Facebook, Inc., Instagram, LLC and WhatsApp Inc.
`v.
`BlackBerry Limited
`
`IPR2019-00941
`U.S. Patent No. 8,296,351
`Petitioners’ Demonstratives
`
`September 3, 2020
`
`Before Miriam L. Quinn, Gregg I. Anderson, and Robert L. Kinder,
`Administrative Patent Judges
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`1
`
`Facebook's Exhibit No. 1043
`IPR2019-00941
`
`
`v.
`BlackBerry Limited
`
`IPR2019-00941
`U.S. Patent No. 8,296,351
`Petitioners’ Demonstratives
`
`September 3, 2020
`
`Before Miriam L. Quinn, Gregg I. Anderson, and Robert L. Kinder,
`Administrative Patent Judges
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`1
`
`Facebook's Exhibit No. 1043
`IPR2019-00941
`
`
`
`Claim 1 of the ’351 Patent
`
`U.S. Patent 8,296,351
`Ex. 1001
`
`Independent Claim 14 is substantially similar
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`2
`
`
`
`Instituted Grounds
`
`• Ground 2 replaces Hassett with Mann and Johnson
`• Grounds 3 & 4 add De Boor to prior art Grounds 1 & 2
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`3
`
`
`
`Key Disputes
`
`• Claim construction:
`• “proxy content server”
`• “wherein” clauses of claims 1 & 14
`
`• Prior art disclosure of:
`• “proxy content server”
`• “pre-defined information
`categories”
`• “combination” of advertising
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`4
`
`
`
`Claim Construction:
`“proxy content server”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`5
`
`
`
`“proxy content server” – Parties’ Proposed Constructions
`
`Petitioner
`No construction necessary
`(same as district court and term
`does not require aggregation of “at
`least content information”)
`
`Patent Owner
`“a server that aggregates at least content
`information* from an information source for
`distribution to a device”
`
`than
`is “information, other
`information”
`* “content
`advertising information and meta tags, which is
`capable of being displayed for viewing”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Reply at 1-2)
`
`6
`
`
`
`Claim Language:
`“proxy content server”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`7
`
`
`
`“proxy content server” – Patent Owner’s Proposed Construction
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Reply at 2.)
`
`8
`
`
`
`“proxy content server” – Patent Owner’s Proposed Construction
`
`• Surrounding claim language: no requirement to aggregate “at least content
`information”
`
`“proxy content server” receives “information”
`from an information source—the “information”
`does not need to include “content information”
`
`Referring to the “information” received by the
`proxy content server in limitation [a], no need to
`include content
`information—it could contain
`only “static advertising information,” for example
`
`Both sides’ experts agree
`(Ex. 1038, ¶ 8; Ex. 1039, 17:8-18:14)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Reply at 2-4)
`
`9
`
`
`
`“proxy content server” – Patent Owner’s Proposed Construction
`
`• Dependent claims 5 and 17: “the information” corresponds to a particular
`advertiser
`
`“[T]he information” refers back to the
`same “information” received by proxy
`content server in claim 1
`
`• Corresponding description in the ’351 patent specification:
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`(Reply at 5; ’351, 6:54-57)
`
`10
`
`
`
`Patent Specification:
`“proxy content server”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`11
`
`
`
`“proxy content server” – Patent Owner’s Proposed Construction
`
`Patent Owner’s construction refuted by specification
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Reply at 5-7)
`
`12
`
`
`
`“proxy content server” – Patent Owner’s Proposed Construction
`
`Patent Owner’s construction refuted by specification
`• The term “advertising content” appears more than 30 times in the written description, for
`example:
`
`•
`
`•
`
`•
`
`“The Proxy Content Server 18 also provides a method of combining the information so
`that the mobile device user has a consistent and transparent experience of receiving
`both information content and advertising content.” (’351, 2:63-66)
`
`“One possible goal of combining information with advertising content is to achieve a
`revenue source for the provider of the information so the mobile device user gets a
`reduce [sic] or free information service.” (’351, 3:17-19)
`
`“The advertising content 52 is further broken down into static advertising content
`52A, dynamic advertising content 52B, and default advertising content 52C
`corresponding to a particular advertiser.” (’351, 6:54-57)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Reply at 7-8)
`
`13
`
`
`
`District Court Litigation:
`“proxy content server”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`14
`
`
`
`“proxy content server” – Patent Owner’s Proposed Construction
`
`Patent Owner’s construction unsupported by district court litigation
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Reply at 8-9)
`
`15
`
`
`
`Claim Construction:
`“wherein” clauses of claims 1 & 14
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`16
`
`
`
`“wherein” clauses of claims 1 & 14
`
`• PO Argues: “wherein” clauses of claims 1 & 14 are limiting:
`
`• Summary of Petitioners’ Response:
`• Wherein clause [2] applies only when recited combination of
`“advertising information” (static with dynamic or default) exists
`
`But
`• Wherein clause [1] makes clear: combination in [2] not required
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Reply at 9-12)
`
`17
`
`
`
`“wherein” clauses of claims 1 & 14 – Response to PO
`
`• Clause [2] imposes a limitation only if recited combination of advertising information exists
`
`Both sides’ experts agree this language is
`satisfied if the “information” comprises only
`static advertising information, for example
`(Ex. 1038, ¶ 8; Ex. 1039, 17:8-18:14)
`
`• Patent Owner’s interpretation would undo open-ended language of
`clause [1] by expressly requiring that at least two categories of
`advertising always exist
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Reply at 10-12)
`
`18
`
`
`
`“wherein” clauses of claims 1 & 14 – Response to PO
`
`• Clause [2] imposes a limitation only if recited combination of advertising information exists
`
`Both sides’ experts agree this language is
`satisfied if the “information” comprises only
`static advertising information, for example
`(Ex. 1038, ¶ 8; Ex. 1039, 17:8-18:14)
`
`• Both wherein clauses [1] and [2] added at same time, in same claim
`amendment. (Ex. 2001, p.89)
`
`• Reasons for allowance did not attach any particular significance to
`wherein clause [2]; merely repeated language from claim 1. (Id. at p.14)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Reply at 10-12)
`
`19
`
`
`
`Whether the Prior Art Discloses
`“proxy content server”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`20
`
`
`
`Prior Art Discloses “proxy content server” – Noble
`• Noble’s server 201 receives promotional information over a computer network 203 from
`various merchants, such as on-line merchant 204
`
`information for their goods and services
`See, e.g., Noble, 10:16-19 (“Merchants who wish to place promotional
`preferably access the server 301….”), 24:23-25:1 (“When a merchant wishes to hold a special sale event, the merchant
`accesses the server via the merchant interface, and provides the details of the sale event to the server.”); see also
`Noble, 8:12-20, 11:14-17, 12:10-14; Chatterjee, ¶ 83
`
`(Petition at 23-25)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`21
`
`
`
`Prior Art Discloses “proxy content server” – Response to PO
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Reply at 12)
`
`22
`
`
`
`Whether the Prior Art Discloses and Renders
`Obvious “pre-defined information categories”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`23
`
`
`
`“pre-defined information categories” – Noble + Hassett
`
`• Noble discloses two types of information categories:
`
`1. Categories based on geographical location
`
`2. “Coupon categories” such as “clothing” and “toys”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Petition at 25-29; Reply at 13-18)
`
`24
`
`
`
`“pre-defined information categories” – Noble + Hassett
`
`1. Categories based on geographical location
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Petition at 25-27; Reply at 13-18)
`
`25
`
`
`
`“pre-defined information categories” – Noble + Hassett
`
`1. Categories based on geographical location
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Petition at 25-27; Reply at 13-18)
`
`26
`
`
`
`“pre-defined information categories” – Noble + Hassett
`
`2.
`
`“Coupon categories” such as “clothing” and “toys”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Petition at 27-29; Reply at 13-18)
`
`27
`
`
`
`“pre-defined information categories” – Noble + Hassett
`
`2.
`
`“Coupon categories” such as “clothing” and “toys”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Petition at 27-29; Reply at 13-18)
`
`28
`
`
`
`“pre-defined information categories” – Noble + Hassett
`
`2.
`
`“Coupon categories” such as “clothing” and “toys”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Petition at 27-29; Reply at 13-18)
`
`29
`
`
`
`“pre-defined information categories” – Noble + Hassett
`
`• Hassett:
`
`Advertisements assigned to categories
`(e.g., News, Sports)
`
`For example, advertisement whose “File
`Name” is “A001” has been assigned to
`the “News” category
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Petition at 30-37; Reply at 18-22)
`
`30
`
`
`
`“pre-defined information categories” – Noble + Hassett
`
`• Hassett:
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Petition at 36)
`
`31
`
`
`
`“pre-defined information categories” – Noble + Hassett
`
`• Rationale and Motivation to Combine:
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Petition at 37-42; Reply at 18-22)
`
`32
`
`
`
`“pre-defined information categories” – Noble + Hassett
`
`• Rationale and Motivation to Combine:
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Petition at 39-40; Reply at 18-22)
`
`33
`
`
`
`“pre-defined information categories” – Noble + Hassett – Response to PO
`
`• PO argues: Noble can only arrange promotional information based on
`granular location information such as a street address
`
`• Summary of Petitioners’ Response:
`• Geographic “location” can be specified at different layers of granularity
`
`• Other disclosures in Noble confirm ability to arrange and retrieve
`promotional information based on broader geographical areas. (Noble,
`16:6-11, 18:11-15, 25:4-6)
`
`• Johnson provides further contemporaneous evidence.
`• Discloses “location field” that can include “truncated” (less precise)
`coordinates specifying broader scope. (Ex. 1006, 13:30-46)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Reply at 14-17)
`
`34
`
`
`
`“pre-defined information categories” – Noble + Hassett – Response to PO
`
`• Other disclosures in Noble confirm that Noble can arrange and retrieve
`promotional information based on broader geographical areas:
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Reply at 14-15)
`
`35
`
`
`
`“pre-defined information categories” – Noble + Hassett – Response to PO
`
`• PO argues: Organizing promotional information in Noble based on
`geographic categories would have been inefficient
`
`• Response:
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Reply at 17)
`
`36
`
`
`
`“pre-defined information categories” – Noble + Hassett – Response to PO
`
`• PO argues: Organizing promotional information in Noble based on
`geographic categories would have been inefficient
`
`• Dr. Chatterjee:
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Second Chatterjee Depo., Ex. 2012 at 60:1-16)
`
`37
`
`
`
`“pre-defined information categories” – Noble + Hassett – Response to PO
`
`• PO argues: Organizing promotional information in Noble based on
`geographic categories would have been inefficient
`
`• Dr. Chatterjee:
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Second Chatterjee Depo., Ex. 2012 at 60:16-21)
`
`38
`
`
`
`“pre-defined information categories” – Noble + Hassett – Response to PO
`
`• PO argues: Ability in Hassett to specify sequence of advertisements
`not relevant, proffered motivation to combine not sufficient
`• Summary of Petitioners’ Response:
`• Hassett ad queue inextricably intertwined with category storage
`• Motivation to combine need not coincide with the motivation of the
`inventors See, e.g., In re Kahn, 441 F.3d 977, 989 (Fed. Cir. 2006) (“[T]he skilled artisan need not
`be motivated to combine [a prior art reference] for the same reason contemplated by the [inventor]”); In re
`Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) (“As long as some motivation or suggestion to combine the
`references is provided by the prior art taken as a whole, the law does not required that the references be
`combined for the reasons contemplated by the inventor.”)
`• PO asserts that Hassett “subcategories” different from “categories”
`but does not identify relevant differences
`• PO does not challenge alternative argument that it would have
`been obvious to combine Noble and Hassett
`for storage of
`promotional information based on coupon categories in Noble
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Reply at 18-22)
`
`39
`
`
`
`“pre-defined information categories” – Noble + Mann + Johnson
`
`• Disclosed in two separate ways:
`
`1. Storing information to locations in a relational database table based on the
`table’s columns and the information’s association with those columns
`
`2. Clustered index for a database, in which records/rows in database table are
`physically sorted in memory based on the columns associated with the index
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Petition at 59-65; Reply at 25-26)
`
`40
`
`
`
`“pre-defined information categories” – Noble + Mann + Johnson
`
`1. Storing information to locations in a relational database table based on the
`table’s columns and the information’s association with those columns
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Petition at 63-64; Reply at 25-26)
`
`41
`
`
`
`“pre-defined information categories” – Noble + Mann + Johnson
`
`1. Storing information to locations in a relational database table based on the
`table’s columns and the information’s association with those columns
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`42
`
`(Petition at 62; Reply at 25-26; ’351, 14:8-16 (Claim 1.))
`
`
`
`“pre-defined information categories” – Noble + Mann + Johnson
`
`1. Storing information to locations in a relational database table based on the
`table’s columns and the information’s association with those columns
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Petition at 62; Reply at 25-26)
`
`43
`
`
`
`“pre-defined information categories” – Noble + Mann + Johnson
`
`2. Clustered index for a database, where records/rows in a database table are
`physically sorted in memory based on the columns associated with the index
`Storage of an item of promotional information into a channel is thus based on two
`categories, i.e., two columns in the table:
`
`In clustered index sorted based on
`Geographic Location, ads physically
`stored on disk in order shown
`
`Thus, actual memory location (channel) for
`storage of Promotional Information based
`on two pre-defined information categories –
`“Promotional Information” column and the
`“Geographical Location” column
`
`(Petition at 62, 66; Ex. 1002, ¶¶183-184; Reply at 25-26)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`44
`
`
`
`“pre-defined information categories” – Noble + Mann + Johnson – Response to PO
`
`• PO Argues: Claim language requires using multiple pre-defined information
`categories for determining the channel for storing a particular piece of information
`
`• Response:
`information be
`• More natural reading of claim language requires only that
`stored into a channel based on one of a number of categories (see ’351, 4:28-
`30, 4:43-46)
`• Even if claim narrowly interpreted in manner PO suggests, use of a “clustered
`index” as discussed in Mann still renders it obvious
`• PO Response does not address Petitioner’s arguments about use of
`“clustered index,” does not dispute that it satisfies claim limitation
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Reply at 24-26)
`
`45
`
`
`
`Whether the Prior Art Discloses
`“combination” of advertising
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`46
`
`
`
`“combination” of advertising – Claim Construction (Institution Decision)
`
`Term
`“static advertising information”
`
`“dynamic advertising information”
`
`“default advertising information”
`
`Construction
`advertising information that relates to the
`identity of an advertiser or that does not
`often change
`advertising information that may change or
`vary at any given time, including advertising
`information that regularly changes
`No express construction
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Institution Decision at 11-12)
`
`47
`
`
`
`“combination” of advertising – Noble (Grounds 1 & 3)
`
`• PO Argues: Noble does not disclose “dynamic advertising information”
`
`• Response:
`• Even if the claim were construed to require the recited “combination,” Noble
`discloses and renders obvious at
`least static and dynamic advertising
`information:
`
`in “10% off Joe’s Coffee”
`• Obvious that “10% off” discount amount
`example (Noble, 24:9-12) could change depending on (among other
`things) the length of time the sale was offered
`
`• Supported by “animated display” advertisement
`in Noble, which can
`provide “a dynamically changing discount amount” based on the time of
`day, day of the week, and so forth (Noble, 19:5-7)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Reply at 22-24)
`
`48
`
`
`
`“combination” of advertising – Noble (Grounds 1 & 3)
`
`• PO Argues: Noble does not disclose “dynamic advertising information” –
`Noble’s animated display is not “dynamic advertising information” because
`actual binary data of the ad does not change
`
`• Response:
`• PO’s argument lacks factual support and based on speculation
`
`in animated display can dynamically
`that advertising content
`• Fact
`change show obviousness of claimed dynamic advertising information
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Reply at 23-24 (citing Ex. 1038, ¶¶ 48-51))
`
`49
`
`
`
`“combination” of advertising – Noble + Johnson (Grounds 2 & 4)
`
`No dispute that Noble + Johnson (Grounds 2 and 4) render obvious
`the claimed “combination,” even if found to be a limitation
`
`• Noble:
`• Obvious that at least one of the promotions that would be provided in
`Noble, e.g., “10% off Joe’s Coffee,” would constitute a combination of
`static and dynamic advertising
`• Johnson:
`• Combination of static and default or dynamic advertising information:
`• Expressly disclosed in example of
`“textual message such as
`‘Starbucks has a 60% off sale just ahead at 314 Main Street with free
`no-spill coffee mugs!!!’.” (Johnson, 8:60-63)
`• “Speed reference info 716”
`(“a web address or phone number”)
`transmitted with advertisement to a mobile device (Johnson, 13:64-
`14:1, Fig. 7A)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Petition at 46-50, 69-71; Reply at 13)
`
`50
`
`
`
`Thank you
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`51
`
`
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