UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`LG ELECTRONICS, INC.,
`Petitioner,
`v.
`CORE WIRELESS LICENSING S.A.R.L,
`Patent Owner.
`____________
`Case IPR2015-01985
`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
`____________
`LG ELECTRONICS, INC.,
`Petitioner,
`v.
`CORE WIRELESS LICENSING S.A.R.L,
`Patent Owner.
`____________
`Case IPR2015-01985
`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—IPR2015-01985 re: U.S. Pat. No. 8,713,476
`
`TABLE OF CONTENTS
`
`
`
`I. Introduction ............................................................................................. 1
`II. Background ............................................................................................ 3
`
`A. Overview of U.S. Patent No. 8,713,476 ................................... 3
`B.
`Independent Claims ................................................................. 4
`C. Claim Construction .................................................................. 6
`III. Argument .............................................................................................. 9
`
`A.
`Patentability over Blanchard .................................................. 9
`1.
`Overview of Blanchard .................................................. 10
`2.
`can be Reached Directly from the Menu ........................ 12
`3.
`Un-launched State .......................................................... 13
`Patentability over Schnarel ................................................... 16
`1.
`Overview of Schnarel ..................................................... 17
`2.
`can be Reached Directly from the Menu. ....................... 19
`3.
`Schnarel to Meet the Requirements of the Claims. ........ 21
`4.
`Claim 9 is Separately Patentable Over Schnarel. .......... 23
`IV. Conclusion ........................................................................................... 24
`
`Blanchard Fails to Teach an Application Summary that
`
`Blanchard Fails to Teach an Application Summary
`Displayed While the One or More Applications are in an
`
`Schnarel Fails to Teach an Application Summary that
`
`One of Ordinary Skill in the Art Would Not Modify
`
`
`
`ii
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`B.
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`Preliminary Response—IPR2015-01985 re: U.S. Pat. No. 8,713,476
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`TABLE OF AUTHORITIES
`
`
`
`CASES
`CFMT, Inc. v. Yieldup Int’l. Corp.,
` 349 F.3d 1333, 1342 (Fed. Cir. 2003) ....................................................... 21
`
`In re Ratti,
` 270 F.2d 810, 813 (C.C.P.A. 1959) ........................................................... 21
`
`KSR Int’l Co. v. Teleflex Inc.,
` 550 U.S. 398, 418 (2007) .......................................................................... 21
`
`Microsoft Corp. v. Proxyconn, Inc.,
` Appeal No. 2014-1542, slip op. at 6-7 (Fed. Cir. Jun 16, 2015) ................. 7
`
`Phillips v. AWH Corp.,
` 415 F.3d 1303 (Fed. Cir. 2005) ................................................................... 6
`
`
`
`STATUTES
`35 U.S.C. § 314(a) .......................................................................................... 1
`
`
`
`REGULATIONS
`37 C.F.R. § 42.108(c)...................................................................................... 1
`
`
`
`
`
`iii
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`Preliminary Response—IPR2015-01985 re: U.S. Pat. No. 8,713,476
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`INTRODUCTION
`Petitioner seeks inter partes review of claims 1, 4-6, 8, 9, 20, 26, 27
`
`
`
`I.
`
`and 29 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.1
`
`The following grounds are asserted by Petitioner:
`
`
`
`References Basis Claims Challenged
`Blanchard2
`§ 103
`1, 4-6, 8, 9, 20, 26, 27, 29
`Schnarel3
`§ 103
`1, 4-6, 8, 9, 20, 26, 27, 29
`
`
`
`
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`1 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
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`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).
`
` 3
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`
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`2 Blanchard et al., U.S. Patent No. 6,415,164 (Ex. 1002)
`
` Schnarel et al., U.S. Patent No. 7,225,409 (Ex. 1003)
`
`1
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`Preliminary Response—IPR2015-01985 re: U.S. Pat. No. 8,713,476
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`As explained in detail below, Blanchard fails to teach or suggest “an
`
`application summary that can be reached directly from the menu” and
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`“wherein the application summary is displayed while the one or more
`
`applications are in an un-launched state”, as recited in independent claims 1
`
`and 20. As further explained in detail below, Schnarel fails to teach or
`
`suggest “an application summary that can be reached directly from the
`
`menu”, as recited in independent claims 1 and 20. Accordingly, Petitioner
`
`has not met (and cannot meet) its burden, and so no inter partes review
`
`should be instituted on the proposed grounds.
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`2
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`Preliminary Response—IPR2015-01985 re: U.S. Pat. No. 8,713,476
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`
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`II. BACKGROUND
`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
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`view afforded by the summary
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`window thus displays common
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`functions and commonly accessed stored data that can be reached directly
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`3
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`Preliminary Response—IPR2015-01985 re: U.S. Pat. No. 8,713,476
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`
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`from a menu listing some or all applications available on the computing
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`device. Id. at 2:66-3:3. To emphasize, in order to be reachable from the
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`menu, the application summary is accessed by (i.e., displayed in response to)
`
`invoking a display element of the menu. See, e.g., Id. 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. Id. at 3:4-5. For example, where the
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`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
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`application to open and the user to be presented with a screen in which the
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`data or function of interest is prominent. Id. 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. Id. at 2:46-50.
`
`
`
`B.
`
`Independent Claims
`
`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
`
`
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`4
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`Preliminary Response—IPR2015-01985 re: U.S. Pat. No. 8,713,476
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`applications, and additionally being configured to display on the screen an
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`application summary that can be reached directly from the menu, wherein
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`the application summary displays a limited list of data offered within the one
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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
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`respective application, and wherein the application summary is displayed
`
`while the one or more applications are in an un-launched state.
`
`
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`20. A method comprising: displaying, on a computing device having a
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`display screen, a menu listing one or more applications; displaying an
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`application summary that can be reached directly from the menu, wherein
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`the application summary displays a limited list of data offered within the one
`
`or more applications, wherein the application summary is displayed while
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`the one or more applications are in an un-launched state; and in response to a
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`user selection of particular data, launching the respective application
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`associated with the selected data to enable the selected data to be seen within
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`the respective application.
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`5
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`Preliminary Response—IPR2015-01985 re: U.S. Pat. No. 8,713,476
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`C. Claim Construction
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`
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`The Board applies the “broadest reasonable construction, as
`
`understood by one of ordinary skill in the art and consistent with the
`
`disclosure” when interpreting the claims of a challenged patent. Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012); and see Phillips
`
`v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (“The Patent and Trademark
`
`Office (‘PTO’) determines the scope of claims in patent applications not
`
`solely on the basis of the claim language, but upon giving claims their
`
`broadest reasonable construction ‘in light of the specification as it would be
`
`interpreted by one of ordinary skill in the art.’) citing In re Am. Acad. of Sci.
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`Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
`
`“That is not to say, however, that the Board may construe claims
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`during IPR so broadly that its constructions are unreasonable under general
`
`claim construction principles. As [the Federal Circuit has] explained in other
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`contexts, ‘[t]he protocol of giving claims their broadest reasonable
`
`interpretation . . . does not include giving claims a legally incorrect
`
`interpretation.’ In re Skvorecz, 580 F.3d 1262, 1267 (Fed.Cir.2009); see also
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`In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed.Cir.2010) (‘The
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`broadest-construction rubric coupled with the term ‘comprising’ does not
`
`give the PTO an unfettered license to interpret claims to embrace anything
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`Preliminary Response—IPR2015-01985 re: U.S. Pat. No. 8,713,476
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`remotely related to the claimed invention.’). Rather, ‘claims should always
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`be read in light of the specification and teachings in the underlying patent.’
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`Suitco, 603 F.3d at 1260. The PTO should also consult the patent's
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`prosecution history in proceedings in which the patent has been brought
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`back to the agency for a second review. See Tempo Lighting Inc. v. Tivoli
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`LLC, 742 F.3d 973, 977 (Fed.Cir.2014). Even under the broadest reasonable
`
`interpretation, the Board's construction ‘cannot be divorced from the
`
`specification and the record evidence,’ In re NTP, Inc., 654 F.3d 1279, 1288
`
`(Fed.Cir.2011), and ‘must be consistent with the one that those skilled in the
`
`art would reach,’ In re Cortright, 165 F.3d 1353, 1358 (Fed.Cir.1999). A
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`construction that is ‘unreasonably broad’ and which does not ‘reasonably
`
`reflect the plain language and disclosure’ will not pass muster. Suitco, 603
`
`F.3d at 1260.” Microsoft Corp. v. Proxyconn, Inc., Appeal No. 2014-1542,
`
`slip op. at 6-7 (Fed. Cir. Jun 16, 2015). Thus, the pending claims must,
`
`during this proceeding, be given their broadest reasonable interpretation
`
`consistent with the specification.
`
`In the present case, Petitioner asserts that the phrase, “reached directly
`
`from the [] menu,” which appears in independent claims 1 and 20, should be
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`construed to include windows that are part of the same screen as the main
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`
`
`
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`menu, so long as they can be navigated to without needing to use an
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`7
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`Preliminary Response—IPR2015-01985 re: U.S. Pat. No. 8,713,476
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`
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`intervening menu or window. Pet. at 13-14. Patent Owner disagrees with this
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`contention, as it is not supported by the ’476 Patent. In the ’476 Patent, the
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`application summary (the “App Snapshot”) is said to drop down from the
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`highlight bar, after the highlight rests on the name of an application in the
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`App Launcher for a certain amount of time (say a 1.2 second timeout). The
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`application summary is not present before the highlight rests on the name of
`
`an application in the App Launcher. Ex. 1001 at 3:34-38 and Figs. 1-
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`2. Therefore, at a minimum, the phrase “reached directly from the menu”
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`requires the application summary to appear in response to at least some user
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`interaction with the menu.
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`8
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`Preliminary Response—IPR2015-01985 re: U.S. Pat. No. 8,713,476
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`
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`III. ARGUMENT
`A.
`Patentability over Blanchard
`
`Independent claims 1 and 20 are alleged to be obvious under 35 U.S.C.
`
`§ 103 in view of U.S. Patent No. 6,415,164 to Blanchard (“Blanchard”). Pet.
`
`at 14 et seq. Each of these claims requires both a menu listing one or more
`
`applications, and an application summary that can be reached directly from
`
`the menu. The application summary provides an alternative means by which
`
`a user may launch an application through selecting data listed in the
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`application summary. Blanchard, on the other hand, provides only one
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`means by which an application may be invoked.
`
`In Blanchard, menu options presented in response to highlighting a top-
`
`row icon of a menu are the only means by which the associated application
`
`may be invoked. Thus, the menu displayed as a result of highlighting a top-
`
`row icon cannot be considered an application summary because rather than
`
`presenting an alternative approach to launching the associated application,
`
`the menu options being presented (in response to highlighting a
`
`corresponding top-row icon) provide the only means of doing so.
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`Furthermore, Blanchard does not teach or suggest an application
`
`summary being displayed while the one or more applications are in an “un-
`
`launched” state. Because a user can take only one action with respect to the
`
`
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`9
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`Preliminary Response—IPR2015-01985 re: U.S. Pat. No. 8,713,476
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`applications listed on a menu, this action must be interpreted as the
`
`
`
`launching of the application. Consequently, the alleged application summary
`
`is displayed while the one or more applications are in a launched state.
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`Hence, all of the challenged claims are patentable over Blanchard.
`
`
`
`1.
`
`Overview of Blanchard
`
`Blanchard describes a menu arrangement said to be optimized for
`
`small displays. The purported optimization is arrived at by “dynamically
`
`allocating lines on the display for presentation of status or header-type
`
`information as well as menu item-type information.” Ex. 1002 at 1:60-62.
`
`This is illustrated in Fig. 3:
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`
`
`10
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`Preliminary Response—IPR2015-01985 re: U.S. Pat. No. 8,713,476
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`As shown in this diagram, the screen displays of the user interface
`
`
`
`
`
`(which is navigable using the left, right, up, down keys of a telephone
`
`keypad, for example) change dynamically as the user performs functions and
`
`makes selections. For each application icon shown in a top row of the
`
`display, a number of functions are available. As a user navigates between
`
`top-row application icons, the displayed menu changes to present the
`
`functions associated with the highlighted icon. Id. at 3:45-47; 3:54 – 4:22.
`
`For example, when the Phone Book icon is highlighted, the associated
`
`screen display for that function is presented. Id. at 3:64-67. The screen
`
`display is fashioned as a menu through which entries in the phone book may
`
`be viewed, retrieved or added. Id. Similarly, when a Mailbox icon is
`
`highlighted, a corresponding menu through which voice messages, text
`
`messages or a call log may be accessed is provided. Id. at 3:67 – 4:3. The
`
`user may advance through the different screens for the different functions by
`
`navigating along the top-row icons, and the icon symbol that is associated
`
`with a currently-selected function will be filled-in or darkened to inform the
`
`user which of the top-row options is active. Id. at 4:12-17.
`
`The user can select from any of the menu options associated with an
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`active top-row icon by navigating within that menu. In order to access one of
`
`the menu choices, the user selects it with a select key. The menu options or
`
`11
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`Preliminary Response—IPR2015-01985 re: U.S. Pat. No. 8,713,476
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`selectable features that are accessible for display and other information are
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`provided by a filled-in oval shaped outline. Only one oval shaped outline is
`
`filled in at a time, thereby indicating to the user the one option that will be
`
`selected when the select key is pressed. Id. at 4:56 – 5:9.
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`
`
`2.
`
`Blanchard Fails to Teach an Application Summary that
`can be Reached Directly from the Menu
`
`Petitioner contends that menus displayed when a top-row icon is
`
`highlighted correspond to the application summary recited in the challenged
`
`claims. Pet. at 15-16. Further, the top-row icons are alleged to be the “menu”
`
`recited in the claims. Id. at 15. Contrary to Petitioner’s allegations, such a
`
`reading demonstrates that Blanchard neither teaches nor suggests the subject
`
`matter recited in the present claims.
`
`In the ’476 Patent, an application summary operates as an alternative
`
`vehicle by which a user may launch an application. See, e.g., Ex. 1001 at
`
`2:66-3:10. That is, the application summary presents an alternative to
`
`launching the application directly from the menu. Id. at 3:16-33. Using the
`
`menu approach, a user is required to open the Application Launcher, scroll
`
`to the desired application, and then “take conventional navigation steps . . .
`
`.” Id. at 3:29-34. For example, the user may launch the application from this
`
`
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`12
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`Preliminary Response—IPR2015-01985 re: U.S. Pat. No. 8,713,476
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`point, but then has to spend time trying to locate the desired function or data
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`within the application itself. See, e.g., id. at 1:43-56. Using the application
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`summary feature, however, the user may simply highlight the desired
`
`application in the Application Launcher, causing the application summary to
`
`be displayed, and select the desired data directly from the application
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`summary. Id. at 3:34-55.
`
`Blanchard does not teach or suggest such an application summary
`
`because the menu options presented in response to a top-row icon being
`
`highlighted (as a result of a user scrolling to a desired top-row icon) are the
`
`only means by which the associated application may be invoked. Hence, the
`
`menu displayed as a result of such selection cannot be considered an
`
`application summary because rather than presenting an alternative approach
`
`to launching the associated application, the menu options being presented
`
`provide the only means of doing so. Accordingly, all of the challenged
`
`claims are patentable over Blanchard.
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`
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`3.
`
`Blanchard Fails to Teach an Application Summary
`Displayed While the One or More Applications are in an
`Un-launched State
`
`In addition to the above, the challenged claims require that the
`
`application summary be displayed while the one or more applications are in
`
`
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`13
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`Preliminary Response—IPR2015-01985 re: U.S. Pat. No. 8,713,476
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`
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`an un-launched state. Ex. 1001 at 6:1-3; 7:15-17. Blanchard teaches no such
`
`feature.
`
`First, Petitioner admits that “Blanchard may not literally discuss the
`
`concept of an application being in an ‘un-launched’ state”. Pet. at 17.
`
`Nevertheless, Petitioner incorrectly contends that such feature would be
`
`inherent because the programs referenced by the menu selection options
`
`discussed above are separate from the user interface and therefore are not in
`
`a launched state as one navigates the user interface. Id. at 17-18. Or,
`
`alternatively, because of other constraints, such as battery life and memory
`
`capacity, a person of ordinary skill in the art would have found it obvious to
`
`keep such applications in an un-launched state while the user was navigating
`
`the menu. Id. at 18-19. These allegations are not supported by Blanchard.
`
`
`
`In the ’476 Patent, a user can take two actions with respect to
`
`applications listed on the menu. The user can either “open[] it up,” Ex. 1001
`
`at 2:47-48, to launch the application, or the user can let a “highlight rest on
`
`the name of an application in the App Launcher for a certain amount of time
`
`(say a 1.2 second timeout),” id. at 3:35-37, to access the application
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`summary. The application summary is offered as a way to explore the
`
`functionality and data of an application without actually having to launch the
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`
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`14
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`Preliminary Response—IPR2015-01985 re: U.S. Pat. No. 8,713,476
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`application (i.e., explore functionality and data while the one or more
`
`
`
`applications are in an un-launched state). See, e.g., id. 3:64-4:5.
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`
`
`In contrast, the user of Blanchard’s display can take only one action
`
`with respect to the applications listed on the menu (i.e., phone book, mail
`
`box, lock and tool applications). From the applications listed on the menu,
`
`the only action the user can take is to use “Right and Left arrow keys 223
`
`and 225” to access a parent screen display of each of the applications. Ex.
`
`1002 at 4:12-14. Each parent screen display in turn allows the user to access
`
`“sub-menu” displays of the application. See, e.g., id. at 3:64 – 4:11.
`
`Since the user can take only one action with respect to the applications
`
`listed on the menu (i.e., access the parent screen display of an application
`
`through selection/highlighting of a corresponding top-row icon), this action
`
`must be interpreted as the launching of the application. Therefore, in
`
`Blanchard, the action of selecting an application represented by a top-row
`
`icon and accessing a corresponding parent screen display is the launching of
`
`an application and results in the display of the alleged application summary.
`
`Consequently, the alleged application summary is displayed while the one or
`
`more applications are in a launched state rather than an un-launched state, as
`
`recited in the challenged claims.
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`15
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`Preliminary Response—IPR2015-01985 re: U.S. Pat. No. 8,713,476
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`For at least the above reasons, the challenged claims are patentable
`
`over Blanchard. 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.
`
`
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`
`
`B.
`
`Patentability over Schnarel
`
`Independent claims 1 and 20 are alleged to be obvious under 35
`
`U.S.C. § 103 in view of U.S. Patent No. 7,225,409 to Schnarel (“Schnarel”).
`
`Pet. at 22 et seq. Each of these claims requires both a menu listing one or
`
`more applications, 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 claimed “menu”, Pet. at
`
`23), as well as a message pane and task pane (which Petitioner equates with
`
`the claimed “application summary”, Pet. at 23). The message pane and task
`
`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.
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`16
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`Preliminary Response—IPR2015-01985 re: U.S. Pat. No. 8,713,476
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`1.
`
`Overview of Schnarel
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`
`
`Schnarel discloses a graphical user interface for a web telephone and
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`other telephony devices. Ex. 1003, Abstract. Part of the graphical user
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`interface is a “start” screen. Id. at 4:16-33. An example start screen is shown
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`in Figure 1, reproduced below for convenience.
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`
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`Ex. 1003, Figure 1, with reference
`numeral 100 pointing to a start screen
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`The start screen is composed of the following display elements: 1) a pane(s)
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`area (102); 2) an application selection area (104) called the application
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`button bar; and a call slip area (106). Id. at 4:34-37.
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`According to Schnarel, the application button bar's primary functions
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`are to inform the user of all applications that are available to them and to
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`provide a vehicle for launching those applications. Id. at 9:4-6. The default
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`panes within pane area 102 are labeled in Figure 2 of Ex. 1003, reproduced
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`17
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`Preliminary Response—IPR2015-01985 re: U.S. Pat. No. 8,713,476
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`below for convenience. These include a branding pane (202), a date and time
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`pane (204), a message pane (206), and a task pane (208). Id. at 5:20-22.
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`
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`Ex. 1003, Figure 2, showing default
`panes within pane area 102.
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`
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`The message pane is a portion of the start screen dedicated to
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`displaying the names of the user accounts established in the device, as well
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`as the presence of user-specific messages (such as answering machine
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`messages and e-mail messages) and general-user messages (such as faxes,
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`caller logs, and voice mail messages.) From the message pane users can
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`quickly discover whether or not they have new messages and quickly access
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`these new messages. Id. at 6:28-34. The task pane is a portion of the start
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`screen with default buttons that launch the following program tasks in
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`18
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`Preliminary Response—IPR2015-01985 re: U.S. Pat. No. 8,713,476
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`response to user selection: 1) speed dialing, 2) writing an e-mail, 3) taking a
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`note, and 4) using an on-line directory service. Id. at 5:53-56.
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`The application button bar, the message pane and task pane are
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`displayed concurrently, but independently, in the start screen. That is, the
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`message pane is reachable by the user independently of the application
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`button bar in the application selection area, but is not reachable from that
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`application selection area. Likewise, the application button bar and the task
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`pane are displayed concurrently, but independently, in the start screen. That
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`is, the task pane is reachable by the user independently of the application
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`button bar in the application selection area, but is not reachable from that
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`application selection area.
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`2.
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`Schnarel Fails to Teach an Application Summary that
`can be Reached Directly from the Menu.
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`Independent claims 1 and 20 each require both a menu listing one or
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`more applications, and an application summary that can be reached directly
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`from the menu. Ex. 1001 at 5:61-63; 7:11-13. As shown in FIGs. 1 and 2 of
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`Schnarel above, however,
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`(I) the application button bar (104) (which Petitioner equates
`with the claimed “menu”, Pet. at 23), and
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`
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`19
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`Preliminary Response—IPR2015-01985 re: U.S. Pat. No. 8,713,476
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`(II) the message pane (206) and/or task pane (208) (which
`Petitioner equates with the claimed “application summary”, id. at 23)
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`of Schnarel’s GUI are displayed concurrently, but independently. That is, the
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`message pane and/or task pane are reachable by the user independently of
`
`the application button bar in the application selection area, but are not
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`reachable from that application selection area. Consequently, one cannot
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`read the application button bar as the menu and the message pane and/or task
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`pane as the application summary as recited in the claims.
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`
`
`Even if one interprets the “start screen” of Schnarel as the recited
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`menu, the requirements of the claims are not met. Under such a reading, the
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`start screen (menu) would include the application button bar in the
`
`application selection area, the message pane and the task pane. However, the
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`message pane and/or task pane would not be reachable from the menu
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`because it is part of the menu (i.e., it is reachable in the menu). The
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`specification of the ’476 Patent explains that in order to be reachable from
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`the menu, the application summary is accessed by (i.e., displayed in
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`response to) invoking a display element of the menu. See, e.g., Ex. 1001 at
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`3:34-38; 5:16-20. A claim is unpatentable under 35 U.S.C. § 103(a) only if
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`the differences between the subject matter sought to be patented and the
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`20
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`Preliminary Response—IPR2015-01985 re: U.S. Pat. No. 8,713,476
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`prior art are such that the subject matter as a whole would have been obvious
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`at the time the invention was made to a person having ordinary skill in the
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`art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550
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`U.S. 398, 418 (2007). At a minimum, this requires a suggestion of all
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`limitations in a claim. CFMT, Inc. v. Yieldup Int’l. Corp., 349 F.3d 1333,
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`1342 (Fed. Cir. 2003) citing In re Royka, 490 F.2d 981, 985 (CCPA 1974).
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`Here, this requirement is not met, hence, no inter partes review should be
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`instituted on the proposed ground.
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`
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`3.
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`One of Ordinary Skill in the Art Would Not Modify
`Schnarel to Meet the Requirements of the Claims.
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`In addition to Schnarel failing to teach an application summary that
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`can be reached directly from the menu, a POSITA would not undertake such
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`a modification of Schnarel as it would change the principle of operation
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`thereof. If a proposed modification or combination of the prior art would
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`change the principle of operation of the prior art invention being modified,
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`then the teachings of the references are not sufficient to render the
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`claims prima facie obvious. In re Ratti, 270 F.2d 810, 813 (C.C.P.A. 1959).
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`Schnarel states on several occasions the need for users to quickly
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`discover whether or not they have new messages and quickly access these
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`21
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`Preliminary Response—IPR2015-01985 re: U.S. Pat. No. 8,713,476
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`new messages. See, e.g., Ex. 1003 at 6:32-34 (“[Through the messages
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`
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`pane], [u]sers can quickly discover whether or not they have new messages
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`and quickly access these new messages”); and 6:53-56 (“The User-specific
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`messages display area (304) displays the name of each user, informs each
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`user of the presence of new user-specific messages, and allows the user to
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`quickly access their messages.”). Also at 7:54-56, Schnarel states that “[t]he
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`software platform is designed to update the message list within a
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`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
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`Schnarel is to notify users of new messages as soon as possible (e.g., within
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`at most five seconds of receipt of the message).
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`In contrast to the teachings of Schnarel, any modification such that a
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`application summary is reached directly from the menu would increase the
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`time it takes for a user to be alerted of new messages and to access the new
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`messages. Contrary to the principle of operation of Schnarel to notify users
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`of new messages as soon as possible, such a modification would hinder the
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`user’s ability to quickly discover and access these new messages. As such,
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`the modification would change the principle of operation of Schnarel, hence,
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`claim 1 and its dependent claims are not obvious in view of Schnarel.
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`22
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`Preliminary Response—IPR2015-01985 re: U.S. Pat. No. 8,713,476
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`Claim 20 recites features similar to those recited in claim 1.
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`Therefore, claim 20 and its dependent claims are patentable over Schnarel
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`for reasons similar to those provided above with respect to claim 1. 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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`
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`4.
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`Claim 9 is Separately Patentable Over Schnarel.
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`Claim 9 depends from claim 1 and additionally recites the computing
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`device being a mobile telephone. Petitioner contends that Schnarel’s
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`disclosure of “personal digital assistants” somehow applies to the recited
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`mobile telephone, Pet. at 33, but fails to articulate any basis for reaching this
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`conclusion. Indeed, Schnarel itself discusses “web telephones,” Ex. 1003 at
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`Abstract, 3:59-64, and not mobile telephones. Accordingly, Petitioner has
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`not met its burden to show a reasonable likelihood that it would prevail with
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`respect to this challenge and so no inter partes review should be instituted
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`on this ground.
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`23
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`Preliminary Response—IPR2015-01985 re: U.S. Pat. No. 8,713,476
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`IV. CONCLUSION
`For at least the foregoing reasons, no inter partes review should be
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`
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`instituted on the identified grounds. Further, as this is Patent Owner’s
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`Pr
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