A panel of administrative patent judges (APJs) has instituted two IPR proceedings filed by Facebook and its subsidiaries WhatsApp and Instagram. Both IPRs challenge the same 12 claims of BlackBerry’s U.S. Patent No. 8279173, User Interface for Selecting a Photo Tag.
The ‘173 patent, which is directed to a user interface for selecting tags to associate with photos on social networking or photo sharing applications, has been asserted by BlackBerry against Facebook in a lawsuit.
In the lawsuit, which includes allegations that Facebook and its subsidiaries infringed upon claims of seven BlackBerry patents, BlackBerry accused Facebook and Instagram of infringing and actively inducing infringement of the ‘173 patent. BlackBerry alleged that the photo tagging service offered by defendants met all limitations of claim 1 of the ‘173 patent including a method of selecting a photo tag for a tagged photo, displaying a tag list matching a search string and displaying type indicators for each tag.
Facebook should have known of the ‘173 patent as early as March 2014, when the USPTO cited the patent to the company during prosecution of its own patent application. The photo tagging service available through Facebook and Instagram allegedly infringed upon claims 1, 2, 7, 8, 13 and 14 of the ‘173 patent.
If either of the IPRs filed by Facebook are successful, each of the ‘173 patent claims asserted by BlackBerry will be invalidated on Section 103 obviousness grounds. In IPR2019-00516, Facebook asserts prior art challenges that primarily rely on combinations involving either U.S. Patent No. 7945653, Tagging Digital Media (“Zuckerberg”) or U.S. Patent No. 7415662, Digital Media Management Apparatus and Methods (“Rothmuller”).
In instituting the IPR, the APJ panel was persuaded that Zuckerberg identified two different tag sources from either a friends list or a text list. The PTAB determined that Facebook demonstrated a reasonable likelihood of prevailing on obviousness based on the combination of Zuckerberg, U.S. Patent No. 7831913, Selection-Based Item Tagging (“MacLaurin”) and either Rothmuller or a 2005 book describing the use of photo tagging features in Adobe Photoshop Elements (“Plotkin”).
In IPR2019-00528, Facebook relies on many of the same prior art references asserted in its other IPR challenge of the ‘173 patent. The PTAB instituted this IPR after determining the reasonable likelihood that claims are invalid based on either MacLaurin alone or in combination with either Rothmuller or Plotkin.
The APJ panel found that MacLaurin “light ‘tagging mode’” that “allow[s] a user to choose between ‘tag guesses’ using cursor arrows” would have suggested the existence of a list of tag suggestions.
The APJ panel also dismissed BlackBerry’s request for discretionary denial of this IPR as being redundant of the other IPR petition. In denying that request, the PTAB noted that the Zuckerberg reference was central to five of seven grounds of unpatentability raised in the other petition but wasn’t even included as a secondary reference in this proceeding.
The PTAB specifically cited the USPTO’s recent trial practice guidance concerning parallel petitions challenging the same patent and while the panel acknowledged that such petitions are generally disfavoured, but it instituted the petition anyways based on the strength of the arguments in either petition, the circumstances of the related district court proceedings and because insufficient time remained to receive and evaluate additional briefing on the parallel petitions as prescribed by the guidance.