Paper No. ____
`Filed: March 10, 2020
`
`Filed on behalf of: Snap Inc.
`
`By: Yar R. Chaikovsky (Snap-Blackberry-PH-IPR@paulhastings.com)
`
`Chad Peterman (Snap-Blackberry-PH-IPR @paulhastings.com)
`
`David Okano (Snap-Blackberry-PH-IPR@paulhastings.com)
`
`Paul Hastings LLP
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`SNAP INC.,
`Petitioner
`
`v.
`
`BLACKBERRY LIMITED
`Patent Owner
`
`
`
`IPR2019-00715
`U.S. Patent No. 8,326,327
`
`
`
`
`
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO AMEND
`
`
`
`
`
`
`
`

`

`D.
`
`Page
`Introduction ................................................................................................... 1
`I.
`II. Claim construction of the term “action spot” ............................................ 1
`III. Substitute claim 21 does not comply with 35 U.S.C. § 316(d)
`because there is no written description support for a mobile
`device that can be configured to “provide a pop-up display of said
`posted video” ................................................................................................. 2
`IV. Substitute claim 21 is obvious ...................................................................... 6
`A.
`Prior art teaches or suggests a “touch sensitive display” [21b] ........... 7
`B.
`Prior art teaches or suggests the claimed “interactive map”
`[21c] ...................................................................................................... 7
`Prior art teaches or suggests signifying “the current location of
`the mobile device as an icon on the interactive map” [21f] ................. 9
`Prior art teaches or suggests action spots and activity level
`corresponding to posted video and recording activity [21e &
`21g] ....................................................................................................... 9
`1.
`Eyal and Jaffe teach systems that process video posts ............ 10
`2.
`Lemmela-Crowley combined with Eyal or Jaffe teaches
`substitute claim 21’s action spots and activity level ................ 11
`3. Winkler-Altman combined with Eyal or Jaffe teaches
`substitute claim 21’s action spots and activity level ................ 11
`Prior art teaches or suggests an action spot as a “selectable
`graphical item” that “provide[s] a pop-up display of posted
`video” [21i] ......................................................................................... 12
`1.
`Eyal and Jaffe teach a “selectable graphical item”
`“provid[ing] a pop-up display of” posted videos ..................... 12
`Lemmela teaches selectable icons providing pop-up
`content display, and Lemmela-Crowley combined with
`Eyal or Jaffe’s video posts teaches pop-up video content ....... 13
`3. Winkler-Altman combined with Eyal or Jaffe teaches
`substitute claim 21’s “selectable graphical item”
`“provid[ing] a pop-up display of said posted video” ............... 14
`Reasons to combine Lemmela-Crowley with Eyal/Jaffe video
`posts .................................................................................................... 14
`
`C.
`
`E.
`
`F.
`
`TABLE OF CONTENTS
`
`2.
`
`i
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`
`G.
`
`
`
`V.
`
`Reasons to combine Winkler-Altman with Eyal or Jaffe’s video
`posts and selectable icons providing a pop-up display ...................... 16
`Like claim 2, substitute claim 21 is patent-ineligible under § 101 ......... 18
`A.
`Alice step one ...................................................................................... 18
`B.
`Alice step two ..................................................................................... 23
`VI. To the extent Patent Owner contends substitute claim 21 requires
`a large-scale network architecture, the claim lacks enablement ........... 25
`VII. Conclusion ................................................................................................... 25
`
`
`
`
`
`
`-ii-
`
`
`
`

`

`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Aqua Prods., Inc. v. Matal,
`872 F.3d 1290 (Fed. Cir. 2017) (en banc) (O’Malley, J.) ................................ 3, 6
`Ariad Pharms., Inc. v. Eli Lilly & Co.,
`598 F.3d 1336 (Fed. Cir. 2010) (en banc) ........................................................ 3, 4
`BSG Tech LLC v. Buyseasons, Inc.,
`899 F.3d 1281 (Fed. Cir. 2018) .......................................................................... 24
`Elec. Power Grp. LLC v. Alstom, S.A.,
`830 F.3d 1350 (Fed. Cir. 2016) .......................................................................... 19
`Interval Licensing LLC v. AOL, Inc.,
`896 F.3d 1335 (Fed. Cir. 2018) .................................................................... 21, 22
`Knowles Elecs. LLC v. Cirrus Logic, Inc.,
`883 F.3d 1358 (Fed. Cir. 2018) ............................................................................ 6
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .....................................................................................passim
`Lockwood v. Am. Airlines, Inc.,
`107 F.3d 1565 (Fed. Cir. 1997) ............................................................................ 3
`Trading Techs Int’l, Inc. v. IBG LLC,
`921 F.3d 1084 (Fed. Cir. 2019) .......................................................................... 23
`Statutes
`35 U.S.C. § 112 ........................................................................................................ 25
`35 U.S.C. § 112, ¶ 1 ................................................................................................... 3
`35 U.S.C. § 316(d) ............................................................................................... 2, 25
`35 U.S.C. § 316(d)(3)............................................................................................. 3, 6
`
`iii
`
`

`

`TABLE OF AUTHORITIES
`(continued)
`
`Page(s)
`
`Other Authorities
`37 C.F.R. § 42.20(c) ................................................................................................... 2
`37 C.F.R. § 42.121(a)(2)(ii) ....................................................................................... 3
`37 C.F.R. § 42.121(b)(1) ............................................................................................ 3
`
`
`iv
`
`

`

`LIST OF EXHIBITS
`
`No.
`1001 U.S. Patent No. 8,326,327
`
`Description
`
`1002 Declaration of Dr. Samrat Bhattacharjee
`
`1003 CV of Dr. Samrat Bhattacharjee
`
`1004 U.S. Patent No. 8,750,906 (“Winkler”)
`
`1005 U.S. Patent Application Publication 2008/0250337 (“Lemmela”)
`
`1006 U.S. Patent Application Publication 2007/0281716 (“Altman”)
`
`1007
`
`File History of U.S. Patent No. 8,326,327
`
`1008 U.S. Patent No. 7,593,740 (“Crowley”)
`
`1009 RESERVED
`
`1010 Complaint for Patent Infringement, Case No. 2:18-cv-02693, CD CA
`
`1011 U.S. Patent Application Publication 2011/0199479 (“Waldman”)
`
`1012 Declaration of Chad J. Peterman
`
`1013 U.S. Patent No. 9,507,778 (“Jaffe”)
`
`1014 U.S. Patent No. 10,454,995 to Eyal et al. (“Eyal”)
`
`1015 Nokia 770 Internet Tablet with Linux. May 25, 2005.
`https://www.gsmarena.com/nokia_770_internet_tablet_with_linux-
`news-124.php
`
`1016
`
`2005 Nokia N770 Internet Overview and Unboxing (PalmOS Linux
`Device). August 31, 2016. https://www.youtube.com/watch?v=HIB9p7-
`MsdQ
`
`1017
`
`Star Trek meets Linux on Nokia 770 LCARS PADD. October 22, 2006.
`https://www.youtube.com/watch?v=YwXBPjLdJnU
`
`1018 RESERVED
`
`
`
`

`

`Opposition to Patent Owner’s Motion to Amend
`
`1019 RESERVED
`
`1020 Rebuttal Declaration of Dr. Samrat Bhattacharjee
`
`1021 Getting your location with Maps: iPhone and iPod Touch Essential
`Training from lynda.com. June 24, 2010.
`https://www.youtube.com/watch?time_continue=31&v=RVjYSAakpmY
`&feature=emb_title.
`
`1022 Transcript of Deposition of Patrick McDaniel, Blackberry Limited v.
`Snap Inc., Case Nos. CV 18-2693-GW (C.D. Cal. February 5, 2019)
`
`1023 Declaration of Patrick McDaniel Regarding Claim Construction, Case
`Nos. CV 18-2693-GW (C.D. Cal. January 17, 2019)
`
`1024 Transcript of Deposition of Patrick McDaniel, IPR2019-00714 and
`IPR2019-00715 (March 6, 2020)
`
`Federal Communications Commission, Fourteenth Report (May 10,
`2010)
`
`Joint Claim Construction and Prehearing Statement, Blackberry Limited
`v. Snap Inc., Case Nos. CV 18-1844-GW & 18-2693-GW (C.D. Cal.
`February 14, 2019)
`
`1025
`
`1026
`
`
`
`vi
`
`

`

`Opposition to Patent Owner’s Motion to Amend
`
`I.
`
`Introduction
`Patent Owner’s Motion to Amend challenged claim 2 (Paper 13 (“Mot.”))
`
`should be denied because proposed substitute claim 21 lacks written description
`
`support in the original disclosure, is unpatentable over the prior art, and does not
`
`overcome the District Court’s determination the ’327 patent is patent-ineligible.
`
`II. Claim construction of the term “action spot”
`As the Board acknowledged on Institution (Paper 9 (“Inst. Dec.”)), and as
`
`Petitioner explains in its concurrent-filed Reply (Paper 22 at 4-8), Patent Owner’s
`
`attempt to import temporal limitations from any construction of “action spot” in
`
`isolation to the recited “determin[ing] at least one action spot . . .” in full context
`
`of the limitation as a whole, contradicts the plain language of the claims and
`
`express disclosure in the specification, and has been rejected by the District Court.
`
`Patent Owner confuses an “action spot” in the abstract, which may
`
`correspond to a location where mobile device activity “is occurring” (Ex. 1001,
`
`2:63-65), with “determin[ing] at least one action spot,” which the claims make
`
`clear is a determination of past tense activity—one “correspond[ing] to a location
`
`where at least one other mobile device has engaged in documenting action within
`
`a predetermined period of time” (id., 19:26-31). The “predetermined period of
`
`time” includes time periods of thirty minutes to twenty-four hours, to “any other
`
`time period,” id. at 8:28-39, and the specification repeatedly describes determined
`
`1
`
`

`

`Opposition to Patent Owner’s Motion to Amend
`
`“action spots” as reflecting mobile device activity that has occurred in the past, not
`
`activity that is presently occurring. Id. at 3:66-4:4, 3:32-35, 6:51-56, 6:32-36.
`
`The District Court interpreted the claims without the temporal limitations
`
`imported by Patent Owner, observing that the claims state an “action spot”
`
`corresponds to a location where “a user ‘has engaged’ in documenting activity,
`
`with no limits in time,” and “do not on their face require ‘automatic,’ ‘periodic,’ or
`
`otherwise timely updates of action spot information,” as the “plain meaning” of the
`
`claims suggest that “action spots” can “cover durations of time of undefined
`
`length.” Ex. 2005, 40. Patent Owner’s desired construction contradicts the District
`
`Court’s interpretation of the claims in its summary judgment order. Id. at 40-43.
`
`Regardless, even if an unsupported temporal limitation is imported into the
`
`claims requiring “action spots” to consider only presently occurring activity,
`
`substitute claim 21 would still have been obvious over prior art. See section IV.D.
`
`III. Substitute claim 21 does not comply with 35 U.S.C. § 316(d) because
`there is no written description support for a mobile device that can be
`configured to “provide a pop-up display of said posted video”
`As a threshold matter, Patent Owner’s motion should be denied because
`
`Patent Owner has not met its burden under 37 C.F.R. § 42.20(c) to demonstrate
`
`that proposed substitute claim 21 complies with 35 U.S.C. § 316(d) and does not
`
`introduce new matter. In particular, Patent Owner has not met its threshold burden
`
`to demonstrate that substitute claim 21’s “pop-up display of said posted video” has
`
`2
`
`

`

`Opposition to Patent Owner’s Motion to Amend
`
`written description support under 35 U.S.C. § 112, ¶ 1 in the ’327 patent’s
`
`originally-filed specification (“’676 application”). See 37 C.F.R. § 42.121(b)(1).
`
`Before permission to enter a substitute claims is granted, “Rule 42.20(c)
`
`imposes a burden on the patent owner . . . to show that the amendments do ‘not
`
`enlarge the scope of the claims of the patent or introduce new matter’ as required
`
`by 35 U.S.C. § 316(d)(3),” a separate requirement from the “burden to prove the
`
`overall patentability of the amended claim.” Aqua Prods., Inc. v. Matal, 872 F.3d
`
`1290, 1317 (Fed. Cir. 2017) (en banc) (O’Malley, J.). If Patent Owner cannot meet
`
`this initial burden, the Board may deny its motion to amend. 37 C.F.R.
`
`§ 42.121(a)(2)(ii); Trial Practice Guide, 37.
`
`To satisfy the written description requirement, the “four corners of the
`
`specification” must describe the claimed invention in such detail that a person of
`
`ordinary skill in the art (“POSITA”) can reasonably conclude the inventor had
`
`possession of the claimed invention at the relevant filing date. Ariad Pharms., Inc.
`
`v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (“[T]he
`
`hallmark of written description is disclosure.”). A description that only “renders
`
`obvious the invention” is not sufficient to satisfy § 112, ¶ 1. See Lockwood v. Am.
`
`Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
`
`Patent Owner has not met its initial burden to show at least substitute claim
`
`21’s recitation of a “pop-up display of said posted video” complies with the written
`
`3
`
`

`

`Opposition to Patent Owner’s Motion to Amend
`
`description requirement. Indeed, Patent Owner does not allege the ’676 application
`
`discloses pop-up display of video posting activity. See Mot., 5-6. Rather, Patent
`
`Owner argues it “provides support for pop-up display of a photo or other ‘recent
`
`posting,’” and because it elsewhere describes video posting, “taken as a whole, the
`
`disclosure of the 676 application” supports the claimed feature. Id.
`
`But a generic plea to “take[] as a whole” the disclosure, without identifying
`
`anything in its four corners that shows the inventor had possession of a pop-up
`
`display of posted video, cannot meet the statutory requirements. See Ariad, 598
`
`F.3d at 1351. Patent Owner’s conspicuous inability to identify support for a pop-up
`
`display of posted video is unsurprising—the specification does not include any
`
`such disclosure. In connection with a “pop-window” displayed next to an action
`
`spot, the ’676 application provides examples of “additional information relating to
`
`the documenting activity” that can be provided in this pop-up window. Ex. 2007
`
`¶ 48 (number of mobile devices engaging in documenting activity, summary of the
`
`venue, monument, or landmark, date and time of most recent documenting action,
`
`most recent photo posted on a virtual forum by a mobile device, most recent
`
`posting on a virtual forum). None of these examples describes displaying video
`
`posting activity, as recited in substitute claim 21. Ex. 1020, ¶¶ 86-87.
`
`Patent Owner’s expert conceded that none of the cited figures or portions of
`
`the specifications to support this proposed limitation describe a pop-up display
`
`4
`
`

`

`Opposition to Patent Owner’s Motion to Amend
`
`with video. Ex. 1024, 178:5-17, 174:12-16 (no support in cited figures), 176:22-
`
`177:17, 179:16-20, 183:11-18, 184:3-189:7 (no support in cited paragraphs of
`
`specification). Patent Owner’s expert conceded that where the specification
`
`identified posting of videos, it was “not the context” of pop-up displays, but in
`
`context of a server “monitoring phones that capturing videos.” Id. at 184:3-187:4.
`
`That the specification does not describe pop-up displays with video in detail
`
`is consistent with testimony by Patent Owner’s expert during the related District
`
`Court litigation, where he admitted “[i]t would have been rather difficult” for
`
`ordinary mobile phones to post videos by the ’327 patent’s earliest priority date
`
`because of the “bandwidth requirements” and the “slower” speed of the networks.
`
`Ex. 1024, 152:16-153:19; Ex. 1022, 27:9-16. In this proceeding, Patent Owner’s
`
`expert also conceded it would have been “a little challenging” to “store all that data
`
`on a phone at that time as well as move it onto the network” due to the limited
`
`memory on phones at that timeframe. Ex. 1024, 153:20-154:11.
`
`Beyond the pop-up displays of video posts alone, Patent Owner also fails to
`
`identify written description support for use of pop-up display of video posts across
`
`the full scope recited by substitute claim 21, and in particular as containing video
`
`posts (1) occurring “within a predetermined period of time,” and (2) for action
`
`spots without the “most” activity. Ex. 1020 ¶ 88. For example, the ’676 application
`
`only references pop-up displays of (non-video) information on the most recent
`
`5
`
`

`

`Opposition to Patent Owner’s Motion to Amend
`
`postings and for the action spot with the most activity. Ex. 2007 ¶ 48.
`
`On a more fundamental level, Patent Owner’s reliance on disclosure of a
`
`broad genus of pop-up displays of posts with “additional information” cannot
`
`provide written description support for a narrow species of pop-up displays of the
`
`claimed video posts, where that species is not expressly disclosed. See Knowles
`
`Elecs. LLC v. Cirrus Logic, Inc., 883 F.3d 1358, 1365 (Fed. Cir. 2018) (no written
`
`description suppoprt where “[s]pecification merely discloses a genus. . . [but] fails
`
`completely to disclose the newly claimed species”). A POSITA’s knowledge and
`
`extrinsic evidence cannot overcome failure to disclose the species within the four
`
`corners of the specification. See id. at 1366 (“‘the state of the art at the time of
`
`filing’ and ‘prior art knowledge’ that would have demonstrated that a PHOSITA
`
`knew” of “newly claimed species” cannot replace actual specification disclosure).
`
`Patent Owner has not met its initial burden to show substitute claim 21 does
`
`not introduce new matter, and the Board should deny its motion to amend for this
`
`reason alone. Aqua Prods., 872 F.3d at 1317; 35 U.S.C. § 316(d)(3).
`
`IV. Substitute claim 21 is obvious
`Of the features added to substitute claim 21, Patent Owner focuses on those
`
`related to video content ([21e], [21g], and [21i]). Mot., 9-13.1 Video posting and
`
`
`1 Patent Owner’s contentions in its motion (Mot. 13-19) that mirror those made in
`
`6
`
`

`

`Opposition to Patent Owner’s Motion to Amend
`
`processing was known, and is taught by references like Eyal and Jaffe.2 Ex. 1020,
`
`¶¶ 169-88. Adding video content features to the Petition’s Lemmela-Crowley and
`
`Winkler-Altman systems renders substitute claim 21 obvious.
`
`Prior art teaches or suggests a “touch sensitive display” [21b]
`A.
`Substitute claim 21 specifies that the mobile device’s display is “touch
`
`sensitive.” Lemmela and Winkler both teach a mobile device with a touch sensitive
`
`display. Ex. 1020, ¶¶ 127-34. Lemmela discloses “mobile device 50” including a
`
`“touch screen.” Ex. 1005, FIG. 6, ¶ 41. Lemmela also discloses a Nokia 770
`
`tablet, which included a touch-sensitive display. Id. at FIG. 5, ¶¶ 22, 39; see Ex.
`
`1015-17. Winkler discloses “mobile device 100” including a “touchscreen.” Ex.
`
`1004, FIG. 1, 3:31-34. Winkler discloses iPhones (see id. at FIG. 2A), which have
`
`always had touch sensitive displays. Ex. 1020, ¶ 129.
`
`Prior art teaches or suggests the claimed “interactive map” [21c]
`B.
`Lemmela and Winkler both teach a “user interface comprising an interactive
`
`
`its Response (Paper No. 14) are addressed in full in Petitioner’s Reply. Petitioner
`
`also notes that Patent Owner’s expert offered no opinions on objective indicia of
`
`nonobviousness. See Ex. 1024, 79:14-82:8.
`
`2 Eyal and Jaffe (Exs. 1014 and 1013) are additional prior art directed to proposed
`
`substitute claim 21. See Trial Practice Guide, 39.
`
`7
`
`

`

`Opposition to Patent Owner’s Motion to Amend
`
`map” that “includes geographic locations and is manipulatable by user input on the
`
`touch sensitive display.” Ex. 1020, ¶¶ 135-49. Winkler and Lemmela describe map
`
`interfaces that include geographic locations. Ex. 1004, FIGS. 5-7B, Abstract, 3:31-
`
`34; Ex. 1005, FIGS. 1, 3A-C, 5-6, ¶¶ 22, 26-27, 36, 41. The map interfaces are
`
`interactive and manipulatable by user input on the touch sensitive display. Ex.
`
`1020, ¶¶ 135-49. For example, Winkler discloses users may create map elements
`
`by “select[ing] a location on the map via a touch screen” and, in response, the map
`
`application will “present one or more user-selectable icons to place at the location”
`
`and then display a “refresh[ed] map application” including this icon at the location
`
`“selected by the user.” Ex. 1004, 10:10-39; see also id., 7:35-45, 9:40-49, 12:11-
`
`28. Similarly, Lemmela teaches “[u]sers may switch back and forth between
`
`different views” on the map by “using any selection method provided by the user
`
`interface.” Ex. 1005, ¶ 31; see also id., FIGS. 2A-B, ¶¶ 26, 32, 36.
`
`Lemmela and Winkler also both teach or suggest displaying these maps
`
`“after an application configured to determine action spots has been selected.” Ex.
`
`1020, ¶¶ 150-57. Winkler discloses that for its system to generate and update map
`
`elements, a user must first “select[] a map application,” which allows the mobile
`
`device to “launch[] a map application to display a map.” Ex. 1004, 10:10-14.
`
`Lemmela discloses mobile devices “access[ing] Internet applications that include
`
`location postings and other information,” and its exemplary mobile device, the
`
`8
`
`

`

`Opposition to Patent Owner’s Motion to Amend
`
`Nokia 770 Tablet, allowed users to launch applications by selecting icons on the
`
`device’s display. Ex. 1005, ¶ 40; Ex. 1016-17. At a minimum, a POSITA would
`
`have understood Lemmela’s interface as a selectable application, as this is how
`mobile devices at the time functioned. Ex. 1020, ¶¶ 155-56.
`Prior art teaches or suggests signifying “the current location of
`C.
`the mobile device as an icon on the interactive map” [21f]
`Lemmela and Winkler both disclose signifying “the current location of the
`
`mobile device as an icon on the interactive map.” Ex. 1020, ¶¶ 158-68. Winkler’s
`
`system generates a map element icon “based on the input identifying a location of
`
`a user’s mobile device” and displays this icon by “refresh[ing] the map application
`
`to display the updated map to the user.” Ex. 1004, 10:17-19, 10:22-39. Lemmela
`
`discloses icons representing the locations of grouped posts, which “typical[ly]”
`
`correspond to the current location of the poster. Pet., 52-53. Ex. 1005, ¶ 33.
`
`Substitute claim 21 does not require the current location icon to be distinct from
`
`the action spot icon. Ex. 1020, ¶ 166.
`
`D.
`
`Prior art teaches or suggests action spots and activity level
`corresponding to posted video and recording activity [21e & 21g]
`As demonstrated in the Petition and Reply, the Lemmela-Crowley and
`
`Winkler-Altman systems both teach determining and displaying the action spots
`
`and activity level of challenged claim 2. To the extent Lemmela and Winkler do not
`
`explicitly teach documenting activity comprising posted video or activity level
`
`9
`
`

`

`Opposition to Patent Owner’s Motion to Amend
`
`comprising video recording activity (which Petitioner does not concede), Eyal and
`
`Jaffe each teach related systems that process video posts. Ex. 1020, ¶¶ 169-88.
`
`When Eyal or Jaffe’s video features are combined with the Lemmela-Crowley or
`
`Winkler-Altman systems, the resulting systems would have (1) determined action
`
`spots where “documenting action” “compris[es] a posted video,” and (2) indicated
`
`“activity level” “including video recording activity.” Id., ¶¶ 180-88.
`
`Eyal and Jaffe teach systems that process video posts
`1.
`Eyal and Jaffe teach systems that process location-based video posts. Id.,
`
`¶¶ 169-79. Eyal teaches a system where “content items [which] may be video
`
`clips” are associated with “a geographic location relating to the item of content.”
`
`Ex. 1014, 2:14-21, 3:20-21. This geographic location may be the location at which
`
`the video was posted to Eyal’s system. Id., 7:45-48 (“at the time of upload”), 4:57-
`
`62, 7:22-67. Eyal teaches a map interface for displaying to other users video clips
`
`associated with locations. Id., FIGS. 2, 5, 1:28-4:19, 6:48-62, 8:55-9:56.
`
`Jaffe teaches a system where “media objects,” including “moving images,”
`
`are “geographically referenced.” Ex. 1013, 1:7-12, 3:63-4:4, 1:60-67. The
`
`“geographical reference data associated with the media object” can include the
`
`location where the media was captured, or a user-entered location. Id., 5:10-16,
`
`7:49-60. Either of these locations can be the location at which the media was
`
`posted to the system. Ex. 1020, ¶ 179. Jaffe teaches a map interface that groups
`
`10
`
`

`

`Opposition to Patent Owner’s Motion to Amend
`
`and displays these “geo-referenced media objects” to users. Ex. 1013, FIGS. 2A-
`
`B, 4, 5:17-25, 5:43-6:2. Eyal and Jaffe are both prior art to the ’327 patent under at
`
`least 35 U.S.C. § 102(e).
`
`2.
`
`Lemmela-Crowley combined with Eyal or Jaffe teaches
`substitute claim 21’s action spots and activity level
`These combinations would have resulted in the Lemmela-Crowley system
`
`processing video posts instead of, or in addition to, Lemmela’s textual posts. Ex.
`
`1020, ¶¶ 180-82, 187. Patent Owner contends video is “antithetical” to Lemmela
`
`because Lemmela groups posts based on common associated words. Mot., 12. But
`
`videos could have been associated with words just like textual posts. Ex. 1020,
`
`¶¶ 180-82, 187. Videos contain associated metadata, which often included textual
`
`tags. Id. Jaffe describes this feature. See id., ¶ 126. Jaffe’s video posts contained
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`“textual tags” identifying related “textual topics” and were grouped according to
`
`these tags. Ex. 1013, FIG. 4, 13:22-48, 2:56-62, 4:61-66, 6:63-7:48, 10:50-60.
`
`3.
`
`Winkler-Altman combined with Eyal or Jaffe teaches
`substitute claim 21’s action spots and activity level
`The Winkler-Altman system teaches “map elements” as action spots when
`
`certain conditions are met, including the presence of “a certain frequency or
`
`amount of activity” at that location. Pet., 23-26; Reply, 6-20. Combining Eyal or
`
`Jaffe’s video posts would have resulted in the Winkler’s map element “activity”
`
`comprising video instead of, or in addition to, other activity described in Winkler.
`
`11
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`

`

`Opposition to Patent Owner’s Motion to Amend
`
`Ex. 1020, ¶¶ 183-85, 188.
`
`E.
`
`Prior art teaches or suggests an action spot as a “selectable
`graphical item” that “provide[s] a pop-up display of posted
`video” [21i]
`Eyal and Jaffe disclose selectable graphical items that provide pop-up
`
`displays of videos posted at a location. Ex. 1020, ¶¶ 192-93, 196-201. When these
`
`features are combined with Winkler-Altman, the resulting system would have
`
`included selectable action spot icons that provide a pop-up display of “said posted
`
`video,” as recited in substitute claim 21. Id., ¶¶ 194-95, 203. Lemmela teaches a
`
`selectable icon providing a pop-up display of content posted at a location, but to
`
`the extent it does not explicitly teach this display providing the claimed “posted
`
`video” content, Lemmela-Crowley combined with Eyal or Jaffe’s video posts (see
`
`section IV.D.2) would have provided a selectable icon with a pop-up display of
`
`“said posted video,” as recited in substitute claim 21. Id., ¶¶ 189-91, 202.
`
`1.
`
`Eyal and Jaffe teach a “selectable graphical item”
`“provid[ing] a pop-up display of” posted videos
`Eyal and Jaffe each teach selectable icons that provide a pop-up display of
`
`video posts. Ex. 1020, ¶¶ 192-93, 196-201. Eyal teaches a map interface where
`
`users may “select” the icons associated with different locations in order to view the
`
`content posted at that location. Ex. 1014, FIGS. 2, 6:50-62. Eyal explains “[t]he
`
`video may start playing [] when a user clicks a location or icon on the user
`
`interface,” and “the video is displayed above the map as an overlay.” Id., 8:60-67,
`
`12
`
`

`

`Opposition to Patent Owner’s Motion to Amend
`
`3:40-41. Similarly, Jaffe teaches a map interface where video posts are represented
`
`by icons like “squares” or “thumbnail images” “overlying [the] map” in the
`
`location of its “associated geo-reference.” Ex. 1013, FIGS. 2A-B, 4, 5:43-49, 6:6-
`
`10. These icons “may be selected by a user” to provide a pop-up display of the
`
`underlying video posts, such as the pop-up depicted in Figure 2B. Id.
`
`2.
`
`Lemmela teaches selectable icons providing pop-up
`content display, and Lemmela-Crowley combined with
`Eyal or Jaffe’s video posts teaches pop-up video content
`Lemmela teaches that, in response to selection by a user, its icons provide a
`
`pop-up display of posts associated with a location. Ex. 1020, ¶¶ 189-191, 202. For
`
`example, Figures 2A-B present “different views” that users may “switch back and
`
`forth between” “by selecting” icons on the map interface (Ex. 1005, ¶ 31):
`
`Figure 2A provides a pop-up display of the “location postings 30” associated with
`
`“cloud 32.” Id.
`
`
`
`Thus, when Lemmela-Crowley is combined with Eyal or Jaffe’s video posts
`
`
`
`13
`
`

`

`Opposition to Patent Owner’s Motion to Amend
`
`(see section IV.D.2), Lemmela’s selectable icon would have provided a pop-up
`
`display of video posts, as recited in substitute claim 21. Ex. 1020, ¶ 202.
`
`3.
`
`Winkler-Altman combined with Eyal or Jaffe teaches
`substitute claim 21’s “selectable graphical item”
`“provid[ing] a pop-up display of said posted video”
`If Eyal or Jaffe’s selectable graphical items providing a pop-up video
`
`display were added to Winkler-Altman, the resulting systems would have provided
`
`“selectable” icons “provid[ing] a pop-up display of said posted video,” as recited in
`
`substitute claim 21. Ex. 1020, ¶¶ 194-95, 203. The resulting systems would have
`
`signified Winkler’s dynamically modified “map element” icons as action spots
`
`when certain conditions were met, including the presence of certain activity at an
`
`icon’s location. Pet., 23-26; Reply, 6-20. It would have provided an additional
`
`feature: users could have selected a map element icon to view a pop-up display of
`
`the underlying video posting activity. Ex. 1020, ¶¶ 194-95, 203. Winkler ascribes
`
`this feature to other disclosed map elements, demonstrating it was technically
`
`feasible at the time and consistent with Winkler’s invention. Id.; Ex. 1004, 9:40-43.
`
`F. Reasons to combine Lemmela-Crowley with Eyal/Jaffe video posts
`A POSITA would have been motivated to combine Lemmela-Crowley with
`
`Eyal or Jaffe’s video posts in order to create substitute claim 21’s system. See KSR
`
`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415-21 (2007); Ex. 1020, ¶¶ 204-220.
`
`Modifying Lemmela-Crowley in view of Eyal or Jaffe would have involved
`
`14
`
`

`

`Opposition to Patent Owner’s Motion to Amend
`
`combining prior art elements according to known methods to yield predictable
`
`results. See KSR, 550 U.S. at 416-17; Ex. 1020, ¶¶ 209, 216. Video post processing
`
`was known in the art. See Ex. 1014, 1:13-19 (“Prior art references purport to
`
`disclose GPS video mapping systems”); see generally Exs. 1013-14. Applying
`
`Lemmela’s invention to video posts was also known in the art, as
`
`grouping/displaying video posts based on location and “salient words” was
`
`described in Jaffe. For example, Lemmela’s map displays a location where
`
`“shopping” posts are popular, and Jaffe’s map displays a location where “twin
`
`peaks” videos are popular:
`
`
`
`Compare Ex. 1005, ¶¶ 7-16 with Ex. 1013, FIG. 4, 13:22-48, 2:56-62, 4:61-66,
`
`6:63-7:1, 7:39-48, 10:50-60. Because the combination was known in the art, the
`
`result would have been predictable. Ex. 1020, ¶¶ 209, 216.
`
` Modifying Lemmela-Crowley in light of Eyal or Jaffe would have involved
`
`simple substitution of one known element for another to obtain predictable results.
`
`See KSR, 550 U.S. at 417; Ex. 1020, ¶¶ 210, 217. Lemmela-Crowley taught
`
`15
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`

`

`Opposition to Patent Owner’s Motion to Amend
`
`processing of location-based posts to determine salient words. Ex. 1005, ¶¶ 7-16,
`
`29, 33-38. Combining this system with Eyal or Jaffe’s video posts would have
`
`required substituting one type of known post for another. Ex. 1020, ¶¶ 210, 217.
`
`Modifying Lemmela-Crowley in light of Eyal or Jaffe would have also
`
`involved the use of known techniques to improve similar systems in the same way.
`
`See KSR, 550 U.S. at 417; Ex. 1020, ¶¶ 211-12, 218-19. As described above, the
`
`proposed combinations would have involved only known techniques. The Eyal and
`
`Jaffe systems are similar to the Lemmela system and are meant to address similar
`
`proble