Paper No. ____
`Filed: March 10, 2020
`
`Filed on behalf of: Snap Inc.
`
`By: Yar R. Chaikovsky (Snap-Blackberry-PH-IPR@paulhastings.com)
`
`Chad Peterman (Snap-Blackberry-PH-IPR @paulhastings.com)
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`David Okano (Snap-Blackberry-PH-IPR@paulhastings.com)
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`Paul Hastings LLP
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`SNAP INC.,
`Petitioner
`
`v.
`
`BLACKBERRY LIMITED
`Patent Owner
`
`
`
`
`Case No. IPR2019-00714
`U.S. Patent No. 8,825,084
`
`
`
`
`
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`PETITIONER’S REPLY
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`

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`TABLE OF CONTENTS
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`B.
`
`D.
`
`Page
`Introduction ................................................................................................... 1
`I.
`II. The Board properly interpreted “action spot” in context of the
`full claim limitation....................................................................................... 2
`III. Ground 1: Response arguments rely on mischaracterization of
`Winkler and the Petition .............................................................................. 8
`A.
`Patent Owner mischaracterizes Winkler’s disclosure as
`presenting distinct embodiments and ignores Winkler’s teaching
`that features may be used in tandem .................................................... 9
`Patent Owner’s assertion that Petitioner does not explain how a
`single map element may comprise an action spot
`mischaracterizes of the Petition and relies on an incomplete
`understanding of Winkler ................................................................... 10
`C. Winkler’s method for dynamically modifying map elements
`teaches map elements that can be a claimed “action spot” ................ 12
`The Petition describes how and why a POSITA would have
`been motivated to combine Winkler and Altman ............................... 21
`IV. Grounds 2-3: The Response relies on mischaracterizations of the
`references, Petition, and’084 patent .......................................................... 22
`A.
`The Response imports limitations into the claimed “activity
`level” and Lemmela’s disclosure ........................................................ 22
`Patent Owner imports new limitations into the claimed
`“graphical item identifying a direction” and creates distinctions
`unsupported by the ’084 patent or instituted grounds ........................ 24
`Patent Owner’s assertion that Lemmela does not disclose a
`server “configured to receive data indicative of a current
`location of a first mobile device” mischaracterizes the instituted
`grounds ............................................................................................... 27
`D. A POSITA would have been motivated to combine Lemmela
`and Crowley (ground 2) and Lemmela, Crowley, and Winkler
`(ground 3) ........................................................................................... 30
`V. Conclusion ................................................................................................... 30
`
`
`B.
`
`C.
`
`i
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`

`

`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Argentum Pharm. LLC v. Research Corp. Technologies, Inc.,
`IPR2016-00204, 2017 WL 1096590 (PTAB March 22, 2017) .................... 12, 27
`CSR, PLC v. Skullcandy, Inc.,
`594 F. App’x 672 (Fed. Cir. 2014) ....................................................................... 9
`Gen. Elec. Co. v. United Techs. Corp.,
`IPR2016-01287, 2017 WL 6731569 (PTAB Dec. 29, 2017) ............................. 12
`In re Magnum Oil Tools,
`829 F.3d 1364 (Fed. Cir. 2016) ......................................................................... 13
`Intellectual Ventures II LLC v. Ericsson Inc.,
`685 F. Appx. 913 (Fed. Cir. 2017) ......................................................... 13, 23, 29
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge, Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .......................................................................... 13
`SAS Inst., Inc. v. ComplementSoft, LLC,
`825 F.3d 1341 (Fed. Cir. 2016) ............................................................................ 6
`
`
`
`ii
`
`

`

`LIST OF EXHIBITS
`
`Description
`
`U.S. Patent No. 8,825,084
`
`Declaration of Dr. Samrat Bhattacharjee
`
`CV of Dr. Samrat Bhattacharjee
`
`U.S. Patent No. 8,750,906 (“Winkler”)
`
`U.S. Patent Application Publication 2008/0250337 (“Lemmela”)
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`U.S. Patent Application Publication 2007/0281716 (“Altman”)
`
`File History of U.S. Patent No. 8,825,084
`
`U.S. Patent No. 7,593,740 (“Crowley”)
`
`Complaint for Patent Infringement, Case No. 2:18-cv-02693, CD CA
`
`Declaration of Chad J. Peterman
`
`Rebuttal Declaration of Dr. Samrat Bhattacharjee
`
`Final Ruling On Defendant Snap Inc.’s Motion For Summary Judgment
`Of Invalidity Under Section 101 Of U.S. Patent Nos. 8,825,084 And
`8,326,327, Blackberry Limited v. Snap Inc., Case Nos. CV 18-1844-GW
`& 18-2693-GW (C.D. Cal. October 1, 2019)
`
`Transcript of Deposition of Patrick McDaniel, IPR2019-00714 and
`IPR2019-00715 (March 6, 2020)
`
`Joint Claim Construction and Prehearing Statement, Blackberry Limited
`v. Snap Inc., Case Nos. CV 18-1844-GW & 18-2693-GW (C.D. Cal.
`February 14, 2019)
`
`No.
`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`
`
`
`
`

`

`Petitioner’s Reply
`
`I.
`
`Introduction
`Patent Owner’s Response attempts to import unsupported limitations into
`
`the challenged claims and mischaracterizes the prior art’s teachings, both which
`
`highlight the weakness of Patent Owner’s substantive positions.
`
`First, Patent Owner attempts to import a temporal limitation from a claim
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`term in isolation to the full limitation recited the term as a whole, which is
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`inconsistent with the District Court’s express interpretation of the limitation. In
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`particular, Patent Owner seeks to carve out “action spots” in the prior art from the
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`scope of the claims because they purportedly do not reflect recent mobile device
`
`activity that “is occurring,” Resp., 15-21. But this arbitrary and undisclosed line
`
`between recent and historical activity ignores that the claim recites “determin[ing]1
`
`of at least one action spot”—not an “action spot” in isolation—contradicts the plan
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`language of the claims, the specification, and the District Court’s interpretation of
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`the claims. Ex. 1012, 40-43.
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`Second, the Response presents an inaccurate understanding of the instituted
`
`grounds, as Patent Owner’s arguments contradict Winkler’s and Lemmela’s express
`
`disclosures. For example, Patent Owner contends the Petition relies on “distinct
`
`embodiments” in Winkler, despite express teaching the cited features may be used
`
`
`1 Unless noted, all emphases are added.
`
`1
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`

`

`Petitioner’s Reply
`
`in tandem (compare Resp., 46-49, 56-58 with Pet., 18) and “conflates distances
`
`from a map element with distances from a current location of the mobile device,”
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`despite Winkler’s disclosure that a map element may be the current location of the
`
`mobile device (compare Resp., 58-60 with Pet., 19-20). Patent Owner contends
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`Lemmela discloses only “historical” activity at “irregular” locations, but
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`Lemmela’s disclosure is not so limited (compare Resp., 23-30, 44 with Pet., 12-13,
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`56-57.
`
`II. The Board properly interpreted “action spot” in context of the full
`claim limitation
`As a threshold matter, Petitioner notes that even under Patent Owner’s
`
`proposed construction for “action spot,” the instituted grounds teach action spots as
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`presently occurring events. See Ex. 1011, ¶¶ 15, 24-32. But to the extent the
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`Board believes an express construction is necessary, the Board should reject Patent
`
`Owner’s attempt to import temporal limitations from any construction of “action
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`spot” in isolation to the full recited limitation of “determin[ing] at least one action
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`spot . . . the at least one action spot corresponding to a location where at least one
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`second mobile device has engaged in at least one documenting action” “within a
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`predetermined period of time.” Id., ¶¶ 14-20.
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`On Institution, the Board rejected Patent Owner’s attempt to limit “action
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`spots” to events “where at least one activity is occurring,” thereby excluding
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`“action spots” reflecting “historical activity occurring days or weeks” in the past.
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`2
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`

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`Petitioner’s Reply
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`Inst. Dec., 12-14. The Board’s rejection of Patent Owner’s attempt to contort the
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`claims to create an arbitrary and unsupported cutoff between “recent” and past
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`activity is consistent with the plain language of the claims, the express disclosure
`
`in the specification, and the District Court’s interpretation of the terms in its
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`summary judgment order. Ex. 1012, 40-43.
`
`Patent Owner confuses an “action spot” in the abstract, which may reflect a
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`location where mobile device activity “is occurring” (Ex. 1001, 3:3-5), with
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`“determin[ing] at least one action spot,” which the claims make clear is a
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`determination of past tense activity—one “correspond[ing] to a location where at
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`least one other mobile device has engaged in a documenting action within a
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`predetermined period of time” (id., 19:35-50). Consistent with the claim’s express
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`language, the specification repeatedly describes the determined “action spots” as
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`reflecting mobile device activity that has occurred in the past, not activity that is
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`presently occurring. Id. at 4:4-11 (“action spot “determined” as location where
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`mobile device “has engaged in a documenting action”); 3:39-42, 6:61-65 (same);
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`4:27-32 (“has documented’); 6:37-45 (action spot “more lively” where “more
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`documenting activity has occurred”); 11:56-67 (action spot reflects “most recent,”
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`not presently occurring, activity); 12:27-34, 12:43-48, 14:15-25 (action spot
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`reflects past tense activity, e.g. “engaged”).
`
`3
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`

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`Petitioner’s Reply
`
`To emphasize “determin[ing] at least one action spot” involves consideration
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`of past activity, the specification explains the “predetermined period of time” used
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`in the “determin[ing]” can be “within the last hour, the last twelve hours, the last
`
`twenty-four hours, the last thirty minutes, or any other time period.” Id. at 8:44-48;
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`Ex. 1011, ¶ 17. The District Court noted “the parties did not seek construction of
`
`the term predetermined duration of time, and its plain meaning supports that it
`
`could cover durations of time of undefined length, so long as they are
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`‘predetermined.’” Ex. 1012, 40. The District Court observed the claims “simply
`
`state that an action spot is corresponds [sic] to a location where a user ‘has
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`engaged’ in documenting activity, with no limits in time.” Id. As a result, it
`
`construed the claims as having no temporal limitations: “the Court would find that
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`the claims themselves do not on their face require ‘automatic,’ ‘periodic,’ or
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`otherwise timely updates of action spot information.” Id.; id. at 41 (“asserted
`
`claims lack meaningful limits in space, time, and relative location”).
`
`Patent Owner focuses on the parties’ agreed construction of the term “action
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`spot” in isolation,2 but ignores that the District Court interpreted the full
`
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`2 The parties stipulated to several constructions to narrow disputes and comply
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`with the District Court’s instruction during Markman proceedings that sought to
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`4
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`

`

`Petitioner’s Reply
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`limitation—not just as an isolated claim term—to resolve the parties’ summary
`
`judgment motions. Id. at 40. Indeed, Patent Owner’s expert conceded he did not
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`consider the District Court’s summary judgment order in preparing his opinions or
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`in interpreting the claims. Ex. 1013, 13:22-16:2, 145:8-146:21.
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`The parties’ stipulated construction of “action spot” as reflecting “currently
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`occurring” activity does not import an arbitrary temporal cutoff to the
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`“determin[ing]” of an “action spot” or mean that “determin[ed]” action spots are
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`also limited to “currently occurring” activity. See Ex. 1020, ¶¶ 16-20. Once the
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`focus is placed on the full limitation reciting “determin[ing] at least one action
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`spot” rather than an “action spot” in isolation, the claims and specification make
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`clear there are no temporal limitations to the activity encompassed in that
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`“determin[ation].” Ex. 1012, 40. The Board reached this conclusion on
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`Institution, explaining that the challenged claims recite “at least one action spot”
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`corresponding to a location where another mobile device “has engaged in” activity
`
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`limit the parties to requesting construction of no more than ten terms over eleven
`
`asserted patents. See Ex. 1014, 6-8.
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`5
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`

`

`Petitioner’s Reply
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`“within a predetermined period of time,” and the specification states the period of
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`time may be any time period. See Inst. Dec., 12-14.3
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`Although Patent Owner attempts to minimize the specification’s repeated
`
`references to “action spots” corresponding to where a mobile device “has engaged”
`
`in activity (Resp., 17-20), its proposal is flawed as a matter of logic, imports
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`limitations from the specification, and is at odds with the District Court’s
`
`interpretation. In particular, Patent Owner seeks to limit action spots to activity
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`that “is occurring,” and then to further define whether activity “is occurring” by the
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`“predetermined duration of time.” But by tying activity that “is occurring” in
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`“action spots” to a “predetermined period of time,” Patent Owner imports a
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`temporal limitation not recited by the claims.
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`For example, Patent Owner’s expert repeatedly asserted “the determination
`
`of whether something is occurring” is tied to the “predetermined duration of time”
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`(Ex. 1013, 59:8-61:13), and an activity “is occurring” only if it occurs within the
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`“predetermined duration of time” (see id., 104:16-105:1, 124:8-17, 103:3-8,
`
`
`3 If the Board ultimately departs from the Institution Decision’s rejection of Patent
`
`Owner’s desired construction, Petitioner requests “the opportunity to present
`
`argument under this new theory.” SAS Inst., Inc. v. ComplementSoft, LLC, 825
`
`F.3d 1341, 1351 (Fed. Cir. 2016).
`
`6
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`

`

`Petitioner’s Reply
`
`105:19-106:2, 87:9-15, 102:10-18, 59:8-61:13, 144:18-145:3). When confronted
`
`with the fact that claim 1 of the ’084 patent—unlike claim 1 of U.S. Patent No.
`
`8,326,327 (at issue in IPR2019-00715)—does not require the “determin[ing]” of
`
`“action spots” to correspond to mobile device activity within a predetermined
`
`period of time, Patent Owner’s expert nevertheless maintained that “action spots”
`
`in the ’084 patent should be limited in the same way as those in claim 1 of the ’327
`
`patent. See id. at 59:8-61:2.
`
`Even if there were legal support to import this limitation to “action spot,” it
`
`would still not carve out an undefined amount of past activity from the
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`“determin[ing] of at least one action spot,” as the specification makes clear the
`
`“predetermination duration of time” can be “any other time period.” Ex. 1001,
`
`8:37-48. As the District Court found, this time “covers durations of time of
`
`undefined length,” meaning that “is occurring” activity can span into the past
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`without bound. Ex. 1012, 40.
`
`In a tacit acknowledgement that limiting “action spots” to a “predetermined
`
`duration of time” does not excise the consideration of past activity as a matter of
`
`logic, Patent Owner attempts to graft an additional limitation onto “action spot,”
`
`where not all activity “is occurring” even if it falls within the “predetermined
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`durations of time.” This silent, undefined limitation was exposed when Patent
`
`Owner’s expert was confronted with the possibility of activity occurring days or
`
`7
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`

`

`Petitioner’s Reply
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`weeks in the past but within the “predetermined duration of time.” Patent Owner’s
`
`expert was unable to answer whether that would meet the claims. See Ex. 1013,
`
`98:12-100:4 (“Q . . . If an action spot is determined based on a predetermined
`
`duration of time, it might not be an action spot as recited in the claims? A. I’d have
`
`to think about that question for a while.”), 103:9-104:11, 107:20-109:2, 109:22-
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`110:5, 110:17-111:5, 132:5-18, 91:3-15, 165:6-166:1, 39:16-40:2, 86:8-89:7,
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`87:16-88:8.
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`Patent Owner also seeks to import this silent limitation to “is occurring”
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`activity by contending the claims require that the “determin[ing]” process “actively
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`queries” for “up-to-date information.” Resp., 28; Ex. 1013, 139:11-140:22. But
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`the District Court interpreted the claims to expressly reject this position. See Ex.
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`1012, 40 (claims do not require “timely updates of action spot information”).
`
`III. Ground 1: Response arguments rely on mischaracterization of Winkler
`and the Petition
`Petitioner requests the Board to reconsider Ground 1 in light of both Patent
`
`Owner’s mischaracterization of the record and Winkler’s full disclosure. Patent
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`Owner’s arguments are premised on logical fallacy: because “Winkler discloses
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`action spots as ‘map elements’” the Petition alleges “every ‘map element’
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`contemplated by Winkler [is] an ‘action spot[.]’” Ex. 1011, ¶ 66 (citing Resp., 46).
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`But the statement “all of Winkler’s action spots are map elements” does not mean
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`“all of Winkler’s map elements are action spots.” Id. Rather, Winkler’s map
`
`8
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`

`

`Petitioner’s Reply
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`elements are only action spots when they meet the claimed requirements of an
`
`action spot. Id. at ¶¶ 66-67.
`
`A.
`
`Patent Owner mischaracterizes Winkler’s disclosure as
`presenting distinct embodiments and ignores Winkler’s teaching
`that features may be used in tandem
`To show Winkler’s map elements can meet the claimed requirements of an
`
`action spot, Petitioner cites to Winkler’s list of conditions that may affect map
`
`elements. Pet., 18 (citing Ex. 1004, 11:36-54). Petitioner relies on multiple entries
`
`from this list occurring and comprising an “event” that affects a map element. See
`
`id. Patent Owner argues the entries of this list are “distinct embodiments” and may
`
`not occur in tandem. Resp., 45-49.
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`Patent Owner’s argument is unsupported. Ex. 1011, ¶¶ 68-72. The entries
`
`in Winkler’s list are connected with “and/or,” which means one or more entries
`
`may be utilized together. Pet., 18 (citing Ex. 1004, 11:36-54). Further, Winkler
`
`states: “[t]he word ‘or,’ in reference to a list of two or more items, covers all of the
`
`following interpretations of the word: any of the items in the list, all of the items in
`
`the list, and any combination of the items in the list.” Ex. 1004, 13:59-62. Winkler
`
`also describes map elements updated “based on a number of factors.” Id., 2:29-33,
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`3:2-3, 14:19-21. When a reference describes features used together or
`
`interchangeably, they are “not isolated embodiments of the invention” and the
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`Board may consider them together. CSR, PLC v. Skullcandy, Inc., 594 F. App’x
`
`9
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`

`

`Petitioner’s Reply
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`672, 679-80 (Fed. Cir. 2014). Therefore, a map element may be affected by (1)
`
`movement of another device to within a pre-selected range of a map element and
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`(2) device activity occurring at a map element within a certain period of time. Pet.,
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`18 (citing Ex. 1004, 11:36-54); Ex. 1011, ¶ 72.
`
`B.
`
`Patent Owner’s assertion that Petitioner does not explain how a
`single map element may comprise an action spot
`mischaracterizes of the Petition and relies on an incomplete
`understanding of Winkler
`To support its contention that Petitioner “fails to show” a Winkler map
`
`element may correspond to the location where another device has engaged in
`
`documenting activity, Patent Owner claims Petitioner “cites two passages from
`
`Winkler as examples of documenting actions” but neither specify where the
`
`documenting activity occurs. Resp., 51-52. But, Petitioner’s analysis does not rely
`
`on these two passages alone—it first cites to Winkler’s teaching that the “event”-
`
`causing device activity may occur “in a certain region” or “around a certain tagged
`
`item on a map.” Pet., 18-19 (citing Ex. 1004, 11:36-54). The Petition next
`
`explains this “event”-causing activity at a location may include documenting
`
`activity, such as transmitting messages. Id. (citing Ex. 1004, 2:16-22; 8:7-18). In
`
`at least one disclosure of transmitting messages, Winkler refers to the same process
`
`(dynamically modifying a map element) described in its disclosure of “event”-
`
`causing device activity at a specific location. Compare Ex. 1004, 2:16-22 with
`
`10:1-11:65. A POSITA would have clearly understood Winkler teaches
`
`10
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`

`

`Petitioner’s Reply
`
`dynamically modifying map elements through an “event,” which can include
`
`documenting activity occurring at the element’s location. Ex. 1011, ¶ 73.
`
`Next, to argue Winkler’s map elements are not determined “within a
`
`predetermined distance from the current location of a mobile device,” Patent
`
`Owner contends Petitioner’s analysis is “irrelevant” because “Winkler’s ‘pre-
`
`selected range’ represents a distance from a map element,” not from the current
`
`location of a mobile device Resp., 53-54; see Ex. 1013, 161:10-18, 122:8-12.
`
`Patent Owner’s distinction is fabricated, as Winkler expressly teaches map
`
`elements may correspond to the current location of a user’s device. Pet., 19-20
`
`(citing Ex. 1004, FIG. 5, 10:17-19); Ex. 1011, ¶ 75.
`
`Finally, Patent Owner contends “Winkler’s map elements are displayed
`
`before the ‘events’ in Winkler that (under Petitioners’ theory) give rise to the
`
`alleged determination of an ‘action spot,’” and “[t]he Petition thus failed to explain
`
`how Winkler’s pre-selecting or pre-generating map elements at steps 510/520
`
`would possibly constitute ‘determin[ing] . . . at least one action spot.’” Resp., 55-
`
`56. Patent Owner ignores Winkler’s express disclosure, which teaches map
`
`elements identified in steps 510/520 may be “hidden” and not displayed until the
`
`occurrence of an event at step 530. Ex. 1004, 11:16-20, 11:55-65. Moreover, even
`
`if the map element was displayed as soon as it is generated, this map element
`
`would not become an “action spot” within the meaning of the claim until an event
`
`11
`
`

`

`Petitioner’s Reply
`
`transpired in step 530 that imparts the claimed characteristics of an “action spot”
`
`onto this map element. Ex. 1011, ¶ 79. Contrary to Patent Owner’s contention,
`
`Petitioner never “equated” all map elements with action spots or limited the
`
`“determin[ing]” of action spots to steps 510/520 of Winkler. Id.
`
`C. Winkler’s method for dynamically modifying map elements
`teaches map elements that can be a claimed “action spot”
`Patent Owner contends that Petitioner failed to “sufficiently explain how any
`
`one of Winkler’s map elements” would meet all the requirements of an action spot.
`
`Resp., 48. Below, Petitioner illustrates three different scenarios in which Winkler’s
`
`Figure 5 method and corresponding disclosure (both cited in the Petition) teach a
`
`map element meeting the claimed requirements of an action spot. Gen. Elec. Co. v.
`
`United Techs. Corp., IPR2016-01287, 2017 WL 6731569, at *19-20 (PTAB Dec.
`
`29, 2017) (reply may add new annotations to the same evidence cited in the
`
`Petition); Argentum Pharm. LLC v. Research Corp. Technologies, Inc., IPR2016-
`
`00204, 2017 WL 1096590, at *3 (PTAB March 22, 2017) (reply may add new
`
`citations to the same references relied on in the Petition).4
`
`
`4 Patent Owner cites In re Magnum Oil Tools and Intelligent Bio-Systems, Inc. v.
`
`Illumina Cambridge, Ltd. to warn the Board that “the law forbids subsequently
`
`adding new theory/argument that ‘could have been included in a properly-drafted
`
`petition, but was not.’” E.g., Resp., 2 (citing 829 F.3d 1364, 1378-80 (Fed. Cir.
`
`12
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`

`

`Winkler’s Figure 5 presents the following method for dynamically
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`modifying map elements:
`
`Petitioner’s Reply
`
`
`2016), 821 F.3d 1359, 1369 (Fed. Cir. 2016)). These cases do not support Patent
`
`Owner’s sweeping conclusion. Magnum Oil held the Board could not use analysis
`
`in one ground as support for an entirely different ground, 829 F.3d at 1380-81, and
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`Intelligent Bio-System held that a Petitioner’s Reply could not raise new grounds of
`
`invalidity with new references, 821 F.3d at 1369-70. The Federal Circuit has
`
`distinguished these cases and allowed the Board to consider Reply arguments that
`
`build on a Petition’s initial analysis within a ground. See, e.g., Intellectual Ventures
`
`II LLC v. Ericsson Inc., 685 F. Appx. 913, 919-22 (Fed. Cir. 2017).
`
`13
`
`

`

`Petitioner’s Reply
`
`
`
`There are at least three scenarios in which this method generates one map element
`
`meeting all the claimed requirements of an action spot. Ex. 1011, ¶¶ 76-78.
`
`Scenario 1: Winkler’s system creates map element X corresponding to the current
`
`location of a first device and hidden map element Y corresponding to the location
`
`of a second device. When the second device moves “within a pre-selected range of
`
`[] map element [X]” and engages in documenting activity, map element Y is
`
`modified (displayed) and map element Y becomes an action spot. Id., ¶ 76.
`
`14
`
`

`

`• Steps 510/520: map element X is created at the current location of a first
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`mobile device. Ex. 1004, 10:10-39.
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`Petitioner’s Reply
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`
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`• Steps 530/540: system receives indication of an “event” and updated map
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`element X based on the event. Id., 10:40-11:65. In this example, it is not
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`important what the event comprises, so long as map element X continues to
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`be the current location of the first device.
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`15
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`

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`Petitioner’s Reply
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`Now, the method of Figure 5 is performed again:
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`• Steps 510/520: “hidden” map element Y associated with the location of a
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`second device. Id., 10:10-39, 11:16-20, 11:55-56.
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`16
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`

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`Petitioner’s Reply
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`• Steps 530/540: system receives indication of an “event” comprising the
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`second device “mov[ing] to within a pre-selected range of [] map element”
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`X and engaging in documenting activity at this location. Id., 10:40-11:65.
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`Map element Y is modified (displayed) based on this event. Id.
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`Map element Y is now an action spot. Ex. 1011, ¶ 76.
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`Scenario 2: Winkler’s system creates hidden map element X at the current location
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`of a first device. When another device arrives at map element X (“within a pre-
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`selected range,” where the range=0) and engages in documenting activity there,
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`map element X is modified (displayed) and map element X becomes an action
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`spot. Id., ¶ 77.
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`17
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`

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`• Steps 510/520: “hidden” map element is associated with the location of a
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`first device. Ex. 1004, 10:10-39, 11:16-26, 11:55-56.
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`Petitioner’s Reply
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`
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`• Steps 530/540: system receives indication of an “event” comprising a
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`second device moving to map element X (“pre-selected range”=0 meters)
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`and engaging in documenting activity at this location. Id., 10:40-11:65.
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`Map element X is modified (displayed) based on this event. Id.
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`18
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`Petitioner’s Reply
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`
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`Map element X is now an action spot. Ex. 1011, ¶ 77. The ’084 patent does not
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`require the “predetermined distance” to be more than zero, nor does it require the
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`action spot location to be different than the location of the first mobile device. Id.
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`Scenario 3: a user creates hidden map element X within a predetermined distance
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`from her current device location. When another device arrives at map element X
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`and engages in documenting activity there, map element X is modified (displayed)
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`and map element X becomes an action spot. Id., ¶ 78.
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`• Steps 510/520: Winkler teaches generating a map element based on user
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`input, which may include input identifying any location. Ex. 1004, 10:10-
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`39. Here, the user selects a location 100 meters away from her current
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`device location and hidden “remote” map element X is created:
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`19
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`

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`Petitioner’s Reply
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`
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`• Steps 530/540: system receives indication of an “event” comprising a
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`second device engaging in documenting activity at map element X. Id.,
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`10:40-11:65. Map element X is modified (displayed) based on this event.
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`Id.
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`20
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`Petitioner’s Reply
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`Map element X is now an action spot. Ex. 1011, ¶ 78.
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`D. The Petition describes how and why a POSITA would have been
`motivated to combine Winkler and Altman
`Patent Owner’s contention the Petition does not describe how and why a
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`POSITA would have been motivated to combine Winkler and Altman, Resp. 56-59,
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`are based on mischaracterizations of Winkler and the Petition. See sections III.A-
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`III.C; Ex. 1011, ¶¶ 80-81.5
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`Patent Owner also attacks certain verb tenses used by Petitioner and its
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`expert. Resp., 59-60. Patent Owner ignores Dr. Bhattacharjee’s express statement
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`the entirety of his opinions are from the perspective of a POSITA at the time of the
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`alleged invention. Ex. 1011, ¶¶ 82-83 (citing Ex. 1002, ¶¶ 18, 22). Petitioner’s use
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`of present tense is also meant to convey that certain statements may also be
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`applicable in the present day. Id., ¶ 83. Patent Owner’s focus on Petitioner’s
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`grammar only highlights the substantive weakness of its positions.
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`5 Petitioner notes that Patent Owner’s expert offered no opinions on objective
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`indicia of nonobviousness. See Ex. 1013, 79:14-82:8.
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`21
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`Petitioner’s Reply
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`IV. Grounds 2-3: The Response relies on mischaracterizations of the
`references, Petition, and’084 patent
`A. The Response imports limitations into the claimed “activity
`level” and Lemmela’s disclosure
`Patent Owner contends Lemmela’s “quantitative measure” and “density” of
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`postings do not teach “activity level” because they “represent the level of salient
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`word commonality for a mere subgroup of postings[.]” Resp., 36. Patent Owner’s
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`contention is inconsistent with the claimed “activity level” and Lemmela’s
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`disclosure. Ex. 1011, ¶¶ 41-48.
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`Patent Owner reads in an unsupported proportionality requirement to the
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`claimed “activity level” (Resp., 35-38), and ignores the Board’s interpretation that
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`“activity level” requires no “particular accuracy” (Inst. Dec., 26). The Board’s
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`interpretation is supported by the ’084 patent, which requires no specific manner of
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`calculating activity level (Ex. 1011, ¶¶ 44-45, 47-48), and by the District Court’s
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`construction of this term, which rejected attempts to limit the scope to a number of
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`actions (Ex. 2002, 38-42).
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`Even if the challenged claims require the “activity level” be proportional to
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`the number of total actions taken at a location, Lemmela’s “quantitative measure”
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`and “density” of location postings teach this requirement. Ex. 1011, ¶¶ 44-45, 48.
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`Patent Owner concocts a hypothetical where the level of salient word commonality
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`in posts at a location is not proportional to the number of all posts at that location.
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`22
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`Petitioner’s Reply
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`Resp., 36-37. Lemmela’s disclosure, however, is not limited to this hypothetical,
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`and a POSITA would have understood how Lemmela’s “quantitative measure” or
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`“density” of posts could be proportional to the number of actions taken at a
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`location. Ex. 1011, ¶¶ 44-45. Regardless, Lemmela’s measures represent a level
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`of actions taken at a location: if a post containing the salient word comprises an
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`“action,” a measure of these posts represents a “level” of this action. Id., ¶¶ 41-48.
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`Patent Owner also contends Petitioner did not address dependent claim 6’s
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`requirement that activity level “identify a relative level of documenting action
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`occurring at the at least one action spot.” Resp., 38-39. Patent Owner claims
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`“Lemmela’s ‘clouds’ on the map are generated by processing postings
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`accumulated over previous days or months,” and thus, “[a]t most,” “indicate to the
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`user a level of historical location postings[.]” Id., 39. But the Petition describes
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`that Lemmela’s users “may ‘filter postings based on criteria such as time’ . . . and
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`then ‘freely select the starting and ending times defining the interesting time
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`period.’” Pet., 56-57 (citing Ex. 1005, ¶¶ 8, 39); see Intellectual Ventures, 685 F.
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`App’x at 919-20 (relying on the Petition’s analysis of one claim to support analysis
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`of a different claim in the same ground). This “interesting time period” may be