UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SNAP, INC.,
`Petitioner
`
`v.
`
`BLACKBERRY LIMITED,
`Patent Owner
`
`Case No. IPR2019-00714
`Patent No. 8,825,084
`
`SECOND DECLARATION OF PATRICK McDANIEL, PH.D.
`
`Page 1
`
`BLACKBERRY 2003
`SNAP, INC. V. BLACKBERRY LIMITED
`IPR2019-00714
`
`

`

`TABLE OF CONTENTS
`
`
`
`VI. 
`
`I. 
`INTRODUCTION AND SCOPE OF WORK ................................................ 5 
`QUALIFICATIONS ........................................................................................ 6 
`II. 
`III.  MATERIALS CONSIDERED ...................................................................... 10 
`IV.  PERSON OF ORDINARY SKILL IN THE ART ........................................ 12 
`V. 
`BACKGROUND OF THE ’084 PATENT ................................................... 13 
`A. 
`’084 Patent Overview (Ex. 1001) ........................................................ 13 
`B. The Prosecution History of the ’084 Patent ............................................... 20 
`INTERPRETATION OF THE ’084 PATENT CLAIMS AT ISSUE ........... 24 
`A. 
`“determine” at least one “action spot” ................................................ 26 
`B. “within a predetermined distance from the current location of the first
`mobile device” ..................................................................................... 33 
`VII.  ANALYSIS OF GROUNDS 2 AND 3: ALLEGED OBVIOUSNESS IN
`VIEW OF LEMELLA AND CROWLEY (GROUND 2) / IN VIEW OF
`LEMMELA, CROWLEY, AND WINKLER (GROUND 3)........................ 36 
`A.  Overview Of Prior Art ......................................................................... 36 
`i. 
`Lemmela .................................................................................... 36 
`ii. 
`Crowley ..................................................................................... 40 
`B. Grounds 2-3 Deficiencies .......................................................................... 40 
`i. 
`The Petition Has Not Shown That Lemmela’s System
`Determines At Least One Action Spot For Activity That “Is
`Occurring” Relative To A Current Location Of A First Mobile
`Device (Claims 1 And 9) .......................................................... 41 
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`ii. 
`
`iv. 
`
`v. 
`
`iii. 
`
`Lemmela 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 ............................ 48 
`Lemmela Does Not “Transmit … An Indication Of An Activity
`Level At The At Least One Action Spot” (Claim 1) or “Display
`A Level Of Activity Associated With The At Least One Action
`Spot” (Claim 9) ......................................................................... 65 
`Lemmela’s System Does Not Provide “An Indication Of An
`Activity Level At the At Least One Action Spot” That
`Comprises “One Or More Graphical Items Identifying A
`Relative Level Of Documenting Action Occurring At The At
`Least One Action Spot,” As Recited In Claim 6 ...................... 70 
`The Combination Of Winkler With Lemmela And Crowley
`Would Not Have Provided 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
` ................................................................................................... 72 
`VIII.  ANALYSIS OF GROUND 1: ALLEGED OBVIOUSNESS IN VIEW OF
`WINKLER AND ALTMAN ......................................................................... 75 
`A.  Overview Of Prior Art ......................................................................... 76 
`i.  Winkler ...................................................................................... 76 
`ii. 
`Altman ....................................................................................... 79 
`B. Ground 1 Deficiencies ............................................................................... 80 
`i. 
`The Petition Presents Inconsistent Mappings For “The At Least
`One Action Spot” Of Independent Claims 1 And 9 ................. 80 
`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 ........................................................................................ 85 
`
`ii. 
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`iv. 
`
`iii. 
`
`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” ............. 87 
`The Petition Conflates The Distance From A Tagged Location /
`Map Element With A Distance From Current Location Of A
`First Mobile Device .................................................................. 91 
`v.  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 .................................................................... 94 
`IX.  LEGAL STANDARDS ................................................................................. 97 
`A.  Obviousness ......................................................................................... 97 
`XI.  ADDITIONAL REMARKS ........................................................................102 
`
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`Page 4
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`I, Patrick D. McDaniel, of State College, Pennsylvania, declare that:
`
`I.
`
`INTRODUCTION AND SCOPE OF WORK
`1.
`I have been retained by Fish & Richardson P.C. as an expert witness
`
`on behalf of BlackBerry Limited (“Blackberry” or “Patent Owner”). I understand
`
`that Snap, Inc. (“Snap” or “Petitioner”) filed a Petition for inter partes review
`
`(“IPR”) of claims 1-2, 5-6, 9-10, 12-13, and 15 of U.S. Patent No. 8,825,084 (“the
`
`’084 patent”), and the case was assigned case no. IPR2019-00714 (“the ’084 IPR
`
`proceeding”).
`
`2.
`
`I previously submitted a declaration (“my First Declaration”) in the
`
`’084 IPR proceeding on June 11, 2019. Since that time, I understand that the
`
`Patent Trial and Appeal Board (“PTAB” or “Board”) instituted trial in the ’084
`
`IPR proceeding. See Institution Decision (IPR2019-00714). Based on further
`
`review of the Snap’s IPR Petition of the ’084 patent, the Board’s decision
`
`instituting trial in the ’084 IPR proceeding (“Institution Decision”), and the
`
`additional materials identified below in Section III, I submit the additional
`
`testimony set forth herein (“my Second Declaration”) to supplement my analyses
`
`and conclusions from my First Declaration.
`
`3.
`
`As previously stated in my First Declaration, I have been asked to
`
`provide my independent analysis of the ’084 patent in light of the materials cited
`
`below and my knowledge and experience in this field during the relevant period. I
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`have been asked to consider what a person of ordinary skill in the art at the time of
`
`the invention of the ’084 patent (a “POSITA”; refer to ¶¶17-18) would have
`
`understood from the teachings of the ’084 patent, including scientific and technical
`
`knowledge related to the ’084 patent. I have also been asked to consider whether
`
`the references cited in the Petition anticipate or render obvious the inventions
`
`described by claims 1, 6, and 9 of the ’084 patent. I reserve the opportunity to
`
`address other issues and provide further analysis at a later date should it become
`
`necessary.
`
`4.
`
`I am being compensated according to my normal hourly rate for my
`
`time providing my independent analysis in this aforementioned IPR proceeding,
`
`but my compensation is not contingent in any way on the content of my analysis or
`
`the outcome of this proceeding. I am not, and never was, an employee or agent of
`
`BlackBerry Limited, the owner of the ’084 patent.
`
`II. QUALIFICATIONS
`5. My findings, as explained below, are based on my study, experience,
`
`and background discussed below, informed by my extensive experience in the
`
`fields of mobile systems, computer software, networking, and user experience
`
`design at the pertinent timeframe, and my education as a computer scientist and
`
`subsequent decades of work in research and development in these field. As
`
`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,
`
`networking, and user experience design during the late 2000s and early 2010s, and
`
`indeed, I have personal knowledge and experience in working directly with many
`
`such persons in these fields during that time frame. I have also relied on my
`
`review and analysis of the prior art cited in the Petition, information provided to
`
`me in connection with this case, and information I have independently reviewed.
`
`6.
`
`I earned a Ph.D. in Computer Science and Engineering from
`
`University of Michigan, Ann Arbor in 2001. I earned a Bachelor of Science degree
`
`in Computer Science from Ohio University in 1989 and a Master of Science
`
`degree, also in Computer Science, from Ball State University in 1991.
`
`7.
`
`Since 2017, I have been the William L. Weiss Professor of
`
`Information and Communications Technology in the School of Electrical
`
`Engineering and Computer Science at the Pennsylvania State University in
`
`University Park, Pennsylvania. I am also the director of the Institute for Network
`
`and Security Research, director of the National Science Foundation Funded Center
`
`for Trustworthy Machine Learning, and founder and co-director of the Systems
`
`and Internet Infrastructure Security Laboratory, a research laboratory focused on
`
`the study of security in diverse network and computer environments. My research
`
`efforts primarily involve computer systems, mobile device systems and security,
`
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`network, management, and authentication, systems security, and technical public
`
`policy.
`
`8.
`
`Before my current position, I was an Assistant Professor (2004-2007),
`
`Associate Professor (2007-2011), Full Professor (2011-2015), and Distinguished
`
`Professor (2015-2017) of Computer Science and Engineering at the Pennsylvania
`
`State University. Since 2004, I have taught several courses in the field of computer
`
`systems, systems programming, networks, and network and computer security at
`
`both the undergraduate and graduate level. I created and continue to maintain
`
`several of these courses for Penn State.
`
`9.
`
`From 2003-2009, I was also an Adjunct Professor at the Stern School
`
`of Business at New York University in New York, NY. At the Stern School of
`
`Business, I taught courses in computer and network security and online privacy.
`
`10.
`
`I am a Fellow of the Association for Computing Machinery (the
`
`leading professional association for computer science) for “contributions to
`
`computer and mobile systems security” and the Institute for Electrical and
`
`Electronics Engineering (the leading professional association for computer
`
`engineering) for “contributions to the security of mobile communications”.
`
`11.
`
`I was the Program Manager (PM) and lead scientist for the Cyber
`
`Security Collaborative Research Alliance (CRA) from 2012 to 2018. The CRA is
`
`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
`
`University of California-Davis, and the University of California-Riverside. This
`
`national scale initiative is a research project aimed at developing a new science of
`
`cyber-security for military networks, computers, and installations.
`
`12.
`
`I have served as an advisor to several Ph.D. and master’s degree
`
`candidates, several of whom have gone on to become professors at various
`
`institutions such as Purdue University, North Carolina State University, the
`
`University of Oregon, and the Georgia Institute of Technology. I am currently an
`
`advisor to two Ph.D. candidates and a number of master’s students.
`
`13. Before joining Pennsylvania State University as a professor, I was a
`
`software developer and project manager for companies in the networking industry
`
`including Applied Innovation, Inc. and Primary Access Corporation. I was also a
`
`senior researcher at AT&T Research-Labs. As part of my duties in these industrial
`
`positions, I designed and implemented online services and features in various
`
`contexts.
`
`14.
`
`I have published extensively in the fields of network and security
`
`management, mobile networking and device operating systems, computer systems,
`
`authentication, systems security, applied cryptography and network security. In
`
`addition to writing several articles for industry journals and conferences, I have
`
`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
`
`peer-reviewed journals including ACM Transactions on Internet Technology, for
`
`which I was the Editor-in-Chief. I was also an Associate Editor for ACM
`
`Transactions on Information and System Security and IEEE Transactions of
`
`Software Engineering, two highly-regarded journals in the field. A complete list of
`
`my publications in the last 10 years, as well as a list of editorial positions can be
`
`found in my curriculum vitae, which I have attached to this declaration as
`
`Appendix A.
`
`15.
`
`In view of the foregoing, I believe I possess the expertise to testify
`
`from the perspective of a POSITA with respect to the technology at issue in this
`
`case.
`
`III. MATERIALS CONSIDERED
`16.
`In preparing this declaration, I have considered the claims,
`
`specification, and prosecution history of the ’084 patent. I have also read and
`
`considered the Petition for inter partes review in Case No. IPR2019-00714. As
`
`part of my analysis for this Declaration, I have considered my own knowledge and
`
`experience, including my work and experience in the fields of computer software,
`
`networking, and user experience design, and my experience in working with others
`
`in these fields. Some additional materials that I have reviewed in preparing this
`
`declaration include the following documents:
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` Ex. 1001: U.S. Patent No. 8,825,084 (“the ‘084 Patent”)
`
` Ex. 1002: Declaration of Dr. Samrat Bhattacharjee
`
` Ex. 1004: U.S. Patent No. 8,750,906 (“Winkler”)
`
` Ex. 1005: U.S. Patent Application Publication No 2008/0250337
`
`(“Lemmela”)
`
` Ex. 1006: U.S. Patent Application Publication No. 2007/0281716
`
`(“Altman”)
`
` Ex. 1007: File History of U.S. Patent No. 8,825,084
`
` Ex. 1008: U.S. Patent No. 7,593,740 (“Crowley”)
`
` Ex. 1009: Complaint for Patent Infringement, Case No. 2:18-cv-
`
`02693 (C.D. Cal.)
`
` Ex. 2002: 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”)
`
` Decision: Granting Institution of Inter Partes Review, Paper No. 9,
`
`IPR2019-00714 (PTAB, Sept. 4, 2019) (“Institution Decision”)
`
` Ex. 2004: Transcript of Deposition of Dr. Samrat Bhattacharjee
`
`(November 18, 2019)
`
` Ex. 2008: Garmin: Updating Maps on Your Garmin Device (May
`
`2010), available at
`
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`https://www8.garmin.com/documents/instructions/Garmin_Map_Upd
`
`ate_Guide.pdf (retrieved November 24, 2019)
`
` Ex. 2009: 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)
`
`IV. PERSON OF ORDINARY SKILL IN THE ART
`17.
`I understand that the teaching of the prior art is viewed through the
`
`eyes of a POSITA. My analysis is thus based on the perspective of a POSITA
`
`having this level of knowledge and skill at the relevant time of the invention. For
`
`purposes of my analysis, I have been informed that the priority date of the ’084
`
`patent is no later than the August 27, 2010 timeframe, and I have applied this
`
`timeframe as being the relevant time for the perspective of a POSITA. For
`
`purposes of assessing the level of ordinary skill in the art, I have considered the
`
`types of problems encountered in the art, the prior solutions to those problems
`
`found in prior art references, the speed with which innovations were made at that
`
`time, the sophistication of the technology, and the level of education of active
`
`workers in the field. As previously described, I have reviewed and understand the
`
`’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
`
`2010s.
`
`18. Based upon my knowledge and experience in this area, I believe a
`
`POSITA at the time of the invention would have had a bachelor of science degree
`
`in computer engineering/computer science or similar subject matter, or at least
`
`approximately two years of work or research experience in the fields of computer
`
`software, networking, and/or user experience design, or an equivalent subject
`
`matter. My opinion as to the level of ordinary skill in the art would remain the
`
`same regardless of whether the time of the invention is found to be August 2010,
`
`or some later time up until and including the October 9, 2012 filing date of the
`
`’084 patent.
`
`V. BACKGROUND OF THE ’084 PATENT
`A.
`’084 Patent Overview (Ex. 1001)
`19. The ’084 patent is titled “System and Method For Determining Action
`
`Spot Locations Relative To The Location Of A Mobile Device.” EX1001, Cover
`
`Page. The ’084 patent explains that, prior to the inventors’ solution, users of
`
`electronic devices (e.g., mobile phones) typically identified current events and
`
`happenings located nearby through “manual research[].” EX1001, 3:9-27. For
`
`example, users could search for events in one application, and then cross-reference
`
`the locations of those events using a map, such as a map application on a mobile
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`phone. However, this process was “tedious” and could “result[] in “user
`
`frustration.” Id. Moreover, the mapping applications typically contained limited
`
`information/functionality:
`
`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.
`
`EX1001, 3:9-27.
`
`20. The ’084 patent presented a new solution that involved determination
`
`of “action spots” within the vicinity of the current location of a mobile device. The
`
`specification of the ’084 patent defines the term “action spot” at col. 3:3-5 as “a
`
`location or an event where at least one activity is occurring relative to the current
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`location of another mobile device.” EX1001, 3:3-5 (emphasis added); infra
`
`Section VI.A. This definition reflects the inventors’ purported goal of providing
`
`users with an indication of current happenings, such as nearby events that the user
`
`might wish to visit, attend, or monitor. EX1001, 2:61-3:42, 4:44-48 (“a user can
`
`review information related to current happenings within the vicinity of the user’s
`
`mobile device”); 8:18-48. Moreover, by presenting indications of the determined
`
`“action spots” over a map, the user could easily view the locations of the “action
`
`spots” relative to the user’s current location or other features/landmarks shown in
`
`the map. Id., 4:32-53, FIG. 3.
`
`21. To determine locations or events where activity is occurring relative
`
`to the current location of a mobile device (i.e., to determine “action spots”), the
`
`’084 patent proposed to analyze data indicative of recent activity by mobile
`
`devices at various locations. For example, the ’084 patent describes various
`
`actions of other mobile devices that can be used to gather input, especially those
`
`actions where the other mobile devices are being used to identify whether activity
`
`is occurring at a particular location or event:
`
`For example, an activity can include but is not limited
`to a documenting action (such as a text messaging,
`emailing, blogging, posting a message on a social
`networking internet site, or any other documenting
`actions), a recording action (such as video recording,
`audio recording, or photographing taken by a mobile
`device) or any other action where the mobile device is
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`being used to observe and make note of a location or
`an event currently occurring at the location of the
`mobile device.
`
`EX1001, 2:61-3:3 (emphasis added); see also EX1001, 4:12-18 (“similar
`
`documenting action”).
`
`22. Figure 3, copied below, is an example of a user interface for a map
`
`application disclosed in the ’084 patent that presents representations of determined
`
`“action spots” within a predetermined distance from a current location of a mobile
`
`device. Id., 1:53-55. In this figure, the current location of the mobile device is
`
`depicted by item 302 and a pair of action spots are depicted by items 304 and 306.
`
`Id., 6:18-25. In addition to providing the locations of the determined actions spots,
`
`the map also depicts indications of the levels of activity detected at each action
`
`spot based on the size of the corresponding items 304 and 306. For example, the
`
`larger cloud icon for a first action spot represented by item 304 signifies a higher
`
`level of activity at this first action action spot than at a second action spot
`
`represented by the smaller cloud icon 306. Id., 6:32-59. This can reflect, for
`
`instance, a greater number of postings made to social media sites by mobile
`
`devices at the location for the first action spot than the location for the second. Id.
`
`Activity levels may also be depicted by varying colors of the graphical items
`
`representative of the actions spots, such as by coloring an item yellow to indicate a
`
`moderate level of activity or green to indicate a higher level of activity. Id.
`
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`
`
`EX1001, FIG. 3.
`
`23.
`
`It is important to note that, according to the ’084 patent, not all
`
`elements presented on a map constitute “action spots” where activity is occurring
`
`relative to the current location of a mobile device. Some map elements simply
`
`indicate points of interest such as “venues, locations, monuments, buildings,
`
`streets, lakes, and other location landmarks.” Id., 5:63-67. For example, in Figure
`
`3, items designated ‘308’ are mere “graphical representations” of points of
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`interests or landmarks. Id., FIG. 3. However, if the system has not made a
`
`determination that activity is occurring at a particular location in the vicinity of a
`
`mobile device, then the system does not identify that location as an “action spot”—
`
`even if the system might have historically detected high levels of activity at that
`
`location. To illustrate, consider the following side-by-side of Figures 3 and 4 of
`
`the ’084 patent:
`
`EX1001, FIGS. 3-4; see also id., 9:31-37.
`
`24. As portrayed in Figure 3, no “action spot” is represented at the
`
`location of the “museum.” This indicates that, at the relevant point in time of
`
`Figure 3, no determination has been made that activity is occurring relative to the
`
`
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`mobile device’s current location. In contrast, Figure 4 shows another example
`
`where, at the relevant point in time of Figure 4, a determination has been made that
`
`activity is occurring at the “museum,” and a graphical item 408 is shown over the
`
`“museum” to mark it as an “action spot.” See EX1001, 9:31-37, FIGS. 3-4.
`
`25. The ’084 patent also describes techniques for aiding users in locating
`
`or navigating to “action spots.” EX1001, 12:11-34, 13:33-50, FIGS. 7-8. For
`
`example, Figure 7 shows 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.” Id., 2:1-4, 12:11-13:50. Moreover, Figure 8 shows a
`
`“screenshot of [a] display 102 of a mobile device 100 in which a graphical user
`
`interface for an image acquisition application 800 such as a camera application is
`
`displayed.” Id., 13:53-57. A “viewfinder 802 displays an image from a camera
`
`module,” while visual markers for “action spots 804, 806, 808 [are] superimposed
`
`on the view finder 802 signifying the locations of action spots 804, 806, 808
`
`located within the vicinity shown in the viewfinder 802.” Id., 13:60-14:10.
`
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`
`
`
`
`EX1001, FIGS. 7-8.
`
`B.
`26.
`
`The Prosecution History of the ’084 Patent
`I understand the ’084 patent was filed on October 9, 2012, and claims
`
`priority to U.S. Application Serial No. 12/870,676 (now issued as U.S. Patent No.
`
`8,326,327), filed on August 27, 2010. The original independent claim 1 recited the
`
`following language:
`
`EX1007, 30.
`
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`27. The examiner mailed a first office action on February 28, 2013, and
`
`alleged that the original claims were anticipated by U.S. Patent No, 8,228,234
`
`(“Paulson”). Id., 93-99. In a response to the first office action dated May 28,
`
`2013, the applicant did not substantively amend the claims but explained that
`
`Paulson failed to teach multiple aspects of the recited “at least one action spot.”
`
`Id., 117-124.
`
`28. The examiner mailed a second office action on July 25, 2013. Id.,
`
`128-135. In this office action, the examiner alleged that the claims were
`
`anticipated by U.S. Patent Application Publication No. 2010/0248746
`
`(“Saavedra”). In a response to the second office action dated October 25, 2013, the
`
`applicant again did not substantively original claim 1, but added the following
`
`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
`
`display of an “activity level” as recited in the independent claims: “At most, the
`
`asserted paragraphs of Saavedra show points of interest but do not provide an
`
`indication of an activity level.” Id., 158.
`
`29. 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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`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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`30. 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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`Id., 233.
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`Page 23
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`Id., 234. In remarks accompanying the claim amendments, the applicant explained
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`that 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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`31. 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
`32.
`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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`33.
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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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`34.
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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. “determine” at least one “action spot”
`35. As I discussed in my First Declaration, the ’084 patent explicitly
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`defines the term “action spot” as “a location or an event where at least one activity
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`is occurring relative to the current location of another mobile device.” EX1001,
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`3:3-5; supra, Section V.A. I understand that the parties in the related litigation
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`agreed to this exact definition for purposes of that proceeding, and the court also
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`adopted this construction under the Phillips standard. EX2002, 9. Based on my
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`review of the claims in the context of the specification and the file history, I agree
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`with this definition of the term “action spot” and I have applied this definition in
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`my analysis as set forth throughout this declaration.
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`36. The Petition did not specifically provide any formal construction for
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`the term “action spot,” but critically, the Petition does not expressly compare the
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`cited prior art references to the formal construction of the claimed “action spot” as
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`it was defined in the specification and adopted by Petitioner (and the court) in the
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`related litigation. See Pet., 14-16.
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`37.
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`I further understand that the Institution Decision considered the term
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`“action spot,” and while it did not “expressly construe” this term, the Board made a
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`preliminary determination that “an ‘action spot’ refers to a location or event where
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`an activity ‘is occurring’ or ‘has occurred.’” Inst. Dec., 14. I have reviewed the
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`Board’s rationale in reaching th