PTAB

IPR2022-00210

Atlassian Inc v. Phoji Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Media Messaging Methods, Systems, and Devices
  • Brief Description: The ’149 patent is directed to systems for inserting media data into electronic communications. It describes a cloud-based "Media Messaging Platform" that automatically replaces keywords or symbols in a message with images or other rich media based on user inputs, such as emotional state and recipient contact data.

3. Grounds for Unpatentability

Ground 1: Claims 1-13 are obvious over Gura

  • Prior Art Relied Upon: Gura (WO 2007/080570).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Gura, an international patent application, discloses an enhanced messaging system that meets every limitation of the challenged claims. Gura’s system automatically enhances text messages by inserting media items from a database. Critically, Petitioner contended Gura teaches the core functionality that the patent examiner found missing in the prior art during prosecution: identifying images for insertion based on a combination of the user’s emotion (from "keywords indicating sentiment") and the recipient’s identity (from the message "context"). Gura’s "text enhancement apparatus" located in the cellular network was argued to be the claimed "messaging cloud," its "Image Database" was the claimed database of rich media, and its indexing system—which associates keywords with images based on meaning—was argued to be the claimed "semantic model."
    • Key Aspects: Petitioner emphasized that Gura discloses personalizing an image library, categorizing it based on contact and emotional data, receiving those inputs from a user device, and automatically selecting an image for insertion, thereby mapping directly onto the purported novelty of the ’149 patent.

Ground 2: Claims 1-13 are obvious over Gura in view of Jensen

  • Prior Art Relied Upon: Gura (WO 2007/080570) and Jensen (a 2010 book titled “Multidimensional Databases and Data Warehousing”).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was presented as an alternative in the event the term "semantic model" is narrowly construed to require a specific multidimensional lookup table, similar to what is shown in Figure 3 of the ’149 patent. While Petitioner argued Gura itself suggests such a structure, Jensen explicitly discloses multidimensional "cube" data structures for organizing and analyzing data in a database. Jensen’s teachings provide the specific implementation of the multidimensional data structure for the semantic model.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) implementing Gura's system, which already required organizing media into categories based on context and keywords, would combine its teachings with a fundamental textbook like Jensen to find an efficient and well-known method for database organization. The use of a data cube would be an obvious design choice for simple organization and efficient data searching.
    • Expectation of Success: Petitioner argued there would be a high expectation of success, as multidimensional data structures were well-understood and rudimentary by the patent's priority date.

Ground 3: Claims 1-13 are obvious over Gura in view of Fifield

  • Prior Art Relied Upon: Gura (WO 2007/080570) and Fifield (Application # 2007/0033212).

  • Core Argument for this Ground:

    • Prior Art Mapping: As a further alternative for a narrow "semantic model" construction, Petitioner asserted that the ’212 application to Fifield explicitly discloses a "semantic model" composed of multiple tables, each with multiple fields, which provides the same multidimensional lookup functionality. Combining the systems would result in Gura's messaging functionality using Fifield’s explicit semantic model structure.
    • Motivation to Combine: A POSITA would combine Gura with Fifield because Fifield is analogous art that addresses the same problem of organizing database information based on meaning. The benefits identified in Fifield—such as increased quality, decreased time-to-market, and a more user-friendly interface—would have motivated a POSITA to implement Gura’s database indexing using Fifield’s semantic model generator.
    • Expectation of Success: Success would be reasonably expected, as Fifield’s system is software-based and would have been a simple data structure for a POSITA to develop using common tools.

  • Additional Grounds: Petitioner asserted additional obviousness challenges specifically for claim 7 based on combinations including Gura, Jensen, Fifield, and Le Bodic (a 2005 book on mobile messaging). These grounds argued that if claim 7 is construed to require sending an offline user a link to view media content, Le Bodic explicitly taught this SMS fallback functionality for legacy devices in existing MMS networks.

4. Key Claim Construction Positions

  • "Media Messaging Platform" (claims 1, 10): Petitioner proposed this term be construed as "a cloud-based platform for modifying messaging or texting services by personalizing messages or texts with multimedia inserts." This construction was based on the patent’s description of the MMP as a cloud-based communication platform.
  • "semantic model" (claims 1, 10): Petitioner proposed this term be construed as "a manner of organizing a database based, at least in part, on the meaning of objects in the database." This construction was argued to be consistent with the ordinary meaning in the art and the patent’s examples, where character strings like ":)" are associated with images that have the same meaning (a smile). This construction supported the primary ground that Gura's indexing system met the limitation.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv would be inappropriate. The core arguments were that the petition was filed very early in the co-pending district court litigation—only twelve weeks after service of the complaint and well before any scheduling order, discovery, or claim construction proceedings. Petitioner also stated it would stipulate not to pursue the same invalidity grounds in district court if the inter partes review (IPR) was instituted, thereby mitigating concerns of duplicative efforts and conflicting decisions.

6. Relief Requested

  • Petitioner requested the institution of an IPR and the cancellation of claims 1-13 of the ’149 patent as unpatentable.