Paper 7
`Trials@uspto.gov
`571-272-7822
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`Date Entered: March 17, 2016
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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 IPR2015-01899
`Patent 8,713,476 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 IPR2015-01899
`Patent 8,713,476 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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`IPR2015-01899
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`I. INTRODUCTION
`Petitioner, Apple Inc., filed a Petition requesting an inter partes
`
`review of claims 1, 4, 7–9, 20, 28, and 29 of U.S. Patent No. 8,713,476 B2
`(Ex. 1001, “the ’476 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, 4, 7–9, 20, 28, and 29 of the ’476 patent.
`A. Related Proceedings
`According to Petitioner and Patent Owner, the ’476 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 ’476
`patent is also subject to IPR2015-01984. Paper 5, 1. Related patent U.S.
`Patent No. 8,434,020 is at issue in IPR2015-01898 and IPR2015-01984.
`B. The ’476 Patent
`The ’476 patent relates to a computing device with an improved user
`interface for applications. Ex. 1001, 1:23–24. The ’476 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 2:37–41. 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 2:42–46. The ’476 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 2:46–50. Figure 2 of the ’476 patent is reproduced below.
`
`
`Figure 2 illustrates an implementation of the summary window (at 3)
`of the ’476 patent. Ex. 1001, 3:42–43.
`C. Illustrative Claim
`Claim 1, a device claim, and claim 20, a method claim, are the only
`independent claims of the ’476 patent that are challenged here. Claims 4–9
`depend directly from claim 1 and claims 28 and 29 depend directly from
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`claim 20. 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 menu listing one or more
`applications, and
`additionally being configured to display on
`the screen an application summary that can be
`reached directly from the menu,
`wherein the application summary displays a
`limited list of data offered within the one or more
`applications,
`each of the data in the list being selectable to
`launch the respective application and enable the
`selected data to be seen within the respective
`application, and
`wherein the application summary is displayed
`while the one or more applications are in an un-
`launched state.
`
`Id. at 5:59–6:3.
`
`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
`
`Smith
`US 6,333,973 B1
`
`Dec. 25, 20013
`
`Nason
`US 6,593,945 B1
`
`July 15, 20034
`
`
`Ex. 1004
`Ex. 1005
`Ex. 1006
`Ex. 1007
`
`
`1 Schnarel was filed August 25, 1999.
`2 Aberg was filed March 13, 2000.
`3 Smith was filed April 23, 1997.
`4 Nason was filed May 19, 2000.
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`July 3, 20015
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`US 6,256,516 B1
`Wagner
`Ex. 1010
`
`Petitioner also relies upon the Declaration of Dr. Brad A. Myers,
`
`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, 4, 7–9 20, 28, and 29
`Schnarel and Aberg
`§ 103(a)
`1, 4, 7–9, 20, 28, and 29
`Schnarel and Smith
`§ 103(a)
`4
`Schnarel, Aberg, and Smith
`§ 103(a)
`4
`Nason7
`§ 103(a)
`1, 4, 7–9 20, 28, and 29
`Wagner and Nason
`§ 103(a)
`9
`
`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.,
`
`
`5 Wagner was filed September 24, 1999.
`6 Petitioner includes “the knowledge of a POSITA ([person of skill in the
`art)]” in all 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. 37. 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 9, we determine that, based on Patent Owner’s
`contentions, it would be useful to construe this term. The ’476 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, 4, 7–9, 20, 28, and 29 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, 4, 7–9, 20, 28, and 29 to structures described by Schnarel. Pet. 13–
`37. Petitioner also cites the Myers Declaration for support. See Ex. 1003
`¶¶ 39–101.
`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.
`
`
`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 20 is drawn to a method.
`The method steps recited in claim 20 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
`20.
`
`In support of this asserted ground of unpatentability, Petitioner
`provides explanations as to how Schnarel accounts for the subject matter of
`claims 1, 4, 7–9, 20, 28, and 29. Pet. 20–37. With respect to claim 1, for
`example, Petitioner contends that Schnarel discloses, through its description
`of a web telephone with a display screen, “[a] computing device comprising
`a display screen, the computing device being configured. . . .” Pet. 20–21
`(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), 1:22–27
`(telephone terminal with display); Ex. 1003 ¶¶ 39, 40, 54).
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`Petitioner further contends that Schnarel through its disclosure of an
`application button bar (or application selection area 104) accounts for the
`limitation that the device is configurable to “display on the screen a menu
`listing one or more applications.” Pet. 21 (citing, e.g., Ex. 1004, Fig. 1
`(showing application bar 104, i.e., 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 104”); Ex. 1003 ¶¶ 39, 40, 55–57).
`Petitioner identifies message summary pane 206 as an application
`summary. Pet. 22. Petitioner also submits that it would have been obvious
`to modify Schnarel such it accounts for a device that is “additionally []
`configured to display on the screen an application summary that can be
`reached directly from the menu.” Pet. 22–24 (citing, e.g., Ex. 1004, Fig. 2
`(showing message pane 206), Fig. 3 (showing detail of message pane 206),
`5:18–26 (describing message pane 206 and task pane 208), 2:41–3:2
`(discussing message pane 206), 6:27–7:12 (discussing the components of
`message pane 206, messages graphic area 302, and user specific messages
`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 ¶¶ 39, 40, 58–67), 28–30 (discussing motivations to modify
`Schnarel such that the application summary can be reached directly).
`Petitioner also argues that Schnarel discloses a device “wherein the
`application summary displays a limited list of data offered within the one or
`more applications, each of the data in the list being selectable to launch the
`respective application and enable the selected data to be seen within the
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`respective application.” Pet. 24–28. 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), 7:64–8:67 (discussing launching the fax viewer application, voice
`mail application, and SpeedDial application in response to buttons in
`message pane), 7:41–63 (explaining message pane displays when message is
`received by user); Ex. 1003 ¶¶ 39, 40, 68–76.
`Finally, Petitioner contends that Schnarel accounts for the limitation
`of claim 1 that requires that “the application summary 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 ¶¶ 39, 40, 77); 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 that can be “reached directly” from the
`menu, as recited in claim 1, or that a person of ordinary skill would have
`been motivated to modify the start screen of Schnarel such that the
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`application summary of Schnarel would be reached directly from the menu
`as claimed. Prelim. Resp. 10–13. Patent Owner does not dispute, at this
`time, that Schnarel discloses the other elements of claims 1 and 20. 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 20. Pet. 20–30, 36–37. Petitioner also
`accounts sufficiently for the limitations of dependent claims 4, 7–9, 28, and
`29. Pet. 30–37. Thus, we focus on the issues that Patent Owner raises with
`respect to the application summary “reached directly” from the menu and the
`motivation to modify.
`Patent Owner argues that the portions of Schnarel’s start page that
`Petitioner contends are the claimed menu and application summary “are
`displayed concurrently, but independently.” Prelim. Resp. 10. 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. We
`disagree. Patent Owner’s arguments that Schnarel does not disclose an
`“application summary” that can be reached directly from the 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. 28–30.
`As for Petitioner’s proposed modification, Petitioner submits that it
`was well-known in the art to have a summary reachable by making a
`selection on the menu to display the summary. Pet. 28–29 (citing Ex. 1003
`¶¶ 62–63). Petitioner argues that a person of ordinary skill would have
`recognized that “it was advantageous to use a summary window that is
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`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 29.
`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. (citing Ex. 1003 ¶ 63; 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. at 30 (citing
`Ex. 1003 ¶ 63). 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
`menu would change the principle of operation of Schnarel. Prelim.
`Resp. 11–13 (citing In re Ratti, 270 F.2d 810, 813 (CCPA 1959)). Patent
`Owner argues that Schnarel states there is a need for users to quickly
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`discover whether or not have new messages and to quickly access these new
`messages. Id. at 12 (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. 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. at 12–
`13. 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 13.
`We do not agree that moving the location of the summary 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, 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 path
`set out in the reference, or would be led in a direction divergent from the
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`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 a message quickly, Petitioner
`provides articulated reasoning why, such as in the circumstances of a small
`screen, a person of ordinary skill would be motivated to relocate the window
`and make it collapsible. Pet. 28–30. 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 20 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 9. Prelim. Resp. 14. We do not
`agree. Petitioner provides explanation of how Schnarel accounts for this
`limitation. See Pet. 36. 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 ’476 patent
`defines mobile telephone as including personal digital assistants. Thus, we
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`determine that Petitioner has shown adequately, at this time, that Schnarel
`discloses the limitations of dependent claim 9.
`We have reviewed the proposed ground of obviousness under § 103(a)
`over Schnarel against claims 1, 4, 7–9, 20, 28, and 29, 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, 4, 7–9, 20, 28, and 29 on
`this ground.
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`C. Asserted Obviousness over Schnarel and Aberg
`Petitioner contends that claims 1, 4, 7–9, 20, 28, and 29 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, 4, 7–9, 20, 28, and 29 to structures described by
`Schnarel and Aberg. Pet. 20–37. Petitioner also cites the Myers Declaration
`for support. See Ex. 1003 ¶¶ 39–101.
`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
`sending short messages), a clock menu (for setting date and time), a
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`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 its contention the limitation of the independent claims of
`“an application summary that can be reached directly from the menu” would
`have been obvious. Pet. 22–24. For the first aspect, Petitioner additionally
`relies on Aberg to disclose an application summary that can be reached
`directly from the menu, as recited in claims 1 and 20. Id. at 25 (citing
`Ex. 1005, 2:55–3:3 (discussing dynamic menu), 4:32–48, Fig. 3; Ex. 1003
`¶¶ 62–67).
`The parties do not dispute that Schnarel discloses all the elements of
`claim 1 other than an application summary that can be reached directly from
`the 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
`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 be motivated
`to combine Schnarel and Aberg in the manner proposed by Petitioner.
`Pet. 16–19. Petitioner contends that a person of ordinary skill would have
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`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 menu at the same time. Id. at
`18. Petitioner notes that Aberg recognizes that a short menu system is
`desirable for accessing a “menu item more quickly.” Id. at 17 (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 18–19.
`Patent Owner raises a similar argument against this combination that
`it raised against the ground based on Schnarel alone. Prelim. Resp. 14–16.
`Patent Owner argues that moving the message pane so that it is accessible
`under the menu would change the principle of operation of Schnarel. Id.
`We do not agree.
`As we explained above we determine, on this record, that the
`proposed modification neither changes the principle of operation of Schnarel
`nor does it teach away from the combination. Instead, we find that, on this
`record, that Petitioner has presented sufficient evidence articulated sufficient
`reasoning for the combination to establish that claim 1 would have been
`obvious over the combination of Schnarel and Aberg.
`Patent Owner also argues that Petitioner has failed to meet its burden
`that the combination of Schnarel and Aberg accounts for the recited “mobile
`telephone” of claim 9. Prelim. Resp. 16. We do not agree. As discussed
`above, Petitioner provides explanation of how Schnarel accounts for this
`limitation. See Pet. 36.
`We have reviewed the proposed ground of obviousness under § 103(a)
`over Schnarel and Aberg against claims 1, 4, 7–9, 20, 28, and 29, and we are
`persuaded that, on the present record, Petitioner has established a reasonable
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`likelihood that it would prevail in its challenge to claims 1, 4, 7–9, 20, 28,
`and 29, on this ground.
`D. Asserted Obviousness of Claim 4 over Schnarel and Smith
`Petitioner contends that claim 4 is unpatentable under 35 U.S.C.
`§ 103(a) as obvious over Schnarel and Smith. To support its contention,
`Petitioner provides a detailed showing mapping limitations of claim 4 to
`structures described by Schnarel and Smith. Pet. 18–22, 30–34. Petitioner
`also cites the Myers Declaration for support. See Ex. 1003 ¶¶ 74–86.
`Smith (Ex. 1006)
`Smith, titled “Integrated Message Center,” an integrated message
`center for telecommunications equipment such as a mobile telephone.
`Ex. 1006, 3:50–54, Fig. 7A. In particular, the “integrated message center”
`of Smith graphically displays different types of received messages together
`to facilitate user viewing and manipulation of the messages without having
`to follow a series of menus or launch separate applications. Id. at 2:26–31.
`The integrated message center represents a unified mailbox through which
`the user is presented with SMS notification messages for all types of
`received messages, including voice, text, ink, fax, and email. Id. at 8:26–30.
`The messages are displayed as a scrollable list of notification headers for all
`of the received messages. Id. at 8:30–40. Each entry in the list of
`notification headers identifies the received message and includes the
`sender’s name, an icon identifying the type of message, and the user may
`specify if the list should include a date/time stamp for when the message was
`received. Id. at 8:40–51.
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`Analysis
`In support of this asserted ground of unpatentability, Petitioner
`provides explanations as to how the subject matter of claim 4 is disclosed by
`Schnarel and Smith. Pet. 16–20, 30–33. In particular, Petitioner contends
`that, in addition to the teachings of Schnarel regarding customization of the
`messages pane, that Smith further discloses that “a user can define what data
`types are of interest to that user for the summary for an application,” as
`recited in claim 4, through the disclosure in Smith of customizable menu
`windows. Pet. 30–33 (citing, e.g., Ex. 1004, Abstract (“System
`implementers may customize the default display elements or create entirely
`new custom panes[.]”), 3:14–17 (“The implementer may customize the user
`interface by modifying a default user interface element or by creating
`custom program modules.”), 5:59–65 (discussing customization of user
`interface); Ex. 1006, 8:36–51 (message center includes a list of different
`messages with information to identify the type of message and user can
`specify to include information), Fig. 7A; Ex. 1003 ¶¶ 39, 40, 78–83).
`Petitioner further contends that Schnarel discloses the remaining
`limitations of claim 4. Pe
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