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`IPR2019-00516
`U.S. Patent No. 8,279,173
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FACEBOOK, INC., INSTAGRAM, LLC, and WHATSAPP INC.,
`Petitioners
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`v.
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`BLACKBERRY LIMITED
`Patent Owner
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`Case IPR2019-00516
`U.S. Patent No. 8,279,173 B2
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`PETITIONER REPLY
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`Table of Contents
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`Page
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`C.
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`C.
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`I.
`II.
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`V.
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`INTRODUCTION .......................................................................................... 1
`CLAIM CONSTRUCTION OF “TAG SOURCES” ..................................... 1
`A.
`The Intrinsic Record Does Not Support Importing “Separately
`Searchable” Into the Construction of “Tag Sources” ........................... 3
`B. A Tag Source Need Not Be “Separately Searchable” To Be
`Distinct From Other Sources or Recognizable By the System ............ 8
`Patent Owner’s Arguments About the Positions in the
`Underlying Litigation Are Not Relevant .............................................. 9
`III. GROUNDS 2-5: ZUCKERBERG DISCLOSES AND RENDERS
`OBVIOUS THE CLAIMED “TAG SOURCES” AND RENDERS
`THE CHALLENGED CLAIMS OBVIOUS IN COMBINATION
`WITH ROHMULLER AND PLOTKIN. ..................................................... 10
`A.
`Zuckerberg Discloses Distinct Tag Sources ...................................... 10
`B.
`Patent Owner’s Arguments Based on the Alleged Lack of
`Distinct “Tag Sources” In Rothmuller and Plotkin Are Not
`Relevant. ............................................................................................. 15
`Patent Owner’s Argument That the Proposed Combinations
`“Have No Benefit” Has No Support in the Record. ........................... 16
`D. MacLaurin Provides A Proper Motivation To Combine. .................. 17
`IV. GROUNDS 6-7: ROTHMULLER DISCLOSES AND RENDERS
`OBVIOUS THE CLAIMED “TAG SOURCES” AND RENDERS
`THE CHALLENGED CLAIMS OBVIOUS. .............................................. 21
`CONCLUSION ............................................................................................. 24
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`IPR2019-00516
`U.S. Patent No. 8,279,173
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`INTRODUCTION
`Patent Owner relies almost entirely on a narrow construction of “tag sources”
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`that lacks support in the intrinsic record and violates well-established principles of
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`claim construction. The prior art discloses separate “tag sources,” as properly
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`construed, and renders the claims obvious under § 103.
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`II. CLAIM CONSTRUCTION OF “TAG SOURCES”
`Patent Owner argues that “tag sources” should be construed as a “separately
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`searchable collections of tags.” Petitioner agrees that a “tag source” refers to a
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`“collection of tags,” but the construction should stop there.1 As explained at length
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`below, there is no support in the intrinsic record for the additional requirement that
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`a collection of tags be “separately searchable.”
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`One immediate problem with Patent Owner’s proposal is its ambiguity – it is
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`not clear how to determine whether an accused system or prior art reference meets
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`the “separately searchable” requirement. Patent Owner’s arguments might be read
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`1 Although the Petition did not provide an express construction of “tag source,” it
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`described the term as referring to a source of predefined tags. (Petition at 9.)
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`Petitioner does not perceive a material difference between that formulation and
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`simply a “collection of tags,” which comes closer to the language of Patent Owner’s
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`proposal and therefore helps to narrow and crystalizes the dispute.
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`IPR2019-00516
`U.S. Patent No. 8,279,173
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`to suggest that “separately searchable” requires that tag sources be physically stored
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`separately from each other in computer memory. But Patent Owner has definitively
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`walked away from that position. Its Patent Owner Response agrees with Petitioner’s
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`expert that “a ‘tag source’ may encompass a collection of tags held together ‘from a
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`logical perspective.’” (Response at 48 n.10; id. (“BlackBerry does not dispute that
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`perspective, and submits that this potential ‘logical’ grouping is captured by
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`BlackBerry’s proposed construction of ‘separately searchable collections of
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`tags.”).)2 Patent Owner’s expert similarly acknowledged that the claimed “tag
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`sources” need not be stored in any particular physical location. (Ex. 1021, 165:23-
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`166:2.) This is also consistent with Patent Owner’s position in the underlying
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`litigation in which it told the district court that “[t]here is no basis for requiring that
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`different ‘sources’ require different storage structures.” (Ex. 1022 at 019.)
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`So if a “separately searchable collection of tags” need not be physically
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`separated from other collections, what does Patent Owner’s construction actually
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`require? To the best Petitioner can tell, a “separately searchable” tag source is one
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`that is capable of being searched without having to search another tag source,
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`2 As Patent Owner’s expert explained, a “logical collection” of data “can be thought
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`of together,” but is “not necessarily physically together,” for example, “the data
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`might be all over the place.” (Ex. 1021, 71:12-73:10.)
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`although the proposed construction is unclear as to how this characteristic is to be
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`achieved, or how its presence or absence in the prior art can be determined. (Ex.
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`1023, ¶8 n.1.) In any event, there is no basis in the intrinsic record for any
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`“separately searchable” restriction.
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`A. The Intrinsic Record Does Not Support Importing “Separately
`Searchable” Into the Construction of “Tag Sources”
`Patent Owner relies exclusively on the ’173 patent specification for its
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`construction. But the Federal Circuit has long held that “[t]he claims, not
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`specification embodiments, define the scope of patent protection. The patentee is
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`entitled to the full scope of his claims, and we will not limit him to his preferred
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`embodiment or import a limitation from the specification into the claims.” Kara
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`Tech., Inc. v. Stamps.com, Inc., 582 F.3d 1341, 1348 (Fed. Cir. 2009) (citing Phillips
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`v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc)); see also Hill-Rom
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`Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014) (“While we read
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`claims in view of the specification, of which they are a part, we do not read
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`limitations from the embodiments in the specification into the claims.”).
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`Patent Owner does not identify any basis for departing from these well-
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`established principles. Patent Owner does not, for example, argue that the applicants
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`acted as their own lexicographer by providing an express definition of “tag sources”
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`in the specification. Patent Owner does not identify any clear and unmistakable
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`disclaimer or disavowal in the specification relating to “tag sources.” And Patent
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`Owner does not identify anything in the specification suggesting that separate
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`searchability was integral to the invention or touting it as an advancement over the
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`prior art. Patent Owner’s argument thus asks the Board to commit “one of the
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`cardinal sins of patent law,” Phillips, 415 F.3d at 1320, by importing a “separately
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`searchable” requirement with no legal justification.
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`But to argue that the “separately searchable” construction attempts to “read
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`limitations from the embodiments in the specification into the claims,” Hill-Rom
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`Services, 755 F.3d at 1371, arguably gives too much credit to Patent Owner’s
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`argument. Patent Owner does not identify a single embodiment in the specification
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`where tag sources are actually described as separately searchable. Patent Owner has
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`at best inferred this technical characteristic from the specification’s vague and high-
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`level descriptions of exemplary tag sources – which the specification repeatedly
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`makes clear are non-limiting examples. (Ex. 1023, ¶¶6-7, 9-11.)
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`And the inference that Patent Owner attempts to draw from the specification
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`is at best tenuous. Nothing in the specification describes how any search of the tag
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`sources is carried out, let alone suggests that the tag sources must be capable of being
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`searched separately from one another. The specification devotes a single sentence
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`to the actual search of tag sources that merely states that the photo tag selection
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`module 148B “may be configured to search one or more selected ‘tag sources’ for
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`tags that match the currently entered text” (’173, 5:39-42), with no details about how
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`U.S. Patent No. 8,279,173
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`a search of selected tag sources must be carried out. A person of ordinary skill in
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`the art would have understood that there are numerous ways to implement the
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`“search[ing] one or more selected ‘tag sources’ for tags that match the currently
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`entered text” (id.) that would not require that each tag source be separately
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`searchable. Nothing in the specification, for example, excludes a system in which a
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`search of tag sources is accomplished through a single search operation that extends
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`across all tag sources. (Ex. 1023, ¶¶8, 17.) As explained, Patent Owner does not
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`contend that “separately searchable” requires that tag sources be physically stored
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`separately from one another.
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`Patent Owner accordingly cannot rely on anything in the specification actually
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`relating to search features to support its construction. It instead points to the
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`description of exemplary tag sources themselves, stating that “every example ‘tag
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`source’ in the ’173 patent specification is consistent with separately searchable
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`collections of tags.” (Response at 24.) This is because, according to Patent Owner,
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`“[t]hese example ‘tag sources’ correspond to tags obtained ‘from’ separate ‘software
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`applications.’” (Id.) But even if this was clearly true (and it is not as discussed
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`below), the Federal Circuit has expressly rejected the argument that “if a patent
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`describes only a single embodiment, the claims of the patent must be construed as
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`being limited to that embodiment.” Hill-Rom Servs., 755 F.3d at 1371; see also
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`Continental Circuits LLC v. Intel Corp., 915 F.3d 788 (Fed. Cir. 2019) (“Even when
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`U.S. Patent No. 8,279,173
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`the specification describes only a single embodiment, the claims of the patent will
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`not be read restrictively unless the patentee has demonstrated a clear intention to
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`limit the claim scope using ‘words or expressions of manifest exclusion or
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`restriction.’”) (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906
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`(Fed. Cir. 2004)). The ’173 patent specification consistently refers to the described
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`tag sources as merely exemplary. (’173, e.g., 5:42-47 (“As shown by way of
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`illustration in screen 400B of FIG. 4B, these tag sources could include, for example,
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`a list of friends from an online service like Facebook™….”), 6:6-13 (“Significantly,
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`as the matching tag list 412 includes possible tags that may be used from various
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`selected tag sources (such as the user’s Facebook friends….”) (underlining added).)
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`Even Patent Owner’s expert consistently refers to the tag sources identified in the
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`’173 specification as “exemplary.” (Ex. 2001, ¶97 (“[E]very exemplary ‘tag source’
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`in the ’173 patent specification is consistent with separately searchable collections
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`of tags.”), ¶98 (“These exemplary ‘tag sources’ correspond to tags obtained ‘from’
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`separate ‘software applications.’”); Ex. 1021, 148:8-150:15.)
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`But even if one could overlook the admittedly exemplary nature of the tag
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`sources in the ’173 patent specification, the patent simply does not provide enough
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`information to determine with any confidence how tag sources are stored in
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`relationship to one other, or whether they come from separate software applications.
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`(Ex. 1023, ¶¶12-15.) For example, Patent Owner suggests that a particular
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`U.S. Patent No. 8,279,173
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`exemplary tag source – “a list of friends from an online service like Facebook™” –
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`is separate from other tag sources because it corresponds to a remote database
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`accessible over a network. (Response at 25 (citing Ex. 2001, ¶99).) But at his
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`deposition, Patent Owner’s expert acknowledged that the list of Facebook friends
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`could be also stored on locally on the user’s device. (Ex. 1021, 150:16-151:21.)
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`Similarly, Patent Owner implies that the “list of contacts from the user’s address
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`book 142” is stored locally on the user’s device. (Response at 23-24.) But Patent
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`Owner’s expert admitted that the address book could have been replicated from
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`something “stored in the cloud.” (Ex. 1021, 152:2-9.) The dearth of detail about the
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`organization of tag sources strongly suggests that these details were simply not
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`relevant to the invention. (Ex. 1023, ¶¶8, 15.)
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`And even putting aside the ambiguities in the specification with respect to
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`how tag sources are organized in relationship to one another, the specification
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`contains no description about how data from the tag sources is accessed, identified,
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`or retrieved to perform any search. (Ex. 1023, ¶¶7-8.) This is important because “a
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`search of the tags can be implemented in a number of ways regardless of how the
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`tags sources are arranged in relationship to one another.” (Id. ¶16.) For example,
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`nothing in the specification suggests that the applicants intended to exclude well-
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`known pre-fetching techniques dating back to the 1970s for speeding up searches,
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`in which data from multiple data sources could be gathered and collected into a
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`common cache or buffer in memory, which could later be searched instead of
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`searching the underlying data sources. (Id. ¶18.) In other words, even if “[t]hese
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`example ‘tag sources’ [in the specification] correspond to tags obtained ‘from’
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`separate ‘software applications’” (Response at 24), that would not require that the
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`tag sources used to populate the claimed tag list be separately searchable.
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`B. A Tag Source Need Not Be “Separately Searchable” To Be Distinct
`From Other Sources or Recognizable By the System
`Patent Owner argues that simply defining a “tag source” as a “collection of
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`tags” does not allow the system to distinguish one tag source from another.
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`(Response at 28-29.) But this argument speaks more to application of the claim
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`construction to the prior art than to the merits of the proposed construction itself. As
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`explained below, the prior art references cited in the instituted grounds plainly show
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`distinct and separate collections of tags. Patent Owner’s suggestion that importing
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`“separately searchable” is necessary to impose a separation between distinct tag
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`sources is without merit.
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`Patent Owner’s citation to Amazon.com, Inc. v. ZitoVault, LLC, 754 F. App’x
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`965 (Fed. Cir. 2018), is instructive on this point and actually supports Petitioner’s
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`proposed construction. The Federal Circuit addressed the construction of “sessions”
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`and addressed how to construe the term in a way that would allow one session to be
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`distinguished from another. This was achieved by simply construing “sessions” to
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`be “recognizable,” i.e., have a recognizable beginning and end. Id. at 970. The court
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`cited with approval the Board’s statement that this interpretation was “not limited to
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`any particular technique or protocol for recognizing the beginning and end of a
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`session,” and that “[a] wide variety of techniques for such beginning and ending
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`determinations are within the scope ... of ‘session.’” Id. at 970-71.
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`While the construction in ZitoVault did not impose any rigid or specific
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`requirements on how to separate and distinguish one session from another, Patent
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`Owner’s proposed construction here does just that by mandating an ambiguous
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`“separately searchable” requirement as the sole means of distinguishing tag sources.
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`But it is not necessary to import an unwarranted and unsupported “separately
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`searchable” requirement in order to distinguish one tag source from another. A
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`construction more consistent with ZitoVault would have been “a recognizable
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`collection or tags,” which Petitioner believes is already implicit in its proposed
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`construction, rather than Patent Owner’s narrow construction. As demonstrated
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`below, the prior art references make clear that they disclose distinct collections of
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`tags that are separately recognizable and identifiable by the system.
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`C.
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`Patent Owner’s Arguments About the Positions in the Underlying
`Litigation Are Not Relevant
`Patent Owner lifts a statement out of context from a heavily redacted portion
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`of a litigation brief filed by Petitioner to suggest that Petitioner has applied “tag
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`sources” differently from how it is applying the term here. But the issue in that brief
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`(and the underlying motion) was not the existence of “tag sources” in the accused
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`U.S. Patent No. 8,279,173
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`Facebook products or the meaning of “tag sources,” but whether the alleged “tag
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`type indicators” in the Facebook system were “indicative of a tag source.” The key
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`issue there was that the visual indicators Patent Owner relied upon in the accused
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`products had no relationship to the source of the tags in the accused tag list.
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`Petitioner did not advance any position on the meaning of “tag source” inconsistent
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`with this IPR.
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`But the same cannot be said of Patent Owner. In the litigation, Patent Owner
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`never argued that “tag sources” must be separately searchable. Its expert in the
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`litigation, in fact, testified that he simply adopted the “plain meaning,” which is “just
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`a source of tags.” (Ex. 1024, 110:9-19.)
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`III. GROUNDS 2-5:
` ZUCKERBERG DISCLOSES AND RENDERS
`OBVIOUS THE CLAIMED “TAG SOURCES” AND RENDERS THE
`CHALLENGED CLAIMS OBVIOUS IN COMBINATION WITH
`ROHMULLER AND PLOTKIN.
`A. Zuckerberg Discloses Distinct Tag Sources
`Patent Owner argues that Zuckerberg fails to disclose two separate “tag
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`sources” because the text list 544 and the friend lists 546 are part of a single tag
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`source – a list of previously used tags. (Response at 37-42.) But as explained in the
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`Petition, it would have been obvious that the collection of tags in the text list 544 is
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`separate from the collection of tags in the friends list 546. (Petition at 24-26.)3
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`Patent Owner relies heavily on the following statement in Zuckerberg: “In
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`some embodiments, the list of previously used tags includes a text list 544 and a
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`friends list 546.” (Zuckerberg, 8:56-58 (underlining added).) Patent Owner argues
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`that the “list of previously used tags” constitutes a single “tag source,” and as such,
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`the text list 544 and friends list 546 do not qualify as separate “tag sources” under
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`its proposed construction. To the extent Patent Owner’s arguments rely on the
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`position that the term “tag sources” requires separate searchability, those arguments
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`fail because its claim construction position is incorrect as explained above.
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`3 Instituted Ground 1 proposes single reference obviousness based on Zuckerberg
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`alone, under the theory that the “dividing line” in Figure 5 of Zuckerberg qualifies
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`as a “tag type indicator for each tag appearing in the tag list.” After the filing of the
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`Petition, Petitioner and the Patent Owner agreed in the underlying litigation that the
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`claims do require display of a separate tag type indicator for each tag, similar to the
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`conclusion reached in the Institution Decision. Accordingly, Petitioner is no longer
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`pursuing Ground 1 but maintains that Zuckerberg renders the challenged claims
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`obvious in view of Rothmuller (Grounds 2-3) and Plotkin (Grounds 4-5).
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`The more fundamental flaw with Patent Owner’s argument is that the very
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`sentence to which it points reveals two distinct tag sources – it makes plain that the
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`“list of previously used tags includes a text list 544 and a friends list 546.”
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`(Zuckerberg, 8:56-58 (underlining added).) Zuckerberg thus discloses that the “list
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`of previously used tags” includes at least two sub-lists. The items in the text list 544
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`and the items in the friends list 546 clearly represent two distinct tags collections –
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`friends list 546 contains a collection of contacts or contact addresses (8:62-66), and
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`text list 544 contains a collection of text strings (8:52-58). (Ex. 1023, ¶24.) These
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`two collections clearly cover different categories of information and can be readily
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`recognized and distinguished by the Zuckerberg system, as evidenced by the fact
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`that the user interface in Figure 5 visually displays “friends list” and “text list” in
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`two groups separated by a dividing line. (Id. (citing Zuckerberg, Fig. 5).)
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`The fact that Zuckerberg can recognize and distinguish “friends list” tags from
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`“text list” tags confirms the existence of two distinct collections of tags. (Id., ¶25.)
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`As mentioned above, nothing in the claim as properly construed imposes
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`requirements on how the tag sources must be physically arranged in computer
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`memory.
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`It simply does not matter for obviousness purposes how the Zuckerberg
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`system physically stores the friends list and text list tags in relationship to one
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`another, and the fact that Zuckerberg does not disclose those storage details is
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`irrelevant. (Id., ¶28.) To illustrate why, Dr. Chatterjee prepared the following two
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`diagrams that show the two extremes with respect to how the “list of previously used
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`tags” in Zuckerberg could be organized in memory:
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`(Ex. 1023, ¶¶26-27.) The conceptual diagram on the left shows the “list of
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`previously used tags” organized in memory as containing two discrete sub-lists, i.e.,
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`a “Text List” and “Friends List,” corresponding to the two lists shown in Figure 5 of
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`Zuckerberg. The diagram on the right shows the other end of the spectrum – a single
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`alphabetically-sorted list containing both friends list items (shown in red) and text
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`list items (shown in blue) interleaved together.
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`The figure on the left appears to represent an example of what Patent Owner
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`believes would satisfy its “separately searchable” limitation; because the two lists
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`are physically separated, the system could access and search the text list without
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`having to access or search the friends list, or vice versa. (Id., ¶26.) Although
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`Zuckerberg does not state that the “list of previously used tags” is physically
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`organized in memory in this way, it would have been an obvious implementation
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`flowing naturally from Zuckerberg’s teaching that the “list of previously used tags
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`includes a text list 544 and a friends list 546.” (Id., ¶26 (quoting Zuckerberg, 8:56-
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`58) (emphases added).) Storing the “text list” and the “friends list” as two sub-lists
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`would have eased implementation of the display in Figure 5 by obviating the need
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`to collate or sort tags from a single or flat list of tags. (Id.)
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`But this kind of separation between the two lists is not required for Zuckerberg
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`to disclose “tag sources” as properly construed. The
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`right half of the conceptual diagram above (and at
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`right), for example, shows text list and friends list
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`items interleaved among one another in a single list.
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`Even under this example, there are still two distinct
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`collections of tags – the collection of friends list
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`tags (i.e. Bob White and Brian Bathurst shown in red), and the collection of text list
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`tags (i.e. everything else as shown in blue). (Ex. 1023, ¶27.) These represent two
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`distinct collections of tags, regardless of the manner in which they are physically
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`stored. (Id.)
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`Thus, in the end, the storage and organization of the “list of previously used
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`tags” simply does not matter. Figure 5 of Zuckerberg confirms that the system can
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`readily recognize and distinguish tags corresponding to the “text list” from tags
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`corresponding to the “friends list” – and display each of them within one of two
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`distinct lists as shown in Figure 5. This is more than sufficient to confirm the
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`existence of two recognizable tag collections, and thus, distinct “tag sources.” (Ex.
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`1023, ¶¶27-28; Ex. 1002, ¶¶76-79.)
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`B.
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`Patent Owner’s Arguments Based on the Alleged Lack of Distinct
`“Tag Sources” In Rothmuller and Plotkin Are Not Relevant.
`Patent Owner goes on at length to explain, for Grounds 2-5, why it does not
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`believe Rothmuller or Plotkin disclose distinct “tag sources” under its proposed
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`construction. (Response at 42-53.) These arguments are irrelevant to Grounds 2-5,
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`which did not rely on Rothmuller or Plotkin for the claimed “tag sources.” Grounds
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`2-5 relied on Zuckerberg for the claimed “tag sources” and relied on Rothmuller and
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`Plotkin to account for a reading of the claim in which each tag in the claimed “tag
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`list” had to be visually displayed adjacent to its own separate “tag type indicator.”
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`(Petition at 38-39 (Rothmuller), 49 (Plotkin).)
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`Patent Owner’s arguments about the supposed lack of “tag sources” in
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`Rothmuller and Plotkin are thus not relevant to Grounds 2-5. This is because the
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`reasons a person of ordinary skill the art would have found it obvious to combine
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`Zuckerberg with Rothmuller or Plotkin have nothing to do with how the tag
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`categories in Rothmuller and Plotkin are stored. (Ex. 1023, ¶35.) The motivation to
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`combine was instead based on the clear user interface benefit in Rothmuller and
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`Plotkin of being able to visually distinguish each tag in the list based on its type, and
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`increased flexibility in the display of the tag list. (Petition at 43-45, 52-53; Ex. 1002,
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`¶¶98-104, 111-114.) Those benefits do not depend on how Rothmuller or Plotkin
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`stores or organizes tags. (Ex. 1023, ¶35.)
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`C.
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`Patent Owner’s Argument That the Proposed Combinations “Have
`No Benefit” Has No Support in the Record.
`Patent Owner further argues that the combination of Zuckerberg with
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`Rothmuller or Plotkin would have been “far from obvious” and would “have no
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`benefit” because, according to Patent Owner, the combination would result in
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`additional clutter and visual complexity. (Response at 58-60.) Petitioner disagrees.
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`Patent Owner does not adequately address the specific benefit articulated in
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`the Petition – that displaying a “tag type indicator” adjacent to each tag in the list (as
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`taught in Rothmuller and Plotkin) would have provided additional flexibility in how
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`the tag list of Zuckerberg can be organized for display. (Petition at 43-44; Ex. 1002,
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`¶¶102, 112.) “For example,” as Dr. Chatterjee explained in his opening declaration,
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`“tags of both types could be interspersed within the overall list, allowing the system
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`to present a single list of alphabetically-sorted tags, a list sorted based on their
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`predicted relevance to the user, and many other possibilities.” (Id., ¶102.) The
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`benefits of this flexibility would have been even more compelling as the number of
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`items in the tag list increases. (Ex. 1023, ¶37.) Patent Owner’s vague concerns over
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`visual clutter do not outweigh these clear benefits.
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`Second, Patent Owner cites to a “Facebook Design Principles” document
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`published in July 2009 (more than two years after the ’173 patent priority date) to
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`suggest that a person of ordinary skill in the art would have preferred a minimalist
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`design. (Response at 59 (quoting Ex. 2007).) But this document merely states broad
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`and general principles, such as using a clean and understated visual style. (Ex. 2007,
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`p.1.) The document makes no reference to photo tagging features or any other
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`specific Facebook feature. Nothing in it would have discouraged a skilled artisan
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`from adapting the Rothmuller and Plotkin tag type indicators to Zuckerberg,
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`particularly given the benefits discussed above. (Ex. 1023, ¶39.)
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`D. MacLaurin Provides A Proper Motivation To Combine.
`The present Petition (IPR2019-00516) cited MacLaurin solely to provide an
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`express motivation to combine with respect to Zuckerberg, Rothmuller, and Plotkin.
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`(Petition at 19, 42-43.) Patent Owner asserts that MacLaurin does not provide a
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`motivation to combine because, according to Patent Owner, the statements from
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`MacLaurin cited in the Petition do not pertain to a process for tagging items in the
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`first instance, but for reviewing previously-tagged items.4 (Response at 61-69.)
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`But these arguments would not render the challenged claims non-obvious
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`even if they had merit (which they do not as discussed below). The Petition here did
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`not cite MacLaurin to supply any claim limitations, but only to provide a further
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`express motivation in addition to the other identified motivations articulated in the
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`Petition. (Petition at 42-45.) The benefits of being able to visually distinguish tags
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`based on their type, and the increased flexibility in the display of the tag list, would
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`have been appreciated by a person of ordinary skill in the art even without the
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`disclosures of MacLaurin. (Id.; see also Ex. 1023, ¶41.) Removing MacLaurin from
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`the combination, therefore, would not erase the motivations to combine that would
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`continue to exist even without it. (Id.)
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`This is because in the context of the present petition, MacLaurin provides the
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`more general teaching of being able to easily visually distinguish one type of tag
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`4 Most of Patent Owner’s analysis on MacLaurin appears to have been cut-and-
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`pasted directly from its response in IPR2019-00528, in which MacLaurin was cited
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`as a primary reference for all grounds. Although those arguments are meritless for
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`the reasons Petitioner has provided here and in IPR2019-00528, as explained in the
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`text, they are not relevant considering the much more limited purpose for which
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`MacLaurin is cited in instituted Grounds 2-5 here.
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`from another. (Petition at 42-43 (quoting MacLaurin, 8:19-23, 7:48-51); Ex. 1002,
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`¶100.) A person of ordinary skill in the art would have found this motivation
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`compelling to any situation in which tags were displayed to the user, including
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`allowing users to select tags for items. (Ex. 1023, ¶43.) As explained in the Petition,
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`“the advantages of using tag type indicators in a tag list (e.g., the ability to quickly
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`distinguish tags based on their tag type) are applicable to a broad range of user
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`interfaces.” (Petition at 53; Ex. 1002, ¶114 (“[T]he advantages of using tag type
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`indicators in a tag list… including the ability to quickly distinguish tags based on
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`their tag type, are not limited to any particular context.”).) In other words, even if
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`the cited passages in MacLaurin pertained only to reviewing previously-tagged items
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`(as opposed to tagging items in the first instance), the reference still provides a
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`proper motivation because it confirms the general desirability of providing a separate
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`type indicator for each displayed tag – in any context.
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`Finally, Patent Owner’s argument that the cited passages in MacLaurin pertain
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`only to reviewing previously-tagged items, and not tagging items in the first
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`instance, is incorrect and based on a misreading of MacLaurin. (Ex. 1023, ¶¶44-47.)
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`For example, MacLaurin explains that “if an automated tag and an explicit tag (one
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`entered by a user) are both presented to the user, each type of tag can be distinguished
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`utilizing different sizes, fonts, colors, and/or symbols and the like.” (MacLaurin,
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`8:19-23.) This disclosure appears within an extended discussion of the “light”
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