduced
`below.
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`Figure 9C depicts “an e-mail message containing the Movie.” Id.
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`2. Berger
`Berger describes a unified messaging (UM) system where a user can
`access different types of messages (e.g., voicemail, email, facsimile, video)
`from a remote UM messaging server with a “seamless user interface”
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`presented on a mobile phone. Ex. 1004 ¶¶ 1, 28. The messaging server
`converts data as necessary (e.g., text to speech, and vice versa) so that it can
`be accessed and provided to the user. Id. ¶¶ 1–4, 28–30. Figure 4 of Berger
`is reproduced below.
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`
`
`Figure 4 depicts list of available messages 120 displayed on the user’s
`mobile phone, including email messages 122 and voice messages 124. Id.
`¶ 41. The list is provided to the user’s phone as “a web page, in a markup
`language compatible with the requesting device,” and displayed as
`“hyperlinked messages.” Id. The user selects a particular message by
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`moving cursor 132 up and down and pressing SEND button 134. Id. ¶ 42.
`Upon doing so, the phone’s browser sends a Hypertext Transfer Protocol
`(HTTP) request to the messaging server, and the messaging server performs
`any necessary conversion of the message and “deliver[s] . . . the message
`(in the form of a web page, using HTTP) to the phone” for display to the
`user. Id. ¶¶ 43–44. Berger discloses that each message has an associated
`message number (displayed as 1–5 in Figure 4 above), which is included in
`each hyperlink of the displayed list and the HTTP request from the phone.
`Id. ¶¶ 45–57.
`
`
`3. Thorne
`Thorne describes a method of “communicating data text messages,
`such as E-Mail, between computers connected to a network while providing
`selectable degrees of security for each message.” Ex. 1006, Abstract. In
`relevant part, Thorne describes starting a timer when an “E-Mail message is
`opened and the text displayed,” determining whether a “maximum display
`time has been exceeded,” and, if so, closing the message display and
`“delet[ing] and purg[ing]” the message. Id. at col. 10, ll. 35–38, col. 11,
`ll. 5–11, Fig. 5B (steps 548, 550, and 564). “This feature is provided in
`order to [e]nsure that a user does not bring the message up and leave it
`displayed for hours.” Id. at col. 10, ll. 38–40.
`
`
`4. Claim 1
`Petitioner explains in detail how Wren, Berger, and Thorne teach all
`of the limitations of claim 1, relying on the testimony of Dr. Chatterjee as
`support. See Pet. 21–53 (citing Ex. 1002). Petitioner relies on Wren for the
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`IPR2018-00404
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`majority of the limitations of claim 1. Petitioner argues that Wren teaches a
`computer-implemented method of handling an “electronic message”
`(i.e., movie message) comprising (1) receiving, at a “recipient user device”
`(i.e., the recipient’s mobile phone), a “first header information” (i.e., sender
`identification (“Jane Doe”) and time (“9:30AM”)) corresponding to a “first
`message content that includes a media component” (i.e., video);
`(2) providing a “first display” via the recipient user device including the first
`header information but “not displaying the media component” (i.e., the
`screen display shown in Figure 9A, which does not show the video);
`(3) receiving the first message content including the media component at the
`recipient user device; (4) receiving a “selection” by the recipient user via the
`first display (i.e., the user selecting “Play” on the screen display shown in
`Figure 9A); and (5) “in response to the selection,” providing a “second
`display” via the recipient user device with the message content including the
`media component “without displaying a username associated with the first
`header information” (i.e., the screen display shown in Figure 9B, which does
`not show a username). Id. at 21–26, 30–31, 44–45, 47–48.
`We note that unlike certain claims in patents related to the
`’351 patent, claim 1 does not recite that the displays are “reduced
`traceability displays” or that all identifying information and message content
`for the message are displayed separately. In other words, claim 1 of the
`’351 patent may be satisfied as long as the first display includes “a first
`header information” but does not display “a media component” that is
`included in the second display, and the second display includes “a first
`message content” including the media component but does not display
`“a username associated with the first header information.” By contrast, the
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`challenged claims of the patents involved in Cases IPR2018-00397 and
`IPR2018-00408 recite “reduced traceability displays,” which we interpreted
`in those inter partes reviews to mean “an arrangement of displays that
`enables reduced traceability of electronic messages (e.g., by separately
`displaying identifying information and message content).” See
`IPR2018-00397, Paper 10, 8–9; IPR2018-00408, Paper 10, 8–9.
`Petitioner relies on Berger for two limitations of claim 1. First, claim
`1 recites that the first display “includ[es] the first header information in a
`message list” and that the recipient user makes a “selection” that is “directed
`to a portion of the message list corresponding to the first header
`information.” Because Wren displays only a single message at a time,
`Petitioner relies on Berger for these limitations, citing the list of messages
`shown in Figure 4 of Berger, which displays “header information” for
`individual messages and allows the user to select a particular message by
`moving the cursor. Pet. 26–28, 44–48 & n.3. Petitioner explains that in the
`asserted combination, “Figure 9A of Wren (the ‘first display’) would be
`further adapted to display a message list containing multiple messages, each
`item in the list listing header information as disclosed in Berger.” Id. at 28
`(emphases omitted).
`Second, claim 1 recites that “the first message content including the
`media component is associated with a unique message ID that correlates the
`first message content including the media component with the first header
`information.” As explained above, we interpret “correlates” to mean
`associates. See supra Section II.A. According to Petitioner and
`Dr. Chatterjee, a person of ordinary skill in the art would have understood
`that Wren must correlate the header information and message content
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`because, when the user selects “Play” on the screen with the header
`information shown in Figure 9A, Wren plays the video corresponding to that
`information, as shown in Figure 9B. Pet. 30–32 (citing Ex. 1002 ¶ 67).
`Petitioner acknowledges, though, that Wren does not disclose a “unique
`message ID” that correlates the two components, and thus also relies on
`Berger. Id. at 32–39. Specifically, Petitioner contends that in Berger,
`a message number is “associa
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