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 PRELIMINARY RESPONSE
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`Case No.: IPR2019-00715
`Attorney Docket No.: 21828-0041IP1
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`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1 
`I. 
`OVERVIEW OF THE ’327 PATENT ............................................................ 2 
`II. 
`III.  OVERVIEW OF THE PRIOR ART ............................................................... 6 
`A.  Winkler .................................................................................................. 6 
`B. 
`Altman ................................................................................................. 10 
`C. 
`Lemmela .............................................................................................. 11 
`D. 
`Crowley ............................................................................................... 13 
`IV.  CLAIM CONSTRUCTION .......................................................................... 14 
`A. 
`“action spot” (claims 1, 10, 13) ........................................................... 14 
`B. 
`“determine/determining at least one action spot within a
`predetermined distance from the current location of the mobile
`device” (claims 1, 10, 13) .................................................................... 15 
`THE PETITION EXPRESSLY ASSUMES THE CLAIM SCOPE UNDER
`THE DISTRICT COURT’S CONSTRUCTION IS UNDEFINED, SO THE
`BOARD SHOULD DECLINE TO INSTITUTE REVIEW ......................... 17 
`VI.  GROUND 1 IS DEFICIENT ......................................................................... 19 
`A. 
`The Winkler-Altman Combination Fails To Provide The
`“Determine/Determining At Least One Action Spot” Limitation Of
`Independent Claims 1 , 10, And 13 ..................................................... 20 
`1. 
`The petition presents shifting and inconsistent mappings for
`“the at least one action spot” that deprive Patent Owner and the
`Board of a fair opportunity to assess Petitioner’s combination 20 
`The petition fails to demonstrate that any individual map
`element disclosed in Winkler meets all the requirements for
`“the at least one action spot” recited in claim 1 ........................ 27 
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`V. 
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`2. 
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`Case No.: IPR2019-00715
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`3. 
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`4. 
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`B. 
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`The petition fails to demonstrate that the system resulting from
`the Winkler-Altman combination sets a “predetermined
`distance” before determining “the at least one action spot” ..... 35 
`The petition’s proposed modification to Winkler is factually
`and legally flawed ..................................................................... 39 
`The Winkler-Altman Combination Fails To Provide The “Displaying
`A Graphical Item … Identifying A Direction” Limitation Of
`Independent Claim 10 ......................................................................... 48 
`VII.  GROUNDS 2-4 ARE DEFICIENT ............................................................... 51 
`A. 
`The Lemmela-Crowley Combination Fails To Provide The
`“Determine At Least One Action Spot” Limitation Of Independent
`Claims 1, 10, and 13 ............................................................................ 51 
`The Petition Fails To Show That Lemmela “Provide[s] An Indication
`Of Activity Level” (Claim 1) or “Marking … According To An
`Activity Level” (Claim 13) ................................................................. 55 
`The Proposed Combination of Ground 3 Fails To Provide The
`“Displaying A Graphical Item … Identifying A Direction” Limitation
`Of Independent Claim 10 .................................................................... 57 
`VIII.  CONCLUSION .............................................................................................. 58 
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`B. 
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`C. 
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`Case No.: IPR2019-00715
`Attorney Docket No.: 21828-0041IP1
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`LIST OF EXHIBITS
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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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`EX2001
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`EX2002
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`iii
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`I.
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`INTRODUCTION
`Petitioner has failed to meet its burden of showing a reasonable likelihood
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`that it would prevail with respect to any of the challenged claims. Indeed, the
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`Petition is fatally deficient in multiple ways, each of which provides an
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`independent basis to deny institution. Collectively, the large number of
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`deficiencies in the Petition provides overwhelming weight to deny institution of
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`this flawed IPR petition.
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`As an initial matter, the district court has formally construed the
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`“determine/determining at least one action spot” limitation under the Phillips
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`standard, but the petition expressly assumes that moving forward with the district
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`court’s claim construction would “fail[] to inform a POSITA with reasonable
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`certainty about the claim’s scope.” Pet., 17. A petition that fails to present
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`alternative constructions and instead expressly assumes the claim scope is
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`undefined should be denied institution. Infra, Section V.
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`Second, the petition presents shifting and inconsistent mappings for the “at
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`least one action spot” element of claims 1, 10, and 13, thereby failing to fulfill its
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`requisite burden of identifying the grounds “with particularity” under § 312(a),
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`unduly requiring the Board to speculate, and unfairly depriving Patent Owner of a
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`fair opportunity to respond.
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`Lastly, on the merits, the petition is fatally flawed in that it fails to identify
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`where the cited references disclose particular requirements of independent claims
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`1, 10, and 13. Worse yet, even if the cited references disclosed all structures of
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`these claims (which they do not), the petition fails to establish the requisite
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`motivation to combine the references.
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`Accordingly, the “information presented in the petition” is woefully
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`insufficient to satisfy Petitioner’s burden under 35 U.S.C. § 314(a)—especially
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`where Petitioner cannot subsequently add theories/citations that should have been
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`part of the Petition. Intelligent Bio-Systems, Inc. v. Illumina Cambridge, Ltd., 821
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`F.3d 1359, 1369 (Fed. Cir. 2016); In re Magnum Oil Tools Int’l, 829 F.3d 1364,
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`1380 (Fed. Cir. 2016) (“could have been included in a properly-drafted petition,
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`but was not”). Thus, the Board should deny institution of IPR here.
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`II. OVERVIEW OF THE ’327 PATENT
`The ’327 patent describes techniques for determining “action spots” relative
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`to a current position of a mobile device. EX1001, 1:7-10, 3:21-4:44, FIGS. 1, 3;
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`EX2001, ¶¶18-21; see also ¶¶16-17. The specification lexicographically defines
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`an ‘action spot’ as “a location or an event where at least one activity is occurring
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`relative to the current location of another mobile device.” EX1001, 3:3-5; infra,
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`Section IV.A. By providing information about activity that “is occurring” in the
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`vicinity of a mobile device (for example, documenting actions occurring within a
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`recent period of time and within a predetermined distance from the mobile device’s
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`current location), the ’327 patent’s techniques advantageously allow a user to
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`readily identify nearby locations or events that he or she may be interested in
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`visiting, attending, or otherwise monitoring. EX1001, 2:54-3:35, 8:9-39.
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`The ’327 patent recognized a problem with typical mobile devices at the
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`time that, “[i]n order to find information relating to events and happenings
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`currently occurring proximate to the mobile device’s present location, the user of
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`the mobile device will have to search an external resource, such as an electronic
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`events calendar, internet sites, internet calendars of individual business or event
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`holders …, and compare the locations of the found events and happenings to the
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`mobile device’s current location.” EX1001, 3:4-12 (emphasis added). This
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`manual process could lead to “user frustration” and “incomplete and inaccurate”
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`results such that the user risked “miss[ing] certain happenings that are close in
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`proximity to the current location of the user’s mobile device.” EX1001, 3:12-20;
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`EX2001, ¶19.
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`The ’327 patent sought to address these problems by configuring a system to
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`monitor near real-time activity by mobile devices within a geographic area and
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`determining “action spots” to present to a user as a result of such activity detected
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`at locations or events within a predetermined distance of the current location of a
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`first mobile device. EX1001, 3:21-25; see also 4:35-39 (“With a graphical
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`indication of the action spots …, a user can review information related to current
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`happenings within the vicinity of the user’s mobile device.” (emphasis added)).
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`The specification describes that “activity” refers to actions taken by a mobile
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`device, but the claims are specifically concerned with a class of activity referred to
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`as “documenting actions.” EX1001, 19:28-31 (“the at least one action spot
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`corresponding to a location where at least one other mobile device has engaged in
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`documenting action”), 20:8-11, 20:30-32; EX2001, ¶¶20-21.
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`In some examples, to provide the user of a first mobile device with
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`information about nearby action spots, the system identifies the current location of
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`the first mobile device and then determines at least one action spot within a
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`predetermined distance of the current location of the first mobile device. EX1001,
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`3:21-35, 6:66-7:27, FIG. 1. The system provides graphical items for display over a
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`map at the first mobile device for at least one action spot, and the graphical item
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`for each action spot can be presented at a position over the map that corresponds to
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`the physical location of the action spot that the graphical item represents in the real
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`world. EX1001, 6:9-22, FIG. 3. Figure 3 (reproduced below) illustrates one
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`example of a map 206 presented in a graphical user interface on a mobile device.
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`EX1001, FIG. 3. As shown in Figure 3, various graphical items are overlaid on the
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`map 206 including a first item 302 that indicates a current location of the user’s
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`device, and graphical items 304 and 306 showing “action spots” where activity is
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`occurring:
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`EX1001, FIG. 3. Critically, not all elements on the map are “action spots” within
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`the meaning of the term as it is defined in the ’327 patent, for the specification
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`plainly states some elements on the map are simply “graphical representations
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`308” that identify pre-existing “venues, locations, monuments, buildings, streets,
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`lakes, and other location landmarks.” EX1001, 5:54-58; EX2001, ¶21.
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`The ’327 patent further describes that an activity level of each action spot
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`presented to the user can be signified in various ways such as by setting a size or
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`color of the graphical item for the action spot to reflect the activity level or
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`displaying text that indicates metric(s) that may be related to activity level (e.g., a
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`count of a number of documenting actions by at least one other mobile device at
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`the action spot). EX1001, 6:23-52, 9:47-57, 11:46-48, FIG. 6. The ’327 patent
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`also describes how a graphical item can be presented to a user that identifies a
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`direction for a user to travel to an action spot. EX1001, 12:1-24 (disclosing a
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`compass 702 that points in the direction of an action spot relative to the current
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`location of a mobile device), FIGS. 7-8; EX2001, ¶¶20-21.
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`III. OVERVIEW OF THE PRIOR ART
`A. Winkler
`Winkler (EX1004) describes “[a] system and method for providing
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`information on a map displayed by a mobile device.” EX1004, Abstract; EX2001,
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`¶¶37-43. Winkler’s system conveys location-based information to a user through
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`“map elements” overlaid on a map on the user’s mobile device. EX1004, 2:6-26,
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`3:62-4:5, FIGS. 5, 6A-6C. A “map element” can be a pin, icon, or other visual
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`indicator associated with a particular location or map feature (e.g., a restaurant,
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`store, bar, or other venue). EX1004, 3:62-4:5, 10:10-31, 11:1-15, FIGS. 6A-6C.
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`Moreover, Winkler describes examples in which the system “changes” the pre-
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`existing map elements “based on events that occur at or proximate to … a location
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`associated with the element.” EX1004, 10:3-7; see also 2:16-33, 11:16-26.
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`Figures 6A-6C illustrate a relevant example:
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`EX1004, FIGS. 6A-6C.
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`As shown above in FIG. 6A, a map element 610 is depicted in the form of a
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`light-colored pin that points to a particular location on the map. EX1004, 11:3-5.
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`Winkler discloses a number of ways in which the map element 610 may be initially
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`generated. See, e.g., EX1004, 10:10-16, 6:14-26, 11:61-63. In contrast to the
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`“action spots” of the ’327 patent, the display of a map element in Winkler’s system
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`does not mean that activity (e.g., “documenting action”) is occurring at the
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`location associated with the map element—and certainly not relative to the current
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`location of the user’s mobile device. First, Winkler’s map elements that are
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`displayed merely, for example, as a result of having been “tagged” by a user for
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`generation on the map, e.g., thereby allowing the user to communicate with other
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`users (all of who may be remote from the location) by posting comments to the
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`pre-existing element over time or allowing the user to monitor for the occurrence
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`of “events” at the pre-existing element. EX1004, 6:6-11, 6:2-7:24 (communication
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`between users via map elements), 11:16-24 (update displayed map elements
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`responsive to events). Second, the user generating the map element need not be at
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`the actual location, and the map element may be displayed regardless of the user’s
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`current location.
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`After map element 610 is initially displayed, Figure 6B shows that the pin
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`icon for the element 610 may change appearance (e.g., darken) when an event is
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`detected to have occurred at the location corresponding to the map element 610.
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`EX1004, 11:6-10 (“may change the color of the map element (as shown in the
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`Figure) when a friend arrives at the location or adds a comment to the map
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`element.”). Winkler lists a number of distinct “events” that may trigger a change
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`in appearance of a map element, but as detailed below, not one of those events
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`provides all of the required characteristics of “the at least one action spot” recited
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`in claims 1, 10, and 13. Infra, Section VI.A. For instance, Winkler discloses
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`detected events related to “movement” of a mobile device, such as:
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` “movement of another mobile device near, to, or proximate to a tagged
`location,” or
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` “movement of a user’s mobile device near, to, or proximate to the user’s
`tagged location.”
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`EX1004, 11:38-44. Such “movement” of a mobile device is detected even when
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`no documenting action is occurring at that location. In another example, Winkler
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`discloses other events related to detection of “activity,” such as:
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` “a certain frequency or amount of activity within a certain time period,” or
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` “a certain frequency or amount of activity around a certain tagged item on a
`map.”
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`EX1004, 11:38-44. The detected “activity” may include other users commenting
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`on a tagged location—regardless of whether mobile devices of those other users
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`are physically present at the tagged location, and regardless of whether mobile
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`devices of those other users are within a predetermined distance of a first user’s
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`mobile device. EX1004, 7:35-8:18, Table 2, FIG. 3 (disclosing a user commenting
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`on a coffee shop he/she plans to visit).
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`Winkler also contemplates that different map elements may be programmed
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`to transition appearance based on different events. For example, Figure 6C
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`“depicts a screen presenting a different map element 620, a sun, when the system
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`detects the user’s mobile device to be proximate or at the location of the map
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`element.” EX1004, 11:13-15, FIG. 6C; EX2001, ¶43.
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`B. Altman
`Altman (EX1006) discloses a “location-based social network manager” that
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`“determines the geographic location of a mobile communication device operated
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`by a user within an area, displays a map representation of the area around the
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`mobile communication device on a graphical user interface …, and superimposes
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`on the map the respective locations of one or more other users of mobile
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`communication devices coupled to the mobile communication device over the
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`network.” EX1006, Abstract; EX2001, ¶¶44-45. Altman further discloses that
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`“when the user tags a particular POI [point of interest], the server sends an alert to
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`that user when a friend of the user gets within a certain distance of the POI.”
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`EX1006, [0059]. Similarly, “an alert function can provide a graphic or audible
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`alert to the user when a particular friend has entered a user determined area or
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`region around the user.” EX1006, [0060]. The petition relies on Altman as a
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`secondary reference in combination with Winkler, solely for the aspect of
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`independent claims 1, 10, and 13 directed to the petition’s now-rejected claim
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`construction demanding a “specific distance” rather than a range selected by a
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`predetermined algorithm. Pet., 16-17, 27-32; EX2002, 37 (rejecting petitioner’s
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`construction); EX2001, ¶45.
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`C. Lemmela
`Lemmela (EX1005) is titled “Identifying Interesting Locations Based On
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`Commonalities in Location Based Postings” and describes “a method and system
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`that identifies and presents information[] which is common in various postings in
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`an area.” EX1005, Abstract; EX2001, ¶¶79-80. Lemmela’s system collects so-
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`called “location postings” from users over a period of time (e.g., months or years)
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`and analyzes the location postings for “salient words” to determine geographic
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`areas—which are depicted as clouds on a map—where users have historically
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`posted information about similar topics such as shopping, food, products, or
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`venues. EX1005, [0007]-[0009], [0024]-[0026], Abstract. For example, Figure
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`2A illustrates a collection of geographically proximate location postings that each
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`include the term “pizza,” and Figure 2B depicts a view of a map with overlay
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`graphic information 32 (e.g., a cloud) derived from the location postings
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`identifying the geographic area associated with the postings. EX1005, [0031].
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`EX1005, FIGS. 2A-2B.
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`To determine groups of related location postings, Lemmela’s system
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`identifies salient words in the postings and then clusters the postings using, for
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`example, a “clustering algorithm” that is used to “pre-process” the postings over
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`time before the filtered information is subsequently provided to the mapping
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`application. EX1005, [0035], [0043]. The overlay graphical information for a
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`group of postings may be formatted to reflect the “type of interests (shopping,
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`dining, events, sightseeing etc.)” of the group, “price ranges, or by density of
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`location postings.” EX1005, [0028]. Lemmela also describes an option for a user
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`to adjust the historical timeframe from which the groups of postings are filtered,
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`e.g., via a slider tool presented on a user’s device that allows the user to adjust the
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`start and end dates for a historical window of postings. EX1005, [0037], [0039],
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`FIG. 5. In stark contrast to the ’327 patent, Lemmela’s disclosure focuses on
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`identifying historically filtered/summarized areas on a map regardless of whether
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`an activity (e.g., “documenting action”) is occurring relative to the current location
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`of a mobile device. See EX1005, [0009] (“summary view” of
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`meaningful/important/relevant information “filtered out and presented to a user”),
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`[0039] (“a time window from late February to late March”); cf. EX1001, 2:63-65
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`(“The term ‘action spot’ refers to a location or an event where at least one activity
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`is occurring relative to the current location of another mobile device.” (emphasis
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`added)), 4:46-48 (“a user can review information related to current happenings
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`within the vicinity of the user’s mobile device”); EX2001, ¶80.
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`D. Crowley
`Crowley (EX1008) describes a “method of establishing connection between
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`users of mobile devices.” EX1008, Abstract; EX2001, ¶81. For example, Crowley
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`purports to provide techniques “allowing acquaintances to find each other so that
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`they can get together, and perhaps have a good time” by facilitating
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`communications between users who are “in close proximity to each other.”
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`EX1008, 1:54-58. The petition relies on Crowley as a secondary reference in
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`combination with Lemmela, solely for the aspect of independent claims 1, 10, and
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`13 directed to the petition’s now-rejected claim construction demanding a “specific
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`distance” rather than a range selected by a predetermined algorithm. Pet., 16-17
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`and 49-52; EX2002, 37 (rejecting petitioner’s construction).
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`IV. CLAIM CONSTRUCTION
`The petition acknowledges that claims in an inter partes review are to be
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`construed using the same standard that applies in district court proceedings—i.e.,
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`the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Circ. 2005)
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`(en banc). But despite acknowledgment of the Phillips standard, the petition never
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`expressly outlined the claim construction disputes at issue in a related district court
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`proceeding, and furthermore never presented alternative claim constructions. See
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`EX2002, 9, 36-41; EX2001, ¶¶28-30. Moreover, in the intervening time since the
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`petition was filed, the district court issued a final claim construction ruling
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`(EX2002) that addressed certain terms under the Phillips standard. For purposes of
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`this proceeding, Patent Owner submits that all terms should be interpreted
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`consistent with the constructions adopted in the district court’s claim construction
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`ruling. EX2001, ¶30. Patent Owner specifically addresses two claim elements
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`below.
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`A.
`“action spot” (claims 1, 10, 13)
`The term “action spot” should be construed to mean “a location or event
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`where at least one activity is occurring relative to the current location of another
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`mobile device.”1 EX2001, ¶¶31-32. This construction is explicitly supported by
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`the specification of the ’327 patent, which lexicographically defines an “action
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`spot” using this exact phrase. See EX1001, 2:63-65. Moreover, in the related
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`litigation over the ’327 patent, the parties agreed upon this exact construction, and
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`the district court adopted it in the final claim construction ruling. EX2002, 9.
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`B.
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`“determine/determining at least one action spot within a
`predetermined distance from the current location of the mobile
`device” (claims 1, 10, 13)
`Independent claims 1, 10, and 13 respectively recite the phrase
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`“determine/determining at least one action spot within a predetermined distance
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`from the current location of the mobile device.” EX1001, 19:26-28, 20:6-7, 13:28-
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`29. Consistent with the district court’s order (EX2002, 36-38), Patent Owner
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`submits that this limitation should be construed according to its plain and ordinary
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`meaning under the Phillips standard, and no formal construction is necessary.
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`EX2001, ¶¶33-35.
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`1 The ’327 patent also states that the “term ‘activity’ refers to an action taken by a
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`mobile device,” and the challenged claims clarify that the required type of activity
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`involves a “documenting action.” See EX1001, 2:53-63, 19:28-30, 20:8-10, 20:30-
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`32.
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`In contrast, the petition erroneously and exclusively relies upon a flawed
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`claim construction that was since rejected by the district court under the Phillips
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`standard. Petitioner’s flawed construction imports several requirements into this
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`limitation that are inconsistent with the plain and ordinary meaning, including (i) a
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`first requirement that the “predetermined distance” be a “specific distance” (e.g., as
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`opposed to a “range” of distances or a distance that is the “output of a
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`predetermined algorithm”) and (ii) a second requirement that “each action spot”
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`within the predetermined distance from the mobile device be determined (e.g., as
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`opposed to just a subset of all action spots that exist within the predetermined
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`distance). Pet., 16-17. Petitioner proposed that these same requirements be added
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`to this limitation in the related litigation over the ’327 patent, but the district court
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`rejected Petitioner’s attempt to depart from the plain and ordinary meaning and
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`concluded that the claims do not require either a “specific distance” or
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`determination of “each action spot.” EX2002, 36-38 (holding that petitioner’s
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`arguments were inconsistent with the language of claims 1, 10, and 13 (“at least
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`one” action spot). Thus, petitioner’s claim construction (demanding the claimed
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`“predetermined distance” somehow excludes a range selected by a predetermined
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`algorithm, Pet., 16) should be rejected here for the same reasons identified by the
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`district court. EX2002, 37.
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`16
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`To be clear, the district court did clarify that the plain and ordinary meaning
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`Case No.: IPR2019-00715
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`of this limitation requires that “the predetermined distance be set before the at least
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`one action spot is determined.” EX2002, 38. Patent Owner adopts the court’s
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`construction ruling for this element. EX2001, ¶35.
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`V. THE PETITION EXPRESSLY ASSUMES THE CLAIM SCOPE
`UNDER THE DISTRICT COURT’S CONSTRUCTION IS
`UNDEFINED, SO THE BOARD SHOULD DECLINE TO INSTITUTE
`REVIEW
`As discussed above (Section IV.B), the proper construction of claims 1, 10,
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`and 13 does not require the system to determine “each action spot” within the
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`predetermined distance from the current location of the first mobile device. See
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`EX2001, ¶¶34-35; EX2002, 36-38; Rather, it is sufficient to determine “at least
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`one” action spot within the predetermined distance—even if other action spots
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`exist but are left undetermined. EX2002, 36-38. This meaning is consistent with
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`the district court’s final claim construction order, which expressly rejected
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`Petitioner’s attempt to import a requirement for the determination of “each action
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`spot.” EX2002, 36-38.
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`The petition presents only a single, erroneous claim construction for this
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`element—not alternative claim constructions—and then fatally assumes that
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`“[w]ithout interpreting this limitation as applying to ‘each action spot,’ the ’327
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`patent [] fails to inform a POSITA with reasonable certainty about the claim’s
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`17
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`scope.” Pet., 17 (citing Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898,
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`910 (2014)).
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`In other words, the petition expressly assumes that moving forward with the
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`district court’s claim construction would “fail[] to inform a POSITA with
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`reasonable certainty about the claim’s scope.” Pet., 17. Petitioner’s declarant, Dr.
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`Bhattacharjee, agreed with petitioner’s express assumption. See EX1002, ¶37
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`(“This limitation recites ‘at least one action spot,’ but the specification does not
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`explain how a system would treat action spots within the ‘predetermined distance
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`from the mobile device’ differently so that some action spots within that distance
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`would be ‘determined’ and others would not. Without interpreting this limitation
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`as applying to each action spot, the ’327 patent thus fails to inform a person of
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`ordinary skill in the art about the claim’s scope.”). A petition that fails to present
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`alternative constructions and instead expressly assumes the claim scope is
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`undefined should be denied institution. Toyota Motor Corp. v. Blitzsafe Texas,
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`LLC, IPR2016-00422, Paper 12, 26-27 (PTAB July 6, 2016) (denying institution
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`and concluding that a petitioner fails to satisfy the requirements of 37 C.F.R.
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`§42.104(b)(3) when the petition “asserts that the district court’s constructions are
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`incorrect” and instead “effectively” raises an indefiniteness argument).
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`Worse yet, not only did the petition advance only one flawed construction
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`for this element in independent claims 1, 10, and 13 that was expressly rejected by
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`18
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`the district court, the petition compared the prior art to the claims only under this
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`flawed construction. Pet., 17, 25-32, 47-52. The petition never offered an
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`alternative construction or mapped the cited prior art references to the claims under
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`an alternative construction. Hologic, Inc. v. Enzo Life Sciences, Inc., IPR2018-
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`00019, Paper 21, 6 (PTAB November 28, 2018) (denying institution and noting
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`that the petition failed to “offer alternative constructions and demonstrate
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`unpatentability under each construction”). Instead, the petition relies upon an
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`ultimatum: the Board must institute IPR under petitioner’s flawed (and now-
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`rejected) claim construction or else petitioner will assume the claim scope is
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`undefined. See Pet., 15.
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`Under these conditions, institution should be denied. Toyota Motor, Paper
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`12, at 26-27. This is especially true where Petitioner is forbidden from
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`subsequently adding new theories/positions to the Petition’s defective analysis,
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`Intelligent Bio-Systems, 821 F.3d at 1369, and where it would be legal error for the
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`Board to substitute a new argument (to replace the Petition’s flawed assumptions)
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`that “could have been included in a properly-drafted petition, but was not,”
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`Magnum Oil, 829 F.3d at 1380.
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`VI. GROUND 1 IS DEFICIENT
`The reasons explained in detail below show that Ground 1 is critically
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`flawed, and institution should be denied.
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`19
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`Case No.: IPR2019-00715
`Attorney Docket No.: 21828-0041IP1
`A. The Winkler-Altman Combination Fails To Provide The
`“Determine/Determining At Least One Action Spot” Limitation
`Of Independent Claims 1 , 10, And 13
`Independent claims 1, 10, and 13 each recite a limitation (i.e., elements [1e],
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`[10c], and [13c], respectively) directed to “determining at least one action spot
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`within a predetermined distance from [a] current location of [a] mobile device, the
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`at least one action spot corresponding to a location where at least one other mobile
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`device has engaged in documenting action within a predetermined period of time.”
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`See EX1001, 19:26-31 (claim 1), 20:6-11 (claim 10), 20:28-33 (claim 13). The
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`petition’s analysis of this limitation in Ground 1 contains multiple procedural and
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`substantive deficiencies that demonstrate institution is unwarranted. EX2001, ¶36.
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`1.
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`The petition presents shifting and inconsistent mappings for
`“the at least one action spot” that deprive Patent Owner
`and the Board of a fair opportunity to assess Petitioner’s
`combination
`To start, the petition’s analysis of element [1e] is flawed due to its shifting
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`and inconsistent mappings of Winkler’s disclosure to “the at least one action spot”
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`recited in this claim element.2 EX2001, ¶¶46-51. Element [1e] is broken into
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`2 Elements [10c] and [13c] recite substantially identical language to element [1e],
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`and the petition cross-references its discussion of element [1e] when addressing
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`elements [10c] and [13c]. See Pet., 39, 41. The petition’