Paper 7
`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CORE WIRELESS LICENSING S.A.R.L.,
`Patent Owner.
`
`____________
`
`Case IPR2015-01898
`Patent 8,434,020 B2
`____________
`
`Before JAMESON LEE, DAVID C. MCKONE, and KEVIN W. CHERRY,
`Administrative Patent Judges.
`
`CHERRY, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
` Date Entered: March 17, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CORE WIRELESS LICENSING S.A.R.L.,
`Patent Owner.
`
`____________
`
`Case IPR2015-01898
`Patent 8,434,020 B2
`____________
`
`Before JAMESON LEE, DAVID C. MCKONE, and KEVIN W. CHERRY,
`Administrative Patent Judges.
`
`CHERRY, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
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`IPR2015-01898
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`I. INTRODUCTION
`Petitioner, Apple Inc., filed a Petition requesting an inter partes
`
`review of claims 1, 2, 6, 8, 10, 11, 13, and 16 of U.S. Patent No. 8,434,020
`B2 (Ex. 1001, “the ’020 patent”) under 35 U.S.C. §§ 311–319. Paper 2
`(“Petition” or “Pet.”). Patent Owner, Core Wireless Licensing S.A.R.L.,
`filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). Under 35 U.S.C.
`§ 314, an inter partes review may not be instituted “unless . . . the
`information presented in the petition . . . shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.”
`For the reasons that follow, we institute an inter partes review of
`
`claims 1, 2, 6, 8, 10, 11, 13, and 16 of the ’020 patent.
`A. Related Proceedings
`According to Petitioner and Patent Owner, the ’020 patent is involved
`in, at least, the following lawsuits: Core Wireless Licensing S.A.R.L. v.
`Apple, Inc., No. 6:14-cv-00751 (E.D. Tex.), Core Wireless Licensing
`S.A.R.L. v. Apple, Inc., No. 6:14-cv-00752 (E.D. Tex.), and Core Wireless
`Licensing S.A.R.L. v. LG Electronics, Inc., No. 2:14-cv-00911 (E.D. Tex.).
`Pet. 5; Paper 5, 2. Petitioner indicates that the cases involving Apple, Inc.,
`are being transferred to the Northern District of California. Pet. 5. The ’020
`patent is also subject to IPR2015-01984. Paper 5, 1. Related patent U.S.
`Patent No. 8,713,476 is at issue in IPR2015-01899 and IPR2015-01985.
`B. The ’020 Patent
`The ’020 patent relates to a computing device with an improved user
`interface for applications. Ex. 1001, 1:14–15. The ’020 patent describes a
`“snap-shot” view of an application that brings together, in one summary
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`window, a limited list of common functions and commonly accessed stored
`data. Id. at 2:26–30. Preferably, where the summary window for a given
`application shows data or a function of interest, the user can select that data
`or function directly, which causes the application to open and the user to be
`presented with a screen in which the data or function of interest is
`prominent. Id. at 2:31–35. The ’020 patent explains that this summary
`window functionality saves the user from navigating to the required
`application, opening it up, and then navigating within that application to
`enable the data of interest to be seen or a function of interest to be activated.
`Id. at 2:35–39. Figure 2 of the ’020 patent is reproduced below.
`
`
`Figure 2 illustrates an implementation of the summary window (at 3)
`of the ’020 patent. Ex. 1001, 3:31–32.
`C. Illustrative Claim
`Claim 1, a device claim, and claim 16, a computer program product
`claim, are the only independent claims of the ’020 patent. The remaining
`challenged claims, claims 2, 6, 8, 10, 11, and 13, all depend, directly or
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`indirectly, from claim 1. Claim 1 is illustrative of the subject matter in this
`proceeding, and is reproduced below (formatting added).
`1. A computing device comprising a display screen,
`the computing device being configured to display
`on the screen a main menu listing at least a first
`application, and
`additionally being configured to display on the
`screen an application summary window that can be
`reached directly from the main menu,
`wherein the application summary window displays
`a limited list of at least one function offered within the first
`application,
`each function in the list being selectable to launch
`the first application and initiate the selected function, and
`wherein
`the application summary window
`is
`displayed while the application is in an un-launched state.
`
`Id. at 5:42–63.
`
`D. Evidence Relied Upon
`Petitioner relies upon the following prior art references.
`Schnarel US 7,225,409 B1
`
`May 29, 20071
`
`Aberg
`US 6,993,362 B1
`
`Jan. 31, 20062
`
`Nason
`US 6,593,945 B1
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`July 15, 20033
`
`Wagner
`US 6,256,516 B1
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`July 3, 20014
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`Yurkovic US 6,668,353 B1
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`Dec. 23, 20035
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`Ex. 1004
`Ex. 1005
`Ex. 1007
`Ex. 1010
`Ex. 1018
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`1 Schnarel was filed August 25, 1999.
`2 Aberg was filed March 13, 2000.
`3 Nason was filed May 19, 2000.
`4 Wagner was filed September 24, 1999.
`5 Yurkovic was filed March 25, 1999.
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`Petitioner also relies upon the Declaration of Dr. Brad A. Myers,
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`dated September 11, 2015 (“Myers Declaration”). Ex. 1003.
`E. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`Reference(s)
`Basis
`Challenged Claim(s)
`Schnarel6
`§ 103(a)
`1, 2, 6, 8, 10, 11, 13, and 16
`Schnarel and Aberg
`§ 103(a)
`1, 2, 6, 8, 10, 11, 13, and 16
`Schnarel and Yurkovic
`§ 103(a)
`6
`Schnarel, Aberg, and Yurkovic § 103(a)
`6
`Nason7
`§ 103(a)
`1, 2, 6, 8, 10, 11, 13, and 16
`Nason and Yurkovic
`§ 103(a)
`6
`Wagner and Nason
`§ 103(a)
`11
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`II. ANALYSIS
`A. Claim Interpretation
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. See 37 C.F.R. § 42.100(b). Under the broadest
`reasonable construction standard, claim terms are given their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art in the context of the entire disclosure. See In re Translogic Tech., Inc.,
`
`
`6 Petitioner includes “the knowledge of a POSITA ([person of skill in the
`art)]” in a number of the Schnarel grounds. Pet. 13. Because an
`obviousness inquiry always includes the knowledge of person of ordinary
`skill, we do believe it is necessary to explicitly list such knowledge in the
`grounds.
`7 As with Schnarel, Petitioner lists alternative grounds based on Nason that
`explicitly recite “the knowledge of a POSITA.” Pet. 38. For the reasons
`discussed in footnote 6, we do not list those alternative grounds separately.
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`504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim
`term must be set forth with reasonable clarity, deliberateness, and precision.
`See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Only those terms
`which are in controversy need be construed, and only to the extent necessary
`to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999).8
`“mobile telephone”
`Although neither party requests construction of the term “mobile
`telephone” recited in claim 11, we determine that, based on Patent Owner’s
`contentions, it would be useful to construe this term. The ’020 patent states:
`The term ‘mobile telephone’ refers to any kind of mobile device
`with communications capabilities and includes radio (mobile)
`telephones, smart phones, communicators, PDAs and Wireless
`information devices. It includes devices able to communicate
`using not only mobile radio such as GSM or UMTS, but also any
`other kind of wireless communications system, such as
`Bluetooth.
`Ex. 1001, 1:18–24. We determine that this amounts to a lexicographic
`definition of the term “mobile telephone” because it sets forth the
`meaning of this term with reasonable clarity, deliberateness, and
`precision. See In re Paulsen, 30 F.3d at 1480. Thus, we adopt it for
`purposes of this proceeding.
`
`
`8 With regard to the level of ordinary skill in the art, we determine that no
`express finding is necessary, on this record, and that the level of ordinary
`skill in the art is reflected by the prior art of record. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d
`1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
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`Remaining Terms
`Neither party proposes constructions for any terms. Thus, we
`determine that construction of no other term is necessary at this time.
`B. Asserted Obviousness over Schnarel
`Petitioner contends that claims 1, 2, 6, 8, 10, 11, 13, and 16 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Schnarel. To support
`its contention, Petitioner provides a detailed showing mapping limitations of
`claims 1, 2, 6, 8, 10, 11, 13, and 16 to structures described by Schnarel.
`Pet. 13–38. Petitioner also cites the Myers Declaration for support.
`See Ex. 1003 ¶¶ 49–102.
`Schnarel (Ex. 1004)
`Schnarel, titled “Graphical User Interface for a Screen Telephone,”
`describes a graphical user interface for a web telephone and other telephony
`devices that provides information and enables the user to access
`functionality of the device. Ex. 1004, Abstract. In particular, Schnarel
`describes a “start” or “home” screen of a telephony device, which is shown
`in Figure 1 reproduced below. Id. at 4:17–19.
`
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`Figure 1 illustrates an example of the start screen.
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`Figure 1 illustrates an example of start screen 100. Id. at 4:34. The
`start screen includes the following display elements: pane area 102,
`application selection area or application button bar 104, and call slip area
`106. Id. at 4:34–37. Schnarel describes that the application button bar’s
`primary functions are to inform the user about all of the applications that are
`available to them and to provide a vehicle for launching those applications.
`Id. at 9:4–6. The default panes within pane area 102 are labeled in Figure 2
`of Schnarel, reproduced below.
`
`
`Figure 2 illustrates an example of the default panes of the home screen.
`The default panes of the home screen include branding pane 202, date
`and time pane 204, message pane or message summary pane 206, and task
`pane 208. Id. at 5:20–22. Schnarel also describes a message pane that
`allows users to “quickly discover whether or not they have new messages
`and quickly access these new messages.” Id. at 6:26–34. The message pane
`works with a “parent application program” that “notifies the message pane
`program when state changes occur, such as the arrival of a fax, e-mail or
`answering machine message.” Id. at 2:64–3:7. “The message pane displays
`an indicator of the type of message that has arrived in the pane.” Id.
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`In the message pane, when the user selects “user-specific messages
`button (308) [shown in Figure 3], the button’s procedure launches a message
`viewer application.” Id. at 6:62–7:3, Fig. 3. The viewer application that is
`chosen depends on the type of new messages available. Id. at 7:1–12.
`Similarly, the controls in the “general messages area enable the user to
`launch a task associated with the control”: e.g., upon “selecting an active fax
`button, the messages application is launched and a fax viewer is displayed,”
`and “pressing an active call logger button causes the messages application to
`launch, and a call log viewer to be displayed.” Id. at 8:46–67.
`Analysis
`Claim 1 is drawn to an apparatus and claim 16 is drawn to a computer
`program product. The program steps recited in computer program product
`claim 16 correspond to the respective functions the device of claim 1 is
`configured to perform. We regard claim 1 as representative. Our discussion
`with respect to claim 1 also applies to claim 16.
`In support of this asserted ground of unpatentability, Petitioner
`provides explanations as to how Schnarel accounts for the subject matter of
`claims 1, 2, 6, 8, 10, 11, 13, and 16. Pet. 22–38. With respect to claim 1, for
`example, Petitioner contends that Schnarel discloses “[a] computing device
`comprising a display screen, the computing device being configured. . . .”
`Pet. 22–23 (citing, e.g., Ex. 1004, Fig. 8 (showing block diagram of software
`running on device), 9 (showing block diagram of a web telephone with
`processor, memory, and display screen), 1:13–15 (stating invention relates to
`graphical user interfaces and software architectures for telephony devices),
`17:45–52 (discussing hardware of device including processor and memory),
`19:37–41 (device includes processor and display); Ex. 1003 ¶¶ 50, 51).
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`Petitioner further contends that Schnarel through its disclosure of
`application button bar (or application selection area) 104, account for the
`limitation that the device is configurable to “display on the screen a main
`menu listing at least a first application.” Pet. 23 (citing Ex. 1004, Fig. 1
`(showing application button bar 104, i.e., main menu), 4:4–15 (discussing
`applications that run on the software platform), 4:34–37 (describing various
`“panes” available in the “start screen”), 4:49–55 (describing application
`selection area 104 and functions), 9:1–30 (describing functions of
`“application button bar”); Ex. 1003 ¶¶ 37, 38, 52, 53).
`Petitioner identifies message summary pane 206 as an application
`summary window. Pet. 24. Petitioner also submits that it would have been
`obvious to modify such that Schnarel accounts for a device that is
`“additionally [] configured to display on the screen an application summary
`window that can be reached directly from the main menu.” Pet. 24–25
`(citing, e.g., Ex. 1004, Fig. 2 (showing message pane 206), Fig. 3 (showing
`detail of message pane 206 ), 2:41–3:2 (discussing message pane 206), 5:18–
`26 (describing message pane 206 and task pane 208), 6:27–7:12 (discussing
`the components of message pane 206, message graphic area 302, and user
`specific message area 304), 7:38–63 (discussing “new messages icon list
`312” and its function), 8:37–67 (describing operation of buttons in message
`pane); Ex. 1003 ¶¶ 37, 38, 54–63), 32–33 (discussing motivations to modify
`Schnarel such that the application summary window can be reached directly
`from the main menu).
`Petitioner also argues that Schnarel discloses a device “wherein the
`application summary window displays a limited list of at least one function
`offered within the first application, each function in the list being selectable
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`to launch the first application and initiate the selected function.” Pet. 26–27.
`In particular, Petitioner identifies the message pane 204, with its
`functionality that alerts the user to messages (such as faxes, caller logs, and
`voice mail messages) and the functionality in the message pane where
`selecting the active fax button in the messages pane causes “the message
`application [to be] launched and the fax viewer [] displayed.” See, e.g.,
`Ex. 1004, Fig. 3 (showing message pane 304 with icons for notepad 320,
`answering machine 322, and email messages 324), 6:27–44 (discussing
`message pane and displaying various message types to users through
`message pane), Fig. 4 (illustrating fax button 400 on message pane), 8:46–67
`(discussing launching the fax viewer application, voice mail application, and
`SpeedDial application in response to buttons in message pane), 7:41–63
`(explaining Figure 3 and what message pane displays when message is
`received by user); Ex. 1003 ¶¶ 37, 38, 64–70.
`Finally, Petitioner contends that Schnarel accounts for the limitation
`of claim 1 that requires that “the application summary window is displayed
`while the application is in an un-launched state” by explaining that a person
`of ordinary skill would understand that Schnarel’s applications are “un-
`launched” before function is selected in the message pane. Pet. 28 (citing
`Ex. 1003 ¶¶ 37, 38, 71); see also Ex. 1004, 8:46–67 (pressing button on
`message pane causes application to be launched), 6:21–26 (discussing
`launching procedure for launching particular functions in applications the
`task pane).
`In its Preliminary Response, Patent Owner disputes that Schnarel
`discloses an application summary window that can be “reached directly”
`from the main menu, as recited in claim 1, and that a person of ordinary skill
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`would have been motivated to modify the start screen of Schnarel such that
`the application summary window of Schnarel would be reached directly
`from the main menu as claimed. Prelim. Resp. 5–12. Patent Owner does
`not dispute, at this time, that Schnarel discloses the other elements of claims
`1 and 16. Based on our review of the Petition and cited evidence, we
`determine that Petitioner has shown sufficiently, on this record, that
`Schnarel discloses the undisputed elements of claims 1 and 16. Pet. 22–28,
`36–38. Petitioner also accounts sufficiently for the limitations of dependent
`claims 2, 6, 8, 10, 11, and 13. Pet. 30–36. Thus, we focus on the issues that
`Patent Owner raises with respect to the application summary window
`“reached directly” from the main menu and the motivation to modify.
`Patent Owner argues that the portions of Schnarel’s start page that
`Petitioner contends are the claimed main menu and application summary
`window “are displayed concurrently, but independently.” Prelim. Resp. 8.
`As a result, Patent Owner submits that “the message summary pane is
`reachable by the user independently of the application button bar in the
`application selection area but is not reachable from that application selection
`area.” Id. at 9. We disagree. Patent Owner’s arguments that Schnarel does
`not disclose an “application summary window” that can be reached directly
`from the main menu are not persuasive because Petitioner does not argue
`that Schnarel discloses this element, but that Schnarel, as modified, would
`account for this element. See Pet. 28–29.
`As for Petitioner’s proposed modification, Petitioner submits that it
`was well-known in the art to have a summary window reachable by making
`a selection on the main menu to display the summary window. Pet. 28
`(citing Ex. 1003 ¶ 58). Petitioner argues that a person of ordinary skill
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`would have recognized that “it was advantageous to use a summary window
`that is reached directly from the main menu to avoid cluttering the display
`with too much information while still providing easy access to functions and
`data offered in an application.” Id. at 28–29 (citing Ex. 1003 ¶ 59).
`Furthermore, Petitioner submits that a person of ordinary skill would
`have recognized the benefit that such a configuration would “provide easy
`access to functions and data offered in an application for smaller display
`spaces (such as on a display screen of a mobile telephone) which might not
`have enough room on the display screen to display a summary window and
`main menu at the same time.” Id. at 29 (citing Ex. 1003 ¶ 59; Ex. 1004,
`Figs. 5 (showing collapsible window), 6 (showing detail of collapsible
`window), 9:40–51 (discussing the collapsible windows), Abstract (user
`interface customizable), 3:14–16 (discussing customizable user interface),
`5:7–17 (describing that “shape, number, and size of the panes may vary” and
`that panes are customizable)). Petitioner contends that such an
`implementation would have been routine, would have had a reasonable
`expectation of success, and would have yielded only predictable results. Id.
`(citing Ex. 1003 ¶ 59). We find, on this record, that this rationale is
`articulated sufficiently and supported adequately by rational underpinnings
`to support a determination that the proposed modification would have been
`obvious to a skilled artisan.
`Patent Owner argues that this modification would not have been
`obvious because changing the configuration of Schnarel such that the
`message summary pane would be reachable by making a selection on the
`main menu would change the principle of operation of Schnarel. Prelim.
`Resp. 10–12 (citing In re Ratti, 270 F.2d 810, 813 (CCPA 1959)). Patent
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`Owner argues that Schnarel states there is a need for users to quickly
`discover whether or not have new messages and to quickly access these new
`messages. Id. at 10–11 (citing Ex. 1004, 6:32–34, 6:53–56, 7:54–56).
`Patent Owner argues that “it is clear that the principle of operation of
`Schnarel is to notify users of new messages as soon as possible (e.g., within
`at most five seconds of receipt of the message).” Id. at 11. Patent Owner
`argues that the modifications proposed by Petitioner would increase the time
`it takes for a user to be alerted of new messages and to access new messages.
`Id. Thus, Patent Owner argues that “[c]ontrary to the principle of operation
`of Schnarel to notify users of new messages as soon as possible, the
`modification proposed by the Petitioner would hinder the user’s ability to
`quickly discover and access these new messages.” Id. at 11–12.
`We do not agree that moving the location of the summary window
`changes the principle of operation of Schnarel. Indeed, the modified device
`would use the same circuitry, the same programming, and offer the same
`functionality. In such a circumstance, “principle of operation”-type of
`reasoning to show unobviousness does not apply. See In re Mouttet, 686
`F.3d 1322, 1332 (Fed. Cir. 2012) (finding that the overall principle of
`operation was not changed when changing from optical circuitry to digital
`circuitry when programming did not change); see also In re Umbarger, 407
`F.2d 425, 430–31 (CCPA 1969) (finding Ratti inapplicable where the
`modified apparatus will operate “on the same principles as before”).
`To the extent that Patent Owner is suggesting that Schnarel teaches
`away generally from moving the location of its summary window, we do not
`agree. “A reference may be said to teach away when a person of ordinary
`skill, upon reading the reference, would be discouraged from following the
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`path set out in the reference, or would be led in a direction divergent from
`the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
`(Fed. Cir. 1994). Even if Patent Owner is correct that Schnarel expressed a
`preference that a user be able to access quickly a message, Petitioner
`provides articulated reasoning why, such as in the circumstances of a small
`screen, a person of ordinary skill would have been motivated to relocate the
`window and make it collapsible. Pet. 28–29. A person of ordinary skill can
`be motivated to make modifications to obtain desirable properties, even at
`the expense of foregoing the benefits taught in one reference. See In re
`Urbanski, 809 F.3d 1237, 1243–44 (Fed. Cir. 2016). Patent Owner has not
`shown that Schnarel criticized or discouraged the use of a collapsible
`window for the message pane. Indeed, it shows such a collapsible window
`used elsewhere in the display in Figure 5. See Ex. 1004, Fig. 5, 9:40–10:14.
`Thus, on this record, we find there is no teaching away from the proposed
`modification, and instead find that Petitioner has articulated an adequate
`rationale for the proposed modification of Schnarel.
`In sum, we determine that Petitioner has demonstrated a reasonable
`likelihood of showing that Schnarel renders claims 1 and 16 unpatentable as
`obvious.
`Patent Owner also argues that Petitioner has failed to “articulate any
`basis” why Schnarel’s disclosure of personal digital assistants would account
`for the recited “mobile telephone” of claim 11. Prelim. Resp. 16. We do not
`agree. Petitioner provides explanation of how Schnarel accounts for this
`limitation. See Pet. 35. In particular, Petitioner points to Schnarel’s
`disclosure that its interface may be used on personal digital assistants.
`Pet. 35 (citing Ex. 1004, 2:12). As we determined above, the ’020 patent
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`defines mobile telephone as including personal digital assistants. Thus, we
`determine that Petitioner has shown adequately, at this time, that Schnarel
`discloses the limitations of dependent claim 11.
`We have reviewed the proposed ground of obviousness under § 103(a)
`over Schnarel against claims 1, 2, 6, 8, 10, 11, 13, and 16, and we are
`persuaded that, on the present record, Petitioner has established a reasonable
`likelihood that it would prevail in its challenge to claims 1, 2, 6, 8, 10, 11,
`13, and 16 on this ground.
`C. Asserted Obviousness over Schnarel and Aberg
`Petitioner contends that claims 1, 2, 6, 8, 10, 11, 13, and 16 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Schnarel and Aberg.
`To support its contention, Petitioner provides a detailed showing mapping
`limitations of claims 1, 2, 6, 8, 10, 11, 13, and 16 to structures described by
`Schnarel and Aberg. Pet. 13–38. Petitioner also cites the Myers Declaration
`for support. See Ex. 1003 ¶¶ 49–102.
`Aberg (Ex. 1005)
`Aberg, titled “Portable Communication Apparatus Having a
`Hierarchical Menu System and a Dynamic Menu,” describes a menu system
`for a portable communication apparatus, such as a mobile telephone.
`Ex. 1005, 2:55–57. In particular, Aberg discloses a dynamic menu, which
`may be customized by the user and is easily accessible from the normal
`menu system. Id. at 2:57–60. The menu system is hierarchical and includes
`a plurality of top-level and sub-level menus. Id. at 4:22–31. The dynamic
`menu may be located anywhere further down the menu hierarchy, i.e., a sub-
`menu of any top-level or sub-level menu in the menu system. Id. at 7:25–29.
`The top-level menus include, for example, a mail menu (for reading and
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`sending short messages), a clock menu (for setting date and time), a
`calculator menu (for using the mobile telephone to perform calculations), an
`access menu (for barring certain call types, locking the telephone, etc.), and
`a networks menu (for selecting mobile telecommunications network to be
`used). Id. at 4:36–48.
`Analysis
`In support of this ground of unpatentability, Petitioner relies on the
`same analysis we considered above with respect to Schnarel for every
`element, except for two aspects. First, Petitioner relies on Aberg to support
`its contention the limitation of the independent claims of “an application
`summary window that can be reached directly from the main menu” would
`have been obvious. Pet. 24–25. Second, Petitioner relies on Aberg to
`support its contention that “functionality and/or stored data types for a
`summary window for a given application varies with the environment of the
`device,” as recited in claim 6, was known in the art. Pet. 30–34.
`For the first aspect, Petitioner additionally relies on Aberg to disclose
`an application summary window that can be reached directly from the main
`menu, as recited in claims 1 and 16. Id. at 25 (citing Ex. 1005, 2:55–3:3
`(discussing dynamic menu), 4:32–48, Fig. 3; Ex. 1003 ¶¶ 58–63). The
`parties do not dispute that Schnarel discloses the elements of claim 1 other
`than an application summary window that can be reached directly from the
`main menu and for purposes of this decision, we adopt our analysis recited
`above in our discussion of Schnarel for those elements here as well.
`Petitioner proposes to modify Schnarel using the teachings of Aberg
`“that a summary window (such as Schnarel’s “summary pane”) could be
`configured either at the ‘top level’ of the menu or ‘as a sub-level menu’ of a
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`top-level menu” to have a summary window that can be reached directly
`from the main menu. Pet. 17–18 (citing Ex. 1003 ¶¶ 62–63). Petitioner also
`articulates reasoning for why a person of ordinary skill would have been
`motivated to combine Schnarel and Aberg in the manner proposed by
`Petitioner. Pet. 16–18. Petitioner contends that a person of ordinary skill
`would have looked to Aberg to provide easy access to functions and data
`offered in an application for smaller display spaces, which might not be
`sufficiently large enough to display a summary window and a main menu at
`the same time. Id. at 17. Petitioner notes that Aberg recognizes that a short
`menu system is desirable for accessing a “menu item more quickly.” Id. at
`16 (citing Ex. 1005, 1:31–33, 2:23–25, 5:51–61). Petitioner concludes that
`the combination is routine and yields predictable results. Id. at 17–18.
`Patent Owner raises similar arguments against this combination that it
`raised against the ground based on Schnarel alone. Prelim. Resp. 13–16.
`First, Patent Owner argues that the combination would not account for the
`“application summary window reached directly from the main menu”
`because “the message summary pane . . . is part of the main menu (i.e., it is
`reachable in the main menu).” Id. at 14. Patent Owner contends that
`“[n]othing in the combined teachings of Schnarel and Aberg suggest (and
`Petitioner has not explained why a person of ordinary skill in the art would)
`dissociating the message summary pane from the start screen of Schnarel so
`as to make it reachable from that start screen instead of being reachable in
`the start screen.” Id. Second, even if it did account for this limitation,
`Patent Owner argues that moving the message pane so that it is accessible
`under the main menu would change the principle of operation of Schnarel.
`Id. at 14–15. We do not agree with either of these arguments.
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`To begin with, we disagree that the combined teachings of Schnarel
`and Aberg would not account for the application summary window
`reachable directly from the main menu. We agree with Petitioner that
`Schnarel discloses an application summary window. See Pet. 24–25. We
`also agree with Petitioner that Aberg teaches a main menu that the user can
`interact with and open menu windows, including a customizable window.
`Pet. 16–18, 25. Patent Owner’s suggestion that Schnarel or Aberg must
`provide the teaching or suggestion for moving Schnarel’s message pane such
`that it is accessible from the main menu is not the appropriate inquiry.
`Schnarel teaches that “the shape, number and size of the panes may vary”
`and “the implementer may reposition the panes within the pane area, and
`may resize and localize each default pane.” Ex. 1004, 5:7–26. As Petitioner
`explains, the challenges of small screen sizes were well-known in the art and
`Aberg offers a solution to the problems they pose through the dynamic menu
`it teaches.
`Petitioner also has provided detailed reasoning why a person of
`ordinary skill would have been motivated to move the message pane of
`Schnarel such that it is accessible through interaction with the main menu
`using Aberg’s teachings of a dynamic window that can be accessed through
`the main menu. Pet. 16–18. “A person of ordinary skill is . . . a person of
`ordinary creativity, not an automaton,” KSR Int’l Co. v. Teleflex, Inc., 550
`U.S. 398, 421 (2007), and the obviousness inquiry must take account of the
`“routine steps” that a person of ordinary skill in the art would employ, Ball
`Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993
`(Fed. Cir. 2009). We agree with Petitioner that relocating a window in a
`graphical user interface and making it accessible through interaction with the
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`menu so as to accommodate a small screen size is within the ability of a
`person of ordinary skill at the time of the invention. Thus, we do not agree
`with Patent Owner that the combined teachings of Schnarel and Aberg
`would not have accounted for an application summary that can be reached
`directly from a main menu.
` As for Patent Owner’s second argument that such a modification
`would alter the principle of operation of Schnarel or in some way teach away
`fr
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