Blackberry Limited

Patent Trials and Appeals Board

Aug 3, 2020

IPR2019-00516 (P.T.A.B. Aug. 3, 2020)

Trials@uspto.gov Paper No. 42
571-272-7822 Entered: August 3, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

FACEBOOK, INC., INSTAGRAM, LLC, and WHATSAPP INC.,
Petitioner,

v.

BLACKBERRY LIMITED,
Patent Owner.
____________

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____________

Before SALLY C. MEDLEY, MIRIAM L. QUINN and
AARON W. MOORE, Administrative Patent Judges.

QUINN, Administrative Patent Judge.

JUDGMENT
Consolidated Final Written Decision
Determining All Challenged Claims Unpatentable
Denying Patent Owner’s Motion to Amend
35 U.S.C. § 318(a)

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I. INTRODUCTION
We instituted inter partes review pursuant to 35 U.S.C. § 314 to
review claims 1, 2, 4, 6–8, 10, 12–14, 16, and 18 of U.S. Patent
No. 8,279,173 B2 (Ex. 1001, “the ’173 patent”), owned by Blackberry
Limited. We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons discussed below, Petitioners have shown by a preponderance
of the evidence that claims 1, 2, 4, 6–8, 10, 12–14, 16, and 18 of the
’173 patent are unpatentable. Additionally, for the reasons discussed below,
we deny Patent Owner’s Motion to Amend.
II. CONSOLIDATED PROCEEDINGS
The two captioned proceedings (IPR2019-00516 and IPR2019-00528)
involve the ’173 patent and challenge the same set of claims. Although the
asserted grounds and prior art contentions are different in each proceeding,
there are disputed claim terms across the challenged claims. For instance,
the parties dispute the scope of the phrase “tag type indicative of a tag
source associated with the tag” as it pertains to the meaning of the term “tag
source.” Consolidation is appropriate where, as here, the Board can more
efficiently handle the common issues and evidence, and also remain
consistent across proceedings. Under 35 U.S.C. § 315(d), the Director may
determine the manner in which these pending proceedings may proceed,
including “providing for stay, transfer, consolidation, or termination of any
such matter or proceeding.” See also 37 C.F.R. § 42.4(a) (“The Board
institutes the trial on behalf of the Director.”). There is no specific Board
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Rule that governs consolidation of cases. But 37 C.F.R. § 42.5(a) allows the
Board to determine a proper course of conduct in a proceeding for any
situation not specifically covered by the rules and to enter non-final orders to
administer the proceeding. Therefore, on behalf of the Director under
§ 315(d), and for a more efficient administration of these proceedings, we
consolidate IPR2019-00516 and IPR2019-00528 for purposes of rendering
this Final Written Decision.
III. PROCEDURAL BACKGROUND
Facebook, Inc., Instagram, LLC, and WhatsApp Inc. (collectively,
“Petitioner”), filed the Petition in IPR2019-00516 (“516 IPR”) on December
31, 2018 and the Petition in IPR2019-00528 (“528 IPR”) on January 3,
2019. 516 IPR, Paper 2 (“516 Petition” or “516 Pet.”); 528 IPR, Paper 2
(“528 Petition” or “528 Pet.”). Both proceedings challenge the same set of
claims of the ’173 patent: Claims 1, 2, 4, 6–8, 10, 12–14, 16, and 18. See
516 Pet. 4–5; 528 Pet. 4−5. After considering Patent Owner’s Preliminary
Responses, the Board instituted trial in each of these proceedings. 516 IPR,
Paper 7, Decision on Institution (“516 Dec. on Inst.”); 528 IPR, Paper 8,
Decision on Institution (“528 Dec. on Inst.”).
In each proceeding, Patent Owner filed a Response. 516 IPR, Paper
14 (“516 PO Resp.”); 528 IPR, Paper 16 (“528 PO Resp.”). Petitioner filed
Replies. 516 IPR, Paper 22 (“516 Pet. Reply”); 528 IPR, Paper 23 (“528
Pet. Reply”). And Patent Owner filed Sur-Replies. 516 IPR, Paper 29 (“516
PO Sur-Reply”); 528 IPR, Paper 29 (“528 PO Sur-Reply”).
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Patent Owner also filed a Conditional Motion to Amend in each
proceeding. The filed motions (and subsequently filed paper) are identical,
and, therefore, we refer hereinafter to the papers filed in the 516 IPR.
IPR2019-00516, Paper 15 (“Motion” or “MTA”). Petitioner filed an
opposition to the Motion. 516 IPR, Paper 23 (“MTA Opp.”). Pursuant to
Patent Owner’s request, we issued a non-binding Preliminary Guidance on
the Motion. Paper 25 (“PG”). Patent Owner had an opportunity to address
the Preliminary Guidance and Petitioner’s Opposition in its Reply to the
Motion. 516 IPR, Paper 20 (“MTA Reply”). And Petitioner also had an
opportunity to address the Preliminary Guidance and respond to Patent
Owner’s Reply to the Motion. 516 IPR, Paper 36 (“MTA Sur-Reply”).
We held Oral Argument on the captioned proceedings on May 5,
2020, the transcript of which is in the record. 516 IPR, Paper 41 (“Tr.”).
A. RELATED MATTERS
The ’173 patent is the subject of a district court proceeding in the
Central District of California, captioned BlackBerry Ltd. v. Facebook, Inc.,
No. 2:18-cv-01844-GW-KS (C.D. Cal.). 516 Pet. 2; 516 IPR, Paper 4, 2.
IV. THE ’173 PATENT AND PRESENTED CHALLENGES
A. THE ’173 PATENT, EXHIBIT 10011
The ’173 patent relates to a “user interface for selecting a photo tag”
to associate with a digital photograph, for example, in a social networking or

1 We note that the evidence filed in both proceedings is generally consistent
in having the same exhibit number. Therefore, we reference Exhibits as they
appear in the 516 IPR record, unless otherwise noted.
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photo sharing application. Ex. 1001, 1:15–23. The patent recognizes the
existence of prior art methods for tagging digital photographs, but explains
that an improved user interface is needed because “[s]electing a ‘tag’ to
associate with an identified point in a photograph can be a complicated task
if there are many potential tags to choose from,” and “common techniques
used on desktops and laptops with full sized screens do not work as well” on
smaller wireless mobile devices. Id. at 1:23–32. To this end, the ’173 patent
discloses a
user interface [that] embodies a method of selecting a photo tag
for a tagged photo, comprising: providing a tag entry field for
entering a photo tag; in dependence upon a string entered by a
user, displaying in a matching tag list any tags from one or more
selected tag sources matching the entered string. The method
may further comprise displaying a tag type for each tag appearing
in the matching tag list. The method may further comprise
allowing user selection of a tag in the matching tag list to
complete the tag entry field.
Id. at Abstract.
Figures 4A and 4B of the ’173 patent, reproduced below, depict an
exemplary user interface in accordance with the claimed invention. Id. at
1:43–44.
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Referring to Figure 4A, the ’173 patent explains that the tag selection user
interface presents the user “with a tag entry field 406 indicating that he
should start typing a tag.” Id. at 5:32–37. The patent states that:
[A]s the user begins to type, photo tag selection module 148B
may be configured to search one or more selected “tag sources”
for tags that match the currently entered text. As shown by way
of illustration in screen 400B of FIG. 4B, these tag sources could
include, for example, a list of friends from an online service like
Facebook™, a list of contacts from the user’s address book 142,
a list of the user’s browser bookmarks (in Internet browser 138),
a cache of recent free-form text entries, etc.
Id. at 5:39–47. The ’173 patent further explains that
photo tag selection module 148B may be configured to display
any matching tags . . . from one of the tag sources to the tag being
typed by the user in the tag entry field 406 in a matching tag list
412. Each tag may have an icon or some other visual identifier
associated with it that clearly indicates its type, and allows the
user to quickly distinguish between different types of tags.
Id. at 5:49–55. According to the patent, similar to “tag sources,” “tag types
could include a free-form alphanumeric string, Facebook™ friends, address
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book entries (in address book 142), browser bookmarks (in Internet browser
module 138), etc.” Id. at 4:46–50.
B. CHALLENGED CLAIMS
Claims 1, 2, 4, 6–8, 10, 12–14, 16, and 18 of the ’173 patent are under
review in this proceeding. Claims 1, 7, and 13 are independent. Claim 1 is
representative, and is reproduced below:
1. A method of selecting a photo tag for a tagged
photo, comprising:
displaying a tag list including tags from one or more tag
sources matching a search string;
displaying a tag type indicator for each tag appearing in
the tag list, said tag type being indicative of a tag source
associated with the tag.
Ex. 1001, 9:14–20. Independent claims 7 and 13, respectively, recite a
“system” and “computer readable medium” for performing the method of
claim 1. Id. at 9:34–40, 10:13–21.
C. ASSERTED PRIOR ART AND INSTITUTED GROUNDS OF UNPATENTABILITY
These proceedings rely on the following prior art references:
a) Zuckerberg: US 7,945,653 B2, issued May 17, 2011 (Ex. 1003);
b) Rothmuller: US 7,415,662 B2, issued Aug. 19, 2008 (Ex. 1004);
c) MacLaurin: US 7,831,913 B2, issued Nov. 9, 2010 (Ex. 1006);
d) Ortega: US 6,564,213 B1, issued May 13, 2003 (Ex. 1007);
e) Plotkin: How to Do Everything with Photoshop Elements 4.0
(Ex. 1008); and
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f) Matthews: US 2006/0218503 A1, published Sept. 28, 2006
(Ex. 1009).
In IPR2019-00516, Petitioner asserts the following grounds of
unpatentability (516 Pet. 4–5):
Claim(s)
Challenged 35 U.S.C. §
2 Reference(s)/Basis
1, 2, 4, 6–8, 10,
12–14, 16, 18 103 Zuckerberg
1, 2, 4, 6–8, 12–
14, 18 103
Zuckerberg, Rothmuller,
MacLaurin
10, 16 103 Zuckerberg, Rothmuller, MacLaurin, Ortega
1, 2, 4, 6–8, 12–
14, 18 103
Zuckerberg, Plotkin,
MacLaurin
10, 16 103 Zuckerberg, Plotkin, MacLaurin, Ortega
1, 2, 4, 6–8, 10,
12–14, 16, 18 103 Rothmuller, Matthews
10, 16 103 Rothmuller, Matthews, Ortega
In IPR2019-00528, Petitioner asserts the following grounds of
unpatentability (528 Pet. 4−5):

2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29,
125 Stat. 284, 287–88 (2011), revised 35 U.S.C. § 103, effective March 16,
2013. Because the patent application resulting in the ’173 patent was filed
before the effective date of the relevant section of the AIA, we refer to the
pre-AIA version of § 103 throughout this decision.
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Claim(s)
Challenged 35 U.S.C. §
3 Reference(s)/Basis
1, 2, 4, 6–8, 10,
12–14, 16, 18 103 MacLaurin
2, 8, 10, 14, 16 103 MacLaurin, Ortega
1, 2, 4, 6–8, 10,
12–14, 16, 18 103 MacLaurin, Rothmuller
2, 8, 10, 14, 16 103 MacLaurin, Rothmuller, Ortega
1, 2, 4, 6–8, 10,
12–14, 16, 18 103 MacLaurin, Plotkin
2, 8, 10, 14, 16 103 MacLaurin, Plotkin, Ortega
Petitioner relies on multiple Declarations of Dr. Sandeep Chatterjee,
Ph.D. to support the patentability challenges in each proceeding. 516 IPR,
Ex. 1002 (“516 Chatterjee Decl.”); 528 IPR, Ex. 1002 (“528 Chatterjee
Decl.”); 516 IPR, Ex. 1023 (“516 Reply Chatterjee Decl.”); 528 IPR,
Ex. 1023 (“528 Reply Chatterjee Decl.”).
Patent Owner relies on the Declaration of Dr. Rajeev Surati in each
proceeding. 516 IPR, Ex. 2001 (“516 Surati Decl.”); 528 IPR, Ex. 2001
(“528 Surati Decl.”).
V. ANALYSIS
A. LEVEL OF ORDINARY SKILL IN THE ART
Petitioner contends that a person of ordinary skill in the art at the time
of invention of the ’173 patent “would have possessed at least a bachelor’s
degree in software engineering, computer science, computer engineering, or

3 See supra n.2.
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electrical engineering with at least two years of experience in software
application development, including graphical user interface development (or
equivalent degree or experience).” 516 Pet. 6–7 (citing 516 Chatterjee Decl.
¶¶ 12–15); 528 Pet. 9 (citing 528 Chatterjee Decl. ¶¶ 12–15). We adopted
Petitioner’s stated level of ordinary skill in the art in our Decision on
Institution noting that it was consistent with the level of skill in the art
reflected in the prior art of record. 516 Dec. on Inst. 6−7; 528 Dec. on
Inst. 6 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)).
Patent Owner does not dispute our determination and “adopts the Board’s
adopted level of ordinary skill in the art.” 516 PO Resp. 19−20; 528 PO
Resp. 18. Because there is no dispute on this issue, we determine that the
level of ordinary skill in the art as asserted by Petitioner is proper.
B. CLAIM CONSTRUCTION
In an inter partes review proceeding, a claim of a patent is construed
using the same standard used in federal district court, including construing
the claim in accordance with the ordinary and customary meaning of the
claim as understood by one of ordinary skill in the art and the prosecution
history pertaining to the patent. 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, 51,358 (Oct. 11, 2018)
(amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now
codified at 37 C.F.R. § 42.100(b) (2019)). In our Decision on Institution we
noted that, although Petitioner presented alternative grounds of
unpatentability to account for various claim interpretations Patent Owner
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might advance, Petitioner did not seek express construction of any claim
term. See, e.g., 516 Pet. 10 (“For purposes of the prior art cited herein,
Petitioner does not, at this time, contend that any term requires express
construction.”); id. at 31 (“[I]n the event the Patent Owner argues that claim
1 requires display of a visually separate indicator for every tag in the list,
Grounds 2–5 below establish that Zuckerberg would still render the claim
obvious in view of additional references.”). After institution, Patent Owner
raised claim construction issues concerning two terms. 516 PO Resp.
20−32. We analyze each in turn.4
1. Tag Sources
Patent Owner contends that we should construe the term “tag sources”
in accordance with the plain and ordinary meaning of the term: “a
separately searchable collection of tags.” Id. at 22. According to Patent
Owner, the term “does not describe the tags themselves[,] but rather refers to
how tags are obtained (‘from one or more sources’).” Id. (citing 516 Surati
Decl. ¶ 89). In response, Petitioner agrees that a “tag source” refers to a
“collection of tags.” 516 Pet. Reply 1 (emphasis omitted); Tr. 5:15−20.
Petitioner, however, disagrees with the part of Patent Owner’s proposed
construction requiring that the collection of tags be “separately searchable.”
516 Pet. Reply 1.

4 The claim construction issues are relevant to both consolidated proceedings
notwithstanding our reference to the papers filed in the 516 IPR.
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We start our analysis with the claim term itself and the surrounding
claim language. Claim 1 recites displaying a tag list including “tags from
one or more tag sources” and a tag type indicator, for each displayed tag,
where the tag type is “indicative of a tag source associated with the tag.”
The three interrelated terms of the claim are (1) “tags” from (2) “one or
more tag sources” and (3) a “tag type indicator” indicative of the “tag
source.” Dependent claims 6, 12, and 18 shed further light into the “tag
source” term by reciting the further limitation of selecting “as a tag source
one or more of an online network profile, an address book, browser
bookmarks, landmark tags, and freeform text.” According to these claim
limitations then, the “tag source” may very well be a “collection of tags,” as
the parties have argued, because the tags are grouped according to their
source. However, the plain and ordinary meaning of the term, when
considering the word “source,” provides a connotation not expressly
acknowledged by the portion of the agreed-to meaning, i.e., “collection of
tags.”
The plain and ordinary meaning of the word “source” includes the
notion of the tags’ origin. For instance, Patent Owner correctly argues that
the word “source” relates to the origin of the information (e.g., where the
information is from), but not necessarily the subject matter of the
information. 516 PO Resp. 21. In support of this argument, Patent Owner
proffers various dictionary definitions that define the word “source,” as it is
customarily known, to denote the origin or the supply of the information,
i.e., the origin of the tags. See Exs. 2002 (defining source as “[t]he point of
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origin” and “[o]ne, such as a person or document, that supplies
information”); 2003 (defining “source” as “a person, book, document, etc.
that provides information”); 2004 (defining “source” as a “point of origin or
procurement” and “one that supplies information”). Patent Owner also
proffers the testimony of Petitioner’s expert, Dr. Chatterjee, who, when
testifying that a tag source is a stored collection or group of predefined tags,
agreed that his testimony uses the word “source” in a manner consistent with
how it is defined in a general purpose dictionary. Ex. 2012, 53:25−54:5.
Patent Owner also proffers the testimony of its own expert, Dr. Surati, who
also states that the plain meaning of the word “source,” relates to the origin
of the information, and more specifically, where the information is from.
516 Surati Decl. ¶ 83.
Thus, it is apparent from the specific claim language at issue and the
surrounding claim language that the plain and ordinary meaning of the term
“tag source” includes the notion of the origin of the information, i.e., where
the tag comes from. And as stated above, the experts testifying in this
proceeding agree that the plain and ordinary meaning of the term “source”
aligns with the common dictionary definitions discussed above. However,
the experts disagree as to what the ’173 patent Specification would inform a
person of ordinary skill in the art vis-à-vis the “tag sources.” On the one
hand, Dr. Surati testified that the ’173 patent would inform a person of
ordinary skill that each “tag source” is separately searched for tags, a search
that is distinguished primarily by how a query is crafted and executed to
search each “collection of tags.” 516 Surati Decl. ¶¶ 93−101; Ex. 1021,
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121:10−123:16 (Surati deposition). On the other hand, Dr. Chatterjee
testified that the ’173 patent so broadly describes the “tag source” search
that the term only conveys that the tags are merely stored or associated with
each other as a collection or group of predefined tags. 516 Chatterjee Decl.
¶ 177; 516 Reply Chatterjee Decl. ¶¶ 7−11; Ex. 2012, 51:17−54:5. We find,
however, that neither the claim language nor the ’173 patent Specification
supports either expert’s position.
First, as to Dr. Surati’s opinion, we note that the plain reading of the
claim language requires only that the tags in the tag list are included “from
one or more tag sources.” Further, although the claim requires that the
displayed tags are the tags matching a search string, the plain reading of the
claim language does not require a search of tag sources in order to display
the tag list. It may be that before the search for matching tags, these would
have been extracted from the selected tag sources. It may also be possible to
search the tag sources at the same time the user searches for a tag. But the
claim does not require a tag source search. That is, the claim language
speaks to where the tags come from (read here “tag sources”), but does not
recite how or when the tags are collected or extracted from said “tag
sources.” Thus, Patent Owner’s contention and Dr. Surati’s testimony, that
there must be a requirement of separately searchable collections of tags, are
unsupported by the claim language.
We also are not persuaded that the ’173 patent Specification supports
Patent Owner’s and Dr. Surati’s position. Patent Owner argues that the
’173 patent Specification confirms that the different “tag sources” are
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separately searchable and that all embodiments are consistent in this regard.
516 PO Resp. 22−26 (citing Ex. 1001, 3:40−55, 5:39−42, 5:56−61, 6:27−48,
6:49−52, Fig. 1; 516 Surati Decl. ¶¶ 88−101); see also 516 PO Sur-Reply
7−8 (arguing that “[t]he correct focus in this analysis is on how tags are
obtained” and that because the ’173 patent Specification provides for tags
from different “sources” to be obtained, it confirms that the “separately
searchable” requirement is not improper). We do not agree. The ’173 patent
describes one embodiment in which, as the user begins to type, the photo
tagging module searches one or more selected “tag sources” for tags that
match the currently entered text. Ex. 1001, 5:39−42. Then the Specification
describes potential tag sources: a list of friends from an online service such
as Facebook, a list of contacts from the user’s address book, a list of the
user’s browser bookmarks, and a cache of recent free-form text entries. Id.
at 5:42−47. Thus, in that embodiment, a photo-tagging module may be
configured to search various “tag sources,” which essentially are either
“lists” of tags or the “cache of recent” entries. This description explains, at
best, what is being searched (the tag sources, such as lists or a cache) and
when the search occurs (as the user begins to type), but it does not explain
how the search occurs or how the tags are collected for display. See also id.
at 5:48−61 (explaining matching tags from the tag sources when the user
types text and creating a new entry to add to the cache if there are no tags
“from the tag sources” in the matching tag list).
All other examples of the ’173 patent Specification similarly belie
Patent Owner’s contention that the claim requires “separate searchability” of
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“tag sources.” For instance, in another embodiment, landmark tags may be
another tag source. Id. at 6:27−54. But this embodiment, at best, describes
that either the user creates the landmarks tag list or, in the alternative, a
third-party provides the landmarks tag list. Id. The Specification provides
no explanation as to how the “tag source,” e.g., the prepared landmarks tag
list, is searched. Again, the Specification, like the claim language, focuses
on where the tags are obtained from, not how they are searched or obtained
from the “tag source.” See also 516 Pet. Reply 3−5 (Petitioner arguing that
searching “tag sources,” as contended by Patent Owner, is not supported by
the Specification, and that, at best, such a requirement would read
embodiments into the claims).
Second, as to Petitioner’s contentions, the grouping of tags to form a
collection, alone, does not explain sufficiently the requirement that a “tag
source” is the source of tags. Plainly speaking, a collection of tags would be
a “tag source” if the tags that the system displays originated from that
collection. Petitioner, in oral argument, appeared to agree with this
interpretation when arguing that “when that collection is used as a source of
tags for the tagging functionality, it’s a tag source for that functionality.”
Tr. 7:22−23. Thus, the “collection of tags,” as the meaning for “tag
sources,” and to capture the plain and ordinary meaning of the word
“source,” needs to embody the concept of a collection from which the tags
originate, in accordance with the context of the claim language and the
Specification.
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Patent Owner expressed concern at oral argument that, although “tag
sources” should reflect the origin for the tags, the perspective of the claim is
not on the historical origin of the tag, i.e., initial creation of the tag. See
Tr. 20:2−14. We agree with Patent Owner in this regard and find that the
’173 patent supports Patent Owner’s contention. For instance, the
’173 patent describes that one “tag source” may be “a prepared landmark
list” compiled by a third party of famous landmarks for various cities.
Ex. 1001, 6:49−54. But the ’173 patent Specification also states that a
“prepared landmark tag list” may be set up by a user while a user visits a
landmark and records the requisite information for a landmark tag. Id. at
6:36−45 (describing that the user provides the landmark name and records
the geographic location at each landmark location). A “tag source” such as
“landmark tags,” as recited in claim 6, indeed may be a collection of tags
with a common subject matter, i.e., famous landmarks. However, in the first
instance, the third party created the tags that eventually formed the
collection or “the prepared landmark list.” And in the second instance, the
user created the tags that formed the same collection or “prepared landmark
list.” Therefore, that example explains the concept that the landmark tag list,
as a “tag source,” supplies the landmark tags for the tagging functionality,
regardless of whether or when the user or a third-party created the list of
landmark tags as a collection of tags. Thus, as we capture the meaning of
the word “source” to refer to where the tags came from, the meaning cannot
be limited to referring only to the original source (or creation) of the
collection of tags.
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However, from the landmark tag list example we glean that once the
famous landmark tags were grouped or collected into the list, that list
became the source of the tags evidenced by the tagging functionality
associating the tag with the tag source (see claim 1: tag type being indicative
of a tag source associated with the tag). Thus, identifying the landmark tag
list, for example, as a discrete source of landmark tags is predicate for the
claimed tag type to indicate the tag source. That is, we understand the
context of the claim language and the ’173 patent Specification to convey
that regardless of how or when the tags are created and collected into a list,
what matters is that each source must be distinct such that a tag type
indicator or other context, indicating the tag source, can be displayed for
each tag. See Ex. 1001, 9:18−20 (claim 1 reciting that the tag type indicator
displayed for each tag is indicative of a tag source associated with the tag),
4:56−58 (describing that tags displayed include an icon indicating what type
of tag it is), 4:44−50 (listing the types of tags as including “a free-form
alphanumeric string, Facebook[] friends, address book entries (in address
book 142), browser bookmarks (in Internet browser module 138), etc.”),
6:55−62 (explaining that an “associated context” may allow the user to
visually identify and differentiate between the tag types in tag selection user
interface 404); see also Tr. 5:13−20 (counsel for Petitioner arguing that “the
system that uses the tags for photo tagging would be able to recognize
distinct collections of tags in order to carry out the photo tagging
functionality” (emphasis added); 1−15 (counsel for Petitioner also stating
that all the examples in the prior art show “distinct collections of tags that
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the tagging systems recognize as distinct sets in order to provide the tagging
functionality”); see also Tr. 20−21 (counsel for Patent Owner explaining that
the proffered dictionary definitions meant to capture also “the possibility of
distinguishing one or more tag sources”).
To illustrate, the ’173 patent describes two distinct “tag sources” as
(1) a list of Facebook friends, and (2) a list of contacts from the user’s
address book entries. Id. at 5:42−47. Each of these two “tag sources” would
have an associated tag type indicator. Id. at 4:46−50, 4:56−58, 9:18−20.
From the claim language’s viewpoint, when or how the friends were added
to the list of Facebook friends or when the contact was entered in the address
book is irrelevant. It also is irrelevant when or how the list of friends were
extracted from Facebook in order to display matching entries—same goes
for the address book entries. The claim only requires that the displayed tags
are identifiable as coming from a distinct “tag source,” e.g., by including
some visual indicator for the Facebook-friends-tags list and a different visual
indicator for the address-book-tags list. As such, the “tag sources” must be
distinct from each other, regardless of how or when they were created, and
how or when tags were added, searched for, or matched.
Patent Owner also argues that the Federal Circuit’s decision in
Amazon.com, Inc. v. ZitoVault, LLC, 754 Fed. App’x 965 (Fed. Cir. 2018)
supports its proposed construction. 516 PO Resp. at 29−30. Patent Owner
argues that the rationale of ZitoVault, which addresses the real-world
problem of distinguishing between “sessions,” is applicable to how the
claims here recite “one or more tag sources.” Id. In particular, Patent
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Owner argues, because the claim recites “one or more” tag sources, there
“must be a mechanism for distinguishing a single tag source from multiple
tag sources.” Id. Thus, according to Patent Owner, similar to the issue in
ZitoVault, the claim requires that the system recognize the distinct tag
sources because each source is searched independently. Id. We are not
persuaded by this argument.
Although in ZitoVault a “session” was in need of being recognizable
by having a beginning and an end, the claims here expressly provide for
recognizability because of the tag type indicators displayed with the tag.
That is, and as stated above, the claim requires some manner of
distinguishing one tag source from another, and displaying a tag type
indicator accordingly. See Tr. 6:16−7:4 (Petitioner stating that providing the
tag type indicator shows that the tag sources are recognized by the system as
distinct collections of tags). As Petitioner notes, however, the ZitoVault
construction would not have limited the claim to any particular technique or
protocol for implementing the recognizability, thus, there is no need to
require a “separate searchability” requirement. See 516 Pet. Reply 8−9.
Therefore, although the claims require that the “tag sources” are distinct
from each other, as evidenced by the tag type indicator, the ZitoVault
rationale does not warrant a claim requirement of “separate searchability”
because neither the claim nor the Specification requires such a search.
Patent Owner further argues that Petitioner’s proposed
“recognizability” criteria is not a concrete characteristic that can be used to
distinguish different “tag sources.” 516 PO Sur-Reply 8−9. According to
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Patent Owner, an arbitrary collection of tags could qualify as a “tag source”
with no objective criteria that would allow a person of ordinary skill in the
art to determine how many “tag sources” are present in the prior art. Id. at
9−10. We agree, but we explain the difference between “recognizability”
and “distinctness.” “Recognizability” as proposed by Petitioner and the
concept of distinctness of tag sources are two different characteristics of the
tag sources. As stated above, the claim language already provides for
recognizability of tag sources by reciting that the displayed “tag type
indicator” is indicative of the “one or more tag sources.” Distinctness,
however, refers to the extent the group of tags are defined as integral
collections. Following on the previous illustration, the list of Facebook-
friends tags is distinct from the list of address-book contacts, but the
indicator conveys the recognizability aspect by using a different indicator for
each list. That is, by requiring distinctness of each “tag source,” the “tag
type indicator” provides the visual indication from which one could
recognize the tag source. Thus, although the claim already includes the
concept of “recognizability,” a “distinctness” criteria would not render the
claimed tag type indicator superfluous. See 516 PO Sur-Reply 9−10 (Patent
Owner arguing that requiring a recognizability of the tag source renders the
tag type indicator limitation superfluous).
Accordingly, based on our analysis of the claim language, the
’173 patent Specification, and extrinsic evidence proffered by the parties, we
determine, consistent with our explanations above, that the term “one or
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more tag sources” means “one or more distinct collections of tags from
which the displayed tags originate.”
2. A Tag Type Indicator . . . Said Tag Type Being
Indicative of a Tag Source.
Patent Owner argues that the limitation “said tag type” refers back to
the “tag type indicator,” and, therefore, there is no antecedent basis problem.
516 PO Resp. 30−31. It appears that Petitioner does not disagree with this
assessment of the claim. 516 Chatterjee Decl. ¶ 83 n.6. We agree with the
parties that the term “said tag type” refers to the “tag type indicator” and
adopt this interpretation of the claim.
C. IPR2019-00516: OBVIOUSNESS GROUNDS BASED ON ZUCKERBERG
Petitioner contends that claims 1, 2, 4, 6–8, 10, 12–14, 16, and 18 are
rendered obvious by Zuckerberg in combination with MacLaurin and either
of Rothmuller or Plotkin. 516 Pet. 21–45, 49–53.5 Petitioner asserts that
claims 10 and 16 are also rendered obvious by the combination of
Zuckerberg, MacLaurin, Ortega, and either of Rothmuller or Plotkin. Id. at
45–49, 53–54.

5 Petitioner has withdrawn its contention that Zuckerberg alone renders
obvious the challenged claims. 516 Pet. Reply 11 n.3 (stating that Petitioner
is no longer pursuing Ground 1, which the Petition identifies as the
obviousness ground based on Zuckerberg alone). Accordingly, we do not
address Petitioner’s contentions regarding obviousness over Zuckerberg
alone. Nor do we address Patent Owner’s arguments directed to Zuckerberg
alone.
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Patent Owner argues that Zuckerberg does not disclose “tag sources.”
516 PO Resp. 37−42. Before addressing the merits of Petitioner’s
contentions in light of Patent Owner’s arguments, we summarize the
asserted references.
1. Overview of the Relevant Asserted References
a. Zuckerberg
Zuckerberg discloses “systems and methods for tagging digital
media”––including digital images––“in a social network environment
administered by a social network server.” Ex. 1003, 1:54–57. In particular,
Zuckerberg explains that
[a] user of a social network may upload digital media (e.g., a
digital image) to a file (e.g., an album) on their web page thus
becoming a media owner of the digital image. The media owner
may select and tag a region of the image by clicking on a point
in the digital image to select the region and typing appropriate
text to tag the region. The media owner may select and tag
multiple regions.
Id. at 1:59–65.
Figure 5 of Zuckerberg, depicting an exemplary “tag web page,” is
reproduced below.
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As illustrated in Figure 5, once a user selects a region of a digital image to
tag, auto list component 420 presents a list of likely tags to the user for
association with selected region 520. Id. at 8:49–52. Zuckerberg explains
that
[t]he tag list 540 may include a text entry window 542 and a list
of previously used tags. As text is entered in the text entry
window 542, the list of previously used tags may be culled to
include only those that match the text in some manner. In some
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embodiments, the list of previously used tags includes a text list
544 and a friends list 546.
Id. at 8:52–58.
b. Rothmuller
Rothmuller describes an apparatus and methods for managing digital
media using tags. Ex. 1004, Abstract. More specifically, Rothmuller
discloses “methods for associating (‘tagging’) fields of text and numeric data
(‘metadata’) with individual objects such as images or photos, storing the
objects and associated metadata as records in a relational database, and
selecting, sorting, organizing and finding the objects based on their tagged
metadata content.” Id. at 1:57–62. Rothmuller further explains that
[d]efault metadata tags can be specified, and new metadata tags
can be defined and created through a tag editor by naming the
tag, selecting its tag type, optionally selecting a graphical icon
that represents the tag, and filling in any remaining fields or
attributes that are unique to and define the tag type.
Id. at 1:63–67.
Figure 1 of Rothmuller, depicting an exemplary user interface for the
disclosed photo tagging system, is reproduced below. Id. at 3:3–5.
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As illustrated in Figure 1, Rothmuller explains that “tags 350 can be applied
to photos by dragging and dropping graphical icons representing the tags
onto one or more photos 1–4 that are displayed in an image area 100.” Id. at
3:36–39.
Rothmuller discloses also that tags can be created and modified using
a “tag editor.” Id. at 3:51–52.
The tag editor allows a user to specify a tag name and tag type,
and to enter metadata in the form of tag attributes that can be
stored in tags of the specified tag type. For convenience, tags
can be divided into one or more tag categories. For example, in
one embodiment tags are divided into people, events, places and
miscellaneous tag categories. Tags in the different tag categories
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generally have different tag attributes to distinguish between
themselves and tags in other tag categories.
Id. at 3:52–60.
Rothmuller incorporates by reference U.S. Provisional Patent
Application No. 60/334,516, filed October 31, 2001 (Ex. 1005; “Rothmuller
Provisional”). Id. at 1:15–17. The Rothmuller Provisional explains that
[t]he recent tag area keeps a set of recently used tags. In a
preferred embodiment, the Favorite Tag is always maintained in
this area at the top. The state of this area is preserved between
Photo Journal sessions. Tags are displayed using small tag type
icons and the tag name.
Ex. 1005, 68. The description of the recent tag area in Rothmuller
Provisional is consistent with the “recently used tags 330” list depicted in
Figure 1 of Rothmuller. As seen in Figure 1, Rothmuller discloses
associating icons with tags. Ex. 1004, Fig. 1. For example, icons depicting
block figures resembling people are associated with the tags for “Mary Jane”
and “Lori.” Id.
c. MacLaurin
MacLaurin describes “systems and methods for tagging items”––
including digital pictures––“based on user selections of items.” Ex. 1006,
2:40–41, 2:2–7. Of particular relevance here, MacLaurin discloses a “light
‘tagging mode’” having the following characteristics:
display a special icon and/or text message indicating that
tagging is active
accumulate each key a user types into a “tag buffer”
use this tag buffer to guess at likely tags
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display the current “best guess” tag in a textual readout
associated with the window
allow a user to choose between “tag guesses” using cursor
arrows
allow a user to choose whether to accept guesses or simply
use the buffer as is
if a user hits the escape key (or similar), exit tagging mode
if the user hits the enter/return key (or similar), apply the
items to the tag.
Id. at 8:4–18.
MacLaurin teaches that “[t]he tagging system can contain both
automatic tags generated by the tagging system and explicit tags from a user.
By distinguishing between the two types of tags easily, a user can be alerted
to their confidence level with regard to the tags.” Id. at 7:48–51. More
specifically, MacLaurin discloses that “if an automated tag and an explicit
tag (one entered by a user) are both presented to the user, each type of tag
can be distinguished utilizing different sizes, fonts, colors, and/or symbols
and the like.” Id. at 8:19–25.
2. Analysis
We start our analysis by summarizing Petitioner’s contentions. The
Petition identifies four grounds based on Zuckerberg, but as stated above,
Petitioner has withdrawn the first Zuckerberg ground—namely obviousness
over Zuckerberg alone. See supra n.5. The remaining three grounds address
all challenged claims for obviousness under combinations of Zuckerberg
with one or more of Rothmuller, MacLaurin, Plotkin, and Ortega. See
Pet. 5−6.
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For instance, for the independent claims (claims 1, 7, and 13)
Petitioner relies mostly on Zuckerberg, with the exception of the limitation
concerning the “tag type indicator.” For that limitation, Petitioner relies on
Rothmuller in one ground (id. at 38−42) and on Plotkin in another ground
(id. at 49−52). Petitioner relies on MacLaurin solely for purposes of
providing a motivation to combine Zuckerberg with the identified teachings
of either Rothmuller or Plotkin. Id. at 42−45, 52. Finally, Petitioner relies
on Ortega for its teachings concerning the “autocomplete” feature directed to
dependent claims 10 and 16. Id. at 45−46, 53−54. In our analysis below, we
focus on the ground that asserts the combination of Zuckerberg, Rothmuller,
and MacLaurin for all challenged claims. Furthermore, because claims 7
and 13, respectively, recite a “system” and “computer readable medium” for
performing the method of claim 1, like the parties, we focus our analysis on
the language of claim 1 with the understanding that the analysis applies
equally to claims 7 and 13.6
a. First Displaying Step
Claim 1 is directed to a “method of selecting a photo tag for a tagged
photo.” Ex. 1001, 9:14−15.7 The claim recites two displaying steps. Id. at

6 Because the relevant elements of claims 1, 7, and 13 are identical, and the
parties argue the claims together, for readability, we provide citations only to
claim 1.
7 Neither party identifies the preamble as a limitation. Regardless of
whether the preamble is limiting, Petitioner provides adequate explanation
and factual support in pages 21–23 of the Petition to show that the preamble
is satisfied by the prior art.
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9:16−20. The first displaying step requires “a tag list including tags from
one or more tag sources matching a search string.” Id. We have construed
“one or more tag sources” to mean “one or more distinct collections of tags
from which the displayed tags originate.” See supra Section V.B.1.
Petitioner relies on Zuckerberg as disclosing the one or more tag sources.
516 Pet. 24−27. In particular, Petitioner relies on pop-up tag list 540
(reproduced below) depicted in Figure 5 of Zuckerberg as illustrating the
disclosed “tag sources.” Id. at 24.

Figure 5 illustrates tag list 540 comprising text entry window 542 and
a list of previously used tags. Ex. 1003, 8:49−54. Petitioner asserts that the
claim only requires one tag source (flowing from the claim language “one or
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more tag sources”) and that such a source is merely a source of predefined
tags (citing Ex. 1001, 6:5−12). 516 Pet. 24. According to Petitioner,
however, Zuckerberg goes further—it teaches that upon a user typing in the
text entry window, a list of previously used tags is culled to include those
that match the entered text, and that the list of previously used tags includes
two lists: friends list 546 and text list 544. 516 Pet. 24 (citing Ex. 1003,
8:52−58). These two lists are evidence of two distinct tag sources. Id.
As to the friends list, Petitioner asserts that the tags are “returned from
a collection of predefined contacts, such as a list of ‘friends’ that make up
the user’s social network.” Id. at 24−25 (citing Ex. 1003, 5:61−64,
8:62−66). Each of the names listed in the friend list, e.g., Bob White and
Brian Bathurst, represent persons whose identities are known by the system
and such tags originate from a list or collection of contacts used by the
system to populate the friend list. Id. at 25 (citing 516 Chatterjee Decl. ¶ 76,
Ex. 1003, 3:67−4:4, 4:12−21).
As to the text list, Petitioner asserts that the tags are returned from a
cache of previously used tags. Id. at 25 (citing 516 Chatterjee Decl. ¶ 77,
Ex. 1003, 8:52−59). According to Petitioner, this cache is separate and
distinct from the list of contacts used to populate the friend list. Id. (citing
516 Chatterjee Decl. ¶ 77). Petitioner argues that the displayed text tags, for
instance, do not have to include contacts, and include “words” and “objects.”
Id. at 25–26 (citing Ex. 1003, 8:58−62).
We agree with Petitioner that Zuckerberg teaches the first displaying
limitation that recites “a tag list including tags from one or more tag sources
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matching a search string.” Zuckerberg’s Figure 5 shows tag list 540 that
pops-up once a user has selected a region on the photo. Ex. 1003, 8:49−52.
Zuckerberg’s tag list includes text entry window 542 in which a user can
type text to tag the selected region on the photo. Id. at 8:51−56. The
displayed tag list also includes a list of previously used tags. Id.
Specifically, Zuckerberg’s system culls the previously used tags so that only
those matching the entered text are displayed. Id. at 8:54−56. Thus,
Zuckerberg teaches a displayed “tag list” as recited.
As to the “one or more tag sources,” we find that the previously used
tag list in the example depicted in Figure 5 displays tags that originated from
two distinct tag sources. As stated above, Petitioner has identified two
different lists (the friends list and the text list) that are evidence of two tag
sources. 516 Pet. 23−26. The friends list includes entries from a group of
contacts (“friends”) within the social network environment, in other words,
Facebook friends. Ex. 1003, 8:62−66; 3:60−64 (describing the social
network as comprising people grouped in the category of “friends”), Fig. 5
(displaying a web page on the Facebook website together with a listing of
Facebook features, one of which is “My Friends”). Figure 5 of Zuckerberg
displays two such tags: “Bob White” and “Brian Bathurst.” Id. at Fig. 5.
And Zuckerberg teaches that these entries came from the contacts within the
social network environment in the “friends” grouping, i.e., Facebook friends.
Id. at 8:62−66; 3:60−64. Thus, the friends list is evidence that the displayed
tags (“Bob White” and “Brian Bathurst”) were obtained from the Facebook
friends, i.e., a collection of tags that includes “friends” in the user’s social
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network. And this collection of “friends” in the social network is what
supplies the tags to populate the “friends list” that Zuckerberg eventually
displays. See 516 Chatterjee Decl. ¶ 75 (testifying that the tag source is the
list or collection of predefined contacts that is used to populate the friends
list), ¶ 76 (testifying that the displayed tags are returned from a collection of
predefined contacts, such as a list of “friends” that make up the user’s social
network, and that any tag presented in the friends list would originate from a
certain list or collection of contacts that is used by the system to populate the
friends list); Ex. 1003, 3:67−4:4, 4:12−21. Furthermore, we note that the
’173 patent Specification also confirms such a “friend list” is evidence of a
“tag source” because it describes the very technology that Zuckerberg
teaches, i.e., that a tag source could include “a list of friends from an online
service like Facebook[].” Ex. 1001, 5:42−44. Accordingly, we are
persuaded by a preponderance of the evidence that Zuckerberg’s friends list
is “one or more tag sources” as recited in claim 1.
We also are persuaded by Petitioner’s argument and evidence that
Zuckerberg’s text list also teaches “one or more tag sources.” According to
Dr. Chatterjee, Zuckerberg’s description of text list 544 teaches a person of
ordinary skill that such a list represents a tag source in the form of a cache,
separate and distinct from the list of contacts used to populate friends list
546 discussed above. 516 Chatterjee Decl. ¶ 77. We agree and credit this
testimony. Our reading of Zuckerberg and the explanations of Dr.
Chatterjee show that, when a user types in the text box to find a previously
used tag called “book,” the Zuckerberg system obtains such a tag from a
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cache that includes text strings previously entered. Ex. 1003, 8:52−62; 516
Chatterjee Decl. ¶¶ 77−78. Thus, as Petitioner points out, and we agree, a
cache or collection of previously entered text used to return tags shown in
the text list 544 qualifies as another “tag source.” 516 Pet. 26. Accordingly,
we are persuaded by a preponderance of the evidence that the text list is
“one or more tag sources” as recited in claim 1.
In determining that Petitioner has shown by a preponderance of the
evidence that Zuckerberg teaches the recited “one or more tag sources” we
have considered, and found unpersuasive, Patent Owner’s arguments and
evidence to the contrary. We address each of Patent Owner’s two arguments
in turn.
(1) Single Tag Source
Patent Owner argues that the tags listed in text list 544 and friends list
546 are not two distinct tag sources, but rather, they are subgroups of a
single tag source: Zuckerberg’s “list of previously used tags.” 516 PO
Resp. 38 (citing 516 Surati Decl. ¶ 118). Petitioner responds that
Zuckerberg’s list of “previously used tags” includes the text list and the
friends list, such that they are “sub-lists,” each sub-list representing its own
distinct tag collection. 516 Pet. Reply 12 (citing Ex. 1003, 8:56−58). For
instance, Petitioner argues that
The items in the text list 544 and the items in the friends
list 546 clearly represent two distinct tags collections – friends
list 546 contains a collection of contacts or contact addresses
(8:62-66), and text list 544 contains a collection of text strings
(8:52-58). (Ex. 1023, ¶24.) These two collections clearly cover
different categories of information and can be readily recognized
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and distinguished by the Zuckerberg system, as evidenced by the
fact that the user interface in Figure 5 visually displays “friends
list” and “text list” in two groups separated by a dividing line.
(Id. (citing Zuckerberg, Fig. 5).)
Id. After consideration of the parties’ arguments in this regard, we are not
persuaded that Zuckerberg’s “previously used tags” is a single “tag source,”
as Patent Owner argues. At the outset, we noted above that Zuckerberg’s
“tag sources” are (1) the “friends” contacts in the social network, i.e., the
Facebook friends, and (2) the cache of previously entered text. Friends list
546 and text list 544 are evidence of these tag sources, but are not themselves
the “tag sources” that Petitioner identified in the Petition. Therefore, Patent
Owner’s arguments that address the friends list and the text list as the “tag
sources” misses the mark.
Furthermore, Petitioner argues, and we agree, that Zuckerberg
identifies the friends list and text list separately and distinctly from each
other, which is evidence that the sources from which these tags were
collected are distinct notwithstanding they are displayed in the “previously
used tags” list. Id.
Another issue with Patent Owner’s argument is that it focuses on
searchability. The claim, as already stated, however, does not require a
search of each tag source. Therefore, it is irrelevant that the search
Zuckerberg conducts might be of a list of previously used tags. From
Petitioner’s evidence, rather, we conclude that the relevant friends tags from
the Facebook friends in the social network platform have been copied into
another form of memory. See Ex. 2012, 78:16−79:13 (Dr. Chatterjee
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testifying that the friends list tags returned from the cache of previously used
tags are still related to the friends list); but see 516 PO Resp. 40 (Patent
Owner arguing that Dr. Chatterjee admitted that the friends list shows tags
returned from a cache of previously used tags, thus allegedly abandoning the
theory of “collection of tags” set forth in the Petition). Such a fact does not
negate that the friends group in the social network platform, i.e., Facebook
friends, is a distinct collection of tags from which the tags Bob White and
Brian Bathurst originated. Patent Owner’s argument to the contrary attempts
to confuse the distinctness of the Facebook friends group with the
searchability requirement that we have rejected. See 516 PO Resp. 40
(citing 516 Surati Decl. ¶ 126 and arguing that both the friends list and text
list are part of the same previously used tags). That is, Patent Owner
appears to characterize the previously used tags list as the only eligible “tag
source,” because that is the list that Zuckerberg searches. But we conclude,
following the claim interpretation analysis supra, that so long as there is
evidence that the displayed tags originated from a distinct collection of tags,
the collection qualifies as a “tag source,” regardless of which memory or
service the system searched.
The same goes for the text list. As Dr. Chatterjee explained, the
source of the text list is a cache or collection of previously used tags that
populate text list 544. 516 Pet. 24 (citing 516 Chatterjee Decl. ¶ 75); see
also id. at 25–27 (citing 516 Chatterjee Decl. ¶¶ 76–79); Ex. 1003, 8:58–66
(exemplifying information that may be included in the “friends list” and the
“text list”). Patent Owner argues that the previously entered text is not a
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distinct tag source, as it is merged with the friends list in the same
“previously used tags” list. 516 PO Resp. 40. But whether the cache of
previously entered text and the cache of the “previously used tags” is the
same or different is not the determining criteria for whether the text list
constitutes a “tag source” as we have construed the term. See, e.g., 516 Pet.
Reply 13−14 (Petitioner arguing that Zuckerberg’s teaching of separating the
text list from the friends list would suggest at least the concept that the two
lists would be separately organized in memory) (citing 516 Reply Chatterjee
Decl. ¶¶ 26, 27).
The claim does not require that there be a search of a different cache
for each collection of tags. Petitioner has set forth that Zuckerberg
delineates between the two groups of tags, text list and friends list, which is
evidence of a demarcation between the two collections from which these
tags originated. Id. at 12 (citing Ex. 1003, 8:56−64, Fig. 5; 516 Reply
Chatterjee Decl. ¶ 24). Thus, we are persuaded that each collection of tags
is distinct from each other, and that the system identifies the sources for the
two collections by presenting the sourced tags segregated into separate lists
and according to source.
(2) Hindsight
Patent Owner argues that Petitioner’s case relies on hindsight because
Petitioner compares Zuckerberg with the ’173 patent disclosure to argue that
both disclose a list of contacts or friends and a cache of previously used free-
form tags. 516 PO Resp. 41 (citing 516 Pet. 26−27; 516 Surati Decl. ¶ 129).
We are not persuaded that Petitioner’s reference to the ’173 patent evidences
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hindsight. Patent Owner’s concern stems from Petitioner’s assertion that
Zuckerberg teaches using a cache when Zuckerberg does not mention the
word “cache.” Id. at 41−42 (citing 516 Surati Decl. ¶ 130). We recognize
the danger of using the disclosed invention as a roadmap to fill gaps in the
prior art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). That is
not what we have here.
Petitioner has identified in Zuckerberg the same tags disclosed in the
’173 patent: Facebook friends tags and entered text tags. We do not see a
gap between claim 1 of the ’173 patent and Zuckerberg that poses the danger
of hindsight that Patent Owner alleges exists here. To the extent Petitioner
makes a comparison between the cache of entered text of the ’173 patent and
Zuckerberg’s text list, we find that such a comparison is not hindsight.
Hindsight presents a problem only when the invention in dispute is the sole
source of the knowledge of the invention or required teachings of claim
elements. InTouch Technologies, Inc. v. VGO Commc’ns, Inc., 751 F.3d
1327, 1351 (Fed. Cir. 2014) (“It appears that [the expert] relied on the . . .
patent itself as her roadmap for putting what she referred to as pieces of a
‘jigsaw puzzle’ together.”); W.L. Gore & Associates, Inc. v. Garlock, Inc.,
721 F.2d 1540, 1553 (Fed. Cir. 1983) (“To imbue one of ordinary skill in the
art with knowledge of the invention in suit, when no prior art reference or
references of record convey or suggest that knowledge, is to fall victim to
the insidious effect of a hindsight syndrome wherein that which only the
inventor taught is used against its teacher.”). Here, however, the ’173 patent
and Zuckerberg disclose the same Facebook friends tags and text tags, with
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Dr. Chatterjee supplying only the explanation of a cache as it pertains to the
list of previously entered text of Zuckerberg. Zuckerberg does not have to
mention the word “cache” for it to teach that which is already known in the
art. See Ex. 2012, 79:14−21 (Dr. Chatterjee testifying that although the
word “cache” appears in the ’173 patent, his knowledge of a “cache”
preceded his reading of the ’173 patent). Accordingly, we are not persuaded
by Patent Owner’s hindsight argument.
b. Second Displaying Step
The second displaying step recites “a tag type indicator for each tag
appearing in the tag list” and “said tag type being indicative of a tag source
associated with the tag.” Ex. 1001, 9:18−20. Petitioner asserts two separate
combinations concerning this claim limitation: (1) Zuckerberg in
combination with Rothmuller and MacLaurin; and (2) Zuckerberg in
combination with Plotkin and MacLaurin. 516 Pet. 27–31, 38–45, 49–53.
We focus our analysis on the first combination of references
(Zuckerberg, Rothmuller, and MacLaurin). Petitioner identifies Rothmuller
as teaching the display of a tag type indicator with each tag appearing in the
tag list. Id. at 40−41. We are persuaded that Rothmuller teaches a “tag type
indicator” for each tag. In particular, Petitioner points to Rothmuller’s
teaching that “‘[t]ags are displayed using small tag type icons and the tag
name.’” Id. at 40–41 (quoting Ex. 1005, 68). By way of illustration,
reproduced below, is a portion of Figure 1 of Rothmuller, annotated by
Petitioner. Id. at 41.
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According to Petitioner, the annotated Figure 1 of Rothmuller shows a
Recently Used area of the screen where the Favorite Tag is always
maintained on top and the recently used tags continue thereafter with tag
type icons shown in green and tag names shown in red. Id. Petitioner
asserts, and we agree, that Rothmuller’s “tag type icon” qualifies as the
recited “tag type indicator.” Id. (citing 516 Chatterjee Decl. ¶¶ 88–89). We
also agree that notwithstanding Rothmuller’s further descriptions of tag
categories and types, the shown “tag type icons” denote what type of tag is
displayed and every tag on the list has its own “tag type indicator.” Id.
(citing 516 Chatterjee Decl. ¶¶ 95). In other words, we agree that
Rothmuller describes the tags as being divided into categories, each with its
own attribute to distinguish between themselves and from tags in other tag
categories. Ex. 1004, 3:55−60. For instance, the tags “Mary Jane” and
“Lori” both belong to the same category of “people tags” and each has the
icon that indicates that they both belong to the “people” category. Id. at
4:40−49; Figure 1 (illustrating “Mary Jane” and “Lori” are in the same
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category of tags and have the same icon ).8 Other categories of tags have
their own icon and the tags in those categories are displayed with the icon
for that particular category. See Fig. 1 (illustrating another category of tags
with a distinctive icon 9 (for tags “Landscapes” and “Animals”) that is
different from the icons for other categories); 4:1−39 (describing four
general categories of tags).
Patent Owner argues that Rothmuller does not teach the limitation of a
tag type “being indicative of a tag source” because Rothmuller lacks
multiple “tag sources” and the disclosed category icons are not indicative of
a tag source as required. 516 PO Resp. 44−45. In particular, Patent Owner
argues that “categories” are not different “tag sources” because, at a
minimum, the categories are accessible through “the same tag drawer” or
“tagkeeper.” Id. at 45−47 (citing Ex. 1005, 68; 516 Surati Decl.
¶¶ 133−135).
We are not persuaded by Patent Owner’s argument because Petitioner
relies on Zuckerberg as disclosing the “tag sources,” with Rothmuller
teaching only the tag type indicator that is displayed next to the tag in a tag
list. 516 Pet. 38−39 (stating also that “adapting Zuckerberg to display a
distinct ‘tag type indicator’ next to every tag would have been entirely
obvious”); 516 Pet. Reply 15−16. Indeed, the combination relies on

8 The displayed icon shows two stylized persons overlapping each other.
9 The displayed icon shows two flat windows overlapping each other.
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modifying Zuckerberg’s previously used tag list to show a separate tag type
indicator for each tag as taught by Rothmuller. 516 Pet. 42; 516 Chatterjee
Decl. ¶ 95.
As a reason for this combination of teachings, Petitioner points first to
MacLaurin. 516 Pet. at 42−44. According to Petitioner, MacLaurin
explains that “each type of tag can be distinguished utilizing different sizes,
fonts, colors, and/or symbols and the like.” Id. (citing Ex. 1006, 8:19−23,
7:48−51). We agree that MacLaurin provides an express motivation to
modify Zuckerberg’s previously used tag list to include the Rothmuller icons
to indicate the tag sources associated with the tags. MacLaurin describes
tagging photos, and also discloses at least two categories of tags: an
automated tag and an explicit tag. Ex. 1006, 8:19−23. The automatic tag is
one that the system generates and the explicit tag is one that the user enters.
Id. at 7:48−51. MacLaurin explains that it is advantageous to distinguish
between the two types of tags easily in order for the user to ascertain the
level of confidence with regard to the tags. Id. For instance, the user may
be more confident with the explicit tags, since the user entered it, and be less
confident with the system-generated tags. Id. at 7:51−53. Thus, we find that
MacLaurin expressly recognizes the advantage of ascertaining the types of
tag (system-generated versus user-entered) via some visual indicator and
provides for using symbols for distinguishing the types. Id. at 8:19−23; see
also 516 Chatterjee Decl. ¶ 97.
Petitioner further proffers, and we agree, that in the context of
Zuckerberg, having a visual indicator to distinguish the type of tag as taught
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in MacLaurin “would have improved the tagging process by allowing the
user to more quickly identify the appropriate tag from among the listed
options.” 516 Pet. 44 (citing 516 Chatterjee Decl. ¶ 100). Petitioner also
states another benefit to combine the Rothmuller icons with the Zuckerberg
tag list and tag sources: it would have allowed for greater flexibility in the
organization of the list of tag suggestions. Id. (citing 516 Chatterjee Decl.
¶ 102). In particular, and we agree, Zuckerberg would benefit from the
ability to display tags in any order, without the constraints of using separated
lists for each type. Id. The result is a list that can be presented in
alphabetical order, or presented based on the relevance to the user. Id.
(citing 516 Chatterjee Decl. ¶¶ 102, 103).
Patent Owner challenges the proposed combination as resulting in
“additional, unnecessary clutter in the user interface—a characteristic that a
person of ordinary skill in the art . . . would be actively seeking to
minimize.” 516 PO Resp. 57−58. Patent Owner also argues that the
proposed rationales for the combination “either fall short or are based on
impermissible hindsight.” Id. at 58. Patent Owner’s arguments are
discussed in more detail below.
(1) Lack of Benefit
Patent Owner argues, supported by testimony from Dr. Surati, that a
person of ordinary skill in the art would understand that one of the core
goals in consumer-facing software design is to simplify the user interface to
include only relevant information and avoid clutter. 516 PO Resp. 59 (citing
516 Surati Decl. ¶¶ 158, 159). Patent Owner proffers a document from the
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Facebook social network website entitled “Facebook Design Principles” (Ex.
2007) for the proposition that the design philosophy is “minimalist” and that
the proposed combination would result in the opposite: additional clutter
with no benefit. Id. at 59−60 (citing 516 Surati Decl. ¶ 159). In particular,
Patent Owner anchors its argument on Zuckerberg’s “list of previously used
tags” being the same source for all tags which allows Zuckerberg’s system
to have “complete control” over how the tags are organized, i.e., by subject
matter. Id. at 60 (citing 516 Pet. 31; 516 Surati Decl. ¶¶ 161, 162). Adding
Rothmuller’s icons, therefore, would not provide additional information, but,
rather, add clutter. Id.
We do not agree with Patent Owner’s contention that the combination
of Rothmuller’s icon with the Zuckerberg tag list and “tag sources” would
not have been obvious because of a lack of benefit. First, Petitioner relies on
two distinct benefits of the combination: (1) distinguishing visually between
types of tags to ascertain level of confidence on the source; and (2)
additional flexibility in how Zuckerberg’s tags would be organized. 516 Pet.
43−44 (citing 516 Chatterjee Decl. ¶¶ 97, 102, 103); 516 Pet. Reply 16−17.
Second, the “Facebook Design Principles” document that Patent Owner
relies on was published in July 2009, more than two years after the
’173 patent priority date and the filing of Zuckerberg. 516 Pet. Reply 17;
Ex. 1001, code (63) (identifying continuity of a filing dated May 9, 2007);
Ex. 1003, code (22) (identifying a filing date of October 11, 2006); Ex. 2007
(identifying the date July 1, 2009). Patent Owner has not shown that the
document is indicative of what a person of ordinary skill in the art would
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have understood vis-à-vis a web design philosophy at the time of the
invention, much less by the timing of Zuckerberg. In any event, the
“Facebook Design Principles” excerpt exhorts the use of a visual style that is
“clean and understated.” Ex. 2007, 1. But in explaining that the “clean
style” is not the easiest to achieve, the document states that “margins and
type scale, washes and color become more important as we reduce the
number of styles we rely on.” Id. This paragraph does not describe the
“minimalist” design in the same vein as Patent Owner argues. At best, the
“clean style” may refer to reducing or simplifying fonts, colors of
backgrounds and typesetting, and the use of headers and sidebars. An
overall reduction in these specific “style” features of a website does not
militate against the use of icons in place of using separate tag lists with
separators. Nevertheless, we agree with Petitioner that, even if this design
principle were relevant, the desire for a clean style would not discourage a
person of ordinary skill in the art from considering the benefit of flexibility
in providing a single listing with decipherable icons and alphabetical (or
other sorting) order instead of displaying multiple groupings for each type of
tag. See 516 Pet. Reply 17 (citing 516 Reply Chatterjee Decl. ¶ 39). We
recognize that the combination results in adding a graphical element to the
screen, what Patent Owner would call “clutter.” We find, however, that the
drawback of adding an icon, if any, would be outweighed by the benefit of
sorting the tags in any useful manner, while allowing the user to discern the
different types of tags easily. See Winner Int’l Royalty Corp. v. Wang, 202
F.3d 1340, 1349 (Fed. Cir. 2000) (holding that the Board must weigh the
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benefits and drawbacks of the modification against each other, to determine
whether there would be a motivation to combine); see also 516 Reply
Chatterjee Decl. ¶ 35 (explaining a benefit of being able to visually
distinguish each tag in the list based on its type).
Accordingly, we are not persuaded by Patent Owner’s arguments that
Petitioner’s proffered rationale would lack a benefit and would render the
asserted combination non-obvious.
(2) MacLaurin’s Express Motivation
Patent Owner next argues that Petitioner failed to explain that
MacLaurin has two separate modes: tagging new files and recalling
previously tagged files. 516 PO Resp. 61 (citing 516 Surati Decl. ¶ 165).
According to Patent Owner, the mode that Petitioner relies on, tagging new
files, does not use visual distinction between tags. Id. Petitioner responds
that, even if it were true that MacLaurin’s tagging mode does not provide
visual distinction between tags, MacLaurin offers a general teaching of
being able to visually distinguish one type of tag from another. 516 Pet.
Reply 18−19. According to Petitioner, even if MacLaurin’s teachings were
limited to recalling previously tagged items, the reference “confirms the
general desirability of providing a separate tag type indicator for each
displayed tag—in any context.” Id. at 19. Patent Owner responds that
Petitioner’s contention is incorrect because MacLaurin does not, itself,
provide any indicators in its tagging mode, i.e., all tags are displayed in plain
text, and, therefore, there is no motivation to display indicators when
tagging. 516 PO Sur-Reply 13.
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We do not agree with Patent Owner. Petitioner offers MacLaurin only
as evidence of the knowledge that it was desirable to display tags with
different symbols to differentiate between tag types. The limited purpose of
MacLaurin warrants that we view MacLaurin’s teachings in the context in
which it was proffered—i.e., regardless of which “mode” MacLaurin
provides the tag differentiators. See 516 Pet. 53 (stating “the advantages of
using tag type indicators in a tag list (e.g., the ability to quickly distinguish
tags based on their tag type) are applicable to a broad range of user
interfaces.”); 516 Chatterjee Decl. ¶ 114 (testifying that the advantages are
not limited to any particular context). Thus, we do not find persuasive
Patent Owner’s arguments that attempt to limit MacLaurin’s teaching to
only the circumstances in MacLaurin’s particular embodiments.
It is unclear if Patent Owner is arguing that MacLaurin teaches away
from using the tag differentiators when tagging. If this is the case, we find
that MacLaurin does not teach away from using tag differentiators when
tagging. MacLaurin’s teaching clearly expresses an advantage of
distinguishing between different types of tags. This advantage is not
negated in any way by the context in which MacLaurin uses the tag
differentiators. A reference that “merely expresses a general preference for
an alternative invention but does not criticize, discredit, or otherwise
discourage investigation into” the claimed invention does not teach away.
Meiressone v. Google, Inc., 849 F.3d 1379, 1382−83 (Fed. Cir. 2017) (citing
Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013))
(finding that a reference that provided a feature that may have been inferior
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to another does not teach away from its use because it does not amount to
criticizing or promoting abandonment of that feature). We find that
MacLaurin does not criticize the use of tag differentiators when tagging.
Indeed, it touts the feature of tag differentiators as advantageous.
We also find unpersuasive Patent Owner’s arguments that limit
MacLaurin’s teachings to a “recall” embodiment. 516 PO Resp. 64−69; 516
PO Sur-Reply 13. Patent Owner argues that MacLaurin did not expressly
provide an embodiment of tag differentiators in the tagging mode and the
disclosure is limited to using tag differentiators in recall mode. Petitioner
disagrees.10 We are not persuaded by Patent Owner’s arguments for they
rely on an unreasonably narrow reading of MacLaurin and the prosecution
history of MacLaurin. Instead, we are persuaded by Dr. Chatterjee’s opinion
that MacLaurin teaches that tag suggestions (given to the user during
tagging) include a recently used tag, commonly used tag, or tag associated
with a similar item. See 516 Reply Chatterjee Decl. ¶ 46. Dr. Chatterjee
testifies, and we agree, that during tagging, a user will be presented with tag
suggestions that would include previously used automatic tags and explicit
tags that the user previously entered, and MacLaurin expressly teaches that
tagging suggestions can be formulated automatically based on user tags or
other external data. Id.; Ex. 1006, 2:47−61. We credit Dr. Chatterjee’s
testimony that the disclosure of tag differentiators expands on the
explanation of the “light tagging mode,” in which the user interface indicates

10 See 516 Pet. Reply 20; 516 Reply Chatterjee Decl. ¶¶ 45–46.
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that tagging is active and displays the tags that the system guesses for the
user. 516 Reply Chatterjee Decl. ¶ 44; Ex. 1006, 6:66−7:30 (explaining the
“light tagging mode” user interface and then providing that displaying tag
type differentiators is “[i]n addition” to the disclosed user interface
characteristics).
Patent Owner’s arguments to the contrary rely on Dr. Surati’s opinion
that reads MacLaurin as disclosing that the tag type differentiators are
limited to a recall mode. We do not credit Dr. Surati’s testimony in this
regard as we do not find it supported by the natural and reasonable reading
of MacLaurin as stated above.
Nor do we find persuasive the argument that the prosecution history
reveals MacLaurin is limited in its disclosure. 516 PO Resp. 67−68. From
our review of the record, the prosecution history relied on is not the file
history of the MacLaurin reference asserted by Petitioner. Ex. 2008
(identifying the patent application as a continuation of the asserted
MacLaurin reference). As such, the evidence has little probative value for
the purpose for which Patent Owner proffers it. Nevertheless, we find that
the alleged prosecution statements do not limit MacLaurin’s tag-type
differentiators to a recall mode. If anything, it is the opposite—the tag-type
differentiators are directly applicable to the “light tagging mode.” The
application includes an independent claim that included the “light tagging
mode” as described, and dependent claims that further recited the tag-type
differentiator display. Id. at 147−48 (claims 10, 12 and 13). The statements
in the record concerning the dependent claims were made to overcome
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enablement and written description rejections. Id. at 152−156. The
rejections were overcome by pointing out to the Examiner the tag-type
differentiators. Id.; Ex. 1006, 7:48−8:29. The applicant’s statements,
however, are generic in nature, merely addressing that the subject matter is
disclosed. On the whole, Patent Owner and Dr. Surati urge an interpretation
of irrelevant prosecution statements and claim amendment to unreasonably
limit MacLaurin’s disclosure of displaying tag-type differentiators to a mode
unrelated to tagging. The statements in prosecution are also not relevant
here because they do not address the scope of MacLaurin’s claims, much
less whether those claims and the tag-type differentiators are in any way
limited to a recall mode.
We determine that the MacLaurin teachings relied on by Petitioner as
a reason to combine are proper evidence that a person of ordinary skill in the
art would have recognized the general advantage of distinguishing between
tags, even if MacLaurin were silent, as Patent Owner asserts, about using
such differentiators expressly during tagging. Accordingly, we are not
persuaded by Patent Owner’s arguments.
(3) Hindsight
Patent Owner argues that the alleged flexibility of presenting a tag list
in alphabetical order resulting from the combination of Zuckerberg and
Rothmuller’s teachings is based on impermissible hindsight. 516 PO Resp.
70−71. In particular, Patent Owner argues that because Dr. Chatterjee
reviewed the ’173 patent in reaching his obviousness opinions and there is
no “hint in the prior art” that tags having interspersed sources in a single list
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would be “possible, much less desirable,” then the “greater flexibility”
rationale relies on hindsight. Id.
The argument is unpersuasive. Patent Owner relies on deposition
testimony to allege that a hindsight process relying on the ’173 patent
disclosure is the real motivation for Dr. Chatterjee’s opinions. The actual
testimony, however, paints a different picture. The question presented to Dr.
Chatterjee was: “so when you agreed to prepare a declaration for this case,
what did you review first?” Ex. 2012, 127:19−22. Dr. Chatterjee answered,
“the ’173.” Id. At best this testimony expresses the perfunctory task that
any properly prepared expert in a patent case would perform: reviewing the
patent-at-issue. The insinuation here is that somehow the review of the
patent imbued Dr. Chatterjee’s preparation with knowledge that he would
not normally have, and that he used that newly-found knowledge to fill the
gaps in his analysis. The testimony presented neither hints at such an
insinuation nor lends itself to the exaggerated conclusion that Patent Owner
urges we draw from it. Indeed, there is zero evidence in the record that Dr.
Chatterjee “got the idea from reviewing the ’173 Patent’s disclosure.” 516
PO Resp. 71 (citing 516 Surati Decl. ¶ 180).
Second, Patent Owner relies on the fact that Zuckerberg’s friends list
and text list tags are expressly separated by a line to argue that the lack of
disclosure of “interspersed” tag sources within the same list is evidence that
the only source for Dr. Chatterjee’s opinion is hindsight bias. Id. at 70−71.
We do not agree. Dr. Chatterjee explains that the idea of interspersed tag-
type indicators is taught by Rothmuller, which displays a list showing the
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people icon for Lori and Mary Jane, which are tags interspersed with other
tags of different types. 516 Reply Chatterjee Decl. ¶ 38. We credit this
testimony insofar as it shows that it was known (as evidenced by
Rothmuller) to display tags in a listing without regard for how they related to
type or category. This idea translates well to the tag sources of Zuckerberg
because, as Dr. Chatterjee opines, and we agree, the implementation of tag-
type indicators to identify Zuckerberg’s tag sources would have involved
well-known routine and conventional programming techniques. 516
Chatterjee Decl. ¶ 104. These programming techniques were well within the
capabilities of a person of ordinary skill in the art. Id. And a person of
ordinary skill in the art would have had every expectation of success because
the programming technique to use icons to identify Zuckerberg’s tag sources
would have been predictable. Id.
Accordingly, we are not persuaded by Patent Owner’s arguments
concerning hindsight. Instead, we find Dr. Chatterjee’s testimony to be
reasonable and supported by the prior art of record.
(4) Similarity of Tags Argument
Patent Owner finally argues against the assertion that Rothmuller and
Zuckerberg are similar and that the expectation of success is not a valid
motivation for combining the prior art. 516 PO Resp. 71−72. In particular,
Patent Owner relies on Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
821 F.3d 1359, 1367 (Fed. Cir. 2016), to argue that the expectation of
success and motivation to combine are two separate requirements of
obviousness. Id. at 72. Therefore, according to Patent Owner, even if the
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similarities between Rothmuller and Zuckerberg showed a reasonable
likelihood of success (first requirement), such an assertion does not meet the
burden of showing a motivation to combine (second requirement). See also
516 Surati Decl. ¶ 184 (stating that “if Rothmuller and Zuckerberg are truly
‘similar and analogous,’ then there is no reason to modify Zuckerberg based
on Rothmuller, since Zuckerberg already accomplishes the same result as
Rothmuller: allowing a person to determine the subject matter of each tag”).
We do not agree with Patent Owner’s assessment of the presented evidence
or its articulation of requirements for an obviousness finding.
First, we understand Petitioner’s assertion regarding similarities to lay
the foundation for why Zuckerberg, Rothmuller, and MacLaurin are
analogous art. See 516 Chatterjee Decl. ¶ 99 (testifying that all three are
analogous references in the same field), ¶ 101 (testifying that Rothmuller’s
tag categories are similar and analogous to the tags presented in
Zuckerberg’s friends list and text list). We are not persuaded that these
assertions of analogous subject matter somehow negate a reason to combine,
as implied by Dr. Surati’s testimony (516 Surati Decl. ¶ 184). The
similarities may show that a person of ordinary skill in the art would have
considered the references for purposes of the obviousness analysis. See
Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331, 1335 (Fed. Cir. 2015) (“To
be considered within the prior art for purposes of the obviousness analysis, a
reference must be analogous.”). It is another thing altogether (and an
unsupported legal contention) to presume that, by virtue of the similarities
and status of the references as analogous art, a person of ordinary skill in the
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art would not have been motivated to improve them or implement
complementary teachings. See KSR, 550 U.S. at 402 (directing broad
scrutiny of analogous references by stating that “familiar items may have
obvious uses beyond their primary purposes, and a person of ordinary skill
often will be able to fit the teachings of multiple patents together like pieces
of a puzzle”).
Second, we understand Petitioner to have proffered reasons to
combine concerning the express rationale as stated in MacLaurin and the
rationale based on flexibility discussed above. See 516 Chatterjee Decl.
¶¶ 96, 97, 102. Finally, we understand Petitioner to state that the
combination of teachings, given the reasons already stated, would have been
obvious also because the implementation of Rothmuller tag-type indicators
with Zuckerberg’s list would have involved well-known, routine, and
conventional programming techniques, well within the capabilities of a
person of ordinary skill in the art, and that a person of ordinary skill would
have had an expectation of success in implementing such techniques to make
the combination. Id. ¶ 104. This testimony of Dr. Chatterjee is unrebutted
and undisputed. Thus, we do not see Petitioner’s case as relying merely on
similarities between the references as both the reason to combine and the
expectation of success.
In any event, under KSR the combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results. KSR, 550 U.S. at 416. In this case, we have
unrebutted evidence that the technique for adding tag-type indicators to tags
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was known in Rothmuller, and the combination of those indicators with
Zuckerberg’s tags would have been implemented using well-known
programming techniques that would have been well within the grasp of a
person of ordinary skill in the art. 516 Chatterjee Decl. ¶ 104. Because of
the expected success (e.g., predictability) of the asserted combination, and
for the reasons provided, the application of KSR further warrants a
conclusion of obviousness.
Accordingly, we are not persuaded by Patent Owner’s arguments
above. Following KSR, and summarizing the findings we have made thus
far: we are persuaded that Petitioner has shown obviousness by presenting
evidence that the similarities of the references are sufficient to demonstrate
their analogous nature, a person of ordinary skill in the art would have been
motivated to combine the references to provide two distinct advantages (to
quickly identify tags and flexibility of listing tags) to the user, and the
combination would have been the result of known techniques implemented
in a known manner yielding predictable results.
c. Conclusion – Independent
Claims
Based on the foregoing, we conclude that Petitioner has established by
a preponderance of the evidence that claim 1 of the ’173 patent is
unpatentable based on the combination of Zuckerberg, Rothmuller, and
MacLaurin. Independent claim 7 is directed to a “system” corresponding to
the method recited in claim 1. See 516 Pet. 34−35 (stating that recitations of
“system” and “apparatus operable to” provide no meaningful limitation” and
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identifying that Zuckerberg’s techniques would have been implemented in
computer-based systems (citing Ex. 1003, 1:54−56, 3:8−12, 11:62−64; 516
Chatterjee Decl. ¶¶ 128, 129)). Independent claim 13 is directed to
“computer readable medium” and “code for” performing the steps recited in
claim 1. See id. at 37−38 (stating that recitations of “computer readable
medium” and “code” provide no meaningful distinction and identifying that
Zuckerberg’s computer-implemented techniques would have involved
software instructions (citing Ex. 1003, 11:62−64; 516 Chatterjee Decl.
¶¶ 153, 154)). Accordingly, and because claims 7 and 13 recite the same
limitations as discussed above, we also conclude that Petitioner has
established by a preponderance of the evidence that claims 7 and 13 are
unpatentable based on the combination of Zuckerberg, Rothmuller, and
MacLaurin.
d. Dependent Claims 2, 8, and 14
Dependent claim 2 depends from claim 1 and further recites
“providing a tag entry field for entering the search string.” Ex. 1001,
9:21−22. Dependent claim 14 depends from claim 13 and recites the code
performing the same step recited in claim 2. Id. at 10:22−24. Petitioner
points to Zuckerberg’s text entry window 542 shown in Figure 5 of
Zuckerberg. 516 Pet. 31. We agree that Zuckerberg teaches the limitation
recited in claim 2. Ex. 1003, 8:54−56, Fig. 5. Patent Owner does not
address these claims or this limitation. In conclusion, based on the evidence
discussed above, we determine that Petitioner has shown by a preponderance
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of the evidence that claims 2 and 14 would have been obvious over
Zuckerberg, Rothmuller, and MacLaurin.
Dependent claim 8 depends from claim 7 and further recites “an
apparatus operable to provide a tag entry field for entering a photo tag.”
Ex. 1001, 9:42−43. Claim 8 is similar to claim 2, but differs in that instead
of reciting a search string, the entry is a “photo tag.” Petitioner relies on the
same evidence described above with the added explanation that
Zuckerberg’s text entry window 542 is used to directly submit a tag into the
system to be associated with the displayed photo. 516 Pet. 35. Petitioner
relies additionally on Zuckerberg’s Figure 6, in which the text “betty jo” has
been entered into text entry window 542 and Figure 7 of Zuckerberg
illustrates that the “betty jo” tag has been associated with the photo. Id. at
35−36 (citing Ex. 1003, 9:63−64, Figs. 6 & 7). Zuckerberg further discloses
that a user device is used to enter the tags in the tagging system. Id. at 36
(citing Ex. 1003, 3:8−12). We agree with Petitioner that the cited
disclosures of Zuckerberg together with Petitioner’s arguments show that
Zuckerberg teaches the limitation further recited in claim 8. Those
disclosures show that the text entry window is for the user to enter a tag for
the displayed photo, and that such a tagging functionality is performed in an
apparatus such as a user device. As with claim 2, Patent Owner does not
address this claim or this limitation. In conclusion, we determine that claim
8 would have been obvious over Zuckerberg, Rothmuller, and MacLaurin.
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e. Dependent Claim 4
Claim 4 depends from claim 1 and further recites “providing a
graphical user interface to select a tag in the tag list.” Ex. 1001, 9:25−26.
Petitioner relies on Figure 5 of Zuckerberg as teaching a graphical user
interface with the list of previously used tags that the user can click to select
a tag. 516 Pet. 31. We agree that Zuckerberg teaches the limitation.
Ex. 1003, 8:52−56, 8:66−9:3; 516 Chatterjee Decl. ¶¶ 116, 117. Patent
Owner does not address this claim or this limitation. In conclusion, we
determine that Petitioner has shown by a preponderance of the evidence that
claim 4 would have been obvious over Zuckerberg, Rothmuller, and
MacLaurin.
f. Dependent Claims 6, 12, and 18
Claim 6 depends from claim 1 and further recites “selecting as a tag
source one or more of an online network profile, an address book, browser
bookmarks, landmark tags, and free-form text.” Ex. 1001, 9:31−34.
Petitioner relies on the arguments and evidence presented for claim 1 with
respect to the “tag sources.” 516 Pet. 32−33. More specifically, Petitioner
argues that Zuckerberg teaches three of the tag sources recited in claim 6:
free-form text, address book, and online network profile. Id. We agree with
Petitioner that Zuckerberg teaches the limitation further recited in claim 6 by
describing the list of previously used tags including a cache of text
previously entered by a user. Id. at 32 (citing Ex. 1003, 8:52−62; 516
Chatterjee Decl. ¶ 121). For instance, Petitioner shows that tags illustrated
in Figure 5, such as “book,” “collendar@hotmail_com,” and “Me,” reflect
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that Zuckerberg’s tags in the cache of previously entered text do not adhere
to any consistent format, and, therefore, they qualify as “free-form text.” Id.
Further, text box 542 is introduced with the prompt “Type any name or tag,”
indicating that the user can enter any text without regard to format. Id.
Recall that in connection with claim 1 we have determined that Zuckerberg
teaches a “tag source” in the form of the cache or list of text that is
populated in the displayed text list. Therefore, we are persuaded that such a
“tag source” is the “free-form text” recited in claim 6.
As for the “address book,” Petitioner argues that Zuckerberg teaches
that the friends list would have been populated from an “address book”
because Zuckerberg discloses that the friends list may display selected email
addresses, phone numbers, instant message addresses, text message
addresses, or the like. Id. at 33 (citing Ex. 1003, 8:62−66). Petitioner,
supported by Dr. Chatterjee’s testimony, argues that it would have been
obvious for these categories of information to be in the form of an “address
book.” Id. (citing 516 Chatterjee Decl. ¶ 122). We agree with Petitioner
that addresses, phone numbers, and the like are the types of information that
an “address book” would contain. Zuckerberg includes these types of
information as part of the tags that would populate the friends list.
Therefore, we are persuaded that Petitioner has shown that Zuckerberg
teaches an “address book” as a “tag source” recited in claim 6.
Finally, as for the “online network profile,” Petitioner argues that
Zuckerberg expressly describes that the user’s online profile contains a list
of associated users (or “friends”). 516 Pet. 33 (citing Ex. 1003, 4:12−21,
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5:60−67, 8:62−66). Petitioner argues that when using the online network
profile, Zuckerberg’s friends list would be populated with the contacts
within the social network environment. Id. Petitioner also argues that
“[u]sing an ‘online network profile’ or an ‘address book’ to define the
collection of contacts used to source tags presented in the friends list 546 are
both predictable implementation[s] among the finite number of possibilities
suggested by Zuckerberg.” Id. (citing 516 Chatterjee Decl. ¶ 123). We
agree with Petitioner that Zuckerberg teaches that a tag source would also be
the “online network profile” for the reasons (and supporting evidence) stated
in the Petition and summarized above.
In sum, we conclude that Petitioner has shown by a preponderance of
the evidence that Zuckerberg teaches the limitation further recited in claim 6
because Zuckerberg teaches a cache or list of “free-form text” as a source for
the text list. Further, Zuckerberg informs a person of ordinary skill in the art
that the friend list would have been populated by two described sources: an
“address book” (containing selected phone numbers, text message addresses,
email addresses, etc.) and an “online network profile” (providing a list of
“friends” in the social network). Claim 12 is substantially similar to claim 6,
except it depends from claim 7 and recites an apparatus, which Petitioner has
shown in Zuckerberg’s user device in connection with claim 7. 516 Pet. 37.
Claim 18 also recites the same subject matter, except that it depends from
claim 13 and recites code for performing the selection. Ex. 1001, 10:33−36.
Patent Owner does not specifically address these claims, but arguments that
could have been directed to the recited subject matter have been addressed
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above in connection with the discussion of “tag sources” and claim 1. In
conclusion, we determine that Petitioner has shown by a preponderance of
the evidence that claims 6, 12, and 18 would have been obvious over
Zuckerberg, Rothmuller, and MacLaurin.
g. Dependent Claim 10
Claim 10 depends from claim 7 and further recites “an apparatus
operable to allow selection of a tag in the tag list to complete the tag entry
field.” Ex. 1001, 10:3−5. Petitioner identifies its arguments and evidence
presented for claim 4 concerning the showing that Zuckerberg’s tags are
selected by selecting the tag from the list and clicking on it. 516 Pet. 35
(citing Ex. 1003, 8:52−56, 8:66−9:3). We determined above that
Zuckerberg teaches selection of a tag in the tag list. Claim 10, however,
further recites that the selection of the tag on the list “complete[s] the tag
entry field.” Petitioner argues that Zuckerberg does not expressly show how
the selection of a tag in the tag list is visually displayed in the tag entry field.
Id. at 36. Nevertheless, Petitioner argues that it would have been obvious
that upon selecting a tag from the tag list, the tag entry field would complete
the entry because the tag selection avoids the need for the user to continue
entering text. Id. at 37 (citing 516 Chatterjee Decl. ¶¶ 137, 138). We agree
with Petitioner and credit the cited unrebutted testimony of Dr. Chatterjee in
this regard. Patent Owner does not address this claim or this limitation. In
conclusion, we determine that Petitioner has shown by a preponderance of
the evidence that claim 10 would have been obvious over Zuckerberg,
Rothmuller, and MacLaurin.
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h. Dependent Claim 16
Claim 16 depends from claim 13 and recites the further limitation of
“code for providing a graphical user interface to select a tag in the tag list to
complete the tag entry field.” Ex. 1001, 10:27−29. Petitioner argues, and
we agree, that this claim is an amalgam of the limitations recited in claim 4
(“graphical user interface”) and claim 10 (reciting tag selection). 516 Pet.
38. For the reasons discussed with respect to claims 4 and 10, we determine
that Petitioner has shown by a preponderance of the evidence that claim 16
would have been obvious over Zuckerberg, Rothmuller, and MacLaurin.
3. Conclusion of Obviousness of Challenged Claims in IPR2019-00516
We have addressed above each challenged claim (claims 1, 2, 4, 6−8,
10, 12−14, 16, and 18) of the ’173 patent in IPR2019-00516. We recognize
that Petitioner presents additional grounds for the challenged claims in
IPR2019-00516, where the additional grounds rely on additional references
(Ortega) or other combinations of references (Rothmuller and Mathews or
Rothmuller, Mathews, and Ortega). Because we have determined for all
challenged claims that Petitioner has demonstrated unpatentability by a
preponderance of the evidence, based on obviousness over Zuckerberg,
Rothmuller, and MacLaurin, we need not reach Petitioner’s other challenges
as to the same challenged claims. Consistent with 35 U.S.C. § 318, this
Final Written Decision therefore disposes of all patent claims challenged by
Petitioner in IPR2019-00516. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359
(2018) (holding a petitioner “is entitled to a final written decision addressing
all of the claims it has challenged”); Boston Sci. Scimed, Inc. v. Cook Grp.
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Inc., Nos. 2019-1594, -1604, -1605, 2020 WL 2071962, at *4 (Fed. Cir. Apr.
30, 2020) (non-precedential) (recognizing that the “Board need not address
issues that are not necessary to the resolution of the proceeding” and, thus,
agreeing that the Board has “discretion to decline to decide additional
instituted grounds once the petitioner has prevailed on all its challenged
claims”).
D. IPR2019-00528: OBVIOUSNESS GROUNDS BASED ON MACLAURIN
The 528 IPR presents six grounds focused primarily on MacLaurin.
528 Pet. 4−5. The first ground asserts MacLaurin as a single-reference
obviousness challenge of all the claims in review. Another ground asserts
MacLaurin in combination with Rothmuller charging obviousness of all
challenged claims. A further ground asserts MacLaurin in combination with
Plotkin to challenge the claims in review for obviousness. Rothmuller and
Plotkin are relied upon for their disclosure of tag-type icons. Further
grounds address dependent claims and additional obviousness challenges
based on Ortega. We focus our analysis below on the grounds based on
MacLaurin alone or in combination with Rothmuller, and also the grounds
including Ortega. We also focus our discussion on claim 1, and because
they recite identical corresponding limitations, claims 7 and 13 are not
addressed separately.
1. MacLaurin
Although we have addressed MacLaurin at length above, we identify
here, for ease of reference, an embodiment shown in Figure 5, reproduced
below.
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Figure 5 of MacLaurin, shown with Petitioner’s annotations, identifies
file items 504−508 (highlighted in yellow), icon 510 that indicates that
tagging is occurring, and tag 502, i.e., “graphics” (inside the red box).
Ex. 1006, 8:38−43; 528 Pet. 16. For this example, the user has typed
“graphics,” and when the “Enter” key is pressed on the keyboard, tag 502 is
associated with selected items 504−508. Ex. 1006, 8:38−43.
As discussed above, MacLaurin also uses the user interface in a “light
‘tagging mode,’” when a user begins to type a tag. Id. at 7:66−8:22.
2. Analysis
We start our analysis by summarizing Petitioner’s contentions. The
first contention is that MacLaurin teaches all the claim limitations, except
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for the “tag list” and “tag type indicator,” which Petitioner contends would
have been obvious based on the suggested use of MacLaurin’s interface and
the manner of distinguishing between tag types. 528 Pet. 24−40. Because
MacLaurin does not illustrate the user interface with tag type differentiators,
Petitioner relies on Rothmuller for the illustration of icons. Id. at 55.
Patent Owner’s challenges to Petitioner’s contentions largely focus on
distinguishing MacLaurin’s disclosures in terms of tagging mode versus
recall mode. 528 PO Resp. 32−41. We address these arguments in due
course, but to avoid repetition we refer to our analysis above to the extent
the analysis is relevant to this ground.
a. Preamble
Petitioner contends that, to the extent the preamble is limiting,
MacLaurin teaches “[a] method of selecting a photo tag for a tagged photo”
(Ex. 1001, 9:14–15), as recited in the preamble of claim 1. 528 Pet. 24–28.
Although neither party argues that the preamble is limiting, we
nonetheless agree that Petitioner has shown that MacLaurin discloses a user
interface for tagging computer files, including digital photographs, with
multiple tags, and suggests reasons for applying additional tags to a
photograph that has already been tagged. Id. (citing, inter alia, 528
Chatterjee Decl. ¶¶ 63, 65–67; Ex. 1006, 2:1–5, 6:42–44, 6:53–58, 6:62–67,
7:66–8:18, Fig. 8). We also agree that MacLaurin teaches entering tags after
selecting a file, which when tagged previously, would teach selecting a tag
for a tagged photo. Ex. 1006, 5:31−34; 528 Chatterjee Decl. ¶¶ 65−67. And
MacLaurin also teaches the benefits of tagging a file (read here a “photo”)
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with multiple tags. Ex. 1006, 6:42−44, 6:53−67. Accordingly, MacLaurin
teaches the preamble’s recitation of selecting a photo tag for a tagged photo.
b. First Displaying Step
Claim 1 recites “displaying a tag list including tags from one or more
tag sources matching a search string.” Ex. 1001, 9:16–17. Petitioner
contends that MacLaurin teaches this first displaying step. 528 Pet. 28–34.
For example, Petitioner points to MacLaurin’s tagging component using the
user interface to detect when a user is typing and “attempt guesses for
possible tag suggestions for the user” that “mimic the characters disclosed
up to that point” as teaching that “MacLaurin can receive partially-entered
tag input (a ‘search string’) from the user and provide a list of possible tag
suggestions (‘tag list’).” 528 Pet. 28–29 (emphasis omitted) (quoting
Ex. 1006, 5:25–37). Petitioner also identifies MacLaurin’s teaching that
“the selection-based tagging component 102 can respond with tag
suggestions that utilize each character that the user 104 types into a
keyboard, providing a list of tag suggestions that utilize at least some of the
typed characters” as supporting its position. Id. (emphasis omitted) (quoting
Ex. 1006, 4:42–48). Dr. Chatterjee further supports Petitioner’s contention
that an ordinarily skilled artisan would have recognized MacLaurin’s “light
‘tagging mode’” as suggesting the presentation of tag suggestions in a tag
list in response to a search string entered by a user. Id. at 30 (citing 528
Chatterjee Decl. ¶ 70; Ex. 1006, 7:66–8:26). We agree with Petitioner and
credit Dr. Chatterjee’s testimony that MacLaurin’s disclosure—of the
interface “allow[ing] a user to choose between ‘tag guesses’ using cursor
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arrows”—shows by a preponderance of the evidence that the ability to move
between tag guesses using cursor arrows “would have clearly suggested the
existence of a list.” Id. (emphasis omitted) (quoting Ex. 1006, 7:66–8:22;
citing 528 Chatterjee Decl. ¶ 70).
As to the “tags from one or more tag sources” limitation, Petitioner
provides two distinct explanations regarding how MacLaurin discloses this
claim element. First, Petitioner relies on MacLaurin’s disclosure of
automatic and explicit tags as evidence that MacLaurin teaches at least two
tag sources. Id. at 31. Second, Petitioner relies on MacLaurin’s disclosure
of “internal” versus “external” tag sources. Id. at 33−34. We address each
in turn, together with any corresponding argument by Patent Owner. As
discussed below, we find that Petitioner has met its burden as to the first
explanation (automatic and explicit tags), but not as to the second (internal
versus external tag sources).
(1) MacLaurin’s Automatic and Explicit Tags
Petitioner first contends that MacLaurin teaches two “tag sources” in
the form of: “(1) a stored collection of ‘automatic’ tags; and (2) a stored
collection of ‘explicit’ tags.” 528 Pet. 31. Petitioner identifies the following
passage from MacLaurin as supporting its position:
The tagging system can contain both automatic tags generated by
the tagging system and explicit tags from a user. By
distinguishing between the two types of tags easily, a user can be
alerted to their confidence level with regard to the tags. A user
may have high confidence in their explicit tags and lesser
confidence in system generated tags.
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Id. (emphasis omitted) (quoting Ex. 1006, 7:48–53). Relying on
Dr. Chatterjee, Petitioner reasons that “[a] person of ordinary skill would
therefore have understood and found it obvious that ‘automatic tags’ refer to
a collection of tags automatically generated by the system (and subsequently
stored), and ‘explicit tags’ refer to a collection of tags defined and stored by
the user.” Id. at 32 (citing 528 Chatterjee Decl. ¶ 74). Petitioner
additionally asserts that MacLaurin teaches including tags from one or more
tag sources in the tag list because
MacLaurin discloses, in the context of a “light ‘tagging mode’”
(MacLaurin, 7:66–8:3), that “if an automated tag and an explicit
tag (one entered by a user) are both presented to the user, each
type of tag can be distinguished utilizing different sizes, fonts,
colors, and/or symbols and the like.” (MacLaurin, 8:19–23.)
Id. at 33.
We agree with Petitioner that the “automatic tags” and the “explicit
tags” are distinct collection of tags that satisfy the “one or more tag sources”
limitation. Petitioner has shown that MacLaurin’s automatic tags are distinct
from the explicit tags because each is itself a collection of tags from which
the suggested tags come from. For instance, MacLaurin teaches that the user
is given multiple tags to choose from (or “tag guesses”), and that when an
automatic tag and an explicit tag are both presented to the user, the system
visually distinguishes each of those. 528 Pet. 32−33; Ex. 1006, 8:11−12,
8:20−23. Petitioner also shows that it “would have been apparent and
obvious to a person of ordinary skill in the art that the MacLaurin system
maintains a list or collection of ‘automatic’ tags, and a list or collection of
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‘explicit’ tags.” Id. at 32 (citing 528 Chatterjee Decl. ¶ 74). Further, the
user is able to reclassify the automatic tag as an explicit tag. 528 Pet. 32
(citing Ex. 1006, 7:57−59). This shows that the system maintains these
groups as distinct lists, being able to distinguish between tags belonging to
one collection versus another.
Further, the evidence shows that these two collection of tags are the
sources for the tags. Petitioner asserts, and we agree, that the automatic tags
are generated by the tagging system and that the explicit tags come from a
user. Id. at 31−32 (citing Ex. 1006, 4:61−64, 7:40−44, 7:48−49, 8:20−23).
Further, we credit the testimony of Dr. Chatterjee that a “person of ordinary
skill in the art would . . . have understood and found it obvious that
‘automatic tags’ refer to a collection of tags automatically generated by the
system (and subsequently stored), and ‘explicit tags’ refer to a collection of
tags defined and stored by the user.” 528 Chatterjee Decl. ¶ 74. We,
therefore, conclude that because MacLaurin’s system creates the automatic
tags and stores them, when the tagging system searches this collection of
tags, the tags displayed originate from the automatic tags list. We draw the
same conclusion regarding the explicit tags: the user creates explicit tags
that MacLaurin further stores and searches for in determining which explicit
tags to display when the user types a tag entry. Because these are distinct
collections of tags, the automatic tags list and the explicit tags list are both
“one or more tag sources.”
Patent Owner presents essentially two arguments regarding this
limitation. First, Patent Owner argues that MacLaurin’s disclosures
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regarding the display of tags is limited to a recall mode, not the tagging
mode. 528 PO Resp. at 35−40. Second, Patent Owner argues that
MacLaurin does not disclose a “tag list.” Id. at 57−62. We address each
argument in turn.
“Recall Mode” Argument
Patent Owner argues that the passages relied on by Petitioner
concerning the presentation to the user of both the automatic and explicit
tags, in distinguishing format, relate to the “recall” mode, not the “tagging”
mode. 528 PO Resp. 35−36. Patent Owner focuses its arguments on the
timing of when the files were tagged. For instance, in the “tagging” mode,
the tags displayed while tagging are not yet associated with the file, while in
“recall” mode, the tags are used to locate the files, i.e., the tags have already
been associated with the file—in the past. Id. at 36 (citing 528 Surati Decl.
¶ 104). Thus, as we understand Patent Owner’s argument, the displayed tags
having different format for “automatic” and “explicit” tags are not relevant
to the claim because those tags are being “recalled” (to locate the file) and
the claim focuses on the “tagging” function. Thus, it appears from Patent
Owner’s argument, that when MacLaurin provides “tag guesses” to the user,
the displayed tags do not include the “automatic” tags. See id. at 36 (arguing
that “MacLaurin never displays automated/automatic tags in its tagging
mode”).
We do not agree with Patent Owner’s characterization of column 8,
lines 20−23 of MacLaurin as being limited to a “recall” mode and not
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applicable to the “tagging” mode. First, Patent Owner focuses the majority
of its assertions on the depiction of MacLaurin’s Figure 8 as evidence that
there is no listing of “automatic” tags in tagging mode. See Id. at 33−36.
But MacLaurin describes Figure 8 succinctly. This is all MacLaurin says of
Figure 8:
FIG. 8 depicts a user interface 800 with a suggested tag
“graphics” 802 in response to a user input “gr” 804 for a selected
item 806. In this example, the user has typed the letters “gr” on
a keyboard and a suggested tag has been provided based on that
user input, namely “graphics.” A tagging icon 808 is also
displayed during the process to notify the user that a tagging
process is occurring.
Ex. 1006, 8:51−57. The description is focused on how MacLaurin shows a
tag suggestion when a user begins typing. It may be that MacLaurin shows
here a “best guess,” as described earlier with regard to the “light tagging
mode.” See id. 8:9−10 (“display the current ‘best guess’ tag in a textual
readout associated with the window”). But we find that one of ordinary skill
would not have understood Figure 8’s omission of further features of the
“light tagging mode,” such as how the user chooses among multiple “tag
guesses” (id. at 8:11−12), to mean that there are no such features during
tagging. Therefore, depicting a single suggested tag or “best guess” would
not have been understood by one of ordinary skill to suggest that
MacLaurin’s tagging mode does not display other tags or that those
displayed tags would not include both automatic and explicit tags as
described earlier in column 8, lines 20−23.
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Second, as stated in regard with the previously discussed Zuckerberg
ground, we are not persuaded by Patent Owner’s arguments, for they rely on
an unreasonably narrow reading of MacLaurin’s disclosure. See 528 PO
Resp. 36−41. Instead, we are persuaded by Dr. Chatterjee’s testimony that
MacLaurin teaches that tag suggestions (given to the user during tagging)
include a recently used tag, commonly used tag, or tag associated with a
similar item. See 528 Reply Chatterjee Decl. ¶ 25. Dr. Chatterjee testifies,
and we agree, that during tagging, a user will be presented with tag
suggestions that would include previously used automatic tags and explicit
tags that the user previously entered, and MacLaurin expressly teaches that
tagging suggestions can be formulated automatically based on user tags or
other external data. Id.; Ex. 1006, 2:47−61. We credit Dr. Chatterjee’s
testimony that the disclosure of tag differentiators expands on the
explanation of the “light tagging mode,” in which the user interface indicates
that tagging is active and displays the tags that the system guesses for the
user. 528 Reply Chatterjee Decl. ¶ 23; Ex. 1006, 6:66−7:29 (explaining the
“light tagging mode” user interface and then providing that displaying tag
type differentiators is “[i]n addition” to the disclosed user interface
characteristics).
Patent Owner’s arguments to the contrary rely on Dr. Surati’s opinion
that reads MacLaurin as disclosing that the tag type differentiators are
limited to a recall mode. See 528 Surati Decl. ¶ 104. We do not credit Dr.
Surati’s testimony in this regard, as we do not find it supported by the
natural and reasonable reading of MacLaurin explained above.
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Third, as stated above with regard to the Zuckerberg ground, we are
also not persuaded that the prosecution of MacLaurin warrants the limited
interpretation that Patent Owner urges. Again, from our review of the
record, the prosecution history relied on is not the file history of the
MacLaurin reference asserted by Petitioner. Ex. 2008 (identifying the patent
application as a continuation of the asserted MacLaurin reference). As such,
the evidence has little probative value for the purpose for which Patent
Owner proffers it. Nevertheless, we find the statements in the prosecution
do not limit MacLaurin’s display of automatic and explicit tags to a recall
mode. If anything, it is the opposite—the display of these tags as described
are directly applicable to the “light tagging mode.” The application includes
an independent claim that included the “light tagging mode” as described,
and dependent claims that further recited the tag-type differentiator display.
Ex. 2008, 147−48 (claims 10, 12 and 13). The statements in the record
concerning the dependent claims were made to overcome enablement and
written description rejections. Id. at 152−156. The rejections were
overcome by pointing the Examiner to the display of the different format for
each of the automatic and explicit tags. Id.; Ex. 1006, 7:48−8:29. The
applicant’s statements, however, are generic in nature, merely addressing
that the subject matter is disclosed. On the whole, Patent Owner and Dr.
Surati urge an interpretation of irrelevant prosecution statements and claim
amendment to unreasonably limit MacLaurin’s disclosure of displaying
automatic and explicit tags to a mode unrelated to tagging. The statements
in prosecution are not even relevant here because they do not address the
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scope of MacLaurin’s claims, much less whether those claims and the
displayed tags are in any way limited to a recall mode.
We determine, based on the evidence presented and the arguments
and evidence in opposition, that MacLaurin teaches the “one or more tag
sources” by disclosing the automatic and explicit tags as distinct collections
of tags from which the displayed tags originate.
“Tag List” Argument
Patent Owner argues that MacLaurin displays the current, and
singular, “best guess” tag. Id. at 56−57. That is, MacLaurin discloses
displaying one tag at a time. Id. Other disclosures of MacLaurin referring
to multiple tags, likewise, according to Patent Owner, refer to displaying one
tag at a time, even though the system may receive a “tag list.” Id. at 57
(stating that “Petitioner’s remaining citations to MacLaurin do not cure this
deficiency, as they relate to a tag list generated by and provided to internal
system components, and do not disclose ‘displaying’ any such list, as
required by the Challenged Claims”). Relying on the opinion of Dr. Surati,
Patent Owner argues that all of MacLaurin’s embodiments consistently
describe that the user interface does not display a list of suggested tags. Id.
at 58−59. Rather, according to Patent Owner, any “list” in MacLaurin refers
to previously tagged files, in what Patent Owner calls “browsing” mode. Id.
at 60−62.
Petitioner responds that, as stated in the Petition, MacLaurin discloses
providing multiple tag suggestions to the user, and that it would have been
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obvious that those suggestions would provide a “list.” 528 Pet. Reply 23−24
(citing 528 Chatterjee Decl. ¶ 71). Also, Petitioner responds that Patent
Owner’s arguments improperly focus on one embodiment of MacLaurin,
i.e., Figure 8, in which a single suggestion is provided. Id. at 23. But such a
limited view of MacLaurin is not supported by other disclosures in which
there are multiple tag suggestions displayed. Id.
We agree with Petitioner. As stated above, we find that MacLaurin is
not limited to displaying a single or “best guess” tag suggestion. See, e.g.,
Ex. 1006, 8:11−12 (stating that the user interface “allow[s] a user to choose
between ‘tag guesses’ using cursor arrows”). MacLaurin clearly teaches
display of multiple tags during the tagging process. Thus, arguments
limiting the display of tags to a single tag are not supported by MacLaurin.
As for whether the display of multiple tags would be in a “list,” the
question appears to be whether the sequential display of tags teaches or
suggests a list. Patent Owner’s position is that the display of a single tag is
not the same as a display of a “list.” 528 PO Sur-Reply 13−14. The
problem with this interpretation is that Patent Owner impliedly interprets the
term “list” as requiring more than one entry, or that the display of a “list”
requires display of all entries in the list at once. But this position is
unsupported on the full record before us. Patent Owner does not show how
the ’173 patent supports such an interpretation of the claim. And we find
that Figure 4B of the ’173 patent may not support such a contention. Figure
4B of the ’173 patent fails to show all the entries that are allegedly in the list
of tags displayed. The Figure cuts off the display, giving little to no regard
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as to how many items are displayed or if all items in the list are displayed.
Further, the claim makes no mention as to how the list is displayed, whether
one entry at a time, all at once, or portions thereof. Therefore, the argument
Patent Owner makes concerning the display of a single tag, or displaying a
tag “one at a time,” is not commensurate with claim scope.
Nevertheless, Petitioner’s position is that it would have been obvious
that the tag suggestions would be presented as a tag “list.” 528 Pet. 30
(citing 528 Chatterjee Decl. ¶ 70). That is, and we agree, choosing between
entries of the list by using a cursor suggests that the list exists and the list of
items would, therefore, be displayed. Id. MacLaurin further describes the
tag suggestions as being in a list by stating that “if the user 204 inputs a ‘g,’
the tagging component 210 can list possible tags that begin with the letter ‘g’
such as, for example, ‘graphics,’ ‘group A,’ ‘group B,’ ‘green,’ and/or
‘garage’ and the like.” Ex. 1006, 5:31−34. We find that this disclosure of
MacLaurin teaches that during tagging, the system does prepare and display
a list. Whether the listed items are displayed one at a time or all at once is
not relevant to claim scope, which has not been shown to require any
particular manner of display.
Finally, considering Patent Owner’s argument that an ordinarily
skilled artisan would have understood MacLaurin to teach that the “tagging
component” at most provides a tag list to an internal system component, not
a display, Patent Owner’s argument ignores Petitioner’s reliance on
MacLaurin’s teachings concerning the “selection-based tagging component,”
of which, as Patent Owner acknowledges, the “tagging component” and
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“user interface” are each a part. 528 PO Resp. at 39 (“MacLaurin’s
‘selection-based tagging component’ consists of two components: ‘user
interface 208’ and ‘tagging component 210.’”). As Petitioner explains,
MacLaurin discloses that
the selection-based tagging component 102 can respond
dynamically to the user’s input and relay tag suggestions as the
user 104 provides inputs. For example, the selection-based
tagging component 102 can respond with tag suggestions that
utilize each character that the user 104 types into a keyboard,
providing a list of tag suggestions that utilize at least some of the
typed characters.
528 Pet. 29 (quoting Ex. 1006, 4:42–48). In view of this disclosure, we
agree with Petitioner and find that the system in MacLaurin receives
partially-entered tag input from the user and provides a list of possible tag
suggestions displayed to the user.
Accordingly, we determine that Petitioner has demonstrated, by a
preponderance of the evidence, that the automatic and explicit tags are
displayed in a list as recited in claim 1: “displaying a tag list including tags
from one or more tag sources matching a search string.”
(2) MacLaurin’s “Internal” and “External” Tag Sources
We now turn to whether Petitioner has met its burden of showing that
the “internal” and “external” tags are “one or more tag sources,” as required
by claim 1. Petitioner argues that MacLaurin’s disclosure of “internal” and
“external” tag sources satisfies the requirement that the tag list must include
“tags from one or more tag sources” (Ex. 1001, 9:16–17). 528 Pet. 33–34.
According to Petitioner,
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MacLaurin discloses use of “external tag sources,” e.g., an
“attorney tag list” obtained from the Internet and a “medical
profession tag set” retrieved from an online service. These
external tag sources thus provide a separate basis from the
internal “automatic” and “explicit” tag sources for meeting the
“tag source” limitation. (Chatterjee, ¶¶77–78.)
Id. at 34 (emphasis omitted).
We determine that Petitioner has not shown by a preponderance of the
evidence that MacLaurin teaches a set of “one or more tag sources” in the
form of “internal” versus “external” tags. For the “external” tags, Petitioner
has not shown that this collection is distinct from the automatic tags or that
MacLaurin would alert the user as to the source being the collection itself,
the Internet, or other online service. That is, the “external” tags are not
entered by the user, and they appear to be automatic tags that the system
suggests. For instance, MacLaurin states that the tagging system notices that
the tagged items relate to medical professional subject matter and that it will
suggest tags from the medical profession tag set, after retrieving those tags
from an online service. Ex. 1006, 7:38−43. We infer from this disclosure
that MacLaurin’s external tags may be an automated selection of tags, i.e.,
an automatic tag. That is, although a user may enter her own medical
profession tags (read here “explicit” tags) (see id. at 7:40−42), the medical
profession tag set that is downloaded from an online service is part of the
collection of tags that the tagging system uses for automatic suggestions.
So, based on this reading of MacLaurin, it is unclear that MacLaurin does, or
would, treat the “external” tags, which are not entered by the user, in the
same manner as the “explicit” tags, as a tag source distinct from the
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automatic tags. For example, there is no disclosure, nor does Petitioner
explain, how MacLaurin would present an “internal” tag that is also an
automated tag distinctly from an “external” tag that was automatically
sourced from the Internet. And neither Petitioner nor Dr. Chatterjee explain
their similarities or dissimilarities or why the reasoning provided in
MacLaurin for distinguishing between “automatic” and “explicit” tags
would be equally applicable to a distinction between “automatic” and
“external” tags. Indeed, Dr. Chatterjee’s testimony on this particular point
(528 Chatterjee Decl. ¶¶ 77, 78) does not add any further detail or factual
support than that provided in the Petition, and, therefore, is not persuasive.
Thus, although we understand MacLaurin’s external tags to be a source of
tags that the system treats as automatic tags, we find that Petitioner has not
explained sufficiently its contention that the external tags are a collection of
tags distinct from “internal” tags or any other tags. Here forward, we treat
MacLaurin’s “external” tags as belonging to the “automatic” tag collection.
In conclusion, because we find that the automatic and explicit tags
satisfy the limitation “tags from one or more tag sources,” we determine that
Petitioner has shown by a preponderance of the evidence that the first
displaying step of the claim is met.
c. Second Displaying Step
Claim 1 further calls for “displaying a tag type indicator for each tag
appearing in the tag list, said tag type being indicative of a tag source
associated with the tag.” Ex. 1001, 9:18–20. Petitioner asserts that
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MacLaurin alone, or in combination with either of Rothmuller or Plotkin,
meets this claim requirement. Pet. 35–40, 55–67.
Petitioner first points to MacLaurin’s teaching “that ‘if an automated
tag and an explicit tag (one entered by a user) are both presented to the user,
each type of tag can be distinguished utilizing different sizes, fonts, colors,
and/or symbols and the like’” as suggesting this claim element. 528 Pet. 37
(quoting Ex. 1006, 8:19–23). According to Petitioner, in view of this and
related teachings, an ordinarily skilled artisan would have understood that
“MacLaurin would have involved the display of a tag type indicator for each
tag presented to the user; otherwise the system could not visually convey to
the user whether each suggested tag was an explicit or automatic tag.” Id.
(citing 528 Chatterjee Decl. ¶ 82) (emphasis omitted). Petitioner further
reasons that, as explained above, each “tag type” disclosed by MacLaurin
corresponds to a particular “tag source,” and, thus, “[e]ach tag type in
MacLaurin [] serves as an indication and is suggestive of the source from
which tags of that tag type originated.” Id. at 38.
Patent Owner argues that MacLaurin does not teach a “tag type
indicator.” 528 PO Resp. 32−41. The arguments are the same as those
discussed above with regard to the “one or more tag sources.” Specifically,
Patent Owner argues that Petitioner’s evidence overlooks the two separate
modes of MacLaurin: (1) tagging new files (tagging mode) and (2)
previously tagged files (recall mode). Id. We have discussed those
arguments above and have found them unpersuasive. We reiterate our
finding that MacLaurin expressly teaches displaying automatic and explicit
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tags. Ex. 1006, 8:20−23. And, MacLaurin teaches that it is advantageous to
display automatic tags differently, to distinguish them from the explicit tags,
in order to alert the user to a confidence level with regard to the tags. Id. at
7:48−51. We also find persuasive Dr. Chatterjee’s testimony, which we
credit, that distinguishing the type of tag by using different sizes, fonts,
colors, and/or symbols, qualifies as the recited “tag type indicator.” 528
Chatterjee Decl. ¶¶ 80, 81.
As we have previously stated, it is true, as Patent Owner argues, that
none of MacLaurin’s figures shows the different tags displayed as described,
using different fonts, colors, or symbols. But the omission of this feature
from MacLaurin’s figures does not diminish the express disclosure of
visually differentiating the two tag types, which are indicative of the tag
sources, as discussed supra in Section V.D.2.b.(1).
Accordingly, we determine that Petitioner has demonstrated by a
preponderance of the evidence that MacLaurin teaches the second displaying
step.
d. Conclusion – Independent
Claims
Based on the foregoing, we conclude that Petitioner has established by
a preponderance of the evidence that claim 1 of the ’173 patent is
unpatentable based on MacLaurin. Independent claim 7 is directed to a
“system” corresponding to the method recited in claim 1. See 528 Pet. 46
(stating that recitations of “system” and “apparatus operable to” provide no
meaningful limitation” and identifying that MacLaurin’s methods would
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have been implemented in computer-based system (citing Ex. 1006,
10:36−41, 11:19−30, Figs. 12, 10; 528 Chatterjee Decl. ¶¶ 131−133)).
Independent claim 13 is directed to “computer readable medium” and “code
for” performing the steps recited in claim 1. See id. at 49 (stating that
recitations of “computer readable medium” and “code” provide no
meaningful distinction and identifying that MacLaurin’s discloses computer-
readable media configured to perform its techniques (citing Ex. 1006,
10:56−67, 11:7−9; 528 Chatterjee Decl. ¶¶ 157–159)). Accordingly, and
because claims 7 and 13 recite the same limitations as discussed above, we
also conclude that Petitioner has established by a preponderance of the
evidence that claims 7 and 13 are unpatentable based on obviousness over
MacLaurin.
Petitioner asserted various other alternative mappings and grounds
(i.e., combination of MacLaurin with Rothmuller or Plotkin). Because we
have determined that Petitioner has met its burden of showing by a
preponderance of the evidence that independent claims 1, 7, and 13 would
have been unpatentable over MacLaurin alone, we need not address whether
the claims would also be unpatentable over other mappings or additional
grounds asserted in the 528 IPR.
e. Dependent Claims 2, 8, and 14
Dependent claim 2 depends from claim 1, and further recites
“providing a tag entry field for entering the search string.” Ex. 1001,
9:21−22. Dependent claim 14 depends from claim 13, and recites the code
performing the same step recited in claim 2. Id. at 10:22−24. Petitioner
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points to MacLaurin’s area for tag input 804, shown in a portion of Figure 8,
reproduced below.

The portion of Figure 8, above, cropped and highlighted by Petitioner,
shows user input “gr” 804 (highlighted in yellow) for selected item 806 (not
shown), and suggested tag “graphics” 802. 528 Pet. 40−41. According to
Petitioner, and we agree, it would have been obvious for MacLaurin to
implement this user input area in the described “light tagging mode.” Id. at
41 (citing 528 Chatterjee Decl. ¶ 113). Although MacLaurin does not
expressly describe Figure 8 in connection with the “light tagging mode,” the
depiction of Figure 8 is consistent with the description of providing a user
interface portion for accumulating the typed keys. Ex. 1006, 8:4−7. Dr.
Chatterjee opines that it would have been obvious that a “tag entry field”
would have been required to capture the user’s keys in order to ascertain and
display the “best guess” tag suggestions. 528 Chatterjee Decl. ¶ 113. We
credit this testimony.
Patent Owner does not address these claims or this limitation. In
conclusion, based on the evidence discussed above, we determine that
Petitioner has shown by a preponderance of the evidence that claims 2 and
14 would have been obvious over MacLaurin.
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Dependent claim 8 depends from claim 7 and further recites “an
apparatus operable to provide a tag entry field for entering a photo tag.”
Ex. 1001, 9:41−42. Claim 8 is similar to claim 2, but differs in that instead
of reciting a search string, the entry is a “photo tag.” Petitioner relies on the
same evidence described above with the added explanation that MacLaurin
would allow the entering the search string in order to display “best guess”
and options based on the user’s typed keys. 528 Pet. 46−47 (citing
Ex. 1006, 8:6−12; 528 Chatterjee Decl. ¶ 135). Petitioner further asserts that
the same field enables a user to enter a photo tag because the entered text
corresponds to a particular photo tag desired by the user and results in a list
containing one or more matching tags. Id.
We agree with Petitioner that the cited disclosures of MacLaurin,
together with Petitioner’s arguments and the Chatterjee Declaration, show
that MacLaurin teaches the limitation further recited in claim 8. Those
disclosures show that MacLaurin would have provided the user a field in
which to type a tag for a selected photo. As with claim 2, Patent Owner
does not address this claim or this limitation. In conclusion, we determine
that claim 8 would have been obvious over MacLaurin.
In the alternative, Petitioner relies on Ortega as disclosing a tag entry
field. We discuss now this alternative contention based on Ortega because it
makes further clear that the subject matter of claims 2, 8, and 14 would have
been obvious in light of MacLaurin and Ortega’s teachings.
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Ortega discloses a user interface technique that presents a list of
suggested items matching a partial query entered into a search field, as
depicted in Figure 2A, reproduced below.

Ex. 1007, Fig. 2A. Figure 2A illustrates an example user interface
that may be used to suggest auto-completion strings. Id. at 2:54−55.
Petitioner argues, and we agree, that Ortega teaches a search field and a drop
down box with suggested terms and phrases, and that when user selects a
listed option, the selection is placed into the search field. Id. at 5:42−46.
Petitioner asserts, and we agree, that a person of ordinary skill in the
art would have appreciated that Ortega’s text box was widely used and users
likely would have been already familiar with its use. 528 Pet. 53 (citing 528
Chatterjee Decl. ¶¶ 119, 120). The use of such a text box for entering partial
tags in the “light tagging mode” would also have improved the user
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experience by allowing the user to see the specific characters being input
and would have helped the user confirm that its input was entered correctly.
Id. We credit the testimony of Dr. Chatterjee in this regard.
Accordingly, we determine that Petitioner has shown by a
preponderance of the evidence that claims 2, 8, and 14 also would have been
obvious over the combination of MacLaurin and Ortega.
f. Dependent Claim 4
Claim 4 depends from claim 1, and further recites “providing a
graphical user interface to select a tag in the tag list.” Ex. 1001, 9:25−26.
Petitioner points out that MacLaurin’s user interface is an example of a
graphical user interface (GUI) because MacLaurin describes the interface as
a windows interface with manipulable objects using a mouse or keyboard.
528 Pet. 42 (citing 528 Chatterjee Decl. ¶ 122). We agree that MacLaurin
teaches the limitation. Ex. 1006, 7:66−8:2, 5:26−28; 528 Chatterjee Decl.
¶¶ 122, 123. Patent Owner does not address this claim or this limitation. In
conclusion, we determine that Petitioner has shown by a preponderance of
the evidence that claim 4 would have been obvious over MacLaurin.
g. Dependent Claims 6, 12, and 18
Claim 6 depends from claim 1, and further recites “selecting as a tag
source one or more of an online network profile, an address book, browser
bookmarks, landmark tags, and free-form text.” Ex. 1001, 9:31−34.
Petitioner relies on the arguments and evidence presented for claim 1 with
respect to the “tag sources.” 526 Pet. 42–45. More specifically, Petitioner
argues that MacLaurin teaches two of the tag sources recited in claim 6:
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free-form text, and an online network profile. Id. We agree with Petitioner
that MacLaurin teaches the limitation further recited in claim 6 by describing
that a stored collection of explicit tags (“tag source”) is created by the user
entering or typing tags in any format such that the entered tags are free-form
text. Id. at 42−43 (citing Ex. 1006, 6:40−44, 7:48−51, 7:66−8:18; 528
Chatterjee Decl. ¶ 125). Therefore, we are persuaded that such a “tag
source” is the “free-form text” recited in claim 6.
As for the “online network profile,” Petitioner argues that MacLaurin
describes an external tag source, such as a “medical profession tag set” that
is retrieved from an online service. Id. at 43 (citing Ex. 1006, 6:21−31,
7:40−47). We agree that the external tags are sourced from an online
service, and that by selecting the online service as the source for tags, the
tagging system may utilize the downloaded external tags to provide tag
suggestions (read here “automatic” tags). Therefore, we agree with
Petitioner that MacLaurin teaches that a tag source would also be the “online
network profile” for the reasons (and supporting evidence) summarized
above.
With regard to the recited “selecting,” Petitioner argues that it would
have been implicit or at least obvious that a selection of one or more tag
sources (e.g., the stored collection of explicit tags) would occur prior to the
entry of any text by the tagging user, so that the software can know where
within the system memory to begin searching for tags that might match the
entered text. Id. at 44−45 (citing 528 Chatterjee Decl. ¶ 128). We agree
with Petitioner and credit the testimony of Dr. Chatterjee in this regard.
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MacLaurin’s tagging system must know which tags to identify as either
explicit or automatic in order to display them as such. It is implicit that
MacLaurin’s system selects the pool of tags that corresponds to the type of
tag desired. If the user is typing a tag, MacLaurin thus selects the explicit
tags to determine the “best guess” and display it as such. Ex. 1006, 8:19−23.
But MacLaurin must also be able to select distinctly the online network
profile setting to download or collect tags it determines are applicable to the
items that are associated with the medical profession subject matter and to
display tags as suggestions in automatic mode. Id. Therefore, we agree with
Petitioner that MacLaurin implicitly teaches (or suggests) this selection, or at
a minimum, that such a selection would have been obvious to a person of
ordinary skill in the art from the understanding of MacLaurin’s operation.
528 Chatterjee Decl. ¶¶ 128−130.
In sum, we conclude that Petitioner has shown by a preponderance of
the evidence that MacLaurin teaches the limitation further recited in claim 6
because MacLaurin teaches free-form text as a source for the explicit tags.
Further, MacLaurin informs a person of ordinary skill in the art that medical
profession tags as part of the automatic tags are downloaded from an online
service, thereby teaching the “online network profile.” Claim 12 is
substantially similar to claim 6, except it depends from claim 7 and recites
an apparatus, which Petitioner has shown in MacLaurin’s computer-based
system in connection with claim 7. 528 Pet. 46, 48. Claim 18 also recites
the same subject matter, except that it depends from claim 13 and recites
code for performing the selection. Ex. 1001, 10:33−36. Patent Owner does
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not specifically address these claims, but arguments that could have been
directed to the recited subject matter have been addressed above in
connection with the discussion of “tag sources” and claim 1. In conclusion,
we determine that Petitioner has shown by a preponderance of the evidence
that claims 6, 12, and 18 would have been obvious over MacLaurin.
h. Dependent Claim 10
Claim 10 depends from claim 7, and further recites “an apparatus
operable to allow selection of a tag in the tag list to complete the tag entry
field.” Ex. 1001, 10:3−5. Petitioner identifies its arguments and evidence
presented for claim 4 concerning the showing that MacLaurin’s tags are
selected by the user in light tagging mode. 528 Pet. 47–48 (citing Ex. 1006,
8:51−57, 5:25−37). Petitioner acknowledges that MacLaurin does not
provide detail on how the tag selected by the user completes the tag entry.
Id. However, Petitioner provides citations to MacLaurin that, together with
the testimony of Dr. Chatterjee, explain that MacLaurin would have
performed the selection as claimed. For instance, we are persuaded that
MacLaurin gives the user the functionality to enter tags using the keyboard,
but that the tagging component will provide suggestions that the user selects.
528 Chatterjee Decl. ¶ 143. We agree and credit Dr. Chatterjee’s testimony
in this regard that “[s]electing the tag causes the system to ‘complete the tag
entry field’ because the selection obviates the need for the user to continue
typing the tag text into the tag entry field.” Id. (emphasis omitted).
Nevertheless, Petitioner proffers an alternative ground that relies on
Ortega for this limitation. We discuss that ground here.
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Ortega discloses a user interface technique that presents a list of
suggested items matching a partial query entered into a search field, as
depicted in Figure 2A, reproduced below.

Ex. 1007, Fig. 2A. Figure 2A illustrates an example user interface
that may be used to suggest autocompletion strings. Id. at 2:54−55.
Petitioner argues, and we agree, that Ortega teaches a search field and a drop
down box with suggested terms and phrases, and that when user selects a
listed option, the selection is placed into the search field. Id. at 5:42−46.
Petitioner asserts, and we agree, that a person of ordinary skill in the art
would have appreciated the advantage of convenience and superior control
of selecting an item into the text entry window in connection with tagging
photos. 528 Pet. 53 (citing 528 Chatterjee Decl. ¶¶ 148−151). This
technique also offers a distinct technical advantage of allowing a user to
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further refine the search even though the text entry box has been completed
with the selection. Id. at 53−54. We credit the testimony of Dr. Chatterjee
in this regard.
Patent Owner does not address this claim or this limitation. In
conclusion, we determine that Petitioner has shown by a preponderance of
the evidence that claim 10 would have been obvious over MacLaurin alone
and MacLaurin and Ortega.
i. Dependent Claim 16
Claim 16 depends from claim 13, and recites the further limitation of
“code for providing a graphical user interface to select a tag in the tag list to
complete the tag entry field.” Ex. 1001, 10:27−29. Petitioner argues, and
we agree, that this claim is an amalgam of the limitations recited in claim 4
(“graphical user interface”) and claim 10 (reciting tag selection). 528 Pet.
49. For the reasons discussed with respect to claims 4 and 10, we determine
that Petitioner has shown by a preponderance of the evidence that claim 16
would have been obvious over MacLaurin alone and MacLaurin and Ortega.
3. Conclusion of Obviousness of Challenged Claims in IPR2019-00528
We have addressed above each challenged claim (claims 1, 2, 4, 6−8,
10, 12−14, 16, and 18) of the ’173 patent in IPR2019-00528. We recognize
that Petitioner presents additional grounds for the challenged claims in
IPR2019-00528. Because we have determined for all challenged claims that
Petitioner has demonstrated unpatentability by a preponderance of the
evidence based on obviousness over MacLaurin alone (claims 1, 2, 4, 6−8,
10, 12−14, 16, and 18) and over MacLaurin and Ortega (claims 2, 8, 10, 14,
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and 16), we need not reach Petitioner’s other challenges as to these same
claims. Consistent with 35 U.S.C. § 318, this Final Written Decision
therefore disposes of all patent claims challenged by Petitioner in IPR2019-
00528. See also SAS Inst., 138 S. Ct. at 1359 (holding a petitioner “is
entitled to a final written decision addressing all of the claims it has
challenged”); Boston Sci. Scimed, Inc., 2020 WL 2071962, at *4
(recognizing that the “Board need not address issues that are not necessary
to the resolution of the proceeding” and, thus, agreeing that the Board has
“discretion to decline to decide additional instituted grounds once the
petitioner has prevailed on all its challenged claims”).
VI. PATENT OWNER’S MOTION TO AMEND
We have concluded that challenged claims 1, 2, 4, 6−8, 10, 12−14, 16,
and 18 of the ’173 patent are unpatentable. We now turn to Patent Owner’s
contingent motion to enter proposed substitute claims 21−32. MTA 1,
Appendix A. For the reasons that follow, we deny Patent Owner’s motion.
A. APPLICABLE LAW
In an inter partes review, amended claims are not added to a patent as
of right, but rather must be proposed as a part of a motion to amend. 35
U.S.C. § 316(d). The Board must assess the patentability of proposed
substitute claims “without placing the burden of persuasion on the patent
owner.” Aqua Prods., Inc. v. Matal, 872 F.3d 1290, 1328 (Fed. Cir. 2017)
(en banc); see also Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129,
Paper 15 at 3‒4 (PTAB Feb. 25, 2019) (precedential). Subsequent to the
issuance of Aqua Products, the Federal Circuit issued a decision in Bosch
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Automotive Service Solutions, LLC v. Matal, 878 F.3d 1027 (Fed. Cir. 2017)
(“Bosch”), as well as a follow-up order amending that decision on rehearing.
See Bosch Auto. Serv. Sols., LLC v. Iancu, No. 2015-1928 (Fed. Cir. Mar.
15, 2018) (Order on Petition for Panel Rehearing).
In accordance with Aqua Products, Bosch, and Lectrosonics, a patent
owner does not bear the burden of persuasion to demonstrate the
patentability of the substitute claims presented in the motion to amend.
Rather, ordinarily, “the petitioner bears the burden of proving that the
proposed amended claims are unpatentable by a preponderance of the
evidence.” Bosch, 878 F.3d at 1040 (as amended on rehearing);
Lectrosonics, Paper 15 at 3–4. In determining whether a petitioner has
proven unpatentability of the substitute claims, the Board typically focuses
on “arguments and theories raised by the petitioner in its petition or
opposition to the motion to amend.” Nike, Inc. v. Adidas AG, 955 F.3d 45,
51 (Fed. Cir. 2020).
Notwithstanding the foregoing, a patent owner’s proposed substitute
claims must meet the statutory requirements of 35 U.S.C. § 316(d) and the
procedural requirements of 37 C.F.R. § 42.121. Lectrosonics, Paper 15 at 4–
8. Accordingly, a patent owner must demonstrate: (1) the amendment
proposes a reasonable number of substitute claims; (2) the proposed claims
are supported in the original disclosure (and any earlier filed disclosure for
which the benefit of filing date is sought); (3) the amendment responds to a
ground of unpatentability involved in the trial; and (4) the amendment does
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not seek to enlarge the scope of the claims of the patent or introduce new
subject matter. See 35 U.S.C. § 316(d) (2018); 37 C.F.R. § 42.121.
B. PROPOSED SUBSTITUTE CLAIMS
Patent Owner presents amended independent claims, and leaves the
dependent claims unchanged other than modifying dependency. MTA 2.
Below is a marked-up version of proposed claim 21, reproduced from Patent
Owner’s motion:
21. A method of selecting a photo tag for a tagged photo,
comprising:
displaying a photograph comprising at least one subject or
object;
receiving a user selection of a location in the photograph
corresponding to the at least one subject or object;
displaying a tag list including tags from one or more tag
sources matching a search string, wherein the tags in the tag list
are displayed in a vertical list, and wherein:
a first tag from a first tag source is displayed above
a second tag from a second tag source; and
the second tag from the second tag source is
displayed above a third tag from the first tag source;
displaying a tag type indicator for each tag appearing in
the tag list, said tag type being indicative of a tag source
associated with the tag; and
associating at least one of the tags in the tag list with the
at least one subject or object.
MTA, Appendix A.

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C. ANALYSIS – STATUTORY AND PROCEDURAL REQUIREMENTS
1. Reasonable Number of Substitute Claims
35 U.S.C. § 316(d)(1)(B) requires that the number of substitute claims
be reasonable. See also 37 C.F.R. § 42.121(a)(3). Patent Owner proposes
one substitute claim for each challenged claim. MTA, 2, Appendix A. This
one-for-one substitution is reasonable. 37 C.F.R. § 42.121(a)(3) (“The
presumption is that only one substitute claim would be needed to replace
each challenged claim . . . .”).
2. No Enlargement of the Scope of the Claims
35 U.S.C. § 316(d)(3) requires that the amendment not seek to enlarge
the scope of the claims. See also 37 C.F.R. § 42.121(a)(2)(ii). Patent Owner
contends that the addition of claim limitations add substantive features to all
the independent claims, thus narrowing the scope of the challenged claims.
MTA 2. We agree.
3. No Introduction of New Matter/Support in the Original Disclosure
35 U.S.C. § 316(d)(3) additionally requires that the amendment not
introduce new subject matter. See also 37 C.F.R. § 42.121(a)(2)(ii). 37
C.F.R. § 42.121(b) requires that a motion to amend set forth the support in
the original disclosure for each substitute claim. “Importantly, to meet this
requirement, citation should be made to the original disclosure of the
application, as filed, rather than to the patent as issued.” Lectrosonics, Paper
15 at 8. The test for determining compliance with the written description
requirement is whether the disclosure of the application as originally filed
reasonably conveys to a person of ordinary skill in the art that the inventor
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had possession of the claimed subject matter at the time of filing, rather than
the presence or absence of literal support in the specification for the claim
language. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.
Cir. 2010) (en banc); Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed.
Cir. 1991); In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983).
Patent Owner asserts that the limitations of “displaying a photograph,”
“receiving a user selection of a location in the photograph corresponding to”
a “subject or object” in the photograph, and “associating” a tag with the
“subject or object” are described in the Specification. MTA 3. Patent
Owner points out that column 4, lines 40 to 43 of the ’173 patent explains
that the user may add a tag at the location of crosshair pointers on a
photograph. Id. (citing Ex. 1001, 4:40−43). Patent Owner also points out
the ’173 patent’s description of associating a predefined tag with subject or
objects in a photo. Id. at 3–4 (citing Ex. 1001, 6:9−12). Further, as evidence
that the ’173 patent describes the tags in the displayed tag list in the order
recited, Patent Owner relies on Figure 4B, reproduced below from Patent
Owner’s motion.
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Figure 4B illustrates screen 400B with a list of tags 412 displayed
after the user types in tag entry field 406, where each tag includes a tag icon
that indicates the type of tag, i.e., corresponding tag source. Ex. 1001,
5:39−55. Patent Owner explains that Figure 4B displays a vertical list with
three specific tags: “Terrill Dent” (highlighted in red), “text i typed before”
(highlighted in blue), and “Thee Bounkeuth” (highlighted in red also). MTA
4. The tags highlighted in red are from the list of friends from an online
service like Facebook (read here, a “tag source”), while the tag highlighted
in blue is from the cache of recent free-form text entries (read here, another
“tag source”). Id. The displayed arrangement of these three tags, according
to Patent Owner, supports the added limitations reciting the first, second,
and third tags. Id. at 4−5. Patent Owner also provides a claim chart (not
repeated here) identifying “exemplary” support for each claim limitation in
the application that issued as the ’173 patent. Id. at 5−13.
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In connection with its obviousness arguments, Petitioner posits that it
is questionable whether the claimed visual and vertical arrangement of the
first, second, and third tag, displayed in Figure 4B is described in the text of
the ’173 patent Specification. MTA Opp. 5. Arguing happenstance of a
limitation that is not described, Petitioner states that
sole support for these claim limitations under 35 U.S.C.
§ 112 is the fortuity that Figure 4B of the ’173 patent shows
a vertical tag list that happens to include three tags in this
particular arrangement, i.e.[,] a first tag from a first source,
a second tag from a second source, and a third tag from a
first source.

Id. Although not a direct challenge to the written description requirement,
we note Petitioner’s arguments here for completeness.
Even if the description of the vertical arrangement of tags is solely
described by Figure 4B of the ’173 patent Specification, we agree with
Patent Owner that the claim as amended is supported by the original
disclosure. See MTA Reply 8−9; see also Lockwood v. Am. Airlines, Inc.,
107 F.3d 1565, 1572 (Fed. Cir. 1997) (explaining that the necessary support
may be provided through the “words, structures, figures, diagrams, formulas,
etc., that fully set forth the claimed invention”).
4. Responsiveness to a Ground of Unpatentability Involved in the Trial
37 C.F.R. § 42.121(a)(2)(i) specifies that a motion to amend may be
denied where it “does not respond to a ground of unpatentability involved in
the trial.” As stated supra in Section IV.C., with regard to the 516 IPR, the
asserted grounds rely primarily on Zuckerberg in combination with
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Rothmuller, and with regard to the 528 IPR, the asserted grounds rely
primarily on MacLaurin. Patent Owner contends that the amendments
respond to the Zuckerberg grounds because the reference does not disclose
the newly added vertical arrangement of tags. MTA 13. And with regard to
MacLaurin, Patent Owner attempts to distinguish the proposed claim on the
basis that MacLaurin does not teach a vertical tag list or interspersed tags.
Id. at 14−15. We agree that this requirement is met.
5. Conclusion
Patent Owner’s motion meets the statutory requirements of 35 U.S.C.
§ 316(d) and the requirements of 37 C.F.R. § 42.121.
D. ANALYSIS – PATENTABILITY OF SUBSTITUTE CLAIMS
We analyze the proposed substitute claims and have determined that
Petitioner has proven, by a preponderance of the evidence, that these
proposed substitute claims are unpatentable. We focus on the arguments and
theories raised by Petitioner. Specifically, we focus our analysis on
Petitioner’s asserted combination of Zuckerberg and Rothmuller and the
explanation of the asserted mapping discussed in the 516 IPR, which are
dispositive of unpatentability of the proposed substitute claims, as we
determine below. MTA Opp. 2−11, 14−16. Proposed independent claims
21, 25, and 29 recite substantially similar amended limitations, and thus the
analysis below equally applies to all the proposed substitute independent
claims. We further note that proposed substitute dependent claims are
unchanged other than modifying dependency.
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1. Limitations Concerning the Photograph Tag
The proposed substitute claim recites three limitations that pertain to
the photograph tag:
displaying a photograph comprising at least one subject or
object;
receiving a user selection of a location in the photograph
corresponding to the at least one subject or object;
associating at least one of the tags in the tag list with the
at least one subject or object.
MTA, Appendix A (hereinafter “the photograph limitations”). Petitioner
contends, and we agree, that Zuckerberg teaches these limitations. MTA
Opp. 2−4.
Petitioner identifies Figure 5 of Zuckerberg, reproduced below from
Petitioner’s brief.
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Id. at 2. Petitioner provides a partial, and annotated Figure 5 of Zuckerberg
showing highlighted in yellow the instructions to the user to “Click on
people in the photo to tag them.” Id. at 2−3. Annotated Figure 5 also shows
a red box around a region 520, which corresponds to an individual’s face.
Id. In this manner, therefore, Zuckerberg teaches displaying a photograph of
a subject in the user interface of the Facebook online network and allowing
the user to select a location on the photograph, identified as the cross-hatch
shown in Figure 5, corresponding to the face of the person in the
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photograph. Id. at 3−4 (citing Ex. 1003, 8:15−27, Fig. 5; Chatterjee MTA
Decl.11 ¶ 7).
Petitioner further contends that Zuckerberg’s tagging component 340,
after receiving a selection of the tag in the tag list, associates the tag with the
selected region of the photo. Id. at 4 (citing Ex. 1003, 7:54−57 8:66−9:1;
Chatterjee MTA Decl. ¶ 8). We agree with Petitioner that Zuckerberg
teaches “associating at least one of the tags in the tag list with the at least
one subject or object.”
Patent Owner does not address Petitioner’s contentions with respect to
these limitations. Based on our review of the evidence of record, we find
that Petitioner has shown that Zuckerberg discloses the above identified
photograph limitations.
2. Limitations Concerning the Vertical Tags List
The proposed substitute claim recites the following “vertical tags list”
limitations:
wherein the tags in the tag list are displayed in a vertical
list, and wherein:
a first tag from a first tag source is displayed above
a second tag from a second tag source; and
the second tag from the second tag source is
displayed above a third tag from the first tag source;
MTA, Appendix A. Petitioner contends that the combination of Zuckerberg
and Rothmuller teaches these limitations. MTA Opp. 5−11, 14−16. For

11 The Chatterjee Declaration in support of the motion is filed as Exhibit
1027 in both proceedings.
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instance, Petitioner argues that Zuckerberg’s tag list is a vertical tag list. Id.
at 15 (citing Ex. 1003, Fig. 5). Petitioner also argues that the combination of
Zuckerberg and Rothmuller renders obvious the arrangements of tags in a
vertical list because a person of ordinary skill in the art would have
understood there is a benefit of a more flexibly-organized tag list, where tags
could be displayed in any order, without the constraints of a separate list for
each type. Id. (citing 516 Pet. 44−45; 516 Chatterjee Decl. ¶ 102). This is
the same rationale provided for the combination of references already
discussed in the 516 IPR analysis above, in Section V.C.2.b., in connection
with the second displaying step in which Rothmuller is relied on for the
disclosure of the tag icons as an improvement of Zuckerberg’s list of
previously used tags. We do not repeat that argument here save for
reiterating the conclusion that our analysis of the combination of Zuckerberg
and Rothmuller is equally applicable to the proposed substitute claim.
Therefore, we agree with Petitioner that it would have been obvious to
combine the teachings of Zuckerberg and Rothmuller, which would result in
a vertical list of tags (as Zuckerberg discloses the vertical list), each tag
having an icon indicative of the tag source.
The only remaining issue to resolve is whether the arrangement of
icons as recited would have been obvious as asserted by Petitioner.
According to Petitioner, Rothmuller already teaches the listing of tags in the
recited order, as shown in annotated Figure 9A of Rothmuller’s Provisional,
reproduced below. MTA Opp. 6.
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The portion of Figure 9A of Rothmuller’s Provisional (Ex. 1005), which also
appears in Figure 1 of Rothmuller (Ex. 1004), illustrates two tags
highlighted in yellow (“Landscapes” and “Animals”) and one tag
highlighted in blue (“Lori”). Id. Petitioner argues that these tags are listed
in a vertical list and that the tags in yellow highlight are from a first source
(indicated by a particular tag icon) and the tag in blue highlight is from a
second source (indicated by a different tag icon). Id. at 7. The order of the
displayed tags is the same as recited in the proposed substitute claims: (1)
tag from first source; (2) tag from second source; and (3) another tag from
first source. Id. Petitioner provides further arguments for why it would have
been obvious to display tags and corresponding tag icons in a single vertical
list. However, the proposed claims amendment does not limit the list to a
single column. Rather, the claim language addresses the order of tags and
their orientation on the screen. Thus, we see no need to address the further
contention of whether the combination of Zuckerberg and Rothmuller would
have rendered obvious the display of the tags in a single vertical list.
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Patent Owner argues that the proposed substitute claims “further
highlight” the lack of a tag type indicator “indicative of a tag source” as
required by the original claims of the ’173 patent. MTA Reply 3. We find
that argument unpersuasive. As stated in connection with the original
claims, the combination of Zuckerberg and Rothmuller renders obvious the
display of a tag list with a tag icon for each tag indicating the source of the
tag. See supra Section V.C.2.b. (addressing the “Second Displaying Step”).
Patent Owner further argues that Zuckerberg lacks multiple “tag
sources” and that the horizontal line is not indicative of a tag source. Id. at
4. We are not persuaded by this argument for the reasons already stated in
connection with the original claims. See supra Section V.C.2.a.(1)
(addressing the “Single Tag Source” argument). Nevertheless, Patent Owner
goes further and argues that “even if these features were disclosed in
Zuckerberg or obvious in light of other prior art (they are not), the only
solution in Zuckerberg for distinguishing between the alleged ‘sources’ is to
separate the tags from each alleged ‘source’ using a horizontal line.” Id.
(citing Ex. 1003, Fig. 5). We are not persuaded by this argument either. As
stated before, Petitioner’s combination of references relies on the
modification of Zuckerberg’s vertical list to include tag icons instead of
using the separating line to distinguish between tag sources, which we have
found Zuckerberg teaches. This argument regarding Zuckerberg’s
disclosure of the separating line as the only option for displaying multiple
tag sources ignores the actual asserted combination of teachings. “Non-
obviousness cannot be established by attacking references individually
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where the rejection is based upon the teachings of a combination of
references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)).
Patent Owner also addresses the Preliminary Guidance we issued in
this proceeding at the request of Patent Owner. PG 2. We stated that,
consistent with Petitioner’s assertion that the added limitation concerning the
order of displayed tags had no patentable weight, the particular arrangement
of three tags in a vertical list was a predictable variation of arrangements of
data in a list. Id. at 9. Petitioner stresses its position that the mere
happenstance of three tags displayed in the recited order is a nonobvious
distinction in the prior art, consistent with our observation that the
arrangement is a predictable variation of arrangement of data. MTA Sur-
Reply 5. Expressing disagreement with our view on this point, Patent
Owner merely focuses again on Zuckerberg’s alleged lack of disclosure of
multiple tag sources and that a horizontal line cannot be used to intersperse
tags from different sources within that list. MTA Reply 5. But these
arguments attempt to distinguish Zuckerberg’s teachings alone, without the
asserted benefit of Rothmuller’s teachings. Again, Patent Owner
unpersuasively attacks the reference individually.
Addressing Rothmuller alone, Patent Owner next argues that the
reference lacks disclosure of multiple tag sources, and that the category
icons are not “indicative of tag sources.” Id. at 7. This argument, however,
goes to the combinability of Zuckerberg’s teachings with those of
Rothmuller as discussed for the original claims. See supra Section V.C.2.b.
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Patent Owner does not address the thrust of Petitioner’s arguments in
opposition to the motion to amend, which rely on the combination of
Zuckerberg and Rothmuller as asserted for the original claim, with the
additional teaching of the knowledge evident in Rothmuller to display tags
in an interspersed order. Patent Owner’s argument that Zuckerberg’s tags
could not be re-arranged is not persuasive, for the reasons discussed in
connection with the original claims at pages 42−52 (portions of Section
V.C.2.b addressing Patent Owner’s arguments against the flexibility of
displaying the tags in any order). For example, we note that Petitioner has
shown the benefit of flexibly organizing the list to display tags in any order
and doing away with the Zuckerberg separator. See, e.g., MTA Opp. 15
(citing 516 Pet. 44−45; 516 Chatterjee Decl. ¶¶ 102, 112).
Having reviewed Petitioner’s opposition to the motion to amend, and
the cited evidence and references in the record, and in light of Patent
Owner’s arguments in response, we determine that Petitioner has met its
burden of showing that the proposed substitute claims would have been
unpatentable. We find that the limitations added in the proposed substitute
claims are taught by Zuckerberg and Rothmuller, and, in light of the
unpatentability of the original claims over Zuckerberg, Rothmuller, and
MacLaurin, the added teachings do not overcome Petitioner’s showing of
unpatentability. Thus we deny Patent Owner’s Contingent Motion to
Amend.12

12 Should Patent Owner wish to pursue amendment of the challenged claims
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3. Conclusion
We find that although Patent Owner’s Contingent Motion to Amend
meets the statutory and procedural requirements, Petitioner has proven, by a
preponderance of the evidence, that the proposed substitute claims are
unpatentable over a combination of Zuckerberg, Rothmuller, and
MacLaurin. Thus, we deny Patent Owner’s Contingent Motion to Amend.
VII. CONCLUSION
In summary:
Claims 35
U.S.C. §
Reference(s)/Basis Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
1, 2, 4,
6−8, 10,
12−14,
16, 18
103 Zuckerberg13
1, 2, 4,
6−8, 10,
12−14,
16, 18
103 Zuckerberg,
Rothmuller,
MacLaurin
1, 2, 4, 6−8,
10, 12−14, 16,
18

in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2)
(2019).
13 As explained above, we do not reach this 516 IPR ground because
Petitioner withdrew the ground post-institution. See supra n.5.
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Claims 35
U.S.C. §
Reference(s)/Basis Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
10, 16 103 Zuckerberg,
Rothmuller,
MacLaurin,
Ortega14

1, 2, 4,
6–8, 12–
14, 18
103 Zuckerberg,
Plotkin,
MacLaurin15

10, 16 103 Zuckerberg,
Plotkin,
MacLaurin,
Ortega16

1, 2, 4,
6–8, 10,
12–14,
16, 18
103 Rothmuller,
Matthews17

10, 16 103 Rothmuller,
Matthews,
Ortega18

1, 2, 4,
6−8, 10,
12−14,
16, 18
103 MacLaurin 1, 2, 4, 6−8,
10, 12−14, 16,
18

2, 8, 10,
14, 16
103 MacLaurin, Ortega 2, 8, 10, 14,
16

14 As explained above, we do not reach this 516 IPR ground because the
challenge based on the Zuckerberg-Rothmuller-MacLaurin ground is
dispositive of all the challenged claims. See SAS, 138 S. Ct. at 1359.
15 See supra n.14.
16 See supra n.14.
17 See supra n.14.
18 See supra n.14.
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Claims 35
U.S.C. §
Reference(s)/Basis Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
1, 2, 4,
6–8, 10,
12–14,
16, 18
103 MacLaurin,
Rothmuller19

2, 8, 10,
14, 16
103 MacLaurin,
Rothmuller,
Ortega20

1, 2, 4,
6−8, 10,
12−14,
16, 18
103 MacLaurin,
Plotkin21

2, 8, 10,
14, 16
103 MacLaurin,
Plotkin, Ortega22

Overall
Outcome
1, 2, 4, 6−8,
10, 12−14, 16,
18

19 As explained above, we do not reach this 528 IPR ground because the
challenge based on the MacLaurin ground is dispositive of all the challenged
claims. See SAS, 138 S. Ct. at 1359.
20 As explained above, we do not reach this 528 IPR ground because the
challenge based on the MacLaurin and MacLaurin-Ortega grounds are
dispositive of the same challenged claims. See SAS, 138 S. Ct. at 1359.
21 See supra n.19.
22 See supra n.20.
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Motion to Amend Outcome Claim(s)
Original Claim Cancelled by Amendment
Substitute Claims Proposed in the Amendment 21−32
Substitute Claims: Motion to Amend Granted
Substitute Claims: Motion to Amend Denied
21−32
Substitute Claims: Not Reached

VIII. ORDER
Accordingly, it is hereby:
ORDERED that claims 1, 2, 4, 6–8, 10, 12–14, 16, and 18 of the
’173 patent have been proven to be unpatentable;
FURTHER ORDERED that Patent Owner’s Contingent Motion to
Amend is denied; and
FURTHER ORDERED that because this is a Final Written Decision,
parties to this proceeding seeking judicial review of the Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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PETITIONER:

Heidi L. Keefe
Andrew C. Mace
COOLEY LLP
hkeefe@cooley.com
amace@cooley.com

PATENT OWNER:

James M. Glass
Richard Lowry
John McKee
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
jimglass@quinnemanuel.com
richardlowry@quinnemanuel.com
johnmckee@quinnemanuel.com