UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SNAP, INC.
`Petitioner
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`v.
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`BLACKBERRY LIMITED
`Patent Owner
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`Case IPR2019-00939
`Patent 8,209,634
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`PATENT OWNER BLACKBERRY LIMITED’S
`PRELIMINARY RESPONSE
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`Case IPR2019-00939
`Attorney Docket No: 21828-0044IP1
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`TABLE OF CONTENTS
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`INTRODUCTION .......................................................................................... 1
`I.
`II. THE ’634 PATENT ........................................................................................ 3
`A. Background of the Invention ............................................................................ 3
`B. Overview of the Prosecution History ............................................................... 6
`III. LEVEL OF ORDINARY SKILL .................................................................. 9
`IV. CLAIM CONSTRUCTION ........................................................................... 9
`A. “wireless communication device” (All challenged claims) ....................... 10
`B. “messaging correspondent” (All challenged claims) ................................. 10
`C. “a numeric character representing a count of the plurality of different
`message correspondents for which one or more of the electronic messages
`have been received and remain unread” (All challenged claims) .................. 11
`V. THE BOARD SHOULD EXERCISE ITS DISCRETION UNDER
`§314(a) TO DENY INSTITUTION ...................................................................... 12
`A. As to the two Snap petitions, institution of multiple, concurrent
`proceedings would not promote efficient administration of the Office or the
`integrity of the system. .......................................................................................... 12
`B. As between the multiple Facebook petitions and the multiple Snap petitions,
`Facebook’s petitions are duplicative petitions that place undue burden on the
`Board and Patent Owner and lead to undue harassment. ..................................... 16
`C. The Board should exercise its discretion under §314(a) to deny institution
`because IPR would be an inefficient use of Board resources in view of the
`advanced stage of the related District Court case. ................................................ 19
`VI. THE BOARD SHOULD EXERCISE ITS DISCRETION UNDER
`§325(D) TO DENY INSTITUTION, BECAUSE THE PETITION PRESENTS
`THE SAME PRIOR ART ARGUMENTS PREVIOUSLY CONSIDERED BY
`THE EXAMINER .................................................................................................. 24
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`Case IPR2019-00939
`Attorney Docket No: 21828-0044IP1
`VII. ALL CITED REFERENCES IN THE PETITION—INCLUDING THE
`PRIMARY AND ALL SECONDARY REFERENCES—ARE ADMITTEDLY
`LACKING A REQUIRED CLAIM ELEMENT (ALL GROUNDS) ............... 32
`A.
`The Petitioner failed to show that Canfield discloses the claimed “numeric
`character representing a count of the plurality of different messaging
`correspondents.” .................................................................................................... 33
`B. The Petitioner failed to show that Ording/Canfield/Schwartz discloses the
`claimed “numeric character representing a count of the plurality of different
`messaging correspondents.” .................................................................................. 43
`VIII. THE PETITION FAILS TO SHOW A POSITA WOULD HAVE BEEN
`MOTIVATED TO MODIFY ORDING IN VIEW OF CANFIELD AND
`SCHWARTZ TO ARRIVE AT THE CLAIMED INVENTION. (ALL
`GROUNDS) ............................................................................................................ 44
`A.
`The Petition’s proposed modifications ignore Canfield’s teachings and
`what they achieve .................................................................................................. 45
`B. The Petition fails to acknowledge additional problems posed by its
`modification of Canfield to prohibit all sessions except one-on-one sessions. .... 50
`C. The Petition fails to show that the proposed modification based on Canfield
`alone would have been obvious ............................................................................. 53
`D. The Petition’s alternative theory that proposed modifications to
`Ording/Canfield/Schwartz would have been “obvious to try” is unsupported by
`any sufficient evidence. ........................................................................................ 54
`IX. CONCLUSION ............................................................................................. 56
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`Case IPR2019-00939
`Attorney Docket No: 21828-0044IP1
`LIST OF EXHIBITS
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`EX2001
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`Declaration of Rajeev Surati, Ph.D.
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`EX2002
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`EX2003
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`EX2004
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`EX2005
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`EX2006
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`EX2007
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`EX2008
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`EX2009
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`EX2010
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`Corrected Final Ruling on Claim Construction/Markman
`Hearing, BlackBerry Limited v. Snap Inc., Case Nos. CV 18-
`1844-GW & 18-2693-GW (C.D. Cal. April 5, 2019)
`(“Markman Order”)
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`Defendant’s Notice and Motion to Stay Pending Inter Partes
`Review, BlackBerry Limited v. Facebook, Inc. et al., Case Nos.
`2:18-cv-01844-GW & 2:18-cv-02693-GW (C.D. Cal. April 16,
`2019)
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`Minutes of Status Conference, Initial Thoughts re Joint Report,
`BlackBerry Limited v. Facebook, Inc. et al., Case Nos. 2:18-cv-
`01844-GW & 2:18-cv-02693-GW (C.D. Cal. April 22, 2019)
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`Notice Withdrawing Pre-Institution Motion to Stay In View of
`Court’s Guidance, BlackBerry Limited v. Facebook, Inc. et al.,
`Case Nos. 2:18-cv-01844-GW & 2:18-cv-02693-GW (C.D.
`Cal. April 26, 2019)
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`Minutes of Order In Chambers, Trial Schedule, BlackBerry
`Limited v. Facebook, Inc. et al., Case Nos. 2:18-cv-01844-GW
`& 2:18-cv-02693-GW (C.D. Cal. May 15, 2019)
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`RESERVED
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`RESERVED
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`BlackBerry Limited’s Final Election of Asserted Claims,
`BlackBerry Limited v. Snap, Inc., Case Nos. 2:18-cv- 01844-
`GW & 2:18-cv-02693-GW (C.D. Cal. May 31, 2019)
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`Defendant’s Final Election of Asserted Prior Art, BlackBerry
`Limited v Snap, Inc., Case Nos. 2:18-cv-01844-GW & 2:18-cv-
`02693-GW (C.D. Cal. June 14, 2019)
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`iii
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`EX2011
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`Case IPR2019-00939
`Attorney Docket No: 21828-0044IP1
`Order Modifying Scheduling Order BlackBerry Limited v.
`Facebook, Inc. et al., Case Nos. 2:18-cv-01844-GW & 2:18-cv-
`02693-GW (C.D. Cal. July 12, 2019)
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`iv
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`Case IPR2019-00939
`Attorney Docket No: 21828-0044IP1
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`I.
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`INTRODUCTION
` Petitioner has failed to meet its burden of showing a reasonable likelihood
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`that it would prevail with respect to any of the challenged claims. Not only is the
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`Petition is plagued by multiple deficiencies, each of which provides an
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`independent basis to deny institution, but the collectively large number of
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`deficiencies provides overwhelming weight to deny institution.
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`As an initial matter, the Board should exercise its discretion under §314(a) to
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`avoid the inefficiencies and costs that would be unnecessarily incurred by
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`conducting this IPR (IPR2019-00939) and another IPR (IPR2019-00938) filed by
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`Petitioner where no meaningfully differences between the two have been
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`identified. Moreover, these Petitions are substantive copies of yet two additional
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`Petitions (IPR2019-00925 and IPR2019-00924), for a total of four Petitions against
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`the ’634 patent. Instituting all IPRs would thwart the just, speedy, and inexpensive
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`resolution of patentability, and would present an undue burden on BlackBerry.
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`The Petition is also defective on the merits. The Petition’s cited art fails to
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`disclose a number of claim elements, and in fact, the Petition simply fails to cite
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`any prior art document that discloses a displayed icon including “a numeric
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`character representing a count of the plurality of different messaging
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`correspondents for which one or more of the electronic messages have been
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`received and remain unread.” The Petition attempts to bridge this gap with mere
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`Case IPR2019-00939
`Attorney Docket No: 21828-0044IP1
`speculation, rather than documentary evidence. This is not enough. Additionally,
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`Grounds 1-2 rely upon multiple layers of modifications to the Ording reference,
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`but the Petition is lacking a requisite explanation as to why a POSITA would have
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`been motivated to simultaneously apply each of the layered modifications in a
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`manner that would achieve the claimed system. Accordingly, the “information
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`presented in the petition” is plainly insufficient to satisfy Petitioner’s burden under
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`§314(a)—especially where Petitioner cannot subsequently add theories/arguments
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`that should have been part of the Petition. Intelligent Bio-Systems, Inc. v. Illumina
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`Cambridge, Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016); In re Magnum Oil Tools
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`Int’l, 829 F.3d 1364, 1380 (Fed. Cir. 2016).
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`Lastly, not only is the Petition fatally flawed, it also demands an untimely
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`and inefficient proceeding that would effectively “second guess” the concurrent
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`litigation, especially where the jury trial will resolve Petitioner’s invalidity
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`allegations for the ’634 patent several months before the Board would render any
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`Final Written Decision here. Given the significant defects known to exist in the
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`Petition, forcing the parties to undergo duplicative efforts in litigating two
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`overlapping proceedings in different forums is unwarranted. See E-One, Inc. v.
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`Oshkosh Corp., IPR2019-00162, Paper 16, 8-9 (PTAB June, 5, 2019). As such,
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`the Board should exercise its discretion under §314(a) to deny institution for this
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`additional reason.
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`Case IPR2019-00939
`Attorney Docket No: 21828-0044IP1
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`II. THE ’634 PATENT
`A. Background of the Invention
` The ’634 patent is titled “Previewing a New Event On a Small Screen
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`Device,” and describes systems, devices, and methods for notifying and
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`previewing a new event, such as receipt of new messages, on a computing device.
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`EX1001, Abstract; 2:6-8; FIGS. 4 and 6. The claimed methods and devices require
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`visual modification of an electronic messaging icon to display information related
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`to a count of the plurality of different messaging correspondents that have sent
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`unread messages.
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`The ’634 patent explains that, as a result of the “proliferation of
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`communications available on mobile devices,” mobile users received messages
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`from a litany of separate applications. EX1001, 1:18-60. These applications
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`include “more than one Instant Message-type service,” or “corporate and personal
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`email.” Id. Some prior systems responded to each incoming message by showing
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`a notification “on a major portion of the main screen,” which for mobile users “has
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`a small display area.” Id., 1:38-52. The notification was not application-specific,
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`forcing users “to check each of their … applications separately” to determine
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`which application triggered the notification, a process which involved navigating
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`to “a main or home screen and one or more sub-screens that may be navigated
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`from the main screen.” Id. at 1:41-43, 60:64. The inventors of the ’634 patent
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`Case IPR2019-00939
`Attorney Docket No: 21828-0044IP1
`recognized that this exercise “is inconvenient,” and can make it difficult for a user
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`to check the new event quickly and in a manner to optimize the control of a single
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`wireless mobile device running multiple instant messaging services and email
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`counts. Id., 1:60-68; EX2001, ¶¶25-26.
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`The ’634 patent identified these shortcomings and addressed them with a
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`solution that involved visually modifying an icon to provide a count of certain
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`specific events. EX2001, ¶27. In particular, the ’634 patent provides a unique
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`configuration and method of visually modifying an electronic messaging icon to
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`include “a numeric character representing a count of the plurality of different
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`messaging correspondents for which one or more of the electronic messages have
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`been received and remain unread.” Id., cls. 1, 7, and 13 (emphasis added), 8:8-13,
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`8:19-29.
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`In more detail, the ’634 patent describes a wireless communication device
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`that displays an icon relating to electronic messaging on a graphical user interface.
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`EX1001, Abstract, cls. 1, 7, and 13, 3:35-39, 7:32-47, FIG. 3. For example, the
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`wireless communication device may run multiple applications, and such
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`applications may be represented by application icons on a graphical user interface
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`of the device. Id. The wireless communication device receives a plurality of
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`electronic messages, such as messages from a number of different messaging
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`correspondents. Unlike some prior systems that were focused only on a number of
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`Case IPR2019-00939
`Attorney Docket No: 21828-0044IP1
`received messages, the claims of the ’634 patent are directed to, inter alia, visually
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`modifying the displayed icon to include “a numeric character representing a count
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`of the plurality of different messaging correspondents for which one or more of the
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`electronic messages have been received and remain unread.” Id., cls 1, 7, and 13,
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`8-13, 8:19-29, FIG. 4; EX2001, ¶¶28-29; see also EX1013, 677 (“By displaying
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`the number of distinct correspondents from whom messages have been received,
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`Applicant’s claimed invention opens new possibilities for users of such
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`communications.”); id., 678 (“by expending such resources and modifying an icon
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`associated with a corresponding communications application, as claimed, they
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`could allow a user to very efficiently track sometimes crucial information while
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`making very efficient use of display resources, and significantly reducing input,
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`output, display, and other processing tasks that previously were required for the
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`users to obtain and track such information.”).
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`The ’634 patent also describes that the wireless communication device can
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`display a preview of content associated with a received electronic message, such as
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`a portion of the received message. EX2001, ¶30 (citing EX1001, Abstract, cls. 6,
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`12, and 18; 8:41-42, 8:51-65, FIGS. 6 and 7).
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`The ’634 patent was issued only after going through a substantive
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`examination involving multiple office action/response cycles, and several
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`references applied in rejections, and dozens of considered references.
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`Case IPR2019-00939
`Attorney Docket No: 21828-0044IP1
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`B. Overview of the Prosecution History
` The application leading to the ’634 patent was filed on February 24, 2004,
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`claiming priority to U.S. Provisional Application No. 60/525,958 filed on
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`December 1, 2003. The ’634 patent was allowed on March 30, 2012 and issued on
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`June 26, 2012.
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`The ’634 patent was the subject of a robust examination involving nine
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`office action response cycles, numerous references applied in substantive
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`rejections, and dozens more references considered by the Examiner. EX2001,
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`¶¶31-32. The Petition asserts that such an examination was insufficient—
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`demanding here that the Office considers another set of two-, three-, four-, and
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`five-way combinations.
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`During prosecution, after several prior office actions and responses, the
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`Examiner rejected claims based on Wagner (U.S. 2004/0155908) and Canfield
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`(U.S. 2004/0056893) (referred to by petitioner as “Considered Canfield”) in the
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`Office Actions dated May 19, 2011, and October 26, 2011. EX1013, 607-624;
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`707-728. The Examiner relied on Wagner for most elements of claim 1, including
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`visually modifying an icon (citing Wagner’s description that “a mail icon may
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`display a counter that changes to indicate the number of unread messages a user
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`has”). Id. The Examiner relied on Considered Canfield for a purported
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`Attorney Docket No: 21828-0044IP1
`modification of Wagner to visually modify the icon to include “a numeric
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`character representing a count of the plurality of different messaging
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`correspondents for which one or more of the electronic messages have been
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`received and remain unread,” in place of Wagner’s existing “number of unread
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`messages.” EX1013, 611. The Examiner asserted that a POSITA would have
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`been motivated to make this combination “in order to provide the user with
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`comprehensive statistics regarding concurrent messaging sessions.” Id., 612-613
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`(emphasis added).
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`In response to these rejections, Applicant identified multiple distinctions and
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`related advantages of the claimed invention over Wagner, Considered Canfield,
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`and the other art of record. For example, Applicant explained that Considered
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`Canfield is concerned with instant messaging “sessions,” unlike the “different
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`messaging correspondents,” as claimed. EX1013, 814 (Explaining the cited
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`references are concerned with either “a raw count of messages” or “a number of
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`concurrent, ongoing, or new instant message sessions, or conversations.”);
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`EX2001, ¶33. The prosecution history plainly demonstrated that tracking a
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`number of “messages or conversations” was distinct from the claimed invention:
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`As discussed during the 6 March interview, counting either a total
`number of unread messages or a number of conversations does not, for
`example, enable a user to track the number of correspondents from
`whom the user has received unread messages. By tracking a number
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`Attorney Docket No: 21828-0044IP1
`of correspondents, rather than a number of messages or
`conversations, a device presents different information to a user.
`For example, a single correspondent might either (a) send a plurality of
`messages to the user, or (b) start and stop a number of conversations,
`without affecting the number of distinct correspondents from whom the
`user has received unread messages.
`EX1013, 814. Applicant also explained various advantages associated with the
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`claimed count of the plurality of different messaging correspondents over
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`Considered Canfield’s number related to “sessions.” “[T]he advantage of being
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`able to know that a new correspondent has attempted to communicate can be of
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`great importance, and it is lost if simple numbers of current or new IM sessions is
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`tracked.” Id., 678. This is because, for example, “a single correspondent can
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`initiate an unlimited number of new IM sessions, just as he/she can send any
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`number of e-mails or other types of messages.” Id., 678-679 (emphasis added)
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`(“Applicant’s claimed solution of tracking distinct correspondents provides unique
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`and unobvious advantages.”); EX2001, ¶33.
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`Applicant’s March 12, 2012 remarks were followed by a Notice of
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`Allowance. Notably, the Examiner memorialized a statement of reasons for
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`allowance in the written record: “The prior art of record fails to disclose a numeric
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`character that represents a count of the plurality of different messaging
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`correspondents for which one or more of the electronic messages have been
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`received and remain unread.” Id., 826 (emphasis added); EX2001, ¶¶34-35.
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`Attorney Docket No: 21828-0044IP1
`Claims 52-57 and 64-75 were thus allowed, and correspond to issued claims 1-18
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`of the ’634 patent.
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`III. LEVEL OF ORDINARY SKILL
` The evidence here demonstrates that a person of ordinary skill in the art at
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`the time of the invention (“POSITA”) would have had a bachelor of science degree
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`in Computer Engineering/Computer Science or similar subject matter, or at least
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`approximately two years of work or research experience in the fields of computer
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`hardware, networking, and/or user experience design, or an equivalent subject
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`matter, sufficient to understand fundamental computer networking and hardware
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`architecture and user-interface design. EX2001, ¶¶22-24. Also, an increase in
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`experience could compensate for less education, and an increase in education could
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`likewise compensate for less experience. Id.
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`IV. CLAIM CONSTRUCTION
`The claims in an inter partes review are to be construed using the same
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`standard that applies in district court proceedings—i.e., the standard set forth in
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`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Circ. 2005) (en banc). In the
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`intervening time since the petition was filed, the District Court issued a final claim
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`construction ruling (EX2002) that addressed certain terms under the Phillips
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`standard. For purposes of this proceeding, Patent Owner submits that all terms
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`should be interpreted consistent with the constructions adopted in the District
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`Court’s claim construction ruling. EX2001, ¶36-41. Patent Owner specifically
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`addresses three claim elements below.
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`A.
`“wireless communication device” (All challenged claims)
`The District Court concluded that, under the Phillips standard, “no
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`construction of the term ‘wireless communication device’ is necessary.” EX2002,
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`24. The District Court, however, clarified that this term is not limited to “small-
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`screen” devices. EX2002, 20-23 (citing EX1001, 1:36-40; 3:9-12; 4:55-5:9). For
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`purposes of this proceeding, this interpretation should be applied by the Board.
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`EX2001, ¶37.
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`Patent Owner notes that Grounds 3-4 are duplicative with Grounds 1-2,
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`except that Grounds 3-4 add Strom to purportedly account for an interpretation in
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`which the claim language requires a “small-screen wireless mobile device.” Pet.,
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`25. Given that the term “wireless communication device” that is not so limited,
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`Grounds 3-4 add nothing beyond Grounds 1-2. EX2001, ¶38. As detailed below,
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`Grounds 3-4 suffer from the same fatal flaws as Ground 1-2.
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`B.
`“messaging correspondent” (All challenged claims)
`Petitioner’s proposed construction of this term was flawed, and under the
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`Phillips standard, the District Court rejected Petitioner’s proposal. In particular,
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`the District Court explained that “[n]othing in the plain language of the claims
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`limits the term ‘messaging correspondent’ by tying it to a particular messaging
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`account.” EX2002, 24-25; EX1001, 1:59-60 (“a user may have a corporate and
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`personal e-mail account”).
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`The proper construction of “messaging correspondent” is a “distinct sender
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`of an electronic message.” EX2001, ¶39-40. It is consistent with the ’634 patent
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`specification (e.g., col. 8:8-24 and 51-55; 9:21-27; 1:53-65), and the District Court
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`confirmed this construction was proper under the Phillips standard. EX2002, 25-
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`26. For purposes of this proceeding, this interpretation should be also applied by
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`the Board.
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`C.
`“a numeric character representing a count of the plurality of
`different message correspondents for which one or more of the
`electronic messages have been received and remain unread” (All
`challenged claims)
`The District Court construed this phrase under the Phillips standard to mean
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`“a numeric character representing the number of different messaging
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`correspondents for one or more of the plurality of electronic messages that have
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`been received and remain unread.” EX2002, 27. This construction is consistent
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`with the ’634 patent specification. EX1001, 8:59-62; cl. 1; EX2001, ¶41. This
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`interpretation should also be applied by the Board.
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`Critically, the Petition relies on an erroneous construction of “messaging
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`correspondents” that would tie it to a particular messaging account, contrary to the
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`District Court’s express findings and the ’634 patent specification. See, e.g., Pet.,
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`10 (“Petitioner in the pending litigation has proposed that [“messaging
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`correspondent”] be construed as a “distinct sender associated with an electronic
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`messaging account.”); EX2002, 24-25; EX1001, 1:59-60. Yet again, the District
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`Court rejected Petitioner’s proposed construction. EX2002, 26-28. As detailed
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`below, the Petition failed to identify any cited reference that discloses this claimed
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`feature. Infra, Section VII.
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`V. THE BOARD SHOULD EXERCISE ITS DISCRETION UNDER
`§314(a) TO DENY INSTITUTION
`A. As to the two Snap petitions, institution of multiple, concurrent
`proceedings would not promote efficient administration of the Office
`or the integrity of the system.
` There is no dispute that §314(a) grants the Director with broad discretion to
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`deny institution of IPR for a wide variety of reasons—including the unnecessary
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`waste of the Board’s resources. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356
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`(2018) (“[Section] 314(a) invests the Director with discretion on the question
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`whether to institute review . . . .” (emphasis omitted)); Harmonic Inc. v. Avid
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`Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“permitted, but never
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`compelled, to institute an IPR proceeding”); Conopco, Inc. v. Proctor & Gamble
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`Co., IPR2014-00506, Paper 25, 5 (“Informative”) (“promotes the efficient and
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`economical use of Board and party resources, and reduces the opportunity for
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`abuse of the process”).
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`The Board’s discretionary determination of whether to institute review takes
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`into consideration its objective to “secure the just, speedy, and inexpensive
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`resolution of every proceeding.” 37 C.F.R. § 42.1(b); Deeper, UAB v. Vexilar,
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`Inc., IPR2018-01310, slip op. at 42 (PTAB Jan. 24, 2019) (Paper 7) (informative).
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`The Board’s discretion also reflects the guidance in the Office Patent Trial Practice
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`Guide, August 2018 Update, 83 Fed. Reg. 39,989 (August 13, 2018) (hereinafter
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`“Trial Practice Guide Update”) (describing instances where the “effect . . . on the
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`economy, the integrity of the patent system, the efficient administration of the
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`Office, and the ability of the Office to timely complete proceedings,” 35 U.S.C. §
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`316(b), favors denying a petition even though some claims meet the threshold
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`standards for institution under 35 U.S.C. §§ 314(a), 324(a),” such as due to “events
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`in other proceedings related to the same patent, either at the Office, in district
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`courts, or the ITC.”).
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`These considerations are particularly relevant where multiple petitions are
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`filed by the same party against the same claims of the same patent. The Board has
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`exercised its discretion to deny institution where there are no differences between
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`multiple petitions that are sufficiently material to outweigh the inefficiencies and
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`costs of instituting an additional proceeding. Comcast Cable Communications,
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`LLC v. Rovi Guides, Inc., IPR2019-00232, Paper 14 (denying institution)); see also
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`Oracle Corp. v. Clouding IP, IPR2013-00088, Paper 13, 3 (PTAB Jun. 13, 2013)
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`(Petitioner must expressly explain “why [one reference] is more preferred for
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`satisfying some elements, while [another reference] is more preferred for satisfying
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`Case IPR2019-00939
`Attorney Docket No: 21828-0044IP1
`some other elements.”); ScentAir Techs., Inc. v. Prolitec, Inc., IPR2013-00179,
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`Paper 18 at 3 (PTAB Aug. 23, 2013) (“To avoid a determination that a requested
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`ground of review is redundant of another requested ground, a petitioner must
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`articulate a meaningful distinction in terms of relative strengths and weaknesses
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`with respect to application of the prior art reference disclosures to one or more
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`claim limitations.”). Surely, this is one such case.
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`Petitioner advances two petitions against identical claims using the same
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`primary reference and some of the same secondary references, without identifying
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`any meaningful differences between the two. Instituting both proceedings would
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`not promote the efficient administration of the Office or the integrity of the
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`system. Comcast, IPR2019-00232, 9 (“we do not find the differences between the
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`asserted art and arguments to be sufficiently material to outweigh the
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`inefficiencies and costs of instituting an additional proceeding.” (emphasis
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`added)). In particular, Petitioner’s challenges in the instant proceeding are the
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`same as IPR2019-00938—including the same claims and the same primary
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`reference (Ording), with the only difference being the secondary references.
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`Namely, in IPR2019-00938 the Petitioner relies on secondary references Canfield
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`and Schwartz in combination with Ording, and in IPR2019-00939 relies on
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`secondary references Abiko, Crumlish, and Dvorak in combination with Ording.
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`Additionally, for dependent claims 6, 12, and 8, both petitions rely on the same
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`Case IPR2019-00939
`Attorney Docket No: 21828-0044IP1
`additional secondary references—McPherson and Strom. The following table
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`summarizes the challenged claims and art asserted by Petitioner in these two
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`proceedings (overlapping items emphasized):
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`Ground
`
`1
`
`2
`
`3
`
`4
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`
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`Claims Challenged
`1, 4-5, 7, 10-11, 13,
`16-17
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`6, 12, 18
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`1, 4-5, 7, 10-11, 13,
`16-17
`
`6, 12, 18
`
`IPR2019-00938
`Ording, Abiko,
`Crumlish, Dvorak
`Ording, Abiko,
`Crumlish, Dvorak,
`McPherson
`Ording, Abiko,
`Crumlish, Dvorak,
`Strom
`Ording, Abiko,
`Crumlish, Dvorak,
`McPherson, Strom
`
`IPR2019-00939
`Ording, Canfield,
`Schwartz
`Ording, Canfield,
`Schwartz,
`McPherson
`Ording, Canfield,
`Schwartz, Strom
`Ording, Canfield,
`Schwartz,
`McPherson, Strom
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`The record is devoid of any requisite explanation from Petitioner that
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`demonstrates a meaningful difference between the two petitions so as to justify the
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`added burden of two IPR proceedings against the ’634 patent. The Petition notes
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`that “Petitioner did file another petition against the ’632 patent on the same day as
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`the present Petition.” Pet., 4. This terse acknowledgement, however, fails to even
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`allege that there is a difference between the Ording grounds in each petition that
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`would outweigh the inefficiencies and costs associated with instituting an
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`additional petition. Comcast, IPR2019-00232, 9-12.
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`Case IPR2019-00939
`Attorney Docket No: 21828-0044IP1
`The Board should exercise its discretion under §314(a) to avoid the
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`inefficiencies and costs that would be unnecessarily incurred by conducting two
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`IPRs that are not meaningfully different.
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`B. As between the multiple Facebook petitions and the multiple Snap
`petitions, Facebook’s petitions are duplicative petitions that place undue
`burden on the Board and Patent Owner and lead to undue harassment.
` The Board has exercised its discretion to deny institution of subsequent
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`petitions that rely on the same prior art to challenge the same claims. Google LLC
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`v. Uniloc Luxembourg S.A., IPR2017-01665, Paper 10, 18-28 (PTAB Jan. 11,
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`2018) (denying institution of a subsequent petitioner because “Patent Owner would
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`be forced to defend its patent in an iterative fashion against challenges based on the
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`same prior art and substantially the same arguments, . . . this has the potential to be
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`unfair and inefficient.”); Comcast, Paper 14, 8-13. Here, Petitioner (“Snap”) has
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`admittedly filed duplicative petitions later in time, thereby adding a redundant and
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`unfair burden upon Patent Owner without any perceived benefit or efficiency for
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`the Board, especially where each later-filed petition was never “accompanied by a
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`request for joinder” as stated in 37 C.F.R. § 42.122(b). Pet., 1 (“This petition is a
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`substantive copy of one of Facebook’s ’634 petitions” (emphasis added); see also
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`IPR2019-00938, Pet., 2.
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`As a result, Petitioners are demanding that Patent owner must endure four
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`total petitions against the ’634 patent—two from Snap and two from Facebook—
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`Case IPR2019-00939
`Attorney Docket No: 21828-0044IP1
`which are substantively identical and duplicative in terms of the claims challenged
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`and the art and arguments advanced. Petitioners’ serial petition strategy has
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`multiplied and will further multiply the costs, burden, and expense of BlackBerry
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`defending the ’634 patent. Rather than facing a single—and potentially efficient—
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`proceeding, Petitioners’ gamesmanship attempts to force BlackBerry to defend its
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`patent multiple times over. Institution of both the Snap and Facebook petitions
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`would undermine the fundamental tenets of 37 C.F.R. § 42.1(b) that promote the
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`just, speedy, and inexpensive resolution of every proceeding. Snap’s admission
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`that the later petitions are each a “substantive copy” of earlier petitions, in
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`combination with the unfair burden of forcing Patent Owner to participate in two
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`duplicative proceedings—at two different schedules, with possibly two different
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`sets of depositions and potentially two divergent petitioner replies, etc.—should
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`cause the Board to assess whether institution of additional pro