Trials@uspto.gov
`571-272-7822
` 
`
`Paper 26
`Date: March 30, 2020
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SNAP INC.,
`Petitioner,
`v.
`BLACKBERRY LIMITED,
`Patent Owner.
`____________
`
`IPR2019-00715
`Patent 8,326,327 B2
`____________
`
`
`Before MICHAEL R. ZECHER, MIRIAM L. QUINN, and
`AARON W. MOORE, Administrative Patent Judges.
`
`
`QUINN, Administrative Patent Judge.
`
`
`
`PRELIMINARY GUIDANCE
`PATENT OWNER’S MOTION TO AMEND
`
`
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`Patent 8,326,327 B2
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`I. INTRODUCTION
`On September 4, 2019, we instituted inter partes review of claims 1–3, 8–
`
`11, 13–15, and 20 of U.S. Patent No. 8,326,327 B2 (Ex. 1001, “the ’327 patent”).
`Paper 9 (“Institution Decision”). After institution, Patent Owner filed a Non-
`Contingent Motion to Amend. Paper 13 (“Motion” or “Mot.”). Patent Owner’s
`Motion proposes replacing claim 2 with substitute claim 21. Mot. 1, App. A.
`Patent Owner also requests that we provide a Preliminary Guidance on the Motion
`in accordance with the Board’s pilot program concerning motion to amend practice
`and procedures. Mot. 1; see also Notice Regarding a New Pilot Program
`Concerning Motion to Amend Practice and Procedures in Trial Proceedings Under
`the America Invents Act Before the Patent Trial and Appeal Board, 84 Fed. Reg.
`9,497 (Mar. 15, 2019) (providing a patent owner with the option to receive
`preliminary guidance from the Board on its motion to amend) (“Notice”).
`Petitioner filed an Opposition to the Motion. Paper 24 (“Opposition” or “Opp.”).
`We have considered Patent Owner’s Motion and Petitioner’s Opposition and the
`associated arguments and evidence.
`In this Preliminary Guidance, we provide information indicating our initial,
`preliminary, non-binding views on whether Patent Owner has shown a reasonable
`likelihood that it has satisfied the statutory and regulatory requirements associated
`with filing a motion to amend in an inter partes review and whether Petitioner (or
`the record) establishes a reasonable likelihood that the substitute claims are
`unpatentable. See 35 U.S.C. § 316(d) (2018); 37 C.F.R. § 42.121 (2019);
`Lectrosonics, Inc. v Zaxcom, Inc., IPR2018-01129, Paper 15 (PTAB Feb. 25, 2019)
`(precedential); see also Notice, 84 Fed. Reg. at 9,497 (“The preliminary
`guidance . . . provides preliminary, non-binding guidance from the Board to the
`parties about the [motion to amend].”). In the final written decision, we will
`
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`IPR2019-00715
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`determine whether the substitute claim is unpatentable by a preponderance of the
`evidence based on the entirety of the record, including any opposition made by the
`petitioner. Lectrosonics, Paper 15 at 4.
`For purposes of this Preliminary Guidance, we focus on proposed substitute
`claim 21, and specifically, on the amendments proposed in the Motion. See
`Notice, 84 Fed. Reg. at 9,497. We do not address the patentability of the
`originally challenged claims 1–3, 8–11, 13–15, and 20. Id. Moreover, in
`formulating our preliminary views on the Motion and Opposition, we have not
`considered the parties’ other substantive papers on the underlying merits of
`Petitioner’s challenges. We emphasize that the views expressed in this Preliminary
`Guidance are subject to change upon consideration of the complete record,
`including, if applicable, any revision to the Motion filed by Patent Owner.  Thus,
`this Preliminary Guidance is not binding on the Board when rendering a final
`written decision. See id. at 9,500.
`II. PRELIMINARY GUIDANCE
`A. Statutory and Regulatory Requirements
`For the reasons discussed below, at this stage of the proceeding, and based
`on the current record, Patent Owner appears to have shown a reasonable likelihood
`that it has satisfied the statutory and regulatory requirements under 35 U.S.C.
`§ 316(d) and 37 C.F.R. § 42.121(a) associated with filing a motion to amend for
`proposed substitute claim 21.
`
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`1. Reasonable Number of Substitute Claims
`
`Does Patent Owner propose a reasonable number of substitute
`claims? (35 U.S.C. § 316(d)(1)(B))
`Yes. Patent Owner proposes to replace one challenged claim with one
`substitute claim. Mot. 1. Petitioner does not contest Patent Owner’s
`arguments on this point. See generally Opp.
`2. Respond to Ground of Unpatentability
`Does the Motion respond to a ground of unpatentability involved in
`the trial? (37 C.F.R. § 42.121(a)(2)(i))
`Yes. Patent Owner presents the claim amendments in an attempt to add
`features to further distinguish proposed substitute claim 21 as patentable
`over the references asserted in the instituted grounds. In particular,
`because Patent Owner expressly addresses the Winkler, Altman, Lemmela,
`Crowley, and Waldman references, which underlie our Institution
`Decision, the Motion responds to the grounds of unpatentability involved
`in the trial. Mot. 6, 7, 9–13. Petitioner does not contest Patent Owner’s
`arguments on this point. See generally Opp.
`3. Scope of Amended Claims
`Does the amendment seek to enlarge the scope of the claims? (35
`U.S.C. § 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii))
`No. Proposed substitute claim 21 includes narrowing limitations as
`compared to original claim 2. See Mot. 1, App. A. Petitioner does not
`contest Patent Owner’s arguments on this point. See generally Opp.
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`4. New Matter
`Does the amendment seek to add new subject matter? (35 U.S.C.
`§ 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii))
`No. On the current record, Patent Owner appears to have set forth
`adequate written description support for the amendments of proposed
`substitute claim 21. See Mot. 1–5 (citing Ex. 2007 ¶¶ 20, 22, 23, 26–30,
`32, 33, 35, 36, 41, 48, 61, Figs. 1–4, 9, 10).1
`Petitioner contends written description support is lacking for the limitation
`“provide a pop-up display of said posted video” in proposed substitute
`claim 21. Opp. 2–6. Specifically, Petitioner acknowledges that “[i]n
`connection with a ‘pop-up 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.”
`Id. at. 4 (citing Ex. 2007 ¶ 48). But, Petitioner argues, “[n]one of these
`examples describes displaying video posting activity, as recited in
`substitute claim 21.” Id. (citing Ex. 1020 ¶¶ 86, 87).2 Rather, Petitioner
`argues, “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 [are] capturing videos.’”
`Id. at 5 (citing Ex. 1024, 184:3–187:4).3 “[D]isclosure of a broad genus of
`pop-up displays of posts with ‘additional information’ cannot,” Petitioner
`asserts, “provide written description support for a narrow species of pop-
`up displays of the claimed video posts, where that species is not expressly
`disclosed.” Id. at 6 (emphases omitted).
`The test for satisfying the written description requirement, under 35 U.S.C.
`§112, first paragraph,4 “is whether the disclosure of the application relied
`                                                            
`1 Exhibit 2007 refers to U.S. Patent Appl. No. 12/870,676 (“the ’676 application”),
`which was filed August 27, 2010 and issued as the ’327 patent on December 4,
`2012.
`2 Exhibit 1020 refers to the Rebuttal Declaration of Dr. Samrat Bhattacharjee.
`3 Exhibit 1024 refers to the Deposition Transcript of Dr. Patrick D. McDaniel for
`the deposition conducted March 6, 2020 in this proceeding.
`4 The ’676 application that issued as the ’327 patent was filed before the effective
`date of Section 4(c) of the Leahy-Smith America Invents Act (“AIA”), Pub. L. No.
`112–29, 125 Stat. 284, 287–88 (2011) (effective Sept. 16, 2012). Therefore, in
`evaluating the relevant amendments we refer to the pre-AIA version of § 112.
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`upon reasonably conveys to those skilled in the art that the inventor had
`possession of the claimed subject matter as of the filing date.” Ariad
`Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
`banc). At this juncture, we agree with Patent Owner that the Specification
`of the ’676 application provides proper written description support for the
`proposed substitute claim 21 limitation “provide a pop-up display of said
`posted video.”
`Specifically, Patent Owner identifies paragraphs 22, 32, 33, 35, 41, and 48
`of the Specification of the ’676 application as providing support for the
`limitation “provide a pop-up display of said posted video” in proposed
`substitute claim 21. See Mot. 5–6. Paragraph 22, in particular, describes
`“determin[ing] the at least one action spot as the location where at least
`one other mobile device is . . . posting messages, pictures, or videos on a
`social networking site.” Ex. 2007 ¶ 22. Paragraph 22 also provides “the at
`least one action spot can be determined based on at least one other mobile
`device performing a recording action, such as video recording.” Id.
`Paragraphs 32, 33, 35, and 41 similarly describe associating action spots
`with locations of the posting or recording of videos from mobile devices.
`See id. ¶¶ 32, 33, 35, 41. Paragraph 41 further describes an
`implementation shown in Figure 4 (which depicts a graphical user
`interface of a mobile device displaying a map with graphical items (see id.
`¶ 37, Fig. 4)) that includes activity icons associated with action spots,
`where an “activity icon can indicate that at least one other mobile device is
`posting a video recording to a social networking site, a video posting site,
`or any other virtual posting forum where videos can be posted.” Id. ¶ 41.
`Finally, paragraph 48 describes implementing a pop-up window proximate
`to an action spot that “can provide additional information relating to the
`documenting activity” at the action spot. Id. ¶ 48; see also id. at Fig. 6.
`For example, “the pop-up window 610 displays the most recent captured
`photo that was posted on a virtual posting forum by another mobile device
`located at the action spot 608,” or “the pop-up window 610 can display the
`most recent posting posted by another mobile device located at action spot
`604.” Id. ¶ 48.
`Accordingly, the Specification of the ’676 application describes displaying
`a pop-up window proximate to an action spot that can display not only
`“the most recent captured photo,” but also, more generally, “the most
`recent posting,” at an action spot. See id. We are persuaded that this
`disclosure, along with the disclosure that action spots can be determined
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`based on locations of video postings (see id. ¶¶ 22, 32, 33, 35, 41), would
`have conveyed possession of the limitation “provide a pop-up display of
`said posted video” recited in proposed substitute claim 21. That video
`postings are not explicitly described alongside pop-up windows does not
`alter our preliminary determination. At this juncture, we are persuaded
`that a person of ordinary skill in the art, after reading the entire
`Specification of the ’676 application, and more specifically, the
`paragraphs described above, would have understood that posted videos are
`among the additional information that can be displayed in a pop-up
`window.
`Petitioner also argues that Patent Owner’s expert concedes that “[i]t would
`have been rather difficult” and “a little challenging” to post videos using a
`mobile phone at the time of filing of the ’676 application. Opp. 5 (citing
`Ex. 1024, 152:16–154:11; Ex. 1022, 27:9–16).5 But we need not look
`beyond the intrinsic evidence of the Specification of the ’676 application.
`“[I]t is the specification itself that must demonstrate possession.” Ariad,
`598 F.3d at 1352. As discussed above, the Specification of the ’676
`application, in and of itself, would have reasonably conveyed to one of
`ordinary skill in the art possession of the disputed subject matter in
`proposed substitute claim 21.
`Petitioner additionally argues that there is no “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.” Opp. 5. “For example,” Petitioner
`asserts, “the ’676 application only references pop-up displays of (non-
`video) information on the most recent postings and for the action spot with
`the most activity.” Id. at 5–6. We are not persuaded by this argument.
`The Specification of the ’676 application describes displaying a pop-up
`window proximate to the action spot with the highest level of documenting
`activity, where the pop-up window can display the most recent posting,
`which, as discussed above, can include a video post. See Ex. 2007 ¶¶ 22,
`32, 33, 35, 41, 48. But pop-up windows are not limited to action spots
`with the highest level of documenting activity, because paragraph 49 states
`
`                                                            
`5 Exhibit 1022 refers to the Deposition Transcript of Dr. Patrick D. McDaniel for
`the deposition conducted February 5, 2019 in BlackBerry Ltd. v. Snap Inc., 2:18-
`cv-02693 (C.D. Cal.).
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`that “directions can be provided in a pop-up window 610 to any of the
`action spots 604, 608 selected by the user of the mobile device 100.” Id.
`¶ 49. And the display of the most recent posting in a pop-up window is
`presented as an exemplary implementation, not in a restrictive sense. See
`id. ¶ 48. For the reasons discussed above, and for the limited purposes of
`this Preliminary Guidance, it appears that Patent Owner has set forth
`adequate written description support for the amendments of proposed
`substitute claim 21.
`
`B. Patentability6
`For the reasons discussed below, at this stage of the proceeding, and based
`on the current record, it appears that Petitioner (or the record) has not shown a
`reasonable likelihood that proposed substitute claim 21 is unpatentable.
`
`
`Does the record establish a reasonable likelihood that the proposed
`substitute claim is unpatentable?
`No. Based on the current record, it appears that Petitioner (or the record)
`has not shown a reasonable likelihood that proposed substitute claim 21 is
`unpatentable for the reasons discussed below.
`We note that Patent Owner will have the opportunity to respond to the
`evidence cited in Petitioner’s Opposition and this Preliminary Guidance in
`a reply or in a revised motion in this proceeding. And we note that
`Petitioner will have an opportunity to address, in a sur-reply or further
`briefing on a Revised Motion, the deficiencies we note in this Guidance.
`Proposed substitute claim 21 replaces original dependent claim 2 by
`rewriting claim 2 in independent form to include the limitations of original
`independent claim 1, from which claim 2 depends, and by adding new
`limitations. See Mot. 1, App. A. The new limitations of proposed
`substitute claim 21 are as follows, with underlining indicating added
`
`                                                            
`6 We express no view on the patentability of originally challenged claims 1–3, 8–
`11, 13–15, and 20 in this Preliminary Guidance. Instead, we focus on limitations
`added to proposed substitute claim 21 in Patent Owner’s Motion to Amend.
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`words to original claims 1 and 2, and letter identifiers added for ease of
`reference:7
`[A] a touch sensitive display; and a processor module
`communicatively coupled to the touch sensitive display and
`configured to receive executable instructions to:
`[B] display, after an application configured to determine action
`spots has been selected, a graphical user interface comprising an
`interactive map on the touch sensitive display,
`[C] wherein the interactive map includes geographic locations and is
`manipulatable by user input on the touch sensitive display;
`[D] where at least one other mobile device has engaged in
`documenting action comprising a posted video within a predetermined
`period of time;
`[E] signify the at least one action spot as a selectable graphical item
`on the interactive map of the graphical user interface and the current
`location of the mobile device as an icon on the interactive map of the
`graphical user interface; and
`[F] provide an indication of activity level including video recording
`activity at the at least one action spot,
`[G] wherein the indication of activity level includes coloring the
`selectable a graphical item associated with the at least one action spot in
`accordance with a range of activity occurring at the at least one action
`spot; and
`[H] provide a pop-up display of said posted video on the graphical
`user interface of the touch sensitive display.
`See id.; Ex. 1001, claims 1, 2.
`1. Obviousness
`No, as to each of Petitioner’s grounds of unpatentability identified below.
`
`                                                            
`7 We note that Appendix A rewrites claim 2 as an independent claim, and Patent
`Owner presents, as “new” limitations of claim 2, limitations of original claim 1.
`The underlining shown in Appendix A is, therefore, not useful in understanding the
`actually new limitations to the original claims. Thus, our claim listing does not
`follow Appendix A because we underline only the language that does not appear in
`original claims 1 and 2.
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`Petitioner contends proposed substitute claim 21 is unpatentable as
`obvious on the following grounds:
`(1) Lemmela and Crowley8 with the addition of Eyal9 or Jaffe10; and
`(2) Winkler and Altman11 with the addition of Eyal or Jaffe. See Opp. 6–
`18.
`Based on the current record, it appears that Petitioner (or the record) has
`not shown a reasonable likelihood that proposed substitute claim 21 would
`have been obvious over each of the above grounds in the Opposition as
`currently proposed. Although we are persuaded by Petitioner’s arguments
`that the references teach the new limitations of proposed substitute claim
`21, Petitioner’s explanations as to why a person of ordinary skill in the art
`would been prompted to combine the references appear to be insufficient,
`as discussed in detail below.
`a) The New Limitations
`At this stage of the proceeding, and based on the current record, we are
`persuaded by Petitioner’s arguments regarding new limitations AH.
`Opp. 714. We find no evidence or argument on the present record with
`respect to the new limitations that persuasively rebuts Petitioner’s
`arguments based on the above disclosures of Lemmela-Crowley, Winkler-
`Altman, Eyal, and Jaffe.
`b) Rationales for Combining the References
`Petitioner presents several rationales for combining Eyal or Jaffe with the
`original Lemmela-Crowley combination proposed in the Petition:
`(1) “Modifying Lemmela-Crowley in view of Eyal or Jaffe would have
`involved combining prior art elements according to known methods to
`yield predictable results” (Opp. 14–15);
`(2) “Modifying Lemmela-Crowley in light of Eyal or Jaffe would have
`involved simple substitution of one known element for another to obtain
`predictable results” (Id. at. 15); and
`
`                                                            
`8 Ground 2 in the Petition, based on Lemmela (Ex. 1005) and Crowley (Ex. 1008).
`9 US 10,454,995 B2, issued October 22, 2019 (filed June 11, 2007) (Ex. 1014).
`10 US 9,507,778 B2, issued November 29, 2016 (filed May 19, 2006) (Ex. 1013).
`11 Ground 1 in the Petition, based on Winkler (Ex. 1004) and Altman (Ex. 1006).
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`(3) “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.” (Id. at. 16).
`At this stage of the proceeding, and based on the current record,
`Petitioner’s asserted rationales do not appear to be sufficiently explained,
`and therefore, are unpersuasive. For rationales (1) and (2) identified
`above, Petitioner’s arguments amount to conclusory statements that the
`elements of proposed substitute claim 21 were known in the art. Namely,
`Petitioner asserts that, “[b]ecause the combination was known in the art,
`the result would have been predictable” and “[c]ombining this system with
`Eyal or Jaffe’s video posts would have required substituting one type of
`known post for another.” Opp. 15–16. Here, Petitioner does not explain
`why a person of ordinary skill in the art would have been prompted to
`either perform a substitution or make the asserted combination. Based on
`the current record, we are not persuaded that Petitioner provides sufficient
`reasoning with a rational underpinning to explain why one of ordinary
`skill in the art would have wanted to make the combination and why the
`results would have been predicable. See KSR Int’l Co. v. Teleflex Inc., 550
`U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
`2006)). This shortcoming is particularly evident given Patent Owner’s
`expert testimony that posting videos using mobile phones at the time of
`filing of the ’676 application “would have been rather difficult” due to
`“the bandwidth requirement” and the fact that “networks were a lot slower
`then,” and moreover, that “it could be a little challenging to . . . store all
`that data on a phone at that time as well as move it onto the network.”
`Ex. 1022, 27:11–16; Ex. 1024, 153:20–154:1.
`For rationale (3) identified above, Petitioner argues that “[a]llowing video
`would have improved Lemmela as it did Eyal and Jaffe because of the
`‘broad social and practical importance’ of ‘viewing and interacting’ with
`video posts.” Opp. 16 (citing Ex. 1013, 1:14–21). However, Petitioner’s
`cited portion of Jaffe—“viewing and interacting with such collections has
`a broad social and practical importance”—relates to “large collections of
`photographs,” not video posts. See Ex. 1013, 1:14–21. Accordingly,
`Petitioner’s argument concerning rationale (3) does not appear to be
`factually supported.
`Petitioner’s expert does provide some support for rationale (3), namely, by
`asserting that “allowing a user to post videos would have been beneficial”
`and “allow[ing] users to post videos would have thus increased the
`
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`usefulness and functionality of the Lemmela-Crowley system.” Ex. 1020
`¶ 219; see id. ¶ 212. At this juncture, the testimony offers what appears to
`be generic reasoning of “beneficial” and “useful” functionality. See
`ActiveVideo Networks Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312,
`1328 (Fed. Cir. 2012) (finding that expert testimony of motivation to
`combine “to build something better,” being “more efficient, cheaper, or”
`something that “had more features,” was generic and insufficient). Thus,
`when this weak evidence is weighed against the technical challenges
`identified in Patent Owner’s declarant testimony quoted above (see
`Ex. 1022, 27:11–16; Ex. 1024, 153:20–154:1), the benefit of adding the
`video posting feature to the Lemmela-Crowley combination appears
`doubtful. Indeed, Petitioner’s expert acknowledges that “a person with no
`desire to post or see videos might have preferred a system that did not
`process videos, as this system could perhaps operate faster, require less
`processing power, and use less battery,” and that “without video, systems
`could be less obtrusive and more easily viewable in public settings without
`bothering other people.” Ex. 1020 ¶ 220; see id. ¶ 213. Petitioner’s expert
`does not provide similarly persuasive reasoning to support the assertion
`that “a user interested in viewing or posting videos may have preferred a
`system with this feature.” See Ex. 1020 ¶¶ 213, 220.
`Petitioner relies on similar rationales and supporting arguments for
`combining Eyal or Jaffe with the original Winkler-Altman combination as
`those identified above for combining Eyal or Jaffe with the Lemmela-
`Crowley combination. See Opp. 16–18. At this stage of the proceeding,
`and based on the current record, we are not persuaded by Petitioner’s
`arguments regarding the combination of Eyal or Jaffe with the Winkler-
`Altman combination for similar reasons to those discussed in detail above.
`Thus, Petitioner (or the record) has not shown a reasonable likelihood that
`proposed substitute claim 21 is obvious over the proposed ground based
`on Lemmela and Crowley, with the addition of Eyal or Jaffe and the
`proposed ground based on Winkler and Altman, with the addition of Eyal
`or Jaffe in the Opposition as currently proposed.
`
`2. Patent-Ineligibility
`No, as to Petitioner’s contention that proposed substitute claim 21 is
`patent-ineligible.
`
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`Based on the current record, it appears that Petitioner (or the record) has
`not shown a reasonable likelihood that proposed substitute claim 21 is
`patent-ineligible.
`Petitioner contends that substitute proposed claim 21 is patent-ineligible
`because it “has the same focus on ‘locating and mapping activity of
`interest’ through the collection, analysis, and display of information
`associated with an ‘action spot’ as patent-ineligible original claims 1 and
`2,” and because it “does not contain an inventive concept, as it recites only
`known and generic components and methods, both separately and as a
`whole.” Opp. 18–19, 24. Based on the current record, we are not
`persuaded by Petitioner’s arguments.
`Under the 2019 Revised Patent Subject Matter Eligibility Guidance, we
`must first evaluate whether a claim recites a judicial exception in Revised
`Step 2A, Prong One. 84 Fed. Reg. 50, 54 (Jan. 7, 2019). For abstract
`ideas, we must determine whether specific limitations fall within the
`subject matter groupings of (a) mathematical concepts, (b) certain methods
`of organizing human activity, or (c) mental processes. Id. at 52, 54. If
`identified claim limitations fall within the abstract idea groupings, we then
`proceed to Revised Step 2A, Prong Two, where we “evaluate whether the
`claim as a whole integrates the recited judicial exception into a practical
`application of the exception.” Id. at 54. Here, Petitioner does not identify
`any groupings of abstract ideas to which any limitations of proposed
`substitute claim 21 allegedly belong. See Opp. 18–23.
`Petitioner also fails to explain why proposed substitute claim 21 does not
`integrate any alleged abstract idea into a practical application (see id.),
`which is particularly problematic in light of the addition of significant new
`limitations, such as “a touch sensitive display,” an “interactive map [that]
`includes geographic locations and is manipulatable by user input on the
`touch sensitive display,” and “signify[ing] the at least one action spot as a
`selectable graphical item on the interactive map of the graphical user
`interface.” Due to these shortcomings, Petitioner (or the record) has not
`shown a reasonable likelihood that proposed substitute claim 21 is patent
`ineligible.
`Petitioner relies on similarities between substitute claim 21 and claims 1
`and 2 of the ’327 patent, which a district court found invalid under
`35 U.S.C. § 101. Opp. 18–19 (citing Ex. 2005); see also Ex. 2005, 1–2,
`38–45, 55 (granting summary judgment under 35 U.S.C. § 101 with
`respect to claims 1, 2, 3, and 9 of the ’327 patent). We note that the
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`district court’s decision is currently on appeal at the U.S. Court of Appeals
`for the Federal Circuit (case nos. 20-1256 and 20-1258) and, thus, is not a
`final judgment.
`
`
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`IPR2019-00715
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`For PETITIONER:
`
`Yar Chaikovsky
`David Okano
`PAUL HASTINGS LLP
`yarchaikovsky@paulhastings.com
`davidokano@paulhastings.com
`
`
`For PATENT OWNER:
`
`Michale T. Hawkins
`Nicholas Stephens
`Kenneth W. Darby
`Craig A. Deutsch
`Kim Leung
`FISH & RICHARDSON P.C.
`hawkins@fr.com
`nstephens@fr.com
`kdarby@fr.com
`deutsch@fr.com
`leung@fr.com
`
`Ognijen Zivojnovic
`Sam Stake
`Alex Wolinsky
`James M. Glass
`QUINN EMANUEL URQHART, & SULLIVAN, LLP
`ogizivojnovic@quinnemanuel.com
`samstake@quinnemanuel.com
`alexworlinsky@quinnemanuel.com
`jimglass@quinnemanuel.com
`
`
` 
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` 
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`15 
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`