WhatsApp, Inc. v. TriPlay, Inc., 111418 FEDFED, 2017-2549

Docket Nº:2017-2549, 2017-2551
Opinion Judge:Dyk, Circuit Judge.
Party Name:WHATSAPP, INC., FACEBOOK, INC., Appellants v. TRIPLAY, INC., Appellee
Attorney: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 represented by Barry Schindler.
Judge Panel:Before Dyk, Wallach, and Taranto, Circuit Judges.
Case Date:November 14, 2018
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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WHATSAPP, INC., FACEBOOK, INC., Appellants

v.

TRIPLAY, INC., Appellee

Nos. 2017-2549, 2017-2551

United States Court of Appeals, Federal Circuit

November 14, 2018

This disposition is nonprecedential.

Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2016-00717, IPR2016-00718.

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 represented by Barry Schindler.

Before Dyk, Wallach, and Taranto, Circuit Judges.

Dyk, Circuit Judge.

WhatsApp, Inc. and its parent, Facebook, Inc., ("petitioners") 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 communication 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, including, . . . 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 containing pictures and video.

Independent claim 1 of the '677 patent is representative: 1. A method comprising:

receiving, by a messaging system, an initial message 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 indicative of at least one receiver associated with the initial message, wherein the initial message includes a video;

obtaining, by the messaging system, data indicative 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 displaying 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 initial message and

ii) clickable into an adapted version of the video, wherein the adapted version of the video is adapted to the displaying capabilities of the destination communication 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 communication 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 (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...

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