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. IPR2017-00914
`U.S. Patent No. 8,713,466
`
`––––––––––––––––––
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`

`

`IPR2017-00914 (U.S. Patent 8,713,466)
`
`Patent Owner’s Preliminary Resp.
`
`TABLE OF CONTENTS
`
`Exhibit List ................................................................................................................ iv
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`The ’466 Patent ................................................................................................ 1
`
`A. Overview of the ’466 Patent .................................................................. 1
`
`B.
`
`Priority Date and Relevant Prosecution History ................................... 4
`
`i.
`
`ii.
`
`The ’384 Patent’s Prosecution History ....................................... 5
`
`The ’466 Patent’s Prosecution History ....................................... 8
`
`C.
`
`Person of Ordinary Skill in the Art ....................................................... 9
`
`III. Claim Construction .......................................................................................... 9
`
`A.
`
`“Additional Dynamic Preview Information Comprising a Selectable
`Link” .................................................................................................... 10
`
`IV. The Petition Fails to Meet the Requirements for Instituting an Inter Partes
`Review ........................................................................................................... 15
`
`A.
`
`B.
`
`The Petition Improperly Mixes and Matches Embodiments .............. 16
`
`The Petition Does Not Correctly Identify the Claimed “Software
`Application” ........................................................................................ 20
`
`i.
`
`ii.
`
`Person-Centric Mapping ........................................................... 21
`
`Email-Centric Mapping ............................................................ 27
`
`C.
`
`The Petition’s Analysis for “Additional Dynamic Preview Information
`Comprising a Selectable Link” Is Deficient ........................................ 34
`
`i.
`
`ii.
`
`Person-Centric Mapping ........................................................... 34
`
`Email-Centric Mapping ............................................................ 39
`
`i
`
`

`

`IPR2017-00914 (U.S. Patent 8,713,466)
`
`Patent Owner’s Preliminary Resp.
`
`V.
`
`The Board Should Deny the Petition under 35 U.S.C. § 325(d) Because
`“Substantially the Same” Grounds Overcome During Prosecution .............. 42
`
`VI. Conclusion ..................................................................................................... 44
`
`Certificate Of Compliance .......................................................................................... i
`
`Certificate Of Service................................................................................................ ii
`
`
`
`
`
`
`
`ii
`
`

`

`IPR2017-00914 (U.S. Patent 8,713,466)
`
`Patent Owner’s Preliminary Resp.
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Apple Inc. v. ContentGuard Holdings Inc.,
`IPR2015-00440, Paper 11 (PTAB July 13, 2015) .............................................. 19
`Apple Inc. v. ContentGuard Holdings, Inc.,
`IPR2015-00443, Paper 9 (PTAB July 9, 2015) ............................................ 27, 32
`Belden Inc. v. Berk–Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) .......................................................................... 39
`EMC Corporation v. Acqis LLC,
`IPR2014-01452, Paper 14 (PTAB Apr. 14, 2015) ............................................. 42
`Graham v. John Deere Co. of Kansas City,
`383 U.S. 1 (1966) ................................................................................................ 38
`Jacobs Corp. v. Genesis III, Inc.,
`IPR2014-01267, Paper 12 (PTAB Jan. 22, 2015) ........................................ 16, 20
`Leggett & Platt, Inc. v. Dreamwell, Ltd.,
`IPR2015-01757, Paper 10 (PTAB Aug. 31, 2016) ............................................. 39
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) .......................................................................... 10
`Net MoneyIN, Inc. v. VeriSign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008) .......................................................................... 20
`Nu Mark LLC v. Fontem Holdings 1, B.V.,
`IPR2016-01309, Paper 11 (PTAB Dec. 15, 2016) ............................................. 44
`Shopkick, Inc. v. Novitaz, Inc.,
`IPR2015-00277, Paper 7 (PTAB May 29, 2015) ......................................... 33, 38
`Skedco, Inc. v. Strategic Operations, Inc.,
`Case No. 2016-1349, slip op. (Fed. Cir. Apr. 24, 2017) .................................... 17
`Tempo Lighting Inc. v. Tivoli LLC,
`742 F.3d 973 (Fed. Cir. 2014) ................................................................ 10, 12, 13
`iii
`
`

`

`IPR2017-00914 (U.S. Patent 8,713,466)
`
`Patent Owner’s Preliminary Resp.
`
`Statutes
`35 U.S.C. § 312(a)(3) ............................................................................................... 27
`35 U.S.C. § 325(d) ............................................................................................... 1, 42
`Other Authorities
`37 C.F.R. § 42.100(b) ................................................................................................ 9
`37 C.F.R. § 42.104(b)(3) ............................................................................................ 9
`37 C.F.R. § 42.104(b)(4) .............................................................................. 21, 27, 32
`
`
`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 U.S. Patent No. 8,402,384 B2 to Scott
`2004
`[RESERVED]
`2005 The American Heritage College Dictionary (4th Ed. 2004) (Excerpt)
`
`
`
`
`
`iv
`
`

`

`IPR2017-00914 (U.S. Patent 8,713,466)
`
`Patent Owner’s Preliminary Resp.
`
`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. 8,713,466 (“’466 patent”). The Petition challenges the
`
`patentability of claims 1-26 of the ’466 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
`
`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 ’466 Patent
`
`A. Overview of the ’466 Patent
`
`The ’466 patent describes an improved graphical user interface with
`
`particular applicability to wireless mobile devices such as cellular phones. Ex.
`
`1001, 1:20-33. Wireless mobile devices by 2004 were capable of a large number
`
`of communications services, and it became increasingly complex to create a single
`
`1
`
`

`

`IPR2017-00914 (U.S. Patent 8,713,466)
`
`Patent Owner’s Preliminary Resp.
`
`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., 1:34-42.
`
`The ’466 patent provides a solution to this and other problems through, for
`
`example, a dynamic bar and expansion pop-up interface. Ex. 1001, 7:51-54. 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.
`
`Id., 7:54-58. The dynamic bar could also include some details of a recent event,
`
`such as “Missed call from NNN ….” Id., 7:60-67. Figure 5 illustrates one
`
`example of a dynamic bar:
`
`
`
`2
`
`

`

`IPR2017-00914 (U.S. Patent 8,713,466)
`
`Patent Owner’s Preliminary Resp.
`
`Ex. 1001, Fig. 5.
`
`
`
`The ’466 patent also describes expanding the dynamic bar to display
`
`additional information, such as unread emails in addition to new emails. Ex. 1001,
`
`7:29-40. This additional information can also include a preview of recent new
`
`emails. Id., 7:40-50. Expanded dynamic bars can also include links embedded in
`
`the additional information that allow the user to invoke the associated application.
`
`Id., 7:8:1-10. 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 ’466 patent further describes this functionality with respect
`
`to, for example, Figures 3 and 4. Id., 7:20-50.
`
`Claim 1 is representative at this stage of the proceeding:
`
`
`
`3
`
`

`

`IPR2017-00914 (U.S. Patent 8,713,466)
`
`Patent Owner’s Preliminary Resp.
`
`1. A method for displaying preview information, the method
`comprising:
`
`displaying on a display dynamic preview information in a
`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; and
`
`expanding the dynamic bar to display an expanded dynamic bar
`in response to a first input, 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;
`
`the additional dynamic preview information comprising a
`selectable link which when activated, invokes the software
`application.
`
`B.
`
`Priority Date and Relevant Prosecution History
`
`The ’466 patent is a continuation of and claims priority to the application
`
`that issued as U.S. Patent No. 8,402,384 (“’384 patent”), which was filed on
`
`November 9, 2004. The ’466 patent is entitled to this claim of priority, and the
`
`Petition does not argue otherwise. See Pet. 2-3. Because the prosecution history of
`
`4
`
`

`

`IPR2017-00914 (U.S. Patent 8,713,466)
`
`Patent Owner’s Preliminary Resp.
`
`the ’384 patent relates to the prosecution history of the ’466 patent and is relevant
`
`to the issues raised by the Petition, both are summarized in relevant part below.
`
`i.
`
`The ’384 Patent’s Prosecution History
`
`The ’384 patent was filed on November 9, 2004 and issued on March 19,
`
`2013. Ex. 2003, Face. After 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. 1005, 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.” Id., 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”
`
`icon in element 2251 as the “selectable link” (yellow) and the information next to
`
`the right as the “dynamic preview information” (green):
`
`5
`
`

`

`IPR2017-00914 (U.S. Patent 8,713,466)
`
`Patent Owner’s Preliminary Resp.
`
`
`
`Ex. 2001, Fig. 22E (annotated); Ex. 1005, 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. 1005, 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
`
`

`

`IPR2017-00914 (U.S. Patent 8,713,466)
`
`Patent Owner’s Preliminary Resp.
`
`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.
`
`Id., 39. Patent Owner explained that Aaltonen did not disclose selectable links that
`
`are “embedded in the additional dynamic preview information.” Id., 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.
`
`1005, 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
`
`7
`
`

`

`IPR2017-00914 (U.S. Patent 8,713,466)
`
`Patent Owner’s Preliminary Resp.
`
`reference now relied upon. Ex. 1001, [56] (citing Cadiz-EP); Ex. 1004, 91, 213-
`
`256 (showing consideration of Cadiz-EP).
`
`ii.
`
`The ’466 Patent’s Prosecution History
`
`The ’466 patent was filed on February 19, 2013, and issued on April 29,
`
`2014. After initial round of prosecution, the Examiner rejected (1) the independent
`
`claims for obviousness-type double patenting over claim 1 of the ’384 patent, and
`
`(2) many of the claims over the Ögren reference in view of Anderson (U.S. Patent
`
`No. 6,486,914). Ex. 1004, 61-72. The Examiner also indicated that dependent
`
`claim 39 was allowable over the art of record. Id., 70. Claim 39 recited the
`
`following limitations:
`
`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
`
`Id., 105. These limitations correspond to the limitations that were central to the
`
`allowance of the ’384 patent. See Ex. 1005, 12, 39, 48, 71; see § II.B.i above.
`
`
`
`In response, Patent Owner filed a terminal disclaimer against the ’384 patent
`
`and amended all of the pending independent claims to recite features relating to the
`
`concept of displaying a selectable link embedded in the additional dynamic
`
`preview information: “the additional dynamic preview information comprising a
`
`selectable link which when activated, invokes the software application.” Ex. 1004,
`8
`
`

`

`IPR2017-00914 (U.S. Patent 8,713,466)
`
`Patent Owner’s Preliminary Resp.
`
`44-53. After entering the amendment, the Examiner noted that “[a]s a result of the
`
`amendments and in light of the arguments, the claims as a whole are allowable
`
`over the cited prior art.” Id., 20. The ’466 patent issued on April 29, 2004. Id., 1.
`
`C.
`
`Person of Ordinary Skill in the Art
`
`One of ordinary skill in the art in the field of the ’466 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
`
`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. 4; 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 “the additional dynamic preview information comprising a
`
`selectable link” 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 ’466 patent’s intrinsic record. See 37 C.F.R.
`
`§ 42.100(b). When the claims are given their broadest reasonable construction in
`
`9
`
`

`

`IPR2017-00914 (U.S. Patent 8,713,466)
`
`Patent Owner’s Preliminary Resp.
`
`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.
`
`“Additional Dynamic Preview Information Comprising a
`Selectable Link”
`
`Claim 1 recites “the additional dynamic preview information comprising a
`
`selectable link which when activated, invokes the software application.”
`
`Petitioner’s patentability challenges effectively read the phrase “comprising” 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
`10
`
`

`

`IPR2017-00914 (U.S. Patent 8,713,466)
`
`Patent Owner’s Preliminary Resp.
`
`undo the claim amendments Patent Owner made to obtain allowance of the ’466
`
`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 “the additional dynamic preview
`
`information comprising a selectable link” requires that the selectable link be part
`
`of the additional dynamic preview information. This is the ordinary meaning of
`
`“comprising” both in patent law, see M.P.E.P. § 2111.03 (“The transitional term
`
`“comprising” … is synonymous with “including,” “containing,” …”), and in any
`
`context, see, e.g., The American Heritage College Dictionary (4th Ed. 2004) (Ex.
`
`2005) (defining “comprise” as “To consist of; be composed of … To include;
`
`contain”). The Petition does not advance any rationale for why “comprising”
`
`should be read differently from this ordinary meaning.
`
`Patent Owner added a similar requirement—“embedded in”—to its claims
`
`during prosecution of the ’384 patent to successfully overcome prior art cited by
`
`the Examiner. Specifically, Patent Owner amended the claims to recite “a
`
`selectable link embedded in the additional dynamic preview information” to
`
`overcome a rejection that relied on disclosure of a selectable icons that initiate
`
`certain actions. See Ex. 1005, 266 (citing id., 579, 9:11-28). Patent Owner then
`
`relied on this language to successfully distinguish the Aaltonen reference: “As
`
`11
`
`

`

`IPR2017-00914 (U.S. Patent 8,713,466)
`
`Patent Owner’s Preliminary Resp.
`
`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 patent based on this argument. Id., 12, 39, 48.
`
`During prosecution of the ’466 patent, the Examiner pointed to the same
`
`“embedded in” language as allowable over the prior art. Ex. 1004, 70, 105. After
`
`Patent Owner amended the claims to require “the additional dynamic preview
`
`information comprising a selectable link,” the Examiner allowed the claims. Id.,
`
`20, 44-53. Any construction of “embedded in” or “comprising” 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:
`
`12
`
`

`

`IPR2017-00914 (U.S. Patent 8,713,466)
`
`Patent Owner’s Preliminary Resp.
`
`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
`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 rejections,
`
`distinguished multiple references by arguing they did not disclose a selectable link
`
`“embedded in” the dynamic preview information / dynamic preview information
`
`“comprising” the selectable link, and the Examiner subsequently allowed the
`
`patents based on these actions.
`
`This understanding is confirmed by the ’466 patent’s specification. The
`
`’466 patent explains that expanded dynamic bars can include additional dynamic
`
`preview information comprising links that allow the user to invoke the associated
`
`application. Ex. 1001, 8:1-10. For example, the link “50 unread” in Figure 6 is
`
`additional dynamic preview information comprising a link that would invoke the
`
`mail application:
`
`13
`
`

`

`IPR2017-00914 (U.S. Patent 8,713,466)
`
`Patent Owner’s Preliminary Resp.
`
`
`
`Id., Fig. 6 (annotated).
`
`As another example, the ’466 patent explains that the expanded dynamic bar
`
`may include a preview of recent new mails. Id., 7:29-46. “Clicking on the list will
`
`automatically invoke the email application, preferably at a view showing the
`
`selected email.” Id., 47-48 (emphasis added). This is illustrated in Figure 4:
`
`14
`
`

`

`IPR2017-00914 (U.S. Patent 8,713,466)
`
`Patent Owner’s Preliminary Resp.
`
`
`
`Id., Fig. 4 (annotated). The specification therefore provides explicit examples of
`
`“the additional dynamic preview information comprising a selectable link.”
`
`
`
`Therefore, the broadest reasonable interpretation of “the additional dynamic
`
`preview information comprising a selectable link” 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, 6, 12-14, 17, 22, and 24 are obvious over
`
`Cadiz (Ground 1), claims 2, 3, 15, and 23 are obvious over Cadiz in view of
`
`Hawkins (Ground 2), claims 7-9, 18, 19, and 25 are obvious over Cadiz in view of
`
`Siedlikowski (Ground 3), and claims 5, 10, 11, 16, 20, 21, and 26 are obvious over
`
`15
`
`

`

`IPR2017-00914 (U.S. Patent 8,713,466)
`
`Patent Owner’s Preliminary Resp.
`
`Cadiz in view of Yamadera (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. 4-
`
`31. Both mappings rely on Cadiz to teach every claim limitation of claim 1 except
`
`for the “the additional dynamic preview information comprising a selectable link”
`
`step, which the Petition argues is obvious in view of Cadiz. Id., 24-31. Other than
`
`this final limitation, however, the Petition argues that Cadiz discloses the claimed
`
`steps without any modification. Id., 4-23. 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)).
`
`16
`
`

`

`IPR2017-00914 (U.S. Patent 8,713,466)
`
`Patent Owner’s Preliminary Resp.
`
`The Petition points to Figures 6B and 8A-C for its person-centric mapping
`
`and Figure 10 for its email-centric mapping. Pet. 7, 12. 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. 1006, ¶¶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 on a display dynamic preview information” step. Pet. 7-12.
`
`The Petition relies on disclosure associated with Figures 2, 3, 4, 5, and 10 for its
`
`mapping of the email-centric interface to this same feature. Id., 12-15.
`
`Neither of the Petition’s “mappings” rely on a single embodiment, however,
`
`because Cadiz describes almost every figure and its associated description as
`
`“exemplary.” See, e.g., Ex. 1006, ¶¶28-29, 31-35, 39, 43 (describing Figures 1, 2,
`
`4A, 4B, 5, 6A, 8A and 10 individually as “exemplary” embodiments); see also id.,
`
`¶57 (describing the embodiments in each figure as “exemplary”). Cadiz’s
`
`characterization of its figures as “exemplary” in this context means they are
`
`distinct embodiments of Cadiz’s “present invention,” and not a single, monolithic
`
`embodiment. See Skedco, Inc. v. Strategic Operations, Inc., Case No. 2016-1349,
`
`slip op. at *7-8 (Fed. Cir. Apr. 24, 2017) (non-precedential).
`
`17
`
`

`

`IPR2017-00914 (U.S. Patent 8,713,466)
`
`Patent Owner’s Preliminary Resp.
`
`The Petition’s person-centric mapping relies on Figures 8A-8C, which
`
`represent “an exemplary screen image illustrating an alternative embodiment of a
`
`peripheral awareness interface ….” Ex. 1006, ¶201 (emphasis added). Despite
`
`that Cadiz nowhere directly relates this alternative embodiment to Figure 6A,
`
`much less the variety of embodiments disclosed in Figures 1-5, the Petition
`
`nevertheless relies on a combination of these Figures to assert that Cadiz discloses
`
`the majority of claim 1’s limitations without modification. The Petition’s email-
`
`centric mapping relies on a combination of Figures 1-5 and 10, but Cadiz never
`
`relates the embodiment disclosed in Figure 10 to any other figure or embodiment.
`
`Instead, Cadiz explains that “FIG. 9 and FIG. 10 represent further examples of
`
`different types of tickets,” but does not explain that Figure 10 extends or builds
`
`upon any of the embodiments described and relied upon in Figures 1-5. See Ex.
`
`1006, ¶203. And the Petition is silent on the relationship between these disclosures
`
`or how they could operate as a single embodiment.
`
`The Petition further obfuscates its blending of embodiments by citing large
`
`swathes of Cadiz’s disclosure in undifferentiated string citations. See, e.g., Pet. 25
`
`(citing twenty nine distinct paragraphs covering numerous embodiments:
`
`“Ex.1006, ¶¶[0182], [0197]; see also id., ¶¶[0016], [0019]-[0022], [0059], [0061]-
`
`[0063], [0066]-[0068], [0076], [0084], [0086]-[0087], [0094], [0115], [0170]-
`
`[0172], [0185], [0194], [0197]-[0198], [0201], [0210].”); see also id., 14 (citing
`
`18
`
`

`

`IPR2017-00914 (U.S. Patent 8,713,466)
`
`Patent Owner’s Preliminary Resp.
`
`nineteen distinct paragraphs covering numerous embodiments: “Ex. 1006,
`
`¶¶[0021], [0022], [0067], [0086]; see also id., ¶¶[0019], [0059], [0064], [0069],
`
`[0071]-[0072], [0084], [0088], [0090], [0178], [0183]-[0184], [0187], [0194],
`
`[0203].”). The result is that the Petition makes it difficult if not impossible to
`
`determine how these features relate to each other and allegedly teach the
`
`limitations of the claims. See Apple Inc. v. ContentGuard Holdings Inc., IPR2015-
`
`00440, Paper 11 at 10 (PTAB July 13, 2015) (denying institution where “the
`
`Petition’s conclusory analysis… and imprecise citations to [the prior art], leaves us
`
`to play archeologist with the record” (internal quotation marks omitted)).1
`
`
`
`
`
`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. 1006, ¶¶74, 100,
`
`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.
`
`Likewise, Cadiz’s stray references to Figures 8B-8C in the lead up to discussing
`
`Figure 5 make clear that these figures are each example embodiments of the
`
`present invention, not a single, monolithic embodiment. See, e.g., id., ¶¶183 (“See,
`
`for example, FIG. 8B ….”), 184, 190 (emphasis added).
`
`19
`
`

`

`IPR2017-00914 (U.S. Patent 8,713,466)
`
`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,
`
`8A, and 8C to represent a s