`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`SNAP INC.,
`Petitioner
`
`v.
`
`BLACKBERRY LIMITED
`Patent Owner
`
`____________________
`
`Case No. IPR2019-00715
`Patent No. 8,326,327
`____________________
`
`REBUTTAL DECLARATION OF DR. SAMRAT BHATTACHARJEE
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`Snap Inc. Ex. 1020 Page 0001
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`SNAP INC. v. BLACKBERRY LIMITED
`IPR2019-00715
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`

`

`Declaration of Dr. Samrat Bhattacharjee
`U.S. Patent No. 8,326,327
`
`
`C.
`
`
`TABLE OF CONTENTS
`TABLE OF CONTENTS ........................................................................................... i
`I.
`INTRODUCTION .......................................................................................... 1
`II. MATERIALS REVIEWED ........................................................................... 2
`III. LEVEL OF ORDINARY SKILL IN THE ART ............................................ 6
`IV. CLAIM CONSTRUCTION ........................................................................... 7
`A.
`“action spot” ......................................................................................... 8
`B.
`“determine at least one action spot within a predetermined
`distance from the current location of the mobile device .................... 13
`V. ANALYSIS OF GROUNDS 2-4: OBVIOUSNESS IN VIEW OF
`LEMMELA AND CROWLEY (GROUND 2) / IN VIEW OF
`LEMMELA, CROWLEY, AND WINKLER (GROUND 3) / IN VIEW
`OF LEMMELA, CROWLEY, AND WALDMAN (GROUND 4) .................. 15
`A.
`The Lemmela-Crowley combination discloses the “determin[e] /
`[ing] at least one action spot” recited in claims 1, 10, and 13 ........... 16
`The Lemmela-Crowley combination discloses the “activity
`level” recited in claims 1 and 13 ........................................................ 26
`The Lemmela-Crowley combination discloses the activity level
`based upon a number of actions “within a predetermined
`distance from the at least one action spot” as recited in claims 3
`and 15 ................................................................................................. 31
`D. A person of ordinary skill in the art would have been motivated
`to combine Lemmela and Crowley ..................................................... 35
`The Lemmela-Crowley-Winkler combination
`teaches “a
`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” as recited in claim 10 .................................. 37
`A person of ordinary skill would have been motivated to
`combine Lemmela, Crowley, and Waldman ....................................... 44
`VI. ANALYSIS OF GROUND 1: OBVIOUSNESS IN VIEW OF
`WINKLER AND ALTMAN ........................................................................... 49
`i
`
`
`B.
`
`E.
`
`F.
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`
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`Snap Inc. Ex. 1020 Page 0002
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`

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`
`
`A.
`
`Declaration of Dr. Samrat Bhattacharjee
`U.S. Patent No. 8,326,327
`
`
`The Winkler-Altman combination discloses the “determin[e] /
`[ing] at least one action spot” recited in claims 1, 10, and 13 ........... 49
`1.
`Patent Owner improperly refers to different features in
`Winkler as distinct embodiments and ignores Winkler
`express
`statement
`that
`these
`features may be
`implemented in tandem ............................................................ 49
`The Winkler-Altman combination discloses a map
`element corresponding to a “a location where at least one
`mobile device has engaged in documenting action” ................ 56
`The Petition does not fail by neglecting to show that the
`combination discloses
`setting
`a
`Winkler-Altman
`“predetermined distance” before determining “the at least
`one action spot” ........................................................................ 57
`The Petition describes how to combine Winkler and Altman and
`why a POSITA would have been motivated to do so ........................ 70
`The Winkler-Altman combination teaches “a 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” as recited in claim 10 ................................................................ 73
`VII. PROPOSED SUBSTITUTE CLAIM 21 ...................................................... 74
`A.
`SUBSTITUTE CLAIM 21 IS NOT SUPPORTED BY THE
`ORIGINALLY FILED DISCLOSURE OF THE ’327 PATENT ..... 75
`A PERSON OF ORDINARY SKILL IN THE ART WOULD
`NOT HAVE KNOWN HOW TO USE THE MOBILE
`DEVICE RECITED BY SUBSTITUTE CLAIM 21 IN A
`SUBSTANTIAL DEPLOYMENT OVER
`EXISTING
`MOBILE NETWORKS AT THE RELEVANT TIMEFRAME ....... 80
`SUBSTITUTE CLAIM 21 DOES NOT PRESENT A
`SPECIFIC
`TECHNOLOGICAL
`SOLUTION
`TO A
`TECHNOLOGICAL PROBLEM, AND RECITES ONLY
`KNOWN AND GENERIC COMPONENTS AND METHODS ...... 84
`THE PRIOR ART TEACHES OR SUGGESTS ALL OF THE
`FEATURES OF SUBSTITUTE CLAIM 21 ..................................... 97
`
`2.
`
`3.
`
`B.
`
`C.
`
`B.
`
`C.
`
`D.
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`
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`
`
`ii
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`Snap Inc. Ex. 1020 Page 0003
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`

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`Declaration of Dr. Samrat Bhattacharjee
`U.S. Patent No. 8,326,327
`
`
`1.
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`Overview of the prior art .......................................................... 98
`The prior art teaches of suggests a “touch sensitive
`display” .................................................................................. 108
`The prior art
`teaches or suggests displaying an
`“interactive map” that “includes geographic locations and
`is manipulatable by user input on the touch sensitive
`display” .................................................................................. 114
`The prior art
`teaches or suggests displaying
`the
`interactive map “after an application configured to
`determine action spots has been selected” ............................. 125
`The prior art teaches or suggests the current location of
`the mobile device signified as an icon on the map ................ 129
`The prior art
`teaches or suggests action spots
`corresponding to posted video ............................................... 135
`The prior art teaches or suggests the “activity level”
`indicated at the action spot “including video recording
`activity” .................................................................................. 146
`The prior art teaches or suggests action spots signified as
`“selectable graphical item[s]” ................................................ 148
`The prior art teaches or suggests providing a pop-up
`display of “said posted video.” .............................................. 152
`REASONS TO COMBINE EACH OF EYAL OR JAFFE
`WITH THE WINKLER-ALTMAN OR LEMMELA-CROWLEY
`SYSTEMS ........................................................................................ 156
`1. Motivation to combine the Lemmela-Crowley system
`with Jaffe ................................................................................ 157
`2. Motivation to combine the Lemmela-Crowley system
`with Eyal ................................................................................ 162
`3. Motivation to combine the Winkler-Altman system with
`Jaffe ........................................................................................ 168
`4. Motivation to combine the Winkler-Altman system with
`Eyal ........................................................................................ 173
`
`iii
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`
`
`E.
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`Snap Inc. Ex. 1020 Page 0004
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`

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`Declaration of Dr. Samrat Bhattacharjee
`U.S. Patent No. 8,326,327
`
`
`CONCLUSION ........................................................................................... 179
`
`iv
`
`
`
`
`I.
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`
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`Snap Inc. Ex. 1020 Page 0005
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`Declaration of Dr. Samrat Bhattacharjee
`U.S. Patent No. 8,326,327
`
`
`
`I, Dr. Samrat Bhattacharjee, declare as follows:
`
`I.
`
`INTRODUCTION
`As I testified in my declaration signed February 22, 2019, which I
`1.
`
`understand has been labeled as Exhibit 1002 in this proceeding, I have been
`
`retained by Snap Inc. (“Petitioner”) as an independent expert consultant in this
`
`proceeding before the United States Patent and Trademark Office (“PTO”). I
`
`previously provided testimony in this proceeding in my February 22, 2019
`
`declaration. (See Ex. 1002). As with my previous work relating to this
`
`proceeding, no part of my compensation is contingent on the nature of my findings,
`
`the presentation of my findings in testimony, or the outcome of this or any other
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`proceeding. I have no other interest in this proceeding. Relevant aspects of my
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`qualifications were provided in my February 22, 2019 declaration. (See id. at ¶¶ 3-
`
`16; see also Ex. 1003 (curriculum vitae)).
`
`2.
`
`On November 18, 2019, counsel for BlackBerry Limited (“Patent
`
`Owner”) took my deposition based on my previous declaration.
`
`3.
`
`I was told by Petitioner that, after I submitted my previous
`
`declaration, on November 27, 2019, Patent Owner filed a Motion to Amend in
`
`which it proposed a substitute claim for challenged claim 2 (“substitute claim 21”),
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`as well as a Response to the ’327 petition.
`
`
`
`
`
`1
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`
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`Snap Inc. Ex. 1020 Page 0006
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`Declaration of Dr. Samrat Bhattacharjee
`U.S. Patent No. 8,326,327
`
`
`I have been asked to consider whether substitute claim 21 included
`
`4.
`
`with Patent Owner’s Motion to Amend is supported by the originally filed
`
`specification of the ’327 patent and whether certain references disclosure or
`
`suggest the features recited in the substitute claim. I have also been asked to
`
`provide my opinions on the patentability of the originally challenged claims 1-3, 8-
`
`11, 13-15, and 20 of the ’327 patent, in light of Patent Owner’s Response. My
`
`opinions are set forth below.
`
`II. MATERIALS REVIEWED
`The opinions in this Declaration are based on the documents I
`5.
`
`reviewed, my knowledge and experience, and my professional judgment.
`
`6.
`
`In forming my opinions expressed in this Declaration, I reviewed the
`
`following materials:
`
`• the ’327 patent (Ex. 1001);
`
`• Declaration of Dr. Samrat Bhattacharjee (Ex. 1002)
`
`• U.S. Patent No. 8,750,906 to Winkler et al. (“Winkler”) (Ex.
`
`1004);
`
`• U.S. Patent Application Publication 2008/0250337 A1 to Lemmela
`
`et al. (“Lemmela”) (Ex. 1005);
`
`
`
`
`
`2
`
`
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`Snap Inc. Ex. 1020 Page 0007
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`

`

`Declaration of Dr. Samrat Bhattacharjee
`U.S. Patent No. 8,326,327
`
`
`• U.S. Patent Application Publication 2007/0281716 A1 to Altman
`
`et al. (“Altman”) (Ex. 1006);
`
`• the file history for the ’327 patent (Ex. 1007);
`
`• U.S. Patent No. 7,593,740 to Crowley et al. (“Crowley”) (Ex.
`
`1008);
`
`• U.S. Patent Application Publication 2011/0199479 (“Waldman”)
`
`(Ex. 1011);
`
`• U.S. Patent No. 9,507,778 to Jaffe et al. (“Jaffe”) (Ex. 1013);
`
`• U.S. Patent No. 10,454,995 to Eyal et al. (“Eyal”) (Ex. 1014);
`
`• Nokia 770 Internet Tablet with Linux.
`
` May 25, 2005.
`
`https://www.gsmarena.com/nokia_770_internet_tablet_with_linux-
`
`news-124.php (Ex. 1015);
`
`• 2005 Nokia N770 Internet Overview and Unboxing (PalmOS Linux
`
`Device).
`
`
`
`August
`
`31,
`
`2016.
`
`https://www.youtube.com/watch?v=HIB9p7-MsdQ (Ex. 1016);
`
`• Star Trek meets Linux on Nokia 770 LCARS PADD. October 22,
`
`2006. https://www.youtube.com/watch?v=YwXBPjLdJnU
`
`(Ex.
`
`1017);
`
`
`
`
`
`3
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`
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`Snap Inc. Ex. 1020 Page 0008
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`

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`Declaration of Dr. Samrat Bhattacharjee
`U.S. Patent No. 8,326,327
`
`
`• Getting your location with Maps: iPhone and iPod Touch
`
`Essential Training
`
`from
`
`lynda.com.
`
`
`
`June 24, 2010.
`
`https://www.youtube.com/watch?time_continue=31&v=RVjYSAa
`
`kpmY&feature=emb_title. (Ex. 1021)
`
`• Transcript of Deposition of Patrick McDaniel, Blackberry Limited
`
`v. Snap Inc., Case Nos. CV 18-2693-GW (C.D. Cal. February 5,
`
`2019) (Ex. 1022)
`
`• Declaration of Patrick McDaniel Regarding Claim Construction,
`
`Case Nos. CV 18-2693-GW (C.D. Cal. January 17, 2019) (Ex.
`
`1023)
`
`• Transcript of Deposition of Patrick McDaniel, IPR2019-00714 and
`
`IPR2019-00715 (March 6, 2020) (Ex. 1024)
`
`• Federal Communications Commission, Fourteenth Report (May
`
`10, 2010) (Ex. 1025);
`
`• Joint Claim Construction and Prehearing Statement, Blackberry
`
`Limited v. Snap Inc., Case Nos. CV 18-1844-GW & 18-2693-GW
`
`(C.D. Cal. February 14, 2019) (Ex. 1026);
`
`• Declaration of Patrick McDaniel (Ex. 2001);
`
`
`
`
`
`4
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`
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`Snap Inc. Ex. 1020 Page 0009
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`

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`Declaration of Dr. Samrat Bhattacharjee
`U.S. Patent No. 8,326,327
`
`
`• 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) (Ex. 2002);
`
`• Second Declaration of Patrick McDaniel (Ex. 2003);
`
`• Transcript of Deposition of Dr. Samrat Bhattacharjee (Ex. 2004);
`
`• Final Ruling On Defendant Snap Inc.’s Motion For Summary
`
`Judgment Of Invalidity Under Section 101 (Ex. 2005);
`
`• US Appl. No. 12/870,676 (as filed) (Ex. 2007)
`
`• Petition for Inter Partes Review of U.S. Patent No. 8,326,327
`
`(Paper 1);
`
`• Patent Owner’s Preliminary Response (Paper 8);
`
`• Decision Instituting Inter Partes Review of U.S. Patent No.
`
`8,326,327 (Paper 9);
`
`• Patent Owner’s Non-Contingent Motion to Amend (Paper 13);
`
`• Patent Owner’s Response (Paper 14)
`
`7.
`
`All of the opinions contained in this Declaration are based on the
`
`materials I reviewed and my knowledge and professional judgment. In forming
`
`these opinions, I have also drawn on my knowledge and experience in the field of
`
`computer networking, and rely on my opinions and discussions set forth in my
`
`
`
`
`
`5
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`
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`Snap Inc. Ex. 1020 Page 0010
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`

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`Declaration of Dr. Samrat Bhattacharjee
`U.S. Patent No. 8,326,327
`
`
`February 22, 2019 declaration. My opinions have also been guided by my
`
`appreciation of how a person or ordinary skill in the art would have understood the
`
`claims (both the original claims and the substitute claim 21) and the specification
`
`of the ’327 patent at the time of the alleged invention, which I assume is August
`
`27, 2010. My opinions reflect how one of ordinary skill in the art would have
`
`understood the ’327 patent, the prior art to the patent, and the state of the art at the
`
`time of the alleged invention.
`
`8.
`
`As discussed in detail below, based on my experience and expertise, it
`
`is my opinion that substitute claim 21 is not supported by the originally-filed
`
`specification of the ’327 patent and that certain references disclose or suggest all
`
`the features recited in both the originally challenged claims and substitute claim 21
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`As I previously indicated in my February 22, 2019 declaration, based
`9.
`
`on the types of problems encountered in the art, prior solutions to those problems,
`
`the rapidity with which innovations are made, the sophistication of the technology,
`
`and the educational level of active workers in the field, I believe at the time of the
`
`alleged invention in August 2010, a person of ordinary skill in the art would have
`
`had at least a B.S. degree in computer science, electrical engineering, or equivalent
`
`thereof, and at least two years of experience in the relevant field, e.g., computer
`
`
`
`
`
`6
`
`
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`Snap Inc. Ex. 1020 Page 0011
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`

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`Declaration of Dr. Samrat Bhattacharjee
`U.S. Patent No. 8,326,327
`
`
`networking. More education can substitute for practical experience and vice versa.
`
`In its Institution Decision, the Board preliminarily adopted my characterization of
`
`the level of ordinary skill in the art. (Paper 9 at 7). I apply this understanding of
`
`the level or ordinary skill in the art to my analysis herein.
`
`10. My analysis of the ’327 patent and my opinions in this declaration are
`
`from the perspective of one of ordinary skill in the art, as I have defined it above,
`
`during the relevant time frame stated above. During this time frame, I possessed at
`
`least the qualifications of a person of ordinary skill in the art, as defined above
`
`IV. CLAIM CONSTRUCTION
`I understand that a claim subject to inter partes review is construed in
`11.
`
`accordance with the ordinary and customary meaning, as understood by one of
`
`ordinary skill in the art at the time of the invention. I have followed this principle
`
`in forming my opinions in this declaration.
`
`12.
`
`I understand that the district court in a related proceeding involving
`
`the ’327 patent issued a Corrected Final Ruling on Claim Construction (“Markman
`
`Order”) on April 5, 2019. (Ex. 2002). I have reviewed the sections of the
`
`Markman Order that relate to the ’327 patent. I also understand that the district
`
`court issued a Final Ruling On Defendant Snap Inc.’s Motion For Summary
`
`Judgment Of Invalidity Under Section 101 Of U.S. Patent Nos. 8,825,084 And
`
`
`
`
`
`7
`
`
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`Snap Inc. Ex. 1020 Page 0012
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`

`

`Declaration of Dr. Samrat Bhattacharjee
`U.S. Patent No. 8,326,327
`
`
`8,326,327 (“Summary Judgment Order”) (Ex. 2005). I have reviewed the sections
`
`of the Summary Judgment Order that relate to the ’327 patent. I understand that the
`
`Board in this proceeding only needs to construe claims necessary to resolve the
`
`underlying controversy.
`
`“action spot”
`A.
`13. This term appears in all originally-challenged claims and in proposed
`
`substitute claim 21. In forming my opinions set forth in my February 22, 2019
`
`declaration, I did not provide a formal construction for this term because I did not
`
`believe its construction was necessary to resolve the underlying controversy in this
`
`proceeding.
`
`14.
`
`I understand that in the related district court proceeding involving the
`
`’327 patent, as part of the Markman proceedings requiring the parties to narrow the
`
`number of terms presented to the district court for construction, the parties agreed
`
`to constructions for a number of terms, including “action spot.” The agreed to
`
`construction for “action spot,” in isolation, as a “location or event where at least
`
`one activity is occurring relative to the current location of another mobile device.”
`
`(Ex. 2002, pg. 9). I understand that Patent Owner seeks to apply this construction
`
`in this proceeding. I understand that construction of certain claim terms may be
`
`
`
`
`
`8
`
`
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`Snap Inc. Ex. 1020 Page 0013
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`

`

`Declaration of Dr. Samrat Bhattacharjee
`U.S. Patent No. 8,326,327
`
`
`relevant to issues in district court, such as noninfringement or to clarify terms for
`
`non-technical judges or jurors, yet not be relevant to issues in an IPR proceeding.
`
`15.
`
`I agree with the Board’s determination in its Institution Decision that
`
`there is no need to expressly construe the term “action spot” in this proceeding.
`
`(Paper 9 at 8). I am of the opinion that construction of this term is not necessary to
`
`resolve the underlying controversy in this proceeding. I believe the references
`
`utilized in the Petition teach or suggest action spots as locations or events where
`
`activity “is occurring.” Thus, even if the term “action spot” was limited in the
`
`manner proposed by Patent Owner, this would not affect my opinions regarding
`
`invalidity of the challenged claims.
`
`16. However, to the extent the Board decides to explicitly construe this
`
`term, I do not agree with Patent Owner that the claimed “action spot” is limited to
`
`a location or event where activity “is occurring” relative to the current location of
`
`another mobile device. Rather, I agree with the Board’s Institution Decision’s
`
`determination that the claimed “action spot” refers to a location or event in which
`
`the activity “is occurring” or “has occurred.” (Paper 9 at 8-9).
`
`17.
`
`I agree with the Board that this interpretation is consistent with the
`
`specification and the claims of the ’327 patent. (Id.). As noted by the Board,
`
`claim 1 recites that the claimed “determin[ed]” “at least one action spot
`
`
`
`
`
`9
`
`
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`Snap Inc. Ex. 1020 Page 0014
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`

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`Declaration of Dr. Samrat Bhattacharjee
`U.S. Patent No. 8,326,327
`
`
`correspond[s] to a location where at least one other mobile device has engaged in
`
`a documenting action within a predetermined period of time” and “this indicates
`
`that ‘action spot’ should encompass past activity, because ‘has engaged’ is in the
`
`present perfect tense, which refers to an action that either occurred at an indefinite
`
`time in the past or that began in the past and continued to the present time.” (Id.
`
`(emphasis added by Board)). The Board also noted the specification’s teaching
`
`that the claimed “predetermined period of time” can be “manually set” and may
`
`encompass any time, including periods corresponding to past activity such as “the
`
`last hour, the last twelve hours, the last twenty-four 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. (citing Ex. 1001, 8:35–39)). In line with
`
`the Board’s understanding, the District Court stated the “plain meaning” of the
`
`claimed “predetermined period of time” “supports that it could cover durations of
`
`time of undefined length.” Ex. 2005, 40. I understand that Patent Owner’s expert,
`
`Dr. Patrick McDaniel, did not consider the District Court’s summary judgment
`
`order in preparing his opinions or in interpreting the claims. (Ex. 1024, 13:22-
`
`16:2, 145:8-146:21).
`
`18. Further, I believe Patent Owner’s arguments to the contrary are
`
`inconsistent with the plain language of the specification and claims of the ’327
`
`
`
`
`
`10
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`Snap Inc. Ex. 1020 Page 0015
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`Declaration of Dr. Samrat Bhattacharjee
`U.S. Patent No. 8,326,327
`
`
`patent. Patent Owner challenges the Institution Decision’s reliance on the
`
`specification and claim language because “these texts merely refer to a parameter
`
`for the input data that is used by the system for purpose of achieving the output—
`
`outputting a determination of whether an action spot is present.” (Paper 14 at 18).
`
`Patent Owner claims that action spots “can rely on input data related to
`
`documenting action that ‘has occurred’ recently on other mobile devices at that
`
`location, but the claimed determination of an ‘action spot’ is an output which is not
`
`the same as its input data.” (Id. at 19). Patent Owner’s attempt to distinguish
`
`between “recent” documenting activity input data and the output of currently
`
`occurring action spots finds no support in the specification or claims. Patent
`
`Owner cites two passages in the ’327 patent in support of its argument that input
`
`data is used to achieve the output of a determined action spot. (Paper 14 at 18
`
`(citing Ex. 1001, 6:63-66, 8:2-8)). Yet, neither of these sections describe the ’327
`
`patent system processing input data to first determine whether or not this “recent”
`
`input data indicates an event which is currently occurring, and then second, based
`
`on this first determination, outputting or declining to output an action spot. Patent
`
`Owner then compare Figure 3 (depicting no action spot at the museum) to Figure 4
`
`(depicting an action spot at the museum). (Paper 14 at 19-20). Citing to no
`
`support from the ’327 patent itself, Patent Owner claims that Figure 3 depicts no
`
`
`
`
`
`11
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`Snap Inc. Ex. 1020 Page 0016
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`

`Declaration of Dr. Samrat Bhattacharjee
`U.S. Patent No. 8,326,327
`
`
`action spot at the museum “regardless of whether the system might have
`
`historically detected posts from other mobile devices at the museum gallery on
`
`previous days or weeks.” (Id. at 19). Neither the ’327 specification nor its claims
`
`support this conclusion. Rather, the ’327 patent is silent as to why Figure 3’s
`
`museum does not depict an action spot.
`
`19. Patent Owner’s expert, Dr. Patrick McDaniel, attempts to import
`
`limitations into the challenged claims. During his deposition, Dr. McDaniel
`
`expressed an opinion that “the determination of whether something is occurring” is
`
`tied to the “predetermined duration of time” (Ex. 1024, 59:8-61:13), and an activity
`
`“is occurring” only if it occurs within the “predetermined duration of time” (see
`
`id., 104:16-105:1, 124:8-17, 103:3-8, 105:19-106:2, 87:9-15, 102:10-18, 59:8-
`
`61:13, 144:18-145:3). I note that claim 1 of U.S. Patent No. 8,825,084, a
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`continuation of the ’327 patent—unlike claim 1 of the ’327 patent—does not recite
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`the “determin[ing]” of “action spots” corresponds to mobile device activity within
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`a predetermined period of time. Dr. McDaniel expressed and opinion that the
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`predetermined duration or period of time limitation is “in the definition of at least
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`one action spot, or determining at least one action spot,” even if it is not recited by
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`the claim 1 of U.S. Patent No. 8,825,084. See id. at 59:8-61:2.
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`Declaration of Dr. Samrat Bhattacharjee
`U.S. Patent No. 8,326,327
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`20. Patent Owner appears to conflate an “action spot” in the abstract,
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`which may reflect a location where activity “is occurring,” with the claimed
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`“determin[ing] at least one action spot,” which the claims make clear must include
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`a determination of past activity. The specification also describes the determining
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`of action spots as reflecting mobile device activity that has occurred in the past.
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`(Ex. 1001, 3:32-35, 3:66-4:4, 4:19-23, 6:32-36, 6:51-56, 11:44-59, 12:17-24,
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`12:33-38, 14:6-15).
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`B.
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` “determine at least one action spot within a predetermined
`distance from the current location of the mobile device
`21. This term appears in all originally-challenged claims and substitute
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`claim 21. In forming my opinions set forth in my February 22, 2019 declaration, I
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`interpreted this term to mean “determine each action spot within a specific distance
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`from the current location of the first mobile device, the specific distance being set
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`prior to the determining step.” (Ex. 1002, ¶¶ 33-37).
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`22.
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`I understand that, in its Institution Decision, the Board wrote “‘this
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`limitation should be construed according to its plain and ordinary meaning under
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`the Phillips standard,’ and that, at this stage of the proceeding, ‘no formal
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`construction is necessary.’” (Paper 9 at 10). I understand that Patent Owner
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`agrees with the Board’s determination.
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`Declaration of Dr. Samrat Bhattacharjee
`U.S. Patent No. 8,326,327
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`23. Construing this limitation under the Phillips standard does not affect
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`my conclusions set forth in my February 22, 2019 declaration. Patent Owner
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`describes Petitioner’s proposed construction as narrowing this claim limitation.
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`(See Paper 14 at 22). Thus, the prior art’s disclosures of the narrower limitation
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`proposed in my February 22, 2019 declaration necessarily discloses any broader
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`interpretation under the Phillips standard, too. The Petition itself contemplated this
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`dynamic and specifically stated that Patent Owner “may advance different and
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`broader constructions for [this] term []. Under a broader construction, the Board
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`should still institute trial based on the following grounds, as the grounds
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`demonstrate
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`the challenged claims are unpatentable under
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`[Petitioner’s]
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`construction and any broader construction.” (Paper 1 at 19). I also explained my
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`understanding of this dynamic during my November 18, 2019 deposition:
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`Declaration of Dr. Samrat Bhattacharjee
`U.S. Patent No. 8,326,327
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`(Ex. 2004, 40:1-13)
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`(Id., 41:17-22).
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`V. ANALYSIS OF GROUNDS 2-4: OBVIOUSNESS IN VIEW OF
`LEMMELA AND CROWLEY (GROUND 2) / IN VIEW OF LEMMELA,
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`Declaration of Dr. Samrat Bhattacharjee
`U.S. Patent No. 8,326,327
`
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`CROWLEY, AND WINKLER (GROUND 3) / IN VIEW OF LEMMELA,
`CROWLEY, AND WALDMAN (GROUND 4)
`A. The Lemmela-Crowley combination discloses the “determin[e] /
`[ing] at least one action spot” recited in claims 1, 10, and 13
`24. As discussed in section IV.A, I agree with the Board’s analysis in its
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`Institution Decision that the claimed “action spot” is not “limited to a location or
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`an event where an activity is presently occurring.” Paper 9 at 8-9 (emphasis
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`original). I also agree with the Board’s preliminary determination that “Lemmela
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`teaches ‘action spots’ in its ‘grouping virtual posts together based on common
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`characteristics.” (Paper 9 at 18).
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`25. However, even if the Board ultimately decides that the term “action
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`spot” should be construed as limited to a location where activity is presently
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`occurring, as proposed by Patent Owner, the Lemmela-Crowley combination
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`teaches the “determin[e]/[ing] at least one action spot” recited in claims 1, 10, and
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`13.
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`26. As I explained in my February 22, 2019 declaration, Lemmela teaches
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`limiting its system’s processing only to postings within a certain time range. (Ex.
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`1002, ¶ 62[1e] (citing Ex. 1005, ¶¶ 37, 39). Lemmela expressly states users may
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`“filter postings based on criteria such as time” and “freely select the starting and
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`16
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`Declaration of Dr. Samrat Bhattacharjee
`U.S. Patent No. 8,326,327
`
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`ending times defining the interesting time period.” (Id.) Lemmela teaches that
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`postings older than a certain date may be excluded from any processing:
`
`“At any stage of processing, the system may sort or filter the
`collection of location postings. For example, postings older than a
`certain date may be excluded from any processing. Alternatively, the
`user may be provided with options for selecting or adjusting a time
`range for postings. The user can freely select a starting and ending
`time defining a time period. The display may be dynamically changed
`and updated as the user changes parameters.” (Ex. 1005, ¶ 37).
`
`27. Patent Owner argues “[t]his bare disclosure does not show how
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`Lemmela’s system actually outputs a determination of at least one ‘action spot’
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`where activity is occurring relative to a current location of a mobile device”
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`because “Lemmela never contemplates a threshold posting age that would define a
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`meaningful cutoff from which the system could reasonably output a determination
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`that activity is occurring relative to the mobile device[.]” (Paper 14 at 26-27).
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`Patent Owner’s expert Dr. McDaniel further adds: “A system that was configured
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`to determine whether activity was presently occurring at a particular location based
`
`on recent posting information would presumably define a threshold posting age
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`that reasonably differentiated postings that relate to historical activity that is no
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`longer occurring from postings that relate to present/ongoing activity that is
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`occurring.” (Ex. 2003, ¶ 56). Here, Patent Owner and its expert imply that a
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`17
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`Declaration of Dr. Samrat Bhattacharjee
`U.S. Patent No. 8,326,327
`
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`system configured to determine whether activity “is occurring” must define a
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`threshold posting age to differentiate historical versus present activity. Notably,
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`the ’327 patent defines no such threshold posting age, nor does Patent Owner
`
`suggest that it does. Rather, the ’327 patent references different “predetermined
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`periods of time” (which may include any time period) during which device activity
`
`corresponding to an action spot may occur. (Ex. 1001, 3:66-4:4, 8:35-39). And,
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`according to Patent Owner itself, these time periods apparently relate to “input”
`
`activity, as opposed to relating to the “output” determination of a location where
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`activity “is occurring.” (Paper 14 at 18; Ex. 2003, ¶ 40).
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`28. Next, Patent Owner suggests “less than a day old” as this threshold
`
`“timeframe that would be meaningful to discerning the presence of ongoing
`
`activity for typical events that are short-lived.” (Paper 14 at 27). Yet, the ’327
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`patent does not contemplate this or any other timeframe being used to discern the
`
`presence of ongoing events. The ’327 patent does not distinguish between
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`events that “are occurring” versus events that “have occurred.” This limitation is
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`not supported by the specification. Thus, adding such a timeframe requires
`
`importing a new limitation into the ’327 claims. Further, Patent Owner’s proposed
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`set timeframe would not even discern the presence of ongoing events, as it ignores
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`events that occur over a day or more—including holidays, music festivals (musical
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`Declaration of Dr. Samrat Bhattacharjee
`U.S. Patent No. 8,326,327
`
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`events are explicitly described as events that are “occurring” in the ’327 patent, Ex.
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`1001, 9:23-29), and many sports tournaments.
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`29. Moreover, Patent Owner fails to show that Lemmela’s system “would
`
`not permit