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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
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`v.
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`CORE WIRELESS LICENSING S.A.R.L.,
`Patent Owner.
`____________________
`
`Case IPR2015-01899
`Patent No. 8,713,476
`____________________
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`
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`PATENT OWNER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(d)
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`IPR2015-01899
`Patent No. 8,713,476
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`TABLE OF CONTENTS
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`Summary Of Issue For Rehearing ................................................................... 1
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`Legal Standard ................................................................................................. 2
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`I.
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`II.
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`III. Argument ......................................................................................................... 2
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`A.
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`B.
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`C.
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`Claim 4 requires user customization of an application summary, not
`an application ........................................................................................ 2
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`Smith only teaches customization of an application, not of an
`application summary ............................................................................. 4
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`There is no evidence to support an obviousness finding as to claim 4
`based on Smith, Schnarel, and Aberg on this record ............................ 6
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`IV. Conclusion ..................................................................................................... 10
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`- i -
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`I.
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`Summary Of Issue For Rehearing
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`Patent Owner requests rehearing as to the Board’s conclusions with respect
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`IPR2015-01899
`Patent No. 8,713,476
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`to claim 4.
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`Claim 4 recites that “a user can define what data types are of interest to the
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`user for the summary for an application.” Claim 4 is directed to customization of
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`data types displayed within the application summary, and not within the
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`underlying application itself. Patent Owner Response at 37.
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`In its Final Written Decision, the Board correctly found that Schnarel does
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`not teach user customization. Paper 42 at 43-45. But the Board incorrectly
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`concluded that the combination of Schnarel and Aberg with Smith teaches claim 4.
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`Id. at 46-47. In reaching that conclusion, the Board noted Patent Owner’s argument
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`that Smith’s teaching only comes in the context of customizing data types within
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`the underlying application itself—the “message center 6100”—and not within an
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`application summary, as claim 4 requires. Id. at 46 (citing PO Resp. at 37). But the
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`Board did not address that dispositive argument, nor did it identify any evidentiary
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`basis to support a finding that a POSA would have been motivated by Smith to
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`modify the purported application summary of Schnarel, much less the purported
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`application summary resulting from a combination of Schnarel and Aberg.
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`IPR2015-01899
`Patent No. 8,713,476
`Accordingly, Patent Owner respectfully requests that the Board reconsider
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`its decision, and recognize that there is no evidentiary basis for a finding of
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`obviousness as to claim 4 based on Schnarel, Aberg, and Smith on this record.1
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`II. Legal Standard
`“A party dissatisfied with a decision may file a request for rehearing,
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`without prior authorization from the Board.” 37 C.F.R. § 42.71(d). “The burden of
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`showing a decision should be modified lies with the party challenging the
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`decision.” Id. A patent owner may raise specific issues for rehearing before the
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`Board without waiving its right to appeal other issues before the Federal Circuit. In
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`re Magnum Oil Tools Int’l Ltd., 829 F.3d 1364, 1377 (Fed. Cir. 2016).
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`III. Argument
`A. Claim 4 requires user customization of an application summary,
`not an application
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`Claim 4 depends from claim 1 and further recites that “a user can define
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`what data types are of interest to the user for the summary for an application.” Ex.
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`1001, 6:12-14.
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`1 Patent Owner does not separately challenge the Board’s conclusions as to
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`claim 4 based on Nason in this rehearing request. Paper 42 at 68-69. Rather, Patent
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`Owner reserves the right to challenge each aspect of the Board’s reasoning as to
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`Nason in its anticipated appeal to the Federal Circuit.
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` 2
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`IPR2015-01899
`Patent No. 8,713,476
`A central underlying teaching of the ’476 patent is the distinction between
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`
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`an application itself, and the separate concept of an “application summary” for an
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`underlying application that can be “reached directly” from the main menu. See Ex.
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`1001, 2:26-4:5 (teaching an innovative “application summary” that is “reached
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`directly” from a device’s main menu, giving the user access to specific
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`functionalities and/or data of an application “without actually opening the
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`application up”).
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`Moreover, both the patent’s specification and its claims place particular
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`significance on the curated nature of the content displayed in the application
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`summary window. See, e.g., Ex. 1001, 2:39:41 (teaching that the invention “brings
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`together, in one summary window, a limited list of common functions and
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`commonly accessed stored data”); id. at claim 1 (reciting that the data displayed
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`within the application summary must be a “limited list of data offered within the
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`one or more applications”).
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`And critically, each of the patent’s claims requires that the application
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`summary be displayed while the underlying application remains “in an unlaunched
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`state,” i.e., not displayed.
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`Thus in the context of the patent’s teachings and its claims, it is clear that
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`claim 4’s focus on customization of the contents of an application summary, rather
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`than an underlying application itself, is a non-trivial distinction. In short, no prior
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` 3
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`IPR2015-01899
`Patent No. 8,713,476
`art reference can teach the application summary customization of claim 4 without
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`first teaching an “application summary” for an “unlaunched” application that can
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`be “reached directly” from the menu. See PO Resp. at 37.
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`B.
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`Smith only teaches customization of an application, not of an
`application summary
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`The Smith reference does not teach that “a user can define what data types
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`are of interest to the user for the summary for an application,” as claim 4 requires.
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`PO Resp. at 37, Paper 42 at 46. Rather, as demonstrated below, Smith only teaches
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`customization of the contents of a specific application, the “message center 6100”
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`application. PO Resp. at 37.
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`In its Final Written Decision, the Board construed “application” to mean “a
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`program or group of programs working together to provide access to functions and
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`data.” Paper 42 at 8. The Board did not separately construe “application summary.”
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`However, it is clear and undisputed that an “application summary” cannot simply
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`be the underlying application itself because, among other problems, that would
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`render the underlying application “launched,” rather than “unlaunched” as each
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`claim requires.
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`Under the Board’s construction of “application” and Petitioner’s own
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`description of Smith, the “message center 6100” of Smith is a launched
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`application, not an application summary for an unlaunched application. According
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`to Petitioner, the message center of Smith provides a “list of data” that “is
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` 4
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`IPR2015-01899
`Patent No. 8,713,476
`selectable to allow the user to view the message.” Pet. at 16. That description
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`plainly brings the “message center 6100” of Smith within the Board’s construction
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`of an “application.” Since the “message center 6100” is displayed, see, e.g., Ex.
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`1006 Fig. 7A, it follows that “message center 6100” is a launched application, not
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`a summary for one or more unlaunched applications.
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`Indeed, Petitioner itself emphasized in its Reply that Petitioner does not rely
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`on Smith as teaching an “application summary.” Pet. Reply at 14 (“Petitioner relies
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`on Smith’s [ ] teaching of allowing a user to specify the displayed data types . . .
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`not Smith’s teaching of an application summary. . . .”) (emphasis original).
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`And while Petitioner argued that Smith’s message center 6100 “provides a
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`summary window” while “‘message-type specific applications’ are not yet
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`launched,” Pet. Reply at 14, there is no dispute that Smith’s message center 6100
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`represents a launched application. Smith teaches that “[i]n response to user
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`selection, the integrated message center retrieves the selected pending message for
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`viewing and manipulation by the user.” Ex. 1006 at 2:48-50 (Summary of the
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`Invention) (emphasis added). But every claim of the ’476 patent requires that “each
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`of the data” displayed in an application summary must be “selectable to launch the
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`respective application.” See, e.g., Claim 1 (emphasis added). In other words, Smith
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`does not teach the “application summary” of the ’476 patent, but in contrast
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`teaches another application—message center 6100—from which the user can
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` 5
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`IPR2015-01899
`Patent No. 8,713,476
`directly “view, discard, forward, and respond to any type of message without the
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`need to launch different applications.” Ex. 1006 at 3:40-45 (Detailed Description
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`of the Preferred Embodiments) (emphasis added).
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`In sum, as Patent Owner argued and as the Board’s construction and
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`Petitioner’s own statements compel, Smith’s message center 6100 is not an
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`“application summary,” and Smith itself provides no motivation for a POSA to
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`combine its teachings with Schnarel and Aberg. See Paper 42 at 46 (recognizing
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`Patent Owner’s argument on this point from PO Resp. 37).
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`C. There is no evidence to support an obviousness finding as to claim
`4 based on Smith, Schnarel, and Aberg on this record
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`To support a finding of obviousness based on a combination of prior art
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`references, the Board must “provide an adequate evidentiary basis for its findings.”
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`Icon Health and Fitness Inc, v. Strava, Inc., 849 F.3d 1034, 1046 (Fed. Cir. 2017)
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`(citation omitted). In particular, the Board “must articulate a reason why a
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`PHOSITA would combine the prior art references.” In re Nuvasive, 842 F.3d 1376,
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`1382 (Fed. Cir. 2016) (emphasis original). Such an articulation “must be supported
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`by a reasoned explanation,” and “conclusory statements alone are insufficient.” Id.
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`at 1383. “It is impermissible… to pick and choose from any one reference only so
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`much of it as will support a given position, to the exclusion of other parts
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`necessary to the full appreciation of what such reference fairly suggests to one of
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`ordinary skill in the art.” In re Wesslau, 353 F.2d 238, 241 (C.C.P.A. 1965);
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` 6
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`IPR2015-01899
`Patent No. 8,713,476
`Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys., Inc., 725 F.3d 1341, 1352
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`(Fed. Cir. 2013) (“Obviousness ‘cannot be based on the hindsight combination of
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`components selectively culled from the prior art to fit the parameters of the
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`patented invention.’”).
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`Here, the Board did not find that a POSA would have combined Smith with
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`Schnarel and Aberg in a manner that would teach each limitation of dependent
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`claim 4, including the limitations of claim 1. Paper 42 at 46-47. Nor did the Board
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`provide any articulation and reasoned explanation as to why a POSA would have
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`been motivated to, and would have, created such a combination. Id.
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`Rather, the Board merely found that a POSA “would have found it obvious
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`and straightforward to use Smith’s advantageous teaching of allowing a user to
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`specify whether or not to provide more data types . . . with additional detailed
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`information about the received messages in implementing Schnarel’s phone.” Id. at
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`46 (emphasis added) (citing Ex. 1003 ¶ 83).
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`That articulation, however, is insufficient because (1) as shown above and as
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`previously argued, Smith only teaches customizing the contents of an application,
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`not an application summary; (2) incorporating that teaching into “Schnarel’s
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`phone” does not equate to incorporating that teaching into the specific aspect of
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`Schnarel that the Board accepted as an “application summary,” and (3) it ignores
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`the fact that the Board’s obviousness finding as to claim 1 relies on a combination
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` 7
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`IPR2015-01899
`Patent No. 8,713,476
`of Schnarel and Aberg, and thus an obviousness finding as to claim 4 based on
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`
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`Smith requires an articulation and reasoned explanation as to how and why a
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`POSA would combine Smith with the combination already resulting from Aberg
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`and Schnarel, and not simply Schnarel alone.
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`The Board’s citation to Ex. 1003 ¶ 83 does not cure those defects. That
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`paragraph of Petitioner’s technical declaration is merely directed to Schnarel, and
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`says nothing about a combination of Smith, Schnarel, and Aberg. Moreover, it
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`rests on the assertion that “Smith [ ] teaches that a user can customize what is
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`displayed on the summary window,” id., whereas (1) Petitioner itself stated it was
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`not relying on Smith as teaching a “summary window,” Pet. Reply at 14, and (2)
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`we have demonstrated Smith does not teach an application summary window. See
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`Section III.B, supra; PO Resp. at 37.
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`In light of Petitioner’s own statements and the teachings of Smith, see Pet.
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`Reply at 14 & Section III.B, supra, there is nothing in Paragraph 83 of Ex. 1003 to
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`support a finding that a POSA would have been motivated to carry over Smith’s
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`teachings directed to an application into the purported application summary
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`resulting from a combination of Schnarel and Aberg, or even Schnarel alone.
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`In sum, the Board did not consider or address Patent Owner’s argument that
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`Petitioner’s arguments based on Smith fail to provide an adequate basis for a
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` 8
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`IPR2015-01899
`Patent No. 8,713,476
`combination that would teach claim 4, or a basis for a finding that a POSA would
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`
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`have been motivated to make such a combination.
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`Rather, on this record, the Board’s Final Written Decision represents the sort
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`of “picking and choosing” from various prior art references that is motivated by
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`impermissible hindsight bias, and also lacks the requisite articulated reasoning and
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`evidentiary support that the Federal Circuit has made clear the Board’s
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`obviousness findings must provide. See In re Nuvasive, 842 F.3d at 1382; In re
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`Wesslau, 353 F.2d at 241; Cheese Sys., Inc., 725 F.3d at 1352.
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`Moreover, neither the Petition, nor the Petitioner’s Reply, nor any of
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`Petitioner’s declaration testimony—as Petitioner itself has defined that testimony’s
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`relevance to this proceeding—supports a finding that a POSA would have been
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`motivated, for any specific reasons, to carry over the application-specific teachings
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`of Smith into an “application summary” resulting from a combination of Schnarel
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`and Aberg.
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`The Board cannot fill that evidentiary void of its own volition. In re
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`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (holding that
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`the Board is not “free to adopt arguments on behalf of petitioners that could have
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`been, but were not, raised by the petitioner during an IPR. Instead, the Board must
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`base its decision on arguments that were advanced by a party, and to which the
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`opposing party was given a chance to respond. [. . .] Thus, while the PTO has
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`IPR2015-01899
`Patent No. 8,713,476
`broad authority to establish procedures for revisiting earlier-granted patents in
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`IPRs, that authority is not so broad that it allows the PTO to raise, address, and
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`decide unpatentability theories never presented by the petitioner and not supported
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`by record evidence.”) (citations omitted).
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`IV. Conclusion
`Because the Board did not consider or address the merits of Patent Owner’s
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`arguments as to the teachings of Smith, it should reconsider its decision. And
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`because there is no record evidence to support a finding that a POSA would have
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`been motivated to combine Smith with Schnarel and Aberg in a manner that would
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`teach each limitation of claim 4, including the limitations of claim 1, the Board
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`should instead find that claim 4 is not obvious based on any ground relying on
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`Schnarel.
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`
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`Dated: April 14, 2017
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`
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`Respectfully submitted,
`
`By: /s/ Wayne M. Helge
`Wayne M. Helge (Reg. No. 56,905)
`Walter D. Davis (Reg. No. 45,137)
`DAVIDSON BERQUIST
`JACKSON &
`GOWDEY, LLP
`8300 Greensboro Drive, Suite 500
`McLean, VA 22102
`Telephone: 571-765-7700
`Fax: 571-765-7200
`Email: whelge@dbjg.com
`Email: wdavis@dbjg.com
` Counsel for Patent Owner
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` 10
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`CERTIFICATE OF SERVICE
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`
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`IPR2015-01899
`Patent No. 8,713,476
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`I hereby certify that on April 14, 2017, a true and correct copy of the
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`foregoing Patent Owner’s Request for Rehearing is being filed and served via
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`email, by consent, to the Petitioner at the correspondence e-mail addresses of
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`By: /s/ Wayne M. Helge
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`USPTO Reg. No. 56,905
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`Counsel for Patent Owner
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`record as follows:
`
`Gabrielle E. Higgins
`Kathryn N. Hong
`ROPES & GRAY LLP
`gabrielle.higgins@ropesgray.com
`kathryn.hong@ropesgray.com
`
`
`
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` 11
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