UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SNAP, INC.,
`Petitioner
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`v.
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`BLACKBERRY LIMITED,
`Patent Owner
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`Case No. IPR2019-00714
`Patent No. 8,825,084
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`PATENT OWNER’S RESPONSE
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`Case No.: IPR2019-00714
`Attorney Docket No.: 21828-0051IP1
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`TABLE OF CONTENTS
`I. 
`INTRODUCTION ........................................................................................... 1 
`OVERVIEW OF THE ’084 PATENT ............................................................ 2 
`II. 
`III.  OVERVIEW OF THE PRIOR ART ............................................................... 6 
`A.  Winkler .................................................................................................. 6 
`B. 
`Altman ................................................................................................... 9 
`C. 
`Lemmela .............................................................................................. 10 
`D. 
`Crowley ............................................................................................... 13 
`IV.  LEVEL OF ORDINARY SKILL .................................................................. 14 
`V. 
`CLAIM CONSTRUCTION .......................................................................... 14 
`A. 
`“determine” at least one “action spot” (claims 1 and 9) ..................... 15 
`B. 
`within a “predetermined distance” from the current location of the
`first mobile device (claims 1 and 9) .................................................... 21 
`VI.  THE LEMMELA GROUNDS ARE DEFICIENT ....................................... 22 
`A. 
`The Lemmela-Crowley Combination Fails To Disclose The Claimed
`Requirement To “Determine At Least One Action Spot” As Recited In
`Independent Claims 1 And 9 ............................................................... 22 
`The Petition Fails To Show That Lemmela Teaches The Limitation Of
`Independent Claim 1 Of A “Server Configured To Receive Data
`Indicative Of A Current Location Of A First Mobile Device” ........... 30 
`The Petition Fails To Show That Lemmela “Transmit[s] … An
`Indication Of An Activity Level At The At Least One Action Spot”
`(Claim 1) or “Display[s] A Level Of Activity Associated With The At
`Least One Action Spot” (Claim 9) ...................................................... 35 
`The Petition Fails To Show That Lemmela Transmits “The
`Indication” Of Activity Level “Identifying A Relative Level Of
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`D. 
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`B. 
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`C. 
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`E. 
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`F. 
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`Documenting Action Occurring At The At Least One Action Spot”
`(Claim 6) .............................................................................................. 38 
`The Lemmela-Crowley Combinations Of Grounds 2-3 Are Based
`Upon Hindsight Assertions ................................................................. 39 
`The Proposed Combination of Ground 3 Fails To Provide The
`“Displaying A Graphical Item … Identifying A Direction” Limitation
`Of Independent Claim 9 ...................................................................... 41 
`VII.  THE WINKLER GROUND IS DEFICIENT ................................................ 44 
`A. 
`The Winkler-Altman Combination Fails To Disclose The Claimed
`Requirement to “Determine At Least One Action Spot” As Recited In
`Independent Claims 1 And 9 ............................................................... 45 
`1. 
`The Petition’s inconsistent mapping of Winkler to Claims 1 and
`9 deprive Patent Owner and the Board of a fair opportunity to
`assess Petitioner’s combination and ignore all requirements for
`“the at least one action spot” ..................................................... 45 
`The Petition fails to show that any individual map element
`disclosed in the Winkler-Altman combination is an action spot
`corresponding to “a location where at least one second mobile
`device has engaged in at least one documenting action” .......... 50 
`The Petition fails to show that the Winkler-Altman system sets
`a “predetermined distance” before determining “the at least one
`action spot” ............................................................................... 53 
`The Petition’s Proposed Modification To Winkler’s System Is
`Factually And Legally Flawed ............................................................ 56 
`1. 
`The Petition fails to address how/why a POSITA would have
`combined Winkler’s distinct embodiments to achieve one map
`element that would provide all requirements of the claimed
`“action spot” .............................................................................. 56 
`The Petition’s Winkler-Altman combination conflates distances
`from a map element with distances from a current location of a
`first mobile device ..................................................................... 58 
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`B. 
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`2. 
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`3. 
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`2. 
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`3. 
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`C. 
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`The Petition’s hindsight motivations to combine Altman with
`Winkler are deficient ................................................................. 59 
`The Winkler-Altman Combination Fails To Provide The “Displaying
`A Graphical Item … Identifying A Direction” Limitation Of
`Independent Claim 9 ........................................................................... 60 
`VIII.  CONCLUSION .............................................................................................. 61 
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`iii
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`EX2001
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`EX2002
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`EX2003
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`EX2004
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`LIST OF EXHIBITS
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`Declaration of Patrick McDaniel, Ph.D.
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`Corrected Final Ruling on Claim Construction/Markman
`Hearing, Blackberry Limited v. Snap Inc., Case Nos. CV 18-
`1844-GW & 18-2693-GW (C.D. Cal. April 5, 2019)
`(“Markman Order”)
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`Second Declaration of Patrick McDaniel, Ph.D.
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`Transcript of Deposition of Dr. Samrat Bhattacharjee
`(November 18, 2019)
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`EX2005-EX2007 [RESERVED]
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`Garmin: Updating Maps on Your Garmin Device (May 2010),
`available at https://www8.garmin.com/documents/instructions/
`Garmin_Map_Update_Guide.pdf (retrieved November 24,
`2019)
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`CNET Article: How To Update Your GPS Maps TomTom
`Edition (July 14, 2010), available at https://www.cnet.com/
`pictures/how-to-update-your-gps-maps-tomtom-edition-photos
`(retrieved November 24, 2019) (slideshow pictures reproduced
`in a single PDF)
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`EX2008
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`EX2009
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`I.
`INTRODUCTION
`This PTAB trial was instituted on the premise that the claim term “action
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`spot” need not be expressly construed at that preliminary “juncture” (Inst. Dec.,
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`12), but a construction is necessary and was already established. Here, the district
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`court’s order identified the proper construction under the Phillips standard—a
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`construction that perfectly aligns with the lexicographic definition set forth in the
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`specification. See EX2002, 9; EX1001, 3:3-5. There can be no greater support in
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`the specification for the district court’s construction, which is why all parties
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`already agreed the construction is proper. If the Board faithfully applies the proper
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`construction of this term “using the same claim construction standard that would
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`be used to construe the claim in a civil action,” the Lemmela grounds (Grounds 2-
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`3) inevitably fail. 37 C.F.R. §42.100.
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`Moreover, even if the Board concludes that the claim scope should depart
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`from the Phillips construction ordered by the district court and now imposed upon
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`Patent Owner in the litigation, the Petition’s reliance on Lemmela’s display of a
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`“salient word” cloud falls short of achieving a number of other elements in claims
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`1, 9, 12, and 16. As detailed below, the Petition cannot satisfy its heightened
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`burden under §316(e).
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`Lastly, the Board squarely addressed the Winkler ground (Ground 1) and its
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`fatal flaws. See Inst. Dec., 32-35 (“we are not persuaded”). Simply put, the
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`“information presented in the petition” for the Winkler ground was woefully
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`insufficient to satisfy Petitioner’s burden under §314(a)—and even further short of
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`the now-heightened burden under §316(e), especially where the law forbids
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`subsequently adding new theory/argument that “could have been included in a
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`properly-drafted petition, but was not.” In re Magnum Oil Tools Int’l, 829 F.3d
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`1364, 1378-80 (Fed. Cir. 2016); Intelligent Bio-Systems, Inc. v. Illumina
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`Cambridge, Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“utmost importance”).
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`The Petition alone set forth Petitioner’s case-in-chief for the Winkler ground, and it
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`was irreparably defective.
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`The final quotation in the conclusion of the Institution Decision is incisive
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`here: “there is a significant difference between a petitioner’s burden to establish a
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`‘reasonable likelihood of success’ at institution, and actually proving invalidity by
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`a preponderance of the evidence at trial.” See Inst. Dec., 36 (quoting Trivascular,
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`Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016)). The Board was right. This
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`difference is meaningful, especially in light of the substantial evidence in the
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`record showing the fundamental shortcomings of Grounds 1-3.
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`II. OVERVIEW OF THE ’084 PATENT
`The ’084 patent describes techniques for determining “action spots” relative
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`to a “current location” of a mobile device. EX1001, 1:14-17, 3:28-4:53, FIGS. 1, 3;
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`EX2003, ¶¶19-25. The specification provides a deliberate lexicographic definition
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`of “action spot,” as ordered by the district court in the concurrent litigation and
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`agreed upon by the parties:
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`The term “action spot” refers to a location or an event where at least
`one activity is occurring relative to the current location of another
`mobile device.
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`EX1001, 3:3-5 (emphasis added); EX2002, 9; infra, Section V.A. Based on the
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`system’s determination that an “action spot” is occurring in the vicinity of a mobile
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`device, the ’084 patent’s techniques advantageously allow a user to readily identify
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`nearby locations or events that he or she may be interested in visiting, attending, or
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`otherwise monitoring. EX1001, 2:61-3:42, 4:44-48 (detailing the inventors’
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`objective in which “a user can review information related to current happenings
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`within the vicinity of the user’s mobile device” (emphasis added)); 8:18-48. Also,
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`the ’084 patent describes that “activity” refers to actions taken by a mobile device,
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`and in particular those types of actions “where the mobile device is being used to
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`observe and make note of a location or an event currently occurring at the location
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`of the mobile device.” EX1001, 2:62-3:5 (emphasis added); see also id. at 19:35-39
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`(the documenting action including at least one of capturing images, capturing videos
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`and transmitting messages”); EX2003, ¶¶20-21.
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`The purpose of the invention was to accomplish a technological solution to a
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`problem with typical mobile devices more than a decade ago—namely, that “[i]n
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`order to find information relating to events and happenings currently occurring
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`proximate to the mobile device’s present location, the user of the mobile device will
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`have to search an external resource, such as an electronic events calendar, internet
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`sites, internet calendars of individual business or event holders …, and compare the
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`locations of the found events and happenings to the mobile device’s current
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`location.” EX1001, 3:11-19 (emphasis added). The ’084 patent explains that this
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`traditional process could lead to “user frustration” and “incomplete and inaccurate”
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`results such that the user risked “miss[ing] certain happenings that are close in
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`proximity to the current location of the user’s mobile device.” EX1001, 3:19-27;
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`EX2003, ¶19.
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`The inventors’ solution to these problems included a novel system to monitor
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`near real-time documenting actions by other mobile devices within a geographic
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`area, which can then advantageously output a determination that at least one “action
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`spot” is present (a determination that activity is occurring based upon the input from
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`such monitored actions) at a location or event within a predetermined distance of the
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`current location of a user’s mobile device. EX1001, 3:28-42; see also 4:44-48
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`(“current happenings within the vicinity” (emphasis added)); 7:8-36, FIG. 1;
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`EX2003, ¶20. EX1001, 3:28-42. In the depicted examples, the system provides
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`graphical items for display over a map at the first mobile device for at least one
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`action spot, and the graphical item for each action spot can be presented at a position
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`over the map that corresponds to the real world location where the system
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`determined the action spot is occurring. EX1001, 6:18-31, FIG. 3. Figure 3
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`(reproduced below) illustrates one example of a map 206 presented in a graphical
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`user interface on a mobile device. EX1001, FIG. 3. As shown in Figure 3, various
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`graphical items are overlaid on the map 206 including a first item 302 that indicates
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`a current location of the user’s device, and graphical items 304 and 306 showing
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`“action spots” where activity is occurring. EX1001, FIG. 3.
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`Critically, not all elements on the map are “action spots” within the meaning
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`of the term as it is used in the ’084 patent, for the specification plainly states 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 location
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`landmarks.” EX1001, 5:63-67; EX2003, ¶¶23-24. For example, FIG. 3
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`demonstrates that there is no “action spot” proximate to the “museum”—namely,
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`because there was no determination it is a location where activity “is occurring” (col.
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`3:3-5), regardless of whether the system might have historically detected posts from
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`other mobile devices at the museum gallery on previous days or weeks. By contrast,
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`FIG. 4 shows another example where an “action spot” is displayed proximate to the
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`“museum” because the system made a determination an event “is occurring at action
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`spot 408” (col. 9:31-37 (emphasis added)), not a determination that historical posting
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`activity occurred there on previous days or weeks:
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`EX2003, ¶¶23-24(comparing FIGS. 3-4); EX1001, 9:31-37.
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`The ’084 patent further describes that an activity level of each action spot
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`presented to the user can be signified in various ways such as by setting a size or
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`color of the graphical item for the action spot to reflect the activity level or displaying
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`text that indicates metric(s) that may be related to activity level (e.g., a count of a
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`number of documenting actions by at least one other mobile device at the action
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`spot). EX1001, 6:33-61, 9:55-65, 11:56-58, FIG. 6. The ’084 patent also describes
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`how the display can include a graphical item identifying a “direction” (e.g., an arrow,
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`compass features, etc.), not merely a location, in which to travel for reaching the
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`action spot. EX1001, 12:11-34; 13:33-50, FIGS. 7-8; EX2003, ¶25.
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`III. OVERVIEW OF THE PRIOR ART
`A. Winkler
`Winkler (EX1004) describes “[a] system and method for providing
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`information on a map displayed by a mobile device.” EX1004, Abstract; EX2003,
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`¶¶89-95. Winkler’s system conveys location-based information to a user through
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`“map elements” overlaid on a map on the user’s mobile device. EX1004, 2:6-26,
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`3:62-4:5, FIGS. 5, 6A-6C. A “map element” can be a pin, icon, or other visual
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`indicator associated with a particular location or map feature (e.g., a restaurant, store,
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`bar, or other venue). EX1004, 3:62-4:5, 10:10-31, 11:1-15, FIGS. 6A-6C.
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`Moreover, Winkler describes examples in which the system “changes” the pre-
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`existing map elements “based on events that occur at or proximate to … a location
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`associated with the element.” EX1004, 10:3-7; see also 2:16-33, 11:16-26. Figures
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`6A-6C illustrate a relevant example:
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`EX1004, FIGS. 6A-6C.
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`As shown above in FIG. 6A, a map element 610 is depicted in the form of a
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`light-colored pin that points to a particular location on the map. EX1004, 11:3-5.
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`Winkler discloses a number of ways in which the map element 610 may be initially
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`generated. See, e.g., EX1004, 10:10-16, 6:14-26, 11:61-63. In contrast to the
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`“action spots” of the ’084 patent, the display of a map element in Winkler’s system
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`does not mean there was a determination that activity is occurring at the location
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`associated with the map element—and certainly not relative to the current location
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`of the user’s mobile device. First, Winkler’s map elements that are displayed
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`merely, for example, as a result of having been “tagged” by a user for generation on
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`the map, e.g., thereby allowing the user to communicate with other users (all of who
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`may be remote from the location) by posting comments to the pre-existing element
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`over time or allowing the user to monitor for the occurrence of “events” at the pre-
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`existing element. EX1004, 6:6-11, 6:2-7:24, 11:16-24. Second, the user generating
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`the map element need not be at the actual location, and the map element may be
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`displayed regardless of the user’s current location.
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`After map element 610 is initially displayed, Figure 6B shows that the pin
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`icon for the element 610 may change appearance (e.g., darken) when an event is
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`detected to have occurred at the location corresponding to the map element 610.
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`EX1004, 11:6-10 (“when a friend arrives at the location or adds a comment to the
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`map element.”). Winkler lists a number of distinct “events” that may trigger a
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`change in appearance of a map element, but as detailed below, not one of those
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`events provides all of the required characteristics of “the at least one action spot”
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`recited in claims 1 and 9. Infra, Section VII.A. For instance, Winkler discloses
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`detected events related to “movement” of a mobile device, such as:
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` “movement of another mobile device near, to, or proximate to a tagged
`location,” or
` “movement of a user’s mobile device near, to, or proximate to the user’s
`tagged location.”
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`EX1004, 11:38-44. Such “movement” of a mobile device is detected even when no
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`documenting action is occurring at that location. In another example, Winkler
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`discloses other events related to detection of “activity,” such as:
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` “a certain frequency or amount of activity in a certain region.”
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`EX1004, 11:38-44. The detected “activity” may include other users commenting on
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`a tagged location—regardless of whether those other users are physically present at
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`the tagged location, and regardless of whether those other users are within a
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`predetermined distance of a first user. EX1004, 7:35-8:18, Table 2, FIG. 3
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`(disclosing a user commenting on a coffee shop he/she plans to visit).
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`B. Altman
`Altman (EX1006) discloses a “location-based social network manager” that
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`“superimposes on the map the respective locations of one or more other users of
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`mobile communication devices coupled to the mobile communication device over
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`the network.” EX1006, Abstract, [0059]-[0060] (“send an alert to that user when a
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`friend of the user gets within a certain distance of the POI”); EX2003, ¶¶96-97. The
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`Petition relies on Altman as a secondary reference in combination with Winkler,
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`solely for the aspect of claims 1 and 9 directed to the Petition’s now-rejected claim
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`construction demanding a “specific distance” requirement. Pet., 15, 19-26; EX2002,
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`37 (rejecting Petitioner’s construction).
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`C. Lemmela
`Lemmela (EX1005) is titled “Identifying Interesting Locations Based On
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`Commonalities in Location Based Postings” and describes “a method and system
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`that identifies and presents information[] which is common in various postings in an
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`area.” EX1005, Abstract; EX2003, ¶¶46-48. Lemmela’s system collects so-called
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`“location postings” from users over a historical period of time (e.g., previous days,
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`weeks, or months) and filters the location postings to isolate those having “salient
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`words” for determining where users have historically posted about topics such as
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`“shopping,” “gallery,” “football,” etc. EX1005, [0007]-[0009], [0024]-[0026],
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`Abstract, FIG. 1. For example, Figure 2A illustrates a collection of geographically
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`proximate location postings that each include the term “pizza,” and Figure 2B
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`depicts a view of a map with overlay graphic information 32 (e.g., a cloud) derived
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`from the location postings identifying the geographic area associated with the subset
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`of filtered postings about “pizza”:
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`EX1005, FIGS. 2A-2B; [0031].
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`To determine groups of related location postings, Lemmela’s system
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`identifies salient words in the postings and then clusters the postings using, for
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`example, a “clustering algorithm” that is used to collect and “pre-process” the
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`postings over time before the posting information is subsequently provided to the
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`user’s mobile device 50. EX1005, [0035], [0043]. Because the posting information
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`is locally stored at the user’s mobile device 50, the user can adjust the historical
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`timeframe to be considered for the clouds drawn on that device, e.g., via a slider tool
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`presented on a user’s device that allows the user to adjust the start and end dates for
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`a historical window of postings. EX1005, [0037], [0039], FIG. 5.
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`Lemmela’s principle of operation is to generate “salient word” clouds on the
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`map that merely informs the viewer of a summary of historical activity detected over
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`previous days or weeks.
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` See EX1005,
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`[0009]
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`(“summary view” of
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`meaningful/important/relevant information “filtered out and presented to a user”),
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`[0039] (“a time window from late February to late March”); EX2003, ¶48. Thus,
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`the user of Lemmela’s system can view the locations on a map where similarly-
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`worded postings occurred in the past and then might attempt to make her own
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`assumptions (right or wrong) from there, but Lemmela’s system never uses the input
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`of its historical posting data to output an actual determination that activity is
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`occurring relative to the current location of the user’s mobile device. EX1005,
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`FIGS. 1-2B, [0036] (“Once the location postings are grouped…”); but see EX1001,
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`3:3-5 (“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.” (emphasis added)), 4:46-48 (“a user can
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`review information related to current happenings within the vicinity of the user’s
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`mobile device” (emphasis added)); EX2003, ¶48.
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`In a straightforward example, based upon Lemmela’s disclosure and
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`transmission of “raw” or “pre-processed” posting information for local storage at the
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`mobile device 50, the evidence confirms that Lemmela’s “shoe” cloud would appear
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`on the user’s map at 4AM on a holiday closure date (or another time long after the
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`shoe store is closed):
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`EX1005, FIGS. 3A-3C and 5 (color added); EX2003, ¶48. This result arises because
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`Lemmela’s visual summary of a cluster of historical “shoe” postings that
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`accumulated over previous days or weeks is far different from, for example, a
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`technical solution that monitors recent postings to make an actual determination that
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`a “shoe” action spot is occurring relative to the current location of a mobile device.
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`EX2003, ¶48; 4:46-48 (“current happenings”), 3:3-5.
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`D. Crowley
`Crowley (EX1008) describes a “method of establishing connection between
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`users of mobile devices” and facilitating communications between users who are “in
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`close proximity to each other.” EX1008, Abstract, 1:54-58; EX2003, ¶49. The
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`Petition relies on Crowley as a secondary reference in combination with Lemmela,
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`solely for the aspect of claims 1 and 9 directed to the Petition’s now-rejected claim
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`construction demanding a “specific distance” requirement. Pet., 15 and 49-53;
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`EX2002, 37.
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`IV. LEVEL OF ORDINARY SKILL
`The evidence here demonstrates that—based upon the relevant factors here—
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`a person of ordinary skill in the art at the time of the invention (“POSITA”) would
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`have had “a bachelor of science degree in computer engineering/computer science
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`or similar subject matter, or at least approximately two years of work or research
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`experience in the fields of computer software, networking, and/or user experience
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`design, or an equivalent subject matter.” EX2003, ¶¶17-18.
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`V. CLAIM CONSTRUCTION
`Patent Owner submits that all claim terms should be construed according to
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`the Phillips standard. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005); 37
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`C.F.R. §42.100. Unlike the broadest reasonable interpretation standard, the Phillips
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`standard seeks “the correct construction—the construction that most accurately
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`delineates the scope of the claim[ed] invention.” PPC Broadband, Inc. v. Corning
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`Optical Comm’ns RF, LLC, 815 F.3d 734, 740-42 (Fed. Cir. 2016). Under the
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`Phillips standard, the purpose of claim construction is “to understand and explain,
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`but not to change, the scope of the claims.” Embrex, Inc. v. Serv. Eng’g Corp., 216
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`F.3d 1343, 1347 (Fed. Cir. 2000).
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`Here, the district court has already issued its final claim construction ruling
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`for a number of claim elements—detailing the proper construction under the Phillips
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`14
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`standard that is imposed upon Patent Owner in the concurrent litigation. See
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`Case No.: IPR2019-00714
`Attorney Docket No.: 21828-0051IP1
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`EX2002, 9, 36-41; EX2003, ¶¶32-34. Patent Owner specifically addresses two
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`claim elements below.
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`A.
`“determine” at least one “action spot” (claims 1 and 9)
`The district court’s final claim construction order properly interpreted the
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`term “action spot” under the Phillips standard to mean “a location or event where at
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`least one activity is occurring relative to the current location of another mobile
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`device.” EX2002, 9. Indeed, not only did all parties agree that this was the proper
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`construction under the Phillips standard (id.), but this construction matches the
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`deliberate lexicography of “action spot” in the specification:
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`The term “action spot” refers to a location or an event where at least
`one activity is occurring relative to the current location of another
`mobile device.
`EX1001, 3:3-5; EX2002, 9. There can be no clearer statement from the inventors
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`regarding what this claim term “refers to” throughout this patent; it is not a mere
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`sentence about a preferred embodiment. EX2003, ¶¶35-41; Phillips, 415 F.3d at
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`1321.
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`The Institution Decision did not construe this claim term “[a]t this juncture.”
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`Inst. Dec., 12-14. Now, Patent Owner reiterates that a formal construction is
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`necessary to resolve certain issues in dispute after a full PTAB trial. The Institution
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`Decision addressed the Lemmela grounds (Grounds 2-3) based upon a claim scope
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`15
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`that departed from the district court’s final claim construction ruling and the Phillips
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`Case No.: IPR2019-00714
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`standard that is imposed upon Patent Owner in the concurrent litigation. Id. In
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`particular, the Institution Decision assumed the scope of the claimed “action spot”
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`must be broader because “an ‘action spot’ refers to a location or event where an
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`activity ‘is occurring’ or ‘has occurred.’” Id. (emphasis added); but see EX1001,
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`3:3-5; EX2002, 9.
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`Patent Owner asks nothing more than a construction for this term that aligns
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`with the proper Phillips construction ordered by the district court and now imposed
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`upon Patent Owner in the concurrent litigation. Such symmetry avoids unfair
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`prejudice and a number of reversible errors.
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`First, 37 C.F.R. §42.100(b) plainly explains that the Board should construe
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`this term “using the same claim construction standard that would be used to construe
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`the claim in a civil action,” and there is no dispute how the district court (and both
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`parties) construed this claim in the civil action here. EX2002, 9. As the Office
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`explained, the purpose of seeking symmetry between the PTAB’s construction and
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`the district court’s construction is to promote fairness, namely, by avoiding a
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`scenario where “a patent claim could potentially be found unpatentable in an AIA
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`proceeding on account of claim scope that the patent owner would not be able to
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`assert in an infringement proceeding.” See 83 Fed. Reg. 51,340 at 51,342 (Oct. 11,
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`2018); see also Andrei Iancu, USPTO Director, REMARKS AT THE AMERICAN
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`16
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`INTELLECTUAL PROPERTY LAW ASSOCIATION (AIPLA) ANNUAL MEETING,
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`Case No.: IPR2019-00714
`Attorney Docket No.: 21828-0051IP1
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`Washington D.C. (Oct. 25, 2018) (“Objectively speaking, that meaning cannot, and
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`should not, depend on the happenstance on which forum might review the patent,
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`years after issuance.”). These aims of the Office and its rules would be disrupted
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`here if the Board interprets “action spot” broader than the proper Phillips
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`construction set forth in the district court’s final claim construction order—
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`especially where the parties have already agreed on this proper construction. See
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`also PPC Broadband, 815 F.3d at 756 (“[I]f the Board had applied the Phillips
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`standard rather than the broadest reasonable construction, this case would be
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`straightforward.”).
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`Second, the Final Written Decision must avoid erroneously analyzing the
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`scope of the claimed determination of an “action spot” in a manner that conflates the
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`specification’s description of the desired output (determination of an action spot)
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`with the specification’s description of the input (recent documenting actions from
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`other mobile devices). See Inst. Dec., 12-14 (citing to col. 3:3-5, col. 8:44-48, and
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`claims 1, 2, 9, and 10). To be clear, the text at column 3:3-5 of the specification
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`provides a straightforward definition of “action spot” that is consistent with all
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`embodiments of an “action spot,” and the district court’s final claim construction
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`properly adopted this meaning. Supra, p. 15; EX2003, ¶38; see also EX2004, 44:13-
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`23, 105:21-106:4. The Institution Decision (pp. 12-13) focused on column 8:44-48
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`17
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`and dependent claim 2, but that text is merely referring to a parameter for the input
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`Case No.: IPR2019-00714
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`data that is used by the system for purposes of achieving the output—outputting a
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`determination of whether an action spot is present. See, e.g., EX1001, 7:5-8
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`(describing the retrieval of input data “from a resource 1110, 1130, 1140 configured
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`to monitor the documenting actions of mobile devices”), 8:11-17 (describing the
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`output of a “determin[ation] that a location … is an action spot” based on the input
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`from “message board posting and video postings occurring at the location”);
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`EX2003, ¶¶39-40.
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`Simply put, the claims require that the system must “determine” an “action
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`spot,” which refers to a determination that activity “is occurring” at a location or an
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`event—not a mere summary of which similarly-themed postings “have occurred” on
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`previous days or weeks. EX1001, 3:3-5; EX2003, ¶¶39-40. The claimed
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`determination can rely on input data related to documenting action that “has
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`occurred” recently on other mobile devices at that location, but the claimed
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`determination of an “action spot” is an output which not the same as its input data.
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`Id. Again, the system achieves a solution that seeks to efficiently communicate to
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`the user the “current happenings” occurring in the vicinity of the user’s current
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`location. EX1001, 4:44-48; EX2003, ¶40.
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`As previously described, this plain understanding of the recited “action spot”
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`aligns