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`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 NON-CONTINGENT MOTION TO AMEND
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`Case No.: IPR2019-00715; Attorney Docket No.: 21828-0041IP1
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`I. 
`II. 
`
`III. 
`
`C. 
`
`TABLE OF CONTENTS
`
`STATEMENT OF RELIEF REQUESTED .................................................... 1 
`PROCEDURAL REQUIREMENTS OF 37 C.F.R. §42.121 .......................... 1 
`A. 
`Reasonable Number of Claims—37 C.F.R. §42.121(a)(3) ................... 1 
`B. 
`Non-Broadening Amendments—37 C.F.R. §42.121(a)(2)(ii) .............. 1 
`C. 
`Fully Supported Amendments—37 C.F.R. §42.121(a)(2)(ii) ............... 1 
`1. 
`Element [21b]—Touch Sensitive Display .................................. 2 
`2. 
`Element [21c]—Displaying an Interactive Map ......................... 2 
`3. 
`Elements [21e] & [21g]—Action Spot and Activity Level ........ 4 
`4. 
`Element [21f]—Action Spot and Current Location
`Signifying .................................................................................... 5 
`Element [21i]—Providing a Pop-Display ................................... 5 
`5. 
`Responsive Amendments—37 C.F.R. §42.121(a)(2)(i) ....................... 6 
`D. 
`PATENTABILITY OF THE SUBSTITUTE CLAIM .................................... 7 
`A. 
`The Amended Subject Matter of Substitute Claim 21 .......................... 7 
`B. 
`Claim Construction ............................................................................... 9 
`1. 
`“determine” at least one “action spot” ........................................ 9 
`Non-Obviousness .................................................................................. 9 
`1. 
`The New Features of Elements [21e], [21g], & [21i] ................. 9 
`a)  Winkler (EX1004) ..................................................................... 10 
`b) 
`Altman (EX1006) ...................................................................... 11 
`c) 
`Lemmela (EX1005)................................................................... 12 
`d) 
`Crowley (EX1008) .................................................................... 12 
`e)  Waldman (EX1011) .................................................................. 13 
`2. 
`The Original Elements of Claim 2 (Remaining in Claim
`21) ............................................................................................. 13 
`Deficiencies of the Lemmela Combinations as to the
`Original “Action Spot” Features of Element [21e] ................... 13 
`Deficiencies of the Lemmela Combinations As To the
`Original “Activity Level” Features of Element [21g] .............. 15 
`i
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`a) 
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`b) 
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`Case No.: IPR2019-00715; Attorney Docket No.: 21828-0041IP1
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`c) 
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`d) 
`
`D. 
`
`Deficiencies of the Lemmela Combinations As To the
`Original “Coloring” Feature Element [21h] ............................. 16 
`Deficiencies of the Winkler Combination As To the
`Original “Action Spot” Feature of Element [21e] .................... 17 
`Substitute Claim 21 Represents Patent Eligible Subject Matter ......... 19 
`1. 
`Revised Guidance Step 1—Statutory Class .............................. 19 
`2. 
`Revised Guidance Step 2A—Abstract Idea .............................. 20 
`IV.  DUTY OF CANDOR—37 C.F.R. 42.11 ...................................................... 21 
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`ii
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`EX2001
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`EX2002
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`EX2003
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`EX2004
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`EX2005
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`EX2006
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`EX2007
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`EX2008
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`EX2009
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`Case No.: IPR2019-00715; Attorney Docket No.: 21828-0041IP1
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`EXHIBIT LIST
`Declaration of Patrick McDaniel, Ph.D.
`
`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”)
`
`Second Declaration of Patrick McDaniel, Ph.D.
`
`Transcript of Deposition of Dr. Samrat Bhattacharjee
`(November 18, 2019)
`
`Final Ruling On Defendant Snap Inc.’s Motion For Summary
`Judgment Of Invalidity Under Section 101 Of U.S. Patent Nos.
`8,825,084 And 8,326,327, Blackberry Limited v. Snap Inc.,
`Case Nos. CV 18-1844-GW & 18-2693-GW (C.D. Cal.
`October 1, 2019)
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`Disclosure Pursuant To 37 C.F.R. §42.11
`
`US Appl. No. 12/870,676 (as filed)
`
`Garmin: Updating Maps on Your Garmin Device (May 2010),
`available at https://www8.garmin.com/documents/instructions/
`Garmin_Map_Update_Guide.pdf (retrieved November 24,
`2019)
`
`CNET Article: How To Update Your GPS Maps TomTom
`Edition (July 14, 2010), available at https://www.cnet.com/
`pictures/how-to-update-your-gps-maps-tomtom-edition-photos
`(retrieved November 24, 2019) (slideshow pictures reproduced
`in a single PDF)
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`Case No.: IPR2019-00715; Attorney Docket No.: 21828-0041IP1
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`I.
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`STATEMENT OF RELIEF REQUESTED
`BlackBerry respectfully requests that the Board consider this Motion on a
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`non-contingent basis and grant entry of corresponding substitute claim 21 in
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`replacement of original claim 2. BlackBerry also respectfully requests preliminary
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`guidance concerning this Motion, in accordance with the New Pilot Program
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`Concerning Motion to Amend Practice. See Fed. Reg. 9,497 (Mar. 15, 2019).
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`II.
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`PROCEDURAL REQUIREMENTS OF 37 C.F.R. §42.121
`A. Reasonable Number of Claims—37 C.F.R. §42.121(a)(3)
`Substitute claim 21 corresponds to original claim 2. See Appendix A. This
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`one-to-one relationship fits within “[t]he presumption [] that only one substitute
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`claim would be needed to replace each challenged claim.” 37 C.F.R. §42.121.
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`B. Non-Broadening Amendments—37 C.F.R. §42.121(a)(2)(ii)
`Substitute claim 21 includes amendments that: (i) rewrite original claim 2 into
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`independent form, incorporating all features of original claims 1-2; and (ii) add new
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`feature combinations to the original claim language. Appendix A; EX2003, ¶¶117-
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`119 (claim language comparison). With no original elements removed and several
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`new elements added, claim 21 is solely narrowing and a priori non-broadening.
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`C.
`Fully Supported Amendments—37 C.F.R. §42.121(a)(2)(ii)
`Substitute claim 21 is fully supported by the disclosure of U.S. Appl. No.
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`12/870,676 (the ’676 Application; EX2007), as demonstrated below. See generally
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`EX2003, ¶¶125-139.
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`Case No.: IPR2019-00715; Attorney Docket No.: 21828-0041IP1
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`Elmt.
`[21a]
`[21b]
`[21c]
`[21d]
`[21e]
`[21f]
`[21g]
`[21h]
`[21i]
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`Summary of Exemplary Support in the ’676 Application
`[0019-0020], [0025-0027], [0032]
`[0019-0023], [0026], [0029-0030], [0032], [0034-0035], [0061]
`[0020], [0026-0028], [0061]
`[0019], [0021], [0029]
`[0017], [0019-0020], [0022], [0030], [0032], [0033], [0035-0036], [0041]
`[0019], [0023], [0027-0029], [0030-0031]
`[0041]
`[0016], [0019], [0023], [0031], [0039], [0043], [0045]
`[0047-0049]
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`1.
`Element [21b]—Touch Sensitive Display
`Element [21b] introduces the feature of a “touch sensitive display.” The ’676
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`Application fully supports this new feature throughout its disclosure. EX2003, ¶126.
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`For example, the ’676 Application explains that “[t]he mobile device 100 [of FIG.
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`1] includes a display screen 102” and “[t]he display screen can be . . . a touch-
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`sensitive display screen.” EX2007, [0026], FIG. 2; see also [0061] (describing an
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`“auxiliary I/O subsystem 960” as a “touch-sensitive interface”), FIG. 9.
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`2.
`Element [21c]—Displaying an Interactive Map
`Element [21c] incorporates new features relating to an “interactive map,” each
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`of which is fully supported by the ’676 Application. EX2003, ¶¶127-130. First,
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`Element [21c] requires “display[ing] . . . a graphical user interface comprising an
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`interactive map.” The ’676 Application describes this, stating: “a graphical user
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`interface can be displayed on the display of a mobile device” and “the graphical user
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`interface can be . . . an interactive map.” EX2007, [0020], FIG. 1; see also [0027-
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`0028], FIG. 2; EX2003, ¶128.
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`Second, Element [21c] specifies that “the interactive map includes geographic
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`locations and is manipulatable by user input on the touch sensitive display.”
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`Accordingly, the ’676 Application explains that “[t]he map 206 can include
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`graphical representations 308 of venues, locations . . . and other locational
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`landmarks.” EX2007, [0028]1, FIG. 2. The ’676 Application further explains that
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`the interactive map “is displayed on the display screen 102” and “allow[s] the user
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`of the mobile device 100 to select graphical items [and] manipulate the map.”
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`EX2007, [0027], FIG. 2. As discussed at Section II.C.1, the ’676 Application
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`provides that the display screen 102 is a “touch-sensitive display” associated with a
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`touch-sensitive input/output subsystem. EX2007, [0026], [0061], FIGS. 2, 9. These
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`disclosures—i.e., an interactive map that is (i) displayed on a touch-sensitive
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`display; and (ii) manipulatable by a user—would have made clear to a POSITA that
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`the inventors had possession of the claimed interactive map “manipulatable by user
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`input on the touch sensitive display.” EX2003, ¶129.
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`Third, Element [21c] further adds that the interactive map is displayed “after
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`an application configured to determine action spots has been selected.” Here again
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`1 Emphasis added throughout.
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`the ’676 Application provides ample support, stating: “the map 206 can be displayed
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`in response [to] the selection and execution of . . . an application for determining
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`action spots,” and “the map 206 can be displayed after an application configured to
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`determine action spots has been selected and launched.” EX2007, [0027-0028];
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`EX2003, ¶130.
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`3.
`Elements [21e] & [21g]—Action Spot and Activity Level
`Element [21e] specifies that the “documenting action” associated with the
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`location of the determined action spot “compris[es] a posted video.” This new
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`feature is supported by the following disclosure in the ’676 Application:
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`[T]he at least one action spot can be determined as a location where at
`least one other mobile device has engaged in a documenting action . . .
`For example, the processor can determine the at least one action spot as
`the location where at least one other mobile device is . . . posting
`messages, pictures, or videos on a social networking site[.]
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`EX2007, [0022]; see also [0032] (documenting action includes virtual posts),
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`[0033], [0035-0036] (virtual posting include video posting), [0041] (video posting),
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`FIGS. 1, 3-4, 10; EX2003, ¶¶131-133; EX2004, 98:2-7; generally id., 96:5-98:22.
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`Element [21g] specifies that the “activity level” indicated at the action spot
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`“includ[es] video recording activity.” This new feature is supported by disclosure
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`that “[t]he level of activity can be determined by . . . the level of video recording
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`activity.” EX2007, [0041]; see also EX2003, ¶134; EX2004, 100:10-101:16.
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`4.
`Element [21f]—Action Spot and Current Location Signifying
`Element [21f] incorporates two new features, each of which is fully supported
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`by the ’676 Application. EX2003, ¶¶135-136. First, Element [21f] specifies that
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`the action spot is signified “as a selectable graphical item on the interactive map of
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`the graphical user interface.” This feature corresponds to description of
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`“display[ing] the at least one action spot on the graphical user interface as a graphical
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`item” as an example of how “[t]he at least one action spot is signified.” EX2007,
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`[0023]; EX2003, ¶135. The example of FIG. 3 is also instructive. In this non-
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`limiting example, “[t]he action spots 304, 306 are signified on the [interactive] map
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`206 by graphical items that are clouds.” EX2007, [0030], FIG. 3; EX2003, ¶135.
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`The same example demonstrates support for Element [21f]’s second added
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`feature of “signify[ing] . . . the current location of the mobile device as an icon on
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`the interactive map . . .” See EX2003, ¶136. In the FIG. 3 example, “the current
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`location 302 of the mobile device 100 is identified on the map 206 by a graphical
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`item that is a star.” EX2007, [0029]. And in other examples, “the current location
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`302 can [be] a graphical item that is . . . an [sic] human-shaped icon.” Id.
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`5.
`Element [21i]—Providing a Pop-Display
`Element [21i] recites a new feature of “provid[ing] a pop-up display of said
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`posted video on the graphical user interface of the touch sensitive display.” This
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`new feature also finds support in the ’676 Application. To start, the ’676 Application
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`describes with reference to FIG. 6 a non-limiting example of a pop-up display in the
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`form of a “pop-up window.” EX2003, ¶137 (citing [0047-0049]). In the FIG. 6
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`embodiment, “the pop-up window 610 displays the most recent captured photo that
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`was posted on a virtual posting forum by another mobile device located at the action
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`spot 608,” and “the pop-up window 610 can [also] display the most recent posting
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`posted by another mobile device located at action spot 604.” EX2007, [0048]. Thus,
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`the ’676 Application provides support for a pop-up display of a photo or other
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`“recent posting.” EX2003, ¶138. And, as discussed at Section II.C.3, a posted video
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`is a type of posting expressly contemplated by the ’676 Application. EX2007,
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`[0022], [0032-0033], [0035-0036], 0041], FIGS. 1, 3-4, 10. Taken as a whole, the
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`disclosure of the ’676 Application therefore provides support for the feature of
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`“provid[ing] a pop-up display of said posted video.” EX2003, ¶¶137-139.
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`D. Responsive Amendments—37 C.F.R. §42.121(a)(2)(i)
`Substitute claim 21 is responsive because it incorporates new and nonobvious
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`feature combinations that further distinguish the prior art advanced in the Petition.
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`See Section III.C, infra; see also Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129,
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`Paper 15 at 6-7 (PTAB Feb. 25, 2019). Certain features have also been added to
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`address potential, but not conceded, issues under 35 U.S.C. § 101. See Section III.D,
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`infra. These features, even those immaterial to the prior art, do not undermine the
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`responsiveness of claim 21. As noted in Lectrosonics, “modifications that address
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`potential 35 U.S.C. § 101 . . . issues . . . are not precluded by rule or statute.”
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`Lectrosonics, Paper 15 at 5-6.
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`III. PATENTABILITY OF THE SUBSTITUTE CLAIM
`A. The Amended Subject Matter of Substitute Claim 21
`The ’327 Patent describes a variety of new techniques for improving the
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`process of identifying and locating nearby events on a mobile device. EX2003,
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`¶¶19-25, 120-124. A particular problem addressed by the ’327 Patent is that users
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`of conventional mobile devices in search of “information relating to [nearby] events
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`and happenings” had to “search an external resource . . . and compare the locations
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`of the found events and happenings to the mobile device’s current location.”
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`EX1001, 2:66-3:12; see also id. 3:12-20 (discussing tediousness and inaccuracy
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`leading to user frustration); see also EX2003, ¶19, 151-156.
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`The ’327 Patent’s techniques improve on the conventional approach by
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`leveraging newly-available data sources—the user’s current location and the activity
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`of other nearby users—to create an interactive map featuring “action spots” and
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`associated “activity levels” that enable the small-screen device user to easily locate,
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`assess, and navigate to events of interest. EX2003, ¶¶20-24, 157. By definition,
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`“[t]he term ‘action spot’ refers to a location or an event where at least one activity is
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`occurring relative to the current location of another mobile device.” EX1001, 3:3-
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`5. And the corresponding “activity level”—indicated in claim 21 by coloring a
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`Case No.: IPR2019-00715; Attorney Docket No.: 21828-0041IP1
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`graphical item signifying the action spot—enables users to quickly assess popularity
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`of the event occurring at the action spot. EX2003, ¶157 (citing EX1001, 4:24-44).
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`While the ’327 Patent’s original claims recite several aspects of the paradigm-
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`shifting techniques disclosed, the limited number claims could not have fully defined
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`every salient feature. Substitute claim 21 now incorporates several new features that
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`were disclosed but not expressly recited in original dependent claim 2. For example,
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`substitute claim 21 further describes:
`
`[21e] “the at least one action spot corresponding to a location where at
`least one other mobile device has engaged in documenting action
`comprising a posted video within a predetermined period of time; and
`[21g] an indication of activity level including video recording activity
`at the at least one action spot.
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`And claim 21 further includes the feature of:
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`[21i] provid[ing] a pop-up display of said posted video on the graphical
`user interface of the touch sensitive display.
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`These new limitations focus on the use of video content—an intuitive and powerful
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`social media mechanism—to determine the claimed “action spot,” indicate the
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`corresponding activity level for that action spot, and display action-spot-relevant
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`content to the user. EX2003, ¶¶120-124. This synergistic combination of video-
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`based features further augments the improvement over conventional practices. Id.
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`With the approach set forth in claim 21, not only is the user experience on the small-
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`Case No.: IPR2019-00715; Attorney Docket No.: 21828-0041IP1
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`screen mobile device enhanced by integrating locational information for action spots
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`into an interactive map, it is further enriched by presenting with relevant video
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`content that will help the user evaluate interest in such action spots. Id.
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`B. Claim Construction
`1.
`“determine” at least one “action spot”
`The district court’s final claim construction order properly interpreted the
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`term “action spot” under the Phillips standard to mean “a location or event where at
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`least one activity is occurring relative to the current location of another mobile
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`device.” EX2002, 9. Not only did all parties agree that this was the proper
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`construction under the Phillips standard, but this construction matches the deliberate
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`lexicography of “action spot” in the specification. EX1001, 2:63-65; see also
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`EX2002, 9; EX2003, ¶¶35-42.
`
`C. Non-Obviousness
`1.
`The New Features of Elements [21e], [21g], & [21i]
`As discussed at Section III.A, the new claim features introduced through
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`Elements [21e], [21g], and [21i] orient the subject matter of substitute claim 21
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`toward a technological solution where video content is used to determine an action
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`spot, indicate activity level, and display such posted video. The publications cited
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`in the Petition are silent as to these features, and the evidence here shows a POSITA
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`would not have been prompted to modify those references to reach substitute claim
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`21. EX2003, ¶¶140-149. Each of Snap’s deficient references is discussed below.
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`a) Winkler (EX1004)
`Winkler’s system conveys location-based information to a user through “map
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`elements” displayed on the user’s mobile device. EX1004, 2:6-26, 3:62-4:5, FIGS.
`
`5, 6A-6C; EX2003, ¶141. Winkler describes examples in which the system
`
`“changes” the pre-existing map elements “based on events that occur at or proximate
`
`to . . . a location associated with the element.” EX1004, 10:3-7; see also 2:16-33,
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`11:16-26. Winkler lists a number of distinct “events” that may trigger a change in
`
`appearance of a map element. For example, Winkler discloses events related to
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`“activity” detection, such as “a certain frequency or amount of activity in a certain
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`region.” EX1004, 11:38-44. The detected “activity” may include other users posting
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`commentary relevant to a tagged location. EX1004, 7:35-8:18, Table 2, FIG. 3.
`
`But the “activity” disclosed by Winkler—even the posted commentary—is
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`plainly distinct from video postings. EX2003, ¶142. Winkler thus falls well short
`
`of Element [21e]’s features relating to determining at least one “action spot”
`
`corresponding to a location where at least one other mobile device has engaged in
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`“documenting action comprising a posted video.” Id. Winkler’s lack of disclosure
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`on the topic of video renders it equally deficient as to the Element [21i]’s additional
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`feature of “provid[ing] a pop-up display of said posted video on the graphical user
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`interface of the touch sensitive display.” Id.
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`Winkler’s failure on these features makes sense. After all, Winkler’s object
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`is driving users toward two-way messaging sessions regardless of their present
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`locations, not enabling users to easily locate and assess nearby “actions spots”
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`corresponding to locations where other users have posted videos. Compare EX1004,
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`2:6-15, 7:35-67 with EX1001, 2:66-3:20 and 4:35-44; see also EX2003, ¶143.
`
`b) Altman (EX1006)
`Altman, similar to Winkler, is concerned with “help[ing] [to] initiate
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`communication and messaging among users based on the relative location of the
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`users with respect to each other or a place of interest.” EX1006, [0006]; EX2003,
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`¶144. Altman thus discloses a “location-based social network manager” that
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`“superimposes on the map the respective locations of one or more other users of
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`mobile communication devices coupled to the mobile communication device over
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`the network.” EX1006, Abstract, [0059]-[0060] (“send an alert to that user when a
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`friend of the user gets within a certain distance of the POI”).
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`While Altman briefly mentions video clips, it does so in the limited context
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`of storing them in a database of a remote server. EX1006, [0036]. Altman never
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`contemplates leveraging these video clips for anything related to determining action
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`spots or any interactive map functionality. EX2003, ¶145. Rather than video,
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`Altman describes using still images to tag points-of-interest that can be shared with,
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`and displayed to, other users. EX1006, [0054-0056]. But even here, Altman does
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`not suggest utilizing images for determining an action spot or indicating activity
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`level as required by Element [21e] and [21g]. EX2003, ¶145.
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`Altman also falls short as to Element [21i]’s feature of “provid[ing] a pop-up
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`display of said posted video on the graphical user interface of the touch sensitive
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`display.” EX2003, ¶146. This is true despite the fact that Altman mentions utilizing
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`“pop-up screens.” Id. (citing EX1006, [0043]). Altman’s pop-up screens merely
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`provide a manner of displaying basic profile information for other users on the map.
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`Id. This profile information does not include video, and certainly not a posted video
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`that was part of a determination of an action spot. Id.
`
`c)
`Lemmela (EX1005)
`Lemmela’s system collects so-called “location postings” from users over a
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`historical period of time (e.g., previous days, weeks, or months) and uses a text-
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`based filter to isolate those postings having “salient words” for determining where
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`users have historically posted about certain topics. EX1005, [0007]-[0009], [0024]-
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`[0026], Abstract, FIG. 1; EX2003, ¶147. Critically, the functionality of Lemmela’s
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`system is premised on filtering/grouping text-based postings, so the claimed
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`functionality related to the posted video of Elements [21e], [21g], and [21i] is
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`antithetical to Lemmela’s original solution. EX2003, ¶147.
`
`d) Crowley (EX1008)
`Crowley describes a “method of establishing connection between users of
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`mobile devices” and facilitating communications between users who are “in close
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`proximity to each other.” EX1008, Abstract, 1:54-58; EX2003, ¶148. The Petition
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`relies on Crowley as a secondary reference in combination with Lemmela, but
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`Crowley cannot cure Lemmela’s shortcomings as to the functionality based on
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`action spots and posted video in Elements [21e], [21g], and [21i]. EX2003, ¶148.
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`e) Waldman (EX1011)
`Waldman describes a “handheld communication device to capture and display
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`a real-time view stream.” EX1011, Abstract; EX2003, ¶149. In one example, a
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`mobile device displays a viewfinder image on a screen of the device, and
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`superimposes labels identifying points of interest shown in the image. Id., [0019]-
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`[0020], FIG. 1. The Petition relies on Waldman as a tertiary reference in
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`combination with Lemmela and Crowley, but Waldman cannot cure Lemmela’s
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`shortcomings as to the claimed functionality based on action spots and posted video
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`in Elements [21e], [21g], and [21i]. EX2003, ¶149.
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`2.
`The Original Elements of Claim 2 (Remaining in Claim 21)
`Even beyond the prior art’s failure to disclose the new claim Elements [21e],
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`[21g], and [21i], the Petition’s cited combination fail to disclose several layers of
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`original claim elements too. EX2003, ¶¶52-65, 91-105.
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`a)
`Deficiencies of the Lemmela Combinations as to the
`Original “Action Spot” Features of Element [21e]
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`The Petition asserts that “Lemmela discloses action spots as groups of virtual
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`location-based posts” but fails to adequately explain how this disclosure comports
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`with the proper construction of “action spot.” Pet., 45; EX2002, 9; EX2003, ¶53.
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`According to the Petition, the Lemmela-Crowley system would merely output a
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`visual summary (“clouds”) on the user’s map to reflect all groups of posts within a
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`specific distance of a first mobile device. Pet., 50. But this analysis fails to
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`acknowledge that these groups of historical posts were never used in Lemmela to
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`determine whether an action spot is occurring with respect to the current location of
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`the user’s mobile device. EX2003, ¶¶53-55 (citing EX1005, [0043-0044]).
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`Lemmela’s disclosure that “postings older than a certain date may be excluded
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`from processing” does not cure the foregoing deficiencies, and in fact underscores
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`shortcomings in the Petition’s analysis. EX1005, [0037], [0039], FIG. 5; EX2003,
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`¶56. Lemmela, for example, never contemplates a threshold posting age that would
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`define a meaningful cutoff from which the system could reasonably output a
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`determination that activity is occurring relative to the mobile device. EX1005, FIG.
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`5 (depicting timeline spanning two months of historical posting data); EX2003, ¶56.
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`A further compounding problem is that Lemmela never discloses that the mobile
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`device actively queries the server for up-to-date information in response to the user
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`selecting a time range, and so Lemmela’s system is incapable of determining a
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`location or an event where activity is occurring relative to a current location of the
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`mobile device. EX2003, ¶57. This is because Lemmela plainly explains the mobile
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`device pre-downloads posting information from the server and only later processes
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`this locally stored information (which, at best, reflects activity that was current at
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`the earlier time when it was pre-downloaded) to render “salient-word” clouds on the
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`mobile device. EX1005, [0043] (confirming Lemmela pre-downloads “raw” or
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`“pre-processed” posting information), [0044], [0038]; EX2003, ¶57.
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`b) Deficiencies of the Lemmela Combinations As To the
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`Original “Activity Level” Features of Element [21g]
`The Petition cites Lemmela’s disclosures that “the shaped boundary” for a
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`group of postings “may be displayed in a color indicating further information
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`regarding the group, for example indicating a quantitative measure of the postings
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`in the group” or a “density of location postings” in the group. Pet., 55 (citing
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`EX1005, [0012], [0028]). But the Petition fails to show that either Lemmela’s
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`alleged “quantitative measure of the postings in the group” or “density of location
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`postings” sufficiently communicates a level of actions of mobile devices at a
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`location. EX2002, ¶¶39-40 (citing EX1001, 9:59-65); EX2003, ¶¶61-63.
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`The Institution Decision queried whether the claims require “any particular
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`accuracy” of the activity level, but this question ignores the difference between a
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`“level of actions” and a level of salient word commonality within those actions. Inst.
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`Dec. 19. Lemmela discloses that its “clouds” displayed on the map are generated by
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`initially word filtering and selecting only the subgroup of postings that contain the
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`same “salient words” accumulated over previous days or months—with all other
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`posting actions being discarded or ignored. EX1005, [0007]; see also [0025],
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`[0034]-[0035]. Thus, Lemmela’s alleged “quantitative measure of postings in [a]
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`group” do not actually reflect the level of actions taken by mobile devices engaging
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`in postings at a given location, but instead merely represent the level of salient word
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`commonality for a mere subgroup of postings extracted from the universe of (mostly
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`ignored) postings. EX2003, ¶¶63-64. Worse, Lemmela’s “density” of postings
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`further corrupts the level of salient word commonality by skewing this level based
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`on the size of the area encompassed by postings in the group—further departing from
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`a level of actions taken by mobile devices and the type of activity level described in
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`the ’327 Patent. EX1005, [0028], [0035]; EX2003, ¶63.
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`c)
`Deficiencies of the Lemmela Combinations As To the
`Original “Coloring” Feature Element [21h]
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`The deficiencies discussed as to the “activity level” features of Element [21g]
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`are accentuated by the further requirement of Element [21h] for the color of the
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`graphical item to be selected according to a “range of activity” occurring at the at
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`least one action spot. Lemmela colors its “salient word” clouds and formats the
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`words presented with its “salient word” clouds according to the “measure of postings
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`in the group” or the “density of location postings.” EX2003, ¶61 (citing EX1005,
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`[0012], [0028]). It follows then that any ranges applied to color these items in
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`Lemmela’s system would thus relate to the measure of salient word commonality or
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`density of postings in an area rather than a range “of activity” (e.g., posting activity)
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`occurring at a location. Id.
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`d) Deficiencies of the Winkler Combination As To the
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`Original “Action Spot” Feature of Element [21e]
`The Petition errs by failing to consistently map to the same elements of
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`Winkler’s disclosure against “the at least one action spot.” For example, the Petition
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`initially contends, without qualification, that “Winkler discloses action spots as ‘map
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`elements.’” Pet., 23. But Winkler amorphously describes “map elements” as
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`encompassing any text or graphical element presented to a user along with a map,
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`including pre-existing venues, tagged locations of stores or other buildings, and
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`other elements that are vastly different from the “action spot” defined in the ’327
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`Patent. EX1004, 3:43-46, 3:62-4:5; EX2003, ¶93. As such, not every “map
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`element” contemplated by Winkler can possibly constitute an “action spot”—
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`especially any map element that is not determined to be located within a
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`“predetermined distance” from the current location of the mobile device or that does
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`not correspond to a location where at least one other mobile device “has engaged in
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`documenting action.” EX2001, 48; EX2003, ¶93. The problem with the Petition is
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`that it attempts to address the various requirements of Element [21e] by individually
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`pointing to distinct embodiments of Winkler’s “map elements,” while failing to
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`show how any one of Winkler’s distinct embodiments would satisfy all of the
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`requirements for “the at least one action spot.” EX2001, 48; EX2003, ¶¶94-96.
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`Beyond the inconsistent mappings, the Petition has severe substantive
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`shortcomings, particularly as to the requirement that “the at least one action spot”
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`must “corr