Patent Owner’s Demonstratives
`Hearing: September 3, 2020
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`1
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`Hearing: September 3, 2020
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`1
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`
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`Overview of ’351 Patent
`Overview of 7351 Patent
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`2
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`
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`Overview of the ’351 Patent
`
`Sur-Reply at 6; Ex. 1001 (’351 Patent) at 1:44-57
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`3
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`Overview of the ’351 Patent
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`Reply at 8; Ex. 1001 (’351 Patent) at 3:16-19
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`POR at 11; Ex. 1001 (’351 Patent) at 5:27-34
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`POR at 11; Ex. 1001 (’351 Patent) at 5:38-47
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`4
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`Overview of the ’351 Patent
`
`. . .
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`. . .
`
`POR at 13; Ex. 1001
`(’351 Patent) at 8:8-59
`
`POR at 13; Ex. 1001 (’351 Patent) at 8:8-38
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`5
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`
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`Overview of the ’351 Patent
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`POR at 13-14; Ex. 1001 (’351 Patent) at 10:59-11:15
`
`POR at 13-14; Ex. 1001 (’351 Patent) at 10:59-11:15
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`6
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`
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`Overview of the ’351 Patent
`
`Ex. 1002 (Chatterjee Decl.) ¶ 97
`Ex. 1001 (’351 Patent) at 13:54-65
`
`POR at 13; Ex. 1001 (’351 Patent) at 8:8-38
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`7
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`Overview of the ’351 Patent
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`Ex. 1001 (’351 Patent) at Claim 1
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`Ex. 1001 (’351 Patent) at Claim 14
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`8
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`Overview of Prior Art: Noble
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`9
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`Overview of Prior Art: Noble
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`POR at 15; Ex. 1003 (Noble) at 1:3-6
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`10
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`Overview of Prior Art: Noble
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`Ex. 1003 (Noble) at 1:14-15
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`Ex. 1003 (Noble) at 1:20-22
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`Ex. 1003 (Noble) at 2:1-4
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`11
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`
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`Overview of Prior Art: Noble
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`Pet. at 65-66; Ex. 1003 (Noble) at 3:20-4:3
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`12
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`Overview of Prior Art: Hassett
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`13
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`Overview of Prior Art: Hassett
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`POR at 17; Ex. 1004 (Hassett) at 7:55-62
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`14
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`Overview of Prior Art: Hassett
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`POR at 17; Ex. 1004 (Hassett) at 13:34-47
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`15
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`Overview of Prior Art: Johnson
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`16
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`Overview of Prior Art: Johnson
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`POR at 18; Ex. 1006 (Johnson) at 8:54-65
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`17
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`Overview of Prior Art: Mann
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`18
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`Overview of Prior Art: Mann
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`Pet. at 61; Ex. 1005 (Mann) at 49
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`19
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`Overview of Prior Art: De Boor
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`20
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`Overview of Prior Art: De Boor
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`POR at 19; Ex. 1007 (De Boor) at 1:10-13
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`Pet. at 74; Ex. 1007 (De Boor) at 3:26-32
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`21
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`Overview of Grounds
`Overview of Grounds
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`22
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`Overview of the Petitioners’ Grounds
`
`Ground
`Ground 1: Claims 1-2, 9, 14-15, 21
`
`References
`Noble and Hassett
`
`Ground 2: Claims 1-2, 9, 14-15, 21
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`Noble, Mann, and Johnson
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`Ground 3: Claims 1-2, 9, 14-15, 21
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`Noble, Hassett, and De Boor
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`Ground 4: Claims 1-2, 9, 14-15, 21
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`Noble, Mann, Johnson, and De Boor
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`23
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`
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`Grounds 2 and 4:
`Noble, Mann, and Johnson Do Not
`Disclose “Stor[ing] the Information Based
`on Pre-Defined Information Categories”
`
`24
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`
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`“Stor[ing]”: Claim Construction
`
`“stores the information to one of a plurality of channels based on
`pre-defined information categories”
`
`BlackBerry’s Position
`plain language
`
`Petitioners’ Position
`“A more natural reading is that the
`claim language simply requires that
`the information be stored into a
`channel based on one of a
`number of categories.”
`
`Reply at 25
`
`Sur-Reply at 16
`
`25
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`
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`“Stor[ing]”: Claim Construction
`The claim language supports BlackBerry’s interpretation:
`
`Sur-Reply at 16; Ex. 1001 (’351 Patent) at Claim 1
`
`26
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`
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`“Stor[ing]”: Claim Construction
`
`The specification supports BlackBerry’s interpretation:
`
`POR at 12-13; Ex. 1001 (’351 Patent) at 4:14-27
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`27
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`
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`“Stor[ing]”: Claim Construction
`
`Petitioners’ position:
`
`Sur-Reply at 16; Ex. 1001 (’351 Patent) at Claim 1
`
`28
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`
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`“Stor[ing]”: Claim Construction
`Petitioners’ citations to the specification do not support their construction
`
`Pet. at 62; Ex. 1001 (’351 Patent) at 4:28-46
`
`29
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`
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`“Stor[ing]”: Grounds 2 and 4 Combination Fails to Disclose “Storing”
`Petitioners’ proposed combination does not store “information” based on multiple “pre-
`defined information categories”
`
`Petitioners’ first “category”
`(not predefined)
`
`Petitioners’ second “category”
`
`Reply at 26
`
`30
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`
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`“Stor[ing]”: Grounds 2 and 4 Combination Fails to Disclose “Storing”
`Petitioners’ “clustered index” only specifies how information is stored in physical memory – it
`does not cure lack of “pre-defined information categories” (plural)
`
`Reply at 25-26
`
`31
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`
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`Grounds 1 and 3:
`Noble and Hassett Do Not Render Obvious
`“Stor[ing] the Information Based on Pre-
`Defined Information Categories”
`
`32
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`
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`“Stor[ing]”: Grounds 1 and 3
`• Petitioners argue that:
`• Nobel discloses “regions,” and a POSITA would have modified these “regions” into “pre-
`defined” regions
`• A POSITA would have implemented Noble’s “coupon categories” as a method of storing
`• Petitioners are incorrect
`
`• Nobel does not disclose “regions” – it uses specific addresses and “location(s)”
`
`• No motivation to change Nobel’s addresses/locations into pre-defined “regions”
`
`• No motivation to use “coupon categories” as a basis for storage
`
`• Petitioners concede that Nobel fails to provide any details on how its system stores
`information.
`
`Reply at 13
`33
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`
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`“Stor[ing]”: Grounds 1 and 3
`
`Ex. 1001 (’351 Patent) at Claim 1
`
`34
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`
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`“Stor[ing]”: Grounds 1 and 3 – Noble
`
`Noble refers to specific “geographical location(s)” not “regions”:
`
`POR at 32; Ex. 1003 (Noble) at 16:6-11
`
`35
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`
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`“Stor[ing]”: Grounds 1 and 3 – Noble
`Noble refers to specific “geographical location(s)” not “regions”:
`
`POR at 34; Ex. 1003 (Noble) at 24:15-18
`
`POR at 34; Ex. 1003 (Noble) at 25:13-23
`
`36
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`
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`“Stor[ing]”: Grounds 1 and 3 – Noble
`Noble refers to specific “geographical location(s)” not “regions”
`
`Pet. at 12-13; Ex. 1003 (Noble) at 17:21-18:9
`
`37
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`
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`“Stor[ing]”: Grounds 1 and 3 – Noble
`No motivation to store information based on “pre-defined” geographic regions”
`
`POR at 35-36; Ex. 2008 (Shoemake Decl.) ¶¶ 106-07
`
`38
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`
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`“Stor[ing]”: Grounds 1 and 3 – Noble
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`No disclosure of “stor[ing] the information” based on Noble’s “coupon categories”
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`POR at 36; Ex. 1003 (Noble) at 15:1-9
`
`39
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`
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`“Stor[ing]”: Grounds 1 and 3 – Noble
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`Petitioners: Obvious to store promotional information that is not limited to a geographical
`region according to “coupon categories”
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`Pet. at 29
`
`40
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`
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`“Stor[ing]”: Grounds 1 and 3 – Noble
`
`Petitioners: Obvious to store promotional information that is not limited to a geographical
`region according to “coupon categories”
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`Pet. at 37; Ex. 1003 (Noble) at 24:15-18
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`Pet. at 37; Ex. 1003 (Noble) at 16:6-11
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`41
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`
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`“Stor[ing]”: Grounds 1 and 3 – Hassett
`POSITA would not have combined Noble and Hassett as proposed – no motivation to store
`based on “geographic regions” or “coupon categories”
`
`Pet. at 39
`
`42
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`
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`“Stor[ing]”: Grounds 1 and 3 – Hassett
`Hassett’s ability to “specify [a] sequence of advertisements” is not motivation to use “pre-
`defined information categories”
`
`Pet. at 40
`
`POR at 39; Ex. 1004 (Hassett) at Fig. 8
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`43
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`
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`“Stor[ing]”: Grounds 1 and 3 – Hassett
`Alleged “ubiquity of the underlying technology” is not a motivation to combine Noble and
`Hassett
`
`That a person of skill in the art “could very well” use
`the triplet of the ′ 051 patent is insufficient reason for
`the skilled artisan to specifically seek out the unique
`lens disclosed in that reference.
`
`Sur-Reply at 15; Suprema, Inc. v. Int'l Trade Comm’n,
`742 F.3d 1350, 1368 (Fed. Cir. 2013) (internal citation omitted);
`vacated on other grounds, 796 F.3d 1338 (Fed. Cir. 2015) (en banc)
`
`44
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`
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`“Stor[ing]”: Grounds 1 and 3 – Hassett
`Hassett’s subcategories are not “pre-defined” and are not used for “stor[ing]” information
`
`POR at 40; Ex. 1004 (Hassett) at 11:5-26
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`45
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`
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`Grounds 1-4:
`Noble Lacks a “Proxy Content Server”
`
`46
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`
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`“Proxy Content Server”: Claim Construction
`
`“proxy content server”:
`“a server that aggregates at
`least content information from
`an information source for
`distribution to a device”
`
`POR at 22-25
`
`“content Information” (undisputed):
`
`information, other than advertising
`information and meta tags, which is
`capable of being displayed for viewing.
`
`Ex. 1001 (’351 Patent) at Claim 1
`
`Reply at 1
`
`47
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`
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`“Proxy Content Server”: Claim Construction
`
`Sur-Reply at 6; Ex. 1001 (’351 Patent) at 1:44-57
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`Sur-Reply at 7; Ex. 1001 (’351 Patent) at 11:19-24
`
`48
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`
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`“Proxy Content Server”: Claim Construction
`
`Dr. Shoemake:
`
`POR at 22; Ex. 2008 (Shoemake Decl.) ¶ 39
`
`49
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`
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`“Proxy Content Server”: Claim Construction
`The specification defines “proxy content server” as “receiv[ing] information from the content
`server”
`
`“Statements that describe the invention as a whole
`[referring to, inter alia, statements made in the
`summary], rather than statements that describe only
`preferred embodiments, are more likely to support
`a limiting definition of a claim term.”
`
`Sur-Reply at 6-7; C.R. Bard., Inc. v. U.S. Surgical Corp.,
`388 F.3d 858, 864 (Fed. Cir. 2004)
`
`50
`
`Sur-Reply at 6; Ex. 1001 (’351 Patent) at 1:44-57
`
`
`
`“Proxy Content Server”: Claim Construction
`• Petitioners’ position:
`
`Reply 12
`• No Dispute: Petition identifies no proxy content server that meets PO’s proposed construction
`
`51
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`
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`“Proxy Content Server”: Claim Construction
`Petitioners’ antecedent argument:
`
`Reply at 3-4;
`Sur-Reply at 4-5
`
`52
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`
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`“Proxy Content Server”: Claim Construction
`Petitioners’ antecedent argument:
`
`Reply at 3-4;
`Sur-Reply at 4-5
`
`Sur-Reply at 4-5; Ex. 1001 (’351 Patent) Claim 1
`
`53
`
`
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`“Proxy Content Server”: Claim Construction
`Petitioners’ dependent claim argument:
`
`Sur-Reply at 5 n.3; Ex. 1001 (’351 Patent) at Claim 5
`
`Sur-Reply at 5 n.3; Ex. 1001 (’351 Patent) at Claim 17
`
`Sur-Reply at 5 n.3; Ex. 1001 (’351 Patent) at Claim 1
`
`54
`
`
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`“Proxy Content Server”: Claim Construction
`Petitioners’ specification citations do not support their construction
`
`Reply at 6; Ex. 1001 (’351 Patent) at 2:59-63
`
`Reply at 7; Ex. 1001 (’351 Patent) at 2:31-34
`
`Sur-Reply at 6; Ex. 1001 (’351 Patent) at 1:44-57
`
`55
`
`
`
`“Proxy Content Server”: Claim Construction
`Petitioners’ specification citations do not support their construction
`
`Reply at 8; Ex. 1001 (’351 Patent) at 2:59-66
`
`Reply at 8; Ex. 1001 (’351 Patent) at 6:54-57
`
`Reply at 7; Ex. 1001 (’351 Patent) at 3:45-47
`
`Reply at 8; Ex. 1001 (’351 Patent) at 7:30-34
`
`Reply at 8; Ex. 1001 (’351 Patent) at 3:16-19
`
`56
`
`
`
`“Proxy Content Server”: Claim Construction
`Specification does not support Petitioners’ interpretation of “proxy content server”
`
`Sur-Reply at 6; Ex. 1001 (’351 Patent) at 1:44-57
`
`57
`
`
`
`“Proxy Content Server”: Claim Construction
`BlackBerry’s district court constructions are consistent
`
`Sur-Reply at 8 n.5; Ex. 1024 (Markman Order) at 12
`
`Institution Decision at 10
`
`58
`
`
`
`Grounds 1 and 3:
`Noble Lacks “Combin[able]” “Static
`Advertising Information” and “Dynamic
`Advertising Information”
`
`59
`
`
`
`“Dynamic” Advertising: Claim Construction of Second Wherein Clause
`
`“a combination of the static advertising information with one of the
`dynamic or default advertising information comprises an advertisement
`or an information bulletin”
`
`Petitioners’ Position
`“[C]lause [2] imposes a limitation
`only if a combination of such
`advertising information exists – the
`clause itself does not mandate that
`the combination actually be
`present.”
`
`Reply at 10
`
`BlackBerry’s Position
`static advertising information is
`“combina[be]” with dynamic or
`default advertising information
`
`Sur-Reply at 19
`
`60
`
`
`
`“Dynamic” Advertising: Claim Construction of Second Wherein Clause
`The claim language supports BlackBerry:
`
`POR at 27
`Ex. 1001 (’351
`Patent) at Claim 1
`
`61
`
`
`
`“Dynamic” Advertising: Claim Construction of Second Wherein Clause
`The specification supports BlackBerry:
`
`Sur-Reply at 20; Ex. 1001 (’351 Patent) at 11:2-10
`
`62
`
`
`
`“Dynamic” Advertising: Claim Construction of Second Wherein Clause
`The file history supports BlackBerry:
`
`Sur-Reply at 20-21; Ex. 2001 (’351 Patent File History) at 111-12 (Office
`Action)
`
`Sur-Reply at 21; Ex. 2001 (’351 Patent File History) at 14 (Notice of Allowability)
`
`63
`
`Sur-Reply at 21; Ex. 2001 (’351 Patent File History) at 94 (Applicants’ Response)
`
`
`
`“Dynamic” Advertising: Claim Construction of Second Wherein Clause
`
`[T]he Board did not err in giving
`limiting effect to the “wherein” clauses
`because they relate back to and clarify
`what is required by the count. Each
`“wherein” clause refers to the point
`mutation, giving meaning and purpose to
`the manipulative steps.
`POR at 29; Griffin v. Bertina,
`285 F.3d 1029, 1033 (Fed. Cir. 2002)
`
`[T]he Examiner explicitly relied on the
`“wherein” clauses in explaining why the
`claims of the Patents-in-Suit were “novel
`and non-obvious over the prior art.” . . .
`The prosecution history thus
`demonstrates that the formulation’s
`efficacy and safety—as reflected in the
`disputed “wherein” clauses—were
`expressly relied on to define the claimed
`methods and distinguish them from the
`prior art.
`POR at 28-29; Allergan Sales, LLC v. Sandoz, Inc.,
`935 F.3d 1370, 1375-76 (Fed. Cir. 2002)
`
`64
`
`
`
`“Dynamic” Advertising: Claim Construction of “Dynamic”
`
`The Board construed “dynamic advertising information”
`
`Institution Decision at 12
`The parties continue to dispute the interpretation of the claim term
`Petitioners’ Position
`BlackBerry’s Position
`actual “information” “may change or
`“Nothing in the ’351 patent
`excludes ‘dynamic advertising
`vary at any given time”
`information’ from being represented
`as a computer file that dynamically
`displays different content based on
`changing conditions.”
`Reply at 23-24
`
`POR at 46
`
`65
`
`
`
`“Dynamic” Advertising: Claim Construction of “Dynamic”
`The claims:
`
`POR at 45-46; Ex. 2008 (Shoemake Decl.) ¶¶ 139-140
`
`POR at 45-46
`Ex. 1001 (’351 Patent) at
`Claim 1
`
`66
`
`
`
`“Dynamic” Advertising: Claim Construction of “Dynamic”
`
`The specification supports BlackBerry
`
`Petitioners’ Response
`
`Reply at 23-24
`
`POR at 46; Ex. 1001 (’351 Patent) at 7:35-49
`
`67
`
`
`
`“Dynamic” Advertising: Claim Construction of “Dynamic”
`Petitioners do not identify “dynamic” advertising that meets BlackBerry’s construction:
`
`POR at 47; Ex. 1003 (Noble) at 24:9-14
`
`POR at 48; Ex. 1003 (Noble) at 19:5-7
`
`68
`
`
`
`“Dynamic” Advertising: Claim Construction of “Dynamic”
`Petitioners improperly shift the burden on obviousness
`
`Reply at 23
`
`In an inter partes review, the burden of
`persuasion is on the petitioner to prove
`“unpatentability by a preponderance of
`the evidence,” 35 U.S.C. § 316(e), and
`that burden never shifts to the
`patentee.
`Sur-Reply at 24; Dynamic Drinkware, LLC v. Nat’l Graphics,
`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)
`
`69
`
`POR at 49; Ex. 2008 (Shoemake Decl.) ¶ 151
`
`
`
`“Dynamic” Advertising: Claim Construction of “Dynamic”
`Petitioners present conclusory assertions of obviousness that advertising information in Noble
`“could” be dynamic
`
`[T]he Board was correct to require record evidence to support an assertion that
`the structural features of claims 3 and 9 of the ’512 patent were known prior art
`elements. . . . The determination of patentability of claims with this limitation therefore
`requires a core factual finding, and as such, requires more than a conclusory
`statement from either HIMPP or the Board. HIMPP must instead “point to some
`concrete evidence in the record in support of these findings.”
`. . .
`the Board refused to adopt HIMPP's proposed rejection of claims 3 and 9 because it
`found that there was not a suitable basis on the record “for concluding that the
`particular structural features of claims 3 and 9 [were] known ‘prior art’ elements.” The
`Board's decision was correct because an assessment of basic knowledge and
`common sense as a replacement for documentary evidence for core factual
`findings lacks substantial evidence support.
`
`Sur-Reply at 26-27; K/S Himpp v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1365 (Fed.
`Cir. 2014)
`
`70
`
`
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