Noble Lacks the “Combination” Advertisements

Noble lacks the ’351 Patent’s “combin[ed]” advertising technique. Petitioners allege that Noble’s “promotions” would “constitute a combination of static and dynamic advertising, as it would include static information relating to the identity of the advertiser (e.g., ‘Joe’s Coffee’), and dynamic information relating to a particular sale event (e.g., ‘10% off’).” See Pet. at 49. But Noble does not teach generating its advertisements by “combin[ing]” different types of advertising information, and, moreover, does not teach dynamic or default information in the first place.²

(a) Noble Does Not Disclose “Combin[ing]” Different Types of Advertising Information

Petitioners cite to no evidence that Noble’s advertisements are “a

combination” of at least two different types of advertising information. Instead, Petitioners argue that a “person of ordinary skill in the art would have understood”

that Noble’s disclosure of “10% off Joe’s Coffee” would “constitute a combination

2 Petitioners do not argue that Noble discloses default advertising information.

See Pet. at 46-50.

of static and dynamic advertising,” conceding that it lacks an express teaching. See Pet. at 49. In any event, Noble does not teach a combination of static and dynamic or default advertising information. Noble teaches:

The event occurs, in step 901, when the user comes within a predetermined range of the favorite merchant, e.g., Joe's Coffee, during the specified times, e.g., Sunday afternoon. The server then selects the promotional information that is relevant to the triggered event, e.g., 10% off Joe's Coffee, in step 902. Then, the user is provided several options, namely to send the promotional information to a friend, notify a friend or to redeem the promotional information.

Ex. 1003 at 24:9-14.

Notably absent from the above is any description of what the “promotional information” even is, let alone any teaching, or even indication, that the promotional information resulting from a user coming within a predetermined range of a favorite merchant is a combination of any static information and any dynamic information.

Noble is silent regarding how the promotional information is generated, and makes no mention of making any changes to the promotional information at any time.

Noble, therefore, does not disclose advertisements that are the result of

“combin[ing]” two different types of advertising information, as claimed.

(b) Noble Does Not Disclose “Dynamic Advertising Information”

Noble lacks “dynamic advertising information” as well. The parties have agreed that “dynamic advertising information” means “advertising information that regularly changes.” Petitioners argue that Noble discloses dynamic advertising information because it describes promotional information, for example, “10% off Joe’s Coffee.” See Pet. at 49. According to Petitioners, the “10% off” aspect of the promotional information is dynamic information because it “relat[es] to a particular sale event.” See id. But there is no evidence in Noble—and Petitioners make no argument—that the “10% off” promotion “regularly changes” as required by the agreed-upon construction. Instead, Noble discloses only that “10% off Joe’s Coffee”

is an example of promotional information that is generated when a user comes within a predetermined range of a restaurant at specified times. See Ex. 1003 at 24:9-14.

Noble’s only example—“10% off Joe’s Coffee”—is always generated at a predetermined time and location. Petitioners do not identify anywhere in Noble where the alleged “sale event” changes at all, let alone regularly. Noble, therefore, does not disclose any “advertising information that regularly changes,” as required by the parties agreed-upon construction for “dynamic advertising information.”

2. Johnson Lacks the Combined Advertisements Required by the Challenged Claims

Johnson also lacks the ’351 Patent’s combined advertising technique.

Petitioners allege that Johnson’s “textual message such as ‘Starbucks has a 60% off sale just ahead at 314 Main Street with free no-spill coffee mugs!!!’” is a combination of static and default or dynamic advertising information. See Pet. at 70. But just like Noble, Johnson does not teach generating its advertisements by

“combin[ing]” different types of advertising information, as claimed.

Petitioners cite to no evidence that Johnson’s advertisements are “a combination” of at least two different types of advertising information. Petitioners argue that a “person of ordinary skill in the art would have understood” that Johnson’s disclosure of “Starbucks has a 60% off sale just ahead at 314 Main Street with free no-spill coffee mugs!!!” would “constitute a combin[ation] of static and default or dynamic advertising,” conceding that it lacks an express teaching. See Pet. at 70. The Petition also argues that Johnson’s disclosure of “fields for both the promotional message itself (i.e., ‘content field 712’) as well as a field for an associated web address or phone number (i.e., ‘speed reference info 716’)” is an

“example of an advertisement having a combination of the static advertising information with one of the dynamic or default advertising information.” See id. at 71.

But while Johnson teaches that “speed reference info 716” is “delivered to the RDPS with the content,” see Ex. 1006 at 13:64-66, it does not teach that the “speed reference info” is combined with the “content” in an advertisement. Indeed, Johnson is silent regarding how the “speed reference info” is presented to the user, if at all.

See id. Johnson, therefore, does not disclose advertisements that are the result of

“combin[ing]” two different types of advertising information, as claimed.

Accordingly, because neither Noble nor Johnson discloses “wherein a combination of the static advertising information with one of the dynamic or default advertising information comprises an advertisement or information bulletin,” and because Petitioners rely on no other reference in the proposed combinations to meet this claim limitation, institution of Grounds 1 and 2 should be denied. See, e.g., Am.

Honda Motor Co., Inc. v. Blitzsafe Texas, LLC, IPR2016-01473, Paper 9, at 15-16

(Jan. 24, 2017) (denying institution where petitioner’s obviousness combination was missing an element of the independent claims).

B. Grounds 2 & 3: Petitioners’ Combination of Noble, Johnson, and Mann Fails to Disclose Storing Information Based on Categories (Plural)

Grounds 2 and 4 rely on a combination of three references: Noble, Mann, and Johnson. Even if Petitioners’ combination is accepted as obvious (which BlackBerry disputes), the combination still fails to disclose “stor[ing] the information to one of a plurality of channels based on pre-defined information categories” (plural), as

claimed, because the combination stores information based on at most a single category.

Mann describes storing information in a table:

Pet. at 61 (citing Mann at 49) (annotated). According to Petitioners, “[a] column under the mapping for Ground 2 corresponds to a pre-defined information category.” Id. Petitioners also allege that “storing a column value for a record is based on the column and the column’s position in the table.” Id. When Petitioners then combine Mann with Noble and Johnson, Petitioners allege that Noble’s promotional information (the alleged “information”) could be stored in a column labeled “Promotional Information”:

Id. at 64.

The problem with Petitioners’ proposed combination is that Noble’s promotion information (i.e., the alleged “information”) is always stored in the same

“column” labeled “Promotional Information” (i.e., based on the same, single alleged

“pre-defined information category”). And Petitioners contend that “each column corresponds to a pre-defined information category” and that storing promotion information to a column means that the information is stored “based on the column,”

singular. Id. Because the alleged “information” is always stored the exact same column, storage is always “based on” the same column and thus the same alleged

“pre-defined information category.” Petitioners’ proposed combination, therefore, does not “store[] the information . . . based on pre-defined information categories,”

plural, as claimed.

For that reason, even if Board found a motivation to combine Noble, Mann, and Johnson, the Petition still fails to show a reasonable likelihood that Petitioners will succeed on Grounds 2 and 4.

C. Grounds 1 & 3: Petitioners Fail to Meet Their Burden to Show the Proposed Combination of Noble and Hassett Is Obvious

The claims of the ’351 Patent require “a proxy content server that receives information over a computer network from an information source and stores the information to one of a plurality of channels based on pre-defined information categories.” Petitioners’ Grounds 1 and 3 rely on a combination of two references—

Noble and Hassett—for this limitation, but Petitioners cannot meet their burden of showing that it would be obvious to combine those two references.

Petitioners contend that Noble receives and stores promotional information, but admit that “Noble does not provide details about the storage of its promotional information.” Pet. at 26. Noble discusses storing promotional information

“arranged in terms of geographical location(s) of the merchants who offer the goods and services to which the promotional information relates.” Noble at 16:6-8. But there is no disclosure in Noble that these “geographic location(s)” are “pre-defined,”

as claimed, as opposed to dynamically created (e.g., a new “location” is defined whenever a new merchant registers). To cure this deficiency, Petitioners argue that it would be obvious to store Noble’s promotional information “based on one or more pre-defined regions to which they pertain (e.g., ‘Menlo Park, California’).” Pet. at 26. In support of this argument, Petitioners cite to Hassett and argue that the combination “store[s] the promotional information based on pre-defined information categories corresponding to various geographic regions.” Pet. at 38-39.

Petitioners fundamentally misapprehend Noble’s memory scheme. Noble does not store information based on geographic regions, as Petitioners allege, such as individual cities (e.g., Menlo Park, California). Instead, Noble’s “location(s)”

refer to the merchant’s “address” or similarly detailed information that, for example,

“allow the user to invite one or more friends to join him at the merchant’s location.”

Noble at 25:13-19; see also id. at 24:15-18 (“When the user chooses to redeem the promotional information, the server provides the address and directions to the merchant . . . .”). A “geographical area,” in contrast, is less specific and can include multiple users. See Noble at 25:4-6. Thus, there is no disclosure in either Noble or Hassett of storing promotional information based on geographic regions (pre-defined or otherwise), as Petitioners argue. Petitioners have instead manufactured a hypothetical memory scheme without any basis in the prior art, and cannot rely on this non-existent disclosure to render the ’351 Patent obvious. K/S Himpp, 751 F.3d at 1365.

Nor would it have been obvious to convert the “geographic regions” (as Petitioners contend) or “geographic location(s)” (as described in Noble) into the claimed “pre-defined information categories.” According to the U.S. Geographical Survey, there were “over 38,000 towns and cities” in the U.S. “as of 2013.” Ex.

2002. That is over 38,000 categories that must be stored and searched every time new information is stored based on the alleged “pre-defined” geographic regions, even presumably only a small subset of these geographic regions actual have merchants participating in Petitioners’ proposed system. The proposed combination becomes even more inefficient if one attempts to convert Novel’s “geographic location(s),” such as addresses, into the claimed “pre-defined information categories.” There are at least “147,478 unique and valid addresses in DC” alone,

and that is just one city. Ex. 2003 at 3. And again, only a small subset of those addresses would actually correspond to merchants partaking in Petitioners’ proposed system, yet Petitioners’ proposed combination would be required to store and search millions—if not tens of millions—of “pre-defined” geographic locations every time a new piece of information is saved to the system. On that basis alone, Petitioners’

proposed combination cannot be obvious. In re Gordon, 733 F.2d 900 (Fed. Cir.

1984).

Alternatively, Petitioners argue that Noble’s “coupon categories” such as

“clothing” and “toys” are allegedly “pre-defined information categories.” Pet. at 27. But there is no disclosure in Noble of storing received promotion information based on those coupon categories. Petitioners thus again resort to an obviousness combination of Noble and Hassett to argue that it would be obvious to store Noble’s promotional information using Hassett’s memory arrangement based on Noble’s coupon categories. Petitioners do not, however, identify any motivation for departing from Noble’s express teaching of arranging promotional information “in terms of geographical location(s) of the merchants who offer the goods and services to which the promotional information relates.” Noble at 16:6-8. The only conclusory “motivation” identified by Petitioners—“allow[ing] the system to specify the sequence of advertisements for presentation within a particular category”

(Pet. at 40-41) and using “the most common form of database storage in existence”

(Pet. at 41-42)—has no discernible link to arranging memory by “coupon categories”

(as proposed by Petitioners) rather than by “geographical location(s)” (as expressly disclosed in Noble) . Accordingly, Petitions have failed to identify any cognizable motivation for this combination.

Grounds 1 and 3 thus propose an impractical and inefficient combination, and fail to identify any motivation for departing from Noble’s express teachings.

Grounds 1 and 3 fail to set forth viable obviousness theories.

D. The Petition Is Redundant to District Court Litigation

Multiple factors indicate that the Board should exercise its broad discretion under 35 U.S.C. § 314(a) to deny institution, especially where Petitioners delayed in pursing IPR while the concurrent litigation matured towards a posture where the jury trial will resolve Petitioners’ prior art invalidity allegations long before any final decision in this forum. See E-One, Inc. v. Oshkosh Corp., IPR2019-00162, Paper 16, at 8-9 (June 5, 2019).

Under the law, the Board is “never compelled” to institute IPR. Harmonic, 815 F.3d at 1367. Indeed, the Office has expressly authorized denial where (1) less than all grounds meet the “reasonable likelihood” standard; and (2) doing so would further the Board’s statutory, 35 U.S.C. § 316(b), and regulatory, 37 C.F.R. § 42.1(b), efficiency goals. See SAS Q&A’s, Part D, Effect of SAS on Future Challenges that Could Be Denied for Statutory Reasons (June 5, 2018),

https://www.uspto.gov/sites/default/files/documents/sas_qas_20180605.pdf;

Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7, at 41-42 (Jan. 24, 2019)

(designated informative Apr. 5, 2019); Chevron Oronite Co. LLC v. Infineum USA L.P., IPR2018-00923, Paper 9, at 10-11 (Nov. 7, 2018) (designated informative Apr.

5, 2019).

Denial of institution in view of the Petition’s many defects will not prejudice Petitioners or prevent Petitioners from raising invalidity grounds in the upcoming jury trial. Moreover, because Petitioners waited nearly a year³ to initiate this IPR, the litigation has advanced to the point that the litigation defendants’ invalidity allegations will be resolved in the district court proceeding before the conclusion of this IPR. For example:

 The Honorable Judge Wu has already issued a Final Ruling on Claim Construction under the same Phillips standard the Board now employs;

 Discovery in the concurrent litigation will close on August 30, 2019—

certainly before any first discovery phase in this IPR proceeding; and

3 The ’351 Patent was first asserted in BlackBerry’s First Amended Complaint filed on April 4, 2018 and served on April 6, 2018.

 The jury trial is scheduled for April 13, 2020, which will resolve Petitioners’ invalidity allegations against the ’351 Patent long before any Final Written Decision in this proceeding.

Based upon these facts, the Board’s institution of IPR here would result in an unnecessary duplication of efforts for both the parties and the Board.

The fact that Petitioner is not prohibited from seeking IPR within the one year time bar of 35 U.S.C. 315(b) does not mean Petitioner is entitled to institution of IPR, nor does it justify the inefficiencies and duplication of resources introduced by its unexplained delay. The NHK case recently designated precedential by the Office stands for this very proposition—i.e., where a petition is otherwise defective, inefficiencies introduced through overlapping district court proceedings may warrant denial. See NHK Spring Co. v. Intri-Plex Techs. Inc., IPR2018-00752, Paper 8, at 19-20 (Sept. 12, 2018) (designated precedential May 7, 2019). The Board in E-One also denied institution on a similar fact pattern. See IPR2019-00162, Paper

16, at 8-9. Much like the present case, the petition in E-One suffered from known flaws on the merits, and the mature posture of the concurrent litigation left no room for the IPR to add efficiency for the parties or the district court.

The mature posture of the concurrent litigation provides an overwhelming basis for the Board to exercise its discretion to deny IPR here for purposes of fairness and efficiency.

E. The Petition Should Be Denied Because It Is Duplicative of IPR2019-00830 and IPR2019-01510

This proceeding is the second of three IPRs challenging the claims of

the ’351 Patent. The first, IPR2019-00830, was filed by Petitioners’ co-defendant in the District Court litigation, Snap Inc. on March 25, 2019. Pet. at 2. IPR2019-00830 challenges all of the claims of the ’351 Patent challenged by Petitioners in addition to several others. See id. (Snap’s petition challenges claims 1-2, 4-6, 8-9, 11, 14-18, 20-21, and 23); id. at 3-4 (challenging claims 1-2, 9, 14-15, and 21).

The second, the instant petition, was filed on April 5, 2019. See id. at 78. And the third, IPR2019-01510, was filed by Twitter—another party accused of infringing the ’351 Patent in a separate pending district court litigation—on August 16, 2019.

IPR2019-01510, Paper 2, at 76 (Aug. 16, 2019). IPR2019-01510 challenges all of the same claims as Petitioners. See id. at 1 (challenging claims 1-11 and 14-23).

Snap, Petitioners, and Twitter are also challenging the ’351 Patent in the parallel District Court litigation.

Institution of inter partes review is discretionary. See generally General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19, at

21 (Sept. 6, 2017). In 2016, when the Board first enumerated the factors it considers when evaluating discretionary denial under 35 U.S.C. § 314(a), the Board described “serial attacks against the same claims of the same patent, while having the opportunity to adjust litigation positions along the way based on either

patent owner’s contentions responding to prior challenges or the Board’s decision on prior challenges” as inequitable and potentially meriting denial. See NVIDIA Corp. v. Samsung Elecs. Co., Ltd., IPR2016-00134, Paper 9, at 8 (May 4, 2016).

In the recently published Trial Practice Guide Update (“TPG”), the PTAB addressed the potential abuse of multiple serial petitions challenging the same patent, like Petitioners did here. TPG at 26-28. The TPG states: “Based on the Board’s prior experience, one petition should be sufficient to challenge the claims of a patent in most situations. Two or more petitions filed against the same patent at or about the same time (e.g., before the first preliminary response by the patent owner) may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns.” Id. at 26.

The petitions filed by Snap, Facebook and, now, Twitter, represent a coordinated serial attack on the ’351 Patent, placing a substantial burden on

BlackBerry. Claims 1-2, 9, 14-15, and 21 are challenged in all three petitions. See Pet. at 2 (Snap’s petition challenges claims 1-2, 4-6, 8-9, 11, 14-18, 20-21, and 23);

id. at 4 (challenging claims 1, 5, 8-10, 13, and 16); IPR2019-01510, Paper 1, at 1

(Aug. 16, 2019) (challenging claims 1-11 and 14-23). These serial petitions, covering the same subject matter, place “a substantial and unnecessary burden on the Board and the patent owner.” See TPG at 26. From an efficiency perspective,

it makes no sense for the Board to evaluate the validity of the ’351 Patent three distinct times.

With each successive serial petition and preliminary response, Snap, Facebook, and Twitter gain a further “opportunity to adjust [their] litigation positions . . . based on [] patent owner’s contentions responding to prior

challenges.” See NVIDIA, IPR2016-00134, Paper 9, at 8. Indeed, Twitter waited to file its IPR until after BlackBerry filed its preliminary response in the Snap IPR.⁴ And with each successive petition and each successive preliminary response, Snap, Facebook, and Twitter have asserted additional prior art, strategically

avoiding overlapping subject matter. Pet. at 4-5 (grounds based on Noble, Hassett, Mann, Johnson, and De Boor); IPR2019-00830, Paper 1, at 2 (Mar. 25, 2019) (grounds based on Aufricht, Boyle, and Jacob); IPR2019-01510, Paper 1, at 16-17 (Aug. 16, 2019) (grounds based on Unnold, Zellner, and Chen). Under NVIDIA,

4 BlackBerry notes that Twitter, in its petition, does not dispute that it reviewed BlackBerry’s preliminary response in the Snap IPR before filing its petition. See IPR2019-01511, Paper 1, at 81-83 (Aug. 16, 2019). Moreover, while Twitter alleges that the parties have not “coordinated on prior art strategy,” Twitter recognizes that its “Grounds do not rely on art from the previous IPRs.” Id. at 81-82.

these serial petitions strain “the finite resources of the Board,” warranting denial.

See NVIDIA, IPR2016-00134, Paper 9, at 7.

Finally, the Board has already held, with respect to later-filed petitions in other IPR proceedings related to other patents asserted in the parallel district court litigation, that the “inefficient use of Board resources is evident” in those petitions.

Finally, the Board has already held, with respect to later-filed petitions in other IPR proceedings related to other patents asserted in the parallel district court litigation, that the “inefficient use of Board resources is evident” in those petitions.