Whatsapp, Inc. v. Triplay, Inc. ( 2018 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
WHATSAPP, INC., FACEBOOK, INC.,
Appellants
v.
TRIPLAY, INC.,
Appellee
______________________
2017-2549, 2017-2551
______________________
Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
IPR2016-00717, IPR2016-00718.
______________________
Decided: November 14, 2018
______________________
HEIDI LYN KEEFE, Cooley LLP, Palo Alto, CA, argued
for appellants. Also represented by REUBEN HO-YEN
CHEN, MARK R. WEINSTEIN.
MICHAEL ANTHONY NICODEMA, Greenberg Traurig
LLP, Florham Park, NJ, argued for appellee. Also repre-
sented by BARRY SCHINDLER.
______________________
Before DYK, WALLACH, and TARANTO, Circuit Judges.
2 WHATSAPP, INC. v. TRIPLAY, INC.
DYK, Circuit Judge.
WhatsApp, Inc. and its parent, Facebook, Inc., (“peti-
tioners”) appeal the Patent Trial and Appeal Board’s (“the
Board”) Final Decisions in IPR Nos. 2016-00717 and
2016-00718. The Board declined to find claims of U.S.
Patent No. 8,874,677 (“the ’677 patent”), owned by
TriPlay, Inc. (“TriPlay”), unpatentable as obvious. We
vacate and remand.
BACKGROUND
The ’677 patent, entitled “Messaging System and
Method,” is directed to an electronic messaging system
that addresses the problem of “cross-platform messaging,”
wherein messaging devices have “different communica-
tion and displaying capabilities and may use different
communication protocols.” ’677 patent, Abstract; id. col.
11 ll. 53–56. The specification states that such messages
may be “any kind of communication objects capable to be
exchanged between communication devices,” id. col. 10 ll.
43–46, and that the messaging system of the invention “is
configured to support a variety of message formats, in-
cluding, . . . video format (e.g. MPEG family, WMV family,
3GPP, etc.),” id. col. 12 ll. 16–19. The claims would, for
example, cover an embodiment in which a PC user and
cell phone user can send messages to one another contain-
ing pictures and video.
Independent claim 1 of the ’677 patent is representa-
tive:
1. A method comprising:
receiving, by a messaging system, an initial mes-
sage sent by an originating communication device
to a destination communication device, the initial
message being characterized, at least, by message
format, an initial message layout and data indica-
tive of at least one receiver associated with the in-
WHATSAPP, INC. v. TRIPLAY, INC. 3
itial message, wherein the initial message in-
cludes a video;
obtaining, by the messaging system, data indica-
tive of displaying capabilities of the destination
communication device;
before delivery to the destination communication
device associated with the at least one receiver,
enabling, by the messaging system, conversion, in
accordance with a criterion related to the display-
ing capabilities of the destination communication
device, of the initial message into an adapted
message, wherein the conversion comprises:
a) providing, by the messaging system, a
clickable icon:
i) based on the video from the ini-
tial message and
ii) clickable into an adapted ver-
sion of the video, wherein the
adapted version of the video is
adapted to the displaying capabili-
ties of the destination communica-
tion device, and
b) determining, by the messaging system,
an adapted message layout, comprising
the clickable icon; and
facilitating, by the messaging system, delivery of
the adapted message to the destination communi-
cation device.
’677 patent, col. 23 ll. 23–51.
On March 6, 2016, WhatsApp filed two petitions
for inter partes review (“IPR”) of claims 1–21 of the ’677
patent. The PTAB instituted IPR based on the first
petition as to claims 1, 2, 11, 13, 14, 16, 17, 20, and 21
4 WHATSAPP, INC. v. TRIPLAY, INC.
(IPR No. 2016-00717), and based on the second petition as
to claims 6, 7, and 15 (IPR No. 2016-00718). In both
institution decisions, the Board concluded that the claims
were likely unpatentable as obvious over three pieces of
prior art: U.S. Patent Application No. 2003/0236892
(“Coulombe”), U.S. Patent Application No. 2006/0176902
(“Bellordre”), and U.S. Patent No. 7,593,991 (“Friedman”).
Coulombe, entitled “System for Adaptation of SIP
Messages Based on Recipient’s Terminal Capabilities and
Preferences,” is directed to solving the same problem as
the ’677 patent and does so generally in the same way as
the ’677 patent. J.A. 222. The Coulombe application
teaches a messaging system relating to “interoperability
between terminal devices using session initiation protocol
(SIP) messages and, more particularly, to multimedia
content adaptation.” J.A. 225 ¶ [0001]. As with the ’677
patent, Coulombe recognizes the importance of interoper-
ability, given the “wide diversity of terminal characteris-
tics: display size and resolution, available memory,
formats supported, etc.” J.A. 225 ¶ [0002]. Thus, the
system described in Coulombe includes a “Capability
Negotiation Manager” and a “Message Adaptation En-
gine,” which respectively “resolv[e] terminal capability
information” and “manipulat[e] or modif[y] . . . message
content based on the terminal capabilities, user prefer-
ences, network conditions, or any characteristics of the
user, his terminal or his environment.” J.A. 228
¶¶ [0059], [0063].
There is no dispute that Coulombe discloses a majori-
ty of the claim limitations, with the exception of two
limitations: adaptation of video objects (a limitation
petitioners find in Bellordre) and clickable icons (a limita-
tion petitioners find in Friedman). Together, Coulombe,
Bellordre, and Friedman disclose all the limitations of the
’677 patent.
WHATSAPP, INC. v. TRIPLAY, INC. 5
Bellordre is directed to solving the same general prob-
lem as Coulombe and the ’677 patent but solves it in a
different way. However, Bellordre, unlike Coulombe,
discloses a method of processing “video objects.” J.A. 238
¶¶ [0003]–[0004].
On August 28, 2017, the Board issued final decisions
in both IPRs declining to find the claims obvious. The
Board explained that while all elements of the claims
were disclosed by the cited prior art references, the
“[p]etitioner has not explained sufficiently its reasoning
for the combination of Coulombe’s message adaptation
system with Bellordre’s video adaptation and delivery
processes.” J.A. 16. The Board’s decision addressed only
the motivation to combine Coulombe with Bellordre; the
Board did not address the motivation to combine Fried-
man with Coulombe and Bellordre.
As to the Coulombe and Bellordre combination, the
petitioners’ theory was that one skilled in the art would
have been motivated to combine the video objects of
Bellordre with the method of Coulombe because video was
“more powerful.” J.A. 50. The Board found the petition-
ers’ “ha[d] not provided the necessary reasoned analysis
and evidentiary support for the assertion that the incor-
poration of a video object for adaptation and delivery by
Coulombe’s system would have been ‘common sense.’”
J.A. 17–18. The Board stated that the petitioners “ha[d]
not explained with reasoning or supporting evidence why
a person of ordinary skill in the art, or a layperson, would
consider video to be ‘more powerful’ than text or still
photos.” J.A. 18. Thus, the Board concluded that the
petitioners and their expert’s “comparison of televisions to
text and photos is too simplistic and general, and is not
directed to the particular technology at issue.” J.A. 21.
Although the claims challenged in the two IPRs were
different, the reasons given by the Board for finding
nonobvious the claims at issue were largely identical.
6 WHATSAPP, INC. v. TRIPLAY, INC.
The petitioners appeal. This court has jurisdiction
pursuant to 35 U.S.C. § 141(c) and 28 U.S.C.
§ 1295(a)(4)(A).
DISCUSSION
We review the Board’s legal conclusions de novo and
its factual findings for substantial evidence. Redline
Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 449
(Fed. Cir. 2015). A claim is unpatentable for obviousness
where “the differences between the subject matter sought
to be patented and the prior art are such that the subject
matter as a whole would have been obvious at the time
the invention was made to a person having ordinary skill
in the art to which said subject matter pertains.” 35
U.S.C. § 103(a) (2006); accord KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 406 (2007). Obviousness is a question
of law based on underlying factual findings. Graham v.
John Deere Co., 383 U.S. 1, 17–18 (1966); K/S HIMPP v.
Hear–Wear Techs., LLC, 751 F.3d 1362, 1364 (Fed. Cir.
2014).
As part of the obviousness inquiry, we consider
“whether a person of ordinary skill in the art would have
been motivated to combine the prior art to achieve the
claimed invention and whether there would have been a
reasonable expectation of success in doing so.” DyStar
Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick
Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006); see also KSR,
550 U.S. at 418 (“[I]t can be important to identify a reason
that would have prompted a person of ordinary skill in
the relevant field to combine the elements in the same
way the claimed new invention does.”).
In KSR, the Supreme Court instructed courts to take
a more “expansive and flexible approach” in determining
whether an invention was obvious at the time it was
made. 550 U.S. at 415. In doing so, the Court noted that
“common sense . . . can be important to identify a reason
that would have prompted a person of ordinary skill in
WHATSAPP, INC. v. TRIPLAY, INC. 7
the relevant field to combine elements in the way the
claimed new invention does.” Id. at 418; see also Arendi
S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 (Fed. Cir.
2016) (affirming that courts should “consider common
sense, common wisdom, and common knowledge in ana-
lyzing obviousness”).
This court has in some cases been hesitant to use
common sense to supply a missing limitation, particularly
where the assertion is conclusory. See Arendi, 832 F.3d at
1361, 1366 (declining to apply common sense to supply
missing limitation); K/S HIMPP, 751 F.3d at 1365–66
(same); Mintz v. Dietz & Watson, Inc., 679 F.3d 1372,
1377–78 (Fed. Cir. 2012) (same). But see Perfect Web
Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1330–31
(Fed. Cir. 2009) (common sense to repeat e-mail distribu-
tion steps where there existed a goal of reaching a certain
number of people).
But, as KSR suggests, common sense has frequently
been used to support a motivation to combine. See, e.g.,
Western Union Co. v. MoneyGram Payment Sys., Inc., 626
F.3d 1361, 1369–70 (Fed. Cir. 2010) (common sense to add
electronic transaction device from prior art system where
“such a transition was commonplace in the art”); Ball
Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc.,
555 F.3d 984, 991–93 (Fed. Cir. 2009) (common sense to
combine features that would increase the distance be-
tween candle holder and table where there existed a
concern with scorching the supporting surface); see also
Cimline, Inc. v. Crafco, Inc., 413 F. App’x 240, 245–46
(Fed. Cir. 2011) (non-precedential) (common sense to
include a powered conveyor belt).
Here the parties agree that the prior art references
disclose all the claim limitations, and common sense is
argued only to supply a motivation to combine the teach-
ings of Coulombe and Bellordre. Petitioners in this case
presented undisputed evidence that video is sometimes a
8 WHATSAPP, INC. v. TRIPLAY, INC.
more powerful medium than text or still photographs and
provided supporting expert testimony to that effect.
Petitioners’ expert, Mr. Klausner, testified that “people
have long understood that video information (such as
television and motion pictures) can provide a more power-
ful message than text or still photos.” J.A. 163 ¶ 64.
TriPlay’s expert agreed that “MMS is more powerful
because you could actually include multimedia content
with the message.” J.A. 957, 48:22–25. The undisputed
record also established that consumers valued video. At
oral argument, TriPlay again agreed that “people value
video in some contexts.” Oral Arg. at 14:10–14:20.
Petitioners submitted several articles predating the
priority date of the ’677 patent (August 2005), which
illustrate consumer demand for such functionality. 1 For
1 TriPlay argues that we should not consider this
evidence because it was first presented in the petitioners’
reply before the Board. See Intelligent Bio-Sys., Inc. v.
Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir.
2016). We do not find this argument persuasive. As an
initial matter, the petitioners appear to have properly
raised this evidence in response to arguments made by
TriPlay’s expert after institution. And in any event, “it is
incumbent upon the party complaining of some procedural
violation—such as the inclusion of improper rebuttal in a
reply brief—to first raise the issue below.” Securus
Techs., Inc. v. Global Tel*Link Corp., 685 F. App’x 979,
985 (Fed. Cir. 2017) (non-precedential) (citing Belden Inc.
v. Berk-Tek LLC, 805 F.3d 1064, 1081 (Fed. Cir. 2015)).
Because TriPlay did not argue before the Board that
petitioners raised new arguments in their reply and failed
to “avail[] itself of the procedures for filing a sur-reply, a
motion to strike, or a conference call to challenge th[e]
allegedly improper argument,” we see no reason to enter-
tain such argument now. Id.
WHATSAPP, INC. v. TRIPLAY, INC. 9
example, the petitioners cited an article indicating that,
prior to 2005, consumers “want[ed] more news on the
fly—two way communications, full text stories, picture
displays and, increasingly, video.” J.A. 982; see also J.A.
975 (“And you thought your camera phone was cool – Yet
taking photos with mobile phones is so last year – the
excitement now is video.”). Petitioners also pointed to
various articles indicating that even before the priority
date, major mobile carriers and mobile-device manufac-
turers—including Verizon, AT&T, Sprint, T-Mobile, and
Samsung—were providing consumers video-messaging
capability. There was no contrary evidence. Given the
advantages of video as a powerful medium and consumer
desire for video, it would have been common sense to
include the video objects from Bellordre in the processing
system of Coulombe. We conclude that the Board’s con-
trary conclusion is not supported by substantial evidence.
Finally, although the Board did not rely on this theo-
ry, TriPlay argues that there would have been no motiva-
tion to combine Coulombe and Bellordre because
Coulombe already discloses video-messaging capability.
But Coulombe’s sole reference to video describes “video
calls,” i.e., streaming video, J.A. 228 ¶ [0069], whereas
Bellordre discusses the use of “encapsulated or video
objects,” J.A. 1990, 113:23–24. As both parties’ and their
experts agree, streaming video and video objects are
distinct. Coulombe’s disclosure of video relates to the sort
of live, streaming video communication associated with
video calls or a television broadcast. The video objects of
the invention, on the other hand, can be sent as video that
can be watched at any time. Given these differences,
there is no basis to find that the disclosure of streaming
video in Coulombe would have dissuaded the inclusion of
video objects in Coulombe.
Despite our conclusion that there was a motivation to
combine the messaging system of Coulombe with the
video of Bellordre, we note that the Board did not express-
10 WHATSAPP, INC. v. TRIPLAY, INC.
ly consider TriPlay’s alternative bases for finding that the
petitioners had not carried their burden of proving un-
patentability of the instituted claims. Specifically, the
Board has not yet addressed TriPlay’s arguments that the
petitioners have failed to establish a motivation to com-
bine Friedman with Coulombe and Bellordre.
In this respect, petitioners presented expert testimony
from Mr. Klausner that “the advantage of Friedman’s
clickable thumbnail graphic is ‘self-explanatory’ – it
‘makes it possible to view a video object by clicking on an
icon.’” J.A. 940–41 ¶ 45. He explained that this was a
“simple combination” that “would . . . not have required
even the experience of a skilled artisan to appreciate the
clear benefits of this combination.” Id. Mr. Klausner
further testified that combining the clickable icons of
Friedman with Coulombe and Bellordre would have been
viewed as “particularly advantageous” because “one of
ordinary skill in the art would have appreciated that
pictorial icons . . . . allow a message recipient to make a
more informed decision of whether he or she wants to
download the video from the messaging server, thereby
conserving device and network resources.” Id. ¶ 48. The
Board has not addressed this testimony.
Accordingly, we vacate the Board’s nonobviousness
decision and remand for further consideration of the
motivation to combine the clickable icons of Friedman
with Coulombe and Bellordre.
VACATED AND REMANDED
COSTS
Costs to appellants.