Paper 36
`Trials@uspto.gov
`571-272-7822 Entered: Aug. 1, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SNAP INC.,
`Petitioner,
`
`v.
`
`VAPORSTREAM, INC.,
`Patent Owner.
`____________
`
`Cases IPR2018-00416 and IPR2018-00439
`Patent 9,413,711 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)
`
`
`
`
`
`
`

`

`IPR2018-00416 and IPR2018-00439
`Patent 9,413,711 B2
`
`INTRODUCTION
`I.
`Snap Inc., (“Petitioner”) filed two Petitions requesting inter partes
`review of claims 1, 4–6, 11, 13, 15, and 16 of U.S. Patent No. 9,413,711 B2
`(Ex. 1001,1 “the ’711 patent”) in IPR2018-00416 and IPR2018-00439.
`Paper 2 (“Pet.”). In each proceeding, Vaporstream Inc. (“Patent Owner”)
`filed a Patent Owner Response, Petitioner filed a Reply, and Patent Owner
`filed a Sur-Reply, as listed in the following chart.
`Case
`Claim(s) Institution
`Petition Response
`Decision
`Paper 10
`(“Dec.”)
`
`Reply
`
`Paper 2
`(“Pet.”)
`
`Paper 20
`(“PO Resp.”)
`
`Paper 24
`(“Reply”)
`
`IPR2018-
`00416
`
`IPR2018-
`00439
`
`1, 4–6,
`11, 15,
`and 16
`13
`
`Paper 10
`(“439
`Dec.”)
`
`Paper 2
`(“439
`Pet.”)
`
`Paper 20
`(“439
`PO Resp.”)
`
`Paper 26
`(“439
`Reply”)
`
`Sur-
`Reply
`Paper 26
`(“Sur-
`Reply”)
`Paper 28
`(“439
`Sur-
`Reply)
`
`As to the 439 Proceeding, Patent Owner also filed a Motion to Amend
`(439 Paper 21, “Mot.”), Petitioner filed an Opposition (439 Paper 24),
`Patent Owner filed a Reply (439 Paper 29), and Petitioner filed a Sur-Reply
`(439 Paper 35). A combined oral hearing was held on April 17, 2019, and a
`transcript of the hearing is included in the record (Paper 34, “Tr.”).
`IPR2018-00416 and IPR2018-00439 involve the same challenged
`patent and parties, and there is overlap in the evidence submitted by the
`
`
`1 Unless otherwise specified with the prefix “439,” we refer to papers and
`exhibits filed in IPR2018-00416.
`
`2
`
`

`

`IPR2018-00416 and IPR2018-00439
`Patent 9,413,711 B2
`
`parties.2 To administer the proceedings more efficiently, we exercise our
`authority under 35 U.S.C. § 315(d) to consolidate the two proceedings for
`purpose of issuing one final written decision.
`We have jurisdiction 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 not shown by a preponderance of the evidence that claims
`1, 4–6, 11, 13, 15, and 16 of the ’711 patent are unpatentable.
` Related Matters
`The parties indicate that the ’711 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 3, 1. Petitioner filed eight additional petitions for
`inter partes review of various related patents owned by Patent Owner in
`IPR2018-00200, IPR2018-00312, IPR2018-00369, IPR2018-00397,
`IPR2018-00404, IPR2018-00408, IPR2018-00455, and IPR2018-00458.
`See Pet. 1–2; Paper 3, 1–3. Inter partes review was instituted in each of
`these proceedings.
`
` The ’711 Patent
`The ’711 patent is directed to “[a]n electronic messaging system and
`method with reduced traceability.” Ex. 1001, Abstract. As noted in the ’711
`patent specification, “[t]ypically, an electronic message between two people
`is not private.” Id. at 1:45–46. Messages may be intercepted by third
`
`
`2 The parties’ arguments and evidence are substantially identical between the
`two proceedings as relates to the issues discussed in this Final Written
`Decision. We will highlight any areas where the parties made additional or
`different arguments between the two proceedings.
`3
`
`

`

`IPR2018-00416 and IPR2018-00439
`Patent 9,413,711 B2
`
`parties; logged and archived; or copied, cut, pasted, or printed. Id. at 1:46–
`51. “This may give a message a ‘shelf-life’ that is often uncontrollable by
`the sender or even the recipient.” Id. at 1:51–52.
`Figure 3 of the ’711 patent is reproduced below.
`
`
`Figure 3 depicts an example of the ’711 patent’s messaging system. Id. at
`4:20–22. System 300 includes user computers 315, 320 and server computer
`310, connected via network 325. Id. at 12:3–6. Electronic message 330 is
`communicated via this system using a method detailed below. Id. at 12:6–7,
`12:17–19. Reply electronic message 340 also is illustrated, but is not
`discussed in further detail herein. Id. at 12:7–10.
`
`
`
`4
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`IPR2018-00416 and IPR2018-00439
`Patent 9,413,711 B2
`
`Figure 5 of the ’711 patent is reproduced below.
`
`
`Figure 5 is a flow chart depicting an exemplary method of the ’711 patent.
`Id. at 4:26–27. In step 510, the user inputs the recipient’s address on a
`screen. See id. at 12:48–50, 12:60–63, 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
`
`5
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`

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`IPR2018-00416 and IPR2018-00439
`Patent 9,413,711 B2
`
`address, Short Message Service (SMS) address, telephone number, or
`Blackberry personal identification number. Id. at 8:19–26.
`After the 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 electronic message. Id. at 12:63–66, Fig. 9. “An electronic
`message may be any electronic file, data, and/or other information
`transmitted between one or more user computers.” Id. at 8:56–58. The
`electronic message may include text, image, video, audio, or other types of
`data. Id. at 8:58–66. In one embodiment, “the recipient address and the
`message content are entered on separate display screens.” Id. at 12:66–67.
`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 10:25–29, 13:2–5.
`At step 520, the message content is communicated to the server. Id. at
`13:12–15. 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
`13:15–19. “[A] correlation (e.g., a non-identifying message ID . . . ) may be
`utilized to associate the two components.” Id. at 8:6–10; see also id. at
`9:23–27 (“Utilizing a message ID associated with an electronic message,
`such as electronic message 105, system 100 may handle (e.g., store, deliver,
`display, etc.) a header information and a message content of a particular
`electronic message separately with the ability to correlate the two at a later
`time.”). In this regard, “at step 530, system 300 generates a message ID for
`associating the separated message content and header information of
`
`6
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`

`IPR2018-00416 and IPR2018-00439
`Patent 9,413,711 B2
`
`electronic message 330. Server 310 maintains a correspondence between the
`message content and header information.” Id. at 13:44–48; see also id. at
`9:15–17 (“A message ID is used to associate a container (i.e., header)
`information with a corresponding separately-stored message content.”). The
`’711 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
`14:45–15:34.
`To retrieve the message, the recipient first logs in to the system at
`step 550. Id. at Fig. 5, 15:35–37. At step 555, the server communicates to
`the recipient user computer a display image showing header information for
`multiple messages. Id. at 15:41–43, 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 associated with a
`corresponding message ID for the respective message. Id. at 9:29–33,
`15:63–67. 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 16:7–10. 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 16:29–31, Fig. 11. At step 570, the message is automatically and
`permanently deleted from the server at a predetermined time. Id. at 16:55–
`57. At step 575, the user closes the display image, returns to the message
`listing, or chooses to respond to the message. Id. at 17:44–47. At step 585,
`
`7
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`

`IPR2018-00416 and IPR2018-00439
`Patent 9,413,711 B2
`
`the message content is automatically deleted from the recipient user
`computer after viewing. Id. at 17:53–56.
` Claims at Issue
`Petitioner challenges claims 1, 4–6, 11, 13, 15, and 16 of the ’711
`patent, of which claim 1 is the sole independent claim. Claim 1 is
`reproduced below:
`1. A method of handling an electronic message between a
`sending user device and a recipient user device in a
`networked environment, the method comprising:
`providing a first reduced traceability electronic messaging
`application program to a sending user device, the first
`reduced traceability electronic messaging application
`program including instructions executable by a first
`processor of the sending user device to provide a first
`plurality of reduced traceability displays via the sending
`user device;
`providing a second reduced traceability electronic messaging
`application program to a recipient user device, the second
`reduced traceability electronic messaging application
`program including instructions executable by a second
`processor of the recipient user device to provide a second
`plurality of reduced traceability displays via the recipient
`user device;
`receiving an electronic message at a server via a first network,
`the electronic message sent from the sending user device,
`wherein the electronic message received at the server
`includes an identifier of a recipient and a message content
`including a media component, the first plurality of reduced
`traceability displays including a first display and a second
`display, the first display configured to allow a user of the
`sending user mobile device to associate the message
`content including a media component with the electronic
`message, the second display configured to allow the user
`of the sending user mobile device to associate the
`identifier of a recipient with the electronic message, the
`
`8
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`IPR2018-00416 and IPR2018-00439
`Patent 9,413,711 B2
`
`instructions executable by the first processor providing the
`first and second displays such that the identifier of the
`recipient is not displayed with the media component via
`the first display preventing a single screen capture of both
`the identifier of a recipient and the media component; and
`transmitting the electronic message from the server to the
`recipient user device via a second network that includes a
`wireless communications portion, wherein the electronic
`message transmitted to the recipient user device includes
`an identifier of a sending user and the message content
`including a media component, the second plurality of
`reduced traceability displays including a third display and
`a fourth display, the third display presenting the identifier
`of a sending user, the fourth display presenting the media
`component, the instructions executable by the second
`processor providing the third and fourth displays such that
`the identifier of a sending user is not displayed with the
`media component via the fourth display preventing a
`single screen capture of both the identifier of a sending
`user and the media component, wherein the identifier of a
`recipient and the message content received at the server
`each optionally include a correlation to allow the server to
`receive the identifier of a recipient and the message
`content separately and to relate the identifier of a recipient
`to the message content if the identifier of a recipient is
`received separately from the message content at the server,
`and wherein the identifier of a recipient and the message
`content transmitted from the server each optionally
`include a correlation to allow the identifier of a recipient
`and the message content to be related to each other by the
`second
`reduced
`traceability electronic messaging
`application program if the identifier of a recipient and the
`message content are
`transmitted from
`the server
`separately.
`Id. at 24:8–25:4.
`
`9
`
`

`

`IPR2018-00416 and IPR2018-00439
`Patent 9,413,711 B2
`
`Basis Claim(s) Challenged
`§ 103 1, 4–6, and 11
`
` Instituted Grounds of Unpatentability
`The instant consolidated inter partes review involves the following
`grounds of unpatentability:
`References
`Namias,3 Wren,4 Fardella,5 Stevenson,6
`and Yuan7
`Namias, Wren, Fardella, Stevenson, Yuan,
`and Thorne8
`Namias, Wren, Fardella, Stevenson, Yuan,
`RFC 2821,9 and Hazel10
`
`
`§ 103 15 and 16
`
`§ 103 13
`
` Person of Ordinary Skill in the Art
`On behalf of Petitioner, Sandeep Chatterjee, Ph.D., 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
`
`
`3 U.S. Patent Pub. No. 2002/0112005 A1 (published Aug. 15, 2002)
`(Ex. 1003, “Namias”).
`4 U.S. Patent Pub. No. 2005/0021803 A1 (filed June 9, 2003) (Ex. 1004,
`“Wren”).
`5 U.S. Patent Pub. No. 2001/0032246 A1 (published Oct. 18, 2001)
`(Ex. 1005, “Fardella”).
`6 Nancy Stevenson, Tablet PCs for Dummies (2003) (Ex. 1006,
`“Stevenson”).
`7 Michael Juntao Yuan, Enterprise J2ME: Developing Mobile Java
`Applications (2004) (Ex. 1007, “Yuan”).
`8 U.S. Patent No. 5,958,005 (issued Sept. 18, 1999) (Ex. 1008, “Thorne”).
`9 Simple Mail Transfer Protocol (SMTP), Request for Comments (RFC)
`2821, Apr. 2001 (439 Ex. 1022, “RFC 2821”).
`10 Philip Hazel, Exim: The Mail Transfer Agent (2001) (439 Ex. 1024,
`“Hazel”).
`
`10
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`

`

`IPR2018-00416 and IPR2018-00439
`Patent 9,413,711 B2
`
`network, such as the Internet (or equivalent degree or experience).” Pet. 6–7
`(citing Ex. 1002 ¶¶ 13–15). Patent Owner does not propose a different level
`of ordinary skill in the art in its Response. Patent Owner’s declarant, Kevin
`C. Almeroth, Ph.D., agrees 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 ’711 patent describes the design of a software user interface that
`purportedly provides for reduced traceability of electronic messages. See,
`e.g., Ex. 1001, Abstract, 1:36–4:5. Based on the record developed during
`trial, including our review of the ’711 patent and the types of problems and
`solutions described in the ’711 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).
`II. DISCUSSION
` Claim Construction
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b)
`
`11
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`

`

`IPR2018-00416 and IPR2018-00439
`Patent 9,413,711 B2
`
`(2018).11 Petitioner does not seek express construction of any term of the
`’711 patent. Pet. 14. Patent Owner advocates for adoption of the district
`court’s claim construction of “reduced traceability display” (PO Resp. 12
`(citing Ex. 2003, 15–17)) and for the “correlation” terms (id. at 13–14).
`In the Decisions on Institution, based on the record at the time, we
`preliminarily interpreted “reduced traceability displays” in claim 1 to mean
`“an arrangement of displays that enables reduced traceability of electronic
`messages (e.g., by separately displaying identifying information and
`message content).” Dec. 9–10. Patent Owner proposed this interpretation in
`the related litigation, and Petitioner applies it in the Petitions. See Ex. 2003,
`15–17; Pet. 29. The parties do 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. See PO Resp.
`12.
`
`Based on our review of the Petitions, Patent Owner Responses, and
`both parties’ supporting evidence, we determine that no other terms require
`express construction for the purposes of this 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.’”)
`
`11 The Petitions in these proceeding were filed on December 31, 2017
`(IPR2018-00416) and January 9, 2018 (IPR2018-00439), 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).
`
`12
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`

`

`IPR2018-00416 and IPR2018-00439
`Patent 9,413,711 B2
`
`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999)).
` Asserted Obviousness Based on Combinations with Wren
`Petitioner contends that claims 1, 4–6, and 11 of the ’711 patent are
`unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of
`Namias, Wren, Fardella, Stevenson, and Yuan. Pet. 18–67. In addition,
`Petitioner contends that dependent claims 15 and 16 are unpatentable over
`Namias, Wren, Fardella, Stevenson, Yuan, and Thorne under 35 U.S.C.
`§ 103(a). Id. at 67–74. Petitioner also contends that dependent claim 13
`would have been obvious over the combination of Namias, Wren, Fardella,
`Stevenson, Yuan, RFC 2821, and Hazel. 439 Pet. 12–71. A common thread
`in all of these grounds is Petitioner’s reliance upon Wren to teach certain
`aspects of claim 1. For the reasons described below, we determine
`Petitioner has failed to establish the unpatentability of claims 1, 4–6, 11, 13,
`15, and 16 by a preponderance of the evidence.
`
`1. Overview of 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. 1004, 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
`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:
`
`13
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`

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`Patent 9,413,711 B2
`
`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, the video
`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)12] 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.
`Figures 9A and 9B of Wren are reproduced below.
`
`
`
`
`
`
`12 Petitioner’s declarant, Dr. Chatterjee, testified that a “[Uniform Resource
`Locator (URL)] is a specific type of a URI, which is a uniform resource
`identifier. And the difference between – URL is – you can think about it as
`like a subset of a URI. And it’s a subset because the URL indicates a
`location as well.” Ex. 2012, 20:22–21:1. Patent Owner’s declarant, Michael
`Shamos, Ph.D., explained that “[a]s used in Wren, ‘URI’ has the same
`meaning as ‘URL.’” Ex. 2001 ¶ 43 n.4. For the purposes of this Decision,
`we will consider the terms URL and URI to be interchangeable.
`14
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`IPR2018-00416 and IPR2018-00439
`Patent 9,413,711 B2
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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.
`
`
`Figure 9C depicts “an e-mail message containing the Movie.” Id.
`2. Analysis
`Claim 1 is directed to a method of handling an electronic message and
`it includes limitations directed to both the sending and receiving portions of
`the electronic message system. Ex. 1001, 24:8–25:4. With respect to the
`latter, claim 1 recites the following limitations pertaining to a “second
`plurality of reduced traceability displays” including a “third display” and
`“fourth display”:
`traceability electronic
`providing a second reduced
`messaging application program to a recipient user device, the
`second reduced traceability electronic messaging application
`program including instructions executable by a second processor
`of the recipient user device to provide a second plurality of
`reduced traceability displays via the recipient user device; [and]
`. . .
`
`15
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`Patent 9,413,711 B2
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`transmitting the electronic message from the server to the
`recipient user device via a second network that includes a
`wireless communications portion, wherein
`the electronic
`message transmitted to the recipient user device includes an
`identifier of a sending user and the message content including a
`media component, the second plurality of reduced traceability
`displays including a third display and a fourth display, the third
`display presenting the identifier of a sending user, the fourth
`display presenting the media component, the instructions
`executable by the second processor providing the third and fourth
`displays such that the identifier of a sending user is not displayed
`with the media component via the fourth display preventing a
`single screen capture of both the identifier of a sending user and
`the media component, wherein the identifier of a recipient and
`the message content received at the server each optionally
`include a correlation to allow the server to receive the identifier
`of a recipient and the message content separately and to relate
`the identifier of a recipient to the message content if the identifier
`of a recipient is received separately from the message content at
`the server, and wherein the identifier of a recipient and the
`message content transmitted from the server each optionally
`include a correlation to allow the identifier of a recipient and the
`message content to be related to each other by the second reduced
`traceability electronic messaging application program if the
`identifier of a recipient and the message content are transmitted
`from the server separately.
`For reasons described below, we determine that Petitioner has not met its
`burden to establish that the cited art teaches the receiving portions of the
`claim.
`Petitioner relies upon Wren to teach the details of the recipient user
`device. Pet. 20 (citing Ex. 1002 ¶ 46). Petitioner asserts that “Wren
`expressly discloses that the video message can be delivered to a ‘recipient
`user device’ in the form of a mobile phone.” Id. (citing Ex. 1004 ¶¶ 8, 9, 22)
`(emphasis omitted). “Wren illustrates the ‘end-user experience’ of receiving
`a video message (which Wren calls a ‘movie message’) on a mobile phone.”
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`Id. at 34 (citing Ex. 1004 ¶ 22). Petitioner cites to Figures 9A and 9B of
`Wren to teach the “second ‘plurality of reduced traceability displays’” on the
`recipient user device. Id. at 34–35 (citing Ex. 1002 ¶¶ 81–82). “Figure 9A
`of Wren shows identifying information associated with the message (e.g.,
`sender identification ‘Jane Doe’ and time ‘9:30AM’), but does not display
`any of the movie message content. Conversely, Figure 9B shows the movie
`message content, but does not include any identifying information.” Id. at
`35. Petitioner relies on Wren’s Figures 9A and 9B respectively to teach the
`claimed third and fourth displays, which, according to Petitioner, separately
`“present[] the identifier of a sending user” and “present[] the media
`component.” Id. at 52.
`Claim 1 recites providing a “second plurality of reduced traceability
`displays via the recipient user device.” Patent Owner argues that Wren does
`not teach such reduced traceability displays. PO Resp. 46–57. As explained
`above, we interpret “reduced traceability displays” in claim 1 to mean an
`arrangement of displays that enables reduced traceability of electronic
`messages (e.g., by separately displaying identifying information and
`message content). See supra Section II.A. We have reviewed Petitioner’s
`arguments and evidence in light of the construction and for the reasons that
`follow, we determine that Petitioner has not met its burden to establish that
`this limitation would have been obvious over the cited art.
`Again, Petitioner argues that the screen displays shown in Figures 9A
`and 9B of Wren are “reduced traceability displays” because they display
`
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`IPR2018-00416 and IPR2018-00439
`Patent 9,413,711 B2
`
`header information and message content separately. Pet. 34–36, 5213
`(arguing that the limitation is satisfied “because [Figures 9A and 9B of
`Wren] display message content and recipient identifying information
`separately”). Wren discloses: “FIG. 9A shows a notification of a new
`message. FIG. 9B shows a view of the Movie once the user selects play
`from a new message notification.” Id. at 33–34 (quoting Ex. 1004 ¶ 32).
`Petitioner asserts that “Figure 9A of Wren shows identifying information
`associated with the message (e.g., sender identification ‘Jane Doe’ and time
`‘9:30AM’), but does not display any of the movie message content.” Id. at
`35.
`
`According to Patent Owner, “[t]he problem with Petitioner’s
`argument is that Figure 9A includes more than just header information—it
`includes the text ‘New Movie,’ which would not typically be considered
`header information.” PO Resp. 46. Dr. Chatterjee, on behalf of Petitioner,
`opines “that Figure 9A shows the text ‘New Movie,’ but there is nothing in
`Wren to suggest that this text was part of the message sent from Jane Doe.”
`Ex. 1002 ¶ 8114; see also Reply 11–21 (arguing that “New Movie” is not
`message content). Patent Owner argues that Petitioner fails to provide
`
`13 We note that IPR2018-00439 is directed to the alleged unpatentability of
`dependent claim 13. As part of Petitioner’s analysis of claim 13, Petitioner
`addresses the unpatentability of claim 1. Petitioner’s allegations regarding
`claim 1 are substantially identical as to the “reduced traceability displays”
`limitation. Compare Pet. 34–36, 52, with 439 Pet. 26–28, 44–45; compare
`Reply 11–20, with 439 Reply 11–20. We refer to the papers and exhibits
`filed in IPR2018-00416 for convenience, but our analysis applies equally to
`both cases.
`14 We note that Petitioner does not specifically discuss the “New Movie” text
`in either Petition, but its declarant, Dr. Chatterjee, does discuss this language
`in his original declaration.
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`IPR2018-00416 and IPR2018-00439
`Patent 9,413,711 B2
`
`sufficient proof that “New Movie” is not “message content,” and thus, has
`not shown that Wren teaches providing “reduced traceability displays.” PO
`Resp. 46–57; Sur-Reply 12–17.
`Initially, we note that Petitioner does not point to—and we do not
`find—any express disclosure in Wren of the concept of separating header
`information and message content for display to a message recipient. Indeed,
`the vast majority of the reference is directed to functionality at the
`sender-side, such as how the messaging functionality is initiated, how a
`message is created, and how video content is sent as a message. See
`Ex. 1004 ¶¶ 2, 8–12, 23–31, Figs. 1–8. Only one paragraph of Wren’s
`written description pertains to what happens at the receiver-side:
`FIG. 9 is an illustration of a recipient receiving the
`one-touch arbitrary length movie message with video and audio.
`FIG. 9A shows a notification of a new message. FIG. 9B shows
`a view of the Movie once the user selects play from a new
`message notification. FIG. 9C shows an e-mail message
`containing the Movie. This illustration is of an image that is
`automatically played inline with the e-mail reader.
`Id. ¶ 32. Paragraph 32 includes little detail about what is shown in the
`figures, and does not reference the “New Movie” text in particular. Also,
`as both parties and their declarants agree, Wren is silent as to where
`“New Movie” originated—whether from the sending device, the recipient
`mobile phone, or something else. See PO Resp. 47; Reply 20; Ex. 2009
`¶ 76; Ex. 2012, 43:2–45:16. Thus, what we must determine is how a person
`of ordinary skill in the art, reading paragraph 32 and the cited figures in
`context with the rest of Wren, would have understood “New Movie” in
`Figure 9A. See Life Techs., Inc. v. Clontech Labs., Inc., 224 F.3d 1320,
`1325 (Fed. Cir. 2000) (obviousness is “assessed from the perspective of the
`
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`IPR2018-00416 and IPR2018-00439
`Patent 9,413,711 B2
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`hypothetical person of ordinary skill in the art”). According to Petitioner,
`the “most reasonable inference” is that “New Movie” is generated and
`displayed by the recipient device. Reply 17. Patent Owner responds that
`nothing in Wren supports Petitioner’s reading, and in fact the reference
`suggests the opposite, i.e., that the text is part of the message sent by the
`sending device. PO Resp. 51–56; Sur-Reply 14. We address each of
`Petitioner’s contentions, and Patent Owner’s responses, in turn.
`First, Dr. Chatterjee opines that “there is nothing in Wren to suggest
`that [the ‘New Movie’] text was part of the message sent from Jane Doe.”
`Ex. 1002 ¶ 81 (cited on page 35 of the Petition). As explained above,
`however, neither does Wren disclose the opposite. Wren is completely silent
`as to whether “New Movie” came from the sending device as part of the
`message or whether it was generated by the recipient device on its own. In
`such circumstances, the fact that Wren does not contain an express
`disclosure of the former is not automatically proof of the latter. Petitioner
`bears the burden to prove unpatentability by a preponderance of the
`evidence, 35 U.S.C. § 316(e), including the articulation of “specific
`reasoning, based on evidence of record, to support the legal conclusion of
`obviousness,” In re Magnum Oil Tools Int’l