Trials@uspto.gov
`571-272-7822
`
`
`Paper 13
`Date: August 13, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TIKTOK INC.,
`Petitioner,
`v.
`10TALES, INC.,
`Patent Owner.
`____________
`
`IPR2021-00476
`Patent 8,856,030 B2
`____________
`
`
`
`
`
`
`Before SCOTT A. DANIELS, RICHARD H. MARSCHALL, and
`FREDERICK C. LANEY, Administrative Patent Judges.
`
`
`LANEY, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`571-272-7822
`
`
`Paper 13
`Date: August 13, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TIKTOK INC.,
`Petitioner,
`v.
`10TALES, INC.,
`Patent Owner.
`____________
`
`IPR2021-00476
`Patent 8,856,030 B2
`____________
`
`
`
`
`
`
`Before SCOTT A. DANIELS, RICHARD H. MARSCHALL, and
`FREDERICK C. LANEY, Administrative Patent Judges.
`
`
`LANEY, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`IPR2021-00476
`Patent 8,856,030 B2
`
`
`I.
`INTRODUCTION
`TikTok Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review (“IPR”) of claims 1 and 2 (“the challenged claims”) of U.S. Patent
`No. 8,856,030 B2 (Ex. 1001, “the ’030 patent”). Paper 1 (“Pet.”), 1.
`10Tales, Inc. (“Patent Owner”) filed a Preliminary Response (Paper 8,
`“Prelim. Resp.”). Pursuant to our authorization, Petitioner filed a Reply
`(Paper 11, “Reply”) to address Patent Owner’s arguments in the Preliminary
`Response concerning discretionary denial under 35 U.S.C. § 314(a) and a
`novel foreign economic policy argument under 35 U.S.C. § 316(b), and
`Patent Owner filed a Sur-reply (Paper 12, “Sur-reply”).
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). The standard
`for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which
`provides that an inter partes review may not be instituted “unless. . . there is
`a reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.” For the reasons stated
`below, we determine that Petitioner has not established a reasonable
`likelihood that it would prevail with respect to at least one claim. We hereby
`do not institute an inter partes review of the challenged claims of the ’030
`patent.
`
`Real Parties in Interest
`A.
`Petitioner identifies TikTok Inc., TikTok Pte. Ltd., ByteDance Ltd.,
`
`and ByteDance Inc. as the real parties in interest. Pet. 1. Patent Owner
`identifies itself as the real party in interest. Paper 4, 1.
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`Related Matters
`B.
`The parties indicate that the ’030 patent is involved in 10Tales, Inc. v.
`TikTok Inc. et al., No. 6:20-cv-810 (W.D. Tex.). Pet. 1; Paper 4, 1. After
`the Petition and Preliminary Response were filed, the above matter was
`transferred to the U.S. District Court for the Northern District of California
`and is now captioned 10Tales, Inc. v. TikTok Inc. et al., No. 3:21-cv-03868
`(N.D. Cal.). Paper 10, 1.
`
`The ’030 Patent
`C.
`The ’030 patent, titled “Method, System and Software for Associating
`Attributes within Digital Media Presentations,” describes associating user
`attributes with digital media assets, such as images, that can be replaced with
`other more relevant images. Ex. 1001, codes (54), (57). The ’030 patent
`explains that a user may participate in an online community system, in
`which the system sends user’s credentials to receive a list of community user
`attributes that can be used to personalize the user’s experience. Id. at 12:22–
`28, 12:47–62, Figs. 5A, 5B. This system permits the association of
`attributes with specific media content to enhance its impact for the user. Id.
`at code (57), 12:18.
`
`Illustrative Claim
`D.
`Claim 1 is independent and claim 2 depends therefrom. Claim 1 is
`reproduced below with emphasis added to the claim element that is the focus
`of this decision and with bracketing as applied by Petitioner:
`1.
`[1Pre] A system for associating user attributes with digital
`media asset attributes and creating a user specific
`composite digital media display, the system comprising:
`[1a] a server;
`
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`[1b] a computer-readable storage medium operably
`connected;
`[1c] wherein the computer-readable storage medium
`contains one or more programming instructions for
`performing a method of associating user attributes with
`digital media asset attributes and creating a user specific
`composite digital media display, the method comprising:
`[1d] identifying a first set of digital media assets stored on
`the computer-readable storage medium,
`[1e] creating, from the first set of digital media assets, a
`first composite digital media display,
`[1f] presenting to the user via a display server, the first
`composite digital media display;
`[1g] retrieving user social network information from at
`least one source external to the presented first composite
`digital media display, wherein the user social network
`information contains one or more user attributes;
`[1h] selecting, based on the user attributes in the social
`network information, a second set of digital media assets,
`wherein the second set of digital media assets is associated
`with one or more user attributes found in the user social
`network information;
`[1i] monitoring the first composite digital media display
`for the presence of a trigger, wherein the trigger indicates
`a personalization opportunity in the first set of digital
`media assets;
`[1j] performing a rule based substitution of one or more of
`the digital media assets from the first set of digital media
`assets with one or more of the digital media assets from
`the second set of digital media assets to create a user
`specific set of digital media assets;
`[1k] creating, from the user specific digital media assets, a
`user specific composite digital media display;
`[1l] presenting to the user via the display server, the
`second composite digital media display.
`
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`Ex. 1001, 20:62–22:15.
`
`Prior Art Relied Upon
`E.
`Petitioner relies upon the references listed below (Pet. 3):
`Exhibit
`No.
`1004
`1005
`1006
`
`
`
`Name
`
`Bar-El
`Reisman
`Leeke
`
`Reference
`
`Date
`
`WO 99/26415
`US 2011/0219419
`US 6,587,127 B1
`
`May 27, 1999
`Sept. 8, 2011
`July 1, 2003
`
`Asserted Grounds of Unpatentability
`F.
`Petitioner asserts the following grounds of unpatentability (Pet. 3)1:
`
`Claims Challenged
`
`35 U.S.C. §
`
`References
`
`1, 2
`
`1, 2
`
`1, 2
`
`103(a)
`
`103(a)
`
`103(a)
`
`Bar-El, Reisman
`
`Bar-El, Reisman, Leeke
`
`Leeke, Reisman
`
`II. ANALYSIS
`Petitioner contends that we should institute an inter partes review of
`the ’030 patent because claims 1 and 2 would have been obvious in view of
`(1) Bar-El and Reisman (see Pet. 22–48); (2) Bar-El, Reisman, and Leeke
`
`
`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 ’030 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.
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`(see Pet. 48–54); and (3) Leeke and Reisman (see Pet. 55–73). Patent
`Owner contends that discretionary denial of inter partes review is
`appropriate in this case either (1) under 35 U.S.C. § 325(d), because the
`asserted prior art is allegedly “substantially the same” as the prior art
`considered during prosecution; (2) under 35 U.S.C. § 314(a), because of the
`alleged inefficiencies created by this proceeding in view of the parallel
`litigation; or (3) under 35 U.S.C. §§ 314(a) and 316(b), because the Petition
`was allegedly filed by a representative of a nation state against a patent that
`is related to an allegedly critical and emerging technology. See Prelim.
`Resp. 19–23, 39–56. And even if discretionary denial is not appropriate,
`Patent Owner contends that we should deny inter partes review because
`Petitioner’s grounds of unpatentability are deficient because the prior art has
`not been shown to disclose element [1g] of independent claim 1. See id. at
`24–38.
`After considering the contentions and evidence submitted by both
`parties, we agree with Patent Owner that the Petition does not demonstrate
`sufficiently that Bar-El, Reisman, and Leeke, either alone or in combination,
`disclose “retrieving user social network information from at least one source
`external to the presented first composite digital media display, wherein the
`user social network information contains one or more user attributes,”
`element [1g] in claim 1. This deficiency is dispositive of the Petition,
`therefore, Patent Owner’s other arguments regarding the exercise of our
`discretion are moot.
`
` Principles of Law
`To prevail in its challenges to the patentability of claims 1 and 2 of the
`’030 patent, Petitioner must demonstrate a reasonable likelihood that the
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`claims are unpatentable. 35 U.S.C. § 314(1). “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). This burden of persuasion never
`shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375, 1378 (Fed. Cir. 2015); see also In re Magnum Oil Tools
`Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016) (“Where, as here, the only
`question presented is whether due consideration of the four Graham factors
`renders a claim or claims obvious, no burden shifts from the patent
`challenger to the patentee. This is especially true where the only issues to be
`considered are what the prior art discloses, whether there would have been a
`motivation to combine the prior art, and whether that combination would
`render the patented claims obvious.”).
`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) (2006)).
`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.” Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966). 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,
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`these inquiries may have relevancy.”2 Id. When conducting an obviousness
`analysis, we consider a prior art reference “not only for what it expressly
`teaches, but also for what it fairly suggests.” Bradium Techs. LLC v. Iancu,
`923 F.3d 1032, 1049 (Fed. Cir. 2019) (citation omitted).
`
`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”).
`“Although the KSR test is flexible, the Board ‘must still be careful not to
`allow hindsight reconstruction of references . . . without any explanation as
`to how or why the references would be combined to produce the claimed
`invention.’” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir.
`2016) (citation omitted). Further, an assertion of obviousness “cannot be
`sustained by mere conclusory statements; instead, there must be some
`articulated reasoning with some rational underpinning to support the legal
`conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn,
`
`
`2 Patent Owner has not presented any evidence of secondary considerations
`of nonobviousness in this proceeding.
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`441 F.3d 977, 988 (Fed. Cir. 2006)); accord In re NuVasive, Inc., 842 F.3d
`1376, 1383 (Fed. Cir. 2016) (stating that “conclusory statements” amount to
`an “insufficient articulation[] of motivation to combine”; “instead, the
`finding must be supported by a ‘reasoned explanation’” (citation omitted));
`Magnum Oil, 829 F.3d at 1380 (“To satisfy its burden of proving
`obviousness, a petitioner cannot employ mere conclusory statements. The
`petitioner must instead articulate specific reasoning, based on evidence of
`record, to support the legal conclusion of obviousness.”).
`
` Claim Construction
`In an inter partes review, we construe a patent claim “using the same
`claim construction standard that would be used to construe the claim in a
`civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b) (2020).
`Under this standard, the words of a claim generally are given their “ordinary
`and customary meaning,” which is the meaning the term would have to a
`person of ordinary skill at the time of the invention, in the context of the
`entire patent including the specification. Phillips v. AWH Corp., 415 F.3d
`1303, 1312–13 (Fed. Cir. 2005) (en banc).
`Petitioner proposes an express definition for the phrase “user
`attributes,” as recited in claim 1. Pet. 9. In particular, Petitioner contends
`that “user attributes” has the meaning that the ’030 patent clearly ascribed to
`it and alleges that meaning is –– “aspects characteristics, and qualities of the
`user that are useful for determining digital media assets, including
`characteristics such as affinities, likes, dislikes, perceptions, and/or
`experiences.” Id. at 9–10 (citing Ex. 1001, 6:32–38, 10:52–56, 13:11–
`14:14). Petitioner does not suggest any other term or phrase needs to be
`expressly construed in this proceeding. Id.
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`Patent Owner does not respond to Petitioner’s proposed constructions;
`nor does Patent Owner suggest any other term needs interpretation. See
`generally Prelim. Resp. However, we note that the ’030 patent states,
`“User attributes” include aspects, characteristics, and
`qualities of the user that are useful for determining (matching,
`correlating, and selecting) digital media assets. These attributes
`may include characteristics such as affinities, likes or dislikes
`as described outside of affinities, perceptions, experiences, and
`other factors that play a role in determining the internal
`narrative perception identification framework.
`Ex. 1001, 6:32–38. Although Petitioner’s proposed construction is similar
`to this representation of what “user attributes” includes, there are
`differences. Petitioner, however, does not explain why the alterations are
`necessary.
`Regardless, our decision in this case does not turn on any potential
`differences between Petitioner’s proposed construction and the one the ’030
`patents provides. Thus, we determine that no claim term or phrase requires
`an express construction to reach a determination in this proceeding. See
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
`1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999)) (explaining that only those claim terms
`that are in controversy need to be construed, and only to the extent necessary
`to resolve the controversy). Accordingly, we do not expressly construe any
`terms in the challenged claims.
`
` Level of Ordinary Skill in the Art
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
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`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(quotation marks omitted).
`Petitioner asserts, with the support of Dr. Almeroth, that a person of
`ordinary skill in the art of the ’030 patent would have had “a bachelor’s
`degree, or an equivalent degree, in electrical engineering, computer science,
`or a related field, and 2-3 years’ experience researching, designing,
`developing, and/or testing systems for digital media creation and related
`firmware and software, or equivalent experience.” Pet. 4 (citing Ex. 1003
`¶¶ 24–25). Patent Owner does not address Petitioner’s proposed formulation
`for a skilled artisan in the Preliminary Response; nor does Patent Owner
`suggest that Petitioner’s proposed formulation leads to an improper analysis
`of the issues presented. See generally Prelim. Resp.
`On this record, we decline to adopt a specific formulation regarding
`the level of ordinary skill in the art, and instead find that the cited references
`are representative of the level of ordinary skill in the art. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the level of ordinary skill
`in the art may be evidenced by the cited references themselves). However,
`our analysis of the issues below would have been the same had we adopted
`Petitioner’s proposed formulation.
`
` Brief Summaries of the Asserted Prior Art References
`
`1. Bar-El (Exhibit 1004)
`Bar El, titled “Method and System for Personalizing Images Inserted
`
`into a Video Stream,” describes a method and system for personalizing
`images inserted into a video stream, provided by a video service to each of
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`its clients according to a user profile generated from video sequences
`selected by a user from a video server having a plurality of video sequences
`stored therein. Ex. 1004, codes (54), (57). Bar-El describes a
`personalization system operating on a video server to provide a video
`sequence “personalized with advertising images whose predefined profile
`the user fits.” Id. at 7:13–22.
`
`Bar-El teaches creating and updating profiles based a user’s input,
`which “can be [an] answer to a questionnaire, it can be gathered from the
`user’s responses to the advertising images previously implanted in their
`personalized video sequence, it can be based on the user’s address on the
`network or any other fact about the user which the server has the ability to
`gather.” Ex. 1004, 8:19–24. For example, if the user’s profile (e.g., young
`man who likes science fiction) matches a target demographic, the presented
`video sequence may include specific advertising images. Id. at 7:20–8:3. In
`one example, Bar-El discloses a video of a person walking, and in the
`background is a tall building with an advertisement in which, for a young
`person, the system replaces the default advertisement with a drink bottle, and
`if for a soccer fan, the system replaces the default advertisement with a
`soccer ball or sports company. Id. at 8:4–10, Fig. 1. Thus, “both users view
`the same video but each receives a different advertisement, personalized by
`their user profile.” Id. at 8:11–12.
`
`2. Reisman (Exhibit 1005)
`Reisman, titled “Method and Apparatus for Browsing Using
`Alternative Linkbases,” relates to a system and method for navigating
`hypermedia using multiple coordinated input/output device sets, which
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`allows a user and/or an author to control what resources are presented on
`which device sets (whether they are integrated or not), and provide for
`coordinating browsing activities to enable such a user interface to be
`employed across multiple independent systems. Ex. 1005, codes (54), (57).
`Reisman teaches that its disclosed system and method “support new and
`enriched aspects and applications of hypermedia browsing and related
`business activities.” Id. at code (57).
`
`3. Leeke (Exhibit 1006)
`Leeke, titled “Content Player Method and Server with User Profile,”
`relates to the operation of a server interacting with users to provide
`personalized content to each of the users. Ex. 1006, codes (54), (57).
`Personalized content is sent by communicating first audio or other content
`associated with a broadcast to a first user location and additional content is
`selected dependent on the user profile and can include second audio content
`selected based on the first user profile, in which case playback of the second
`audio content is synchronized with respect to playback of the first audio
`content. Id. at code (57).
`
` Unpatentability Contentions in View of Bar-El and Reisman
`Petitioner contends that “[t]he combination of Bar-El and Reisman
`renders the [c]hallenged [c]laims obvious.” Pet. 22. Upon consideration of
`Petitioner’s arguments and supporting evidence, however, we are not
`persuaded Petitioner has shown sufficiently that Bar-El and Reisman, either
`alone or in combination, disclose element [1g] of claim 1. Id. at 33–39.
`Therefore, for this asserted ground of unpatentability, our discussion focuses
`on element [1g] because it is dispositive.
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`Element [1g] in claim 1 recites, “retrieving user social network
`information from at least one source external to the presented first composite
`digital media display, wherein the user social network information contains
`one or more user attributes.” Ex. 1001, 21:13–16. Petitioner contends that
`“Bar-El in combination with Reisman discloses this element.” Pet. 33.
`Petitioner contends that the personalization system that Bar-El discloses
`communicates with multiple users via a network and builds multiple user
`profiles containing user attributes. Id. at 33–34 (citing Ex. 1004, 8:19–24,
`9:10–14, 10:9–20; Ex. 1003 ¶ 191). These user profiles are external to the
`first composite digital media display, according to Petitioner, “because it is
`separate from the original video stream A/B, video parameters, schedule,
`and timing information.” Id. at 34 (citing Ex. 1003, ¶¶ 191–192). In
`addition, Petitioner contends that Bar-El discloses “retrieving information
`about the user from a ‘user’s responses to the advertising images previously
`implanted in his personalized video sequence, . . . or any other fact about the
`user which the server 11 has the ability to gather.’” Id. at 35 (citing
`Ex. 1004, 8:20–24; Ex. 1003 ¶ 195). But Petitioner does not suggest Bar-El
`discloses “retrieving user social network information . . . contain[ing] one or
`more user attributes” and the Petition lacks sufficient explanation and
`argument to support such an assertion.
`Instead, Petitioner contends that “Reisman discloses retrieving the
`claimed ‘user social network information’ that includes user attributes.” Pet.
`36 (citing Ex. 1003 ¶¶ 199–201). As support for this contention, Petitioner
`asserts that “Reisman identifies user attributes including user interests and
`relationships in ‘virtual communities’ (e.g., ‘buddy list’ or ‘common
`interest’).” Id. (citing Ex. 1005 ¶¶ 577, 632–642, 722; Ex. 1003 ¶ 202); see
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`id. (citing Ex. 1005 ¶¶ 522, 820; Ex. 1003 ¶ 203). Petitioner asserts that
`“Reisman’s virtual communities are social networks and [that] the user
`attributes derived from the virtual communities and interactions through
`them are ‘user social network information.’” Id. at 37 (citing Ex. 1003
`¶ 204). Petitioner asserts “Reisman discloses a system for presenting media
`that selects and displays personalized content resources (‘digital media
`assets’) based on user attributes in user information from a virtual
`community (‘user social network information’).” Id. (citing Ex. 1005 ¶¶ 59,
`68, 212, 638-638, 641; Ex. 1003 ¶¶ 199, 208–211). Petitioner concludes,
`because Bar-El teaches that it is important to obtain “as much information as
`possible about users to improve advertisement quality, a [skilled artisan]
`would have combined Bar-El with Reisman to additionally retrieve social
`network information from sources external to the presented composite
`display to improve the quality of personalization according to the retrieved
`user attributes.” Id. at 38–39 (citing Pet. 73–81 (entire section titled
`“Obviousness and Motivation to Combine”); Ex. 1004, 9:15–18, Fig. 2; Ex.
`1003 ¶ 212).
`Although Petitioner provides numerous citations to Reisman in
`support of its contentions, Patent Owner argues that a “careful analysis of
`each citation shows . . . Reisman simply do[es] not disclose what Petitioner
`says [it] disclose[s]” and “expert testimony [cannot] backfill [the] missing
`elements from the challenged claims.” Prelim. Resp. 25. Patent Owner
`argues that within the many “separate and noncontiguous areas of Reisman’s
`lengthy disclosure [cited by Petitioner], Reisman never discloses retrieval of
`social network information, of any kind, to build any sort of profile.”
`Prelim. Resp. 27. Patent Owner “walks through” Petitioner’s citations to
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`explain why “nothing about these disparate excerpts in Reisman discloses
`the creation or retrieval of social network information containing user
`attributes.” Id. at 27–31. Patent Owner argues that “[w]hile some form of
`‘user attribute’ does appear in Reisman, it is simply the conventional well-
`known variety used commonly in the time for ad targeting, not sourced from
`social media information.” Id. at 31–32.
`
`Having studied the portions of Reisman cited by Petitioner for
`element [1g], along with the associated portions of the Dr. Almeroth’s
`declaration, we are not persuaded that the prior art discloses retrieving user
`social network information containing one or more user attributes from an
`external source. More specifically, Petitioner has not shown sufficiently that
`Reisman discloses or suggests a system that retrieves user attribute
`information from a social network external to the system. Instead, Reisman
`teaches that user communities may be used as “part of a portal strategy for
`aggregating viewers and services as a marketplace that adds value by linking
`them, the use of community/communications services to link viewers in
`communications related to their viewing might be applicable.” Ex. 1005
`¶ 632. Reisman suggests that communities may be used to form a portal
`consisting of an “essentially unique” pool of linked users with a bond “that
`might last after other differentiators might become commoditized.” Id.
`¶ 633. Reisman teaches that these portals of linked users within a strong
`community “might enable a portal to obtain premium subscriptions revenue
`from viewers, and leverage that to obtain premium rates from other portal
`participants, including content providers and advertisers/commerce
`partners.” Id. ¶ 641.
`
`16
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`IPR2021-00476
`Patent 8,856,030 B2
`
`Absent from Petitioner’s proffered evidence is anything sufficient to
`
`demonstrate that the Reisman system actually obtains user attribute
`information from an external social network source. The intrinsic record of
`the ’030 patent makes clear that obtaining user social network information
`from an external social network source is a critical point of distinction of
`claim 1, and therefore claim 2. For example, during prosecution, the
`applicant distinguished the prior art because it did “not utilize social network
`information obtained from a source external to the presentation,” and the
`examiner agreed that, rather than using the conventional method of getting
`user attributes from the user, the claimed invention “go[es] to social
`networks to get user attribute information.” Ex. 1002, 12, 102. Petitioner,
`however, does not show sufficiently that the Reisman system communicates
`with a social network, which gathers user social network information
`including user attributes, to retrieve information about a user’s attributes.
`Petitioner notes that “Reisman identifies user attributes including user
`interests and relationships in ‘virtual communities’” and that “Reisman
`discloses that user attributes include, e.g., ‘demographics, psychographics,
`interests, and the like.’” Pet. 36–37 (citing Ex. 1005 ¶¶ 522, 632–642, 722,
`820). What is missing in the cited evidence from Reisman, however, is any
`evidence that Reisman discloses or suggests getting the user attribute
`information from an external social network. Petitioner cites paragraph 204
`in the Declaration of Dr. Almeroth as support for its contention that Reisman
`discloses a system in which “user attributes [are] derived from . . . virtual
`communities” (id. at 37 (emphasis added)), but that paragraph offers little, if
`any, support because it relates to composite displays. Nevertheless, Dr.
`Almeroth does state “Reisman’s virtual communities are social networks and
`
`17
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`IPR2021-00476
`Patent 8,856,030 B2
`
`the user attributes derived from the virtual communities” in paragraph 208,
`but this statement is conclusory and lacks any explanation, with supporting
`evidence, about why the user attributes that Reisman discloses were “derived
`from the virtual communities.” See Ex. 1003 ¶ 208. In paragraph 205, Dr.
`Almeroth states that Reisman retrieves the claimed “social network
`information” from users in “virtual communities” and/or from information
`that is related to users in “virtual communities,” but this testimony suggests
`Reisman uses the conventional method of getting user attributes from the
`user, instead of going to a social network to get the user attribute
`information. See id. ¶ 205.
`We note further that paragraph 638 in Reisman, which Dr. Almeroth
`and Petitioner cite as support, teaches that the disclosed system may provide
`a portal service to assist users in finding fellow users who are watching the
`same program at a given time by “flag[ging] individuals on a buddy list that
`were watching the same program.” See Ex. 1005 ¶¶ 634, 638. This
`evidence cuts against Petitioner’s contentions because it demonstrates that
`Reisman’s system has a user’s “buddy list” before a community is created
`and, thus, it was not received from a social network. We also find it
`contrary to Petitioner’s position that paragraph 522 in Reisman discusses
`personalization of ads based on user attributes, but none of the user attributes
`listed includes those received from a social network for a user. See id.
`¶ 522.
`For the above reasons, we do not find Petitioner has carried its burden
`of showing Reisman discloses a system that retrieves user social network
`information from at least one source external to the presented first composite
`digital media display, wherein the user social network information contains
`
`18
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`IPR2021-00476
`Patent 8,856,030 B2
`
`one or more user attributes. Moreover, Petitioner does not argue that a
`skilled artisan would have known to modify Reisman’s system to retrieve
`user social network information including user attributes from an external
`source; nor does Petitioner allege that the skilled artisan would have had a
`reason to modify Reisman in this manner. See generally Pet. 73–81. In fact,
`each of the rationales that Petitioner proposes to combine Bar-El and
`Reisman in the manner claimed depends on Reisman disclosing a system
`that retrieves user social network information from an external source. See
`id. at 76–81. Therefore, based on the evidence in the Petition, and because
`claim 2 depends from claim 1, we are not persuaded that Petitioner has
`demonstrated a reasonable likelihood of prevailing in showing that claims 1
`and 2 are unpatentable as being obvious in view of Bar-El and Reisman.
`
` Unpatentability Contentions in View of Bar-El, Reisman, and Leeke
`Petitioner contends “[t]he combination of Bar-El, Leeke, and Reisman
`renders the Challenged Claims obvious.” Pet. 48. In this ground, however,
`Petitioner relies on the same evidence and arguments from Bar-El and
`Reisman to demonstrate the prior art discloses element [1g] in claim 1. Id.
`Leeke is only relied upon to provide evidence regarding elements [1b], [1c],
`and [1d]. Id. at 49. Therefore,
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