UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SNAP, INC.,
`Petitioner
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`v.
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`BLACKBERRY LIMITED,
`Patent Owner
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`Case No. IPR2019-00715
`Patent No. 8,326,327
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`PATENT OWNER’S SUR-REPLY
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`Case No.: IPR2019-00715
`Attorney Docket No.: 21828-0041IP1
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`I. 
`II. 
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`B. 
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`2. 
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`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1 
`ARGUMENT ................................................................................................... 2 
`A. 
`Petitioner’s Reply Fails To Justify Its Departure From The
`Lexicographic/District Court Definition Of “Action Spot” In The
`Context Of The Claimed Operation Of “Determin[e]/[ing] At Least
`One Action Spot.” ................................................................................. 2 
`Petitioner’s Reply Fails To Cure Multiple Defects In the Lemmela
`Grounds ................................................................................................. 7 
`1. 
`The Reply Does Not Refute All Arguments Why The Lemmela
`Grounds Fail To Achieve Claim Elements 1[e]/10[c]/13[c] ...... 7 
`The Reply Does Not Cure The Petition’s Failure To Show How
`The Lemmela-Crowley-Winkler Combination Renders Obvious
`The “Graphical Item Identifying A Direction” Limitation
`(Claim 10) ................................................................................... 8 
`The Reply Does Not Cure Lemmela’s Failure To Render
`Obvious The “Activity Level” Limitation (Claims 1 And 13) ... 9 
`The Reply Fails To Show That A POSITA Would Have
`Applied Winkler’s Teachings In Combination With Lemmela-
`Crowley (Ground 3) or Waldman’s Teachings In Combination
`With Lemmela-Crowley (Ground 4) ......................................... 11 
`The Reply’s New Arguments Directed To Dependent Claims 3
`And 15 Are Improper and Fail To Show That Lemmela Renders
`Obvious A “Level Of Activity” Based On Actions “Within A
`Predetermined Distance From The At Least One Action Spot”
` ................................................................................................... 14 
`Petitioner’s Belated Attempt To Revive The Winkler-Altman Ground
`Is Fatally Flawed ................................................................................. 16 
`1. 
`The Reply Contravenes PTAB Rules By Introducing Entirely
`New “Scenarios” That Contradict The Petition’s Initial
`Mappings ................................................................................... 16 
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`3. 
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`4. 
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`5. 
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`C. 
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`i
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`2. 
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`Petitioner’s New Winkler Scenarios Are Unsupported And Fail
`To Meet The Claimed Requirements For Determining An
`Action Spot ............................................................................... 21 
`III.  CONCLUSION .............................................................................................. 25 
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`ii
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`EX2001
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`EX2002
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`EX2003
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`EX2004
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`EX2005
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`EX2006
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`EX2007
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`EX2008
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`EX2009
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`EX2010
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`Case No.: IPR2019-00715
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`EXHIBITS LIST
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`Declaration of Patrick McDaniel, Ph.D.
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`Corrected Final Ruling on Claim Construction/Markman
`Hearing, Blackberry Limited v. Snap Inc., Case Nos. CV 18-
`1844-GW & 18-2693-GW (C.D. Cal. April 5, 2019)
`(“Markman Order”)
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`Second Declaration of Patrick McDaniel, Ph.D.
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`Transcript of Deposition of Dr. Samrat Bhattacharjee
`(November 18, 2019)
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`Final Ruling On Defendant Snap Inc.’s Motion For Summary
`Judgment Of Invalidity Under Section 101 Of U.S. Patent Nos.
`8,825,327 And 8,326,327, Blackberry Limited v. Snap Inc.,
`Case Nos. CV 18-1844-GW & 18-2693-GW (C.D. Cal.
`October 1, 2019)
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`Disclosure Pursuant To 37 C.F.R. §42.11
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`US Appl. No. 12/870,676 (as filed)
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`Garmin: Updating Maps on Your Garmin Device (May 2010),
`available at https://www8.garmin.com/documents/instructions/
`Garmin_Map_Update_Guide.pdf (retrieved November 24,
`2019)
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`CNET Article: How To Update Your GPS Maps TomTom
`Edition (July 14, 2010), available at https://www.cnet.com/
`pictures/how-to-update-your-gps-maps-tomtom-edition-photos
`(retrieved November 24, 2019) (slideshow pictures reproduced
`in a single PDF)
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`Transcript of Second Deposition of Dr. Samrat Bhattacharjee
`(April 10, 2020)
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`iii
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`I.
`INTRODUCTION
`The Reply continues to advance arguments that are premised on an erroneous
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`claim construction and mischaracterizations of the prior art. Petitioner fails to
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`adequately explain why the Board should interpret the term “action spot” in a manner
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`that not only contradicts the ’327 patent’s lexicographic definition, but also departs
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`from the Phillips construction already imposed on the parties in the district court.
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`See POR, 15-21; EX2003, ¶¶35-41.
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`A proper construction of elements 1[e]/10[c]/13[c] (“determin[ing]” an
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`“action spot”), which aligns with the district court’s construction, is dispositive for
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`the Lemmela grounds here, especially where Section IV of the Reply never argues
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`that the Lemmela grounds achieve this requirement under such a construction.
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`Petitioner has thus waived any argument in this regard. Moreover, the Reply’s
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`Lemmela-specific arguments directed to independent claims 1, 10, and 13 and
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`dependent claims 3 and 15 only serve to highlight additional shortcomings of the
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`Lemmela grounds.
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`Finally, the Institution Decision previously determined that Ground 1 based
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`on the Winkler-Altman combination was not reasonably likely to prevail. Inst. Dec.,
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`20-24. The Reply attempts to revive the Winkler ground by introducing, for the first
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`time in this proceeding, new “Scenarios” that were never presented with particularity
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`in the Petition and, in many cases, directly contradict other statements from the
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`Petition itself. These belated theories improperly prejudice Patent Owner and should
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`be disregarded according to Federal Circuit precedent. And, even if Patent Owner
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`must suffer such prejudice, the new “Scenarios” suffer from meaningful defects
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`noted below.
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`II. ARGUMENT
`A.
`Petitioner’s Reply Fails To Justify Its Departure From The
`Lexicographic/District Court Definition Of “Action Spot” In The Context Of
`The Claimed Operation Of “Determin[e]/[ing] At Least One Action Spot.”
`Petitioner’s Reply arguments continue to disregard the ’327 patent’s
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`lexicographic definition of “action spot” as “a location or an event where at least one
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`activity is occurring relative to the current location of another mobile device.”
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`EX1001, 2:63-65 (emphasis added). Petitioner instead seeks to re-write the patent’s
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`explicit definition of “action spot” to mean a location where “activity [] has occurred
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`in the past, not activity that is presently occurring.” Reply, 3 (emphasis in original);
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`EX1020, ¶16; EX2010, 10:8-11:15.
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`Petitioner’s critical flaw is that it conflates the inputs of the claimed
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`determination of an action spot with the output of that determination. As already
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`explained in the Response, the evidence here demonstrates that the claims require a
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`particular type of output—namely, a determination of an “action spot” (a location or
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`event where activity “is occurring” relative to the “current” location of the user)—
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`which is accomplished based on input describing activity (e.g., documenting actions)
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`that has occurred at the location of the action spot. POR, 17-20; EX2003 ¶¶35-42.
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`The Reply also never addresses the fact that the output of the determination (and
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`what is conveyed to the user) is not the same as its input data. EX2003 ¶¶39-40.
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`This understanding of the claims is consistent with the embodiments in the
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`specification, the lexicographic definition of “action spot” set forth at column 2:63-
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`65, and the Phillips construction of “action spot” that was adopted by the district
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`court. EX1001, 2:63-65, 4:35-39, 8:50-62, 9:23-36; EX2002, 9; EX2003, ¶¶35 and
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`38.
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`Petitioner’s error is revealed by its assertion that “determin[e]/[ing] at least
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`one action spot” refers to the “determination of past tense activity—one
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`‘correspond[ing] to a location where at least one other mobile device has engaged
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`in a documenting action within a predetermined period of time.’” See Reply, 3
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`(emphasis in original). The claimed determination of an action spot provides more
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`meaningful information to the user—not a mere “determination of past tense
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`activity” as alleged in the Reply, and not a mere indication of whether one particular
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`input (e.g., documenting action from another mobile device) is currently ongoing or
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`concluded. Rather, the claims require determining an “action spot” so that the
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`system can attempt to inform the user of a location or event where activity “is
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`occurring” relative the “current” location of the user. EX1001, 2:63-65, 4:35-39
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`(“current happenings” in the vicinity of the user). The activity that “is occurring”
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`for the action spot which is the subject of the determined output need not be
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`coterminous with one specific input (e.g., another user’s “documenting action”).
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`Indeed, the straightforward teaching in column 4:35-44 highlights this fact.
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`EX2003, ¶9. And even if column 4 was not clear enough (which it is), this fact is
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`also abundantly clear from other parts of the specification, as exemplified in the
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`following passage:
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`In FIG. 4, the action spots … include activity icons
`indicative of the type of activity occurring at the action
`spots ….
`For example, the activity icon associated with action
`item 402 is balloons, which can be indicative of a party
`occurring at the action spot 402. That a party is taking
`place at the action spot 402 can be determined by a
`processor of the mobile device 100 or by a third-party
`server that receives data from postings[] … or any other
`source …
`…
`The activity icon associated with action spot 408 is a
`musical note, which can indicate a musical event, such as
`a musical or a concert, is occurring at action spot 408.
`The determination that a music event is occurring at action
`spot 408 can result from….
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`EX1001, 8:50-60, 9:23-36, FIG. 4 (emphasis added); see also EX1024, 197:10-18.
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`Even the excerpts from the’327 patent cited in the Reply do not support
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`Petitioner’s position. For example, the Reply crops a portion of text from the ’327
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`patent at col. 3:66-4:4 that refers to “a location where at least one other mobile device
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`has engaged in a documenting action.” Reply, 3 (emphasis in original). But the
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`very next sentence clarifies that the determination of an action spot involves
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`determining where “at least one other mobile device is composing an email,
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`composing a text message,” or is engaged in certain other activity. EX1001, 4:5-10
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`(emphasis added). Despite this evidence, Petitioner and its expert have apparently
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`taken the unusual position that it would be “impossible” for the claimed system to
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`use data from other mobile devices “that have engaged in documenting actions” to
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`reach a determination that “some type of activity is occurring” at a location or event.
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`EX2010, 12:12-13:7.
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`The Reply further mischaracterizes Patent Owner’s position as somehow
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`“import[ing] temporal limitations” into the claims that “create an arbitrary and
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`unsupported cutoff between ‘recent’ and past activity.” See Reply, 2-3. In fact,
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`Patent Owner has never proposed such a “cutoff.” As explained in the Response, it
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`is relevant to consider whether the inputs (e.g., documenting actions that user(s) have
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`engaged in) are reasonably capable of informing a determination about whether
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`present activity “is occurring” at a location. POR, 17-18. The occurrence of
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`documenting actions within a predetermined period of time are inputs that can
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`inform the system’s determination that activity “is occurring” at a location since
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`temporal proximity of the documenting actions is often correlated to the possibility
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`of present activity. See EX1024, 38:9-15, 44:10-45:8, 83:3-15 (Dr. McDaniel
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`repeatedly emphasizing that a POSITA would have known the selection of an
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`appropriate time interval “depends on the application” and its desired goals).
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`Petitioner further distorts Patent Owner’s position by arguing against a straw
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`man—the notion that Patent Owner somehow imported a claim requirement for the
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`system to “actively” query for “up-to-date information.” Reply, 8. Patent Owner
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`never imputed such a requirement, and instead simply explained why it is a factor in
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`the specific context of Lemmela’s pre-processed/raw data ported to a mobile phone
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`for subsequent local use at the phone. The District Court’s finding that the claims
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`do not require “‘automatic,’ ‘periodic,’ or otherwise timely updates of action spot
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`information” is entirely consistent with Patent Owner’s position. EX2005, 41. First,
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`the District Court’s order addressing §101 issues certainly did not alter the claim
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`construction imposed in the Markman order (EX2002), and the Board should not do
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`so here. EX2010, 14:10-15:7. Second, when read in its full context (and in accord
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`with the Markman order), the cited statements of the District Court were referring to
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`the inputs to the clamed determination of an “action spot” (e.g., documenting actions
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`engaged in by other mobile devices) rather than the output (determining a location
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`or event where activity “is occurring” relative to the current location of a first mobile
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`device). EX2005, 41.
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`B.
`Petitioner’s Reply Fails To Cure Multiple Defects In the
`Lemmela Grounds
`1.
`The Reply Does Not Refute All Arguments Why The
`Lemmela Grounds Fail To Achieve Claim Elements 1[e]/10[c]/13[c]
`Petitioner’s reply arguments addressing the Lemmela grounds suffer from
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`multiple flaws, as described further below. However, it is first critical to note what
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`is absent from Section IV of the Reply—the Section containing all of Petitioner’s
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`arguments regarding the Lemmela grounds. Specifically, it lacks any argument
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`refuting pages 23-30 of the POR, which demonstrated why the Lemmela grounds
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`fail to teach claim elements 1[e]/10[c]/13[c] (“determin[e]/[ing] at least one action
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`spot”) under Patent Owner’s construction that is consistent with both the
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`specification and the Markman order. Petitioner has thus waived these arguments.
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`Interpretation of the phrase “determin[e]/[ing] at least one action spot,” as advocated
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`by Patent Owner, would be dispositive of the Lemmela grounds.1
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`1 Note that page 2 of the Reply vaguely refers to “all instituted grounds” in a terse,
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`single-sentence conclusion. Not only does this single-sentence conclusion fail to
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`mention “Lemmela” or any argument specific to the Lemmela grounds, but it then
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`string cites to more than 10 pages of text from a declaration (EX1020, pp. 16-26)
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`2.
`The Reply Does Not Cure The Petition’s Failure To
`Show How The Lemmela-Crowley-Winkler Combination Renders Obvious The
`“Graphical Item Identifying A Direction” Limitation (Claim 10)
`The Reply doubles down on the false premise that Winkler’s disclosure of
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`changing the color of a map element as a user approaches a location represented by
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`the map element amounts to displaying a graphical item that “identif[ies] a direction”
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`in the particular manner recited in claim 10. See Reply, 25-27.
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`The Reply accuses Patent Owner of attempting to “import limitations” into
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`this claim element, but Patent Owner has done no such thing. Id. Patent Owner
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`merely observes that the teaching from Winkler relied upon for the “graphical item”
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`without any further explanation. Reply, 2. Relying upon such incorporated text in
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`this proceeding would be an improper attempt to incorporate text by reference into
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`the Reply, which must be scrutinized and rejected. Cisco Sys., Inc. v. C-Cation
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`Techs., LLC, IPR2014-00454, Paper 12, 9-10 (PTAB “informative” Aug. 29, 2014)
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`(“will not consider”). Here, the Reply would have exceeded the word-count limit
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`by more than 30% if the incorporated text from pages 14-24 of EX1020 was
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`actually deemed worthy of insertion into the Reply (which it was not). Petitioner
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`should have been aware of the APA/Due Process violations that would arise if the
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`Board endorsed such practice by relying upon any Lemmela-specific arguments
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`that Petitioner elected to exclude from its Reply. Id. (“eliminate abuses”).
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`feature fails to meet the bare minimum of what is required by the claim language—
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`i.e., a graphical item that “identif[ies] a direction, relative to the current location, in
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`which to travel in order to arrive at the determined at least one action spot.” Claim
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`10 explicitly requires that the graphical item “identify a direction” of travel, but
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`Winkler’s color-changing map element falls short. EX1004, 13:21-31. At most, the
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`color-changing map element allows the user to recognize an initial color of the pin
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`and then guess which direction should be attempted in hopes of changing the color.
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`But merely conveying color information only when aided by the user’s initial
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`movements—falls well short of the claim requirement for the graphical item itself
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`to actually “identify” the direction of travel. POR, 37-40; EX2003, ¶¶71-76.
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`3.
`The Reply Does Not Cure Lemmela’s Failure To
`Render Obvious The “Activity Level” Limitation (Claims 1 And 13)
`The Reply falsely assumes Patent Owner imported “an unsupported
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`proportionality requirement to the claimed ‘activity level’ [], and ignores the Board’s
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`interpretation of ‘activity level’ as not requiring ‘any particular proportionality or
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`accuracy[.]’” Reply, p. 22. But Patent Owner never disputed that the claims lack a
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`particular accuracy requirement. The Response instead explained that the relevant
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`issue is whether Lemmela’s metrics qualitatively indicate a level of activity at an
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`action spot or instead indicate something different. POR, 30-33. As evidence here
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`confirms, both Lemmela’s “quantitative measure of postings” and “density of
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`postings” metrics convey information that is far different from a level of activity at
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`an action spot. EX2003, ¶¶59-65. Specifically, Lemmela’s “quantitative measure
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`of postings” does not actually reflect the level of actions taken by mobile devices
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`engaging in postings at a given location, but instead merely represents the level of
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`salient word commonality for a mere subgroup of postings extracted from the
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`universe of (mostly ignored) postings. Id., ¶62. Worse, Lemmela’s “density” metric
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`further skews this measure of salient word commonality based on the size of the area
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`spanned by the locations of postings in the subgroup. Id., ¶¶63-64.
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`Faced with Lemmela’s shortcoming, the Reply alleges that “a POSITA would
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`have understood how Lemmela’s ‘quantitative measure’ or ‘density’ of posts could
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`be proportional to the number of actions taken at a location.” Reply, 23. But even
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`if this were true, the mere accident that, in some unexplained circumstances,
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`Lemmela’s metrics “could” coincidentally be proportional to an activity level is
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`insufficient to render obvious the provision of an “activity level” or “level of
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`activity” at an action spot as required by claims 1 and 13. Due to the qualitatively
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`different nature of these metrics, a user would have no way of knowing when these
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`metrics were allegedly proportional to the activity level and when they were not.
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`The Reply then posits that “if a post containing the salient word comprises an
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`‘action,’ a measure of these posts represents a ‘level’ of this action.” Reply, 23. But
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`Petitioner’s new theory, which was belatedly presented only after receiving the
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`benefit of the Institution Decision and Patent Owner’s Response, does not merit
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`consideration. Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1330-1331
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`(Fed. Cir. 2019); Trial Practice Guide, 73-74.
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`Accordingly, Petitioner has failed
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`to show that Lemmela discloses
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`“provid[ing] an indication of activity level at the at least one action spot”
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`(independent claim 1) or “marking the graphical item according to an activity level
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`with at least one action spot” (independent claim 13).
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`4.
`The Reply Fails To Show That A POSITA Would
`Have Applied Winkler’s Teachings In Combination With Lemmela-Crowley
`(Ground 3) or Waldman’s Teachings In Combination With Lemmela-Crowley
`(Ground 4)
`To support the flawed combination based on Lemmela-Crowley-Winkler
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`(Ground 3), Petitioner disregards noticeable differences between Winkler’s discrete
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`map elements and Lemmela’s irregular geographic areas. Reply, 27-28. First,
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`Petitioner fails to justify its assumption that the clouds representing Lemmela’s
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`irregular areas would change color (according to the user’s direction of travel) in a
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`manner akin to Winkler’s color-changing map element. Id. For example, the Reply
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`contends that “Lemmela describes a cloud as a single restaurant or café.” Reply, p.
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`28. Petitioner then argues that, by implication, some of Lemmela’s irregular areas
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`are sufficiently small (“a single restaurant or café”) such that one discrete movement
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`vector toward them could be identified like that of Winkler’s T-Mobile store. See
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`EX1004, 13:21-31. Petitioner’s argument, however, misses the mark.
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`While the large-sized, irregular-shaped salient-word clouds in Lemmela
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`certainly exacerbates the combinability problem, Petitioner still fails to address the
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`core issue that Lemmela’s salient word clouds represent clusters of posting locations
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`while Winkler’s color-changing pins are intended for elements defined by a discrete
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`geographic coordinate. See Ex-1004, Tables 1-2 (Winkler depicting specific
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`latitude/longitude coordinates of map elements); Ex-1005, [0035] (Lemmela’s
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`clustering algorithm); EX2010, 21:3-6. Nothing in the Lemmela-Crowley-Winkler
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`teachings disclose how to resolve the irregular-shaped area representing Lemmela’s
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`clusters of posting locations to a coordinate location for identifying Winkler’s color-
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`changing movement vector needed from the user to change the color. Instead, as
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`Petitioner’s declarant admits, it was the inventors of the ’327 patent that described
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`how “action spots corresponding to locations which are not discrete or high-specific”
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`could be shown as the target of direction of travel. Ex-1020, ¶56.
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`The Lemmela-Crowley-Winkler system thus amounts to a hindsight-based
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`approach that would not have been obvious to a POSITA before the relevant
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`timeframe. POR, 38-40; EX2003, ¶75. Petitioner presents no evidence that a
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`POSITA would have, or even could have, implemented a technological solution to
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`bridge the gap between Winkler’s discrete map pins and Lemmela’s irregular areas
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`for modification that changes the color of a multi-directional cloud.
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`Petitioner’s arguments directed
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`to
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`the Lemmela-Crowley-Waldman
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`combination are similarly unavailing. See Reply, 28-30. The Reply focuses on the
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`alleged fact that “[m]ore importantly, the ’327 patent and Waldman both describe
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`and depict ‘large, irregular shapes’ superimposed on a viewfinder image.” Id., 28.
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`But Petitioner’s argument (which is concerned with how Waldman’s disclosure
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`allegedly aligns with embodiments of the ’327 patent) ignores the pertinent issue of
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`whether, starting with Lemmela (or Lemmela in view of Crowley), a POSITA would
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`have modified Lemmela’s system to implement the teachings of Waldman as alleged
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`in the Petition. Costco Wholesale Corp., v. Robert Bosch, IPR2016- 00035, Paper
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`16, 24-25 (April 25, 2016) (denying institution) (“An understanding that something
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`‘could be applied to the problem at hand’ does not establish that it would have been
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`obvious to so at the time the [] invention was made. This is not an artificial
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`distinction; it is a substantive difference.”). The Reply sidesteps these issues by
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`focusing on comparisons between Waldman and the ’327 patent, while failing to
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`address the various issues raised in Section VI.F of the Patent Owner’s Response.
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`See POR, pp. 40-43. For example, the Reply does not answer how Lemmela’s
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`“group[s] of posts” would be displayed over a viewfinder
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`image, or
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`how/whether/why a POSITA would have reconciled the overhead map views of
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`Lemmela with the street-level views of Waldman. Id.
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`13
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`

`

`Case No.: IPR2019-00715
`Attorney Docket No.: 21828-0041IP1
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`
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`5.
`The Reply’s New Arguments Directed To Dependent
`Claims 3 And 15 Are Improper and Fail To Show That Lemmela Renders
`Obvious A “Level Of Activity” Based On Actions “Within A Predetermined
`Distance From The At Least One Action Spot”
`Claim 3 depends from claim 1 and further provides that “the level of activity
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`is based upon at least one of a number of images being captured, a number of videos
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`being captured, or a number of messages being transmitted within a predetermined
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`distance from the at least one action spot.” Claim 15 recites corresponding language.
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`EX1001, 19:40-44, 20:42-46.
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`As detailed in the Patent Owner’s Response, the Petition’s analysis of these
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`claim features was woefully inadequate. POR, 33-35. In addition to the flaws
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`regarding Lemmela’s qualitatively different measures that do not reflect an “activity
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`level” as claimed, the Petition failed to address the requirement of claims 3 and 15
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`that the “level of activity” be based upon actions located “within a predetermined
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`distance from the at least one action spot.” See Pet., 56-57 (emphasis added).
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`Instead, the Petition incorporated by reference certain claim elements, including
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`element 1[e], which describes “a predetermined distance from the current location
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`of the mobile device.” Pet., 56-57.
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`Petitioner’s reply arguments seek to correct the Petition’s defects by pointing
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`to its additional incorporation of claim element 1[g]. But claim 1 (including element
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`1[g] is further limited by claim 3. In contrast to claims 3 and 15, element 1[g] does
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`not recite what the level of activity is “based upon”—and certainly does not include
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`14
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`

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`any type of “distance” relationship upon which the level of activity is based.
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`Case No.: IPR2019-00715
`Attorney Docket No.: 21828-0041IP1
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`Accordingly, the Petition’s analysis of element 1[g] never addresses the
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`“predetermined distance” limitation of claims 3/15. Petitioner’s effort in the Reply
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`to contort the Petition’s analysis of element 1[g] to fit the further limiting
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`requirements of claims 3/15 should be rejected as impermissibly late and failing to
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`meet its burden of presenting this challenge in the Petition with particularity. Henny
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`Penny, 938 F.3d at 1330-1331; Intelligent Bio-Systems, Inc. v. Illumina Cambridge,
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`Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“utmost importance”).
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`Even Petitioner’s belated theory alleging that “Lemmela’s activity level is
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`based on activity within the boundaries of the action spot itself” and that “Lemmela
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`teaches these claims where the ‘predetermined distance’ from the action spot is zero”
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`(Reply, p. 24) cannot meet Petitioner’s burden of showing that claims 3 or 15 would
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`have been obvious based on the Lemmela-Crowley combination. For example,
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`Petitioner cites no evidence that expounds upon the conclusory assumption that the
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`“predetermined distance” requirement of claims 3 and 15 would be “zero,” and
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`certainly offers no evidence of the further modifications to Lemmela that would be
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`required to disclose the requirements of claims 3/15.2
`
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`2 Regardless of whether the “predetermined distance” can encompass “zero” (an
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`issue not developed on the current evidentiary record due to the Petitioner’s
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`15
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`

`

`Case No.: IPR2019-00715
`Attorney Docket No.: 21828-0041IP1
`
`
`
`C.
`Petitioner’s Belated Attempt To Revive The Winkler-Altman
`Ground Is Fatally Flawed
`The Board previously determined that Ground 1 based on Winkler in view of
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`Altman was not likely to prevail. Inst. Dec., 20-24. Petitioner’s Reply arguments
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`fail to correct the numerous problems with the Winkler-Altman ground, and rely on
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`new “Scenarios” that were improperly held back from the Petition and presented for
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`the first time in the Reply.
`
`1.
`The Reply Contravenes PTAB Rules By Introducing
`Entirely New “Scenarios” That Contradict The Petition’s Initial Mappings
`Petitioner’s newly invented reply arguments directed to the Winkler-Altman
`
`ground should be disregarded in the first instance for improperly presenting new
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`theories that were never detailed “with particularity” in the petition document itself.
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`Henny Penny, 938 F.3d at 1330-1331; Intelligent Bio-Systems, 821 F.3d at 1369
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`(“utmost importance”); In re Magnum Oil Tools Int’l, 829 F.3d 1364, 1378-81 (Fed.
`
`Cir. 2016) (holding it would be error for “the Board to rely on an unpatentability
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`theory that could have been included in a properly-drafted petition, but was not”);
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`2019 Trial Practice Guide, 73-74 (“a reply” that “raises a new issue or belatedly
`
`
`belated new theory prejudicing Patent Owner at this late stage), Petitioner’s
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`original arguments/conclusory assumptions in its case-in-chief for claims 3 and 15
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`fall drastically short of Petitioner’s heightened burden here.
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`16
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`presents evidence may not be considered”). The Reply’s newly concocted
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`Case No.: IPR2019-00715
`Attorney Docket No.: 21828-0041IP1
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`“Scenarios” invited the Board to adopt error and run afoul of these precedential
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`decisions.3
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`For example, the Reply points to Winkler’s connecting term “and/or” in the
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`list of conditions disclosed at col. 11:36-54 to argue that any of the listed conditions
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`“may be utilized together” in forming an event that would affect presentation of a
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`map element in Winkler’s system. Reply, 9. On this basis, the Reply contends that
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`a map element in Winkler’s system would allegedly become an “action spot” upon
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`3 The Reply (p. 13) cites the non-precedential decision in Intellectual Ventures II
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`LLC v. Ericsson Inc., 685 F.Appx. 913, 919, 922 (Fed. Cir. 2017) to somehow
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`justify its presentation of the brand new Winkler “Scenarios.” But the facts of this
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`non-precedential decision are distinct because the petitioner there merely
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`incorporated originally articulated motivations to combine from one claim into
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`another within the same ground. Id. The Intellectual Ventures II decision never
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`permitted belated (and prejudicial) introduction of new Reply theories, as the
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`Petitioner has done here. The present facts instead align Henny Penny and
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`Intelligent Bio-Systems, where the Board properly disregarded invalidity theories
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`never stated with particularity in the petition and presented in a reply. Such
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`precedent carries weight here.
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`17
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`occurrence of a unique combination of conditions (i.e., a logical AND). Reply, 10
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`Case No.: IPR2019-00715
`Attorney Docket No.: 21828-0041IP1
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`(emphasis added) see also id., 12-21. In contrast, the Petition provided that
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`individual conditions sufficed to meet the claim features (i.e., a logical OR):
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`“Winkler recites ‘events’ which only occur if a mobile device moves ‘within a pre-
`
`selected range of a map element’ or if there is a particular amount of device activity
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`‘[within] a certain region.’” Pet., 29 (emphasis added). Not only did the Petition
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`confusingly shift positions on which type of map element/event in Winkler was
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`reli