Paper No. ____
`Filed: March 10, 2020
`
`Filed on behalf of: Snap Inc.
`
`By: Yar R. Chaikovsky (Snap-Blackberry-PH-IPR@paulhastings.com)
`
`Chad Peterman (Snap-Blackberry-PH-IPR @paulhastings.com)
`
`David Okano (Snap-Blackberry-PH-IPR@paulhastings.com)
`
`Paul Hastings LLP
`
`
`
`
`
`
`
`
`
`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
`U.S. Patent No. 8,326,327
`
`
`
`
`
`
`PETITIONER’S REPLY
`
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`B.
`
`Page
`Introduction ................................................................................................... 1
`I.
`II. The Board properly interpreted “action spot” in context of the
`full claim limitation....................................................................................... 2
`III. Ground 1: Response arguments rely on mischaracterization of
`Winkler and the Petition ............................................................................... 8
`A.
`Patent Owner mischaracterizes Winkler’s disclosure as
`presenting distinct embodiments and ignores Winkler’s teaching
`that features may be used in tandem .................................................... 8
`Patent Owner’s assertion that Petitioner does not explain how a
`single map element may comprise an action spot
`mischaracterizes the Petition and relies on an incomplete
`understanding of Winkler ................................................................... 10
`C. Winkler’s method for dynamically modifying map elements
`teaches map elements that can be a claimed “action spot” ................ 12
`The Petition describes how and why a POSITA would have
`been motivated to combine Winkler and Altman ............................... 21
`IV. Grounds 2-4: The Response relies on mischaracterizations of the
`references, Petition, and ’327 patent ......................................................... 22
`A.
`The Response imports limitations into the claimed “activity
`level” and Lemmela’s disclosure ........................................................ 22
`Patent Owner imports new limitations into the claimed
`“graphical item identifying a direction” and creates distinctions
`unsupported by the ’327 patent or instituted grounds ........................ 25
`C. A POSITA would have been motivated to combine Lemmela
`and Crowley (ground 2), Lemmela, Crowley, and Winkler
`(ground 3), and Lemmela, Crowley, and Waldman (ground 4) ......... 27
`V. Conclusion ................................................................................................... 30
`
`
`D.
`
`B.
`
`i
`
`

`

`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Argentum Pharm. LLC v. Research Corp. Technologies, Inc.,
`IPR2016-00204, 2017 WL 1096590 (PTAB March 22, 2017) .......................... 12
`CSR, PLC v. Skullcandy, Inc.,
`594 F. Appx. 672 (Fed. Cir. 2014) ....................................................................... 9
`Gen. Elec. Co. v. United Techs. Corp.,
`IPR2016-01287, 2017 WL 6731569 (PTAB Dec. 29, 2017) ....................... 12, 24
`In re Magnum Oil Tools,
`829 F.3d 1364 (Fed. Cir. 2016) ......................................................................... 13
`Intellectual Ventures II LLC v. Ericsson Inc.,
`685 F. Appx. 913 (Fed. Cir. 2017) ......................................................... 13, 23, 29
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge, Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .......................................................................... 13
`SAS Inst., Inc. v. ComplementSoft, LLC,
`825 F.3d 1341 (Fed. Cir. 2016) ............................................................................ 5
`
`
`
`ii
`
`

`

`LIST OF EXHIBITS
`
`Description
`
`U.S. Patent No. 8,326,327
`
`Declaration of Dr. Samrat Bhattacharjee
`
`CV of Dr. Samrat Bhattacharjee
`
`U.S. Patent No. 8,750,906 (“Winkler”)
`
`U.S. Patent Application Publication 2008/0250337 (“Lemmela”)
`
`U.S. Patent Application Publication 2007/0281716 (“Altman”)
`
`File History of U.S. Patent No. 8,326,327
`
`U.S. Patent No. 7,593,740 (“Crowley”)
`
`RESERVED
`
`Complaint for Patent Infringement, Case No. 2:18-cv-02693, CD CA
`
`U.S. Patent Application Publication 2011/0199479 (“Waldman”)
`
`Declaration of Chad J. Peterman
`
`No.
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`U.S. Patent No. 9,507,778 (“Jaffe”)
`
`1014
`
`1015
`
`1016
`
`1017
`
`U.S. Patent No. 10,454,995 to Eyal et al. (“Eyal”)
`
`Nokia 770 Internet Tablet with Linux. May 25, 2005.
`https://www.gsmarena.com/nokia_770_internet_tablet_with_linux-
`news-124.php
`
`2005 Nokia N770 Internet Overview and Unboxing (PalmOS Linux
`Device). August 31, 2016. https://www.youtube.com/watch?v=HIB9p7-
`MsdQ
`
`Star Trek meets Linux on Nokia 770 LCARS PADD. October 22, 2006.
`https://www.youtube.com/watch?v=YwXBPjLdJnU
`
`1018
`
`RESERVED
`
`
`
`

`

`Petitioner’s Reply
`
`RESERVED
`
`Rebuttal Declaration of Dr. Samrat Bhattacharjee
`
`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=RVjYSAakpmY
`&feature=emb_title.
`
`Transcript of Deposition of Patrick McDaniel, Blackberry Limited v.
`Snap Inc., Case Nos. CV 18-2693-GW (C.D. Cal. February 5, 2019)
`
`Declaration of Patrick McDaniel Regarding Claim Construction, Case
`Nos. CV 18-2693-GW (C.D. Cal. January 17, 2019)
`
`Transcript of Deposition of Patrick McDaniel, IPR2019-00714 and
`IPR2019-00715 (March 6, 2020)
`
`Federal Communications Commission, Fourteenth Report (May 10,
`2010)
`
`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)
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`
`
`iv
`
`

`

`Petitioner’s Reply
`
`I.
`
`Introduction
`Patent Owner’s Response attempts to import unsupported limitations into
`
`the challenged claims and mischaracterizes the prior art’s teachings, both which
`
`highlight the weakness of Patent Owner’s substantive positions.
`
`First, Patent Owner attempts to import a temporal limitation from a claim
`
`term in isolation to the full limitation recited the term as a whole, which is
`
`inconsistent with the District Court’s express interpretation of the limitation. In
`
`particular, Patent Owner seeks to carve out “action spots” in the prior art from the
`
`scope of the claims because they purportedly do not reflect recent mobile device
`
`activity that “is occurring.” Resp., 15-21. But this arbitrary and undisclosed line
`
`between recent and historical activity ignores that the claim recites “determin[ing]1
`
`of at least one action spot”—not an “action spot” in isolation—contradicts the plan
`
`language of the claims, the specification, and the District Court’s interpretation of
`
`the claims. Ex. 2005, 40-43.
`
`Second, the Response presents an inaccurate understanding of the instituted
`
`grounds, as Patent Owner’s arguments contradict Winkler and Lemmela’s express
`
`disclosures. For example, Patent Owner contends the Petition relies on “distinct
`
`embodiments” in Winkler, despite express teaching the cited features may be used
`
`
`1 Unless noted, all emphases are added.
`
`1
`
`

`

`Petitioner’s Reply
`
`in tandem (compare Resp., 45-47 with Pet., 24) and “conflates distances from a
`
`map element with distances from a current location of the mobile device,” despite
`
`Winkler’s disclosure that a map element may be the current location of the mobile
`
`device (compare Resp., 57-60 with Pet., 26). Patent Owner contends Lemmela
`
`discloses only “historical” activity at “large, irregular” locations, but Lemmela’s
`
`disclosure is not so limited (compare Resp., 24-29 with Pet., 13, 46-47).
`
`II. The Board properly interpreted “action spot” in context of the full
`claim limitation
`As a threshold matter, Petitioner notes that even under Patent Owner’s
`
`proposed construction for “action spot,” the instituted grounds teach action spots as
`
`presently occurring events. See Ex. 1020, ¶¶ 15, 24-32. But to the extent the
`
`Board believes an express construction is necessary, the Board should reject Patent
`
`Owner’s attempt to import temporal limitations from any construction of “action
`
`spot” in isolation to the full recited limitation of “determin[ing] at least one action
`
`spot . . ., the at least one action spot corresponding to a location where at least one
`
`other mobile device has engaged in documenting action within a predetermined
`
`period of time.” Id., ¶¶ 14-20.
`
`On Institution, the Board rejected Patent Owner’s attempt to limit “action
`
`spots” to events “where at least one activity is occurring,” thereby excluding
`
`“action spots” reflecting “historical activity occurring days or weeks” in the past.
`
`Inst. Dec., 8-9, 15-21. The Board’s rejection of Patent Owner’s attempt to contort
`
`2
`
`

`

`Petitioner’s Reply
`
`the claims to create an arbitrary and unsupported cutoff between “recent” and past
`
`activity is consistent with the plain language of the claims, the express disclosure
`
`in the specification, and the District Court’s interpretation of the terms in its
`
`summary judgment order. Ex. 2005, 40-43.
`
`Patent Owner confuses an “action spot” in the abstract, which may reflect a
`
`location where mobile device activity “is occurring” (Ex. 1001, 2:63-65), with
`
`“determin[ing] at least one action spot,” which the claims make clear is a
`
`determination of past tense activity—one “correspond[ing] to a location where at
`
`least one other mobile device has engaged in documenting action within a
`
`predetermined period of time” (id., 19:26-31). Consistent with the claim’s express
`
`language, the specification repeatedly describes the determined “action spots” as
`
`reflecting mobile device activity that has occurred in the past, not activity that is
`
`presently occurring. Id. at 3:66-4:4 (action spot “determined” as location where
`
`mobile device “has engaged in a documenting action”); 3:32-35, 6:51-56 (same);
`
`4:19-23 (“has documented’); 6:32-36 (action spot “more lively” where “more
`
`documenting activity has occurred”); 11:44-59 (action spot reflects “most recent,”
`
`not presently occurring, activity); 12:17-24, 12:33-38, 14:6-15 (action spot reflects
`
`past tense activity, e.g. “engaged”).
`
`To emphasize “determin[ing] at least one action spot” involves consideration
`
`of past activity, the specification explains the “predetermined period of time” used
`
`3
`
`

`

`Petitioner’s Reply
`
`in the “determin[ing]” can be “within the last hour, the last twelve hours, the last
`
`twenty-four hours, the last thirty minutes, or any other time period.” Id. at 8:31-
`
`39; Ex. 1020, ¶ 17. The District Court noted “the parties did not seek construction
`
`of the term ‘predetermined duration of time,’ and its plain meaning supports that it
`
`could cover durations of time of undefined length, so long as they are
`
`‘predetermined.’” Ex. 2005, 40. The District Court observed the claims “simply
`
`state that an action spot is corresponds [sic] to a location where a user ‘has
`
`engaged’ in documenting activity, with no limits in time.” Id. As a result, it
`
`construed the claims as having no temporal limitations: “the Court would find that
`
`the claims themselves do not on their face require ‘automatic,’ ‘periodic,’ or
`
`otherwise timely updates of action spot information.” Id.; id. at 41 (“asserted
`
`claims lack meaningful limits in space, time, and relative location”).
`
`Patent Owner focuses on the parties’ agreed construction of the term “action
`
`spot” in isolation,2 but ignores that the District Court interpreted the full
`
`limitation—not just as an isolated claim term—to resolve the parties’ summary
`
`
`2 The parties stipulated to several constructions to narrow disputes and comply
`
`with the District Court’s instruction during Markman proceedings that sought to
`
`limit the parties to requesting construction of no more than ten terms over eleven
`
`asserted patents. Ex. 1026, 6-8.
`
`4
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`

`

`Petitioner’s Reply
`
`judgment motions. Id. at 40. Indeed, Patent Owner’s expert conceded he 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.
`
`The parties’ stipulated construction of “action spot” as reflecting “currently
`
`occurring” activity does not import an arbitrary temporal cutoff to the
`
`“determin[ing]” of an “action spot” or mean that “determin[ed]” action spots are
`
`also limited to “currently occurring” activity. See Ex. 1020, ¶¶ 16-20. Once the
`
`focus is placed on the full limitation reciting “determin[ing] at least one action
`
`spot” rather than an “action spot” in isolation, the claims and specification make
`
`clear there are no temporal limitations to the activity encompassed in that
`
`“determin[ation].” See Ex. 2005, 40. The Board reached this conclusion on
`
`Institution, explaining the challenged claims recite “at least one action spot”
`
`corresponding to a location where another mobile device “has engaged in” activity
`
`“within a predetermined period of time,” and the specification states the period of
`
`time may be any time period. Inst. Dec., 8-9.3
`
`
`3 If the Board ultimately departs from the Institution Decision’s rejection of Patent
`
`Owner’s desired construction, Petitioner requests “the opportunity to present
`
`argument under this new theory.” SAS Inst., Inc. v. ComplementSoft, LLC, 825
`
`F.3d 1341, 1351 (Fed. Cir. 2016).
`
`5
`
`

`

`Petitioner’s Reply
`
`Although Patent Owner attempts to minimize the specification’s repeated
`
`references to “action spots” corresponding to where a mobile device “has engaged”
`
`in activity (Resp., 17-20), its proposal is flawed as a matter of logic, imports
`
`limitations from the specification, and is at odds with the District Court’s
`
`interpretation. In particular, Patent Owner seeks to limit action spots to activity
`
`that “is occurring,” and then to further define whether activity “is occurring” by the
`
`“predetermined duration of time.” But by tying activity that “is occurring” in
`
`“action spots” to a “predetermined duration of time,” Patent Owner imports a
`
`temporal limitation not recited by the claims.
`
`For example, Patent Owner’s expert repeatedly asserted “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). When confronted
`
`with the fact that claim 1 of U.S. Patent No. 8,825,084 (at issue in IPR2019-
`
`00714)—unlike claim 1 of the ’327 patent—does not require the “determin[ing]”
`
`of “action spots” to correspond to mobile device activity within a predetermined
`
`period of time, Patent Owner’s expert nevertheless maintained that “action spots”
`
`in the ’084 patent should be limited in the same way as those in claim 1 of the ’327
`
`patent. See id. at 59:8-61:2.
`
`6
`
`

`

`Petitioner’s Reply
`
`Even if there were legal support to import this limitation to “action spot,” it
`
`would still not carve out an undefined amount of past activity from the
`
`“determin[ing] of at least one action spot,” as the specification makes clear the
`
`“predetermination duration of time” can be “any other time period.” Ex. 1001,
`
`8:28-39. As the District Court found, this time “cover[s] durations of time of
`
`undefined length,” meaning that “is occurring” activity can span into the past
`
`without bound. Ex. 2005, 40.
`
`In a tacit acknowledgement that limiting “action spots” to a “predetermined
`
`duration of time” does not excise the consideration of past activity as a matter of
`
`logic, Patent Owner attempts to graft an additional limitation onto “action spot,”
`
`where not all activity “is occurring” even if it falls within the “predetermined
`
`durations of time.” This silent, undefined limitation was exposed when Patent
`
`Owner’s expert was confronted with the possibility of activity occurring days or
`
`weeks in the past but within the “predetermined duration of time.” Patent Owner’s
`
`expert was unable to answer whether that would meet the claims. See Ex. 1024,
`
`98:12-100:4 (“Q . . . [I]f an action spot is determined based on a predetermined
`
`duration of time, it might not be an action spot as recited in the claims? A. I’d have
`
`to think about that question for a while.”), 103:9-104:11, 107:20-109:2, 109:22-
`
`110:5, 110:17-111:5, 132:5-18, 91:3-15, 165:6-166:1, 39:16-40:2, 86:8-89:7,
`
`87:16-88:8.
`
`7
`
`

`

`Petitioner’s Reply
`
`Patent Owner also seeks to import this silent limitation to “is occurring”
`
`activity by contending the claims require that the “determin[ing]” process “actively
`
`queries” for “up-to-date information.” Resp., 28; Ex. 1024, 139:11-140:22. But
`
`the District Court interpreted the claims to expressly reject this position. See Ex.
`
`2005, 40 (claims require no “timely updates of action spot information”).
`
`III. Ground 1: Response arguments rely on mischaracterization of Winkler
`and the Petition
`Petitioner requests the Board to reconsider Ground 1 in light of both Patent
`
`Owner’s mischaracterization of the record and Winkler’s full disclosure. Patent
`
`Owner’s arguments are premised on logical fallacy: that because “Winkler
`
`discloses action spots as ‘map elements’” the Petition alleges “every ‘map element’
`
`contemplated by Winkler [is] an ‘action spot[.]’” Ex. 1020, ¶ 62 (citing Resp., 45).
`
`But the statement “all of Winkler’s action spots are map elements” does not mean
`
`“all of Winkler’s map elements are action spots.” Id. Rather, Winkler’s map
`
`elements are only action spots when they meet the claimed requirements of an
`
`action spot. Id. at ¶¶ 62-63.
`
`A.
`
`Patent Owner mischaracterizes Winkler’s disclosure as
`presenting distinct embodiments and ignores Winkler’s teaching
`that features may be used in tandem
`To show Winkler’s map elements can meet the claimed requirements of an
`
`action spot, Petitioner cites to Winkler’s list of conditions that may affect map
`
`elements. Pet., 24 (citing Ex. 1004, 11:36-54). Petitioner relies on multiple entries
`
`8
`
`

`

`Petitioner’s Reply
`
`from this list occurring and comprising an “event” that affects a map element. See
`
`id. Patent Owner argues the entries of this list are “distinct embodiments” and may
`
`not be applied in tandem to affect a single map element. Resp., 45-48.
`
`Patent Owner’s argument is unsupported. Ex. 1020, ¶¶ 64-68. The entries
`
`in Winkler’s list are connected with “and/or,” which means one or more entries
`
`may be utilized together. Pet., 24 (citing Ex. 1004, 11:36-54). Further, Winkler
`
`states: “[t]he word ‘or,’ in reference to a list of two or more items, covers all of the
`
`following interpretations of the word: any of the items in the list, all of the items in
`
`the list, and any combination of the items in the list.” Ex. 1004, 13:59-62. Winkler
`
`also describes map elements being “dynamically update[d]” “based on a number of
`
`factors,” and states that “[t]he elements and acts of the various examples described
`
`[] can be combined[.]” Id., 2:29-33, 3:2-3, 14:19-21. When a reference, such a
`
`Winkler, describes that features may be used together or interchangeably, they are
`
`“not isolated embodiments of the invention” and the Board may consider them
`
`together. CSR, PLC v. Skullcandy, Inc., 594 F. Appx. 672, 679-80 (Fed. Cir.
`
`2014). Therefore, a map element may be affected by an event comprising (1)
`
`movement of another mobile device to within a pre-selected range of a map
`
`element and (2) device activity occurring at a map element within a certain period
`
`of time. Pet., 24 (citing Ex. 1004, 11:36-54); Ex. 1020, ¶¶ 64-68.
`
`9
`
`

`

`Petitioner’s Reply
`
`B.
`
`Patent Owner’s assertion that Petitioner does not explain how a
`single map element may comprise an action spot
`mischaracterizes the Petition and relies on an incomplete
`understanding of Winkler
`To support its contention that Petitioner “fails to show” a Winkler map
`
`element may correspond to the location where another device has engaged in
`
`documenting activity, Patent Owner claims Petitioner “cites two passages from
`
`Winkler as examples of documenting actions, but the example provided in each are
`
`deficient” because they allegedly do not specify where the documenting activity
`
`occurs. Resp., 50. But, Petitioner’s analysis of this limitation does not rely on
`
`these two passages alone—it first cites to a portion of Winkler stating that the
`
`relevant “event”-causing device activity may occur “in a certain region” or “around
`
`a certain tagged item on a map.” Pet., 24 (citing Ex. 1004, 11:36-54). The Petition
`
`next explains this “event”-causing activity at a location may include documenting
`
`activity, such as transmitting messages. Id. (citing Ex. 1004, 2:16-22; 8:7-18). In
`
`at least one of the two cited examples of transmitting messages, Winkler refers to
`
`the same process (modifying a map element based on an “event”) described in its
`
`disclosure of “event”-causing device activity that occurs at a specific location.
`
`Compare Ex. 1004, 2:16-22 (“In some examples, the system [] modifies . . .
`
`displayed elements based on events that occur at . . . a location associated with the
`
`element. For example, the system may modify the appearance of an element . . .
`
`when a certain number of mobile device users comment on a location, thereby
`
`10
`
`

`

`Petitioner’s Reply
`
`indicating the location is popular”) with 10:1-11:65 (titled “Dynamically
`
`Modifying Map Elements Based on Events at a Mobile Device”). A POSITA
`
`would have clearly understood Winkler teaches dynamically modifying map
`
`elements through an “event,” which can include documenting activity at the
`
`element’s location. Ex. 1020, ¶ 69.
`
`Next, to support its contention the Petition “fails to show” that a Winkler
`
`map element may be determined within a predetermined distance from the current
`
`location of a mobile device, Patent Owner contends the Petition’s citation to an
`
`“event” including “movement to within a pre-selected range of a map element” is
`
`“irrelevant” because while the claimed “‘predetermined distance’ must be from the
`
`current location of the mobile device,” “Winkler’s ‘pre-selected range’ represents a
`
`distance from a map element[.]” Resp., 51-52; see Ex. 1024, 161:10-18, 122:8-12.
`
`Patent Owner’s distinction is fabricated, as Winkler expressly teaches that map
`
`elements may correspond to the current location of a user’s device. Pet., 25-26
`
`(citing Ex. 1004, FIG. 5, 10:17-19); Ex. 1020, ¶ 71.
`
`Finally, Patent Owner contends “Winkler’s map elements are displayed
`
`before the ‘events’ in Winkler that (under Petitioners’ theory) give rise to the
`
`alleged determination of an ‘action spot,’” and “[t]he Petition thus failed to explain
`
`how Winkler’s pre-selection or pre-generating map elements at steps 510/520
`
`would possibly constitute ‘determin[ing] . . . at least one action spot.’” Resp., 53-
`
`11
`
`

`

`Petitioner’s Reply
`
`55. Patent Owner ignores Winkler’s express disclosure, which teaches that map
`
`elements identified in steps 510/520 may be “hidden” and not displayed until the
`
`occurrence of an event at step 530. Ex. 1004, 11:16-20, 11:55-65. Moreover, even
`
`if the map element is displayed as soon as it is generated, this map element would
`
`not become an “action spot” within the meaning of the claim until an event
`
`transpired in step 530 that imparts the claimed characteristics of an “action spot”
`
`onto this map element. See Ex. 1020, ¶¶ 62-63. Contrary to Patent Owner’s
`
`contention, Petitioner never “equated” all map elements with action spots or
`
`limited the “determin[ing]” of action spots to steps 510/520 of Winkler. Id.
`
`C. Winkler’s method for dynamically modifying map elements
`teaches map elements that can be a claimed “action spot”
`Patent Owner contends that Petitioner failed to “sufficiently explain how any
`
`one of Winkler’s map elements” would meet all the requirements of an action spot.
`
`Resp., 47. Petitioner disagrees. Petitioner illustrates three different scenarios in
`
`which Winkler’s Figure 5 method and corresponding disclosure (both cited in the
`
`Petition) teach map element that meets the claimed requirements of an action spot.
`
`Gen. Elec. Co. v. United Techs. Corp., IPR2016-01287, 2017 WL 6731569, at *19-
`
`20 (PTAB Dec. 29, 2017) (reply may add new annotations to the same evidence
`
`cited in the Petition); Argentum Pharm. LLC v. Research Corp. Technologies, Inc.,
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`12
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`Petitioner’s Reply
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`IPR2016-00204, 2017 WL 1096590, at *3 (PTAB March 22, 2017) (reply may add
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`new citations to the same references relied on in the Petition).4
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`Winkler’s Figure 5 presents the following method for dynamically
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`modifying map elements:
`
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`4 Patent Owner cites In re Magnum Oil Tools and Intelligent Bio-Systems, Inc. v.
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`Illumina Cambridge, Ltd. to warn the Board that “the law forbids subsequently
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`adding new theory/argument that ‘could have been included in a properly-drafted
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`petition, but was not.’” E.g., Resp., 2 (citing 829 F.3d 1364, 1378-80 (Fed. Cir.
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`2016), 821 F.3d 1359, 1369 (Fed. Cir. 2016)). These cases do not support Patent
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`Owner’s sweeping conclusion. Magnum Oil held the Board could not use analysis
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`in one ground as support for an entirely different ground, 829 F.3d at 1380-81, and
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`Intelligent Bio-System held that a Petitioner’s Reply could not raise new grounds of
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`invalidity with new references, 821 F.3d at 1369-70. The Federal Circuit has
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`distinguished these cases and allowed the Board to consider Reply arguments that
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`build on a Petition’s initial analysis within a ground. See, e.g., Intellectual Ventures
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`II LLC v. Ericsson Inc., 685 F. Appx. 913, 919-22 (Fed. Cir. 2017).
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`13
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`Petitioner’s Reply
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`
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`There are at least three scenarios in which this method may generate one map
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`element meeting all of the claimed requirements of an action spot:
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`Scenario 1: Winkler’s system creates map element X corresponding to the current
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`location of a first device and hidden map element Y corresponding to the location
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`of a second device. When the second device moves “within a pre-selected range of
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`[] map element [X]” and engages in documenting activity there within a time
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`period, map element Y is modified (displayed) and map element Y becomes an
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`action spot. Ex. 1020, ¶ 72.
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`• Steps 510/520: map element X is created at the current location of a first
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`mobile device. Ex. 1004, 10:10-39.
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`14
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`Petitioner’s Reply
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`
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`• Steps 530/540: system receives indication of an “event” and updated map
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`element X based on the event. Id., 10:40-65. In this example, it is not
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`important what the event comprises, so long as map element X continues to
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`be the current location of the first device.
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`15
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`Petitioner’s Reply
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`Now, the method of Figure 5 is performed again:
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`• Steps 510/520: “hidden” map element Y associated with the location of a
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`second device. Id., 10:10-39, 11:16-20, 11:55-56.
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`
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`• Steps 530/540: system receives indication of an “event” comprising the
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`second device “mov[ing] to within a pre-selected range of [] map element”
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`X and engaging in documenting activity at this location within a certain
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`time period. Id., 10:40-11:65. Map element Y is modified (displayed)
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`based on this event. Id.
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`16
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`Petitioner’s Reply
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`
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`Map element Y is now an action spot. Ex. 1020, ¶ 72.
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`Scenario 2: Winkler’s system creates hidden map element X at the current location
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`of a first device. When another device arrives at map element X (“within a pre-
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`selected range,” where the range=0) and engages in documenting activity there
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`within a certain time period, map element X is modified (displayed) and map
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`element X becomes an action spot. Id., ¶ 73.
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`• Steps 510/520: “hidden” map element is associated with the location of a
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`first device. Ex. 1004, 10:10-39, 11:16-20, 11:55-56.
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`17
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`Petitioner’s Reply
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`
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`• Steps 530/540: system receives indication of an “event” comprising a
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`second device moving to map element X (“pre-selected range”=0 meters)
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`and engaging in documenting activity at this location within a certain time
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`period. Id., 10:40-11:65. Map element X is modified (displayed) based on
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`this event. Id.
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`18
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`Petitioner’s Reply
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`
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`Map element X is now an action spot. Ex. 1020, ¶ 73. The ’327 patent does not
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`require the “predetermined distance” to be more than zero, nor does it require the
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`action spot location to be different than the location of the first mobile device. Id.
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`Scenario 3: a user creates hidden map element X within a predetermined distance
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`from her current device location. When another device arrives at map element X
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`and engages in documenting activity there within a certain time period, map
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`element X is modified (displayed) and map element X becomes an action spot.
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`Ex. 1020, ¶ 74.
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`• Steps 510/520: Winkler teaches generating a map element based on user
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`input, which may include input identifying any location. Ex. 1004, 10:10-
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`39. Here, the user selects a location 100 meters away from her current
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`device location and hidden “remote” map element X is created:
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`19
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`Petitioner’s Reply
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`
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`• Steps 530/540: system receives indication of an “event” comprising a
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`second device engaging in documenting activity at map element X within a
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`certain time period. Id., 10:40-11:65. Map element X is modified
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`(displayed) based on this event. Id.
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`20
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`Petitioner’s Reply
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`Map element X is now an action spot. Ex. 1020, ¶ 74.
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`D. The Petition describes how and why a POSITA would have been
`motivated to combine Winkler and Altman
`Patent Owner’s contention the Petition does not describe how and why a
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`POSITA would have been motivated to combine Winkler and Altman, Resp. 56-59,
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`are based on mischaracterizations of Winkler and the Petition. See sections III.A-
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`III.C; Ex. 1020, ¶¶ 76-77.5
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`Patent Owner also attacks certain verb tenses used by Petitioner and its
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`expert. Resp., 59. Patent Owner ignores Dr. Bhattacharjee’s express statement the
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`entirety of his opinions and analysis are from the perspective of one skilled in the
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`art at the time of the alleged invention. Ex. 1020, ¶¶ 78-79 (citing Ex. 1002, ¶¶ 18,
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`22). Petitioner’s use of present tense is also meant to convey that certain
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`statements may also be applicable in the present day. Id., ¶ 79. Patent Owner’s
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`focus on Petitioner’s grammar only highlights the substantive weakness of its
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`positions.
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`5 Petitioner notes that Patent Owner’s expert offered no opinions on objective
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`indicia of nonobviousness. See Ex. 1024, 79:14-82:8.
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`21
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`Petitioner’s Reply
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`IV. Grounds 2-4: The Response relies on mischaracterizations of the
`references, Petition, and ’327 patent
`A. The Response imports limitations into the claimed “activity
`level” and Lemmela’s disclosure
`Patent Owner contends Lemmela’s “quantitative measure” and “density” of
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`postings do not teach “activity level” because they “represent the level of salient
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`word commonality for a mere subgroup of postings[.]” Resp., 31. Patent Owner’s
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`contention is inconsistent with the claimed “activity level” and Lemmela’s
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`disclosure. Ex. 1020, ¶¶ 33-43.
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`Patent Owner reads in a proportionality requirement to the claimed “activity
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`level” (Resp., 30-33), and ignores the Board’s interpretation of “activity level” as
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`not requiring “any particular proportionality or accuracy[.]” Inst. Dec., 18-19. The
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`Board’s interpretation is supported by the ’327 patent, which claims a generic
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`“activity level” and discloses no specific manner of calculating this activity level
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`(Ex. 1020, ¶¶ 37-40), and by the District Court’s construction of this term, which
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`rejected attempts to limit the scope to a number of actions and instead adopted a
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`construction of a “level of actions taken by one or more other mobile devices” (Ex.
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`2002, 38-42).
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`Patent Owner’s arguments are also inconsistent with its own interpretation
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`of the challenged claims. Ex. 1020, ¶¶ 37-40. After acknowledging the claimed
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`activity level need not be based on a “number of actions” (Resp., 30-31 (citing Ex.
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`22