Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`Paper No. 41
`Filed: August 30, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SNAP INC.,
`Petitioner,
`
`v.
`
`VAPORSTREAM, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00458
`Patent 9,313,156 B2
`____________
`
`
`Before STEPHEN C. SIU, JUSTIN T. ARBES, and STACEY G. WHITE,
`Administrative Patent Judges.
`
`Opinion of the Board filed by Administrative Patent Judge WHITE.
`
`Opinion Concurring filed by Administrative Patent Judge SIU.
`
`
`FINAL WRITTEN DECISION
`Determining All Challenged Claims Unpatentable
`Denying Patent Owner’s Motion to Amend
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`

`

`IPR2018-00458
`Patent 9,313,156 B2
`
`
`I.
`
`INTRODUCTION
`We have jurisdiction to hear this inter partes review under 35 U.S.C.
`§ 6. This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons discussed herein, we determine that
`Snap Inc. (“Petitioner”) has shown, by a preponderance of the evidence, that
`claims 1–3 and 6–8 (“the challenged claims”) of U.S. Patent No. 9,313,156
`B2 (Ex. 1001, “the ’156 patent”) are unpatentable.
`
`A. Procedural History
`Petitioner requested inter partes review of the challenged claims.
`Paper 2 (“Petition”). Petitioner provided a Declaration of Sandeep
`Chatterjee, Ph.D. (Ex. 1002) to support its positions. Vaporstream, Inc.
`(“Patent Owner”) filed a Patent Owner Preliminary Response, supported by
`the Declaration of Michael Shamos, Ph.D. (Ex. 2001). Paper 9. Based on
`our review of these submissions, we instituted a trial on all of Petitioner’s
`challenges as described in the Petition. Paper 10 (“Dec.”). Petitioner
`contends the challenged claims are unpatentable under 35 U.S.C. § 103 on
`the following specific grounds (Pet. 5):
`
`
`
`
`
`1
`
`

`

`IPR2018-00458
`Patent 9,313,156 B2
`
`
`Claim(s) Challenged
`References
`1, 2, and 6–8
`Namias1, PC Magazine2, Saffer3, and Smith4
`1, 2 and 6–8
`Namias, PC Magazine, RFC 28215, and Hazel6
`3
`Namias, PC Magazine, Ford7, Saffer and Smith
`Namias, PC Magazine, Ford, RFC 2821, and Hazel 3
`
`Patent Owner filed a Patent Owner Response (Paper 18, “PO Resp.”)
`along with a Declaration of Kevin C. Almeroth, Ph.D. (Ex. 2009), Petitioner
`filed a Reply (Paper 24, “Reply”) along with a Reply Declaration of
`Dr. Chatterjee (Ex. 1043), and Patent Owner filed a Sur-Reply (Paper 26,
`“Sur-Reply”). Patent Owner also filed a Motion to Amend (Paper 19,
`“MTA”) to which Petitioner filed an Opposition (Paper 23, “MTA Opp.”),
`Patent Owner filed a Reply (Paper 27, “MTA Reply”), and Petitioner filed a
`Sur-Reply (Paper 33, “MTA Sur-Reply”).
`An oral hearing was held on April 17, 2019, and a transcript of the
`hearing is included in the record (Paper 39, “Tr.”).
`
`
`1 U.S. Patent Appl. Pub. No. 2002/0112005 A1, published Aug. 15, 2002
`(Ex. 1003).
`2 Neil J. Rubenking, Disabling Print Screen, P.C. MAGAZINE, Aug. 1988, at
`450 (“PC Magazine”) (Ex. 1033).
`3 U.S. Patent Appl. Pub. No. 2003/0122922 A1, published July 3, 2003
`(Ex. 1004).
`4 U.S. Patent No. 6,192,407 B1, issued Feb. 20, 2001 (Ex. 1005).
`5 Simple Mail Transfer Protocol, Network Working Group, Request for
`Comments 2821 (J. Klensin ed., AT&T Labs), April 2001 (Ex. 1008).
`6 PHILIP HAZEL, EXIM: THE MAIL TRANSFER AGENT (2001) (Ex. 1011).
`7 U.S. Patent Application Publication No. 2005/0014493 A1, published
`January 20, 2005 (Ex. 1035, “Ford”).
`
`
`
`2
`
`

`

`IPR2018-00458
`Patent 9,313,156 B2
`
`
`B. Related Proceedings
`The parties indicate that the ’156 patent is the subject of the following
`district court proceeding involving Petitioner and Patent Owner:
`Vaporstream, Inc. v. Snap Inc., Case No. 2:17-cv-00220-MLH-KS (C.D.
`Cal.). Pet. 1; Paper 4, 1.
`Petitioner filed nine additional petitions for inter partes review of
`various other patents owned by Patent Owner, “each of which is related to
`the ‘156 patent and claims priority to the same priority application as the
`‘156 patent” (Paper 4, 1–2): Cases IPR2018-00200, IPR2018-00369,
`IPR2018-00312, IPR2018-00397, IPR2018-00404, IPR2018-00408,
`IPR2018-00416, IPR2018-00439, and IPR2018-00455. See Paper 4, 1–2;
`Pet. 1. Inter partes review was instituted in each of these proceedings and
`final written decisions have issued8 for each of these cases.
`
`C. The ’156 Patent
`The ’156 patent is titled “Electronic Message Send Device Handling
`System and Method with Separated Display and Transmission of Message
`Content and Header Information,” was filed on December 17, 20149, and
`issued April 12, 2016. Ex. 1001. The ’156 patent relates to an electronic
`messaging method “with reduced traceability.” Id. at [57]. The ’156 patent
`
`
`8 At this time, some of the final written decisions have been appealed to the
`U.S. Court of Appeals for the Federal Circuit.
`9 The ’885 patent claims priority, through a chain of continuation
`applications, to Application No. 11/401,148, filed on April 10, 2006, and
`Provisional Application No. 60/703,367, filed on July 28, 2005. Ex. 1001,
`at [60], [63]. The specific priority date of the challenged claims is not at
`issue in this proceeding, and we need not make any determination in this
`regard.
`
`
`
`3
`
`

`

`IPR2018-00458
`Patent 9,313,156 B2
`
`notes that “[t]ypically, an electronic message between two people is not
`private.” Id. at 2:7–8. For example, messages may be intercepted by third
`parties; logged and archived; or copied, cut, pasted, or printed. Id. at 2:8–12.
`“This may give a message a ‘shelf-life’ that is often uncontrollable by the
`sender or even the recipient.” Id. at 2:13–14. The challenged claims are
`directed to an “electronic message send device handling . . . method” for
`reducing traceability of an electronic message. See id. at 1:67–2:3, 2:27–29,
`18:58–19:24, 19:45–48.
`Figure 3 of the ’156 patent is reproduced below.
`
`Figure 3, above, illustrates an example of a messaging system according to
`the ’156 patent. Id. at 10:67–11:1. System 300 includes user computers
`315, 320 and server computer 310, connected via network 325. Id. at 11:1–
`4. Electronic message 330 is communicated via this system using a method
`
`
`
`
`
`4
`
`

`

`IPR2018-00458
`Patent 9,313,156 B2
`
`detailed below. Id. at 11:4–5. Reply electronic message 340 also is
`illustrated, but is not discussed in further detail herein. Id. at 11:5–6.
`Figure 5 of the ’156 patent is reproduced below.
`
`
`Figure 5, above, is a flow chart of an exemplary method of the ’156 patent.
`Id. at 3:47–48. In step 510, the user inputs a recipient address on a screen.
`See id. at 11:49–50, Fig. 8. A recipient address identifies a particular desired
`recipient and “may be a unique identifier (e.g., a screen name, a login name,
`a messaging name, etc.) established specifically for use with [this] system”
`
`
`
`5
`
`

`

`IPR2018-00458
`Patent 9,313,156 B2
`
`or it “may be a pre-established [e-mail] address, text messaging address,
`instant messaging address, Short Messaging Service (SMS) address, a
`telephone number . . . , BLACKBERRY personal identification number
`(PIN), or the like.” Id. at 7:12–24.
`After the recipient address has been entered, the system will proceed
`to step 515 and display another screen where the user may input the content
`of an electronic message. Id. at 11:58–60, Fig. 9. “An electronic message
`may be any electronic file, data, and/or other information transmitted
`between one or more user computers.” Id. at 7:55–57. The electronic
`message may include text, image, video, audio, or other types of data. Id. at
`7:57–64. In one embodiment, “the recipient address and the message
`content are entered on separate display screens.” Id. at 11:64–65. This
`separate entry “further reduces the traceability of an electronic message by,
`in part, reducing the ability of logging at computer 315,” for example, by
`preventing screenshot logging from capturing the recipient address and
`message content simultaneously. Id. at 9:20–27, 12: 2–3.
`At step 520, the message content is communicated to server 310. Id.
`at 12:10–12. 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
`12:13–17. “[A] correlation (e.g., a non-identifying message ID . . . ) may be
`utilized to associate the two components.” Id. at 7:7–9. In this regard, “at
`step 530, system 300 generates a message ID for associating the separated
`message content and header information [(which includes the recipient
`address)] of electronic message 330. Server 310 maintains a correspondence
`between the message content and header information.” Id. at 12:42–46; see
`
`
`
`6
`
`

`

`IPR2018-00458
`Patent 9,313,156 B2
`
`also id. at 13:34–37 (“A message ID [is] used to maintain a correspondence
`between the separated components of electronic message 330.”). The ’156
`patent describes an example in which the message ID is included both in the
`Extensible Markup Language (XML) file storing the header information and
`in the XML file storing the message content. See id. at 13:43–14:31.
`
`D. Challenged Claims
`We instituted review of claims 1–3 and 6–8 of the ’156 patent of
`which claim 1 is independent. Claim 1 of the ’156 patent is illustrative of
`the claimed subject matter and is reproduced below.
`1. A computer-implemented method of handling an
`electronic message at a sending user device in a networked
`environment,
`the electronic message
`including a header
`information and a message content, the sending user device
`having access
`to electronic
`instructions,
`the electronic
`instructions being stored at the sending user device and/or at a
`server computer, the method comprising:
`including a media
`associating a message content
`component with the electronic message via a first display at a
`sending user device;
`associating an identifier of a recipient with the electronic
`message via a second display at the sending user device, the first
`and second displays being generated by
`the electronic
`instructions such that the first and second displays are not
`displayed at the same time via the sending user device, the
`identifier of a recipient being part of a header information for the
`electronic message, the electronic instructions acting on the
`displays at the sending user device such that the header
`information 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;
`transmitting the message content including a media
`component from the sending user device to a server computer;
`and
`
`
`
`7
`
`

`

`IPR2018-00458
`Patent 9,313,156 B2
`
`
`transmitting the identifier of a recipient from the sending
`user device to the server computer, said transmitting the message
`content including a media component and said transmitting the
`identifier of a recipient occurring separately, the identifier of a
`recipient and the message content including a media component
`each including a correlation to allow the identifier of a recipient
`and the message content including a media component to be
`related to each other at a later time by the server computer.
`Ex. 1001, 18:64–19:31.
`
`II. ANALYSIS
`A. Principles of Law
`To prevail in its challenges to the patentability of the claims,
`Petitioner must demonstrate by a preponderance of the evidence that the
`challenged claims are unpatentable. 35 U.S.C. § 316(e); 37 C.F.R.
`§ 42.1(d). “In an [inter partes review], the petitioner has the burden from
`the onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)). This burden of persuasion never
`shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in
`inter partes review).
`A claim is unpatentable for obviousness if, to one of ordinary skill in
`the pertinent art, “the differences between the subject matter sought to be
`patented and the prior art are such that the subject matter as a whole would
`have been obvious at the time the invention was made.” KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). The
`
`
`
`8
`
`

`

`IPR2018-00458
`Patent 9,313,156 B2
`
`question of obviousness is resolved on the basis of underlying factual
`determinations including: (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of ordinary skill in the art; and (4) objective evidence of nonobviousness.10
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). An obviousness
`analysis “need not seek out precise teachings directed to the specific subject
`matter of the challenged claim, for a court can take account of the inferences
`and creative steps that a person of ordinary skill in the art would employ.”
`KSR, 550 U.S. at 418; accord In re Translogic Tech., Inc., 504 F.3d 1249,
`1259 (Fed. Cir. 2007). Petitioner, however, cannot satisfy its burden of
`proving obviousness by employing “mere conclusory statements,” but “must
`instead articulate specific reasoning, based on evidence of record” to support
`an obviousness determination. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
`1364, 1380–81 (Fed. Cir. 2016). Petitioner also must articulate a reason
`why a person of ordinary skill in the art would have combined the prior art
`references. In re NuVasive, 842 F.3d 1376, 1382 (Fed. 2016).
`At this final stage, we determine whether a preponderance of the
`evidence of record shows that the challenged claims would have been
`obvious in view of the asserted prior art. We analyze the asserted grounds of
`unpatentability in accordance with these principles.
`
`B. Level of Ordinary Skill in the Art
`We review the grounds of unpatentability in view of the
`understanding of a person of ordinary skill in the art at the time of the
`
`
`10 The parties have not asserted or otherwise directed our attention to any
`objective evidence of non-obviousness.
`9
`
`
`
`

`

`IPR2018-00458
`Patent 9,313,156 B2
`
`invention. Graham, 383 U.S. at 17. Petitioner contends that a person of
`ordinary skill in the art would have had “at least a bachelor’s degree in
`software engineering, computer science, or computer engineering with at
`least two years of experience in the design and implementation of systems
`for sending and receiving messages over a communications network, such as
`the Internet (or equivalent degree or experience).” Pet. 6 (citing Ex. 1002
`¶¶ 13–15). Patent Owner’s declarant, Dr. Almeroth, “generally agree[s]”
`with Petitioner’s characterization of the person of ordinary skill with the
`caveat “that such a person of ordinary skill would also have a working
`knowledge of design principles for software user interfaces. Such
`knowledge often would be learned in an undergraduate course in Human
`Computer Interaction (HCI).” Ex. 2009 ¶ 21; see also Ex. 2001 ¶ 14 (Patent
`Owner’s previous declarant, Dr. Shamos, also was in general agreement with
`Petitioner’s description of one of ordinary skill). We agree, as the ’156
`patent discusses the design of an interface that purports to reduce the
`traceability of electronic messages. See, e.g., Ex. 1001, 1:66–3:21. Based
`on the full record, including our review of the ’156 patent and the types of
`problems and solutions described in the ’156 patent and cited prior art,
`we agree with and adopt Petitioner’s description of the person of ordinary
`skill in the art, with the caveat that such an individual would have had a
`working knowledge of design principles for software user interfaces, which
`may be obtained via study of human-computer interaction (HCI).
`
`C. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable constructions in light of
`the specification of the patent in which they appear. See 37 C.F.R.
`10
`
`
`
`

`

`IPR2018-00458
`Patent 9,313,156 B2
`
`§ 42.100(b) (2018)11. “In claim construction, [our reviewing] court gives
`primacy to the language of the claims, followed by the specification.
`Additionally, the prosecution history, while not literally within the patent
`document, serves as intrinsic evidence for purposes of claim construction.”
`Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 977 (Fed. Cir. 2014).
`Otherwise, under the broadest reasonable construction standard, claim terms
`are presumed to have their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in the context of the entire
`disclosure. Translogic, 504 F.3dat 1257.
`Patent Owner seeks construction of the phrase “message content
`including a media component” and the term “correlation.” PO Resp. 23–25.
`Petitioner does not seek express construction of any term of the ’156 patent,
`but responds to Patent Owner’s proposed constructions in its Reply. Pet. 7.
`For purposes of this Decision, we need only discuss the construction of the
`phrase “message content including a media component.” 12 See, e.g., Nidec
`
`
`11 The recent revisions to our claim construction standard do not apply to
`this proceeding because the new “rule is effective on November 13, 2018
`and applies to all IPR, PGR and CBM petitions filed on or after the effective
`date.” Changes to the Claim Construction Standard for Interpreting Claims
`in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
`51,340 (Oct. 11, 2018) (codified at 37 C.F.R. § 42.100 (2019)).
`12 As to the term “correlation,” Petitioner acknowledges that in the district
`court proceeding, the parties agreed that the term should be construed to
`mean “data corresponding to a message used to associate two components of
`a message.” Reply 16; see PO Resp. 27 (citing Ex. 2003, 9). Petitioner,
`however, asserts that in this proceeding a broader construction would be
`appropriate due to the different claim construction standard applicable to this
`inter partes review. Reply 16–17. Regardless, Petitioner asserts that “the
`district court interpretation of ‘correlation’ is clearly disclosed by the
`combination of Saffer and Smith based on the reasoning in the Petition.” Id.
`11
`
`
`
`

`

`IPR2018-00458
`Patent 9,313,156 B2
`
`Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013,
`1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in
`controversy, and only to the extent necessary to resolve the controversy.’”)
`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999)).
`Claim 1 recites various limitations pertaining to a “message content
`including a media component.” For example, claim 1 recites “associating a
`message content including a media component with the electronic message
`via a first display at a sending user device,” “transmitting the message
`content including a media component from the sending user device to a
`server computer,” where this transmission occurs separately from the
`“transmi[ssion of] the identifier of a recipient from the sending user device
`to the server computer,” and where “the identifier of a recipient and the
`message content including a media component each includ[es] a correlation
`to allow the identifier of a recipient and the message content including a
`media component to be related to each other at a later time by the server
`computer.”
`Patent Owner contends that “‘message content including a media
`component’ encompasses media content included in the message via a
`publicly-accessible [Uniform Resource Locator (URL)].” PO Resp. 25. In
`support of this construction, Patent Owner relies on a passage from the
`’156 patent, which states that “a message content of an electronic message
`may include an attached and/or linked file.” Ex. 1001, 7:55–8:1 (cited at
`
`
`at 17. As discussed in § II.D.5.f, we determine that the cited art teaches the
`required “correlation” even under Patent Owner’s proposed construction.
`Thus, we need not provide an express construction of the term.
`12
`
`
`
`

`

`IPR2018-00458
`Patent 9,313,156 B2
`
`PO Resp. 24). Patent Owner also directs us to testimony from Petitioner’s
`declarant, Dr. Chatterjee. PO Resp. 25 (citing Ex. 1002 ¶ 112 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 URL, are [both] examples of ‘passing information.’” Id.
`Thus, in Patent Owner’s view, the recited “message content including a
`media component” broadly includes both a URL in a message (linking to
`content accessible via that URL) and a file attached to the message. See id.
`at 23–25.
`Petitioner responds by arguing that although “the specification states
`that [the] ‘message content’ may include a ‘linked file,’ it never states that
`the link itself is ‘message content.’” Reply 8 (internal citations omitted,
`emphasis Petitioner’s). In addition, Petitioner directs us to a further
`statement in the specification, that “[t]ypically, a message content, such as
`message content 140 does not include information that in itself identifies the
`message sender, recipient, location of the electronic message, or time/date
`associated with the electronic message.” Ex. 1001, 8:4–8 (cited at Reply 8–
`9) (emphasis added). Petitioner explains that “[t]he URL (Uniform
`Resource Locator) in the proposed combination [of Namias and Saffer]
`therefore does not qualify as ‘message content’ because it identifies ‘the
`location of’ the video message on the video server in Saffer.” Reply 9
`(citing Ex. 1004 ¶ 28).
`We agree with Petitioner’s arguments. The specification of the
`’156 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
`13
`
`
`
`

`

`IPR2018-00458
`Patent 9,313,156 B2
`
`
`attached and/or linked file. In such an example with an attached
`and/or linked file, the attached and/or linked file may be
`automatically deleted from the messaging system after being
`viewed by a recipient.
`Ex. 1001, 7:65–8:4. 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 8:1–4. 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. 25 (citing Ex. 1002 ¶ 112 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. 1002 ¶ 112 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 including a media component” does not encompass
`a URL in a message (linked to content accessible via that URL). No further
`
`
`
`14
`
`

`

`IPR2018-00458
`Patent 9,313,156 B2
`
`express interpretation of this phrase is necessary for the purposes of this
`Decision. See, e.g., Nidec, 868 F.3d at 1017.
`
`D. Asserted Obviousness in View of Namias, PC Magazine, Saffer,
`and Smith (and Ford)
`Petitioner contends that claims 1, 2, and 6–8 are unpatentable under
`35 U.S.C. § 103 as obvious over Namias, PC Magazine, Saffer, and Smith,
`and claim 3 is unpatentable under 35 U.S.C. § 103 as obvious over Namias,
`PC Magazine, Saffer, Smith, and Ford. Pet. 5. Relying on the testimony of
`Dr. Chatterjee, Petitioner asserts that the combined references teach or
`suggest the subject matter of the challenged claims and that a person having
`ordinary skill in the art would have combined the teachings of the references
`in the manner asserted. Id.; Ex. 1002. Patent Owner, relying on the
`testimony of Dr. Almeroth, disputes Petitioner’s contentions. PO Resp. 27–
`69; Ex. 2009. For the reasons discussed below, we determine Petitioner has
`established the unpatentability of these claims by a preponderance of the
`evidence.
`
`1. Overview of Namias (Ex. 1003)
`Namias relates to a “method and apparatus for providing a video
`e-mail kiosk for creating and sending video e-mail messages such as full
`motion videos or still snapshots.” Ex. 1003, at [57]. The video e-mail kiosk
`of Namias includes a digital processor, a touch-sensitive screen monitor, a
`digital video camera, a microphone, audio speakers, a credit card acceptor, a
`cash acceptor, and a digital network communications link. Id. ¶ 31. The
`kiosk displays an inactive screen until a user starts a transaction. Id. ¶ 34.
`Upon activation of the kiosk, a record screen is shown on the kiosk display
`
`
`
`15
`
`

`

`IPR2018-00458
`Patent 9,313,156 B2
`
`and the user may create a video recording or still image from this screen. Id.
`¶ 35. A preview screen is displayed after the user has recorded a full motion
`video or still snapshot message. Id. ¶ 36.
`Figure 4A of Namias is reproduced below.
`
`
`Figure 4A, above, illustrates “a preview screen that is displayed after a user
`has recorded a video message.” Id. ¶ 25. Preview screen 400 allows the
`user to review the recorded video or still image and decide whether the
`message is acceptable. Id. ¶ 36. If the user is satisfied with the message,
`then the user may press send button 450 and proceed to address screen 500.
`Id. ¶¶ 37, 40.
`
`
`
`16
`
`

`

`IPR2018-00458
`Patent 9,313,156 B2
`
`
`Figure 5 of Namias is reproduced below.
`
`
`Figure 5, above, illustrates an address screen on which a user is prompted to
`enter a recipient’s e-mail address. Id. ¶ 27. “The address is a unique
`identifier which instructs routing computers where to send the message.” Id.
`¶ 5. The user presses add address button 510 and then may use a keyboard
`to input the e-mail address of the recipient. Id. ¶ 40. Once the e-mail
`address(es) have been entered, the user may press send button 540 to move
`to the next step in the process. Id. “[F]inal screen 700 . . . is displayed at the
`end of the process after payment has been made and the video or
`photographic e-mail has been sent to the intended recipient or recipients.”
`Id. ¶ 42.
`
`2. Overview of Saffer (Ex. 1004)
`Saffer relates to a “computer implemented system and method in
`which a user can send e-mail messages that include full-motion video and
`audio (or, alternatively, audio only), along with (if desired) the text
`messages to an e-mail recipient.” Ex. 1004, at [57]. In Saffer, a user
`composes a message, records a video, and then hits the send button. Id. ¶ 4.
`17
`
`
`
`

`

`IPR2018-00458
`Patent 9,313,156 B2
`
`The sender’s computer retrieves a video ID from the server for that
`compressed video. Id. ¶¶ 4, 29, Fig. 3 (step 100). Software on the sender’s
`computer compresses the video and transmits the compressed video to a
`server. Id. ¶¶ 4, 44, Fig. 3 (steps 102, 108). The sender’s computer inserts
`the video ID (with a link or network address to the video server) into an
`email message, which is then sent to the recipient. Id. ¶¶ 4, 46, 47, Fig. 3
`(step 112).
`
`3. Overview of Smith (Ex. 1005)
`Smith relates to “[a] document delivery architecture [that]
`dynamically generates a private Uniform Resource Locator (URL) to
`distribute information.” Ex. 1005, at [57]. Smith’s private URLs
`(“PURLs”) are temporary, dynamically generated URLs that uniquely
`identify the recipient of a document, the document to be delivered, and
`optionally may include other delivery parameters. Id. at [57], 15:8–11.
`A sender forwards a document to a server and the server temporarily stores
`the document. Id. at 15:29–31. “The server dynamically generates a URL
`for each intended recipient of the document.” Id. at 15:31–33. The recipient
`is sent an email message that includes the PURL. Id. at 15:38–41. The
`recipient uses the PURL and the Web to retrieve the document (or set of
`documents). Id. at 14:48–50, 15:41–42. “PURLS avoid attaching
`information to e-mail messages to send documents, but rather attach a
`general reference to a document to be sent, and then enable the recipient to
`access a document via the reference.” Id. at 15:13–16. When the recipient
`accesses the document by using a PURL, a server can intercept the
`document access request and provide additional services, such as tracking
`and security. Id. at 15:16–19.
`
`
`
`18
`
`

`

`IPR2018-00458
`Patent 9,313,156 B2
`
`
`4. Overview of PC Magazine (Ex. 1033)
`PC Magazine refers to an article in PC Magazine, titled Disabling
`Print Screen. Ex. 1033, 450.13 The article describes how to prevent a user
`from activating Print Screen functionality. Id.
`
`5. Analysis of Petitioner’s Challenge to Claim 1
`
`We begin by assessing Petitioner’s arguments as to how the
`combination of Namias, PC Magazine, Saffer, and Smith teaches the
`limitations of claim 1, and then turn to Petitioner’s arguments regarding why
`a person of ordinary skill in the art would have been motivated to combine
`the teachings of the references.
`
`a. “A computer-implemented method of handling an electronic
`message at a sending user device in a networked
`environment, the electronic message including a header
`information and a message content, the sending user device
`having access to electronic instructions, the electronic
`instructions being stored at the sending user device and/or
`at a server computer”
`Petitioner relies on kiosk 100 of Namias to teach the claimed “sending
`user device” and on the video or picture message sent using the kiosk as
`teaching the claimed “electronic message.” Pet. 14–18 (citing Ex. 1002
`¶ 57, 59–62). Petitioner further contends that Namias discloses including
`“the recipient’s email address (requested from the sender)” and “the
`(recorded) video or picture content” as part of the video or picture message,
`thus teaching the claim requirement that the electronic message “also
`includes ‘a header information’ that takes the form of at least the recipient’s
`
`
`13 Citations to Exhibit 1033 are to the original pagination of the magazine.
`19
`
`
`
`

`

`IPR2018-00458
`Patent 9,313,156 B2
`
`email address (requested from the sender).” Id. at 14–15 (citing Ex. 1003, at
`[57], ¶ 54; Ex. 1002 ¶ 57) (emphasis omitted). According to Petitioner,
`“[b]ecause the kiosk in Namias creates, records, and sends the video or
`picture message, one of ordinary skill would have understood that Namias
`discloses ‘handling an electronic message at a sending user device’” (id. at
`15 (citing Ex. 1002 ¶ 59) (emphasis omitted)); Namias “makes clear” that its
`method is “[a] computer-implemented method” (id. at 15–16 (citing Ex.
`1003 ¶¶ 19, 20, 22, 31–33, Fig. 1)); because the kiosk sends the message via
`e-mail, it is “in a networked environment” (id. at 16 (citing Ex. 1003 ¶¶ 20,
`31–33)); and one of skill in the art would have understood that the processor
`and memory of Namias’s kiosk teaches or suggests electronic instructions
`stored at the kiosk (id. at 16–17 (citing Ex. 1003 ¶¶ 20, 31–33; Ex. 1002
`¶¶ 61–62)). We agree, and ad