`
`
`
`
`
`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
`________________
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`________________
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................ 1
`
`RESPONSE TO ARGUMENTS ................................................................... 2
`
`A. MacLaurin Fails to Disclose “Tag Type Indicator[s] . . .
`Indicative of a Tag Source” ................................................................. 2
`
`1.
`
`2.
`
`3.
`
`4.
`
`Background of the Dispute........................................................ 2
`
`The Challenged Patents are Valid Even Under
`Petitioners’ Interpretation of MacLaurin ................................... 4
`
`The Board Should Adopt BlackBerry’s Proposed
`Construction of “Tag Source” ................................................... 6
`
`Other Embodiments in MacLaurin and Other Prior Art
`Cannot Compensate for MacLaurin’s Lack of a “Tag
`Type Indicator . . . Indicative of a Tag Source” ....................... 12
`
`B.
`
`Petitioners Failed to Perform the Necessary Obviousness
`Analysis for the “Tag List” Limitation .............................................. 13
`
`III. CONCLUSION .......................................................................................... 15
`
`
`
`
`
`
`
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`Page
`
`Cases
`
`Abiomed, Inc. v. Maquet Cardiovascular, LLC,
`IPR2017-01204 & -01205, Paper 8 (Oct. 23, 2017) ....................................14
`
`Akzo Nobel Coatings, Inc. v. Dow Chem. Co.,
`811 F.3d 1334 (Fed. Cir. 2016) ...................................................................10
`
`Amazon.com, Inc. v. ZitoVault, LLC,
`754 Fed. App’x 965 (Fed. Cir. 2018) ........................................................ 7, 8
`
`K/S Himpp v. Hear-Wear Techs., LLC,
`751 F.3d 1362 (Fed. Cir. 2014) ...................................................................13
`
`Merck & Co. v. Teva Pharma. USA, Inc.,
`395 F.3d 1364 (Fed. Cir. 2005) ...................................................................10
`
`In re Nuvasive, Inc.,
`842 F.3d 1376 (Fed. Cir. 2016) ...................................................................14
`
`
`
`
`
`
`
`ii
`
`
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`LIST OF EXHIBITS
`
`Exhibit #
`
`Description
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`Declaration of Rajeev Surati, Ph.D.
`
`Excerpts from the American Heritage College
`Dictionary, 4th ed. (2002)
`
`Excerpts from Webster’s New World College Dictionary,
`4th ed. (2008)
`
`Excerpts from Merriam-Webster’s Collegiate Dictionary,
`11th ed. (2003)
`
`Exhibit 9 from the Deposition of Sandeep Chatterjee,
`Ph.D.
`
`Petitioners’ Opposition to BlackBerry’s Motion for
`Partial Summary Judgment of Infringement in the
`District Court Litigation
`
`Intentionally Omitted
`
`Prosecution History of U.S. Patent No. 9,495,335
`
`U.S. Patent Application No. 13/252,807
`
`U.S. Patent Application No. 11/746,285
`
`Redline comparison of ’807 and ’285 Applications
`
`Transcript of November 7, 2019 Deposition of Sandeep
`Chatterjee, Ph.D.
`
`
`
`
`
`
`
`iii
`
`
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`
`I.
`
`INTRODUCTION
`
`All instituted grounds point to MacLaurin for the “tag type indicator . . .
`
`indicative of a tag source” and “displaying a tag list including tags” (plural)
`
`limitations. Petitioners’ Reply only underscores, however, that both of these
`
`limitations are absent from MacLaurin.
`
`First, Petitioners resort to a new, overbroad construction of “tag sources” in
`
`an effort to preserve their strained interpretation of MacLaurin (articulated for the
`
`first time in the Reply). Petitioners’ construction effectively reads the “indicative
`
`of a tag source” limitation out of the claims and should, therefore, be rejected.
`
`Under the correct construction, MacLaurin’s alleged “tag type indicator[s]” are not
`
`“indicative of a tag source.” Petitioners cannot cure this basic deficiency using
`
`MacLaurin’s external tag sources, Rothmuller, or Plotkin because these other
`
`embodiments and references also do not disclose “a tag type indicator . . .
`
`indicative of a tag source,” as claimed.
`
`Second, Petitioners do not dispute that MacLaurin never displays “a tag list”
`
`with multiple “tags.” Petitioners’ obviousness assertions for this limitation are
`
`conclusory, fail to identify any motivation to stray from MacLaurin’s express
`
`teachings, and should, therefore, be rejected.
`
`
`
`1
`
`
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`
`II. RESPONSE TO ARGUMENTS
`
`A. MacLaurin Fails to Disclose “Tag Type Indicator[s] . . . Indicative
`of a Tag Source”
`
`1.
`
`Background of the Dispute
`
`Petitioners originally identified two related sentences in MacLaurin they
`
`argued disclose the “tag type indicator . . . indicative of a tag source” limitation.
`
`Pet. at 35-46 (quoting MacLaurin at 7:48-51, 8:19-23 as allegedly disclosing “it is
`
`desirable to easily distinguish between ‘automatic’ and ‘explicit’ tag types” and
`
`that MacLaurin accomplishes this result “utilizing different sizes, fonts, colors,
`
`and/or symbols and the like”). But, as explained in Section VII.A.1 of
`
`BlackBerry’s Patent Owner Response, MacLaurin describes two separate modes: a
`
`tagging mode used to manually tag files; and a recall mode used to subsequently
`
`find files using tags. Even Petitioners’ expert, Dr. Chatterjee, admitted that
`
`MacLaurin’s recall mode is “a totally different thing” from MacLaurin’s tagging
`
`mode. Ex. 2012 (Chatterjee Tr.) at 122:11-14. And the two sentences identified
`
`by Petitioners describe MacLaurin’s recall mode, whereas Petitioners only rely on
`
`MacLaurin’s tagging mode as allegedly rendering obvious the Challenged Claims.
`
`Petitioners no longer contend that MacLaurin at 7:48-51 describes
`
`MacLaurin’s tagging mode. See Reply at 16 (arguing that the two sentence
`
`describe “‘both’ the recall and tagging features). Petitioners maintain, however,
`
`that MacLaurin at 8:19-23 describes MacLaurin’s tagging mode. Reply at 11. The
`
`
`
`2
`
`
`
`
`relevant sentence recites: “[I]f an automated tag and an explicit tag (one entered by
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`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.”
`
`As BlackBerry explained in its Patent Owner Response, MacLaurin at 8:19-
`
`23 cannot describe MacLaurin’s tagging mode, because MacLaurin would never
`
`display “automated tag[s]” for a user to select. In automated/automatic item
`
`tagging, after a user beings typing, a tag is “automatically associated with the
`
`selected items without further user action.” See MacLaurin at Abstract (emphasis
`
`added). This is in contrast to “suggested tags” displayed in MacLaurin’s tagging
`
`mode. See id. at 8:17-18 (requiring “the user hits the enter/return key (or similar)”
`
`before “apply[ing] the items to the tag”); compare Fig. 9 (tagging files “without
`
`further user interaction”) with Figs. 10-11 (tagging files by “providing the user
`
`with at least one item tag suggestion in response to the user [input/selection]”).
`
`Petitioners do not dispute that no suggested tags are displayed when an
`
`automatic/automated tag is assigned to a file; instead, Petitioners now contend that
`
`MacLaurin’s discussion of “automated tags” at col. 8:19-23 refers to “a previously-
`
`assigned ‘automatic’ tag [that] can later appear as a tag suggestion to a user when
`
`tagging items.” Reply at 15 (emphasis in original). Under Petitioners’ revised
`
`theory, an “‘automatic’ tag” assigned to a first file can later because a “suggested
`
`
`
`3
`
`
`
`
`tag” for a second file if it is “associated with a similar item, a recently used tag,” or
`
`“a commonly used tag.” Id. (quoting MacLaurin at 4:48-53).
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`2.
`
`The Challenged Patents are Valid Even Under Petitioners’
`Interpretation of MacLaurin
`
`Petitioners’ current interpretation of MacLaurin cannot save Petitioners’
`
`invalidity theories: if MacLaurin at 8:19-23 describes visually distinguishing
`
`between “previously-assigned” automated tags and “previously-assigned” explicit
`
`tags, then this distinction would not be “indicative of a tag source,” since both sets
`
`of “previously-assigned” tags would be from the same “tag source.”
`
`Petitioners point out that automatic/automated tags are “generated by the
`
`tagging system,” while explicit tags are “from a user.” Reply at 19. But in
`
`Petitioners’ invalidity theory, those tags are first assigned to files, and MacLaurin
`
`later searches those “previously-assigned” tags to present “suggested tags” for the
`
`next file. See Reply at 15. The identity of the entity that first generates a tag (e.g.,
`
`the “tagging system” or a “user”) does not dictate the tag’s “source.” For example,
`
`one of the tag sources described in the ’173 Patent is “a list of friends from an
`
`online service like FacebookTM.” ’173 Patent at 5:43-44. The ’173 Patent
`
`describes this as a single “source,” even though each one of the “friends” originally
`
`created his or her own profile (e.g., entered his or her own name). See FIG. 4B
`
`(showing five tags with names of different Facebook friends). Thus, the identity of
`
`
`
`4
`
`
`
`
`the person (or system) who initially created a tag does not dictate the “source” of a
`
`tag, and tags created by multiple entities can still all be from the same “tag source.”
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`Instead, as explained in Section VI.A of BlackBerry’s Patent Owner
`
`Response and further addressed in Section II.B.3 of this Sur-Reply, a “tag source”
`
`is a “separately searchable collection of tags,” as reflected in BlackBerry’s
`
`proposed construction. Petitioners have no basis to assert “previously-assigned”
`
`automated and explicit tags are two different “tag sources” under BlackBerry’s
`
`construction of that term, and MacLaurin thus does not disclose “a tag type
`
`indicator . . . indicative of a tag source” under Petitioners’ revised interpretation of
`
`MacLaurin if BlackBerry’s construction of ‘tag source” is adopted.
`
`Petitioners, in contrast, contend MacLaurin’s “previously-assigned” tags
`
`constitute more than one “tag source” only because “the ability in MacLaurin to
`
`distinguish the automatic and explicit tags (and present different indicators for
`
`each) . . . confirms the existence of separately recognizable collections of tags.”
`
`Reply at 19 (emphasis added). Petitioners’ argument harks back to its proposed
`
`construction of a ‘tag source” as “a recognizable collection of tags”. Reply at 10
`
`(emphasis in original).
`
`The parties’ dispute thus boils down to claim construction: should the term
`
`“tag source” be construed as “a separately searchable collection of tags”
`
`(BlackBerry’s proposal) or as “a recognizable collection of tags” (Petitioners’ new
`
`
`
`5
`
`
`
`
`proposal on reply). Since BlackBerry’s construction is correct, all of Petitioners’
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`Grounds must fail.
`
`3.
`
`The Board Should Adopt BlackBerry’s Proposed
`Construction of “Tag Source”
`
`As explained in Section VI.A of BlackBerry’s Patent Owner Response, the
`
`Board should construe the term “tag source” as “separately searchable collection of
`
`tags.” “[S]eparately searchable” is grounded in the intrinsic record and correctly
`
`focuses on how “tags” are obtained, and not just their subject matter. Petitioners’
`
`proposal—“a recognizable collection of tags”—is a continuation of their effort to
`
`remove any substantive meaning from the claimed “tag source,” allowing
`
`Petitioners to identify multiple “tag source[s]” even where there is just a single
`
`“source.”
`
`In its Reply, Petitioners contend that BlackBerry’s proposed construction is
`
`ambiguous. Reply at 1-3. But in that same section, Petitioners correctly explain
`
`“separately searchable” means each tag source is “capable of being searched
`
`without having to search another tag source.” Reply at 2. The ’173 Patent
`
`specification thus teaches that it is possible to search “one” tag source or multiple
`
`tag sources. ’173 Patent at 5:39-4. This also means that it must be possible to
`
`search just one tag source without searching the others, which leads to the
`
`conclusion that “tag sources” are “separately searchable,” as reflected in
`
`
`
`6
`
`
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`
`BlackBerry’s proposal. See Amazon.com, Inc. v. ZitoVault, LLC, 754 Fed. App’x
`
`965, 970 (Fed. Cir. 2018) (finding that, because the claims require “multiple
`
`‘sessions,’” this “suggest[s] that the system recognizes distinct sessions”).
`
`Petitioners also argue BlackBerry is importing a “separately searchable”
`
`requirement into the claims. Reply at 3-8. This is incorrect. BlackBerry is
`
`applying the plain meaning to the term “tag source.” The fact that the claims recite
`
`“one or more tag sources” means that there must be a difference between a
`
`collection of tags that is from just “one” tag source and a collection of tags that is
`
`from multiple tag sources. The correct focus in this analysis is on how tags are
`
`obtained—that is, whether they are “from” different sources, as recited in the
`
`claims. This is confirmed by the ’173 Patent’s specification, where tags from
`
`different “sources” can, e.g., be obtained from different applications. See ’173
`
`Patent at 3:40-55, 5:39-47, 5:56-61, 6:27-52; see also id. at Fig. 1.
`
`Petitioners’ criticism of the ’173 Patent’s specification is misplaced and
`
`irrelevant. Petitioners contend “[n]othing in the specification describes how any
`
`search of the tag sources is carried out.” Reply at 4-5. Their own expert undercuts
`
`this argument, however, with his admission that the specification discloses “the
`
`ability to search just one tag source” and “the ability to search multiple tag
`
`sources.” Ex. 2012 (Chatterjee Tr.) at 55:13-21. Next, Petitioners argue the
`
`sources in the specification are exemplary (Reply at 5-6), but that renders them no
`
`
`
`7
`
`
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`
`less useful in understanding the plain meaning of “tag sources.” Finally,
`
`Petitioners contend that nothing in the specification precludes data from being
`
`stored in different locations (e.g., locally vs. at a server) (Reply at 6-8), but the
`
`physical location does not control whether two collections of tags are from
`
`different sources. See, e.g., ’173 Patent at 1 (“Internet Browser 138” and “Address
`
`Book 142” are two “tag sources” even though both are local to communication
`
`device 100).
`
`Not only is BlackBerry’s proposed construction correct, but Petitioners have
`
`failed to present any workable alternative. Effectively acknowledging there must
`
`be some manner for distinguishing tags from different sources, Petitioners contend
`
`“[a] construction more consistent with ZitoVault would have been ‘a recognizable
`
`collection of tags,’ which Petitioner[s] believe[] is already implicit in [their]
`
`proposed construction.” Reply. at 9 (emphasis in original).1 Petitioners provide no
`
`
`1 While Petitioners’ proposed construction uses the same word (“recognizable”)
`
`also found in the construction approved in ZitoVault, this similarity is superficial at
`
`best. The claim term “session” in ZitoVault had a temporal aspect that allowed
`
`different “sessions” to be distinguished based on their “recognizable” beginnings
`
`and ends. In contrast, the word “recognizable” does not modify any concrete
`
`characteristic that can be used to distinguish different “tag sources.”
`
`
`
`8
`
`
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`
`objective criteria for what qualifies as “recognizable,” however, allowing
`
`Petitioners to argue any arbitrary collection of tags qualifies as a “tag source.” For
`
`example, Petitioners provide no explanation how their proposed construction
`
`would allow one of ordinary skill to determine how many “tag sources” are present
`
`in Rothmuller. Compare Ex. 2012 (Chatterjee Tr.) at 86:25-88:15 (testifying he
`
`was “not really sure how to answer” the question of “[h]ow many different tag
`
`sources are illustrated in [a] figure” summarizing Rothmuller’s categories and
`
`types) with Ex. 1023 (Chatterjee Reply Decl.) ¶ 51 (maintaining that either
`
`categories or types in Rothmuller can “qualify as tag sources”). Thus, Petitioners’
`
`proposed construction of “a recognizable collection of tags” fails to address the
`
`deficiencies in Petitioners’ original interpretation of this term.
`
`Indeed, Petitioners’ proposed construction of “tag source” renders the claim
`
`limitation “said tag type being indicative of a tag source associated with the tag”
`
`superfluous. Under Petitioners’ interpretation, the mere ability to “display[] a tag
`
`type indicator” for a collection of tags (or otherwise distinguish them) renders that
`
`collection of tags “recognizable” and thus a “tag source.” See, e.g., Reply at 15
`
`(emphasis added):
`
`The Petition further explained
`
`that
`
`the ability
`
`in
`
`MacLaurin to distinguish the automatic and explicit tags
`
`(and present different indicators for each) further
`
`
`
`9
`
`
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`
`
`confirms
`
`the existence of separately recognizable
`
`collections of tags. (Petition at 32; Ex. 1002, ¶74.)
`
`Nothing more is required by the claim as properly
`
`construed.
`
`Accordingly, if Petitioners’ interpretation were adopted, any “tag type
`
`indicator” would automatically designate “tag source”—the additional claim
`
`requirement that “the tag type” is “indicative of a tag source” would be redundant
`
`and devoid of meaning. Petitioners’ proposed construction for “tag source,”
`
`therefore, cannot be correct. See Merck & Co. v. Teva Pharma. USA, Inc., 395
`
`F.3d 1364, 1372 (Fed. Cir. 2005) (“A construction that gives meaning to all the
`
`terms of the claim is preferred over one that does not do so.”); Akzo Nobel
`
`Coatings, Inc. v. Dow Chem. Co., 811 F.3d 1334, 1339-40 (Fed. Cir. 2016)
`
`(rejecting broad construction of “pressurized collection vessel” because it “would
`
`render ‘collection’ entirely superfluous and allow any pressurized vessel to
`
`constitute a ‘pressurized collection vessel”).
`
`Finally, Petitioners’ non-infringement position in district court litigation is
`
`fatal to its claim construction argument here. In district court, Petitioners argued
`
`the “tag type indicator . . . indicative of a tag source” limitation is not met because
`
`“[t]he supposed ‘tag type indicators’ identified by BlackBerry, at best, correspond
`
`to categories of tag suggestions – not their sources.” Ex. 2006 at 13. Petitioners
`
`thus argued that “categories of tag suggestions”—which Petitioners do not dispute
`
`
`
`10
`
`
`
`
`would qualify as “recognizable collection[s] of tags”—are distinguishable from tag
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`“sources.” Petitioners now contend they made this litigation statement in a
`
`different context (Reply at 9-10), but they cannot escape their admission that tag
`
`“categories” and “sources” are different concepts. Petitioners’ district court
`
`argument thus demonstrates the incorrectness of their IPR construction—even
`
`Petitioners themselves disagreed with this construction when arguing non-
`
`infringement.2
`
`Accordingly, BlackBerry’s proposed construction of “tag source” to mean a
`
`“separately searchable collection of tags” should be adopted. And once
`
`BlackBerry’s proposed construction is adopted, there is no dispute Facebook’s
`
`prior art references lack multiple “tag sources” and fail to disclose “a tag type
`
`indicator . . . indicative of a tag source,” as claimed.
`
`
`2 In contrast, BlackBerry’s position is consistent: the term “tag sources” should be
`
`construed according to its plain meaning. In this IPR, it is necessary to construe
`
`that plain meaning to resolve a dispute between the parties. Petitioners have not
`
`identified any equivalent dispute in district court litigation that would need to be
`
`resolved by expressly construing “tag sources.”
`
`
`
`11
`
`
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`
`
`4. Other Embodiments in MacLaurin and Other Prior Art
`Cannot Compensate for MacLaurin’s Lack of a “Tag Type
`Indicator . . . Indicative of a Tag Source”
`
`Petitioners cite MacLaurin’s discussion of “external tag sources” as
`
`allegedly “render[ing] obvious the presence of multiple distinct tag sources used
`
`for tagging items.” Reply at 19-20. This argument misses the point. The
`
`Challenged Claims require “a tag type indicator . . . indicative of a tag source.”
`
`The only alleged disclosure in MacLaurin cited by Petitioners for this limitation is:
`
`“[I]f 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 at 8:19-23. This sentence
`
`only discloses visually distinguishing between “an automated tag and an explicit
`
`tag”—MacLaurin never discloses further distinguishing if a tag is from an
`
`“external tag source[].”
`
`Petitioners also cannot rely on Rothmuller or Plotkin to cure MacLaurin’s
`
`lack of the claimed “tag type indicator . . . indicative of a tag source.” Petitioners
`
`acknowledge “the proposed combination set forth in the Petition did not rely on
`
`Rothmuller or Plotkin for the claimed ‘tag sources’” and contend it is “irrelevant”
`
`whether “Rothmuller or Plotkin disclose distinct ‘tag sources.’” Reply at 21. But
`
`if Rothmuller and Plotkin’s categories are not “tag sources,” then Rothmuller and
`
`Plotkin’s category icons cannot be “indicative of a tag source.” Rothmuller and
`
`
`
`12
`
`
`
`
`Plotkin, therefore, also fail to disclose “a tag type indicator . . . indicative of a tag
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`source,” as claimed.
`
`Accordingly, MacLaurin’s discussion of external tags, Rothmuller, and
`
`Plotkin all fail to disclose “a tag type indicator . . . indicative of a tag source,” as
`
`claimed. Petitioners have, therefore, not identified any prior art disclosure of this
`
`limitation. Moreover, the claimed “tag type indicator . . . indicative of a tag
`
`source” is not a minor claim limitation that can be addressed via reliance on
`
`common sense, but goes to the very core of the innovation claimed by the ’173
`
`Patent. Petitioners cannot prevail on obviousness without identifying this claim
`
`limitation in some prior art reference. See K/S Himpp v. Hear-Wear Techs., LLC,
`
`751 F.3d 1362, 1365 (Fed. Cir. 2014) (explaining that “obviousness” “require[s]
`
`record evidence to support an assertion that [the claimed] structural features . . .
`
`were known prior art elements”). The Board should, therefore, affirm the validity
`
`of the Challenged Claims.
`
`B.
`
`Petitioners Failed to Perform the Necessary Obviousness Analysis
`for the “Tag List” Limitation
`
`The Challenged Claims require “displaying a tag list including tags” (plural).
`
`As explained in Section VII.B of BlackBerry’s Patent Owner Response, the
`
`portions of MacLaurin cited by Petitioners do not disclose “displaying” any such
`
`list. At best, the cited portions describe generating “a list of tag suggestions,” but
`
`
`
`13
`
`
`
`
`those suggested tags are then displayed one at a time, starting with a single “‘best
`
`guess’ tag.” MacLaurin at 4:42-48, 5:25-37, 8:9-10, 8:51-53; see also MacLaurin
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`at Fig. 8 (“suggested tag ‘graphics’ 802”). A single tag is not a “list,” and
`
`displaying one tag at a time, as described in MacLaurin, does not disclose
`
`“displaying a tag list including tags” (plural).
`
`Petitioners do not contest that MacLaurin does not disclose this limitation,
`
`and instead argue that “it would have been obvious to display the tag
`
`suggestions . . . in the form of a tag ‘list.’” Reply at 23; see also id. at 23-24 (“[I]t
`
`would have been obvious that that mode would provide a tag list in light of the
`
`other disclosures in MacLaurin . . . .”). But Petitioners provide none of the
`
`analysis necessary to prevail on an obviousness argument. They do not, for
`
`example, identify any motivation to depart from MacLaurin’s express teaching of
`
`displaying one tag at a time to instead display a “tag list,” as claimed. See Pet. at
`
`30-31; Ex. 1002 (Chatterjee Decl.) ¶¶70-71; see also In re Nuvasive, Inc., 842 F.3d
`
`1376, 1383 (Fed. Cir. 2016) (explaining that obviousness requires an
`
`“articulation[] of motivation to combine” that “must be supported by a ‘reasoned
`
`explanation,’” as opposed to “‘conclusory statements’ alone”). This obviousness
`
`analysis is required even when combining disparate disclosures in a single prior art
`
`reference, as Petitioners purport to do here. See Abiomed, Inc. v. Maquet
`
`Cardiovascular, LLC, IPR2017-01204 & -01205, Paper 8, at 10-12 (Oct. 23, 2017)
`
`
`
`14
`
`
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`
`(denying institution where “[p]etitioner’s challenge treats the various features of
`
`[the prior art’s] different embodiments as if they are interchangeable with one
`
`another” without “provid[ing] sufficient rationale to combine the teachings of . . .
`
`different embodiments”).
`
`Petitioners, therefore, did not engage in the necessary obviousness analysis,
`
`and their obviousness argument for the “displaying a tag list including tags”
`
`(plural) limitation thus fails.
`
`III. CONCLUSION
`
`In view of the foregoing, BlackBerry respectfully requests that the Board
`
`find the Challenged Claims of the ’173 Patent valid.
`
`
`
`
`
`
`
`
`
`Date: March 16, 2020
`
` By: /Jim Glass/
`James M. Glass (Reg. No. 46,729)
`QUINN EMANUEL URQUHART &
`SULLIVAN LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`Email: jimglass@quinnemanuel.com
`Phone: 212-849-7142
`Fax: 212-849-7100
`
`Counsel for Patent Owner
`BlackBerry Limited
`
`
`
`
`15
`
`
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`
`
`CERTIFICATE OF LENGTH (37 C.F.R. §§ 42.24(D))
`
`The undersigned hereby certifies that, according to the word-processing
`
`system used to prepare the foregoing document, this document has 3,186 words and
`
`thus complies with the applicable word limit.
`
`Date: March 16, 2020
`
` By: /Jim Glass/
`James M. Glass (Reg. No. 46,729)
`QUINN EMANUEL URQUHART &
`SULLIVAN LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`Email: jimglass@quinnemanuel.com
`Phone: 212-849-7142
`Fax: 212-849-7100
`
`Counsel for Patent Owner
`BlackBerry Limited
`
`
`
`
`16
`
`
`
`
`
`
`
`
`
`
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`
`
`CERTIFICATE OF SERVICE (37 C.F.R. §§ 42.6(E), 42.105(A))
`
`The undersigned hereby certifies that the foregoing document was served in
`
`its entirety on March 16, 2020 upon the following parties via Electronic Mail.
`
`Heidi L. Keefe
`Andrew C. Mace
`Mark R. Weinstein
`Yuan Liang
`
`Cooley LLP
`Attn: Patent Group
`1299 Pennsylvania Ave, NW, Suite 700
`Washington, DC 20004
`
`Email: hkeefe@cooley.com
`Email: amace@cooley.com
`Email: mweinstein@cooley.com
`Email: yliang@cooley.com
`
`
`
`
`
`
`
`
`
`
`
`
`Date: March 16, 2020
`
` By: /Jim Glass/
`James M. Glass (Reg. No. 46,729)
`QUINN EMANUEL URQUHART &
`SULLIVAN LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`Email: jimglass@quinnemanuel.com
`Phone: 212-849-7142
`Fax: 212-849-7100
`
`Counsel for Patent Owner
`BlackBerry Limited
`
`
`
`
`17
`
`
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
