Trials@uspto.gov
`571-272-7822
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` Paper 33
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` Entered: September 1, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`SNAP INC.,
`Petitioner,
`
`v.
`
`BLACKBERRY LIMITED,
`Patent Owner.
`
`____________
`
`IPR2019-00714
`Patent 8,825,084 B2
`____________
`
`
`
`Before MICHAEL R. ZECHER, MIRIAM L. QUINN, and
`AARON W. MOORE, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper 33
`
`
`
` Entered: September 1, 2020
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`SNAP INC.,
`Petitioner,
`
`v.
`
`BLACKBERRY LIMITED,
`Patent Owner.
`
`____________
`
`IPR2019-00714
`Patent 8,825,084 B2
`____________
`
`
`
`Before MICHAEL R. ZECHER, MIRIAM L. QUINN, and
`AARON W. MOORE, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`IPR2019-00714
`Patent 8,825,084 B2
`
`
`I.
`
`INTRODUCTION
`
`We instituted inter partes review pursuant to 35 U.S.C. § 314 as to
`
`claims 1, 2, 5, 6, 9, 10, 12, 13, and 15 of U.S. Patent No. 8,825,084 B2
`
`(Ex. 1001, “the ’084 patent”), owned by Blackberry Limited (“Patent
`
`Owner”). Paper 9 (“Decision” or “Dec. on Inst.”). We have jurisdiction
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`under 35 U.S.C. § 6. This Final Written Decision is entered pursuant to 35
`
`U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons discussed below,
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`Petitioner has shown by a preponderance of the evidence that claims 1, 2, 5,
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`6, 9, 10, 12, 13, and 15 (the challenged claims) of the ’084 patent are
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`unpatentable.
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`II. BACKGROUND
`
`A. RELATED MATTERS
`
`The parties indicate that the ’084 patent was asserted in BlackBerry
`
`Limited v. Snap Inc., No. 2:18-cv-02693 (C.D. Cal.). Pet. 1; Paper 5, 2.
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`Petitioner filed a concurrent inter partes review proceeding,
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`IPR2019-00715, involving U.S. Patent No. 8,326,327 B2, which is related to
`
`the ’084 patent. Id.
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`B. THE ’084 PATENT
`
`The ’084 patent relates to a system and method for determining an
`
`action spot based on the location of a mobile device. Ex. 1001, 1:14–17.
`
`The ’084 patent discloses that, in order to find events currently occurring
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`proximate to a mobile device’s present location, a user must manually search
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`external sources, such as electronic events calendars, Internet sites, and
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`2
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`Patent 8,825,084 B2
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`Internet calendars of businesses or event holders. Id. at 3:11–16. The user
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`must then compare the location of the event to the user’s current location.
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`Id. at 3:16–19.
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`The ’084 patent discloses a system for determining an action spot, i.e.,
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`“a location or an event where at least one activity is occurring relative to the
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`current location of another mobile device,” by identifying a location where
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`the other mobile device has engaged in documenting action. Id. at 3:3–5,
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`3:28–42. The action spot is located within a predetermined distance from
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`the location of the user’s mobile device. Id. at 3:28–42. The predetermined
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`distance can be any set distance from the current location of the user’s
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`mobile device. Id. at 8:32–37. The predetermined distance may be set by a
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`user, mobile device, software, server, or network provider. Id. at 8:37–44.
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`Figure 3, reproduced below, illustrates a screenshot of an interactive
`
`map, which includes display screen 102, graphic user interface 206, current
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`location 302, action spots 304, 306, and graphical representations 308 of
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`location landmarks. Id. at 5:56–6:31.
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`3
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`Patent 8,825,084 B2
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`FIG. 3 is an illustrative implementation of a graphical user interface
`displaying action spots within a predetermined distance from a current
`location of a mobile device. Ex. 1001, 1:53–55.
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`Action spots 304, 306 can have different sizes to indicate the activity
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`level associated with each action spot, wherein a larger size represents more
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`activity. Id. at 6:32–34. Activities may include documenting actions, such
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`as messaging, photographing, or video recording. Id. at 2:63–67. Activity
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`level may also be indicated by color, graphical-item-sizing, activity icon
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`scheme, or various combinations thereof. Id. at 10:26–39.
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`4
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`Patent 8,825,084 B2
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`Figure 10, reproduced below, illustrates a block diagram for
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`implementing a method of retrieving document actions and transmitting data
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`to the mobile device. Id. at 7:5–8.
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`
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`Figure 10 is a block diagram representing the interaction between a
`plurality of resources, a mobile device, and a processor configured to
`determine action spots relative to the location of the mobile device.
`Ex. 1001, 2:11–14.
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`The block diagram includes processor 110, which can retrieve data
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`from external server 1110. Id. at 7:5–34. Server 1110 monitors
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`documenting actions of other mobile devices 1120 on the same
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`communications network as mobile device 100. Id. Server 1110 can
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`monitor location and level of documenting actions, and then transmit action
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`spot locations based on the documenting actions to mobile device 100. Id.
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`5
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`Patent 8,825,084 B2
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`
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`Figure 7, reproduced below, illustrates a graphical item identifying a
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`direction in which to travel in order to arrive at the action spot. Id. at
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`12:11–14.
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`
`
`FIG. 7 is an illustrative implementation of a graphical user interface of
`a mobile device having a compass showing at least the distance and
`direction to an action spot proximate to the mobile device. Ex. 1001, 2:1–4.
`
`
`In Figure 7, graphical user interface 700 includes compass 702 which is
`
`pointed in the direction of the nearest action spot proximate to mobile device
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`100. Id. at 12:11–23.
`
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`IPR2019-00714
`Patent 8,825,084 B2
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`C. ILLUSTRATIVE CLAIMS
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`Of the challenged claims, claims 1 and 9 are independent. Each of
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`challenged claims 2, 5, 6, 10, 12, 13, and 15 depends directly or indirectly
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`from claims 1 or 9.
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`Claims 1 and 9 are illustrative and reproduced below.
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`1. A server configured to:
`
`receive data indicative of a current location of a first mobile
`device;
`
`determine at least one action spot within a predetermined
`distance from the current location of the first mobile device, the
`at least one action spot corresponding to a location where at least
`one second mobile device has engaged in at least one
`documenting action, the documenting action including at least
`one of capturing images, capturing videos and transmitting
`messages;
`
`transmit the at least one action spot to the first mobile device;
`and
`
`transmit to the first mobile device, an indication of an activity
`level at the at least one action spot,
`
`wherein the activity level is based upon at least one of a number
`of images captured, a number of videos captured, and a number
`of messages transmitted.
`
`9. A non-transitory computer program product comprising a
`computer useable medium having computer readable program
`code embodied therein providing action spots on a first mobile
`device, the computer program product comprising computer
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`Patent 8,825,084 B2
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`readable program code configured to cause the first mobile
`device to:
`
`determine, via a processor, a current location of the first mobile
`device;
`
`determine at least one action spot within a predetermined
`distance from the current location of the first mobile device, the
`at least one action spot corresponding to a location where at least
`one second mobile device has engaged in at least one
`documenting action, the documenting action including at least
`one of capturing images, capturing videos and transmitting
`messages; and
`
`display a graphical item on a display of the first mobile device,
`said graphical item identifying a direction, relative to the current
`location, in which to travel in order to arrive at the determined at
`least one action spot, and display a level of activity associated
`with the at least one action spot, the level of activity based upon
`at least one of a number of images captured, a number of videos
`captured, and a number of messages transmitted.
`
`Ex. 1001, 19:30–46; 20:11–36.
`
`D. PROCEDURAL HISTORY
`
`Petitioner filed the Petition on February 22, 2019. Paper 1 (“Pet.”).
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`Patent Owner filed a Preliminary Response on June 11, 2019. Paper 8
`
`(“Prelim. Resp.”). After considering the parties’ filings, we granted the
`
`Petition and instituted inter partes review on all challenged claims and all
`
`grounds asserted. Dec. on Inst. 37. In that Decision on Institution, we
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`clarified the claim construction for the term “action spot” and resolved
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`Petitioner’s request for claim construction of the term “predetermined
`
`distance.” Dec. on Inst. 1215.
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`8
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`During trial, Patent Owner filed a Patent Owner Response (Paper 13
`
`(“PO Resp.”)) and Petitioner filed a Reply (Paper 22 (“Reply”)). Patent
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`Owner also filed a Sur-Reply. Paper 25 (“Sur-Reply”). We heard oral
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`argument on June 9, 2020, a transcript of which is filed in the record.
`
`Paper 32 (“Tr.”).
`
`E. EVIDENCE OF RECORD
`
`Petitioner relies upon the following references as evidence of prior art:
`
`a) Winkler: U.S. Patent No. 8,750,906 B2, issued June 10, 2014, filed
`
`as Exhibit 1004;
`
`b) Altman: U.S. Patent Publication No. 2007/0281716 A1, published
`
`Dec. 6, 2007, filed as Exhibit 1006;
`
`c) Lemmela: U.S. Patent Publication No. 2008/0250337 A1,
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`published Oct. 9, 2008, filed as Exhibit 1005; and
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`d) Crowley: U.S. Patent No. 7,593,740 B2, issued Sept. 22, 2009,
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`filed as Exhibit 1008.
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`In addition, Petitioner supports its contentions in the Petition with the
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`Declaration of Dr. Samrat Bhattacharjee. Ex. 1002 (“Bhattacharjee Decl.”).
`
`With the Reply, Petitioner proffered a Rebuttal Declaration of Dr. Samrat
`
`Bhattacharjee. Ex. 1011 (“Bhattacharjee 2d Decl.”).
`
`With its Patent Owner Response, Patent Owner provided a
`
`Declaration of Patrick McDaniel, Ph.D. Ex. 2001 (“McDaniel Decl.”).
`
`During trial, Patent Owner proffered a Second Declaration of Patrick
`
`McDaniel, Ph.D. Ex. 2003 (“McDaniel 2d Decl.”).
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`Patent 8,825,084 B2
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`F. GROUNDS OF UNPATENTABILITY
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`The following grounds of unpatentability are at issue (Pet. 2–3):
`
`Claims
`Challenged
`1, 2, 5, 6, 9, 10, 12,
`13, 15
`
`35 U.S.C. §1
`
`References
`
`103(a)
`
`Winkler, Altman
`
`1, 2, 5, 6
`
`103(a)
`
`Lemmela, Crowley
`
`9, 10, 12, 13,15
`
`103(a)
`
`Lemmela, Crowley, Winkler
`
`III. ANALYSIS
`
`A. CLAIM CONSTRUCTION
`
`In an inter partes review filed on or after November 13, 2018, a claim
`
`“shall be construed using the same claim construction standard that would be
`
`used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37
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`C.F.R. § 42.100(b) (2019). In applying this claim construction standard, we
`
`are guided by the principle that the words of a claim “are generally given
`
`their ordinary and customary meaning,” as understood by a person of
`
`ordinary skill in the art in question at the time of the invention. Phillips v.
`
`AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc) (citation
`
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29,
`125 Stat. 284, 287–88 (2011), revised 35 U.S.C. § 103, effective March 16,
`2013. Because the patent application resulting in the ’084 patent was filed
`before the effective date of the relevant section of the AIA, we refer to the
`pre-AIA version of § 103 throughout this decision.
`10
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`omitted). “In determining the meaning of the disputed claim limitation, we
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`look principally to the intrinsic evidence of record, examining the claim
`
`language itself, the written description, and the prosecution history, if in
`
`evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d
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`1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). There is
`
`a “heavy presumption,” however, that a claim term carries its ordinary and
`
`customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359,
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`1366 (Fed. Cir. 2002) (citation omitted).
`
`1. “action spot”
`
`In our Decision on Institution we preliminarily determined that the
`
`term “action spot” refers to a location or event where an activity “is
`
`occurring” or “has occurred.” Dec. on Inst. 1214. We started with Patent
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`Owner’s lexicography position, which is that the Specification expressly
`
`defines the term “action spot” as “a location or an event where at least one
`
`activity is occurring relative to the current location of another mobile
`
`device.” Id. at 1112 (citing Ex. 1001, 3:3–5). We noted the issue with
`
`Patent Owner’s position: the inconsistency with which the Specification
`
`describes the “action spot” as requiring a present (“is occurring”) “activity.”
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`Id. 1213. We also noted that the claim language did not support Patent
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`Owner’s position. Id. at 1314. To summarize the issue: although Patent
`
`Owner’s definition requires that the “action spot” is where an “activity” “is
`
`occurring,” the claim language recites that the “action spot correspond[s] to
`
`a location where at least one second mobile device has engaged in at least
`
`one documenting action.” Ex. 1001, 19:3539 (emphasis added). Thus, we
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`deemed it improper to limit the term “action spot” to locations where
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`activity (which is a documenting action, id. at 2:6165) “is occurring”—to
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`the exclusion of locations where activity has occurred in the past.
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`During trial, Patent Owner renewed its contention that to “determine”
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`at least one “action spot” is expressly defined in the Specification and that
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`definition controls. PO Resp. 15. In particular, Patent Owner argues that we
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`must construe the term consistent with the lexicographic meaning, especially
`
`because the parties agreed to this definition during district court litigation.
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`Id. at 1516. Patent Owner urges we consider two reasons to change our
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`preliminary determination that the “action spot” could refer to locations in
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`which an activity “has occurred”: (1) symmetry and consistency between
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`our construction and “the district court’s construction”; and (2) the
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`distinction between the Specification’s desired “output” (determination of an
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`action spot) which is separate and distinct from the claim’s focus on the
`
`“input” (“recent documenting actions from other mobile devices”). Id. at
`
`1620. Neither of these arguments is persuasive for us to change our
`
`preliminary interpretation of the term “action spot.”
`
`We begin with the claim language, which recites “at least one action
`
`spot corresponding to a location where at least one second mobile device has
`
`engaged in at least one documenting action.” Ex. 1001, 19:3539,
`
`20:2224. This phrase is part of the recited determining function:
`
`“determine at least one action spot.” Id. And according to Patent Owner,
`
`the determined action spot is the “output” of the determining function. PO
`
`Resp. 1718. As we understand Patent Owner’s argument, defining which
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`12
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`Patent 8,825,084 B2
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`locations may be “action spots” a priori is different from the server
`
`determining an actual “action spot.” See Tr. 31:2115. There may be “input
`
`data related to documenting action” that occurred in the past, but the server
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`“determine[s]” the action spot based on the input data. PO Resp. 18. The
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`output then, Patent Owner reasons, is different from the input. Id. And,
`
`thus, the “action spot” definition from the Specification constrains the
`
`“output” (the recited “determine” step) to presently occurring activity. See
`
`id. (arguing that “the system achieves a solution that seeks to efficiently
`
`communicate to the user the ‘current happenings’ occurring in the vicinity of
`
`the user’s current location” (emphasis omitted) (citing Ex. 1001, 4:4448;
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`McDaniel 2d Decl. ¶ 40)).
`
`The importance of this language seems to be that, if the so-called
`
`output is limited to presently occurring activity, because of the “is
`
`occurring” language in the Specification’s definition, then prior art that
`
`reports activity not presently occurring would be outside the scope of the
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`claim. See PO Resp. 2525 (arguing that Lemmela’s postings accumulated
`
`over a two-month span in the past “certainly does not equate to Lemmela’s
`
`system somehow outputting the user its determination that activity is
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`occurring relative to the current location of Lemmela’s mobile device 50”
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`(emphasis in original)). We are not persuaded by Patent Owner’s argument
`
`that the claim is so restricted.
`
`The claim language plainly requires determining an “action spot” and
`
`further defines what constitutes an “action spot:” “the at least one action
`
`spot corresponding to a location where at least one second mobile device has
`
`engaged in at least one documenting action.” Ex. 1001, 19:3537. There is
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`no “input” and “output” distinction in the claim language. Nor is there any
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`term in the claim that warrants divorcing the determined “action spot” from
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`the “action spot” at which a mobile user has engaged in activity.
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`In essence, we have two competing definitions of “action spot,” one
`
`flowing from the claim language, in which the “action spot” may correspond
`
`to locations with past activity, and the Specification definition, which,
`
`according to Patent Owner, precludes those locations. Ex. 1001, 3:35,
`
`19:3537. However, in a situation like this where there is little to no
`
`evidence that the claim reads on two different concepts of an “action spot”—
`
`one an input, the other the output—we conclude that the claim language
`
`precludes such an interpretation and the plain meaning controls. Phillips v.
`
`AWH Corp., 415 F.3d 1303, 131213 (Fed. Cir. 2005) (starting claim
`
`construction analysis with the “bedrock principle” that the claims define the
`
`invention and the claims are given the ordinary and customary meaning). In
`
`our view, the plain meaning is that, when the server determines at least one
`
`“action spot,” that “action spot” corresponds to a location in which a mobile
`
`user has engaged in a documenting action, such as capturing and
`
`transmitting a video. The action spot, therefore, can include locations in
`
`which activity occurred in the past by the very nature of the verb tense in the
`
`verb phrase “has engaged2.”
`
`
`
`2 It is worth noting that the limitation concerning the “action spot” and the
`corresponding location language of the claim (i.e., the phrase containing the
`“has engaged” language) was recited in the original claims. See Ex. 1007,
`30.
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`The patentee’s lexicography cannot alter this meaning based on our
`
`review of the full record. The Specification describes four implementations
`
`of determined action spots. Ex. 1001, 4:431. This description starts:
`
`“[t]he processor can determine at least one action spot located within a
`
`predetermined distance from the current location of the mobile device
`
`(Block 1030).” Id. at 4:46 (emphasis added). This paragraph, thus, begins
`
`the explanation of the process of determining the action spot, which is what
`
`the claim is directed to. The first implementation is described as “at least
`
`one action spot can be determined as a location where at least one other
`
`mobile device has engaged in a documenting action within a predetermined
`
`period of time from the time the mobile device arrived at the current location
`
`of the mobile device.” Id. at 4:611 (emphases added). This first
`
`implementation is consistent with the claim language in that the action spot
`
`that the server determines is the location where the activity (i.e.,
`
`documenting action) may have occurred in the past. Although the
`
`Specification describes an example of the first implementation as an “action
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`spot” that involves activity in the present tense (e.g., the other mobile device
`
`“is composing an email”), the description of the activity is not limited to
`
`currently occurring activity, because it is presented as only “an example.”
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`Id. at 4:11–17.
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`The fourth implementation is also instructive, as it states that “the at
`
`least one action spot can be the location where at least one other mobile
`
`device has documented, recorded, accounted, chronicled, or otherwise has
`
`taken note of a location or a current happening occurring at the location.”
`
`Id. at 4:2831. From this passage we learn that the “action spot” may refer
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`to locations that refer to past activity because the mobile device “has
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`documented” a location. We also infer from this passage that there are two
`
`distinct times relevant to the second mobile device: (1) the time at which the
`
`mobile device documents a location, regardless of when an event takes place
`
`(“has documented . . . or otherwise has taken note of a location”); and (2) the
`
`time at which an event is happening at a location (“or a current happening
`
`occurring at the location”). Id. The claimed “action spot” involves the first
`
`timing, because the claim focuses on identifying as “action spots” those
`
`location at which the second mobile device has captured images or videos
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`and transmitted messages. Id. at 19:35–39, 20:22–26. The claim is silent
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`regarding whether documenting the location or the occurrence of an event
`
`must be concurrent with the determination step, such that the “action spot”
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`refers only to “current” happenings or “current” mobile device activity.
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`Patent Owner’s reliance on Figures 3 and 4 of the ’084 patent do not
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`persuade us otherwise. Patent Owner presents a comparison of those two
`
`figures to argue that the determination step outputs an action spot where
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`activity “is occurring,” e.g., a musical or concert, but does not report action
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`spots of music events that “‘occurred’ there on previous days or weeks.” PO
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`Resp. 1920 (citing Ex. 1001, 3:35, 4:4448, 9:3137; McDaniel 2d Decl.
`
`¶ 41). This argument, however, characterizes the ’084 patent disclosure too
`
`narrowly, ignoring other embodiments that reflect otherwise. First, the
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`depiction of “action spots” in which a music concert is currently happening
`
`does not preclude the depiction of “action spots” in which recent (read here,
`
`not current) activity occurred. For instance, the ’084 patent provides Figure
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`5, reproduced below, as an embodiment in which the system determines an
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`“action spot” where neither a current event, nor a documenting activity, are
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`“currently” happening.
`
`
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`Figure 5 is an illustrative implementation of a graphical user interface
`of a mobile device displaying a venue-specific map and action spots,
`showing highlighted in red the action spot labeled as item 502 and in yellow
`the action spot labeled as item 504. Ex. 1001, 1:6163.
`
`According to the Specification, Figure 5 depicts two determined
`
`action spots 502, 504. Ex. 1001, 11:13. The star depicted as item 501
`
`denotes the current location of the mobile user. Id. Action spot 502
`
`(highlighted in red) includes an exclamation point, indicating that the
`
`activity level at that spot is higher than the activity level of action spot 504
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`(highlighted in yellow). Id. at 11:917. The Specification also describes
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`that, although both are displayed actions spots, the identifier of action spot
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`502 can indicate “that the most recent documenting actions are occurring at
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`action spot 502, thereby notifying the user of the mobile device 100 that the
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`most current happening is occurring at action spot 502.” Id. at 11:1721
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`(emphasis added). In this embodiment both action spots 502 and 504 are
`
`displayed (i.e., they are determined action spots), but only action spot 502
`
`refers to the location of the most recent documenting action. From this
`
`explanation we conclude that the server may determine as action spots those
`
`locations in which there is documenting activity that occurred in the past,
`
`even though there may be more current documenting activity reflecting an
`
`event happening “now.” See id. at 11:2124 (explaining that exclamation
`
`point may indicate that a zookeeper talk or photo opportunity currently is
`
`taking place at action spot 502). Thus, we understand the ’084 patent
`
`disclosure to support the contention that the claimed determination of an
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`“action spot” encompasses determining locations where both a documenting
`
`action is occurring or has occurred.
`
`We further find that the language of dependent claim 2 does not
`
`support Patent Owner’s contention. Claim 2 depends from claim 1, and
`
`further recites “wherein the at least one action spot corresponds to a location
`
`where at least one other mobile device has engaged in a documenting action
`
`is within a predetermined period of time.” Ex. 1001, 19:4750. The
`
`language of this claim points out that the activity is permissibly within a past
`
`timeframe. Indeed, the Specification describes the predetermined time
`
`period as “within the last hour, the last twelve hours, the last twenty-four
`18
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`IPR2019-00714
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`hours, the last thirty minutes, or any other time period that is measured from
`
`the time the mobile device 100 arrived at the current location 302.” Id. at
`
`8:4448. In other words, the server uses a predetermined amount of time to
`
`select locations with past-occurring activity falling within the allotted time.3
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`Thus, if a mobile device documented a location at midnight on Tuesday,
`
`another mobile device arriving at that location at 8 am on Wednesday will
`
`display that location as an “action spot,” when the server determines that the
`
`location has been documented within the predetermined amount of time,
`
`such as the last twelve hours.
`
`Dependent claims are presumed to be of narrower scope than the
`
`independent claims from which they depend. AK Steel Corp. v. Sollac &
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`Ugine, 344 F.3d 1234, 1242 (Fed. Cir. 2003). And an independent claim
`
`impliedly embraces more subject matter than its narrower dependent claim.
`
`Intamin Ltd. v. Magnetar Techs., Corp., 483 F.3d 1328, 1335 (Fed. Cir.
`
`2007). It cannot be then that dependent claim 2 covers past-occurring
`
`activity, but claim 1 would preclude such activity. As the court found in
`
`Alcon Research, Ltd. v. Apotex Inc., 687 F.3d 1362, 1367 (Fed. Cir. 2012), a
`
`limitation recited in the dependent claim must necessarily meet the
`
`correspondingly recited independent claim limitations. For instance, in
`
`Alcon, the court found that concentrated ranges of an amount of olopatadine
`
`recited in dependent claims necessarily must meet the claim 1’s limitations
`
`
`
`3 Here we focus on the past-occurring activity for purposes of illustrating our
`point. But the server may also use a predetermined amount of time of zero,
`and, then, the determined “action spot” would encompass “current” activity.
`19
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`IPR2019-00714
`Patent 8,825,084 B2
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`of a therapeutically effective amount. Id. Similarly, here, the dependent
`
`claim 2’s use of a predetermined amount of time in the past for the server to
`
`determine an “action spot” must necessarily meet the claim 1’s limitations of
`
`determining an “action spot.” That is, the more natural reading of these
`
`claims is that claim 1 encompasses present (or “is occurring”) activity and
`
`past activity (“has occurred”), while claim 2 circumscribes the activity to
`
`that occurring within a predetermined time period (which definitely includes
`
`past activity, e.g., within the last twelve hours). Therefore, our analysis of
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`dependent claim 2 further supports our conclusion that the “action spot”
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`determination required by claim 1 does not preclude activity that “has
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`occurred.”
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`As we did before, therefore, we find that the Specification’s attempt to
`
`define “action spot” as such is sufficiently unclear because the Specification
`
`is not consistent in defining the “action spot” as limited to location where
`
`activity “is occurring,” and such inconsistency fails to give notice to a
`
`person of ordinary skill in the art of the clear meaning of the term. See In re
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`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (inventor may define specific
`
`terms used to describe invention, but must do so “with reasonable clarity,
`
`deliberateness, and precision” and, if done, must “‘set out his uncommon
`
`definition in some manner within the patent disclosure’ so as to give one of
`
`ordinary skill in the art notice of the change” in meaning (quoting Intellicall,
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`Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387–88 (Fed. Cir. 1992))); Dec.
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`on Inst. 13. We also conclude that the claims themselves further preclude
`
`adopting Patent Owner’s proposed construction.
`
`20
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`As for Patent Owner’s other argument concerning the desire for
`
`symmetry between claim constructions here at the Board and in the district
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`court, we are not persuaded that the argument warrants a different
`
`conclusion. As we understand the posture of the “action spot” term in
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`district court litigation, there was no express claim construction of this term
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`during Markman. See PO Resp. 16; Ex. 2002, 9, 3638. Indeed, we note
`
`that the parties agreed to the term and the district court merely entered that
`
`definition as an agreed definition. Id. at 9. We do not see the part of the
`
`order entering the parties’ agreed-to definition as the same as a claim
`
`construction analysis and interpretation by the district court. Furthermore,
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`Petitioner argues that the district court interpreted the term in the summary
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`judgment order pertaining to the ’084 patent claims. See Reply 23 (citing
`
`Ex. 1012, 4043, 9 (listing “action spot” and the parties’ agreed claim
`
`construction without analysis). And that interpretation, according to
`
`Petitioner, is consistent with our analysis here, that the claim simply states
`
`that an action spot corresponds to a location where a user “has engaged” in
`
`documenting activity, with no limits in time. Id.; Ex. 1012, 40. Although
`
`we do not comment on whether the district court’s claim construction
`
`analysis parallels our claim construction analysis, we do note that there is no
`
`apparent conflict between the district court’s determinations and orders and
`
`anything we have said here. Accordingly, we are not persuaded that the
`
`policy of consistency and symmetry of claim constructions among the Board
`
`and the district court is offended by clarifying that the term “action spot” is
`
`not limited to “is occurring” activity.
`
`21
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`IPR2019-00714
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`
`Therefore, according to the full context of the Specification and the
`
`plain meaning of the claim language, we maintain that the term “action spot”
`
`refers to a location or event where an activity “is occurring” or “has
`
`occurred,” relative to the current location of another mobile device.
`
`2. “predetermined distance”
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`In our Decision on Institution, we were not persuaded by Petitioner’s
`
`proposed construction of the “predetermined distance” as including a
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`“specified distance” requirement. Dec. on Inst. 1415. Patent Owner
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`responds to our preliminary determination by stating that “[t]he Institution
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`Decision properly assessed this claim phrase and rejected Petitioner’s
`
`proposed construction.” PO Resp. 21. Patent Owner also points out that the
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`“district court rejected Petitioner’s attempt to depart from the ordinary
`
`meaning and concluded that the claims do not require either a ‘specific
`
`distance’ or a determination of ‘each action spot.’” Id. (citing Ex. 2002,
`
`3638). Petitioner does not renew its claim construction position, or
`
`otherwise argue that we improperly concluded that the claims do not require
`
`a “specific distance.” Cf. Bhattacharjee 2d Decl. ¶¶ 2224 (stating that
`
`conclusions regarding the “predetermined distance” limitations are not
`
`affected by the Board’s determination that the claim does not require a
`
`“specific distance.”). We reiterate here our analysis and reach the same
`
`conclusion.
`
`Claims 1 and 9 recite the phrase “determine at least one action spot
`
`within a predetermined distance from the current location of the first mobile
`
`device.” Ex. 1001, 19:3335, 20:20–22. Claim 5 depends from claim 1 and
`
`22
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`IPR2019-00714
`Patent 8,825,084 B2
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`recites that the “determining of the at least one action spot is based upon a
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`defined distance from the mobile device.” Id. at 19:5860. We are not
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`persuaded by Petitioner’s argument that claims 1 and
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