PTAB

IPR2016-00717

WHATSAPP INC. v. Triplay, Inc.

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1. Case Identification

  • Case #: IPR2016-____
  • Patent #: 8,874,677
  • Filed: March 6, 2016
  • Petitioner(s): WhatsApp Inc.
  • Patent Owner(s): TriPlay Communications Ltd.
  • Challenged Claims: 1-5, 11-14, and 16-21

2. Patent Overview

  • Title: Messaging System and Method
  • Brief Description: The ’677 patent discloses a messaging system and method for adapting an initial message sent from an originating device for delivery to a destination device. The system adapts the message's format and/or layout based on criteria related to the destination device's capabilities to ensure proper display and interoperability.

3. Grounds for Unpatentability

Ground 1: Claims 1, 2, 11, 13, 14, 16, 17, 20, and 21 are obvious over Coulombe in view of Bellordre and Friedman.

  • Prior Art Relied Upon: Coulombe (Application # 2003/0236892), Bellordre (Application # 2006/0176902), and Friedman (Patent 7,593,991).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the base system of independent claim 1 is taught by Coulombe, which discloses a messaging system that adapts messages (e.g., format, layout, image resolution) to conform to a recipient's terminal capabilities before delivery. The limitation requiring the initial message to include a "video" was argued to be obvious in view of Bellordre, which explicitly teaches a method of processing multimedia messages containing video objects and adapting their size for the recipient's screen. The limitation requiring the conversion to comprise providing a "clickable icon" based on the video was argued to be taught by Friedman, which discloses generating a clickable thumbnail graphic based on a video attachment.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Coulombe's base messaging system with Bellordre's video-handling capability because adding video to messages was a self-evident and powerful enhancement. Further, a POSITA would incorporate Friedman's clickable thumbnail because it was a known and user-friendly method for managing video attachments. All three references are analogous art in the same field of adapting messages for mobile terminals.
    • Expectation of Success: Petitioner asserted that combining these known elements would have been straightforward and predictable, involving the application of conventional techniques to achieve the claimed system without any technological obstacles.

Ground 2: Claims 3, 5, 12, and 19 are obvious over Coulombe, Bellordre, and Friedman, further in view of Meyer and Ito.

  • Prior Art Relied Upon: Coulombe (Application # 2003/0236892), Bellordre (Application # 2006/0176902), Friedman (Patent 7,593,991), Meyer (Cascading Style Sheets: The Definitive Guide (2d ed. 2004)), and Ito (Application # 2003/0084405).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds on Ground 1 to address dependent claims requiring a message layout based on a "template" with a "unique template identifier." Petitioner argued that it was well-known that messages like emails could be HTML documents. Meyer teaches that the layout of an HTML document can be based on an external style sheet (CSS), which functions as a "template." Meyer further teaches that such a style sheet is identified and linked via a URL, which serves as a "unique template identifier." Ito discloses a system where a URI (a form of URL) embedded in a document is used as a key to search a database and retrieve a specific style sheet to apply, thus providing an adapted layout in accordance with the unique identifier.
    • Motivation to Combine: A POSITA would be motivated to use the CSS techniques taught by Meyer to centrally manage styling for messages, creating a consistent look across multiple messages. This was a standard and advantageous practice in web development. Combining Ito’s lookup method was a logical extension to allow for dynamic selection of style sheets, enhancing the adaptability of the messaging system taught by Coulombe.
    • Expectation of Success: The integration of standard, well-documented web technologies like CSS and URL-based lookups into a messaging system would have been a predictable design choice with a high expectation of success.

Ground 3: Claims 4 and 18 are obvious over Coulombe, Bellordre, Friedman, Meyer, and Ito, further in view of Surana.

  • Prior Art Relied Upon: Coulombe (Application # 2003/0236892), Bellordre (Application # 2006/0176902), Friedman (Patent 7,593,991), Meyer (Cascading Style Sheets: The Definitive Guide), Ito (Application # 2003/0084405), and Surana (Application # 2006/0069790).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds on Ground 2 to address claims requiring the selection of an adapted message layout from "one or more predefined adapted message layouts" based on the template identifier and device criteria. Surana teaches a system that replaces an original style sheet with a new one selected from a set of predefined, stored style sheets (i.e., "predefined adapted message layouts"). Surana discloses using a "look-up table" to select the appropriate replacement style sheet based on device properties (e.g., display size, color support). Petitioner argued it would be obvious to use the URL ("unique template identifier") from Meyer/Ito as a key in Surana's look-up table to select the correct predefined layout.
    • Motivation to Combine: A POSITA implementing the template-based system of Ground 2 would be motivated to incorporate Surana’s teachings to create a more robust and flexible adaptation system. Using a look-up table to select from multiple predefined layouts based on both the message template and recipient device capabilities is a logical way to support a wider variety of devices. All references are analogous art focused on adapting content for display on different terminals.
    • Expectation of Success: Adding a look-up table mechanism as taught by Surana to select from predefined style sheets is an incremental, well-understood improvement, and a POSITA would have had a reasonable expectation of success in its implementation.

4. Key Claim Construction Positions

  • "Message": Petitioner proposed the construction "any kind of communication object capable of being exchanged between communication devices." This broad construction was important for the argument that an HTML document, which can be styled with CSS, qualifies as a "message" under the claims.
  • "Template": Petitioner proposed the construction "any kind of predefined user interface related to content and/or layout of transmitted and/or received message." This construction was central to the argument that a standard external CSS file, which defines layout rules, constitutes a "template" as recited in the claims.

5. Relief Requested

  • Petitioner requested institution of an inter partes review (IPR) and cancellation of claims 1-5, 11-14, and 16-21 of the ’677 patent as unpatentable.