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 2015-01898
`Patent 8,434,020 B2
`____________
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,434,020
`UNDER 35 USC §§ 311-319 AND 37 CFR §42.100 ET SEQ.
`
`
`
`
`

`
`TABLE OF CONTENTS
`
`Introduction. ........................................................................................... 1
`
`
`
`I.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`II. Overview of the ‘020 Patent. ................................................................. 4
`
`III. Argument ............................................................................................. 5
`
`A. Patentability of the Challenged Claims Over Schnarel and the
`Knowledge of a PHOSITA. ....................................................................... 5
`
`1. Overview of Schnarel ........................................................................ 6
`
`2. Schnarel Fails to Teach an Application Summary Window that can
`be Reached Directly from the Main Menu. .............................................. 8
`
`3. The Modification to Schnarel Based on the Knowledge of a
`POSITA Changes the Principle of Operation of Schnarel. .................... 10
`
`4. Claim 11 is Separately Patentable Over Schnarel, Whether
`Considered Alone or In Combination with the Knowledge of a
`POSITA. ................................................................................................. 12
`
`B. Patentability of the Challenged Claims Over Schnarel and
`Aberg. ....................................................................................................... 13
`
`1. The Modification to Schnarel Based on the Aberg does not Yield
`the Subject Matter Recited in the Challenged Claims and Changes the
`Principle of Operation of Schnarel. ........................................................ 13
`
`2. Claim 11 is Separately Patentable Over Schnarel and Aberg,
`Whether Considered Alone or In Combination with the Knowledge of a
`POSITA. ................................................................................................. 16
`
`C. Patentability of Claim 6 Over Schnarel, PHOSITA and
`Yurkovic. .................................................................................................. 16
`
`D. Patentability of Claim 6 Over Schnarel, Aberg and Yurkovic. .... 17
`
`ii
`
`

`
`
`
`
`
`
`
`E. Patentability of the Challenged Clams Over Nason and Nason in
`Combination with the knowledge of a POSITA. .................................. 18
`
`1. Overview of Nason ......................................................................... 18
`
`2. Nason Fails to Teach or Suggest Each Function in the List Being
`Selectable to Launch the First Application and Initiate the Selected
`Function, Whether Considered Alone or in Combination with the
`Knowledge of a POSITA. ...................................................................... 20
`
`F. Patentability of Claim 6 Over Nason and Yurkovic, and Nason,
`Yurkovic and the Knowledge of a PHOSITA. ...................................... 25
`
`G. Patentability of Claim 11 Over Wagner and Nason, and Wagner,
`Nason and the Knowledge of a PHOSITA. ........................................... 26
`
`IV. Conclusion. ........................................................................................ 26
`
`
`
`
`
`iii
`
`

`
`TABLE OF AUTHORITIES
`
`
`
`CASES
`CFMT, Inc. v. Yieldup Int’l. Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) ................................................................. 10
`
`In re Ratti,
`270 F.2d 810 (C.C.P.A. 1959) ............................................................. 10, 15
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 10
`
`
`
`
`
`
`STATUTES
`35 U.S.C. § 314(a) .......................................................................................... 2
`
`REGULATIONS
`37 C.F.R. § 42.108(c)...................................................................................... 2
`
`
`
`
`
`iv
`
`

`
`I.
`
`INTRODUCTION.
`
`Petitioner challenges the validity of claims 1, 2, 6, 8, 10, 11, 13, and 16
`
`of US Patent 8,434,020 (the “‘020 Patent”) as follows:
`
`• Claims 1, 2, 6, 8, 10, 11, 13, and 16 are alleged to be obvious
`
`under 35 U.S.C. § 103 in view of U.S. Patent No. 7,225,409 to
`
`Schnarel (“Schnarel“) knowledge of a person of ordinary skill in
`
`the art (“POSITA”);
`
`• Claims 1, 2, 6, 8, 10, 11, 13, and 16 are alleged to be obvious
`
`under 35 U.S.C. § 103 in view of Schnarel and U.S. Patent No.
`
`6,993,362 to Aberg (“Aberg”);
`
`• Claim 6 is alleged to be obvious under 35 U.S.C. § 103 in view of
`
`Schnarel, the knowledge of a POSITA, and U.S. Patent No.
`
`6,668,353 to Yurkovic (“Yurkovic”);
`
`• Claim 6 is alleged to be obvious under 35 U.S.C. § 103 in view of
`
`Schnarel, Aberg, and Yurkovic;
`
`• Claims 1, 2, 6, 8, 10, 13, and 16 are alleged to be obvious under 35
`
`U.S.C. § 103 in view of U.S. Patent No. 6,593,945 to Nason
`
`(“Nason”);
`
`1
`
`
`
`
`

`
`• Claims 1, 2, 6, 8, 10, 11, 13, and 16 are alleged to be obvious
`
`under 35 U.S.C. § 103 in view of Nason and the knowledge of a
`
`POSITA;
`
`• Claim 6 is alleged to be obvious under §103 in view of Nason and
`
`Yurkovic;
`
`• Claim 6 is alleged to be obvious under 35 U.S.C. § 103 in view of
`
`Nason, Yurkovic, and the knowledge of a POSITA;
`
`• Claim 11 is alleged to be obvious under 35 U.S.C. § 103 in view of
`
`U.S. Patent No. 6,256,516 to Wagner (“Wagner”) and Nason; and
`
`• Claim 11 is alleged to be obvious under 35 U.S.C. § 103 in view of
`
`Wagner, Nason, and the knowledge of a POSITA.
`
`As discussed below, however, the Patent Trial and Appeal Board (“PTAB”
`
`or “Board”) should not institute inter partes review of the ‘020 Patent on any
`
`of the proposed grounds, because Petitioner has not met its burden to show a
`
`reasonable likelihood that it would prevail with respect to at least one of the
`
`challenged claims. 35 U.S.C. § 314(a) (An inter partes review may be
`
`instituted only if “the information presented in the petition . . . and any
`
`response . . . 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.”); 37 C.F.R. § 42.108(c).
`
`
`
`2
`
`

`
`With respect to the challenges based on Schnarel as a primary
`
`reference, Petitioner fails to demonstrate that Schnarel teaches or suggests
`
`both a main menu listing at least a first application, and an application
`
`summary window that can be reached directly from the main menu. Indeed,
`
`rather than describing such an arrangement, Schnarel describes a user
`
`interface that includes an “application button bar” and a message summary
`
`pane, which are displayed concurrently, but independently. The message
`
`summary pane is reachable by the user independently of the application
`
`button bar in the application selection area and not from that application
`
`selection area. Accordingly, none of the proposed grounds for trial which
`
`rely on Schnarel teach or suggest the limitations of the challenged claims.
`
`With respect to the challenges that rely on Nason as a primary
`
`reference, Nason does not teach or suggest launching an application “in
`
`context” such that it would initiate a function associated with a selected
`
`button, as required by the claims. Accordingly, none of the proposed
`
`grounds for trial which rely on Nason should be instituted.
`
`Finally, with respect to the challenges based on Wagner as a primary
`
`reference, Wagner is cited only for teachings concerning the use of a user
`
`interface on a portable telephone, and Petitioner relies on Nason for the
`
`remaining elements of the challenged claims. As discussed above, Nason
`
`
`
`3
`
`

`
`fails to teach or suggest the use of an interface in which an application is
`
`launched “in context” such that it initiates the function associated with a
`
`selected button as required by the claim. Accordingly, none of the proposed
`
`grounds for trial which rely on Wagner and Nason should be instituted.
`
`
`
`II. OVERVIEW OF THE ‘020 PATENT.
`The ‘020 Patent describes and claims a computing device with an
`
`improved user interface for applications; more specifically, a user interface
`
`that includes a “snap-shot view” of common functions and commonly
`
`accessed stored data associated with an application on the computing device.
`
`According to one aspect of the invention, the snap-shot view is provided by
`
`an application summary window that is displayed on a display screen of the
`
`computing device. The summary window includes a limited list of (i)
`
`common functions offered within an application, and/or (ii) data stored in
`
`that application. The snap-shot view afforded by the summary window thus
`
`displays common functions and commonly accessed stored data that can be
`
`reached directly from a main menu listing some or all applications available
`
`on the computing device.
`
`
`
`4
`
`

`
`
`
`The snap-shot view afforded by the summary window yields many
`
`advantages in ease and speed of navigation, particularly on small screen
`
`devices, such as a mobile telephone. For example, where the summary
`
`window for a given application shows data or a function of interest, the user
`
`can directly select that data or function; this causes the application to open
`
`and the user to be presented with a screen in which the data or function of
`
`interest is prominent. This 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.
`
`
`
`III. ARGUMENT
`A.
`Patentability of the Challenged Claims Over Schnarel and
`the Knowledge of a PHOSITA.
`
`Independent claims 1 and 16 are alleged to be obvious under 35
`
`U.S.C. § 103 in view of U.S. Patent No. 7,225,409 to Schnarel (“Schnarel“)
`
`and the knowledge of a person of ordinary skill in the art (“POSITA”). Pet.
`
`at 13 et seq. However, each of these claims requires both a main menu
`
`
`
`5
`
`

`
`listing at least a first application, and an application summary window that
`
`can be reached directly from the main menu. Schnarel, on the other hand,
`
`describes a user interface for a telephone device that includes an “application
`
`button bar” in an application selection area (which Petitioner equates with
`
`the “main menu” recited in the claims, Pet. at 23), and a message summary
`
`pane (which Petitioner equates with the claimed “application summary
`
`window” Pet. at 24). The message summary pane cannot be reached from
`
`the application button bar (or the application selection area), hence, the
`
`challenged claims are not taught or suggested by Schnarel.
`
`
`
`1.
`
`Overview of Schnarel
`
`Schnarel discloses a graphical user interface for a web telephone and
`
`other telephony devices. Ex. 1004, Abstract. Part of the graphical user
`
`interface is a “start” screen. Id. at 4:16-33. An example start screen is shown
`
`in Figure 1, reproduced below
`
`for convenience.
`
`The start screen is composed of
`
`the following display elements:
`
`1) a pane(s) area (102); 2) an
`
`application selection area (104)
`
`
`
`
`
`Ex. 1004, Figure 1, with reference
`numeral 100 pointing to a start screen
`
`6
`
`
`
`

`
`called the application button bar; and a call slip area (106). Id. at 4:34-37.
`
`According to Schnarel, the application button bar's primary functions
`
`are to inform the user of all 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 Ex. 1004, reproduced
`
`at right for convenience. These include a branding pane (202), a date and
`
`time pane (204), a message pane or message summary pane (206), and a task
`
`pane (208). Id. at 5:20-22.
`
`The messages pane is a portion of the start screen dedicated to
`
`displaying the names of the user accounts established in the device, as well
`
`as the presence of user-specific messages (such as answering machine
`
`
`
`messages and e-mail messages)
`
`and general-user messages (such
`
`as faxes, caller logs, and voice
`
`mail messages.) From the
`
`message pane users can quickly
`
`discover whether or not they have
`
`new messages and quickly access
`
`these new messages. Id. at 6:28-
`
`
`
`Ex. 1004, Figure 2, showing default
`panes within pane area 102.
`
`
`
`
`
`34. The application button bar and
`
`
`
`7
`
`

`
`the message summary pane are displayed concurrently, but independently, in
`
`the start screen. That is, 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.
`
`The message summary pane of Schnarel is a visual representation of
`
`the message center application that provides integrated access to all message
`
`types. Id. at 13:44-47. In other words, the message center is the “parent
`
`application” of the message summary pane. Id. Whenever the message
`
`center detects an event of interest, it posts the information for display in the
`
`message summary pane. Id. at 13:61 – 14:10.
`
`
`
`Schnarel Fails to Teach an Application Summary
`2.
`Window that can be Reached Directly from the Main Menu.
`
`Independent claims 1 and 16 each require both a main menu listing at
`
`least a first application, and an application summary window that can be
`
`reached directly from the main menu. Ex. 1001 at 5:33-43; 6:20-32. As
`
`shown in FIGs. 1 and 2 of Schnarel above, however, the application button
`
`bar (104) (which Petitioner equates with the “main menu” recited in the
`
`claims, Pet. at 23), and the message summary pane (102) (which Petitioner
`
`equates with the claimed “application summary window,” id. at 24) of
`
`Schnarel’s GUI are displayed concurrently, but independently. That is, the
`
`
`
`8
`
`

`
`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. Consequently, one cannot read the
`
`application button bar as a main menu and the message summary pane as an
`
`application summary window as recited in the claims.
`
`
`
`Even if one interprets the “start screen” of Schnarel as the recited
`
`main menu, the requirements of the claims are not met. Under such a
`
`reading, the start screen (main menu) would include both the application
`
`button bar in the application selection area and the message summary pane.
`
`However, the message summary pane would not be reachable from the main
`
`menu because it is part of the main menu (i.e., it is reachable in the main
`
`menu). The specification of the ‘020 Patent explains that in order to be
`
`reachable from the main menu, the application summary window is accessed
`
`by (i.e., displayed in response to) invoking a display element of the main
`
`menu. See, e.g., Ex. 1001 at 3:23-27; 4:64 – 5:4; 5:5-9.
`
`A claim is unpatentable under 35 U.S.C. § 103(a) only if the
`
`differences between the subject matter sought to be patented and the prior art
`
`are such that the subject matter as a whole would have been obvious at the
`
`time the invention was made to a person having ordinary skill in the art to
`
`which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S.
`
`
`
`9
`
`

`
`398, 418 (2007). At a minimum, this requires a suggestion of all limitations
`
`in a claim. CFMT, Inc. v. Yieldup Int’l. Corp., 349 F.3d 1333, 1342 (Fed.
`
`Cir. 2003) citing In re Royka, 490 F.2d 981, 985 (CCPA 1974). Here, this
`
`requirement is not met, hence, no inter partes review should be instituted on
`
`the proposed ground.
`
`
`
`The Modification to Schnarel Based on the Knowledge of
`3.
`a POSITA Changes the Principle of Operation of Schnarel.
`
`While the Petition, at p. 28, alleges that “it would have been obvious
`
`and a straightforward and beneficial design choice to configure Schnarel’s
`
`summary window (e.g., ‘message summary pane’) so that it could be
`
`reached directly from Schnarel’s main menu (e.g., ‘Start Screen’),” this is
`
`not so as the modification proposed by the Petition changes the principle of
`
`operation of the primary reference. If a proposed modification or
`
`combination of the prior art would change the principle of operation of the
`
`prior art invention being modified, then the teachings of the references are
`
`not sufficient to render the claims prima facie obvious. In re Ratti, 270 F.2d
`
`810, 813 (C.C.P.A. 1959).
`
`Schnarel states on several occasions the need for users to quickly
`
`discover whether or not they have new messages and quickly access these
`
`new messages. See, e.g., Ex. 1004 at 6:32-34 (“[Through the messages
`
`
`
`10
`
`

`
`pane], [u]sers can quickly discover whether or not they have new messages
`
`and quickly access these new messages”); and 6:53-56 (“The User-specific
`
`messages display area (304) displays the name of each user, informs each
`
`user of the presence of new user-specific messages, and allows the user to
`
`quickly access their messages.”). Also at 7:54-56, Schnarel states that “[t]he
`
`software platform is designed to update the message list within a
`
`predetermined period of time (e.g., at most five seconds) within receipt of
`
`the message.” Therefore, 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).
`
`In contrast to the teachings of Schnarel, the modification proposed by
`
`the Petition (i.e., “us[ing] a summary window that is reached directly from
`
`the main menu to avoid cluttering the display with too much information”)
`
`increases the time it takes for a user to be alerted of new messages and to
`
`access the new messages. At page 29, the Petition proposes to remove the
`
`message pane from the start screen “to avoid cluttering the display with too
`
`much information”, which would, if anything, require the user to perform an
`
`extra step (i.e., first access main menu before accessing summary window)
`
`in order to be alerted of new messages and to access the messages. Contrary
`
`to the principle of operation of Schnarel to notify users of new messages as
`
`
`
`11
`
`

`
`soon as possible, the modification proposed by the Petition would hinder the
`
`user’s ability to quickly discover and access these new messages. As the
`
`modification proposed by the Petition changes the principle of operation of
`
`the primary reference, claim 1 and its dependent claims are not obvious in
`
`view of Schnarel and the knowledge of a POSITA.
`
`Claim 16 recites features similar to those recited in claim 1.
`
`Therefore, claim 16 is patentable over Schnarel and the knowledge of a
`
`POSITA for reasons similar to those provided above with respect to claim 1.
`
`Thus, Petitioner has not met its burden to show a reasonable likelihood that
`
`it would prevail with respect to this challenge and so no inter partes review
`
`should be instituted on this ground.
`
`
`
`Claim 11 is Separately Patentable Over Schnarel,
`4.
`Whether Considered Alone or In Combination with the
`Knowledge of a POSITA.
`
`Claim 11 depends from claim 1 and additionally recites the computing
`
`device being a mobile phone. Petitioner contends that Schnarel’s disclosure
`
`of “smart screen phones” somehow applies to the recited mobile phone, Pet.
`
`at 35, but fails to articulate any basis for reaching this conclusion. Indeed,
`
`Schnarel itself discusses “web telephones,” Ex. 1004 at Abstract, 3:59-64,
`
`and not mobile phones. Accordingly, Petitioner has not met its burden to
`
`
`
`12
`
`

`
`show a reasonable likelihood that it would prevail with respect to this
`
`challenge and so no inter partes review should be instituted on this ground.
`
`
`
`B.
`Patentability of the Challenged Claims Over Schnarel and
`Aberg.
`
`The Modification to Schnarel Based on the Aberg does
`1.
`not Yield the Subject Matter Recited in the Challenged Claims
`and Changes the Principle of Operation of Schnarel.
`
`As explained above, Schnarel fails to teach or suggest “the computing
`
`device … additionally being configured to display on the screen an
`
`application summary window that can be reached directly from the main
`
`menu,” as recited in claim 1. Aberg is cited for purportedly teaching an
`
`application summary window that can be reached directly from the main
`
`menu. Pet. at 25. In particular, petitioner relies on Aberg’s discussion of a
`
`customizable, dynamic menu, which can be a top-level menu or a sub-level
`
`menu. Id. According to Petitioner, it would be obvious to utilize such a
`
`menu in the telephone system described by Schnarel. Pet. at 16-18, 29.
`
`Contrary to Petitioner’s argument, combining the teachings of
`
`Schnarel and Aberg does not yield the inventions recited in claims 1 and 16
`
`of the ‘020 Patent. Aberg’s menu system includes a plurality of menu items
`
`under each of a number of respective menus. A controller is arranged to
`
`present individual menus/menu items, receive selection commands from a
`
`
`
`13
`
`

`
`user, and perform the associated functions response thereto. In short then,
`
`Aberg describes a menu system that employs top-level – sub-level
`
`arrangements, the contents of which can be customized by a user.
`
`Employing such a menu/menu item arrangement in the system
`
`described by Schnarel would not, however, provide an application summary
`
`window that can be reached directly from the main menu. As discussed
`
`above, even if one reads the “start screen” of Schnarel as the claimed “main
`
`menu,” it remains the case that start screen (main menu) would include both
`
`the application button bar in the application selection area and the message
`
`summary pane. That is, the message summary pane (which Petitioner
`
`equates with the application summary window) is part of the main menu
`
`(i.e., it is reachable in the main menu). Nothing 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.
`
`Indeed, modifying Schnarel in view of Aberg, as proposed by the
`
`Petition would contradict the teachings of Schnarel, in which the ability to
`
`initiate tasks directly from the start screen lies at the heart of that invention.
`
`Schnarel at 4:17-32. However, if the proposed modification or combination
`
`
`
`14
`
`

`
`of the prior art would change the principle of operation of the prior art
`
`invention being modified, then the teachings of the references cannot render
`
`the claims prima facie obvious. In re Ratti, 270 F.2d at 813.
`
`As explained above, Schnarel states on several occasions the need to
`
`allow users to quickly discover whether or not they have new messages and
`
`quickly access these new messages. In contrast, the modification proposed
`
`by Petitioner (i.e., “us[ing] a summary window can be reached directly from
`
`the main menu” in view of the teachings of Aberg, Pet. at 29) would, if
`
`anything, increase the time it takes for a user to be alerted of new messages
`
`and to access the new messages. Instead of being quickly alerted of new
`
`messages and to access the new messages from the start screen (as disclosed
`
`by Ex. 1004 at 6:32-34), the user would be required to perform an extra step
`
`(i.e., first access main menu before accessing summary window) in order to
`
`be alerted of new messages. As the modification proposed by the Petition
`
`changes the principle of operation of the primary reference, claim 1 and its
`
`dependent claims are not obvious in view of Schnarel in view of Aberg.
`
`Claim 16 recites features similar to those recited in claim 1.
`
`Therefore, claim 16 is patentable over Schnarel and Aberg for reasons
`
`similar to those provided above with respect to claim 1. Thus, Petitioner has
`
`not met its burden to show a reasonable likelihood that it would prevail with
`
`
`
`15
`
`

`
`respect to this challenge and so no inter partes review should be instituted
`
`on this ground.
`
`
`
`Claim 11 is Separately Patentable Over Schnarel and
`2.
`Aberg, Whether Considered Alone or In Combination with the
`Knowledge of a POSITA.
`
`Claim 11 depends from claim 1 and additionally recites the computing
`
`device being a mobile phone. Petitioner contends that Schnarel’s disclosure
`
`of “smart screen phones” somehow applies to the recited mobile phone, Pet.
`
`at 35, but fails to articulate any basis for reaching this conclusion. Indeed,
`
`Schnarel itself discusses “web telephones,” Ex. 1004 at Abstract, 3:59-64,
`
`and not mobile phones. Petitioner does not rely on any teachings of Aberg to
`
`cure this deficiency. Accordingly, Petitioner has not met its burden to show
`
`a reasonable likelihood that it would prevail with respect to this challenge
`
`and so no inter partes review should be instituted on this ground.
`
`
`
`C.
`Patentability of Claim 6 Over Schnarel, PHOSITA and
`Yurkovic.
`
`Petitioner alleges that Yurkovic discloses a web portal in which the
`
`information being displayed within a window varies with a user’s
`
`geographic location. Pet. at 15. Even if true, combining such teachings with
`
`those of Schnarel and the knowledge of a PHOSITA would not yield the
`
`
`
`16
`
`

`
`subject matter recited in claim 6. For example, the combination still would
`
`not suggest an application summary window reachable from a main menu,
`
`because in Schnarel the message summary pane is part of the main menu
`
`(i.e., it is reachable in the main menu). Accordingly, the claims are
`
`patentable over these references and no inter partes review should be
`
`instituted on this proposed ground.
`
`
`
`D.
`Patentability of Claim 6 Over Schnarel, Aberg and
`Yurkovic.
`
`As discussed above, the combination of Schnarel and Aberg fails to
`
`teach or suggest an application summary window that can be reached
`
`directly from the main menu. Moreover, the proposed combination would
`
`impermissibly change the principle of operation of Schnarel and so is not
`
`one which would be made by a PHOSITA. Further considering the teachings
`
`of Yurkovic would not alter these conclusions because Yurkovic is cited
`
`only for a web portal in which the information being displayed within a
`
`window varies with a user’s geographic location. Pet. at 15. Even if true,
`
`combining such teachings with those of Schnarel and the knowledge of a
`
`PHOSITA would not yield the subject matter recited in claim 6, because, for
`
`at least the reasons specified above, the combination still would not suggest
`
`
`
`17
`
`

`
`an application summary window reachable from a main menu. Accordingly,
`
`no inter partes review should be instituted on this proposed ground.
`
`
`
`E.
`Patentability of the Challenged Clams Over Nason and
`Nason in Combination with the knowledge of a POSITA.
`
`1.
`
`Overview of Nason
`
`Nason discloses a parallel graphical user interface (“GUI”) for a
`
`digital computer. Ex. 1007 at 1:10-12. A line drawing of such a user
`
`interface is shown in Figure 2, reproduced below for convenience.
`
`
`
`Ex. 1007, Figure 2, with reference numeral 28 indicating a parallel GUI.
`
`
`
`GUI 28 includes bar 38 surrounded by area 28A. Bar 38 may be
`
`composed of separate elements such as title area 40, one or more help areas
`
`such as help area 42 and or help area 56, one or more rotators such as rotator
`
`44 and or rotator 48, and one or more buttons such as button 46, button 50,
`
`
`
`18
`
`

`
`ticker 52 and button 54. A button may be depressible such as button 46 or
`
`non-depressible such as button 40. Id. at 2:35-45.
`
`Following a click on or “mouse down” condition of a depressible
`
`button, such as button 46, a “mouse up” condition is initiated, thus
`
`completing a button selection cycle. A “mouse up” condition may initiate an
`
`action, such a hyperlink, or launch an application associated with the acting
`
`button. Id. at 3:8-13.
`
`According to Nason, the bar-like GUI may be rotated into different
`
`positions, allowing access to
`
`different elements. This is depicted
`
`graphically in Figure 3, an
`
`annotated version of which is
`
`reproduced here.
`
`Nason explains:
`
`Menu 70 includes title
`bands 72, 74, 76, 78 and
`80 which correspond to
`title area 40, button 46,
`button 50, ticker 52 and
`button 54 respectively.
`Rotators 44 and 48 are
`represented by bands 82
`and 84 respectively. In
`this example, title area 40
`includes 6 containers or
`cartridges, cartridges 86, 87, 88, 89, 90 and cartridge 91.
`
`19
`
`
`
`

`
`Many more cartridges and titles may be available, the
`number of cartridges or titles available may only be
`limited by the resources of the computer. Cartridges such
`as cartridge 90 or cartridge 91 may include accessories
`such as a web browser or media player or any other
`accessory. Accessories for a cartridge such as cartridge
`90 may be installed for use with system software 14, or
`they may be components of parallel GUI software 18, or
`they may be available via a network such as network 15.
`
`Ex. 1007 at 4:8-22.
`
`
`
`Nason Fails to Teach or Suggest Each Function in the
`2.
`List Being Selectable to Launch the First Application and
`Initiate the Selected Function, Whether Considered Alone or in
`Combination with the Knowledge of a POSITA.
`
` Claim 1 recites a main menu listing at least a first application, and an
`
`application summary window displaying 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.
`
`Ex. 1001 at 5:33-43. That is, an application is launched “in context,” such
`
`that it would initiate a function associated with a selected button, for
`
`example.
`
`
`
`Nason’s statement that, “A ‘mouse up’ condition may initiate an
`
`action such a hyperlink or launch an application associated with the acting
`
`button such as button 46,” Pet. at 48 citing Ex. 1007 at 3:8-13, does not
`
`teach “each function in [a] list being selectable to launch [a] first application
`
`
`
`20
`
`

`
`and initiate the selected function,” as required by the challenged claims.
`
`Although Nason does indicate that selection of button elements of the GUI
`
`(e.g., by initiating successive mouse-down, mouse-up conditions) may
`
`launch an application associated with the acting button, Ex. 1007 at 3:8-13,
`
`there is no teaching or suggestion that the application would be launched “in
`
`context” such that it would initiate the function associated with the selected
`
`button as required by the claims. Instead, all that is suggested is that an
`
`application associated with the button would be launched. Accordingly,
`
`Nason cannot be said to teach or suggest the subject matter of the challenged
`
`claims.
`
`Furthermore, Nason fails to teach or suggest a computing device
`
`configured to display a menu listing at least a first application, as recited in
`
`the challenged claims. It is noted that the Petition does not cite any portion
`
`of the display depicted on Figure 10 for teaching the “menu.” See, e.g., the
`
`annotated version of Figure 10 below (reproduced from page 40 of the
`
`Petition):
`
`
`
`21
`
`

`
`
`
`Instead, the Petition cites menu 70 depicted in Figure 3 and the menus
`
`depicted in Figures 8 and 9 for teaching the menu of claim 1. See, e.g., Pet at
`
`39, 45. In fact, the graphical representations shown in Figures 3, 8 and 9 are
`
`never displayed in the forms in which they are so illustrated on the display
`
`screen of the computing device (i.e., the display screen depicted in Figure
`
`10). Rather, the graphical representations shown in Figures 3, 8 and 9 have
`
`been created solely for the purpose of Nason’s patent as aides in describing
`
`the bar-like interface discussed above.
`
`
`
`Figure 3, for example, is said to represent a “menu tree.” Ex. 1007 at
`
`1:56-57; 4:6-8. As such, it may be understood as an “unfurled” version of
`
`the various cartridges 86-89 that make up the bar-like interface 28. See, e.g.,
`
`
`
`22
`
`

`
`id. at 2:37-38 (“Bar 38 may include one or more containers or cartridges
`
`such as cartridge 86 of Fig. 3.”). Figures 8 and 9 are not described in Nason,
`
`except as “example screen images from an example parallel GUI,” id. at
`
`1:61-62, but may represent examples of the cartridges shown in Fig. 3. As
`
`such, they offer no further teaching beyond that discussed above.
`
`
`
`Finally, in so far as Petitioner relies on Figure 9 of Nason for
`
`disclosing “applications” su