Trials@uspto.gov
`571-272-7822
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` Paper 42
`Entered: July 31, 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 IPR2018-00455
`Patent 9,313,157 B2
`____________
`
`
`
`Before STEPHEN C. SIU, JUSTIN T. ARBES, and STACEY G. WHITE,
`Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge ARBES.
`
`Opinion Dissenting filed by Administrative Patent Judge SIU.
`
`ARBES, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`
`571-272-7822
`
`
`
`
` Paper 42
`Entered: July 31, 2019
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SNAP INC.,
`Petitioner,
`
`v.
`
`VAPORSTREAM, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00455
`Patent 9,313,157 B2
`____________
`
`
`
`Before STEPHEN C. SIU, JUSTIN T. ARBES, and STACEY G. WHITE,
`Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge ARBES.
`
`Opinion Dissenting filed by Administrative Patent Judge SIU.
`
`ARBES, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
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`IPR2018-00455
`Patent 9,313,157 B2
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`I. BACKGROUND
`Petitioner Snap Inc. filed a Petition (Paper 2, “Pet.”) requesting inter
`partes review of claims 1–4, 6, 7, and 10 of U.S. Patent No. 9,313,157 B2
`(Ex. 1001, “the ’157 patent”) pursuant to 35 U.S.C. § 311(a). On August 31,
`2018, we instituted an inter partes review of all challenges raised in the
`Petition. Paper 10 (“Dec. on Inst.”). Patent Owner Vaporstream, Inc.
`subsequently filed a Patent Owner Response (Paper 18, “PO Resp.”),
`Petitioner filed a Reply (Paper 24, “Reply”), and Patent Owner filed a
`Sur-Reply (Paper 27, “Sur-Reply”). Patent Owner also filed a Motion to
`Amend (Paper 19, “Mot.”), Petitioner filed an Opposition (Paper 25),
`Patent Owner filed a Reply (Paper 28), and Petitioner filed a Sur-Reply
`(Paper 34). An oral hearing was held on April 17, 2019, and a transcript of
`the hearing is included in the record (Paper 40, “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 not shown by a preponderance of
`the evidence that claims 1–4, 6, 7, and 10 are unpatentable.
`
`
`A. Related Proceedings
`The parties indicate that the ’157 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 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,
`IPR2018-00404, IPR2018-00408, IPR2018-00416, IPR2018-00439, and
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`IPR2018-00458. See Pet. 1–3; Paper 3, 1–3. Inter partes review was
`instituted in each of these proceedings.
`
`
`B. The ’157 Patent
`The ’157 patent discloses “[a]n electronic messaging system and
`method with reduced traceability.” Ex. 1001, Abstract. The ’157 patent
`notes that “[t]ypically, an electronic message between two people is not
`private.” Id. at col. 2, ll. 7–8. For example, messages may be intercepted by
`third parties; logged and archived; or copied, cut, pasted, or printed. Id. at
`col. 2, ll. 8–13. “This may give a message a ‘shelf-life’ that is often
`uncontrollable by the sender or even the recipient.” Id. at col. 2, ll. 13–14.
`As such, according to the ’157 patent, there was “a demand for a system and
`method for reducing the traceability of electronic messages.” Id. at col. 2,
`ll. 27–29. Figure 3 of the ’157 patent is reproduced below.
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`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. 48–53. “An electronic message may be any
`electronic file, data, and/or other information transmitted between one or
`more user computers.” Id. at col. 7, ll. 36–38. The electronic message may
`include text, image, video, audio, or other types of data. Id. at col. 7,
`ll. 38–46.
`Figure 5 of the ’157 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,
`ll. 63–65. 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. 24–col.
`12, l. 12, Figs. 8, 9. The server then performs various actions to process the
`message at steps 525–545. Id. at col. 12, l. 13–col. 14, l. 13. 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. 24–35, col. 13, ll. 16–18 (“A message ID
`[is] used to maintain a correspondence between the separated components of
`electronic message 330.”). The ’157 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. 25–col. 14, l. 13.
`To retrieve the message, the recipient first logs in to the system at
`step 550. Id. at col. 14, ll. 14–16. 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. 20–36, 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. 41–52. 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. 53–56. 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. 8–17, Fig. 11. At step 570, the message is
`automatically and permanently deleted from the server at a predetermined
`time. Id. at col. 15, ll. 34–36. 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. 23–26. At step 585, the message content is automatically deleted
`from the recipient user computer after viewing. Id. at col. 16, ll. 32–40.
`According to the ’157 patent, displaying header information and message
`content separately, and automatically deleting message content, reduce the
`traceability of electronic messages. Id. at col. 3, l. 46–col. 4, l. 1.
`
`
`C. Illustrative Claim
`Claim 1 of the ’157 patent recites:
`1. A computer-implemented method of handling an
`electronic message at a recipient user mobile device in
`a networked environment, the electronic message including
`a message content and a header information that corresponds to
`the message content, the recipient user mobile device having
`access to electronic instructions, the method comprising:
`providing a plurality of reduced traceability displays via
`the recipient user mobile device using a display generator that
`acts upon a display element of the recipient user mobile device
`to provide the plurality of reduced traceability displays, the
`display generator including the electronic instructions, the
`plurality of reduced traceability displays including a first display
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`presenting a header information of an electronic message
`received at the recipient user mobile device and a second display
`presenting a message content of the electronic message, the
`message content including a media component;
`receiving a selection by the recipient user via the first
`display, the selection directed to a portion of a message list
`corresponding to the header information; and
`providing the second display via the recipient user device
`such that the second display does not include a display of the
`header information via the second display such that a single
`screen capture of both the header information and the media
`component is prevented.
`
`
`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. 7,054,905 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
`
`Wren and Berger
`
`35 U.S.C. § 103(a)1 1–4
`
`35 U.S.C. § 103(a)
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`6 and 7
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`35 U.S.C. § 103(a)
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`10
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`Wren, Berger, and
`Hanna
`Wren, Berger, and
`Thorne
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`
`
`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 In the Decision on Institution, based on the record at
`the time, we preliminarily interpreted “reduced traceability displays”
`
`
`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 ’157 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 January 10, 2018, 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) (codified at 37 C.F.R. § 42.100 (2019))
`(amending 37 C.F.R. § 42.100(b) effective November 13, 2018).
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`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. on Inst. 4. Patent Owner proposed
`this interpretation in the related litigation, and the district court adopted it.
`Ex. 2003, 15–17. Petitioner also applies it in the Petition. Pet. 30. 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. 8–9. We adopt the
`previous analysis for purposes of this Decision.
`In addition, Patent Owner in its Response proposes an interpretation
`for the phrase “message content including a media component.” See id. at
`9–14. Because we are not persuaded by Petitioner’s arguments with respect
`to the “reduced traceability displays” limitation recited in claim 1, though,
`we need not interpret any other terms to resolve the parties’ disputes over the
`asserted grounds of unpatentability in this proceeding. 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 1–4, 6, 7, and 10 of the ’157 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).
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`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).
`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”).
`
`
`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 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).
`
`
`C. Level of Ordinary Skill in the Art
`Petitioner argues that a person of ordinary skill in the art at the time of
`the ’157 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, Sandeep Chatterjee, Ph.D. Pet. 6 (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 ’157 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. 64–col. 3, l. 7. Based on the record developed during
`trial, including our review of the ’157 patent and the types of problems and
`solutions described in the ’157 patent and cited prior art, we agree with and
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`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).
`
`
`D. Obviousness Ground Based on Wren and Berger
`(Claims 1–4)
`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
`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
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`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.
`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.
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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 Uniform
`Resource Locator (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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`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”
`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.
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`Figure 4 of Berger is reproduced below.
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`Figure 4 depicts list 120 of available messages 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
`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
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`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.
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`3. Claim 1
`a. Petitioner’s Contentions
`In its Petition, Petitioner relies on Wren for the majority of the
`limitations of claim 1. Petitioner argues that Wren teaches a “recipient user
`mobile device” (i.e., the recipient’s mobile phone) that handles an
`“electronic message” (i.e., movie message) having both “header
`information” and “message content” including a “media component,” as
`recited in the preamble of claim 1. Pet. 21–27. Claim 1 further recites the
`following limitation:
`providing a plurality of reduced traceability displays via
`the recipient user mobile device using a display generator that
`acts upon a display element of the recipient user mobile device
`to provide the plurality of reduced traceability displays, the
`display generator including the electronic instructions, the
`plurality of reduced traceability displays including a first display
`presenting a header information of an electronic message
`received at the recipient user mobile device and a second display
`presenting a message content of the electronic message, the
`message content including a media component.
`Petitioner argues that “[t]his limitation is also disclosed by Wren,” including
`the following chart showing how Petitioner maps Wren’s disclosure to the
`limitation:
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`Id. at 26–27. Petitioner contends that Figure 9A is a “first display”
`presenting “header information” (i.e., sender name (“Jane Doe”) and time
`(“9:30AM”)), Figure 9B is a “second display” presenting “message content”
`including a “media component” (i.e., video), and the two displays are
`“reduced traceability displays” because they “display header information
`and message content separately.” Id. at 26–28. According to Petitioner, the
`text “New Movie” in Figure 9A does not constitute message content. Id. at
`28–29. Petitioner does not discuss Berger in its analysis of how Wren
`allegedly teaches the limitation of claim 1 above. Id. at 26–33.
`With respect to the remaining limitations of claim 1, Petitioner argues
`that Wren teaches that “the second display does not include a display of the
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`header information via the second display such that a single screen capture
`of both the header information and the media component is prevented,”
`again relying on Figures 9A and 9B of Wren as the recited “first” and
`“second” displays; “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 “providing the second display” with “the message content
`including [the] media component” (i.e., providing the screen display shown
`in Figure 9B that includes only message content). Id. at 33–34, 41–43
`(emphases omitted).
`Petitioner relies on Berger for one limitation of claim 1: a “selection
`directed to a portion of a message list corresponding to the header
`information.” Because Wren displays only a single message at a time,
`Petitioner relies on Berger for this limitation, 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. Id. at 34–37. Petitioner explains that in the asserted
`combination,
`Figure 9A of Wren (“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. The
`selection in Wren, under this combination, would thus be
`“directed to a portion of a message list corresponding to the
`header information” because the user would select a message by
`selecting a particular line of header information (e.g., “George
`Smith,” “11:00A”), . . . as disclosed in Berger . . . .
`Id. at 35–36 (emphases omitted).
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`b. Petitioner Has Not Shown That Wren Teaches “Providing a Plurality of
`Reduced Traceability Displays Via the Recipient User Mobile Device”
`Claim 1 recites “providing a plurality of reduced traceability displays
`via the recipient user mobile device.” 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. Petitioner’s position, as argued in the Petition, is that the
`screen displays shown in Figures 9A and 9B of Wren are “reduced
`traceability displays” because they “display header information and message
`content separately.” Pet. 26–30 (arguing that the limitation is “satisfied by
`the separate display of identifying information and message content as
`disclosed in Figures 9A and 9B of Wren”). In particular, Petitioner asserts
`that “Figure 9A displays only header information and not any of the movie
`message content.” Id. at 28. Certain text in Figure 9A is undisputedly
`“header information,” namely the sender name (“Jane Doe”) and time of the
`message (“9:30AM”). See id. at 26–27; Ex. 1001, col. 12, ll. 28–58
`(describing “a display name representing a sender of the electronic message”
`and “a date/time associated with the electronic message” as “header
`information”). Figure 9A, however, also includes the text “New Movie.”
`Petitioner argues that “New Movie” is not “message content.” Pet. 28;
`Reply 15–21. Patent Owner argues that Petitioner fails to provide sufficient
`proof that “New Movie” is not “message content,” and thus, has not shown
`that Wren teaches providing “reduced traceability displays.” PO Resp.
`24–35; Sur-Reply 2–7. For the reasons explained below, we agree with
`Patent Owner.
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`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. 1003 ¶¶ 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. 26; Reply 21; Ex. 2009
`¶¶ 61–62; 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
`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 18. Patent Owner responds that
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`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. 24–27; Sur-Reply 5. We address each of
`Petitioner’s contentions, and Patent Owner’s responses, in turn.
`First, Petitioner argues that “nothing in Wren suggests that [the ‘New
`Movie’] text was part of the message sent from Jane Doe.” Pet. 28.
`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,” Magnum Oil, 829 F.3d at 1380. Petitioner’s
`reliance on Wren’s lack of disclosure of where “New Movie” originated and
`argument that “Patent Owner points to nothing in Wren to suggest that ‘New
`Movie’ is message content originating from the sender,” therefore, are not
`persuasive. See Reply 15 (emphasis added); Pet. 28. It is Petitioner’s
`burden to show that a person of ordinary skill in the art would have
`understood Figure 9A in Wren to include no message content, not Patent
`Owner’s burden to prove the opposite. See PO Resp. 33–34; Sur-Reply 4.
`Petitioner relies on the testimony of Dr. Chatterjee, who opines that
`“[a] person of ordinary skill in the art would have recognized that the
`recipient mobile phone generates and displays [the ‘New Movie’] text as
`part of a ‘notification of a new message.’” Ex. 1002 ¶ 63 (quoting Ex. 1003
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`¶ 32). According to Dr. Chatterjee, “the ‘New Movie’ descriptor is
`generally applicable to all ‘movie messages’” in Wren, and a person of
`ordinary skill in the art “would have appreciated that generating this element
`at the recipient mobile phone is preferable to requiring that [the] sending
`device transmit it as part of each outgoing message, as this allows for the
`communication of smaller messages and hence decreased burdens on
`network bandwidth and device memory.” Id. ¶ 63 n.6.
`We do not find these points persuasive because they are not supported
`sufficiently by the disclosure of Wren (or any other evidence in the record).
`Dr. Chatterjee cites only paragraphs 8, 22, and 32 of Wren in support of his
`opinions. See id. ¶ 63. Paragraph 8 states that “[t]he primary object of the
`invention is to provide an end-user with a one-touch messaging capability to
`send movie messages containing video and audio of arbitrary length to
`recipients independent of the recipient’s device capabilities over a network
`such as the Internet,” paragraph 22 states that “FIG. 9 is an illustration of the
`end-user experience receiving the one-touch message with a compatible
`mobile phone or PC with a compatible e-mail client,” and paragraph 32
`states that “FIG. 9A shows a notification of a new message.” Ex. 1003 ¶¶ 8,
`22, 32.
`There are multiple lines of text and images in Figure 9A, but these
`paragraphs of Wren say nothing about the recipient device generating any
`portion of that content or that doing so would be preferable over other
`alternatives. Nor do they differentiate between content clearly received by
`the recipient device in connection with the message (e.g., an identification of
`the sender “Jane Doe”) and any content that might be generated by the
`recipient device on its own, as would be the case in Dr. Chatterjee’s opinion.
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`We also do not read the single reference to “new message” in paragraph 32
`of Wren as supportin
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