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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`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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`DECLARATION OF PATRICK McDANIEL, PH.D.
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`Page 1
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`BLACKBERRY 2001
`SNAP, INC. V. BLACKBERRY LIMITED
`IPR2019-00714
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`TABLE OF CONTENTS
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`VI.
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`INTRODUCTION AND SCOPE OF WORK ................................................ 5
`I.
`QUALIFICATIONS ........................................................................................ 6
`II.
`III. MATERIALS CONSIDERED ...................................................................... 10
`PERSON OF ORDINARY SKILL IN THE ART ........................................ 11
`IV.
`BACKGROUND OF THE ’084 PATENT ................................................... 12
`V.
`’084 Patent Overview (Ex. 1001) ........................................................ 12
`A.
`B. The Prosecution History of the ’084 Patent ............................................... 15
`INTERPRETATION OF THE ’084 PATENT CLAIMS AT ISSUE ........... 20
`“action spot” ........................................................................................ 21
`A.
`B. “determine at least one action spot within a predetermined distance from
`the current location of the first mobile device” ................................... 22
`VII. ANALYSIS OF GROUND 1: ALLEGED OBVIOUSNESS IN VIEW OF
`WINKLER AND ALTMAN ......................................................................... 24
`Overview Of Prior Art ......................................................................... 25
`A.
`Winkler ...................................................................................... 25
`i.
`Altman ....................................................................................... 29
`ii.
`B. Ground 1 Deficiencies ............................................................................... 29
`The Petition Presents Inconsistent Mappings For “The At Least
`iii.
`One Action Spot” Of Independent Claims 1 And 9 ................. 29
`The Petition Has Not Shown That Winkler’s Map Elements
`Correspond To Activity That “Is Occurring” Under The ’084
`Patent’s Definition of “Action Spot” ........................................ 34
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`iv.
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`Page 2
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`v.
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`vi.
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`vii.
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`The Petition Has Not Shown Winkler’s Map Elements
`Correspond To A Location Where At Least One Second Mobile
`Device Has Engaged In At Least One Documenting Action ... 38
`The Petition Has Not Shown That The Alleged Winkler-Altman
`Combination Would Have Set A “Predetermined Distance”
`Before Determining “The At Least One Action Spot” ............. 41
`The Petition Conflates The Distance From A Tagged Location /
`Map Element With A Distance From Current Location Of A
`First Mobile Device .................................................................. 44
`viii. Winkler’s Color-Changing Map Element Is Not A “Graphical
`Item Identifying A Direction, Relative To The Current Location
`[Of A First Mobile Device], In Which To Travel In Order To
`Arrive At The Determined At Least One Action Spot” As
`Recited In Claim 9 .................................................................... 47
`VIII. ANALYSIS OF GROUNDS 2 AND 3: ALLEGED OBVIOUSNESS IN
`VIEW OF LEMMELA AND CROWLEY (GROUND 2) / IN VIEW OF
`LEMMELA, CROWLEY, AND WINKLER (GROUND 3)........................ 50
`Overview Of Prior Art ......................................................................... 51
`A.
`Lemmela .................................................................................... 51
`ix.
`Crowley ..................................................................................... 53
`x.
`B. Grounds 2-3 Deficienceis .......................................................................... 54
`xi. Winkler Does Not Disclose A Server Configured To “Receive
`Data Indicative Of A Current Location Of A First Mobile
`Device” As Recited In Independent Claim 1 ............................ 54
`The Petition Has Not Shown That Lemmela’s Groups Of
`Virtual Location-Based Posts Correspond To Activity That “Is
`Occurring” Under The ’084 Patent’s Definition of “Action
`Spot” .......................................................................................... 60
`xiii. Lemmela Does Not Provide An “Activity Level” As Recited In
`Independent Claims 1 And 9 ..................................................... 65
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`xii.
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`Page 3
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`xiv. Winkler’s Color-Changing Map Element Is Not A “Graphical
`Item Identifying A Direction, Relative To The Current Location
`[Of A First Mobile Device], In Which To Travel In Order To
`Arrive At The Determined At Least One Action Spot” As
`Recited In Claim 9 .................................................................... 69
`LEGAL STANDARDS ................................................................................. 71
`Obviousness ......................................................................................... 72
`A.
`XI. ADDITIONAL REMARKS .......................................................................... 76
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`IX.
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`Page 4
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`I, Patrick D. McDaniel, of State College, Pennsylvania, declare that:
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`I.
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`INTRODUCTION AND SCOPE OF WORK
`1.
`I have been retained by Fish & Richardson P.C. as an expert witness
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`on behalf of BlackBerry Limited (“Blackberry” or “Patent Owner”). I understand
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`that Snap, Inc. (“Snap” or “Petitioner”) filed a petition for inter partes review
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`(“IPR”) of claims 1-2, 5-6, 9-10, 12-13, and 15 of U.S. Patent No. 8,825,084 (“the
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`’084 patent”), and the case was assigned case no. IPR2019-00714.
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`2.
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`I have been asked to provide my independent analysis of the ’084
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`patent in light of the materials cited below and my knowledge and experience in
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`this field during the relevant period. I have been asked to consider what a person
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`of ordinary skill in the art at the time of the invention of the ’084 patent (a
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`“POSITA”; refer to ¶¶16-17) would have understood from the teachings of the
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`’084 patent, including scientific and technical knowledge related to the ’084 patent.
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`I have also been asked to consider whether the references cited in the Petition
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`anticipate or render obvious the inventions described by claims 1 and 9 of the ’084
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`patent. I have been told that this is only a preliminary stage of this proceeding, and
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`accordingly, I address at this stage only certain aspects of the Petition and only
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`some of my analysis of the cited grounds. I reserve the opportunity to address
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`other issues and provide further analysis at a later date should it become necessary.
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`3.
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`I am being compensated according to my normal hourly rate for my
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`time providing my independent analysis in this aforementioned IPR proceeding,
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`but my compensation is not contingent in any way on the content of my analysis or
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`the outcome of this proceeding. I am not, and never was, an employee or agent of
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`BlackBerry Limited, the owner of the ’084 patent.
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`II. QUALIFICATIONS
`4. My findings, as explained below, are based on my study, experience,
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`and background discussed below, informed by my extensive experience in the
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`fields of mobile systems, computer software, networking, and user experience
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`design at the pertinent timeframe, and my education as a computer scientist and
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`subsequent decades of work in research and development in these field. As
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`described in more detail below, based on my experiences, I understand and know
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`of the capabilities of persons of ordinary skill in the fields of computer software,
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`networking, and user experience design during the late 2000s and early 2010s, and
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`indeed, I have personal knowledge and experience in working directly with many
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`such persons in these fields during that time frame. I have also relied on my
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`review and analysis of the prior art cited in the petition, information provided to
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`me in connection with this case, and information I have independently reviewed.
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`5.
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`I earned a Ph.D. in Computer Science and Engineering from
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`University of Michigan, Ann Arbor in 2001. I earned a Bachelor of Science degree
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`in Computer Science from Ohio University in 1989 and a Master of Science
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`degree, also in Computer Science, from Ball State University in 1991.
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`6.
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`Since 2017, I have been the William L. Weiss Professor of
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`Information and Communications Technology in the School of Electrical
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`Engineering and Computer Science at the Pennsylvania State University in
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`University Park, Pennsylvania. I am also the director of the Institute for Network
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`and Security Research, director of the National Science Foundation Funded Center
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`for Trustworthy Machine Learning, and founder and co-director of the Systems
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`and Internet Infrastructure Security Laboratory, a research laboratory focused on
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`the study of security in diverse network and computer environments. My research
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`efforts primarily involve computer systems, mobile device systems and security,
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`network, management, and authentication, systems security, and technical public
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`policy.
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`7.
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`Before my current position, I was an Assistant Professor (2004-2007),
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`Associate Professor (2007-2011), Full Professor (2011-2015), and Distinguished
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`Professor (2015-2017) of Computer Science and Engineering at the Pennsylvania
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`State University. Since 2004, I have taught several courses in the field of computer
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`systems, systems programming, networks, and network and computer security at
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`both the undergraduate and graduate level. I created and continue to maintain
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`several of these courses for Penn State.
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`8.
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`From 2003-2009, I was also an Adjunct Professor at the Stern School
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`of Business at New York University in New York, NY. At the Stern School of
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`Business, I taught courses in computer and network security and online privacy.
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`9.
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`I am a Fellow of the Association for Computing Machinery (the
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`leading professional association for computer science) for “contributions to
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`computer and mobile systems security” and the Institute for Electrical and
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`Electronics Engineering (the leading professional association for computer
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`engineering) for “contributions to the security of mobile communications”.
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`10.
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`I was the Program Manager (PM) and lead scientist for the Cyber
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`Security Collaborative Research Alliance (CRA) from 2012 to 2018. The CRA is
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`led by Penn State University and includes faculty and researchers from the Army
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`Research Laboratory, Carnegie Mellon University, Indiana University, the
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`University of California-Davis, and the University of California-Riverside. This
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`national scale initiative is a research project aimed at developing a new science of
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`cyber-security for military networks, computers, and installations.
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`11.
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`I have served as an advisor to several Ph.D. and master’s degree
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`candidates, several of whom have gone on to become professors at various
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`institutions such as Purdue University, North Carolina State University, the
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`University of Oregon, and the Georgia Institute of Technology. I am currently an
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`advisor to two Ph.D. candidates and a number of master’s students.
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`12. Before joining Pennsylvania State University as a professor, I was a
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`software developer and project manager for companies in the networking industry
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`including Applied Innovation, Inc. and Primary Access Corporation. I was also a
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`senior researcher at AT&T Research-Labs. As part of my duties in these industrial
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`positions, I designed and implemented online services and features in various
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`contexts.
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`13.
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`I have published extensively in the fields of network and security
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`management, mobile networking and device operating systems, computer systems,
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`authentication, systems security, applied cryptography and network security. In
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`addition to writing several articles for industry journals and conferences, I have
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`authored portions of numerous books related to computer systems, applied
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`cryptography and network security. I have served on the editorial boards of several
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`peer-reviewed journals including ACM Transactions on Internet Technology, for
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`which I was the Editor-in-Chief. I was also an Associate Editor for ACM
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`Transactions on Information and System Security and IEEE Transactions of
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`Software Engineering, two highly-regarded journals in the field. A complete list of
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`my publications in the last 10 years, as well as a list of editorial positions can be
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`found in my curriculum vitae, which I have attached to this declaration as
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`Appendix A.
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`14.
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`In view of the foregoing, I believe I possess the expertise to testify
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`from the perspective of a POSITA with respect to the technology at issue in this
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`case.
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`III. MATERIALS CONSIDERED
`15.
`In preparing this declaration, I have considered the claims,
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`specification, and prosecution history of the ’084 patent. I have also read and
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`considered the Petition for inter partes review in Case No. IPR2019-00714. As
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`part of my analysis for this Declaration, I have considered my own knowledge and
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`experience, including my work and experience in the fields of computer software,
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`networking, and user experience design, and my experience in working with others
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`in these fields. Some additional materials that I have reviewed in preparing this
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`declaration include the following documents:
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` Ex. 1001: U.S. Patent No. 8,825,084 (“the ‘084 Patent”)
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` Ex. 1002: Declaration of Dr. Samrat Bhattacharjee
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` Ex. 1004: U.S. Patent No. 8,750,906 (“Winkler”)
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` Ex. 1005: U.S. Patent Application Publication No 2008/0250337
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`(“Lemmela”)
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` Ex. 1006: U.S. Patent Application Publication No. 2007/0281716
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`(“Altman”)
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` Ex. 1007: File History of U.S. Patent No. 8,825,084
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`Page 10
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` Ex. 1008: U.S. Patent No. 7,593,740 (“Crowley”)
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` Ex. 1009: Complaint for Patent Infringement, Case No. 2:18-cv-
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`02693 (C.D. Cal.)
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` Ex. 2002: Corrected Final Ruling on Claim Construction/Markman
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`Hearing, Blackberry Limited v. Snap Inc., Case Nos. CV 18-1844-GW
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`& 18-2693-GW (C.D. Cal. April 5, 2019) (“Markman Order”)
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`IV. PERSON OF ORDINARY SKILL IN THE ART
`16.
`I understand that the teaching of the prior art is viewed through the
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`eyes of a POSITA. My analysis is thus based on the perspective of a POSITA
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`having this level of knowledge and skill at the relevant time of the invention. For
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`purposes of my analysis, I have been informed that the priority date of the ’084
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`patent is no later than the August 27, 2010 timeframe, and I have applied this
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`timeframe as being the relevant time for the perspective of a POSITA. For
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`purposes of assessing the level of ordinary skill in the art, I have considered the
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`types of problems encountered in the art, the prior solutions to those problems
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`found in prior art references, the speed with which innovations were made at that
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`time, the sophistication of the technology, and the level of education of active
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`workers in the field. As previously described, I have reviewed and understand the
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`’084 patent. Based on my above-described experience, I am familiar with and
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`know of the capabilities of a POSITA in this field during the late 2000s and early
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`2010s.
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`17. Based upon my knowledge and experience in this area, I believe a
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`POSITA at the time of the invention would have had a bachelor of science degree
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`in computer engineering/computer science or similar subject matter, or at least
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`approximately two years of work or research experience in the fields of computer
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`software, networking, and/or user experience design, or an equivalent subject
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`matter. My opinion as to the level of ordinary skill in the art would remain the
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`same regardless of whether the time of the invention is found to be August 2010,
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`or some later time up until and including the October 9, 2012 filing date of the
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`’084 patent.
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`V.
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`BACKGROUND OF THE ’084 PATENT
`A.
`’084 Patent Overview (Ex. 1001)
`18. Both Action Spots Patents are entitled “System and Method For
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`Determining Action Spot Locations Relative To The Location Of A Mobile
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`Device.” As the shared title indicates, both patents relate to determining action
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`spot locations relative to the location of a mobile device.
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`19.
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`Prior to the ’084 patent, users could use an electronic device, such as a
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`mobile phone, to locate nearby events and happenings. EX1001, 3:9-27. The
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`patentee recognized this process as tedious and inefficient. Id. Users searching for
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`events were forced to consult multiple sources and/or applications. Id. Users
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`would then cross-reference the locations of those events with a map, such as a map
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`application on a smartphone, but the mapping applications contained limited
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`functionality:
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`Typically, the maps and directions are limited in
`information. For example, maps are limited to displaying
`the streets within a city. In order to find information
`relating to events and happenings currently occurring
`proximate to the mobile device's present location, the user
`of the mobile device will have to search an external
`resource, such as an electronic events calendar, internet
`sites, internet calendars of individual business or event
`holders (stores, restaurants, concert venues, bars, etc.), and
`compare the locations of the found events and happenings
`to the mobile device's current location. Such a process of
`manually researching events and happenings, determining
`the location of the events and happenings, and comparing
`the location of the events and happenings to the user's
`current location is tedious and results in user frustration.
`Moreover, the results of the user's research of current
`events and happenings can be incomplete and inaccurate,
`and the user can miss certain happenings that are close in
`proximity to the current location of the user's mobile
`device.
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`EX1001, 3:9-27.
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`20. The ’084 patent presented a new solution. Namely, the ’084 patent
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`determines locations or events at which one or more mobile devices are engaged in
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`certain activity, such as taking pictures or videos, posting pictures or videos to
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`Page 13
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`social networking sites, or sending or posting messages. EX1001, 4:4-32. The
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`’084 patent then presents a visual indication of these locations, known as “action
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`spots,” and may visually depict the amount of activity occurring at the action
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`spot(s). Id., 4:32-53. Thus, “a user can review information related to current
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`happenings within the vicinity of the user’s mobile device” by drawing upon
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`locations at which mobile devices are performing activities such as documenting
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`actions. Id.
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`21. Figure 3, depicted below, is an illustrative implementation of a
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`graphical user interface displaying an action spot within a predetermined distance
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`from a current location of a mobile device. Id., 1:53-55. In the figure, the current
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`location of the mobile device is depicted by item 302, and “the processor 110
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`identifies two action spots with[in] a predetermined distance from the current
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`location 302 of the mobile device 100. The action spots 304, 306 are signified on
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`the map 206 by graphical items that are clouds” Id., 6:18-25. In this example,
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`items are sized to indicate the level of activity associated with the action spot, with
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`304 being larger than 306 to indicate more activity, such as more postings to social
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`media sites being made by mobile devices at that location. Id., 6:32-59. Activity
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`levels may also be depicted by varying colors, such as by using yellow to indicate
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`moderate action and green to indicate large action. Id.
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`EX1001, FIG. 3. I note that, according to the teachings of the ’084 patent, not all
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`elements on the map are “action spots” within the meaning of the term as it is
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`defined in the ’084 patent; for example, the specification expressly teaches some
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`elements on the map are simply “graphical representations 308” that identify pre-
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`existing “venues, locations, monuments, buildings, streets, lakes, and other
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`location landmarks.” Id., 5:63-67.
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`B.
`22.
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`The Prosecution History of the ’084 Patent
`I understand the ’084 patent was filed on October 9, 2012, and claims
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`priority to U.S. Application Serial No. 12/870,676 (now issued as U.S. Patent No.
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`Page 15
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`8,326,327), filed on August 27, 2010. The original independent claim 1 recited the
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`following language:
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`EX1007, 30.
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`23. The examiner mailed a first office action on February 28, 2013, and
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`alleged that the original claims were anticipated by U.S. Patent No, 8,228,234
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`(“Paulson”). Id., 93-99. In a response to the first office action dated May 28,
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`2013, the applicant did not substantively amend the claims but explained that
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`Paulson failed to teach multiple aspects of the recited “at least one action spot.”
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`Id., 117-124.
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`24. The examiner mailed a second office action on July 25, 2013. Id.,
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`128-135. In this office action, the examiner alleged that the claims were
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`anticipated by U.S. Patent Application Publication No. 2010/0248746
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`(“Saavedra”). In a response to the second office action dated October 25, 2013, the
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`applicant again did not substantively original claim 1, but added the following
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`limitation to independent claim 8 (corresponding to issued claim 9):
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`Id., 153. The applicant explained that Saavedra did not teach the transmission or
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`display of an “activity level” as recited in the independent claims: “At most, the
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`asserted paragraphs of Saavedra show points of interest but do not provide an
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`indication of an activity level.” Id., 158.
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`25. Additionally, with respect to claim 8, I understand that the applicant
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`provided the following remarks that described Saavedra’s lack of teaching of
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`“display[ing] a graphical item on a display of the mobile device, said graphical
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`item identifying a direction, relative to the current location [of the mobile device],
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`in which to travel in order to arrive at the determined at least one action spot”:
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`Page 17
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`Id., 159 (highlights added). Through these remarks, the applicant confirmed the
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`claimed graphical item was an item that identifies an actual direction (e.g., an
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`arrow, a compass, etc.).
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`26. The examiner mailed a third office action on January 2, 2014, and
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`rejected independent claims 1 and 8 as allegedly anticipated by U.S. Patent
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`Application Publication No. 2011/0238517 (“Ramalingham”). Id., 168-176. In a
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`response to the third office action dated February 4, 2014, the applicant amended
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`claims 1 and 8 as follows:
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`Page 18
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`Id., 233.
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`Id., 234. In remarks accompanying the claim amendments, the applicant explained
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`Ramalingham and other cited prior art (including Saavedra) did not “disclose
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`transmitting an indication of an activity level” in a manner consistent with the
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`amended claim language. Id., 238-240.
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`Page 19
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`27. Following the applicant’s response to the third office action, the
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`examiner allowed the application on April 28, 2014. The examiner did not
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`expressly describe his reasons for allowance.
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`VI.
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`INTERPRETATION OF THE ’084 PATENT CLAIMS AT ISSUE
`28.
`I understand that, for purposes of my analysis in this IPR proceeding,
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`the terms appearing in the patent claims should be interpreted according to their
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`plain and ordinary meaning under the Phillips standard. Phillips v. AWH Corp.,
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`415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc). According to Phillips, the
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`structure of the claims, the specification, and the patent prosecution history are
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`used to construe a claim, and the “ordinary meaning” of a claim term is its
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`meaning that would have been recognized by a POSITA after reading the entire
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`patent. Moreover, Phillips provides that even treatises and dictionaries may be
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`used, albeit under limited circumstances, to determine the meaning attributed by a
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`POSITA to a claim term at the time of filing. For example, Phillips cautions
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`against heavy reliance on the dictionary divorced from the intrinsic record of the
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`patent, such as the patent’s specification. I have followed this approach in my
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`analysis.
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`29.
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`I also understand that the words of the claims should be interpreted as
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`they would have been interpreted by a POSITA at the time the invention was made
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`(not today). For purposes of my analysis here, I have used the August 27, 2010
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`priority date of the ’084 patent as the date of invention. Without exception,
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`however, my analysis of the proper meaning of the recited claim elements (under
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`the Phillips standard) in this Declaration would be correct if the date of invention
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`was anywhere in the late 2000s or early 2010s.
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`30.
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`I understand that the district court in a related proceeding involving
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`the ’084 patent issued a Corrected Final Ruling on Claim Construction (“Markman
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`Order”) on April 5, 2019. EX2002. I have reviewed the sections of the Markman
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`Order that pertain to the ’084 patent. I understand that the claim construction
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`standard under Phillips that applies in this inter partes review is the same standard
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`that the court applied in its Markman Order. For purposes of my analysis of the
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`challenged claims in this IPR proceeding, I have employed the same constructions
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`that were adopted by the court in the Markman Order (including those
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`constructions that were agreed upon by the parties). I also specifically address two
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`constructions below that have particular relevance to issues in the petition for inter
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`partes review and that are consistent with the constructions adopted by the court in
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`the Markman Order.
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`A. “action spot”
`31. The ’084 patent explicitly defines the term “action spot” as “a location
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`or an event where at least one activity is occurring relative to the current location
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`of another mobile device.” EX1001, 3:3-5. I understand that the parties in the
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`related litigation agreed to this exact definition for purposes of that proceeding, and
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`the court also adopted this construction under the Phillips standard. EX2002, 9.
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`Based on my review of the claims in the context of the specification and the file
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`history, I agree with this definition of the term “action spot” and I have applied this
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`definition in my analysis as set forth throughout this declaration.
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`32. The petition did not specifically provide any formal construction for
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`the term “action spot,” and as explained in detail below, the petition does not
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`expressly compare the cited prior art references to the formal construction of the
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`claimed “action spot” as it was defined in the specification and adopted by the
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`parties and the court. See Pet., 14-16.
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`B.
`
`33.
`
` “determine at least one action spot within a predetermined
`distance from the current location of the first mobile device”
`Independent claims 1 and 9 of the ’084 patent each recite the phrase
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`“determine at least one action spot within a predetermined distance from [a]
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`current location of [a] first mobile device.” EX1001, 19:33-35 (claim 1), 20:20-22
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`(claim 9). I understand the petition proposes to construe this phrase to mean
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`“determine each action spot within a specific distance from the current location of
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`the first mobile device, the specific distance being set prior to the determining
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`step.” Pet., 14-15 (emphasis added). Petitioner’s construction thus emphasizes
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`three limitations: (1) that “each” action spot must be determined within a distance
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`from the current location of the first mobile device, (2) that action spots are to be
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`determined within “specific distance” from the current location of the first mobile
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`device, and (3) that the specific distance is set prior to the determination of the
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`action spots.
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`34.
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`I also understand that petitioner argued for the same construction in
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`the related litigation over the ’084 patent. EX2002, 36. However, the district court
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`rejected petitioner’s construction, and specifically found that the claims do not
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`require either of the petitioner’s first two limitations—i.e., the claims do not
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`require determining “each” action spot within the predetermined distance and also
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`do not require determining action spots within a “specific distance” from the
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`current location of the first mobile device. EX2002, 36-38. The district court did
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`agree that “the plain language of the claim requires that the predetermined distance
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`be set before the at least one action spot is determined.” Id., 38.
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`35. Based on my review of the claims in the context of the specification
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`and the file history, I believe the phrase “determine at least one action spot within a
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`predetermined distance from [a] current location of [a] first mobile device” does
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`not require a formal construction and should be interpreted according to its plain
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`and ordinary meaning. In particular, the terms in the original claim language
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`would have been readily understandable by a POSITA, especially in the context of
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`the ’084 patent specification, and there is no specialized terminology that would
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`require a formal construction. Also, the petitioner’s proposed construction for this
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`phrase attempts to import added limitations that seem to be inconsistent with the
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`actual claim language (“at least one” action spot, not “each” action spot) and
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`inconsistent with the language of other claims (e.g., petitioner’s proposal for the
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`“specified distance” limitation would appear to create a scope for claim 1 that is
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`not consistent with dependent claim 5). These facts are also explained in the
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`court’s Markman order. EX2002, 36-38. For purposes of my analysis in this
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`declaration, I have applied the district court’s conclusions as set forth in the
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`Markman Order as consistent with the plain and ordinary meaning of this
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`limitation. For example, neither of claims 1 or 9 require determination of “each”
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`action spot, a “predetermined distance” is not limited to a “specific distance,” and
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`the “predetermined distance” must be set before the at least one action spot is
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`determined.
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`VII. ANALYSIS OF GROUND 1: ALLEGED OBVIOUSNESS IN VIEW
`OF WINKLER AND ALTMAN
`36.
`I understand that the petition relies on Winkler and Altman in alleging
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`obviousness of claims 1-2, 5-6, 9-10, 12-13, and 15. Based on my knowledge and
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`experience in the field and my review of Winkler and Altman, I believe the petition
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`commits a number of errors in its application of Winkler’s and Altman’s teachings
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`to the limitations of independent claims 1 and 9. Specifically, I believe the petition
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`has failed to show that either claim 1 or claim 9 would have been obvious in view
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`of Winkler and Altman for at least the following reasons.
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`A. Overview Of Prior Art
`i.
`Winkler
`37. Winkler, titled “Dynamic Elements On a Map Within a Mobile
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`Device, Such As Elements That Facilitate Communications Between Users,” is a
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`U.S. patent that was filed February 20, 2009, and published June 10, 2014.
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`EX1004, 1. Winkler generally describes “[a] system and method for providing
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`information on a map displayed by a mobile device.” EX1004, Abstract.
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`Winkler’s system presents location-based information to a user through “map
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`elements” overlaid on a map on the user’s mobile device. Id., 2:6-26, 3:62-4:5,
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`FIGS. 5, 6A-6C. A “map element” can be a pin, icon, or other visual indicator
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`associated with a particular location or map feature (e.g., a restaurant, store, bar, or
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`other venue). Id., 3:62-4:5, 10:10-31, 11:1-15, FIGS. 6A-6C.
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`38. Winkler also describes that the system “changes” the pre-existing map
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`elements “based on events that occur at or proximate to … a location associated
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`with the element.” Id., 10:3-7; see also 2:16-33, 11:16-26. Figures 6A-6C
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`illustrate a relevant example:
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`EX1004, FIGS. 6A-6C.
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`39.
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`In FIG. 6A, a map element 610 is depicted in the form of a light-
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`colored pin that points to a particular location on the map. Id., 11:3-5. Winkler
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`discloses a number of ways in which the map element 610 may be initially
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`generated. See, e.g., id., 10:10-16 (“In step 510, the system generates a map
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`element based on input received from a user. For example, a user selects a map
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`application, the mobile device launches a map application to display a map, and the
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`user selects a location on the map via a touch screen. Alternatively, the user input
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`may include a search query in a browser or other application that is relevant to
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`locations. The map application may present one or more user-selectable icons to
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`place at the