BlackBerry Limited

Patent Trials and Appeals Board

Sep 1, 2020

IPR2019-00715 (P.T.A.B. Sep. 1, 2020)

Trials@uspto.gov Paper 37
571-272-7822 Entered: September 1, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SNAP INC.,
Petitioner,
v.
BLACKBERRY LIMITED,
Patent Owner.

____________

IPR2019-00715
Patent 8,326,327 B2
____________

Before MICHAEL R. ZECHER, MIRIAM L. QUINN, and
AARON W. MOORE, Administrative Patent Judges.

QUINN, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Claims Unpatentable
Granting Patent Owner’s Motion to Amend
35 U.S.C. § 318(a)

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I. INTRODUCTION
We instituted inter partes review pursuant to 35 U.S.C. § 314 as to
claims 13, 811, 1315, and 20 of U.S. Patent No. 8,326,327 B2
(Ex. 1001, “the ’327 patent”), owned by Blackberry Limited (“Patent
Owner”). Paper 9 (“Decision” or “Dec. on Inst.”). We have jurisdiction
under 35 U.S.C. § 6. This Final Written Decision is entered pursuant to
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons discussed below,
Petitioner has shown by a preponderance of the evidence that claims 13,
811, 1315, and 20 (the challenged claims) of the ’327 patent are
unpatentable. We also grant Patent Owner’s Motion to Amend.
II. BACKGROUND
A. RELATED MATTERS
The parties identify BlackBerry Limited v. Snap Inc., No. 2:18-cv-
02693 (C.D. Cal.), as a related matter. See Pet. 1; Patent Owner Mandatory
Notices (Paper 5) 2. Petitioner has also filed a petition in IPR2019-00714
requesting inter partes review of U.S. Patent No. 8,825,084 B2, which was
filed as a continuation of the ’327 patent.
B. THE ’327 PATENT
The ’327 patent relates to a system and method for determining an
action spot based on the location of a mobile device. See Ex. 1001, 1:8–10.
Specifically, the ’327 patent discloses determining an “action spot” by
identifying a location where mobile devices have engaged in “documenting
action.” See id. at 3:21–35. The action spot is located within a
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“predetermined distance” from the location of the user’s mobile device. See
id. at 3:64–66.
Figure 3, reproduced below, illustrates a screenshot of an interactive
map, which includes display screen 102, graphical user interface 206,
current location 302, action spots 304 and 306, and graphical representations
308 of location landmarks. See Ex. 1001, 5:47–58.

“FIG. 3 is an illustrative implementation of a graphical user interface
displaying an action spot within a predetermined distance from a current
location of a mobile device.” Ex. 1001, 1:46–48.
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The action spots can have different sizes to indicate the associated
activity level; for example, a larger size may represent more activity. See
Ex. 1001, 6:23–39.
Figure 7 of the ’327 patent, reproduced below, shows “compass” 702
identifying the direction in which to travel to arrive at an action spot. See id.
at 12:1–16.

FIG. 7 illustrates “a graphical user interface of a mobile
device having a compass showing at least the distance and
direction to an action spot.” Ex. 1001, 1:61–64.

C. ILLUSTRATIVE CLAIMS
Of the challenged claims, claims 1, 10, and 13 are independent. Each
of challenged claims 2, 3, 8, 9, 11, 14, 15, and 20 depends directly or
indirectly from at least one of claims 1, 10, or 13.
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Claims 1, 10 and 13 are reproduced below.
1. A mobile device comprising:
a display; and
a processor module communicatively coupled to the display and
configured to receive executable instructions to:
display a graphical user interface on the display;
receive data indicative of a current location of the mobile device;
determine at least one action spot within a predetermined distance
from the current location of the mobile device, the at least one
action spot corresponding to a location where at least one other
mobile device has engaged in documenting action within a
predetermined period of time;
signify the at least one action spot on the graphical user interface;
and
provide an indication of activity level at the at least one action
spot.
10. A method for providing action spots on a mobile device
comprising:
determining, via a processor, a current location of the mobile device;
determining at least one action spot within a predetermined distance
from the current location of the mobile device, the at least one
action spot corresponding to a location where at least one other
mobile device has engaged in documenting action within a
predetermined period of time;
displaying a graphical item on the display of the mobile device, said
graphical item identifying a direction, relative to the current
location, in which to travel in order to arrive at the determined at
least one action spot.
13. A method for providing action spots on a mobile device
comprising:
determining, via a processor, a current location of the mobile device;
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determining at least one action spot within a predetermined distance
from the current location of the mobile device, the at least one
action spot corresponding to a location where at least one other
mobile device has engaged in documenting action within a
predetermined period of time;
signifying the at least one action spot with a graphical item on a
display of the mobile device;
marking the graphical item according to an activity level with at least
one action spot.
Ex. 1001, 19:18–35, 20:2–15, 20:24–37.
D. PROCEDURAL HISTORY
Petitioner filed the Petition on February 22, 2019. Paper 1 (“Pet.”).
Patent Owner filed a Preliminary Response on June 14, 2019. Paper 8
(“Prelim. Resp.”). After considering the parties’ filings, we granted the
Petition and instituted inter partes review on all challenged claims and all
grounds asserted in the Petition. Dec. on Inst. 25. In that Decision on
Institution, we clarified the claim construction for the term “action spot” and
resolved Petitioner’s request for claim construction of the terms
“predetermined distance” and “display the image with the at least one action
spot.” Dec. on Inst. 711.
During trial, Patent Owner filed a Patent Owner Response (Paper 14
(“PO Resp.”)) and Petitioner filed a Reply (Paper 22 (“Reply”)). Patent
Owner also filed a Sur-Reply. Paper 27 (“Sur-Reply”).
During trial, Patent Owner also filed a Non-Contingent Motion to
Amend seeking replacement of original claim 2 with substitute claim 21.
Paper 13 (“Motion” or “MTA”). Petitioner filed its Opposition to the
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Motion to Amend. Paper 24 (“MTA Opp.”). We issued Preliminary
Guidance at Patent Owner’s Request. See MTA, 1; Paper 26, (“PG”).
Thereafter, Petitioner filed a Reply (Paper 30 (“MTA Reply”)) and Patent
Owner filed a Sur-Reply (Paper 32 (“MTA Sur-Reply”)).
We heard oral argument on June 9, 2020, by video only, a transcript
of which is filed in the record. Paper 36 (“Tr.”).
E. EVIDENCE OF RECORD
Petitioner relies upon the following references as evidence of prior art:
a) Winkler: U.S. Patent No. 8,750,906 B2, issued June 10, 2014, filed
as Exhibit 1004;
b) Altman: U.S. Patent Application Publication No. 2007/0281716
A1, published Dec. 6, 2007, filed as Exhibit 1006;
c) Lemmela: U.S. Patent Application Publication No. 2008/0250337
A1, published Oct. 9, 2008, filed as Exhibit 1005;
d) Crowley: U.S. Patent No. 7,593,740 B2, issued Sept. 22, 2009,
filed as Exhibit 1008; and
e) Waldman: U.S. Patent Application Publication No. 2011/0199479
A1, published Aug. 18, 201, filed as Exhibit 1011.
In addition, Petitioner supports its contentions in the Petition with the
Declaration of Dr. Samrat Bhattacharjee. Ex. 1002 (“Bhattacharjee Decl.”).
Petitioner also proffered a Rebuttal Declaration of Dr. Samrat Bhattacharjee.
Ex. 1020 (“Bhattacharjee 2d Decl.”).
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With its Patent Owner Response, Patent Owner provided a
Declaration of Patrick McDaniel, Ph.D. Ex. 2001 (“McDaniel Decl.”).
During trial, Patent Owner proffered a Second Declaration of Patrick
McDaniel, Ph.D. Ex. 2003 (“McDaniel 2d Decl.”).
F. GROUNDS OF UNPATENTABILITY
The following grounds of unpatentability are at issue (Pet. 2–3):
Claims
Challenged
35 U.S.C. §1 References
1–3, 8, 10, 11, 13–
15
103(a) Winkler, Altman
1–3, 8, 13–15 103(a) Lemmela, Crowley
10, 11 103(a) Lemmela, Crowley, Winkler
9, 20 103(a) Lemmela, Crowley, Waldman
III. ANALYSIS
A. CLAIM CONSTRUCTION
In an inter partes review filed on or after November 13, 2018, a claim
“shall be construed using the same claim construction standard that would be

1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29,
125 Stat. 284, 287–88 (2011), revised 35 U.S.C. § 103, effective March 16,
2013. Because the patent application resulting in the ’327 patent was filed
before the effective date of the relevant section of the AIA, we refer to the
pre-AIA version of § 103 throughout this Final Written Decision.
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used to construe the claim in a civil action under 35 U.S.C. 282(b).”
37 C.F.R. § 42.100(b) (2019). In applying this claim construction standard,
we are guided by the principle that the words of a claim “are generally given
their ordinary and customary meaning,” as would have been understood by a
person of ordinary skill in the art in question at the time of the invention.
Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc)
(citation omitted). “In determining the meaning of the disputed claim
limitation, we look principally to the intrinsic evidence of record, examining
the claim language itself, the written description, and the prosecution
history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at
1312–17). There is a “heavy presumption,” however, that a claim term
carries its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick
Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted).
1. “action spot”
In our Decision on Institution, we preliminarily determined that the
term “action spot” refers to a location or event where an activity “is
occurring” or “has occurred.” Dec. on Inst. 89. We started with Patent
Owner’s lexicography position, which is that the Specification expressly
defines the term “action spot” as “a location or an event where at least one
activity is occurring relative to the current location of another mobile
device.” Id. at 8 (citing Ex. 1001, 2:6365; McDaniel Decl. ¶ 53). We
noted the issue with Patent Owner’s position: the inconsistency with which
the Specification describes the “action spot” as requiring a present (“is
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occurring”) “activity.” Id. 89. We also noted that the claim language did
not support Patent Owner’s position. Id. To summarize the issue: although
Patent Owner’s definition requires that the “action spot” is where an
“activity” “is occurring,” the claim language recites that the “action spot
correspond[s] to a location where at least one second mobile device has
engaged in at least one documenting action.” Ex. 1001, 19:2730 (emphasis
added). Thus, we deemed it improper to limit the term “action spot” to
locations where activity (which is a documenting action, id. at 2:5563) “is
occurring”—to the exclusion of locations where activity has occurred in the
past.
During trial, Patent Owner renewed its contention that to “determine”
at least one “action spot” is expressly defined in the Specification and that
definition controls. PO Resp. 1516. In particular, Patent Owner argues
that we must construe the term consistent with the lexicographic meaning,
especially because the parties agreed to this definition during district court
litigation. Id. Patent Owner urges we consider two reasons to change our
preliminary determination that the “action spot” could refer to locations in
which an activity “has occurred”: (1) symmetry and consistency between
our construction and “the district court’s construction”; and (2) the
distinction between the Specification’s desired “output” (determination of an
action spot) which is separate and distinct from the claim’s focus on the
“input” (“recent documenting actions from other mobile devices”). Id. at
1621. Neither of these arguments is persuasive for us to change our
preliminary interpretation of the term “action spot.”
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We begin with the claim language, which recites “at least one action
spot corresponding to a location where at least one second mobile device has
engaged in at least one documenting action.” Ex. 1001, 19:2831, 20:811,
20:3033. This phrase is part of the recited determining function:
“determine at least one action spot.” Id. And according to Patent Owner,
the determined action spot is the “output” of the determining function. PO
Resp. 18. As we understand Patent Owner’s argument, defining which
locations may be “action spots” a priori is different from the server
determining an actual “action spot.” Tr. 31:115 (arguing that “inputs of
course can be from the past,” “[b]ut the output is an assessment, based on
those inputs, whether activity is presently occurring at the action spot.”).
There may be “input data related to documenting action” that occurred in the
past, but the claimed determination of an “action spot” is based on the input
data. PO Resp. 19. The output then, Patent Owner reasons, is different from
the input. Id. And, thus, the “action spot” definition from the Specification
constrains the “output” (the recited “determine” step) to presently occurring
activity. See id. (arguing that “the system achieves a solution that seeks to
efficiently communicate to the user the ‘current happenings’ occurring in the
vicinity of the user’s current location” (emphasis omitted) (citing Ex. 1001,
4:3544; McDaniel 2d Decl. ¶¶ 39, 40)).
The importance of this language seems to be that if the so-called
output is limited to presently occurring activity, because of the “is
occurring” language in the Specification’s definition, then prior art that
reports activity not presently occurring would be outside the scope of the
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claim. See PO Resp. 2326 (arguing that Lemmela’s postings accumulated
over a two-month span in the past “certainly does not equate to Lemmela’s
system somehow outputting the user its determination that activity is
occurring relative to the current location of Lemmela’s mobile device 50”
(emphasis in original)). We are not persuaded by Patent Owner’s argument
that the claim is so restricted.
The claim language plainly requires determining an “action spot” and
further defines what constitutes an “action spot:” “the at least one action
spot corresponding to a location where at least one other mobile device has
engaged in documenting action within a predetermined time period.” Ex.
1001, 19:2831. There is no “input” and “output” distinction in the claim
language. Nor is there any term in the claim that warrants divorcing the
determined “action spot” from the “action spot” at which a mobile user has
engaged in activity.
In essence, we have two competing definitions of “action spot,” one
flowing from the claim language, in which the “action spot” may correspond
to locations with past activity, and the Specification definition, which,
according to Patent Owner, precludes those locations. Ex. 1001, 2:6365,
19:2831. However, in a situation like this where there is little to no
evidence that the claim reads on two different concepts of an “action spot”—
one an input, the other the output—we conclude that the claim language
precludes such an interpretation and the plain meaning controls. Phillips v.
AWH Corp., 415 F.3d 1303, 131213 (Fed. Cir. 2005) (starting claim
construction analysis with the “bedrock principle” that the claims define the
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invention and the claims are given the ordinary and customary meaning). In
our view, the plain meaning is that, when the server determines at least one
“action spot,” that “action spot” corresponds to a location in which a mobile
user has engaged in a documenting action, such as capturing and
transmitting a video. The action spot, therefore, can include locations in
which activity occurred in the past by the very nature of the verb tense in the
verb phrase “has engaged.”2
The patentee’s lexicography cannot alter this meaning based on our
review of the full record. The Specification describes four implementations
of determined action spots. Ex. 1001, 3:644:23. This description starts:
“[t]he processor can determine at least one action spot located within a
predetermined distance from the current location of the mobile device
(Block 1030).” Id. at 3:6466 (emphasis added). This paragraph, thus,
begins the explanation of the process of determining the action spot, which
is what the claim is directed to. The first implementation is described as “at
least one action spot can be determined as a location where at least one other
mobile device has engaged in a documenting action within a predetermined
period of time from the time the mobile device arrived at the current location

2 It is worth noting that the limitation concerning the “action spot” and the
corresponding location language of the claim (i.e., the phrase containing the
“has engaged” language) was recited in the original claims. See Ex. 1007,
34. All references to the page numbers in the prosecution history of the ’327
patent refer to the page numbers inserted by Petitioner in the bottom, right-
hand corner of each page in Exhibit 1007.

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of the mobile device.” Id. at 3:664:4 (emphases added). This first
implementation is consistent with the claim language in that the action spot
that the server determines is the location where the activity (i.e.,
documenting action) may have occurred in the past. Although the
Specification describes an example of the first implementation as an “action
spot” that involves activity in the present tense (e.g., the other mobile device
“is composing an email” (see id. 4:410)), the description of the activity is
not limited to currently occurring activity, because that is presented as only
“an example.”
The fourth implementation is also instructive as it states that “the at
least action spot can be the location where at least one other mobile device
has documented, recorded, accounted, chronicled, or otherwise has taken
note of a location or a current happening occurring at the location.” Id. at
4:1923. From this passage we learn that the “action spot” may refer to
locations that refer to past activity because the mobile device “has
documented” a location. We also infer from this passage that there are two
distinct times relevant to the second mobile device: (1) the time at which the
mobile device documents a location, regardless of when an event takes place
(“has documented . . . or otherwise has taken note of a location”); and (2) the
time at which an event is happening at a location (“or a current happening
occurring at the location”). Id. The claimed “action spot” involves the first
timing, because the claim focuses on identifying as “action spots” those
locations at which the second mobile device has engaged in documenting
actions, which the Specification describes as text messaging, emailing,
blogging, posting a message on a social networking Internet site, or any
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other documenting action. See id. at 2:5558. The claim is silent regarding
whether documenting the location or the occurrence of an event must be
concurrent with the determination step, such that the “action spot” refers
only to “current” happenings or “current” mobile device activity.
Patent Owner’s reliance on Figures 3 and 4 of the ’327 patent do not
persuade us otherwise. Patent Owner presents a comparison of those two
figures to argue that the determination step outputs an action spot where
activity “is occurring,” e.g., a musical or concert, but does not report action
spots of music events that “‘occurred’ there on previous days or weeks.” PO
Resp. 1920 (citing Ex. 1001, 2:6365, 4:3544, 9:2339; McDaniel 2d
Decl. ¶ 41). This argument, however, characterizes the ’327 patent
disclosure too narrowly, ignoring other embodiments that reflect otherwise.
First, the depiction of “action spots” in which a music concert is currently
happening does not preclude the depiction of “action spots” in which recent
(read here, not current) activity occurred. For instance, the ’327 patent
provides Figure 5, reproduced below, as an embodiment in which the system
determines an “action spot” where neither a current event, nor a
documenting activity, are “currently” happening.
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Figure 5 is an illustrative implementation of a graphical user interface
of a mobile device displaying a venue-specific map and action spots,
showing highlighted in red the action spot labeled as item 502 and in yellow
the action spot labeled as item 504. Ex. 1001, 1:5456.

According to the Specification, Figure 5 depicts two determined
action spots 502, 504. Ex. 1001, 10:5961. The star depicted as item 501
denotes the current location of the mobile user. Id. Action spot 502
(highlighted in red) includes an exclamation point, indicating that the
activity level at that spot is higher than the activity level of action spot 504
(highlighted in yellow). Id. at 10:6711:4. The Specification also describes
that, although both are displayed action spots, the identifier of action spot
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502 can indicate “that the most recent documenting actions are occurring at
action spot 502, thereby notifying the user of the mobile device 100 that the
most current happening is occurring at action spot 502.” Id. at 11:811
(emphasis added). In this embodiment both action spots 502 and 504 are
displayed (i.e., they are determined action spots), but only action spot 502
refers to the location of the most recent documenting action. From this
explanation we conclude that the server may determine as action spots those
locations in which there is documenting activity that occurred in the past,
even though there may be more current documenting activity reflecting an
event happening “now.” See id. at 11:1114 (explaining that exclamation
point may indicate that a zookeeper talk or photo opportunity currently is
taking place at action spot 502). Thus, we understand the ’327 patent
disclosure to support the contention that the claimed determination of an
“action spot” encompasses determining locations where both a documenting
action is occurring or has occurred.
We further find that additional claim language does not support Patent
Owner’s contention. Claim 1, for instance, recites that “the at least one
action spot corresponds to a location where at least one other mobile device
has engaged in a documenting action is within a predetermined period of
time.” Ex. 1001, 19:2931. This claim language points out that the activity
is permissibly within a past timeframe. Indeed, the Specification describes
the predetermined time period as “within the last hour, the last twelve hours,
the last twenty-four hours, the last thirty minutes, or any other time period
that is measured from the time the mobile device 100 arrived at the current
location 302.” Id. at 8:3539. In other words, the server uses a
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predetermined amount of time to select locations with past-occurring activity
falling within the allotted time.3 Thus, if a mobile device documented a
location at midnight on Tuesday, another mobile device arriving at that
location at 8 am on Wednesday will display that location as an “action spot,”
when the server determines that the location has been documented within the
predetermined amount of time, such as the last twelve hours.
As we did before, therefore, we find that the Specification’s attempt to
define “action spot” as such is sufficiently unclear because the Specification
is not consistent in defining the “action spot” as limited to location where
activity “is occurring,” and such inconsistency fails to give notice to a
person of ordinary skill in the art of the clear meaning of the term. See In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (inventor may define specific
terms used to describe invention, but must do so “with reasonable clarity,
deliberateness, and precision” and, if done, must “‘set out his uncommon
definition in some manner within the patent disclosure’ so as to give one of
ordinary skill in the art notice of the change” in meaning (quoting Intellicall,
Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387–88 (Fed. Cir. 1992))); Dec.
on Inst. 89. We also conclude that the language of the claims themselves
further preclude adopting Patent Owner’s proposed construction.
As for Patent Owner’s other argument concerning the desire for
symmetry between claim constructions here at the Board and in the district

3 Here we focus on the past-occurring activity for purposes of illustrating our
point. But the server may also use a predetermined amount of time of zero,
and, then, the determined “action spot” would encompass “current” activity.
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court, we are not persuaded that the argument warrants a different
conclusion. As we understand the posture of the “action spot” term in
district court litigation, there was no express claim construction of this term
during Markman. See PO Resp. 17; Ex. 2002, 9, 3638. Indeed, we note
that the parties agreed to the term and the district court merely entered that
definition as an agreed definition. PO Resp. 9. We do not see the parties’
agreed-to definition as the same as a district court claim construction
analysis and interpretation. See Ex. 1026, 3 (identifying the “action spot” as
an agreed-to-definition). Furthermore, Petitioner argues that the district
court analyzed the claim language in the summary judgment order pertaining
to the ’327 patent claims, noting that the plain meaning of the claim
language does not require any automatic, periodic, or timely updates of
action spot information. See Reply 35 (citing Ex. 2005, 4043). And that
interpretation, according to Petitioner, is consistent with our analysis here
that the claim simply states that an action spot corresponds to a location
where a user “has engaged” in documenting activity, with no limits in time.
Id.; Ex. 2005, 40. Although we do not comment on whether the district
court’s claim construction analysis parallels our claim construction analysis,
we do note that there is no apparent conflict between the district court’s
determinations and orders and anything we have said here. Accordingly, we
are not persuaded that the policy of consistency and symmetry of claim
constructions among the Board and the district court is offended by
clarifying that the term “action spot” is not limited to “is occurring” activity.
Therefore, according to the full context of the Specification and the
plain meaning of the claim language, we maintain that the term “action spot”
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refers to a location or event where an activity “is occurring” or “has
occurred,” relative to the current location of another mobile device.
2. “predetermined distance”
In our Decision on Institution, we were not persuaded by Petitioner’s
proposed construction of the “predetermined distance” as including a
“specified distance” requirement. Dec. on Inst. 910. Patent Owner
responds to our preliminary determination by stating that “[t]he Institution
Decision properly assessed this claim phrase and rejected Petitioner’s
proposed construction.” PO Resp. 22. Patent Owner also points out that the
“district court rejected Petitioner’s attempt to depart from the ordinary
meaning and concluded that the claims do not require either a ‘specific
distance’ or determination of ‘each action spot.’” Id. (citing Ex. 2002,
3638) (emphasis in original). Petitioner does not renew its claim
construction position, or otherwise argue that we improperly concluded that
the claims do not require a “specific distance.” Cf. Bhattacharjee 2d Decl.
¶¶ 2123 (stating that conclusions regarding the “predetermined distance”
limitations are not affected by the Board’s determination that the claim does
not require a “specific distance”). We reiterate here our analysis and reach
the same conclusion.
Claims 1, 10, and 13 each recites the phrase “determine at least one
action spot within a predetermined distance from the current location of the
mobile device.” Ex. 1001, 19:2628, 20:67, 20:2829. Claim 8 depends
from claim 1 and further recites that the “determining of the at least one
action spot is based upon a defined distance from the mobile device.” Id. at
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19:5961. We are not persuaded by Petitioner’s argument that claims 1, 10,
and 13 require a “specified distance.” Pet. 16. These claims describe in
plain words, and without qualification, that the action spot must be within a
predetermined “distance” from the current location of the first mobile
device. There is no restriction as to how that distance is prescribed. The
Specification plainly states that the “predetermined distance can be within
five blocks, ten blocks, ten yards, one hundred yard[s], one hundred feet,
thirty feet, ten meters, fifteen meters, five miles, ten miles, twelve miles,
twenty miles, or any other distance from the current location 302 of the
mobile device 100.” Ex. 1001, 8:2328 (emphases added). The language
here is non-restrictive, e.g., “can be,” and the listing of distances is
circumscribed only to the extent that “any other distance” may be used. Id.
There is no specific distance requirement anywhere in the Specification.
And finally, claim 8 confirms that a “defined distance” will be further used
for the determining step—leading us to conclude that the “predetermined
distance” of the independent claims should not be limited to a “specified
distance.”
Consequently, we determine that the term “predetermined distance”
does not require a “specified distance.”
3. “display the image with the at least one activity spot”
In our Decision on Institution, we determined that the phrase “display
the image with the at least one activity spot” needed no construction. Dec.
on Inst. 1011. Neither party raises this limitation again during the trial.
Accordingly, we maintain that the phrase needs no express construction.
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4. Conclusion
No other claim terms are in dispute, and, therefore, we need not
construe any further claim terms. See, e.g., Nidec Motor Corp. v. Zhongshan
Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid
Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
(“[O]nly those terms need be construed that are in controversy, and only to
the extent necessary to resolve the controversy.”).
B. LEVEL OF ORDINARY SKILL IN THE ART
In determining the level of ordinary skill in the art, various factors
may be considered, including the “type of problems encountered in the art;
prior art solutions to those problems; rapidity with which innovations are
made; sophistication of the technology; and educational level of active
workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
(internal quotation marks and citation omitted). In that regard, Petitioner
proffers that a person having ordinary skill in the art would have had at least
a Bachelor of Science degree in computer science, electrical engineering, or
an equivalent, and at least two years of experience in the relevant field, e.g.,
computer networking. Pet. 34 (citing Ex. Bhattacharjee Decl. ¶¶ 20–22).
Patent Owner, through the testimony of Dr. McDaniel, proffers a similar
level of education and experience, except for adding that the two years of
experience may involve either work or research experience in the fields of
“computer software, networking, and/or user experience design, or an
equivalent subject matter.” PO Resp. 14 (citing McDaniel 2d Decl.
¶¶ 1718).
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We note that Petitioner’s assessment appears consistent with the level
of ordinary skill in the art at the time of the invention as reflected in the
’327 patent and the prior art asserted in this proceeding. For example,
Lemmela (Ex. 1005) describes a system that presents, on a mobile device
display, locations of interest and information about those locations on a map
using location-based postings in a geographic area so that the user is able to
view and filter the automatically generated information. Ex. 1005 ¶¶ 79,
Fig. 7A. We also note that neither party has argued that any particular issue
depends on a particular level of ordinary skill in the art. We, therefore,
adopt Petitioner’s proffered level of ordinary skill in the art and apply it in
our obviousness analysis below.
C. OBVIOUSNESS OVER LEMMELA AND CROWLEY
Although Petitioner presented the Winkler-based ground first, we
determined in our Decision on Institution that Petitioner had shown a
reasonable likelihood of prevailing on the Lemmela based grounds, and we
addressed these grounds first. Dec. on Inst. 15. We follow that same outline
here.
1. Overview of Lemmela (1005)
Lemmela is directed to finding interesting locations utilizing location
based postings. Ex. 1005 ¶ 7. The method includes creating a group of
postings for a geographic area and creating display information for the
group, including location information. Id. ¶ 11. The method may be
implemented on a server that accesses location postings and provides
information to a user on a mobile device. Id. ¶¶ 38, 43. The mobile device
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may include a Global Positioning System (“GPS”) receiver to determine
current location information for the mobile device. Id. ¶ 42.
Figure 1, reproduced below, shows example display 20 with a map of
an area of interest that may be based on a user’s present location. Id. ¶ 26.

Figure 1 shows a display of a map of an area of interest. Ex. 1005 ¶ 26.
Location map 22 in Figure 1 may show information and postings
about places and activities proximate to the user. Id. ¶ 26. Figure 1
indicates areas of interest in the form of clouds 24, 26. Id. ¶ 27. The areas
of interest may be colored based on information, such as by density of
location postings. Id. ¶ 28. “Similarly, the shape or shading of clouds may
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be altered to convey different information.” Id. For example, the “shaped
boundary may be displayed in a color indicating further information about
the group, for example indicating a quantitative measure of the postings in
the group.” Id. ¶ 12. The map may also include a timeline, wherein “[t]he
user can freely select the starting and ending times defining the interesting
time period.” Id. ¶ 39; see also id. Fig. 5 (illustrating a display of a device
with location based postings). The display of postings may be continuously
updated taking into account postings sent during the selected time period.
Id.
Figure 4, reproduced below, shows steps of implementing the method,
including accessing a collection of location postings in step 100 and
determining the proximity of postings in step 104 by taking into account
both the similarity between the postings and the geographic distance. Id.
¶¶ 33–35.
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Figure 4 is a flowchart of steps for creating information for a map
overlay. See Ex. 1005 ¶ 36.
2. Overview of Crowley (1008)
Crowley discloses a system that establishes connections between users
of mobile devices by identifying the locations of related users and sending a
message between related users based on proximity. Ex. 1008, 2:31–38. The
system may include location engine 102 for identifying the distance between
respective users to identify which users are proximate to each other. Id. at
12:54–65. Users within a predetermined distance receive messages about
each other, wherein the predetermined distance may be a set amount, e.g.,
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ten blocks, or may vary based on location. Id. A server may test for all
active acquaintances of a user, retrieve their location coordinates, “check the
first member’s location against those other locations,” and send a message to
each relevant member of the group, including the user. Id. at 11:3–16.
The system may note locations at which the user has recently checked
in, commented on, or written reviews about. Id. at 15:60–64. Location
databases 110 may correlate information about venues, such as venue
names, with geographic coordinates for each location. Id. at 14:42–44. The
system may identify nearby venues associated with reviews of other
members. See id. at 14:54–64.
3. Independent Claims 1, 10, and 13
Petitioner argues independent claims 1 and 13 together as obvious
over the combined teachings of Lemmela and Crowley. See Pet. 4355, 58
(referring for claim 13 to the analysis of claim 1). Petitioner addresses in a
separate ground independent claim 10, which relies on the addition of
Winkler’s teachings. Id. at 6065. We address all independent claims
together as they recite overlapping subject matter, noting where appropriate
the claim language that is different.
i. “a display” and “a processor module” (Claim 1)
Claim 1 is directed to “[a] mobile device comprising:” “a display”
and “a processor module communicatively coupled to the display and
configured to receive executable instructions.” Ex. 1001, 19:1821.
Petitioner argues that Lemmela teaches this limitation by pointing out that
Lemmela’s mobile device includes a processor and a display. Pet. 4344
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(citing Ex. 1005 ¶ 41, Fig. 6). We agree with Petitioner that Figure 6 of
Lemmela teaches the mobile device comprising a display and a processor
module, as claimed. See Bhattacharjee Decl. ¶ 62[1b]. Patent Owner does
not address this limitation.
We determine that Petitioner has shown by a preponderance of the
evidence that Lemmela teaches “a display” and “a processor module
communicatively coupled to the display and configured to receive
executable instructions,” as recited in claim 1.
ii. “display a graphical user interface on the display” (Claim 1)
Claim 1 recites the instruction to “display a graphical user interface on
the display.” Ex. 1001, 19:23. Petitioner argues that Lemmela teaches this
limitation because Lemmela describes a graphical user interface (GUI) that
allows a user to interact with the device and modify displays shown on the
mobile device’s display. Pet. 44 (citing Ex. 1005 ¶ 41; Bhattacharjee Decl.
¶ 62[1c]). Patent Owner does not address this limitation. We agree that
Petitioner’s evidence (Ex. 1005 ¶ 41) shows that Lemmela teaches this
limitation. Id.
We determine that Petitioner has shown by a preponderance of the
evidence that Lemmela teaches to “display a graphical user interface on the
display,” as recited in claim 1.
iii. “receive data indicative of a current location of the mobile device”
(Claim 1) and “determining via a processor, a current location of the
mobile device” (Claims 10 and 13)
Claim 1 recites executing instructions to “receive data indicative of a
current location of the mobile device.” Ex. 1001, 19:2425. Claims 10 and
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13 each recites the step of “determining, via a processor, a current location
of the mobile device.” Ex. 1001, 20:45, 20:2627.
Petitioner argues that Lemmela teaches this limitation because
Lemmela discloses a number of positioning mechanisms, such as GPS,
which the mobile device can take advantage of to determine current location
information. Pet. at 45 (citing Ex. 1005 ¶ 42); see also Bhattacharjee Decl.
¶ 62[1d]). We agree with Petitioner because the mobile device of Lemmela
includes a GPS receiver that receives GPS transmissions and communicates
with the processor to enable the processor to determine current location
information for the mobile device. Id. Patent Owner does not address this
limitation.
We determine that Petitioner has shown that Lemmela teaches the
limitations recited in claims 1, 10, and 13 that require either receiving data
indicative of or determining a current location of the mobile device.
iv. “action spot” (Claims 1, 10, and 13)
Claims 1, 10, and 13 each recites “determin[ing] at least one action
spot within a predetermined distance from the current location of the mobile
device.” Ex. 1001, 19:2628, 20:667 (the “determine an action spot”
limitation). Claims 1, 10, and 13 each further recites that “the at least one
action spot correspond[s] to a location where at least one other mobile
device has engaged in documenting action within a predetermined period of
time.” Id. at 19:2831, 20:811, 20:3033 (the “has engaged” limitation).
For ease of reference, we reiterate that the “action spot” term, discussed in
Section III.A.1 supra, refers to a location or an event where at least one
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activity is occurring or has occurred, relative to the current location of
another mobile device.
Petitioner’s analysis, supported by the Bhattacharjee Declaration,
demonstrates that the teachings of Lemmela in view of Crowley’s teachings
account for these limitations. Pet. 4552. Addressing first the “determine
an action spot” limitation, we note Petitioner’s argument that Lemmela’s
mobile device is configured to determine “action spots.” Id. at 45 (citing
Bhattacharjee Decl. ¶ 62[1d]). Lemmela’s groups of virtual location-based
posts correspond to the recited “action spots.” Id. These posts originate
from a certain location that contains a particular common, salient word. Id.
at 4546 (citing Ex. 1005 ¶¶ 11, 33, 3435, 38, Fig. 4). These posts also
correspond to the location of the recited “documenting action,” such as
transmitting messages, because the posts (read here “messages”) are
transmitted from mobile devices. Id. at 46 (citing Ex. 1005 ¶ 33).
Furthermore, with regard to the “current location,” Petitioner points out
Lemmela’s disclosure of the map display where the groups of posts are
presented within the user’s present location. Id. at 48 (citing Ex. 1005 ¶ 26).
Thus, according to Petitioner, Lemmela discloses displaying the groups of
posts as “action spots” that are within a predetermined distance from the
current location as they are shown to the user in the map displayed based on
the user’s current location. Id. at 48. And, according to Petitioner, the
displayed posts groups or “action spots” correspond to the locations where
users have engaged in transmitting messages. Id.
Patent Owner challenges Petitioner’s assertions concerning Lemmela
based on the claim construction argument that the “action spot” term
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precludes past-occurring activity. For instance, Patent Owner argues that
Lemmela’s “clouds” superimposed on the map are historical posts (of
activity that was detected over previous days or weeks) that are not
indicative of an activity that “is occurring” relative to the location of the
user’s mobile device. See PO Resp. 2326 (citing McDaniel 2d Decl.
¶¶ 5255). For example, Patent Owner argues that Figure 5 of Lemmela
confirms that the “shoe” cloud would appear at 4am on a holiday closure
date or at other times long after the store is closed and no activity “is
occurring” in the area signified by the “shoe” cloud. Id. at 2526 (citing
Ex. 1005, Figs. 3A-3C, 5, ¶¶ 4344, McDaniel 2d Decl. ¶ 54). These
arguments, and similar arguments, are unpersuasive because they rely on a
claim construction for “action spot” that we did not adopt. That is,
Lemmela’s overlaid clouds are not distinguishable over the claimed “action
spot” merely because the clouds include activity that occurred in the past.
Based on the fully developed record, we find that Lemmela teaches
determining “at least one action spot within a predetermined distance from
the current location of the first mobile device.” As shown in Figure 1 of
Lemmela, reproduced below, Lemmela displays grouped postings within an
area around the current location of the first mobile device (Pet. 48):
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Figure 1 shows a display of information created by an illustrative
embodiment of Lemmela and shows display 20 depicting map 22 of an area
of interest and clouds 24 and 26 superimposed over map 22.

Lemmela’s mobile device, according to Petitioner, and we agree,
groups virtual location-based posts based on common characteristics, such
as postings originating from a certain location that contain a particular,
common, salient word. Id. at 4546 (citing Ex. 1005 ¶¶ 11, 34, 35, 38, Fig.
4). For instance, Lemmela describes that a mobile device receives a defined
collection of location-based postings and processes them to create the cloud
display. Ex. 1005 ¶ 38. That processing involves scanning the location-
based postings in a geographic area for common words, and grouping them
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based on the common words to create a display for the group based on the
location information and the common words of the group. Ex. 1005 ¶¶ 11,
38. Lemmela further explains that the common, or salient, words may, in
one example, be preselected, such as restaurant, food, etc. Id. ¶ 34.
Lemmela also explains the use of a clustering algorithm to determine the
proximity of the postings to each other. Id. ¶ 35. From these disclosures we
understand Lemmela to teach that a displayed cloud shown in Figure 1, such
as the restaurant cloud, reflects the area or location where other mobile
devices have transmitted posts concerning the restaurant(s) located in that
area. These clouds, thus, meet the definition of “action spots” because they
refer to locations where a documenting action or posting (read here
“activity”) is occurring or has occurred relative to the user’s current location
(read here “current location of another mobile device”).
Based on the same disclosures of Lemmela, we also find that the
Lemmela clouds meet the “has engaged” limitation because these clouds
refer to location where other mobile devices have transmitted postings (read
here the claimed “documenting action”). As Petitioner argues and we agree,
those clouds are located within an area around the current location of the
first mobile device. Pet. 4749 (citing Ex. 1005 ¶ 26; Bhatacharjee Decl.
¶ 62[1e]).
As for the recited “predetermined period of time” recited in the “has
engaged” limitation, Petitioner argues, and we agree, that Lemmela discloses
a timeline that allows users to adjust the time window for the display. Id. at
4647 (citing Ex. 1005, Fig. 5, ¶ 39). Figure 5 of Lemmela, reproduced
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below, and annotated by Petitioner, shows the time window (indicated by the
red box):

Figure 5 illustrates a Nokia 770 internet table 42
displaying timeline 46. Ex. 1005 ¶ 39.
We agree with Petitioner that this timeline allows users to “filter the
posting clusters presented on a map view 44.” Ex. 1005 ¶ 39. If a post is
sent during the selected time period, Lemmela takes it into account in the
display. Id. We also agree that this timeline defines the starting and ending
time of the time period the user is interested in. Id. Therefore, we conclude
that the display adjustments based on the timeline adjustment will reflect the
postings that were sent during the selected time periods. Id. Accordingly,
we agree that Lemmela’s clouds, when adjusted to a specific time frame by
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the user, correspond to postings that were transmitted within “a
predetermined period of time,” according to the claim language.
As for the recited “predetermined distance,” Petitioner additionally
relies on the teachings of Crowley in combination with those of Lemmela.
Pet. 49–52. Although we have determined that the “predetermined distance”
does not require a “specific distance,” Petitioner’s assertions regarding
Crowley are nevertheless relevant to our determination because they further
highlight that Lemmela’s teachings combined with those of Crowley would
have resulted in the Lemmela mapped clouds to be located within a certain
distance of the “current location” of the first mobile device. Id. at 48–49
(stating that “[i]t would have been obvious to a [person of ordinary skill in
the art], however, to modify Lemmela based on the teachings of Crowley
such that the determination of action spots was limited to those within a
specific distance from the current location of the first mobile device.”).
Petitioner asserts, and we agree, that Crowley teaches a system that
receives the current location of the mobile device and a specific distance
before it determines to which second users it should send the first user’s
message. Id. at 49 (citing Ex. 1008, 9:6465, 11:314, 20:6221:8;
Bhattacharjee Decl. ¶ 62[1e]). For instance, Crowley describes a location
engine at the server that computes the locations of the active
“acquaintances” of the mobile device user to identify which acquaintances
are proximate to a user, such as within ten blocks of each other. Ex. 1008,
11:314, 12:5365. Crowley further describes that such a distance of ten
blocks is “predetermined.” Id. at 12:6061. Based on the application of
such a predetermined distance and the identification of the active
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“acquaintances,” Crowley performs the action of transmitting messages. Id.
at 11:1016.
Petitioner then argues, and we agree, that it would have been obvious
for a person of ordinary skill in the art to combine the teachings of Lemmela
with those of Crowley, as described above, to configure Lemmela to
determine only the groups of posts within a specific distance of the first
mobile device. Id. at 50 (citing Bhattacharjee Decl. ¶ 62 [1e]). Such a
combination involves, according to Petitioner, combining prior art elements
according to known methods to yield predictable results. Id. Dr.
Bhattacharjee provides testimony to this effect, which we credit, and further
explains that Lemmela already discloses how to identify a subset of postings
for the mobile device to filter and process the location-based postings to
create a mapped display. Bhattacharjee Decl. ¶ 62[1e]. As evidenced by
Crowley, distance determination is known, and combining it with Lemmela
would have resulted in beneficially providing the user with the ability to
choose a specific distance from her current location and the mobile device,
therefore, would determine the relevant grouped posts. Id. A person of
ordinary skill in the art would have appreciated that such a combination
would also result in potentially reduced processing by Lemmela’s mobile
device and would present the users with the “most interesting [groups] from
their point of view.” Id.; Pet. 52 (quoting Ex. 1005 ¶ 10).
We address now Patent Owner’s argument that the “Petition fails to
adequately explain why a [person of ordinary skill in the art] would have
been motivated to combine Crowley’s teachings with [those of] Lemmela at
the time of the invention (e.g., at least as early as August 27, 2010).” PO
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Resp. 3536 (citations omitted). According to Patent Owner, the Petition
casts arguments and evidence using language evocative of hindsight: what
the combination “would involve” (in the present time) rather than what
“would have happened” in August 2010. Id. at 36. Patent Owner further
sets forth that arguments about Lemmela and Crowley being in a “similar
field” and addressing “similar problems” is not a sufficient reason to
combine their teachings, and that alleged internal inconsistencies present
further evidence of hindsight. Id. at 3637. We are not persuaded by Patent
Owner’s arguments.
First, the semantic differences between “would” versus “would have”
cannot be superficially applied as an ipso facto determination of hindsight.
Rather, we attribute to hindsight arguments where the sole source of the
knowledge as support is the claimed invention. InTouch Technologies, Inc.
v. VGO Commc’ns, Inc., 751 F.3d 1327, 1351 (Fed. Cir. 2014) (“It appears
that [the expert] relied on the . . . patent itself as her roadmap for putting
what she referred to as pieces of a ‘jigsaw puzzle’ together.”); W.L. Gore &
Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983) (“To
imbue one of ordinary skill in the art with knowledge of the invention in
suit, when no prior art reference or references of record convey or suggest
that knowledge, is to fall victim to the insidious effect of a hindsight
syndrome wherein that which only the inventor taught is used against its
teacher.”). Here, we have more than what Patent Owner alleges with respect
to semantics. The Petition cites testimony that a person of ordinary skill in
the art “would have been motivated” to configure Lemmela for “action spot”
determination within a specific distance, as taught by Crawley. Pet. 50. The
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“would” statements Patent Owner identifies as evidence of hindsight refer to
the Petition’s statements paralleling the framework set forth in KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398 (2007): “would require nothing more than
performing known methods,” “would also yield a predictable result,” and
“would also involve a simple substitution.” Id. at 5051. None of the
Petition’s statements highlighted by Patent Owner actually address whether
the knowledge alleged to motivate the combination is gleaned from the ’327
patent itself.
Second, we addressed above that Petitioner has set forth a sufficient
explanation for why a person of ordinary skill in the art would have looked
to Crowley in light of Lemmela’s mobile device determination of the
location information. We have not relied on the statements in the Petition
that set forth the foundation for the references, i.e., that they are analogous
art. Their similarities and problems addressed are indicative that they are
analogous and we have regarded those statements as such. But that is not
the only explanation Petitioner has proffered for why a person of ordinary
skill in the art would have combined the teachings of Lemmela and Crowley.
We stated above that a person of ordinary skill in the art would have
appreciated that combining Crowley’s distance determination with
Lemmela’s mobile device programming would have resulted in beneficially
providing the user with the ability to choose a specific distance from her
current location where the system would determine the relevant grouped
posts. See Pet. 52. We also noted above that Lemmela would present to the
user the points of interest in which the user is most interested. Id.
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Accordingly, we determine that Petitioner has demonstrated by a
preponderance of the evidence that Lemmela teaches the “determine an
action spot” and “has engaged” limitations of claims 1, 10, and 13. And
Petitioner has demonstrated, in the alternative, by a preponderance of the
evidence, that the combined teachings of Lemmela and Crowley also teach
the “determine an action spot” limitation of claims 1, 10, and 13.
v. “signify the at least one action spot on the graphical user interface”
(Claim 1) and “signifying the at least one action spot with a graphical item
on a display of the mobile device” (Claim 13)
Claim 1 recites instructions to “signify the at least one action spot on
the graphical user interface.” Ex. 1001, 19:3233. Similarly, claim 13
recites “signifying the at least one action spot with a graphical item on a
display of the mobile device.” Id. at 20:3435.
Petitioner argues that Lemmela teaches signifying action spots on the
GUI of a mobile device. Pet. 53. For instance, Petitioner relies on
Lemmela’s Figure 5, which shows a display for use with Lemmela’s system.
Id. (citing Ex. 1005, Fig. 5, ¶ 22). Figure 5, according to Petitioner, and we
agree, shows the grouped posts with the words “shopping,” “shoes,” and
“gallery” on the GUI of a mobile device. Id. (citing Bhattacharjee Decl.
¶ 62[1f]). As discussed above, Lemmela teaches the “action spot,” and,
therefore, the displayed clouds as the “action spots” would be displayed in
Lemmela’s GUI. Id. Patent Owner does not address this limitation.
We determine that Petitioner has demonstrated by a preponderance of
the evidence that the combined teachings of Lemmela and Crowley teach the
above-referenced limitation of claims 1 and 13.
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vi. “activity level” limitations (Claims 1 and 13)
Claim 1 recites instructions to “provide an indication of activity level
at the at least one action spot.” Ex. 1001, 19:3435. Similarly, claim 13
recites “marking the graphical item according to an activity level with at
least one action spot.” Id. at 20:3637. We refer to these as the “activity
level” limitations.
To teach these limitations, Petitioner relies on Lemmela’s disclosure
of the “heat map,” in which certain areas are colored based on the
information being presented. Pet. at 54 (citing Ex. 1005 ¶ 28). We agree
with Petitioner that Lemmela teaches the “activity level.” According to
Lemmela, the displayed areas of interest, determined by location postings,
may use “[d]ifferent colors” depending on “type of interests (shopping,
dining, events, sightseeing, etc.), price ranges, or by density of location
postings.” Ex. 1005 ¶ 28. Additionally, Petitioner relies on Lemmela’s
disclosure that the groups of postings displayed as clouds would have a
shaped boundary displayed in a color indicating information about the
group, for example indicating a “quantitative measure of the postings in the
group.” Pet. 5455 (citing Ex. 1005 ¶ 12). We agree with Petitioner that
Lemmela’s teachings convey to a person of ordinary skill in the art that
Lemmela’s clouds (“action spots”) indicate activity level at the locations
covered by the clouds because the color differentiators convey a measure of
quantity (read here “level”) of location-based postings (read here “activity”)
at the location. According to Petitioner, and we agree, “[a] measure of the
postings within the group is one way to determine activity level within that
group.” Id. at 55 (citing Bhattacharjee Decl. ¶ 62[1e]).
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Patent Owner disagrees because the recited “activity level” must
reflect “levels of actions” of the mobile devices at the location. PO Resp.
3031 (citing Ex. 1001, 9:5965; McDaniel 2d Decl. ¶ 61). Stated
differently, Patent Owner’s argument is that the “level of actions” must be
commensurate with the amount of all the postings at the location, not a
subset. In particular, Patent Owner argues that Lemmela filters the location-
based postings using salient words, and only those postings comprise the
group that is displayed as Lemmela’s clouds. Id. at 31 (citing Ex. 1005 ¶¶ 7,
25, 34, 35). The “level” displayed, according to Patent Owner, corresponds
to level of salient word commonality. Id. (citing McDaniel 2d Decl. ¶¶ 62,
64); Sur-Reply 910 (arguing that Lemmela’s “metrics convey information
that is far different from a level of activity at an action spot”). We are not
persuaded by Patent Owner’s arguments.
The issue here is whether the “level” of activity can include a subset
of all the activity of an action spot, i.e., whether some filtering can be
performed on the transmitted messages and still reflect the claimed “activity
level.” Patent Owner frames its anti-filtering argument with a hypothetical:
consider two areas of interest, a stadium and a post office, and that in the
stadium, there are thousands of location-based postings. See PO Resp.
3132 (referring to example in McDaniel 2d Decl. ¶ 62). At the post office,
continuing with Patent Owner’s hypothetical, there are fewer than a hundred
location-based postings, most of those postings containing salient words
relating to mail, such as “envelope, stamp, mail.” McDaniel Decl. 2d ¶ 62.
According to Dr. McDaniel, the number of postings at the stadium is very
high in comparison to the number of postings at the post office, but the
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salient-word count for the stadium location would be very low (dare we say
zero), which pales in comparison with the occurrences of those words in
post-office based postings. Id. Dr. McDaniel opines that Lemmela’s
“quantitative measure” would be greater for the post office than for the
stadium, because of the omission of post-office based salient words in those
postings. Id. Yet Dr. McDaniel admits that claims 1 and 13 do not exclude
all forms of filtering. Id.; see also PO Resp. at 32. Thus, we are presented
with the question of whether, under such a hypothetical, Lemmela’s salient
word embodiment comports with the required “activity level.” We
determine that this argument is not commensurate with the scope of claims 1
and 13, and the hypothetical is not consistent with Lemmela’s teachings.
We also conclude that the filtering does not defeat Lemmela’s teaching of an
“activity level.”
First, the claim language does not limit the “activity level” as
requiring a calculation to account for “all” the number of messages
transmitted. See Ex. 1001, 19:3435 (reciting merely the “indication of
activity level” without qualification). Indeed, as long as the “activity level”
indicates some measure of activity at the action spot, the claim language is
met. In fact, the scope of dependent claim 2 informs us that the applicant
did not intend for the “activity level” to be limited to any particular quantity
of activity that could comprise the “level” of activity. Claim 2 recites that
the “indication of activity level includes coloring a graphical item associated
with the at least one action spot in accordance with a range of activity
occurring at the at least one action spot.” Ex. 1001, 19:3639 (emphasis
added). This claim was originally filed with the ’327 application and, thus,
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it is part of the original disclosure. Ex. 1007, 34; see also Alcon Research,
Ltd. v. Apotex Inc., 687 F.3d 1362, 1367 (Fed. Cir. 2012) (holding that a
limitation recited in the dependent claim must necessarily meet the
correspondingly recited independent claim limitations). Therefore, if
dependent claim 2’s level of activity can comprise a range, then a range
would also meet the activity level of claim 1. Consequently, the claims do
not preclude filtering of the transmitted messages (i.e., considering a range
of less than the whole of the activity) and determining an “activity level”
based on filtered transmitted messages. Again, Patent Owner’s declarant
admits that claims 1 and 13 do not exclude all forms of filtering. McDaniel
Decl. 2d ¶ 62.
Second, there is no evidence that Lemmela’s cloud display would
work as Dr. McDaniel hypothesizes and, thus, we give no credit to this
testimony. As stated above, Lemmela describes using a quantitative
measure of the postings, after the postings have been grouped according to
their common words. Ex. 1005 ¶ 12. And the commonality factor, itself,
ensures that the filtered group of postings is representative of the total
number of postings in the area. See Bhattacharjee 2d Decl. ¶ 36. We
understand from Dr. Bhattacharjee’s Declaration, which we credit in this
regard, that “the level of salient word commonality may actually be
proportional to the number of posts at a location.” Id. We concur with this
testimony as it is consistent with the teachings of Lemmela. Lemmela
describes that its first assessment of all the postings is to scan them for
common words and group them as such. Ex. 1005 ¶ 11. Such an example is
explained with respect to Figures 2A and 2B of Lemmela, stating that
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“[m]any closely situated public postings 30 are examined based on the
words within them, typically with particular emphasis on salient words.” Id.
¶ 31 (emphasis added). It turns out that the most common word is “pizza”
(or some synonym of that word), and Lemmela creates the cloud based on
postings containing the word “pizza” or some synonym of that word. Id. If
the most common word is “pizza” and there is a pizza restaurant at that
location, it stands to reason that the number of postings that are used to
present the cloud are actually proportional to the total number of postings in
that area.
In the example provided by Dr. McDaniel, however, the assumption
that Lemmela would create a group of stadium postings based on salient
words that are not common in the postings for that location is wrong. For
instance, Lemmela would display a cloud for “football” at the stadium,
because that is the most common word in the postings for the stadium
location. See Ex. 1005, Fig. 1 (displaying “football” and “sports” as
common words in the Stadium cloud). The assumption that the stadium
postings would be filtered for words from postings of other locations, such
as a post-office, is not supported by Lemmela. Therefore, we find that
Lemmela would not display a cloud for the stadium that reflects a low
percentage of post-office based words, as argued by Patent Owner.
In any event, the claim language does not reflect any proportionality
or particular manner of calculating or displaying the “activity level.” Here,
Lemmela’s grouping of postings after scanning for the common word(s) and
displaying a quantitative measure of these postings is sufficient to show that
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the clouds of Lemmela indicate an “activity level at the at least one action
spot.”
Accordingly, we determine that Petitioner has demonstrated by a
preponderance of the evidence that Lemmela teaches the “activity level”
limitations of claims 1 and 13.
vii. “graphical item” limitation (Claim 10)
Claim 10 recites, “displaying a graphical item on the display of the
mobile device, said graphical item identifying a direction, relative to the
current location, in which to travel in order to arrive at the determined at
least one action spot.” Ex. 1001, 20:12–15 (the “graphical item” limitation).
Petitioner relies on Winkler to teach this limitation because it
discloses a display showing a direction of travel to a map element. Pet. 62.
Petitioner explains that Winkler teaches an embodiment in which a user
attempts to walk toward a store, and the system changes a map element’s
color to indicate that the user is heading in the right direction. Id. Petitioner
proffers that a person of ordinary skill in the art would have understood at
the time of the invention that a “real-time map update” based on “user
movements along a route” would likely include a graphical display of the
correct direction in which to travel. Pet. 63 (citing Bhattacharjee Decl.
¶ 70[10d]). Winkler’s display of directions, therefore, according to
Petitioner, would have allowed devices to display the locations of the
grouped posts, along with directions to those locations. Id.
Patent Owner challenges these assertions on two distinct bases. First,
Patent Owner argues that Winkler’s “graphical element” changing color
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does not provide directions, but only indicates whether “past movements”
were right or wrong. PO Resp. 3738; Sur-Reply 89. Second, Patent
Owner argues that Petitioner’s reasons for combining the teachings of
Lemmela with those of Winkler are conclusory, vague, and are insufficient
to understand the combination. PO Resp. at 3840. We address each
argument as we set forth our analysis for why Winkler’s teachings,
combined with those of Lemmela, accounts for the “graphical item”
limitation.
We begin with a brief overview of Winkler and a discussion of the
Winkler embodiment relied on by Petitioner. Winkler describes various
ways to present information on a user interface of a mobile device that
displays a map, with map elements. Ex. 1004, code (57). Map elements are
tags that display the location of one of the users of the system, and that act as
an interface to launch a communication session between or among two or
more users. Id. at 2:812. Winkler’s map elements may be associated with
a location, but also correspond to the user’s friends, family members,
contacts, or members of a group associated with the mobile device user. Id.
at 2:1629. What is important in Winkler is the ability to dynamically
update the display based on geographical movement of friends, family
members, contacts, or group members into and out of a displayed region on
a map. Id. at 2:2933. Winkler, however, explains that the presented
information does not necessarily need to be on a map application. Id. at
12:6365. One example Winkler provides is that of having up-to-date
locations for all the friends in a user’s address book, which gives the mobile
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device the ability to sort the address book based on the locations of the
friends, from closest friend to farthest friend. Id. at 12:6513:3. In this
context of Winkler’s dynamic update of the displayed geographical
movement, Winkler describes three scenarios. The first and second
scenarios are not relevant to the instant case because Petitioner does not rely
on these to account for the “graphical item” limitation of claim 10.
Petitioner relies on the third scenario to explain how Winkler accounts
for the “graphical item” limitation of claim 10. This third scenario describes
a user tagging the location of a T-Mobile store on the map, where the map
element now corresponds to the location of the T-Mobile store. Id. at
13:2124. The user’s display shows the map with the added map element.
Id. “The user attempts to walk to the store.” Id. at 13:2425. As the user is
walking to the store, the map element changes colors, indicating to the user
that she is heading in the correct direction. Id. at 13:2527. As the user gets
closer to the store, the display changes to an expanded view of the map, to
provide a more detailed view of the map “based on her location in relation to
the store.” Id. at 13:2731.
We find this third scenario teaches that the Winkler map element is a
tag icon on a map, i.e., a graphical item on the display of the map. And, we
agree that this map element represents the location of the store that the user
is walking towards. But the same map element changes colors to provide
direction in real-time so that the user can understand whether she is heading
in the right direction. Patent Owner urges us to view the map element as
failing to identify a direction in which to travel. PO Resp. 3738. This
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argument, however, ignores the implementation of the color-changes of that
map element that do provide an indication of direction on the map. The
claim language does not require the “direction” to be in any particular
format or level of specificity. An indication that the user is walking in the
appropriate direction, by showing a color that signifies so, is still an
identification of a direction in which to travel. It is especially telling that the
Winkler display zooms in on the map as the user gets closer to the store,
further pointing out that she will see more details about the route there.
Ex. 1004, 13:2731.
We are also not persuaded by Patent Owner’s argument that the
change in color only indicates “past movement.” PO Resp. 38. We do not
view Winkler as providing only feedback of “past movement.” As we
already explained, Winkler describes the display changes as dynamic and
reflecting the current location of the users. See also Bhattacharjee 2d Decl.
¶ 52 (stating that Winkler’s system updates the direction as the user walks
(i.e, changes her current location)); Reply 26. If anything, Winkler provides
real-time direction information as the user is walking. And to do so, it takes
into account where the user has been and the travel direction in which she is
headed. Id. Again, claim 10 does not require any particular format of the
identified “direction” or whether the information must be provided with any
relative timing to when the user is approaching the action spot.
Accordingly, we are not persuaded by Patent Owner’s first argument.
As to Patent Owner’s second argument concerning the motivation to
combine the teachings of Lemmela with those of Winkler, we are not
persuaded that the Petition is vague, conclusory, or otherwise without
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sufficient explanation. Petitioner first sets forth that both Lemmela and
Winkler disclose real-time map updates. Pet. 63 (citing Bhattacharjee Decl.
¶ 70[10d]). Petitioner also proffers evidence, in the form of testimony of Dr.
Bhattacharjee, which we credit, that a person of ordinary skill in the art
would have understood at the time of the invention “that a ‘real-time map
update’ based on ‘user movements along a route’ would likely include a
graphical display of the correct direction in which to travel.” Id. This
testimony is unrebutted and its premise is reasonable. That is, starting with
Lemmela’s disclosure that the mobile device is equipped with a map
application that provides directions, it suggests to a person of ordinary skill
in the art that there would be a graphical display (after all, it is showing the
user a map, which is a graphical display) showing the correct travel
direction. Petitioner further expands on how to account for Winkler’s
teaching of the color-changing map element: it would allow devices to
display the locations of grouped posts, along with directions to those
locations. Id. at 63 (citing Bhattacharjee Decl. ¶ 70[10d]). Petitioner posits
that Lemmela and Winkler’s similarities and problems addressed would
have presented a person of ordinary skill in the art with reason for their
combination: modifying the Lemmela-Crowley system to provide users
with directions to action spots, as in Winkler, would have improved the
usefulness and convenience of the Lemmela-Crowley system. Id. at 64
(citing Bhattacharjee Decl. ¶ 70[10d]). We see no evidence to the contrary,
and the evidence presented by Petitioner and its declarant is neither vague
nor conclusory.
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Indeed, Petitioner points to Lemmela as informing the alleged
“usefulness and convenience.” For instance, Petitioner points out that
Lemmela helps users “easily pinpoint locations which are the most
interesting from their point of view,” and that providing directions to an
interesting location is one way of pinpointing it. Id. at 64 (citing Ex. 1005
¶ 10); Bhattacharjee Decl. ¶ 70[10d] (testifying also that Lemmela at
paragraph 9 states that its solution is helpful for aiding in directed
exploration). We agree that Lemmela further explains the usefulness of
adding to the cloud and salient word display the ability for the user to
receive directions to a particular point of interest.
We understand Patent Owner to argue that clouds are irregular and are
different from a pin at a discrete location, such as the pin on the T-Mobile
store’s location on a map. PO Resp. 39–40. This argument does not take
into account, however, that Lemmela’s clouds are overlays on a map, and
that map locations are discrete locations, such as a single restaurant or a
cafe. See Reply 28 (citing Ex. 1005 ¶ 27, Figs 2A-2B). Thus, we see no
reason to discount the use of a pin-type element color change in combination
with Lemmela’s clouds to provide an indication of direction.
Finally we address a passing reference (i.e., a footnote) to the
prosecution history as “inform[ing] why the claimed graphical item
identifying an actual direction (e.g., an arrow, a compass, etc.) is distinct
from merely changing the color of a location pin.” PO Resp. 38 n.1 (citing
Ex. 1007, 159). Upon review of the cited prosecution history of record, we
do not find any statement at page 159 of Exhibit 1007 that would lead us to
Patent Owner’s conclusion. That page identifies an index of claims of the
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application that issued as the ’327 patent. It may be that Patent Owner refers
to Exhibit 1007 of the co-pending inter partes review addressing the claims
of U.S. Patent No. 8,825,084 (the “’084 patent”), a patent related to the ’327
patent. See IPR2019-00714, Ex.1007. But even if that were the case, we are
not persuaded that statements in the ’084 patent prosecution history informs
our determination here because the applicant’s arguments addressed, in
addition to the “graphical item,” the limitation of “displaying a level of
activity associated with the at least one action spot.” See IPR2019-00714,
Ex.1001, 20:3133 (reciting the limitation in claim 9 of the ’084 patent). In
addition, it seems that the applicant attempted to equate the “graphical item”
to a compass, which the cited prior art does disclose (U.S. Patent
Application Publication No. 2010/0248746, Fig. 6, ¶ 57 (stating that the
restaurant is 3 miles straight ahead and Figure 6 showing a graphical display
with a compass pointing in the northward (straight ahead) direction and
identifying 3 miles distance)). Thus, we find that the arguments presented
regarding the “graphical item” did not distinguish over the asserted prior art,
was an ineffective disavowal, and included arguments directed to other
limitations not recited in claim 10 of the ’327 patent. For these reasons, we
give no weight in this proceeding to the alleged prosecution history
statements of the ’084 patent.
Consequently, we determine that Petitioner has demonstrated a
reasonable likelihood of prevailing on its assertion that the combination of
Lemmela and Winkler teaches the “graphical item” limitation of claim 10.
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viii. Conclusion
Having addressed all the limitations of the independent claims in view
of the parties’ arguments and evidence, we conclude that Petitioner has
shown by a preponderance of the evidence that claims 1 and 13 are
unpatentable as obvious over the combination of Lemmela and Crowley, and
that claim 10 is unpatentable as obvious over the combination of Lemmela,
Crowley, and Winkler.
4. Dependent Claim 2
Claim 2 depends from claim 1, and further recites “wherein the
indication of activity level includes coloring a graphical item associated with
the at least one action spot in accordance with a range of activity occurring
at the at least one action spot.” Ex. 1001, 19:3639. Patent Owner has filed
a Non-Contingent Motion to Amend that seeks to replace this dependent
claim with substitute claim 21. MTA 1. Accordingly, we do not address
Petitioner’s challenge of dependent claim 2 because this claim has been
replaced by proposed substitute claim 21, which will be addressed in our
decision on the Motion to Amend below.
5. Dependent Claims 3 and 15
Claim 3 depends from claim 1, and further recites “wherein the level
of activity is based upon at least one of a number of images being captured,
a number of videos being captured, or a number of messages being
transmitted within a predetermined distance from the at least one action
spot.” Ex. 1001, 19:4044. Claim 15 is identical to claim 3, except that it
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depends from claim 13. Id. at 20:4246. We discuss claim 3 below, but our
analysis applies equally to claim 15.
Petitioner argues that Lemmela teaches this limitation because
Lemmela’s clouds, i.e., the displayed groups of location-based postings,
display also an activity level as discussed above with respect to the “activity
level” limitation. Pet. 57. For instance, as we discussed above, Petitioner
argued, and we agreed, that Lemmela’s teachings convey to a person of
ordinary skill in the art that Lemmela’s clouds (“action spots”) indicate
activity level at the locations covered by the clouds because the color
differentiators convey a measure of quantity (read here “level”) of location-
based postings (read here “activity”) at the location. We also agreed with
Petitioner’s argument and evidence that “[a] measure of the postings within
the group is one way to determine activity level within that group.” Id.at 55
(citing Bhattacharjee Decl. ¶ 62[1e]). These postings meet the limitation of
“number of messages being transmitted within a predetermined distance
from the at least one action spot” because, as stated previously with regard
to the “action spot” limitation, these are messages transmitted in the
geographic area that is the action spot. See supra Section III.C.3.iv, at pages
3233.
Patent Owner challenges the Petition as insufficient on this point. PO
Resp. 3334. In particular, Patent Owner argues that the Petition fails to
show that the “level of activity” is based on actions occurring “within a
predetermined distance from the at least one action spot.” Id. at 34.
Although the Petition relies on the arguments and evidence relating to the
“action spot” and “activity level” limitations, Patent Owner contends that
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those limitations do not address the claim 3 requirement of a “predetermined
distance from the at least one action spot.” Id. For instance, according to
Patent Owner, the “action spot” is recited with respect to a “predetermined
distance from the current location of the mobile device”—and that distance
is not the same as the distance of claim 3. Id. Nevertheless, Patent Owner
argues that Lemmela does not teach the limitation because the clouds
encompass multiple locations corresponding to various postings in a filtered
group. Id. at 3435. Furthermore, Lemmela’s clustering algorithms,
according to Patent Owner, only address that the postings are close to each
other, with no evidence that those postings would correspond to a location
“within a predetermined distance” of the “action spot.” Id. at 35 (citing
Ex. 1005 ¶ 35; McDaniel 2d Decl. ¶¶ 68, 69). Thus, to summarize Patent
Owner’s contention, Lemmela’s postings occur within the cloud area, e.g.,
action spot, but not within a predetermined distance from the action spot. Id.
(citing McDaniel 2d Decl. ¶¶ 6670).
We are not persuaded by Patent Owner’s arguments. The claim
language requires that the transmitting activity occur “within a
predetermined distance from the at least one action spot.” The ’327 patent
does not describe this particular predetermined distance and, therefore, does
not preclude a distance of “zero” meters. That is, the displayed activity level
recited in the claim corresponds to the message transmissions from the
location of the action spot. Lemmela does precisely this. The location-
based postings are transmitted from the cloud location, which Petitioner has
identified as the recited “action spots.” Pet. 4552. We do not see what else
is required from the perspective of the claim or the ’327 patent’s
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Specification, which, again, does not prescribe any limits of the recited
“predetermined distance.”
Therefore, we find that Petitioner has demonstrated by a
preponderance of the evidence that claims 3 and 15 are unpatentable as
obvious over the combination of Lemmela and Crowley.
6. Dependent Claim 8
Claim 8 depends from claim 1, and further recites, “wherein the
determining of the at least one action spot is based upon a defined distance
from the mobile device.” Id. at 19:5961. Petitioner relies on the arguments
and evidence presented for the “determine an action spot” limitation recited
in claim 1, where the limitation requires the determination to account for a
“predetermined distance from the current location of the first mobile
device.” Pet. 57. We addressed above, in Section III.C.3.iv, that Petitioner
had shown by a preponderance of the evidence that the combined teachings
of Lemmela and Crowley accounts for the “determine an action spot”
limitation because it would have been obvious to modify Lemmela’s mobile
device, which processes location-based postings, to include Crowley’s
distance use, for example, ten blocks from the mobile device. This distance
meets the claim 8 requirement of a “defined distance from the mobile
device.” Thus, the same analysis of claim 1 applies equally here. For the
same reasons, therefore, we determine that Petitioner has shown by a
preponderance of the evidence that claim 8 is unpatentable as obvious over
the combination of Lemmela and Crowley.
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7. Dependent Claims 9 and 20
Claim 9 depends from claim 1, and further recites
wherein the processor module is further configured to
receive executable instructions to:
run an image acquisition application on the mobile
device;
display an image from a camera module on the
display screen; and
display the image with the at least one activity spot.
Ex. 1001, 19:6220:1. Claim 20 is identical to claim 9, except that it
depends from claim 13. Id. at 20:5964. Petitioner argues that the
combined teachings of Lemmela, Crowley, and Waldman accounts for these
claims. Pet. 6572.
As to the “image acquisition application,” Petitioner argues that
Waldman teaches a mobile phone that is an image capturing device running
an application to capture images. Id. at 6566 (citing Ex. 1011, Fig. 1,
¶¶ 12, 19). We agree with Petitioner that Waldman discloses an image
capturing device with an application for acquiring images. Ex. 1011, Fig. 1,
¶¶ 12, 19. Figure 1 of Waldman is reproduced below with an annotation
added by Petitioner.
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Figure 1 illustrates a visually augmented captured image with data
related to a search for points of interest. Ex. 1011 ¶ 12.

Waldman describes searching for nearby points of interest and
displaying information related to those nearby points of interest overlaid
onto a video feed of a surrounding area. Id. ¶ 1. In Figure 1, Waldman
shows a handled communication device, or mobile phone, that has captured
and displayed image 102 of the northwest corner of the intersection of
Dolores Street and 17th Street using the device. Id. ¶ 19. We conclude from
these disclosures that Waldman’s handheld device runs an image acquisition
application because it is able to acquire an image and display it.
As for the “display . . . from a camera module,” Petitioner also points
to Waldman’s handled device disclosure, which, according to Figure 6,
includes camera 638. In particular, Petitioner points out that Waldman’s
“processor 620 instructs the camera 638 to begin feeding video images to the
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display 634.” Pet. 67 (citing Ex. 1011 ¶ 47). We agree with Petitioner that
this disclosure of Waldman teaches the claim requirement of displaying an
image “from a camera module on the display screen,” as recited in claims 9
and 20.
As for the limitation that requires “display [of] the image with the at
least one activity spot,” Petitioner relies on the combined teachings of
Lemmela, Crowley, and Waldman. Pet. 6852. For instance, Petitioner
relies on the Lemmela-Crowley combination as asserted for the “activity
level” limitation, discussed supra in Section III.C.3.vi. However, recall that
the image that the combined teachings of Lemmela and Crowley displays is
the image of a map overlaid with Lemmela’s clouds. Petitioner
acknowledges that Waldman provides the image obtained from the camera
module of the handheld device, i.e., the viewfinder image. Id. at 68. And
Petitioner asserts that it would have been obvious to a person of ordinary
skill in the art to modify the Lemmela-Crowley system based on the
teachings of Waldman such that the action spots (read here Lemmela’s
clouds) were superimposed on a viewfinder image from the camera module.
Id. (citing KSR, 550 U.S. at 41521).
Patent Owner argues that the asserted combination of teachings is
flawed. PO Resp. 4043. In particular, Patent Owner argues that Petitioner
has failed to explain how the groups of postings from Lemmela would be
displayed over a viewfinder image. Id. at 41. Furthermore, Patent Owner
contends that hindsight is the only reason to combine Lemmela’s display of
salient word clouds over a map (not a viewfinder image) with Waldman’s
display of points of interest over the viewfinder image. Id. at 41. According
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to Patent Owner, prior to the ’327 patent it was not known to display groups
of posts over a viewfinder image. Id. And Petitioner’s proffered reasons to
combine the teachings of Lemmela, Crowley, and Waldman focus on vague
assertions of similarities and usefulness or convenience. Id. Without a more
exacting explanation, Patent Owner asserts that technical challenges of how
to map large, irregular shapes of Lemmela’s clouds to the street-level
viewfinder in Waldman are impermissibly unresolved. Id. at 42.
We are not persuaded by Patent Owner’s arguments. The Petition
proffers that displaying nearby points of interest and displaying information
about those points of interest is known in the art, as taught by Waldman.
Pet. 70. Under KSR, combining known or familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results. 550 U.S. at 416417. The modification of the
Lemmela-Crowley combination would yield a predictable result:
superimposing groups of posts on the mobile device’s viewfinder image.
Pet. 70 (citing Bhattacharjee Decl. ¶ 73[9d]). This is how Petitioner framed
the obviousness premise for this ground. And we agree that the combination
of teachings accords with KSR’s framework that combining known
techniques using known methods is obvious when it yields predictable
results.
But there is more to Petitioner’s case of obviousness. Petitioner
further proffers that a person of ordinary skill in the art would have
recognized at the time of the invention of the ’327 patent that the
combination would allow users to view group-post information, which is an
improvement. Id. at 72. Petitioner asserts the usefulness of the modified
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Lemmela-Crowley system, which would have only used overlaid maps. Id.
at 72 (citing Bhattacharjee Decl. ¶ 73[9d]). That is, Petitioner has shown
that the user would receive a benefit of receiving information about the
points of interest nearby (as taught by Lemmela, Ex. 1005 ¶ 10), but in a
more immediate area setting as opposed to a sprawling city map. See id.
These are sufficient showings of a reason to combine the asserted teachings.
Now, as to the alleged technical hurdles that Patent Owner raises, we
note that Dr. McDaniel testified that overhead maps are distinctly different
from perspective images of a street location and scene. McDaniel 2d Decl.
¶ 79. But this is only evidence that these images convey different
information, not that they are technically different so that the location-based
clouds of Lemmela could not be superimposed on a viewfinder image.
The argument that the clouds are large, irregular shapes and somehow
not conducive to be combined with Waldman’s teachings is also not
persuasive. As Petitioner argues, and we agree, the cloud of Lemmela may
describe a discrete location, such as a single restaurant or café. Reply 28
(citing Ex. 1005, Figs 2A-2B, ¶ 27). Petitioner has also shown persuasively
that the viewfinder image of Waldman displays an icon that represents a
location that is not quite at the immediate location, but rather it is 1.5 km
away: Golden Gate Park. Id. at 2829 (illustrating Ex. 1011, Fig 1).
In sum, Petitioner has shown that the combination of teachings of
Lemmela, Crowley, and Waldman would involve the mobile device of
Lemmela identifying on the viewfinder image the processed location-based
postings as clouds for nearby points of interest, such as the pizza restaurant
or café. Further, Dr. Bhattacharjee has testified that such a combination
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would have been predictable and “merely involve[d] changing the interface
on which action spots were displayed.” Bhattacharjee Decl. ¶ 73(9[d]).
Finally, Dr. Bhattacharjee testified that Lemmela’s action spot icons “would
be displayed in place of the location labels already contemplated by
Waldman.” Bhattacharjee 2d Decl. ¶ 59. We credit this testimony and find
that Petitioner has shown sufficiently how and why a person of ordinary skill
in the art would have combined the asserted teachings of Lemmela,
Crowley, and Waldman.
Accordingly, we are persuaded that Petitioner has shown by a
preponderance of the evidence that claims 9 and 20 would have been
unpatentable as obvious over the combination of Lemmela, Crowley, and
Waldman.
8. Dependent Claim 14
Claim 14 depends from claim 13, and further recites, “wherein
marking the graphical item includes coloring the graphical item in
accordance with a range of activity occurring at the at least one action spot.”
Ex. 1001, 20:3841. To teach this limitation, Petitioner relies on the same
arguments and evidence discussed above with regard to the “activity level”
limitation of claim 1. Pet. 59. Petitioner further argues that Lemmela
discloses, in addition to changing color boundaries to indicate activity level,
that the color of the salient words for each group of postings is based on a
range of activity. See Pet. 56 (discussing dependent claim 2, which recites
the identical limitation, except that claim 2 depends from claim 1).
According to Petitioner, Lemmela teaches that “the words may be presented
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in different fonts, colors, or sizes to indicate different information.” Id.
(citing Ex. 1005 ¶ 29). According to Petitioner, the “different information”
Lemmela discloses may include information regarding the range of activity
within the group. Id. (citing Bhattacharjee Decl. ¶ 63).
We agree that Lemmela teaches this limitation. The salient words that
are displayed on the cloud may vary in color to indicate different
information. Ex. 1005 ¶ 29. We have determined above that Lemmela
indicates level of activity by varying the cloud according to the density of
location postings. See supra III.C.3.vi. (citing Ex. 1005 ¶ 28). Thus, the
change of color of the boundaries, as well as the change of color for the
salient words, are evidence that Lemmela teaches a range of activity
occurring at the action spot as required by claim 14.
We determine that Petitioner has shown by a preponderance of the
evidence that claim 14 would have been unpatentable as obvious over the
combination Lemmela and Crowley.
D. OBVIOUSNESS OVER WINKLER AND ALTMAN
The Petition sets forth that Winkler discloses all the limitations of
independent claims 1, 10, and 13, except that for limitations reciting “within
a predetermined distance,” Altman is relied upon. Pet. 2036, 3941. For
dependent claims 2, 3, 8, 11, 14, and 15, Petitioner relies exclusively on
Winkler as disclosing the further recited limitations. Id. at 3638, 40, 42.
Petitioner does not address dependent claims 9 and 20 in the Winkler
grounds. See Pet. 23.
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In our Decision on Institution, we determined that Petitioner had not
demonstrated a reasonable likelihood of prevailing in showing that
independent claims 1 and 9 would have been obvious over Winkler and
Altman. Dec. on Inst. 2225. In particular, we found wanting Petitioner’s
assertions concerning Winkler’s disclosure of the “determine an action spot”
limitation. Id. More specifically, we found that the portions that Petitioner
cited in Winkler showed the users may comment on the tagged locations,
without regard for where the user is located when making the comment. Id.
at 24. Petitioner addressed the Winkler ground in the Reply. Reply 821.
Patent Owner responds that the Winkler ground continues to be deficient
over Petitioner’ s reply explanations, which allegedly raise new arguments
and evidence that should have been included in the Petition. Sur-Reply
1621. We address these issues below in connection with our determination
that Petitioner has not shown by a preponderance of the evidence that
Winkler teaches the “determine an action spot” limitation, and that certain
arguments presented in the Reply are outside the scope of a proper Reply as
they shift the theory of obviousness in contravention of due process and our
rules of procedure.
1. Overview of Winkler (Ex. 1004)
Winkler is entitled “Dynamic Elements on a Map Within a Mobile
Device, Such As Elements That Facilitate Communication Between Users.”
Ex. 1004, code (54). Winkler is directed to a system for generating and
displaying graphical elements on a mobile device map so that a mobile
device user may identify concentrations of other mobile device users at one
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or more locations. Id. at 1:66–2:5, 2:47–49. Winkler describes a system that
includes a server which displays or presents information to mobile device
users, including mapping components that generate a map and map
elements. Id. at 4:43–51. The system may generate a map element based on
an input identifying a location of a user’s mobile device. Id. at 10:10–19.
The system may display map elements based on events that occur proximate
to a user’s mobile device or at a location associated with the map element.
Id. at 2:16–19. The system may modify the appearance of a map element
when a certain number of mobile device users comment on a location or
event. Id. at 2:20–24, 10:40–44.
Figure 5, reproduced below, shows a flow diagram illustrating routine
500 for updating a map element within a mobile device. Ex. 1004, 10:7–9.
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FIG. 5 is a flow diagram illustrating a routine for updating a map
element within a mobile device. Ex. 1004, 1:52–53.

Figure 5 shows a system generating a map element based on input
received from a user in step 510. Id. at 10:10–11. The system displays the
map element on a map in step 520. Id. at 10:32–33. The system receives an
indication of an event at the location of the map element, for example
detecting comments added to the map element in step 530. Id. at 10:40–45.
The system transmits instructions to the mobile device to modify the element
alerting the user that an event has occurred at step 540. Id. at 10:54–64.
The map element may be a certain color, size, or design. Id. at 11:5.
The system may modify the map element to indicate the occurrence of an
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event, such as a friend adding a comment to the map element. Id. at 11:6–
10. Additional event occurrences may include an amount of activity in a
certain region above a threshold value or an amount of activity within a
period of certain time. Id. at 11:35–46. The system may dynamically adjust
or modify the map element by changing the color or brightness of the map
element or changing the map element to a different element. Id. at 11:15–
26.
Figure 7A, reproduced below, shows a map with various types of map
elements. Id. at 12:2–12:11.

Figure 7A illustrates an example mobile device screen used to dynamically
display information about elements on a map. Ex. 1004, 1:57–59.
Figure 7A shows map 700 displayed on a mobile device with two
highlighted zones, 710, 720, tagged location 735, and hot zone 730. Id. at
12:4–5, 12:32–38. Highlighted zones 710, 720 may show increasing or
decreasing concentrations of elements on the map or concentrations of
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comments by users at a location. Id. at 12:5–10. Hot zone 730 around
tagged location 735 “may indicate a certain amount or frequency of activity
around or related to the location,” including comments from other mobile
users. Id. at 12:36–40. The display of hot zones or map elements may
dynamically change based on events or time. Id. at 12:44–54.
In one example, Winkler describes a map application that displays a
map element corresponding to a store’s location. Id. at 13:22–24. “As the
user approaches the store, the system causes the map element to change
colors, indicating to the user that the user is heading in the correct direction.”
Id. at 13:21–27. The system may also expand the view of the map as the
user reaches a certain distance in relation to the store. Id. at 13:27–31.
2. Independent Claims 1, 10, and 13
After reviewing the fully developed record, we determine that
Petitioner has not demonstrated by a preponderance of the evidence that
claims 1, 10, and 13 are unpatentable as obvious over the combination of
Winkler and Altman.
i. “determine an action spot” limitation
The Petition relies primarily on Winkler as teaching this limitation.
Petitioner states that Winkler’s mobile device contains a mapping
component that generates “dynamically changing maps and elements on
maps.” Pet. 23 (citing Ex. 1004, 3:4345). Those map elements, according
to Petitioner, “correspond to locations where ‘events’ have occurred.” Id. at
24 (citing Ex. 1004, 2:1618, 10:4042). Petitioner block quotes Winkler’s
disclosure of the “events” emphasizing two of these in italics as follows:
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movement of another mobile device near to, or proximate
to a tagged location, such as movement to within a pre-selected
range of a map element,
movement of a user’s mobile device near, to, or
proximate to the user’s tagged location,
a certain frequency or amount of activity in a certain
region, such as above a threshold value,
a certain frequency or amount of activity within a certain
time period,
a certain frequency or amount of activity around a certain
tagged item on a map,
a certain frequency or amount of activity after a time
period has lapsed,
movement of a threshold number of mobile devices near,
to, or proximate to the user’s tagged location, and/or
when the time of placement of a map element exceeds a
threshold time, and so on.
Id. at 24 (citing Ex. 1004, 11:3654 (emphasis in original)). Petitioner,
relying on Dr. Bhattacharjee’s testimony, then states that this quoted passage
shows that an “event” can correspond to device activity. Id. (citing
Bhattacharjee Decl. ¶ 53[1e]). That activity, according to Petitioner, can
“specifically correspond to mobile device transmitting messages, such as by
commenting on a location or sending emails or texts.” Id. (citing Ex. 1004,
2:1622, 8:718) (emphasis omitted). This concludes Petitioner’s
explanation of the “determine an action spot” limitation in the Petition, aside
from the discussion of a “predetermined distance” for which Petitioner relies
on Altman. See Pet. 2532. Our analysis of this ground does not turn on the
“predetermined distance” aspect of the “determine an action spot” limitation.
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The problem with Petitioner’s explanations is that they do not
characterize Winkler’s disclosure accurately and, when read in the proper
context of Winkler’s disclosure, they do not show that the transmission of
messages occur at the location that is the “action spot.” The claim requires
that the “action spot” correspond to the location where the second mobile
device has engaged in at least one documenting action, such as transmitting
messages. None of Petitioner’s citations to Winkler or the Petition’s
explanations show that Winkler’s map elements and the message
transmissions occur at the same location.
We start our analysis by explaining the portions of Winkler on which
the Petition relies. First, Petitioner alludes to Winkler’s mobile device
generating the map elements to be presented to the users. This is disclosed
by Winkler. Ex. 1004, 3:4345 (discussing the mobile device and the map
elements displayed to the user). Second, Petitioner alludes to Winkler’s
“events.” Winkler states that the system “updates, modifies, alters and/or
changes displayed elements based on events that occur at or proximate to a
user’s mobile device, [the] other’s mobile devices, or at a location associated
with the element.” Id. at 2:1619.4 In this passage, we understand Winkler
to refer to events related to three specific locations that cause the map
elements to change their appearance: (1) the location of the user’s mobile
device; (2) the locations of other user’s mobile devices; and (3) a location

4 Concerning the “events” discussion, Petitioner (Pet. 2324) cited only up
to line 18 of column 2, we provide the entire sentence here for a more
complete analysis.
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associated with the element. Recall in our discussion of Winkler earlier that
Winkler dynamically updates the map elements to account for the location of
the mobile devices. See id. 12:4454. Thus, we pause here to ascertain that
map elements corresponding to locations (1) and (2) are dynamic locations,
because they change as the users move. Location (3) refers to a tag that the
user places on the map on a specific location, say, a coffee shop. Id. at
6:1822; see also Pet. 2526 (Petitioner arguing that Winkler teaches
generating one or more map elements, such as pin icons, based on the input
identifying a location of a user’s mobile device (citing Ex. 1004, 10:1719,
10:2224)). Petitioner did not provide this level of explanation in the
Petition, but we provide the explanation here for context.
Now we turn to what happens during Winkler’s events. Winkler
states that the system receives an indication of an event at the mobile device
or at the location of the map element. Id. at 10:4042. In particular,
Winkler describes four instances of events: (1) detecting other users
proximate to the location of the map element; (2) detecting additional
comments added to the map element; (3) detecting the user moving closer to
the map element; and (4) detecting the temporal position of a map element
relative to other map elements. Id. at 10:4147. Thus, for a map element
that is a tag on a specific location—coffee shop, for instance—Winkler
would detect the user’s or the user’s friends’ proximity to the coffee shop, or
would detect additional comments added to the tag of the coffee shop. The
fourth event identified above would be triggered if movement of a friend
that has been tagged on the map is detected at the coffee shop. Because the
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Petition indicates that the “activity” in Winkler corresponds to mobile
devices transmitting messages, such as by commenting on a location or
sending emails or texts, we view one of the above-listed events as the most
relevant to our discussion—the detection of additional comments added to
the map element.
Regarding this “activity,” Petitioner added emphasis to two events: (1)
a certain frequency or amount of activity within a certain time period, and
(2) a certain frequency or amount of activity around a certain tagged item
on a map Pet. 24 (quoting Ex. 1004, 11:4548). Referencing these two
“events,” the Petition states that the “event”-causing activity can be limited
to what occurs within a certain time period “and/or” within a certain region.
Id. at 24 (citing Ex. 1004, 11:4348). We understand from these portions
that Winkler will trigger a change of the map element when a threshold
amount of comments are added to a certain tagged location or when a certain
number of user’s are proximate to the tagged location. Petitioner does not
explain further how Winkler combines these events, if at all. In any event,
even absent explanation from Petitioner on this point, we find that Winkler
teaches that each (or single type of) “event” would cause a change to the
display of a map element. Winkler identifies at column 10, lines 4147,
explained earlier, that it detects each of the categories of events
independently of each other. For instance, Winkler detects movement of a
mobile user closer to the coffee shop, and would issue an alert to this effect.
See Ex. 1004, 10:4041 (“In step 530, the system receives an indication of
an event at the mobile device or at the location of the map element.”
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(emphasis added)); see also id. at 2:2326 (explaining also that the map
element may change in appearance when a certain number of users are
located proximate to an associated location). But Winkler would detect a
different type of event, such as whether comments are received for a tagged
location, separately and update the map element based on that event. Id. at
10: 5455 (“In step 540, the system updates the map element (or, the
displayed map) based on the event.” (emphasis added)).
Another type of event that Winkler describes is that of the “hidden”
element. Winkler describes that “[t]he system may also alert a user who
created the hidden map element of any activity at another user’s mobile
device.” Id. at 11:5961. The reference to another user’s mobile “activity”
in Winkler is with respect to the movement of the user relative to a tagged
location (“map element”). For instance, Winkler describes that in the case
of “hidden” map elements, the display will reveal the map element to the
user approaching the tagged location (or “map element”), and will notify the
friend of the user who tagged the location in the first place. Id. at 11:5565.
These “hidden” map element passages do not address any action of
transmissions by other mobile devices at the tagged locations (“map
elements”).
For the “documenting action” part of the claim, we understand the
Petition to rely on portions of Winkler to improperly assume that mobile
devices comment on a tagged location while on location. For instance, in
the passage on which Petitioner relies, Winkler describes that the map
element changes in appearance when a certain number of comments about a
location are received from mobile device users, thereby indicating the
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location is popular. See Pet. 17 (citing Ex. 1004, 2:2022). In the second
passage Petitioner relies on, Winkler describes the messaging mode of the
system. Id. (citing Ex. 1004, 8:718). But before describing in more detail
that passage, it is worth providing additional context. Winkler allows users
to communicate with each other by using the map elements. Specifically,
Winkler’s user taps on the map element that corresponds to the tagged
coffee shop location visited by a friend to display the comments about the
coffee shop and further communication options. Ex. 1004, 7:3549.
Winkler retrieves information from a table that stores messages or comments
by particular users. Id. at 7:4954. That table shows that a friend added a
comment to the pindrop located at specific location stating “Cool place.” Id.
at Table 1. The user, seeing the friend’s comment, can reply to the posted
commentary. Id. at 7:6263. Once again, these passages are not explained
in this level of detail in the Petition, but we include the explanation here for
context, as it explains why Petitioner has taken the cited passages out of
context.
The passage that Petitioner does rely on shows that Winkler updates
the posted commentary with the reply. Id. at 8:718. Specifically, the
added reply is updated in the table previously retrieved, which shows that a
different user added another comment to the same pindrop, 15 minutes later
stating “There soon.” Id. at Table 2. That is, the users are entering
comments about the coffee shop by tapping the pindrop of the coffee shop
location displayed on the map, without any need to be present or currently
located at the coffee shop to do so. Indeed, the replier is not there, as the
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message states “There soon.” There is no evidence proffered by Petitioner
in any of these passages that the other mobile user’s “activity” that Winkler
detects as events requires that the comments are entered while present at the
location on which the user is commenting. The location that Winkler tracks
for the comments is that of the pindrop. There is no disclosure that in
addition to tracking the comments for each pindrop, Winkler also collates
the transmitted messages based on the location at which they were
transmitted. Although Winkler tracks the locations of the users, it does not
track the locations of the users at the time they enter the comments. In
conclusion, and as we stated in our Decision on Institution, Winkler tracks
comments about a location, but does not track comments made while at the
location.
In Reply, Petitioner argues that a person of ordinary skill in the art
would have “clearly understood Winkler teaches dynamically modifying
map elements through an ‘event,’ which can include documenting activity at
the element’s location.” Reply 11 (citing Bhattacharjee Decl. ¶ 69). We do
not agree with Petitioner’s statement, nor do we credit Dr. Bhattacharjee’s
testimony in this regard, because they are not consistent with Winkler’s
disclosures. As stated above, Winkler modifies a map element upon
detecting a certain amount of activity at the location of the map element,
such as by detecting a certain number of comments for the coffee shop map
element. But this event is triggered regardless of the location of the mobile
devices that transmitted the comments for the coffee shop. Thus, such map
elements do not constitute “a location where at least one other mobile device
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has engaged in documenting action within a predetermined period of time,”
as recited in each of claims 1, 10, and 13.
In Reply, Petitioner raises for the first time the embodiment of
“hidden” map elements. Id. at 12. Petitioner characterizes this as a
“response” to Patent Owner’s arguments. But it is not so. Petitioner’s new
argument in Reply is that the “hidden” map elements become an “action
spot” when those map elements are displayed after an event occurs. Id.
(citing Bhattacharjee 2d Decl. ¶¶ 6263). Petitioner then goes on to expand
on three scenarios for Winkler’s Figure 5 that would teach a map element as
an action spot—curing the deficiencies noted above. Id. at 1221.
Petitioner footnotes this expansion as arguments in the Reply that build on
the Petition’s initial analysis within a ground. Reply n.4 (citing Intellectual
Ventures II LLC v. Ericsson Inc., 685 F. Appx. 913, 91922 (Fed. Cir.
2017). We are not persuaded that these belated arguments presented by
Petitioner in its Reply are proper.
There is a difference between expanding on allegations made in the
Petition, and changing the thrust of an initial obviousness position. What
Petitioner has done here falls under the latter category. The Petition lacks
any allegation that a newly-disclosed combination of events (a new
obviousness theory) would result in the claimed “action spot.” See Sur-
Reply 1621 (Patent Owner arguing that Petitioner now presents a number
of combinations of unique pairings of conditions that are a shift in the
position presented in the Petition). Furthermore, Petitioner’s new positions
presented for the first time in its Reply reflect substantive deficiencies that
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do not remedy the fact that Winkler does not track the location of users at
the time they transmit a comment.
For instance, Petitioner’s Scenario 1 concocts a hypothetical of two
users, with mobile devices X and Y, being within a preselected distance
from each other (one event) and, coincidentally, user with mobile device Y
(as a “hidden” element) engages in “documenting activity” (purportedly
another event). See Reply 1417. Even if we assumed that Winkler
discloses that a user could be a “hidden” element, which it does not,5 the
documenting activity Petitioner relies on fails to meet the “determine an
action spot” limitation.6 Petitioner has identified the transmission of
messages or comments as the documenting activity. Pet. 2425
(“‘[a]ctivity’ can specifically correspond to mobile devices transmitting
messages, such as by commenting on a location, or sending emails or
texts”). Comments are entered by users about the location, and the comment
is entered into the tag. See Ex. 1004, 1:1012, 2:1923, 6:2629, 8:79,
12:3841. Petitioner’s Scenario 1 is vague in identifying what is the
documenting activity in which Y has engaged. Indeed, Petitioner’s Scenario
1 only states that device Y is “engaging in documenting activity at this
location” (i.e., at the alleged “action spot” location). Reply 16, 18. With

5 Ex. 1004, 11:5658 (stating that a “location is associated with a hidden
map element”). Winkler does not use “location” to refer to “users.”
6 The Petition failed to explain the “hidden” map element embodiment and
how, as an “action spot,” Winkler would indicate the “activity level” by
merely changing from “hidden” to a displayed map element. See Sur-Reply
2122.
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such a vague assertion, there is insufficient evidence to ascertain whether the
location of Y would indeed be an “action spot” per the initial theory
advanced in the Petition.
Nevertheless, the claim language requires that the documenting action
and the location of the action spot are the same location. Recall, however,
that Winkler does not track comments, messages, or texts by the location at
which those are transmitted by a user. Petitioner did not identify what
would Y comment on or to whom would Y communicate. The omission is
significant. If we assumed that Y is sending a comment to X at the “action
spot” location (which again, Winkler only describes commenting on
“locations” not users), as explained earlier, device Y uses the
communication mode accessed by tapping on the map element of device X
(by tapping on the screen the tag that belongs to the person he or she wants
to communicate with). Ex. 1004, 7:498:27. As for emails or texts or other
messages sent directly to X, Winkler accesses the device’s client
applications (email, instant messaging, etc.)—with no disclosure whatsoever
that Winkler captures the location at which those messages are transmitted.
See id. 8:3945.
So, even assuming that device Y is engaging in a documenting action
that Winkler detects as an event, i.e., a comment on a map element, such a
communication is entered in the table for the location of device X, not at the
location where Y, the mobile device that transmits the comment, is located.
That is, in the best case scenario, coupled with a hindsight viewpoint, X and
Y must share the same location while Y is transmitting the message to X.
This scenario defies logic because why would Winkler teach that a user
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would add a comment on another user’s map element when both are
standing at the same location?
Scenario 2 fares no better. In this scenario, Petitioner leverages again
the “hidden” map element embodiment, which again, was not explained in
the Petition for the proposition now alleged—that the “hidden” map element
may identify a “user” and become an action spot simply because another
user may approach and document from that location. Again, the Petition
identifies the commenting or messaging as the “activity,” but now Petitioner
relies on the approach of a user in proximity to a “hidden” map element. In
other words, Petitioner has shifted which activity constitutes the “activity”
performed by other mobile users. The Reply now relies on a hypothetical
other mobile user performing two “activities” concurrently, approaching the
tagged location, although hidden at this point, and documenting from that
location. This Scenario 2 also requires two devices on the same spot, one is
hidden while the other “engages in documenting activity there.” Reply
1718 (Petitioner asserting the documenting action generally, with no detail
or explanation as to whom is the device transmitting messages to or what
location the user is commenting on). Because the location X is hidden, there
is no visible map element for Y to enter a comment into that location. And
if the map element for X is not visible, there is no way for Y to communicate
with it. Therefore, Scenario 2 is not only impermissible new mappings of
Winkler to the elements of the claim, but it is an unworkable example
untethered from the reality of how Winkler operates.
Scenario 3 is flawed for the same reasons identified above in
connection with Scenario 2. Scenario 3 also presupposes the hindsight
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requirements of approaching a map element within a predetermined distance
and adding an undisclosed documenting action at the same location of the
map element. Reply 1921. We do not belabor the same explanations of
shifting theories and vague allegations concerning the alleged documenting
activity that might result in an “action spot.” Petitioner’s assertions in the
Reply with regard to Winkler depart significantly from the theory of
obviousness and mapping initially disclosed in the Petition. As our
reviewing court has stated, “[o]nce the Board identifies new issues presented
for the first time in reply, neither this court nor the Board must parse the
reply brief to determine which, if any, parts of that brief are responsive and
which are improper.” Acceleration Bay, LLC v. Activision Blizzard, Inc.,
908 F.3d 765, 775 (Fed. Cir. 2018) (citing the Office Patent Trial Practice
Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012))
We, therefore, determine that Petitioner has not shown by a
preponderance of the evidence that Winkler teaches or suggests the
“determine an action spot” limitation of claims 1, 10, and 13. We do not
address other deficiencies present in Petitioner’s Reply arguments
concerning the Winkler ground. But we do repeat that, in addition to the
noted deficiencies, the scenarios presented in the Reply for the “determine
an action spot” limitation are all outside the scope of a proper challenge to
Patent Owner’s Response. See Ariosa Diagnostics v. Verinata Health, Inc.,
805 F.3d 1359, 136768 (Fed. Cir. 2015) (finding reasonable the Board’s
judgment about when a Reply contention crosses the line from the
responsive to the new).
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The theories presented in the three scenarios identified above combine
“events” never before disclosed in the Petition as meeting the claim elements
and the corresponding explanations are vague, thereby making it difficult to
ascertain their merits. We view Petitioner’s new explanations in its Reply as
indicative of hindsight, where Petitioner has selected a combination of
modes of operation in Winkler and has taken liberties with describing these
modes that can only be guided by the claim limitations themselves.
For at least the reasons summarized above, we determine that
Petitioner has not shown by a preponderance of the evidence that
independent claims 1, 10, and 13 are unpatentable as obvious over the
combination of Winkler and Altman. We further determine, that by virtue of
their dependency, Petitioner has not shown by a preponderance of the
evidence that claims 2, 3, 8, 11, 14, and 15 are unpatentable as obvious over
the combination of Winkler and Altman.
IV. PATENT OWNER’S MOTION TO AMEND
Patent Owner filed a Non-Contingent Motion to Amend in this
proceeding seeking to replace original dependent claim 2 with substitute
claim 21. MTA, 1. For the reasons that follow, we grant Patent Owner’s
motion.
A. APPLICABLE LAW
In an inter partes review, amended claims are not added to a patent as
of right, but rather must be proposed as a part of a motion to amend.
35 U.S.C. § 316(d). The Board must assess the patentability of proposed
substitute claims “without placing the burden of persuasion on the patent
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owner.” Aqua Prods., Inc. v. Matal, 872 F.3d 1290, 1328 (Fed. Cir. 2017)
(en banc); see Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15
at 3‒4 (PTAB Feb. 25, 2019) (precedential). Subsequent to the issuance of
Aqua Products, the U.S. Court of Appeals for the Federal Circuit issued a
decision in Bosch Automotive Service Solutions, LLC v. Matal, 878 F.3d
1027 (Fed. Cir. 2017) (“Bosch”), as well as a follow-up order amending that
decision on rehearing. See Bosch Auto. Serv. Sols., LLC v. Iancu, No. 2015-
1928 (Fed. Cir. Mar. 15, 2018) (Order on Petition for Panel Rehearing).
In accordance with Aqua Products, Bosch, and Lectrosonics, a patent
owner does not bear the burden of persuasion to demonstrate the
patentability of the substitute claims presented in the motion to amend.
Rather, ordinarily, “the petitioner bears the burden of proving that the
proposed amended claims are unpatentable by a preponderance of the
evidence.” Bosch, 878 F.3d at 1040 (as amended on rehearing);
Lectrosonics, Paper 15 at 3–4. In determining whether a petitioner has
proven unpatentability of the substitute claims, the Board typically focuses
on “arguments and theories raised by the petitioner in its petition or
opposition to the motion to amend.” Nike, Inc. v. Adidas AG, 955 F.3d 45,
51 (Fed. Cir. 2020).
Notwithstanding the foregoing, a patent owner’s proposed substitute
claims must meet the statutory requirements of 35 U.S.C. § 316(d) and the
procedural requirements of 37 C.F.R. § 42.121. Lectrosonics, Paper 15 at 4–
8. Accordingly, a patent owner must demonstrate: (1) the amendment
proposes a reasonable number of substitute claims; (2) the proposed claims
are supported in the original disclosure (and any earlier filed disclosure for
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which the benefit of filing date is sought); (3) the amendment responds to a
ground of unpatentability involved in the trial; and (4) the amendment does
not seek to enlarge the scope of the claims of the patent or introduce new
subject matter. See 35 U.S.C. § 316(d) (2018); 37 C.F.R. § 42.121.
B. PROPOSED SUBSTITUTE CLAIM
Patent Owner presents a claim that rewrites original claim 2 into
independent form and adds additional limitations. MTA, 1. Below is a
marked-up version of proposed substitute claim 21, showing in underlining
only the limitations added to subject matter of original claims 1 and 2:
21. A mobile device comprising:
a touch sensitive display; and
a processor module communicatively coupled to the touch
sensitive display and configured to receive executable
instructions to:
display, after an application configured to determine action
spots has been selected, a graphical user interface comprising an
interactive map on the touch sensitive display, wherein the map
includes geographic locations and is manipulatable by user input on
the touch sensitive display;
receive data indicative of a current location of the mobile
device;
determine at least one action spot within a predetermined
distance from the current location of the mobile device, the at
least one action spot corresponding to a location where at least
one other mobile device has engaged in documenting action
comprising a posted video within a predetermined period of time;
signify the at least one action spot as a selectable graphical item
on the interactive map of the graphical user interface and the current
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location of the mobile device as an icon on the interactive map of the
graphical user interface; and
provide an indication of activity level including video recording
activity at the least one action spot;
wherein the indication of activity level includes coloring the
selectable a graphical item associated with the at least one action spot
in accordance with a range of activity occurring at the at least one
action spot; and
provide a pop-up display of said posted video on the
graphical user interface of the touch sensitive display.
MTA, Appendix A.
C. ANALYSIS – STATUTORY AND PROCEDURAL REQUIREMENTS
1. Reasonable Number of Substitute Claims
35 U.S.C. § 316(d)(1)(B) requires that the number of substitute claims
be reasonable. See also 37 C.F.R. § 42.121(a)(3). Patent Owner presents
one substitute claim corresponding to original claim 2. MTA, 1, Appendix
A. This one-for-one substitution is reasonable. 37 C.F.R. § 42.121(a)(3)
(“The presumption is that only one substitute claim would be needed to
replace each challenged claim . . . .”).
2. No Enlargement of the Scope of the Claims
35 U.S.C. § 316(d)(3) requires that the amendment not seek to enlarge
the scope of the claims. See also 37 C.F.R. § 42.121(a)(2)(ii). Patent Owner
contends that proposed substitute claim 21 merely rewrites claim 2 in
independent form, without removing original elements, and adds new
features or elements. MTA 1. Petitioner does not dispute Patent Owner’s
arguments that the amendments do not enlarge the scope of the claim. We
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agree that proposed substitute claim 21 does not enlarge the scope of the
original claim 2, or any other challenged claim.
3. No Introduction of New Matter/Support in the Original Disclosure
35 U.S.C. § 316(d)(3) additionally requires that the amendment not
introduce new subject matter. See also 37 C.F.R. § 42.121(a)(2)(ii).
37 C.F.R. § 42.121(b) requires that a motion to amend set forth the support
in the original disclosure for each substitute claim. “Importantly, to meet
this requirement, citation should be made to the original disclosure of the
application, as filed, rather than to the patent as issued.” Lectrosonics, Paper
15 at 8. The test for determining compliance with the written description
requirement is whether the disclosure of the application as originally filed
reasonably conveys to a person of ordinary skill in the art that the inventor
had possession of the claimed subject matter at the time of filing, rather than
the presence or absence of literal support in the specification for the claim
language. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.
Cir. 2010) (en banc); Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed.
Cir. 1991); In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983).
Patent Owner asserts that the limitations of a “touch sensitive
display,” “displaying an interactive map” after selecting “an application
configured to determine action spots,” activity level that comprises “a posted
video,” signifying the action spot as a “selectable graphical item,” and a
“pop-up display of said posted video” are described in US Application No.
12/870,676 (“the ’676 application”) from which the ’327 patent issued.
MTA 16. For the “touch sensitive display,” Patent Owner points out that
the ’676 application describes a mobile device with a display screen that can
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be a touch sensitive display screen. MTA 2 (citing Ex. 2007 ¶ 26). For the
“interactive map,” Patent Owner points out that the ’676 application
describes the graphical user interface as an interactive map. Id. at 23
(citing Ex. 2007 ¶ 20). In addition, Patent Owner points out that the map,
according to the ’676 application, can include graphical representations of
locations and that the map allows the user to select graphical items and
manipulate the map. Id. at 3 (citing Ex. 2007 ¶¶ 2728). For the
documenting action comprising “posted video” and activity level comprising
“video recording activity,” Patent Owner points out that the ’676 application
describes that documenting actions include virtual postings, which may
include posting a video recording, and that activity levels indicate the level
of video camera activity, such as the number of video recordings being
posted. Id. at 4 (citing, e.g., Ex. 2007 ¶¶ 33, 41). For the limitation of
“selectable graphical item on the interactive map of the graphical user
interface,” Patent Owner points out that Figure 3’s embodiment of the
’676 application depicts action spots signified as graphical items that are
clouds.” Id. at 5 (citing Ex. 2007, Fig. 3, ¶ 30). Finally, for the “pop-up
display of said posted video,” Patent Owner points to Figure 6’s
embodiment of the ’676 application, which discloses a “pop-up window
610” that “displays the most recent captured photo that was posted on a
virtual posting.” Id. at 6 (citing Ex. 2007, Fig. 6, ¶ 48). Patent Owner points
out that the pop-up window displays other “recent postings.” Id. (citing
Ex. 2007 ¶ 48). Because video postings is one of the type of postings
disclosed, Patent Owner contends that the ’676 application provides support
for the “pop-up window” that displays the “posted video.” Id.
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Petitioner challenges the written description support for the “pop-up
window” limitation, arguing that the ’676 application does not disclose the
display of posted video. MTA Opp. 4. Petitioner posits that paragraph 48 of
the application provides various examples, none of which describes
displaying video posting activity. Id. We issued Preliminary Guidance
concerning the motion and explained there, as we do here, that Petitioner’s
argument concerning written description support for this limitation is not
persuasive. PG 7. Petitioner reiterates in its Reply to the Preliminary
Guidance that proposed substitute claim 21 requires a pop-up display of
“said posted video,” which imposes a number of requirements that the ’676
application does not disclose. MTA Reply 1112 (arguing that the “original
disclosure does not demonstrate the patentee was in possession of such a
pop-up display”). After considering Petitioner’s Reply to the Preliminary
Guidance and Patent Owner’s Sur-reply to the Preliminary Guidance, we
still maintain that Petitioner’s arguments are not persuasive.
We reiterate what we stated in the Preliminary Guidance, as our
determination on this issue has not changed. The Specification of the ’676
application describes displaying a pop-up window proximate to the action
spot with the highest level of documenting activity, where the pop-up
window can display the most recent posting, which, as discussed above, can
include a video post. See Ex. 2007 ¶¶ 22, 32, 33, 35, 41, 48. But pop-up
windows are not limited to action spots with the highest level of
documenting activity, because paragraph 49 states that “directions can be
provided in a pop-up window 610 to any of the action spots 604, 608
selected by the user of the mobile device 100.” Id. ¶ 49. And the display of
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the most recent posting in a pop-up window is presented as an exemplary
implementation, not in a restrictive sense. See id. ¶ 48. Thus, in the context
of the entire Specification of the ’676 application, a pop-up window
displaying the most recent posting, would display a posted video when that
is the most recent posting for the action spot.7 Furthermore, we are
persuaded by Dr. McDaniel’s testimony that a person of ordinary skill in the
art would have understood that the ’676 application teaches a pop-up display
of a “posting” even if it is not in the form of a photo, because the ’676
application indicates several times that a posted video is a useful example of
such a “posting.” McDaniel 2d Decl. ¶ 138. If a skilled artisan would have
understood the inventor to be in possession of the claimed invention at the
time of filing, even if every nuance of the claims is not explicitly described
in the specification, then the adequate description requirement is met. See,
e.g., Vas-Cath, 935 F.2d at 1563 (Fed. Cir. 2010); Martin v. Johnson, 454
F.2d 746, 751 (CCPA 1972) (stating “the description need not be in ipsis
verbis [i.e., “in the same words”] to be sufficient”).

7 We note here that Petitioner attempted to address at oral argument two
Board cases in support of Petitioner’s written description arguments, but
neither of those cases has been designated precedential or informative. See
Tr. 4:16:4; Ex. 1029, 38. We sustained Patent Owner’s objection to the
slides attempting to introduce new evidence and arguments at the hearing.
Id.; see also Order Setting Video Hearing (Paper 28) (stating procedure for
objecting to demonstratives); see Dell Inc. v. Acceleron, LLC, 884 F.3d
1364, 1369 (Fed. Cir. 2018) (noting that the “Board was obligated to dismiss
[the petitioner’s] untimely argument . . . raised for the first time during oral
argument”).
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Upon consideration of the ’676 application disclosures presented by
Patent Owner as support for the additional limitations of proposed substitute
claim 21, we are persuaded that the additional limitations are supported in
the original application from which the ’327 patent issued.
4. Responsiveness to a Ground of Unpatentability Involved in the Trial
37 C.F.R. § 42.121(a)(2)(i) specifies that a motion to amend may be
denied where it “does not respond to a ground of unpatentability involved in
the trial.” Patent Owner contends that the additional limitations further
distinguish the prior art advanced in the Petition. MTA 6. Patent Owner
further contends that “certain features have also been added to address
potential, but not conceded, issues under 35 U.S.C. § 101.” Id. We agree
that this requirement is met.
5. Conclusion
Patent Owner’s motion meets the statutory requirements of 35 U.S.C.
§ 316(d) and the regulatory requirements of 37 C.F.R. § 42.121.
D. ANALYSIS – PATENTABILITY OF PROPOSED SUBSTITUTE CLAIM 21
After analysis of proposed substitute claim 21 we have determined
that Petitioner has not proven, by a preponderance of the evidence, that
proposed substitute claim 21 is unpatentable. We focus on the contentions
and theories raised by Petitioner: (1) obviousness over Lemmela and
Crowley combined with Eyal or Jaffe; (2) obviousness over Winkler and
Altman, combined with Eyal of Jaffe; (3) subject matter ineligibility under
§ 101; and (4) non-enablement. MTA Opp. 725. Because Petitioner’s
Winkler-based contentions here rely on the same arguments proffered for
independent claim 1 discussed above, having determined that Petitioner did
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not meet its burden of showing claim 1 unpatentable as obvious over the
combination of Winkler and Altman, we do not discuss further the
obviousness arguments concerning the combination of those references.8
1. Obviousness Based on Lemmela, Crowley, and Jaffe
Petitioner contends that the added features of proposed substitute
claim 21 focus on video related features. MTA Opp. 67. Petitioner relies
on the following references as teaching video posting and processing (id.):
(1) Jaffe: U.S. Patent No. 9,507,778 B2, issued November 29,
2016, filed as Exhibit 1013; and
(2) Eyal: U.S. Patent No. 10,454,995 B2, issued October 22, 2019,
filed as Exhibit 1014.9
We now address the added limitations of proposed substitute claim 21
and Petitioner’s contentions regarding those limitations with respect to the
Lemmela, Crowley, and Jaffe references.
i. Limitation Concerning the “Current Location Icon”
Proposed substitute claim 21 recites signifying on the interactive map
“the current location of the mobile device as an icon.” MTA, Appendix A

8 The theory of obviousness presented for proposed substitute claim 21 relies
on Winkler’s determination of “action spots” as identified in the Petition at
pages 2326 and as expanded upon on the Reply at pages 620. MTA Opp.
11. We determined above (Section III.D.2) that Petitioner’s arguments are
deficient on the merits because Winkler does not “determine an action spot”
as recited.
9 Although we introduce Eyal here as part of Petitioner’s contentions
regarding video features, we analyze the grounds concerning Eyal separately
further below.
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(21f) (the “current location icon” limitation). Petitioner contends that the
language of proposed substitute claim 21 does not require that the current
location icon be distinct from the action spot icon. MTA Opp. 9 (citing
Bhattacharjee 2d Decl. ¶ 166). Thus, Petitioner relies on Lemmela’s “icons”
that represent the group postings as corresponding to the “current location of
the poster.” Id. (citing Ex. 1005 ¶ 33). We understand the “poster” in
Petitioner’s contention to refer to the mobile user that is transmitting
location-based posts from the location, or potential “action spot.”
In our Preliminary Guidance, we indicated preliminarily that based on
the record developed at that time, which did not include Patent Owner’s Sur-
Reply, Petitioner’s arguments seemed persuasive to show the “current
location icon” limitation of proposed substitute claim 21. PG 10. However,
based on the full record before us, we no longer hold that view. See PG 3
(“We emphasize that the views expressed in this Preliminary Guidance are
subject to change upon consideration of the complete record, including, if
applicable, any revision to the Motion filed by Patent Owner. Thus, this
Preliminary Guidance is not binding on the Board when rendering a final
written decision.”) (citing Notice Regarding a New Pilot Program
Concerning Motion to Amend Practice and Procedures in Trial Proceedings
Under the America Invents Act Before the Patent Trial and Appeal Board,
84 Fed. Reg. 9,497 (Mar. 15, 2019)).
In the Sur-Reply responding to Petitioner’s Reply to the Preliminary
Guidance, Patent Owner challenges this “current location icon” limitation.
MTA Sur-Reply 8. In particular, Patent Owner argues that a “poster” is the
other mobile device, whose documenting activity results in the “action spot”
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determination. Id. at 8. This is different from the claim requirement of
signifying with an icon “the current location of the mobile device.” Id.
We agree with Patent Owner that Petitioner’s cited passages of
Lemmela and Petitioner’s arguments regarding the “current location icon”
do not show that Lemmela teaches the “current location icon” limitation.
Proposed substitute claim 21 recites two distinct mobile devices, there is a
mobile device whose current location is received and signified as a graphical
icon on the interactive map. MTA, Appendix A (21d). The other mobile
device is the one who has engaged in documenting activity. Id. at (21e).
Petitioner conflates the role of the two mobile devices by pointing to
Lemmela’s “poster,” (read here the mobile device that transmits a location-
based posting) rather than the mobile device whose user is searching for
“action spots” on the map. Because the claim requires an “icon” for the user
seeking the “action spots,” we are not persuaded that Petitioner’s contention
of Lemmela’s “poster” being coincidentally located at the “cloud” location
meets the burden.
We understand that there might be a circumstance in which a user
who is searching for “action spots” may also be a “poster.” Although we do
not see Petitioner’s arguments as explaining such a scenario, out of an
abundance of caution, we express our view that such a scenario fails to meet
the claim limitation. The claim requires the display of two things: an “icon”
(for the mobile device current location) and a “graphical item” (for the
“action spot”). Petitioner’s contention here is that a single graphical
element, i.e., Lemmela’s cloud, which signifies the “action spot,” is, at the
same time, the “icon” signifying the mobile device. Such conflation of two
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separate claim elements is inappropriate—it fails to show that Lemmela
would display both the “graphical item” and “icon.” See Unique Concepts,
Inc. v. Brown, 939 F.2d 1558, 1561–64 (Fed. Cir. 1991) (holding that a
claim’s “separate[]” “recitation of two distinct elements” should be given
“full effect”).
Finally, we note that Petitioner’s Opposition to the Motion to Amend,
in discussing the “current location icon” limitation, provides no discussion
of alternative positions of obviousness with regard to this limitation.
Petitioner cites to 10 paragraphs of the Bhattacharjee Declaration in this
portion of the brief, explaining only the relevance of paragraph 166, which
we discussed above. In paragraph 167 of the Declaration, however,
Dr. Bhattacharjee testifies about an alternative contention that it would have
been obvious to include in Lemmela a separate icon providing the user
device’s current location. See Bhattacharjee 2d Decl. ¶ 167 (alleging that an
iPhone would have shown an icon signifying the user’s current location).
Petitioner did not present nor develop this contention in its substantive
papers. And during oral argument, after our request for Petitioner to discuss
the disputed limitations, Petitioner chose to argue other issues.
Tr. 19:1620:3. In short, Petitioner did not address in its substantive papers
(or at oral argument) the contention that, in the alternative, the “current
location icon” limitation would have been obvious over Lemmela and
additional evidence. Our rules state that “[t]he Board may exclude or give
no weight to the evidence where a party has failed to state its relevance or to
identify specific portions of the evidence that support the challenge.”
37 C.F.R. § 42.104(b)(5). Our rules further state that “[a]rguments must not
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be incorporated by reference from one document into another document.”
Id. at § 42.6(a)(3).
In the Opposition, Petitioner states that Lemmela discloses the
“current location icon” limitation and cited to paragraphs 158 through 168 of
the Second Bhattacharjee Declaration. See MTA Opp. 9. The alternative
contention of obviousness over Lemmela in the Bhattacharjee Declaration at
paragraph 167 is not mentioned or discussed in the Opposition, effectively
burying this alternative argument in an exhibit. For this reason, we have the
above-mentioned rules prohibiting both incorporating arguments by
reference and citing to Exhibits without some explanation of their relevance.
Petitioner here has acted against both prohibitions because, by incorporating
ten paragraphs of Declaration testimony in the brief, Petitioner attempted to
rely on Declaration testimony without explaining that the testimony includes
additional contentions of obviousness. We do not give any weight to
Petitioner’s alternative argument, because, as it was omitted from its
substantive briefs, Patent Owner was not sufficiently on notice of it, and,
therefore, did not have a fair opportunity to respond. See In re Nuvasive,
841 F.3d 966, 970–71 (Fed. Cir. 2016) (holding that under the
Administrative Procedure Act a patent owner must be given adequate notice
of and an opportunity to respond to petitioner’s invalidity contentions).
Accordingly, we are persuaded that Petitioner has failed to
demonstrate that Lemmela teaches the “current location icon” of proposed
substitute claim 21.
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ii. “documenting action comprising a posted video”/“activity level
corresponding to posted video and recording activity”/”provide a pop-up
display of said posted video”
Petitioner does not rely on Lemmela to teach “documenting action
comprising a posted video” (the “posted video” limitation) and “activity
level comprising video recording activity” (the “video recording” limitation)
recited in proposed substitute claim 21. MTA Opp. 910. Instead,
Petitioner asserts that Jaffe teaches related systems that process video posts.
Id. at 10 (citing Bhattacharjee 2d Decl. ¶¶ 16988). According to Petitioner,
it would have been obvious to combine the teachings of Jaffe with those of
the Lemmela-Crowley combination, and the resulting combination would
have (1) determined action spots where “documenting action” comprises a
posted video, and (2) indicated “activity level” that includes video recording
activity. Id. at 10.
As for the “pop-up display,” Petitioner relies on Jaffe as teaching the
limitation. Id. at 1213. In particular, Petitioner relies on Jaffe’s disclosure
of “squares” or “thumbnail images” overlying the map, and argues that the
“icons,” depicted in Figure 2B, may be selected by a user to provide a pop-
up display of the underlying video post. Id. at 13 (citing Ex. 1013, Figs.
2A2B, 4, 5:4349, 6:610).
We begin our analysis of these “video post” limitations with the
assertions concerning Jaffe. A summary of Jaffe is in order and is set forth
below.
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Jaffe
Jaffe is entitled “Summarization of Media Object Collections.”
Ex. 1013, code (54). Jaffe describes that the popularization of digital
photography has led to the creation of large collections of photographs. Id.
at 1:1417. Jaffe also describes the difficulty of navigating large collections
of photographs and the inability of computers to understand the content of
the photographs. Id. at 1:1719. In particular, Jaffe notes that “viewing and
interacting with such collections has a broad social and practical
importance” because “billions of images” constitute a growing record of our
culture and shared experience. Id. at 1:1924. To improve viewing
photographs and navigating large collections of photographs, digital
photography has improved by implementing geographical referencing,
whereby photographs are connected to “metadata describing the geographic
location in which they were taken (whether by GPS, or other location
technologies).” Id. at 1:1733. With the ubiquitous camera phones of
mobile phones, images may be associated with geographic data so an
increased number of geo-referenced photos are available online. Id. at
1:3439. Geo-referenced photographs can be “categorized geographically
or displayed on a map, providing a rich spatial context in which to view a
collection of photographs.” Id. at 1:4144. But displaying photographs on a
digital map creates clutter as the number of photographs to display increases,
leading to overlapping photos and making viewing and finding specific
photos more difficult. Id. at 1:4553.
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Jaffe then explains the ability to summarize a collection of
“geographically referenced media objects (e.g., still or moving images, audio
files, and the like).” Id. at 1:6062. Jaffe selects a subset of media objects
based on a pattern of the media objects within a spatial region. Id. at
1:6265. For instance, the pattern may be “the density and location of the
media objects with a particular spatial region of interest.” Id. at 1:6567.
Jaffe explains the summarization logic in connection with Figure 2B,
reproduced below.
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Figure 2B of Jaffe illustrates map 200 with a summary of the media
objects produced by the summarization logic of media server 100 (not
shown). Ex. 1013, 5:5660.
Jaffe explains that a particular spatial region of interest may have a
subset of media objects 220 that enables users to find items more easily and
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browse more efficiently through large-scale geo-referenced photograph
collections. Id. at 5:626:2. The display logic presents the media objects as
thumbnail images over map 200, which may be expanded in response to user
input. Id. at 6:68. For example, scrolling over media object 220a generates
the display of a larger image 230. Id. at 6:810. Jaffe explains that “[i]t will
be recognized that in some example a client may further expand image 230,
download image 230 to a user device, transfer (e.g., via email) image 230 to
other clients, and the like.” Id. at 6:1013.
Jaffe also provides additional features of summarizing the collection
of media objects by clustering a collection of media objects in a hierarchical
structure. Id. at 2:1520. This structure involves ranking the media objects
into sub-clusters. Id. at 2:2023. For instance, a semantic zoom level
function provides the ability to select a subset of the media objects. Id. at
2:4146. Jaffe recognizes that image analysis alone is generally poor at
understanding the semantics content of an image. Id. at 6:4547. Jaffe’s
summarization logic adds meta-data to the photographs based on patterns in
the photographs and user’s photographic behavior. Id. at 6:5558. For
example, Jaffe’s algorithm inputs metadata, such as where the photograph
was taken, by whom, and at what time, as well as textual-topical patterns in
the data, such as textual tags associated with the photograph (e.g., user
inputted tags). Id. at 6:637:1.
Jaffe further generates “tag” maps. Id. at 13:1718. For instance,
Jaffe’s algorithm may be used to generate a visualization of geo-referenced
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collections based on textual tags that are associated with the data. Id. at
1920. Figure 4, reproduced below, illustrates such a tag map.

Figure 4 of Jaffe illustrates an exemplary tag map 400 based on a
manipulation by summarization logic. Ex. 1013, 13:2022.
Tag map 400 displays tags 430 (or textual topics), that are associated
with specific locations on the map. Id. at 13:2224. According to Jaffe,
Tags that are deemed relevant (e.g., according to summarization
logic or methods described) may be shown at the location where
they “occur” (e.g., based on their geo-locations or user supplied
meta-data), and in one example may be displayed in a size that
corresponds to the tag’s importance (which may be based on
various attributes of the collection, system, or user), as shown in
FIG. 4.
Id. at 13:2431. Map 400 represents San Francisco, California, and displays
tags 430 that represent “photograph spots” and not necessarily the locations
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of the objects themselves. Id. at 13:3840. For example, the “Golden Gate
Bridge” tags, which are shown in multiple locations, are in locations other
than the physical location of the Golden Gate Bridge. Id. at 13:4143.
Finally, Jaffe describes that, although digital photographs and still
images are used to describe the examples of media objects,
those skilled in the art will recognize that the various examples
apply similarly or equally to other media objects, subject to
appropriate modifications and use of other functions where
appropriate (e.g., viewing a media object may apply to viewing
a still or moving image or listening to an audio media object,
such as a soundtrack).
Id. at 3:634:4. The upload from the client may conform to any media
format, such as “still image (e.g., JPEG, TIFF), video (e.g., MPEG, AVI), or
audio (e.g., MP3, OGG).” Id. at 4:5457.
Analysis of Lemmela-Crowley Combination With Jaffe’s Teachings
Petitioner argues that combining Jaffe’s teachings with those of
Lemmela and Crowley would have resulted in the “Lemmela-Crowley
system processing video posts instead of, or in addition to, Lemmela’s
textual posts.” MTA Opp. 11 (citing Bhattacharjee 2d Decl. ¶¶ 180–182,
187). Petitioner posits that videos could have been associated with words
just like textual posts because videos contain associated metadata, which
often included textual tags. Id. Petitioner particularly relies on Jaffe stating,
“Jaffe’s video posts contained ‘textual tags’ identifying related ‘textual
topics’ and were grouped according to these tags.” Id. (citing Ex. 1013,
Fig. 4, 2:5662, 4:6166, 6:637:48, 10:5060, 13:2248).
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As for reasons to combine, Petitioner asserts the following three
rationales:
(1) “Modifying Lemmela-Crowley in view of Eyal or Jaffe would
have involved combining prior art elements according to known
methods to yield predictable results” (id. at 1415) (the “KSR Known
Elements Combination” Theory);
(2) “Modifying Lemmela-Crowley in light of Eyal or Jaffe would
have involved simple substitution of one known element for another
to obtain predictable results” (id. at 15) (the “KSR Substitution”
Theory); and
(3) “Modifying Lemmela-Crowley in light of Eyal or Jaffe would
have also involved the use of known techniques to improve similar
systems in the same way” (id. at 16) (the “KSR Improvement”
Theory). The need for improvement of allowing video in Lemmela’s
system allegedly is shown in Jaffe: “the ‘broad social and practical
importance’ of ‘viewing and interacting’ with video posts.” Id. at 16
(citing Ex. 1013, 1:1421).10
See also PG 1011 (noting the three asserted theories and our preliminary
determination that they were not sufficiently explained).
In the Reply to the Preliminary Guidance, Petitioner reiterates its
position that “video posts” were known, as taught in Jaffe, and that it was

10 Our analysis of the rationales with respect to Eyal are discussed further
below. We note here simply that Petitioner proffered the same rationales for
the combination with either reference, Jaffe or Eyal.
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known that devices, such as the mobile device of Lemmela, supported video
capture. MTA Reply 12. Petitioner faults our Preliminary Guidance as
applying a “rigid approach” rejected by KSR because we require a reason
why a person of ordinary skill in the art would have combined the teachings
as asserted. Id. at 3. Petitioner posits that it is enough to assert the
obviousness theories stated in KSR (the KSR Known Elements Theory, the
KSR Substitution Theory, and the KSR Improvement Theory), without any
further reasoning. Id. at 34. As an example of its contention, Petitioner
relies on Uber Techs, Inc. v. X One, Inc., 2020 WL 2123399 (Fed. Cir. May
5, 2020), as standing for the proposition that a person of ordinary skill in the
art has sufficient motivation to combine teachings when the separate
elements of the claim are in the prior art and the combination yields
predictable results. Id. at 4. That is, here, because video recording and
posting were known in Jaffe, and Lemmela and Crowley teach the other
claim elements, the motivation to combine is proper by merely showing that
Lemmela-Crowley would have performed “as usual.” Id.
As to the specific combination, Petitioner relies on Jaffe’s Figure 4,
which shows the tag map, as described earlier, and Lemmela’s map display
showing, for instance, the salient word “shopping.” MTA Opp. 15 (citing
Ex. 1005 ¶¶ 716; Ex. 1013, Fig. 4, 13:2248, 2:5662, 4:6166, 6:637:1,
7:3948, 10:5060). Petitioner concludes: “Because the combination was
known in the art, the result would have been predictable.” Id. As we
understand it, Petitioner’s contention is that Jaffe discloses both the display
of video posts on a map and the display of “salient words”—and based on
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this disclosure, Jaffe’s teachings would have been combined with Lemmela
merely because it would have yielded a predictable result.
Patent Owner challenges Petitioner’s reasons to combine
characterizing them as “vague entreaties to KSR.” MTA Sur-Reply 1.
Patent Owner further raises a point of dispute regarding Petitioner’s reliance
on Jaffe. Patent Owner notes an internal inconsistency in Petitioner’s theory
of obviousness, where Petitioner first relies on Figures 2A2B of Jaffe as
teaching the “graphical items that would ‘provide a pop-up display of []
underlying video posts.’” MTA Sur-Reply 5 (citing MTA Opp. 1314).
However, in the stated “reasons to combine,” the subject we are covering
here, Petitioner focuses on Figure 4 of Jaffe, which illustrates the tag map
that displays tags on a map. Id. (citing MTA Opp. 15).
We address each of the three identified theories in view of the
arguments presented.
The KSR Known Elements Combination Theory
The premise of this rationale is that Lemmela would have been
modified to include video posts in addition to or instead of the textual posts.
MTA Opp. 11 (“These combinations would have resulted in the Lemmela-
Crowley system processing video posts instead of, or in addition to,
Lemmela’s textual posts.”). For instance, Jaffe’s Figure 4 shows the tag map
with tags that identify locations where photographs may have been taken.
Ex. 1013, Fig. 4, 13:2031. Dr. Bhattacharjee opines that Jaffe’s tag map
describes a system akin to Lemmela and that the only difference is that Jaffe
explicitly contemplates the tags as relating to video posts. Bhattacharjee 2d
Decl. ¶ 209. Dr. Bhattacharjee states, “[b]ecause Jaffe already describes the
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combination of the Lemmela-Crowley system and Jaffe, this combination
clearly would have involved combining prior art elements according to
known methods to yield predictable results.” Id.
In our view, Petitioner has not done enough to meet its burden. Jaffe
describes that its tag map displays tags of metadata attributes of the media
objects. Ex. 1013, 1:5662. We find, however, that Jaffe displays the tags
instead of the thumbnail embodiments shown in Figures 2A2B. In
particular, Jaffe states, “[r]ather than display representative photographs at
their respective locations (e.g., as shown in FIG. 2B), this example conveys
concepts represented in the dataset through the metadata tags themselves.”
Ex. 1013, 13:3438. Thus, even assuming that Lemmela would have been
modified to include video posts, a contention that is addressed further below,
merely alleging that Lemmela would include video posts would not yield the
“icons” and “thumbnail images” on which Petitioner relies for the “pop-up
display” limitation. See MTA Opp. 1213 (Petitioner relying on Jaffe’s
icons like “squares” and “thumbnail images” which, when selected, provide
a pop-up display of the underlying video posts); but see MTA Sur-Reply 5
(Patent Owner arguing that Jaffe never actually describes selecting such
textual tags on the tag map to thereby display the full media content). At
oral argument, Petitioner’s counsel alluded to being able to drill down from
the tag map to eventually view the video posts. Tr. 23:2227. Patent Owner
responded, and we agree, that Jaffe does not describe how to go from the
Figure 4 tag map to Figures 2A and 2B, which show the icons or thumbnails
of postings. Id. at 47:2448:3.
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It may be that Petitioner intended to combine with Lemmela the
multiple Jaffe display features in order to meet the new claim limitations.
But other than to include video posts, Petitioner does not explain any
modification of Lemmela that would yield displaying the icons or thumbnail
images that are selectable to view the posted video in addition to or as a
further drill down of the tag-map display.
As another example for why Petitioner’s contentions are insufficient,
we note that Lemmela is limited to processing textual posts and does not
process video. The video processing from Jaffe (or some other teaching),
therefore, must also be involved. Indeed, the manner in which Jaffe appends
metadata to media objects would have been necessary because Lemmela
does not teach tag insertion of media objects. See, e.g., Ex. 1013, 10:6162
(describing that each photograph is tagged with tags that are drawn from a
finite dictionary), 7:2530 (describing metadata attributes of the media
objects to include, among several attributes, textual tags that are manually
assigned).
The only “known element” Petitioner relies on is “grouping/
displaying video posts based on location” and “salient words,” as evidenced
by Jaffe. MTA Opp. 15. But that is an oversimplification of the
combination of Jaffe’s “video posts” with Lemmela’s teachings. According
to Petitioner, Jaffe contributes only the teaching of using video posts instead
of textual posts, resulting in Lemmela’s continued grouping and display of
the collection of location-based postings based on the “salient word”
processing. As stated above, other technical features are necessary for the
alleged modification of Lemmela to yield the alleged combination with
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video postings, and the record lacks sufficient explanation of the
modification or the combination of the needed technical features. See also
Ex. 2003 ¶ 147 (Dr. McDaniel testifying that “modifying Lemmela’s
original solution (which relied on text-based filtering) to instead employ
posted video . . . would have required a drastic destruction and hindsight
reconstruction of Lemmela’s system.”).
Furthermore, merely asserting that the elements of the combination
were each, individually, known does not show why a person of ordinary skill
in the art would have made the asserted combination. It is Petitioner’s
burden to show that “the combination of familiar elements according to
known methods is likely to be obvious when it does not more than yield
predictable results.” KSR, 550 U.S. at 416; see 35 U.S.C. § 316(e). The
Supreme Court recognized that a patent is not proved obvious merely by
demonstrating that each element was independently known in the prior art
and that “it can be important to identify a reason that would have prompted a
person of ordinary skill in the relevant field to combine the elements in the
way the claimed new invention does.” KSR, 550 U.S. at 418. Our analysis
of Petitioner’s contentions does not apply rigid or mandatory formulas as
Petitioner asserts. See MTA Reply 3. Rather, we look for evidence of a
reason that a person of ordinary skill in the art would have combined the
alleged known elements of Jaffe (grouping “video posts” based on location
and “salient words” or tags) in Lemmela’s system. The assertion that Jaffe
already discloses the combination is insufficient because Lemmela requires
modifications that go beyond the asserted generality of including “video
posts.” In its Opposition, Petitioner neither explains why a person of
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ordinary skill in the art would have modified Lemmela to implement Jaffe’s
teachings of “video posts” nor how it would result in the invention covered
by proposed substitute claim 21. See Personal Web Techs., LLC v. Apple,
Inc., 848 F.3d 987, 994 (Fed. Cir. 2017) (holding obviousness determination
to be improper where the record lacked a “clear, evidence-supported
account” of “how the combination” would work).
In sum, Lemmela’s modification would involve more than just
implementing “video posts.” Petitioner provides no explanation of the
modification other than the conclusory and vague assertion that Lemmela
would be modified to include video posts. Accordingly, we are not
persuaded that Petitioner has carried its burden of showing by a
preponderance of the evidence that a person of ordinary skill in the art would
have modified the alleged Lemmela-Crowley system with the relied-on
teachings of Jaffe.
The KSR Substitution Theory
According to Petitioner, modifying Lemmela would have involved a
simple substitution of one known element for another to obtain predictable
results. MTA Opp. 15 (citing KSR, 550 U.S. at 417). Under the KSR
Substitution Theory, Petitioner contends that combining Lemmela-Crowley
with Jaffe’s “video posts would have required substituting one type of
known post for another.” Id. at 16 (citing Bhattacharjee 2d Decl. ¶¶ 210,
217). As for predictability, Dr. Bhattacharjee testifies that “[t]he result
would have been predictable since, as shown above, the result is
substantially similar to the result disclosed in Jaffe.” Bhattacharjee 2d Decl.
¶ 210.
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In its Reply, Petitioner expands on its explanation and states that “the
proposed combinations would have resulted in nothing more than specifying
“the types of ’posts’ and ‘messages’ used as “inputs” to Lemmela’s system.
MTA Reply 5. Petitioner also presents “obvious to try” arguments,
including reliance on Uber Techs; but Petitioner clarified at the oral hearing
that the “obvious to try” arguments were part of the “substitution”
arguments. Tr. 21:46. The “substitution” arguments, Petitioner stated, are
its strongest. Id. at 21:2522:2, 51:2023. According to Petitioner, the
Uber Techs case is applicable here, where the substitution of Lemmela’s
textual posts presents four alternatives. Id. at 24:525:9 (arguing that four
alternatives is a finite universe of ways to communicate using a mobile
phone). Further, Petitioner stated that “[t]he activity level of Claim 1 is
based upon a number of images captured, number of videos captured, and
number of messages transmitted,” arguing thus that the universe of media
alternatives to consider is small. Id. at 52:17. Upon requesting that
Petitioner show in the briefs where in the Reply it presented the argument of
“four” or fewer alternatives, Petitioner could not point to any. Id. at 53:18
(arguing only that they are a “finite” number).
We do not agree with Petitioner that it has shown sufficiently a reason
to combine under the KSR Substitution Theory. First, an obvious to try
rationale and the KSR Substitution Theory are different obviousness
theories. The Supreme Court recognized on the one hand that “when a
patent claims a structure already known in the prior art that is altered by the
mere substitution of one element for another known in the field, the
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combination must do more than yield a predictable result.” KSR, 550 U.S. at
416. On the other hand, the Supreme Court noted that showing a
combination of elements was “obvious to try” involves the following
analysis: “When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable solutions, a
person of ordinary skill has good reason to pursue the known options within
his or her technical grasp.” Id. at 421. The former requires knowledge of
substitution of one element for another. The latter requires that there be
predictable solutions, a finite number of which would have been known
options within the technical grasp of a person of ordinary skill in the art.
Thus, the “obvious to try” reasoning, including reliance on Uber Techs is a
new analysis that was not included with the Opposition, which we did not
have an opportunity to consider in preparing the Preliminary Guidance, and
of which Patent Owner had no notice of until after the deadline to propose
further revisions to its proposed substitute claim.
Notwithstanding the unfair advantage of supplying a late contention in
the motion to amend process, we find that the “obvious to try” reasoning is
not applicable here. First, claim 1 of the ’327 patent does not recite any
number of finite alternatives to consider. Petitioner argued that claim 1
recites three alternatives, all three being options for a skilled artisan to
consider for the “activity level.” Tr. 52:17. Claim 1 of the ’327 patent,
however, does not recite any detail regarding what activity constitutes an
“activity level.” Second, the Specification of the ’327 patent describes the
“activity” of the mobile devices as (1) documenting action, (2) recording
action, and (3) any other action where the mobile device is being used to
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observe and make note of a location or an event currently occurring at the
location of the mobile device. Ex. 1001, 2:5563. Documenting action is
broken down into further mobile device action: text messaging, emailing,
blogging, posting a message on a social networking internet site or any other
documenting action. Id. at 2:5658. The recording action also provides
additional actions such as video recording, audio recording, or
photographing taken by a mobile device. Id. at 2:5960. Thus, even if we
were to use the Specification as evidence of potential options for “activity”
level, an exercise that has the danger of hindsight, the number of “options” is
not as limited as Petitioner asserts. See KSR, 550 U.S. at 426 (finding that
comparing the prior art with the description of the patented invention “would
be to engage in the very hindsight bias” that must rightly be avoided).
Furthermore, while all of the disclosed actions may indicate types of
“activity” of a mobile device, there is no evidence that all of those are
predictable solutions that a person of ordinary skill in the art, viewing
Lemmela, would have had good reason to pursue. See KSR, 550 U.S. at
421. Petitioner has the burden to come forward with evidence of a “good
reason” a person of ordinary skill in the art would have pursued all the
“activity” of the Specification in Lemmela’s system, aside from hindsight.
The Reply merely holds up the Uber Techs “obvious to try” holding
as stand-in for the proposition that Petitioner did not need to provide any
particular reason for its obviousness theories, i.e., that stating the reasons to
combine using the KSR framework was enough. But even if we were to
apply Uber Techs here, we find that Petitioner does not show in either its
Opposition or its Reply what finite number of alternatives a person of
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ordinary skill in the art would have had good reason to pursue (meaning that
identifying the finite solutions at oral argument for the first time, even if
those were a credible number of finite options, was not proper).
Accordingly, the “obvious to try” argument is not persuasive.
As for the KSR Substitution Theory, Petitioner similarly fails to show
the proper substitution analysis and proffers no reasonable reason for a
person of ordinary skill in the art to consider such a substitution. For
instance, Petitioner contends to substitute “one type of known post for
another.” MTA Opp. 16. Lemmela’s location-based postings are text-based
posts. Ex. 2003 ¶ 147 (Dr. McDaniel testifying that Lemmela’s system is
premised on filtering text-based postings into “salient word” groupings).
Thus, the proposed substitution is to use video postings instead of textual
posts. Those arguments and evidence are not enough. Dr. Bhattacharjee
does not expand or explain the substitution, for instance, to explain how
such a substitution would fit within Lemmela’s system or what design
incentives would prompt the substitution. As we stated earlier, the facts of
this case may not support the “simple substitution” framework stated in KSR
because of the changes to Lemmela necessary to accommodate “video
posts,” none of which are explained. A particular reason to combine is,
therefore, necessary to ensure that the combination is not a product of
hindsight. See KSR, 550 U.S. at 418 (stating that it will often be necessary
to look at “the effects of demands known to the design community or present
in the marketplace. . . in order to determine whether there was an apparent
reason to combine the known elements in the fashion claimed.”), 421 (“A
factfinder would be aware, of course, of the distortion caused by hindsight
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bias and must be cautious of arguments reliant upon ex post reasoning.”),
426 (finding that comparing the prior art with the description of the patented
invention “would be to engage in the very hindsight bias” that must rightly
be avoided).
Accordingly, we are not persuaded that Petitioner has demonstrated a
reasonable rationale under the KSR Substitution Theory.
KSR Improvement Theory
Petitioner asserts that the modification of Lemmela-Crowley in light
of Jaffe “would have also involved the use of known techniques to improve
similar systems in the same way.” MTA Opp. 16 (citing KSR, 550 U.S. at
417) (emphasis added). Regarding this theory, the Supreme Court stated
that, “if a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” KSR, 550 U.S. at 417 (stating also
that a “court must ask whether the improvement is more than the predictable
use of prior art elements according to their established functions.”).
Petitioner relies on “known techniques,” presumably referring to the “known
elements” discussed above with regard to the KSR Known Elements
Combination Theory, namely, grouping/displaying video posts based on
location and “salient words,” as evidenced by Jaffe. Id. at 15. But as stated
above, we have determined that the articulation of a “known” technique, by
itself, is too generic in comparison with the technical modifications that a
person of ordinary skill in the art would have had to additionally make to
Lemmela in order to arrive at the invention covered by proposed substituted
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claim 21. We do not repeat those here, but reiterate that merely asserting
that “video posts” are known is insufficient to explain how or why Lemmela
would display a tag map with underlying “video posts” in addition to icons
or thumbnails that would access the posted video for playback.
Petitioner further argues that Lemmela and Jaffe address similar
problems in the art. Id. at 16 (citing Bhattacharjee 2d Decl. ¶ 211); see also
MTA Reply 8 (Petitioner arguing that Jaffe describes “similar problems in
the prior art related to organizing collections of content”). According to
Dr. Bhattacharjee, the problem addressed by Lemmela and Jaffe is the same
and the solution is the same. Bhattacharjee 2d Decl. ¶ 211. Because of their
similarities, Dr. Bhattacharjee opines that a “person of ordinary skill in the
art would have been motivated to look to Jaffe for methods to improve or
expand the Lemmela-Crowley system.” Id. We do not credit this testimony
as it does not explain properly a reason to improve Lemmela. Focusing on
similarities or overall problems addressed goes to whether the references are
analogous, not whether a person of ordinary skill in the art would have
recognized that Jaffe is an improvement over Lemmela and that Lemmela
would benefit from Jaffe’s contribution. See Circuit Check Inc. v. QXQ Inc.,
795 F.3d 1331, 1335 (Fed. Cir. 2015) (“To be considered within the prior art
for purposes of the obviousness analysis, a reference must be analogous.”).
Furthermore, Petitioner has proffered similarities between Lemmela and
Jaffe that are too generic to be considered, merely focusing on an intended
purpose of organizing collections of posts with their respective systems. As
we explain further below, this is not enough.
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In the Reply, Petitioner argues that, “[w]hile not required under KSR,”
the record includes specific reasons for why a person of ordinary skill in the
art would have been motivated to “add video features to improve” the
“Lemmela-Crowley” system. MTA Reply 67. In particular, Petitioner
points out Jaffe’s disclosure of the “broad social and practical importance”
of viewing and interacting with “video posts.” Id. at 7 (citing Ex. 1013,
1:1421). Petitioner notes that in our Preliminary Guidance we did not give
credit to Petitioner’s contention because this Jaffe statement does not refer to
“video posts”—it refers to digital photographs. Id. (citing PG 11).
According to Petitioner, Jaffe “uses photographs and video interchangeably
and explains photographs are described simply ‘for sake of convenience’
and ‘those skilled in the art will recognize that the various examples apply
similarly or equally to other media objects’ including a ‘moving image’
(video).” Id. (citing Ex. 1013, 3:634:4). Petitioner also highlights that
Patent Owner has acknowledged that video posts are “an intuitive and
powerful social media mechanism.” Id. (citing MTA, 8, 21). Finally,
Petitioner asserts that Lemmela would gain the benefit of organizing video
posts because Lemmela states the advantage of presenting easily
understandable summary views of “meaningful/important/relevant
information,” especially for small screens. Id. at 8 (citing Ex. 1005 ¶ 9).
According to Petitioner, Lemmela’s “information” “would have allowed for
video.” Id.
Patent Owner challenges the Reply arguments outlined above as
presenting late theories that should be disregarded. MTA Sur-Reply 2
(citing Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 13301331
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(Fed. Cir. 2019)). Patent Owner argues that, on the merits, the “alleged
similarities” of the references do not constitute an articulated reasoning with
rational underpinning. Id. at 3. And with regard to Jaffe, in particular,
Patent Owner argues that “Jaffe’s goal for summarizing media collections is
[] markedly different from [] Lemmela’s desired results.” Id. (citing
Ex. 2003 ¶ 143). We are persuaded by Patent Owner’s arguments.
First, we start with Lemmela’s disclosure to assess whether Petitioner
has shown an alleged benefit associated with modifying Lemmela’s system.
We understand that Lemmela recognizes the proliferation of “electronic
notes” that users create. Ex. 1005 ¶ 2. Lemmela teaches that as more and
more mobile devices enable the creation of location-based postings, the
amount of that information will grow fast. Id. The “information” that
Lemmela refers to here is the “information about a location.” Id. That is,
Lemmela here is not referring to “information” that can be video, audio, or
photographs as Petitioner argues. Rather, the “information” is the textual
description that the user notes about the location being documented. For
instance, Lemmela discloses that the “information” is very useful because
“[u]sers can access and read postings specific to places they are at, such as
attending an event or visiting a new place.” Id. ¶ 3 (emphasis added). Thus,
when Lemmela refers to an advantage of presenting “information” in an
“easily understandable summary,” it is referring to presenting the content of
the posts as a summary, using “salient words.” Id. ¶ 9. Petitioner’s
argument that imbues Lemmela’s disclosure with a suggestion to process
video posts takes Lemmela out of context, using hindsight, and is not
persuasive.
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Second, we turn to Jaffe to assess whether Petitioner has shown that a
person of ordinary skill in the art would have understood any benefits of
Jaffe as being applicable to Lemmela. On this point, we note that Petitioner
proffers the general solution of organizing collections of media objects as a
solution in Jaffe that is similar to Lemmela’s system. MTA Opp. 16 (citing
Bhattacharjee 2d Decl. ¶ 211). This similarity speaks to the intended
purpose of both Lemmela and Jafffe. In the present case, however, such
similarity is a factually insufficient to support a finding that a person of
ordinary skill in the art would have improved Lemmela using Jaffe’s “video
posts” in the same way. See KSR, 550 U.S. at 417. Petitioner does not show
any evidence of how a person of ordinary skill in the art would have used
Jaffe’s “video posts” as an input to Lemmela’s system, which, as we
explained above, is designed solely for processing and summarizing textual
posts. As stated earlier, the improvement or modification of Lemmela is
more extensive than simply uploading “video” into Lemmela and expecting
the same result Lemmela provides. Dr. Bhattacharjee does not provide any
factual support for the conclusion that a “person of ordinary skill in the art
would have been motivated to look to Jaffe for methods to improve or
expand the Lemmela-Crowley system.” Bhattacharjee 2d Decl. ¶ 211.
Accordingly, we do not credit this testimony. It is conclusory and vague,
especially given the technical differences between processing “video posts”
and “textual posts.” See Verlander v. Garner, 348 F.3d 1359, 1371 (Fed.
Cir. 2003) (explaining that the Board has discretion to accord little weight to
broad conclusory statements from expert witness).
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Third, Patent Owner contends that the alleged improvement of
Lemmela, evidenced by Jaffe’s disclosure, stands on a “false assumption”
that the statements concerning “broad social and practical importance” and
the importance of “viewing and interactive” with media objects somehow
referred to video. MTA Sur-Reply 1. At the heart of this contention is a
factual dispute concerning whether Jaffe or Lemmela would support “large
scale video posting” at the time of the invention of the ’327 patent, August
2010. Id. at 2. According to Patent Owner, the importance of viewing and
interacting with Jaffe’s large collections is attributable to digital
photography and there is no evidence that such an importance is equally
attributable to “video posts.” Id. (citing Ex. 1022, 27:1116 (Dr. McDaniel
testifying that posting videos on social networking sites was rather difficult
in August 2010 because of the bandwidth requirements of video and the
slower networks); Ex. 1024, 153:20154:1 (Dr. McDaniel testifying the
challenge of storing the video data on a phone and moving it onto the
network due to upstream speeds and size of video files)). Patent Owner also
points to Dr. Bhattacharjee’s testimony confirming that the network
infrastructure needed to deploy a large-scale environment to support video
was a challenge and not in wide deployment by August 27, 2010.
Bhattacharjee Decl. ¶¶ 94, 220.
In its Reply, Petitioner relies on Jaffe’s disclosures to argue that the
prior art is evidence that video is a content option for use in the systems and
those systems solve the challenges associated with video files. MTA Reply
9 (citing Ex. 1013, 1:5662; Ex. 1014, 5:315). Petitioner argues that, “in
light of the prior art’s repeated references to video and the predictability of
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the combination . . . it would have been obvious for a [person of ordinary
skill in the art] to try the combination in order to build a system that
supported video posting.” Id. (citing Bhattacharjee 2d Decl. ¶¶ 213, 220,
227, 234). We do not agree with Petitioner’s arguments because these
arguments conflate the “obvious to try” theory with the “KSR improvement”
theory. We addressed above the “obvious to try” reasoning provided in the
Reply and have found that merely asserting that Lemmela would have tried
video is not sufficient to show that “video” was one of a finite set of
predictable solutions that a person of ordinary skill in the art would have had
good reason to pursue in Lemmela’s system. This argument also ignores the
evidence of record discussed above with regard to Patent Owner’s argument
that handling video posts at the magnitude described in Lemmela in 2010
presented a technical challenge. Indeed, this particular dispute concerning
the differences between handling video (per Jaffe) versus textual posts (per
Lemmela) leads us to conclude that Lemmela’s textual-post handling system
is different enough from Jaffe’s media-object centric system, such that their
dissimilarities are more pronounced than their similarities. And the
consideration of the drawbacks and technical challenges caused by
implementing “video posts” in Lemmela is relevant insofar as a person of
ordinary skill in the art would have needed to make changes to Lemmela to
accommodate that type of content, which means that the combination is
actually an expansion of Lemmela, with no evidence that Lemmela would
have been improved “in the same way.” See KSR, 550 U.S. at 417 (stating
that the “improvement” theory requires that “a person of ordinary skill in the
art would recognize that [the technique] would improve similar devices in
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the same way”). Again, we reiterate here that a person of ordinary skill in
the art would have needed to implement in Lemmela (1) the tag insertion
technology and (2) the summarization logic of Jaffe, because in Jaffe
photographs are selected for display using a specific algorithm that takes
into account the photo quality (see Ex. 1013, 7:3032), for example, and the
implementation of Jaffe’s “icons” and “thumbnails” as another overlay to
Lemmela’s cloud map.
Accordingly, based on the full record before us, we find that
Petitioner has not persuaded us by a preponderance of the evidence that a
person of ordinary skill in the art would have recognized that including
“video posts” in Lemmela would have improved Lemmela’s system under
the KSR Improvement Theory.
iii. Conclusion
Based on our review of the full record, we determine that Petitioner
has not shown by a preponderance of the evidence that proposed substitute
claim 21 would have been unpatentable as obvious over the combination of
Lemmela, Crowley, and Jaffe.
2. Obviousness Based on Lemmela, Crowley, and Eyal
Petitioner’s Opposition to the Motion to Amend regards the obviousness
ground as one in which either Jaffe or Eyal disclose the “video posts.” MTA
Opp. 67. We, therefore, analyze Eyal independently of the Jaffe ground
discussed above. We determine that Petitioner has not met its burden
concerning this ground based on the combined teachings of Lemmela,
Crowley, and Eyal.
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i. Limitation Concerning the “Current Location Icon”
For this limitation, Petitioner relies on the same arguments discussed
above with regard to the ground involving Jaffe. MTA Opp. 9. Thus, we
incorporate herein our analysis and determination that Petitioner has not
shown by a preponderance of the evidence that Lemmela teaches the
“current location icon” limitation. See supra Section IV.D.1.i.
ii. “documenting action comprising a posted video”/“activity level
corresponding to posted video and recording activity”/”provide a pop-up
display of said posted video”
We focus the discussion here on how Petitioner presents its
contentions concerning Eyal. We discuss Eyal briefly first.
Eyal
Eyal is entitled “System and Method for Obtaining and Sharing
Content Associated with Geographic Information.” Ex. 1014, code (54).
The Abstract of Eyal states that a “user may view a map indicating the
locations where video clips were recorded by the user’s camera.” Id., code
(57). Eyal explains that, although there are known GPS video mapping
systems for position-stamping photos or video clips taken with a digital
camera, those systems do not have convenient, web-based sharing
capabilities and the convenience and portability of a unitary full-featured
system. Id. at 1:1324. Eyal discloses that video clips captured by a camera
are manually or automatically tagged with appropriate geographic metadata.
Id. at 1:3639. Eyal describes a software application that is web-based, for
using the video clips and the geographical data to create an interactive user
interface to browse and watch the video clips. Id. at 1:4852. A user may
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click a link situated at the location where the video file was captured or as an
interactive map that allows the end-user to play video files associated with
locations on the map. Id. at 1:5256. “Clicking the links renders or plays
back the video files.” Id. at 1:6061. For example, “a video image
thumbnail is displayed on the map and is clickable to play the video.” Id. at
1:6264.
Eyal describes that it either displays the geographic locations of video
clips on a map or it displays the locations as a list. Id. at 8:3437. “The
location may be displayed via icons, textual data such as city name,
thumbnails, latitude and longitude coordinates, or via other means.” Id. at
8:3739.
Analysis of Lemmela-Crowley With Eyal
The Opposition includes a section entitled “Lemmela-Crowley
combined with Eyal or Jaffe teaches [proposed] substitute claim 21’s action
spots and activity level.” MTA Opp. 11. Petitioner asserts in that section
that “videos could have been associated with words just like textual posts.”
Id. (citing Bhattacharjee 2d Decl. ¶¶ 18082, 187). The relied on paragraphs
of the Second Bhattacharjee Declaration establish that the documenting
actions in Eyal comprise a posted video. Bhattacharjee 2d Decl. ¶ 180. In a
conclusory manner, Dr. Bhattacharjee then states that, “when any of these
references’ location-based video processing is combined with the Lemmela-
Crowley system, the result would be the Lemmela-Crowley system
determining action spots corresponding to the location of ‘posted video,’ as
required by [proposed] substitute claim 21.” Id. Again, Petitioner proffers a
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simple premise that Eyal discloses video posts and then from that flows a
conclusion that because of the known video posts of Eyal, Lemmela would
determine action spots corresponding to posted video. Dr. Bhattacharjee’s
testimony lacks explanation in this paragraph and does not explain how or
why Eyal’s video clips, which have no textual tags, would be processed by
Lemmela when determining “action spots.” Accordingly, given the lack of
explanation and conclusory obviousness assertion we give this testimony no
weight. See also id. ¶ 187 (similarly stating in a conclusory manner that the
activity level of Lemmela would indicate “video recording activity”). See
Verlander, 348 F.3d at 1371.
In paragraph 181, Dr. Bhattacharjee explains that “video media
typically includes associated metadata, which may include textual tags
identifying the topic of this media, or other information.” Bhattacharjee 2d
Decl. ¶ 181. There is no factual support for this statement, and the
generalness of the assertion is contrary to the disclosure of Eyal. Eyal does
not mention any textual tags in the metadata. See Ex. 1014, 7:2022 (stating
that “metadata are added to the content item file to indicate the geographic
location where the content item was obtained”). Dr. Bhattacharjee discusses
Jaffe’s textual tags of video posts, but does not explain what Jaffe’s textual
tags have to do with Eyal’s non-text metadata. Bhattacharjee 2d Decl.
¶ 181. In other words, we do not see Dr. Bhattacharjee as testifying, or
Petitioner as asserting, a further combination of Jaffe’s textual tags with
Eyal’s video clips. If that is the case, then the combination would fail for the
same reasons stated above with regard to the asserted ground based, in part,
on Jaffe. As for asserting Eyal alone, again, we see no such textual tag
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disclosure, and no evidence that Eyal would have included it. Indeed, Patent
Owner points out, and we agree, that Petitioner has assumed word tags in
Eyal that Eyal does not support. See MTA Sur-Reply 4 (Patent Owner
arguing that Petitioner wrongly assumed that Eyal’s videos are associated
with “word tags, when, in reality, they are not” (citing Ex. 1014, 2:2931,
5:1621, 7:2022; McDaniel 2d Decl. ¶ 147)).
As for reasons to combine, Petitioner presents the Eyal arguments
interspersed with those of Jaffe. MTA Opp. 1416. We have discussed
above the deficiencies concerning those rationales as they pertain to Jaffe.
We do not address the ground based, in part, on Eyal in the same level of
detail because the analysis is equally applicable to the Eyal assertions. For
instance, concerning the KSR Known Elements Theory, Petitioner does not
even mention Eyal. See MTA Opp. 1415. As for Dr. Bhattacharjee, he
testifies that Eyal discloses “video mapping” and that “combining Eyal’s
location-based video posts with the Lemmela-Crowley system for
processing and displaying posts would have involved combining known
prior art elements.” Bhattacharjee 2d Decl. ¶ 216. He also testifies that “the
Lemmela-Crowley system would operate as usual but would have allowed
for processing of video posts, specifically.” Id. Again, these statements are
discussed above with regard to the Jaffe analysis and we found them
conclusory and lacking explanation as to why or how a person of ordinary
skill in the art would have modified Lemmela’s system to account for “video
posts.” The omission is even more glaring with regards to Eyal, which does
not include or process any tags for video. In sum, we are not persuaded that
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combining Lemmela’s teachings with Eyal’s teachings would have been as
predictable as alleged.
As for the KSR Substitution Theory, Petitioner relies on
Dr. Bhattacharjee for a more fulsome explanation of the alleged substitution.
MTA Opp. 1516 (citing Bhattacharjee 2d Decl. ¶ 217). The Bhattacharjee
Declaration, however, does not add any explanation of Eyal’s substitution
that remedies the issues identified above with regard to Eyal. For instance,
Dr. Bhattacharjee merely opines that Eyal’s posts include media such as
video. Bhattacharjee 2d Decl. ¶ 217. Then, Dr. Bhattacharjee states that
“[t]he result would have been predictable since, as shown above, the result is
actually disclosed in Jaffe.” Id. (citing to the entire disclosure of Jaffe and
the entire analysis in the Opposition concerning the motivation to combine
with Jaffe). This testimony is neither useful nor persuasive. It lacks
explanation for how the evidence presented with regard to Jaffe in any way
shows that Eyal’s “video posts” would have been a simple substitution of
one known element for another, especially when Eyal’s video clips do not
include any tags and Lemmela only processes textual posts. Accordingly,
we give no weight to Dr. Bhattacharjee’s testimony in this regard.
As for the KSR Improvement Theory, Petitioner’s arguments
concerning Eyal parallel those provided with regard to Jaffe. MTA Opp. 16.
Petitioner contends that Eyal’s system is similar to Lemmela’s system and
addresses similar problems in the art. Id. (citing Bhattacharjee 2d Decl.
¶ 218). As for the similarities, Dr. Bhattacharjee testifies that Lemmela and
Eyal both teach “location-based content display systems” and that they both
group user posts in ways that signify information about locations and sharing
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these posts with other users. Bhattacharjee 2d Decl. ¶ 218. And as for the
improvement, Dr. Bhattacharjee testifies that the “Lemmela-Crowley system
and Eyal both state that one way in which these prior art systems could be
improved is to increase their sharing capability.” Id. Similar to its
explanation regarding the ground based, in part, on Jaffe, Petitioner relies on
Jaffe’s statement of a “broad social and practical importance” of viewing
and interacting with video posts. MTA Opp. 16.
Petitioner’s arguments and Dr. Bhattacharjee’s testimony fail for the
same reasons stated above with regard to Jaffe. By way of summary, the
statement of the similarities does not take into account that, although both
Lemmela and Eyal teach processing user posts, the underlying system in
Lemmela is technically configured to process textual posts, while Eyal is
configured to handle video clips with geographical location only. A
comparison of the Lemmela and Eyal systems informs us that these are even
more dissimilar than the Lemmela and Jaffe systems. In sum, there is even
more reason to doubt that a person of ordinary skill in the art would have
recognized that Eyal’s video clip handling would have benefited Lemmela’s
system.
iii. Conclusion
Based on our review of the full record, we determine that Petitioner
has not shown by a preponderance of the evidence that proposed substitute
claim 21 would have been unpatentable as obvious over the combination of
Lemmela, Crowley, and Eyal.
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3. Winkler Grounds
Petitioner contends that proposed substitute claim 21 would have been
obvious over Winkler, in combination with teachings of Altman and those of
Eyal or Jaffe. MTA Opp. 618. Petitioner’s contentions, however, do not
alter the manner in which it relies on Winkler for the “determine an action
spot” limitation, except to add the “video posts” arguments and evidence
discussed above with regard to the grounds based, in part, on Lemmela. Id.
Because we have determined that Petitioner did not meet its burden of
showing that the combination of Winkler and Altman teaches the “determine
an action spot” limitation of the original claims, we determine that Petitioner
also has not met its burden of showing that proposed substitute claim 21
would have been unpatentable as obvious over the combination of Winkler,
Altman, and Eyal or Jaffe.
4. Patent Eligibility Under 35 U.S.C. § 101
Petitioner’s Opposition contends that because original claim 2, which
proposed substitute claim 21 replaces, was found patent ineligible in district
court, the district court analysis likewise shows that proposed substitute
claim 21 is patent-ineligible. MTA Opp. 1819. We noted in our
Preliminary Guidance on the Motion to Amend that Petitioner’s analysis of
proposed substitute claim 21 for § 101 patent eligibility was unpersuasive.
PG 13. We noted that Petitioner did not identify any “abstract ideas” from
one of the four groupings indicated in the 2019 Revised Patent Subject
Matter Eligibility Guidance, Step 2A, Prong One. See id. (citing 84 Fed.
Reg. 50, 54 (Jan. 7, 2019) (“Guidance”)). We also noted that Petitioner did
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not analyze proposed substitute claim 21 with respect to integrating any
alleged abstract idea into a practical application, especially in light of several
new limitations recited in proposed substitute claim 21. Id.
In its Reply, Petitioner applies the Office’s 101 Guidance. MTA
Reply 1011. Patent Owner responds to Petitioner’s argument patent-
eligibility of proposed substitute claim 21. MTA Sur-Reply 1112. We
analyze below the patent-eligibility of proposed substitute claim 21 under
the Office’s 101 Guidance.
i. Legal Principles
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. But the
Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit
exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not
patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
To determine whether a claim falls within an excluded category, the
Supreme Court has set out a two-part framework, described in Mayo and
Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 75–77 (2012)). That framework requires us to first
consider what concept the claim is “directed to.” See Alice, 573 U.S. at 219
(“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”). If the claim is “directed to” an abstract idea, we turn to the
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second part of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation and quotation marks
omitted).
In January 2019, the U.S. Patent and Trademark Office (“USPTO”)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Guidance”). Under this Guidance, we first look to whether the claim
recites (1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
activity such as a fundamental economic practice, or mental processes); and
(2) additional elements that integrate the judicial exception into a practical
application (see Manual of Patent Examining Procedure (“MPEP”)
§ 2106.05(a)–(c), (e)–(h) (9th Ed., Rev. 08.2017 (Jan. 2018))). Guidance at
52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim recites an inventive concept, by determining whether the
claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or

(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
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See Guidance at 56. With this Guidance in mind, we turn to Petitioner’s
arguments.
ii. The Judicial Exception—Step 2A, Prong 1, of the Guidance
The Guidance breaks the Alice/Mayo test for identifying claims
directed to judicial exceptions into two prongs. Guidance at 53. Step 2A,
Prong 1, asks whether the claim recites a judicial exception. Guidance at
52–54.
Petitioner argues that proposed substitute claim 21 is directed to
methods of organizing human activity and/or managing personal behavior or
relationships or interactions between people. MTA Reply 10. According to
Petitioner, the claim recites tracking locations of activity and using a device
to perform a task “that ’327 patent admits humans had been doing on their
own.” Id. (citing Guidance, 5254). Patent Owner argues that Petitioner’s
analysis lumps five claim limitations “into one genericized ‘abstract idea’
used for describing broader claim 1.” MTA Sur-Reply 1112 (citing
Ex. 2005).
We look to the language of proposed substitute claim 21 to determine
if Petitioner has identified properly one of the four categories of “abstract
ideas” from the Guidance. Below is proposed substitute claim 21, showing
in underlined text the added limitations (to those of original claims 1 and 2),
and including identifiers for ease of reference:
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[A] a touch sensitive display; and
[B] a processor module communicatively coupled to the
touch sensitive display and configured to receive executable
instructions to:
[C] display, after an application configured to determine action
spots has been selected, a graphical user interface comprising an
interactive map on the touch sensitive display, wherein the map
includes geographic locations and is manipulatable by user input on
the touch sensitive display;
[D] receive data indicative of a current location of the
mobile device;
[E] determine at least one action spot within a
predetermined distance from the current location of the mobile
device, the at least one action spot corresponding to a location
where at least one other mobile device has engaged in
documenting action comprising a posted video within a
predetermined period of time;
[F] signify the at least one action spot as a selectable graphical
item on the interactive map of the graphical user interface and the
current location of the mobile device as an icon on the interactive map
of the graphical user interface; and
[G] provide an indication of activity level including video
recording activity at the least one action spot;
[H] wherein the indication of activity level includes coloring
the selectable a graphical item associated with the at least one action
spot in accordance with a range of activity occurring at the at least one
action spot; and
[I] provide a pop-up display of said posted video on the
graphical user interface of the touch sensitive display.

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See MTA, Appendix A; Ex. 1001, claims 1, 2.
We focus our analysis on limitations [C][I], which recite the
instructions that the processor would execute.11 Starting with limitations
addressing instructions of what to display, we note that limitations [C], [F],
[G], [H], and [I] recite displaying the map to include signifiers, geographic
locations, change of coloring depending on the data, and providing a pop-up
display on the mobile device. Limitation [D] focuses on receiving data, an
extra-solution activity that is not germane to the “abstract idea” analysis.12
Limitation [E] is the “determine an action spot” limitation, amended
to reflect “posted video” actions. We agree with Petitioner that, because of
limitation [E], proposed substitute claim 21 recites certain methods of
organizing human activity. As stated in the October 2019 Update to the
Guidance, examples of this category of abstract ideas include managing
personal behavior, relationships, or interactions between people. October
2019 Update: Subject Matter Eligibility, 84 Fed. Reg. 55942 (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df) (“Update”) at 4. According to the Update, this sub-grouping
encompasses activity that involves multiple people (such as a commercial
interaction).

11 Because limitations [A] and [B] recite the display and processor of the
mobile device, those elements would fall under analysis under Step 2A,
Prong 2 (integration into a practical idea) and Step 2B (inventive concept).
12 See Diamond v. Diehr, 450 U.S. 175, 191–92 (1981) (“[I]nsignificant
post-solution activity will not transform an unpatentable principle into a
patentable process.”).
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The Specification of the ’327 patent explains that a mobile device
having map functionality would have been limited to displaying streets
within a city. Ex. 1001, 3:24. If a user of the mobile device had wanted to
find information relating to events and happenings currently occurring
proximate to the mobile device’s present location, the user of the mobile
device would have had to search an external resource and compare the found
locations and happenings to the user’s current location. Id. at 3:412.
According to the recited “action spot” determination, the mobile device
determines those events and locations that are proximate to the user’s
location. And, the determined “action spot” corresponds to a location where
other mobile devices have posted a video within a predetermined period of
time. Limitation [E], therefore, takes into account the behavior of users with
mobile devices to better identify for them areas of interest occurring around
them. Though searching certainly was in the prior art, the user may have
had to manually search for the information using various search engines and
calendars (see id.), whereas limitation [E] automates the search for the
activity to determine the areas of interest, and provides that information to
the user.
In conclusion, we determine that proposed substitute claim 21 recites
certain methods of organizing human activity, which is an abstract idea.
iii. Integration into a Practical Idea—Step 2A, Prong 2, of the Guidance
Step 2A, Prong 2, asks whether the claims are “directed to” a judicial
exception or whether the claims integrate the judicial exception into a
practical application. Guidance, 84 Fed. Reg. at 53 (explaining the practical
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application test responds to “a growing body of decisions . . .
distinguish[ing] between claims that are ‘directed to’ a judicial exception . . .
and those that are not”). A practical application is one where the claim “will
apply, rely on, or use the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” Id. at 54.
For example, limitations that are indicative of “integration into a practical
application” can include:
1) Improvements to the functioning of a computer, or to any other
technology or technical field—see MPEP § 2106.05(a);

2) Applying the judicial exception with, or by use of, a particular
machine—see MPEP § 2106.05(b);

3) Effecting a transformation or reduction of a particular article to a
different state or thing —see MPEP § 2106.05(c); and

4) Applying or using the judicial exception in some other meaningful
way beyond generally linking the use of the judicial exception to a
particular technological environment, such that the claim as a
whole is more than a drafting effort designed to monopolize the
exception—see MPEP § 2106.05(e).

In contrast, limitations that are not indicative of “integration into a
practical application” may include:
1) Adding the words “apply it” (or an equivalent) with the judicial
exception, or mere instructions to implement an abstract idea on a
computer, or merely uses a computer as a tool to perform an
abstract idea—see MPEP § 2106.05(f);

2) Adding insignificant extra-solution activity to the judicial
exception—see MPEP § 2106.05(g); and
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3) Generally linking the use of the judicial exception to a particular
technological environment or field of use—see MPEP
§ 2106.05(h).
Petitioner argues that “the lack of meaningful limits on the abstract
‘activity mapping’ concept recited in the ’327 claims is precisely why the
district court found these claims invalid.” MTA Reply 10 (citing Ex. 2005,
4042). According to Petitioner, proposed substitute claim 21 “does not
limit the concept in space, time, or scope, beyond limiting the documenting
activity to video posts.” Id. at 1011.
Patent Owner argues that “cited evidence” shows that certain tangible
requirements of proposed substitute claim 21 “tether the action spot/activity
level features to the specific solutions on the small-screen interface while
also limiting the claim scope towards the specific application based on
posted video.” MTA Sur-Reply 12 (citing McDaniel 2d Decl. ¶¶ 150161).
Patent Owner also argues that proposed substitute claim 21 “represents a
very clear technological improvement in the way computing devices—
namely, mobile devices with limited screen space—operate to assist users in
identifying and locating nearby happenings and events.” Id. (citing
McDaniel 2d Decl. ¶¶ 150, 158161).
We find here that Petitioner has not met its burden of showing that the
limitation fails to recite integration of the abstract idea into a practical idea.
Arguing generally that there are no meaningful limits to the abstract idea
without accounting for the newly added limitations to proposed substitute
claim 21 is not sufficient. Although we recognize that the District Court’s
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decision on summary judgment may have placed emphasis on this aspect of
the analysis, the claim before that court was not proposed substitute claim
21. Furthermore, Patent Owner proffers evidence of technological
improvement via testimony of Dr. McDaniel. That testimony presents
several examples of technological improvements. We address each in turn.
First, Dr. McDaniel notes all the problems with the “manual search”
of the prior art to imply that the “action spot” determination (limitation [E])
improves accuracy and ease of use. McDaniel 2d Decl. ¶¶ 150158. We are
not persuaded by this evidence. As Dr. Bhattacharjee testifies, the problem
sought to be addressed by proposed substitute claim 21 relates “to user’s
frustration in having to consult multiple resources in order to determine the
location of interesting events.” Bhattacharjee 2d Decl. ¶ 102. Indeed, the
problem addressed with the action spot determination is not technological.
And the solution is not technical either. Claim limitation [E] lacks detail of
any technical implementation that limits the functional description of
determining an action spot to a particular aspect of the computing
environment or to programming of the application. The claim language is
result-oriented, without details as to how the action spot determination is
technologically implemented. It merely recites the outcome of the
“determination of an action spot” with the parameters for that determination
and the conclusion that such a determination is made in a computing
environment (with a generic processor).
Second, Dr. McDaniel testifies that the “interactive map” recited in
proposed substitute claim 21 (limitation [F]) signifies two things on the
screen, the current location icon and the “action spot” graphical item,
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avoiding the having to switch applications or screens. McDaniel 2d Decl.
¶ 159. According to Dr. McDaniel, “[t]hese elements thus represent an
express application of the ‘action spot’ features to mobile device technology
in a manner that improves the user’s experience when using a small-screen
mobile device (e.g., a smartphone).” Id. Dr. Bhattacharjee testifies that
mobile device applications with “interactive map[s]” displaying
geographical locations and the current location of the mobile device were
“well known and generic,” but otherwise does not address whether the
“signified” icon and geographical item of the “interactive map” would
improve the technology or the technological field. Bhattacharjee 2d Decl.
¶¶ 106107. Further, we note that Dr. Bhattacharjee’s testimony is not
useful for this limitation [F] as it generally addresses map applications on
mobile phones with navigation icons. But that is not what the “signify”
limitation addresses. We note that Dr. Bhattacharjee focuses on the ordinary
display of maps and display of the location of the mobile phone on the map.
Id. Therefore, on the full record, we see no argument from Petitioner or
testimony from its declarant rebutting Dr. McDaniel’s testimony that
signifying the current location icon and the action spot as a graphical item on
an interactive map is a technological improvement of the mobile device.
Thus, we determine that, on this point, Petitioner has not met its burden of
showing that proposed substitute claim 21 is patent-ineligible.
As another reason supporting our determination that Petitioner has not
met its burden, we note that Patent Owner argues the applicability here of
the holding in Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880
F.3d 1356 (Fed. Cir. 2018). MTA 19. In Core Wireless the court found that
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the claims were directed to an improved user interface for computing
devices. Id. at 13621363. The court stated, “[a]lthough the generic idea of
summarizing information certainly existed prior to the invention, these
claims are directed to a particular manner of summarizing and presenting
information in electronic devices.” Id. at 1362. We see a parallel between
Core Wireless and certain limitations of proposed substitute claim 21.
Although it may be abstract to determine an “action spot”—identifying areas
of interest where there is mobile device “activity”—the claim is further
directed to signifying (limitation [F]) that activity, together with other useful
information, to improve the use of maps on a mobile device. The recited
interactive map displays multiple items of information: the current location
of the mobile device (limitation [F]), the “action spot” graphical item
(limitation [F]), the “activity level” of the action spot (limitations [G][H]),
and the pop-up display of the posted video (limitation [I]). In this manner,
the claim summarizes four different types of information on a touch screen
display of the mobile device.
Petitioner addresses Core Wireless by arguing that “substitute claim
21 recites no additional ‘improvements’ in the display of information that
were not already rejected by the District Court.” MTA Opp. 22. According
to Petitioner, proposed substitute claim 21 “recites the same ‘generalized
requirements that do not provide a ‘specific structure for depicting relevant
information,’ but rather[, the claim recites] similar display [requirements] to
those rejected in Interval Licensing, 896 F.3d at 134445 and its collected
cases.” Id. (citing Ex. 2005, 39). Petitioner argues that the claim here is
more similar to those found ineligible in Trading Techs Int’l, Inc. v. IBG
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LLC, 921 F.3d 1084, 1090 (Fed. Cir. 2019). Id. at 23. Petitioner
summarizes how the court summarized the technology of the Trading Techs
claim: it involves an interface that presented information in a new and more
efficient way and allowed a stock trader to quickly determine his or her
relative position in the marketplace based on the display of the user’s trades
in a different color. Id.
We are not persuaded by Petitioner’s arguments for two reasons.
First, the analysis of the District Court is not applicable here because
proposed substitute claim 21 includes new limitations that the court did not
have the opportunity to address. Indeed, we note that Patent Owner
proposed substitute claim 21 to address § 101 issues. See MTA 6. Second,
Trading Techs is distinguishable because the Federal Circuit there was
persuaded that the GUI would have been displayed on any generic display
and the presented data was generic buy and sell data that already existed
from a trade engine. Trading Techs, 921 F.3d at 1091, 1093. The claims of
Trading Techs merely performed routine data collection, organization, and
display. Id. at 1093. Proposed substitute claim 21, in contrast, provides for
display in a particular “touch sensitive display,” provides for selectability of
graphical items signifying the action spots, and displays additional
information on the map concerning the “action spot”—colorizing the activity
level and providing the pop-up display to play a posted video from the
“action spot.” Proposed substitute claim 21, thus, seems to align better with
the Core Wireless claim. For instance, accessing the information from a
menu and the selectability of presented data in the Core Wireless claim is
akin to the selectability of the graphical items from the screen to select any
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particular “action spot.” Core Wireless, 880 F.3d at 1362. Further, the
“pop-up display” is a particular type of presentation of the underlying video
postings linked to the displayed “activity level” and “action spots,” a further
distinction that under Core Wireless would go beyond the abstract idea of
organizing human activity. Accordingly, we are not persuaded that
Petitioner has shown that, under Core Wireless, proposed substitute claim 21
is not patent-eligible.
Third, Dr. McDaniel addresses the “activity level” limitation
testifying that “[i]ntegration of the activity level into the interactive map
through the intuitive mechanism of color and in the efficient manner of
applying that color to the graphical item of the action spot further improves
the user interface.” McDaniel 2d Decl. ¶ 160 (testifying also that “this
approach effectively communicates additional relevant information to the
user without utilizing additional screen space.”). Dr. Bhattacharjee
addresses the “activity level” by testifying that the claim provides no detail
as to how the activity level is calculated, and, therefore, such a limitation
does not recite a technological implementation. Bhattacharjee 2d Decl.
¶ 103; see also id. ¶ 108 (offering Dr. McDaniels’ testimony that “measuring
relative ‘levels’ of things was well-known”). We have addressed this
limitation somewhat in our discussion of the Core Wireless case, insofar as
the “activity level” colorized display adds further information in a
summarized fashion on an interactive map. Although, by itself, the “activity
level” determination is not recited in technological detail, its contribution to
the claim is by way of the summarized information provided on the
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selectable graphical item that is signified alongside the current location icon
on the interactive map of the touch screen display.
Fourth, and lastly, Dr. McDaniel testifies that the pop-up display of
the posted video “empowers the user to assess the nature of, and their
corresponding interest in, the event occurring at the action spot.” McDaniel
2d Decl. ¶ 161 (testifying also that “this can all be done without flipping and
cross-referencing between multiple sources and/or applications”).
Dr. Bhattacharjee testifies that displaying “pop-ups” was “well-known and
generic in the art by August 2010.” Bhattacharjee 2d Decl. ¶ 110. The
testimony of Dr. Bhattacharjee focuses on his opinions that pop-ups were
known in the art (read here, disclosed in Eyal and Jaffe) and that the
’327 patent “is silent as to any new or advanced technical mechanism for
processing posted video or displaying pop-up video.” Id. Here, too, we find
that the inclusion of the pop-up display to view posted video is part and
parcel of the items summarized on the screen that fall under the Core
Wireless category of things that may improve the user interface by including
in the display a more efficient way to access video content that is
summarized as an “action spot” graphical item.
iv. Conclusion
Based on the above analysis of Step 2A, Prong 2 of the Guidance, we
determine that Petitioner has not shown that proposed substitute claim 21
does not integrate the abstract idea into a practical application. Accordingly,
we determine that Petitioner has not met its burden of showing that proposed
substitute claim 21 is not patent-eligible under 35 U.S.C. § 101.
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5. Enablement
Petitioner asserts that, “to the extent that Patent Owner contends
proposed substitute claim 21 requires a large-scale implementation and
associated network architecture, such is not enabled due to (1) the bandwidth
limitations at that time (which Patent Owner’s expert has also conceded),
and (2) the lack of any discussion in the specification on how to overcome
these bandwidth limitations.” MTA Opp. 25. We find that this argument is
not developed sufficiently to evaluate on the merits. Enablement is a
requirement under 35 U.S.C. § 112(a) (or 35 U.S.C. § 112, first paragraph,
pre-AIA). The invention that one skilled in the art must be enabled to make
and use is that defined by the claim. However, it is not necessary to “enable
one of ordinary skill in the art to make and use a perfected, commercially
viable embodiment absent a claim limitation to that effect.” CFMT, Inc. v.
Yieldup Int’l Corp., 349 F.3d 1333, 1338 (Fed. Cir. 2003). Further, the
inquiry for enablement is whether one reasonably skilled in the art could
make or use the invention from the disclosures in the patent coupled with
information known in the art without undue experimentation. United States
v. Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988).
Proposed substitute claim 21 is not directed to any particular network
for carrying out the invention. See generally MTA, Appendix A. So an
argument concerning the application of a “large-scale implementation and
associated network architecture” is untethered to the claim. Further,
Petitioner points to deposition testimony of Dr. McDaniel for the proposition
that the ’327 patent does not disclose networks that can carry out the
invention in a large-scale implementation. See MTA Opp. 25 (citing
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Ex. 1024, 152:16155:22). But Petitioner omitted other deposition
testimony that tends to show the opposite, that the ’327 patent discloses new
types of networks in 2010 that were capable of higher bandwidths and,
therefore, large-scale implementations capable of handling video postings.
For instance, Dr. McDaniel testified that the ’327 patent describes next
generation networks “that would definitely support posting of video. Things
like ultra mobile and WiMAX have—can have extremely high bit rates.”
Ex. 1024, 154:16155:22. Accordingly, we are not persuaded by
Petitioner’s arguments of non-enablement, premised on the assertion that the
’327 patent omits any description of networks that can carry out the
invention in higher bandwidth networks for large-scale implementation,
even if such an implementation were required by the claims, which they do
not.
Consequently, we determine that Petitioner has not demonstrated by a
preponderance of the evidence that proposed substitute claim 21 is not
enabled.
6. Conclusion
Having reviewed Petitioner’s Opposition to the Motion to Amend,
Petitioner’s Reply to the Preliminary Guidance, and the cited evidence and
references in the record, and in light of Patent Owner’s arguments in
response, we determine that Petitioner has not met its burden of showing that
the proposed substitute claim 21 would have been unpatentable. Thus, we
grant Patent Owner’s Non-Contingent Motion to Amend.
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V. CONCLUSION
In summary:
Claims 35
U.S.C. §
References Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
13, 8,
1315
103 Lemmela, Crowley 1, 3, 8, 1315
10, 11 103 Lemmela,
Crowley, Winkler
10, 11
9, 20 103 Lemmela,
Crowley, Waldman
9, 20
13, 8,
10, 11,
1315
103 Winkler, Altman 1, 3, 8, 10, 11,
1315
Overall
Outcome
1, 3, 811,
1315, 20

Motion to Amend Outcome Claim(s)
Original Claim Cancelled by Amendment 213
Substitute Claims Proposed in the Amendment 21
Substitute Claims: Motion to Amend Granted 21
Substitute Claims: Motion to Amend Denied

Substitute Claims: Not Reached
VI. ORDER
Accordingly, it is hereby:
ORDERED that claims 1, 3, 811, 1315, and 20 of the ’327 patent
have been proven to be unpatentable;

13 Because Patent Owner’s Motion to Amend was non-contingent on a
finding of unpatentability and sought to replace original claim 2 with
substitute claim 21, we consider original claim 2 cancelled by amendment.
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FURTHER ORDERED that Patent Owner’s Contingent Motion to
Amend is granted;
FURTHER ORDERED that claim 2 is cancelled and replaced with
proposed substitute claim 21; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to this proceeding seeking judicial review of the Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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For PETITIONER:

Yar Chaikovsky
David Okano
PAUL HASTINGS LLP
yarchaikovsky@paulhastings.com
davidokano@paulhastings.com

For PATENT OWNER:

Michael T. Hawkins
Nicholas Stephens
Kenneth W. Darby
Kim Leung
Craig A. Deutsch
FISH & RICHARDSON P.C.
hawkins@fr.com
nstephens@fr.com
kdarby@fr.com
deutsch@fr.com

Ognjen Zivojnovic
Sam Stake
Alex Wolinsky
James M. Glass
QUINN EMANUEL URQHART, & SULLIVAN, LLP
ogizivojnovic@quinnemanuel.com
samstake@quinnemanuel.com
alexworlinsky@quinnemanuel.com
jimglass@quinnemanuel.com