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`IPR2019-00528
`U.S. Patent No. 8,279,173
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FACEBOOK, INC., INSTAGRAM, LLC, and WHATSAPP INC.,
`Petitioners
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`v.
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`BLACKBERRY LIMITED
`Patent Owner
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`Case IPR2019-00528
`U.S. Patent No. 8,279,173 B2
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`PETITIONER REPLY
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`Table of Contents
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`Page
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`I.
`II.
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`C.
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`C.
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`INTRODUCTION .......................................................................................... 1
`CLAIM CONSTRUCTION OF “TAG SOURCES” ..................................... 1
`A.
`The Intrinsic Record Does Not Support Importing “Separately
`Searchable” Into the Construction of “Tag Sources” ........................... 3
`B. A Tag Source Need Not Be “Separately Searchable” To Be
`Distinct From Other Sources or Recognizable By the System ............ 9
`Patent Owner’s Arguments About the Positions in the
`Underlying Litigation Are Not Relevant ............................................ 10
`III. MACLAURIN DISCLOSES THE DISPLAY OF TAGS
`“UTILIZING DIFFERENT SIZES, FONTS, COLORS, AND/OR
`THE LIKE” IN THE CONTEXT OF TAGGING ITEMS .......................... 11
`A. MacLaurin’s Tag Display Disclosures Pertain to Tagging Items ...... 11
`B.
`Even if MacLaurin’s Tag Display Disclosures Pertained Only
`to “Recall” Mode and Not Tagging, the Challenged Claims
`Would Still Have Been Obvious to a Person of Ordinary Skill
`in the Art. ............................................................................................ 17
`It Is Undisputed That MacLaurin Discloses the Existence of
`Multiple Separate “Tag Sources” ....................................................... 19
`IV. PATENT OWNER’S CHALLENGE TO THE COMBINATION OF
`MACLAURIN WITH ROTHMULLER AND PLOTKIN FAILS
`BECAUSE IT IMPROPERLY ATTEMPTS TO ATTACK THE
`REFERENCES INDIVIDUALLY. .............................................................. 20
`V. MACLAURIN DISCLOSES AND RENDERS OBVIOUS THE
`DISPLAY OF A “TAG LIST” ..................................................................... 23
`VI. CONCLUSION ............................................................................................. 24
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`-i-
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`I.
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`IPR2019-00528
`U.S. Patent No. 8,279,173
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`INTRODUCTION
`Patent Owner relies almost entirely on a narrow construction of “tag sources”
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`that lacks support in the intrinsic record and violates well-established principles of
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`claim construction. The prior art discloses separate “tag sources,” as properly
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`construed, and renders the claims obvious under § 103.
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`Patent Owner’s proposed construction would not provide a basis to
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`distinguish MacLaurin even if the Board were to adopt it. As the Petition fully
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`explained, MacLaurin discloses at least two different categories of tag sources that
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`render obvious the “tag sources” recited in the challenged claims – (1) “automatic”
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`and “explicit” tags, and (2) “external tag sources” such as an attorney tag set obtained
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`from the Internet and a medical profession tag set obtained from an on-line service.
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`(Petition at 31-34.) Patent Owner focuses its arguments about “tag sources” on the
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`automatic/explicit tags in MacLaurin, but nowhere disputes that the “external tag
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`sources” in MacLaurin disclose discrete “tag sources,” even under its unduly narrow
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`construction. Because Patent Owner has not provided a persuasive explanation as
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`to how the challenged claims are non-obvious, the Board should find those claims
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`unpatentable based on the instituted grounds.
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`II. CLAIM CONSTRUCTION OF “TAG SOURCES”
`Patent Owner argues that “tag sources” should be construed as a “separately
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`searchable collections of tags.” Petitioner agrees that a “tag source” refers to a
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`IPR2019-00528
`U.S. Patent No. 8,279,173
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`“collection of tags,” but the construction should stop there.1 As noted, this
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`construction would not distinguish MacLaurin even if adopted. Nevertheless, as
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`explained at length below, the Board should reject this construction because it lacks
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`support in the intrinsic record.
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`One immediate problem with Patent Owner’s proposal is its ambiguity – it is
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`not clear how to determine whether an accused system or prior art reference meets
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`the “separately searchable” requirement. Patent Owner’s arguments might be read
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`to suggest that “separately searchable” requires that tag sources be physically stored
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`separately from each other in computer memory. But Patent Owner has definitively
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`walked away from that position. Its Patent Owner Response agrees with Petitioner’s
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`expert that “a ‘tag source’ may encompass a collection of tags held together ‘from a
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`logical perspective.’” (Response at 47 n.11; id. (“BlackBerry does not dispute that
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`perspective, and submits that this potential ‘logical’ grouping is captured by
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`BlackBerry’s proposed construction of ‘separately searchable collections of
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`1 Although the Petition did not provide an express construction of “tag source,” it
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`described the term as referring to a source of predefined tags. (Petition at 9.)
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`Petitioner does not perceive a material difference between that formulation and
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`simply a “collection of tags,” which comes closer to the language of Patent Owner’s
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`proposal and therefore helps to narrow and crystalizes the dispute.
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`U.S. Patent No. 8,279,173
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`tags.”).)2 Patent Owner’s expert similarly acknowledged that the claimed “tag
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`sources” need not be stored in any particular physical location. (Ex. 1021, 165:23-
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`166:2.) This is also consistent with Patent Owner’s position in the underlying
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`litigation in which it told the district court that “[t]here is no basis for requiring that
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`different ‘sources’ require different storage structures.” (Ex. 1022 at 019.)
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`So if a “separately searchable collection of tags” need not be physically
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`separated from other collections, what does Patent Owner’s construction actually
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`require? To the best Petitioner can tell, a “separately searchable” tag source is one
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`that is capable of being searched without having to search another tag source,
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`although the proposed construction is unclear as to how this characteristic is to be
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`achieved, or how its presence or absence in the prior art can be determined. (Ex.
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`1023, ¶8 n.1.) In any event, there is no basis in the intrinsic record for any
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`“separately searchable” restriction.
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`A. The Intrinsic Record Does Not Support Importing “Separately
`Searchable” Into the Construction of “Tag Sources”
`Patent Owner relies exclusively on the ’173 patent specification for its
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`construction. But the Federal Circuit has long held that “[t]he claims, not
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`2 As Patent Owner’s expert explained, a “logical collection” of data “can be thought
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`of together,” but is “not necessarily physically together,” for example, “the data
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`might be all over the place.” (Ex. 1021, 71:12-73:10.)
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`U.S. Patent No. 8,279,173
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`specification embodiments, define the scope of patent protection. The patentee is
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`entitled to the full scope of his claims, and we will not limit him to his preferred
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`embodiment or import a limitation from the specification into the claims.” Kara
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`Tech., Inc. v. Stamps.com, Inc., 582 F.3d 1341, 1348 (Fed. Cir. 2009) (citing Phillips
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`v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc)); see also Hill-Rom
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`Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014) (“While we read
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`claims in view of the specification, of which they are a part, we do not read
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`limitations from the embodiments in the specification into the claims.”).
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`Patent Owner does not identify any basis for departing from these well-
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`established principles. Patent Owner does not, for example, argue that the applicants
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`acted as their own lexicographer by providing an express definition of “tag sources”
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`in the specification. Patent Owner does not identify any clear and unmistakable
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`disclaimer or disavowal in the specification relating to “tag sources.” And Patent
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`Owner does not identify anything in the specification suggesting that separate
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`searchability was integral to the invention or touting it as an advancement over the
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`prior art. Patent Owner’s argument thus asks the Board to commit “one of the
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`cardinal sins of patent law,” Phillips, 415 F.3d at 1320, by importing a “separately
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`searchable” requirement with no legal justification.
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`But to argue that the “separately searchable” construction attempts to “read
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`limitations from the embodiments in the specification into the claims,” Hill-Rom
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`U.S. Patent No. 8,279,173
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`Services, 755 F.3d at 1371, arguably gives too much credit to Patent Owner’s
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`argument. Patent Owner does not identify a single embodiment in the specification
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`where tag sources are actually described as separately searchable. Patent Owner has
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`at best inferred this technical characteristic from the specification’s vague and high-
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`level descriptions of exemplary tag sources – which the specification repeatedly
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`makes clear are non-limiting examples. (Ex. 1023, ¶¶6-7, 9-11.)
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`And the inference that Patent Owner attempts to draw from the specification
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`is at best tenuous. Nothing in the specification describes how any search of the tag
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`sources is carried out, let alone suggests that the tag sources must be capable of being
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`searched separately from one another. The specification devotes a single sentence
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`to the actual search of tag sources that merely states that the photo tag selection
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`module 148B “may be configured to search one or more selected ‘tag sources’ for
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`tags that match the currently entered text” (’173, 5:39-42), with no details about how
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`a search of selected tag sources must be carried out. A person of ordinary skill in
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`the art would have understood that there are numerous ways to implement the
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`“search[ing] one or more selected ‘tag sources’ for tags that match the currently
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`entered text” (id.) that would not require that each tag source be separately
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`searchable. Nothing in the specification, for example, excludes a system in which a
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`search of tag sources is accomplished through a single search operation that extends
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`across all tag sources. (Ex. 1023, ¶¶8, 17.) As explained, Patent Owner does not
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`U.S. Patent No. 8,279,173
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`contend that “separately searchable” requires that tag sources be physically stored
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`separately from one another.
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`Patent Owner accordingly cannot rely on anything in the specification actually
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`relating to search features to support its construction. It instead points to the
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`description of exemplary tag sources themselves, stating that “every example ‘tag
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`source’ in the ’173 patent specification is consistent with separately searchable
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`collections of tags.” (Response at 23.) This is because, according to Patent Owner,
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`“[t]hese example ‘tag sources’ correspond to tags obtained ‘from’ separate ‘software
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`applications.’” (Id.) But even if this was clearly true (and it is not as discussed
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`below), the Federal Circuit has expressly rejected the argument that “if a patent
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`describes only a single embodiment, the claims of the patent must be construed as
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`being limited to that embodiment.” Hill-Rom Servs., 755 F.3d at 1371; see also
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`Continental Circuits LLC v. Intel Corp., 915 F.3d 788 (Fed. Cir. 2019) (“Even when
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`the specification describes only a single embodiment, the claims of the patent will
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`not be read restrictively unless the patentee has demonstrated a clear intention to
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`limit the claim scope using ‘words or expressions of manifest exclusion or
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`restriction.’”) (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906
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`(Fed. Cir. 2004)). The ’173 patent specification consistently refers to the described
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`tag sources as merely exemplary. (’173, e.g., 5:42-47 (“As shown by way of
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`illustration in screen 400B of FIG. 4B, these tag sources could include, for example,
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`U.S. Patent No. 8,279,173
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`a list of friends from an online service like Facebook™….”), 6:6-13 (“Significantly,
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`as the matching tag list 412 includes possible tags that may be used from various
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`selected tag sources (such as the user’s Facebook friends….”) (underlining added).)
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`Even Patent Owner’s expert consistently refers to the tag sources identified in the
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`’173 specification as “exemplary.” (Ex. 2001, ¶87 (“[E]very exemplary ‘tag source’
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`in the ’173 patent specification is consistent with separately searchable collections
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`of tags.”), ¶88 (“These exemplary ‘tag sources’ correspond to tags obtained ‘from’
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`separate ‘software applications.’”); Ex. 1021, 148:8-150:15.)
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`But even if one could overlook the admittedly exemplary nature of the tag
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`sources in the ’173 patent specification, the patent simply does not provide enough
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`information to determine with any confidence how tag sources are stored in
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`relationship to one other, or whether they come from separate software applications.
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`(Ex. 1023, ¶¶12-15.) For example, Patent Owner suggests that a particular
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`exemplary tag source – “a list of friends from an online service like Facebook™” –
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`is separate from other tag sources because it corresponds to a remote database
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`accessible over a network. (Response at 24-25 (citing Ex. 2001, ¶88).) But at his
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`deposition, Patent Owner’s expert acknowledged that the list of Facebook friends
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`could be also stored on locally on the user’s device. (Ex. 1021, 150:16-151:21.)
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`Similarly, Patent Owner implies that the “list of contacts from the user’s address
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`book 142” is stored locally on the user’s device. (Response at 23-24.) But Patent
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`U.S. Patent No. 8,279,173
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`Owner’s expert admitted that the address book could have been replicated from
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`something “stored in the cloud.” (Ex. 1021, 152:2-9.) The dearth of detail about the
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`organization of tag sources strongly suggests that these details were simply not
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`relevant to the invention. (Ex. 1023, ¶¶8, 15.)
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`And even putting aside the ambiguities in the specification with respect to
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`how tag sources are organized in relationship to one another, the specification
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`contains no description about how data from the tag sources is accessed, identified,
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`or retrieved to perform any search. (Ex. 1023, ¶¶7-8.) This is important because “a
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`search of the tags can be implemented in a number of ways regardless of how the
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`tags sources are arranged in relationship to one another.” (Id. ¶16.) For example,
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`nothing in the specification suggests that the applicants intended to exclude well-
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`known pre-fetching techniques dating back to the 1970s for speeding up searches,
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`in which data from multiple data sources could be gathered and collected into a
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`common cache or buffer in memory, which could later be searched instead of
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`searching the underlying data sources. (Id. ¶18.) In other words, even if “[t]hese
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`example ‘tag sources’ [in the specification] correspond to tags obtained ‘from’
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`separate ‘software applications’” (Response at 23), that would not require that the
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`tag sources used to populate the claimed tag list be separately searchable.
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`IPR2019-00528
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`U.S. Patent No. 8,279,173
`B. A Tag Source Need Not Be “Separately Searchable” To Be Distinct
`From Other Sources or Recognizable By the System
`Patent Owner argues that simply defining a “tag source” as a “collection of
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`tags” does not allow the system to distinguish one tag source from another.
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`(Response at 26-28.) But this argument speaks more to application of the claim
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`construction to the prior art than to the merits of the proposed construction itself. As
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`explained below, the prior art references cited in the instituted grounds plainly show
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`distinct and separate collections of tags. Patent Owner’s suggestion that importing
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`“separately searchable” is necessary to impose a separation between distinct tag
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`sources is without merit.
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`Patent Owner’s citation to Amazon.com, Inc. v. ZitoVault, LLC, 754 F. App’x
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`965 (Fed. Cir. 2018), is instructive on this point and actually supports Petitioner’s
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`proposed construction. The Federal Circuit addressed the construction of “sessions”
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`and addressed how to construe the term in a way that would allow one session to be
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`distinguished from another. This was achieved by simply construing “sessions” to
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`be “recognizable,” i.e., have a recognizable beginning and end. Id. at 970. The court
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`cited with approval the Board’s statement that this interpretation was “not limited to
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`any particular technique or protocol for recognizing the beginning and end of a
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`session,” and that “[a] wide variety of techniques for such beginning and ending
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`determinations are within the scope ... of ‘session.’” Id. at 970-71.
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`U.S. Patent No. 8,279,173
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`While the construction in ZitoVault did not impose any rigid or specific
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`requirements on how to separate and distinguish one session from another, Patent
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`Owner’s proposed construction here does just that by mandating an ambiguous
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`“separately searchable” requirement as the sole means of distinguishing tag sources.
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`But it is not necessary to import an unwarranted and unsupported “separately
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`searchable” requirement in order to distinguish one tag source from another. A
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`construction more consistent with ZitoVault would have been “a recognizable
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`collection or tags,” which Petitioner believes is already implicit in its proposed
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`construction, rather than Patent Owner’s narrow construction. As demonstrated
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`below, the prior art references make clear that they disclose distinct collections of
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`tags that are separately recognizable and identifiable by the system.
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`C.
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`Patent Owner’s Arguments About the Positions in the Underlying
`Litigation Are Not Relevant
`Patent Owner lifts a statement out of context from a heavily redacted portion
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`of a litigation brief filed by Petitioner to suggest that Petitioner has applied “tag
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`sources” differently from how it is applying the term here. But the issue in that brief
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`(and the underlying motion) was not the existence of “tag sources” in the accused
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`Facebook products or the meaning of “tag sources,” but whether the alleged “tag
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`type indicators” in the Facebook system were “indicative of a tag source.” The key
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`issue there was that the visual indicators Patent Owner relied upon in the accused
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`products had no relationship to the source of the tags in the accused tag list.
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`U.S. Patent No. 8,279,173
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`Petitioner did not advance any position on the meaning of “tag source” inconsistent
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`with this IPR.
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`But the same cannot be said of Patent Owner. In the litigation, Patent Owner
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`never argued that “tag sources” must be separately searchable. Its expert in the
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`litigation, in fact, testified that he simply adopted the “plain meaning,” which is “just
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`a source of tags.” (Ex. 1024, 110:9-19.)
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`III. MACLAURIN DISCLOSES THE DISPLAY OF TAGS “UTILIZING
`DIFFERENT SIZES, FONTS, COLORS, AND/OR THE LIKE” IN THE
`CONTEXT OF TAGGING ITEMS
`A. MacLaurin’s Tag Display Disclosures Pertain to Tagging Items
`MacLaurin explains that “if an automated tag and an explicit tag (one entered
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`by a user) are both presented to the user, each type of tag can be distinguished
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`utilizing different sizes, fonts, colors, and/or symbols and the like.” (MacLaurin,
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`8:19-23 (cited in Petition at 36) (underlining added).) Patent Owner argues that this
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`disclosure does not refer to the process of tagging items, but rather, to a “recall”
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`feature for selecting from a list of previously-tagged items. (Response at 35-41.)
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`Patent Owner’s arguments cannot be reconciled with the context in which the
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`ability to displays tags “utilizing different sizes, fonts, colors, and/or symbols and
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`the like” (MacLaurin, 8:19-23) appears in MacLaurin. That surrounding context
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`confirms that MacLaurin’s disclosures at 8:19-23 relate to the tagging mode.
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`(MacLaurin, 7:66-8:18.) For the convenience of the Board, Petitioner has provided
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`U.S. Patent No. 8,279,173
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`a block-quotation below of the surrounding passages in MacLaurin, highlighting the
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`statement at 8:19-23 in bold underlining. As the context confirms, MacLaurin’s
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`statement about the ability to display tags “utilizing different sizes, fonts, colors,
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`and/or symbols and the like” (MacLaurin, 8:19-23) was made in reference to
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`MacLaurin’s tagging features, not the so-called “recall” features:
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`As an example user interface, given a display of items,
`such as the list of files presented in a desktop file window,
`if the user has selected one or more items utilizing the user
`interface and begins to type, a light ‘tagging mode’ can be
`entered with the following characteristics:
`display a special icon and/or text message indicating that
`tagging is active
`accumulate each key a user types into a "tag buffer”
`use this tag buffer to guess at likely tags
`display the current “best guess” tag in a textual readout
`associated with the window
`allow a user to choose between “tag guesses” using cursor
`arrows
`allow a user to choose whether to accept guesses or simply
`use the buffer as is
`if a user hits the escape key (or similar), exit tagging mode
`if the user hits the enter/return key (or similar), apply the
`items to the tag
`In addition, if an automated tag and an explicit tag (one
`entered by a user) are both presented to the user, each
`type of tag can be distinguished utilizing different sizes,
`fonts, colors, and/or symbols and the like. The above
`user
`interface characteristics are meant
`to be a
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`representative process and one skilled in the art can
`appreciate that many variations are possible and are still
`within the scope of the disclosed subject matter herein. In
`general, once the tags are applied to the selected items,
`they are automatically utilized by the system to organize
`and retrieve content.
`Additional examples of user interfaces are shown in FIGS.
`4-8 and facilitate to illustrate the ease at which a user can
`tag selected items.
`(MacLaurin, 7:66-8:29 (emphasis added).) As shown, the disclosure shown in
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`underlining and bold above is sandwiched directly between disclosures plainly
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`relating to the process of tagging items under the “light” tagging mode – not the so-
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`called “recall” mode as Patent Owner suggests.
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`More specifically, the block-quoted passage above begins by explaining that
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`“if the user has selected one or more items utilizing the user interface and begins to
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`type, a light tagging mode can be entered,” whose “characteristics” are then listed.
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`(MacLaurin, 7:67-8:18.) Immediately after the list of characteristics comes the key
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`sentence saying that “if an automated tag and an explicit tag (one entered by a user)
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`are both presented to the user, each type of tag can be distinguished utilizing different
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`sizes, fonts, colors, and/or symbols and the like.” (MacLaurin, 8:19-23.) The
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`sentence that immediately follows then explains that “[t]he above user interface
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`characteristics are meant to be a representative process” (MacLaurin, 8:23-24),
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`clearly referring back to the earlier statement introducing “a light ‘tagging mode’
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`[that] can be entered with the following characteristics…” (MacLaurin, 8:2-3
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`(emphasis added).) And the next sentence right after that ends the paragraph by
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`stating that “once tags are applied to the selected items, they are automatically
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`utilized by the system to organize and retrieve content” (MacLaurin, 8:27-29),
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`plainly referring back the earlier statement that “if the user has selected one or more
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`items utilizing the user interface and begins to type, a light tagging mode can be
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`entered…” (MacLaurin, 7:67-8:3.) Accordingly, the statement about displaying
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`tags “utilizing different sizes, fonts, colors, and/or symbols and the like”
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`(MacLaurin, 8:19-23), is tightly sandwiched between disclosures plainly relating the
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`“light” tagging mode of MacLaurin.3 It would be anomalous to read the statement
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`about “utilizing different sizes, fonts, colors, and/or symbols and the like”
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`(MacLaurin, 8:19-23), as relating to an entirely different subject than all of the
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`statements around it, as Patent Owner suggests. (Ex. 1023, ¶23.)
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`Patent Owner next attempts to diminish the importance of this key disclosure
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`about displaying tags “utilizing different sizes, fonts, colors, and/or symbols and the
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`like” (MacLaurin, 8:19-23) by arguing
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`that “MacLaurin never displays
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`3 And as shown at the end of the block quote above, MacLaurin then continues its
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`discussion of tagging features by stating that “[a]dditional examples of user
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`interfaces are shown in FIGS. 4-8 and facilitate to illustrate the ease at which a user
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`can tag selected items.” (MacLaurin, 8:30-32 (underlining added).)
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`automated/automatic tags in its tagging mode.” (Response at 36 (emphasis in
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`original).) But Patent Owner points to nothing in MacLaurin suggesting this is the
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`case. It argues that with “automatic item tagging,” tags are “automatically associated
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`with selected items without further action.” (Id. (quoting MacLaurin, e.g.,
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`Abstract).) But this argument only addresses the process of automatic tag
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`assignment, which has nothing to do with whether a previously-assigned
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`“automatic” tag can later appear as a tag suggestion to a user when tagging items.
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`And nothing in MacLaurin suggests that it cannot. MacLaurin states that
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`“[t]he selection-based tagging component 102 can also provide tag suggestions” that
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`include “a tag associated with a similar item, a recently utilized tag,” and “a
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`commonly used tag,” among others. (MacLaurin, 4:48-53 (underlining added); see
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`also id., 5:19-24, 7:17-2.) A person of ordinary skill in the art would have
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`appreciated that a “recently utilized tag,” a “commonly used tag,” and/or a “tag
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`associated with a similar items” (MacLaurin, 4:48-53) – any one of which can
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`appear as a tag suggestion (id.) – could be an automatic tag. (Ex. 1023, ¶¶24-25.)
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`For example, if the system previously assigned an automatic tag to an item, that tag
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`could be a “recently utilized tag” (if automatically assigned recently), a “commonly
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`used tag” or “tag associated with similar items” (if automatically assigned to a
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`number of other items), among others. (Id., ¶25.)
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`MacLaurin unequivocally states that “[t]he tagging system can contain both
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`automatic tags generated by the tagging system and explicit tags from a user.”
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`(MacLaurin, 7:48-49 (emphasis added).) It would have been obvious that the “tags”
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`from which the tag suggestions may be derived could have included any of the tags
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`available to the system, including automatic tags, explicit tags, or tags from external
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`tag sources. (Ex. 1023, ¶25.) Nothing in MacLaurin suggests otherwise.
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`Patent Owner also relies on statements from a portion of the file history of a
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`continuation of MacLaurin (Ex. 2008), which were made in 2014 – almost nine years
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`after MacLaurin’s priority date and seven years after the ’173 priority date. Those
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`statements are not relevant because the applicants never actually said the passage in
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`MacLaurin at 8:19-23 does not relate to MacLaurin’s features for assigning tags to
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`items. The applicants merely pointed to this passage (among others) as providing
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`written description and enablement support under § 112 for claims directed at the
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`“recall” features of MacLaurin. The light tagging mode was not the subject of the
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`rejected claims to which applicants’ arguments were directed. Notably, MacLaurin
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`discloses the ability to visually distinguish automatic and explicit tags, with respect
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`to both the recall and tagging features. (Ex. 1023, ¶26 (citing MacLaurin, 7:49-51,
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`8:19-23).) It is therefore not surprising that the applicants would cite the passage in
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`MacLaurin at 8:19-23 as additional § 112 support for their proposed claims.
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`B.
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`Even if MacLaurin’s Tag Display Disclosures Pertained Only to
`“Recall” Mode and Not Tagging, the Challenged Claims Would
`Still Have Been Obvious to a Person of Ordinary Skill in the Art.
`As noted, Patent Owner argues that MacLaurin’s disclosures about displaying
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`tags “utilizing different sizes, fonts, colors, and/or symbols and the like”
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`(MacLaurin, 8:19-23; see also id. 7:49-51) relates only to the recall and not tagging
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`feature. This argument is incorrect for the reasons provided above, but even if it had
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`merit, the claims would still be obvious. (Ex. 1023, ¶¶27-30.)
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`The key problem with Patent Owner’s argument is that it narrowly focuses on
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`whether MacLaurin’s disclosures strictly apply to the tagging or “recall” mode,
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`adopting an approach that more closely resembles anticipation than obviousness.
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`But all of the instituted grounds rely on obviousness. Grounds 3-6 cite MacLaurin
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`in combination with Rothmuller (Grounds 3-4) and Plotkin (Grounds 5-6), which
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`provide an independent basis for rendering the “tag type indicator” limitations
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`obvious in combination with MacLaurin. They provide an alternative basis for
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`obviousness even if Patent Owner’s arguments about MacLaurin had merit.
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`The same also holds true for Grounds 1 and 2, which cite only MacLaurin for
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`the “tag type indicator” limitation. This is because it would have been obvious to a
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`skilled artisan that the benefit and motivation to display tags using “different sizes,
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`fonts, colors, and/or symbols and the like” (MacLaurin, 8:19-23) would have applied
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`to any situation calling for the display of tags to a user – including list of tag
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`suggestions for tagging items in MacLaurin. The display of tag type indicators for
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`each tag would have allowed the user to quickly and visually distinguish one type of
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`tag from another, which would have clearly enhanced the ability of the user to select
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`and assign the appropriate tag for an item. (Ex. 1023, ¶30.)
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`The Petition explained that the benefit of allowing the user to visually
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`distinguish one type of tag from another would not have been limited only to specific
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`features or functionalities described in MacLaurin. (Petition at 40, 67.) For
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`example, in connection with the further combination with Plotkin, the Petition
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`explained that “the advantages of using tag type indicators in a tag list (e.g., the
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`ability to quickly distinguish tags based on their tag type) are applicable to a broad
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`range of user interfaces.” (Petition at 67; Ex. 1002, ¶111.) It therefore would have
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`been obvious that displaying tags of different types in a visually distinct way would
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`“have improved the tagging process by allowing the user to more quickly identify
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`the most suitable tag from among the many options presented in the tag list.” (Ex.
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`1002, ¶99; Petition at 60.) Accordingly, it would have been obvious to adapt
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`MacLaurin’s teaching about displaying tags “utilizing different sizes, fonts, colors,
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`and/or symbols and the like” (MacLaurin, 8:19-23) to the list of tag suggestions
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`provided to users when tagging items in MacLaurin, even if the Board were to
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`conclude that those disclosures from MacLaurin related to the so-called “recall”
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`mode as Patent Owner suggests.
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`C.
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`It Is Undisputed That MacLaurin Discloses the Existence of
`Multiple Separate “Tag Sources”
`Patent Owner also argues that MacLaurin does not disclose discrete “tag
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`sources,” focusing on the “automatic” and “explicit” tag collections in MacLaurin.
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`(Response at 37 n.7.) This argument fails because it relies on an incorrect
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`construction of “tag sources,” discussed thoroughly in Part II above.
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`MacLaurin makes clear tha