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`IPR2019-00516 & IPR2019-00528
`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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`PETITIONERS’ SUR-REPLY TO PATENT OWNER’S
`CONDITIONAL MOTION TO AMEND UNDER 37 C.F.R. § 42.1211
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`1 An identical sur-reply is filed in IPR2019-00528.
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`Table of Contents
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`Page
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`I.
`II.
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`Introduction ..................................................................................................... 1
`Patent Owner’s Reply Merely Repeats Arguments Related to Original
`Claim Limitations ........................................................................................... 2
`III. The ’173 Patent’s Happenstance Disclosure of Interspersed Tags in
`Figure 4B Supports the Board’s Preliminary Observation that the
`Substitute Claims are Not Patentable ............................................................. 4
`IV. Conclusion ...................................................................................................... 5
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`-i-
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`I.
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`IPR2019-00516 & IPR2019-00528
`U.S. Patent No. 8,279,173
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`INTRODUCTION
`The Board’s comprehensive Preliminary Guidance2 correctly found that
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`Patent Owner’s proposed substitute claims would be unpatentable. Patent Owner’s
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`Reply3,4 offers no new analysis or evidence to challenge any aspect of the Board’s
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`guidance. Patent Owner offers no expert testimony with its Reply, thus leaving Dr.
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`Chatterjee’s testimony unrebutted.
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` In fact, Patent Owner offers no argument to refute Petitioners’ arguments and
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`the Board’s preliminary findings as to two of the three features introduced by the
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`proposed substituted claims: (1) display of a photograph and user selection of a
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`subject or object in the photograph, and (2) associating at least one of the tags in the
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`tag list with the selected subject or object. Petitioners explained how those features
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`were readily disclosed in Zuckerberg, and further explained the rationale and
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`motivation to combine those features with the other prior art of record. (Pet. Resp.
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`at 2-4, 16-19 (Grounds 6-7 of IPR2019-00516), 19-22 (Grounds 3-6 in IPR2019-
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`2 Paper 25, IPR2019-00516; Paper 26, IPR2019-00528.
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`3 Other than references to the case numbers, Patent Owner’s replies in IPR2019-
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`00516 and IPR2019-00528 are identical.
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`4 Patent Owner did not propose any revised substitute claims following issuance of
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`the Board’s guidance.
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`1
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`IPR2019-00516 & IPR2019-00528
`U.S. Patent No. 8,279,173
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`00528).) Patent Owner makes no attempt to defend these features.
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`Patent Owner instead focuses its Reply on the most inconsequential of the
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`new features in the proposed substituted claims – the display of a “vertical” tag list
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`showing at least three tags from two tags sources in a particular arrangement. But
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`even with respect to this limitation, Patent Owner merely repeats the arguments from
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`its Patent Owner Response regarding the existing claim limitations. Petitioners have
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`explained at length how the prior art discloses and renders obvious both the existing
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`and proposed substitute claims. Patent Owner’s motion to amend should be denied.
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`II.
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`PATENT OWNER’S REPLY MERELY REPEATS ARGUMENTS
`RELATED TO ORIGINAL CLAIM LIMITATIONS
`Patent Owner does not dispute that the prior art discloses a “vertical” tag list
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`and that such a list would have been obvious. (Pet. Resp., e.g., at 5-12 (Rothmuller
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`and Plotkin), 15 (Zuckerberg).) Patent Owner’s Reply instead repeats its argument
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`about the prior art allegedly failing to disclose distinct “tag sources,” recycling the
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`argument it made for the original claims. (PO Reply at 7 (“The proposed substitute
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`claims thus further highlight the novelty and non-obviousness of the ’173 patent’s
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`‘tag type indicator…indicative of a tag source.’”) (emphasis added).) These
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`arguments make little sense in the context of Patent Owner’s contingent motion to
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`amend because those arguments would only be considered if the existing claims are
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`found unpatentable. But if the existing claims were found unpatentable, the Board
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`would have necessarily rejected Patent Owner’s distinct “tag source” argument.
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`2
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`IPR2019-00516 & IPR2019-00528
`U.S. Patent No. 8,279,173
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`That argument has no greater applicability with respect to the proposed substitute
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`claims than it does with the original challenged claims.
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`Patent Owner also makes the irrelevant argument that Zuckerberg alone does
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`not disclose interspersing of tags from different tag sources.5 Petitioners did not rely
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`on Zuckerberg alone for that feature, but rather, explained that the feature would
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`have been obvious in view of Rothmuller and Plotkin. (Pet. Resp. at 15 (“…doing
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`so would have provided the benefit of a more flexibly-organized tag list, where tags
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`could be displayed in any order, without the constraints of a separate list for each
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`type.”).) Patent Owner’s attack on Zuckerberg individually is of no moment. See
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`Bradium Techs. LLC v. Iancu, 923 F.3d 1032, 1050 (Fed. Cir. 2019) (“A finding of
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`obviousness...cannot be overcome ‘by attacking references individually where the
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`rejection is based upon the teachings of a combination of references.’”).
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`With respect Rothmuller and Plotkin, Patent Owner merely repeats its
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`argument that neither discloses multiple tag sources (PO Reply at 7), the same
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`argument that Petitioner already addressed in connection with the original claims.
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`5 Patent Owner also spends two pages irrelevantly arguing that Zuckerberg’s
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`“horizontal” line is not a tag type indicator. (PO Reply at 4-5.) As explained in
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`Petitioners’ Reply, Petitioners no longer contend that Zuckerberg’s horizontal line
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`qualifies as a tag type indicator. (Pet. Reply (IPR2019-00516) at 11 n.3.)
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`3
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`IPR2019-00516 & IPR2019-00528
`U.S. Patent No. 8,279,173
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`(E.g., Pet. Reply (IPR2019-00516) at 21-24; Pet. Reply (IPR2019-00528) at 21-23.)
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`In fact, Petitioners explained that, even if it were found that Rothmuller and Plotkin
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`do not disclose multiple tag sources, a vertical tag list with interspersed tags still
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`would have been obvious over Zuckerberg based on Zuckerberg’s own disclosure of
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`tag sources in combination with Rothmuller and Plotkin. (Pet. Resp. at 15-16.)
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`As for MacLaurin, Patent Owner only repeats its argument from its Patent
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`Owner Response that MacLaurin does not disclose a list of tags or visually
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`distinguishing tags (PO Reply at 5-6), which Petitioner already addressed in detail
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`in its Reply. (Pet. Reply (IPR2019-00528) at 11-20 (visually distinguishing tags),
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`23 (list of tags).) Like the combinations based on Zuckerberg, even if it were found
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`that Rothmuller and Plotkin do not disclose multiple tag sources, a vertical tag list
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`with interspersed tags still would have been obvious based MacLaurin’s tag sources
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`in combination with Rothmuller and Plotkin. (E.g., Pet. Resp. at 21-22.) In sum, a
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`vertical tag list in which a tag from one tag source is displayed between tags from a
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`second tag source provides no patentable distinction over the prior art.
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`III. THE
`’173 PATENT’S HAPPENSTANCE DISCLOSURE OF
`INTERSPERSED TAGS IN FIGURE 4B SUPPORTS THE BOARD’S
`PRELIMINARY OBSERVATION THAT THE SUBSTITUTE CLAIMS
`ARE NOT PATENTABLE
`To help show that interspersing tags in a vertical tag list is not patentable,
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`Petitioners pointed out that Patent Owner’s sole written description support is the
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`fortuity that Figure 4B of the patent shows a vertical tag list that happens to include
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`4
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`IPR2019-00516 & IPR2019-00528
`U.S. Patent No. 8,279,173
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`three interspersed tags. (Pet. Resp. at 5.) In other words, nothing in the patent
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`suggests that the applicants believed that interspersing tags was novel or significant
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`in any way to the alleged invention. (Pet. Resp. at 5.) The Board’s Preliminary
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`Guidance agreed, finding that the patent’s nominal disclosure of interspersing tags
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`in a vertical list shows that it is no more than a predictable variation of arrangements
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`of data in a list. (Preliminary Guidance at 9.)
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`Patent Owner responds that the ’173 patent has adequate written description
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`support for interspersing tags in a vertical tag list (PO Reply at 8-9)—but Patent
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`Owner’s argument misses the point. Patent Owner’s Reply does not identify
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`anything in the specification suggesting that the applicants regarded this
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`arrangement as an inventive feature that contributed to patentability. Instead, as
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`explained, the apparently happenstance disclosure of Figure 4B supports the Board’s
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`observation that interspersing tags does not provide a nonobvious distinction over
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`the prior art of record.
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`IV. CONCLUSION
`The Board should deny Patent Owner’s motion to amend.
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`IPR2019-00516 & IPR2019-00528
`U.S. Patent No. 8,279,173
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`Dated: April 13, 2020
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`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
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`Respectfully submitted,
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`By:
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`/Heidi L. Keefe/
`Heidi L. Keefe
`Reg. No. 40,673
`Counsel for Petitioners
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`6
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`IPR2019-00516 & IPR2019-00528
`U.S. Patent No. 8,279,173
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`CERTIFICATE OF SERVICE
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`I hereby certify, pursuant to 37 C.F.R. Section 42.6, that a complete copy of
`the attached PETITIONERS’ SUR-REPLY TO PATENT OWNER’S
`CONDITIONAL MOTION TO AMEND UNDER 37 C.F.R. § 42.121 and
`related documents, are being served via electronic mail on the 13th day of April,
`2020, upon the Patent Owner’s attorneys of record in this proceeding as follows:
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`/ Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
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`James M. Glass
`Ogi Zivojnovic
`Sam Stake
`John McKee
`QUINN EMANUEL
`qe-blackberry-ipr@quinnemanuel.com
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`DATED: April 13, 2020
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`COOLEY LLP
`ATTN: Patent Docketing
`1299 Pennsylvania Ave. NW, Suite 700
`Washington, D.C. 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
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