Federal Circuit Vacates PTAB Decision That Video Messaging Patent Claims Were Nonobvious

On Wednesday, November 14th, the Court of Appeals for the Federal Circuit issued a nonprecedential decision in WhatsApp, Inc. v. TriPlay, Inc., which vacated a final written decision terminating an inter partes review (IPR) proceeding and remanded the case back to the Patent Trial and Appeal Board (PTAB). The Federal Circuit panel of Circuit Judges Timothy Dyk, Evan Wallach and Richard Taranto determined that the PTAB’s decision to uphold patent claims challenged by WhatsApp as nonobvious wasn’t supported by substantial evidence and that the PTAB didn’t properly consider expert testimony provided by WhatsApp.

The patent-at-issue in this case is U.S. Patent No. 8874677, titled Messaging System and Method and issued to TriPlay in October 2014. It claims a method of cross-platform messaging that includes receiving an initial message including a video sent by an originating communication device to a destination communication device, obtaining data indicative of displaying capabilities of the destination device, enabling conversion of the initial message into an adapted message based on the displaying capabilities of the destination device where the conversion contains a clickable icon, and facilitating delivery of the adapted message. The resulting invention provides various advantages in electronic cross-platform messaging including ubiquitous messaging between different types of communication devices via different communication protocols and preserving the user’s messaging experience across a spectrum of devices.

TriPlay’s ‘677 patent was one of a series of four patents asserted against WhatsApp in a patent infringement case filed in October 2013 in the District of Delaware. In March 2016, WhatsApp filed two petitions for IPR at the PTAB and the PTAB ended up instituting IPRs on 12 of the total 21 claims found in the ‘677 patent. In both cases, the PTAB instituted the trials after finding that the claims were likely unpatentable as obvious in light of a combination of three pieces of prior art asserted by WhatsApp:

• U.S. Patent Application No. 20030236892, System for Adaptation of SIP Messages Based on Recipient’s Terminal Capabilities and Preferences (“Coulombe”)
• U.S. Patent Application No. 20060176902, Method of Processing a Multimedia Message, a Storage Medium, and an Associated Processing System (“Bellordre”)
• U.S. Patent No. 7593991, Systems and Methods for Processing Attachments Associated with Electronic Messages (“Friedman”)

The PTAB terminated both IPR proceedings by finding that, while all of the elements of the challenged claims were disclosed by the prior art references, the challenged claims were not obvious because WhatsApp didn’t sufficiently explain its reasoning for combining the message adaptation system in Coulombe with the video adaptation and delivery processes disclosed by Bellordre. WhatsApp had argued that a person of ordinary skill in the art would have been motivated to combine the video objects of Bellordre with Coulombe’s method because video was more powerful, but the PTAB determined that WhatsApp didn’t provide evidence for why this combination would have made common sense.

“This court has in some cases been hesitant to use common sense to supply a missing limitation, particularly where the assertion is conclusory,” the Federal Circuit’s decision reads, citing multiple cases to support this fact, including Arendi S.A.R.L. v. Apple, 832 F.3d 1355 (2016). However, this case was different. Here the prior art references that supplied all of the claim limitations and the Federal Circuit found that testimony from expert witnesses on both sides supported the idea that video and multimedia content was better at conveying more powerful messages than text or still photos.

The Federal Circuit panel also considered evidence from articles predating the August 2005 priority date of the ‘677 patent which indicates increasing consumer demand for video messages. TriPlay had argued that these articles shouldn’t be considered as evidence because they were submitted by WhatsApp in a reply filed after the institution of the IPRs, but the Federal Circuit didn’t find this argument persuasive. In vacating the PTAB’s decision of nonobviousness and remanding for further proceedings, the Federal Circuit ordered the PTAB to address TriPlay’s arguments that WhatsApp failed to establish a motivation to combine Friedman, which includes the use of a clickable thumbnail graphic, with Coulombe and Bellordre over WhatsApp’s expert testimony that the use of suck a clickable icon provides advantages that would have been obvious even to those without the experience of a skilled artisan.