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`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 REPLY TO OPPOSITION TO MOTION TO
`AMEND
`
`
`
`
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`
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`TABLE OF CONTENTS
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................ 1
`
`BACKGROUND .......................................................................................... 1
`
`III. RESPONSE TO ARGUMENTS ................................................................... 3
`
`A.
`
`B.
`
`The Proposed Substitute Claims Further Highlight the
`Inventiveness of the ’173 Patent Over the Prior Art ............................ 3
`
`Petitioners Do Not Otherwise Challenge the Proposed
`Substantive Claims ............................................................................. 7
`
`IV. CONCLUSION ............................................................................................ 9
`
`
`
`i
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`
`
`TABLE OF AUTHORITIES
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`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`Page
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`Lockwood v. Am. Airlines, Inc.,
`107 F.3d 1565 (Fed. Cir. 1997) .................................................................... 9
`
`CASES
`
`
`
`
`
`ii
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`
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`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`I.
`
`INTRODUCTION
`
`BlackBerry’s proposed substitute claims 21-32 highlight a key benefit
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`disclosed and claimed in the ’173 Patent: the ability to arrange tags as desired from
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`different sources while visually indicating the source of each tag. While the
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`original claims already reflect the core solution for achieving this benefit—“a tag
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`type indicator . . . indicative of a tag source”—the proposed substitute claims
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`enhance this benefit by using these “tag type indicator[s]” to display an
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`interspersed list of tags from different sources, i.e., to display “a first tag from a
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`first tag source . . . above a second tag from a second tag source; and the second
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`tag from the second tag source . . . above a third tag from the first tag source.”
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`None of the cited prior art references discloses such an interspersed display,
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`further highlighting the novelty and non-obviousness of both the solution reflected
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`in BlackBerry’s original claims (“a tag type indicator . . . indicative of a tag
`
`source”) and the benefit recited expressly in BlackBerry’s proposed substitute
`
`claims (“a first tag from a first tag source is displayed above a second tag from a
`
`second tag source; and the second tag from the second tag source is displayed
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`above a third tag from the first tag source”).
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`II. BACKGROUND
`
`BlackBerry’s motion to amend proposed substitute claims 21-32. Proposed
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`substitute independent claims 21, 25, and 29 are amended versions of original
`
`
`
`1
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`
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`independent claims 1, 7, and 13. Substitute dependent claims 22-24, 26-28, and
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`30-32 are substantively identical to the original dependent claims challenged by
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`IPR2019-00528
`U.S. Patent No. 8,279,173
`
`Petitioners.
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`Proposed substitute claim 21 is representative:
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`1. A method of selecting a photo tag for a tagged photo,
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`comprising:
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`displaying a photograph comprising at least one subject or
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`object;
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`receiving a user selection of a location in the photograph
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`corresponding to the at least one subject or object;
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`displaying a tag list including tags from one or more tag
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`sources matching a search string, wherein the tags in the
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`tag list are displayed in a vertical list, and wherein:
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`a first tag from a first tag source is displayed above
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`a second tag from a second tag source; and
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`the second tag from the second tag source is
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`displayed above a third tag from the first tag source;
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`displaying a tag type indicator for each tag appearing in
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`the tag list, said tag type being indicative of a tag source
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`associated with the tag; and
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`associating at least one of the tags in the tag list with the
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`at least one subject or object.
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`
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`2
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`
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`IPR2019-00528
`U.S. Patent No. 8,279,173
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`In its preliminary guidance, the Board indicated the proposed substitute
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`claims likely complied with all statutory and regulatory requirements, but that
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`“Petitioner has shown a reasonable likelihood that proposed substitute claims 21-
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`32 are unpatentable” over the prior art. IPR2019-00528, Paper No. 26 at 4-7.
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`BlackBerry respectfully disagrees.
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`III. RESPONSE TO ARGUMENTS
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`A. The Proposed Substitute Claims Further Highlight the
`Inventiveness of the ’173 Patent Over the Prior Art
`
`Petitioners contend the proposed substitute independent claims would be
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`obvious over the combination of (1) Zuckerberg and Rothmuller or Plotkin; (2)
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`Rothmuller, Matthews, and Zuckerberg; or (3) MacLaurin, Zuckerberg, and
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`Rothmuller or Plotkin. IPR2019-00528, Paper No. 26 (Preliminary Guidance) at
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`6-7. The proposed substitute claims further highlight the lack of “a tag type
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`indicator . . . indicative of a tag source,” as required by the original claims of
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`the ’173 Patent. Due to their lack of the claimed “indicator[s],” none of the cited
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`references is capable of displaying a vertical tag list “wherein: a first tag from a
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`first tag source is displayed above a second tag from a second tag source; and the
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`second tag from the second tag source is displayed above a third tag from the first
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`tag source,” as recited in the proposed substitute claims.
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`All invalidity grounds presented by Petitioners against BlackBerry’s
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`proposed substitute claims rely on Zuckerberg for the majority of new claim
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`
`
`3
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`
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`IPR2019-00528
`U.S. Patent No. 8,279,173
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`limitations. See IPR2019-00528, Paper No. 24 (Petitioners’ Response to Motion to
`
`Amend) at 2-4. As explained in BlackBerry’s Patent Owner Response and Sur-
`
`Reply, Zuckerberg lacks multiple “tag source[s]” and its horizontal line is not
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`“indicative of a tag source.” But even if these features were disclosed in
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`Zuckerberg or obvious in light of other prior art (they are not), the only solution in
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`Zuckerberg for distinguishing between the alleged “sources” is to separate the tags
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`from each alleged “source” using a horizontal line. See Zuckerberg at Fig. 5
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`(annotated):
`
`
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`Zuckerberg does not teach, and in fact is incapable of, interspersing of tags
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`from different sources. Zuckerberg thus does not, and cannot, disclose “displaying
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`. . . a vertical [tag] list, . . . wherein: a first tag from a first tag source is displayed
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`
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`4
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`
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`above a second tag from a second tag source; and the second tag from the second
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`tag source is displayed above a third tag from the first tag source,” as recited in the
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`IPR2019-00528
`U.S. Patent No. 8,279,173
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`proposed substitute claims.
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`BlackBerry respectfully disagrees with the Board’s characterization that the
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`“wherein” clauses added by the proposed substitute claims is “one of the
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`predictable options of arranging data.” IPR2019-00528, Paper No. 26 (Preliminary
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`Guidance) at 9. Zuckerberg’s shortcoming as prior art in this respect is that, even
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`if it disclosed multiple “tag source[s]” and indicated the source of each tag (it does
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`not), Zuckerberg’s solution (a horizontal line) cannot be used to intersperse tags
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`from different sources within that list. The only way Zuckerberg’s line provides
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`any information regarding the displayed tags is by keeping tags from different
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`alleged sources separate. Only BlackBerry’s “tag type indicator . . . indicative of a
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`tag source” presents a solution that allows display of a “vertical list” of tags where
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`“a first tag from a first tag source is displayed above a second tag from a second
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`tag source; and the second tag from the second tag source is displayed above a
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`third tag from the first tag source,” as recited in BlackBerry’s proposed substitute
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`claims.
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`Petitioners’ other cited art—MacLaurin, Rothmuller, and Plotkin—cannot
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`cure this deficiency. As addressed in more detail in BlackBerry’s Patent Owner
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`Response and Sur-Reply, MacLaurin does not disclose visually distinguishing
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`
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`5
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`IPR2019-00528
`U.S. Patent No. 8,279,173
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`between tags in its tagging mode, and if Petitioner’s revised interpretation of
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`MacLaurin were adopted, MacLaurin would not visually distinguish between tags
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`from different tag sources. MacLaurin also discloses displaying only a single
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`suggested tag at a time and is silent on how suggested tags are arranged. See, e.g.,
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`MacLaurin at Fig. 8 (annotated):
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`6
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`IPR2019-00528
`U.S. Patent No. 8,279,173
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`Accordingly, Rothmuller does not disclose displaying a “vertical list” of tags
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`interspersed from different sources, and thus cannot cure Zuckerberg’s deficiency
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`in connection with that limitation.
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`Rothmuller and Plotkin fail to disclose multiple tag sources, and their
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`category icons are thus not “indicative of a tag source.” For that reason,
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`Rothmuller and Plotkin do not disclose the subject matter of the proposed
`
`substitute claims, nor can they cure Zuckerberg’s deficiencies. For example, even
`
`if one of ordinary skill were to insert Rothmuller or Plotkin’s category icons into
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`Zuckerberg’s user interface, the icons would continue to indicate tag categories
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`and not any “tag source.” Accordingly, modifying Zuckerberg based on
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`Rothmuller or Plotkin would not allow one of ordinary skill to re-arrange
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`Zuckerberg’s list of previously used tags to intersperse tags from different sources.
`
`The proposed substitute claims thus further highlight the novelty and non-
`
`obviousness of the ’173 patent’s “tag type indictor . . . indicative of a tag source.”
`
`B.
`
`Petitioners Do Not Otherwise Challenge the Proposed Substantive
`Claims
`
`Other than their obviousness arguments, Petitioners do not challenge that the
`
`proposed substitute claims comply with statutory and regulatory requirements.
`
`The Board should thus adopt its preliminary conclusion that those requirements are
`
`met. IPR2019-00528, Paper No. 26 (Preliminary Guidance) at 4-7; see also
`
`IPR2019-00528, Paper No. 15 (BlackBerry’s Motion to Amend) at 2-13.
`
`
`
`7
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`
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`IPR2019-00528
`U.S. Patent No. 8,279,173
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`Petitioners remark that the “wherein” clause added in Patent Owner’s
`
`substitute claims “is discussed nowhere in the textual description of the ’173
`
`Patent,” but offer no rebuttal to the patent’s clear graphical disclosure of the
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`amended claimed invention. IPR2019-00528, Paper No. 24 (Petitioners’
`
`Opposition) at 5 (emphasis added). The clause at issue recites: “wherein the tags
`
`in the tag list are displayed in a vertical list, and wherein a first tag from a first tag
`
`source is displayed above a second tag from a second tag source; and the second
`
`tag from the second tag source is displayed above a third tag from the first tag
`
`source.” There can be no dispute that at least Figure 4B and accompanying text in
`
`the ’173 Patent supports the added “wherein” clause by depicting an example of
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`the claimed “vertical list.” :
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`See also, ‘173 Patent, 5:42-47 (“As shown by way of illustration in screen 400B of
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`FIG. 4B, these tag sources could include, for example, a list of friends from an online
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`
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`8
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`IPR2019-00528
`U.S. Patent No. 8,279,173
`service like FacebookTM, a list of contacts from the user's address book 142, a list of
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`the user's browser bookmarks (in Internet browser 138), a cache of recent free-form
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`text entries, etc.”).
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`The adequacy of the written description is evaluated based on the totality of
`
`the patent, not just the “textual” portion, as Petitioners erroneously contend. See
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`Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (explaining
`
`that the necessary support may be provided through the “words, structures, figures,
`
`diagrams, formulas, etc., that fully set forth the claimed invention”). There is no
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`requirement that every claim limitation must be expressly described in the
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`“textual” portion of the patent, and here Figure 4B in the ’173 Patent provides the
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`necessary support for the “wherein” clause added by the proposed substitute
`
`claims.
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`Accordingly, BlackBerry’s proposed substitute claims meet all statutory and
`
`regulatory requirements.
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`IV. CONCLUSION
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`It is respectfully submitted that BlackBerry’s conditional Substitute Claims
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`should be found patentable.
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`
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`9
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`
`
`Date: March 16, 2020
`
`IPR2019-00528
`U.S. Patent No. 8,279,173
`
` 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
`
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`10
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`IPR2019-00528
`U.S. Patent No. 8,279,173
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`CERTIFICATE OF LENGTH (37 C.F.R. §§ 42.24(D))
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`The undersigned hereby certifies that, according to the word-processing
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`system used to prepare the foregoing document, this document has 1,630 words and
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`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
`
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`11
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`IPR2019-00528
`U.S. Patent No. 8,279,173
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`CERTIFICATE OF SERVICE (37 C.F.R. §§ 42.6(E), 42.105(A))
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`
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`The undersigned hereby certifies that the foregoing document was served in
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`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
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` 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
`
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`12
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