UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SNAP, INC.,
`Petitioner
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`v.
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`BLACKBERRY LIMITED,
`Patent Owner
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`Case No. IPR2019-00714
`Patent No. 8,825,084
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`PATENT OWNER’S SUR-REPLY
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`Case No.: IPR2019-00714
`Attorney Docket No.: 21828-0051IP1
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`I. 
`II. 
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`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1 
`ARGUMENT ................................................................................................... 2 
`A. 
`Petitioner’s Reply Fails To Justify Its Departure From The
`Lexicographic/District Court Definition Of “Action Spot” In The
`Context Of The Claimed Operation Of “Determin[ing] At Least One
`Action Spot.” ......................................................................................... 2 
`Petitioner’s Reply Fails To Cure Multiple Defects In the Lemmela
`Grounds ................................................................................................. 7 
`1. 
`The Reply Does Not Refute All Arguments Why The Lemmela
`Grounds Fail To Achieve Claim Elements 1[c]/9[c] .................. 7 
`The Reply Does Not Cure Lemmela’s Failure To Disclose A
`Server Configured To “Receive Data Indicative Of A Current
`Location Of A First Mobile Device” (Claim 1) .......................... 8 
`The Reply Does Not Cure The Petition’s Failure To Show How
`The Lemmela-Crowley-Winkler Combination Renders Obvious
`The “Graphical Item Identifying A Direction” Limitation
`(Claim 9) ................................................................................... 12 
`The Reply Does Not Cure Lemmela’s Failure To Render
`Obvious The “Activity Level”/“Level Of Activity” Limitations
`(Claims 1 And 9; Dependent Claim 6) ..................................... 14 
`Petitioner’s Belated Attempt To Revive The Winkler-Altman Ground
`Is Fatally Flawed ................................................................................. 16 
`1. 
`The Reply Contravenes PTAB Rules By Introducing Entirely
`New “Scenarios” That Contradict The Petition’s Initial
`Mappings ................................................................................... 17 
`Petitioner’s New Winkler Scenarios Are Unsupported And Fail
`To Meet The Claimed Requirements For Determining An
`Action Spot ............................................................................... 21 
`III.  CONCLUSION .............................................................................................. 25 
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`B. 
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`C. 
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`2. 
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`3. 
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`4. 
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`2. 
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`i
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`EX2001
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`EX2002
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`EX2003
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`EX2004
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`Case No.: IPR2019-00714
`Attorney Docket No.: 21828-0051IP1
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`EXHIBITS LIST
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`Declaration of Patrick McDaniel, Ph.D.
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`Corrected Final Ruling on Claim Construction/Markman
`Hearing, Blackberry Limited v. Snap Inc., Case Nos. CV 18-
`1844-GW & 18-2693-GW (C.D. Cal. April 5, 2019)
`(“Markman Order”)
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`Second Declaration of Patrick McDaniel, Ph.D.
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`Transcript of Deposition of Dr. Samrat Bhattacharjee
`(November 18, 2019)
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`EX2005-EX2007 [RESERVED]
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`EX2008
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`EX2009
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`EX2010
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`
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`Garmin: Updating Maps on Your Garmin Device (May 2010),
`available at https://www8.garmin.com/documents/instructions/
`Garmin_Map_Update_Guide.pdf (retrieved November 24,
`2019)
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`CNET Article: How To Update Your GPS Maps TomTom
`Edition (July 14, 2010), available at https://www.cnet.com/
`pictures/how-to-update-your-gps-maps-tomtom-edition-photos
`(retrieved November 24, 2019) (slideshow pictures reproduced
`in a single PDF)
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`Transcript of Second Deposition of Dr. Samrat Bhattacharjee
`(April 10, 2020)
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`ii
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`Case No.: IPR2019-00714
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`I.
`INTRODUCTION
`The Reply continues to advance arguments that are premised on an erroneous
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`claim construction and mischaracterizations of the prior art. Petitioner fails to
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`adequately explain why the Board should interpret the term “action spot” in a manner
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`that not only contradicts the ’084 patent’s lexicographic definition, but also departs
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`from the Phillips construction already imposed on the parties in the district court.
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`See POR, 15-21; EX2003, ¶¶35-41.
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`A proper construction of element 1[c]/9[c] (“determining” an “action spot”),
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`which aligns with the district court’s construction, is dispositive for the Lemmela
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`grounds here, especially where Section IV of the Reply never argues that the
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`Lemmela grounds achieve this requirement under such a construction. Petitioner has
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`thus waived any argument in this regard. Moreover, the Reply’s Lemmela-specific
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`arguments directed to claim elements 1[b], 9[d], and 6, as well as the “activity level”
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`arguments, only serve to highlight additional shortcomings of the Lemmela grounds.
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`Finally, the Institution Decision previously determined that Ground 1 based
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`on the Winkler-Altman combination was not reasonably likely to prevail. Inst. Dec.,
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`32-35. The Reply attempts to revive the Winkler ground by introducing, for the first
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`time in this proceeding, new “Scenarios” that were never presented with particularity
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`in the Petition and, in many cases, directly contradict other statements from the
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`Petition itself. These belated theories improperly prejudice Patent Owner and should
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`1
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`be disregarded according to Federal Circuit precedent. And, even if Patent Owner
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`must suffer such prejudice, the new “Scenarios” suffer from meaningful defects
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`noted below.
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`II. ARGUMENT
`A.
`Petitioner’s Reply Fails To Justify Its Departure From The
`Lexicographic/District Court Definition Of “Action Spot” In The Context Of
`The Claimed Operation Of “Determin[ing] At Least One Action Spot.”
`Petitioner’s Reply arguments continue to disregard the ’084 patent’s
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`lexicographic definition of “action spot” as “a location or an event where at least one
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`activity is occurring relative to the current location of another mobile device.”
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`EX1001, 3:3-5 (emphasis added). Petitioner instead seeks to re-write the patent’s
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`explicit definition of “action spot” to mean a location where “activity [] has occurred
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`in the past, not activity that is presently occurring.” Reply, 3 (emphasis in original);
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`EX1011, ¶16; EX2010, 10:8-11:15.
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`Petitioner’s critical flaw is that it conflates the inputs of the claimed
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`determination of an action spot with the output of that determination. As already
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`explained in the Response, the evidence here demonstrates that the claims require a
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`particular type of output—namely, a determination of an “action spot” (a location or
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`event where activity “is occurring” relative to the “current” location of the user)—
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`which is accomplished based on input describing activity (e.g., documenting actions)
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`that has occurred at the location of the action spot. POR, 17-20; EX2003 ¶¶35-41.
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`2
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`The Reply also never addresses the fact that the output of the determination (and
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`what is conveyed to the user) is not the same as its input data. EX2003 ¶¶39-40.
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`This understanding of the claims is consistent with the embodiments in the
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`specification, the lexicographic definition of “action spot” set forth at column 3:3-5,
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`and the Phillips construction of “action spot” that was adopted by the district court.
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`EX1001, 3:3-35, 4:44-48, 8:59-9:4, 9:31-44; EX2002, 9; EX2003, ¶¶35 and 38.
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`Petitioner’s error is revealed by its assertion that “determin[ing] at least one
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`action spot”
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`refers
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`to
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`the “determination of past
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`tense activity—one
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`‘correspond[ing] to a location where at least one other mobile device has engaged
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`in a documenting action within a predetermined period of time.’” See Reply, 3
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`(emphasis in original). The claimed determination of an action spot provides more
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`meaningful information to the user—not a mere “determination of past tense
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`activity” as alleged in the Reply, and not a mere indication of whether one particular
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`input (e.g., documenting action from another mobile device) is currently ongoing or
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`concluded. Rather, the claims require determining an “action spot” so that the
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`system can attempt to inform the user of a location or event where activity “is
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`occurring” relative the “current” location of the user. EX1001, 3:3-35, 4:44-48
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`(“current happenings” in the vicinity of the user). The activity that “is occurring”
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`for the action spot which is the subject of the determined output need not be
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`coterminous with one specific input (e.g., another user’s “documenting action”).
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`3
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`Indeed, the straightforward teaching in column 4:44-53 highlights this fact.
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`EX2003, ¶9. And even if column 4 was not clear enough (which it is), this fact is
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`also abundantly clear from other parts of the specification, as exemplified in the
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`following passage:
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`In FIG. 4, the action spots … include activity icons
`indicative of the type of activity occurring at the action
`spots ….
`For example, the activity icon associated with action
`item 402 is balloons, which can be indicative of a party
`occurring at the action spot 402. That a party is taking
`place at the action spot 402 can be determined by a
`processor of the mobile device 100 or by a third-party
`server that receives data from postings[] … or any other
`source …
`…
`The activity icon associated with action spot 408 is a
`musical note, which can indicate a musical event, such as
`a musical or a concert, is occurring at action spot 408.
`The determination that a music event is occurring at action
`spot 408 can result from …
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`EX1001, 8:59-9:4, 9:31-44, FIG. 4 (emphasis added); see also EX1013, 197:10-18.
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`Even the excerpts from the’084 patent cited in the Reply do not support
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`Petitioner’s position. For example, the Reply crops a portion of text from the ’084
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`patent at col. 4:4-11 that refers to “a location where at least one other mobile device
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`has engaged in a documenting action.” Reply, 3 (emphasis in original). But the
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`very next sentence clarifies that the determination of an action spot involves
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`determining where “at least one other mobile device is composing an email,
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`composing a text message,” or is engaged in certain other activity. EX1001, 4:11-
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`18 (emphasis added). Despite this evidence, Petitioner and its expert have
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`apparently taken the unusual position that it would be “impossible” for the claimed
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`system to use data from other mobile devices “that have engaged in documenting
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`actions” to reach a determination that “some type of activity is occurring” at a
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`location or event. EX2010, 12:12-13:7.
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`The Reply further mischaracterizes Patent Owner’s position as somehow
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`“import[ing] temporal limitations” into the claims that “create an arbitrary and
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`unsupported cutoff between ‘recent’ and past activity.” See Reply, 2-3. In fact,
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`Patent Owner has never proposed such a “cutoff.” As explained in the Response, it
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`is relevant to consider whether the inputs (e.g., documenting actions that user(s) have
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`engaged in) are reasonably capable of informing a determination about whether
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`present activity “is occurring” at a location. POR, 17-18. The occurrence of
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`documenting actions within a recent or predetermined period of time are inputs that
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`can inform the system’s determination that activity “is occurring” at a location since
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`temporal proximity of the documenting actions is often correlated to the possibility
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`of present activity—even if the claims do not require a specific “cutoff” for the
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`inputs. See EX1013, 38:9-15, 44:10-45:8, 83:3-15 (Dr. McDaniel repeatedly
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`emphasizing that a POSITA would have known the selection of an appropriate time
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`interval “depends on the application” and its desired goals).1
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`Petitioner further distorts Patent Owner’s position by arguing against a straw
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`man—the notion that Patent Owner somehow imported a claim requirement for the
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`system to “actively” query for “up-to-date information.” Reply, 8. Patent Owner
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`never imputed such a requirement, and instead simply explained why it is a factor in
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`the specific context of Lemmela’s pre-processed/raw data ported to a mobile phone
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`for subsequent local use at the phone. The District Court’s finding that the claims
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`do not require “‘automatic,’ ‘periodic,’ or otherwise timely updates of action spot
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`information” is entirely consistent with Patent Owner’s position. EX1012, 41. First,
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`1 The parties do not dispute that independent claims 1 and 9 of the ’084 patent
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`(unlike the ’327 patent) do not require the “documenting actions” to occur within a
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`“predetermined period of time.” Petitioner relies on out-of-context citations to
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`deposition testimony to sow confusion in this regard (see Reply, 7), but it is plain
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`from the context of this exchange that Dr. McDaniel was responding to a
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`hypothetical in which the question itself posited that “there is a predetermined
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`duration of time.” See EX1013, 60:7-11, 59:10-12. Dr. McDaniel never imported
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`such a requirement into claims 1 or 9.
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`the District Court’s order addressing §101 issues certainly did not alter the claim
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`construction imposed in the Markman order (EX2002), and the Board should not do
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`so here. EX2010, 14:10-15:7. Second, when read in its full context (and in accord
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`with the Markman order), the cited statements of the District Court were referring to
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`the inputs to the clamed determination of an “action spot” (e.g., documenting actions
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`engaged in by other mobile devices) rather than the output (determining a location
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`or event where activity “is occurring” relative to the current location of a first mobile
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`device). EX1012, 41.
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`B.
`Petitioner’s Reply Fails To Cure Multiple Defects In the
`Lemmela Grounds
`1.
`The Reply Does Not Refute All Arguments Why The
`Lemmela Grounds Fail To Achieve Claim Elements 1[c]/9[c]
`Petitioner’s reply arguments addressing the Lemmela grounds suffer from
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`multiple flaws, as described further below. However, it is first critical to note what
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`is absent from Section IV of the Reply—the Section containing all of Petitioner’s
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`arguments regarding the Lemmela grounds. Specifically, it lacks any argument
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`refuting pages 22-30 of the POR, which demonstrated why the Lemmela grounds
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`fail to teach claim elements 1[c]/9[c] (“determin[ing] at least one action spot”) under
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`Patent Owner’s construction that is consistent with both the specification and the
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`Markman order. Petitioner has thus waived these arguments. Interpretation of the
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`phrase “determin[ing] at least one action spot,” as advocated by Patent Owner,
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`would be dispositive of the Lemmela grounds.2
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`2.
`The Reply Does Not Cure Lemmela’s Failure To
`Disclose A Server Configured To “Receive Data Indicative Of A Current
`Location Of A First Mobile Device” (Claim 1)
`Petitioner’s Reply arguments directed to element 1[b] (a server configured to
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`“receive data indicative of a current location of a first mobile device”) are based on
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`2 Note that page 2 of the Reply vaguely refers to “all instituted grounds” in a terse,
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`single-sentence conclusion. Not only does this single-sentence conclusion fail to
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`mention “Lemmela” or any argument specific to the Lemmela grounds, but it then
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`string cites to more than 10 pages of text from a declaration (EX1011, pp. 14-24)
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`without any further explanation. Reply, 2. Relying upon such incorporated text in
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`this proceeding would be an improper attempt to incorporate text by reference into
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`the Reply, which must be scrutinized and rejected. Cisco Sys., Inc. v. C-Cation
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`Techs., LLC, IPR2014-00454, Paper 12, 9-10 (PTAB “informative” Aug. 29, 2014)
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`(“will not consider”). Here, the Reply would have exceeded the word-count limit
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`by more than 30% if the incorporated text from pages 14-24 of EX1011 was
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`actually deemed worthy of insertion into the Reply (which it was not). Petitioner
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`should have been aware of the APA/Due Process violations that would arise if the
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`Board endorsed such practice by relying upon any Lemmela-specific arguments
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`that Petitioner elected to exclude from its Reply. Id. (“eliminate abuses”).
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`multiple errors in law and fact. See Reply, 27-29.
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`First, the Reply wrongly assumes that “[f]or the server to perform Lemmela’s
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`backend operations, [] it would need to receive the current location of the user” since
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`“the display of posts presented on the mobile device in Lemmela’s system is ‘based
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`on a user’s present location.’” Reply, 27 (emphasis added). Petitioner’s focus on
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`how Lemmela’s system would allegedly “need” to operate to permit the display of
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`posts “based on a user’s present location” effectively concedes Lemmela’s lack of
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`express disclosure of this feature in favor of an inherency position. But Petitioner’s
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`reliance on inherency fails for the reasons already explained in detail by Dr.
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`McDaniel (reasons entirely ignored by the Reply). POR, 30-35; EX2003, ¶¶66-69.
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`For example, Petitioner’s reply arguments do not prove that Lemmela’s mobile
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`device either could not or would not obtain all of Lemmela’s map information for a
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`particular city/area before arriving there, the most common practice for portable
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`navigation devices at the time. Id. Petitioner’s inherency theory is further
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`undermined by its own expert’s admission that Lemmela’s techniques could be
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`implemented on devices that were non-network enabled (e.g., devices that were
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`incapable of sending GPS coordinates to a server in real time). EX2010, 21:13-
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`22:16, 22:17-20; EX2005, [0040]. Petitioner’s failure to establish express or
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`inherent disclosure of this feature is fatal. Cruciferous Sprout Litig., 301 F.3d 1343,
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`1349 (Fed. Cir. 2002) (inherency theory requires a showing of “necessarily
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`function[]”); Par Pharmaceutical v. TWI Pharmaceuticals, Inc., 773 F.3d 1186,
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`1195-96 (Fed. Cir. 2014) (“a high standard” in order to rely on inherency, which
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`requires the feature “necessarily must be present[]”).
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`The Reply then turns to Lemmela’s disclosure in paragraph [38] regarding an
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`“alternative[]” embodiment in which “a mobile terminal may be provided with an
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`ability to receive some defined collection of location postings.” Reply, 28. But
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`Petitioner’s reliance on this “alternative[]” embodiment is entirely new in this
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`proceeding—especially where the Petition relied only to the first embodiment in
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`which a server “accesses and processes the location postings in order to create
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`information that can then be provided to users.” Pet., 47. Such improper theories at
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`this late stage should be disregarded. Henny Penny Corp. v. Frymaster LLC, 938
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`F.3d 1324, 1330-1331 (Fed. Cir. 2019) (“an IPR petitioner may not raise in reply ‘an
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`entirely new rationale’ for why a claim would have been obvious”). The Reply’s
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`next contention that “either the server or the mobile device may define a collection
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`of location postings” disregards Lemmela’s explicit description of the server and
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`mobile device embodiments as “alternative[s]”—there is no teaching in Lemmela
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`that the server would provide a “defined collection of location postings” in the same
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`manner as the alternative embodiment with the mobile device. Even if the server
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`did provide such a “defined collection” of postings, there would in fact be no
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`requirement for the server to receive the first device’s current location, as already
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`demonstrated in the Response. POR, 30-35; EX2003, ¶¶66-69.
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`The next prong of Petitioner’s reply argument that a POSITA allegedly would
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`have understood Lemmela’s device would “incrementally download[] relevant
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`information from a server” based on the device’s current location is also without
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`merit. See Reply, 28-29. Even if “incrementally downloading” was “the common
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`mode of interaction for mobile devices in the 2010 timeframe” (which was not the
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`case for portable GPS devices), the point is moot because Petitioner’s case-in-chief
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`never alleged obviousness for this claim feature. See Pet., 47 (three-sentence
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`analysis). Petitioner then theorizes the allegedly “small” mobile device memories
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`that would have precluded more comprehensive pre-storage of mapping/posting
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`information on the device. Reply, 29. But Petitioner’s new theory does not
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`withstand scrutiny, for Lemmela expressly disclosed such local storage/processing
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`(FIG. 6; [0044]) and even Petitioner’s expert conceded during deposition that
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`Lemmela contemplated a range of different memory devices—including large,
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`multi-gigabyte memories. EX2010, 24:18-26:4.
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`Finally, the Reply’s belated theory (p. 29) based on Crowley for element 1[b]
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`is improper and should be disregarded. Henny Penny, 938 F.3d at 1330-1331.
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`Petitioner’s case-in-chief relied upon Lemmela alone, not a theory that the combined
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`teachings of Lemmela in view of Crowley to somehow achieve element 1[b]. Pet.,
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`47. The petition’s three-sentence analysis of element 1[b] not only failed to mention
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`Crowley, but also never put forward alleged motivations to combine with respect to
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`the element 1[b] feature for Petitioner to meet its burden. EX2010, 30:4-6. Binding
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`precedent and APA/Due Process considerations forbid such new obviousness
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`theories for element 1[b] at this late stage of the proceeding. Henny Penny, 938 F.3d
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`at 1330-1331; Intelligent Bio-Systems, Inc. v. Illumina Cambridge, Ltd., 821 F.3d
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`1359, 1369 (Fed. Cir. 2016) (“utmost importance”); In re Magnum Oil Tools Int’l,
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`829 F.3d 1364, 1378-81 (Fed. Cir. 2016) (holding it would be error for “the Board
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`to rely on an unpatentability theory that could have been included in a properly-
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`drafted petition, but was not”).
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`3.
`The Reply Does Not Cure The Petition’s Failure To
`Show How The Lemmela-Crowley-Winkler Combination Renders Obvious The
`“Graphical Item Identifying A Direction” Limitation (Claim 9)
`The Reply doubles down on the false premise that Winkler’s disclosure of
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`changing the color of a map element as a user approaches a location represented by
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`the map element amounts to displaying a graphical item that “identif[ies] a direction”
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`in the particular manner recited in claim 9. See Reply, 25.
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`The Reply accuses Patent Owner of attempting to “import limitations” into
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`this claim element, but Patent Owner has done no such thing. Id. Patent Owner
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`merely observes that the teaching from Winkler relied upon for the “graphical item”
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`feature fails to meet the bare minimum of what is required by the claim language—
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`i.e., a graphical item that “identif[ies] a direction, relative to the current location, in
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`which to travel in order to arrive at the determined at least one action spot.” Claim
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`9 explicitly requires that the graphical item “identify a direction” of travel, but
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`Winkler’s color-changing map element falls short. EX1004, 13:21-31. At most, the
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`color-changing map element allows the user to recognize an initial color of the pin
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`and then guess which direction should be attempted in hopes of changing the color.
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`But merely conveying color information only when aided by the user’s initial
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`movements—falls well short of the claim requirement for the graphical item itself
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`to actually “identify” the direction of travel. POR, 41-44; EX2003, ¶¶82-87.
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`Moreover, Petitioner’s assumption that the clouds representing Lemmela’s
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`irregular areas would change color (according to the user’s direction of travel) akin
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`to Winkler disregards noticeable differences between Winkler’s discrete map
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`elements and Lemmela’s irregular geographic areas. Reply, 26, 30. Petitioner
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`appears to argue that, by implication, some of Lemmela’s irregular areas are
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`sufficiently small (Reply, 30) such that one discrete movement vector toward them
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`could be identified like that of Winkler’s T-Mobile store. Petitioner’s argument,
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`however, misses the mark. While the large-sized, irregular-shaped Lemmela’s
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`salient-word clouds exacerbates the combinability problem, Petitioner still fails to
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`address the core issue that Lemmela’s salient word clouds represent clusters of
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`posting locations while Winkler’s color-changing pins are intended for elements
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`defined by a single geographic coordinate. See EX1004, Tables 1-2 (Winkler
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`depicting specific latitude/longitude coordinates of map elements); EX1005, [0035]
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`(Lemmela’s clustering algorithm); EX2010, 21:3-6. Nothing in the Lemmela-
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`Crowley-Winkler teachings disclose how to resolve the irregular-shaped area
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`representing Lemmela’s clusters of posting locations to a coordinate location for
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`identifying Winkler’s color-changing movement vector needed from the user to
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`change the color. Instead, as Petitioner’s declarant admits, it was the inventors of
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`the ’084 patent that described how “action spots corresponding to locations which
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`are not discrete or high-specific” could be shown as the target of direction of travel.
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`EX1011, ¶64. Petitioner presents no evidence that a POSITA would have, or even
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`could have, implemented a technological solution to bridge the gap between
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`Winkler’s discrete map pins and Lemmela’s irregular areas for modification that
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`changes the color of a multi-directional cloud.
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`4.
`The Reply Does Not Cure Lemmela’s Failure To
`Render Obvious The “Activity Level”/“Level Of Activity” Limitations
`(Claims 1 And 9; Dependent Claim 6)
`The Reply falsely assumes Patent Owner imported “an unsupported
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`proportionality requirement to the claimed ‘activity level’ [], and ignores the Board’s
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`interpretation that ‘activity level’ requires no ‘particular accuracy.’” Reply, 22. In
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`truth, Patent Owner never disputed that the claims lack a particular accuracy
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`requirement. The Response instead explained that the relevant issue is whether
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`14
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`Lemmela’s metrics qualitatively indicate a level of activity at an action spot or
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`Attorney Docket No.: 21828-0051IP1
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`instead indicate something different. POR, 35-38. As evidence here confirms, both
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`Lemmela’s “quantitative measure of postings” and “density of postings” metrics
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`convey information that is far different from a level of activity at an action spot.
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`EX2003, ¶¶71-77. Specifically, Lemmela’s “quantitative measure of postings” does
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`not actually reflect the level of actions taken by mobile devices engaging in postings
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`at a given location, but instead merely represents the level of salient word
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`commonality for a mere subgroup of postings extracted from the universe of (mostly
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`ignored) postings. Id., ¶74. Worse, Lemmela’s “density” metric further skews this
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`measure of salient word commonality based on the size of the area spanned by the
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`locations of postings in the subgroup. Id.
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`Faced with Lemmela’s shortcoming, the Reply alleges that “a POSITA would
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`have understood how Lemmela’s ‘quantitative measure’ or ‘density’ of posts could
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`be proportional to the number of actions taken at a location.” Reply, 23. But even
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`if this were true, the mere accident that, in some unexplained circumstances,
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`Lemmela’s metrics “could” coincidentally be proportional to an activity level is
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`insufficient to render obvious the provision of an “activity level” or “level of
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`activity” at an action spot as required by claims 1 and 9. Due to the qualitatively
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`different nature of these metrics, a user would have no way of knowing when these
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`metrics were allegedly proportional to the activity level and when they were not.
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`15
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`The Reply’s arguments directed to dependent claim 6 fail for at least the same
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`Attorney Docket No.: 21828-0051IP1
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`reasons described here, as well as its failure to show how Lemmela identifies a
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`relative level of activity that “is occurring” at the alleged action spot. See Reply, 23-
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`24. For example, the Reply’s description of the alleged ability of a user of
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`Lemmela’s timeline slider in Figure 5 to select postings within the last 24 hours is
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`based on the unfounded assumptions that FIG. 5 is depicting the availability of
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`historical posting data on March 31 and that March 31 is the current date. But
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`Lemmela never discloses these facts; it appears to indicate the opposite. EX2003,
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`¶55. Nothing in FIG. 5 actually teaches that the historical data from March 31 is
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`available on the device. And even if it was, the Reply overlooks the control arrows
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`on the left and right sides of the slider bar (FIG. 5) indicating further date options
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`beyond March 31—dispelling Petitioner’s assumption that FIG. 5 is necessarily a
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`screenshot captured from a current date of March 31. EX2010, 27:24-28:11.
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`C.
`Petitioner’s Belated Attempt To Revive The Winkler-Altman
`Ground Is Fatally Flawed
`The Board previously determined that Ground 1 based on Winkler in view of
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`Altman was not likely to prevail. Inst. Dec., 33-35. Petitioner’s Reply arguments
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`fail to correct the numerous problems, and instead rely on new “Scenarios” presented
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`for the first time in the Reply.
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`16
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`Attorney Docket No.: 21828-0051IP1
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`
`
`1.
`The Reply Contravenes PTAB Rules By Introducing
`Entirely New “Scenarios” That Contradict The Petition’s Initial Mappings
`Petitioner’s newly invented reply arguments directed to the Winkler-Altman
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`ground should be disregarded in the first instance for improperly presenting new
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`theories that were never detailed “with particularity” in the petition document itself.
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`Henny Penny, 938 F.3d at 1330-1331; Intelligent Bio-Systems, 821 F.3d at 1369
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`(“utmost importance”); Magnum Oil, 829 F.3d at 1378-81 (“could have been
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`included in a properly-drafted petition, but was not”); 2019 Trial Practice Guide, 73-
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`74 (“a reply” that “raises a new issue or belatedly presents evidence may not be
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`considered”). The Reply’s newly concocted “Scenarios” invited the Board to adopt
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`error and run afoul of these precedential decisions.3
`
`
`3 The Reply (pp. 12-13) cites the non-precedential decision in Intellectual Ventures
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`II LLC v. Ericsson Inc., 685 F.Appx. 913, 919, 922 (Fed. Cir. 2017) to somehow
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`justify its presentation of the brand new Winkler “Scenarios.” But the facts of this
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`non-precedential decision are distinct because the petitioner there merely
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`incorporated originally articulated motivations to combine from one claim into
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`another within the same ground. Id. The Intellectual Ventures II decision never
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`permitted belated (and prejudicial) introduction of new Reply theories, as the
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`Petitioner has done here. The present facts instead align Henny Penny and
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`17
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`For example, the Reply points to Winkler’s connecting term “and/or” in the
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`Case No.: IPR2019-00714
`Attorney Docket No.: 21828-0051IP1
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`list of conditions disclosed at col. 11:36-54 to argue that any of the listed conditions
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`“may be utilized together” in forming an event that would affect presentation of a
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`map element in Winkler’s system. Reply, 9. On this basis, the Reply contends that
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`a map element in Winkler’s system would allegedly become an “action spot” upon
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`occurrence of a unique combination of two conditions (i.e., a logical AND). Reply,
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`10 (emphasis added) see also id., 14-21. In contrast, the Petition provided that
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`individual conditions sufficed to meet the claim features (i.e., a logical OR):
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`“Winkler recites events which only occur if a mobile device moves ‘within a pre-
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`selected range of a map element or if there is a particular amount of device activity
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`‘[within] a certain region.’” Pet., 23 (emphasis added). Not only did the Petition
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`confusingly shift positions on which type of map element/event i