Paper No. 27
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––––––
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`BLACKBERRY LTD.,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2017-00913
`U.S. Patent No. 8,402,384
`
`––––––––––––––––––
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––––––
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`BLACKBERRY LTD.,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2017-00913
`U.S. Patent No. 8,402,384
`
`––––––––––––––––––
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`
`IPR2017-00913 (U.S. Patent No. 8,402,384)
`
`Patent Owner’s Sur-Reply
`
`Petitioner’s Reply claim 4 argument is new and should not be considered.
`
`See Reply (Paper 20) 17-23. The Petition alleged that two embodiments in
`
`Cadiz—a person-centric and an email-centric interface—independently render
`
`obvious independent claim 1. See, e.g., Pet. 14 (“One example is a person-centric
`
`interface, as described in connection with, e.g., FIGS. 6B and 8A-C. Another…is
`
`an email-centric interface, as described in connection with, e.g., FIG. 10….Each of
`
`these…independently discloses…limitation 1.b.”), 17 (“Cadiz discloses [limitation
`
`1.c]…with respect to both the person-centric…and…email-centric interface….”),
`
`25 (same for 1.d), 29 (same for 1.e), 37 (same for 1.f and 1.g). The Board’s
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`Institution Decision “interpret[ed] Petitioner’s contentions as relying on two
`
`separate embodiments and alternative theories…—one based on Cadiz’s…person-
`
`centric interface and one based on … the email-centric interface.” Paper 7 at 21.
`
`Claim 4 requires the apparatus of claim 1 “comprise[] a cellular telephone.”
`
`In two sentences and a string citation, the Petition asserted Cadiz discloses this
`
`feature because it “discloses a ‘general-purpose computing device constituting an
`
`exemplary system for implementing the present invention’…, and that such a
`
`device can be a cell phone.” Pet. 45-46; Ex. 1002, ¶99 (same). PO explained why
`
`this assertion is fatally flawed: Cadiz’s person-centric and email-centric interfaces
`
`are for a desktop computer, and Petitioner cannot assume—and Cadiz does not
`
`show—they would be implemented in the same way on a cell phone. Resp. 38-43.
`
`1
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`
`
`IPR2017-00913 (U.S. Patent No. 8,402,384)
`
`Patent Owner’s Sur-Reply
`
`In Reply, Petitioner does not dispute PO’s explanation on this point. Thus,
`
`if Petitioner is properly held to its original Petition arguments, claim 4 is patentable
`
`over Cadiz. Instead, Petitioner retreats from relying on any specific interface and
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`now argues (without expert support) that the “general concepts” of Cadiz’s Figures
`
`1-3, 4A, and 5 are sufficient to disclose claims 1 and 4. E.g., Reply 17-23. But
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`Petitioner cannot “change theories in midstream without…reasonable notice of the
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`change and the opportunity [for PO] to present argument under the new theory.”
`
`In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016); accord
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`SAS Inst., Inc. v. Iancu, No. 16-969, 2018 WL 1914661, at *6 (U.S. Apr. 24, 2018)
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`(The “petition…is supposed to guide the life of the litigation.”). PO lacks the
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`opportunity to depose Petitioner’s expert about Petitioner’s new theory and cannot
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`introduce rebuttal expert testimony. Petitioner’s new theory must be dismissed.
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`Even if considered, Cadiz’s “general concepts” fail to show claim 1’s
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`specific features. Petitioner claims that Cadiz’s “present invention” (Figs. 1-3, 4A,
`
`and 5) discloses the elements of claim 1 and can be implemented on a cell phone.
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`Reply 18. But neither the Petitioner nor its expert demonstrates how this “present
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`invention” meets the limitations of claim 1, let alone on a cell phone. For example,
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`Petitioner does not show—in either the Petition or Reply—how any of Figures 1-3,
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`4A, and 5 or their corresponding descriptions disclose, on a cell phone, “displaying
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`the expanded dynamic bar comprising: displaying additional dynamic preview
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`2
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`
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`IPR2017-00913 (U.S. Patent No. 8,402,384)
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`Patent Owner’s Sur-Reply
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`information determined from the information managed by the software application,
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`the additional dynamic preview information being different from the dynamic
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`preview information displayed in the dynamic bar, and the additional dynamic
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`preview information being updated to reflect the same or different change to the
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`information managed by the software application.” See Pet. 29-37 (relying on the
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`specific desktop interfaces of Figs. 8A-8B and Fig. 10); Reply 17-23. Cadiz’s
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`description of Figure 5 does not even mention implementing its disclosure on a cell
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`phone. Cadiz’s general statements about cell phones are, therefore, insufficient to
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`show that Cadiz discloses claim 4.
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`Moreover, there is no indication that all aspects of Cadiz’s alleged invention
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`would, or even could, have been implemented on all disclosed devices in the same
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`way, as explained in PO’s Response. Resp. 39-40; e.g., Ex. 2007 ¶82 (PO’s
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`expert: that a cell phone is “suitable for use with” Cadiz does not mean that all of
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`Cadiz would be implemented in the same way on a cell phone); Ex. 1018, 126:20-
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`131:14. For example, Cadiz discloses physical icon implementations, yet “a doll
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`that turns its head to one side when a person or entity…is either available or
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`unavailable for communication” cannot satisfy, e.g., claim 1’s “dynamic bar.”
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`Resp. 40; e.g., Ex. 2007 ¶82. Thus, the Reply’s contention that Cadiz discloses
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`claim 4 because it “explains that the concepts described with respect to these
`
`figures can be implemented on a cell phone” is insufficient. See Reply 23.
`
`3
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`
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`IPR2017-00913 (U.S. Patent No. 8,402,384)
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`Patent Owner’s Sur-Reply
`
`Dated: May 8, 2018
`
`Respectfully Submitted,
`
`/Ching-Lee Fukuda/
`Ching-Lee Fukuda
`Reg. No. 44,334
`SIDLEY AUSTIN LLP
`787 Seventh Avenue
`New York, NY 10019
`P: (212) 839-7364
`F: (212) 839-5599
`Attorney for Patent Owner
`
`4
`
`
`
`IPR2017-00913 (U.S. Patent No. 8,402,384)
`
`Patent Owner’s Sur-Reply
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on this 8th day of May,
`
`2018, I caused to be served a true and correct copy of the foregoing by electronic
`
`mail on the following counsel:
`
`Naveen Modi
`Joseph E. Palys
`Phillip W. Citroën
`John S. Holley
`PH-Google-Blackberry-IPR@paulhastings.com
`
`Dated: May 8, 2018
`
`Respectfully Submitted,
`
`/Ching-Lee Fukuda/
`Ching-Lee Fukuda
`Reg. No. 44,334
`SIDLEY AUSTIN LLP
`787 Seventh Avenue
`New York, NY 10019
`P: (212) 839-7364
`F: (212) 839-5599
`Attorney for Patent Owner
`
`
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