Demonstratives of Petitioner Snap Inc.
`
`Inter Partes Review of
`
`U.S. Patent No. 8,489,599
`
`IPR2021-00987
`
`Oral Hearing: August 24, 2022
`
`DEMONSTRATIVE EXHIBIT
`– NOT EVIDENCE
`
`1
`
`SNAP EXHIBIT 1030
`Snap Inc. v. Palo Alto Research Center Inc.
`IPR2021-00987
`
`Page 1 of 59
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`
`
`Inter Partes Review of
`
`U.S. Patent No. 8,489,599
`
`IPR2021-00987
`
`Oral Hearing: August 24, 2022
`
`DEMONSTRATIVE EXHIBIT
`– NOT EVIDENCE
`
`1
`
`SNAP EXHIBIT 1030
`Snap Inc. v. Palo Alto Research Center Inc.
`IPR2021-00987
`
`Page 1 of 59
`
`
`
`IPR2021-00987 – Original Claims
`
`Original Claims 1-25
`
`• Ground 1: Claims 1, 2, 4-7, 10-13, 17-20, 22-25 are unpatentable as
`anticipated by Rosenberg
`
`• Ground 2: Claims 4-5, 15-16, 19-20, 22-25 are unpatentable as obvious over
`Rosenberg
`
`• Ground 3: Claims 3, 8-9, 14, 21 are unpatentable as obvious over Rosenberg
`and Suzuki
`
`DEMONSTRATIVE EXHIBIT
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`
`Inst. Dec. at 6; Pet. at 2; Ex. 1002 at ¶¶33-266
`
`2
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`Page 2 of 59
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`
`
`IPR2021-00987 – Motion to Amend
`
`Substitute Claims 26-40
`
`Issue 1: Substitute Claims 26-40 Lack Written Description Support
`
`Issue 2: Substitute Claims 26-40 are Unpatentable as Obvious Over
`Rosenberg and Buck
`
`Issue 3: Substitute Claim 30 is unpatentable as Obvious Over Rosenberg,
`Suzuki, and Buck
`
`•
`
`•
`
`•
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`DEMONSTRATIVE EXHIBIT
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`Opp. at 1-25; Guid., at 3-8; Ex. 1022 at ¶¶33-127
`
`3
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`Page 3 of 59
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`
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`ORIGINAL CLAIMS
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`DEMONSTRATIVE EXHIBIT
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`4
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`Page 4 of 59
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`
`
`Original Claims
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`DEMONSTRATIVE EXHIBIT
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`Ex. 1001 at 23:20-41 (Claim 1)
`
`5
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`Page 5 of 59
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`
`
`Original Claims – Disputed Issues
`
`• Claim Construction
`• Patent Owner: “determin[e/ing] whether the received response
`matches the expected response” requires the possibility of expected and
`unexpected response
`
`• Petitioner: Plain meaning of the claims does not require unexpected
`response
`
`• Grounds 1-3
`• Rosenberg discloses the claimed “determining” and “performing”
`limitations under the plain meaning of the claims
`
`DEMONSTRATIVE EXHIBIT
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`Reply at 1-13; POR at 7-8, 13-26
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`6
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`Page 6 of 59
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`
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`Original Claims – Disputed Issues
`
`• Claim Construction
`• Patent Owner: “determin[e/ing] whether the received response
`matches the expected response” requires the possibility of expected and
`unexpected response
`
`• Petitioner: Plain meaning of the claims does not require unexpected
`response
`
`• Grounds 1-3
`• Rosenberg discloses the claimed “determining” and “performing”
`limitations under the plain meaning of the claims
`
`DEMONSTRATIVE EXHIBIT
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`Reply at 1-13; POR at 7-8, 13-26
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`7
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`Page 7 of 59
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`
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`Original Claims – Claim Construction
`
`• The ’599 Patent does not disclose or claim unexpected response
`
`’599 Patent, Claim 1
`
`Patent Owner’s Construction
`
`POR at 14-15
`
`Institution Decision
`
`Inst. Dec. at 18
`
`Ex. 1001 at 23:20-41 (Claim 1)
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`DEMONSTRATIVE EXHIBIT
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`Reply at 2-3; Ex. 1022 at ¶¶41-57
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`8
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`Page 8 of 59
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`
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`Original Claims – Claim Construction
`
`• The ’599 Patent does not disclose or claim unexpected response
`
`’599 Patent Specification
`
`Patent Owner’s Expert, Dr. Martin
`
`Petitioner’s Expert, Dr. Almeroth
`
`Ex. 2003 at ¶81
`
`Ex. 1001 at 10:57-11:9 (Table 1), 14:30-39 (Table 2)
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`DEMONSTRATIVE EXHIBIT
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`Reply at 7-8; Ex. 1022 at ¶¶41-57
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`Ex. 1022 at ¶54
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`9
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`Page 9 of 59
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`
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`Original Claims – Claim Construction
`
`• The ’599 Patent does not disclose or claim unexpected response
`
`’599 Patent File History
`
`Petitioner’s Expert, Dr. Almeroth
`
`Ex. 1004 at 346
`
`Ex. 1022 at ¶56
`
`Ex. 1022 at ¶56
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`DEMONSTRATIVE EXHIBIT
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`Reply at 7-8; Ex. 1022 at ¶¶41-57
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`10
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`Page 10 of 59
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`
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`Original Claims – Claim Construction
`
`• Unexpected response is not required to give meaning to claims
`
`Patent Owner Response
`
`POR at 15-16
`Patent Owner’s Expert, Dr. Martin
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`DEMONSTRATIVE EXHIBIT
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`Reply at 3-7; Ex. 1022 at ¶¶45-52
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`Ex. 2003 at ¶77
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`11
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`Page 11 of 59
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`
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`Original Claims – Claim Construction
`
`• Unexpected response is not required to give meaning to claims
`
`’599 Patent Specification
`
`Petitioner’s Expert, Dr. Almeroth
`
`Ex. 1001 at 10:57-11:9 (Table 1), 14:30-39 (Table 2)
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`DEMONSTRATIVE EXHIBIT
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`Reply at 3-8; Ex. 1022 at ¶¶45-52
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`Ex. 1022 at ¶¶51-52
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`12
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`Page 12 of 59
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`
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`Original Claims – Claim Construction
`
`• Patent Owner Response: “possible responses” that are “known in
`advance” and are “accounted for” do not constitute unexpected responses
`
`Patent Owner Response
`
`Dr. Martin Declaration
`
`Ex. 2003 at ¶94
`
`POR at 28
`
`Ex. 2003 at ¶95
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`DEMONSTRATIVE EXHIBIT
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`Reply at 3-4; Ex. 1022 at ¶¶45-52; POR at 26-30; Ex. 2003 at ¶¶94-97
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`13
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`Page 13 of 59
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`
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`Original Claims – Claim Construction
`
`• Petitioner’s Reply: The claimed “determin[e/ing]” limitation does not
`require an unexpected response not known to the system
`
`Petitioner’s Reply
`
`Reply at 3
`
`Reply at 4
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`DEMONSTRATIVE EXHIBIT
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`Reply at 3-6; Ex. 1022 at ¶¶45-52; POR at 26-30; Ex. 2003 at ¶¶94-97
`
`Reply at 5
`
`Reply at 6
`
`14
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`Page 14 of 59
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`
`
`Original Claims – Claim Construction
`
`• Patent Owner Sur-Reply: Petitioner conflates Patent Owner’s
`arguments against Rosenberg with Patent Owner’s claim construction
`arguments
`
`Patent Owner’s Sur-Reply
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`DEMONSTRATIVE EXHIBIT
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`Sur-Reply at 5-7
`
`Sur-Reply at 6
`
`15
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`Page 15 of 59
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`
`
`Original Claims – Disputed Issues
`
`• Claim Construction
`• Patent Owner: “determin[e/ing] whether the received response
`matches the expected response” requires the possibility of expected and
`unexpected response
`
`• Petitioner: Plain meaning of the claims does not require unexpected
`response
`
`• Grounds 1-3
`• Rosenberg discloses the claimed “determining” and “performing”
`limitations under the plain meaning of the claims
`
`DEMONSTRATIVE EXHIBIT
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`Reply at 1-13
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`16
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`Page 16 of 59
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`
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`Original Claims – Grounds 1-3
`
`Petition
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`Pet. at 15
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`DEMONSTRATIVE EXHIBIT
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`Pet. at 6-9, 14-15; Ex. 1002 at ¶¶95-100, 199-202
`
`Pet. at 14-15
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`17
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`Page 17 of 59
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`
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`Original Claims – Grounds 1-3
`
`• The Board correctly determined at institution that
`Rosenberg discloses the “determining” and “performing”
`limitations
`
`Institution Decision
`
`Inst. Dec. at 18-19
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`DEMONSTRATIVE EXHIBIT
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`Reply at 10-13; Ex. 1022 at ¶¶41-57
`
`18
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`Page 18 of 59
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`
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`Original Claims – Grounds 1-3
`
`• Patent Owner’s sole argument under Petitioner’s and the
`Board’s construction is based on misunderstanding of
`Petitioner’s position
`
`Patent Owner Sur-Reply
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`DEMONSTRATIVE EXHIBIT
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`Reply at 3-4; Ex. 1022 at ¶¶46-52
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`Sur-reply at 16-17
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`19
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`Page 19 of 59
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`
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`SUBSTITUTE CLAIMS
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`DEMONSTRATIVE EXHIBIT
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`20
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`Page 20 of 59
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`
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`Substitute Claims
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`DEMONSTRATIVE EXHIBIT
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`MTA at Appx. A, 1-2
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`21
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`Page 21 of 59
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`
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`Substitute Claims – Disputed Issues
`
`• Prior Art Disputes
`• Motivation to combine Rosenberg and Buck
`
`• Combination of Rosenberg and Buck discloses the claimed “receiving a
`response from the first user” limitation
`
`• Rosenberg discloses the claimed “two or more different types of input
`sources”
`
`• Rosenberg discloses the claimed “processing the contextual
`information” limitation
`
`• Section 112 Issues
`•
`“Determining” Limitation Lacks Written Description Support Under
`Petitioner’s Proper Interpretation
`
`•
`
`“Determining” Limitation Lacks Written Description Support Under
`Patent Owner’s Erroneous Interpretation
`
`DEMONSTRATIVE EXHIBIT
`– NOT EVIDENCE
`
`MTA Opp. at 1-25; MTA Sur-Reply at 1-12
`
`22
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`Page 22 of 59
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`
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`Substitute Claims – Undisputed Issues
`
`• Patent Owner did not dispute that Rosenberg and Buck
`discloses the “determining whether the received response is
`expected or unexpected” limitation
`
`• Patent Owner did not dispute that the substitute claims lack
`written description support under Petitioner’s plain meaning
`interpretation
`
`DEMONSTRATIVE EXHIBIT
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`MTA at 1-25; MTA Reply at 1-12
`
`23
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`Page 23 of 59
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`
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`Substitute Claims – Disputed Issues
`
`• Prior Art Disputes
`• Motivation to combine Rosenberg and Buck
`
`• Combination of Rosenberg and Buck discloses the claimed “receiving a
`response from the first user” limitation
`
`• Rosenberg discloses the claimed “two or more different types of input
`sources”
`
`• Rosenberg discloses the claimed “processing the contextual
`information” limitation
`
`• Section 112 Issues
`•
`“Determining” Limitation Lacks Written Description Support Under
`Petitioner’s Proper Interpretation
`
`•
`
`“Determining” Limitation Lacks Written Description Support Under
`Patent Owner’s Erroneous Interpretation
`
`DEMONSTRATIVE EXHIBIT
`– NOT EVIDENCE
`
`MTA Opp. at 1-25; MTA Sur-Reply at 1-12
`
`24
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`Page 24 of 59
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`
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`Substitute Claims – Motivation to Combine
`
`Board’s Preliminary Guidance
`
`DEMONSTRATIVE EXHIBIT
`– NOT EVIDENCE
`
`MTA Sur-Reply at 1; id. at 2-7; Guid. at 7-8
`
`Prelim. Guid. at 7-8
`
`25
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`Page 25 of 59
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`
`
`Substitute Claims – Motivation to Combine
`
`Patent Owner’s MTA Reply
`
`MTA Reply at 8-9
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`DEMONSTRATIVE EXHIBIT
`– NOT EVIDENCE
`
`MTA Sur-Reply at 1, 4; id. at 1-7
`
`26
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`Page 26 of 59
`
`
`
`Substitute Claims – Motivation to Combine
`
`• Rosenberg discloses multiple input devices (e.g., buttons, touchscreen,
`etc.) for providing user input
`
`Rosenberg
`
`Ex. 1005 at 8:62-64
`
`Ex. 1005 at 22:14-15
`
`Ex. 1005 at Fig. 1
`
`DEMONSTRATIVE EXHIBIT
`– NOT EVIDENCE
`
`MTA Sur-Reply at 2-3; id. at 1-7; MTA Opp. at 13-20; Ex. 1022 at ¶¶99-109
`
`Ex. 1005 at 16:34-42
`
`27
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`Page 27 of 59
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`
`
`Substitute Claims – Motivation to Combine
`
`• Rosenberg discloses multiple input devices (e.g., buttons, touchscreen,
`etc.) for providing user input
`
`Ex. 1005 at 17:65-18:2
`
`DEMONSTRATIVE EXHIBIT
`– NOT EVIDENCE
`MTA Sur-Reply at 2-3; id. at 1-7; MTA Opp. at 13-20; Ex. 1022 at ¶¶99-109
`
`28
`
`Ex. 1005 at Fig. 5
`
`Page 28 of 59
`
`
`
`Substitute Claims – Motivation to Combine
`
`• Rosenberg: Figure 2 depicts device 111 with a screen and a keypad
`
`Rosenberg
`
`Patent Owner’s Expert, Dr. Martin
`
`Ex. 1029 at 10:22-11:7
`
`Ex. 1005 at Fig. 2 (excerpt)
`
`MTA Sur-Reply at 2-3; id. at 1-7; MTA Opp. at 13-20; Ex. 1022 at ¶¶99-109
`
`29
`
`Page 29 of 59
`
`
`
`Substitute Claims – Motivation to Combine
`
`• Rosenberg’s device may be a cellphone/PDA known to include a
`keypad/touchscreen
`
`Patent Owner’s Expert, Dr. Martin
`
`Rosenberg
`
`Ex. 1005 at 15:8-13
`
`Ex. 1029 at 12:11-16
`
`Ex. 1029 at 14:14-18
`
`DEMONSTRATIVE EXHIBIT
`– NOT EVIDENCE
`
`MTA Sur-Reply at 2-3; id. at 1-7; MTA Opp. at 13-20; Ex. 1022 at ¶¶99-109
`
`Ex. 1029 at 14:4-7
`
`30
`
`Page 30 of 59
`
`
`
`Substitute Claims – Motivation to Combine
`
`• Rosenberg discloses user interface elements/controls to select
`reminder options presented on device
`
`Rosenberg
`
`Ex. 1005 at 19:24-31
`
`Ex. 1005 at 19:38-41
`
`Ex. 1005 at Fig. 5
`
`DEMONSTRATIVE EXHIBIT
`– NOT EVIDENCE MTA Sur-Reply at 2-3; Pet. at 8, 12-14, 42; MTA Opp. at 13-20; Ex. 1022 at ¶¶99-109
`
`31
`
`Page 31 of 59
`
`
`
`Substitute Claims – Motivation to Combine
`
`• Patent Owner’s Expert: touchscreen/buttons can be used to select
`presented reminder options
`
`Dr. Martin
`
`Ex. 1029 at 24:21-25:12
`
`Ex. 1029 at 26:17-27:8
`
`DEMONSTRATIVE EXHIBIT
`– NOT EVIDENCE
`
`MTA Sur-Reply at 2-3; id. at 1-7
`
`32
`
`Page 32 of 59
`
`
`
`Substitute Claims – Motivation to Combine
`
`• A POSITA would have been motivated to implement features in
`Rosenberg to address the probable scenario of incorrect/invalid input
`
`Petitioner’s Expert, Dr. Almeroth
`
`DEMONSTRATIVE EXHIBIT
`– NOT EVIDENCE
`MTA Sur-Reply at 3-4; id. at 1-7; MTA Opp. at 13-20; Ex. 1022 at ¶¶99-109
`
`Ex. 1022 at ¶101
`
`33
`
`Page 33 of 59
`
`
`
`Substitute Claims – Motivation to Combine
`
`Patent Owner’s Expert, Dr. Martin
`
`Ex. 1005 at Fig. 5
`
`Ex. 1029 at 28:12-29:5
`
`DEMONSTRATIVE EXHIBIT
`– NOT EVIDENCE
`
`MTA Sur-Reply at 4; id. at 1-7
`
`34
`
`Page 34 of 59
`
`
`
`Substitute Claims – Motivation to Combine
`
`• Buck discloses a handheld device providing a context menu interface
`that provides selection choices for a user, similar to Rosenberg’s
`reminder option menu
`
`Buck
`
`Ex. 1023 at 4:34-37
`
`Ex. 1023 at 5:40-41
`
`Ex. 1023 at 6:18-20
`
`Ex. 1023 at Fig. 5
`
`DEMONSTRATIVE EXHIBIT
`– NOT EVIDENCE
`
`MTA Opp. at 15-17; MTA Sur-Reply at 4-5; id. at 1-7
`
`35
`
`Page 35 of 59
`
`
`
`Substitute Claims – Motivation to Combine
`
`• Buck discloses features to address incorrect user input in limited menu
`like Rosenberg’s
`
`Rosenberg’s Menu
`
`Buck’s Menu
`
`Ex. 1005, at Fig. 5 (excerpt)
`
`DEMONSTRATIVE EXHIBIT
`– NOT EVIDENCE
`
`MTA Opp. at 15-20; MTA Sur-Reply at 4-5; id. at 1-7
`
`Ex. 1023 at Fig. 11
`
`36
`
`Page 36 of 59
`
`
`
`Substitute Claims – Motivation to Combine
`
`• Buck discloses features to address incorrect user input in limited menu
`like Rosenberg’s
`
`Buck
`
`DEMONSTRATIVE EXHIBIT
`– NOT EVIDENCE
`
`MTA Sur-Reply at 4-6; MTA Opp. at 15-17; Ex. 1022 at ¶¶102-105
`
`37
`
`Ex. 1023 at 14:32-44
`
`Page 37 of 59
`
`
`
`Substitute Claims – Motivation to Combine
`
`Patent Owner’s MTA Reply
`
`• Buck discloses “handheld device”
`
`MTA Reply at 10
`
`Ex. 1023 at 5:40-43
`
`• Rosenberg’s portable device 111 can use a “mouse,” “keypad”, and/or
`“touch screen”
`
`DEMONSTRATIVE EXHIBIT
`– NOT EVIDENCE
`
`MTA Sur-Reply at 4-6; id. at 2-3
`
`Ex. 1005 at 16:34-37
`
`38
`
`Page 38 of 59
`
`
`
`Substitute Claims – Disputed Issues
`
`• Prior Art Disputes
`• Motivation to combine Rosenberg and Buck
`
`• Combination of Rosenberg and Buck discloses the claimed “receiving a
`response from the first user” limitation
`
`• Rosenberg discloses the claimed “two or more different types of input
`sources”
`
`• Rosenberg discloses the claimed “processing the contextual
`information” limitation
`
`• Section 112 Issues
`•
`“Determining” Limitation Lacks Written Description Support Under
`Petitioner’s Proper Interpretation
`
`•
`
`“Determining” Limitation Lacks Written Description Support Under
`Patent Owner’s Erroneous Interpretation
`
`DEMONSTRATIVE EXHIBIT
`– NOT EVIDENCE
`
`MTA Opp. at 1-25; MTA Sur-Reply at 1-12
`
`39
`
`Page 39 of 59
`
`
`
`Substitute Claims – “Receiving” Limitation
`
`• Patent Owner asserts Petitioner did not “speak” to how the
`Rosenberg-Buck combination would provide the “receiving a
`response” limitation
`
`Patent Owner’s Reply
`
`DEMONSTRATIVE EXHIBIT
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`
`MTA Sur-Reply at 6; MTA Reply at 9
`
`MTA Reply at 9
`
`40
`
`Page 40 of 59
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`
`
`Substitute Claims – “Receiving” Limitation
`
`• Rosenberg discloses how the system receives a response from a
`user
`
`Petition
`
`DEMONSTRATIVE EXHIBIT
`– NOT EVIDENCE MTA Sur-Reply at 6; MTA Opp. at 13; Pet. at 13-14; Ex. 1022 at ¶98; Ex. 1002 at ¶¶89-94
`
`41
`
`Pet. at 13-14
`
`Page 41 of 59
`
`
`
`Substitute Claims – Disputed Issues
`
`• Prior Art Disputes
`• Motivation to combine Rosenberg and Buck
`
`• Combination of Rosenberg and Buck discloses the claimed “receiving a
`response from the first user” limitation
`
`• Rosenberg discloses the claimed “two or more different types of input
`sources”
`
`• Rosenberg discloses the claimed “processing the contextual
`information” limitation
`
`• Section 112 Issues
`•
`“Determining” Limitation Lacks Written Description Support Under
`Petitioner’s Proper Interpretation
`
`•
`
`“Determining” Limitation Lacks Written Description Support Under
`Patent Owner’s Erroneous Interpretation
`
`DEMONSTRATIVE EXHIBIT
`– NOT EVIDENCE
`
`MTA Opp. at 1-25; MTA Sur-Reply at 1-12
`
`42
`
`Page 42 of 59
`
`
`
`Substitute Claims – “Two … Types of Input Sources”
`
`• Rosenberg discloses “two … types of input sources”
`1. Spatial tracking sensors (e.g., GPS transducer)
`2. Orientation sensors (e.g., magnetometer, accelerometer)
`
`Rosenberg
`
`DEMONSTRATIVE EXHIBIT
`– NOT EVIDENCE
`
`MTA Sur-Reply at 7-8; MTA Opp. at 10-12; Ex. 1022 at ¶¶86-94
`
`43
`
`Ex. 1005 at 16:43-52
`
`Page 43 of 59
`
`
`
`Substitute Claims – “Two … Types of Input Sources”
`
`• Rosenberg discloses “two … types of input sources”
`1. Spatial tracking sensors (e.g., GPS transducer)
`2. Orientation sensors (e.g., magnetometer, accelerometer)
`
`Petitioner’s Expert, Dr. Almeroth
`
`Ex. 1022 at ¶94
`
`DEMONSTRATIVE EXHIBIT
`– NOT EVIDENCE
`
`MTA Sur-Reply at 7-8; MTA Opp. at 10-12; Ex. 1022 at ¶¶86-94
`
`Ex. 1022 at ¶93
`
`44
`
`Page 44 of 59
`
`
`
`Substitute Claims – “Two … Types of Input Sources”
`
`• Patent Owner’s Expert’s conflicting testimony regarding input
`sources
`
`Dr. Martin’s 1st Deposition
`
`Claimed “two or more different
`types of input sources” require
`different components producing
`different types of information
`
`DEMONSTRATIVE EXHIBIT
`– NOT EVIDENCE
`
`MTA Sur-Reply at 7-8; MTA Opp. at 10-12; Ex. 1022 at ¶¶86-94
`
`Ex. 1021 at 22:19-23:12
`
`45
`
`Page 45 of 59
`
`
`
`Substitute Claims – “Two … Types of Input Sources”
`
`• Patent Owner’s Expert’s conflicting testimony regarding input
`sources
`
`Dr. Martin’s 1st Deposition
`
`Claimed “two or more different types of input sources” require different
`components producing different types of information
`
`Ex. 1021 at 23: 19-24:3
`
`DEMONSTRATIVE EXHIBIT
`– NOT EVIDENCE
`
`MTA Sur-Reply at 7-8; MTA Opp. at 10-12; Ex. 1022 at ¶¶86-94
`
`Ex. 1021 at 24:4-14
`
`46
`
`Page 46 of 59
`
`
`
`Substitute Claims – “Two … Types of Input Sources”
`
`Dr. Martin’s 1st Deposition
`The ’599 Patent’s GPS device and
`accelerometer are two or more
`different types of input sources
`
`Dr. Martin’s 2nd Declaration
`Rosenberg’s GPS transducer and
`accelerometer are the same type of
`input sources—locative
`
`Ex. 2008 at ¶103
`
`Ex. 1021 at 59:7-29
`
`DEMONSTRATIVE EXHIBIT
`– NOT EVIDENCE
`
`MTA Sur-Reply at 7-8; MTA Opp. at 10-12; Ex. 1022 at ¶¶86-94
`
`47
`
`Page 47 of 59
`
`
`
`Substitute Claims – “Two … Types of Input Sources”
`
`Dr. Martin’s 1st Deposition
`Whether two devices constitute
`“two … types of input sources” is
`a “fact specific inquiry with
`respect to a particular device”
`
`Dr. Martin’s 2nd Deposition
`Dr. Martin would have to look at
`Rosenberg’s device to determine whether
`Rosenberg’s accelerometer outputs
`spatial coordinate information
`
`Ex. 1029 at 33:12-18
`
`DEMONSTRATIVE EXHIBIT
`– NOT EVIDENCE
`
`Ex. 1021 at 64:11-65:4
`
`MTA Sur-Reply at 7-8; MTA Opp. at 10-12; Ex. 1022 at ¶¶86-94
`
`48
`
`Page 48 of 59
`
`
`
`Substitute Claims – Disputed Issues
`
`• Prior Art Disputes
`• Motivation to combine Rosenberg and Buck
`
`• Combination of Rosenberg and Buck discloses the claimed “receiving a
`response from the first user” limitation
`
`• Rosenberg discloses the claimed “two or more different types of input
`sources”
`
`• Rosenberg discloses the claimed “processing the contextual
`information” limitation
`
`• Section 112 Issues
`•
`“Determining” Limitation Lacks Written Description Support Under
`Petitioner’s Proper Interpretation
`
`•
`
`“Determining” Limitation Lacks Written Description Support Under
`Patent Owner’s Erroneous Interpretation
`
`DEMONSTRATIVE EXHIBIT
`– NOT EVIDENCE
`
`MTA Opp. at 1-25; MTA Sur-Reply at 1-12
`
`49
`
`Page 49 of 59
`
`
`
`Substitute Claims – “Processing the Contextual Information”
`
`MTA Opposition
`
`Petition
`
`MTA Opp. at 12
`
`DEMONSTRATIVE EXHIBIT
`MTA Sur-Reply at 8-9; MTA Opp. at 12; Ex. 1022 at ¶95; Ex. 1002 at ¶¶72-78
`– NOT EVIDENCE
`
`Pet. at 9-10
`
`50
`
`Page 50 of 59
`
`
`
`Substitute Claims – Disputed Issues
`
`• Prior Art Disputes
`• Motivation to combine Rosenberg and Buck
`
`• Combination of Rosenberg and Buck discloses the claimed “receiving a
`response from the first user” limitation
`
`• Rosenberg discloses the claimed “two or more different types of input
`sources”
`
`• Rosenberg discloses the claimed “processing the contextual
`information” limitation
`
`• Section 112 Issues
`•
`“Determining” Limitation Lacks Written Description Support Under
`Petitioner’s Proper Interpretation
`
`•
`
`“Determining” Limitation Lacks Written Description Support Under
`Patent Owner’s Erroneous Interpretation
`
`DEMONSTRATIVE EXHIBIT
`– NOT EVIDENCE
`
`MTA Opp. at 1-25; MTA Sur-Reply at 1-12
`
`51
`
`Page 51 of 59
`
`
`
`Substitute Claims – Written Description
`
`• Petitioner: Plain language of the claims requires the received response to
`be compared to each and every “at least one predetermined response” within
`the “content package”
`
`•
`
`content package: includes (1) at least one
`content piece and (2) a set of rules “associated
`with content package”
`
`Substitute Claim 26
`
`MTA, App. A at 1-2
`
`•
`
`•
`
`•
`
`•
`
`set of rules: includes (1) a trigger condition
`and (2) “at least one predefined response”
`
`in response to trigger condition, presenting
`the content piece
`
`receiving a response to presented content
`piece
`
`determining whether received response is
`expected or unexpected
`
`•
`
`•
`
`expected: response matches one or more
`of at least one predefined response
`
`unexpected: response does not match
`any of the at least one predefined
`response
`
`DEMONSTRATIVE EXHIBIT
`– NOT EVIDENCE
`
`MTA Sur-Reply at 9-11; MTA Opp. at 1-6; Ex. 1022 at ¶¶68-80
`
`52
`
`Page 52 of 59
`
`
`
`Substitute Claims – Written Description
`
`• Petitioner: Plain language of the claims requires the received response to
`be compared to each and every “at least one predetermined response” within
`the “content package”
`
`The ’061 Application
`
`DEMONSTRATIVE EXHIBIT
`– NOT EVIDENCE
`
`MTA Sur-Reply at 9-11; MTA Opp. at 1-6; Ex. 1022 at ¶¶68-80
`
`53
`
`Ex. 1004 at 30 (Table 1)
`
`Page 53 of 59
`
`
`
`Substitute Claims – Written Description
`
`• The Board and Patent Owner’s interpretation reads in an unrecited
`limitation—“received response is expected[/unexpected] if the
`received response matches[/does not match] one or more of the at
`least one predefined response associated with the presented content
`piece”
`
`Preliminary Guidance
`
`DEMONSTRATIVE EXHIBIT
`– NOT EVIDENCE
`
`MTA Sur-Reply at 9-11; MTA Opp. at 1-6; Ex. 1022 at ¶¶68-80
`
`54
`
`Prelim. Guid. at 6
`
`Page 54 of 59
`
`
`
`Substitute Claims – Written Description
`
`• Patent Owner does not dispute that the substitute claims lack
`written description support for “determining” limitations under
`Petitioner’s plain meaning
`
`DEMONSTRATIVE EXHIBIT
`– NOT EVIDENCE
`
`MTA Sur-Reply at 9-11; MTA Opp. at 1-6; MTA Reply at 1-3
`
`55
`
`Page 55 of 59
`
`
`
`Substitute Claims – Disputed Issues
`
`• Prior Art Disputes
`• Motivation to combine Rosenberg and Buck
`
`• Combination of Rosenberg and Buck discloses the claimed “receiving a
`response from the first user” limitation
`
`• Rosenberg discloses the claimed “two or more different types of input
`sources”
`
`• Rosenberg discloses the claimed “processing the contextual
`information” limitation
`
`• Section 112 Issues
`•
`“Determining” Limitation Lacks Written Description Support Under
`Petitioner’s Proper Interpretation
`
`•
`
`“Determining” Limitation Lacks Written Description Support Under
`Patent Owner’s Erroneous Interpretation
`
`DEMONSTRATIVE EXHIBIT
`– NOT EVIDENCE
`
`MTA Opp. at 1-25; MTA Sur-Reply at 1-12
`
`56
`
`Page 56 of 59
`
`
`
`Substitute Claims – Written Description
`
`• Substitute claims lack written description support for
`“determining” limitations under the Board’s and Patent Owner’s
`erroneous interpretation
`
`• Specification consistently describes a content piece having a single
`expected response
`
`• Ex. 1004, ¶[0056]: “The response column allows a user to
`specify an expected response ….”
`
`• Ex. 1004, ¶[0062]: “A response column entry may obtain a
`value that describes an expected response…”
`
`• Ex. 1004, ¶[0063] (“…provides an expected response…”)
`
`DEMONSTRATIVE EXHIBIT
`– NOT EVIDENCE
`
`MTA Sur-Reply at 11-12
`
`57
`
`Page 57 of 59
`
`
`
`Substitute Claims – Written Description
`
`• Specification consistently describes a content piece having a
`single expected response
`
`The ’061 Application
`
`Ex. 1004 at 30 (Table 1), 37 (Table 2)
`
`DEMONSTRATIVE EXHIBIT
`– NOT EVIDENCE
`
`MTA Sur-Reply at 11-12
`
`58
`
`Page 58 of 59
`
`
`
`Substitute Claims – Written Description
`
`• Specification does not describe a content piece having more
`than one predefined response, or comparing received response
`to more than one predefined responses
`
`• ¶[0059] discloses that a single expected response can be
`defined by “a list of allowable values,” not more than one
`predefined responses
`
`• ¶[0061] discloses “more than one column of a given type,”
`but does not describe how it relates to the response column
`
`• ¶[0062] discloses multiple ways (e.g., audio stream, text
`string) a single response may be obtained
`
`DEMONSTRATIVE EXHIBIT
`– NOT EVIDENCE
`
`MTA Sur-Reply at 11-12
`
`59
`
`Page 59 of 59
`
`
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