Paper No. ____
`Filed: May 8, 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 REPLY TO PRELIMINARY GUIDANCE ON
`PATENT OWNER’S MOTION TO AMEND
`
`
`
`
`
`
`
`
`Filed: May 8, 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 REPLY TO PRELIMINARY GUIDANCE ON
`PATENT OWNER’S MOTION TO AMEND
`
`
`
`
`
`
`
`
`
`B.
`
`Page
`Introduction ................................................................................................... 1
`I.
`II. Record supports final determination of obviousness of substitute
`claim 21 .......................................................................................................... 1
`A.
`Record shows each limitation of claim 21 was known in prior
`art .......................................................................................................... 1
`Record supports obviousness in light of the prior art
`combinations under KSR ...................................................................... 2
`Record shows why a POSITA would have wanted to make the
`proposed combinations and why video integration would have
`improved the Lemmela-Crowley and Winkler-Altman systems ........... 6
`III. Substitute claim 21 is ineligible under § 101 under both Federal
`Circuit law and PTO guidance .................................................................. 10
`IV. Under Federal Circuit precedent, the original application does not
`support the pop-up video limitation of substitute claim 21 .................... 11
`
`C.
`
`TABLE OF CONTENTS
`
`i
`
`
`
`
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Anderson’s-Black Rock, Inc. v. Pavement Salvage Co.,
`396 U.S. 57 (1969) ................................................................................................ 4
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .....................................................................................passim
`LizardTech, Inc. v. Earth Res. Mapping, Inc.,
`424 F.3d 1336 (Fed. Cir. 2005) .......................................................................... 12
`Taylor v. Iancu¸
`No. 2018-1070, 2020 WL 1651682 (Fed. Cir. Apr. 3, 2020) ............................. 12
`Uber Techs, Inc. v. X One, Inc.,
`No. 2019-1164, 2020 WL 2123399 (Fed. Cir. May 5, 2020) ............................... 4
`Other Authorities
`MPEP § 2143(I)(A) .................................................................................................... 4
`
`ii
`
`
`
`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
`
`
`
`
`
`Petitioner’s Reply to Preliminary Guidance on 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
`
`
`
`iv
`
`
`
`Petitioner’s Reply to Preliminary Guidance on Patent Owner’s Motion to Amend
`
`I.
`
`Introduction
`In its Preliminary Guidance (Paper 26) (“PG”), the Board preliminarily
`
`determined Patent Owner showed “a reasonable likelihood” it satisfied the statutory
`
`and regulatory requirements for filing a motion to amend. For the reasons set forth
`
`herein and in Petitioner’s Opposition (Paper 24) (“Opp.”), Petitioner requests the
`
`Board render a final determination that proposed substitute claim 21 is unpatentable.
`
`II. Record supports final determination of obviousness of substitute claim 21
`A. Record shows each limitation of claim 21 was known in prior art
`The Board was “persuaded by Petitioner’s arguments that the [prior art]
`
`references teach the new limitations of proposed substitute claim 21[.]” PG, 10.
`
`Indeed, as detailed in Petitioner’s Opposition, there can be no reasonable dispute that
`
`the prior art references include each and every limitation. Opp., 7-14.
`
`Notably, the record shows that video post features were known in the art. Eyal
`
`and Jaffe describe systems that process and display video posts. PG, 10; Opp., 9-13.
`
`The ’327 patent itself admits prior art mobile devices had video transmission and
`
`receiving capabilities, including “sending and receiving data for viewing of Internet
`
`websites, multi-media messages, videography and photography.” Ex. 1001, 1:23-29.
`
`And, Lemmela discloses implementing its invention on a device (a Nokia 770
`
`internet tablet) that supported video. Ex. 1005, FIG. 5, ¶ 39; Ex. 1016. The parties’
`
`experts also testified that video posting capability on mobile devices was known. Ex.
`
`1022, 27:6-16; Ex. 1020, ¶¶ 93, 110, 115-26, 169-79.
`
`1
`
`
`
`Petitioner’s Reply to Preliminary Guidance on Patent Owner’s Motion to Amend
`
`Moreover, the record shows implementing video posting features in the
`
`Lemmela-Crowley or Winkler-Altman systems was known. Jaffe describes a system
`
`akin to Lemmela’s where video posts are grouped by location and associated words.
`
`Ex. 1013, FIG. 4, 13:17-57; Ex. 1020, ¶¶ 126, 209-10, 216-17. Jaffe explains tagging
`
`and grouping videos based on associated words was achieved using known
`
`methods—for example, users manually tagged videos with text (Ex. 1013, 4:61-5:9,
`
`6:66-7:1, 7:29-30), and video posts were grouped based on tags using known
`
`methods like “Hungarian clustering” (id., 8:39-61). And, Winkler explains adapting
`
`its system for video was known: “specific examples for the system are described []
`
`for illustrative purposes,” but “those skilled in the art will recognize” “equivalent
`
`modifications” including “other digital content may likewise by managed or handled
`
`by the system provided herein, including video files[.]” Ex. 1004, 13:63-14:6.
`
`B. Record supports obviousness in light of the prior art
`combinations under KSR
`Consistent with the “expansive and flexible approach” for showing
`
`obviousness under KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415-21 (2007),
`
`Petitioner identified three rationales why a POSITA would have found claim 21
`
`obvious in view of Eyal or Jaffe’s video posts and the Lemmela-Crowley or Winkler-
`
`Altman systems: claim 21 is no more than (1) combining prior art elements according
`
`to known methods to yield predictable results; (2) a simple substitution of one known
`
`element for another to obtain predictable results; and/or (3) using known techniques
`
`2
`
`
`
`Petitioner’s Reply to Preliminary Guidance on Patent Owner’s Motion to Amend
`
`to improve similar systems in the same way. Opp. 14-18; Ex. 1013 ¶¶ 204–34.
`
`In the PG, the Board did not express disagreement that the elements of
`
`proposed claim 21, including the video posting features and its use in systems like
`
`Lemmela-Crowley or Winkler-Altman, were known. Rather, the Board thought
`
`Petitioner failed to satisfy rationales (1) and (2) above by not providing “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
`
`predict[t]able.” PG, 11. The Board referred to the evidence supporting rationale (3)
`
`as weak because of “generic reasoning” about the benefits of the functionality as
`
`compared to alleged technical challenges. Id., 11-12.1
`
`The “rigid approach” adopted by the Board which requires Petitioner to prove
`
`an express motivation to combine, has been rejected by the Supreme Court and
`
`invites legal error. KSR, 550 U.S. 398 at 421 (“When there is a design need or market
`
`pressure to solve a problem and there are a finite number of identified, predictable
`
`solutions, a [POSITA] has good reason to pursue the known options within his or
`
`her technical grasp.”) The Federal Circuit recently reversed a Board decision that
`
`
`
`1 For rationale (3), the Board also believed that Petitioner’s argument concerning
`
`the applicability of Jaffe to video did not appear to be factually supported. As
`
`discussed herein, Jaffe expressly relates to video as well as photographs.
`
`3
`
`
`
`Petitioner’s Reply to Preliminary Guidance on Patent Owner’s Motion to Amend
`
`found claims not obvious because of an alleged lack of motivation to combine
`
`references despite the fact that the claim elements were well-known in the art. Uber
`
`Techs, Inc. v. X One, Inc., No. 2019-1164, 2020 WL 2123399, *5 (Fed. Cir. May 5,
`
`2020) (finding Board “erred when it determined that a person of ordinary skill in the
`
`art would not have been motivated to combine” prior art elements when the elements
`
`were “well known in the art” and “predictable solutions” for the problem at hand).
`
`Here, as noted above, there is no legitimate dispute that the elements are in
`
`the prior art. The Board has questioned the predictability of the combinations (PG,
`
`11), however the record establishes the combinations are predictable. The proposed
`
`combinations would have yielded predictable results because they would not have
`
`resulted in the Lemmela-Crowley or Winkler-Altman systems performing “‘new’ or
`
`‘different function[s].’” MPEP § 2143(I)(A) (citing Anderson’s-Black Rock, Inc. v.
`
`Pavement Salvage Co., 396 U.S. 57, 60 (1969)); KSR, 550 F.3d at 417 (“predictable
`
`use of prior art elements according to their established functions”). The main
`
`functions recited in Lemmela (grouping and displaying posts by location and salient
`
`word) and Winkler (dynamically modifying map elements based on events) would
`
`have operated as usual in Petitioner’s proposed combinations: the Lemmela system
`
`would have grouped posts, including video posts, by location and associated word
`
`tag, and the Winkler system would have created/modified map elements based on
`
`activity, including video posting activity. Ex. 1020, ¶¶ 169, 180-88. The effect of
`
`4
`
`
`
`Petitioner’s Reply to Preliminary Guidance on Patent Owner’s Motion to Amend
`
`adding video features like those described in Eyal or Jaffe, would have been to
`
`merely change/add to the input of Lemmela and Winkler’s functions. See id.
`
`Lemmela describes processing generic “posts” and Winkler describes tracking
`
`“activity” which may include transmitting generic messages—the proposed
`
`combinations would have resulted in nothing more than specifying the types of
`
`“posts” and “messages” used as inputs to Lemmela and Winkler’s systems.
`
`In fact, Lemmela and Winkler’s methods for organizing and displaying limited
`
`sets of media offered a solution to the potential challenges associated with video
`
`files, such as alleged bandwidth and storage concerns identified by the Board. PG,
`
`11. For example, rather than require a mobile device to display every post on a map,
`
`Lemmela’s invention allowed mobile devices to display icons associated with groups
`
`of posts which could then be selected to view limited sets of posts. Ex. 1005, FIG.
`
`1, ¶¶ 26-30. The Lemmela combined system would have similarly displayed icons
`
`(selectable to view sets of video posts) as opposed to requiring a mobile device to
`
`download and display all video posts. And, Lemmela teaches a mobile device
`
`downloading information from the network only “as needed”—for example, only
`
`downloading information associated with a certain area. Ex. 1005, ¶¶ 17, 26; see
`
`also Ex. 1020, ¶ 31. Winkler similarly offered a way for devices to display only
`
`limited sets of information. Winkler discloses map elements modified by activity
`
`limited to specific devices, during a certain time, and at a certain location. See Ex.
`
`5
`
`
`
`Petitioner’s Reply to Preliminary Guidance on Patent Owner’s Motion to Amend
`
`1004, 11:36-54. A user of the Winkler combined system could thus view only a
`
`limited set of video post activity which interested her.
`
`The above demonstrates the combined systems would have allowed the
`
`Winkler-Crowley and Lemmela-Altman systems to incorporate the addition of
`
`known video features as taught by Eyal / Jaffe while operating in their expected
`
`fashion (e.g., adding another way to post (video posts) to the existing systems). That
`
`Patent Owner’s expert admitted the ’327 patent “doesn’t provide any additional
`
`technical advancement on how [it] do[es] the posting” of videos over the prior art
`
`(Ex. 1024, 154:12-21) highlights how a POSITA incorporating Eyal / Jaffe’s video
`
`features in their predictable way would have arrived at a system operating in its
`
`expected and predictable way that teaches or suggests all features of claim 21.
`
`Here, the elements of proposed substitute claim 21 are well-known in the art
`
`and the combination of the art results in a predictable solution. This, without more,
`
`is sufficient to render claim 21 obvious under KSR.
`
`C. Record shows why a POSITA would have wanted to make the
`proposed combinations and why video integration would have
`improved the Lemmela-Crowley and Winkler-Altman systems
`While not required under KSR, the record demonstrates specific reasons why
`
`a POSITA would have been motivated to add video features to improve the
`
`Lemmela-Crowley and Winkler-Altman systems: (1) the known benefits of video
`
`content; (2) it would have furthered the goals of these systems; and (3) Lemmela and
`
`6
`
`
`
`Petitioner’s Reply to Preliminary Guidance on Patent Owner’s Motion to Amend
`
`Winkler offer solutions to the perceived challenges of including video.
`
`Petitioner previously argued adding video features to Lemmela-Crowley or
`
`Winkler-Altman would have improved these systems because of the “broad social
`
`and practical importance” of viewing and interacting with video posts. Opp., 16
`
`(citing Ex. 1013, 1:14-21). The Board rejected this argument because it believed the
`
`quoted portion of Jaffe was referring to photographs, not videos. PG, 11. However,
`
`Jaffe uses photographs and video interchangeably and explains photographs are
`
`described simply “for sake of convenience” and “those skilled in the art will
`
`recognize that the various examples apply similarly or equally to other media
`
`objects” including a “moving image” (video). Ex. 1013, 3:63-4:4.
`
`Jaffe describes the “broad social and practical importance” of “viewing and
`
`interacting with” collections of “images,” with Jaffe making clear that “images”
`
`refers to photos and videos (“media objects such as still or moving images”, Ex.
`
`1013, 1:11-12). According to Jaffe, these photos and videos, “many of which are
`
`stored and accessible on the Web, constitute a growing record of our culture and
`
`shared experiences.” Id., 1:21-24. Moreover, Patent Owner admits that providing
`
`video content was both intuitive and beneficial—referring to video posts as “an
`
`intuitive and powerful social media mechanism.” Motion to Amend (Mot.), 8, 21.
`
`Beyond the general advantages of video content, the record also illustrates
`
`specific reasons why a POSITA would have sought to include video content in the
`
`7
`
`
`
`Petitioner’s Reply to Preliminary Guidance on Patent Owner’s Motion to Amend
`
`Lemmela-Crowley and Winkler-Altman systems. Lemmela, Jaffe, Eyal all describe
`
`similar problems in the prior art related to organizing collections of content.2
`
`Lemmela notes “[a] user trying to sort through or filter a large number of postings
`
`for a city can have a difficult time finding the information they need” (Ex. 1005, ¶
`
`4), and Jaffe explains the “prospect and practicality” of viewing media collections
`
`“in a meaningful way” was “difficult” (Ex. 1013, 1:19-26). Lemmela and Winkler
`
`disclose solutions to the prior art’s content-organizing need.
`
`As shown in the Petition/Petitioner’s Reply, Lemmela and Winkler provide
`
`methods for organizing the presentation of content based on factors such as location,
`
`time, salient words (Lemmela). Importantly, the benefits associated with these
`
`methods of organizing content are not limited to one type of content or post. For
`
`example, Lemmela explains “an advantage of” its invention is “presentation of an
`
`easily understandable summary view of very meaningful/important/relevant
`
`information” which is “especially helpful for mobile devices with small screens[.]”
`
`Ex. 1005, ¶ 9 (emphasis added). Lemmela’s reference to “information” is not limited
`
`to any type of content, and would have allowed for video. Indeed, including video
`
`posts would have expanded the organizational advantages of Lemmela and Winkler’s
`
`systems, as it would have allowed organization of additional content.
`
`
`
`2 Winkler does not contain a background art section.
`
`8
`
`
`
`Petitioner’s Reply to Preliminary Guidance on Patent Owner’s Motion to Amend
`
`In the PG, the Board identified potential challenges associated with including
`
`video features in certain types of systems and suggests that this makes it “doubtful”
`
`that there would be benefits to adding video posting to Lemmela-Crowley and
`
`Winkler-Altman. PG, 12. Petitioner respectfully disagrees. The prior art references
`
`expressly recite video as a content option for use in the systems. Ex. 1013, 1:56-62
`
`(the “present invention” is “a system and method for summarizing media objects”
`
`where “media objects” are “e.g., still or moving images, audio files, and the like”),
`
`Ex. 1014, 5:3-15 (the “content items” of the invention can be “video clips,” “audio
`
`files, digital still photographs, or the like”), Ex. 1004, 13:63-14:6 (a POSITA could
`
`choose to include other types of media, including video). Moreover, as discussed in
`
`Section II.B, the prior art offered solutions to potential challenges associated with
`
`video files. At a minimum, in light of the prior art’s repeated references to video and
`
`the predictability of the combination (discussed in Section II.B), it would have been
`
`obvious for a POSITA to try the combination in order to build a system that
`
`supported video posting. Ex. 1020, ¶¶ 213, 220, 227, 234; KSR, 550 U.S. at 421.
`
`And, given that video was one of only a few choices for additional content, together
`
`with the acknowledged broad social importance of interacting with video, a POSITA
`
`would have chosen such a combination. Opp. 14-18. Indeed, as taught by Eyal/Jaffe,
`
`POSITAs were already creating systems to capture, associate, and display video
`
`content on maps, further showing it would have been obvious to try the described
`
`9
`
`
`
`Petitioner’s Reply to Preliminary Guidance on Patent Owner’s Motion to Amend
`
`combination, thereby rendering claim 21 obvious. Id.; Ex. 1013, ¶¶ 116-26.
`
`III. Substitute claim 21 is ineligible under § 101 under both Federal Circuit
`law and PTO guidance
`In its Opposition, Petitioner explained why substitute claim 21 is ineligible
`
`under the Alice two-step standard: it is directed to the same abstract idea as ineligible
`
`claim 2, and the additional claim limitations add only elements the ’327 patent
`
`admits were known and conventional. Opp., 18-25.
`
`Substitute claim 21 is also ineligible under at least Revised Step 2 of the
`
`PTO’s 2019 Revised Patent Subject Matter Eligibility Guidance. Prong One of
`
`Revised Step 2A requires evaluation of whether the claim limitations recite abstract
`
`ideas. At least claim limitations [21d-h] recite abstract ideas relating to methods of
`
`organizing human activity and/or managing personal behavior or relationships or
`
`interactions between people. Like ineligible claim 2, these limitations recite tracking
`
`the location of activity and using a device to perform a task the ’327 patent admits
`
`humans had been doing on their own. Revised Guidance, 52-54. Prong Two of
`
`Revised Step 2A requires evaluation of whether the claims integrate the abstract idea
`
`into a practical application. Id., 53-55. The Revised Guidance states claims that meet
`
`this criteria “will apply, rely on, or use the judicial exception in a manner that
`
`imposes a meaningful limit on the judicial exception[.]” Id., 54. The lack of
`
`meaningful limits on the abstract “activity mapping” concept recited in the ’327
`
`claims is precisely why the district court found these claims invalid. Ex. 2005, 40-
`
`10
`
`
`
`Petitioner’s Reply to Preliminary Guidance on Patent Owner’s Motion to Amend
`
`42 (“broad claim scope—lacking sufficient limits in space, time, or any relevance to
`
`the current, relative locations between the first and second mobile devices”).
`
`Substitute claim 21 does not limit the concept in space, time, or scope, beyond
`
`limiting the documenting activity to video posts. The PG suggests the Board believes
`
`claim 21 presents a practical application because of “the addition of significant new
`
`limitations.” PG, 13. However, each of these “new” limitations are components and
`
`concepts the record shows were known. Opp. 23-25; Ex. 1020, ¶¶ 100-11.
`
`Finally, Step 2B requires evaluation of whether the claim provides an
`
`inventive concept. The concepts and components added in claim 21 are admitted to
`
`be known and conventional. Id.
`
`IV. Under Federal Circuit precedent, the original application does not
`support the pop-up video limitation of substitute claim 21
`The Board appears to believe the ’676 application conveyed possession of the
`
`claimed pop-up video display based on the application’s disclosure of (1)
`
`documenting activity comprising video posts and (2) pop-up displays of information.
`
`PG, 6-8. Petitioner requests the Board to reconsider in light of substitute claim 21’s
`
`requirements imposed on the pop-up display and recent Federal Circuit guidance
`
`regarding an application’s disclosure of disparate elements.
`
`In particular, substitute claim 21 does not just require a pop-up display of any
`
`video post. It requires pop-up display of “said posted video,” which imposes a
`
`number of requirements on the pop-up display: (1) the displayed video was posted
`
`11
`
`
`
`Petitioner’s Reply to Preliminary Guidance on Patent Owner’s Motion to Amend
`
`at a certain location; (2) this location was within a certain distance from another
`
`device; (3) the video was taken within a certain of time; and (4) the pop-up displays
`
`all posted video meeting these requirements. The original disclosure does not
`
`demonstrate the patentee was in possession of such a pop-up display.
`
`Thus, regardless of whether the original disclosure provides written
`
`description support for pop-up displays of video posts in the abstract—and Petitioner
`
`maintains it does not—the disclosure does not provide support for the pop-up
`
`displays of video posts in the combination in which they are recited in the proposed
`
`substitute claim 21. See, e.g., Taylor v. Iancu¸ No. 2018-1070, 2020 WL 1651682,
`
`*3–4 (Fed. Cir. Apr. 3, 2020) (affirming district court and Board determination
`
`claims lacked written description support, where “aspects of the[ claimed] features
`
`[were] disclosed separately” in the application, but did not “sufficiently disclose to
`
`the skilled artisan” the “integration of these features” into the claimed system);
`
`LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1346 (Fed. Cir. 2005)
`
`(rejecting argument “section 112 requires only that each individual step in a claimed
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`process be described adequately” and “hold[ing] that the description of one method
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`for [achieving an objective] does not entitle the inventor . . . to claim any and all
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`means for achieving that objective”). Similarly, the ’676 application’s disparate
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`disclosure of video posts and pop-up displays do not sufficiently show the inventor
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`possessed the “said pop-up display,” which requires all antecedent components.
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`12
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`Petitioner’s Reply to Preliminary Guidance on Patent Owner’s Motion to Amend
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`Dated: May 8, 2020
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`Respectfully submitted,
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`By: /Yar R. Chaikovsky/
` Yar R. Chaikovsky (Reg. No. 39,625)
` Paul Hastings LLP
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`Counsel for Snap Inc.
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`13
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`Petitioner’s Reply to Preliminary Guidance on Patent Owner’s Motion to Amend
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`CERTIFICATE OF SERVICE
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`I hereby certify that on May 8, 2020, I caused a true and correct copy of the
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`foregoing Petitioner’s Reply to Preliminary Guidance on Patent Owner’s Motion to
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`Amend to be served electronically on Patent Owner at the following address:
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`Michael T. Hawkins
`Nicholas W. Stephens
`IPR21828-0041IP1@fr.com
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`By: /Yar R. Chaikovsky
` Yar R. Chaikovsky (Reg. No. 39,625)
` Paul Hastings LLP
` Counsel for Snap Inc.
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`Dated: May 8, 2020
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