Paper No. 6
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––––––
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`BLACKBERRY LTD.,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2017-00913
`U.S. Patent No. 8,402,384
`
`––––––––––––––––––
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`

`

`IPR2017-00913 (U.S. Patent 8,402,384)
`
`Patent Owner’s Preliminary Resp.
`
`TABLE OF CONTENTS
`
`Exhibit List ................................................................................................................ iv
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`The ’384 Patent ................................................................................................ 1
`
`A. Overview of the ’384 Patent .................................................................. 1
`
`B.
`
`C.
`
`Priority Date and Relevant Prosecution History ................................... 5
`
`Person of Ordinary Skill in the Art ....................................................... 8
`
`III. Claim Construction .......................................................................................... 8
`
`A.
`
`“A Selectable Link Embedded In the Additional Dynamic Preview
`Information” .......................................................................................... 9
`
`IV. The Petition Fails to Meet the Requirements for Instituting an Inter Partes
`Review ........................................................................................................... 14
`
`A.
`
`B.
`
`The Petition Improperly Mixes and Matches Embodiments .............. 15
`
`The Petition Does Not Correctly Identify the Claimed “Software
`Application” ........................................................................................ 19
`
`i.
`
`ii.
`
`Person-Centric Mapping ........................................................... 20
`
`Email-Centric Mapping ............................................................ 26
`
`C.
`
`The Petition’s Analysis for “A Selectable Link Embedded in the
`Additional Dynamic Preview Information” Is Deficient .................... 33
`
`i.
`
`ii.
`
`Person-Centric Mapping ........................................................... 33
`
`Email-Centric Mapping ............................................................ 38
`
`V.
`
`The Board Should Deny the Petition under 35 U.S.C. § 325(d) Because
`“Substantially the Same” Grounds Overcome During Prosecution .............. 41
`
`VI. Conclusion ..................................................................................................... 43
`i
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`

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`IPR2017-00913 (U.S. Patent 8,402,384)
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`Patent Owner’s Preliminary Resp.
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`Certificate Of Compliance .......................................................................................... i
`
`Certificate Of Service................................................................................................ ii
`
`
`
`
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`
`
`ii
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`IPR2017-00913 (U.S. Patent 8,402,384)
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`Patent Owner’s Preliminary Resp.
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Apple Inc. v. ContentGuard Holdings Inc.,
`IPR2015-00440, Paper 11 (PTAB July 13, 2015) .............................................. 18
`Apple Inc. v. ContentGuard Holdings, Inc.,
`IPR2015-00443, Paper 9 (PTAB July 9, 2015) ............................................ 26, 31
`Belden Inc. v. Berk–Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) .......................................................................... 38
`EMC Corporation v. Acqis LLC,
`IPR2014-01452, Paper 14 (PTAB Apr. 14, 2015) ............................................. 41
`Graham v. John Deere Co. of Kansas City,
`383 U.S. 1 (1966) ................................................................................................ 37
`Jacobs Corp. v. Genesis III, Inc.,
`IPR2014-01267, Paper 12 (PTAB Jan. 22, 2015) ........................................ 15, 19
`Leggett & Platt, Inc. v. Dreamwell, Ltd.,
`IPR2015-01757, Paper 10 (PTAB Aug. 31, 2016) ............................................. 38
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) ............................................................................ 9
`Net MoneyIN, Inc. v. VeriSign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008) .......................................................................... 19
`Nu Mark LLC v. Fontem Holdings 1, B.V.,
`IPR2016-01309, Paper 11 (PTAB Dec. 15, 2016) ............................................. 43
`Shopkick, Inc. v. Novitaz, Inc.,
`IPR2015-00277, Paper 7 (PTAB May 29, 2015) ......................................... 32, 37
`Skedco, Inc. v. Strategic Operations, Inc.,
`Case No. 2016-1349, slip op. (Fed. Cir. Apr. 24, 2017) .................................... 16
`Tempo Lighting Inc. v. Tivoli LLC,
`742 F.3d 973 (Fed. Cir. 2014) .................................................................. 9, 11, 12
`iii
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`IPR2017-00913 (U.S. Patent 8,402,384)
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`Patent Owner’s Preliminary Resp.
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`Statutes
`35 U.S.C. § 312(a)(3) ............................................................................................... 26
`35 U.S.C. § 325(d) ............................................................................................... 1, 41
`Other Authorities
`37 C.F.R. § 42.100(b) ................................................................................................ 8
`37 C.F.R. § 42.104(b)(3) ............................................................................................ 8
`37 C.F.R. § 42.104(b)(4) .............................................................................. 20, 26, 31
`
`
`EXHIBIT LIST
`
`Exhibit Description
`No.
`2001 U.S. Patent App. Pub. No. 2006/0020904 A1 to Aaltonen et al.
`2002 U.S. Patent App. Pub. No. 2004/0155908 A1 to Wagner
`2003
`[RESERVED]
`2004 Microsoft Computer Dictionary (5th Ed. 2002) (Excerpt)
`2005 The American Heritage College Dictionary (4th Ed. 2004) (Excerpt)
`
`
`
`
`
`iv
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`IPR2017-00913 (U.S. Patent 8,402,384)
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`Patent Owner’s Preliminary Resp.
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`I.
`
`Introduction
`
`Patent Owner BlackBerry Limited (“Patent Owner”) submits this
`
`Preliminary Response in opposition to the Petition for inter partes review (Paper 1)
`
`of U.S. Patent No. 8,402,384 (“’384 patent”). The Petition challenges the
`
`patentability of claims 1-13 of the ’384 patent on four different grounds, each of
`
`which relies on the Cadiz reference. Petitioner’s arguments improperly mix and
`
`match embodiments, map different portions of Cadiz to the claimed “software
`
`application” throughout its analysis, and propose obviousness modifications to
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`purportedly teach “a selectable link” that are motivated by hindsight. The Petition
`
`also advances “the same or substantially the same” patentability challenges
`
`considered during prosecution, so the Board should exercise its discretion under 35
`
`U.S.C. § 325(d) to deny the petition. Petitioner has not demonstrated a reasonable
`
`likelihood that at least one of the claims challenged in the Petition is unpatentable,
`
`so trial should not be instituted.
`
`II. The ’384 Patent
`
`A. Overview of the ’384 Patent
`
`The ’384 patent describes an improved graphical user interface with
`
`particular applicability to wireless mobile devices such as cellular phones. Ex.
`
`1001, 1:12-24. Wireless mobile devices by 2004 were capable of a large number
`
`of communications services, and it became increasingly complex to create a single
`
`1
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`IPR2017-00913 (U.S. Patent 8,402,384)
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`Patent Owner’s Preliminary Resp.
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`device that could excel at many different functions. Id. Representing multiple
`
`services and functions to a user on a single wireless mobile device presented
`
`challenges to user interface designers, particularly given the small display area.
`
`Id., 1:25-33.
`
`The ’384 patent provides a solution to this and other problems through, for
`
`example, a dynamic bar and expansion pop-up interface. Ex. 1001, 7:43-46. The
`
`dynamic bar of Figure 5 includes counts of new events, e.g., new voice mail
`
`messages, email messages, SMS messages, or contacts online with which to chat.
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`Id., 7:46-50. The dynamic bar could also include some details of a recent event,
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`such as “Missed call from NNN ….” Id., 7:51-59. Figure 5 illustrates one
`
`example of a dynamic bar:
`
`
`
`2
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`

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`IPR2017-00913 (U.S. Patent 8,402,384)
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`Patent Owner’s Preliminary Resp.
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`Ex. 1001, Fig. 5.
`
`
`
`The ’384 patent also describes expanding the dynamic bar to display
`
`additional information, such as unread emails in addition to new emails. Ex. 1001,
`
`7:21-32. This additional information can also include a preview of recent new
`
`emails. Id., 7:32-42. Expanded dynamic bars can also include links embedded in
`
`the additional information that allow the user to invoke the associated application.
`
`Id., 7:60-8:2. For example, the link “50 unread” in Figure 6 is additional
`
`information with an embedded link that would invoke the mail application:
`
`Ex. 1001, Fig. 6. The ’384 patent further describes this functionality with respect
`
`to, for example, Figures 3 and 4. Id., 7:11-42.
`
`Claim 1 is representative at this stage of the proceeding:
`
`
`
`3
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`

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`IPR2017-00913 (U.S. Patent 8,402,384)
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`Patent Owner’s Preliminary Resp.
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`1. A method for controlling an apparatus comprising a display, the
`method comprising:
`
`displaying a dynamic bar on the display;
`
`displaying dynamic preview information in the dynamic bar,
`the dynamic preview information being determined from information
`managed by a software application, the dynamic preview information
`being updated to reflect a change to the information managed by the
`software application;
`
`expanding the dynamic bar to display an expanded dynamic bar
`in response to a first input from an input device, displaying the
`expanded dynamic bar comprising:
`
`displaying additional dynamic preview information
`determined from the information managed by the software
`application, the additional dynamic preview information being
`different from the dynamic preview information displayed in
`the dynamic bar, and the additional dynamic preview
`information being updated to reflect the same or different
`change to the information managed by the software application;
`
`displaying a selectable link embedded in the additional
`dynamic preview information to invoke the software
`application; and
`
`activating the software application in response to a
`second input invoking the link.
`
`4
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`

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`IPR2017-00913 (U.S. Patent 8,402,384)
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`Patent Owner’s Preliminary Resp.
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`B.
`
`Priority Date and Relevant Prosecution History
`
`The ’384 patent was filed on November 9, 2004. Ex. 1001, Face. After
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`several rounds of prosecution, including an appeal and subsequent reversal by the
`
`Board of Patent Appeals and Interferences (Ex. 1004, 294-301), the Examiner
`
`rejected the claims over Ögren (EP 1434411A1), which discloses selectable icons
`
`that initiate certain actions. See Ex. 1004, 266 (citing id., 579, 9:11-28). In
`
`response, Patent Owner amended the claims to recite “expanding the dynamic
`
`bar,” “displaying additional dynamic preview information,” and “displaying a
`
`selectable link embedded in the additional dynamic preview information to invoke
`
`the software application.” Ex. 1004, 109.
`
`The Examiner rejected the claims as obvious over Ögren in view of
`
`Aaltonen et al. (U.S. Pat. App. Pub. No. 2006/0020904 A1). Id., 84. The Examiner
`
`concluded that Ögren did not disclose “displaying a selectable link embedded in
`
`the additional dynamic preview information to invoke the software application,”
`
`but argued that this feature was obvious in view of Aaltonen. Id., 49. The
`
`Examiner relied on Aaltonen’s disclosure in Figure 22E, pointing to the “Mail”
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`icon in element 2251 as the “selectable link” (yellow) and the information next to
`
`the right as the “dynamic preview information” (green):
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`5
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`IPR2017-00913 (U.S. Patent 8,402,384)
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`Patent Owner’s Preliminary Resp.
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`
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`Ex. 2001, Fig. 22E (annotated); Ex. 1004, 85 (citing Fig. 22E, element 2251).
`
`In response, Patent Owner explained that Aaltonen did not teach or suggest
`
`“a selectable link embedded in the additional dynamic preview information to
`
`invoke the software application.” Ex. 1004, 39. Patent Owner characterized this
`
`requirement as follows:
`
`Claim 28 recites “displaying a selectable link embedded in the
`additional dynamic preview information to invoke the software
`application”. This is shown, for example, FIGS. 4 and 6 of the present
`application, and described in paragraphs [0046] and [0048]. A person
`skilled in the art would understand that a “selectable link” is a portion
`of the display, often text, which a user can select, for example by
`positioning a cursor over the link and actuating an input device, such
`as a mouse button or a clickable trackball switch. This selectable link
`is embedded in the additional dynamic preview information of the
`expanded dynamic bar. That is, the selectable link may be selected by
`
`6
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`

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`IPR2017-00913 (U.S. Patent 8,402,384)
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`Patent Owner’s Preliminary Resp.
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`selecting a portion of the additional dynamic preview information,
`such as by moving a cursor over a portion of the dynamic preview
`information and actuating an input device.
`
`Ex. 1004, 39. Patent Owner explained that Aaltonen did not disclose selectable
`
`links that are “embedded in the additional dynamic preview information.” Ex.
`
`1004, 71. Specifically, “[a]s shown in FIG. 22e, the mail icon, which the Office
`
`Action has interpreted as being a selectable link, is separate from and not
`
`embedded in the displayed information. For example, in the item 2251, the mail
`
`icon is shown apart from the information about the mail (in this case, the name of
`
`the sender, the time of receipt and a portion of the mail message) and is not
`
`embedded in the mail information.” Id. In other words, because Aaltonen’s
`
`“Mail” icon was displayed next to but not “embedded in” the “dynamic
`
`information,” it could not meet the requirements of the claims.
`
`After considering this argument, the Examiner withdrew the rejections and
`
`issued a new non-final rejection, which dropped Aaltonen in favor of Wagner (U.S.
`
`Pat. App. Pub. No. 2004/0155908 A1) (Ex. 2002) as a secondary reference. Ex.
`
`1004, 48. After additional briefing from Patent Owner related to Wagner, id., 36-
`
`39, the Examiner allowed the claims “in light of applicants’ arguments and prior
`
`art made of record,” id., 12. This “prior art made of record” includes Cadiz-EP
`
`(EP-1265157 A2) (Ex. 1011), which has the same operative disclosure as the Cadiz
`
`reference now relied upon. Ex. 1001, [56] (citing Cadiz-EP); Ex. 1004, 91, 213-
`7
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`

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`IPR2017-00913 (U.S. Patent 8,402,384)
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`Patent Owner’s Preliminary Resp.
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`256 (showing consideration of Cadiz-EP). The ’384 patent issued on March 19,
`
`2013. Ex. 1004, 1.
`
`C.
`
`Person of Ordinary Skill in the Art
`
`One of ordinary skill in the art in the field of the ’384 patent would have at
`
`least a bachelors degree in computer science, electrical engineering, or the
`
`equivalent, and at least two years of experience in designing user interfaces for
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`mobile devices such as cellular telephones, personal digital assistances (PDA), or
`
`other handheld devices. While Petitioner has advanced a different statement of the
`
`level of ordinary skill in the art, these differences do not appear material at this
`
`stage of the proceedings. See Pet. 5-6.
`
`III. Claim Construction
`
`The Petition does not provide any claim constructions. Pet. 11; but see 37
`
`C.F.R. § 42.104(b)(3) (requiring the petition set forth “[h]ow the challenged
`
`claim[s]” are “to be construed”). Central to the Parties’ dispute, however, is the
`
`proper scope of the “displaying a selectable link embedded in the additional
`
`dynamic preview information” step. The Petition’s person-centric patentability
`
`challenges rest on a broad and unstated claim construction of this step that entirely
`
`ignores the context of the claims and the ’384 patent’s intrinsic record. See 37
`
`C.F.R. § 42.100(b). When the claims are given their broadest reasonable
`
`8
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`

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`IPR2017-00913 (U.S. Patent 8,402,384)
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`Patent Owner’s Preliminary Resp.
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`construction in light of the intrinsic record, the Petition’s person-centric
`
`patentability challenges must be denied.
`
`Under the broadest reasonable interpretation standard, claims are evaluated
`
`using the plain and ordinary meaning of their words from the perspective of a
`
`person of ordinary skill in the art in the context of the entire patent disclosure.
`
`Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (“A
`
`construction that is ‘unreasonably broad’ and which does not ‘reasonably reflect
`
`the plain language and disclosure’ will not pass muster.”). In an inter partes
`
`review, this meaning requires consideration of the prosecution history: “The PTO
`
`should also consult the patent’s prosecution history in proceedings in which the
`
`patent has been brought back to the agency for a second review.” Id. (citing
`
`Tempo Lighting Inc. v. Tivoli LLC, 742 F.3d 973, 978 (Fed. Cir. 2014)). This
`
`includes giving weight to clarifying amendments made during the original
`
`prosecution. Tempo Lighting, 742 F.3d at 977-78.
`
`A.
`
`“A Selectable Link Embedded In the Additional Dynamic Preview
`Information”
`
`Claim 1 recites “displaying a selectable link embedded in the additional
`
`dynamic preview information to invoke the software application.” Petitioner’s
`
`patentability challenges effectively read the phrase “embedded in” out of the claim
`
`by mapping this step to the purported display of a “selectable link” next to
`
`“additional dynamic preview information.” Patent Owner seeks to ignore or undo
`9
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`

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`IPR2017-00913 (U.S. Patent 8,402,384)
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`Patent Owner’s Preliminary Resp.
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`the claim amendments Patent Owner made to obtain allowance of the ’384 patent.
`
`This mapping does not comport with what one of ordinary skill in the art would
`
`consider the broadest reasonable interpretation of the phrase in light of the intrinsic
`
`record as a whole.
`
`The broadest reasonable interpretation of “a selectable link embedded in the
`
`additional dynamic preview information” requires that the selectable link be part
`
`of the additional dynamic preview information. This is the ordinary meaning of
`
`“embedded” in the context of links—a “link embedded in” other information would
`
`be understood by one of ordinary skill in the art to mean that the information itself
`
`comprises the link. See, e.g., Microsoft Computer Dictionary, 190 (2003) (Ex.
`
`2004) (defining “embedded hyperlink” as “A link to a resource that is embedded
`
`within text or is associated with an image or an image map,” i.e., the image or
`
`image map comprises the link). This is also the ordinary meaning of “embedded”
`
`in any context. See The American Heritage College Dictionary, 457 (4th Ed 2004)
`
`(Ex. 2005) (defining “embed” as “fix firmly in a surrounding mass,” “enclose
`
`snugly or firmly”). The Petition does not advance any rationale for why
`
`“embedded in” should be read differently from this ordinary meaning.
`
`Patent Owner added the “embedded in” requirement to its claims during
`
`prosecution to successfully overcome prior art cited by the Examiner. Specifically,
`
`Patent Owner amended the claims to recite “a selectable link embedded in the
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`10
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`

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`IPR2017-00913 (U.S. Patent 8,402,384)
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`Patent Owner’s Preliminary Resp.
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`additional dynamic preview information” to overcome a rejection that relied on
`
`disclosure of a selectable icons that initiate certain actions. See Ex. 1004, 266
`
`(citing id., 579, 9:11-28). Patent Owner then relied on this language to
`
`successfully distinguish the Aaltonen reference: “As shown in FIG. 22E, the mail
`
`icon, which the Office Action has interpreted as being a selectable link, is separate
`
`from and not embedded in the displayed information. For example, in the item
`
`2251, the mail icon is shown apart from the information about the mail (in this
`
`case, the name of the sender, the time of receipt and a portion of the mail message)
`
`and is not embedded in the mail information.” Id. The Examiner allowed the
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`patent based on this argument. Id., 12, 39, 48. Any construction of “embedded in”
`
`that covers “a selectable link” displayed next to “the additional dynamic preview
`
`information” is thus inconsistent with the prosecution history.
`
`The patent owner in Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 976-
`
`78 (Fed. Cir. 2014) had likewise amended its claims in response to an Office
`
`action, explained why the amendments had clarified the Office’s concerns, and
`
`obtained allowance of its claims. There, the Federal Circuit found that the
`
`prosecution history in such a case supported a claim construction commensurate
`
`with the patent owner’s representations to the office:
`
`This court also observes that the PTO is under no obligation to accept
`a claim construction proffered as a prosecution history disclaimer,
`which generally only binds the patent owner. However, in this
`11
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`IPR2017-00913 (U.S. Patent 8,402,384)
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`Patent Owner’s Preliminary Resp.
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`instance, the PTO itself requested Tivoli rewrite the "non-
`photoluminescent" limitation in positive terms. Tivoli complied, and
`then supplied clarification about the meaning of the "inert to light"
`limitation. J.A. 1216. For all these reasons, this court affirms the
`Board's construction of "inert to light."
`
`Id. at 978. Here, Patent Owner amended the claims in response to a rejection,
`
`distinguished multiple references by arguing they did not disclose a selectable link
`
`“embedded in” the dynamic preview information, and the Examiner subsequently
`
`allowed the patent based on these actions.
`
`This understanding is confirmed by the ’384 patent’s specification. The
`
`’383 patent explains that expanded dynamic bars can include links embedded in
`
`the additional information that allow the user to invoke the associated application.
`
`Ex. 1001, 7:60-8:2. For example, the link “50 unread” in Figure 6 is additional
`
`dynamic preview information with an embedded link that would invoke the mail
`
`application:
`
`12
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`

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`IPR2017-00913 (U.S. Patent 8,402,384)
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`Patent Owner’s Preliminary Resp.
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`
`
`Id., Fig. 6 (annotated).
`
`As another example, the ’384 patent explains that the expanded dynamic bar
`
`may include a preview of recent new mails. Id., 7:21-38. “Clicking on the list will
`
`automatically invoke the email application, preferably at a view showing the
`
`selected email.” Id., 39-40 (emphasis added). This is illustrated in Figure 4:
`
`13
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`

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`IPR2017-00913 (U.S. Patent 8,402,384)
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`Patent Owner’s Preliminary Resp.
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`
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`Id., Fig. 4 (annotated). The specification therefore provides explicit examples of
`
`“a selectable link embedded in the additional dynamic preview information.” See
`
`also id., 4:52-57 (equating “embedded” and “internal”).
`
`
`
`Therefore, the broadest reasonable interpretation of “a selectable link
`
`embedded in the additional dynamic preview information” requires that the
`
`selectable link be part of the additional dynamic preview information.
`
`IV. The Petition Fails to Meet the Requirements for Instituting an Inter
`Partes Review
`
`Petitioner asserts that claims 1, 4-7, and 10-13 of the ’384 patent are obvious
`
`over Cadiz (Ground 1), claims 2 and 3 are obvious over Cadiz in view of Ng
`
`(Ground 2), claim 8 is obvious over Cadiz in view of Matthews (Ground 3), and
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`14
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`IPR2017-00913 (U.S. Patent 8,402,384)
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`Patent Owner’s Preliminary Resp.
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`claim 9 is obvious over Cadiz in view of Smith (Ground 4). For every claim, the
`
`Petition relies on one of two mappings it purports to derive from the disclosure of
`
`Cadiz: (1) a person-centric mapping and (2) an email-centric mapping. For each of
`
`the reasons below, these mappings are improper.
`
`A. The Petition Improperly Mixes and Matches Embodiments
`
`The Petition proposes two parallel mappings that it applies to each element
`
`of claim 1: (1) a person-centric mapping and (2) an email-centric mapping. Pet.
`
`12-45. Both mappings rely on Cadiz to teach every claim limitation of claim 1
`
`except for the “displaying a selectable link” and “activating the software
`
`application” steps, which the Petition argues are obvious in view of Cadiz. Id., 40,
`
`43. Other than those two final limitations, however, the Petition argues that Cadiz
`
`discloses the claimed steps without any modification. Pet. 12-40. In doing so, the
`
`Petition impermissibly mixes and matches between the numerous embodiments
`
`disclosed in Cadiz without any explanation regarding how or why a skilled artisan
`
`would have combined them. See Jacobs Corp. v. Genesis III, Inc., IPR2014-
`
`01267, Paper 12 at 6-7 (PTAB Jan. 22, 2015) (denying institution on obviousness
`
`grounds where “Petitioner [did] not address sufficiently why it would have been
`
`obvious to a person of ordinary skill in the art to combine features from multiple
`
`embodiments”) (citing Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371
`
`(Fed. Cir. 2008)).
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`15
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`IPR2017-00913 (U.S. Patent 8,402,384)
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`Patent Owner’s Preliminary Resp.
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`The Petition points to Figures 6B and 8A-C for its person-centric mapping
`
`and Figure 10 for its email-centric mapping. Pet. 14, 16. The disclosure in Cadiz
`
`related to these figures is quite limited, however, totaling only five paragraphs and
`
`little more than one column of text. See Ex. 1005, ¶¶197-98, 201-03.
`
`Consequently, the Petition extensively relies on other portions of Cadiz that
`
`describe other embodiments. For example, the Petition indiscriminately relies on
`
`disclosure associated with Figures 1, 2, 3, 4, 5, 6A, 6B, 8A, and 8C—which
`
`disclose different embodiments—for its mapping of the person-centric interface to
`
`claim 1’s “displaying dynamic preview information” step. Pet. 17-22. The Petition
`
`relies on disclosure associated with Figures 2, 3, 4, 5, and 10 for its mapping of the
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`email-centric interface to this same feature. Id., 22-25.
`
`Neither of the Petitioner’s mappings rely on a single embodiment, however,
`
`because Cadiz describes almost every figure and its associated description as
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`“exemplary.” See, e.g., Ex. 1005, ¶¶28-29, 31-35, 39, 43 (describing Figures 1, 2,
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`4A, 4B, 5, 6A, 8A and 10 individually as “exemplary” embodiments); see also id.,
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`¶57 (describing the embodiments in each figure as “exemplary”). Cadiz’s
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`characterization of its figures as “exemplary” in this context means they are
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`distinct embodiments of Cadiz’s “present invention,” and not a single, monolithic
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`embodiment. See Skedco, Inc. v. Strategic Operations, Inc., Case No. 2016-1349,
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`slip op. at *7-8 (Fed. Cir. Apr. 24, 2017) (non-precedential).
`
`16
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`

`

`IPR2017-00913 (U.S. Patent 8,402,384)
`
`Patent Owner’s Preliminary Resp.
`
`The Petition’s person-centric mapping relies on Figures 8A-8C, which
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`represent “an exemplary screen image illustrating an alternative embodiment of a
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`peripheral awareness interface ….” Ex. 1005, ¶201 (emphasis added). Despite
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`that Cadiz nowhere directly relates this alternative embodiment to Figure 6A,
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`much less the variety of embodiments disclosed in Figures 1-5, the Petition
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`nevertheless relies on a combination of these Figures to assert that Cadiz discloses
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`the majority of claim 1’s limitations without modification. The Petition’s email-
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`centric mapping relies a combination of Figures 1-5 and 10, but Cadiz never relates
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`the embodiment disclosed in Figure 10 to any other figure or embodiment.
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`Instead, Cadiz explains that “FIG. 9 and FIG. 10 represent further examples of
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`different types of tickets,” but does not explain that Figure 10 extends or builds
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`upon any of the embodiments described and relied upon in Figures 1-5. And the
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`Petition is silent on the relationship between these disclosures or how they could
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`operate as a single embodiment.
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`The Petition further obfuscates its blending of embodiments by citing large
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`swathes of Cadiz’s disclosure in undifferentiated string citations. See, e.g., Pet. 19
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`(citing thirteen distinct paragraphs covering numerous embodiments: “Ex. 1005,
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`¶¶[0074]-[0076], FIG. 2; see also id., ¶¶[0021], [0066], [0084]-[0088], [0115],
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`[0167], [0171].)”); see also id., 23 (citing nineteen distinct paragraphs covering
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`numerous embodiments: “Ex. 1005, ¶¶[0021], [0022], [0067], [0086]; see also id.,
`
`17
`
`

`

`IPR2017-00913 (U.S. Patent 8,402,384)
`
`Patent Owner’s Preliminary Resp.
`
`¶¶[0019], [0059], [0064], [0069], [0071]-[0072], [0084], [0088], [0090], [0178],
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`[0183]-[0184], [0187], [0194], [0203].)”). The result is that the Petition makes it
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`difficult if not impossible to determine how these features relate to each other and
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`allegedly teach the limitations of the claims. See Apple Inc. v. ContentGuard
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`Holdings Inc., IPR2015-00440, Paper 11 at 10 (PTAB July 13, 2015) (denying
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`institution where “the Petition’s conclusory analysis… and imprecise citations to
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`[the prior art], leaves us to play archeologist with the record” (internal quotation
`
`marks omitted)).1
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`
`
`1 While the descriptions associated with some of the Figures (e.g., Figures 2, 3, 4A,
`
`and 5) indicate that “any or all of these alternative embodiments, as described
`
`throughout this document, may be used in combination” (see Ex. 1005, ¶¶74, 100,
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`164, 190), it is clear that in each instance “these alternate embodiments” refers to
`
`the embodiments disclosed with respect to that particular figure. See id.
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`Likewise, Cadiz’s stray references to Figures 8B-8C in the lead up to discussing
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`Figure 5 make clear that these figures are each example embodiments of the
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`present invention, not a single, monolithic embodiment. See, e.g., id., ¶¶183 (“See,
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`for example, FIG. 8B ….”), 184, 190 (emphasis added).
`
`18
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`

`

`IPR2017-00913 (U.S. Patent 8,402,384)
`
`Patent Owner’s Preliminary Resp.
`
`The Petition fails to explain why one of ordinary skill in the art, when
`
`considering Cadiz’s disclosure as a whole, would have understood the separate
`
`and distinct exemplary embodiments disclosed in Figures 1, 2, 3, 4, 5, 6A, 6B,
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`8A, and 8C to represent a single embodiment with respect to the person-centric
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`mapping, or the separate and distinct exemplary embodiments disclosed in
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`Figures 2, 3, 4, 5, and 10 to represent a single embodiment with respect to the
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`email-centric mapping. Its improper cross-citation to these different embodiments
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`is fatal to its analysis because it never explains why or how one of ordinary skill in
`
`the art would have combined those embodiments in a manner consistent with the
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`claims. See, e.g., Net MoneyIN, 545 F.3d at 1371; Jacobs Corp., IPR2014-01267,
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`Paper 12 at 6-7.2
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`B.
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`The Petition Does Not Correctly Identify the Claimed “Software
`Application”
`
`Claim 1 recites “displaying dynamic preview information … being
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`determined from information managed by a software application …,” and
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`
`
`2 Even if the Petition had properly explained how and why one of ordinary skill in
`
`the art would have combined Cadiz’s various embodiments according to the
`
`Petition’s person-centric and email-centric mappings, the Petition should
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`nevertheless be denied for the reasons explained below.
`
`19
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`

`

`IPR2017-00913 (U.S. Patent 8,402,384)
`
`Patent Owner’s Preliminary Resp.
`
`references “the software application” in several places later in the claim. In each
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`case, claim 1 refers to “the software application,” i.e., the same “software
`
`application” that is recited throughout the claim. The Petition’s analysis of this
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`feature, however, identifies different elements in Cadiz as fulfilling the claimed
`
`“software application” at different points in its analysis. This is improper, and
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`violates the requirement that a petition for inter partes review “specify where each
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`element of the claim is found in the prior art ….” 37 C.F.R. § 42.104(b)(4). For
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`these and other reasons explained below, the Board should deny both grounds.
`
`i.
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`Person-Centric Mapping
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`The Petition does not identify a single “software application” that meets all
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`the requirements of claim 1, and instead improperly points to different programs in
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`Cadiz at different points in the claim. The Petition points to services 230 as
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`fulfilling the “managed by a software application” limitation, Pet. 19-20, but then
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`later points to MSN® Messenger® as an example