Trials@uspto.gov
`571-272-7822
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` Paper 37
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` Entered: September 1, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`SNAP INC.,
`Petitioner,
`
`v.
`
`BLACKBERRY LIMITED,
`Patent Owner.
`
`____________
`
`IPR2019-00715
`Patent 8,326,327 B2
`____________
`
`
`
`Before MICHAEL R. ZECHER, MIRIAM L. QUINN, and
`AARON W. MOORE, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Claims Unpatentable
`Granting Patent Owner’s Motion to Amend
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper 37
`
`
`
` Entered: September 1, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`SNAP INC.,
`Petitioner,
`
`v.
`
`BLACKBERRY LIMITED,
`Patent Owner.
`
`____________
`
`IPR2019-00715
`Patent 8,326,327 B2
`____________
`
`
`
`Before MICHAEL R. ZECHER, MIRIAM L. QUINN, and
`AARON W. MOORE, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Claims Unpatentable
`Granting Patent Owner’s Motion to Amend
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`IPR2019-00715
`Patent 8,326,327 B2
`
`
`I.
`
`INTRODUCTION
`
`We instituted inter partes review pursuant to 35 U.S.C. § 314 as to
`
`claims 13, 811, 1315, and 20 of U.S. Patent No. 8,326,327 B2
`
`(Ex. 1001, “the ’327 patent”), owned by Blackberry Limited (“Patent
`
`Owner”). Paper 9 (“Decision” or “Dec. on Inst.”). We have jurisdiction
`
`under 35 U.S.C. § 6. This Final Written Decision is entered pursuant to
`
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons discussed below,
`
`Petitioner has shown by a preponderance of the evidence that claims 13,
`
`811, 1315, and 20 (the challenged claims) of the ’327 patent are
`
`unpatentable. We also grant Patent Owner’s Motion to Amend.
`
`II. BACKGROUND
`
`A. RELATED MATTERS
`
`The parties identify BlackBerry Limited v. Snap Inc., No. 2:18-cv-
`
`02693 (C.D. Cal.), as a related matter. See Pet. 1; Patent Owner Mandatory
`
`Notices (Paper 5) 2. Petitioner has also filed a petition in IPR2019-00714
`
`requesting inter partes review of U.S. Patent No. 8,825,084 B2, which was
`
`filed as a continuation of the ’327 patent.
`
`B. THE ’327 PATENT
`
`The ’327 patent relates to a system and method for determining an
`
`action spot based on the location of a mobile device. See Ex. 1001, 1:8–10.
`
`Specifically, the ’327 patent discloses determining an “action spot” by
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`identifying a location where mobile devices have engaged in “documenting
`
`action.” See id. at 3:21–35. The action spot is located within a
`
`2
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`Patent 8,326,327 B2
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`“predetermined distance” from the location of the user’s mobile device. See
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`id. at 3:64–66.
`
`Figure 3, reproduced below, illustrates a screenshot of an interactive
`
`map, which includes display screen 102, graphical user interface 206,
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`current location 302, action spots 304 and 306, and graphical representations
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`308 of location landmarks. See Ex. 1001, 5:47–58.
`
`“FIG. 3 is an illustrative implementation of a graphical user interface
`displaying an action spot within a predetermined distance from a current
`location of a mobile device.” Ex. 1001, 1:46–48.
`
`
`
`3
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`IPR2019-00715
`Patent 8,326,327 B2
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`The action spots can have different sizes to indicate the associated
`
`activity level; for example, a larger size may represent more activity. See
`
`Ex. 1001, 6:23–39.
`
`Figure 7 of the ’327 patent, reproduced below, shows “compass” 702
`
`identifying the direction in which to travel to arrive at an action spot. See id.
`
`at 12:1–16.
`
`FIG. 7 illustrates “a graphical user interface of a mobile
`device having a compass showing at least the distance and
`direction to an action spot.” Ex. 1001, 1:61–64.
`
`
`
`
`C. ILLUSTRATIVE CLAIMS
`
`Of the challenged claims, claims 1, 10, and 13 are independent. Each
`
`of challenged claims 2, 3, 8, 9, 11, 14, 15, and 20 depends directly or
`
`indirectly from at least one of claims 1, 10, or 13.
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`4
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`IPR2019-00715
`Patent 8,326,327 B2
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`
`Claims 1, 10 and 13 are reproduced below.
`
`1. A mobile device comprising:
`
`a display; and
`
`a processor module communicatively coupled to the display and
`configured to receive executable instructions to:
`
`display a graphical user interface on the display;
`
`receive data indicative of a current location of the mobile device;
`
`determine at least one action spot within a predetermined distance
`from the current location of the mobile device, the at least one
`action spot corresponding to a location where at least one other
`mobile device has engaged in documenting action within a
`predetermined period of time;
`
`signify the at least one action spot on the graphical user interface;
`and
`
`provide an indication of activity level at the at least one action
`spot.
`
`10. A method for providing action spots on a mobile device
`comprising:
`
`determining, via a processor, a current location of the mobile device;
`
`determining at least one action spot within a predetermined distance
`from the current location of the mobile device, the at least one
`action spot corresponding to a location where at least one other
`mobile device has engaged in documenting action within a
`predetermined period of time;
`
`displaying a graphical item on the display of the mobile device, said
`graphical item identifying a direction, relative to the current
`location, in which to travel in order to arrive at the determined at
`least one action spot.
`
`13. A method for providing action spots on a mobile device
`comprising:
`
`determining, via a processor, a current location of the mobile device;
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`5
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`Patent 8,326,327 B2
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`determining at least one action spot within a predetermined distance
`from the current location of the mobile device, the at least one
`action spot corresponding to a location where at least one other
`mobile device has engaged in documenting action within a
`predetermined period of time;
`
`signifying the at least one action spot with a graphical item on a
`display of the mobile device;
`
`marking the graphical item according to an activity level with at least
`one action spot.
`
`Ex. 1001, 19:18–35, 20:2–15, 20:24–37.
`
`D. PROCEDURAL HISTORY
`
`Petitioner filed the Petition on February 22, 2019. Paper 1 (“Pet.”).
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`Patent Owner filed a Preliminary Response on June 14, 2019. Paper 8
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`(“Prelim. Resp.”). After considering the parties’ filings, we granted the
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`Petition and instituted inter partes review on all challenged claims and all
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`grounds asserted in the Petition. Dec. on Inst. 25. In that Decision on
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`Institution, we clarified the claim construction for the term “action spot” and
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`resolved Petitioner’s request for claim construction of the terms
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`“predetermined distance” and “display the image with the at least one action
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`spot.” Dec. on Inst. 711.
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`During trial, Patent Owner filed a Patent Owner Response (Paper 14
`
`(“PO Resp.”)) and Petitioner filed a Reply (Paper 22 (“Reply”)). Patent
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`Owner also filed a Sur-Reply. Paper 27 (“Sur-Reply”).
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`During trial, Patent Owner also filed a Non-Contingent Motion to
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`Amend seeking replacement of original claim 2 with substitute claim 21.
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`Paper 13 (“Motion” or “MTA”). Petitioner filed its Opposition to the
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`IPR2019-00715
`Patent 8,326,327 B2
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`Motion to Amend. Paper 24 (“MTA Opp.”). We issued Preliminary
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`Guidance at Patent Owner’s Request. See MTA, 1; Paper 26, (“PG”).
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`Thereafter, Petitioner filed a Reply (Paper 30 (“MTA Reply”)) and Patent
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`Owner filed a Sur-Reply (Paper 32 (“MTA Sur-Reply”)).
`
`We heard oral argument on June 9, 2020, by video only, a transcript
`
`of which is filed in the record. Paper 36 (“Tr.”).
`
`E. EVIDENCE OF RECORD
`
`Petitioner relies upon the following references as evidence of prior art:
`
`a) Winkler: U.S. Patent No. 8,750,906 B2, issued June 10, 2014, filed
`
`as Exhibit 1004;
`
`b) Altman: U.S. Patent Application Publication No. 2007/0281716
`
`A1, published Dec. 6, 2007, filed as Exhibit 1006;
`
`c) Lemmela: U.S. Patent Application Publication No. 2008/0250337
`
`A1, published Oct. 9, 2008, filed as Exhibit 1005;
`
`d) Crowley: U.S. Patent No. 7,593,740 B2, issued Sept. 22, 2009,
`
`filed as Exhibit 1008; and
`
`e) Waldman: U.S. Patent Application Publication No. 2011/0199479
`
`A1, published Aug. 18, 201, filed as Exhibit 1011.
`
`In addition, Petitioner supports its contentions in the Petition with the
`
`Declaration of Dr. Samrat Bhattacharjee. Ex. 1002 (“Bhattacharjee Decl.”).
`
`Petitioner also proffered a Rebuttal Declaration of Dr. Samrat Bhattacharjee.
`
`Ex. 1020 (“Bhattacharjee 2d Decl.”).
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`7
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`Patent 8,326,327 B2
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`With its Patent Owner Response, Patent Owner provided a
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`Declaration of Patrick McDaniel, Ph.D. Ex. 2001 (“McDaniel Decl.”).
`
`During trial, Patent Owner proffered a Second Declaration of Patrick
`
`McDaniel, Ph.D. Ex. 2003 (“McDaniel 2d Decl.”).
`
`F. GROUNDS OF UNPATENTABILITY
`
`The following grounds of unpatentability are at issue (Pet. 2–3):
`
`Claims
`Challenged
`1–3, 8, 10, 11, 13–
`15
`
`35 U.S.C. §1
`
`References
`
`103(a)
`
`Winkler, Altman
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`1–3, 8, 13–15
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`103(a)
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`Lemmela, Crowley
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`10, 11
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`9, 20
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`103(a)
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`Lemmela, Crowley, Winkler
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`103(a)
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`Lemmela, Crowley, Waldman
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`III. ANALYSIS
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`A. CLAIM CONSTRUCTION
`
`In an inter partes review filed on or after November 13, 2018, a claim
`
`“shall be construed using the same claim construction standard that would be
`
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29,
`125 Stat. 284, 287–88 (2011), revised 35 U.S.C. § 103, effective March 16,
`2013. Because the patent application resulting in the ’327 patent was filed
`before the effective date of the relevant section of the AIA, we refer to the
`pre-AIA version of § 103 throughout this Final Written Decision.
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`used to construe the claim in a civil action under 35 U.S.C. 282(b).”
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`37 C.F.R. § 42.100(b) (2019). In applying this claim construction standard,
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`we are guided by the principle that the words of a claim “are generally given
`
`their ordinary and customary meaning,” as would have been understood by a
`
`person of ordinary skill in the art in question at the time of the invention.
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc)
`
`(citation omitted). “In determining the meaning of the disputed claim
`
`limitation, we look principally to the intrinsic evidence of record, examining
`
`the claim language itself, the written description, and the prosecution
`
`history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
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`Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at
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`1312–17). There is a “heavy presumption,” however, that a claim term
`
`carries its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick
`
`Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted).
`
`1. “action spot”
`
`In our Decision on Institution, we preliminarily determined that the
`
`term “action spot” refers to a location or event where an activity “is
`
`occurring” or “has occurred.” Dec. on Inst. 89. We started with Patent
`
`Owner’s lexicography position, which is that the Specification expressly
`
`defines the term “action spot” as “a location or an event where at least one
`
`activity is occurring relative to the current location of another mobile
`
`device.” Id. at 8 (citing Ex. 1001, 2:6365; McDaniel Decl. ¶ 53). We
`
`noted the issue with Patent Owner’s position: the inconsistency with which
`
`the Specification describes the “action spot” as requiring a present (“is
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`IPR2019-00715
`Patent 8,326,327 B2
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`occurring”) “activity.” Id. 89. We also noted that the claim language did
`
`not support Patent Owner’s position. Id. To summarize the issue: although
`
`Patent Owner’s definition requires that the “action spot” is where an
`
`“activity” “is occurring,” the claim language recites that the “action spot
`
`correspond[s] to a location where at least one second mobile device has
`
`engaged in at least one documenting action.” Ex. 1001, 19:2730 (emphasis
`
`added). Thus, we deemed it improper to limit the term “action spot” to
`
`locations where activity (which is a documenting action, id. at 2:5563) “is
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`occurring”—to the exclusion of locations where activity has occurred in the
`
`past.
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`During trial, Patent Owner renewed its contention that to “determine”
`
`at least one “action spot” is expressly defined in the Specification and that
`
`definition controls. PO Resp. 1516. In particular, Patent Owner argues
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`that we must construe the term consistent with the lexicographic meaning,
`
`especially because the parties agreed to this definition during district court
`
`litigation. Id. Patent Owner urges we consider two reasons to change our
`
`preliminary determination that the “action spot” could refer to locations in
`
`which an activity “has occurred”: (1) symmetry and consistency between
`
`our construction and “the district court’s construction”; and (2) the
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`distinction between the Specification’s desired “output” (determination of an
`
`action spot) which is separate and distinct from the claim’s focus on the
`
`“input” (“recent documenting actions from other mobile devices”). Id. at
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`1621. Neither of these arguments is persuasive for us to change our
`
`preliminary interpretation of the term “action spot.”
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`Patent 8,326,327 B2
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`We begin with the claim language, which recites “at least one action
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`spot corresponding to a location where at least one second mobile device has
`
`engaged in at least one documenting action.” Ex. 1001, 19:2831, 20:811,
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`20:3033. This phrase is part of the recited determining function:
`
`“determine at least one action spot.” Id. And according to Patent Owner,
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`the determined action spot is the “output” of the determining function. PO
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`Resp. 18. As we understand Patent Owner’s argument, defining which
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`locations may be “action spots” a priori is different from the server
`
`determining an actual “action spot.” Tr. 31:115 (arguing that “inputs of
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`course can be from the past,” “[b]ut the output is an assessment, based on
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`those inputs, whether activity is presently occurring at the action spot.”).
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`There may be “input data related to documenting action” that occurred in the
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`past, but the claimed determination of an “action spot” is based on the input
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`data. PO Resp. 19. The output then, Patent Owner reasons, is different from
`
`the input. Id. And, thus, the “action spot” definition from the Specification
`
`constrains the “output” (the recited “determine” step) to presently occurring
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`activity. See id. (arguing that “the system achieves a solution that seeks to
`
`efficiently communicate to the user the ‘current happenings’ occurring in the
`
`vicinity of the user’s current location” (emphasis omitted) (citing Ex. 1001,
`
`4:3544; McDaniel 2d Decl. ¶¶ 39, 40)).
`
`The importance of this language seems to be that if the so-called
`
`output is limited to presently occurring activity, because of the “is
`
`occurring” language in the Specification’s definition, then prior art that
`
`reports activity not presently occurring would be outside the scope of the
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`11
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`Patent 8,326,327 B2
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`claim. See PO Resp. 2326 (arguing that Lemmela’s postings accumulated
`
`over a two-month span in the past “certainly does not equate to Lemmela’s
`
`system somehow outputting the user its determination that activity is
`
`occurring relative to the current location of Lemmela’s mobile device 50”
`
`(emphasis in original)). We are not persuaded by Patent Owner’s argument
`
`that the claim is so restricted.
`
`The claim language plainly requires determining an “action spot” and
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`further defines what constitutes an “action spot:” “the at least one action
`
`spot corresponding to a location where at least one other mobile device has
`
`engaged in documenting action within a predetermined time period.” Ex.
`
`1001, 19:2831. There is no “input” and “output” distinction in the claim
`
`language. Nor is there any term in the claim that warrants divorcing the
`
`determined “action spot” from the “action spot” at which a mobile user has
`
`engaged in activity.
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`In essence, we have two competing definitions of “action spot,” one
`
`flowing from the claim language, in which the “action spot” may correspond
`
`to locations with past activity, and the Specification definition, which,
`
`according to Patent Owner, precludes those locations. Ex. 1001, 2:6365,
`
`19:2831. However, in a situation like this where there is little to no
`
`evidence that the claim reads on two different concepts of an “action spot”—
`
`one an input, the other the output—we conclude that the claim language
`
`precludes such an interpretation and the plain meaning controls. Phillips v.
`
`AWH Corp., 415 F.3d 1303, 131213 (Fed. Cir. 2005) (starting claim
`
`construction analysis with the “bedrock principle” that the claims define the
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`invention and the claims are given the ordinary and customary meaning). In
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`our view, the plain meaning is that, when the server determines at least one
`
`“action spot,” that “action spot” corresponds to a location in which a mobile
`
`user has engaged in a documenting action, such as capturing and
`
`transmitting a video. The action spot, therefore, can include locations in
`
`which activity occurred in the past by the very nature of the verb tense in the
`
`verb phrase “has engaged.”2
`
`The patentee’s lexicography cannot alter this meaning based on our
`
`review of the full record. The Specification describes four implementations
`
`of determined action spots. Ex. 1001, 3:644:23. This description starts:
`
`“[t]he processor can determine at least one action spot located within a
`
`predetermined distance from the current location of the mobile device
`
`(Block 1030).” Id. at 3:6466 (emphasis added). This paragraph, thus,
`
`begins the explanation of the process of determining the action spot, which
`
`is what the claim is directed to. The first implementation is described as “at
`
`least one action spot can be determined as a location where at least one other
`
`mobile device has engaged in a documenting action within a predetermined
`
`period of time from the time the mobile device arrived at the current location
`
`
`
`2 It is worth noting that the limitation concerning the “action spot” and the
`corresponding location language of the claim (i.e., the phrase containing the
`“has engaged” language) was recited in the original claims. See Ex. 1007,
`34. All references to the page numbers in the prosecution history of the ’327
`patent refer to the page numbers inserted by Petitioner in the bottom, right-
`hand corner of each page in Exhibit 1007.
`
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`of the mobile device.” Id. at 3:664:4 (emphases added). This first
`
`implementation is consistent with the claim language in that the action spot
`
`that the server determines is the location where the activity (i.e.,
`
`documenting action) may have occurred in the past. Although the
`
`Specification describes an example of the first implementation as an “action
`
`spot” that involves activity in the present tense (e.g., the other mobile device
`
`“is composing an email” (see id. 4:410)), the description of the activity is
`
`not limited to currently occurring activity, because that is presented as only
`
`“an example.”
`
`The fourth implementation is also instructive as it states that “the at
`
`least action spot can be the location where at least one other mobile device
`
`has documented, recorded, accounted, chronicled, or otherwise has taken
`
`note of a location or a current happening occurring at the location.” Id. at
`
`4:1923. From this passage we learn that the “action spot” may refer to
`
`locations that refer to past activity because the mobile device “has
`
`documented” a location. We also infer from this passage that there are two
`
`distinct times relevant to the second mobile device: (1) the time at which the
`
`mobile device documents a location, regardless of when an event takes place
`
`(“has documented . . . or otherwise has taken note of a location”); and (2) the
`
`time at which an event is happening at a location (“or a current happening
`
`occurring at the location”). Id. The claimed “action spot” involves the first
`
`timing, because the claim focuses on identifying as “action spots” those
`
`locations at which the second mobile device has engaged in documenting
`
`actions, which the Specification describes as text messaging, emailing,
`
`blogging, posting a message on a social networking Internet site, or any
`14
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`other documenting action. See id. at 2:5558. The claim is silent regarding
`
`whether documenting the location or the occurrence of an event must be
`
`concurrent with the determination step, such that the “action spot” refers
`
`only to “current” happenings or “current” mobile device activity.
`
`Patent Owner’s reliance on Figures 3 and 4 of the ’327 patent do not
`
`persuade us otherwise. Patent Owner presents a comparison of those two
`
`figures to argue that the determination step outputs an action spot where
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`activity “is occurring,” e.g., a musical or concert, but does not report action
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`spots of music events that “‘occurred’ there on previous days or weeks.” PO
`
`Resp. 1920 (citing Ex. 1001, 2:6365, 4:3544, 9:2339; McDaniel 2d
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`Decl. ¶ 41). This argument, however, characterizes the ’327 patent
`
`disclosure too narrowly, ignoring other embodiments that reflect otherwise.
`
`First, the depiction of “action spots” in which a music concert is currently
`
`happening does not preclude the depiction of “action spots” in which recent
`
`(read here, not current) activity occurred. For instance, the ’327 patent
`
`provides Figure 5, reproduced below, as an embodiment in which the system
`
`determines an “action spot” where neither a current event, nor a
`
`documenting activity, are “currently” happening.
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`Figure 5 is an illustrative implementation of a graphical user interface
`of a mobile device displaying a venue-specific map and action spots,
`showing highlighted in red the action spot labeled as item 502 and in yellow
`the action spot labeled as item 504. Ex. 1001, 1:5456.
`
`According to the Specification, Figure 5 depicts two determined
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`action spots 502, 504. Ex. 1001, 10:5961. The star depicted as item 501
`
`denotes the current location of the mobile user. Id. Action spot 502
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`(highlighted in red) includes an exclamation point, indicating that the
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`activity level at that spot is higher than the activity level of action spot 504
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`(highlighted in yellow). Id. at 10:6711:4. The Specification also describes
`
`that, although both are displayed action spots, the identifier of action spot
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`502 can indicate “that the most recent documenting actions are occurring at
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`action spot 502, thereby notifying the user of the mobile device 100 that the
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`most current happening is occurring at action spot 502.” Id. at 11:811
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`(emphasis added). In this embodiment both action spots 502 and 504 are
`
`displayed (i.e., they are determined action spots), but only action spot 502
`
`refers to the location of the most recent documenting action. From this
`
`explanation we conclude that the server may determine as action spots those
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`locations in which there is documenting activity that occurred in the past,
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`even though there may be more current documenting activity reflecting an
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`event happening “now.” See id. at 11:1114 (explaining that exclamation
`
`point may indicate that a zookeeper talk or photo opportunity currently is
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`taking place at action spot 502). Thus, we understand the ’327 patent
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`disclosure to support the contention that the claimed determination of an
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`“action spot” encompasses determining locations where both a documenting
`
`action is occurring or has occurred.
`
`We further find that additional claim language does not support Patent
`
`Owner’s contention. Claim 1, for instance, recites that “the at least one
`
`action spot corresponds to a location where at least one other mobile device
`
`has engaged in a documenting action is within a predetermined period of
`
`time.” Ex. 1001, 19:2931. This claim language points out that the activity
`
`is permissibly within a past timeframe. Indeed, the Specification describes
`
`the predetermined time period as “within the last hour, the last twelve hours,
`
`the last twenty-four hours, the last thirty minutes, or any other time period
`
`that is measured from the time the mobile device 100 arrived at the current
`
`location 302.” Id. at 8:3539. In other words, the server uses a
`17
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`IPR2019-00715
`Patent 8,326,327 B2
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`predetermined amount of time to select locations with past-occurring activity
`
`falling within the allotted time.3 Thus, if a mobile device documented a
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`location at midnight on Tuesday, another mobile device arriving at that
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`location at 8 am on Wednesday will display that location as an “action spot,”
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`when the server determines that the location has been documented within the
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`predetermined amount of time, such as the last twelve hours.
`
`As we did before, therefore, we find that the Specification’s attempt to
`
`define “action spot” as such is sufficiently unclear because the Specification
`
`is not consistent in defining the “action spot” as limited to location where
`
`activity “is occurring,” and such inconsistency fails to give notice to a
`
`person of ordinary skill in the art of the clear meaning of the term. See In re
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`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (inventor may define specific
`
`terms used to describe invention, but must do so “with reasonable clarity,
`
`deliberateness, and precision” and, if done, must “‘set out his uncommon
`
`definition in some manner within the patent disclosure’ so as to give one of
`
`ordinary skill in the art notice of the change” in meaning (quoting Intellicall,
`
`Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387–88 (Fed. Cir. 1992))); Dec.
`
`on Inst. 89. We also conclude that the language of the claims themselves
`
`further preclude adopting Patent Owner’s proposed construction.
`
`As for Patent Owner’s other argument concerning the desire for
`
`symmetry between claim constructions here at the Board and in the district
`
`
`
`3 Here we focus on the past-occurring activity for purposes of illustrating our
`point. But the server may also use a predetermined amount of time of zero,
`and, then, the determined “action spot” would encompass “current” activity.
`18
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`Patent 8,326,327 B2
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`court, we are not persuaded that the argument warrants a different
`
`conclusion. As we understand the posture of the “action spot” term in
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`district court litigation, there was no express claim construction of this term
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`during Markman. See PO Resp. 17; Ex. 2002, 9, 3638. Indeed, we note
`
`that the parties agreed to the term and the district court merely entered that
`
`definition as an agreed definition. PO Resp. 9. We do not see the parties’
`
`agreed-to definition as the same as a district court claim construction
`
`analysis and interpretation. See Ex. 1026, 3 (identifying the “action spot” as
`
`an agreed-to-definition). Furthermore, Petitioner argues that the district
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`court analyzed the claim language in the summary judgment order pertaining
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`to the ’327 patent claims, noting that the plain meaning of the claim
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`language does not require any automatic, periodic, or timely updates of
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`action spot information. See Reply 35 (citing Ex. 2005, 4043). And that
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`interpretation, according to Petitioner, is consistent with our analysis here
`
`that the claim simply states that an action spot corresponds to a location
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`where a user “has engaged” in documenting activity, with no limits in time.
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`Id.; Ex. 2005, 40. Although we do not comment on whether the district
`
`court’s claim construction analysis parallels our claim construction analysis,
`
`we do note that there is no apparent conflict between the district court’s
`
`determinations and orders and anything we have said here. Accordingly, we
`
`are not persuaded that the policy of consistency and symmetry of claim
`
`constructions among the Board and the district court is offended by
`
`clarifying that the term “action spot” is not limited to “is occurring” activity.
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`Therefore, according to the full context of the Specification and the
`
`plain meaning of the claim language, we maintain that the term “action spot”
`
`19
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`IPR2019-00715
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`refers to a location or event where an activity “is occurring” or “has
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`occurred,” relative to the current location of another mobile device.
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`2. “predetermined distance”
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`In our Decision on Institution, we were not persuaded by Petitioner’s
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`proposed construction of the “predetermined distance” as including a
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`“specified distance” requirement. Dec. on Inst. 910. Patent Owner
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`responds to our preliminary determination by stating that “[t]he Institution
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`Decision properly assessed this claim phrase and rejected Petitioner’s
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`proposed construction.” PO Resp. 22. Patent Owner also points out that the
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`“district court rejected Petitioner’s attempt to depart from the ordinary
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`meaning and concluded that the claims do not require either a ‘specific
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`distance’ or determination of ‘each action spot.’” Id. (citing Ex. 2002,
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`3638) (emphasis in original). Petitioner does not renew its claim
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`construction position, or otherwise argue that we improperly concluded that
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`the claims do not require a “specific distance.” Cf. Bhattacharjee 2d Decl.
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`¶¶ 2123 (stating that conclusions regarding the “predetermined distance”
`
`limitations are not affected by the Board’s determination that the claim does
`
`not require a “specific distance”). We reiterate here our analysis and reach
`
`the same conclusion.
`
`Claims 1, 10, and 13 each recites the phrase “determine at least one
`
`action spot within a predetermined distance from the current location of the
`
`mobile device.” Ex. 1001, 19:2628, 20:67, 20:2829. Claim 8 depends
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`from claim 1 and further recites that the “determining of the at least one
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`action spot is based upon a defined distance from the mobile device.” Id. at
`
`20
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`IPR2019-00715
`Patent 8,326,327 B2
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`19:5961. We are not persuaded by Petitioner’s argument that claims 1, 10,
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`and 13 require a “specified distance.” Pet. 16. These claims describe in
`
`plain words, and without qualification, that the action spot must be within a
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`predetermined “distance” from the current location of the first mobile
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`device. There is no restriction as to how that distance is prescribed. The
`
`Specification plainly states that the “predetermined distance can be within
`
`five blocks, ten blocks, ten yards, one hundred yard[s], one hundred feet,
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`thirty feet, ten meters, fifteen meters, five miles, ten miles, twelve miles,
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`twenty miles, or any other distance from the current location 302 of the
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`mobile device 100.” Ex. 1001, 8:2328 (emphases added). The language
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`here is non-restrictive, e.g., “can be,” and the listing of distances is
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`circumscribed only to the extent that “any other distance” may be used. Id.
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`There is no specific distance requirement anywhere in the Specification.
`
`And finally, claim 8 confirms that a “defined distance” will be further used
`
`for the determining step—leading us to conclude that the “predetermined
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`distance” of the independent claims should not be limited to a “specified
`
`distance.”
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`Consequently, we determine that the term “predetermined distance”
`
`does not require a “specified distance.”
`
`3. “display the image with the at least one activity spot”
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`In our Decision on Institution, we determined that the phrase “display
`
`the image with the at least one activity spot” needed no construction. Dec.
`
`on Inst. 1011. Neither party raises this limitation again during the trial.
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`Accordingly, we maintain that the phrase needs no express construction.
`
`21
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`4. Conclusion
`
`No other claim terms are in dispute, and, therefore, we need not
`
`construe any further claim terms. See, e.g., Nidec Motor Corp. v. Zhongshan
`
`Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid
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`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
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`(“[O]nly those terms need be construed that are in controversy, and only to
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`the extent necessary to resolve the controversy.”).
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`B. LEVEL OF ORDINARY SKILL IN THE ART
`
`In determining the level of ordinary skill in the art, various factors
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`may be considered, including the “type of problems encountered in the art;
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`prior art solutions to those problems; rapidit
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