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
`____________
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,713,476 UNDER 35 USC §§ 311-319 AND 37 CFR
`§42.100 ET SEQ.
`
`
`
`
`
`
`
`____________
`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
`____________
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,713,476 UNDER 35 USC §§ 311-319 AND 37 CFR
`§42.100 ET SEQ.
`
`
`
`
`
`
`
`
`Preliminary Response—IPR2015-01899 re: U.S. Pat. No. 8,713,476
`
`TABLE OF CONTENTS
`
`
`
`
`
`
`
`B.
`
`C.
`D.
`
`I. Introduction ............................................................................................. 1
`II. Background ............................................................................................ 3
`
`A. Overview of U.S. Patent No. 8,713,476 ................................... 3
`B.
`Independent Claims ................................................................. 5
`III. Argument .............................................................................................. 7
`
`A.
`the Knowledge of a POSITA. .................................................. 7
`1.
`Overview of Schnarel ....................................................... 8
`2.
`can be Reached Directly from the Menu. ....................... 10
`3.
`Schnarel. ........................................................................ 11
`4.
`Knowledge of a POSITA. ............................................... 14
`Aberg. ...................................................................................... 14
`1.
`Changes the Principle of Operation of Schnarel. .......... 14
`2.
`with the Knowledge of a POSITA. ................................. 16
`POSITA and Smith. ............................................................... 17
`Patentability of Claim 4 over Schnarel, Aberg and Smith. 17
`
`The Modification to Schnarel Based on the Knowledge of
`a POSITA Changes the Principle of Operation of
`
`Patentability of the Challenged Claims over Schnarel and
`
`Schnarel Fails to Teach an Application Summary that
`
`Claim 9 is Separately Patentable Over Schnarel,
`Whether Considered Alone or In Combination with the
`
`Patentability of the Challenged Claims over Schnarel and
`
`The Modification to Schnarel Based on the Aberg
`
`Claim 9 is Separately Patentable Over Schnarel and
`Aberg, Whether Considered Alone or In Combination
`
`Patentability of Claim 4 over Schnarel, the Knowledge of a
`
`ii
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`
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`Preliminary Response—IPR2015-01899 re: U.S. Pat. No. 8,713,476
`
`E.
`Patentability of the Challenged Claims over Nason. ........... 18
`1.
`Overview of Nason ......................................................... 18
`2.
`Selectable to Launch the Respective Application. ......... 20
`F.
`Knowledge of a POSITA. ....................................................... 29
`G.
`Patentability of Claim 9 over Wagner and Nason. .............. 30
`H.
`Knowledge of a POSITA. ....................................................... 31
` Conclusion .......................................................................................... 32
`
`Nason Fails to Teach Each of the Data in the List Being
`
`Patentability of the Challenged Claims over Nason and the
`
`Patentability of Claim 9 over Wagner, Nason and the
`
`
`
`iii
`
`
`
`IV.
`
`
`
`
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`
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`Preliminary Response—IPR2015-01899 re: U.S. Pat. No. 8,713,476
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`TABLE OF AUTHORITIES
`
`
`
`CASES
`In re Ratti,
` 270 F.2d 810, 813 (C.C.P.A. 1959) ..................................................... 12, 15
`
`STATUTES
`35 U.S.C. § 314(a) .......................................................................................... 1
`
`
`
`
`REGULATIONS
`37 C.F.R. § 42.108(c)...................................................................................... 1
`
`
`
`
`
`iv
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`
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`Preliminary Response—IPR2015-01899 re: U.S. Pat. No. 8,713,476
`
`INTRODUCTION
`Petitioner seeks inter partes review of claims 1, 4, 7-9, 20, 28 and 29
`
`
`
`I.
`
`of U.S. Patent 8,713,476 (“the ’476 patent”). The Patent Trial and Appeal
`
`Board (“PTAB” or “Board”) should not institute inter partes review of the
`
`’476 Patent because Petitioner has not met its burden to show a reasonable
`
`likelihood that it would prevail with respect to at least one of the challenged
`
`claims. 35 U.S.C. § 314(a) (An inter partes review may be instituted only if
`
`“the information presented in the petition . . . and any response . . . shows
`
`that there is a reasonable likelihood that the petitioner would prevail with
`
`respect to at least 1 of the claims challenged in the petition.”); 37 C.F.R. §
`
`42.108(c).
`
`The following grounds are asserted by Petitioner:
`
`
`
`References
`Schnarel1 and POSITA
`Schnarel and Aberg2
`Schnarel, POSITA and Smith3
`Schnarel, Aberg and Smith
`Nason4
`
`Basis
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`
`Claims Challenged
`1, 4, 7-9, 20, 28, 29
`1, 4, 7-9, 20, 28, 29
`4
`4
`1, 4, 7-9, 20, 28, 29
`
`
`
`1 Schnarel et al., U.S. Patent No. 7,225,409 (Ex. 1004).
`
`2 Aberg, U.S. Patent No. 6,993,362 (Ex. 1005).
`
`3 Smith et al., U.S. Patent No. 6,333,973 (Ex. 1006).
`
`
`
`1
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`Preliminary Response—IPR2015-01899 re: U.S. Pat. No. 8,713,476
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`
`
`Nason and POSITA
`Wagner5 and Nason
`Wagner, Nason and POSITA
`
`
`§ 103
`§ 103
`§ 103
`
`1, 4, 7-9, 20, 28, 29
`9
`9
`
`As explained in detail below, Schnarel fails to teach or suggest “an
`
`application summary that can be reached directly from the menu”. Further,
`
`such features would not be rendered obvious when Schnarel is considered in
`
`view of the alleged knowledge of a POSITA, Aberg, and/or Smith. As
`
`further explained in detail below, Nason fails to teach or suggest “each of
`
`the data in the list being selectable to launch the respective application”.
`
`Further, such features would not be rendered obvious when Nason is
`
`considered in view of the alleged knowledge of a POSITA and/or Wagner.
`
`Accordingly, Petitioner has not met (and cannot meet) its burden, and
`
`so no inter partes review should be instituted on any of the proposed
`
`grounds.
`
`4 Nason et al., U.S. Patent No. 6,593,945 (Ex. 1007).
`
`
`5 Wagner et al., U.S. Patent No. 6,256,516 (Ex. 1010).
`
`
`2
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`Preliminary Response—IPR2015-01899 re: U.S. Pat. No. 8,713,476
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`A. Overview of U.S. Patent No. 8,713,476
`
`The ’476 Patent describes and claims a computing device with an
`
`improved user interface for applications; more specifically, a user interface
`
`that includes a “snap-shot” view of common functions and commonly
`
`accessed stored data associated with an application on the computing device.
`
`Ex. 1001 at 2:28-41. According to one aspect of the invention, the snap-shot
`
`view is provided by an application summary that is displayed on a display
`
`screen of the computing device. Id. An example application summary
`
`window is shown in Figure 3 of the ’476 Patent, reproduced below for
`
`convenience.
`
`
`
`
`
`Ex. 1001, Figure 3, with reference
`numeral 4 pointing to an application
`summary window.
`
`The application summary
`
`includes a limited list of (i)
`
`common functions offered
`
`within an application, and/or
`
`(ii) data stored in that
`
`application. Id. The snap-shot
`
`view afforded by the summary
`
`window thus displays common
`
`functions and commonly accessed stored data that can be reached directly
`
`
`
`3
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`
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`
`
`II. BACKGROUND
`
`
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`Preliminary Response—IPR2015-01899 re: U.S. Pat. No. 8,713,476
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`from a menu listing some or all applications available on the computing
`
`device. Ex. 1001 at 2:66-3:3. To emphasize, in order to be reachable from
`
`the menu, the application summary is accessed by (i.e., displayed in
`
`response to) invoking a display element of the menu. See, e.g., Ex. 1001 at
`
`3:34-38; 5:16-20.
`
`The snap-shot view afforded by the summary window yields many
`
`advantages in ease and speed of navigation, particularly on small screen
`
`devices, such as a mobile telephone. Ex. 1001 at 3:4-5. For example, where
`
`the summary window for a given application shows data or a function of
`
`interest, the user can directly select that data or function; this causes the
`
`application to open and the user to be presented with a screen in which the
`
`data or function of interest is prominent. Ex. 1001 at 2:42-46. This saves the
`
`user from navigating to the required application, opening it up, and then
`
`navigating within that application to enable the data of interest to be seen or
`
`a function of interest to be activated. Ex. 1001 at 2:46-50.
`
`To emphasize, each of the data in the list of data in the application
`
`summary is individually selectable. See, e.g., Ex. 1001 at 2:42-46 which
`
`states, “Preferably, where the summary window for a given application
`
`shows data or a function of interest, the user can directly select that data or
`
`
`
`
`
`function; this causes the application to open and the user to be presented
`
`4
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`Preliminary Response—IPR2015-01899 re: U.S. Pat. No. 8,713,476
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`with a screen in which the data or function of interest is prominent”
`
`
`
`(emphasis added). See also Id. at 3:10-13 which states, “Once the summary
`
`window is launched, core data/functionality is displayed and can be accessed
`
`in more detail and can typically be reached simply by selecting that
`
`data/functionality” (emphasis added). See also Id. at 3:62-64 which states,
`
`“The required application may be automatically opened when the item in the
`
`App Snapshot is selected” (emphasis added). For example, in the context of
`
`Figure 3, a highlight may be used to select the data “3 unread emails”, and
`
`selection of “3 unread emails” is expected to launch the messages
`
`application and enable the 3 unread emails to be seen within the messages
`
`application.
`
`
`
`Independent Claims
`
`B.
`The challenged independent claims of the ’476 patent are reproduced
`
`below:
`
`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
`
`
`
`5
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`Preliminary Response—IPR2015-01899 re: U.S. Pat. No. 8,713,476
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`
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`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.
`
`
`
`20. A method comprising: displaying, on a computing device having a
`
`display screen, a menu listing one or more applications; displaying 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, wherein the application summary is displayed while
`
`the one or more applications are in an un-launched state; and in response to a
`
`user selection of particular data, launching the respective application
`
`associated with the selected data to enable the selected data to be seen within
`
`the respective application.
`
`
`
`
`
`
`
`6
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`
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`Preliminary Response—IPR2015-01899 re: U.S. Pat. No. 8,713,476
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`A.
`
`Patentability of the Challenged Claims over Schnarel and
`the Knowledge of a POSITA.
`
`Independent claims 1 and 20 are alleged to be obvious under 35
`
`U.S.C. § 103 in view of Schnarel and the knowledge of a person of ordinary
`
`skill in the art (“POSITA”). Pet. at 13 et seq. However, each of these claims
`
`requires both a menu listing at least a first application, and an application
`
`summary that can be reached directly from the menu. Schnarel, on the other
`
`hand, describes a user interface for a telephone device that includes an
`
`“application button bar” in an application selection area (which Petitioner
`
`equates with the “menu” recited in the claims, Pet. at 21), and a message
`
`summary pane (which Petitioner equates with the claimed “application
`
`summary” Pet. at 22). The message summary pane cannot be reached from
`
`the application button bar (or the application selection area), hence, the
`
`challenged claims are not taught or suggested by Schnarel.
`
`
`
`
`7
`
`
`
`
`
`III. ARGUMENT
`
`
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`Preliminary Response—IPR2015-01899 re: U.S. Pat. No. 8,713,476
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`1.
`
`Overview of Schnarel
`
`
`
`
`
`Schnarel discloses a graphical user interface for a web telephone and
`
`other telephony devices. Abstract of Ex. 1004. Part of the graphical user
`
`interface is a “start” screen. Id. at 4:16-33. An example start screen is shown
`
`in Figure 1 of Ex. 1004, reproduced below for convenience.
`
`The start screen is composed of
`
`the following display elements:
`
`1) a pane(s) area (102); 2) an
`
`application selection area (104)
`
`called the application button
`
`bar; and a call slip area (106).
`
`Id. at 4:34-37.
`
`
`
`According to Schnarel,
`
`Ex. 1004, Figure 1, with reference
`numeral 100 pointing to a start screen
`
`the application button bar's primary functions are to inform the user of all
`
`applications that are available to them and to provide a vehicle for launching
`
`those applications. Id. at 9:4-6. The default panes within pane area 102 are
`
`labeled in Figure 2 of Ex. 1004, reproduced below for convenience.
`
`
`
`8
`
`
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`Preliminary Response—IPR2015-01899 re: U.S. Pat. No. 8,713,476
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`These include a branding
`
`pane (202), a date and time
`
`pane (204), a message pane or
`
`message summary pane (206),
`
`and a task pane (208). Id. at
`
`5:20-22. The messages pane is
`
`a portion of the start screen
`
`dedicated to displaying the
`
`
`
`Ex. 1004, Figure 2, showing default
`panes within pane area 102.
`
`
`
`names of the user accounts established in the device, as well as the presence
`
`of user-specific messages (such as answering machine messages and e-mail
`
`messages) and general-user messages (such as faxes, caller logs, and voice
`
`mail messages.) Due to the message pane, users can quickly discover
`
`whether or not they have new messages and quickly access these new
`
`messages. Id. at 6:28-34. The application button bar and the message
`
`summary pane are displayed concurrently, but independently in the start
`
`screen. That is, the message summary pane is reachable by the user
`
`independently of the application button bar in the application selection area,
`
`but is not reachable from that application selection area.
`
`The message summary pane of Schnarel is a visual representation of
`
`the message center application that provides integrated access to all message
`
`
`
`9
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`Preliminary Response—IPR2015-01899 re: U.S. Pat. No. 8,713,476
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`types. Id. at 13:44-47. In other words, the message center is the “parent
`
`
`
`application” of the message summary pane. Id. Whenever the message
`
`center detects an event of interest, it posts the information for display in the
`
`message summary pane. Id. at 13:61 – 14:10.
`
`
`
`2.
`
`Schnarel Fails to Teach an Application Summary that
`can be Reached Directly from the Menu.
`
`Independent claims 1 and 20 require both a menu listing at least a first
`
`application, and an application summary that can be reached directly from
`
`the menu. Schnarel, on the other hand, describes a user interface for a
`
`telephone device that includes an “application button bar” in an application
`
`selection area (which Petitioner equates with the “menu” recited in the
`
`claims, Pet. at 21), and a message summary pane (which Petitioner equates
`
`with the claimed “application summary” Pet. at 22).
`
`As shown in FIGs. 1 and 2 of Schnarel, the application button bar and
`
`the message summary pane are displayed concurrently, but independently.
`
`That is, the message summary pane is reachable by the user independently of
`
`the application button bar in the application selection area, but is not
`
`reachable from that application selection area. Consequently, one cannot
`
`read the application button bar as a menu and the message summary pane as
`
`
`
`an application summary as recited in the claims.
`
`10
`
`
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`Preliminary Response—IPR2015-01899 re: U.S. Pat. No. 8,713,476
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`
`
`Even if one interprets the “start screen” of Schnarel as the recited
`
`menu, the requirements of the claims are not met. Under such a reading, the
`
`start screen (menu) would include both the application button bar in the
`
`application selection area and the message summary pane. However, the
`
`message summary pane would not be reachable from the menu because it is
`
`part of the menu (i.e., it is reachable in the menu). The specification of the
`
`’476 patent explains that in order to be reachable from the menu, the
`
`application summary window is accessed by (i.e., displayed in response to)
`
`invoking a display element of the menu. See, e.g., Ex. 1001 at 3:34-38; 5:16-
`
`20. In fact, the Petition does not even cite Schnarel for teaching such feature
`
`of claim 1. See, e.g., Pet. at 22. Therefore, the Petition tacitly admits this
`
`deficiency of Schnarel.
`
`
`
`3.
`
`The Modification to Schnarel Based on the Knowledge of
`a POSITA Changes the Principle of Operation of
`Schnarel.
`
`While the Petition at pp. 28-29 alleges that “it would have been
`
`obvious and a straightforward and beneficial design choice to configure
`
`Schnarel’s summary window (e.g., ‘message summary pane’) so that it could
`
`be reached directly from Schnarel’s menu (e.g., ‘Start Screen’)”, this is not
`
`so as the modification proposed by the Petition changes the principle of
`
`
`
`11
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`Preliminary Response—IPR2015-01899 re: U.S. Pat. No. 8,713,476
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`operation of the primary reference. “If the proposed modification or
`
`
`
`combination of the prior art would change the principle of operation of the
`
`prior art invention being modified, then the teachings of the references are
`
`not sufficient to render the claims prima facie obvious.” In re Ratti, 270 F.2d
`
`810, 813 (C.C.P.A. 1959).
`
`Schnarel states on several occasions the need for users to quickly
`
`discover whether or not they have new messages and quickly access these
`
`new messages. See, e.g., Ex. 1004 at 6:32-34: “[Through the messages
`
`pane], [u]sers can quickly discover whether or not they have new messages
`
`and quickly access these new messages”; and Ex. 1004 at 6:53-56: “The
`
`User-specific messages display area (304) displays the name of each user,
`
`informs each user of the presence of new user-specific messages, and allows
`
`the user to quickly access their messages.” Also at 7:54-56, Schnarel states
`
`that “[t]he software platform is designed to update the message list within a
`
`predetermined period of time (e.g., at most five seconds) within receipt of
`
`the message.” Therefore, it is clear that the principle of operation of
`
`Schnarel is to notify users of new messages as soon as possible (e.g., within
`
`at most five seconds of receipt of the message).
`
`In contrast to the teachings of Schnarel, the modification proposed by
`
`the Petition (i.e., “us[ing] a summary window that is reached directly from
`
`
`
`12
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`Preliminary Response—IPR2015-01899 re: U.S. Pat. No. 8,713,476
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`
`
`the main menu to avoid cluttering the display with too much information”)
`
`increases the time it takes for a user to be alerted of new messages and to
`
`access the new messages. At page 29, the Petition proposes to remove the
`
`message pane from the start screen “to avoid cluttering the display with too
`
`much information”, which would, if anything, require the user to perform an
`
`extra step (i.e., first access main menu before accessing summary window)
`
`in order to be alerted of new messages and to access the messages. Contrary
`
`to the principle of operation of Schnarel to notify users of new messages as
`
`soon as possible, the modification proposed by the Petition would hinder the
`
`user’s ability to quickly discover and access these new messages. As the
`
`modification proposed by the Petition changes the principle of operation of
`
`the primary reference, claim 1 and its dependent claims are not obvious in
`
`view of Schnarel and the knowledge of a POSITA.
`
`Claim 20 recites features similar to those recited in claim 1.
`
`Therefore, claim 20 and its dependent claims should be patentable over
`
`Schnarel and the knowledge of a POSITA for reasons similar to those
`
`provided above with respect to claim 1. Thus, Petitioner has not met its
`
`burden to show a reasonable likelihood that it would prevail with respect to
`
`this challenge and so no inter partes review should be instituted on this
`
`ground.
`
`
`
`13
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`Preliminary Response—IPR2015-01899 re: U.S. Pat. No. 8,713,476
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`
`
`
`
`4.
`
`Claim 9 is Separately Patentable Over Schnarel,
`Whether Considered Alone or In Combination with the
`Knowledge of a POSITA.
`
`Claim 9 depends from claim 1 and additionally recites the computing
`
`device being a mobile phone. Petitioner contends that Schnarel’s disclosure
`
`of “smart screen phones” somehow applies to the recited mobile phone, Pet.
`
`at 36, but fails to articulate any basis for reaching this conclusion. Indeed,
`
`Schnarel itself discusses “web telephones,” Ex. 1004 at Abstract, 3:59-64,
`
`and not mobile phones. Accordingly, Petitioner has not met its burden to
`
`show a reasonable likelihood that it would prevail with respect to this
`
`challenge and so no inter partes review should be instituted on this ground.
`
`
`
`B.
`
`Patentability of the Challenged Claims over Schnarel and
`Aberg.
`
`1.
`
`The Modification to Schnarel Based on the Aberg
`Changes the Principle of Operation of Schnarel.
`
`As explained above, Schnarel fails to teach or suggest “the computing
`
`
`
`
`
`device … additionally being configured to display on the screen an
`
`application summary that can be reached directly from the menu”, as recited
`
`in claim 1. The modification to Schnarel in view of Aberg, as proposed by
`
`
`
`14
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`Preliminary Response—IPR2015-01899 re: U.S. Pat. No. 8,713,476
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`
`
`the Petition, changes the principle of operation of the primary reference
`
`Schnarel. “If the proposed modification or combination of the prior art
`
`would change the principle of operation of the prior art invention being
`
`modified, then the teachings of the references are not sufficient to render the
`
`claims prima facie obvious.” In re Ratti, 270 F.2d at 813.
`
`As explained above, Schnarel states on several occasions the need to
`
`allow users to quickly discover whether or not they have new messages and
`
`quickly access these new messages. In contrast, the modification proposed
`
`on page 30 of the Petition (i.e., “us[ing] a summary window can be reached
`
`directly from the main menu” in view of the teachings of Aberg) would, if
`
`anything, increase the time it takes for a user to be alerted of new messages
`
`and to access the new messages. Instead of being quickly alerted of new
`
`messages and to access the new messages from the start screen (as disclosed
`
`by Ex. 1004 at 6:32-34), the user would be required to perform an extra step
`
`(i.e., first access main menu before accessing summary window) in order to
`
`be alerted of new messages. As the modification proposed by the Petition
`
`changes the principle of operation of the primary reference, claim 1 and its
`
`dependent claims are not obvious in view of Schnarel in view of Aberg.
`
`Claim 20 recites features similar to those recited in claim 1.
`
`Therefore, claim 20 and its dependent claims should be patentable over
`
`
`
`15
`
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`Preliminary Response—IPR2015-01899 re: U.S. Pat. No. 8,713,476
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`Schnarel and Aberg for reasons similar to those provided above with respect
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`to claim 1. Thus, Petitioner has not met its burden to show a reasonable
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`likelihood that it would prevail with respect to this challenge and so no inter
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`partes review should be instituted on this ground.
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`2.
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`Claim 9 is Separately Patentable Over Schnarel and
`Aberg, Whether Considered Alone or In Combination
`with the Knowledge of a POSITA.
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`Claim 9 depends from claim 1 and additionally recites the computing
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`device being a mobile phone. Petitioner contends that Schnarel’s disclosure
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`of “smart screen phones” somehow applies to the recited mobile phone, Pet.
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`at 36, but fails to articulate any basis for reaching this conclusion. Indeed,
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`Schnarel itself discusses “web telephones,” Ex. 1004 at Abstract, 3:59-64,
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`and not mobile phones. Petitioner does not rely on any teachings of Aberg to
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`cure this deficiency. Accordingly, Petitioner has not met its burden to show
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`a reasonable likelihood that it would prevail with respect to this challenge
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`and so no inter partes review should be instituted on this ground.
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`Preliminary Response—IPR2015-01899 re: U.S. Pat. No. 8,713,476
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`C.
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`Patentability of Claim 4 over Schnarel, the Knowledge of a
`POSITA and Smith.
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`Smith is cited for teaching certain features of dependent claim 4 (i.e.,
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`that “a user can define what data types are of interest to that user for the
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`summary for an application”). Even if this is so, it does not appear that
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`Smith would cure the above-mentioned deficiencies of Schnarel in view of
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`the knowledge of a POSITA. Namely, the combination would still fail to
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`teach or suggest “an application summary that can be reached directly from
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`the menu”. Therefore, claim 4 should remain patentable over Schnarel in
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`view of the knowledge of a POSITA, even in view of Smith. Thus,
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`Petitioner has not met its burden to show a reasonable likelihood that it
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`would prevail with respect to this challenge and so no inter partes review
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`should be instituted on this ground.
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`D.
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`Patentability of Claim 4 over Schnarel, Aberg and Smith.
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`Smith is cited for teaching certain features of dependent claim 4 (i.e.,
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`that “a user can define what data types are of interest to that user for the
`
`summary for an application”). Even if this is so, it does not appear that
`
`Smith would cure the above-mentioned deficiencies of Schnarel in view of
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`Preliminary Response—IPR2015-01899 re: U.S. Pat. No. 8,713,476
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`Aberg. Namely, the combination would still fail to teach or suggest “an
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`application summary that can be reached directly from the menu”.
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`Therefore, claim 4 should remain patentable over Schnarel in view of Aberg,
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`even in view of Smith. Thus, Petitioner has not met its burden to show a
`
`reasonable likelihood that it would prevail with respect to this challenge and
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`so no inter partes review should be instituted on this ground.
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`E.
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`Patentability of the Challenged Claims over Nason.
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`1.
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`Overview of Nason
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`Nason discloses a parallel graphical user interface for a digital
`
`computer. Ex. 1007 at 1:10-12. A line drawing of a parallel graphical user
`
`interface (GUI) is shown in Figure 2 of Ex. 1007, reproduced below for
`
`convenience.
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`
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`Ex. 1007, Figure 2, with reference numeral 28 indicating a parallel GUI.
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`Parallel GUI 28 includes bar 38 surrounded by area 28A. Bar 38 may
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`be composed of separate elements such as title area 40, one or more help
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`areas such as help area 42 and or help area 56, one or more rotators such as
`
`rotator 44 and or rotator 48, and one or more buttons such as button 46,
`
`button 50, ticker 52 and button 54. A button may be depressible such as
`
`button 46 or non-depressible such as button 40. Id. at 2:35-45. Following a
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`click on or `mouse down` condition of a depressible button such as button 46
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`a `mouse up` condition is initiated thus completing a button selection cycle.
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`A `mouse up` condition may initiate an action such a hyperlink or launch an
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`application associated with the acting button such as button 46. Id. at 3:8-13.
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`Tickers such as ticker 52 may be dynamic reading areas within a cartridge
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`such as cartridge 86 as shown in FIG. 3. Scrolling updateable text such as
`
`text 53 can be displayed and the text reading area can also be dynamically
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`linked to launch an application or URL. Id. at 3:56-60.
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`
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`It appears that two parallel GUIs are depicted in the screenshot of
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`Figure 14 of Ex. 1007 (copied below).
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`Preliminary Response—IPR2015-01899 re: U.S. Pat. No. 8,713,476
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`Importantly, Nason is void of any description of Figure 14 except for the
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`brief description that “FIGS. 5-14 are example screen images from an
`
`example parallel GUI”. Ex. 1007 at 1:61-62. Therefore, it is not known
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`
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`whether such ticker text is capable of receiving user input and/or whether
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`such ticker text responds by launching an application.
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`
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`2.
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`Nason Fails to Teach Each of the Data in the List Being
`Selectable to Launch the Respective Application.
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` From the ’476 patent, each of the data in the list being selectable
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`means that each of the data in the list is individually selectable. See, e.g., Ex.
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`1001 at 2:42-46, which states, “Preferably, where the summary window for a
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`given application shows data or a function of interest, the user can directly
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`select that data or function; this causes the application to open and the user
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`to be presented with a screen in which the data or function of interest is
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`prominent” (emphasis added). See also Id. at 3:10-13, which states, “Once
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`the summary window is launched, core data/functionality is displayed and
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`can be accessed in more detail and can typically be reached simply by
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`selecting that data/functionality” (emphasis added). See also Id. at 3:62-64,
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`which states, “The required application may be automatically opened when
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`the item in the App Snapshot is selected” (emphasis added). For example, in
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`the context of Figure 3, a highlight may be used to select the data “3 unread
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`emails”, and selection of “3 unread emails” is expected to launch the
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`messages application and enable the 3 unread emails to be seen within the
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`messages application.
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`Such functionality is not present in Nason. Nason describes that
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`“Tickers such as ticker 52 may be dynamic reading areas within a cartridge
`
`such as cartridge 86 as shown in FIG. 3. Scrolling updateable text such as
`
`text 53 can be displayed and the text reading area can also be dynamically
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`linked to launchy [sic] an application or URL.” Ex. 1007 at 3:56-60. Further,
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`Nason describes that “A ticker such as ticker 52 may activate a hyperlink
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`Preliminary Response—IPR2015-01899 re: U.S. Pat. No. 8,713,476
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`through a network such as network 15 when ticker 52 is clicked on, or
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`subjected to a complete button cycle”. Ex. 1007 at 4:2-5. To summarize,
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`Nason’s ticker is a “dynamic reading area”, and it is the entire “text reading
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`area” which is dynamically linked to launch an application or URL. Nason,
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`however, is silent that portions of the text (i.e., portions of text 53) are
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`individually selectable to launch an application. In contrast, claim 1 requires
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`that “each of the data in the list being selectable (i.e., individually selectable)
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`to launch the respective application and enable the selected data to be seen
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`within the respective application”.
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`With respect to Figure 14 of Nason with ticker text “…ontact you; 5
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`New E-Mails; Dow: MSFT 105.5, INX…”, the Petition alleges that
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`“clicking the ticker displaying ticker text ‘5 new E-Mails’ would launch the
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`application to access and see the 5 new-emails in the application”. Pet. at 49.
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`The Patent Owner disagrees. First, it is noted that Nason is void of any
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`description of Figure 14 except for the brief description that “FIGS. 5-14 are
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`example screen images from an example parallel GUI”. Ex. 1007 at 1:61-62.
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`Therefore, it is not known whether such ticker text is capable of receiving
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`user input and/or whether such ticker text responds by launching an
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`application. Further, even if one were to read Figure 14 in the context of the
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`Preliminary Response—IPR2015-01899 re: U.S. Pat. No. 8,713,476
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`description of Figures 2 and 36, Nason would at best teach that the entire
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`ticker with text “…ontact you; 5 New E-Mails; Dow: MSFT 105.5, INX…”
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`is selectable to launch an application. Nason, however, would fail to teach
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`that each of the data items in the ticker, e.g., 5 New E-Mails, is individually
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`selectable to launch the respective application, as required by claim 1.
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`Other portions of Nason cited at page 48 of the Petition for teaching
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`the above-discussed feature of claim 1 are similarly deficient. At 2:40-53 of
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`Ex. 1007, Nason states:
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`Bar 38 may be co
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