IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`United States Patent No: 8,713,476
`Inventor: Mathieu Kennedy Martyn
`Formerly Application No.: 14,063,544
`Issue Date: April 29, 2014
`Filing Date: October 25, 2013
`Former Group Art Unit: 2175
`Former Examiner: VU, THANH T
`Patent Owner: Core Wireless Licensing
`S.A.R.L.
`
`
`Attorney Docket No.:
`104677-5016-653
`
`Customer No.: 28120
`Petitioner: Apple Inc.
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`
`For: COMPUTING DEVICE WITH IMPROVED USER INTERFACE FOR
`APPLICATIONS
`
`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
`Alexandria, Virginia 22313-1450
`
`PETITION FOR INTER PARTES REVIEW OF
`UNITED STATES PATENT NO. 8,713,476
`
`1
`
`
`
`
`
`

`
`TABLE OF CONTENTS
`
`V. 
`
`INTRODUCTION AND BACKGROUND IN THE ART ............................. 1 
`I. 
`II.  MANDATORY NOTICES UNDER § 42.8 ................................................... 5 
`PETITIONER HAS STANDING .................................................................... 6 
`III. 
`SUMMARY OF THE ’476 PATENT ............................................................. 7 
`IV. 
`A.  Overview of the ’476 Patent .................................................................. 7 
`B. 
`Overview of the ’476 Patent Prosecution History ................................ 9 
`C. 
`Overview of the ’020 Patent Prosecution History ................................ 9 
`THERE IS A REASONABLE LIKELIHOOD THAT PETITIONER
`WILL PREVAIL WITH RESPECT TO AT LEAST ONE CLAIM ............ 11 
`A. 
`Claim Construction Under 37 C.F.R. § 42.104(b)(3) ......................... 11 
`B. 
`Level of Ordinary Skill in the Art and State of the Art ....................... 12 
`C. 
`Ground 1: Schnarel in view of the knowledge of a POSITA
`renders obvious claims 1, 4, 7-9, 20, 28, and 29; Ground 2:
`Schnarel in view of Aberg renders obvious claims 1, 4, 7-9, 20,
`28, and 29; Ground 3: Schnarel in view of the knowledge of a
`POSITA and Smith render obvious claim 4; Ground 4: Schnarel
`in view of Aberg and Smith render obvious claim 4. ......................... 13 
`1. 
`Overview of U.S. Pat. No. 7,225,409 (“Schnarel”) .................. 13 
`2. 
`Overview of U.S. Pat. No. 6,993,362 (“Aberg”) ...................... 15 
`3. 
`Overview of U.S. Pat. No. 6,333,973 (“Smith”) ...................... 15 
`4.  Motivation to Combine Schnarel with Aberg (Element
`1.C) ............................................................................................ 16 
`5.  Motivation to Combine Schnarel with Smith (Claim 4) ........... 19 
`6. 
`Claim Charts for Grounds 1-4 (See also Ex. 1003 ¶¶52-
`101) ........................................................................................... 20 
`D.  Ground 5: Claims 1, 4, 7-8, 20, 28, and 29 are obvious under
`§ 103 over Nason; Ground 6: Claims 1, 4, 7-9, 20, 28, and 29
`are obvious under § 103 over Nason in view of the knowledge
`of a POSITA; Ground 7: Claim 9 is obvious under § 103 over
`Wagner in view of Nason; Ground 8: Claim 9 is obvious over
`Wagner in view of Nason and the knowledge of a POSITA. ............. 37 
`1. 
`Overview of U.S. Pat. No. 6,593,945 (“Nason”) ...................... 37 
`2. 
`Overview of U.S. Pat. No. 6,256,516 (“Wagner”) ................... 40 
`3.  Motivation to Combine Wagner with Nason (Claim 9) ........... 40 
`4. 
`Claim Charts for Grounds 5-8 (See also Ex. 1003 ¶¶102-
`140) ........................................................................................... 42 
`i
`
`
`
`

`
`VI.
`
`CONCLUSION ............................................................................................ ..57
`
`VI.  CONCLUSION .............................................................................................. 57 
`
`
`
`
`
`ii
`
`

`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`
`CASES
`Core Wireless Licensing S.A.R.L. v. Apple Inc.,
`No. 6:14-cv-00751 (E.D. Tex.) ................................................................... 5-6, 12
`Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc. et al.,
`No. 2:14-cv-00911 (E.D. Tex.) ............................................................................. 6
`In re Am. Acad. of Sci. Tech Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004) .................................................................... 11-12
`Vibrant Media, Inc. v. Gen. Elec. Co.,
`IPR2013-00170, Paper No. 14 (July 29, 2013) .................................................. 11
`
`STATUTES
`
`35 U.S.C. § 102(e) ............................................................................................passim
`35 U.S.C. § 103 .................................................................................................passim
`35 U.S.C. § 112 .......................................................................................................... 2
`35 U.S.C. §§ 311-319 ................................................................................................ 1
`35 U.S.C. § 314(a) ................................................................................................... 11
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 1.33(c) ................................................................................................... 57
`37 C.F.R. § 42.1 ......................................................................................................... 1
`37 C.F.R. § 42.8 ......................................................................................................... 5
`37 C.F.R. § 42.8(b)(1) ................................................................................................ 5
`37 C.F.R. § 42.8(b)(2) ................................................................................................ 5
`37 C.F.R. § 42.8(b)(3) ................................................................................................ 5
`37 C.F.R. § 42.8(b)(4) ................................................................................................ 5
`37 C.F.R. § 42.22 ....................................................................................................... 6
`37 C.F.R. § 42.100 ................................................................................................... 57
`37 C.F.R. § 42.100(b) .............................................................................................. 11
`37 C.F.R. § 42.104(a) ................................................................................................. 6
`37 C.F.R. § 42.104(b) ................................................................................................ 6
`37 C.F.R. § 42.104(b)(3) .......................................................................................... 11
`37 C.F.R. § 42.105 ................................................................................................... 57
`MPEP § 2111 ........................................................................................................... 12
`
`
`
`
`iii
`
`

`
`LIST OF EXHIBITS
`
`Description
`Exhibit
`Ex. 1001 U.S. Patent No. 8,713,476
`Ex. 1002 U.S. Patent No. 8,713,476 File History
`Ex. 1003 Declaration of Dr. Brad Myers In Support of the Petition for Inter
`Partes Review of United States Patent No. 8,713,476
`Ex. 1004 U.S. Patent No. 7,225,409 (“Schnarel”)
`Ex. 1005 U.S. Patent No. 6,993,362 (“Aberg”)
`Ex. 1006 U.S. Patent No. 6,333,973 (“Smith”)
`Ex. 1007 U.S. Patent No. 6,593,945 (“Nason”)
`Ex. 1008 U.S. Patent No. 5,959,621 (“Nawaz”)
`Ex. 1009 U.S. Patent No. 6,160,554 (“Krause”)
`Ex. 1010 U.S. Patent No. 6,256,516 (“Wagner”)
`Ex. 1011 U.S. Patent No. 6,018,724 (“Arent”)
`Ex. 1012 U.S. Patent Publication No. 2005/0251448 (“Gropper”)
`Ex. 1013 U.S. Patent No. 5,345,550 (“Bloomfield 550”)
`Ex. 1014 U.S. Patent No. 5,425,140 (“Bloomfield 140”)
`Ex. 1015 U.S. Patent No. 6,408,191 (“Blanchard”)
`Ex. 1016 U.S. Patent No. 5,815,142 (“Allard”)
`Ex. 1017 U.S. Patent No. 5,737,394 (“Anderson”)
`Ex. 1018 U.S. Patent No. 8,434,020 File History
`Ex. 1019
`Figures 1-14 of U.S. Patent No. 6,593,945 (“Nason Figures”)
`(http://patents.reedtech.com)
`Core Wireless Licensing S.A.R.L. v. Apple Inc., No. 6:14-cv-00751,
`D.I. 107, 107-1 (Joint Submission of P.R. 4-5(d) Claim Construction
`Chart) (E.D. Tex.)
`Core Wireless Licensing S.A.R.L. v. Apple Inc., No. 6:14-cv-00751,
`D.I. 89 (Core Wireless Opening Claim Construction Brief) (E.D.
`Tex.)
`Core Wireless Licensing S.A.R.L. v. Apple Inc., No. 6:14-cv-00751,
`D.I. 100 (Apple Responsive Claim Construction Brief) (E.D. Tex.)
`Ex. 1023 Declaration of Michael P. Duffey in Support of Petition for Inter
`Partes Review of U.S. Patent No. 8,434,020
`Core Wireless Licensing S.A.R.L. v. Apple Inc., No. 6:14-cv-00751,
`D.I. 100-4 and -5 (Apple Responsive Claim Construction Brief Exs. 4
`and 5) (E.D. Tex.)
`
`
`
`
`
`i
`
`Ex. 1020
`
`Ex. 1021
`
`Ex. 1022
`
`Ex. 1024
`
`

`
`Inter Partes Review
`
`United States Patent No. 8,713,476
`
`
`Pursuant to §§ 311-319 and Rule § 42.1,1 the undersigned, on behalf of and
`
`acting in a representative capacity for Apple Inc. (“Apple” or “Petitioner”) hereby
`
`petitions for inter partes review (“IPR”) of claims 1, 4, 7-9, 20, 28, and 29 (the
`
`“Challenged Claims”) of U.S. Patent No. 8,713,476 (“the ’476”), originally issued
`
`to Nokia Corporation and, according to USPTO records, now assigned to Core
`
`Wireless Licensing S.A.R.L. (“Core” or “PO”). Petitioner hereby asserts that there
`
`is a reasonable likelihood that at least one of the challenged claims is unpatentable
`
`for the reasons set forth herein and respectfully requests review of, and judgment
`
`against, claims 1, 4, 7-9, 20, 28, and 29 as unpatentable under § 103.
`
`I.
`
`INTRODUCTION AND BACKGROUND IN THE ART
`
`The ’476 generally relates to a graphical user interface (“GUI”) for a compu-
`
`ting device that displays a summary window including a limited list of functions
`
`and data offered within an application. Ex. 1001 2:27-41. As set forth in this Peti-
`
`tion, the supposed “invention” in the “Challenged Claims” was well-known and
`
`obvious prior to the claimed priority date of July 28, 2000.
`
`
`1 Section cites are to 35 U.S.C. or 37 C.F.R. as the context indicates, and all em-
`
`phasis and annotations are added unless noted.
`
`
`
`1
`
`

`
`Inter Partes Review
`
`United States Patent No. 8,713,476
`
`
`The Challenged Claims generally recite one or more of the following con-
`
`ventional features that were well-known in the art long before July 28, 2000: 2 a
`
`computing device (such as a mobile telephone) having a display; a main menu list-
`
`ing applications; a summary window that can be reached directly from the main
`
`menu; a summary window displaying a limited list of functions and data that are
`
`selectable to launch an application; a summary window that is displayed while the
`
`application is in an unlaunched state; and allowing a user to define the data to be
`
`displayed in the summary. See generally Ex. 1003 ¶¶14-19.
`
`Indeed, the ’476 specification and prosecution history, as well as the prose-
`
`cution of U.S. Pat. No. 8,434,020 (“the ’020”) (the parent of the ’476) make clear
`
`that Applicant did not purport to invent, inter alia, a “computing device,” “mobile
`
`telephone,” (Ex. 1001 1:23-34); a display (id. 1:24-26); a main menu listing differ-
`
`ent applications (id. 1:47-55, 1:64-2:1; Ex. 1018 249 (9/23/08 Reply 13) (“Appli-
`
`cant does not dispute that the concept of a main menu is well known in the prior
`
`art.”); or displaying functions and data in a menu (Ex. 1001 2:5-13; Ex. 1018 251
`
`(9/23/08 Reply 15)). See also, e.g., Ex. 1003 ¶¶14-23, 25-31. And it was well
`
`known in the art for a mobile phone to include a display for presenting a GUI for
`
`2 Petitioner reserves the right to raise in an appropriate forum invalidity based on
`
`§ 112, as well as the right to argue that the Challenged Claims are not entitled to
`
`the July 28, 2000 priority date based, on other grounds.
`
`
`
`2
`
`

`
`Inter Partes Review
`
`United States Patent No. 8,713,476
`
`
`user control and interaction. See, e.g., Ex. 1010 2:27-28, 2:63-3:2, Figs. 1, 3A, 10;
`
`Ex. 1011 Abstract, 1:44-50, 11:49-51, 18:27-37; Ex. 1012 ¶¶77, 92; Ex. 1003 ¶¶14,
`
`129.
`
`Further, the prior art, including the references cited herein, had long taught
`
`the use of “summary windows” for providing selective access to functions and/or
`
`data offered in an application on computing devices. See, e.g., Ex. 1004 1:13-15,
`
`1:22-28, 2:7-12, 13:42-48, Fig. 2; Ex. 1005 Abstract, 2:3-5, 2:55-3:3, 7:25-29, Figs.
`
`1, 3; Ex. 1006 1:57-61, 2:26-31, 3:50-54, 8:27-35, Figs. 7A, 7B; Ex. 1007 1:11-13,
`
`2:49-53, 3:25-33, 4:31-40, 5:15-25, Figs. 2, 7-10; Ex. 1010 Abstract, 4:56-5:11,
`
`8:22-29, Fig. 3A; Ex. 1013 1:59-64, 4:14-58, 9:56-10:28, 11:14-24, Figs. 3-6; Ex.
`
`1014 1:41-46, 8:17-32, 9:61-66, Fig. 5; Ex. 1015 1:11-14, 5:30-6:38, Figs. 2, 4; Ex.
`
`1003 ¶15.
`
`It was also well known to configure the summary window so that it is “di-
`
`rectly reached” from a main menu. See, e.g., Ex. 1005 Abstract, 2:3-5, 2:55-3:3,
`
`7:25-29, Figs. 1, 3; Ex. 1006 8:12-35, Fig. 7A; Ex. 1007 2:49-53, 3:25-33, 4:31-40,
`
`5:15-25, Figs. 2, 7-10; Ex. 1013 4:14-58, 9:56-10:28, 11:14-24, Figs. 3-6; Ex. 1014
`
`8:17-32, 9:61-66, Fig. 5; Ex. 1015 5:30-6:38, Figs. 2, 4; Ex. 1003 ¶16. It was also
`
`well known to include a limited list of functions and/or data in a “summary win-
`
`dow.” See, e.g., Ex. 1004 6:26-8:67, Figs. 2, 3; Ex. 1005 2:55-62, 4:32-48, 6:42-49,
`
`Figs. 1, 3; Ex. 1006 2:41-50, 8:36-45, Fig. 7A; Ex. 1007 3:48-4:49, Figs. 2, 5-10;
`
`
`
`3
`
`

`
`Inter Partes Review
`
`United States Patent No. 8,713,476
`
`
`Ex. 1010 Abstract, 4:56-5:11, 8:22-29, Fig. 3A; Ex. 1015 6:4-7, 8:34-9:11, Fig. 4;
`
`Ex. 1013 4:14-58, 9:56-10:28, Figs. 4-6; Ex. 1016 4:8-19, Fig. 6; Ex. 1017 14:51-
`
`63, Fig. 9A; Ex. 1003 ¶17.
`
`During prosecution of the ’020 (the parent of the ’476), in an attempt to
`
`avoid continued rejection of its claims, Applicant amended the claims to include
`
`the limitation “wherein the application summary window is displayed while the
`
`application is in an un-launched state.” Ex. 1018 190 (12/26/07 Reply 2). However,
`
`patents and publications printed well before the earliest priority date, including the
`
`references cited herein, also taught displaying a summary window while the appli-
`
`cation is in an un-launched state. See, e.g., Ex. 1004 6:27-45, 8:46-62, 13:22-39,
`
`Fig. 2; Ex. 1006 1:57-61, 2:26-31; Ex. 1007 3:10-13, 3:56-60, 4:31-40; Ex. 1014
`
`8:17-32, Fig. 5; Ex. 1009 1:52-56, 2:2-5; Ex. 1018 325 (11/10/09 Exam.’s Br. 3)
`
`(finding during prosecution that “Krause teaches displaying a summary window of
`
`an application while an application is in an un-launched state.”); Ex. 1003 ¶¶18,
`
`27-31.
`
`During prosecution of the ’020, Applicant also added the limitation that
`
`“each function” in the summary window is selectable to “launch the first applica-
`
`tion.” Ex. 1018 238-40 (9/23/08 Reply 2-4). This too, was known in the art before
`
`the earliest claimed priority date, and disclosed by the cited references. See, e.g.,
`
`Ex. 1004 6:27-45, 8:46-62, 13:22-39, Fig. 2; Ex. 1007 3:10-13, 3:56-60, 4:31-40;
`
`
`
`4
`
`

`
`Inter Partes Review
`
`United States Patent No. 8,713,476
`
`
`Ex. 1014 8:17-32, Fig. 5; Ex. 1003 ¶18. Similarly, it was also well-known in the art
`
`that data displayed in a summary window could be selectable to launch an applica-
`
`tion. Ex. 1004 6:62-7:61; Ex. 1007 3:10-13, 3:56-60, 4:31-40; Ex. 1003 ¶18.
`
`In addition, as required by dependent claim 4, it was well known in the art to
`
`allow a user to define the data types of interest to be displayed on a summary win-
`
`dow. See, e.g., Ex. 1004 Abstract, 3:14-17, 8:18-45, 24:47-53, Figs. 2-4; Ex. 1006
`
`8:36-51, Fig. 7A; Ex. 1007 Abstract, 4:31-44, 5:45-52, Figs. 10, 14; Ex. 1003 ¶19.
`
`And as required by dependent claim 7, it was also well known in the art that the
`
`summary window could be a frame including the name of the application. See, e.g.,
`
`Ex. 1004 6:47-48, Fig. 2; Ex. 1007 Fig. 10; Ex. 1003 ¶19.
`
`As demonstrated in this Petition, each and every element of the Challenged
`
`Claims had been disclosed in the prior art and the Challenged Claims are at best
`
`nothing more than a routine and predictable combination of these well-known ele-
`
`ments. Petitioner thus respectfully requests that the Board institute trial and find
`
`each of the Challenged Claims invalid under §103.
`
`II. MANDATORY NOTICES UNDER § 42.8
`Apple is the Real Party in Interest Under § 42.8(b)(1).
`
`Related Matters Under § 42.8(b)(2) and Lead and Back-Up Counsel
`
`Under § 42.8(b)(3) and (4). Core has asserted ’476 claims 1, 4, 7, 8, 9, and 20
`
`against Petitioner in Core Wireless Licensing S.A.R.L. v. Apple Inc., No. 6:14-cv-
`
`
`
`5
`
`

`
`Inter Partes Review
`
`United States Patent No. 8,713,476
`
`
`00751 (E.D. Tex.) (“EDTX”), which is being transferred to the Northern District of
`
`California. The ’476 is also the subject of litigation in Core Wireless Licensing
`
`S.A.R.L. v. LG Elecs., Inc. et al., No. 2:14-cv-00911 (E.D. Tex.), to which Apple is
`
`not a party. Petitioner has also concurrently filed an IPR petition challenging
`
`claims of a related patent (U.S. Pat. No. 8,434,020). Lead / backup counsel and
`
`service information are designated in the signature block.
`
`III. PETITIONER HAS STANDING
`Grounds for Standing Under Rule 42.104(a): Petitioner certifies, pursuant
`
`to § 42.104(a), that the ’476 is eligible for IPR and Petitioner is not barred or es-
`
`topped from requesting IPR. Petitioner was served with a Complaint asserting in-
`
`fringement of the ’476 on September 12, 2014. Neither Petitioner nor any other re-
`
`al party-in-interest or privy of Petitioner was served with a complaint before that
`
`date, or has initiated a civil action challenging the validity of the ’476.
`
`Claims and Statutory Grounds Under §§ 42.22 and 42.104(b): Petitioner
`
`requests IPR of claims 1, 4, 7-9, 20, 28, and 29 and asserts that the claims are un-
`
`patentable based on one or more grounds under § 103: Ground 1: Claims 1, 4, 7-9,
`
`20, 28, and 29 are obvious under § 103 over Schnarel in view of the knowledge of
`
`a person of ordinary skill in the art (“POSITA”); Ground 2: Claims 1, 4, 7-9, 20,
`
`28, and 29 are obvious under § 103 over Schnarel in view of Aberg; Ground 3:
`
`Claim 4 is obvious under § 103 over Schnarel in view of the knowledge of a
`
`
`
`6
`
`

`
`Inter Partes Review
`
`United States Patent No. 8,713,476
`
`
`POSITA and Smith; Ground 4: Claim 4 is obvious under § 103 over Schnarel in
`
`view of Aberg and Smith; Ground 5: Claims 1, 4, 7-8, 20, 28, and 29 are obvious
`
`under § 103 over Nason; Ground 6: Claims 1, 4, 7-9, 20, 28, and 29 are obvious
`
`under § 103 over Nason in view of the knowledge of a POSITA; Ground 7: Claim
`
`9 is obvious under § 103 over Wagner in view of Nason; Ground 8: Claim 9 is
`
`obvious over Wagner in view of Nason and the knowledge of a POSITA. None of
`
`these grounds has been previously before the Patent Office. Sections V.C.6 and
`
`V.D.4 below provide claim charts specifying how the relied upon prior art renders
`
`obvious the challenged claims. In further support of the proposed grounds of rejec-
`
`tion, the Declaration of technical expert Dr. Brad Myers is attached as Ex. 1003.
`
`IV. SUMMARY OF THE ’476 PATENT
`A. Overview of the ’476 Patent
`The ’476 generally describes a “user interface for applications” on a compu-
`
`ting device, including mobile telephones. Ex. 1001 1:23-34. See generally Ex.
`
`1003 ¶¶ 20-24. The computing device displays a main menu listing applications
`
`and a “summary window” (called an “App Snapshot”) for an application. Id. 2:66-
`
`3:3, 3:17-28, 3:34-41. Applications in the main menu may include, e.g., a message,
`
`a contacts/address book, a calendar or telephone application. Id. 1:47-50, 3:17-19,
`
`Fig. 1. The “summary window” can be reached directly from the main menu and
`
`includes a “limited list of common functions and commonly accessed stored data.”
`
`
`
`7
`
`

`
`Id. 2:28-41, 2:66-3:3, Figs. 2-3.
`
`
`
`
`
`Inter Partes Review
`
`United States Patent No. 8,713,476
`
`
`
`The ’476 specification describes that “[a]lthough the term ‘window’ has
`
`been used to describe the drop down summary, the summary does not have to be
`
`presented within any kind of frame. Any manner of presenting the common func-
`
`tions offered within an application and/or data stored in that application will con-
`
`stitute a ‘window’ as such.” Id. 4:6-11. The data in the summary window is se-
`
`lectable to open the application. Id. 2:42-50. In addition, the App Snapshot “dis-
`
`play[s] data from an application and functions of that application without actually
`
`opening the application up: only once a user has selected an item in the App Snap-
`
`shot associated with a given application does that application have to be opened.”
`
`Id. 3:64-4:2. The “user or system designer may define the kinds of functionality
`
`and/or stored data to be included in the App Snapshot for a given application.” Id.
`
`4:50-53.
`
`The Challenged Claims are directed to a computing device that includes a
`
`display screen that displays a menu listing one or more applications and a summary
`
`window that can be reached directly from the menu. The summary window in-
`
`
`
`8
`
`

`
`Inter Partes Review
`
`United States Patent No. 8,713,476
`
`
`cludes a limited list of data offered within an application, wherein the data is se-
`
`lectable to launch the application and enable the data to be seen in the application.
`
`The summary window is displayed when the application is in an unlaunched state.
`
`The Challenged Claims also claim a summary window that displays a limited list
`
`of functions, a summary window where the user can define what data types are of
`
`interest to the user for the summary, and a computing device that is a mobile tele-
`
`phone.
`
`B. Overview of the ’476 Patent Prosecution History
`The application leading to the ’476 patent was filed October 25, 2013 as U.S.
`
`Pat. App. No. 14/063,544 (“the ’544 application”), which is a continuation of U.S.
`
`Pat. App. No. 10/343,333 (“the ’333 application”) filed August 27, 2003 (issued as
`
`the ’020). See generally Ex. 1003 ¶¶25-26. The ’476 patent claims priority to
`
`PCT/GB01/03387 filed July 27, 2001 and GB 0019459.7 filed July 28, 2000.
`
`The ’476 and ’020 share a common specification, and Applicant filed a terminal
`
`disclaimer over the ’020. Ex. 1002 83-84 (2/4/14 Terminal Disclaimer). On Febru-
`
`ary 10, 2014, without issuing any office actions, the Examiner issued a Notice of
`
`Allowance. Ex. 1002 90-97 (2/10/14 NOA).
`
`C. Overview of the ’020 Patent Prosecution History
`During prosecution of the ’020, Applicant amended original independent
`
`claims 14 and 26 (now independent claims 1 and 16) in response to Examiner’s re-
`
`
`
`9
`
`

`
`Inter Partes Review
`
`United States Patent No. 8,713,476
`
`
`jections to include (i) “a main menu listing one or more applications,” (ii) a sum-
`
`mary window “that can be reached directly from the main menu,” (iii) “wherein
`
`the application summary window is displayed while the application is in an un-
`
`launched state,” and (iv) that “each function” is selectable to “launch the first ap-
`
`plication.” Ex. 1018 154-55, 157-58 (6/12/07 Reply 2-3, 5-6), 144-147 (12/12/06
`
`OA 2-5); 190 (12/26/07 Reply 2); 238-40 (9/23/08 Reply 2-4). The Examiner ulti-
`
`mately found the pending claims unpatentable as obvious over the prior art. Ex.
`
`1018 171-74 (8/22/07 OA 2-5); 219-22 (4/23/08 OA 2-5); 260-63 (12/31/08 OA 3-
`
`5); see also Ex. 1003 ¶¶27-29.
`
`Applicant appealed, arguing that no combination of the art teaches “opening
`
`a summary window which shows various functions that can be selected within the
`
`designated application even while the application is unlaunched.” Ex. 1018 309
`
`(8/31/09 App. Br. 10). In response, the Examiner explained that Krause “display[s]
`
`a preview window related to an application while the application is in un-launch
`
`[sic] state.” Ex. 1018 328-29 (11/10/09 Exam. Ans. 5-7). Applicant responded that
`
`Krause did not teach “displaying functionality of the application of the unlaunched
`
`application on a main menu screen and allowing the functionality to be initiated
`
`from this main menu screen.” Ex. 1018 332-34 (1/11/10 Reply Br. 2-4). The Board
`
`reversed the Examiner’s final rejection of original claims 14-40 and found Krause
`
`did not teach that “each function in the list [is] selectable to launch the first appli-
`
`
`
`10
`
`

`
`Inter Partes Review
`
`United States Patent No. 8,713,476
`
`
`cation and initiate the selected function.” Ex. 1018 466-67 (10/24/12 Bd. Dec. 3-4);
`
`see also Ex. 1003 ¶¶27-31.
`
`V.
`
`THERE IS A REASONABLE LIKELIHOOD THAT PETITIONER
`WILL PREVAIL WITH RESPECT TO AT LEAST ONE CLAIM
`
`Petitioner submits there is at least “a reasonable likelihood that [Petitioner]
`
`[will] prevail with respect to at least 1 of the claims challenged in [this Petition].”
`
`§ 314(a). As explained below, all of the challenged claims are at least obvious un-
`
`der § 103 in light of the prior art.
`
`A. Claim Construction Under 37 C.F.R. § 42.104(b)(3)
`For purposes of this review, the claim language is construed such that it is
`
`“given its broadest reasonable construction in light of the specification of the pa-
`
`tent in which it appears.” § 42.100(b). Under this standard, while an inventor may
`
`rebut that presumption by providing a definition of the term in the specification
`
`with reasonable clarity, deliberateness, and precision, claim terms are presumed to
`
`be given their ordinary and customary meaning as would be understood by one of
`
`ordinary skill in the art at the time of the invention. E.g., Vibrant Media, Inc. v.
`
`Gen. Elec. Co., IPR2013-00170, Paper No. 14 (July 29, 2013) at 5. For purposes of
`
`this review, Petitioner interprets the claims in accordance with their plain and ordi-
`
`nary meaning under the required broadest reasonable interpretation consistent with
`
`the specification. Because the standard for claim construction at the PTO is differ-
`
`ent than that used in litigation, see In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
`
`
`
`11
`
`

`
`Inter Partes Review
`
`United States Patent No. 8,713,476
`
`
`1364, 1369 (Fed. Cir. 2004); MPEP § 2111, Petitioner expressly reserves the right
`
`to argue in litigation constructions for any term, as appropriate to that proceeding.3
`
`Level of Ordinary Skill in the Art and State of the Art
`
`B.
`The applicable person of ordinary skill in the art would have a minimum of a
`
`bachelor’s in electrical engineering, computer engineering, computer science, or a
`
`comparable field, and approximately two years of professional experience with de-
`
`signing and/or developing graphical user interfaces (“GUIs”) for computing devic-
`
`3 No construction is necessary for the term “display on the screen an application
`
`summary window that can be reached directly from the menu” (cls. 1, 20). In liti-
`
`gation, Petitioner proposed construing this term as “display on the screen an appli-
`
`cation summary window for an application that appears when the user selects the
`
`application from the menu and without any further user action.” See, e.g., Exs.
`
`1020-1022, 1024; Ex. 1001 1:23-24, 35-56, 57-59, 2:66-3:10, 3:10-16, Fig. 2, Fig.
`
`3, 3:34-48, 49-55, 4:35-42, 43-46; Ex. 1018 at 162, 179, 181, 197, 198, 245, 303,
`
`309. PO asserted that this term should have its “plain and ordinary meaning,” but
`
`proceeded to interpret the phrase so as to not require any “user action” for the
`
`summary window to be reached directly from the main menu. See Ex. 1021 at 30.
`
`While Petitioner believes its litigation construction is correct, construction of this
`
`term is not necessary for purposes of this proceeding as the cited references and
`
`combinations herein disclose this limitation under both proposed constructions.
`
`
`
`12
`
`

`
`Inter Partes Review
`
`United States Patent No. 8,713,476
`
`
`es or other relevant industry experience. Additional graduate education could sub-
`
`stitute for professional experience, or significant experience in the field could sub-
`
`stitute for formal education. A POSITA is presumed to have knowledge of all rele-
`
`vant prior art, and would thus have been familiar with each of the references cited
`
`herein and the full range of teachings they contain. Ex. 1003 ¶¶2-11.
`
`C. Ground 1: Schnarel in view of the knowledge of a POSITA ren-
`ders obvious claims 1, 4, 7-9, 20, 28, and 29; Ground 2: Schnarel
`in view of Aberg renders obvious claims 1, 4, 7-9, 20, 28, and 29;
`Ground 3: Schnarel in view of the knowledge of a POSITA and
`Smith render obvious claim 4; Ground 4: Schnarel in view of
`Aberg and Smith render obvious claim 4.
`1. Overview of U.S. Pat. No. 7,225,409 (“Schnarel”)
`Schnarel (Ex. 1004) was filed Aug. 25, 1999 and issued May 29, 2007, mak-
`
`ing it prior art under at least § 102(e). Schnarel teaches a graphical user interface
`
`for computing devices (such as a mobile telephone or personal digital assistant)
`
`with screen displays. E.g., Ex. 1004 1:12-27, 2:7-12. Schnarel teaches displaying a
`
`main menu listing applications (e.g., “the application button bar” listing applica-
`
`tions such as “Address Book,” “The Web,” “Messages,” “Settings” shown in Fig. 2)
`
`and a summary window (e.g., “message summary pane,” shown as item 206 in Fig.
`
`2) that displays a limited list of data (e.g., icons such as notepad, answering ma-
`
`chine, and e-mail messages indicating new messages received, as shown in Fig. 2)
`
`and functions (e.g., “Caller log,” “Fax,” as shown in Figs. 2-4) offered in an appli-
`
`cation (e.g., the “message center” application). E.g., id. 2:23-30, 6:27-44, 6:52-61,
`
`
`
`13
`
`

`
`Inter Partes Review
`
`United States Patent No. 8,713,476
`
`
`7:41-53, 8:46-62, 9:1-6, 9:40-43, 13:42-48, Figs. 1-3, 5. The “summary pane”
`
`taught by Schnarel is a “frame” that lists the name of the application (e.g., “Mes-
`
`sages” as shown in Figure 2).
`
`
`
`Id. Fig. 2. The application summary window taught by Schnarel is displayed
`
`while the application is in an unlaunched state. E.g., id. 6:52-7:12, 7:41-60 (de-
`
`scribing that when a “user selects an icon in the new messages icon list” this
`
`“launches a message center application program.”). In addition, the data displayed
`
`in the summary window is selectable to launch the application and initiate the se-
`
`lected function. E.g., id. Schnarel further teaches that a user is able to customize
`
`the summary pane to display certain data types (e.g., faxes, caller logs, etc.) that
`
`are of interest to the user. See, e.g., id. Abstract, 3:14-17, 8:18-45, 24:47-53; see
`
`also, e.g., Ex. 1003 ¶¶39-40.
`
`
`
`14
`
`

`
`Inter Partes Review
`
`United States Patent No. 8,713,476
`
`
`2. Overview of U.S. Pat. No. 6,993,362 (“Aberg”)
`Aberg (Ex. 1005) was filed Mar. 13, 2000 and issued Jan. 31, 2006, making
`
`it prior art under at least § 102(e). Aberg teaches a mobile telephone having a dis-
`
`play with a user-customized short menu of functions that can be reached directly
`
`from the main menu. E.g., Ex. 1005 Abstract, 2:3-5, 2:63-3:3, 7:25-29, Figs. 1, 3.
`
`Aberg teaches that the short menu beneficially allows a user to have easy access to
`
`the most desired functions selected by the user from different top level menus (i.e.,
`
`from Phonebook, Mail, Calculator, Access, Networks, etc.). E.g., id. 2:55-62, 4:32-
`
`48. Aberg also teaches that the functionality available in the short menu varies with
`
`the environment of the device (i.e., the contents of the short menu might change
`
`based on whether the mobile device is connected to an accessory or depending on
`
`the type of SIM card inserted). E.g., id. 4:5-11, 5:51-61, 7:16-20; see also Ex. 1003
`
`¶41.
`
`3. Overview of U.S. Pat. No. 6,333,973 (“Smith”)
`Smith (Ex. 1006) was filed Apr. 23, 1997 and issued Dec. 25, 2001, making
`
`it prior art under at least § 102(e). Smith discloses an “integrated message center”
`
`for telecommunications equipment such as a mobile telephone. E.g., id. 3:50-54,
`
`Fig. 7A. The “integrated message center” provides a summary window for display-
`
`ing messages of different types (e.g., fax mail, e-mail, voice mail, SMS messages,
`
`etc.) when the “message-type specific applications” are not yet launched. Id. 1:60,
`
`
`
`15
`
`

`
`Inter Partes Review
`
`United States Patent No. 8,713,476
`
`
`2:26-31, 8:27-35, Figs. 7A, 7B. Smith teaches that the summary window “can be
`
`reached directly from the main menu.” Id. 8:12-35.
`
`
`
`Id. Fig. 7A.
`
`Smith further teaches that a limited list of data (including, e.g., the sender’s
`
`name and an icon representing, e.g., voice mail, SMS messages, e-mail, faxes) is
`
`displayed in the summary window and that