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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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`SECOND DECLARATION OF PATRICK McDANIEL, PH.D.
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`Page 1
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`BLACKBERRY 2003
`SNAP, INC. V. BLACKBERRY LIMITED
`IPR2019-00715
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`

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`TABLE OF CONTENTS
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`
`
`VI. 
`
`I. 
`INTRODUCTION AND SCOPE OF WORK ................................................ 6 
`QUALIFICATIONS ........................................................................................ 7 
`II. 
`III.  MATERIALS CONSIDERED ...................................................................... 11 
`IV.  PERSON OF ORDINARY SKILL IN THE ART ........................................ 13 
`V. 
`BACKGROUND OF THE ’327 PATENT ................................................... 14 
`A. 
`’327 Patent Overview (Ex. 1001) ........................................................ 14 
`B. The Prosecution History of the ’327 Patent ............................................... 21 
`INTERPRETATION OF THE ’327 PATENT CLAIMS AT ISSUE ........... 23 
`A. 
`“determine/determining” at least one “action spot” ............................ 25 
`B. “determine/determining at least one action spot within a predetermined
`distance from the current location of the mobile device” ................... 32 
`VII.  ANALYSIS OF GROUNDS 2-4: ALLEGED OBVIOUSNESS IN VIEW
`OF LEMMELA AND CROWLEY (GROUND 2) / IN VIEW OF
`LEMMELA, CROWLEY, AND WINKLER (GROUND 3) / IN VIEW OF
`LEMMELA, CROWLEY, AND WALDMAN (GROUND 4) ..................... 35 
`A.  Overview Of Prior Art ......................................................................... 35 
`i. 
`Lemmela .................................................................................... 35 
`ii. 
`Crowley ..................................................................................... 39 
`iii.  Waldman ................................................................................... 40 
`B. Grounds 2-4 Deficiencies .......................................................................... 41 
`i. 
`The Petition Has Not Shown That Lemmela’s System
`Determines At Least One Action Spot For Activity That “Is
`Occurring” Relative To A Current Location Of A Mobile
`Device (Claims 1, 10, And 13) ................................................. 41 
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`Page 2
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`ii. 
`
`iv. 
`
`v. 
`
`iii. 
`
`Lemmela Does Not Provide An “Activity Level” As Recited In
`Independent Claims 1 and 13 .................................................... 49 
`The Petition Has Not Shown That Lemmela Discloses An
`Indication Of Activity Level That Is Based Upon A Number Of
`Actions “Within A Predetermined Distance From The At Least
`One Action Spot,” As Recited In Claims 3 And 15 ................. 54 
`The Combination Of Winkler With Lemmela And Crowley
`Would Not Have Provided A “Graphical Item Identifying A
`Direction, Relative To The Current Location [Of A First
`Mobile Device], In Which To Travel In Order To Arrive At The
`Determined At Least One Action Spot” As Recited In Claim 10
` ................................................................................................... 58 
`Deficiencies In The Petition’s Proposed Combination Based On
`Lemmela, Crowley, And Waldman (Claims 9 And 20) ........... 62 
`VIII.  ANALYSIS OF GROUND 1: ALLEGED OBVIOUSNESS IN VIEW OF
`WINKLER AND ALTMAN ......................................................................... 65 
`A.  Overview Of Prior Art ......................................................................... 65 
`i.  Winkler ...................................................................................... 65 
`ii. 
`Altman ....................................................................................... 69 
`B. Ground 1 Deficiencies ............................................................................... 70 
`i. 
`The Petition Presents Inconsistent Mappings For “The At Least
`One Action Spot” Of Independent Claims 1, 10, And 13 ........ 70 
`The Petition Has Not Shown Winkler’s Map Elements
`Correspond To A Location “Where” At Least One Other
`Mobile Device “Has Engaged” In Documenting Action .......... 74 
`The Petition Has Not Shown That The Alleged Winkler-Altman
`Combination Would Have Set A “Predetermined Distance”
`Before Determining “The At Least One Action Spot” ............. 77 
`The Petition Conflates The Distance From A Tagged Location /
`Map Element With A Distance From Current Location Of A
`First Mobile Device .................................................................. 81 
`
`ii. 
`
`iii. 
`
`iv. 
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`v.  Winkler’s Color-Changing Map Element Is Not A “Graphical
`Item Identifying A Direction, Relative To The Current Location
`[Of The Mobile Device], In Which To Travel In Order To
`Arrive At The Determined At Least One Action Spot” As
`Recited In Claim 10 .................................................................. 84 
`IX.  PROPOSED SUBSTITUTE CLAIM 21 ....................................................... 87 
`A. 
`The Subject Matter of Claim 21 .......................................................... 87 
`B. The Original Disclosure Supports Substitute Claim ................................. 93 
`i. 
`Element [21b]: Touch Sensitive Display .................................. 93 
`ii. 
`Element [21c]: Displaying an Interactive Map ......................... 94 
`iii. 
`Elements [21e]/[21g]: Action Spot/Activity Level ................... 97 
`iv. 
`Element [21f]: Action Spot & Current Location Signifying .... 99 
`v. 
`Element [21i]: Providing a Pop-Display .................................100 
`C. The References Asserted in the Petition Lack Multiple Features of
`Substitute Claim 21 ...........................................................................102 
`i.  Winkler (EX1004) ...................................................................102 
`ii. 
`Altman (EX1006) ....................................................................104 
`iii. 
`Lemmela (EX1005).................................................................106 
`iv. 
`Crowley (EX1008) ..................................................................107 
`v.  Waldman (EX1011) ................................................................107 
`Substitute Claim 21 Represents a Non-Abstract Technological
`Improvement over Traditional Mobile Devices ................................108 
`LEGAL STANDARDS ...............................................................................114 
`A.  Obviousness .......................................................................................115 
`B. Written Description ..................................................................................118 
`C. Patent Eligibility ......................................................................................119 
`
`X. 
`
`D. 
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`Page 4
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`XII.  ADDITIONAL REMARKS ........................................................................120 
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`Page 5
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`I, Patrick D. McDaniel, of State College, Pennsylvania, declare that:
`
`I.
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`INTRODUCTION AND SCOPE OF WORK
`1.
`I have been retained by Fish & Richardson P.C. as an expert witness
`
`on behalf of BlackBerry Limited (“Blackberry” or “Patent Owner”). I understand
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`that Snap, Inc. (“Snap” or “Petitioner”) filed a Petition for inter partes review
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`(“IPR”) of claims 1-3, 8-11, 13-15, and 20 of U.S. Patent No. 8,326,327 (“the ’327
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`patent”), and the case was assigned case no. IPR2019-00715 (“the ’327 IPR
`
`proceeding”).
`
`2.
`
`I previously submitted a declaration (“my First Declaration”) in the
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`’327 IPR proceeding on June 14, 2019. Since that time, I understand that the
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`Patent Trial and Appeal Board (“PTAB” or “Board”) instituted trial in the ’327
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`IPR proceeding. See Institution Decision (IPR2019-00715). Based on further
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`review of the Snap’s IPR Petition of the ’327 patent, the Board’s decision
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`instituting trial in the ’327 IPR proceeding (“Institution Decision”), and the
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`additional materials identified below in Section III, I submit the additional
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`testimony set forth herein (“my Second Declaration”) to supplement my analyses
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`and conclusions from my First Declaration.
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`3.
`
`As previously stated in my First Declaration, I have been asked to
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`provide my independent analysis of the ’327 patent in light of the materials cited
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`below and my knowledge and experience in this field during the relevant period. I
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`below and my knowledge and experience in this field during the relevant period. I
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`have been asked to consider what a person of ordinary skill in the art at the time of
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`the invention of the ’327 patent (a “POSITA”; refer to ¶¶17-18) would have
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`understood from the teachings of the ’327 patent, including scientific and technical
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`knowledge related to the ’327 patent. I have also been asked to consider whether
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`the references cited in the Petition anticipate or render obvious the inventions
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`described by claims 1, 10, and 13, and certain dependent claims, of the ’327 patent.
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`I reserve the opportunity to address other issues and provide further analysis at a
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`later date should it become necessary.
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`4.
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`I am being compensated according to my normal hourly rate for my
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`time providing my independent analysis in this aforementioned IPR proceeding,
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`but my compensation is not contingent in any way on the content of my analysis or
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`the outcome of this proceeding. I am not, and never was, an employee or agent of
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`BlackBerry Limited, the owner of the ’327 patent.
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`II. QUALIFICATIONS
`5. My findings, as explained below, are based on my study, experience,
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`and background discussed below, informed by my extensive experience in the
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`fields of mobile systems, computer software, networking, and user experience
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`design at the pertinent timeframe, and my education as a computer scientist and
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`subsequent decades of work in research and development in these field. As
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`described in more detail below, based on my experiences, I understand and know
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`of the capabilities of persons of ordinary skill in the fields of computer software,
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`networking, and user experience design during the late 2000s and early 2010s, and
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`indeed, I have personal knowledge and experience in working directly with many
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`such persons in these fields during that time frame. I have also relied on my
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`review and analysis of the prior art cited in the Petition, information provided to
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`me in connection with this case, and information I have independently reviewed.
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`6.
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`I earned a Ph.D. in Computer Science and Engineering from
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`University of Michigan, Ann Arbor in 2001. I earned a Bachelor of Science degree
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`in Computer Science from Ohio University in 1989 and a Master of Science
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`degree, also in Computer Science, from Ball State University in 1991.
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`7.
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`Since 2017, I have been the William L. Weiss Professor of
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`Information and Communications Technology in the School of Electrical
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`Engineering and Computer Science at the Pennsylvania State University in
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`University Park, Pennsylvania. I am also the director of the Institute for Network
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`and Security Research, director of the National Science Foundation Funded Center
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`for Trustworthy Machine Learning, and founder and co-director of the Systems
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`and Internet Infrastructure Security Laboratory, a research laboratory focused on
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`the study of security in diverse network and computer environments. My research
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`efforts primarily involve computer systems, mobile device systems and security,
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`network, management, and authentication, systems security, and technical public
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`policy.
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`8.
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`Before my current position, I was an Assistant Professor (2004-2007),
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`Associate Professor (2007-2011), Full Professor (2011-2015), and Distinguished
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`Professor (2015-2017) of Computer Science and Engineering at the Pennsylvania
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`State University. Since 2004, I have taught several courses in the field of computer
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`systems, systems programming, networks, and network and computer security at
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`both the undergraduate and graduate level. I created and continue to maintain
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`several of these courses for Penn State.
`
`9.
`
`From 2003-2009, I was also an Adjunct Professor at the Stern School
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`of Business at New York University in New York, NY. At the Stern School of
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`Business, I taught courses in computer and network security and online privacy.
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`10.
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`I am a Fellow of the Association for Computing Machinery (the
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`leading professional association for computer science) for “contributions to
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`computer and mobile systems security” and the Institute for Electrical and
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`Electronics Engineering (the leading professional association for computer
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`engineering) for “contributions to the security of mobile communications”.
`
`11.
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`I was the Program Manager (PM) and lead scientist for the Cyber
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`Security Collaborative Research Alliance (CRA) from 2012 to 2018. The CRA is
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`led by Penn State University and includes faculty and researchers from the Army
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`Research Laboratory, Carnegie Mellon University, Indiana University, the
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`University of California-Davis, and the University of California-Riverside. This
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`national scale initiative is a research project aimed at developing a new science of
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`cyber-security for military networks, computers, and installations.
`
`12.
`
`I have served as an advisor to several Ph.D. and master’s degree
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`candidates, several of whom have gone on to become professors at various
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`institutions such as Purdue University, North Carolina State University, the
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`University of Oregon, and the Georgia Institute of Technology. I am currently an
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`advisor to two Ph.D. candidates and a number of master’s students.
`
`13. Before joining Pennsylvania State University as a professor, I was a
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`software developer and project manager for companies in the networking industry
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`including Applied Innovation, Inc. and Primary Access Corporation. I was also a
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`senior researcher at AT&T Research-Labs. As part of my duties in these industrial
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`positions, I designed and implemented online services and features in various
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`contexts.
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`14.
`
`I have published extensively in the fields of network and security
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`management, mobile networking and device operating systems, computer systems,
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`authentication, systems security, applied cryptography and network security. In
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`addition to writing several articles for industry journals and conferences, I have
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`authored portions of numerous books related to computer systems, applied
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`cryptography and network security. I have served on the editorial boards of several
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`peer-reviewed journals including ACM Transactions on Internet Technology, for
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`which I was the Editor-in-Chief. I was also an Associate Editor for ACM
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`Transactions on Information and System Security and IEEE Transactions of
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`Software Engineering, two highly-regarded journals in the field. A complete list of
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`my publications in the last 10 years, as well as a list of editorial positions can be
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`found in my curriculum vitae, which I have attached to this declaration as
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`Appendix A.
`
`15.
`
`In view of the foregoing, I believe I possess the expertise to testify
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`from the perspective of a POSITA with respect to the technology at issue in this
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`case.
`
`III. MATERIALS CONSIDERED
`16.
`In preparing this declaration, I have considered the claims,
`
`specification, and prosecution history of the ’327 patent. I have also read and
`
`considered the Petition for inter partes review in Case No. IPR2019-00715. As
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`part of my analysis for this Declaration, I have considered my own knowledge and
`
`experience, including my work and experience in the fields of computer software,
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`networking, and user experience design, and my experience in working with others
`
`in these fields. Some additional materials that I have reviewed in preparing this
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`declaration include the following documents:
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` Ex. 1001: U.S. Patent No. 8,326,327 (“the ‘327 Patent”)
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` Ex. 1002: Declaration of Dr. Samrat Bhattacharjee
`
` Ex. 1004: U.S. Patent No. 8,750,906 (“Winkler”)
`
` Ex. 1005: U.S. Patent Application Publication No 2008/0250337
`
`(“Lemmela”)
`
` Ex. 1006: U.S. Patent Application Publication No. 2007/0281716
`
`(“Altman”)
`
` Ex. 1007: File History of U.S. Patent No. 8,326,327
`
` Ex. 1008: U.S. Patent No. 7,593,740 (“Crowley”)
`
` Ex. 1010: Complaint for Patent Infringement, Case No. 2:18-cv-
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`02693 (C.D. Cal.)
`
` Ex. 1011: U.S. Patent Application Publication No. 2011/0199479
`
`(“Waldman”)
`
` Ex. 2002: 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”)
`
` Decision: Granting Institution of Inter Partes Review, Paper No. 9,
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`IPR2019-00715 (PTAB, Sept. 4, 2019) ("Institution Decision")
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` Ex. 2004: Transcript of Deposition of Dr. Samrat Bhattacharjee
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`(November 18, 2019)
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` Ex. 2007: US Appl. No. 12/870,676 (as filed), an excerpt from Ex.
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`1007
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` Ex. 2008: Garmin: Updating Maps on Your Garmin Device (May
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`2010), available at
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`https://www8.garmin.com/documents/instructions/Garmin_Map_Upd
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`ate_Guide.pdf (retrieved November 24, 2019)
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` Ex. 2009: CNET Article: How To Update Your GPS Maps TomTom
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`Edition (July 14, 2010), available at
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`https://www.cnet.com/pictures/how-to-update-your-gps-maps-
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`tomtom-edition-photos (retrieved November 24, 2019) (slideshow
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`pictures reproduced in a single PDF)
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`IV. PERSON OF ORDINARY SKILL IN THE ART
`17.
`I understand that the teaching of the prior art is viewed through the
`
`eyes of a POSITA. My analysis is thus based on the perspective of a POSITA
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`having this level of knowledge and skill at the relevant time of the invention. For
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`purposes of my analysis, I have been informed that the priority date of the ’327
`
`patent is no later than the August 27, 2010 timeframe, and I have applied this
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`timeframe as being the relevant time for the perspective of a POSITA. For
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`purposes of assessing the level of ordinary skill in the art, I have considered the
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`types of problems encountered in the art, the prior solutions to those problems
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`found in prior art references, the speed with which innovations were made at that
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`time, the sophistication of the technology, and the level of education of active
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`workers in the field. As previously described, I have reviewed and understand the
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`’327 patent. Based on my above-described experience, I am familiar with and
`
`know of the capabilities of a POSITA in this field during the late 2000s and early
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`2010s.
`
`18. Based upon my knowledge and experience in this area, I believe a
`
`POSITA at the time of the invention would have had a bachelor of science degree
`
`in computer engineering/computer science or similar subject matter, or at least
`
`approximately two years of work or research experience in the fields of computer
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`software, networking, and/or user experience design, or an equivalent subject
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`matter. My opinion as to the level of ordinary skill in the art would remain the
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`same regardless of whether the time of the invention is found to be August 2010,
`
`or anytime in the late 2000s to early 2010s.
`
`V. BACKGROUND OF THE ’327 PATENT
`A.
`’327 Patent Overview (Ex. 1001)
`19. The ’327 patent is titled “System and Method For Determining Action
`
`Spot Locations Relative To The Location Of A Mobile Device.” EX1001, Cover
`
`Page. The ’327 patent explains that, prior to the inventors’ solution, users of
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`electronic devices (e.g., mobile phones) typically identified current events and
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`happenings located nearby through “manual research[].” EX1001, 3:2-20. For
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`example, users could search for events in one application, and then cross-reference
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`the locations of those events using a map, such as a map application on a mobile
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`phone. However, this process was “tedious” and could “result[] in “user
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`frustration.” Id. Moreover, the mapping applications typically contained limited
`
`information/functionality:
`
`Typically, the maps and directions are limited in
`information. For example, maps are limited to displaying
`the streets within a city. In order to find information
`relating to events and happenings currently occurring
`proximate to the mobile device's present location, the user
`of the mobile device will have to search an external
`resource, such as an electronic events calendar, internet
`sites, internet calendars of individual business or event
`holders (stores, restaurants, concert venues, bars, etc.), and
`compare the locations of the found events and happenings
`to the mobile device’s current location. Such a process of
`manually researching events and happenings, determining
`the location of the events and happenings, and comparing
`the location of the events and happenings to the user’s
`current location is tedious and results in user frustration.
`Moreover, the results of the user’s research of current
`events and happenings can be incomplete and inaccurate,
`and the user can miss certain happenings that are close in
`proximity to the current location of the user’s mobile
`device.
`
`EX1001, 3:2-20.
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`20. The ’327 patent presented a new solution that involved determination
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`of “action spots” within the vicinity of the current location of a mobile device. The
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`specification of the ’327 patent defines the term “action spot” at col. 2:63-65 as “a
`
`location or an event where at least one activity is occurring relative to the current
`
`location of another mobile device.” EX1001, 2:63-65 (emphasis added); infra
`
`Section VI.A. This definition reflects the inventors’ purported goal of providing
`
`users with an indication of current happenings, such as nearby events that the user
`
`might wish to visit, attend, or monitor. EX1001, 2:54-3:35, 4:35-39 (“a user can
`
`review information related to current happenings within the vicinity of the user’s
`
`mobile device”); 8:9-39. Moreover, by presenting indications of the determined
`
`“action spots” over a map, the user could easily view the locations of the “action
`
`spots” relative to the user’s current location or other features/landmarks shown in
`
`the map. Id., 4:24-44, FIG. 3.
`
`21. To determine locations or events where activity is occurring relative
`
`to the current location of a mobile device (i.e., to determine “action spots”), the
`
`’327 patent proposed to analyze data indicative of recent activity by mobile
`
`devices at various locations. For example, the ’327 patent describes various
`
`actions of other mobile devices that can be used to gather input, especially those
`
`actions where the other mobile devices are being used to identify whether activity
`
`is occurring at a particular location or event:
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`For example, an activity can include but is not limited
`to a documenting action (such as a text messaging,
`emailing, blogging, posting a message on a social
`networking internet site, or any other documenting
`actions), a recording action (such as video recording,
`audio recording, or photographing taken by a mobile
`device) or any other action where the mobile device is
`being used to observe and make note of a location or
`an event currently occurring at the location of the
`mobile device.
`
`EX1001, 2:54-63 (emphasis added); see also EX1001, 4:4-10 (“similar
`
`documenting action”).
`
`22. Figure 3, copied below, is an example of a user interface for a map
`
`application disclosed in the ’327 patent that presents representations of determined
`
`“action spots” within a predetermined distance from a current location of a mobile
`
`device. Id., 1:46-49. In this figure, the current location of the mobile device is
`
`depicted by item 302 and a pair of action spots are depicted by items 304 and 306.
`
`Id., 6:9-16. In addition to providing the locations of the determined actions spots,
`
`the map also depicts indications of the levels of activity detected at each action
`
`spot based on the size of the corresponding items 304 and 306. For example, the
`
`larger cloud icon for a first action spot represented by item 304 signifies a higher
`
`level of activity at this first action action spot than at a second action spot
`
`represented by the smaller cloud icon 306. Id., 6:23-50. This can reflect, for
`
`instance, a greater number of postings made to social media sites by mobile
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`devices at the location for the first action spot than the location for the second. Id.
`
`Activity levels may also be depicted by varying colors of the graphical items
`
`representative of the actions spots, such as by coloring an item yellow to indicate a
`
`moderate level of activity or green to indicate a higher level of activity. Id.
`
`EX1001, FIG. 3.
`
`23.
`
`It is important to note that, according to the ’327 patent, not all
`
`elements presented on a map constitute “action spots” where activity is occurring
`
`
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`relative to the current location of a mobile device. Some map elements simply
`
`indicate points of interest such as “venues, locations, monuments, buildings,
`
`streets, lakes, and other location landmarks.” Id., 5:54-58. For example, in Figure
`
`3, items designated ‘308’ are mere “graphical representations” of points of
`
`interests or landmarks. Id., FIG. 3. However, if the system has not made a
`
`determination that activity is occurring at a particular location in the vicinity of a
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`mobile device, then the system does not identify that location as an “action spot”—
`
`even if the system might have historically detected high levels of activity at that
`
`location. To illustrate, consider the following side-by-side of Figures 3 and 4 of
`
`the ’327 patent:
`
`
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`EX1001, FIGS. 3-4; see also id., 9:23-29.
`
`24. As portrayed in Figure 3, no “action spot” is represented at the
`
`location of the “museum.” This indicates that, at the relevant point in time of
`
`Figure 3, no determination has been made that activity is occurring relative to the
`
`mobile device’s current location. In contrast, Figure 4 shows another example
`
`where, at the relevant point in time of Figure 4, a determination has been made that
`
`activity is occurring at the “museum,” and a graphical item 408 is shown over the
`
`“museum” to mark it as an “action spot.” See EX1001, 9:23-29, FIGS. 3-4.
`
`25. The ’327 patent also describes techniques for aiding users in locating
`
`or navigating to “action spots.” EX1001, 12:1-24, 13:23-40, FIGS. 7-8. For
`
`example, Figure 7 shows a “graphical user interface of a mobile device having a
`
`compass showing at least the distance and direction to an action spot proximate to
`
`the mobile device.” Id., 1:61-64, 12:1-13:40. Moreover, Figure 8 shows a
`
`“screenshot of [a] display 102 of a mobile device 100 in which a graphical user
`
`interface for an image acquisition application 800 such as a camera application is
`
`displayed.” Id., 13:41-48. A “viewfinder 802 displays an image from a camera
`
`module,” while visual markers for “action spots 804, 806, 808 [are] superimposed
`
`on the view finder 802 signifying the locations of action spots 804, 806, 808
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`located within the vicinity shown in the viewfinder 802.” Id., 13:50-67.
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`EX1001, FIGS. 7-8.
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`B.
`26.
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`The Prosecution History of the ’327 Patent
`I understand the ’327 patent was filed on August 27, 2010. The
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`original independent claim 1 recited the following language:
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`EX1007, 34.
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`27. The examiner mailed a first office action on April 18, 2012, and
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`alleged that the original claims were anticipated by U.S. Patent Application
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`Publication No. 2010/0004005 (“Pereira”) or obvious in view of Pereira and
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`certain secondary references. Id., 143-151.
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`28.
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`In a response to the first office action dated July 2, 2012, the applicant
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`amended independent claims 1 and 10 as follows (claim 13 was amended in a
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`similar manner):
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`Id., 166-169.
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`29.
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`In remarks addressing the rejections in the first office action, the
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`applicant argued that the claims were novel and non-obvious over Pereira because
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`Pereira failed to disclose “at least one action spot” that met each of the required
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`characteristics of the at least one action spot recited in the independent claims.
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`See, e.g., id., 171 (“Pereira determines the presence of a friend simply by that
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`friend’s device’s location data and does not determine a location where an
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`electronic device has engaged in documenting action.”).
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`30.
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` Following the applicant’s response to the first office action, the
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`examiner mailed a Notice of Allowance on August 16, 2012. Id., 178.
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`31. The examiner did not expressly describe his reasons for allowance.
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`Id.
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`VI.
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`INTERPRETATION OF THE ’327 PATENT CLAIMS AT ISSUE
`32.
`I understand that, for purposes of my analysis in this IPR proceeding,
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`the terms appearing in the patent claims should be interpreted according to their
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`plain and ordinary meaning under the Phillips standard. Phillips v. AWH Corp.,
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`415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc). According to Phillips, the
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`structure of the claims, the specification, and the patent prosecution history are
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`used to construe a claim, and the “ordinary meaning” of a claim term is its
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`meaning that would have been recognized by a POSITA after reading the entire
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`patent. Moreover, Phillips provides that even treatises and dictionaries may be
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`used, albeit under limited circumstances, to determine the meaning attributed by a
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`POSITA to a claim term at the time of filing. For example, Phillips cautions
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`against heavy reliance on the dictionary divorced from the intrinsic record of the
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`patent, such as the patent’s specification. I have followed this approach in my
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`analysis.
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`33.
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`I also understand that the words of the claims should be interpreted as
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`they would have been interpreted by a POSITA at the time the invention was made
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`(not today). For purposes of my analysis here, I have used the August 27, 2010
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`filing date of the ’327 patent as the date of invention. Without exception, however,
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`my analysis of the proper meaning of the recited claim elements (under the Phillips
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`standard) in this Declaration would be correct if the date of invention was
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`anywhere in the late 2000s or early 2010s.
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`34.
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`I understand that the district court in a related proceeding involving
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`the ’327 patent issued a Corrected Final Ruling on Claim Construction (“Markman
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`Order”) on April 5, 2019. EX2002. I have reviewed the sections of the Markman
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`Order that pertain to the ’327 patent. I understand that the claim construction
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`standard under Phillips that applies in this inter partes review is the same standard
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`that the court applied in its Markman Order. For purposes of my analysis of the
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`challenged claims in this IPR proceeding, I have employed the same constructions
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`that were adopted by the court in the Markman Order (including those
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`constructions that were agreed upon by the parties). I also specifically address two
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`constructions below that have particular relevance to issues in the Petition for inter
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`partes review and that are consistent with the constructions adopted by the court in
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`the Markman Order.
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`A. “determine/determining” at least one “action spot”
`35. As I discussed in my First Declaration, the ’327 patent explicitly
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`defines the term “action spot” as “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.” EX1001,
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`2:63-65; supra, Section V.A. I understand that the parties in the related litigation
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`agreed to this exact definition for purposes of that proceeding, and the court also
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`adopted this construction under the Phillips standard. EX2002, 9. Based on my
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`review of the claims in the context of the specification and the file history, I agree
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`with this definition of the term “action spot” and I have applied this definition in
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`my analysis as set forth throughout this declaration.
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`36. The Petition did not specifically provide any formal construction for
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`the term “action spot,” but critically, the Petition does not expressly compare the
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`cited prior art references to the formal construction of the claimed “action spot” as
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`it was defined in the specification and adopted by Petitioner (and the court) in the
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`related litigation. See Pet., 15-19.
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`37.
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`I further understand that the Institution Decision considered the term
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`“action spot,” and while it did not “expressly construe” this term, the Board made a
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`p