`
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`FACEBOOK, INC., INSTAGRAM, LLC, and WHATSAPP INC.,
`Petitioners
`
`v.
`
`BLACKBERRY LIMITED
`Patent Owner
`
`
`
`Case IPR2019-00528
`U.S. Patent No. 8,279,173 B2
`
`
`PETITIONER REPLY
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Table of Contents
`
`
`Page
`
`
`I.
`II.
`
`C.
`
`C.
`
`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 ............ 9
`Patent Owner’s Arguments About the Positions in the
`Underlying Litigation Are Not Relevant ............................................ 10
`III. MACLAURIN DISCLOSES THE DISPLAY OF TAGS
`“UTILIZING DIFFERENT SIZES, FONTS, COLORS, AND/OR
`THE LIKE” IN THE CONTEXT OF TAGGING ITEMS .......................... 11
`A. MacLaurin’s Tag Display Disclosures Pertain to Tagging Items ...... 11
`B.
`Even if MacLaurin’s Tag Display Disclosures Pertained Only
`to “Recall” Mode and Not Tagging, the Challenged Claims
`Would Still Have Been Obvious to a Person of Ordinary Skill
`in the Art. ............................................................................................ 17
`It Is Undisputed That MacLaurin Discloses the Existence of
`Multiple Separate “Tag Sources” ....................................................... 19
`IV. PATENT OWNER’S CHALLENGE TO THE COMBINATION OF
`MACLAURIN WITH ROTHMULLER AND PLOTKIN FAILS
`BECAUSE IT IMPROPERLY ATTEMPTS TO ATTACK THE
`REFERENCES INDIVIDUALLY. .............................................................. 20
`V. MACLAURIN DISCLOSES AND RENDERS OBVIOUS THE
`DISPLAY OF A “TAG LIST” ..................................................................... 23
`VI. CONCLUSION ............................................................................................. 24
`
`
`
`
`
`-i-
`
`
`
`
`
`
`
`I.
`
`
`
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`INTRODUCTION
`Patent Owner relies almost entirely on a narrow construction of “tag sources”
`
`that lacks support in the intrinsic record and violates well-established principles of
`
`claim construction. The prior art discloses separate “tag sources,” as properly
`
`construed, and renders the claims obvious under § 103.
`
`Patent Owner’s proposed construction would not provide a basis to
`
`distinguish MacLaurin even if the Board were to adopt it. As the Petition fully
`
`explained, MacLaurin discloses at least two different categories of tag sources that
`
`render obvious the “tag sources” recited in the challenged claims – (1) “automatic”
`
`and “explicit” tags, and (2) “external tag sources” such as an attorney tag set obtained
`
`from the Internet and a medical profession tag set obtained from an on-line service.
`
`(Petition at 31-34.) Patent Owner focuses its arguments about “tag sources” on the
`
`automatic/explicit tags in MacLaurin, but nowhere disputes that the “external tag
`
`sources” in MacLaurin disclose discrete “tag sources,” even under its unduly narrow
`
`construction. Because Patent Owner has not provided a persuasive explanation as
`
`to how the challenged claims are non-obvious, the Board should find those claims
`
`unpatentable based on the instituted grounds.
`
`II. CLAIM CONSTRUCTION OF “TAG SOURCES”
`Patent Owner argues that “tag sources” should be construed as a “separately
`
`searchable collections of tags.” Petitioner agrees that a “tag source” refers to a
`
`
`
`
`
`1
`
`
`
`
`
`
`
`
`
`
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`“collection of tags,” but the construction should stop there.1 As noted, this
`
`construction would not distinguish MacLaurin even if adopted. Nevertheless, as
`
`explained at length below, the Board should reject this construction because it lacks
`
`support in the intrinsic record.
`
`One immediate problem with Patent Owner’s proposal is its ambiguity – it is
`
`not clear how to determine whether an accused system or prior art reference meets
`
`the “separately searchable” requirement. Patent Owner’s arguments might be read
`
`to suggest that “separately searchable” requires that tag sources be physically stored
`
`separately from each other in computer memory. But Patent Owner has definitively
`
`walked away from that position. Its Patent Owner Response agrees with Petitioner’s
`
`expert that “a ‘tag source’ may encompass a collection of tags held together ‘from a
`
`logical perspective.’” (Response at 47 n.11; id. (“BlackBerry does not dispute that
`
`perspective, and submits that this potential ‘logical’ grouping is captured by
`
`BlackBerry’s proposed construction of ‘separately searchable collections of
`
`
`1 Although the Petition did not provide an express construction of “tag source,” it
`
`described the term as referring to a source of predefined tags. (Petition at 9.)
`
`Petitioner does not perceive a material difference between that formulation and
`
`simply a “collection of tags,” which comes closer to the language of Patent Owner’s
`
`proposal and therefore helps to narrow and crystalizes the dispute.
`
`
`
`
`
`2
`
`
`
`
`
`
`
`
`
`
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`tags.”).)2 Patent Owner’s expert similarly acknowledged that the claimed “tag
`
`sources” need not be stored in any particular physical location. (Ex. 1021, 165:23-
`
`166:2.) This is also consistent with Patent Owner’s position in the underlying
`
`litigation in which it told the district court that “[t]here is no basis for requiring that
`
`different ‘sources’ require different storage structures.” (Ex. 1022 at 019.)
`
`So if a “separately searchable collection of tags” need not be physically
`
`separated from other collections, what does Patent Owner’s construction actually
`
`require? To the best Petitioner can tell, a “separately searchable” tag source is one
`
`that is capable of being searched without having to search another tag source,
`
`although the proposed construction is unclear as to how this characteristic is to be
`
`achieved, or how its presence or absence in the prior art can be determined. (Ex.
`
`1023, ¶8 n.1.) In any event, there is no basis in the intrinsic record for any
`
`“separately searchable” restriction.
`
`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
`
`construction. But the Federal Circuit has long held that “[t]he claims, not
`
`
`2 As Patent Owner’s expert explained, a “logical collection” of data “can be thought
`
`of together,” but is “not necessarily physically together,” for example, “the data
`
`might be all over the place.” (Ex. 1021, 71:12-73:10.)
`
`
`
`
`
`3
`
`
`
`
`
`
`
`
`
`
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`specification embodiments, define the scope of patent protection. The patentee is
`
`entitled to the full scope of his claims, and we will not limit him to his preferred
`
`embodiment or import a limitation from the specification into the claims.” Kara
`
`Tech., Inc. v. Stamps.com, Inc., 582 F.3d 1341, 1348 (Fed. Cir. 2009) (citing Phillips
`
`v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc)); see also Hill-Rom
`
`Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014) (“While we read
`
`claims in view of the specification, of which they are a part, we do not read
`
`limitations from the embodiments in the specification into the claims.”).
`
`Patent Owner does not identify any basis for departing from these well-
`
`established principles. Patent Owner does not, for example, argue that the applicants
`
`acted as their own lexicographer by providing an express definition of “tag sources”
`
`in the specification. Patent Owner does not identify any clear and unmistakable
`
`disclaimer or disavowal in the specification relating to “tag sources.” And Patent
`
`Owner does not identify anything in the specification suggesting that separate
`
`searchability was integral to the invention or touting it as an advancement over the
`
`prior art. Patent Owner’s argument thus asks the Board to commit “one of the
`
`cardinal sins of patent law,” Phillips, 415 F.3d at 1320, by importing a “separately
`
`searchable” requirement with no legal justification.
`
`But to argue that the “separately searchable” construction attempts to “read
`
`limitations from the embodiments in the specification into the claims,” Hill-Rom
`
`
`
`
`
`4
`
`
`
`
`
`
`
`
`
`
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`Services, 755 F.3d at 1371, arguably gives too much credit to Patent Owner’s
`
`argument. Patent Owner does not identify a single embodiment in the specification
`
`where tag sources are actually described as separately searchable. Patent Owner has
`
`at best inferred this technical characteristic from the specification’s vague and high-
`
`level descriptions of exemplary tag sources – which the specification repeatedly
`
`makes clear are non-limiting examples. (Ex. 1023, ¶¶6-7, 9-11.)
`
`And the inference that Patent Owner attempts to draw from the specification
`
`is at best tenuous. Nothing in the specification describes how any search of the tag
`
`sources is carried out, let alone suggests that the tag sources must be capable of being
`
`searched separately from one another. The specification devotes a single sentence
`
`to the actual search of tag sources that merely states that the photo tag selection
`
`module 148B “may be configured to search one or more selected ‘tag sources’ for
`
`tags that match the currently entered text” (’173, 5:39-42), with no details about how
`
`a search of selected tag sources must be carried out. A person of ordinary skill in
`
`the art would have understood that there are numerous ways to implement the
`
`“search[ing] one or more selected ‘tag sources’ for tags that match the currently
`
`entered text” (id.) that would not require that each tag source be separately
`
`searchable. Nothing in the specification, for example, excludes a system in which a
`
`search of tag sources is accomplished through a single search operation that extends
`
`across all tag sources. (Ex. 1023, ¶¶8, 17.) As explained, Patent Owner does not
`
`
`
`
`
`5
`
`
`
`
`
`
`
`
`
`
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`contend that “separately searchable” requires that tag sources be physically stored
`
`separately from one another.
`
`Patent Owner accordingly cannot rely on anything in the specification actually
`
`relating to search features to support its construction. It instead points to the
`
`description of exemplary tag sources themselves, stating that “every example ‘tag
`
`source’ in the ’173 patent specification is consistent with separately searchable
`
`collections of tags.” (Response at 23.) This is because, according to Patent Owner,
`
`“[t]hese example ‘tag sources’ correspond to tags obtained ‘from’ separate ‘software
`
`applications.’” (Id.) But even if this was clearly true (and it is not as discussed
`
`below), the Federal Circuit has expressly rejected the argument that “if a patent
`
`describes only a single embodiment, the claims of the patent must be construed as
`
`being limited to that embodiment.” Hill-Rom Servs., 755 F.3d at 1371; see also
`
`Continental Circuits LLC v. Intel Corp., 915 F.3d 788 (Fed. Cir. 2019) (“Even when
`
`the specification describes only a single embodiment, the claims of the patent will
`
`not be read restrictively unless the patentee has demonstrated a clear intention to
`
`limit the claim scope using ‘words or expressions of manifest exclusion or
`
`restriction.’”) (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906
`
`(Fed. Cir. 2004)). The ’173 patent specification consistently refers to the described
`
`tag sources as merely exemplary. (’173, e.g., 5:42-47 (“As shown by way of
`
`illustration in screen 400B of FIG. 4B, these tag sources could include, for example,
`
`
`
`
`
`6
`
`
`
`
`
`
`
`
`
`
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`a list of friends from an online service like Facebook™….”), 6:6-13 (“Significantly,
`
`as the matching tag list 412 includes possible tags that may be used from various
`
`selected tag sources (such as the user’s Facebook friends….”) (underlining added).)
`
`Even Patent Owner’s expert consistently refers to the tag sources identified in the
`
`’173 specification as “exemplary.” (Ex. 2001, ¶87 (“[E]very exemplary ‘tag source’
`
`in the ’173 patent specification is consistent with separately searchable collections
`
`of tags.”), ¶88 (“These exemplary ‘tag sources’ correspond to tags obtained ‘from’
`
`separate ‘software applications.’”); Ex. 1021, 148:8-150:15.)
`
`But even if one could overlook the admittedly exemplary nature of the tag
`
`sources in the ’173 patent specification, the patent simply does not provide enough
`
`information to determine with any confidence how tag sources are stored in
`
`relationship to one other, or whether they come from separate software applications.
`
`(Ex. 1023, ¶¶12-15.) For example, Patent Owner suggests that a particular
`
`exemplary tag source – “a list of friends from an online service like Facebook™” –
`
`is separate from other tag sources because it corresponds to a remote database
`
`accessible over a network. (Response at 24-25 (citing Ex. 2001, ¶88).) But at his
`
`deposition, Patent Owner’s expert acknowledged that the list of Facebook friends
`
`could be also stored on locally on the user’s device. (Ex. 1021, 150:16-151:21.)
`
`Similarly, Patent Owner implies that the “list of contacts from the user’s address
`
`book 142” is stored locally on the user’s device. (Response at 23-24.) But Patent
`
`
`
`
`
`7
`
`
`
`
`
`
`
`
`
`
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`Owner’s expert admitted that the address book could have been replicated from
`
`something “stored in the cloud.” (Ex. 1021, 152:2-9.) The dearth of detail about the
`
`organization of tag sources strongly suggests that these details were simply not
`
`relevant to the invention. (Ex. 1023, ¶¶8, 15.)
`
`And even putting aside the ambiguities in the specification with respect to
`
`how tag sources are organized in relationship to one another, the specification
`
`contains no description about how data from the tag sources is accessed, identified,
`
`or retrieved to perform any search. (Ex. 1023, ¶¶7-8.) This is important because “a
`
`search of the tags can be implemented in a number of ways regardless of how the
`
`tags sources are arranged in relationship to one another.” (Id. ¶16.) For example,
`
`nothing in the specification suggests that the applicants intended to exclude well-
`
`known pre-fetching techniques dating back to the 1970s for speeding up searches,
`
`in which data from multiple data sources could be gathered and collected into a
`
`common cache or buffer in memory, which could later be searched instead of
`
`searching the underlying data sources. (Id. ¶18.) In other words, even if “[t]hese
`
`example ‘tag sources’ [in the specification] correspond to tags obtained ‘from’
`
`separate ‘software applications’” (Response at 23), that would not require that the
`
`tag sources used to populate the claimed tag list be separately searchable.
`
`
`
`
`
`8
`
`
`
`
`
`
`
`
`
`IPR2019-00528
`
`U.S. Patent No. 8,279,173
`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
`
`tags” does not allow the system to distinguish one tag source from another.
`
`(Response at 26-28.) But this argument speaks more to application of the claim
`
`construction to the prior art than to the merits of the proposed construction itself. As
`
`explained below, the prior art references cited in the instituted grounds plainly show
`
`distinct and separate collections of tags. Patent Owner’s suggestion that importing
`
`“separately searchable” is necessary to impose a separation between distinct tag
`
`sources is without merit.
`
`Patent Owner’s citation to Amazon.com, Inc. v. ZitoVault, LLC, 754 F. App’x
`
`965 (Fed. Cir. 2018), is instructive on this point and actually supports Petitioner’s
`
`proposed construction. The Federal Circuit addressed the construction of “sessions”
`
`and addressed how to construe the term in a way that would allow one session to be
`
`distinguished from another. This was achieved by simply construing “sessions” to
`
`be “recognizable,” i.e., have a recognizable beginning and end. Id. at 970. The court
`
`cited with approval the Board’s statement that this interpretation was “not limited to
`
`any particular technique or protocol for recognizing the beginning and end of a
`
`session,” and that “[a] wide variety of techniques for such beginning and ending
`
`determinations are within the scope ... of ‘session.’” Id. at 970-71.
`
`
`
`
`
`9
`
`
`
`
`
`
`
`
`
`
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`While the construction in ZitoVault did not impose any rigid or specific
`
`requirements on how to separate and distinguish one session from another, Patent
`
`Owner’s proposed construction here does just that by mandating an ambiguous
`
`“separately searchable” requirement as the sole means of distinguishing tag sources.
`
`But it is not necessary to import an unwarranted and unsupported “separately
`
`searchable” requirement in order to distinguish one tag source from another. A
`
`construction more consistent with ZitoVault would have been “a recognizable
`
`collection or tags,” which Petitioner believes is already implicit in its proposed
`
`construction, rather than Patent Owner’s narrow construction. As demonstrated
`
`below, the prior art references make clear that they disclose distinct collections of
`
`tags that are separately recognizable and identifiable by the system.
`
`C.
`
`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
`
`of a litigation brief filed by Petitioner to suggest that Petitioner has applied “tag
`
`sources” differently from how it is applying the term here. But the issue in that brief
`
`(and the underlying motion) was not the existence of “tag sources” in the accused
`
`Facebook products or the meaning of “tag sources,” but whether the alleged “tag
`
`type indicators” in the Facebook system were “indicative of a tag source.” The key
`
`issue there was that the visual indicators Patent Owner relied upon in the accused
`
`products had no relationship to the source of the tags in the accused tag list.
`
`10
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`Petitioner did not advance any position on the meaning of “tag source” inconsistent
`
`with this IPR.
`
`But the same cannot be said of Patent Owner. In the litigation, Patent Owner
`
`never argued that “tag sources” must be separately searchable. Its expert in the
`
`litigation, in fact, testified that he simply adopted the “plain meaning,” which is “just
`
`a source of tags.” (Ex. 1024, 110:9-19.)
`
`III. MACLAURIN DISCLOSES THE DISPLAY OF TAGS “UTILIZING
`DIFFERENT SIZES, FONTS, COLORS, AND/OR THE LIKE” IN THE
`CONTEXT OF TAGGING ITEMS
`A. MacLaurin’s Tag Display Disclosures Pertain to Tagging Items
`MacLaurin explains that “if an automated tag and an explicit tag (one entered
`
`by a user) are both presented to the user, each type of tag can be distinguished
`
`utilizing different sizes, fonts, colors, and/or symbols and the like.” (MacLaurin,
`
`8:19-23 (cited in Petition at 36) (underlining added).) Patent Owner argues that this
`
`disclosure does not refer to the process of tagging items, but rather, to a “recall”
`
`feature for selecting from a list of previously-tagged items. (Response at 35-41.)
`
`Patent Owner’s arguments cannot be reconciled with the context in which the
`
`ability to displays tags “utilizing different sizes, fonts, colors, and/or symbols and
`
`the like” (MacLaurin, 8:19-23) appears in MacLaurin. That surrounding context
`
`confirms that MacLaurin’s disclosures at 8:19-23 relate to the tagging mode.
`
`(MacLaurin, 7:66-8:18.) For the convenience of the Board, Petitioner has provided
`
`
`
`
`
`11
`
`
`
`
`
`
`
`
`
`
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`a block-quotation below of the surrounding passages in MacLaurin, highlighting the
`
`statement at 8:19-23 in bold underlining. As the context confirms, MacLaurin’s
`
`statement about the ability to display tags “utilizing different sizes, fonts, colors,
`
`and/or symbols and the like” (MacLaurin, 8:19-23) was made in reference to
`
`MacLaurin’s tagging features, not the so-called “recall” features:
`
`As an example user interface, given a display of items,
`such as the list of files presented in a desktop file window,
`if the user has selected one or more items utilizing the user
`interface and begins to type, a light ‘tagging mode’ can be
`entered with the following characteristics:
`display a special icon and/or text message indicating that
`tagging is active
`accumulate each key a user types into a "tag buffer”
`use this tag buffer to guess at likely tags
`display the current “best guess” tag in a textual readout
`associated with the window
`allow a user to choose between “tag guesses” using cursor
`arrows
`allow a user to choose whether to accept guesses or simply
`use the buffer as is
`if a user hits the escape key (or similar), exit tagging mode
`if the user hits the enter/return key (or similar), apply the
`items to the tag
`In addition, if an automated tag and an explicit tag (one
`entered by a user) are both presented to the user, each
`type of tag can be distinguished utilizing different sizes,
`fonts, colors, and/or symbols and the like. The above
`user
`interface characteristics are meant
`to be a
`12
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`representative process and one skilled in the art can
`appreciate that many variations are possible and are still
`within the scope of the disclosed subject matter herein. In
`general, once the tags are applied to the selected items,
`they are automatically utilized by the system to organize
`and retrieve content.
`Additional examples of user interfaces are shown in FIGS.
`4-8 and facilitate to illustrate the ease at which a user can
`tag selected items.
`(MacLaurin, 7:66-8:29 (emphasis added).) As shown, the disclosure shown in
`
`underlining and bold above is sandwiched directly between disclosures plainly
`
`relating to the process of tagging items under the “light” tagging mode – not the so-
`
`called “recall” mode as Patent Owner suggests.
`
`More specifically, the block-quoted passage above begins by explaining that
`
`“if the user has selected one or more items utilizing the user interface and begins to
`
`type, a light tagging mode can be entered,” whose “characteristics” are then listed.
`
`(MacLaurin, 7:67-8:18.) Immediately after the list of characteristics comes the key
`
`sentence saying that “if an automated tag and an explicit tag (one entered by a user)
`
`are both presented to the user, each type of tag can be distinguished utilizing different
`
`sizes, fonts, colors, and/or symbols and the like.” (MacLaurin, 8:19-23.) The
`
`sentence that immediately follows then explains that “[t]he above user interface
`
`characteristics are meant to be a representative process” (MacLaurin, 8:23-24),
`
`clearly referring back to the earlier statement introducing “a light ‘tagging mode’
`
`[that] can be entered with the following characteristics…” (MacLaurin, 8:2-3
`
`
`
`
`13
`
`
`
`
`
`
`
`
`
`
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`(emphasis added).) And the next sentence right after that ends the paragraph by
`
`stating that “once tags are applied to the selected items, they are automatically
`
`utilized by the system to organize and retrieve content” (MacLaurin, 8:27-29),
`
`plainly referring back the earlier statement that “if the user has selected one or more
`
`items utilizing the user interface and begins to type, a light tagging mode can be
`
`entered…” (MacLaurin, 7:67-8:3.) Accordingly, the statement about displaying
`
`tags “utilizing different sizes, fonts, colors, and/or symbols and the like”
`
`(MacLaurin, 8:19-23), is tightly sandwiched between disclosures plainly relating the
`
`“light” tagging mode of MacLaurin.3 It would be anomalous to read the statement
`
`about “utilizing different sizes, fonts, colors, and/or symbols and the like”
`
`(MacLaurin, 8:19-23), as relating to an entirely different subject than all of the
`
`statements around it, as Patent Owner suggests. (Ex. 1023, ¶23.)
`
`Patent Owner next attempts to diminish the importance of this key disclosure
`
`about displaying tags “utilizing different sizes, fonts, colors, and/or symbols and the
`
`like” (MacLaurin, 8:19-23) by arguing
`
`that “MacLaurin never displays
`
`
`3 And as shown at the end of the block quote above, MacLaurin then continues its
`
`discussion of tagging features by stating that “[a]dditional examples of user
`
`interfaces are shown in FIGS. 4-8 and facilitate to illustrate the ease at which a user
`
`can tag selected items.” (MacLaurin, 8:30-32 (underlining added).)
`
`
`
`
`
`14
`
`
`
`
`
`
`
`
`
`
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`automated/automatic tags in its tagging mode.” (Response at 36 (emphasis in
`
`original).) But Patent Owner points to nothing in MacLaurin suggesting this is the
`
`case. It argues that with “automatic item tagging,” tags are “automatically associated
`
`with selected items without further action.” (Id. (quoting MacLaurin, e.g.,
`
`Abstract).) But this argument only addresses the process of automatic tag
`
`assignment, which has nothing to do with whether a previously-assigned
`
`“automatic” tag can later appear as a tag suggestion to a user when tagging items.
`
`And nothing in MacLaurin suggests that it cannot. MacLaurin states that
`
`“[t]he selection-based tagging component 102 can also provide tag suggestions” that
`
`include “a tag associated with a similar item, a recently utilized tag,” and “a
`
`commonly used tag,” among others. (MacLaurin, 4:48-53 (underlining added); see
`
`also id., 5:19-24, 7:17-2.) A person of ordinary skill in the art would have
`
`appreciated that a “recently utilized tag,” a “commonly used tag,” and/or a “tag
`
`associated with a similar items” (MacLaurin, 4:48-53) – any one of which can
`
`appear as a tag suggestion (id.) – could be an automatic tag. (Ex. 1023, ¶¶24-25.)
`
`For example, if the system previously assigned an automatic tag to an item, that tag
`
`could be a “recently utilized tag” (if automatically assigned recently), a “commonly
`
`used tag” or “tag associated with similar items” (if automatically assigned to a
`
`number of other items), among others. (Id., ¶25.)
`
`
`
`
`
`15
`
`
`
`
`
`
`
`
`
`
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`MacLaurin unequivocally states that “[t]he tagging system can contain both
`
`automatic tags generated by the tagging system and explicit tags from a user.”
`
`(MacLaurin, 7:48-49 (emphasis added).) It would have been obvious that the “tags”
`
`from which the tag suggestions may be derived could have included any of the tags
`
`available to the system, including automatic tags, explicit tags, or tags from external
`
`tag sources. (Ex. 1023, ¶25.) Nothing in MacLaurin suggests otherwise.
`
`Patent Owner also relies on statements from a portion of the file history of a
`
`continuation of MacLaurin (Ex. 2008), which were made in 2014 – almost nine years
`
`after MacLaurin’s priority date and seven years after the ’173 priority date. Those
`
`statements are not relevant because the applicants never actually said the passage in
`
`MacLaurin at 8:19-23 does not relate to MacLaurin’s features for assigning tags to
`
`items. The applicants merely pointed to this passage (among others) as providing
`
`written description and enablement support under § 112 for claims directed at the
`
`“recall” features of MacLaurin. The light tagging mode was not the subject of the
`
`rejected claims to which applicants’ arguments were directed. Notably, MacLaurin
`
`discloses the ability to visually distinguish automatic and explicit tags, with respect
`
`to both the recall and tagging features. (Ex. 1023, ¶26 (citing MacLaurin, 7:49-51,
`
`8:19-23).) It is therefore not surprising that the applicants would cite the passage in
`
`MacLaurin at 8:19-23 as additional § 112 support for their proposed claims.
`
`
`
`
`
`16
`
`
`
`
`
`
`
`
`
`
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`B.
`
`Even if MacLaurin’s Tag Display Disclosures Pertained Only to
`“Recall” Mode and Not Tagging, the Challenged Claims Would
`Still Have Been Obvious to a Person of Ordinary Skill in the Art.
`As noted, Patent Owner argues that MacLaurin’s disclosures about displaying
`
`tags “utilizing different sizes, fonts, colors, and/or symbols and the like”
`
`(MacLaurin, 8:19-23; see also id. 7:49-51) relates only to the recall and not tagging
`
`feature. This argument is incorrect for the reasons provided above, but even if it had
`
`merit, the claims would still be obvious. (Ex. 1023, ¶¶27-30.)
`
`The key problem with Patent Owner’s argument is that it narrowly focuses on
`
`whether MacLaurin’s disclosures strictly apply to the tagging or “recall” mode,
`
`adopting an approach that more closely resembles anticipation than obviousness.
`
`But all of the instituted grounds rely on obviousness. Grounds 3-6 cite MacLaurin
`
`in combination with Rothmuller (Grounds 3-4) and Plotkin (Grounds 5-6), which
`
`provide an independent basis for rendering the “tag type indicator” limitations
`
`obvious in combination with MacLaurin. They provide an alternative basis for
`
`obviousness even if Patent Owner’s arguments about MacLaurin had merit.
`
`The same also holds true for Grounds 1 and 2, which cite only MacLaurin for
`
`the “tag type indicator” limitation. This is because it would have been obvious to a
`
`skilled artisan that the benefit and motivation to display tags using “different sizes,
`
`fonts, colors, and/or symbols and the like” (MacLaurin, 8:19-23) would have applied
`
`to any situation calling for the display of tags to a user – including list of tag
`
`
`
`
`
`17
`
`
`
`
`
`
`
`
`
`
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`suggestions for tagging items in MacLaurin. The display of tag type indicators for
`
`each tag would have allowed the user to quickly and visually distinguish one type of
`
`tag from another, which would have clearly enhanced the ability of the user to select
`
`and assign the appropriate tag for an item. (Ex. 1023, ¶30.)
`
`The Petition explained that the benefit of allowing the user to visually
`
`distinguish one type of tag from another would not have been limited only to specific
`
`features or functionalities described in MacLaurin. (Petition at 40, 67.) For
`
`example, in connection with the further combination with Plotkin, the Petition
`
`explained that “the advantages of using tag type indicators in a tag list (e.g., the
`
`ability to quickly distinguish tags based on their tag type) are applicable to a broad
`
`range of user interfaces.” (Petition at 67; Ex. 1002, ¶111.) It therefore would have
`
`been obvious that displaying tags of different types in a visually distinct way would
`
`“have improved the tagging process by allowing the user to more quickly identify
`
`the most suitable tag from among the many options presented in the tag list.” (Ex.
`
`1002, ¶99; Petition at 60.) Accordingly, it would have been obvious to adapt
`
`MacLaurin’s teaching about displaying tags “utilizing different sizes, fonts, colors,
`
`and/or symbols and the like” (MacLaurin, 8:19-23) to the list of tag suggestions
`
`provided to users when tagging items in MacLaurin, even if the Board were to
`
`conclude that those disclosures from MacLaurin related to the so-called “recall”
`
`mode as Patent Owner suggests.
`
`
`
`
`
`18
`
`
`
`
`
`
`
`
`
`
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`C.
`
`It Is Undisputed That MacLaurin Discloses the Existence of
`Multiple Separate “Tag Sources”
`Patent Owner also argues that MacLaurin does not disclose discrete “tag
`
`sources,” focusing on the “automatic” and “explicit” tag collections in MacLaurin.
`
`(Response at 37 n.7.) This argument fails because it relies on an incorrect
`
`construction of “tag sources,” discussed thoroughly in Part II above.
`
`MacLaurin makes clear tha
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
